Request for Attorney Fees of $1.3 Million Reduced to $100 Thousand Due to Heavily Redacted Billing Records

The court awarded defendant only $100,000 of its claimed $1.3 million in attorney fees under 35 U.S.C. § 285 because defendant failed to present sufficient evidence to support its fee claim. "No explanation is included as to nature of the tasks performed that [defendant] categorizes as exclusive to the defense of [one patent-in-suit], to which [defendant's] recovery is limited. The over 400 pages of invoices provided have been completely redacted of all narrative description of the work performed. . . . The Court is highly skeptical that the descriptive narratives of every single time entry by every single timekeeper in this case constituted an attorney-client privileged communication or work product. . . . The Court declines [defendant's] offer to provide the Court with the 400 plus pages of billing records unredacted in camera so the Court can review the individual entries and determine from the hundreds of pages the reasonableness of the work performed. . . . Measured by the pleadings and motions filed attributable to the [patent-at-issue], the Court, in its discretion, awards [defendant] $100,000.00."

IPS Group, Inc. v. Duncan Solutions, Inc., 3-15-cv-01526 (CASD August 17, 2018, Order) (Bencivengo, USDJ)

Prevailing Party’s Previously-Sanctioned Misconduct Weighs Heavily Against Award of Attorney Fees

Following remand, the court denied plaintiff's motion to reinstate its award of attorney fees under 35 U.S.C. § 285 because of plaintiff's own misconduct in seeking a TRO. "The Federal Circuit concluded not only that '⁠[plaintiff's] misconduct cannot be disregarded on the theory that failure to award fees is equivalent to double-sanctioning [plaintiff],' but also 'that [because] this misconduct has already been sanctioned[, it] should be weighed more heavily, rather than be excluded in the 35 U.S.C. § 285 analysis.' Defendants urge that '⁠[l]itigants who sanctionably lie do not deserve a fee award.' The Court sanctioned [plaintiff] for submitting [a] deceitful declaration in support of the TRO, 'without a colorable basis' and 'in bad faith, i.e., motivated by improper purposes such as harassment and delay.' Weighing this litigation misconduct more heavily, considering the Court's findings that [defendant's] noninfringement argument was not groundless and that its litigation strategy was reasonable, the Court finds that [defendant's] conduct did not warrant fee shifting as an exceptional case under either the Patent or Lanham Acts."

Romag Fasteners, Inc. v. Fossil, Inc., et al, 3-10-cv-01827 (CTD August 16, 2018, Order) (Arterton, USDJ)

Plaintiff’s Controlling Shareholder Joined as Necessary Party for Potential Attorney Fees Liability

Following summary judgment, the court granted defendant's motion to join plaintiff's founder/inventor as a necessary party and pursue attorney fees against him under 35 U.S.C. § 285. "There is no evidence in the record that establishes that [plaintiff] currently has income or liquid assets. In fact, [the founder's] own declaration shows that [plaintiff] lacks sufficient financial resources. . . . Moreover, [defendant] provides evidence that [plaintiff] has not paid its fees and costs to its former counsel for over a year. . . . Given [the founder's] controlling shareholder power and his status as the only person from [plaintiff] who is involved in this litigation, the Court finds that [his] activities may potentially subject him to liability for attorneys’ fees and that he should be joined in this action."

Phigenix, Inc. v. Genentech, Inc., 5-15-cv-01238 (CAND August 13, 2018, Order) (Freeman, USDJ)

Post-Verdict Sales of Infringing Product Support Award of Enhanced Damages

Following a jury verdict of willful infringement, the court granted in part plaintiff's motion for enhanced damages and increased the damage award by 25% because one-quarter of defendant's sales at issue took place after the verdict. "⁠[E]nhancement is appropriate in light of evidence of culpable conduct presented at trial and [defendant's] deliberate and conscious decision to continue selling [the accused product] after the verdict. . . . [O]n the pre-trial record, the question of infringement was, without doubt, debatable. But the situation changed at trial. [Plaintiff] presented credible evidence of deliberate copying. . . . The evidence also raised doubts about whether [defendant] attempted in good faith to evaluate infringement after being sued. . . . After the verdict, [defendant] continued to sell [the accused product] and did not modify the units in any way. Its course of conduct can only be seen as intentional, and entirely at its own risk."

