Delta V Forensic Engineering, Inc. v. Delta V Biomechanics, Inc.

• Court: District Court, C.D. California
• Decided: January 22, 2021
• Docket: 2:18-cv-02780
• Status: Unknown

Opinion

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9 10 UNITED STATES DISTRICT COURT 11 CENTRAL DISTRICT OF CALIFORNIA 12 13 DELTA FORENSIC ENGINEERING, ) Case No. 18-cv-2780 DDP (AFMx) INC., a North Carolina Corporation ) 14 ) ORDER DENYING DEFENDANT’S 15 Plaintiff, ) MOTION FOR ATTORNEYS’ FEES 16 ) AND NONTAXABLE COSTS, v. ) DENYING PLAINTIFF’S EX-PARTE 17 ) APPLICATION TO STRIKE, AND 18 DELTA V BIOMECHANICS, INC., a ) GRANTING DEFENDANT’S California corporation ) MOTION TO RE-TAX COSTS 19 ) Defendant. ) 20 [Dkts. 134, 135, 137, 153, 166.] ) 21 22 Presently before the court are Defenda nt and Counter-claimant Delta V

23 B iomechanics, Inc. (“Defendant”)’s Notice of Lodging Proposed Order Dismissing 24 C o u n t e r c l a i m s w i t h out Prejudice and Propos ed Judgment, (dkt. 134), Motion for

25 A ttorneys’ fees and Nontaxable Costs, (dkt. 1 35), Plaintiff and Counter-Defendant’s Delta 26 V Forensic Engineering, Inc. (“Plaintiff”)’s Ex -Parte Application to Strike Defendant’s

27 Notice of Lodging Proposed Judgment, (dkt. 137), and Defendant’s Motion to Re-Tax and heard oral argument,1 the court approves Defendant’s Proposed Judgment, denies 1 Defendant’s Motion for Attorneys’ fees and Nontaxable Costs, denies Plaintiff’s Ex-parte 2 Application to Strike the Proposed Judgment, grants Defendant’s Motion to Re-Tax 3 Costs, and adopts the following order. 4 I. BACKGROUND 5 The court assumes the parties’ familiarity with the factual background of this case, 6 which has been set forth in greater detail in the court’s summary judgment Order. (Dkt. 7 128.) In brief, Plaintiff is an accident reconstruction firm providing expert witness in the 8 field of forensic engineering. (Dkt. 90-5, Decl. Radwick, Ex. B (Anders Depo. at 107:18- 9 10 108:3; 117:19-118:4.)) Defendant provides consulting and expert witness services in the 11 field of biomechanics. (Dkt. 85-7, Decl. Raphael ¶ 4.) Plaintiff filed this trademark 12 infringement action against Defendant for Defendant’s use of the mark “Delta V”. (See 13 Dkt. 1, Compl.) Defendant denied liability and asserted counterclaims for (1) 14 cancellation of marks due to abandonment; (2) declaratory judgment of prior use; (3) 15 declaratory judgment of non-infringement under the Lanham Act; and (4)-(5) declaratory 16 judgment of no unfair competition under the Lanham Act and under California law. 17 (Dkt. 29.) 18 After the close of discovery, the parties filed cross-motions for summary 19 judgment. (Dkts. 77, 85.) On August 23, 2019, the court granted Defendant’s motion for 20 summary judgment on the issues of likelihood of confusion and laches and denied 21 Plaintiff’s motion. (Dkt. 128.) The court’s order did not address or otherwise dismiss 22 Defendant’s counterclaims because neither party moved for summary judgment as to the 23 counterclaims. (See id.) In error, the court administratively closed the case on August 23, 24

25 26 1 The parties’ Joint Request for Hearing, dkt. 153, is granted. The court heard oral argument for dkts. 134, 135, and 137 on August 17, 2020. (See dkt. 159.) The court finds 27 dkt. 166 suitable for decision without oral argument. 2019 thereby vacating the pre-trial conference and trial dates. The court did not issue 1 final judgment in a separate document. 2 On March 18, 2020, Defendant filed a Proposed Judgment and Request for 3 Dismissal of Counterclaims, and the present Motion for Attorneys’ fees and Nontaxable 4 Costs. (Dkts. 134, 135 (“Mot.”).) Defendant seeks attorneys’ fees in the amount of 5 $849,902.45, and nontaxable costs in the amount of $9,058.03. (See Mot.) On March 20, 6 2020, Plaintiff filed an ex-parte application to strike the proposed judgment, strike the 7 proposed order for dismissal of counterclaims without prejudice and bifurcate the 8 timeliness issue from the merits issue for motion for attorneys’ fees and application to tax 9 10 costs. (Dkts. 137, 138.) Plaintiff contends that Defendant’s Motion for Attorneys’ fees is 11 untimely and that in any event, the motion fails on the merits. The court begins by 12 addressing the timeliness issue below. 