UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
East Coast Sheet Metal Fabricating Corp., d/b/a EastCoast CAD/CAM
v. Civil No. 12-cv-517-LM Opinion No. 2015 DNH 150 Autodesk, Inc.
O R D E R
East Coast Sheet Metal Fabricating Corp. (“EastCoast”) sued
Autodesk, Inc. (“Autodesk”) for patent infringement and also
asserted several claims under state law, which it dropped before
judgment was rendered on them. In an order dated January 15,
2015, the court: (1) granted summary judgment to Autodesk on its
defense that the patents in suit were invalid, due to the
unpatentability of EastCoast’s subject matter; (2) ruled in
Autodesk’s favor on its defense that the accused products did
not infringe the patents in suit; and (3) denied as moot
Autodesk’s motion for judgment as a matter of law that EastCoast
could not prove damages in the form of lost profits. In an
order dated March 3, 2015, the court amended its previous order
to specify that it was dismissing, as moot, Autodesk’s three
counterclaims for declaratory judgment, including a request for
a declaratory judgment that the patents in suit were unenforceable due to EastCoast’s inequitable conduct before the
U.S. Patent and Trademark Office (“PTO”). Before the court is
Autodesk’s motion for attorney’s fees and related nontaxable
expenses. EastCoast objects. It also suggests, in the
alternative, that the court could defer ruling on attorney’s
fees until its appeal has run its course. The court declines to
defer its consideration of the motion before it.1 Rather, for
the reasons that follow, the court denies Autodesk’s motion for
attorney’s fees.
I. The Legal Standard
“Although parties to civil litigation typically bear the
burden of paying their own counsel, see Alyeska Pipeline Serv.
Co. v. Wilderness Soc’y, 421 U.S. 240, 247 (1975), statutes and
contractual provisions sometimes alter that burden.” Cent.
Pension Fund of the Int’l Union of Operating Eng’rs &
Participating Emp’rs v. Ray Haluch Gravel Co., 745 F.3d 1, 3
(1st Cir. 2014) (parallel citations omitted). The Patent Act
1 When presented with a similar request, Judge Wilkin declined: “If this Court decides the fees issue now, the Federal Circuit may consider the overlapping summary judgment and fees issues together, saving judicial resources.” Cf. Linex Techs., Inc. v. Hewlett-Packard Co., No. C 13-159 CW, 2014 WL 4616847, at *3 (N.D. Cal. Sept. 15, 2014) (citing Nystrom v. TREX Co., 339 F.3d 1347, 1350 (Fed. Cir. 2003) (opposing piecemeal appeals)); see also Intex Rec. Corp. v. Team Worldwide Corp., -- - F. Supp. 3d ---, ---, 2015 WL 135532, at *4 (D.D.C. Jan. 9, 2015).
2 includes a provision that can shift the burden of paying for
counsel. See 35 U.S.C. § 285. In addition, federal courts have
the inherent power to award attorney’s fees as a sanction. See
Charbono v. Sumski (In re Charbono), --- F.3d ---, ---, 2015 WL
3653610, at *2 (1st Cir. June 15, 2015). The Federal Rules of
Civil Procedure (“Federal Rules”) also empower courts to
sanction parties by awarding attorney’s fees. See Fed. R. Civ.
P. 11(c)(4). Having identified three basic sources of authority
for the assessment of attorney’s fees, the court describes in
more detail the legal standards associated with each.
A. The Patent Act
The Patent Act provides that “[t]he court in exceptional
cases may award reasonable attorney fees to the prevailing
party.” 35 U.S.C. § 285. “[A]n ‘exceptional’ case is simply
one that stands out from others with respect to the substantive
strength of a party’s litigating position (considering both the
governing law and the facts of the case) or the unreasonable
manner in which the case was litigated.” Octane Fitness, LLC v.
ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014).
Under the second branch of the § 285 analysis, unreasonable
litigation generally refers to litigation misconduct, which
“includes ‘willful infringement, fraud or inequitable conduct in
3 procuring the patent, misconduct during litigation, vexatious or
unjustified litigation, conduct that violates Fed. R. Civ. P.
