{"id":2076,"date":"2018-06-11T13:20:36","date_gmt":"2018-06-11T17:20:36","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2076"},"modified":"2018-07-01T14:26:43","modified_gmt":"2018-07-01T18:26:43","slug":"invalidity-contentions-citing-32-prior-art-references-with-only-general-explanations-and-inconsistent-and-unilluminating-claim-charts-not-enough-to-put-patent-owner-on-notice-of-the-weakness","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2076","title":{"rendered":"Invalidity Contentions Citing 32 Prior Art References with Only General Explanations, and “Inconsistent and Unilluminating”\u00a0Claim Charts Not Enough to Put Patent Owner on Notice of the Weakness of its Position"},"content":{"rendered":"

In Stone Basket Innovations, LLC v. Cook Medical LLC<\/a>, [2017-2330] (June 11, 2018), the Federal Circuit affirmed the denial of attorneys fees to defendant under\u00a035 U.S.C.\u00a0\u00a7 285 after plaintiff dismissed its\u00a0complaint for infringement of U.S. Patent No.\u00a06,551,327 on a basket-type stone extraction medical device\u00a0used to remove stones from biological systems, when defendant instituted in inter partes review.<\/p>\n

This appeal involved two main issues: whether\u00a0the District Court erred in its assessment of: (1) the\u00a0substantive strength of Stone\u2019s litigating position, and\u00a0(2) the alleged pattern of vexatious litigation by Stone.\u00a0 On the first issue, the Federal Circuit held that the District Court did not abuse its discretion in finding\u00a0that the substantive strength of Stone\u2019s ultimately\u00a0non-prevailing litigating position did not warrant an\u00a0award of fees. The Federal Circuit held that the patent owner was not put on clear notice of the invalidity of its patent by defendants invalidity contentions listing 32 prior art references with general statements of invalidity, and “inconsistent and unilluminating”\u00a0claim charts.\u00a0 The Federal Circuit further noted that the invalidating prior art used in the inter partes review was listed on the face of the patent, creating a\u00a0presumption\u00a0of good faith in asserting its patent rights against Cook.\u00a0 The Federal Circuit likewise found the statements of the inventor to be taken out of context, and in any even irrelevant because a post-issuance statement regarding\u00a0a single element of a claimed invention does not\u00a0establish invalidity.\u00a0 Lastly, the Federal Circuit noted the district court’s explanation that following the service of the invalidity contentions, Cook took no action to ensure a rapid termination of the instant litigation.\u00a0 Cook complained that the prevailing party’s conduct is not a proper consideration, but the Federal Circuit said it was a proper part of the totality of the circumstances.<\/p>\n

The Federal Circuit added that\u00a0Cook\u2019s failure to provide early, focused, and\u00a0supported notice of its belief that it was being subjected to\u00a0exceptional litigation behavior further supports the\u00a0District Court\u2019s determination that Stone\u2019s litigating\u00a0position did not \u201cstand out\u201d from others.<\/p>\n

The Federal Circuit concluded that\u00a0absent any evidence that Stone\u2019s litigating\u00a0position was frivolous when filed or at any point before it\u00a0filed for dismissal, it was not persuaded the District\u00a0Court abused its discretion in determining Stone\u2019s case did not meet the standard for an award of attorney fees.\u00a0 The Federal Circuit said\u00a0a party cannot simply hide under a rock,\u00a0quietly documenting all the ways it\u2019s been wronged, so\u00a0that it can march out its “parade of horribles” after all is\u00a0said and done.\u201d<\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Stone Basket Innovations, LLC v. Cook Medical LLC, [2017-2330] (June 11, 2018), the Federal Circuit affirmed the denial of attorneys fees to defendant under\u00a035 U.S.C.\u00a0\u00a7 285 after plaintiff dismissed its\u00a0complaint for infringement of U.S. Patent No.\u00a06,551,327 on a basket-type … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[44],"tags":[],"class_list":["post-2076","post","type-post","status-publish","format-standard","hentry","category-attorneys-fees"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2076","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2076"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2076\/revisions"}],"predecessor-version":[{"id":2077,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2076\/revisions\/2077"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2076"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2076"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2076"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}