BIAX Corporation v. NVIDIA Corporation et al

Filing 1037

ORDER: Defendants' Motion for Recovery of Attorneys' Fees and Expenses Incurred After Claim Construction 981 is GRANTED in part and DENIED in part. Defendants are entitled to an award of fees and costs incurred between June 23, 2011 and March 26, 2012, pursuant to 35 U.S.C. § 285, in an amount to be determined in a subsequent order. By Judge Philip A. Brimmer on 3/30/13.(pabsec)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 09-cv-01257-PAB-MEH
BIAX CORPORATION,
Plaintiff,
v.
NVIDIA CORPORATION,
SONY COMPUTER ENTERTAINMENT AMERICA, INC., and
SONY ELECTRONICS INC.,
Defendants.
_____________________________________________________________________
ORDER
_____________________________________________________________________
This matter is before the Court on Defendants’ Motion for Recovery of Attorneys’
Fees and Expenses Incurred After Claim Construction [Docket No. 956/981] filed by
defendants Sony Computer Entertainment America, Inc. and Sony Electronics Inc.
(collectively, “the Sony defendants”) and NVIDIA Corporation (“NVIDIA”). The Court’s
jurisdiction is based on 28 U.S.C. §§ 1331 and 1338(a).
I. BACKGROUND
Plaintiff BIAX Corporation (“BIAX”) brought suit against NVIDIA and the Sony
defendants, alleging that defendants infringed and induced infringement of U.S. Patent
No. 5,517,628 (the “’628 Patent”) and U.S. Patent No. 6,253,313 (the “’313 Patent”)
(collectively, the “patents”), both assigned to BIAX.1 As stated in the patents’ shared
1

Certain facts are drawn from the Court’s Order [Docket No. 941] on defendants’
motions for summary judgment of non-infringement [Docket Nos. 701/729, 872/876,
882/887]. Each motion for summary judgment has been filed under seal, creating two
separate docket entries: one public and one restricted.

specification, the “invention generally relates to parallel processor computer systems
and, more particularly, to parallel processor computer systems having software for
detecting natural concurrencies in instruction streams and having a plurality of
processor elements2 for processing the detected natural concurrencies.” ’313 Patent
col. 1 ll. 18-23. As the Court has previously noted, see Docket No. 231 at 3, the
invention relies on processor elements that access register files containing relevant
information for subsequent processing of instructions. Included within the teachings of
the inventions are condition code register files containing multiple, addressable
condition code registers,3 each of which contains condition codes indicating whether the
results of executed instructions meet certain conditions. The condition codes can
include indications of whether the next instruction in a series should be executed or
whether a branch must be taken, requiring a jump to an earlier or later instruction. The
provision of multiple, addressable condition code registers is a central feature of the
claimed invention.
BIAX accused the Sony defendants of infringing the patents through the sale of
products containing RSX graphics processor chips and GeForce NV40 and NV50
processor chips employing a plurality of condition code registers. Within each RSX chip

2

In the Order Regarding Claim Construction, the Court construed “processor
element” to be “a device that is capable of interpreting and executing instructions, a
quality it shares with all other processor elements, and which does not retain context
information after the execution of an instruction or a set of instructions.” Docket No.
231 at 47.
3

A “condition code register” is “a special purpose register for storing a condition
code.” Docket No. 231 at 47.
2

are eight “vertex shaders” and six “fragment shaders.” Each vertex shader and
fragment shader contains an accused processor element or first circuit4 and multiple
accused condition code registers and condition storage.5 The accused processor
elements or first circuits found in one RSX shader cannot access condition code
registers and condition storage found in any other shader. BIAX’s claims against
NVIDIA are based on NVIDIA’s production of the NV40 and NV50 chips. NV40 chips
operate in the same way for purposes of BIAX’s infringement allegations. NV50 chips
contain accused processor elements and first circuits which cannot access condition
code registers in other processors6 found in the NV50 chip.
Prior to the Court’s June 21, 2010 Order Regarding Claim Construction,7
defendants proposed that the Court construe the term “condition code register” to mean
“a special purpose register for storing a condition code, which is shared by all processor
elements.” Docket No. 231 at 35. The Court declined to incorporate the phrase “which
is shared by all processor elements” into its construction because it found that “Claim 1
provides for the possibility of a single processor element,” in which case “the register
[would not be] shared by all processor elements since there would just be one.” Docket

4

A “first circuit” is “an assemblage of electronic elements that receives an
opcode of a first type of instruction and generates a set of at least one condition value.”
Docket No. 231 at 48.
5

“Condition storage” is “a memory location designed to store condition code
values.” Docket No. 231 at 48.
6

A “processor” is the same as a “processor element.” See Docket No. 231 at 47.

