Searching over 5,500,000 cases.

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Intellectual Ventures I LLC v. Trend Micro Inc.

United States Court of Appeals, Federal Circuit

December 19, 2019


          Appeal from the United States District Court for the District of Delaware in No. 1:12-cv-01581-LPS, Chief Judge Leonard P. Stark.

          John Pierre Lahad, Susman Godfrey LLP, Houston, TX, argued for plaintiff-appellant. Also represented by Richard W. Hess; Parker C. Folse, III, Seattle, WA.

          Yar Roman Chaikovsky, Paul Hastings LLP, Palo Alto, CA, argued for defendants-appellees. Also represented by David Beckwith, Philip Ou.

          Before Dyk, Taranto, and Stoll, Circuit Judges.

          Stoll, Circuit Judge.

         This is 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.


         In 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 action.[1]

         The '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.

         During 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 Micro action.

         The 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.

         Following 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. Id.

         After 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.

         Trend 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 ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.