United States Court of Appeals 

for the Federal Circuit ______________________ 

REALTIME ADAPTIVE STREAMING L.L.C.,

Plaintiff-Appellant

v.

SLING TV, L.L.C., SLING MEDIA, L.L.C., DISH 

NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,

Defendants-Appellees

SLING MEDIA, INC., ECHOSTAR TECHNOLOGIES 

LLC,

Defendants

______________________ 

2023-1035

______________________ 

Appeal from the United States District Court for the 

District of Colorado in No. 1:17-cv-02097-RBJ, Judge R. 

Brooke Jackson.

______________________ 

Decided: August 23, 2024 

______________________ 

PHILIP WANG, Russ August & Kabat, Los Angeles, CA, 

argued for plaintiff-appellant. Also represented by PAUL 

ANTHONY KROEGER, BRIAN DAVID LEDAHL, REZA MIRZAIE. 

 ADAM SHARTZER, Fish & Richardson P.C., Washington, 

DC, argued for defendants-appellees. Also represented by 

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2 REALTIME ADAPTIVE STREAMING L.L.C. v. SLING TV, L.L.C. 

MICHAEL JOHN BALLANCO, RUFFIN B. CORDELL, BRIAN 

JAMES LIVEDALEN. 

______________________ 

Before MOORE, Chief Judge, LOURIE, Circuit Judge, and 

ALBRIGHT, District Judge1.

ALBRIGHT, District Judge. 

Appellant Realtime Adaptive Streaming LLC appeals 

from an award of attorneys’ fees from the United States 

District Court for the District of Colorado. 

The district court’s fees award to defendants was based 

on six so-called “red flags.” It found that those red flags 

should have served as warning signs to Realtime that its 

case was fatally flawed. And in “carrying on despite numerous danger signals. . . [plaintiff] accepted the risk of 

having to reimburse defendants’ reasonable attorneys’ 

fees.” J.A. 8. The district court found that “the totality of 

the circumstances,” in light of those six red flags, rendered 

the case exceptional. Id. We vacate and remand because 

the district court abused its discretion in determining the 

case exceptional for the reasons below. 

BACKGROUND

Plaintiff-Appellant Realtime Adaptive Streaming LLC 

(“Realtime” or “plaintiff”) initially sued DISH and related 

Sling entities (collectively, “DISH” or “defendants”) on August 31, 2017, for alleged infringement of U.S. Patent Nos. 

8,275,897 (“the ’897 patent”); 8,867,610 (“the ’610 patent”); 

and 8,934,535 (“the ’535 patent”). The asserted patents are 

generally related to digital data compression. The district 

1 Honorable Alan D Albright, District Judge, United 

States District Court for the Western District of Texas, sitting by designation.

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REALTIME ADAPTIVE STREAMING L.L.C. v. SLING TV, L.L.C. 3

court ultimately found the asserted claims of the ’610 patent ineligible as abstract under 35 U.S.C. § 101. 

Early in the case, defendants filed motions to dismiss 

and motions for judgment on the pleadings. Defendants

asked the district court to find the asserted claims invalid 

under § 101. J.A. 256–57. The district court denied those 

motions and, instead, instructed the parties it would rehear any invalidity arguments after claim construction. 

J.A. 391–96. The district court added that its denial was 

based in part on other districts’ decisions finding similar 

data compression claims eligible and valid. Id. The court 

remarked during a hearing that it was “satisfied with the 

merits” of the other district court decisions upholding the 

eligibility of similar patents. J.A. 391. 

In October 2018, the Central District of California issued an order finding, inter alia, Claims 15–30 of the ’535 

patent ineligible under § 101. Realtime Adaptive Streaming LLC v. Google LLC, No. 2:18-cv-03629-GW-JC, ECF 

No. 36 (C.D. Cal. Oct. 25, 2018) (the “Google decision”); J.A. 

