Tuesday, July 17, 2018

Bad Faith Assertion of Invalidity Defense Solely to Extend ITC Preclusion Order Justifies Award of Attorney Fees

The court granted in part plaintiff's requested fees under 35 U.S.C. § 285 because defendant maintained its invalidity defense solely to extend the time of an ITC preclusion order. "⁠[T]he ITC exclusion bar relating to Claims 8 and 19 remains in effect, even though the independent claims upon which these dependent claims rest are invalid. . . . Because the Court finds that [defendant's] actions regarding the issue of obviousness on Claims 8 and 19 were not made in good faith, but as an attempt to extend the time of the ITC preclusion order on these two claims directed against [plaintiff], the Court finds this portion of the case to be sufficiently exceptional to warrant awarding [plaintiff] one half of the attorneys' fees incurred during the week of the trial (to reflect [plaintiff's] attorney time spent on the issue of invalidity of [defendant's] patent), and all fees of [plaintiff's expert], relevant to the issue of invalidity of claims 8 and 19 of [defendant's] patent. Although there could perhaps be justification for awarding [plaintiff's] expenses as far back as the CAFC decision, the Court limits the sanctions to one half of the attorneys' fees for [two witnesses] incurred during the trial itself and all of [its expert's] fees related to the issue of invalidity. . . ."

Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc. et al, 2-15-cv-00522 (WAWD July 13, 2018, Order) (Donohue, MJ)

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