13 II. LEGAL STANDARD 14 The Lanham Act permits courts to award reasonable attorneys’ fees in trademark 15 cases only in “exceptional cases.” 15 U.S.C. § 1117(a). Historically, a case was considered 16 exceptional only when a plaintiff had shown that a defendant had engaged in “malicious, 17 fraudulent, deliberate or willful” infringement. Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 18 1400, 1409 (9th Cir. 1993). In Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 19 1749 (2014), however, the Supreme Court held that an analogous standard under the 20 Patent Act was “unduly rigid and impermissibly encumber[ed] the statutory grant of 21 discretion to district courts.” Id. at 1755. Instead, the Court explained that “an 22 ‘exceptional’ case is simply one that stands out from others with respect to the 23 substantive strength of a party’s litigating position (considering both the governing law 24 and the facts of the case) or the unreasonable manner in which the case was litigated.” Id. 25 at 1756. Since Octane Fitness, the Ninth Circuit has clarified that “district courts analyzing 26 a request for fees under the Lanham Act should examine the ‘totality of the 27 circumstances’ to determine if the case was exceptional.” SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179, 1181 (9th Cir. 2016) (quoting Octane Fitness, 134 S. Ct. at 1756). 1 Under the “totality of the circumstances” approach, district courts may consider a 2 “‘nonexclusive’ list of ‘factors,’ including ‘frivolousness, motivation, objective 3 unreasonableness (both in the factual and legal components of the case) and the need in 4 particular circumstances to advance considerations of compensation and deterrence.’” 5 Octane Fitness, 134 S. Ct. at 1756 n.6 (quoting Fogerty v. Fantasy Inc., 510 U.S. 517, 534 n.19 6 (1994)). The exceptional case standard applies equally to prevailing plaintiffs and 7 prevailing defendants. Gracie v. Gracie, 217 F.3d 1060, 1071 (9th Cir. 2000). The burden of 8 proof for establishing an entitlement to fees is preponderance of the evidence. Id. at 1758. 9 10 In addition, under a district court’s inherent powers, a district court may “fashion 11 an appropriate sanction for conduct which abuses the judicial process.” Goodyear Tire & 12 Rubber Co. v. Haeger, 137 S. Ct. 1178, 1186 (2017) (quoting Chambers v. NASCO, Inc., 501 13 U.S. 32, 44-45 (1991)). “[O]ne permissible sanction is an assessment of attorney’s fees . . . 14 instructing a party that has acted in bad faith to reimburse legal fees and costs incurred 15 by the other side.” Id. (internal quotations omitted). However, a “court can shift only 16 those attorney’s fees incurred because of the misconduct at issue.” Id. The causal 17 connection required is a “but-for test: The complaining party may recover ‘only the 18 portion of his fees that he would not have paid but for’ the misconduct.” Id. at 1187 19 (quoting Fox v. Vice, 563 U.S. 826, 836 (2011)). 20 III. DISCUSSION 21 A. Timeliness 22 As an initial matter, Plaintiff disputes the timeliness of Defendant’s motion for 23 fees. Plaintiff makes several arguments in support of its position that the motion for fees 24 is untimely. First, according to Plaintiff, the court’s order granting summary judgment 25 on August 23, 2019 (“MSJ Order”) was “unambiguously final, and the parties treated it as 26 such: it was entered with the label ‘Case Terminated’ . . . .” (Dkt. 147, Opp. at 6-7.) 27 Plaintiff argues that Defendant’s conduct of not making any pretrial filings, not appearing for a final pretrial conference or trial, and not taking any other action, 1 demonstrates the parties’ belief that the MSJ Order was a final order disposing of the 2 case. (Id. at 7-8.) Plaintiff further asserts that Defendant cannot “resurrect” the action by 3 lodging a proposed order dismissing the counterclaims and a proposed judgment. (See 4 Dkt. 134 (Notice of Lodging Proposed Order Dismissing Delta V Biomechanics, Inc.’s 5 Counterclaims without Prejudice and Proposed Judgment).) Second, Plaintiff contends 6 that Defendant has waived its right to claim that the MSJ Order was not a final order. 7 Third, Plaintiff argues if a separate judgment was not waived, under Rule 58(c), 8 judgment was deemed entered 150 days after the MSJ Order. (Id. at 8-9.) 