Case 5:18-md-02834-BLF Document 614-1 Filed 07/24/20 Page 1 of 7
`Case 5:18-md-02834—BLF Document 614-1 Filed 07/24/20 Page 1 of 7
`
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`

`

`Case 5:18-md-02834-BLF Document 614-1 Filed 07/24/20 Page 2 of 7
`PersonalWeb Technologies LLC v. EMC Corporation, Slip Copy (2020)
`
`2020 WL 3639676
`Only the Westlaw citation is currently available.
`United States District Court, N.D. California,
`San Jose Division.
`
`PERSONALWEB TECHNOLOGIES
`LLC, et al., Plaintiffs,
`v.
`EMC CORPORATION, et al., Defendants.
`
`Case No. 5:13-cv-01358-EJD
`|
`Signed 07/06/2020
`
`Attorneys and Law Firms
`
`Lawrence M. Hadley, Glaser Weil Fink Howard Avchen &
`Shapiro LLP, Los Angeles, CA, Samuel Franklin Baxter,
`McKool Smith P.C., Marshall, TX, for Plaintiff PersonalWeb
`Technologies LLC.
`
`Samuel Franklin Baxter, McKool Smith P.C., Marshall, TX,
`for Plaintiff Level 3 Communications, LLC.
`
`Cynthia D. Vreeland, William F. Lee, Marissa Ann Lalli,
`Peter Dichiara, Wilmer Cutler Pickering Hale and Dorr LLP,
`Boston, MA, Robert M. Galvin, Cortney Cilenn Hoecherl,
`Wilmer Cutler Pickering Hale & Dorr LLP, Palo Alto, CA,
`Robert Addy Van Nest, Keker, Van Nest & Peters LLP, San
`Francisco, CA, Michael Edwin Jones, Potter Minton PC,
`Tyler, TX, Thomas A. Brown, Emc Corporation, Hopkinton,
`MA, for Defendant EMC Corporation.
`
`Cynthia D. Vreeland, William F. Lee, Marissa Ann Lalli,
`Peter Dichiara, Wilmer Cutler Pickering Hale and Dorr LLP,
`Boston, MA, Robert M. Galvin, Cortney Cilenn Hoecherl,
`Wilmer Cutler Pickering Hale & Dorr LLP, Palo Alto, CA,
`Robert Addy Van Nest, Keker, Van Nest & Peters LLP, San
`Francisco, CA, Michael Edwin Jones, Potter Minton PC,
`Tyler, TX, for Defendant VMWare, Inc.
`
`ORDER DENYING DEFENDANTS’
`MOTION FOR ATTORNEYS’ FEES
`
`Re: Dkt. No. 91
`
`EDWARD J. DAVILA, United States District Judge
`
`*1 Before the Court is Defendants EMC Corporation and
`VMWare, Inc.’s motion for attorneys’ fees against Plaintiff
`PersonalWeb Technologies LLC. Defendants argue that is an
`“exceptional case” within the meaning of 35 U.S.C. § 285.
`After considering the Parties’ papers, the Court disagrees and
`DENIES Defendants’ motion for attorneys’ fees. 1
`
`1
`
`Pursuant to N.D. Cal. Civ. L.R. 7-1(b), this
`Court found this motion suitable for consideration
`without oral argument. See Dkt. 100.
`
`I. BACKGROUND
`Plaintiff owns a family of patents (the “True Name” patents)
`that claim methods for reliably identifying, locating, and
`processing data in a computer network. The Parties dispute
`most of the facts—they disagree as to why Plaintiff was
`formed, why Plaintiff filed suit in Texas, and why Plaintiff
`litigated this case. Most of these disputes are not relevant
`to the question at hand (i.e., whether this is an “exceptional
`case”). The Court thus focuses only the relevant disputes.
