Intellectual Ventures I LLC v. Trend Micro Inc.

Intellectual Ventures I LLC v. Trend Micro Inc.

Opinion

 [*1381]  This is an appeal from the district court's finding of exceptionality under 35 U.S.C. § 285 and its subsequent grant of attorney fees. Because it is unclear whether the district court applied the proper legal standard, we vacate and remand for an analysis under the proper legal standard.

Background

In 2010, Intellectual Ventures I LLC filed a complaint for patent infringement against Trend Micro, Inc., Symantec Corp., and two other defendants for infringement of claims in U.S. Patent Nos. 5,987,610, 6,073,142, 6,460,050, and 7,506,155. The district court severed the claims against Trend Micro from the claims against Symantec (hereinafter, the "Trend Micro action" and the "Symantec action") and set separate trials in each action.¹

The '050 patent is directed to systems [**2]  and methods for filtering data files (such as email messages) based on their content. The word "characteristic" appears in asserted claims 9, 16, and 22 of the '050 patent.

During claim construction in the Symantec action, the parties disputed the meanings of several terms containing the word "characteristic." Throughout claim construction and pretrial proceedings in the Symantec action, Intellectual Ventures's expert consistently opined that a "characteristic" is "an attribute of the document such as whether it contains a virus or is SPAM or bulk email or includes copyrighted content." J.A. 610 (emphasis added); see also J.A. 614 ¶ 178 (expert  [*1382]  declaration), 617 l. 19-618 l. 5 (deposition testimony). The district court adopted Intellectual Ventures's proposed constructions for the "characteristic" claim terms in the Symantec action. The district court also adopted its claim construction order from the Symantec action in the Trend Micro action.

The jury trial against Symantec proceeded first. During cross-examination at trial, Intellectual Ventures's expert changed his opinion, testifying that bulk email was not a characteristic for purposes of claim 9 of the '050 patent. J.A. 630-33. He further testified [**3]  that he "changed [his] opinion after [he] had a chance to prepare for trial working with Intellectual Ventures'[s] lawyers." J.A. 633 ll. 21-24. The jury found that Symantec did not infringe the asserted claims of the '050 patent but that Symantec had infringed the asserted claims of the '142 and '610 patents.

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