1332–45. The Central District of California determined 

that Claims 1–14 of the ’535 patent were eligible because 

they were “tied to specific computer systems that ‘improve[]

computer functionality in some way’ rather than being 

drawn to purely abstract concepts.” J.A. 1340 (quoting 

Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 

2018)). Less than two months later, a magistrate judge in 

the District of Delaware also found Claim 15 of the ’535 

patent (as a representative claim) ineligible because it provided “no technical detail describing how to achieve” the 

results it claims. Realtime Adaptive Streaming LLC v. Netflix, Inc., No. 17-1692, 2018 WL 6521978, at *6 (D. Del. 

Dec. 12, 2018) (the “Netflix decision”); J.A. 1478. Collectively, the district court treated these decisions as the first 

red flag. 

In January 2019, the district court issued its claim construction ruling in this case. J.A. 1184. Concurrently, the 

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4 REALTIME ADAPTIVE STREAMING L.L.C. v. SLING TV, L.L.C. 

’535 and ’610 patents were subject to inter partes review 

(“IPR”) proceedings at the U.S. Patent and Trademark Office, Patent Trial and Appeal Board (“Board”). J.A. 1387. 

Shortly thereafter, in February 2019, the district court 

stayed the infringement litigation pending the IPR proceedings. J.A. 95 at ECF No. 162. One of those IPR proceedings resulted in Claims 1–14 of the ’535 patent being 

found to be unpatentable on obviousness grounds. This 

was the third red flag, the second red flag being this Court’s 

decision in Adaptive Streaming Inc. v. Netflix, Inc., 836 F. 

App’x 900 (Fed. Cir. 2020). Plaintiff then withdrew its 

claims under the ’535 patent. J.A. 1219. The IPR against 

the ’610 patent was terminated as untimely by the Board—

a decision this Court affirmed. Sling TV, L.L.C. v. Realtime 

Adaptive Streaming LLC, 840 F. App’x 598 (Fed. Cir. 

2021).

Since no IPRs against the ’610 patent (the only remaining asserted patent against DISH) remained, the district 

court lifted the stay on January 15, 2021, almost two years 

after the stay was entered. According to the district court, 

defendants’ fees started to accrue once the stay was lifted. 

J.A. 3. Shortly after the stay was lifted, the fourth red flag 

occurred: the USPTO issued non-final office actions rejecting Claim 1 of the ’610 patent as obvious as part of an ex 

parte reexamination. J.A. 7. The district court found it 

notable that DISH sent Realtime a letter conveying its belief the ’610 patent was invalid and expressing its intention 

to seek attorneys’ fees should Realtime continue to press 

its case. This notice letter became the fifth red flag.

Once expert discovery was completed, the parties filed 

dispositive motions. As part of this process, defendants 

submitted the expert declaration of Dr. Alan C. Bovik. J.A. 

7. Even though Realtime promptly moved to exclude Dr. 

Bovik’s opinions, the Court treated the Bovik declaration 

as the sixth and final red flag.

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On July 31, 2021, the district court granted DISH’s motion for summary judgment of invalidity. Realtime Adaptive Streaming LLC v. Sling TV L.L.C., No. 17-CV-02097-

RBJ, 2021 WL 3888263 (D. Colo. July 31, 2021), aff’d, 

No. 21-2268, 2023 WL 3373583 (Fed. Cir. May 11, 2023) 

(per curiam); J.A. 2001–15. The court found the Google and 

Netflix decisions concerning Claim 15 of the ’535 patent instructive as to the asserted claims of the ’610 patent’s subject matter eligibility and the Alice Step One analysis. J.A.

