Three more decisions from Eastern District judges in the last few days on applications for fees under 35 USC 285. All three orders were in different procedural situations – in one a defendant which prevailed on noninfringement at the summary judgment stage sought discovery into the plaintiff and its counsel's finances, in a second, a defendant sought fees after a plaintiff dismissed its case after determining that the damages would be de minimis, and in a third the plaintiff prevailed at trial, and sought fees under 285.
In one of the cases, the court had not yet determined whether to assess sanctions under Rule 11 or Section 285 following granting summary judgment of noninfringement, but did grant a request to seek discovery of settlement and license agreements, as well as agreements regarding compensation to the plaintiff's counsel. The Court denied the requested discovery into plaintiffs counsel's insurance policies and the personal finances of its counsel as premature. The court also permitted discovery of documents on the defendant's claim that the plaintiff's principal might be liable individually on an alter ego, veil piercing or other theory, as well as a deposition of the principal. In doing so, the court rejected the argument that the discovery was premature until it had determined whether to assess sanctions under either ground.
Fees After Plaintiff Dismisses Case
In a second case, the plaintiff voluntarily dismissed its case shortly before trial, claiming that it had received discovery responses which indicated that the damages would be de minimis. Defendant declined to consent to a dismissal with prejudice, and asserted a claim for fees. The court denied the claim for fees under the prior 285 standard earlier this year, and recently reaffirmed that decision under the Supreme Court's recent authority in Highmark and Octane Fitness.
Fees After Plaintiff Wins At Trial
As I have previously noted, plaintiffs verdicts in patent cases are a rarity locally recently, so we are fortunately to have one data point where the court passed on a prevailing plaintiff's claim for fees under 285. However in that case as well, the Court noted that simply changing positions during a case did not make it "exceptional" – in fact both sides altered their strategy throughout the case and such actions were not extraordinary or even unexpected. Similarly even though the jury rejected all of the defendants positions, and the court rejected many of its proposed claim constructions, the case presented "truly questions of fact to be resolved by the juror's as factfinders." Accordingly, considering the totality of the circumstances, the court could not conclude that this was one of the "rare cases" that warranted an award of attorneys fees under 285.
MS 906; MS761; MS963