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01 The The Real The Cir. But The The CAFC also said the district court failed to explain why the two IPR decisions were relevant to the award of attorneys’ fees, finding that the Patent Trial and Appeal Board’s (PTAB’s) obviousness determinations were “not enough to establish conventionality at Alice Step Two.” The opinion continued:
“There simply was not enough in the Board decisions–which concerned different sections of the Patent Act and did not analyze whether anything in the prior art was well-understood, routine, or conventional–to put Realtime on notice that its arguments regarding the eligibility of its patent claims were entirely without merit.”
As to the office actions in the reexamination, the CAFC said it was first of all unclear whether the district court used them as red flags because it wrote that they “could have served as additional red flags regarding the viability of Realtime’s case.” And to the extent they were relied upon as red flags, the district court’s analysis was insufficient because it failed to explain how the office actions sufficed as red flags when the examiner was using the broadest reasonable interpretation standard of claim construction.
Turning to the letter sent by DISH’s lawyers to Realtime’s counsel, in which DISH “emphasized the similarities of the claims” of one of the patents to the Adaptive Streaming decision and “urged Realtime to drop its infringement claims and warned of the substantial litigation expense that would be incurred if the case continued,” the CAFC said “it is not clear what it is about the notice letter…that constitutes a red flag.” The opinion noted:
“If such a notice letter were sufficient to trigger SS 285, then every party would send such a letter setting forth its complaints at the early stages of litigation to ensure that–if it prevailed–it would be entitled to attorneys’ fees.”
While the opinion went on to clarify that this does not mean such a notice letter could not be considered in assessing exceptionality, here, the letter did not explain at length why Realtime should consider its eligibility position completely meritless. “Simply being on notice of adverse case law and the possibility that opposing counsel would pursue SS 285 fees does not amount to clear notice that the ‘610 claims were invalid and is therefore not sufficient to support an exceptionality finding in this case,” wrote the CAFC.
Finally, the opinion addressed DISH’s expert’s opinions, which the district court said warranted “serious consideration” by Realtime in terms of its eligibility position and which it ultimately held up as another red flag warranting exceptionality. The CAFC said the district court erred here because Realtime’s expert offered critiques and counterarguments to DISH’s expert’s opinions, indicating Realtime did give it serious consideration and that these competing opinions, regardless of which the court found more persuasive, were “typical of the ordinary, unexceptional patent infringement case.”
The CAFC thus vacated the decision and remanded for consideration in light of its findings but offered “no opinion on the correct disposition of DISH’s attorneys’ fees motion on remand.”
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Author: _fla
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Eileen McDermott
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