Richards Layton & Finger
 

Judge Andrews Grants Motions for Exceptional Case and Attorneys' Fees

June 5, 2019

In Finnavations LLC v. Payoneer, Inc., No. 18-444-RGA (Mar. 18, 2019), and a related case, Judge Andrews granted the defendants’ motions for exceptional case and attorneys’ fees. The defendants sought fees following the Court’s finding that the asserted patent was directed to the abstract idea of bookkeeping and lacked an inventive concept.

Judge Andrews stated that he has “rarely been more confident in the patent ineligibility of a set of claims or more confident in the unreasonableness of a Plaintiff’s decision to sue on a patent,” making this case stand out from others. The plaintiff had argued that pursuing this litigation was reasonable because the patent had overcome four ineligibility rejections during prosecution, but Judge Andrews stated that counsel must independently evaluate the merits of a case before bringing suit and cannot rely instead on the work of patent examiners.

The Court further disagreed that any uncertainty in Section 101 jurisprudence counseled against a finding of exceptional case, since “[a]ny reasonable patent attorney with an understanding of Section 101 law could have predicted the outcome” of this case. Deterring the filing of suits based on such patents, according to Judge Andrews, was one of the reasons for awarding fees in this instance.

Key Point: According to Judge Andrews, “the law of patent eligibility has perhaps become unpredictable and unclear on the fringes,” but it is clear that “patents which look like Alice are ineligible.”