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Press Releases

Fish & Richardson Wins Attorneys’ Fees for Chicago Board Options Exchange in Multi-Year Patent Dispute With ISE

December 22, 2014

Press Releases

Fish & Richardson Wins Attorneys’ Fees for Chicago Board Options Exchange in Multi-Year Patent Dispute With ISE

December 22, 2014

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Chicago, IL, December 22, 2014 – Fish & Richardson announced today that the Chicago Board Options Exchange, Incorporated (CBOE) has been awarded attorneys’ fees in its eight-year patent dispute with International Securities Exchange (ISE).  On December 10, 2014, Judge Joan H. Lefkow in the U.S. District Court Northern District of Illinois, Eastern Division granted CBOE’s motion for attorneys’ fees under the exceptional case doctrine.

The case dates back to November 2006 when ISE sued CBOE in the U.S. District Court for the Southern District of New York alleging that CBOE infringed its ‘707 patent on an automated exchange.  ISE had sought over $1 billion in damages.  CBOE operates the Hybrid Trading System, which integrates manual open outcry and electronic trading into a single exchange.  Fish got the case transferred to the Illinois District Court and obtained summary judgment of non-infringement in March 2011.

On appeal, the Federal Circuit ruled in May 2012 that ISE’s ‘707 patent disavowed open outcry and partially automated exchanges.  ISE kept litigating the case on remand, but did not address the issue of disavowal, which allowed Fish to use a series of pre-trial motions to preclude ISE’s entire theory of infringement.  This led to ISE’s March 2013 consent judgment of non-infringement in favor of CBOE.  ISE appealed again – attempting to change the Federal Circuit’s first ruling – and, on April 7, 2014, the Federal Circuit affirmed its prior ruling on disavowal and found that CBOE does not infringe ISE’s ‘707 patent.

“Winning attorneys’ fees in this case is not just a huge victory for CBOE, but it validates the faith CBOE put in the merits of its case,” said Michael Zoppo, a principal at Fish & Richardson who served as co-lead counsel for CBOE.  “ISE’s case was lost after its first appeal to the Federal Circuit.  On remand, ISE tried to litigate a case they knew they didn’t have, but the District Court held them to the first appeal’s unfavorable ruling.  Then ISE thought the Federal Circuit would change its mind about its own ruling in a second appeal.  As the Court found, this was a significant waste of the Court’s and CBOE’s time and resources.  We applaud the tenacity of CBOE’s in-house legal team, who fought alongside us since 2006.”

In determining that ISE must pay CBOE’s attorneys’ fees, Judge Lefkow writes in her opinion that “ISE’s refusal to accept the rulings of this court and the Federal Circuit exceeded the bounds of reasonable advocacy.”  She added, “Under all the circumstances presented, the court concludes that ISE’s litigation conduct in the face of the weakness of its infringement claims stands out from most other patent cases to which this court has been assigned.  As such, the case became ‘exceptional’ after the May 2012 decision of the Federal Circuit.”  The Court will determine the amount of fees that CBOE will receive in the next phase of the proceedings.

The Fish trial team representing CBOE included David Francescani, Jonathan Marshall, and Michael Zoppo, principals in the firm’s New York office, and New York associates Brian Doyle, Leah Edelman, and Jeffrey Mok.

Fish & Richardson is a global patent, intellectual property (IP) litigation, and commercial litigation law firm with more than 400 attorneys and technology specialists across the U.S. and Europe.  Fish has been named the #1 patent litigation firm in the U.S. for 11 consecutive years.  Fish has been winning cases worth billions in controversy – often by making new law – for the most innovative clients and influential industry leaders since 1878.  For more information, visit www.fr.com.

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