`
`to
`that Plaintiff was created
`Defendants first argue
`“weaponize the true name patents.” According to Defendants,
`Plaintiff’s parent company, Brilliant, controls the True Name
`patents and has (for the last two decades) used these
`patents as weapons to extract litigation settlements. Brilliant
`allegedly formed Plaintiff as a Texas-based subsidiary and
`transferred the True Name patents to Plaintiff, with the
`intent to (1) sue storage and cloud-computing companies in
`(2) the Eastern District of Texas. In an attempt to obscure
`its “real purpose,” Plaintiff went on a hiring spree and
`pretended to develop a product called “StudyPods,” which is
`an “educational social networking product” for university and
`college students. In reality, this product never sold. Plaintiff’s
`only source of revenue is litigation-based patent licensing.
`Indeed, according to Defendants, before Plaintiff initiated
`its suit against Defendants, Plaintiff required its employees
`to purge huge swaths of emails. This resulted in monetary
`sanctions. Plaintiff disputes this characterization and notes
`that courts have found Plaintiff to be “a legitimate company
`operating a legitimate business in East Texas.”
`
`On December 8, 2011, Plaintiff filed a complaint against
`Defendants, alleging that Defendants infringed eight True
`Name patents (the ’791, ’280, ’544, ’539, ’662, ’096, ’310
`and '442 patents). Plaintiff filed the action in the Eastern
`District of Texas, which Defendants allege was done to
`drive up litigation costs. Ultimately, Defendants successfully
`transferred the case to California, but not before having to
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`

`

`Case 5:18-md-02834-BLF Document 614-1 Filed 07/24/20 Page 3 of 7
`PersonalWeb Technologies LLC v. EMC Corporation, Slip Copy (2020)
`
`incur “significant expense.” Plaintiff argues that it filed the
`case in Texas to save resources, since it filed actions against
`multiple defendants, and this was the most convenient forum
`overall.
`
`Defendants’ Motion for Attorneys’ Fees (“Opp.”). The
`Parties agreed to two-step briefing schedule—the only issue
`before the Court is whether Plaintiff’s are liable for fees under
`35 U.S.C. § 285.
`
`After the action was transferred to this Court, Defendants filed
`petitions with the Patent Trial and Appeal Board (“PTAB”)
`requesting inter partes review (“IPR”) of six of the asserted
`patents (the ’791, ’280, ’544, ’539, ’662, and '096 patents).
`The PTAB instituted IPR proceedings. Thereafter, Defendants
`served their invalidity contentions and prior art references on
`Plaintiff to show that the True Name Patents were invalid.
`Plaintiff refused to (1) consent to a stay of the district court
`case pending the IPR proceedings and (2) terminate the suit.
`Again, Defendants had to incur the costs of bringing motions
`before the Court to stay the case. The Court agreed with
`Defendants and stayed the case pending IPR proceedings. On
`May 15, 2014, the PTAB invalidated all challenged claims of
`all six patents in the IPR petitions brought by Defendants, on
`every instituted ground of invalidity. This was affirmed by the
`Federal Circuit. The case remained stayed before this Court
`pending IPR brought by Apple Inc., covering all asserted
`claims of the '310 patent. The PTAB twice determined that
`the asserted claims of the '310 patent were unpatentable.
`However, the Federal Circuit reversed on the narrow ground
`that the particular prior art at issue did not sufficiently
`disclose comparing the content-based identifier to a plurality
`of identifiers (as opposed to a single identifier) for purposes
`of authorization. See PersonalWeb Techs., LLC v. Apple, Inc.,
`917 F.3d 1376, 1382–83 (Fed. Cir. 2019).
`
`*2 After the Federal Circuit’s decision, on June 24, 2019,
`this Court lifted the stay and the litigation resumed for the
`two remaining patents: the ’310 and '442 patents. See Dkt.
`62. Plaintiff dismissed with prejudice the '442 patent from the
`action but continued to pursue its claims on the '310 patent.
`On November 22, 2019, Defendants moved for judgment
`on the pleadings on the '310 patent, arguing that judgment
`was warranted because the asserted claims were drawn on
`non-patentable subject matter under
`35 U.S.C. § 101.
