United States District Court, D. Delaware
W. Poff, Esq., Pilar G. Kraman, Esq., Young Conaway Stargatt
& Taylor, Counsel for Plaintiffs
B. Blumenfeld, Esq., Rodger D. Smith, II, Esq., Jeremy A.
Tigan, Esq., Morris, Nichols, Arsht & Tunnell, LLP,
Counsel for Defendants
Douglas A. Cawley, Esq., Christopher T. Bovenkamp, Esq., Eric
S. Hansen, Esq., Avery R. Williams, Esq., Justin W, Allen,
Esq., McKool Smith, PC, Angela M. Vorpahl, Esq., McKool
Smith, PC, 1 Bryant Park, John B. Campbell, Esq., Leah
Bhimani Buratti, Esq., Kevin P. Hess, Esq., McKool Smith, PC,
Desmarais, Esq., Jon T. Hohenthaner, Esq., Andrew G. Heinz,
Esq., Jeffrey S. Seddon, II, Esq., William D, Findlay, Esq.,
JOKDAN, Circuit Judge.
April 27, 2017, 1 entered final judgment of non-infringement
for IBM in this patent infringement case. (Docket Item
("D.I.") 413.) I had previously entered a partial
summary judgment order, ruling that Parallel Networks could
not prevail on its theory of indirect infringement. (D.I.
367.) I also granted a motion in limine excluding Parallel
Networks' damages theory as it pertained to direct
infringement. (D.I. 406.) In the face of those rulings, the
parties filed a joint stipulation seeking entry of final
judgment. (D.I. 411.)
before me is IBM's motion for attorneys' fees and
costs under 35 U.S.C. § 285. (D.I. 415.) Having reviewed
the briefing on this motion, and considering the parties'
conduct during the course of litigation,  I conclude that
this is not a case to be called "exceptional" and
does not warrant the imposition of fees. I will therefore
deny IBM's motion.
to 35 U.S.C. § 285, a court "may award reasonable
attorney fees to the prevailing party" in
"exceptional cases[.]" In Octane Fitness, LLC
v. ICON Health & Fitness, Inc., the Supreme Court
articulated the standards that courts should use to determine
whether a case qualifies as "exceptional." 134
S.Ct. 1749, 1756 (2014). It held that "an
'exceptional' case is simply one that stands out from
others with respect to the substantive strength of a
party's litigating position ... or the unreasonable
manner in which the case was litigated." Id.
Whether a case qualifies as "exceptional" is a
question of judicial discretion. Id. When deciding
whether a case is "exceptional, " courts should
consider the totality of the circumstances. Id.
(recognizing that "there is no precise rule or formula
for making these determinations" and that district
courts should exercise "equitable discretion"
(quotation marks and alteration omitted)).
Octane Fitness, the Federal Circuit has instructed
that "[t]he ... purpose behind § 285 is to prevent
a party from suffering a 'gross injustice'" and
that "[t]he exercise of discretion in favor of awarding
attorney fees should be bottomed upon a finding of unfairness
or bad faith in the conduct of the losing party, or some
other equitable consideration ... which makes it grossly
unjust that the winner ... be left to bear the burden of his
own counsel fees." Checkpoint Sys., Inc. v. All-Tag
Security S.A., 858 F.3d 1371, 1376 (Fed. Cir. 2017)
(alterations and quotations omitted). In other words,
"fee awards are not to be used 'as a penalty for
failure to win a patent infringement suit.'"
Id. (quoting Octane Fitness, 134 S.Ct. at
in its totality, Parallel Networks' conduct over the
course of this case does not qualify as exceptional. Based on
the record, it appears that Parallel Networks succeeded in
obtaining discovery that it demanded, worked to narrow the
issues in the case, and presented at least one claim that
withstood summary judgment. (D.I. 366.) Despite that, IBM
presents four reasons why it believes this case is
exceptional and Parallel Networks ...