In St. Clair Intellectual Property Consultants, Inc. v. Toshiba Corp., et al., C.A. No. 09-354-KAJ (D. Del. Nov. 23, 2015), Judge Kent A. Jordan denied Defendants’ motion for fees and costs under Section 285 and 28 U.S.C. § 1927. The Court explained that “[w]hile it is true that [Plaintiff] did not present a strong case, and that is position appeared to be weaker in light of certain rulings in limine and at trial, the case for infringement was not so weak as to be ‘exceptional’ . . . nor does the record support a finding that the actions of its attorneys . . . were taken in bad faith.” Id. at 1.
Defendants claimed that Plaintiff did not have sufficient proof of infringement. When its technical expert’s opinion was limited by the Court, Plaintiff had “attempted, improperly, to enter additional, unauthenticated Toshiba schematics into the record using its damages expert . . . [the Court] rejected that maneuver, and [the gap in Plaintiff’s case] remained.” Id. at 6. But the Court observed that, while difficult, “a victory was not impossible” as the technical expert could still testify generally and could have persuaded the jury of infringement, thus there was “a straight-faced basis for arguing for a finding of infringement.” See id. at 6-7. The Court similarly rejected Defendants’ contention that a key limitation was missing from the accused products, as the Court had previously rejected Defendants’ position on this issue. See id. at 7.
Defendants also pointed to Plaintiff’s “behavior before the court,” specifically that it had “shifted litigation positions . . . to avoid summary judgment,” and “presented false royalty calculations.” Id. at 4, 7. Judge Jordan, having been “present for the latter portions of pretrial proceedings and the trial itself,” saw no “evidence of the bad motives [Defendants have] ascribed to [Plaintiff].” Id. at 7. “Royalty calculations, especially in cases with variable and sometimes overlapping infringement theories against large suites of products, may be expected to have a degree of imperfection. That [Defendants] found and successfully exploited such imperfections . . . does not mean that [Plaintiff] was a bad actor. In the same vein, [Defendants’] success in forcing [Plaintiff] to change positions in the course of litigation does not make this case exceptional. Parties should abandon positions or claims when it appears they are unlikely to prove fruitful. . . . [The Court has] no desire to encourage parties to hold on to and litigate discredited positions out of a fear that abandoning them will result in an attorneys fee award[.]”
The Court denied the motion as to 28 U.S.C. § 1927 under the same bases as its Section 285 denial. See id. at 9.