Johnstech International Corp. v. JF Technology Berhad et al, 3-14-cv-02864 (CAND August 6, 2018, Order) (Donato, USDJ)

Judge Shopping Tactic Constitutes Serious Misbehavior Justifying Award of Attorney Fees

Following a dismissal for failure to prosecute after six years of litigation, the court granted defendants' motions for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation tactics were unreasonable. "⁠[P]laintiff filed eight separate actions in this district against parties who turned out to be [the software developer defendant's] customers. None of those cases were marked as related. . . . [A week later] plaintiff filed nine more separate actions in this district, again against parties who turned out to be [the developer's] customers. Again, none of these cases were marked as related. . . . [B]efore any of the defendants had been served -- plaintiff voluntarily dismissed every case that had not been assigned to [one judge] except [for two cases]. Then . . . plaintiff filed five more cases in this district against four more of [the developer's] customers and against [the developer] itself. This time, plaintiff marked these cases as related to each other and related to [a case] which had been assigned to [that judge]. . . . The Court therefore finds that plaintiff deliberately . . . waited to file its case against [the developer] itself until it could mark that case as related to one in front of its preferred judge. That conduct, under the circumstances, is serious misbehavior."

DataTern, Inc. v. Blazent, Inc., et al, 1-11-cv-11970 (MAD June 5, 2018, Order) (Saylor, USDJ)

Infringement by Defaulting Company Controlled by Former Employee Justifies Award of Enhanced Damages

The court granted plaintiff's motion for enhanced damages against a defaulting defendant because defendant's motivation for harm, lack of a good faith defense, lack of remedial action, duration of misconduct, and lack of closeness of the case favored treble damages. "⁠[P]rior to joining [defendant], [defendant's chairman] was employed at [company related to plaintiff], where he gained familiarity with [plaintiff's] intellectual property rights. . . and, prior to initiating this action, [plaintiff] sent [defendant] a letter notifying it of the [patent-in-suit] and [defendant's] infringing actions. Those facts, taken together with the fact that [the parties] are direct competitors, support an inference that [defendant] deliberately infringed the [patent], with the purpose of harming [plaintiff's] business. . . . [T]here is no evidence in the record to support a finding that [defendant] investigated the scope of the [patent] and formed a good-faith belief that it was invalid or that it was not infringed. . . . [T]he record is devoid of any evidence that [defendant] took remedial actions. . . . [Defendant] sold its infringing product [for almost a year]. Finally, because default judgment has already been entered as to [defendant's] liability for infringement, the closeness factor supports enhanced damages."

Sabinsa Corporation v. Olive Lifesciences Pvt. Ltd., 3-16-cv-03321 (NJD June 1, 2018, Order) (Wolfson, USDJ)

Bad Faith Patent Prosecution Supports Award of Attorney Fees Even Without Inequitable Conduct

Following summary judgment of invalidity and an appeal, the court granted defendant's motion for attorney fees under 35 U.S.C. § 285 and found that plaintiff's conduct during prosecution supported a finding that the case was exceptional. "Defendant has not proved that the patents would not have issued but for the withheld data. . . . However, the Court does take note of the withheld data for purposes of the totality-of-the-circumstances inquiry. . . . There is also evidence of intent to deceive the PTO. . . . Even if this did not constitute inequitable conduct, the Court finds that the selective disclosure of data and evasive responses provided to the Examiner are evidence of bad faith leading to a finding that this is an exceptional case. . . . Plaintiff's failure to notify the Examiner that [its expert] was an employee, rather than an independent expert, is an indication that this is an exceptional case, litigated in an unreasonable manner. . . . Presenting the declaration from [its expert] which explicitly contradicted his publications, and the failure to present the [expert's] papers themselves, are evidence of subjective bad faith leading to the conclusion that this is an exceptional case."

Howmedica Osteonics Corp. v. Zimmer, Inc. et al, 2-05-cv-00897 (NJD May 23, 2018, Order) (Walls, USDJ)

Defendants' Improper Jury Arguments and Discovery Misconduct Justify Award of Attorney Fees

Following a jury verdict of $21 million, the court granted plaintiffs' motion for attorney fees under 35 U.S.C. § 285 because defendant's litigation conduct was exceptional. "⁠[T]here cannot be serious doubt that [defendant's] litigation strategies unnecessarily complicated the proceedings and needlessly increased costs. . . . At trial, [defendant] repeatedly argued claim construction positions -- that the Court had rejected -- to the jury, despite the Court’s admonitions not to do so. . . . [Defendant's] conduct was so egregious that the Court gave the jury a limiting instruction. . . . [Defendant] also seemed to purposefully ignore the Court’s orders in discovery. . . . Disclosing a completely unreasonable number of obviousness combinations in your contentions, waiting until opposing counsel objects, then supplementing them three weeks after the deadline with a reservation that you may still rely on the originally disclosed number of combinations serves no purpose other than to increase the litigation costs for both sides and the burden on the Court. It should be noted that none of Defendant's conduct in isolation makes this case exceptional. Considering [defendant's] litigation misconduct in sum, however, the Court finds that this case is exceptional and stands out in comparison to the mine-run of cases."

