If a Case Was Baseless, It Would Have Ended Sooner

OneSubsea IP UK Limited v. FMC Technologies, Inc.

Before Clevenger, Moore, and Dyk. Appeal from the United States District Court for the Southern District of Texas.

Summary: Ordering additional discovery before ultimately granting summary judgment suggests that suit was not objectively baseless.

OneSubsea UK Limited and OneSubsea LLC (together “OSS”) asserted three patents against FMC Technologies, Inc. (“FMC”). The patents related to structures used in the subsea oil and gas extraction industry known as “trees.” FMC moved for summary judgment of noninfringement after the district court issued its Markman order, arguing that FMC’s accused trees could not infringe under the court’s claim construction. However, the court stayed the case pending IPR before deciding FMC’s motion. When the stay was lifted, the district court still declined to rule on FMC’s summary judgment motion, instead ordering additional expert discovery. After the additional discovery, the district court granted FMC’s renewed summary judgment motion. FMC then moved for fees and costs under 35 U.S.C. § 285, arguing that this was an exceptional case under the statue because OSS’s allegations were objectively baseless after the court’s claim construction. The district court denied FMC’s motion for fees and costs.

The Federal Circuit affirmed the district court’s denial of fees and costs, rejecting FMC’s arguments that the Markman order rendered OSS’s suit objectively baseless. The Federal Circuit held that the district court’s refusal to immediately rule on FMC’s summary judgment motion showed that the district court “effectively determined that the position of the party opposing summary judgment is not objectively baseless.” Thus, the Federal Circuit held that FMC showed no error in the district court’s decision.

Editor: Paul Stewart