Judge Robinson Denies Motion for Attorneys’ Fees after Invalidating Patents-in-Suit under Section 101

May 12, 2016

Publication| Intellectual Property

In YYZ, LLC v. Pegasystems, Inc., C.A. No. 13-581-SLR (D. Del. May 2, 2016), after granting the defendant’s motion for summary judgment that the plaintiff’s patents-in-suit were invalid under 35 U.S.C. § 101, Judge Robinson denied the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285. Judge Robinson rejected the defendant’s first argument—that the plaintiff had admitted that the inventive concepts contained in the patents-in-suit were already in the prior art—as a rehash of the defendant’s Section 101 argument. Noting that the Court “expended considerable effort to reach its invalidity determination” and 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,” Judge Robinson found the plaintiff’s position that the patents-in-suit were not invalid was not so “reckless” as to warrant an award of fees.

The defendant also argued that alleged misrepresentations to the USPTO during prosecution of the patents-in-suit, as well as the plaintiff’s allegedly deficient infringement contentions, warranted an award of attorneys’ fees. Judge Robinson noted that the parties had agreed to stay all deadlines in the case during fact discovery so that the motion for summary judgment could proceed. Given this stay, Judge Robinson explained that evaluating whether the plaintiff engaged in inequitable conduct during patent prosecution or raised insufficient infringement contentions would amount to a determination of these issues “on an incomplete record.” Thus, Judge Robinson declined to award fees on either ground.

Analysis: This decision follows statements by Judge Robinson in the underlying Section 101 decision preceding the motion for fees acknowledging challenges in applying the Alice standard and the shifting state of the law in this area.

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