West View Research, LLC v. Bayerische Motoren Werke AG et al, 3-14-cv-02670 (CASD January 17, 2017, Order) (Bencivengo, USDJ)
Thursday, January 19, 2017
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.'"