Pacific Coast Building Products, Inc. v. CertainTeed Gypsum, Inc.

Background

Pacific Coast Building Products sued CertainTeed Gypsum, Inc. and Saint Gobain Performance Plastics Corp. for patent infringement. The fee dispute concerned U.S. Patent No. 9,388,568, which covers a laminated drywall panel designed to be easier to break after scoring. Claim 21 referred to a “scored flexural strength” of about 22 pounds per one-half-inch thickness.

On November 29, 2018, the court ruled that the term “scored flexural strength” was indefinite. The court reasoned that the patent did not explain how to measure that strength as a single value: applying the testing method identified in the patent could produce four different measurements, and the patent did not specify how deeply the panel should be scored. The parties then stipulated to entry of judgment for CertainTeed. The Federal Circuit affirmed the invalidity ruling on June 30, 2020.

CertainTeed had previously sought attorneys’ fees under 35 U.S.C. § 285, but the court denied that motion without prejudice while the appeal was pending. After the Federal Circuit’s decision, CertainTeed renewed its request.

Legal standard

Under 35 U.S.C. § 285, a court may award reasonable attorneys’ fees to the prevailing party in an exceptional patent case. Under the standard discussed by the court, an exceptional case is one that stands out because of the unusually weak strength of a party’s position or the unreasonable way the case was litigated. The court must consider the total circumstances and has discretion whether to award fees.

Reasons for denying fees

CertainTeed argued that Pacific Coast’s litigation position was exceptionally meritless. The court rejected that argument. Although Pacific Coast’s interpretation of claim 21 ultimately failed, Pacific Coast had cited expert testimony and other factual support for its position about the meaning of scoring and the measurement of flexural strength. The court also had to analyze the claim language, patent specification, prosecution history, testing standards, case law, and competing expert testimony before finding the claim indefinite. In addition, issued patent claims carry a statutory presumption of validity. The court therefore concluded that Pacific Coast’s position was not frivolous or objectively unreasonable.

CertainTeed also alleged litigation misconduct, including misrepresentations to the court, the United States Patent and Trademark Office, the Federal Circuit, and the European Patent Office. The court found that the identified statements did not establish the serious or “egregious” behavior needed for a fee award. The court could not determine from the record whether one challenged statement about CertainTeed’s half-inch product was an isolated overstatement or mere sloppiness. It also concluded that the other alleged statements did not justify treating the case as exceptional, and noted that the relevant patent offices and appellate court were better situated to evaluate alleged misrepresentations made to them.

CertainTeed further argued that Pacific Coast caused unnecessary costs by delaying discovery, leading to a withdrawn motion to strike and three joint statements involving discovery issues. The court found that this conduct, at most, reflected sloppy or overzealous lawyering rather than egregious misconduct.

Disposition

The court concluded that the case was not exceptional under Section 285 and declined to exercise its discretion to award attorneys’ fees to CertainTeed. Judge Lucy Koh therefore denied CertainTeed’s renewed motion for attorneys’ fees.