2004. Claim 15 of the ’535 patent and Claim 1 of the ’610 

patent are almost identical, except for the added limitation 

of a “a throughput of a communication channel” found in 

the ’610 patent. Realtime argued that this additional limitation solves a computer-specific problem and is thus not 

directed to an abstract idea at Alice Step One. J.A. 1759–

68. The district court disagreed. J.A. 2011. As for Alice

Step Two, the district court found Realtime presented no 

genuine issue of fact as to whether the claims at issue in 

the ’610 patent included an inventive concept. Id. The district court’s order concluding Claims 1, 2, 6, 8–14, 16, and 

18 of the ’610 patent are directed to ineligible subject matter under § 101 was affirmed by this Court. Realtime 

Adaptive Streaming LLC v. Sling TV, L.L.C., No. 2021-

2268, 2023 WL 3373583 (Fed. Cir. May 11, 2023) (per curiam).

While that finding of invalidity was on appeal, the district court granted DISH’s Motion for Attorneys’ Fees. The 

district court’s order awarding fees highlighted the aforementioned six “red flags” or danger signals. The court 

found that “Realtime’s dogged pursuit of the case notwithstanding those danger signals renders this an exceptional 

case.” J.A. 8. 

STANDARD OF REVIEW

A court may award fees to the prevailing party in “exceptional cases.” 35 U.S.C. § 285. An exceptional case is 

“one that stands out from others with respect to the 

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6 REALTIME ADAPTIVE STREAMING L.L.C. v. SLING TV, L.L.C. 

substantive strength of a party’s litigating position . . . or 

the unreasonable manner in which the case was litigated.” 

Octane Fitness, LLC v. ICON Health & Fitness, Inc., 

572 U.S. 545, 554 (2014). 

We review an exceptionality determination under an 

abuse of discretion standard. Highmark Inc. v. Allcare 

Health Mgmt. Sys., Inc., 572 U.S. 559, 563–64 (2014). To 

meet the abuse-of-discretion standard, the appellant must 

show a “clear error of judgment in weighing relevant factors or in basing its decision on an error of law or on clearly 

erroneous factual findings.” Energy Heating, LLC v. Heat 

On-The-Fly, LLC, 15 F.4th 1378, 1382 (Fed. Cir. 2021) 

(quotations omitted).

DISCUSSION

The district court based its decision, as it must, on “the 

totality of the circumstances.” J.A. 8; see also Octane Fitness, 572 U.S. at 554. The district court relied on the six

red flags without explaining the weight for each flag. J.A. 

1–8. Some of these red flags should not have been accorded 

any weight. Consequently, we vacate the award of attorneys’ fees and remand for the district court to decide again 

whether attorneys’ fees are warranted consistent with this 

opinion.

A. The Google and Netflix decisions finding claims of 

the ’535 patent ineligible

The first red flag the district court noted was based on

the Google and Netflix decisions. The district court described these decisions as “highly significant to [the]

Court’s ultimate determination,” with reasoning “featured 

prominently in [the Court’s] order granting summary judgment in this case.” J.A. 4–5. Considering that the ’610 patent had “nearly the same title,” a “virtually identical” 

specification, and a Claim 1 that was “so similar as to be 

essentially the same in substance” as Claim 15 of the ’535 

patent, the district court found that Google and Netflix 

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“should have featured prominently in Realtime’s thinking 

about the present case.” J.A. 4–5. The district court also 

found Realtime’s attempts to distinguish and criticize 

Google and Netflix unpersuasive. See J.A. 5.

Realtime contends that Google and Netflix cannot be 

red flags. We disagree. Realtime first argues that “the 

mere fact that Claim 15 of the ’535 patent was found ineligible did not render Realtime’s § 101 arguments as to the

’610 claims frivolous.” Appellant’s Br. 38. Realtime points 

to caselaw that § 101 is claim specific and that “it can not

be presumed that related patents rise and fall together.” 

Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535, 

1539 (Fed. Cir. 1995). While Realtime may have correctly 

quoted the law, it did not correctly understand the district 

court’s reasoning. The district court did not merely presume that the ’610 claims should follow the ’535 claims, nor 

did it rely solely on the “virtually identical” specifications. 

See J.A. 4–5. It made a specific finding that Claim 15 of 

the ’535 patent was “essentially the same in substance” as 

Claim 1 of the ’610 patent. J.A. 4. Realtime’s cites are 

therefore inapposite.

