Was this award of counsel fees “exceptional” or less.

The premise of prosecution history estoppel has strength in claim interpretation, but is a weak reason for assessing “exceptional case” attorneys fees.  The Judge awarded attorney’s fees to the accused infringer in iLor v. Google, 5:07CV109 (E.D. Ky. 10/15/2009), based on a remark in the prosecution history and promotional comments on the patentee’s commercial webpage.  The Court did not consider litigation misconduct, or continuation of the case past certain rulings.  The award of attorneys fees, to an accused infringer, is exceptional for being based almost solely on file wrapper estoppel.

The ruling gives passing mention of the “clear and convincing” standard for exceptional case determinations.  The actual analysis, however, suggests that the court disagreed with the plaintiff’s claims construction, and on that same basis, found the case exceptional.  Imposing a disclaimer as an aspect of claim construction is one matter, but since the CAFC reverses nearly half of the Markman rulings, it is quite a different matter to equate disagreement over disclaimer and its scope with clear and convincing evidence of “exceptional,” bad faith pleading.  “If this court had reversed the district court’s construction of the portable computer limitation, CDSC might have been able to prevail …[and so], the district court did not clearly err in refusing to find the case exceptional.” Computer Docking, 519 F.3d 1366, 1380.

In the file wrapper, the plaintiff/patentee iLor has argued that a reference had five differences from the claimed combination.  One of those argued distinctions was ruled contrary to iLor’s infringement theory, and caselaw does support disclaimer as to the one.  The “applicants distinguished their invention from the prior art in multiple ways. Nonetheless a disavowal, if clear and unambiguous, can lie in a single distinction among many.”  Computer Docking, 519 F.3d at 1377.   In the latter part of the prosecution, other claims were added, including the claim allegedly infringed.  The disclaimer was extended to the later-added claim, because of (what sounded like a boilerplate) remark that the newly added claims ‘were allowable for the same reasons’ as earlier-examined claims.

The element of "subjective" bad faith was said to be proven by the patentee promoting its product on its website, specifically noting the point of novelty, which was the crux of the non-infringement ruling.  But quare: commercial speech about one's product is irrelevant to claims construction - you can't ask Mr. Markman what his patent covered.  Also, iLor's patent claimed various embodiments, some or none of which may have been what its website was promoting.

Exceptional is supposed to connote something substantially greater than failing to prevail on an aggressive or expansive reading of one's claims. You can’t fault Google for seeking recovery of fees, but that doesn’t mean the Judge is correct in awarding them.