Elbit Systems Land and C4I Ltd. et al v. Hughes Network Systems LLC et al, 2-15-cv-00037 (TXED April 23, 2018, Order) (Schroeder, USDJ)

Invalidation of One Patent Does Not Justify Reduction of $7 Million Attorney Fees Award

The court granted plaintiff's motion for over $7 million in attorney fees under 35 U.S.C. § 285 and rejected defendants' argument that the fees should be reduced by 33% on the ground that one of the patents-in-suit was found to be invalid as obvious because the hours billed were inextricably intertwined. "⁠[Plaintiff's] counsels’ work on 'unsuccessful claims was intimately related to the work done on successful claims.' Most of [plaintiff's] counsels’ time was 'devoted to the litigation as a whole, making it impossible to divide the work done on each individual claim.' The number of witnesses called at trial did not increase as a result of the unsuccessful claims. Further, all of [plaintiff's] claims were so closely related that allocating the amount of time spent litigating each individual claim would have been impossible."

Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd. et al, 4-14-cv-00371 (TXED April 3, 2018, Order) (Mazzant, USDJ)

Post-Hoc "Parade of Horribles" Does Not Justify Award of Attorney Fees

Following a jury trial, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics as a whole were not exceptional. "Defendants’ strategy with its § 285 Motion seems to be to throw out as many different aspects of Plaintiff’s behavior as it can to support its fee request and 'see what sticks.' But it would be both tedious and wasteful for the Court to consider each and every individual tree when it should be looking at the landscape in the bigger forest. . . . And while perhaps true that Plaintiff had some shortcomings in its litigation and pre-litigation conduct and positions, the Court is unconvinced that those shortcomings amount to a showing that Plaintiff’s behavior was exceptional. . . . 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. That is the tenor of many of Defendants’ arguments here. Or alternatively, where Defendants did come forward at some point and challenged Plaintiff’s positions with some success, Defendants have not proven that they have been exceptionally wronged -- they got at least some of the relief they sought."

ATEN International Co., Ltd. v. Uniclass Technology Co., Ltd. et al, 2-15-cv-04424 (CACD March 30, 2018, Order) (Guilford, USDJ)

"Massive" Discovery Misconduct Justifies Attorney Fees Award

Following plaintiff's post-Markman stipulation of dismissal and a bench trial finding inequitable conduct, the court granted defendant's motion for attorney fees under 35 U.S.C. § 285 because plaintiff's severed litigation misconduct was exceptional. "While the finding of inequitable conduct alone warrants an award of attorney fees to [defendant], the Court need not rely on that ground, as [plaintiff's] conduct during litigation is surely enough. . . . [Plaintiff] specifically withheld: (1) non-privileged documents; (2) previously privileged documents as to which [plaintiff] affirmatively waived the privilege and which this Court ordered be produced . . . ; and (3) documents on the privilege log relating to precisely those topics waived [plaintiff] . . . when it filed its trial declarations. This misconduct began soon after the case was filed and continued until the Court finally conducted an in camera review of [plaintiff's] privilege log on the eve of trial. Only then, when it was too late to reopen discovery, did the Court discover the massive amount of information withheld from it (and from [defendant]) over the preceding year. Indeed, the extent of [plaintiff's] mischief was so vast that the Court noted it could not delay trial and require production of the documents to [defendant] without appointing a special master to oversee [plaintiff's] production -- to do so would likely be futile."

Regeneron Pharmaceuticals, Inc. v. Merus BV, 1-14-cv-01650 (NYSD March 26, 2018, Order) (Forrest, USDJ)

Pre-Markman Attorney Fees Awarded Due to Unreasonable Manner of Litigation

The court awarded defendant its attorney fees under 35 U.S.C. § 285 and rejected plaintiff's argument that defendant was not entitled to attorney fees prior to claim construction. "The Federal Circuit stated that '⁠[plaintiff's] suit became baseless after the district court’s Markman order.'. . . However, as the Federal Circuit identified, this was not the extent of [plaintiff's] misconduct. [Plaintiff] also 'litigated the case in an "unreasonable manner."'. . . [T]his Court, in an exercise of its discretion and as guided by the Circuit’s opinion and directive, finds that it is appropriate in this exceptional case to award [defendant] the fees it incurred from the time of filing through dismissal."