7

The claim construction applied to claims 1, 9 through 14, 16, 17, 20, 23, 25, 26,
and 29 of the ’628 Patent and claims 3 through 5, 8, 9, 12, 14 through 16, 19 through
21, and 24 of the ’313 Patent. Docket No. 231 at 4-6.
3

No. 231 at 37. It went on to explain that,
while defendants are correct that any processor element is able to access
any condition code register, their argument to include within the definition of
“condition code register” a reference to multiple processor elements sharing
the condition code register is a more limited definition than Claim 1 requires.
Because that feature is separately provided for in the claim language, it need
not be included within the definition of the component of the system called
a “condition code register.”
Id. In construing the term “condition storage,” the Court again rejected defendants’
request to include a clause indicating that condition storage is “shared by all processor
elements.” Docket No. 231 at 44. The Court explained that including this phrase in the
claim construction was unnecessary because “the claim language clearly provides that
the ‘condition code storages’ are accessible by ‘each of said processor elements.’ . . .
But, to the extent there is any dispute over whether, despite the foregoing, condition
code storage locations are shared by all processor elements, the Court rules that they
are.” Id.
On August 11, 2010, defendants filed a motion for clarification of the Court’s
construction of the terms “condition code register” and “condition storage.” Docket No.
335. Defendants argued that the Court should amend its construction to make explicit
its finding that condition code registers and condition storage were shared by all
processors. Docket No. 335 at 1-2. On October 28, 2010, the Court denied
defendants’ motion, explaining that the claim construction was unambiguous because
the claim language itself provided that each processor could access each condition
code register and condition storage location. Docket No. 455 at 1-2. The Court
concluded that:
defendants’ real concern appears to be that, because the Court’s
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construction of the terms did not include specific reference to an attribute of
the processor element, plaintiff might attempt to present constructions or
arguments to a jury that are inconsistent with the Court’s unambiguous
rulings. The Court, however, ruled that it is unnecessary to include the
attribute of shared access in the construction of the two terms because such
a quality was already clearly provided for by the claims at issue. Plaintiff has
expressed no confusion regarding that ruling and has not sought clarification.
The Court, therefore, sees little risk that plaintiff will attempt to argue at trial
that processor elements are not able to access any condition code registers
or condition storage locations.
Docket No. 455 at 2.
Defendants’ June 23, 2011, deposition of Dr. Edward Davidson, one of BIAX’s
expert witnesses, yielded the following exchanges:
Q. In forming your infringement opinions with respect to the ’628 patent, did
you apply a requirement that the processor element is capable of accessing
any of the condition code registers? . . .
A. No, I did not apply that.
***
Q. In forming your infringement opinions for the ’313 patent, did you apply
a requirement that condition code storage locations are shared by all
processor elements?
A. By all processor elements in the RSX? No.
***
Q. Do we agree, then, that if there is a requirement that processor elements
need to access any of the condition code registers or condition code storage
locations in the chip, then RSX doesn’t infringe?
A. It doesn’t infringe that requirement, no. But there is no such requirement.
Docket No. 956-2 at 6, ll.15-24; 7, ll.4-9; and 8, ll.12-18.
On August 3, 2011, the Sony defendants filed a motion for summary judgment of
non-infringement [Docket Nos. 701/729]. On November 2, 2011, NVIDIA filed a motion
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for summary judgment of non-infringement [Docket Nos. 872/876]. Defendants argued
that summary judgment was warranted because the accused devices did not satisfy the
Court’s construction of “condition code register” and “condition storage.”
In its response [Docket Nos. 757/766] filed on September 9, 2011, BIAX
admitted that “[a]ccused ‘condition code registers’ and ‘condition storage’ found in any
one RSX shader cannot be accessed by ‘processor elements’ or ‘first circuits’ found in
any of the other RSX shaders” and that “[a]ccused ‘processor elements’ or ‘first circuits’
in any one RSX shader cannot access ‘condition code registers’ and ‘condition storage’
in any other RSX shaders.” Docket No. 757 at 1, ¶ 4-6. However, BIAX argued that
these admissions were not relevant because, according to its reading of the claim
