Chief Judge Leonard P. Stark recently considered defendants’ motion for attorneys’ fees, filed after the case was dismissed following the Court’s finding all claims invalid for indefiniteness. Sarif Biomedical LLC v. Brainlab, Inc., No. 13-846-LPS (D. Del. Sept. 27, 2016). Defendants argued the case was exceptional because the claim terms at issue were “obviously indefinite” because “there [was] no legitimate argument that the specification contains a structure corresponding to the claimed function, and Plaintiff’s efforts to argue to the contrary suggest that Plaintiff did not perform a ‘legitimate pre-filing investigation.'” Id. at 3. Further, the Patent Trial and Appeal Board declined to institute petitions for Inter Partes Review because it believed the claims to be indefinite. Id. at 1-2. Judge Stark ultimately concluded that Plaintiff had a “good faith” belief that the claims were not indefinite, providing “detailed arguments, grounded in the intrinsic evidence, in support of its proposed constructions.” Id. at 3. Moreover, “[t]he Court did not find any of Plaintiff’s positions or expert witnesses to be unusually weak, and Defendants’ briefing on this motion has not persuaded the Court otherwise.” Id. Judge Stark also did not find Plaintiff’s conduct unreasonable following the PTAB proceeding.
It is not unusual for a party to refine and revise its claim construction positions over the course of litigation. It can also be reasonable for a party to propose different constructions in PTAB and District Court proceedings, as the PTAB must give claim terms their “broadest reasonable construction,” whereas District Courts give them the meaning they would have to a “person of ordinary skill in the art at the time of the invention.”
Id. at 4 (quoting Cuozzo Speed Techs., LLC v. Lee, 2016 WL 3369425, at *10 (U.S . June 20, 2016)). Judge Stark also compared this case “to the full panoply of patent cases” before the Court and concluded “nothing about the instant case stands out as ‘exceptional’ in any respect, including the substantive strength of Plaintiff’s unsuccessful positions or the manner in which Plaintiff litigated the case.” Id. at 5-6.