A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Attorney's Fees

Motions for attorneys' fees are generally a longshot in the district. It is, after all, especially hard to show that your case "stands out from the others."

Unless, of course you are obviously the cutest little baby ever, in which case you easily stand our from the others
Unless, of course you are obviously the cutest little baby ever, in which case you easily stand our from the others Nate Hoeschen, displayed with permission

Accordingly, I see a lot of these motions that reach well back into the case for evidence of vexatious conduct. One of the more common ones is dropping of asserted claims or defenses, which is generally put forward with the suggestion that those claims or defenses were necessarily meritless.

In denying a motion for fees yesterday, Judge Noreika gave her thoughts on the issue:

It is hardly uncommon that, during the course of litigation, parties make concessions or drop claims in order to focus their cases or preserve their resources. Indeed, Defendant also made concessions, dropping its invalidity counterclaims approximately two months before trial. The Court generally views such efforts as positive developments and will not penalize (either side) for streamlining the issues in an appropriate manner.

CMP Development LLC v. Amneal Pharms. LLC, C.A. No. 21-549-MN, D.I. 151 (D. Del. May 7, 2024).

For those curious, the relevant claims were dropped a few months before trial, around the time the pretrial order was filed—fairly late as these things go.

The opinion was otherwise pretty standard—noting that the issue (DOE infringement) was closer than the defendant made it sound and denying the request.

Stick Figures Fighting

For attorneys who practice in D. Del., Judge Connolly's opinion yesterday in Pharmacyclics LLC v. Alvogen Pine Brook LLC, C.A. No. 19-434-CFC (D. Del. Apr. 30, 2024) is a real page turner, and well worth reading. If you want to avoid spoilers, go read it now! It's attached below, and it's only 11 pages.

Spoilers below:

It's rare for a judge to conclude that either side—let alone both—misled the Court and litigated vexatiously. But that's just what Judge Connolly found here, after the plaintiff moved for fees under 35 U.S.C. § 285.

In holding that the defendants litigated vexatiously, the Court offered two primary examples of their misdeeds. The first relates to unsupportable allegations …

Michael Carruth, Unsplash

Judge Andrews issued an interesting opinion today denying a requested $9 million attorneys' fee award in Acceleration Bay LLC v. Take-Two Interactive Software, C.A. No. 16-455-RGA (D. Del.).

There were a number of facts in defendant's favor, but not quite enough to get over the bar for fees under § 285. The one that most caught my eye was that the Court had previously expressed concerns about counsel's candor—a rare thing for the Court in the District of Delaware to do:

Defendants argue that the impropriety of Plaintiff's litigation conduct-including the lack of candor, forcing relitigation of lost issues, and the pattern of inappropriate conduct in previous cases-further proves that this case …

Triple Damages
Marcel Eberle, Unsplash

We've written a lot on the developing case law in Delaware around willfulness and motions to dismiss. Willfulness requires knowledge of the infringement, and some of our judges have dismissed willfulness claims because the filing of a complaint for patent infringement cannot serve as the basis of knowledge of infringement.

Today, Judge Andrews followed that case law, and dismissed a willfulness claim in an amended complaint, stating that the original complaint cannot serve as a basis for establishing knowledge:

iFIT also alleges that Peloton knew of the '407 patent as of the filing of its original complaint. . . . I think this is irrelevant. My view is that an amended complaint cannot rely upon the …

One of the questions Courts have to answer when presented with an application for attorneys' fees under 35 U.S.C. § 285 is when to start the clock running on fees. The analysis can include objective and subjective factors, but in general (in this District at least) a patentee has to push through multiple warning signs and opportunities for reevaluation before its continued assertion of infringement will justify an award of fees.

Earlier this week, Judge Andrews awarded fees for plaintiffs' continued assertion of infringement after (1) an adverse claim construction decision and (2) subsequent notice from the defendant of non-infringement. After the Court granted summary judgment of non-infringement, the defendant moved for fees.

Judge Andrews quickly disposed with the …

Back in August, Judge Hall shot down a plaintiff's attempt to recover its fees from counsel under 35 U.S.C. § 285, which provides for the award of "reasonable attorneys fees" in "exceptional cases." Today, Judge Andrews rejected several objections to Judge Hall's decision.

As set forth by Judge Andrews, the defendants' basic argument was that while earlier cases held that § 285 does not permit fee awards against attorneys, certain dicta in the Supreme Courts more recent Octane Fitness opinion changed that:

Defendants contend that the Magistrate Judge "overlooked" the Supreme Court's Octane Fitness opinion, in which the Court found that § 285 imposed "one and only one constraint on district courts' discretion to award attorney's fees in patent …

HalGatewood.com, Unsplash

Judge Hall today issued an R&R on attorneys fees in In Re Kerydin (Tavaborole) Topical Solution 5% Patent Litigation, MDL No. 19-md-2884-RGA (D. Del. June 23, 2021), an ANDA case.

There, the plaintiff filed suit on four patents even though the PTAB had previously found an earlier patent in the family invalid in an IPR, and even though IPRs were pending on each of the four patents-in-suit.

Filing suit triggered the 30-month stay of FDA approval. Shortly after the suit was filed, one of the defendants moved to stay; plaintiff did not oppose, and actually filed a cross-motion to stay its own action against the other defendants (who opposed).

The Court granted the …