Until the law defining patentable subject matter under § 101 gains clarity, don’t expect attorney fees for cases dismissed under § 101. And if a court denies your motion before the opposing party even responds, that’s a sign you may have pushed too far. In West View Research v. BMW, No. 14-CV-2670-CAB (WVG) (S.D. Cal. Jan. 17, 2017), the court did just that, denying BMW’s request for attorney fees under 35 U.S.C § 285 after dismissing West View’s case for unpatentable subject matter under 35 U.S.C. § 101.
In an earlier order, the court granted BMW’s motion to dismiss the case because the patents were directed to an unpatentable abstract idea. West View had asserted two patents, U.S. Patent Nos. 8,301,456 and 8,311,834. The patents covered providing information between an elevator or other “personnel transport device” and a user’s mobile device. The court found that the claims were directed to the abstract idea of “identifying an authorized user and providing information to that user” and were therefore invalid under § 101.
Fresh off that victory, BMW asked for attorney fees under 35 U.S.C. § 285, which gives discretion to the court to award fees for “exceptional” cases. The court disagreed that this case was exceptional. BMW pointed to the court’s ruling in a related case that other patents owned by West View were abstract and therefore invalid, but according to the court, its prior decision “was not binding authority making it a foregone conclusion that the Court would arrive at a similar decision on BMW’s motion for judgment on the pleadings, which concerned two different patents.”
The court also relied on the continued uncertainty plaguing § 101 jurisprudence. As regular readers of this blog are aware, one needs a crystal ball to accurately predict the outcome of a motion under § 101. The court cites a District of Delaware decision to state, “Ultimately, ‘[g]iven the evolving state of the law, the § 101 analysis … is a difficult exercise,’ and ‘therefore, not an exercise that lends itself to, e.g., shifting fees pursuant to 35 U.S.C. § 285.’”
The court hardly felt lonely in rejecting a motion for fees after a § 101 dismissal based on the uncertainty of § 101 law; numerous other courts have come to the same conclusion. See O2 Media, LLC v. Narrative Science Inc., No. 15-CV-05129 (N.D. Ill. Jan. 3, 2017) (previously discussed on this blog); Garfum.com Corp. v. Reflections by Ruth, No. 14-5919 (D.N.J. Dec. 16, 2016) (reconsidering and overturning prior award of attorney fees; collecting cases); Recognicorp, LLC v. Nintendo Co. Ltd., Case No. C12-1873RAJ (W.D. Wash. July 16, 2016); YYZ, LLC v. Pegasystems, Inc., Civ. No. 13-581-SLR (D. Del. May 2, 2016); Clarilogic, Inc. v. FormFree Holdings Corp., Case No. 15-cv-41 DMS (S.D. Cal. Apr. 27, 2016).
Lesson for Practice
The lesson? If you get a case dismissed on § 101 grounds, you will need to point to some bad acts by the plaintiff to get attorney fees; clear invalidity under § 101 won’t be enough.