United States Court of Appeals 

for the Federal Circuit ______________________ 

STONE BASKET INNOVATIONS, LLC,

Plaintiff-Appellee

v.

COOK MEDICAL LLC,

Defendant-Appellant

______________________ 

2017-2330

______________________ 

Appeal from the United States District Court for the 

Southern District of Indiana in No. 1:16-cv-00858-LJMTAB, Judge Larry J. McKinney.

______________________ 

Decided: June 11, 2018

______________________ 

 ROBERT E. FREITAS, Freitas Angell & Weinberg LLP, 

Redwood City, CA, argued for plaintiff-appellee. Also 

represented by DANIEL J. WEINBERG, JOSHUA YOUNG. 

 JAMES RICHARD FERGUSON, Mayer Brown, LLP, 

Chicago, IL, argued for defendant-appellant.

______________________ 

Before PROST, Chief Judge, WALLACH and TARANTO,

Circuit Judges.
2 STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC

WALLACH, Circuit Judge.

Appellee Stone Basket Innovations, LLC (“Stone”) 

sued Appellant Cook Medical LLC (“Cook”) in the U.S. 

District Court for the Southern District of Indiana (“District Court”), alleging infringement of U.S. Patent 

No. 6,551,327 (“the ’327 patent”). Following a dismissal

with prejudice, see Stone Basket Innovations, LLC v. Cook 

Med. LLC (Stone Basket I), No. 1:16-cv-00858-LJM-TAB

(S.D. Ind. Jan. 11, 2017) (J.A. 1157), Cook filed, inter 

alia, a motion for attorney fees pursuant to 35 U.S.C. 

§ 285 (2012) (“the § 285 Motion”). The District Court 

issued an order denying the § 285 Motion. Stone Basket 

Innovations, LLC v. Cook Med. LLC (Stone Basket II), No. 

1:16-cv-00858-LJM-TAB, 2017 WL 2655612, at *1 (S.D. 

Ind. June 20, 2017). 

Cook appeals. We have jurisdiction pursuant to 

28 U.S.C. § 1295(a)(1) (2012). We affirm.

BACKGROUND

In April 2015, Stone filed its patent infringement suit 

against Cook in the U.S. District Court for the Eastern 

District of Texas (“Eastern District”), alleging infringement of the ’327 patent. J.A. 41–44. The ’327 patent 

relates to a basket-type stone extraction medical device 

used to remove stones from biological systems. See ’327 

patent, Abstract, col. 1 ll. 9–12. The claimed extraction 

basket includes a “support filament” such as a wire with a 

slideable outer sheath, “a handle comprising a sheath 

movement element,” and a “collapsible” wire basket used 

to collect the stone. Id. col. 6 ll. 10, 16, 19; see id. col. 6 

ll. 8–45 (claim 1); see also id. col. 5 ll. 1–17. 

In May 2015, Cook filed a motion to transfer venue 

from the Eastern District to the District Court. J.A. 59–

71. In October 2015, Cook served its invalidity contentions. J.A. 1598–625. In January 2016, Cook deposed the 

’327 patent’s inventor, during which he was asked ques-
STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC 3

tions about his contact with Stone’s managing members, 

Daniel Mitry and Timothy Salmon, and the conception 

and filing of the ’327 patent. J.A. 1504–05, 1510, 

1526−27. Specifically, the ’327 patent’s inventor stated, 

regarding the addition of the “sheath movement element” 

in claim 1 to overcome an examiner’s rejection, “I realize 

there is nothing novel about it.” J.A. 1510. 

In March 2016, Cook petitioned the U.S. Patent and 

Trademark Office’s (“USPTO”) for inter partes review 

(“IPR”) of all claims of the ’327 patent. See J.A. 1628−75; 

see also Stone Basket II, 2017 WL 2655612, at *3. Meanwhile, upon granting Cook’s Motion to Transfer Venue, 

J.A. 832–34, the Eastern District transferred the case to 

the District Court. Then, in April 2016, the parties filed a 

joint motion to stay the case pending the Patent Trial and 

Appeal Board (“PTAB”)’s consideration of Cook’s petition 

for an IPR, which the District Court granted. J.A. 

