A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Fees

Not the Feees! Not the Feeeeeeees!

Nathan R. Hoeschen, Oct. 31, 2024
Fees

(Eds. Note -- I was cackling at this headline for quite a while)

I tried for a while to get a public domain image of the Wicker Man, but sadly it does not seem to exist
I tried for a while to get a public domain image of the Wicker Man, but sadly it does not seem to exist AI-Generated, displayed with permission

We've got an interesting fees opinion from Judge Andrews this week, dealing with the prevailing party analysis.

Interactive Games LLC v. DraftKings, Inc. C.A. No. 19-1105-RGA (D. Del. Oct. 29, 2024), had a relatively succinct history, despite its long pendency. The plaintiff sued on several patents, the case was stayed pending settlement discussions and ultimately several IPR's. The PTAB found most of the patents invalid. Plaintiff then appealed, and the Federal Circuit affirmed the invalidity ruling. The Plaintiff then dismissed the District Court case without prejudice -- the defendant having never answered.

The defendant then moved for fees arguing that the patents were exceptionally weak. The Plaintiff countered that the defendant was not the prevailing party, since they had voluntarily dismissed their claims.

Judge Andrews, however, held that while a PTAB decision invalidating the patents might have lacked a sufficient judicial imprimatur to render defendant the prevailing party, the fact that the Federal Circuit affirmed the decisions on appeal changed the calculus:

In the case-in-suit . . . a final court decision did affect the parties' legal relationship. Plaintiff appealed the PTAB' s IPR invalidity decisions to the Federal Circuit and the Federal Circuit affirmed. By invalidating the claims in three of Plaintiffs patents through IPR proceedings, Defendant "successfully rebuffed" Plaintiffs "attempt to alter the parties' legal relationship." The Federal Circuit's affirmance of these invalidations marked Defendant's success with ''judicial imprimatur" . . . Therefore, I find that Defendant is a prevailing party.

Id. at 6 (internal citations omitted).

As often happens, the Court ultimately declined to find the case exceptional and awarded no fees. It's interesting to note however, that the Court clearly distinguished this case from others finding that the defendant was not the prevailing party when they merely prevailed at the PTAB. There is thus, some danger to appealing a PTAB ruling and giving the Federal Circuit an opportunity to grant their judicial imprimatur, and thus allowing for a fee award in an otherwise exceptional case.

View

Dismissed With Extreme Prejudice

Nathan R. Hoeschen, Oct. 22, 2024
Fees

Longtime readers of the blog will know that I've got a bit of a thing for motions for fees. FeeHead is the term I like to use, although FeePle is also acceptable in close company. FeeLine and FeeLing are just hurtful.

I think I'm just going to start using this image for all of the posts and just make the caption whatever the dinosaur is shouting. Here
I think I'm just going to start using this image for all of the posts and just make the caption whatever the dinosaur is shouting. Here "It's a great name!" AI-Generated, displayed with permission

Anyways.

I like a fee motion because they usually have the best facts. Today's case, Mirtech, Inc. v. Agrofresh, Inc., C.A. No. 20-1170-RGA (D. Del. Oct. 18, 2024) (Mem. Op.), actually has pretty boring facts, but addresses some novel legal issues with fees that even I, the resident FeeHead, hadn't seen before.

The parties had a wide-ranging dispute that included various trade secrets and alleged breaches of an earlier settlement agreement. That settlement agreement contained a provision allowing the prevailing party in any "action to enforce its rights under th[e] agreement" to have its fees reimbursed by the loser. Following a prolonged litigation, both parties moved for fees under this provision.

In assessing who was the prevailing party, Judge Andrews was faced with several claims that had been dismissed without prejudice, but which had never been reasserted in an an amended complaint. The parties disputed whether the party winning the dismissal had "prevailed" on those claims:

Even though I dismissed the Mir Parties’ claims without prejudice and with leave to amend, the Mir Parties chose not to amend the complaint. AgroFresh cites to Morton Int’l, Inc. v. A.E. Staley Mfg. Co., 460 F.3d 470, 477 (3d Cir. 2006), for the proposition that a dismissal without prejudice becomes a final order when the plaintiff “elected to stand on the complaint.” Morton concerned whether a dismissal without prejudice was a final order that would provide an appellate court with jurisdiction, as opposed to identifying a prevailing party on an issue. I think that similar logic would apply to deciding the prevailing party issue. The Mir Parties previously expressed that they “do not intend to amend the complaint” (D.I. 41), and they have not done so. Furthermore, AgroFresh argues that the statutes of limitations on the Mir Parties’ claims have expired, meaning the claims are no longer viable. The Mir Parties do not address this. This is not a situation where the dismissal “has no preclusive effect on the plaintiff’s ability to re-file” or has no “material alteration of the legal relationship of the parties.”

Id. at 12 (internal citations omitted)

It's tough to tell from this section whether ...

