By Memorandum Order entered by The Honorable Sue L. Robinson in Apeldyn Corp. v. Sony Corp., et al., Civil Action No. 11-440-SLR (D.Del., March 31, 2016), the Court denied defendants’ motion for attorneys’ fees after finding the case did not warrant exceptional case status under 35 U.S.C. § 285.  By way of background, the Court had previously granted defendants’ motion for summary judgment of non-infringement due to collateral estoppel and defendants’ motion for summary judgment of invalidity, and entered judgment for defendants in the patent infringement action. Id. at 2.  Plaintiff appealed the Court’s summary judgment decisions to the Federal Circuit and the Federal Circuit affirmed the Court’s summary judgment ruling of non-infringement. Id. at 3.  Thereafter, in moving for attorneys’ fees as the prevailing party under § 285, defendants argued that the case was an exceptional case because plaintiff pursued objectively unreasonable infringement and validity positions which were barred by collateral estoppel. Id. at 4.  However, the Court disagreed with defendants and, in denying their motion for attorneys’ fees, found the case was not exceptional under 35 U.S.C. § 285 because defendants opposed the filing of an early motion for summary judgment of collateral estoppel and wanted to proceed with discovery and summary judgment briefing. Id. In addition, the Court was not persuaded that plaintiff was so lacking a good faith belief of validity as to merit awarding exceptional case status under 35 U.S.C. § 285. Id.

A copy of the Memorandum Order is attached.

The general takeaway for parties in a patent infringement action is to keep in mind that opposing a proposed Scheduling Order that includes an opportunity for early resolution through early summary judgment, claim construction or otherwise may be used against you in the future in the event that you are ultimately the prevailing party and desire to seek attorneys’ fees under 35 U.S.C. § 285.