11, or like infractions.’” Id. (quoting Brooks Furn. Mfg., Inc.
v. Dutailier Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005),
overruled on other grounds by Octane Fitness, 134 S. Ct. 1749).
A party must prove its entitlement to fees under § 285 by a
preponderance of the evidence. See Octane Fitness, 134 S. Ct.
at 1758. “District courts may determine whether a case is
‘exceptional’ in the case-by-case exercise of their discretion,
considering the totality of the circumstances.” Id. at 1756.
Given that focus on the totality of the circumstances, “a case
should be viewed more as an ‘inclusive whole’ rather than as a
piecemeal process when analyzing fee-shifting under § 285.”
Therasense, Inc. v. Becton, Dickinson & Co. (Therasense II), 745
F.3d 513, 516 (Fed. Cir. 2014) (citing Comm’r, INS v. Jean, 496
U.S. 154, 161-62 (1990)).
B. Inherent Power
Notwithstanding “the venerable ‘American Rule,’ which
provides that litigants shall ordinarily pay their own lawyers,”
In re Charbono, 2015 WL 3653610, at *4 (citations omitted),
courts may, in the exercise of their inherent power, “award
[attorney’s] fees when a party has ‘acted in bad faith,
4 vexatiously, wantonly, or for oppressive reasons.’” RTR Techs.,
Inc. v. Helming, 707 F.3d 84, 94 (1st Cir. 2013) (quoting
Alyeska Pipeline, 421 U.S. at 258-59). A party requesting an
award of attorney’s fees pursuant to the court’s inherent power
must make its showing of bad faith by clear and convincing
evidence. See Dubois v. U.S. Dep’t of Agric., No. CIV.A. 95–50–
B, 1998 WL 34007445, at *2 (D.N.H. July 17, 1998) (citing Dow
Chem. Pac. Ltd. v. Rascator Maritime S.A., 782 F.2d 329, 344 (2d
Cir. 1986); Autorama Corp. v. Stewart, 802 F.2d 1284, 1288 (10th
Cir. 1986)). “District courts are well-advised to use their
inherent power cautiously and to grant attorneys’ fees sparingly
under that power.” RTR Technologies, 707 F.3d at 94 (citing
Chambers v. NASCO, Inc., 501 U.S. 32, 45-46 (1991); Estate of
Hevia v. Portrio Corp., 602 F.3d 34, 46 (1st Cir. 2010)).
Indeed, an award of attorney’s fees under the court’s inherent
power is “reserved for egregious circumstances,” Mullane v.
Chambers, 333 F.3d 322, 338 (1st Cir. 2003) (quoting Whitney
Bros. Co. v. Sprafkin, 60 F.3d 8, 13 (1st Cir. 1995)), and
“compelling situations,” Dubois v. U.S. Dep’t of Agric., 270
F.3d 77, 80 (1st Cir. 2001).
5 C. Rule 11 Power
The Federal Rules “impose[ ] a duty on attorneys to certify
that they have conducted a reasonable inquiry and have
determined that any papers filed with the court are well
grounded in fact, legally tenable, and not interposed for any
improper purpose.” Enos v. Union Stone, Inc., 732 F.3d 45, 50
(1st Cir. 2013) (quoting Cooter & Gell v. Hartmarx Corp., 496
U.S. 384, 393 (1990)). “Rule 11 permits a court to impose
sanctions on a party or lawyer for advocating a frivolous
position, pursuing an unfounded claim, or filing a lawsuit for
some improper purpose.” CQ Int’l Co. v. Rochem Int’l, Inc.,
USA, 659 F.3d 53, 60 (1st Cir. 2011) (citing Fed. R. Civ. P.
11(b)). Those sanctions may include attorney’s fees. See Fed.
R. Civ. P. 11(c)(4).
II. Discussion
Autodesk bases its request for attorney’s fees on 35 U.S.C.