841−43.

In September 2016, the PTAB instituted an IPR on all 

claims of the ’327 patent. Stone Basket II, 2017 WL 

2655612, at *3. Following the PTAB’s institution, one of 

Stone’s managing members offered to license the ’327 

patent to Cook in exchange for $150,000.00. Id.; see 

J.A. 1714 (confirming license offer in affidavit by Cook’s 

attorney). However, negotiations broke down. See J.A. 

1716–22 (providing an email exchange between counsel). 

In December 2016, Stone filed a motion requesting adverse judgment in the IPR proceeding, J.A. 1724–26, and 

the PTAB granted the adverse judgment motion and 

cancelled all of the ’327 patent’s claims, J.A. 1729–30. 

That same month, Stone moved to dismiss the District 

Court litigation with prejudice, see J.A. 885, which the 

District Court granted, see Stone Basket II, 2017 WL 

2655612, at *3. In March 2017, Cook filed its § 285 Motion, J.A. 1233−61; however, the District Court denied the 
4 STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC

§ 285 Motion, because it determined the case was not 

“exceptional,” Stone Basket II, 2017 WL 2655612, at *1. 

DISCUSSION

I. Standard of Review and Legal Standard

By statute, a “court in exceptional cases may award 

reasonable attorney fees to the prevailing party.” 35 

U.S.C. § 285. “[A]n ‘exceptional’ case is simply one that 

stands out from others with respect to the substantive 

strength of a party’s litigating position (considering both 

the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Octane 

Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 

1749, 1756 (2014). The Supreme Court explained that 

“[t]here is no precise rule or formula for making” that 

determination. Id. (alteration in original) (internal quotation marks and citation omitted). Instead, “[d]istrict 

courts may determine whether a case is ‘exceptional’ in 

the case-by-case exercise of their discretion, considering 

the totality of the circumstances.” Id.

On appeal, we “review all aspects of a district court’s 

§ 285 determination for abuse of discretion.” Highmark 

Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 

1747 (2014). “We apply Federal Circuit case[]law to the 

§ 285 analysis, as it is unique to patent law.” Digeo, Inc. 

v. Audible, Inc., 505 F.3d 1362, 1366 (Fed. Cir. 2007) 

(citation omitted). A district court abuses its discretion 

when it “base[s] its ruling on an erroneous view of the law 

or on a clearly erroneous assessment of the evidence.” 

Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs., Inc., 858 F.3d 1383, 1387 (Fed. Cir. 2017) 

(quoting Highmark, 134 S. Ct. at 1748 n.2). “A factual 

finding is clearly erroneous if, despite some supporting 

evidence, we are left with the definite and firm conviction 

that a mistake has been made.” Id. (internal quotation 

marks and citation omitted).
STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC 5

II. The District Court Did Not Abuse Its Discretion in 

Denying Cook’s § 285 Motion 

This appeal involves two main issues, namely, whether the District Court erred in its assessment of: (1) the 

substantive strength of Stone’s litigating position, and 

(2) the alleged pattern of vexatious litigation by Stone. 

We address these issues in turn.

A. The Substantive Strength of Stone’s Litigating Position

Under Octane, a district court may consider “the substantive strength of a party’s litigating position” when 

determining if the case “stands out from others.” 134 S.

Ct. at 1756. The District Court analyzed the record—

including the ’327 patent’s prosecution history and prior 

art, the inventor’s deposition testimony concerning the 

sheath’s “novelty,” and Stone’s decision to cancel its 

patent—yet ultimately found these factors did not demonstrate that Stone had “willfully ignored the prior art or 

failed to evaluate its case,” or that Stone’s “actions 

were . . . objectively unreasonable in light of the circumstances.” Stone Basket II, 2017 WL 2655612, at *5 (internal quotation marks omitted). Cook argues that the

District Court “disregarded both the law and the facts 

showing the weakness of [Stone’s] patent claims.” Appellant’s Br. 24 (capitalization modified). We disagree with 

Cook. 