Realtime also notes that the Google decision denied 

Google’s motion to dismiss for ineligibility under § 101 as 

to U.S Patent Nos. 9,769,477 (“the ’477 patent”) and 

7,386,046 (“the ’046 patent”), as well as Claims 1–14 of the 

’535 patent. Realtime argues that Claim 15 is therefore 

distinguishable, as it does not include the throughput limitation present in the ’610 patent here. Instead, Realtime 

argues that Claim 1 is more analogous to the ’477 patent

Claim 1, which had not been previously shown to have been 

ineligible, and which also includes a throughput limitation. 

Realtime also distinguishes Claim 15 on the basis that it 

could be performed manually by a user, a concern Realtime 

believes does not apply to the ’610 patent. For the same 

reasons, Realtime also claims that Netflix is distinguished. 

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8 REALTIME ADAPTIVE STREAMING L.L.C. v. SLING TV, L.L.C. 

Realtime’s argument that Claim 1 of the ’610 patent is 

more like Claims 1–14 of the ’535 patent and the claims of 

the ’477 and ’046 patents was not adequately set forth before the district court. Realtime’s opposition to DISH’s motion for summary judgment of ineligibility set out the 

following analysis:

In Google, the Central District denied defendants’ § 101 motion for the vast majority of the 

challenged claims, including all claims of the 

related ’046 and ’477 patents, as well as 

claims 1-14 of the ’535 patent. Google at 7-8, 

11. Those claims are more like the ’610 claims 

than claim 15 of the ’535 patent that were 

found to be abstract. Indeed, the court’s decision supports the patent-eligibility of the ’610 

claims. See id. at 5-6.

J.A. 1767. Absent from the quote above is any justification 

for Realtime’s claim. We agree with the district court that 

“the response does not provide an explanation of or support 

for this conclusory statement.” J.A. 2012. The district 

court cannot be faulted for not crediting or considering an 

argument that Realtime itself failed to develop. As for 

Realtime’s other arguments—that ’610 patent Claim 1 is 

different because it contains the aforementioned throughput limitation; that ’610 patent Claim 1 cannot be performed manually; and that Netflix erred in treating Claim 

15 of the ’535 patent as representative—we note that 

Realtime made them at length in its merits appeal of the 

district court’s ineligibility decision. See Principal Brief of 

Plaintiff-Appellant Realtime Adaptive Streaming L.L.C. at 

42–48, Realtime Adaptive Streaming L.L.C. v. Sling TV, 

L.L.C., No. 21-2268, 2023 WL 3373583 (Fed. Cir. May 11, 

2023). None of these arguments stopped a panel of this 

Court from affirming. Realtime, No. 21-2268, 2023 WL 

3373583 (per curiam). Accordingly, we conclude the district court did not err in its determination that the Google 

and Netflix decisions on Claim 15 of the ’535 patent were a 

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significant red flag to Realtime to reconsider its patent eligibility position of the asserted claims of the ’610 patent. 

B. The Adaptive Streaming Decision

Along with the Google and Netflix decisions, the district

court also relied on a decision from this Court: the nonprecedential decision in Adaptive Streaming Inc. v. Netflix, Inc., 

836 F. App’x 900 (Fed. Cir. 2020). J.A. 6. In that case, this 

Court affirmed the ineligibility of claims directed to receiving a video signal in one format and broadcasting the signal 

to other devices in a different, more suitable format. See 

Adaptive Streaming, 836 F. App’x at 901. The claims at 

issue included selecting the different format “based at least 

in part on” parameters for alternate formats and dynamically selecting a video signal with a different format “in response to a change in a bandwidth condition.” Id. at 901–

02. The district court acknowledged that Adaptive Streaming was not binding, yet nevertheless treated it as a red 

flag. J.A. 6. The district court` also emphasized that 

DISH’s notice of intent to move for summary judgment of 

invalidity highlighted Adaptive Streaming. J.A. 6. 