9 10 A motion for attorneys’ fees and costs must be filed “no later than 14 days after 11 the entry of judgment,” unless a statute or court order provides otherwise. Fed. R. Civ. P. 12 54(d)(2). Under Local Rules, a motion for attorneys’ fees must be filed “within fourteen [] 13 days after the entry of judgment or other final order, unless otherwise ordered by the 14 Court.” C.D. Cal. L.R. 54-7, 54-8. As to entry of judgment, Federal Rule of Civil 15 Procedure 58 provides that “[e]very judgment . . . must be set out in a separate 16 document,” and “judgment is entered . . . when the judgment is entered in the civil 17 docket . . . and the earlier of these events occurs: (A) it is set out in a separate document; 18 or (B) 150 days have run from the entry in the civil docket.” Fed. R. Civ. P. 58(a), 19 (c)(2)(A-B). Importantly, Local Rule 58-6 provides that in the Central District a 20 “[n]otation in the civil docket of entry of a memorandum of decision, an opinion of the 21 Court, or a minute order of the Clerk shall not constitute entry of judgment pursuant to 22 Fed. R. Civ. Proc. 58 and 79(a) unless specifically ordered by the judge.” C.D. Cal. L.R. 23 58-6 (emphasis added). 24 For purposes of appellate jurisdiction, where judgment has not been set forth in a 25 separate document under Rule 58, the Ninth Circuit will look to whether the ruling “(1) 26 is a full adjudication of the issues, and (2) clearly evidences the judge’s intention that it be 27 the court’s final act in the matter.” Casey v. Albertson’s Inc., 362 F.3d 1254, 1258 (9th Cir. 2004) (quoting Nat’l Distrib. Agency v. Nationwide Mut. Ins. Co., 117 F.3d 432, 433 (9th Cir. 1 1997)). The court will also consider whether the parties’ conduct demonstrates the belief 2 that a final judgment has been entered thereby waiving Rule 58’s separate judgment 3 requirement. See Casey, 362 F.3d at 1258-59; Bankers Trust Co. v. Mallis, 435 U.S. 381 4 (1978). 5 Plaintiff does not dispute that the court has not issued a separate judgment in this 6 action. Thus, the issue is whether the court’s MSJ Order was a final order and whether 7 the parties’ conduct indicates that the parties unequivocally believed the MSJ Order 8 served as a judgment. See Casey, 362 F.3d at 1258-59. Plaintiff first appears to contend 9 10 that the MSJ Order, although it did not address the counterclaims, should be treated as a 11 final order because the court administratively closed the case. However, the court’s 12 administrative closure, by itself, is not significant in determining whether the order 13 adjudicated all issues leaving nothing left for the court to do. Dees v. Billy, 394 F.3d 1290, 14 1294 (9th Cir. 2005) (“[a]n order administratively closing a case is a docket management 15 tool that has no jurisdictional effect.”). Moreover, it is undeniable that the MSJ Order did 16 not adjudicate Defendant’s counterclaims including, of particular significance, 17 Defendant’s counterclaim for cancellation of Plaintiff’s marks. Defendant’s 18 counterclaims remained pending before the court despite the court’s administrative 19 closure. (See Dkt. 128.) Further, Plaintiff could not have reasonably relied on the 20 administrative closure in believing that the order was final. See Fed. R. Civ. P. 54(b) 21 (“any order or other decision, however designated, that adjudicates fewer than all the 22 claims or the rights and liabilities of fewer than all the parties does not end the action as 23 to any of the claims or parties and may be revised at any time before the entry of a 24 judgment adjudicating all the claims and all the parties’ rights and liabilities.”). Having 25 knowledge of the pending counterclaims, Plaintiff could have sought clarification, sought 26 final judgment in a separate document, or filed a motion for involuntary dismissal of the 27 counterclaims under Rule 41(b). As Plaintiff notes, “if the judge does nothing further in the case for 150 days, then it should occur to even the most inattentive of appellate 1 counsel that it is time either to seek clarification from the judge or to file an appeal.” 2 (Opp. at 9 (quoting Orr v. Plumb, 884 F. 3d 923, 931 (9th Cir. 2018)). 