A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Fees

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.

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.


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 ...

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 …

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.

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?

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 …

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...

Girl holding American Dollar Bills, Alexander Mils, Unsplash

An interesting fees issue was decided earlier this week in a Report and Recommendation by Judge Hall—can a prevailing defendant recover attorney's fees under § 285 for work done on a successful IPR petition?

The answer, apparently, is no.

Given the prevalence of IPR petitions, I was somewhat surprised to see that there was no authority on the issue from either the Federal Circuit or Delaware. Judge Hall found the text of § 285 decisive:

The text of 35 U.S.C. § 285 says nothing about giving the district court the ability to award fees incurred by a prevailing party in a separate administrative proceeding. The statute simply states that “[t]he …

Wolf in the Forest, Philipp Pilz, Unsplash

I don't have the full transcript, but based on quotes set out in a letter filed by the parties, Judge Connolly recently set forth his thoughts on the kinds of issues he is willing to address early in the case:

Now, what I try to do when I think there's kind of a silver bullet, I move it to the top of the pile. That's what I do on indefiniteness.

According to the letter, Judge Connolly was prepared to stay the case and expedite summary judgment briefing on indefiniteness if it was case dispositive. Defendant declined that offer in a letter after the hearing.

Judge Connolly also suggested that he …

Last week, Judge Noreika denied defendant Shopify Inc.'s motion for attorneys' fees under 35 U.S.C. § 285 ("The court in exceptional cases may award reasonable attorney fees to the prevailing party."), holding Shopify partly accountable for the amount of fees it incurred during the relatively short pendency of the case. While the opinion is worth reading in its entirety, there are two particularly notable aspects to the decision.

What Shopify won't be getting
Sharon McCutcheon, Unsplash

First, Judge Noreika found that Shopify was the "prevailing party," on the basis of the plaintiff's voluntary dismissal of its case with prejudice. While the Court had not issued any merits-based decisions prior to the dismissal, and did not itself effectuate the dismissal (it was self-executing under Rule …

About 204,261 of these.
About 204,261 of these. Sharon McCutcheon, Unsplash

Judge Noreika today awarded $204,261.31 in attorneys’ fees to a plaintiff in a trademark action, after the defendants fired their counsel, failed to obtain new counsel, and eventually had a default judgment entered against them.

She also awarded fees-on-fees, granting attorney fees for bringing the successful fees motion but not for a previous unsuccessful fees motion.

The previous motion was denied due to timing issues. Plaintiffs had filed it more than 14 days after the default judgment, and Judge Thynge issued an R&R holding that the 14-day fees deadline under FRCP 54 had passed.

Judge Noreika then offered the plaintiffs a second chance to file the fees motion. She ultimately disagreed …