Adjustacam LLC v. Amazon.com, Inc., et al, 6-10-cv-00329 (TXED March 15, 2018, Order) (Gilstrap, USDJ)

Meritless Invalidity and Unenforceability Claim Justifies Award of Attorney Fees

Following dismissal of plaintiff's invalidity and unenforceability claims for lack of standing and failure to state a claim, the court granted defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics were unreasonable. "The plaintiff should have known from the inception of this litigation that its claim in Count X [seeking a declaration of patent invalidity and unenforceability] lacked substantive and legal merit, and even if it was unaware of such deficiencies at the time it filed its complaint, there is no question that the meet-and-confer communications from the defendants before the filing of their motion to dismiss directly pointed the plaintiff to such deficiencies. Even with such awareness, the plaintiff committed to seeing the claim through to the end, in defiance of the applicable law. Not only did the plaintiff persist in its frivolous claim, but they aggressively litigated the patent issues. This required the defendants themselves to develop their own expert testimony to address patent issues which should have never been present in this case. There is no doubt that the plaintiff’s steadfast commitment to this unfounded patent claim imposed additional expenses on the opposing parties which should never have been experienced."

Technology for Energy Corporation v. Hardy et al (JRG3), 3-16-cv-00091 (TNED February 15, 2018, Order) (Greer, USDJ)

Denial of Summary Judgment No Basis for Attorney Fees Award Under 35 U.S.C. § 285

The court denied plaintiff's motion for attorney fees under 35 U.S.C. § 285 for defendant's unsuccessful motion for summary judgment under the on-sale bar. "Plaintiff requests attorney fees and costs, asserting that Defendants filed this motion in bad faith. Plaintiff cites 35 U.S.C. § 285, which authorizes a court to award reasonable attorney fees 'to the prevailing party' in 'exceptional cases.'. . . At this point in the litigation, Plaintiff is not a prevailing party. Even if, somehow, the statute could be interpreted as applying to motion practice alone, the denial of Defendants' motion for summary judgment does not alter the legal relationship between the parties."

Morren v. Morren Plastic Molding, Inc. et al, 1-17-cv-00685 (MIWD February 1, 2018, Order) (Maloney, USDJ)

Litigation Conduct Evincing Lack of Respect for Patent Rights and Litigation Process Supports Attorney Fees Award

Following a jury verdict of willful infringement, the court granted plaintiff's motion for attorney fees under 35 U.S.C. § 285 because defendant's litigation conduct and positions were exceptional. "Regarding attorneys fees . . . Defendant simply argues that, 'reasonable or not,' it didn’t have an 'intent to deceive.' But this is not the test for evaluating . . . Section 285. Whether or not Defendant had an intent to deceive is a separate question from whether Defendant acted recklessly -- or worse -- in disregarding another’s patent rights under Section 284. . . . Defendant almost would have been better served if it hadn’t filed an opposition. Like its failure to produce experts at trial, Defendant’s Opposition evinces a lack of respect for Plaintiff’s patent rights and the litigation process. . . . Defendant maintained invalidity defenses through the course of litigation, only to completely fail to present any evidence to support those defenses at trial. Indeed, despite failing to include proposed jury instructions on invalidity and providing no evidence of obviousness, Defendant opposed Plaintiff’s Rule 50 Motion on Defendant’s invalidity defense. Moreover, as stated, the jury found that Defendant’s infringement was willful. . . . Here, based both on Defendant’s conduct during litigation and the jury’s unchallenged finding of willful infringement, the Court finds fees are appropriate."

Genes Industry, Inc. v. Custom Blinds and Components, Inc., 8-15-cv-00476 (CACD January 29, 2018, Order) (Guilford, USDJ)

Asserting ​Borderline Frivolous Infringement Claim Barred by Res Judicata Justifies Attorney Fees Award

Following dismissal for res judicata, the court granted defendant's motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions were exceptionally weak. "Plaintiff’s only argument that his infringement claim was not barred by res judicata was based on the theory that he could not have raised the claim in [its prior action] 'because Defendant was unaware of the patents-in-suit, and Defendant was incapable of knowingly inducing infringement without such knowledge.' This Court noted that because of the uncertain state of the law, Plaintiff had 'at least a colorable basis to allege the knowledge element of a claim for induced infringement based on the filing of the complaint.' Moreover, the record negated Plaintiff’s argument that Defendant was not aware of the patents-in-suit prior to [the prior action]. Therefore, the Court concludes that the weakness of Plaintiff’s litigation position, which borders on frivolous, demonstrates that this is an exceptional case."

