On October 10, 2013, plaintiff MyMedicalRecords, Inc. (MMR) sued defendants claiming infringement of U.S. Patent Nos. 8,301,466 and 8,498,883. In its claim construction order, the court found claims 1-3 of the ’883 Patent indefinite. Despite that order, MMR would not stipulate to invalidity of the ’883 Patent claims, forcing defendants to file a motion for summary judgment of invalidity. In its opposition, MMR merely reargued its claim construction position. Defendants later moved for attorney fees under 35 U.S.C. § 285.

The court began its analysis by noting that 35 U.S.C. § 285 applies to exceptional cases, i.e., more than one sanctionable act. Single acts, on the other hand, should be handled through the court’s inherent powers. The court agreed that MMR’s refusal to withdraw its claims relating to or stipulate to invalidity of the ’883 Patent was unreasonable. But that was the only sanctionable act by MMR, so the case is not exceptional. As a result, the court awarded attorney fees to defendants under its inherent power, not 35 U.S.C. § 285.

MyMedicalRecords, Inc. v. Jardogs, LLC, et al., Civ. No. 2:13-cv-03560-ODW (SHx) (C.D. Cal.);MyMedicalRecords, Inc. v. WebMD Health Corp., et al., Civ. No. 2:13-cv-07285-ODW(SHx) (C.D. Cal.)