construction, shared access was not a limitation applicable to all claims but only to
those claims that explicitly state that limitation, namely, unasserted claim 2 of the ’628
Patent and unasserted claim 1 of the ’313 Patent. Docket No. 757 at 6. (“Rather, [the]
Court has held only that the claims themselves specify whether ‘shared access by all
processor elements’ is required”); see also Docket No. 1018 at 1 (explaining that BIAX
understood the “shared by all” concept to apply only to “specific patent claims
containing that limitation–including ’628 patent claim 2 and ’313 patent claim 1”).
BIAX also argued that “each individual Vertex Process Engine (‘VPE’) within the
RSX chip and the NV40 chips is a separate infringing device” and thus that the
requirement that condition code registers be shared by all processing elements was
irrelevant. Docket No. 757 at 6-7. BIAX relied on SunTiger, Inc. v. Scientific Research
Funding Grp., 189 F.3d 1327 (Fed. Cir. 1999), which held that sunglass lenses coated
with a patented orange dye could infringe the patent even though the lenses were also
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coated with a gray dye that was not covered by the patent. The court in SunTiger held
that the addition of an extra element does not negate a finding of infringement unless
the “claim is specific as to the number of elements and the addition of an element
eliminates an inherent feature of the claim.” Id. at 1336. The court also stated: “we
have never required that a claim read on the entirety of an accused device in order to
infringe. If a claim reads merely on a part of an accused device, that is enough for
infringement.” Id. BIAX contended that treating defendants’ VPEs in isolation was
analogous to considering a portion of a sunglass lens in isolation and thus that each
individual VPE could be considered an infringing device. Docket No. 757 at 6-9. BIAX
argued that this analysis rendered irrelevant any requirement that processors share
access to condition code storage locations in other VPEs on the same chip. Id.
On February 15, 2012, the Court granted defendants’ motions for summary
judgment of non-infringement on the basis that the accused processors could not
access condition code registers or condition storage in other parts of the chip, which
was a requirement of the asserted patents. Docket No. 941 at 6. In addition, the Court
stated that:
BIAX contends that the patents do not require that all processor elements be
able to access all condition code registers and condition storage. The Court,
however, has already unambiguously ruled that they do. . . . In light of the
foregoing constructions, the Court stated there was “little risk that plaintiff will
attempt to argue at trial that processor elements are not able to access any
condition code registers or condition storage locations.” Docket No. 455 at
2. Yet, that is the very argument BIAX asserts in response to defendants’
motions.
Docket No. 941 at 4-5. The Court also rejected BIAX’s argument based on SunTiger,
reiterating its statement in the claim construction that, “[i]n the event there is only one
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processor element, that processor element is capable of accessing any of the condition
code registers for storing condition code values.” Docket No. 231 at 37. The Court
explained that:
[t]he attempted isolation of a single processor element does not change the
fact that any particular processor element in the accused chips is incapable
of accessing all condition code registers and that any particular condition
code register is not shared by all of the other processor elements which exist
within the accused chips.
Docket No. 941 at 6. The Court’s ruling was affirmed by the Federal Circuit on March
18, 2013. Docket No. 1036.
On April 27, 2012, defendants filed the instant motion for attorneys’ fees
pursuant to 35 U.S.C. § 285 or, in the alternative, 28 U.S.C. § 1927. Docket No.
956/981. Defendants seek to recover fees and costs accrued between the time the
Court issued its Order Regarding Claim Construction on June 21, 2010 and the Court’s
grant of summary judgment on February 15, 2012, a total of $6,271,888.67. Docket
No. 956 at 7, 14.
II. DISCUSSION
A. Fee Awards under the Patent Act
The Patent Act provides that, in “exceptional cases,” a court may award
attorney’s fees to the prevailing party. 35 U.S.C. § 285. The decision to award fees
proceeds in two steps. First, the Court must determine whether the prevailing party has
proved by clear and convincing evidence that the case is exceptional. Forest Labs.,
Inc. v. Abbott Labs., 339 F.3d 1324 (Fed. Cir. 2003). Second, the Court must exercise
its discretion to determine whether an award of fees is appropriate. Cybor Corp. v. FAS