`Ultimately, the Court agreed and held the '310 patent invalid
`on
`Section 101 grounds.
`
`Defendants argue, based on this history, that they are
`entitled to prevailing party attorneys’ fees. See Motion
`for Attorneys’ Fees (“Mot.”), Dkt. 91; see also Reply re
`Motion for Attorneys’ Fees (“Reply”), Dkt. 99. Plaintiff’s
`oppose Defendants’ motion. PersonalWeb’s Opposition to
`
`II. LEGAL STANDARD
`Under the Patent Act, “[t]he court in exceptional cases may
`award reasonable attorney fees to the prevailing party.” 35
`U.S.C. § 285. An exceptional case 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, LLC v. ICON Health
`& Fitness, Inc., 572 U.S. 545, 554 (2014). Courts consider
`“the totality of the circumstances” when deciding whether a
`case is “exceptional.” Id. In making the determination, courts
`may consider factors such as “frivolousness, motivation,
`objective unreasonableness (both in the factual and legal
`components of the case) and the need in particular
`circumstances to advance considerations of compensation
`and deterrence.”
`Id. at 554 n.6 (quotation marks and
`citation omitted). Under this test, “a case presenting either
`subjective bad faith or exceptionally meritless claims may
`sufficiently set itself apart from mine-run cases to warrant a
`fee award.”
`Id. at 555.
`
`Courts do not award attorney’s fees as “a penalty for failure
`to win a patent infringement suit.”
`Id. at 548 (quotation
`marks and citation omitted). “The legislative purpose behind
`§ 285 is to prevent a party from suffering a ‘gross injustice,’ ”
`not to punish a party for losing. Checkpoint Sys., Inc. v. All-
`Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir. 2017); see also
`Vasudevan Software, Inc. v. Microstrategy, Inc., 2015 WL
`4940635, at *5 (N.D. Cal. Aug. 19, 2015) (“[O]ther courts in
`this district have suggested that merely taking an aggressive
`stance while positing stretched or unsuccessful infringement
`theories does not, without more, warrant fee-shifting.”);
`TransPerfect Global, Inc. v. MotionPoint Corp., 2014 WL
`6068384, at *8 (N.D. Cal. Nov. 13, 2014) (finding “frivolous
`arguments” and other missteps, only some of which were
`inadvertent, too minor to justify a fee award); Kreative Power,
`LLC v. Monoprice, Inc., 2015 WL 1967289, at *5 (N.D. Cal.
`Apr. 30, 2015).
`
`III. DISCUSSION
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`

`

`Case 5:18-md-02834-BLF Document 614-1 Filed 07/24/20 Page 4 of 7
`PersonalWeb Technologies LLC v. EMC Corporation, Slip Copy (2020)
`
`Defendants argue that Plaintiff used both unreasonable
`litigation tactics and that Plaintiff’s case lacked “substantive
`strength.” Mot. at 17. The Court addresses each argument in
`turn.
`
`A. Manner of Litigation
`
`Defendants first argue that Plaintiff used “unreasonable” and
`improper litigation tactics. Mot. at 17. Defendants maintain
`that attorneys’ fees are proper here because Plaintiff routinely
`litigated in a way that unreasonably maximized Defendants’
`costs of defense. Id. Defendants use eight examples to
`prove their argument: (1) Plaintiff was a “phony company”
`established in Tyler, Texas that was created to establish ties
`in a favorable forum to litigate infringements of the True
`Name patents; (2) Plaintiff deleted emails that it was under
`a duty to preserve; (3) Plaintiff failed to join a co-owner
`of the asserted patents, Level 3, and required Defendants to
`expend money on motion practice due to lack of standing;
`(4) Plaintiff opposed Defendants’ motion to transfer to this
`district even though Brilliant, the prior owner of the True
`Names patents, had previously said being required to litigate
`outside California would cause “substantial hardship and
`burden” due to the strong ties of all the parties, the patents,
`and the evidence to California; (5) Plaintiff refused to consent
`to a stay pending IPR proceedings, which forced Defendants
`to litigate the stay; (6) Plaintiff attempted to delay the
`conclusion of the IPR proceedings by filing the same broad
`evidentiary objections in all six trials, which caused the PTAB
`to threaten Plaintiff with sanctions; (7) Plaintiff opposed a
`stay of discovery pending resolution of Defendants’ motion
`for judgment on the pleadings for the '310 patent; and (8)
`Plaintiff brought the same weak claims against more than fifty
`companies in disparate industries in different jurisdictions.
