Chicago Bd. Options Ex., Inc. v. Int’l. Secs. Ex., LLC, No. 07 C 623, Slip Op. (N.D. Ill. Dec. 10, 2014) (Lefkow, J.).

Judge Lefkow granted in part Chicago Board Options Exchange’s (“CBOE”) § 285 motion for attorney’s fees after International Securities Exchange (“ISE”) stipulated to CBOE’s noninfringement, the Court entered final judgment and the Federal Circuit affirmed the judgment in this patent dispute regarding an automated exchange for trading securities.

The Court held that ISE’s conduct met both prongs of Octane Fitness – substantive issues with the losing party’s positions and unreasonable litigation. ISE continued to make arguments contrary to the Court’s claim construction, even after the Federal Circuit affirmed the construction. Additionally, after the first post-appeal deposition ISE should have been aware that it could not make infringement claims as to CBOE’s CBOE direct system.

The Court, however, denied CBOE’s “perfunctory” argument for its expert fees. While ISE’s post-appeal conduct was exceptional, it was not conducted in bad faith. And CBOE did not prove by specific record cites that it had only engaged its experts because the case was proceeding to trial. The Court directed the parties to work together to determine the fees pursuant to Local Rule 54.3(d).