Pursuing Litigation After Claim Construction Was Vexatious, Warranting Award of Attorneys' Fees

The court granted in part defendant's motion for attorneys' fees under 35 U.S.C. § 285 and awarded fees beginning from the date claim construction was resolved. "Plaintiffs timely requested reconsideration of the court’s Markman order, timely appealed, and won their appeal, albeit not on a construction implicated in the court’s [order declaring the case exceptional]. Plaintiffs had a right to resolve a claim construction which they believed to be erroneous, even if resolution of that construction did nothing to make their claims of infringement any more meritorious. Having resolved all issues of claim construction, plaintiffs’ persistence in prosecuting a case that was now clearly without merit was vexatious and unjustified."

Cartner, et. al. v. Alamo Group, Inc., 1-07-cv-01589 (OHND February 6, 2012, Order) (Vecchiarelli, M.J.)

Lead Counsel Ordered To Meet & Confer Concerning "Each And Every Claim Construction" After Briefing But Before Hearing

The court ordered lead counsel to meet and confer in person prior to the Markman hearing. "After the matter has been fully briefed and prior to the hearing, lead counsel shall meet and confer in person. Lead counsel shall discuss each and every claim construction at issue, and engage in a good faith effort to resolve any differences. In the court’s experience, parties are often able to, and do in fact, resolve such differences at the Markman hearing. This Order is therefore appropriate to avoid undue expenditure of judicial resources prior to the hearing, addressing issues not truly in dispute."

J2 Global Communications Inc., et. al. v. Fax87.com, et. al., 2-11-cv-02618 (CACD February 7, 2012, Order) (Pregerson, J.)

Evidence of Reexamination Proceedings Inadmissible to Show No Willful Infringement

The court excluded evidence of reexamination proceedings despite defendants' argument that such evidence was relevant to show a lack of willful infringement. "It is idle to suggest that the complicated evidence the defendants seek to bring before the jury on the question of willful infringement will not hopelessly confuse them. Data from the [PTO] reflects that 92% of ex parte requests for re-examination have been granted since July 1, 1981. Given the fact that office actions are the norm and do not remotely presage the outcome of the patent process, evidence of the kind involved here will not be helpful to the jury in evaluating the question of willfulness. . . . The evidence will do no more than invite speculation of the most obvious sort. . . . [T]here are limits to a jury’s capacity to make the kind of exceedingly fine distinctions that would be required by the evidence the defendants seek to offer. There are times, and this is one of them, when a limiting instruction is pointless."

Minemyer v. R-Boc Representatives, Inc., et. al., 1-07-cv-01763 (ILND February 2, 2012, Order) (Cole, M.J.)

Motion Seeking Summary Judgment As To Numerous Infringement And Validity Issues -- But Not As To Liability Generally --

Did Not Place Equitable Defenses At Issue
The court denied plaintiff's motion in limine that defendants had waived their equitable defenses by not raising them in response to plaintiff's motion for summary judgment. "[P]laintiff did not limit its [summary judgment] motion to 'infringement,' but it did not say that it was seeking judgment on 'liability' either. Rather, it said that it 'hereby moves for summary judgment that certain claims of the [patents] are a) not anticipated, b) not obvious, c) enabled, and d) infringed.' The order on summary judgment was limited to those issues; I did not enter judgment in favor of plaintiff on liability generally. Although the question is a close one, I think that plaintiff left enough ambiguity in its motion to preclude a finding of waiver by defendants."

Promega Corporation, et. al. v. Life Technologies Corporation, 3-10-cv-00281 (WIWD February 1, 2012, Order) (Crabb, J.)

Disqualification Not Warranted by Defense Counsel's Prior Employment With Plaintiff's Prosecution Counsel

The court denied plaintiff's motion to disqualify defense counsel even though a partner at defense counsel's firm was a partner at plaintiff's prosecution counsel's firm at the time the patent-in-suit was prosecuted. "Defendant has carried its burden of demonstrating that [the attorney] did not receive confidential information regarding [plaintiff] from [his old firm], and that disqualification is thus unnecessary. [The attorney's] Declaration states unambiguously that he billed no time to [plaintiff] and had not heard of it until the present litigation. . . . Plaintiff offers nothing beyond the fact that [the attorney] was a partner in the intellectual property group, worked on one occasion with [plaintiff's prosecution counsel] on another project, and could theoretically have accessed confidential documents if he had tried. None of this evidence supports the contention that [the attorney] obtained confidences regarding [plaintiff] while at [his old firm], let alone rebuts his unequivocal assertion that he did not."

Streetspace, Inc. v. Google, Inc., et. al., 3-11-cv-04574 (CAND February 1, 2012, Order) (Ware, J.)

Judge Love Denies Request to Construe 160 Claim Terms, Limits Parties to 15 Disputed Terms

The magistrate judge limited the parties to the construction of 15 terms across four patents in two cases, despite the parties' request to construe 160 terms. "As a practical matter, the Court questions whether it would be possible to adequately brief 160 terms within the page limits governing Claim Construction briefing. . . . The Court is typically of the opinion that a reasonable number of terms for construction is ten. However, due to the circumstances of these cases, the Court believes that construing fifteen terms would be reasonable."

Sipco, LLC v. Abb Inc., et. al., 6-11-cv-00048 (TXED January 27, 2012, Order) (Love, M.J.)

Failure to Staff Case With Associates Warrants Reduction of Recoverable Attorneys' Fees

The court granted plaintiff's motion for attorneys' fees under 35 U.S.C. § 285 as part of a default judgment, but reduced the fees claim by 20%. "[A]ssociates — the level at which work on a matter of this type ordinarily is performed — accounted for only about 1.5% of the total time billed. This is an inefficient staffing strategy. . . . The creation and review of draft pleadings, letters and other work product by upper-echelon billing rate lawyers, the failure to use associate level staffing for ordinary services and drafting, the two amendments of the complaint, with two review processes, over a period of a few weeks compels the conclusion that the fees requested by [plaintiff] exceed the range of reasonableness for this kind ordinary patent litigation."

Mattress Safe, Inc. v. Just Encase My Mattress, Inc., 1-11-cv-02492 (GAND January 30, 2012, Order) (Duffey, J.)