Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Judge Moran denied the party's cross motions for attorney's fees. Plaintiff Trading Technologies (“TT”) argued that the case was exceptional. But the Court held that it was not for the following reasons:

• eSpeed's refusal to admit infringement was reasonable. A defendant requiring plaintiff to make its proofs does not alone make a case exceptional.
  
• eSpeed's decision not to agree to an interlocutory appeal of claim construction and noninfringement decision was not grounds to make the case exceptional. Although eSpeed argued against an interlocutory appeal, the Court made the ultimate determination.
  
• eSpeed's pursuit of its inequitable conduct claim, which it lost after a bench trial, did not make the case exceptional. In the Court's opinion regarding inequitable conduct, the Court ruled for TT, but noted that eSpeed's case was not frivolous – click here to read the Blog's post about that opinion.
  
• The jury's willfulness finding did not make the case exceptional. This was especially true because the Court overturned the jury's willfulness decision based upon In re Seagate – click here to read the Blog's post about that case.

The Court noted that neither party in this case acted more outrageously than the other. Counsel for both parties were zealous advocates that pushed, but did not go beyond, the envelope.

eSpeed argued that the Court should award it attorney's fees, pursuant to Fed. R. Civ. P. 37(e)(2), for proving that a particular use of a software package was commercial and not experimental, a fact that TT denied in a request for admission. The Court chose not to rule on TT's and eSpeed's respective procedural arguments regarding whether TT was required to admit the use was commercial. Instead, the Court denied attorney's fees because of the Court's earlier ruling that failure to disclose the commercial use in question to the Patent Office was not inequitable conduct because the use occurred before the critical date. And, as with eSpeed's decision to hold TT to its proofs, the Court would not punish TT for holding eSpeed to its proofs on inequitable conduct.

* Click here to read this opinion and click here to read much more about this case in the Blog’s archives.

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Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007).*

Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) denied defendants’ Fed. R. Civ. P. 60(b) for relief from the Court’s judgment.  The Court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent (you can read more about the case in the Blog’s archives). In their motion, defendants argued that the Supreme Court’s April 2007 obviousness decision, KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007), dramatically changed obviousness law and conflicted with the jury instructions which “nullif[ied] the jury verdict.” Defendants moved the Court to invalidate two claims of the patent in suit or to order a new trial on obviousness. But the Court held that even under the KSR standard, the jury’s verdict was fully supported by evidence at trial. Because a corrected instruction would not have changed the result, the erroneous instruction was harmless.

*You can read the opinion here.

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