The District Court did not abuse its discretion in finding that the substantive strength of Stone’s ultimately 

non-prevailing litigating position did not warrant an 

award of fees. Cook submitted two primary pieces of 

evidence to support its arguments for exceptionality—

Cook’s invalidity contentions served in the Eastern District and the ’327 patent’s inventor testimony. The District Court did not abuse its discretion in finding that

neither piece of evidence, taken alone or together, warranted a finding of exceptionality. 
6 STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC

First, the District Court did not err in finding Stone 

lacked any type of “clear notice” of the ’327 patent’s invalidity by service of Cook’s invalidity contentions. Id. at

25; see Stone Basket II, 2017 WL 2655612, at *4. Although Cook focuses on the obviousness of the ’327 patent 

over U.S. Patent No. 6,168,603 (“Leslie”) on appeal, that 

reference was not the focus of Cook’s invalidity contentions, which listed Leslie along with thirty-one other 

pieces of prior art as anticipatory references. J.A. 1601–

02; see also J.A. 1602 (singling out only other prior art 

references Gilson and Greenhalgh—not Leslie—from that 

list of thirty-two). After providing that list of thirty-two 

references, Cook made the general statement that “[e]ach 

prior art reference disclosed above [in the list of thirtytwo], either alone or in combination . . . , renders the 

asserted claims invalid as obvious,” J.A. 1602, included a 

legal standard section for motivation to combine, 

J.A. 1603–05, and attached inconsistent and unilluminating claim charts, see, e.g., J.A. 1614–25 (attaching claim 

charts lacking inclusion of Leslie), J.A. 1601, 1614, 1619 

(referencing U.S. Patent No. 6,383,196 (“the ’196 patent”), 

which is another patent issued to Leslie, in the claim 

chart for only two of claim 1’s seven claim limitations 

despite the fact that Cook includes the ’196 patent in its 

list of anticipatory references). The Eastern District’s 

Local Patent Rules governing invalidity contentions 

require that “each such combination, and the motivation 

to combine such items, must be identified,” and “[a] chart 

identifying where specifically in each alleged item of prior 

art each element of each asserted claim is found.” E.D. 

Tex. P.R. 3-3(b), (c).1 While compliance with local patent 

rules is not always necessary to provide “clear notice” of 

1 In a letter between counsel, Stone asserted its position that Cook’s invalidity contentions were not in 

compliance with the Eastern District’s local patent rules. 

J.A. 1942–43. 

 
STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC 7

invalidity, Cook’s invalidity contentions, at minimum, fall

short of notifying Stone how Leslie renders the ’327 

patent obvious—or even that Stone should conduct a 

focused investigation on whether Leslie, in particular,

renders the ’327 patent obvious. 

Moreover, Leslie is listed on the face of the ’327 patent, see ’327 patent, References Cited, and when prior art 

“is listed on the face” of a patent, “the examiner is presumed to have considered it,” Shire LLC v. Amneal 

Pharm., LLC, 802 F.3d 1301, 1307 (Fed. Cir. 2015). We 

have explained that, where a party only relies on prior art 

considered by an examiner in its invalidity contentions, 

that party has the burden to “overcome[e] the deference 

that is due to a qualified government agency presumed to 

have properly done its job, which includes one or more 

examiners who are assumed to have some expertise in 

interpreting the references and . . . whose duty it is to 

issue only valid patents.” PowerOasis, Inc. v. T-Mobile 

USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (internal 

quotation marks and citation omitted). Having been 

issued a valid patent, Stone was entitled to a presumption 

of good faith in asserting its patent rights against Cook in 

the form of a suit for infringement. See Checkpoint Sys., 

Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir. 

2017) (stating there is a “presumption that an assertion of 

infringement of a duly granted patent is made in good 

faith” (internal quotation marks and citation omitted)). 

Cook’s invalidity contentions, based on prior art already 

considered by the Examiner and with no further explanation, do not make the substantive strength of Stone’s 

position exceptional. 