3 There is also no basis to conclude that Defendant’s conduct demonstrates an 4 unequivocal belief that the MSJ Order was a final judgment. The court’s administrative 5 closure vacated the pre-trial conference and trial dates. There were no deadlines or 6 hearings scheduled that Defendant failed to adhere to. As discussed above, knowing 7 that there were pending counterclaims, Plaintiff could have sought clarification from the 8 court when the pre-trial and trial dates were vacated. Plaintiff relies on inapposite cases 9 10 to argue that Defendant should be deemed to have abandoned its counterclaims and 11 waived the separate document requirement. See Casey, 362 F.3d at 1259 (Plaintiff waived 12 separate judgment requirement when Plaintiff “unequivocally indicated her belief that 13 the. . . summary judgment minute order served as a judgment by filing a Rule 60(b) 14 motion.”); Jenkins v. County of Riverside, 398 F.3d 1093, 1095 n.4 (9th Cir. 2005) (claims 15 deemed abandoned when not raised in opposition to a motion for summary judgment); 16 see also Bankers Trust, 435 U.S. at 387-88 (holding that where the district court evidenced 17 clear intent that its order represented the final decision in the case, a judgment of 18 dismissal was entered by the clerk, and the parties did not object to the separate 19 judgment requirement on appeal, “the parties should be deemed to have waived the 20 separate-judgment requirement of Rule 58”). Here, Defendant did not file any motion or 21 document indicating that it considered the court’s MSJ Order as final, did not fail to 22 oppose a motion for summary judgment or dismissal of its counterclaims, did not fail to 23 object to the separate judgment, and did not fail to meet deadlines or fail to appear to any 24 hearing. 25 Similarly, Plaintiff’s contention that judgment was deemed entered 150 days from 26 the MSJ Order is misplaced for two reasons. First, Federal Rule 58 must be read together 27 with Local Rule 58-6. Under Federal Rule of Civil Procedure 58, “judgment is entered . . . when the judgment is entered in the civil docket . . . and the earlier of these events occurs: 1 (A) it is set out in a separate document; or (B) 150 days have run from the entry in the 2 civil docket.” Fed. R. Civ. P. 58(a), (c). However, Local Rule 58-6 provides that a 3 “[n]otation in the civil docket of entry of a memorandum of decision, an opinion of the 4 Court, or a minute order of the Clerk shall not constitute entry of judgment pursuant to 5 Fed. R. Civ. Proc. 58 and 79(a) unless specifically ordered by the judge.” L.R. 58-6 6 (emphasis added). The court did not order for the opinion of the court to be an entry of 7 judgment. Nor could it. As discussed above, Defendant’s counterclaims remained 8 unaddressed and pending before the court. Second, Orr v. Plumb, a case on which 9 10 Plaintiff relies for application of the 150-day rule, is distinguishable from the situation at 11 bar. 884 F.3d 923 (9th Cir. 2018). There, the Ninth Circuit concluded that the 150-day 12 applied where there was no separate judgment and where a special verdict was a “full 13 adjudication of the issues” leaving “nothing further for the court to do . . . .” Id. at 928-29. 14 Unlike Orr, the MSJ Order was not a full adjudication of the issues; Defendant’s 15 counterclaims remained pending before the court. The 150-day rule set forth in Rule 16 58(c) is inapplicable under the circumstances here. 17 For the reasons set forth above, Defendant’s motion for fees is timely.2 3 18 /// 19 /// 20 /// 21 /// 22 23 2 Plaintiff also appears to argue that the time for it to appeal has run. Because the court 24 concludes that judgment was not entered by virtue of the MSJ Order or the 150-day rule, Plaintiff’s time for appeal has not run. 25 3 Having concluded that Defendant’s motion for fees is timely, the court reverses the 26 clerk’s denial of Defendant’s Application to Tax Costs, Dkt. 162. The Clerk shall proceed to decide the Application on its merits. See Order Granting Defendant and 27 Counterclaimant Delta V Biomechanics Inc.’s Motion to Re-tax Costs. B. Fees under the Lanham Act 1 1. Reasonableness of Plaintiff’s Claims 2 Defendant asserts that this case is exceptional because Plaintiff’s claims were 3 baseless from the outset. Defendant asserts that it was evident from the beginning that 4 the relevant consumers are highly sophisticated making the likelihood of confusion 5 “almost nil,” Plaintiff was not aware of any confusion prior to July 2016, and there was 6 never any evidence of willfulness or evidence of any damages. (Mot. at 18-21 (quoting 7 M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1084 (9th Cir. 2005).) In short, 8 Defendant asserts that this was never a “close case” and as such, Plaintiff’s claims were 9 10 objectively baseless. (Id. at 21.) 