Summary: A party’s continued, but ultimately unsuccessful, pursuit of a claim construction may not warrant attorneys’ fees. In addition, district courts are not required to resolve every issue mooted by summary judgment to rule on a motion for attorneys’ fees.
After prevailing on the merits on summary judgment, Wright appealed the district court’s determination that attorneys’ fees were not warranted under 35 U.S.C. § 285. The case-dispositive summary judgment motion largely depended on the construction of the term “body”—a term for which the parties had previously proposed constructions, but that the district court had declined to construe prior to summary judgment. On appeal, Wright argued that the district court abused its discretion in denying the motion for attorneys’ fees because Spineology advocated a meritless claim construction, misled the court with a cropped and annotated patent figure, and ignored evidence that undermined its preferred construction. In addition, Wright argued that Spineology advocated a meritless damages theory and that the district court did not do enough to analyze the merits of the theory, even though the damages issue had been mooted by the summary judgment determination.
The Federal Circuit rejected each of Wright’s arguments. First, the Federal Circuit reasoned that because the district court had declined to adopt any construction of the term “body” earlier in the case, Spineology could reasonably continue to pursue its proposed construction at the summary judgment stage. Regarding Spineology’s conduct during litigation, the Federal Circuit reasoned that the district court was better positioned to evaluate whether the case was “exceptional” enough to award attorneys’ fees. Finally, the Federal Circuit refused to force the district court to evaluate the merits of Spineology’s damages theory, reasoning that the district court need not resolve every issue mooted by summary judgment in order to rule on a motion for attorneys’ fees. Accordingly, the Federal Circuit found no abuse of discretion and affirmed the district court’s denial of the motion for attorneys’ fees.