Lyda v. CBS Interactive, Inc., 4-16-cv-06592 (CAND January 24, 2018, Order) (White, USDJ)

Selective Reliance On Informal Opinion of Counsel Supports Attorney Fees Award

Following a stipulated judgment, the court granted plaintiff's motion for attorney fees under 35 U.S.C. § 285 because defendants' litigation tactics were exceptional. "Defendants’ reliance on [their counsel's] purported noninfringement opinion is particularly exceptional. . . . In a note specifically omitted from Defendants’ email to Plaintiff, [counsel] stated, '⁠[a] formal opinion is required, and that involves extensive study and other efforts to provide a reliable outcome. Please call me to discuss.' It would be one thing if Defendants simply received the email from [counsel] and purported to rely on it as an opinion of counsel. But the fact that Defendants removed [counsel's] disclaimer and copy-pasted the rest of [his] statements in an email to Plaintiff is more concerning. . . . The issue is not that Defendants failed to obtain a formal opinion of counsel, it is how Defendants conducted themselves in their interactions (or lack thereof) with Plaintiff regarding their alleged non-infringement positions. . . . With Defendants’ pre-litigation conduct and their conduct during litigation, particularly at the outset of litigation, there is strong reason to believe that this case could have been resolved amicably and early if not for Defendants’ actions."

Drop Stop LLC v. Jian Qing Zhu et al, 2-16-cv-07916 (CACD January 22, 2018, Order) (Guilford, USDJ)

Strength of Positions on Issues Unrelated to Dispositive Ruling Should Not Be Considered in Determining Attorney Fees Award

Following dismissal for lack of patentable subject matter, the court denied defendants' motions for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions were not baseless. "⁠[T]he Court agrees with [plaintiff] that the Court need not and should not consider issues of infringement, prior art or claim construction in deciding the instant motions, as the Court did not consider these issues in disposing of the case. Nor did [plaintiff's] inclusion of eligibility-related defenses in its complaint amount to an admission that its litigation position was weak, as claimed by Defendants. . . . [T]hough this Court eventually found that the claims of [plaintiff's] asserted patents were not directed to specific improvements in the functioning of a computer, the claims nonetheless recited computer components and were not found to be objectively baseless."

Uniloc USA, Inc. et al v. Amazon.com, Inc. et al, 2-16-cv-00570 (TXED December 21, 2017, Order) (Schroeder, USDJ)

Weak Patent Eligibility Position Alone Supports Attorney Fee Award

Following dismissal for lack of patentable subject matter, the court granted defendants' motions for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions were unreasonable. "Patient treatment and monitoring methods such as those claimed by the [patent-in-suit] had been declared ineligible long before [plaintiff] filed its 2016 lawsuits. . . . The numerous cases invalidating claims directed to information collection and analysis, such as the [patent-in-suit's] claims, stood in stark contrast to the handful of cases reaching the contrary conclusion. . . . There were of course gray areas, but by the time [plaintiff's] lawsuits were filed, it should have been clear that the [patent's] claims were 'manifestly directed to an abstract idea.'. . . The weakness in [plaintiff's] § 101 position is by itself a sufficient basis for finding the cases exceptional."

My Health, Inc. v. ALR Technologies, Inc., 2-16-cv-00535 (TXED December 19, 2017, Order) (Payne, MJ)

Inconsistent Positions on Patent Scope Risks Attorney Fees Award

The court ordered plaintiff and its counsel to show cause why it should not be responsible for defendants' attorney fees under 35 U.S.C. § 285 after granting summary judgment that defendants did not infringe plaintiff's patents due to statements made by plaintiff during its appeal of inter partes review proceedings. "⁠[Plaintiff] argued . . . the claimed invention does not require that the server determine the second process’s online or offline status solely by checking its database at the time of the first process’s query. But [plaintiff] has repeatedly told the Federal Circuit that its claimed invention requires precisely that. Indeed, the Federal Circuit . . . went to great pains during oral argument to pin down this exact point. Having won on invalidity based on those representations, [plaintiff] cannot now take a different position for purposes of proving infringement. . . . [Plaintiff] and its counsel . . . shall show cause in writing why they should not be held liable for defendants’ attorney’s fees by virtue of this being an 'exceptional' case within the meaning of [35 U.S.C. § 285]."

Straight Path IP Group, Inc. v. Cisco Systems, Inc., 3-16-cv-03463 (CAND December 13, 2017, Order) (Alsup, USDJ)