The big news in U.S. IP law today (so far, at any rate) is the Ninth Circuit's decision affirming in part the district court's copyright infringement decision in the Blurred Lines case, which I hope to get around to reading later in the day. As far as patent remedies are concerned, the Federal Circuit issued a nonprecedential opinion this morning in Sarif Biomedical LLC v. Brainlab, Inc., opinion by Judge Wallach (joined by Judges Reyna and Hughes). The district court held that the claims of the patent in suit, titled "Computer-Assisted Microsurgery Methods and Equipment," was indefinite, and the parties thereafter stipulated to a judgment of invalidity and noninfringement. The court also held, however, that the case was not exceptional and denied Brainlab's motion for attorneys' fees. On this latter issue, the Federal Circuit concludes there was no abuse of discretion:
The District Court properly evaluated the substantive strength of Sarif’s case. The District Court found that Sarif acted in “good faith” in part because, “[a]t each stage of the litigation, [Sarif] provided detailed arguments, grounded in the intrinsic evidence, in support of its proposed constructions” and “obtained expert opinion which supported its constructions.” . . . The District Court’s ultimate disagreement with Sarif’s proposed construction does not, on its own, render Sarif’s case substantively weak. . . .
Brainlab’s counterarguments are ultimately unpersuasive under our standard of review. First, Brainlab avers that the PTAB’s decision not to institute an inter partes review for claims 1–9, after stating these claims “cannot be construed” based on a likelihood that they are indefinite . . . demonstrates the weakness of Sarif’s position, as it is an important “objective indicator of the invalidity of the ’725 patent” . . . . Brainlab places too much significance on the PTAB’s determination. The PTAB does not have authority to institute an inter partes review under § 112. See 35 U.S.C. § 311(b). Therefore, as Brainlab admitted, any conclusion regarding indefiniteness is dicta. . . .
Second, Brainlab argues Sarif’s proposed construction is weak because portions of Sarif’s expert testimony appear to undermine its ultimate construction. . . . However, the District Court is entitled to weigh the credibility of an expert’s testimony . . . .
Third, throughout its brief, Brainlab argues the District Court “fail[e]d to make findings of fact in support of its conclusion that Sarif’s case was not unusually weak” and “ignored . . . overwhelming evidence.” . . . However, we have recognized that “[t]he trial judge [i]s in the best position to understand and weigh the issues,” and the District Court “ha[d] no obligation to write an opinion that reveals [his] assessment of every consideration.” . . .
The District Court also did not clearly err in considering the reasonableness of the manner in which Sarif litigated this case or any other circumstances of this case. Although Sarif modified its claim construction position from the PTAB to the District Court, the District Court correctly explained that
[i]t can . . . be reasonable for a party to propose different constructions in PTAB and District Court proceedings, as the PTAB must give claims 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.” . . .
Brainlab also has failed to demonstrate that Sarif’s motivations and actions as a whole were improper. . . . Although we have stated “that a pattern of litigation abuses characterized by the repeated filing of patent infringement actions for the sole purpose of forcing settlements, with no intention of testing the merits of one’s claims, is relevant to a district court’s exceptional[-]case determination under § 285,” SFA Sys., 793 F.3d at 1350, the District Court considered Brainlab’s evidence and concluded Brainlab “ha[d] not demonstrated that this is a ‘nuisance suit’” because “[Sarif]’s status as a non-practicing entity, the language of the press releases directed toward its investors, its decision to allege infringement against several other entities, and its decision to settle other cases, do not combine to establish that this case was always ‘meritless’ or ‘predatory,’” Sarif II, 2016 WL 5422479, at *2 (emphasis added). Importantly, Sarif did not delay in its litigation tactics. . . .
Brainlab claims the District Court erred “[b]y limiting itself to comparing Sarif’s conduct only to the cases ‘with which [the District Court] has been involved.’” . . . As we have explained above, the District Court properly determined that this case is not exceptional, grounding its reasoning in the correct legal standards and a proper assessment of the facts. Therefore, we decline Brainlab’s invitation to find legal error “based upon [this] isolated statement stripped from its context.” Waymo LLC v. Uber Techs., Inc., 870 F.3d 1350, 1361 (Fed. Cir. 2017) (internal quotation marks and citation omitted) (pp. 6-11).
In other news regarding attorneys' fees, on remand from the Federal Circuit in AdjustaCam v. Newegg (see previous discussion on this blog here), Judge Gilstrap (E.D. Texas) last week awarded Newegg over $500,000 in fees and expenses, including (pursuant to the court's inherent authority) expert witness fees of over $60,000. Link here.