§ 285, and also asks the court to invoke both its inherent power
and its Rule 11 power to sanction EastCoast by imposing a fee
award. It does so in the following way:
Autodesk’s motion is based on 35 U.S.C. § 285 and Octane Fitness, as well as on East Coast’s sanctionable Rule 11 conduct and/or the Court’s “inherent powers” as a sanction for East Coast’s bad faith conduct, as explained above. Any portion claimed that is available based on more than one of
6 those grounds is sought based on all those grounds under which it is available. Any portion unavailable on any one or more of the stated grounds is requested to the full extent available under any other of the stated grounds.
Def.’s Br. (doc. no. 197-1) 14 (citations omitted). While
Autodesk invokes § 285, Rule 11, and the court’s inherent
powers, it relies nearly exclusively upon § 285 cases in its
memorandum of law. Moreover, given the Supreme Court’s
observation that a party’s misconduct can be exceptional for the
purposes of § 285 without rising to the level of being
independently sanctionable, see Octane Fitness, 134 S. Ct. at
1757, it seems clear that a party that is not entitled to
attorney fees under § 285 would, necessarily, not be entitled to
an award of fees under Rule 11 or pursuant to the court’s
inherent power. Accordingly, the court will analyze Autodesk’s
request for fees under the legal principles applicable to § 285.
There is another reason for disregarding Autodesk’s
invocation of Rule 11. In an order dated September 9, 2014, the
court denied Autodesk’s Rule 11 motion but did so “without
prejudice to Autodesk moving for sanctions if and when it
receives a favorable disposition of EastCoast’s infringement
action.” Order (doc. no. 107) 3-4. The court’s order invited
Autodesk to submit another Rule 11 motion, but did not waive or
alter any of the procedural rules governing the litigation of
7 such motions. One of those rules is that “[a] Rule 11 motion
must be made ‘separately from any other motion,’ Fed. R. Civ. P.
11(c)(2), and ‘not simply . . . as an additional prayer for
relief contained in another motion.’” Lamboy-Ortiz v. Ortiz-
Vélez, 630 F.3d 228, 244 (1st Cir. 2010) (quoting Fed. R. Civ.
P. 11(c)(2) advisory committee’s note). Because Autodesk has
not filed a separate Rule 11 motion, the court may not award
attorney’s fees to Autodesk as a Rule 11 sanction against
EastCoast. See Lamboy-Ortiz, 630 F.3d at 244-45; see also Irwin
Indus. Tool Co. v. Bibow Indus., Inc., Civ. Action No. 11-30023-
DPW, 2014 WL 1323744, at *1 (D. Mass. Mar. 31, 2014). That
said, conduct that would constitute a violation of Rule 11 may
qualify as litigation misconduct for the purposes of § 285. See
Octane Fitness, 134 S. Ct. at 1756.
In the discussion that follows, the court considers the two
branches of the § 285 analysis identified by the Supreme Court
in Octane Fitness, i.e., the strength of EastCoast’s litigating
position, and the manner in which it has litigated this case.
See 134 S. Ct. at 1756. The court begins with the manner in
which EastCoast has litigated, which seems to be the primary
focus of Autodesk’s claim for attorney fees.
8 A. Manner in Which EastCoast Has Litigated
The court considers in turn Autodesk’s arguments that it is
entitled to attorney fees under 35 U.S.C. § 285 because
EastCoast: (1) engaged in inequitable conduct before the PTO;
(2) pursued frivolous infringement claims; (3) pursued frivolous
non-patent claims; and (4) engaged in discovery misconduct.
Notwithstanding its obligation to consider this case as a whole,
see Octane Fitness, 134 S. Ct. at 1756, the court will, for
analytical purposes, consider Autodesk’s arguments one by one.
Cf. SFA Sys., LLC v. Newegg Inc., --- F.3d ---, ---, 2015 WL
4154110, at *3 (Fed. Cir. July 10, 2015).
1. Conduct During Patent Procurement
A patentee’s inequitable conduct while procuring its patent
may warrant a finding of exceptionality for the purposes of §
285. See Octane Fitness, 134 S. Ct. at 1756; see also Stragent,
LLC v. Intel Corp., No. 6:11-cv-421, 2014 WL 6756304, at *3
(E.D. Tex. Aug. 6, 2014); Momenta Pharms., Inc. v. Teva Pharms.
