Evolving State of § 101 Weighs Against Attorney Fee Award Despite Prior Findings of Invalidity in Related Cases​

Following judgment on the pleadings that plaintiff's patents were invalid for lack of patentable subject matter, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's claims were not baseless. "[Plaintiff's] litigating position in this lawsuit was no weaker simply because [defendant] did not file its motion at the same time as the defendants in related lawsuits. This Court’s ruling declaring different patents asserted by [plaintiff] in related cases to be invalid under 35 U.S.C. § 101 was not binding authority making it a foregone conclusion that the Court would arrive at a similar decision on [defendants'] motion for judgment on the pleadings, which concerned two different patents. Ultimately, '[g]iven the evolving state of the law, the § 101 analysis . . . is a difficult exercise,' and 'therefore, not an exercise that lends itself to, e.g., shifting fees pursuant to 35 U.S.C. § 285.'"

West View Research, LLC v. Bayerische Motoren Werke AG et al, 3-14-cv-02670 (CASD January 17, 2017, Order) (Bencivengo, USDJ)