The Federal Circuit has summarily upheld an award of attorney fees for SAP against InvestPic LLC that a district court had imposed after the NPE ignored warning signs that its patent was invalid. In the affirmed decision—issued by District Judge Ed Kinkeade in September 2017, months after he invalidated the patent-in-suit under Alice—the court held that the NPE’s case against SAP was exceptional under Octane, finding in part that InvestPic should have known its patent was likely directed to unpatentable subject matter, both due to explicit cautionary statements from the USPTO on that specific patent and because of applicable caselaw on Section 101. The Federal Circuit had also previously upheld the lower court’s Alice order, confirming in May 2018 that the patent is ineligibly directed to an abstract idea, in the form of a series of mathematical calculations. Later that summer, the appeals court declined to revisit that conclusion in light of a subsequently issued reexamination certificate.

A Texas judge has awarded attorney fees to SAP in a declaratory judgment (DJ) action (3:16-cv-02689) against InvestPic LLC, months after the patent-in-suit was invalidated under Alice. In an order issued on September 7, District Judge Ed Kinkeade held that the NPE’s case against SAP was exceptional under Octane, finding that the plaintiff’s litigating position was unreasonable, as it should have known that the asserted patent was directed to unpatentable subject matter, both because the USPTO had previously warned that the claims were likely invalid on that basis and in light of relevant case law. The court also found that InvestPic had litigated its case in an unreasonable manner. The NPE’s owners had reached out to SAP salespeople, using information gathered about alleged infringement while pretending to be potential customers unrelated to InvestPic.

A March 2016 Federal Circuit opinion reversing one decision of the Patent Trial and Appeal Board (PTAB) and vacating another has thawed an assertion campaign that had been on ice for approximately four years. In November 2010, InvestPic LLC brought suit against IBM, Oracle, and a dozen other defendants, alleging infringement of a single patent (6,349,291) generally related to re-sampling and displaying financial information over a network. IBM, SAS Institute, and Algorithmics filed a March 2012 request for inter partes re-examination of all 31 claims of the ‘291 patent, arguing anticipation and obviousness, and SAS Institute filed a June 2012 request for ex parte re-examination of a subset of claims (22-31). When the Patent Office granted both requests for re-examination, the parties still in suit in Delaware stipulated to a stay. Four years later, the Federal Circuit reversed the PTAB’s decision, confirming the validity of one subset of challenged claims, as amended, while remanding a smaller subset back down for further examination. InvestPic’s campaign has thus been revived, with the NPE filing a motion to lift the Delaware district court stay and SAP filing a Northern District of Texas complaint (3:16-cv-02689) seeking a declaratory judgment of non-infringement of the ‘291 patent.