View

Time Enough For Fees

Nathan R. Hoeschen, Oct. 10, 2024
Extension Stipulation

Deadline extensions are perhaps the most common of all requests to the Court. I have seen requests granted for medical reasons, conflicts with deadlines in other cases, prescheduled vacations, and the need to enact a dark ritual which can only take place when the moon fears to rise (we'll have a post about that one on the future, assuming the ritual is unsuccessful and does not result in all things returning to dust beneath the sacred ash and the profane oak).

Paul Robert, Unsplash

Today's post, however, is a tale of an extension denied. The defendant in Purdue Pharma LP v. Accord Healthcare Inc., C.A. No. 22-913-WCB, D.I. 111 (D. Del. Oct. 2, 2024) had prevailed on its obviousness defense following a bench trial and filed a timely motion for fees 14 days after the Court entered final judgment.

The plaintiff, however, apparently intended to appeal the invalidity determination and thus requested that the defendant stipulated to defer briefing on fees until after the resolution of that appeal. When the defendant refused to stipulation, plaintiff moved to defer briefing until after the appeal and requesting expedited consideration of the motion (as the clock was already ticking on its 2-weeks to file a responsive fees brief).

Unlike in the true to life examples listed at the start of the blog, the plaintiffs motion was not based in any particular conflict with client or counsel. Instead, the deferment was based on the general proposition that "the appeal may impact or otherwise refute the bases for Accord’s motion." Id., D.I. 108 at 2. The defendant filed a short opposition to the motion, noting that this logic would apply to essentially any motion for fees.

Judge Bryson denied the motion to defer the briefing in a short order:

The motion to defer briefing on Accord's motion for attorneys fees 108 is denied. The court will determine when to rule on Accord's motion for attorneys fees after the briefing is complete.

We'll keep a watch out for that fees opinion and let you know if it comes before or after the appeal.

View

Court Awards Fees after Patentee Has No Validity Defenses in Competitor Case

Andrew E. Russell, Oct. 7, 2024
Fees Fee Awards

One of these guys forgot to come armed.
One of these guys forgot to come armed. AI-Generated, displayed with permission

Attorneys spend a lot of time threatening fee awards when dealing with an NPE, even though they can be challenging to get. So I always think it's interesting to see what kinds of behavior will support a fee award.

Last week, Judge Williams issued a memorandum order granting fees in Extremity Medical, LLC v. Nextremity Solutions, LLC, C.A. No. 22-239-GBW (D. Del.). The Court listed three bases for its fee award. First, the patentee made zero showing of any pre-suit investigation of invalidity:

[T]here is no dispute that Defendants notified Plaintiff of [prior art references] Marcus and Chandran several years prior to the date …
View

Bad Faith and Good Cheer

Nathan R. Hoeschen, Jan. 11, 2024
Fees Fee Awards

A motion for attorneys' fees is a tough row to hoe. The shoddiest AI lawyer could pull together 8 paragraphs of quotes from the Supreme Court, the Federal Circuit, Blackstone, and Hammurabi's code, warning that fees are an extreme sanction to be used only sparingly, lest their mysterious power be depleted.

And he works for peanuts!
And he works for peanuts! AI-Generated, displayed with permission

As Judge Williams' opinion in BearBox LLC v. Lancium LLC, C.A. No. 21-534-GBW (D. Del. Jan 9, 2024) shows, you can even lose a motion for fees if the Court previously held the other party acted in bad faith.

The opinion in Bearbox, contains a healthy recitation of losses by the plaintiff at various stages of the case, culminating in an unsuccessful trial on the merits. Its' not worth rehashing the whole thing for our purposes—

(Eds. note - what is our purpose? sound off in the comments, but know in advance that I will not read anything by a philosopher or anyone else with a fuller beard than I possess)

—but the big takeaway is that the defendant's failure to win the case at summary judgment effectively scuttled any argument that the plaintiffs' claims were objectively baseless and unreasonable:

Moreover, while the Court adopted Defendants' proposed claim constructions, the Court denied Defendants' motion for summary judgement because the Court found that there existed genuine issues of material fact regarding who conceived of the '433 patent's subject matter. Thus, Plaintiffs' decision to continue litigating the sole inventorship claim after receiving the Court's claim constructions was not sufficiently unreasonable to warrant a finding that this case is exceptional . . .
The Court, in denying Defendants' motion for summary judgement, rejected Defendants' argument that no reasonable juror could find that Mr. Storms was the sole inventor of the '433 patent. Thus, even considering the '632 patent application, Plaintiffs' position that Mr. Storms was the sole inventor of the '433 patent was not meritless.

Id. at 4, 6-7 (internal citations omitted).

The one issue where they seemed to get some traction was in a successful motion to strike filed earlier in the case. The plaintiff had apparently served a new expert report, without leave, in order to conform their expert's opinion to a the Court's claim construction. Defendants successfully moved to strike the report. In its decision, the Court applied the Pennypack factors and actually found that the plaintiffs' actions indicated bad faith.

Nevertheless, in ruling on the § 285 motion, Judge Williams found that this act of bad faith was not enough to make the case exceptional:

Accordingly, even though the Court found Plaintiffs' timing indicative of bad faith, the Court finds that, in this instance, Plaintiffs' desire to supplement Dr. McClellan's expert report to ensure consistency with the Court's claim construction order did not render this an exceptional case.