8

Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (internal citations omitted). To show
that a case is exceptional, the prevailing party must show either (1) inequitable conduct
before the Patent and Trademark Office; (2) litigation misconduct; (3) vexatious,
unjustified, and otherwise bad faith litigation; or (4) a frivolous suit or willful
infringement. Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1034
(Fed. Cir. 2002).
“Absent litigation misconduct or misconduct in securing the patent, a district court
can award attorney fees under § 285 only if the litigation is both: (1) brought in
subjective bad faith; and (2) objectively baseless.” MarcTec, LLC v. Johnson &
Johnson, 664 F.3d 907, 916 (Fed. Cir. 2012) (citing Old Reliable Wholesale, Inc. v.
Cornell Corp, 635 F.3d 539, 543-44 (Fed. Cir. 2011)). “The existence of objective
baselessness is to be determined based on the record ultimately made in the
infringement proceedings.” iLOR, LLC v. Google, Inc., 631 F.3d 1372, 1378 (Fed. Cir.
2011). The fact that a plaintiff may have filed the case in good faith does not protect it
from an award under § 285 if it pursues its claim in bad faith after developments in the
case have made its claim baseless. See Raylon, LLC v. Complus Data Innovations,
Inc., 700 F.3d 1361, 1373-74 (Fed. Cir. 2012) (Reyna, J. concurring). Bad faith is
“synonymous with a patent holder’s unreasonable continued pursuit of an infringement
claim that has been demonstrably shown to be based on ‘wrongful intent, recklessness,
or gross negligence.’” Id. at 1374 (quoting Phonometrics, Inc. v. Westin Hotel Co., 350
F.3d 1242, 1246 (Fed. Cir. 2003).
Once a case is found to be exceptional, a court considers both tangible and

9

intangible factors to determine whether a fee award is appropriate, including “the
degree of culpability of the infringer, the closeness of the question, litigation behavior,
and any other factors whereby fee shifting may serve as an instrument of justice.”
Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 1378 (Fed. Cir. 2001)
(quoting Nat’l Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1197 (Fed. Cir.
1996)); see also Modine Mfg. Co. v. Allen Gp., Inc., 917 F.2d 538, 543 (Fed. Cir. 1990)
(“[t]he trial judge is in the best position to weigh considerations such as the closeness of
the case, the tactics of counsel, the conduct of the parties, and any other factors that
may contribute to a fair allocation of the burdens of litigation as between winner and
loser”).
In MarcTec, the Federal Circuit upheld an award of attorney’s fees under § 285
on a finding that “MarcTec subjectively knew that it had no basis for asserting
infringement and therefore pursued [the] litigation in bad faith.” 664 F.3d at 918. The
Federal Circuit found that the district court properly relied on its finding that, even after
MarcTec had documentary evidence establishing that one of the claim limitations was
not satisfied, it “pursued its frivolous action by relying on mischaracterizations of the
claim construction.” Id. The Federal Circuit further found that “MarcTec’s decision to
continue the litigation after claim construction further supports the district court’s finding
that this is an exceptional case.” Id. at 919.
Likewise, in Phonometrics, the Federal Circuit held that Phonometrics’ failure to
“articulate a viable theory of infringement” supported the district court’s finding that
Phonometrics “continued to litigate this case knowing that its claim could not meet the

10

standard for infringement” of the patent. 350 F.3d at 1247, 1248; see also Highmark,
Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300, 1310 (Fed. Cir. 2012)
(“Highmark contends that the . . . objective reasonableness standard applies only with
respect to the initial filing of the infringement counterclaim and does not apply to
determining whether Allcare's continued litigation of baseless claims was frivolous. . . .
That is not correct. Rather, the objective prong requires a retrospective assessment of
the merits of the entire litigation determined ‘based on the record ultimately made in the
infringement proceedings.’”); Taurus IP, LLC v. DaimlerChrysler Corp., 559 F. Supp. 2d
947, 968 (W.D. Wis. 2008) (“Taurus’s decision to proceed in the face of this court’s
[claim] constructions prolonged the litigation in bad faith.”); Medtronic Navigation, Inc. v.
BrainLAB Medizinische Computersystems Gmbh, No. 98-cv-01072-RPM, 2008 WL
410413, at *5 (D. Colo. Feb. 12, 2008) (“After receiving the Court’s claims construction
ruling, however, Medtronic and the MWE lawyers had a duty to reexamine this litigation
and make an objective assessment of the validity of Medtronic’s claims that BrainLAB’s
products infringed the patent claims as construed.”).
BIAX’s conduct in this case was similar to that of MarcTec and Phonometrics.
See MarcTec, 664 F.3d 907; Phonometrics, 350 F.3d at 1247. Lacking a viable theory
of infringement after the Court construed the claims, BIAX did not reevaluate its
infringement claims, as it was required to do, see Highmark, 687 F.3d at 1310, but
chose instead to oppose summary judgment by essentially ignoring the Court’s
previous rulings. See, e.g., Docket No. 231 at 37 (“defendants are correct that any
processor element is able to access any condition code register”); Docket No. 231 at 44