11 The court disagrees. The issue of likelihood of confusion requires an evaluation of 12 a non-exhaustive list of factors. See Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1125 13 (9th Cir. 2014) (likelihood of confusion is evaluated using the following, non-exhaustive, 14 factors: “(1) strength of the protected mark; (2) proximity and relatedness of the goods; 15 (3) type of goods and the degree of consumer care; (4) similarity of the protected mark 16 and the allegedly infringing mark; (5) marketing channel convergence; (6) evidence of 17 actual consumer confusion; (7) defendant’s intent in selecting the allegedly infringing 18 mark; and (8) likelihood of product expansion” (citing AMF Inc. v. Sleekcraft Boats, 599 19 F.2d 341, 348-49 (9th Cir. 1979)). And here, Plaintiff raised debatable issues of fact and 20 law for various factors. For instance, although Plaintiff’s mark is weak, the parties use a 21 similar name and provide services in similar fields. Plaintiff professed the desire to 22 expand to Defendant’s field of biomechanics indicating likelihood of service expansion. 23 Plaintiff also argued that despite the sophistication of consumers, consumers could be 24 confused regarding the parties’ affiliation. In support of its argument, Plaintiff put forth 25 26 27 relevant facts4 and relied on relevant law. Specifically, Plaintiff relied on Morningside 1 Group Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 141-43 (2d Cir. 1999), a 2 Second Circuit case which held that confusion as to “sponsorship and affiliation” 3 between “two similarly named companies” is relevant to the likelihood of confusion 4 inquiry. The court here rejected Plaintiff’s position because the court concluded that 5 there was no evidence of confusion regarding affiliation and confusion as to affiliation 6 was unlikely. Nonetheless, the issue was sufficiently debatable for Plaintiff to raise the 7 argument. 8 Similarly, Plaintiff relied on relevant law to argue actual confusion at summary 9 10 judgment.5 The court’s conclusion that Plaintiff’s evidence of actual confusion was no 11 more than stand-alone enquiries and misdirected communications was not obvious from 12 the outset. In any event, the absence of actual confusion does not make Plaintiff’s claim 13 of infringement objectively unreasonable. While evidence of actual confusion is 14 important, “[b]ecause evidence of actual confusion can be difficult to obtain, its absence 15 is ‘generally unnoteworthy’ and is given little probative weight.” Cohn v. Petsmart, Inc., 16 281 F.3d 837, 842 (9th Cir. 2002) (quoting Brookfield Commc’ns, Inc. v. W. Coast Entm’t 17 Corp., 174 F.3d 1036, 1050 (9th Cir. 1999)). 18 Fellow district courts in this Circuit have concluded that “[i]f a plaintiff has raised 19 ‘debatable issues’ and can be found to have had a legitimate reason for bringing the 20 21 4 Defendant notes that Plaintiff failed to conduct a survey and did not designate any 22 experts. Although there is not a hard and fast rule requiring such evidence, and the lack of such evidence here is worthy of mention, the court still finds that such lack of 23 evidence, given the totality of the factors the court considered herein, does not tip the 24 balance in favor of attorneys’ fees. 5 For similar reasons, Plaintiff’s request for injunctive relief was not objectively 25 unreasonable. Talking Rain Beverage Co., Inc. v. DS Servs. of Am., Inc., No. C15-1804RSM, 26 2016 WL 10679357, at *10 (W.D. Wash. Feb. 12, 2016) (collecting cases) (“[O]ne way to show a likelihood of future irreparable harm is to show that there has, to date, been some 27 actual confusion or harm.”). lawsuit, it supports a finding that a case is not exceptional.” Caiz v. Roberts, No. CV 15– 1 09044 RSWL (AGRx), 2017 WL 830386, at *4 (C.D. Cal. Mar. 2, 2017) (citing Nutrivita 2 Laboratories, Inc. v. VBS Distribution Inc., 160 F. Supp. 3d 1184, 1192 (C.D. Cal. 2016)). As 3 discussed above, Plaintiff raised debatable issues of likelihood of confusion. The court 4 also notes that trademark law invites wasteful disputes because it may provide 5 protection even for weak marks. There is just no easy way around that reality. 