Id. at 5.

So take heart, those have shown bad faith. You may yet find yourselves sufficiently redeemed to avoid fees.

View

Court Awards $485k in Fees Against Blackbird NPE. Good Luck Collecting!

Andrew E. Russell, May 3, 2023
Fees Fee Awards

Money: Something defendants probably won't be seeing here.
Money: Something defendants probably won't be seeing here. Giorgio Trovato, Unsplash

We've talked before about the Court's decision to award fees against Blackbird Tech LLC, based on Blackbird's "objectively baseless post-Markman litigation strategy."

Back in August, the Court ordered the parties to submit a stipulated fee amount, or for the defendant to submit a fee accounting. Since then, Defendant submitted a fee accounting showing $485,420.74 in fees, consisting of $404,734.68 for lead counsel and $80,686.06 for local counsel. Blackbird filed a very short statement opposing the fees amount.

The substance of Blackbird's statement is entirely redacted, but we can tell from the Court's order that they basically just argued that they are out of business:

Blackbird responded [to the fee accounting] with a "Statement" containing less than a page of text. (D.I. 275). Blackbird says it is out of business, has no assets, and is winding up under Massachusetts law.

M2M Solutions LLC v. Sierra Wireless America Inc., C.A. No. 14-1102-RGA, D.I. 279 at 1 (D. Del. Apr. 25, 2023).

The Court held that the fact that Blackbird is out of business has no impact on the fee award amount, but noted the (very, very likely) difficulty of collecting on fees:

That may all be true, but that does not state any reasons why I should not make the award. It merely suggests that collecting on the award may be difficult to impossible.

Id.

Redactions Strike Again

If you are someone who frequently files fee declarations after winning fee motions, you probably know that it can be tricky to support the reasonableness of fee requests. Most firms keep their rates ...

View

Fee Fi Fo Fun

Nathan R. Hoeschen, Aug. 30, 2022
Fees

Ashley Jurius, Unsplash

Typically, parties on the same side of the V like to put up a united front. Whatever things might look like behind the scenes, in public, they make a big show of laughing loudly at each other's jokes and slapping one another on the back with more than necessary force.

Apparently, that all goes out the window when fees are on the line.

Earlier this year, Judge Andrews awarded the defendants attorneys' fees in M2M Solutions LLC v. Sierra Wireless America, Inc, C.A. No. 14-1102-RGA (D. Del. Aug 16, 2022) (Clarifying Order), largely because the plaintiffs had pressed an infringement theory contrary to the Court's claim construction.

As it happened, there were two unrelated …

View

Judge Stark Awards Attorneys' Fees in Two Cases

Jeff Castellano, Feb. 4, 2022
Fees

This week, Judge Stark granted defendants' motions for attorneys' fees in two separate cases. Although the cases are unrelated, there is nonetheless a fair amount of overlap in what the Court found persuasive in granting fees.

Money
Pepi Stojanovski, Unsplash

The defendants in both cases - Wi-Lan v. Sharp Electronics Corp., C.A. No. 15-379-LPS and Belcher Pharmaceuticals, LLC v. Hospira, Inc., C.A. No. 17-775-LPS - moved for fees under 35 U.S.C. § 285, arguing that the cases were exceptional.

So what helps convince a judge that a case is exceptional, and what are some other through-lines in these rulings?

View

Take What You Want and Pay for It

Nathan R. Hoeschen, Sept. 9, 2021
Fees

alexander-mils-lCPhGxs7pww-unsplash.jpg
Girl holding American Dollar Bills, Alexander Mils, Unsplash

Those with a habit of perusing these posts (thank you, persons of class and distinction) may recall the interesting case of Almirall, LLC v. Torrent Pharmaceuticals Ltd., C.A No. 20-1373-LPS, D.I. 50 (D. Del. July 13, 2021) where Judge Stark granted a 12(c) motion after ruling that the plaintiff had waived various arguments by failing to raise them until oral argument.

I, for one, expected that to be the last we heard of that case for some time. Last Friday, however, Judge Stark granted Almirall's motion to amend the complaint to reassert these same claims, based on new allegations similar to those the Court previously found waived. Judge …

View

Judge Stark Awards Post-Claim-Construction Fees

Jeff Castellano, Sept. 7, 2021
Disclaimer Fees

Late last week, Judge Stark granted defendant's request for litigation fees under 35 U.S.C. § 285 in Princeton Digital Image Corp. v. Ubisoft Entertainment SA, C.A. No. 13-335-LPS-CJB, following an award of summary judgment of non-infringement to the defendant and a summary affirmance at the Federal Circuit.

Plaintiff PDIC's patents are directed to virtual reality programs controlled by music or control tracks created from music. Defendant Ubisoft asserted that the accused games manually synchronized the video, soundtrack, and other effects on a timeline, and were not controlled by music or a control track created from music.

During claim construction, Judge Burke found that plaintiff had disclaimed certain subject matter during IPR proceedings...

View
Older

Archive