`Mot. at 18. Neither example is persuasive.
`
`*3 The purpose of Section 285, unlike that of Federal Rule
`of Civil Procedure 11, is “not to control the local bar’s
`litigation practices ... [it] is remedial and for the purpose of
`compensating the prevailing party for the costs it incurred
`in the prosecution or defense of a case where it would be
`grossly unjust, based on the baselessness of the suit or because
`of the litigation or Patent Office misconduct, to require it to
`bear its own costs.”
`Highmark, Inc. v. Allcare Health
`Mgmt. Sys., Inc., 687 F.3d 1300, 1309 n.1 (Fed. Cir. 2012),
`vacated on other grounds by,
`572 U.S. 559 (2014); see also
`
`Octane, 572 U.S. at 555 (“[S]anctionable conduct is not
`the appropriate benchmark.”).
`
`While Octane liberalized the standard for fee shifting, it also
`confined the liberalized standard to “rare” and “extreme”
`cases involving unreasonable conduct. See
`572 U.S.
`at 555. Indeed, post-Octane decisions awarding fees have
`generally relied on egregious behavior. See, e.g. Location
`Based Servs., LLC v. Niantic, Inc., 2018 WL 7569160, at
`*3 (N.D. Cal. Feb. 16, 2018) (requiring “shenanigan-filled”
`cases that they stand out from the rest);
`Intellect Wireless,
`Inc. v. Sharp Corp., 2014 WL 2443871 (N.D. Ill. May 30,
`2014) (awarding fees based on false declarations before the
`PTO, without which, the court concluded, the plaintiff would
`not have obtained the patents at issue);
`Cognex Corp.
`v. Microscan Sys., Inc., No. 13–2027, 2014 WL 2989975
`(S.D.N.Y. June 30, 2014) (granting motion for attorneys’
`fees for post-trial motions that re-litigated issues decided
`during trial); Precision Links Inc. v. USA Products Group,
`Inc. No. 08–576, 2014 WL 2861759 (W.D.N.C. June 24,
`2014) (awarding fees to the defendants for costs related
`to the plaintiff’s preliminary injunction, which was based
`on a rejected theory of liability); see also Network Prot.
`Sciences, LLC v. Fortinet, Inc., 2013 WL 4479336 (N.D. Cal.
`Aug. 20, 2013) (pre-Octane decision) (holding in abeyance a
`likely award of damages based on findings that the plaintiffs
`knew before filing the suit that they may not own the
`patent, manufactured venue in Texas via a sham corporate
`façade, asserted an unreasonable number of patent claims,
`sandbagged the defendant with newly-produced documents
`and infringement contentions, and “played fast and loose with
`the rules of being admitted to practice pro hac vice”). This
`is to say, something beyond “unnecessary” motion practice
`is necessary; the motion practice must be demonstrably
`frivolous or in bad faith. See
`ReedHycalog UK, Ltd. v.
`Diamond Innovations Inc., 2010 WL 3238312, at *7 (E.D.
`Tex. Aug. 12, 2010) (“The Court is concerned by the repeated
`instances of litigation misconduct committed by Diamond
`Innovations, particularly its attempt to conceal relevant and
`discoverable but damaging documents.” (emphasis added)).