11

(“to the extent there is any dispute over whether, despite the foregoing, condition code
storage locations are shared by all processor elements, the Court rules that they are”);
Docket No. 455 at 2 (“The Court, however, ruled that it is unnecessary to include the
attribute of shared access in the construction of the two terms because such a quality
was already clearly provided for by the claims at issue. . . . The Court, therefore, sees
little risk that plaintiff will attempt to argue at trial that processor elements are not able
to access any condition code registers or condition storage locations.”). BIAX argued
(1) that the “shared access” limitation did not apply to all claims,8 and (2) that there was
no limitation requiring that each processor element be able to access any condition
code register on the chip. Docket No. 757 at 4-9. BIAX’s reliance on SunTiger to
support its second argument was unavailing because the patents did not read on any
part of the accused devices. See SunTiger, 189 F.3d at 1336 (“If a claim reads merely
on a part of an accused device, that is enough for infringement.”).
Just as MarcTec pursued its claim even after obtaining “documentary evidence”
that the accused device did not meet one of the claim limitations, BIAX persisted in
litigating this case even after its own expert conceded that the processors in
defendants’ chips cannot access all of the condition code storage locations. Compare
MarcTec, 664 F.3d 907 with Docket No. 956-2 at 8, ll.12-18. BIAX’s decision to
proceed, not only in the face of the Court’s claim construction, but in light of its own

8

Specifically, BIAX argued that, according to its reading of the claim
construction, the “shared access” limitation applied only to claim 2 of the ’628 Patent
and claim and claim 1 of the ’313 Patent, even though those claims were not asserted
by BIAX and not construed in the claim construction. See Docket No. 1018 at 7-8;
Docket No. 231 at 3-6.
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expert’s testimony supporting a finding of non-infringement, “prolonged the litigation in
bad faith.” See Taurus IP, 559 F. Supp. 2d at 968. Thus, this case is exceptional
under 35 U.S.C. § 285.
As to the second prong under § 285, the facts here favor an award of fees. First,
the question in this case was not close: once it became clear that defendants’ devices
did not meet the “shared access” limitation, the outcome of the litigation was
determined. See Nat’l Presto Indus., 76 F.3d at 1197. Second, BIAX’s persistent
disregard of the Court’s unambiguous statements in orders evidences its culpability.
See Superior Fireplace, 270 F.3d at 1378. Third, BIAX’s conduct in aggressively
pursuing this litigation, even after the unequivocal statement of its own expert that
defendants’ devices could not infringe the asserted patents, supports the conclusion
that “fee shifting may serve as an instrument of justice” in this case.9 See id.
Accordingly, the Court finds that defendants are entitled to recover fees and
costs incurred between June 23, 2011, the date of Dr. Davidson’s deposition, and
March 26, 2012, when the Court granted defendants’ motion for summary judgment
[Docket No. 947].
B. Effect of the Protective Order
BIAX filed a supplemental response [Docket No. 1017] to defendants’ motion for
attorney’s fees in which it argues that the corporation cannot be held liable under § 285
because the protective order [Docket No. 90] issued in this case permitted only BIAX’s

9

BIAX’s argument that defendants are not entitled to attorney’s fees because
they did not file their motion for summary judgment sooner is unpersuasive. The
burden is not on defendants to prevent a plaintiff from advancing a baseless claim.
13

outside counsel to review many of the court filings, rendering it “impossible for the
Company to compare the accused products against the parameters of the Court’s claim
construction and direct its litigation decisions accordingly.” Docket No. 1017 at 6.10
BIAX asserts that its inability to access the restricted materials prevented it from
“form[ing] the subjective bad faith necessary to impose liability” under 35 U.S.C. § 285.
Docket No. 1017 at 4, 2. BIAX concludes that, given the terms of the protective order,
“[t]he Company had no choice . . . but to rely on its qualified experts and advisors, and
their conclusions that the claims had merit notwithstanding the Court’s claim
construction rulings.” Docket No. 1017 at 7.
BIAX does not explain, however, why the protective order prevented outside
counsel from discussing with corporate counsel the implications of the Court’s claim