Second, while one might view Stone’s litigating position as weak given the inventor’s deposition testimony 

regarding the novelty and origin of claim 1’s sheath 

handle element, see J.A. 1504–05, 1510, 1526−27, a strong 

or even correct litigating position is not the standard by 

which we assess exceptionality, see SFA Sys., LLC v. 
8 STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC

Newegg Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015). “A 

party’s position on issues of law ultimately need not be 

correct for them to not ‘stand[] out,’ or be found reasonable.” Id. (quoting Octane, 134 S. Ct. at 1756). We decline 

Cook’s invitation to take out of context the inventor’s

testimony, including that the ’327 patent’s hired illustrator used the Cook basket handle as inspiration for a 

portion of the ’327 patent’s Figure 1. See J.A. 1504–05, 

1510 (stating by inventor that the ’327 patent’s representations were “based on” “the Cook handle”). 

Moreover, contrary to Cook’s argument, an inventor’s 

testimony that “there is nothing novel about [the sheath 

movement],” J.A. 1510, taken alone, neither “establishe[s] 

the invalidity of the patent on obviousness grounds” nor 

constitutes a “material false statement[] to the [US]PTO,” 

Appellant’s Br. 27, 28. A post-issuance statement regarding a single element of a claimed invention does not 

establish invalidity because “[w]e must consider the 

subject matter sought to be patented taken as a whole.” 

Graham v. John Deere Co., 383 U.S. 1, 32 (1966). During 

prosecution, the USPTO found that the inventor’s 

amendment adding the “handle portion comprising a 

sheath movement element, . . . as proposed, would overcome the rejection.” J.A. 1446. Indeed, duly issued 

patents are presumed valid. See 35 U.S.C. § 282(a); 

Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011). 

It was not necessarily unreasonable for Stone to continue 

to rely on the ’327 patent’s presumption of validity despite 

the ’327 patent’s inventor testimony. See Q-Pharma, Inc. 

v. Andrew Jergens Co., 360 F.3d 1295, 1303 (Fed. Cir. 

2004) (concluding, in an appeal from a denial of a fee 

award, that a party’s decision to proceed with a lawsuit

was not frivolous “in light of the statutory presumption of 

validity”). As the trier of fact, the District Court had 

discretion to weigh and find credible the evidence before 

it. See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 

856 (1982) (“Determining the weight and credibility of the 
STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC 9

evidence is the special province of the trier of fact.”). We 

will not disturb its findings on appeal. 

In response to Cook’s contention that Stone’s litigating position was “not tenable,” the District Court explained that: 

perhaps most telling, was the fact that following 

Cook’s service on [Stone] of its invalidity contentions, it took no actions to ensure a rapid termination of the instant litigation . . . [including that it, 

inter alia,] did not: (1) inform [Stone] that it believed the lawsuit to be frivolous or unfounded;

[or] (2) demand that [Stone] drop the lawsuit or 

indicate that the asserted claims were ‘clearly invalid.’ 

Stone Basket II, 2017 WL 2655612, at *4 (emphasis 

added). On appeal, Cook faults the District Court for 

citing “no authority for the proposition that tactical 

decisions made by the prevailing party are relevant to an 

assessment of the strength of the non-prevailing party’s 

litigating positions.” Appellant’s Br. 29. We disagree 

with Cook.

The District Court was well within its discretion to

factor in Cook’s litigation conduct, because “the conduct of 

the parties is a relevant factor under Octane’s totality-ofthe-circumstances inquiry, including the conduct of the 

movant.” Gaymar Indus., Inc. v. Cincinnati Sub-Zero 

Prods., Inc., 790 F.3d 1369, 1373 (Fed. Cir. 2015) (footnote 

omitted) (considering conduct of the movant in assessing 

exceptionality). Such conduct includes Cook’s failure to 

send any communication to Stone that highlighted and 

set out with precision the specific invalidity argument on 

which Cook now relies for its assertion that Stone should 

have known its conduct was “clearly unreasonable,” 

Appellant’s Br. 17, or “objectively baseless,” id. at 25, so 

as to merit an award of attorney fees. 
10 STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC

Further, Cook’s failure to provide early, focused, and 

supported notice of its belief that it was being subjected to 

exceptional litigation behavior further supports the 

District Court’s determination that Stone’s litigating 

position did not “stand[] out” from others. Octane, 134 S. 