`
`At no point, or in aggregate, did Plaintiff’s conduct rise
`to litigation misconduct. Defendants distort and take out
`of context Plaintiff’s actions. First, the court in Texas
`already rejected Defendants’ arguments that Plaintiff is
`an illegitimate entity. Indeed, the Eastern District Court
`found that “PersonalWeb is a legitimate company operating
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`

`

`Case 5:18-md-02834-BLF Document 614-1 Filed 07/24/20 Page 5 of 7
`PersonalWeb Technologies LLC v. EMC Corporation, Slip Copy (2020)
`
`a legitimate business in East Texas.” Dkt. 97-2. Second,
`Plaintiff has already been sanctioned for the deletion of
`emails. See Octane, 572 U.S. at 555 (sanctionable conduct
`is not the benchmark). Defendants have not shown a repeated
`instance of deletion or failure to engage in discovery. Cf.
`ReedHycalog UK, Ltd., 2010 WL 3238312, at *7.
`Third, the failure to join Level 3 at the outset does not
`amount to “egregious” conduct. Moreover, as noted by
`Plaintiff, Defendants never asked Plaintiff to join Level 3
`before litigating the issue. Defendants could have avoided
`that motion practice by attempting resolution with Plaintiff
`first. Fourth, venue in Texas was proper; the court transferred
`the case here based on forum non conveniens considerations.
`It was thus legally proper to bring suit in the Eastern
`District of Texas—the Texas court did not find that Plaintiff
`manufactured venue. Plaintiff will not be penalized for
`following the Federal Rules of Civil Procedure or for
`engaging in strategic litigation.
`
`*4 Fifth, refusing to consent to a stay pending IPR does
`not qualify as “egregious” conduct, particularly in this case
`since at the time that Defendants sought IPR, there was
`scarce law on stays pending IPR. 2 Sixth, even while Plaintiff
`may have filed broad evidentiary objections without basis
`in the IPRs, simply engaging in obnoxious conduct is not
`sufficient. There is no showing that these objections hindered
`or delayed the IPRs such that they could provide a basis
`for “egregious” conduct. Seventh, opposing a discovery
`stay pending resolution of the
`Section 101 motion does
`not qualify as egregious conduct. Counsel is supposed to
`zealously defend its client’s interests; engaging in discovery
`advances Plaintiff’s case. Furthermore, at the time the stay
`was opposed, neither party knew the Court would grant
`Defendants’ motion for judgment on the pleadings. Finally,
`the Court is unclear how the separate MDL proceedings
`affect Defendants or this case. Defendants do not explain
`how Plaintiff’s other cases make this case unreasonable. If
`anything, Plaintiff’s litigation of the patents suggests that
`Plaintiff was being reasonable in this case. See
`SFA Sys.,
`LLC v. Newegg Inc., 793 F.3d 1344, 1350 (Fed. Cir. 2015)
`(“[A] pattern of litigation abuses characterized by the repeated
`filing of patent infringement actions for the sole purpose of
`forcing settlements, with no intention of testing the merits of
`one's claims, is relevant to a district court's exceptional case
`determination under § 285.”).
`
`2
`
`Defendants rely on Munchkin, Inc. v. Luv N’
`Care, Ltd., 2018 WL 7504404 (C.D. Cal. Dec.
`27, 2018) to support their contention that failing
`to consent to a stay pending IPR is sufficient
`“egregious” conduct. The Court does not read
`Munchkin to say this. Rather, the court seemed to
`focus on the continued “all out litigation” during
`IPR and the court was troubled by the fact that the
`plaintiff attempted to avoid final judgment after all
`claims were invalidated by seeking dismissal under
`Federal Rule of Civil Procedure 41.
`Accordingly, Plaintiff has not engaged in a manner of
`litigation that was unreasonable, questionable, or overly
`aggressive. The Court finds Plaintiff’s litigation tactics to be
`done in a good-faith effort to advance its position.
