In this case, Judge Robinson had previously granted a motion for summary judgment of invalidity and non-infringement based on Section 101, which the plaintiff unsuccessfully appealed to the Federal Circuit. Judge Robinson has now found that the plaintiff’s litigation tactics were unreasonable and not excused by the shifting jurisprudence of Section 101. Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., Memo. Or. at 6-7 C.A. No. 12-1138-SLR (D. Del. Mar. 31, 2016). Her Honor explained that “[t]he posture of this case stands out from other cases,” including the plaintiff’s motion to dismiss counterclaims that “included numerous details supporting its belief [of] invalidity” (id. at 3-4); plaintiff’s claim construction positions, which included new definitions for certain claim language which were provided for the first time during claim amendment before the PTO and “were added for litigation purposes” (id. at 6); and plaintiff’s infringement claim charts which “accused 65 products of infringing 36 claims,” which plaintiff narrowed only to “representative” products following the Court’s order to narrow, and which continued to undergo revisions and additions (id. at 4-5).
Based on this conduct, Judge Robinson found that “Plaintiff cannot complain that defendant’s resistance to the idea of representative products is the reason for the discovery burden, when plaintiff refused to narrow the scope of its infringement allegations for over a year and significant discovery was performed before plaintiff suggested this approach. Moreover, for the same reasons, plaintiff’s burden of reviewing the discovery on the allegedly infringing products was one of its own making. Plaintiff’s claim construction positions . . . and its lack of a coherent infringement theory (evidenced by its shifting infringement positions) contributed greatly to the discovery burden. . . . While each individual action by plaintiff may not have been ‘exceptionally’ unreasonable, the totality of the circumstances of the present action are indicative of the type of ‘exceptional case’ that justifies an award of fees. That defendant’s motion for invalidity was granted on the § 101 issue does not negate the ‘exceptional’ nature of the case, when the record indicates that plaintiff pursued litigation so inefficiently as to be objectively unreasonable and burdensome for defendant and the court.” Id. at 6-7.
Moreover, Judge Robinson rejected the “contention that defendant may only be compensated for its expenses related to the § 101 issue. As plaintiff has conceded, that area of law was at the time (and even today) evolving. Judicial economy (not defendant) is responsible for the court’s decision not to reach additional issues once defendant succeeded on this issue at the summary judgment phase. . . . Taking into account that patent cases are complex and patent litigation is an expensive proposition, nevertheless, the court will award attorney fees of $1,000,000 to account for the fact that plaintiff’s ever changing litigation strategies (including its claim construction positions) created a tortuous path to resolution.” Id. at 8-9. Judge Robinson denied, however, a motion for additional fees, finding that plaintiff’s appeal to the Federal Circuit “was reasonable and not exceptional.” Id. at 9 n.14.