Ct. at 1756. Absent any evidence that Stone’s litigating 

position was frivolous when filed or at any point before it 

filed for dismissal, we are not persuaded the District 

Court abused its discretion in determining Stone’s case 

did not meet the standard for an award of attorney fees. 

Cf. Nat’l Oilwell Varco, L.P. v. Omron Oilfield & Marine, 

Inc., 676 F. App’x 967, 973 (Fed. Cir. 2017) (affirming 

award of attorney fees where a party was “on notice” of its 

potentially frivolous litigating position based on information provided by the opposing party, yet took no action 

to remedy its position).

Here, litigation commenced in April 2015, J.A. 29, and 

Cook served its invalidity contentions in October 2015, 

Stone Basket II, 2017 WL 2655612, at *2. The ’327 patent 

inventor’s testimony regarding the novelty of the sheath

was taken in January 2016. J.A. 1839. The USPTO 

instituted the IPR in September 2016, J.A. 1690−91, at 

which time the litigation was stayed pending the IPR’s

outcome, see Stone Basket II, 2017 WL 2655612, at *3. At 

each of these points during the litigation, we find nothing 

of record supporting Cook’s claim that Stone was “on clear 

notice” of the ’327 patent’s invalidity, yet “persisted in 

pressing . . . meritless claims.” Appellant’s Br. 25; see id.

(relying only upon evidence of service of invalidity contentions and the inventor admissions as proof that Stone 

knew at those points its claims were meritless). 

Moreover, a “party cannot simply hide under a rock, 

quietly documenting all the ways it’s been wronged, so 

that it can march out its ‘parade of horribles’ after all is 

said and done.” Aten Int’l Co. v. Uniclass Tech., No. CV 

15-04424-AG (AJWx), slip op. at 5 (C.D. Cal. Mar. 30, 

2018). We find this reasoning both persuasive and appli-
STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC 11

cable to this case. Cook waited until October 2016, nearly 

a year after service of its invalidity contentions, and nine 

months after the inventor’s statements regarding the 

sheath’s novelty, before informing Stone that, if Stone 

refused to drop its case, “Cook intend[ed] to file . . . a 

motion for attorneys’ fees against [Stone], its principals 

and its attorneys.” J.A. 1717. During oral argument, 

counsel for Cook could not explain why it did not make its 

assertion of frivolousness of the claims known to Stone 

sooner. See Oral Arg. at 11:37–12:19, http://

oralarguments.cafc.uscourts.gov/default.aspx?fl=2017-

2330.mp3 (Q: “That [October 2016] email is . . . the kind

of communication I am talking about, that is, it 

says . . . that if you don’t accept our settlement, then [we 

will file for attorney fees].” A: “I recognize that . . . .” 

Q: “It’s just that [the September 2016 letter] came very 

late, . . . and the proceedings ended . . . six weeks later.” 

A: “Yes . . . .” Q: “Why didn’t you send something like 

that [September 2016 settlement email] before?” A: “I 

didn’t think it would produce the result we were likely to 

see . . . .” (emphasis added)). 

Cook argues that the Motion to Transfer Venue meant

any possible notification to Stone while the case was 

before the Eastern District would not have resulted in the 

preferred result of dismissal. See id. at 5:51–6:05 (stating, by Cook’s counsel, that he felt “neither the [Federal] 

Rule 11 [of Civil Procedure] nor the early summary judgment [motion] was going to give us an early exit” because 

of the “pending motion to transfer”). It does not matter

that a procedural motion was pending in the Eastern 

District; nothing prevented counsel for Cook from notifying Stone’s counsel that Cook regarded Stone’s litigating 

actions as frivolous and explaining precisely why. Cook’s 

counsel acknowledged as much. See id. at 11:30–33 

(stating, by counsel for Cook, “maybe we could have 

written a letter”). Nor did anything prevent Cook from 
12 STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC

asking the Eastern District to expedite its ruling on the 

Motion to Transfer Venue. See Fed. R. Civ. P. 16(a).