`
`B. Substantive Strength of the Claims
`
`Defendants next argue that fees should be awarded because
`Plaintiff’s patent claims were “exceptionally weak on the
`merits.” Mot. at 19–22. Defendants support their argument
`that Plaintiff’s claims were substantively weak by noting that:
`(1) all asserted claims in six of the eight patents at issue
`were invalidated in the IPR process; (2) Plaintiff voluntarily
`dismissed (with prejudice) the seventh asserted patent; and
`(3) this Court invalidated the eighth (and final) asserted
`patent pursuant to
`35 U.S.C. § 101. Mot. at 19. The Court
`disagrees.
`
`“In Octane Fitness, the Supreme Court made clear that it
`is the ‘substantive strength of the party’s litigating position’
`that is relevant to an exceptional case determination, not
`the correctness or eventual success of that position.”
`SFA
`Sys., 793 F.3d at 1348 (emphasis added) (quoting Octane
`Fitness, 572 U.S. at 554); see also Location Based Servs.,
`LLC, 2018 WL 7569160, at *1 (noting that simply taking
`an aggressive litigation stance while advancing stretched
`or unsuccessful infringement theories does not warrant fee
`shifting). In determining whether a case is substantively
`weak, courts look for objective baselessness or frivolousness,
`not whether a patent originally allowed by a patent examiner
`was later invalidated.
`Hockeyline, Inc. v. STATS LLC,
`2017 WL 1743022, at *3 (S.D.N.Y. Apr. 27, 2017); Location
`Based Servs., LLC, 2018 WL 7569160, at *2 (“As to the
`substantive strength (or weakness) of a party’s litigation
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
`
`

`

`Case 5:18-md-02834-BLF Document 614-1 Filed 07/24/20 Page 6 of 7
`PersonalWeb Technologies LLC v. EMC Corporation, Slip Copy (2020)
`
`position, courts in this district tend to award fees when a
`plaintiff persists with a clearly untenable claim, or adduces
`no evidence in support of its position.”). An objectively
`baseless or frivolous patent case is one “that no reasonable
`litigant could reasonably expect success on the merits.”
`Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d
`1306, 1327 (Fed. Cir. 2013). Courts have found such objective
`baselessness when, for example, a plaintiff fails to conduct
`a proper prefiling investigation of its infringement claims
`or refuses to dismiss after receiving conclusive evidence of
`noninfringement in code or schematics. See
`Yufa v. TSI
`Inc., 2014 WL 4071902, at *3–5, 8 (N.D. Cal. Aug. 14, 2014).
`
`*5 Defendants rely on Munchkin, Inc. to support their
`argument that IPR invalidation supports a finding of
`substantive weakness. The Federal Circuit just rejected this
`argument and reversed Munchkin. See Munchkin, Inc. v. Luv
`n’ Care, Ltd. (Munchkin II), 960 F.3d 1373 (Fed. Cir. 2020). 3
`There, the Federal Circuit noted “[t]hat [the plaintiff’s] patent
`was ultimately held unpatentable does not alone translate to
`finding its defense of the patent unreasonable.” Id. (citing
`SFA Sys., 794 F.3d at 1348). “[D]uly issued patents are
`presumed valid.” See
`35 U.S.C. § 282(a); Microsoft
`Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011). Hence, it
`was not unreasonable for Plaintiff to rely on the validity of
`the ’791, ’280, ’544, ’539, ’662, and '096 patents. Although
`the PTAB and the Federal Circuit ultimately determined the
`claims at issue to be invalid, Plaintiff’s arguments were not
`frivolous. The determination that prior art invalidated the six
`patents was undoubtedly a “close call.” The Federal Circuit
`confirmed this in PersonalWeb Techs., LLC v. Apple, Inc.,
`917 F.3d at 1382, where it found that the same prior art did
`not invalidated the '310 patent. Moreover, the True Name
`patents have been licensed dozens of time over a fifteen-year
`period, which demonstrates that others consider the patents
`to be valid. Lastly, Plaintiff engaged in prefiling investigation
`(a fact which Defendants do not dispute). Shortly after filing
`this case, Plaintiff provided extensive, detailed infringement
`claim charts comparing every limitation in the asserted claims
`against each accused product. Cf.
