United States District Court, D. Delaware
DISH Network, LLC and Sirius XM Radio Inc. have filed Motions
to Declare This Case Exceptional. (C.A. 13-2066, D.I. 130;
C.A. 13-2067, D.I. 139). The Parties have fully briefed the
issues. (C.A. 13-2066, D.I. 131, 143, 152; C.A. 13-2067, D.I.
140, 156, 165). Plaintiffs former Freitas Angell &
Weinberg LLP ("FAW") attorneys have also filed an .
opposition to Defendants' motions. (C.A. 13-2066, D.I.
144; C.A. 13-2067, D.I. 157). For the reasons set forth
below, Defendants' motions are DENIED.
Defendants' motions request, in part, fees pursuant to 35
U.S.C. § 285. That Section provides: "The court in
exceptional cases may award reasonable attorney fees to the
prevailing party." A prevailing party is "one who
has been awarded some relief by the court."
Buckhannon Bd. & Care Home, Inc. v. W.Va. Dep't
of Health & Human Res., 532 U.S. 598, 603 (2001);
see also SSL Servs., LLC v. Citrix Sys., Inc., 769
F.3d 1073, 1087 (Fed. Cir. 2014) ("A party
'prevails' when 'actual relief on the merits of
his claim materially alters the legal relationship between
the parties ... in a way that directly benefits the
[party].'" (alteration in original) (quoting
Farrar v. Hobby, 506 U.S. 103, 111-12 (1992)).
vacated my previous judgments of non-infringement in these
cases. (C.A. 13-2066, D.I. 168; C.A. 13-2067, D.I. 177).
Thus, I have not awarded "actual relief on the
merits" and Defendants DISH Network LLC and Sirius XM
Radio Inc. are not prevailing parties.Therefore, they
are not entitled to pursue attorney fees under 35 U.S.C.
motions also request an award of fees from Plaintiffs former
FAW attorneys, Robert Freitas and Jason Angell, pursuant to
28 U.S.C. § 1927. That Section provides:
Any attorney or other person admitted to conduct cases in any
court of the United States or any Territory thereof who so
multiplies the proceedings in any case unreasonably and
vexatiously may be required by the court to satisfy
personally the excess costs, expenses, and attorneys'
fees reasonably incurred because of such conduct.
Third Circuit limits Section 1927 fees awards to instances
where the attorney has "(1) multiplied proceedings; (2)
unreasonably and vexatiously; (3) thereby increasing the cost
of the proceedings; (4) with bad faith or with intentional
misconduct." LaSalle Nat. Bank v. First Conn.
Holding Grp., LLC, 287 F.3d 279, 288 (3d Cir. 2002).
"[Section] 1927 explicitly covers only the
multiplication of proceedings that prolong the litigation of
a case and likely not the initial pleading, as the
proceedings in a case cannot be multiplied until there
is a case." In re Schaefer Salt
Recovery, Inc., 542 F.3d 90, 101 (3d Cir. 2008)
(emphasis in original).
conduct identified by Defendants is not sufficient to support
an award of fees pursuant to Section 1927 under the Third
Circuit standard. Defendants identify three issues with
FAW's representation of Plaintiff:
(1) the clear failure ... to conduct an adequate pre-filing
investigation; (2) Dragon's refusal to acknowledge the
express language of its own claims as applied to the accused
.. . products and its continued pursuit of frivolous
litigation after being notified of its meritless positions;
and (3) the diametrically inconsistent positions that Dragon
took in the related IPR proceedings and this Court concerning
the scope of the asserted claims of the '444 patent.
(C.A. 13-2066, D.I. 11). Defendants' first allegation is
irrelevant to the Section 1927 inquiry which focuses on
actions taken during a proceeding. Pre-filing
activity, or inactivity, does not support an award of fees
pursuant to Section 1927.
second allegation is similarly irrelevant. Defendants
correctly point out that the FAW attorney filed papers which
denied prosecution disclaimer despite the disclaiming
language in the prosecution history being among the clearest
I have seen during my time on the bench. (C.A. 13-2061, D.I.
110 at 7). However, Defendants do not articulate how the
proposed constructions, flawed as they were, multiplied and
prolonged the proceedings. Thus, Plaintiff's claim
construction position does not support an award of fees
pursuant to Section 1927.
third allegation similarly does not support an award of fees.
Propounding opposite claim construction positions before the
Patent Office and a District Court in concurrent proceedings
is, at a minimum, objectively bad form. However, assuming
Defendants' accusations against the FAW attorneys are
true, the inconsistent positions did not cause the
proceedings in this case to multiply. As is usual in patent
cases, the Parties argued their respective positions and I
issued a claim construction order. The Parties did not
subsequently relitigate the claim constructions such that
they prolonged the litigation. Accordingly, an award of
Section 1927 fees on this basis is inappropriate.
although Defendants identify behavior that I might properly
have sanctioned under Section 285, the allegations do not
meet the standard for a Section 1927 fees award.
Defendants DISH Network LLC's and Sirius XM Radio
Inc.'s Motions to Declare This Case Exceptional (C.A.