Defendant’s Early Threat to Seek Fees Justifies Denial of Fee Award

Following partial summary judgment of noninfringement and a stipulated judgment, the court denied defendant's motion for attorneys’ fees under 35 U.S.C. § 285. "[Defendant] takes issue with [plaintiff's] lack of an adequate pre-filing investigation, based on his admissions that he did not prepare a claim chart, perform preliminary claim construction, or consult a patent expert prior to filing suit. . . . [I]t appears that [plaintiff] originally brought his suit . . . relying in part on the mistaken belief that the reference on [defendant's] website to 'patented AutoBins®' referred to [plaintiff's] Bins. . . . Even if this case were an exceptional case . . . this Court would exercise its discretion and decline to award fees. . . . Exhibits in the record support that [defendant] threatened to seek fees from the beginning of this litigation. Exhibits in the record also support [plaintiff's] contention that [defendant] attempted to use the threat of fees to persuade [plaintiff] to abandon all of his claims — including those claims based on [defendant's] admitted breach of the license agreement."

Wiley v. RockTenn CP, LLC, 4-12-cv-00226 (ARED September 30, 2014, Order) (Baker, J.)