`Taurus IP, 726 F.3d at
`1327 (awarding attorney fees because the written description
`provided no support for the plaintiff’s “unreasonably broad
`construction”);
`Yufa, 2014 WL 4071902, at *3–5, 8.
`
`3
`
`At the time of this Order, Munchkin II did not have
`page numbers. For this reason, this Order does not
`provide pin cites.
`The Court likewise does not see how Plaintiff’s voluntary
`decision to drop the '442 patent shows frivolous litigation.
`If anything, this supports Plaintiff’s argument that they only
`engaged in necessary litigation.
`
`Lastly, Defendants’ reliance on My Health to support its
`argument that an adverse
`Section 101 decision alone can
`warrant an exceptional case finding is misplaced. Mot. at 21–
`22. The My Health plaintiff claimed something that had “been
`declared ineligible long before [the plaintiff] filed its 2016
`lawsuits.” My Health, Inc. v. ALR Techs., Inc., 2017 WL
`6512221, at *4 (E.D. Tex. Dec. 19, 2017) (“By the time [the
`plaintiff] filed its 2016 lawsuits, guidance from the Federal
`Circuit regarding claims in this category had mounted to a
`level that would give any litigant a reasonably clear view of
`§ 101’s boundaries.”.). Thus, in My Health, there was no
`credible argument that the patent fell into one of the eligible
`exceptions defined by the Federal Circuit. Id. Moreover, the
`plaintiff had a history of settling with defendants, in a specific
`range, so as to “exploit[ ] the high cost to defend complex
`litigation to extract a nuisance value settlement.”
`Id. at *5.
`
`In contrast here, Plaintiff presented credible arguments
`(which the Court ultimately rejected) to show that their
`claims fit within eligible exceptions defined by the Federal
`Circuit. See Location Based Servs., 2018 WL 7569160 at
`*2 (“The law under
`§ 101 is developing and quickly
`changing, and the question of whether a patent is directed at
`an abstract idea or whether it discloses an innovative concept
`is not easy to answer.”); see also id. at *3 (finding that
`the plaintiff presented good faith arguments for the patents’
`validities); Deckers Outdoor Corp. v. Romeo & Juliette,
`Inc., 2016 WL 5842187, at *3 (C.D. Cal. Oct. 5, 2016)
`(“Generally, where a party has set forth some good faith
`argument in favor of its position, it will generally not be found
`to have advanced exceptionally meritless claims.” (citation
`and internal quotation marks omitted)). Thus, while the Court
`ultimately found the claims of the '310 patent to be directed
`to an abstract idea, without an inventive concept, the case was
`not “exceptionally meritless.” See
`Baggage Airline Guest
`Servs., Inc. v. Roadie, Inc., 2020 WL 757891, at *2 (D. Del.
`Feb. 14, 2020).
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
`
`

`

`Case 5:18-md-02834-BLF Document 614-1 Filed 07/24/20 Page 7 of 7
`PersonalWeb Technologies LLC v. EMC Corporation, Slip Copy (2020)
`
`For these reasons, this case does not stand “out from others
`with respect to the substantive strength of a party’s litigation
`position” and the Court finds that Plaintiff’s case was not
`frivolous. Octane Fitness, 572 U.S. at 554; Hockeyline,
`2017 WL 1743022, at *4.
`
`IV. CONCLUSION
`
`*6 Defendants have not shown that this is an “exceptional”
`case. See Octane Fitness, 572 U.S. at 554. The Court thus
`DENIES Defendants’ motion for attorneys’ fees.
`
`IT IS SO ORDERED.
`
`All Citations
`
`Slip Copy, 2020 WL 3639676
`
`End of Document
`
`© 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`