Microsoft Argues Uniloc Owes Fees For Duplicative Patent Suit

Microsoft filed an opening brief in its case against Uniloc 2017 on January 15, before the Federal Circuit, appealing a court order that denied Microsoft’s motion for legal fees after Uniloc dismissed its claim. According to the appeal, the issue is “[w]hether the district court erred in holding that Microsoft was not the ‘prevailing party’ in this litigation and therefore not entitled to move for its attorneys’ fees.” Microsoft is represented by Perkins Coie. Uniloc 2017 is represented by Feinberg Day. Microsoft filed the appeal in response to a patent infringement suit filed by Uniloc 2017 in November 2018 and terminated in August 2019.

Microsoft’s opening brief stated that “[t]his was a frivolous patent-infringement lawsuit.” Upon Uniloc’s initial filing, Microsoft’s counsel “concluded that the patent was plainly invalid for double-patenting over its nearly-identical parent patent.” Microsoft claimed that the patents are the same except for using the different phrasing; “unique digital fingerprints” in Microsoft’s patent and “digital fingerprints” in Uniloc’s patent. A stipulated dismissal with prejudice was filed for the infringement claims. Therefore, the brief stated, “Uniloc gave up its patent infringement claim and cannot assert that claim against Microsoft ever again.”

After the dismissal, Microsoft sought an order declaring the case “exceptional”, which would allow Microsoft to be reimbursed for legal fees. The court denied this motion stating that the case was dismissed by stipulation, therefore, the court did not have the “judicial imprimatur” needed for Microsoft to qualify as a “prevailing party.” The brief argued the ways in which Microsoft does qualify as a prevailing party. For instance, Microsoft did prevail because Uniloc dismissed its infringement claim with prejudice and cannot, therefore, use that claim against Microsoft again.  Microsoft also argued that obtained the result it sought; that courts, including the court hearing the appeal, have acknowledged that voluntary dismissals can bestow “prevailing party” status to a defendant; and that public policy supports a determination that  Microsoft is the prevailing party.

Microsoft seeks a reversal, so that it can legally be deemed the prevailing party; to vacate the denial of Microsoft’s motion for attorney’s fees.