Continuing to Pursue Claim Construction Arguments Does Not Make Case Exceptional

Continuing to Pursue Claim Construction Arguments Does Not Make Case ExceptionalThe Federal Circuit recently affirmed the decision of the Federal District Court for the District of Minnesota denying attorney fees to Wright Medical Technology, Inc.  Spineology, Inc. had alleged Wright’s X-REAM® expandable reamer product infringed several claims of its patent.  The alleged infringement hinged on the claim construction of the term “body.” Initially, the district court declined to adopt either party’s construction of the term. On cross-motions for summary judgment, however, the court construed “body” consistent with Wright’s non-infringement position and granted Wright’s motion. Wright then moved for attorney fees, arguing Spineology’s proposed construction of “body,” its damages theories, and its litigation conduct rendered the case exceptional under 35 U.S.C. § 285. The district court denied Wright’s motion, and the Federal Circuit ultimately affirmed that decision. See Spineolog, Inc. v. Wright Medical Technology, Inc. (Before PROST, DYK and MOORE).

An exceptional case under § 285 “is one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Octane Fitness, LC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). However, as the Federal Circuit explained, “fee awards are not to be used as a penalty for failure to win a patent infringement suit.” (citing Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir. 2017)).

On appeal, Wright argued Spineology’s proposed construction of the term “body” was meritless, and its continued pursuit of such a meritless construction after the court declined to adopt its claim construction order was unreasonable. The Federal Circuit disagreed, reasoning Spineology’s continued pursuit of its claim construction was not so unreasonable as to render the case exceptional. “Wright cannot fairly criticize Spineology for continuing to pursue a construction not adopted by the district court in the claim construction order, since the district court declined to adopt Wright’s proposed construction as well,” Judge Moore wrote for the panel. “We see no abuse of discretion here.”


Moreover, Wright argued the district court should have, as part of its exceptional case determination, reviewed the parties’ various expert reports on damages and assessed the merits of Spineology’s damages theories. According to Wright, Spineology’s expert’s miscalculation of damages based on his improper reliance on the entire market value rule and a flawed royalty rate merited a determination of an exceptional case. The Federal Circuit, however, noted Spineology’s damages request was supported by case law and, therefore, was not without merit. Further, because the district court decided the case on summary judgment, the merits of Spineology’s requested damages were never reached. The Federal Circuit emphasized its unwillingness to “litigate to resolution every issue mooted by summary judgment to rule on a motion for attorney fees.” The Federal Circuit also cautioned “future litigants to tread carefully in their complaints about district courts not doing enough.”

Finally, Wright challenged as “exceptional” Spineology’s conduct during litigation. Wright alleged Spineology attempted to mislead the district court by (1) cropping and annotating a figure, which undermined its proposed construction of “body,” and (2) withholding its expert’s measurements of the accused product. In siding with Spineology again, the Federal Circuit explained the district court was better positioned to determine an exceptional case.

The Federal Circuit also noted the district court “had no obligation to write an opinion that reveals [its] assessment of every consideration.”

Take Away

When a court chooses not to adopt either party’s claim construction arguments, continued pursuit of the proposed claim construction does not necessitate a finding of an exceptional case. Further, a district court need not decide issues mooted by summary judgment to determine whether a case is exceptional. 


Image Source: Deposit Photos.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Dustin Weeks is a Partner in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

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Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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