A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: 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 …

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 …