In a recent Memorandum Order, Judge Sue L. Robinson denied defendant’s motion for attorney fees. YYZ, LLC v. Pegasystems, Inc., C.A. No. 13-581-SLR (D. Del. May 2, 2016). The court previously issued an opinion and order granting defendant’s motion for summary judgment of invalidity and denying plaintiff’s cross-motion for summary judgment of validity.
First, Judge Robinson rejected defendant’s argument that that this is an exceptional case because plaintiff “knew its claims were objectively invalid over the prior art.” Id. at 3. Defendant focused on plaintiff’s “articulation of the ‘inventive concept’ in its 35 U.S.C § 101 briefing, arguing that such concept identified ‘claim elements that [plaintiff] had already conceded were known in the prior art, many of which were not even recited in the patent claims.’” Id. Judge Robinson noted, however, that the court expended “considerable effort in reaching its invalidity determination and analyzed those very [invalidity] arguments in its opinion.” Id. Judge Robinson found that defendant’s “characterization of plaintiff’s arguments as ‘reckless’ and its claims as ‘clearly invalid’ is in contradiction to the court’s position that the § 101 analysis is an evolving state of the law and a difficult exercise, which does not lend itself to, e.g., shifting fees pursuant to 35 U.S.C. § 285.” Id.
Defendant also argued “that the applicant made material misrepresentations to the PTO to procure the patents-in-suit (which may or may not rise to the level of inequitable conduct) adding to the exceptionality of the case at bar.” Id. at 4. In addition, defendant argued that “plaintiff also failed throughout the litigation to ‘clearly point out how [defendant] could possibly infringe the claims.’” Id. Judge Robinson rejected both of these arguments. First, Judge Robinson noted that the Court had granted plaintiff’s request that the parties brief the motion for invalidity pursuant to § 101 early and that the court stay all deadlines pending the court’s decision. Id. Judge Robinson explained that “[a]t the attorney fee stage, the court will not evaluate the parties’ arguments regarding inequitable conduct (not asserted by defendant as a defense)” or “the sufficiency of plaintiff’s infringement contentions.” Id. According to Judge Robinson, defendant’s arguments “would have the court resolve the issue of infringement of an invalid patent on an incomplete record.” Id.