We are further unpersuaded by Cook’s counterargument that this case is similar to Rothschild, see Appellant’s Br. 27 (citing 858 F.3d at 1388), in which we 

reversed a district court’s denial of a § 285 motion because 

the district court failed to consider plaintiff’s “willful 

ignorance of the prior art” given counsel for plaintiff

admitted that counsel had “not conducted an analysis of 

any of the prior art asserted in [the cross-motion] to form 

a belief as to whether that prior art would invalidate” the 

patent. Rothschild, 858 F.3d at 1388. In Rothschild, the 

defendant also provided notice that the patent was invalid 

under 35 U.S.C. §§ 101 and 102, and filed a motion for 

judgment on the pleadings. See id. at 1385–86. The

defendant further served plaintiff with a Rule 11 letter

and appended both a draft Rule 11(b) motion and copies of 

anticipatory prior art. Id. at 1386. Here, by contrast, 

Cook failed to file any Rule 11 motion or motions for 

summary judgment, and has not set forth any concrete 

evidence that the District Court failed to consider Stone’s 

evaluation of its case in light of the evidence of record. 

Our holding with respect to this factor does not disturb the rule that “a party cannot assert baseless infringement claims and must continually assess the 

soundness of pending infringement claims.” Taurus IP, 

LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1328 (Fed. 

Cir. 2013); see Medtronic Navigation, Inc. v. BrainLAB 

Medizinische Computersysteme GmbH, 603 F.3d 943, 954 

(Fed. Cir. 2010) (providing “[t]he salient inquiry is whether [plaintiff’s] claims were so lacking in merit that [the 

plaintiff] was legally obligated either to abandon its case 

altogether or to limit itself to challenging the district 

court’s claim construction order on appeal”). Indeed, by

December 2016, Stone moved to dismiss this litigation, 

and after a hearing on the same, the District Court dismissed with prejudice. See Stone Basket II, 2017 WL 
STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC 13

2655612, at *3. On the particular facts of this case, where 

there is no indication of willful ignorance or failure to 

assess the soundness of pending claims by Stone, Cook’s 

post-judgment notice of its assertion that the claims were 

always baseless cannot mandate an award of fees under a

“totality of the circumstances” analysis. Octane, 134 S.

Ct. at 1756. Accordingly, the District Court did not abuse 

its discretion in concluding that Stone’s litigating position 

did not “stand[] out from others.” Id. 

B. Stone’s Conduct in Other Litigation

In considering the “totality of the circumstances” in a 

§ 285 motion, a party’s similar conduct in other litigation 

is also relevant. See id. at 1757. The District Court found 

a lack of evidence to support Cook’s assertion that Stone 

sued Cook, like it had done other defendants, “for the sole 

purpose of forcing settlements without any intention of 

testing the merits of its claim.” Stone Basket II, 2017 WL 

2655612, at *6 (internal quotation marks and citation 

omitted). Further, the District Court noted that “[t]he 

evidence of record reveals that [Stone] participated in 

each stage of the litigation for nearly two years and tested 

the merits of its claims.” Id. Cook alleges the District 

Court improperly found that Cook made “conclusory 

allegations” regarding Stone’s alleged pattern of “vexatious litigation” solely “to extract a . . . nuisance payment.” Appellant’s Br. 38. Instead, Cook avers that its 

evidence of more than 400 cases filed by entities managed 

by Stone’s managing members, Messrs. Mitry and Salmon, demonstrates that Stone is part of a larger plan to 

force nuisance settlements, constituting exceptional 

litigation conduct. Id. at 38–41 (citing J.A. 1284–340). 

We disagree with Cook.

A district court “may award fees in the rare case in 

which a party’s unreasonable conduct—while not necessarily independently sanctionable—is nonetheless so 

‘exceptional’ as to justify an award of fees.” Octane, 134 S.
14 STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC

Ct. at 1757. The Supreme Court has characterized § 285 

as a “safeguard[]” and has “stress[ed]” that “district courts 

have the authority and responsibility to ensure frivolous 

cases are dissuaded.” Commil USA, LLC v. Cisco Sys., 

Inc., 135 S. Ct. 1920, 1930−31 (2015) (citation omitted). 

We have stated that “a pattern of litigation abuses characterized by the repeated filing of patent infringement 

actions for the sole purpose of forcing settlements, with no 

intention of testing the merits of one’s claims, is relevant 

to a district court’s exceptional case determination under 

§ 285.” Newegg, 793 F.3d at 1350. 