DISH argues that Adaptive Streaming is “highly applicable to the facts here.” Appellees’ Br. 33. DISH says the 

district court correctly found it to be persuasive caselaw 

that should have impacted Realtime’s thinking. Id. DISH 

claims a “close factual relationship” between the claims at 

issue and the Adaptive Streaming claims. Id. Adaptive 

Streaming also characterized past precedential decisions of 

this Court as holding that encoding image data and converting formats are abstract ideas. 836 F. App’x at 903; see 

also Two-Way Media Ltd. v. Comcast Cable Commc’ns, 

874 F.3d 1329 (Fed. Cir. 2017); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017); Hawk Tech. Sys., 

LLC v. Castle Retail, LLC, 60 F.4th 1349 (Fed. Cir. 2023). 

Ultimately, DISH’s position is that “Adaptive Streaming 

merely applied existing law to a patent” that was “factually 

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10 REALTIME ADAPTIVE STREAMING L.L.C. v. SLING TV, L.L.C. 

close enough to the ’610 patent that Realtime should have 

considered it a red flag.” Appellees’ Br. 35–36.

Unlike the Google and Netflix decisions, the Adaptive 

Streaming decision should not have been treated as a red 

flag. Google and Netflix were significant warnings to 

Realtime in large part because they were about a similar 

patent in the same family with nearly identical claim language. Adaptive Streaming, on the other hand, was about 

a different technology entirely. Without more, such as a 

side-by-side analysis of all limitations of a claim of the ’610 

patent and the claims at issue in Adaptive Streaming,

DISH simply did not adequately show that the patent infringement claim had been rendered exceptionally meritless. The district court erred in finding that the Adaptive 

Streaming decision should have put Realtime on notice 

that its patent claims were meritless when deciding 

whether to award attorneys’ fees.

C. The Board’s invalidation of the ’535 patent

We turn next to the two Board decisions invalidating 

Claims 1–14 of the ’535 patent for anticipation and obviousness. The district court cited the Board decisions in its 

analysis, but failed to explain why the decisions were relevant in awarding attorneys’ fees. J.A. 6. 

DISH argues that the lack of novelty and obviousness 

of the ’535 patent’s claims bear on Alice Step Two with regard to the claims at issue in this case. Appellees’ Br. 36–

38. DISH argues that the Board’s decisions undercut 

Realtime’s allegation that the ’610 patent has an unconventional arrangement of claim elements. Id. When opposing summary judgment of subject matter ineligibility, 

Realtime pointed to a Board decision finding that the related ’046 patent’s “tracking throughput” limitation was a 

point of novelty used to distinguish the prior art. J.A. 

1771–72. DISH claims that considering the similarity of 

the ’535 and ’610 patents, the district court did not err in 

treating the Board decisions as red flags. We disagree. 

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At best, the two Board decisions establish that the 

throughput limitation was known in the prior art. See Netflix, Inc. v. Realtime Adaptive Streaming, LLC, 

No. IPR2018-01169, 2020 WL 120083, at *9 (P.T.A.B. Jan. 

10, 2020). But that is not enough to establish conventionality at Alice Step Two. We have held that “[w]hether a 

particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior 

art.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 

2018). “The mere fact that something is disclosed in a piece 

of prior art, for example, does not mean it was well-understood, routine, and conventional.” Id. 

And even if all limitations of the ’610 patent, including 

selecting a compression algorithm based upon a throughput of a communications channel, were conventional, that 

should not be fatal to Realtime. “[A]n inventive concept 

can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Bascom Glob. 

Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 

1350 (Fed. Cir. 2016). There simply was not enough in the 

Board decisions—which concerned different sections of the 

Patent Act and did not analyze whether anything in the 

prior art was well-understood, routine, or conventional—to 

put Realtime on notice that its arguments regarding the 

eligibility of its patent claims were entirely without merit. 

