Late last week, Judge Stark granted defendant's request for litigation fees under 35 U.S.C. § 285 in Princeton Digital Image Corp. v. Ubisoft Entertainment SA, C.A. No. 13-335-LPS-CJB, following an award of summary judgment of non-infringement to the defendant and a summary affirmance at the Federal Circuit.
Plaintiff PDIC's patents are directed to virtual reality programs controlled by music or control tracks created from music. Defendant Ubisoft asserted that the accused games manually synchronized the video, soundtrack, and other effects on a timeline, and were not controlled by music or a control track created from music.
During claim construction, Judge Burke found that plaintiff had disclaimed certain subject matter during IPR proceedings:
"[I]t is clear that before the PTAB, PDIC argued that the claim limitation . . . required that control information must correspond . . . to the audio signal itself. Here, in contrast, it argues that the claim term . . . could amount to a structure that generates a control track based merely on time, positions or locations within a sound recording. Plaintiff should be bound by its earlier interpretation of this claim limitation."
The function of the accused games was apparently undisputed (the human user presses a button with the beat of music to create markers or beat maps that control the game's display). The Court noted that PDIC seemed to agree during claim construction that Ubisoft's implementation (where the display is governed by the markers or beat maps as opposed to the audio) would fall within the scope of PDIC's disclaimer.
Judge Stark adopted Judge Burke's ruling on disclaimer, holding that the claimed invention would not cover implementations where "once the timer starts, the graphics are displayed irrespective of the audio content" (as in the accused games).
Nonetheless, PDIC continued to press its claims of infringement through expert discovery and summary judgment, during which "PDIC argued that the IPR disclaimer did not preclude its infringement theory." Judge Burke disagreed, and recommended granting Ubisoft's non-infringement motion. He noted that PDIC had "switched course," after having seemingly agreed during claim construction that Ubisoft's implementation would fall within the scope of the disclaimer." Judge Stark adopted the R&R, and the Federal Circuit summarily affirmed.
Regarding the application for fees, Judge Stark found that:
"While PDIC's infringement claims were not objectively unreasonable at the outset of this litigation, . . . PDIC's suit became baseless after the Court, in its claim construction order, applied PDIC's disclaimer to the asserted claims of the '129 patent. . . . At that stage, and as the court ultimately concluded at summary judgment, no reasonable factfinder could conclude that Ubisoft's accused games infringed."
Judge Stark also agreed that PDIC had "failed to take action to end the litigation or adjust its litigation strategy" after the Court's claim construction order on disclaimer.
The Court clarified that although it was only awarding Ubisoft its fees from claim construction through judgment at the district court level, it was finding the entire case exceptional, in view of "PDIC's continued pursuit of its infringement theory despite its substantive weakness post-claim construction, when considered as part of the totality of the circumstances, . . ."
Judge Stark denied Ubisoft's request for appellate fees and expert fees. He ordered further submissions and a hearing on the amount of post-claim construction fees.
***
Judge Stark issued two other fees rulings last Friday.
He denied a post-trial request for fees in a Hatch-Waxman case (Noven Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, C.A. No. 18-699-LPS) because the dispositive issue - invalidity for lack of adequate written description - was fact intensive and thus the patentee was not unreasonable in continuing to press its claims.
In another Hatch-Waxman case (Almirall LLC v. Torrent Pharmaceuticals, Ltd., 20-1373-LPS), he awarded fees and costs to defendant with regard to its motion for judgment on the pleadings because the plaintiff withheld key positions from the MJP briefing, only raising it later in connection with a motion to amend. In that case, Judge Stark noted that plaintiff's acts "resulted in the substantial delay of this case and the unusual consequence of [defendant] Torrent having to continue to litigate a case in which it has already prevailed on a motion for judgment on the pleadings."
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