Attorneys' Fees Determination May Render Patent Unenforceable Despite Earlier Dismissal of Inequitable Conduct Claim

Plaintiff's motion to dismiss its own claims with prejudice, and defendant's counterclaims without prejudice, was granted but the court gave defendant leave to move for attorneys' fees under 35 U.S.C. § 285 which could result in a post-dismissal determination of unenforceability. "In [Leviton Mfg Co. v. Shanghai Meihao Elec., Inc., 613 F. Supp. 2d 670 (D. Md. 2009)] . . . the Federal Circuit’s holding did nothing to unsettle the district court’s initial steps of dismissing the patent claims with prejudice and granting the defendant leave to move for fees. . . . Inequitable conduct is one possible theory at issue in the overall § 285 fees context. If it is established, unenforceability 'follows automatically' as a matter of law."

Gordon-Darby Systems, Inc. v. Applus Technologies, Inc., 1-10-cv-01863 (ILND December 23, 2010, Order) (Zagel, J.)