Digest of Adjustacam, LLC v. Newegg, Inc., Nos. 2013-1665, 2013-1666, 2013-1667 (Fed. Cir. Sept. 17, 2015) (non-precedential). On appeal from E.D. Tex. Before Newman, Plager, and Hughes.

Procedural Posture: Plaintiff-appellant appealed the district court’s claim construction. Defendants-cross-appellants appealed the district court’s denial of attorney and expert fees under 35 U.S.C. § 285. CAFC dismissed in part, vacated in part, and remanded.

  • Jurisdiction – Appellate Jurisdiction: The CAFC dismissed appellant’s appeal for lack of jurisdiction because the district court’s claim construction had no bearing on the final judgment. An appeal from a final judgment is limited to those issues that are the subject of the final judgment when one is entered. The district court entered final judgment solely on the basis of the parties’ joint motions to dismiss, including plaintiff-appellant’s voluntary motions to dismiss the claims against cross-appellants as moot due to cancellation of the asserted claims and covenants not to sue cross-appellants. Since the claim construction did not affect the final judgment entered by the district court, it was not reviewable on appeal.
  • Attorneys’ Fees – Exceptional Case: The district court applied the standard set out in Brooks Furniture Mfg. v. Dutailier Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005) in denying cross-appellants’ motion for a declaration of an “exceptional case” under 35 U.S.C. § 285. Subsequently the Supreme Court’s decision in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014) changed the standard. The CAFC vacated the district court’s decision to afford the district court an opportunity to apply the Supreme Court’s intervening change in the law, and remanded for reconsideration in light of Octane Fitness. Remand was necessary since the Supreme Court did not simply relax the standard for finding an “exceptional case,” but substantially changed the analysis to a totality of the circumstances analysis (which does not necessarily require consideration of the Brooks Furniture factors), as well as lowered the burden of proof to a preponderance of the evidence.