Here, despite Cook’s table summarizing the extent of 

other Mitry-Salmon litigation, the District Court did not 

abuse its discretion.2 The record lacks evidence that the 

number of settlements or type of settlement Stone proposed rises to what we have previously considered exceptional. See Eon-Net LP v. Flagstar Bancorp, 653 F.3d 

1314, 1326–27 (Fed. Cir. 2011) (affirming a finding of 

exceptionality based on discovery misconduct and EonNet’s filing of over 100 lawsuits against “diverse defendants,” where Eon-Net “followed each filing by a demand 

2 While we affirm the District Court’s ultimate exceptionality determination, which considered evidence 

that Messrs. Mitry and Salmon are in the business of 

forming shell entities to extract nuisance settlements, see 

Stone Basket II, 2017 WL 2655612, at *6 & n.3, we note 

that Messrs. Mitry and Salmon appear to be patent 

attorneys who have been authorized to practice law, see 

J.A. 60; see also Oral Arg. at 19:05–11 (confirming the 

same by Stone’s counsel). Alternative means exist for 

punishing activities by licensed attorneys that might 

demonstrate unethical conduct. See Oral Arg. at 33:01–18 

(agreeing, by counsel, that “there are plenty of remedies 

that are available” if a party has been subject to improper 

conduct).

 
STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC 15

for a quick settlement at a price far lower than the cost to 

defend the litigation,” which was demonstrated by evidence of pro-forma settlement offers based on a license fee 

schedule of a defendant’s annual sales). Further, we find 

no evidence of an immediate settlement demand in the 

instant case. Instead, Stone litigated its position on the 

merits for nearly two years, presenting claim construction 

arguments before the District Court and responses to the

IPR petition before the PTAB. As the Supreme Court has

cautioned, fee awards are not to be used as a “penalty for 

failure to win a patent infringement suit.” Octane, 134 S. 

Ct. at 1753 (internal quotation marks and citation omitted). The District Court analyzed but ultimately found 

unpersuasive Cook’s arguments, and we see no reason to

upset the District Court’s findings here. Therefore, we 

affirm the District Court’s determination that this case is 

not exceptional under 35 U.S.C. § 285.3 

3 Because we uphold the District Court’s finding of 

no exceptionality, we also affirm the District Court’s 

denial of Cook’s motion for attorney fees pursuant to 28 

U.S.C § 1927. See Stone Basket II, 2017 WL 2655612, at 

*3, *7–8. Cook’s only additional argument for why it 

merits fees under § 1927 is that Stone’s attorneys pursued 

“unnecessary . . . litigation” by filing suit in the Eastern 

District. Appellant’s Br. 41. We held the District Court 

did not abuse its discretion in denying fees under § 1927 

based upon its findings under the § 285 analysis as well 

as the fact that “Cook’s own counsel stated on the record 

that Cook sells the product in Texas and that there was 

no question about venue.” Stone Basket II, 2017 WL 

2655612, at *8 (internal quotation marks and citation 

omitted); see Jolly Grp., Ltd. v. Medline Indus., Inc., 435 

F.3d 717, 720 (7th Cir. 2006) (outlining the Seventh 

Circuit’s test for attorney fees under § 1927 and reviewing 

for abuse of discretion); Nystrom v. TREX Co., Inc., 424 

 
16 STONE BASKET INNOVATIONS, LLC v. COOK MED. LLC

CONCLUSION

We have considered Cook’s remaining arguments and 

find them unpersuasive. Accordingly, the Order of the 

U.S. District Court for the Southern District of Indiana is

AFFIRMED

F.3d 1136, 1141 (Fed. Cir. 2005) (reviewing a § 1927 

challenge under regional circuit law). We also affirm 

(1) the District Court’s denial of Cook’s motion to join 

Messrs. Mitry and Salmon, as that motion depends upon

their personal liability for Cook’s fees under § 285, and 

(2) the District Court’s denial of Cook’s renewed motion 

for leave to conduct targeted discovery related to the § 285 

Motion.