10

Under the protective order, either party could place the designation “Attorneys’
Eyes Only” on “information, documents, and things the Designating Party believes in
good faith [are] not generally known to others and [have] significant competitive value
such that unrestricted disclosure to others would create a substantial risk of serious
injury and which the Designating Party (i) would not normally reveal to third parties
except in confidence. . ., or (ii) believes in good faith is significantly sensitive and
protected by a right to privacy under federal law or state law or any other applicable
privilege or right.” Docket No. 90 at 2, ¶ 4. Material so designated by defendants could
only be viewed by authors, addressees, or recipients of that material; counsel of record;
outside consultants who agreed to keep the material confidential; the Court and its
personnel; and professional vendors who agreed to keep the material confidential.
Docket No. 90 at 6-7, ¶¶ 16(a)-(h). This designation could be challenged by the
opposing party. Docket No. 90 at 19-20, § M. BIAX contends that “much of the
discovery received from Defendants bore an Attorneys’ Eyes Only designation,
including product manuals and the RTL code that explains the manner in which the
Defendants’ devices function and process. [BIAX] paid exceptionally qualified experts,
such as Dr. Davidson, to study the accused products and millions of lines of code, but
the Company itself was unable to review the work, the resulting infringement
contentions, or the deposition testimony of its experts. The Company was under similar
restrictions with respect to Defendants’ experts and their reports, conclusions and
testimony.” Docket No. 1017 at 3-4.
14

construction or from alerting corporate counsel about the bottom line conclusions
reached by Dr. Davidson regarding whether the accused devices met the “shared
access” requirement. This omission is especially notable in light of the fact that many
documents that drew attention to the importance of the “shared access” requirement
were publicly filed. See, e.g., Docket No. 231; Docket No. 355; Docket No. 455.
Moreover, although BIAX claims that “the Company was unable to take part in the
analysis that Defendants now claim was conducted improperly,” Docket No. 1017 at 2,
BIAX does not suggest that it did not have general discussions with outside counsel
along the lines mentioned above or even that, in cases of this sort, “the limited number
of internal representatives” at BIAX, id. at 2 n.2, would review the type of technical
information subject to the protective order and direct outside counsel’s litigation strategy
accordingly. Thus, the company’s statement that it “had no choice but to rely on its
qualified experts and advisors,” id. at 7, does not distinguish this case from a case
without a protective order.
Although BIAX argues that it could not form the necessary intent without access
to information describing the accused devices, it does not argue that it proceeded on
the mistaken belief that those devices met the “shared access” limitation. Rather, it
argues that, ignorant of “the identity, number or functionality of the accused products or
devices,” BIAX was entirely unable to assess the validity of its claims. See Docket No.
1017 at 6. However, BIAX cannot simultaneously assert that it had a reasonable basis
for maintaining its litigation, see Docket No. 1018 at 1, and that it had no way of
knowing whether or not it had a reasonable basis for maintaining its litigation. See

15

Docket No. 1017 at 6-7. Given that BIAX was privy to the Court’s claim construction
and thus aware of the “shared access” limitation, and privy to the arguments advanced
by its counsel denying the existence of that limitation, BIAX has failed to show that the
protective order prevented it from forming the requisite intent. See Eltech Sys. Corp. v.
PPG Indus., Inc., 903 F.2d 805, 810 (Fed. Cir. 1990) (“The ‘should know’ rubric
obviously applies when a party attempts to escape the consequences of its conduct
with the bare statement, ‘I didn’t know.’”).
Finally, even assuming that the protective order prevented BIAX from fully
comprehending the technical details of the accused devices or independently
determining whether they met the “shared access” requirement, the fact remains that
outside counsel served as BIAX’s agent, acting on its behalf, throughout the course of
this litigation. See Restatement (Third) of Agency § 1.01. BIAX has shown no reason
under § 285 that it should be relieved of liability for the conduct of its agent. See id. at
§ 2.01(c) (“Many forms of action . . . by an agent may carry legal consequences for the
principal if the agent’s act is done with actual or apparent authority.”).
Accordingly, the argument advanced in BIAX’s supplemental response is
unavailing.
C. Fee Awards under 28 U.S.C. § 1927
Defendants advance 28 U.S.C. § 1927 as an alternative basis for a fee award.
Docket No. 956/981 at 12-13. As the Court is granting defendants’ motion for fees
pursuant to § 285, it will deny the alternative request under § 1927.

16

III. CONCLUSION
For the foregoing reasons, it is
ORDERED that Defendants’ Motion for Recovery of Attorneys’ Fees and
Expenses Incurred After Claim Construction [Docket No. 956/981] is GRANTED in part
and DENIED in part. Defendants are entitled to an award of fees and costs incurred
between June 23, 2011 and March 26, 2012, pursuant to 35 U.S.C. § 285, in an
amount to be determined in a subsequent order.

DATED March 30, 2013.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

17