In Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., [2016-2442] (December 8, 2017), the Federal Circuit affirmed the district court’s award of fees on the grounds that following the Alice decision, patent owner’s claims were objectively without merit.
The district court awarded BBB its attorneys’ fees beginning from the date of the Alice decision, including fees incurred during the § 101 appeal. The district court determined that the case was exceptional
based solely on the weakness of IH’s post-Alice patent-eligibility arguments and the need to deter future “wasteful litigation” on similarly weak arguments.
The Federal Circuit, reviewing for abuse of discretion, found that the district court acted within the scope of its discretion in finding the case to be exceptional based on the weakness of IH’s § 101 arguments and the need to deter similarly weak arguments in the future. The Federal Circuit said that under Alice, the claims of the patent were manifestly
directed to an abstract idea, which the district court accurately described as “local processing of payments for remotely purchased goods.” The
idea that a customer may pay for items ordered from a remote seller at a third-party’s local establishment is the type of fundamental business practice that, when implemented using generic computer technology, is not patent eligible under Alice. The Federal Circuit continued noting that under Alice’s second step, the only components disclosed
in the specification for implementing the asserted method claims are unambiguously described as “conventional.” These components do not supply an inventive concept.
The Federal Circuit held that Alice was a significant change in
the law as applied to the facts of this particular case, noting that prior to Alice, the state of the law for computer implemented business transaction inventions was less than clear. While as a general matter
was and is sometimes difficult to analyze patent eligibility under the framework prescribed by the Supreme Court in Mayo, the Federal Circuit said there was no uncertainty or difficulty in applying the principles set out in Alice to reach the conclusion that the ’582 patent’s claims are ineligible. The Federal Circuit said that it was IH’s responsibility to reassess its case in view of new controlling law.
Because the district court did not abuse its discretion
in awarding attorney fees under § 285, the district court’s
decision was affirmed.