Richards Layton & Finger
 

Chief Judge Stark Denies Motion for Attorneys' Fees

November 3, 2016

In Sarif Biomedical LLC v. Brainlab, Inc., C.A. No. 13-846-LPS (D. Del. Sept. 27, 2016), Chief Judge Stark denied a motion for attorneys’ fees under 35 U.S.C. § 285 made by the defendants, Brainlab, Inc., Brainlab AG, Brainlab Medizinische Computersysteme GMBH, and Varian Medical Systems, Inc. (collectively, “Brainlab”). The parties had stipulated to a final judgment of invalidity and noninfringement after the Court found the claims to be indefinite.

Although Brainlab argued that the case was exceptional because of its substantive weakness and the unreasonable manner in which it was litigated, Judge Stark found that the plaintiff, Sarif Biomedical LLC (“Sarif”), had a “good faith, though ultimately incorrect, belief” in the definiteness of the claims at issue, and provided detailed arguments grounded in intrinsic evidence. The Court also did not find any of Sarif’s arguments or expert witnesses to be “unusually weak.”

Nor did Judge Stark find fault in Sarif’s changes throughout the litigation to its claim construction positions. The Court stated that it was common for parties to “refine and revise” their claim construction positions throughout litigation. Judge Stark also observed that it is reasonable for a party to use different constructions in Patent Trial and Appeal Board (the “PTAB”) and district court proceedings, because the claim construction standard in the PTAB is broader than the district court standard. The Court determined that, as a whole, the modifications to Sarif’s claim construction arguments (which the Court did describe as “substantial”) did not contradict those made at the PTAB.

Key Points:  In addition to suggesting an acceptable scope of differences between claim construction proposals in the PTAB and in district court litigation, the Court emphasized that it has a very large data set—“the full panoply of patent cases with which it has been involved”—against which to measure whether any particular case is “exceptional.”