HYPERPHRASE TECHNOLOGIES, LLC v. GOOGLE INC.

Filing 156

MOTION to Compel Discovery Responses by Defendant GOOGLE INC.. Motions referred to Magistrate Judge Stephen L. Crocker.Response due by 9/22/2009. (Attachments: # 1 MPA ISO Motion to Compel Discovery Responses, # 2 Exhibit A - 2009-07-28 Google 3rd Set of Rogs Nos 10-16, 5 pp., # 3 Exhibit B - 2009-07-28 Google 2nd Set of RFP No 81, 5 pp., # 4 Exhibit C - 2009-09-02 Ltr to Niro fr Wolff re responses to addl discovery, 4 pp., # 5 Exhibit D - US v Thurner ED Wis 2007, 3 pp., # 6 Exhibit E - Rubin v Iran ND Ill 2008, 19 pp., # 7 Text of Proposed Order) (Wolff, Jason) Emailed attorney to file the brief in support separately, 9/16/2009 (jef).

IN THE UNITED STATES DISTRICT COURT FO R THE WESTERN DISTRICT OF WISCONSIN --------------------------------------------H Y P E R PH R A S E TECHNOLOGIES, LLC and H Y PER PH R A S E, INC., Plaintiffs, v. G O O G L E, INC., D efendan t. --------------------------------------------P lain tiffs Hyperphrase Technologies, LLC and Hyperphrase, Inc. brought this patent infringem ent action, alleging that defendant Google Inc.'s AutoLink and AdSense products in frin ge plaintiffs' United States Patents Nos. 5,903,889, (`889 patent) 6,434,567 (`567 p aten t), 6,526,321 (`321 patent) and 7,013,298 (`298 patent). On December 20, 2006, Judge Shabaz granted summary judgment to defendant, finding that neither product infringed any claim of the patents-in-suit, in light of his construction of the term "data reference." Following its success on summary judgment, defendant moved for a finding that the case was exceptional, seeking attorney's fees pursuant to 31 U.S.C. § 285. Judge Shabaz su m m arily rejected the motion:

O PIN IO N AND ORDER 0 6 - cv -1 9 9 - b b c

There is virtually no evidence that this case was brought in
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bad faith. Defendants' support for its motion on this point consists almost exclusively of hindsight reliance on the summary judgment decision in its favor. An objective view of the entire file and the conduct of this litigation suggests to the contrary that plaintiff commenced the action in good faith believing that it could prevail on the broad claim construction it advanced. To award fees in this instance would be to convert § 285 into a routine fee shifting statute. Dkt # 80 at p. 2-3.
O n December 26, 2007, the Court of Appeals for the Federal Circuit held that Judge S h ab az's construction of the term "data reference" was erroneous. It affirmed the decision w ith respect to the claims of infringement against AdSense that Judge Shabaz had dismissed, reversed the judgment that AutoLink did not infringe the `889 and `321 patents and rem anded the case with instructions to evaluate whether Autolink infringed under the Federal Circuit's construction of the term "data reference." O n remand, defendant renewed its motions for summary judgment, arguing, among other things, that AutoLink did not infringe any of the asserted claims. I concluded that AutoLink lacked at least one element of each of the remaining asserted claims and therefore granted defendant summary judgment of non-infringement. Defendant now brings another m otio n for attorney fees, arguing that plaintiffs' conduct on remand has rendered the case excep tio n al and warrants an award of attorney fees. u n e x c e p t i o n a l. I find that this case remains

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Pursua nt to § 285 "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." Whether a case is exceptional is a factual question defendants m u st prove by clear and convincing evidence. Interspiro USA, Inc. v. Figgie Intern. Inc., 18 F.3d 927, 933 (Fed. Cir. 1994). Among the grounds for finding a case exceptional are litigation misconduct and vexatious, unjustified or otherwise bad faith litigation. Epcon Gas S ystem s, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1034 (Fed. Cir. 2002). Defendant argues that plaintiffs' conduct on remand amounts to bad faith litigation b ecau se plaintiffs (1) opposed defendant's motion to amend to add a license defense; (2) too vigorously disputed defendant's proposed findings of fact; (3) mischaracterized the federal circu it's construction of "data reference"; (4) offered new expert opinions after remand; and (5) continued to pursue their willfulness claim. These actions do not amount to bad faith litigation, alone or in combination. To the contrary, plaintiffs' litigation conduct was typical vigo ro us representation ­ no less reasonable or more vigorous than the positions and argum ents of defendant. For example, defendant characterizes plaintiffs' opposition to defendant's license defense amendment as "specious" and part of a pattern of "obfuscation and vexatious m ultiplication of proceedings" and "completely without merit." In contrast, I observed that "plaintiffs' argument would be compelling were it not for the fact that the trial date has been co n tin ued until March 16, 2009." Dkt. #118 at p. 2. Defendant's characterization of

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plaintiffs' position is at least as obfuscating as any conduct of plaintiffs. Similarly, the rem ainin g four positions are typical of the approach taken by plaintiffs in most patent cases an d well within the bounds of reasonable litigation conduct. Overall, defendant's strategy to exaggerate the weakness of plaintiffs' positions with the benefit of hindsight appears to be little more than a reprise of its earlier failed motion for fees. Plaintiffs' conduct falls significantly short of the standard of "vexations and unjustified" that would warrant an aw ard of fees.

ORDER IT IS ORDERED that defendant's motion for a finding that this case is exceptional an d warrants an award of fees is DENIED. Entered this 12t h day of May, 2009.

B Y THE COURT: /s/ _ _ _ __ _ _ __ _ _ __ _ _ __ _ _ __ _ _ __ _ _ __ _ _ __ _ B AR B AR A B. CRABB D istrict Judge

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