from the United States District Court for the District of
Delaware in No. 1:12-cv-01581-LPS, Chief Judge Leonard P.
Pierre Lahad, Susman Godfrey LLP, Houston, TX, argued for
plaintiff-appellant. Also represented by Richard W. Hess;
Parker C. Folse, III, Seattle, WA.
Roman Chaikovsky, Paul Hastings LLP, Palo Alto, CA, argued
for defendants-appellees. Also represented by David Beckwith,
Dyk, Taranto, and Stoll, Circuit Judges.
an appeal from the district court's finding of
exceptionality under 35 U.S.C. § 285 and its subsequent
grant of attorney fees. Because it is unclear whether the
district court applied the proper legal standard, we vacate
and remand for an analysis under the proper legal standard.
2010, Intellectual Ventures I LLC filed a complaint for
patent infringement against Trend Micro, Inc., Symantec
Corp., and two other defendants for infringement of claims in
U.S. Patent Nos. 5, 987, 610, 6, 073, 142, 6, 460, 050, and
7, 506, 155. The district court severed the claims against
Trend Micro from the claims against Symantec (hereinafter,
the "Trend Micro action" and the "Symantec
action") and set separate trials in each
'050 patent is directed to systems and methods for
filtering data files (such as email messages) based on their
content. The word "characteristic" appears in
asserted claims 9, 16, and 22 of the '050 patent.
claim construction in the Symantec action, the parties
disputed the meanings of several terms containing the word
"characteristic." Throughout claim construction and
pretrial proceedings in the Symantec action, Intellectual
Ventures's expert consistently opined that a
"characteristic" is "an attribute of the
document such as whether it contains a virus or is SPAM or
bulk email or includes copyrighted content."
J.A. 610 (emphasis added); see also J.A. 614 ¶
178 (expert declaration), 617 l. 19-618 l. 5 (deposition
testimony). The district court adopted Intellectual
Ventures's proposed constructions for the
"characteristic" claim terms in the Symantec
action. The district court also adopted its claim
construction order from the Symantec action in the Trend
jury trial against Symantec proceeded first. During
cross-examination at trial, Intellectual Ventures's
expert changed his opinion, testifying that bulk email was
not a characteristic for purposes of claim 9 of the '050
patent. J.A. 630-33. He further testified that he
"changed [his] opinion after [he] had a chance to
prepare for trial working with Intellectual Ventures'[s]
lawyers." J.A. 633 ll. 21-24. The jury found that
Symantec did not infringe the asserted claims of the '050
patent but that Symantec had infringed the asserted claims of
the '142 and '610 patents.
the completion of trial in the Symantec action, Trend Micro
moved for clarification of the district court's claim
constructions in light of the expert's changed opinion.
During the hearing on Trend Micro's motion, Intellectual
Ventures's counsel maintained that the expert had not
changed his opinion, despite the expert's clear trial
testimony to the contrary. J.A. 824. Intellectual Ventures
further argued that bulk email "never was" within
the scope of claim 9 under the court's claim
construction, because "bulk does not describe the
content." J.A. 811. The district court granted Trend
Micro's motion for clarification and included "bulk
email" as an example of a "characteristic" in
its revised constructions for the "characteristic"
terms in claims 9, 16, and 22. The district court reasoned
that it "learn[ed] only at the last minute" that
Intellectual Ventures understood the claim construction to
mean "that bulk email was excluded from claim 9 when it
was clearly in the other claims." J.A. 1077. This
"was a surprise inconsistent with the representations
from" Intellectual Ventures, and "not what [the
court] had intended" by its original claim construction.
the trial against Symantec, the district court also granted
leave for Symantec and Trend Micro to file motions for
judgment as a matter of law that the asserted patent claims
were invalid under 35 U.S.C. § 101. The district court
granted Trend Micro's motion in part, holding the
asserted claims of the '142 and '050 patents invalid.
We affirmed as to the '142 and '050 patents, and
further held the asserted claims of the '610 patent
invalid. Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1311 (Fed. Cir. 2016). After
granting Trend Micro's motion, the district court
canceled the trial in the Trend Micro action.
Micro then moved for attorney fees under § 285,
requesting that the court declare the case exceptional due to
the circumstances surrounding Intellectual Ventures's
expert's changed opinion. Ruling from the bench, the
district court granted Trend Micro's motion. The district
court concluded that Intellectual Ventures's conduct was
exceptional "solely with respect to this collection of
circumstances regarding [its expert's] changed
testimony." J.A. 58-59. Considering "whether the
case overall is exceptional," however, the district
court expressly "f[ou]nd it was not." J.A. 57. The
district court also concluded that "it would be wrong to
say that [Intellectual Ventures's] case was objectively