Docket No. 2017-1103
REYNA, WALLACH, HUGHES
March 21, 2018
Brief summary: DC denial of attorney’s fees under § 285 was affirmed since, e.g., Sarif acted in “good faith”.
Summary: Sarif sued Brainlab for infringement of claims 1-9 of US 5,755,725 relating to computer-assisted stereotactic microsurgery, and the parties jointly stipulated to a final judgment of invalidity and noninfringement. Brainlab appealed the DC’s denial of its Motion for Attorney’s Fees under § 285. While the DC litigation was pending, the PTAB declined to Brainlab’s petition to institute IPR of claims 1-9 of the ‘725 patent because the claims “‘cannot be construed’ based on a likelihood that they are indefinite”. The IPR Sarif disclaimed remaining claims 10 and 11 but continued pursuing claims 1-9 in the DC litigation. The DC concluded that claim 1 means-plus-function “limitation (e)” was indefinite since “the specification teaches detailed formulas” but does not provide a “clear structural link for…the disclosed function.” The parties then stipulated to the judgment of invalidity and noninfringement. The DC determined the case was not “exceptional” under § 285, finding “[Sarif] had a good faith, though ultimately incorrect, belief that its claims were not invalid”. The FC panel explained that it reviews “all aspects of a [DC’s] § 285 determination for abuse of discretion” (Highmark, US 2014; Rothschild, FC 2017 (where “it ‘bases its ruling on an erroneous view of the law or on a clearly erroneous assessment of the evidence’”)), and that “reasonable attorney fees” may be awarded “to the prevailing party” in “exceptional cases” (Octane Fitness, US 2014 (“simply one that stands out from others with respect to the substantive strength of a party’s litigating position” (not “the correctness or eventual success of that position” (SFA, FC 2015)) “or the unreasonable manner in which the case was litigated” under “the totality of the circumstances”)). The FC panel found Brainlab’s arguments “ultimately unpersuasive under [its] standard of review” since, e.g.., the DC found Sarif acted in “good faith” by supporting its claim constructions “with citations to the specification and expert testimony”, its arguments “were not ‘inconsistent with [the positions it] took before the PTAB”, and the PTAB’s conclusion of indefiniteness is only dicta (“[t]he PTAB does not have authority to institute [IPR] under § 112”). The FC panel also explained that “[t]he trial judge [i]s in the best position to understand and weigh the issues” and “ha[d] no obligation to write an opinion that reveals [his] assessment of every consideration” (Univ. Utah, FC 2017). Thus, the FC panel was “not left with a ‘definite and firm conviction that a mistake has been made’” (Rothschild). The FC panel also found no clear error in the DC’s “consideration of the reasonableness of the manner in which Sarif litigated this case or any other circumstances of this case” (e.g., the PTAB considers means-plus-function limitations are under the “broadest reasonable interpretation” as are other limitations and Sarif’s motivations and actions were not shown to be “as a whole improper” (“[i]mportantly, Sarif did not delay in its litigation tactics”)). Accordingly, the DC denial of attorney’s fees under § 285 was affirmed.