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No Section 285 Attorneys Fees for Patent Claim Construction Ruling at Summary Judgment

The Court of Appeals for the Federal Circuit affirmed a district court’s ruling denying attorneys fees under Section 285 of the Patent Act, 35 U.S.C. sec. 285, when the lower court construed the critical patent term at summary judgment and then held the accused device did not infringe the patent. Also, district court’s need not consider or rule issues which are moot due to the finding of non-infringement. Spineology, Inc. v. Wright Medical Tech., Inc., Case No. 2018-1276 (Fed. Cir. Dec. 14, 2018) (PDF Copy of Opinion Available Here).

Spineology, Inc., is the assignee “expandable reamer” for use in orthopedic surgery and asserted that Wright’s X-REAM® device infringes the’757 patent.

Well before the summary judgment, th district court entered a claim construction order. In that order, the court acknowledged that the parties disputed the construction of claim term “body,” but it declined to adopt either party’s construction. Recognizing the alleged infringement depended on how “body” was construed, at summary judgement, the district court construed “body” consistent with Wright’s non-infringement position and granted Wright’s motion.

Wright then moved for attorney fees, arguing Spineology’s proposed construction of “body,” its damages theories, and its litigation conduct rendered this case “exceptional” under § 285. The district court denied defendant’s attorneys fees motion finding that Spineology’s proposed construction, “was not so meritless as to render the case exceptional.”

In the claim construction order, the district court determined that “the claims themselves provide substantial guidance as to the meaning of the claim.” It was not until summary judgment that the district court construed “body” consistent with Wright’s, rather than Spineology’s, proposed construction.

The Appeals Court held “As we have stressed, ‘[a] party’s position . . . ultimately need not be correct for them not to ‘stand[] out’. SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015).”

The Appeals Court was critical of defendant Wright’s argument on appeal that the lower court should have looked at plaintiff Spineology’s damages theory. The Appeals court stated: “Despite the fact that this case was resolved on summary judgment of non-infringement with no consideration of or rulings on damages, Wright argues the district court should have, as part of its exceptional case determination, reviewed the parties’ various expert reports on damages and assessed the merits of Spineology’s damages theories. … Perhaps Spineology’s damages theories would not have prevailed, but ‘a strong or even correct litigating position is not the standard by which we assess exceptionality.’ Stone Basket Innovs., LLC v. Cook Med. LLC, 892 F.3d 1175, 1180 (Fed. Cir. 2018).”

Wright asked the Appeal Court to decide the damages issues which were mooted by summary judgment in order to determine whether it ought to obtain attorney fees for the entire litigation. The Appeals Court rejected that request. “We will not force the district court, on a motion for attorney fees, to conduct the trial it never had by requiring it to evaluate [Plaintiff’s] ‘but for’ calculations or royalty rates.”

Lastly, Wright further challenged as “exceptional” Spineology’s conduct during litigation. It criticized Spineology for allegedly attempting to mislead the district court with a cropped and annotated version of a figure, ignoring evidence and withholding expert measurements of the accused product. Per the Appeals Court “It saw Spineology’s version of Figure 2, considered the
evidence regarding claim construction, and compelled production of the X-REAM® measurements. The district court is undoubtedly “‘better positioned’ to decide whether [this] case is exceptional.” Id. We see no abuse of discretion in the district court’s determination that it is not.”

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