Brilliant Instruments, Inc. v. GuideTech, Inc.
4:09-cv-05517
N.D. Cal.Sep 28, 2012Background
- Brilliant sought attorneys’ fees under 28 U.S.C. § 285 and expert fees under the court’s inherent authority; motion denied.
- GuideTech allegedly infringed several patents; Brilliant challenged infringement and asserted non-infringement, not invalidity.
- The case involved multiple related actions, including removal of a Santa Clara County complaint, remand, and consolidated state-law claims directed at business interference and related issues.
- The court construed disputed patent claims, granted non-infringement in Brilliant’s favor, and later denied fee requests as not exceptional.
- Expert fees were sought under the court’s inherent authority but were denied because § 285 does not authorize expert fees and no fraud or abuse was shown.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the case is exceptional under § 285 | Brilliant seeks fees for the entire litigation. | No exceptional conduct shown. | Not exceptional; no clear and convincing evidence of exceptionality. |
| Whether GuideTech’s infringement claims were objectively baseless | GuideTech’s pre-filing inquiry was inadequate. | Claims had reasonable interpretation of patents. | Not objectively baseless; not entitled to fees for that basis. |
| Whether subjective bad faith or litigation misconduct supported fees | GuideTech engaged in abusive tactics and misconduct. | Aggressive but not abusive by clear and convincing evidence. | No clear and convincing proof of misconduct warranting § 285 fees. |
| Whether expert fees may be awarded under inherent authority | Expert fees should be recoverable. | § 285 does not authorize expert fees; none warranted. | Denied; expert fees not recoverable absent fraud/abuse under inherent power. |
Key Cases Cited
- iLOR, LLC v. Google, Inc., 631 F.3d 1372 (Fed. Cir. 2011) (objective baselessness and proper standard for exceptions under § 285)
- Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005) (exceptionality requires misconduct or bad faith with objective baselessness)
- Seagate Tech., LLC v. Willmsen (en banc), 497 F.3d 1360 (Fed. Cir. 2007) (willful infringement standard; objective inquiry for baselessness)
- Wedgetail Ltd. v. Huddleston Deluxe, Inc., 576 F.3d 1302 (Fed. Cir. 2009) (two-step process for § 285: exceptional case and discretionary award)
- Amsted Indus. Inc. v. Buckeye Steel Castings Co., 23 F.3d 374 (Fed. Cir. 1994) (inherent power sanctions require fraud/abuse before exceeding 1821(b) cap)