Vedanti Licensing Limited, LLC v. Google LLC

Background

Vedanti Licensing Limited, LLC owned all rights and interests in U.S. Patent No. 7,974,339, concerning an optimized data-transmission system and method. Vedanti sued Google LLC for infringement of several remaining patent claims and initially asserted a copyright claim involving its source code. Vedanti later amended its complaint and dropped the copyright claim.

Earlier proceedings had resulted in the Patent Trial and Appeal Board finding other claims of the patent unpatentable as obvious based on two prior patents. The Federal Circuit affirmed that decision. During the present case, Google requested reexamination of the remaining patent claims based on the same prior art. Vedanti did not submit a response to the patent office’s rejection, and the patent office issued a certificate canceling the remaining claims. The parties then agreed to dismiss the action under Federal Rule of Civil Procedure 41(a)(1)(A)(ii).

Google, which the parties agreed was the prevailing party, moved for $426,631.14 in attorneys’ fees under 35 U.S.C. § 285. Google sought compensation for 625.1 hours of work by six attorneys and one paralegal and did not seek costs.

Legal Standard

Under § 285, a court may award reasonable attorneys’ fees to the prevailing party in an “exceptional” patent case. The court explained that an exceptional case is one that stands out because of the unusual weakness of a party’s legal position or because of the unreasonable way the case was litigated. The court must consider the totality of the circumstances. Fees are not meant to punish a party merely for losing a patent case.

Patent-Fee Request

Google argued that Vedanti should have known its remaining patent claims were invalid because of the earlier patent-board decisions and the prior art. The court rejected that argument. Although Vedanti’s decision to continue the case might have been ill-advised, the court found that the remaining claims had not yet been adjudicated when Vedanti filed suit and that Vedanti’s position was not frivolous.

The court also rejected Google’s argument that Vedanti had been willfully ignorant of the prior art. Vedanti had acknowledged the prior art and the earlier patent-board decisions from the beginning of the case. The court noted that an issued patent is presumed valid and that the patent’s eventual invalidation, standing alone, did not make Vedanti’s litigation position unreasonable.

Google separately argued that Vedanti litigated unreasonably by opposing a stay while the reexamination was pending and then choosing not to participate in the reexamination. The court found Vedanti’s lack of explanation concerning those actions concerning, but concluded that opposing the stay and declining to litigate the reexamination, without more, did not amount to sufficiently serious misconduct. The court also found no affirmative misrepresentation by Vedanti about its plans to participate in the reexamination.

Considering all the circumstances, the court found that the case was not exceptional under § 285 and declined to award patent-related attorneys’ fees.

Copyright-Fee Request

In its reply brief, Google newly requested fees under the Copyright Act, 15 U.S.C. § 505. Google acknowledged that it had not expressly sought those fees in its opening motion. The court denied that request because it was a new argument raised for the first time in a reply brief.

Disposition

The court DENIED Google’s motion for attorneys’ fees. This order addressed Google’s fee request; it did not separately decide the underlying patent-infringement claims on their merits.