6 Therefore, although Plaintiff’s mark is weak, Plaintiff was not out of bounds in 7 attempting to police its rights. Had Plaintiff not attempted to do so, it would have risked 8 losing its rights against future competitors. Plaintiff had a debatable reason for bringing 9 10 this lawsuit. 11 2. Plaintiff’s Litigation Conduct 12 Defendant asserts that it is also entitled to attorneys’ fees because Plaintiff 13 “litigated this case in an unreasonable and bad faith manner.” (Mot. at 15.) Defendant 14 contends that Plaintiff’s bad faith is evidenced, in part, by the following: Plaintiff’s 15 strategy to “lie in wait” until the fifth-year anniversary of its trademark registration; 16 Plaintiff’s false claim in the cease and desist letter that its trademark was incontestable; 17 Defendant had to engage in months of meet and confers to obtain responsive documents, 18 in particular, the FedEx package which Plaintiff asserted was evidence of actual 19 confusion; Plaintiff’s deficient initial disclosures and supplemental disclosures; Plaintiff’s 20 false statements and misrepresentations; and Plaintiff’s spoliation of evidence. 21 Reviewing the litigation history of the case, the court concludes that while 22 Plaintiff’s conduct is troubling, and substantially less than ideal, the conduct does not 23 make this case exceptional. First, there is insufficient evidence to conclude that Plaintiff’s 24 strategy was to “lie in wait” or that Plaintiff acted in bad faith when it sent the cease and 25 desist letter. The 2014 email does not clearly inform Plaintiff of Defendant’s use of the 26 “Delta V” mark. Arguably, however, Plaintiff should have investigated further after 27 receiving the email. (See Dkt. 135-3, Radwick Decl., Ex. H (“About to see Elizabeth Raphael speak at DRI” and “You’re probably scratching your head . . . [t]he [conference] 1 materials indicate Dr. Raphael is with Delta v in Charlotte, but they clarified it is a mistake 2 in the program.” (emphasis added)). Similarly, Plaintiff’s involvement in the Kinney case, 3 sufficient to find that Plaintiff had constructive knowledge of Defendant’s use of the 4 “Delta V” mark, was insufficient for the court to find that Plaintiff had actual knowledge. 5 Further, Plaintiff’s claim of incontestability appears to have been the result of an 6 oversight and is insufficient to establish bad faith. (See Dkt. 147-36, Gromlovits Decl. ¶ 5 7 (“when the letter was written, we thought the registrations were incontestable because all 8 of the prerequisites to incontestability, other than the formality of filing in the Patent and 9 10 Trademark Office, had been achieved.”).) 11 Second, Plaintiff’s conduct regarding the FedEx package was troubling and 12 unprofessional. The court finds that the attorneys had a duty to make a good faith effort 13 to locate the sender and to deliver the misaddressed package to Defendant in a timely 14 manner. Instead, Plaintiff’s counsel retained the FedEx package for approximately two 15 years before providing it to Defendant, late in discovery. The court expects more from 16 professionals. However improper, Plaintiff’s conduct did not preclude Defendant from 17 ultimately locating the sender and investigating the misaddressed package. Plaintiff 18 attached images of the front and back of the package which included the name of the 19 sender to the initial complaint filed in North Carolina. (Dkt. 135-3, Radwick Decl., Exs. L, 20 M.) Defendant could have investigated the package at that early stage and, in any event, 21 Plaintiff’s ultimate production of the package occurred before the end of discovery. 