D. The reexamination of the ’610 patent finding invalidity under 35 U.S.C. § 102 and § 103 

The next red flag involved two non-final office actions

issued during the ex parte reexamination of the ’610 patent. 

These office actions rejected Claim 1, among others, as unpatentable for obviousness. After the district court issued 

its opinion awarding attorneys’ fees, the Board affirmed 

these obviousness rejections.

At the threshold, it is unclear whether these office actions were used by the district court as red flags. The district court wrote that the office actions “could have served 

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12 REALTIME ADAPTIVE STREAMING L.L.C. v. SLING TV, L.L.C. 

as additional red flags regarding the viability of Realtime’s 

case.” J.A. 7 (emphasis added). To the extent that the district court did rely on the office actions as red flags, its analysis is lacking for many of the same reasons discussed 

above regarding the ’535 patent IPR. While the office actions are at least about the same patent at issue here, that 

fact is offset by the fact that the examiner and the Board

used the broadest reasonable interpretation standard of 

claim construction. See J.A. 1685. Indeed, the Board considered and expressly rejected the district court’s construction of “throughput” in favor of a broader construction. J.A. 

2888–2901. On this record, the district court failed to adequately explain how these Board decisions sufficed to support a finding of exceptionality.

E. DISH’s notice letter to Realtime

Next, we address DISH’s February 11, 2021 letter to 

Realtime’s counsel—another red flag enumerated by the 

district court. J.A. 7. In its letter, DISH reinforced its invalidity position, asserting that “[e]ven a casual comparison of the ’610 patent asserted claims to the now invalid 

claims of the ’535 patent reveals that the ’610 asserted 

claims are likely to suffer the same ineligibility finding.” 

J.A. 2146. In doing so, DISH emphasized the similarities

of the claims of the ’610 patent to those of the Adaptive 

Streaming decision. Id. The letter, also referencing the 

Google and Netflix decisions regarding the ’535 patent, 

urged Realtime to drop its infringement claims and warned 

of the substantial litigation expense that would be incurred 

if the case continued. See J.A. 2147 (“If Realtime continues 

its pursuit of this litigation—despite all of the facts and legal determinations indicating Realtime’s litigation positions lack substantive merit—Defendants will seek costs, 

fees, and sanctions against Realtime and jointly and severally against its counsel . . . .”). It is not clear what it is

about the notice letter, viewed independently of the Google 

and Netflix decisions it referenced, that constitutes a red 

flag. The district court did not say. Instead, the district 

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court merely summarized the letter in a single sentence 

and noted that Realtime chose not to dismiss its claims. 

J.A. 7. 

If such a notice letter were sufficient to trigger § 285, 

then every party would send such a letter setting forth its 

complaints at the early stages of litigation to ensure that—

if it prevailed—it would be entitled to attorneys’ fees. This 

is not to say that communications between litigants could 

not be considered in an exceptionality determination. 

Although the letter highlighted the Google and Netflix 

decisions, the letter contains no analysis sufficient to put 

the patentee on notice that its arguments regarding ineligibility are so meritless as to amount to an exceptional 

case. In the entirety of the five-page letter, only two paragraphs were dedicated to discussing the ineligibility of the 

asserted claims of the ’610 patent. See J.A. 2146. Further 

still, these two (conspicuously short) paragraphs were riddled with conclusory statements asserting that the claims 

of the ’610 patent were similar to those of the ’535 patent 

and to the claims of the Adaptive Streaming patent. No 

further analysis, nor specific comparisons, were provided. 

Nor did DISH follow up regarding its allegations after 

Realtime responded to the notice letter eleven days later. 

Simply being on notice of adverse case law and the possibility that opposing counsel would pursue § 285 fees does 

not amount to clear notice that the ’610 claims were invalid 

and is therefore not sufficient to support an exceptionality 

finding in this case. 

F. Dr. Bovik’s analysis

The final red flag for the district court was the opinions 

of Dr. Alan C. Bovik—DISH’s expert witness. J.A. 7. Dr. 

