Having brought a lawsuit for a patent who claims are found invalid under 35 U.S.C. § 101, and the Alice abstract idea test, is the plaintiff’s conduct “objectively baseless” justifying an award of attorney fees under 35 U.S.C. § 285? Given the unpredictability of how a court will rule on the question of patent-ineligibility, it is unsurprising that, especially in a close case, a court would decline to find an “exceptional case,” which is exactly what the court did in SungKyunKwan University v. LMI Technologies USA Inc., No. 3-16-cv-06966 (N.D. Cal., July 19, 2017).
The court had granted a motion to dismiss after a finding of patent-ineligibility of claims of U.S. Patent No. 7,957,639B2 (“Method and system for determining optimal exposure of structured light based 3D camera”). Looking at the only independent claim of the ’639 patent in light of the murky patent-eligibility caselaw, one can see how the plaintiff might have though it could prevail on an argument that the claim was directed to patent-eligible technology. Claim 1 recites:
A method for determining an optimal exposure of a structured light based three dimensional (3D) camera system including a projecting means for illuminating a predetermined pattern on a target object, an image capturing means for capturing an image of the target object with the pattern projected, and a processing means for reconstructing 3D data based on the captured image, wherein the method comprises the steps of:
obtaining an image of a target object with a predetermined pattern projected thereon, which is illuminated from a projecting means, and an image of the target object without a predetermined pattern projected thereon; and
determining automatically an optimal exposure level of the structured light based 3D camera system using said two kinds of images.
The court explained that, although it had “no difficulty granting LMI's motion to dismiss,” patent-eligibility law, “particularly on the meaning of abstractness,” had enough uncertainty that “that it would be difficult to find the University's approach to claim 1 of the ’639 patent objectively unreasonable or unusually weak.” Because “case law in this area is growing,” the court thought that “a future section 285 motion on a similar case might fare better.” However, at present, there could not be a showing under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014), that “even the evident flaws in the University's litigating position” made “its case ‘uncommon’ on the whole.”
Lessons for Practice
This case follows a general trend under which courts have been reluctant to award attorney fees or sanctions after granting a motion based on a finding of patent-ineligibility.