22 Therefore, Defendant was able to investigate and address the significance of the package 23 at summary judgment. Plaintiff’s conduct is certainly a factor that the court seriously 24 considered, but the court, in looking at the overall background and history of this 25 litigation, finds that this conduct does not change the court’s overall reluctance to award 26 attorneys’ fees here. 27 Lastly, Plaintiff’s conduct during the course of discovery evidences missteps 1 litigating this case. Plaintiff provided inadequate initial disclosures and did not conduct 2 an adequate search for documents until late in discovery. It appears that Plaintiff 3 provided more than half of the responsive documents less than one month before the 4 close of discovery and thereafter, supplemented its responses after the close of discovery. 5 (See Dkt. 135-4, Exs. W, X.) Plaintiff’s Rule 30(b)(6) witness also provided inaccurate 6 information. The inaccurate statements do not appear to have been made in bad faith, 7 however. Statements by Rule 30(b)(6) witnesses can be made in good faith and be 8 inaccurate. It appears that such was the case here. The deficient disclosures, deficient 9 10 production of documents, and withholding of arguably responsive documents, without 11 adequate justification, are lamentable but do not make this case exceptional. The court 12 notes that, although not necessary for a finding of bad faith or unreasonable litigation 13 conduct, there were no motions to compel or motions seeking sanctions brought in this 14 action. 15 Based on the above, Plaintiff’s litigation conduct is distinguishable from cases, on 16 which Defendant relies, where courts have concluded that attorneys’ fees were 17 warranted for unreasonable litigation conduct or pattern of bad faith. See Raniere v. 18 Microsoft Corp., 887 F.3d 1298, 1308-09 (Fed. Cir. 2018) (affirming attorneys’ fees where 19 Plaintiff’s conduct demonstrated a pattern of obfuscation and bad faith to “vexatiously 20 multiply the proceedings and avoid early dismissal” by failing to produce evidence that 21 would cure standing defect after multiple opportunities to cure); Elem Indian Colony of 22 Pomo Indians of the Sulphur Bank Rancheria v. Ceiba Legal, LLP, 230 F. Supp. 3d 1146, 1150 23 (N.D. Cal. 2017) (awarding fees where plaintiff demonstrated a pattern of 24 “misrepresentation and disregard for factual accuracy,” acted “evasively and 25 disingenuously before the Court, including outright misstating the facts on numerous 26 occasions,” the claims were exceptionally meritless, and given the timing of the 27 complaint, evidenced a possibility that “plaintiff brought th[e] action to suppress political opposition”); Cent. Mfg., Inc. v. Brett, 492 F.3d 876, 884 (7th Cir. 2007) (affirming 1 attorneys’ fees where plaintiff filed infringement lawsuit with no evidence of sales to 2 support claim to rights in mark, failed to produce documents requiring defendants to 3 pursue numerous motions to compel, provided misleading testimony and failed to 4 cooperate throughout discovery). Plaintiff’s conduct in this litigation approaches the line 5 but does not cross it. 6 Accordingly, the court denies Defendant’s motion for attorneys’ fees under the 7 Lanham Act. 8 9 C. Fees under the Court’s Inherent Authority 10 For the reasons discussed above, the court also does not find that circumstances 11 presented in this case demonstrate misconduct which abuses the judicial process. See 12 Chambers, 501 U.S. at 44-45. The court denies the motion for attorneys’ fees under the 13 court’s inherent authority. 14 /// 15 /// 16 /// 17 /// 18 /// 19 /// 20 /// 21 /// 22 /// 23 /// 24 /// 25 /// 26 /// 27 /// IV.CONCLUSION 1 For the reasons stated above, the court orders as follows: 2 (1) The court approves Defendant’s voluntary dismissal of its counterclaims 3 without prejudice. (Dkt. 134-1.) 4 (2) The court approves the Proposed Judgment. (Dkt. 134-2.) 5 (3) The court denies Defendant’s motion for attorneys’ fees and nontaxable costs 6 (Dkt. 135.) 7 (4) The court denies Plaintiff’s Ex-parte Application (Dkt. 137.) 8 (5) The court grants Defendant’s Motion to re-tax costs. (Dkt. 166.) Defendant’s 9 10 Application to the clerk to tax costs, dkt. 136, is timely. The clerk’s denial of 11 Defendant’s Application to Tax Costs is Reversed. The clerk shall proceed to 12 decide the Application on the Merits. 13 IT IS SO ORDERED. 14 15 Dated: January 22, 2021 16 17 18 ___________________________________ 19 DEAN D. PREGERSON 20 UNITED STATES DISTRICT JUDGE 21 22 23 24 25 26 27