Bovik submitted these opinions in declarations supporting 

DISH’s motions for summary judgment of invalidity generally and subject matter ineligibility specifically. J.A. 7; see

also J.A. 100–01. The district court noted that Realtime 

moved to exclude Dr. Bovik’s opinions under Federal Rule 

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14 REALTIME ADAPTIVE STREAMING L.L.C. v. SLING TV, L.L.C. 

of Evidence 702. J.A. 7. However, the opinions at issue 

were on non-infringing alternatives, making them irrelevant to this appeal. J.A. 7; see also J.A. 101. The district 

court continued: “I understand that parties to litigation 

typically are not persuaded by the opinions of the opposing 

party’s retained expert. In my view, however, Dr. Bovik’s 

opinions merited serious consideration, at least as another 

red flag concerning the potential resolution of the invalidity issue.” J.A. 7.

DISH retained Dr. Bovik, who opined that the ’610 patent is ineligible—and Realtime retained Dr. V. Thomas 

Rhyne, who opined the opposite. See J.A. 51–53. Indeed, 

Dr. Rhyne reviewed the relevant section of Dr. Bovik’s report and offered specific disagreements. See J.A. 1822–34, 

1842. This is all typical of the ordinary, unexceptional patent infringement case. Realtime and Dr. Rhyne developed 

critiques of and counterarguments to Dr. Bovik’s opinions. 

See J.A. 1822–34. That is hardly the failing to give “serious 

consideration” to Dr. Bovik’s opinions that the district 

court tasked Realtime with. See J.A. 7. While Dr. Bovik 

may have been more persuasive than Dr. Rhyne, that fact 

alone cannot properly establish Dr. Bovik’s opinions should 

have put Realtime on notice that its arguments regarding 

the asserted claims were so without merit as to amount to 

an exceptional case. 

DISH advances several arguments in support of the 

district court’s determination that this case is exceptional. 

None have merit. DISH first points to the district court’s 

endorsement of Dr. Bovik’s opinions in its order granting 

summary judgment of ineligibility, arguing that the citations to Dr. Bovik “crystallized many of the glaring deficiencies with Realtime’s eligibility arguments.” See 

Appellee’s Br. at 43; J.A. 2013–14. The district court was 

free to rely on Dr. Bovik’s opinions in ruling on the subject 

matter eligibility motion. DISH’s citations only show that 

Realtime and Dr. Rhyne took a contrary position. That is 

insufficient on its own to support a finding of 

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exceptionality. Next, in response to Realtime’s opening 

brief, DISH notes that Realtime did not provide a direct 

rebuttal declaration from Dr. Rhyne. Appellees’ Br. 43. But 

we agree with Realtime that such a declaration was unnecessary, especially here, where the parties exchanged various expert declarations covering similar issues. See, e.g., 

J.A. 1406–15 (Bovik Decl.); J.A. 1822–34 (Rhyne Decl.). 

DISH also argues that the district court is better positioned 

to make the discretionary call that Dr. Bovik’s opinion warranted serious consideration. Appellees’ Br. 44. That may 

be correct as a general principle, but the district court’s 

“discretion is not unbridled.” MarcTec, LLC v. Johnson & 

Johnson, 664 F.3d 907, 915 (Fed. Cir. 2012). Without at 

least an explanation for why Realtime and Dr. Rhyne did 

not show “serious consideration” of Dr. Bovik’s opinions, 

J.A. 7, the district court’s analysis is insufficient to support 

a finding of exceptionality. 

In sum, the district court erred in its justification of Dr. 

Bovik’s opinions as a red flag.

CONCLUSION

We have considered the parties’ remaining arguments 

and find them unpersuasive. We vacate the district court’s 

opinion awarding attorneys’ fees and remand for further 

consideration in light of this opinion. We offer no opinion 

on the correct disposition of DISH’s attorneys’ fees motion 

on remand.

VACATED AND REMANDED

COSTS

No costs.

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