USA, Inc., 60 F. Supp. 3d 261, 263 (D. Mass. 2014).
Autodesk first claimed that EastCoast engaged in
inequitable conduct before the PTO in a counterclaim seeking a
declaratory judgment of unenforceability. See Answer to Second
Am. Compl. (doc. no. 32) 21-25. After the court granted summary
9 judgment in favor of Autodesk, and dismissed Autodesk’s
counterclaims as moot, Autodesk moved the court to amend its
“judgment . . . to reflect that Autodesk’s inequitable conduct
claim was dismissed as a matter of the Court’s discretion and
that Autodesk is entitled to raise enforceability in its fees
motion.” Mot. to Alter or Amend (doc. no. 198) 1-2. In its
order granting Autodesk’s motion, the court declined “to add an
additional sentence to the order that specifically entitles
Autodesk to raise the issue of inequitable conduct in its motion
for fees.” Order (doc. no. 210) 2. Rather, the court directed
that
[i]n the context of Autodesk’s motion for fees, the parties shall litigate both: (1) the propriety of addressing inequitable conduct in the context of the motion for fees (an issue that has already been joined by the parties); and (2) the merits of Autodesk’s inequitable-conduct argument (which has also been addressed by the parties).
Id. at 3.
Although the parties have addressed the merits of
Autodesk’s inequitable-conduct claim, they have not addressed
the question of whether it was proper to litigate the issue of
inequitable conduct for the first time in a motion for attorney
fees. In the face of that silence, and Autodesk’s in
particular, coupled with lingering concerns about “the counsel
fee tail continuing endlessly to wag the merits’ dog,” Wagenmann
10 v. Adams, 829 F.2d 196, 226 (1st Cir. 1987), the court has
researched the question it directed the parties to brief. That
research, in turn, confirms the propriety of considering
Autodesk’s inequitable-conduct argument at this stage of the
proceedings.
In Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp.
(Brasseler I), 182 F.3d 888 (Fed. Cir. 1999), the Federal
Circuit affirmed the district court’s grant of summary judgment
to the defendant on a patent-infringement claim. See id. at
892. Then, it “remanded [the case] to the district court for a
determination of whether [it] was an exceptional case entitling
Stryker to attorney fees in accordance with 35 U.S.C. § 285.”
Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp. (Brasseler II),
267 F.3d 1370, 1375 (Fed. Cir. 2001). In remanding, the court
of appeals acknowledged that Stryker appeared to have based its
§ 285 attorney fees claim on allegations beyond those involving
the legal theory that entitled it to summary judgment. See
Brasseler I, 182 F.3d at 892. And, indeed, while Stryker won
summary judgment because the patent in suit was invalid under 35
U.S.C. § 102(b), see id. at 889, it moved for attorney fees on
grounds that, among other things, the patentee had engaged in
misconduct before the PTO, see Brasseler II, 267 F.3d at 1375,
an issue that played no role in the grant of summary judgment.
11 Based upon Brasseler II, and the Federal Circuit’s remand order
acknowledging that the attorney fees issue would involve legal
questions beyond those that supported the grant of summary
judgment, this court cannot agree with EastCoast that Autodesk
is barred from litigating the question of inequitable conduct
before the PTO in its motion for attorney fees. Accordingly,
the court turns to the merits of that argument.
Autodesk argues that EastCoast inventors Joseph Massaro and
David Derocher engaged in inequitable conduct “when they
withheld a full disclosure of [a particular piece of] prior art
with which they were intimately familiar.” Def.’s Br. (doc. no.
197-1) 10. More specifically, Autodesk contends: “Although
[that prior art] was mentioned in the application for the
patents in suit, East Coast [sic] failed to mention that [it]
satisfied all or nearly all of the claimed features.” Id. at
11. Where, precisely, that failure took place, Autodesk does
not say. Autodesk also makes a vague and ill-supported
reference to an interview at the PTO involving an examiner and
the inventors of the apparatuses claimed in the patents in suit.2
2That reference is ill-supported because in its argument on this point, Autodesk cites to a portion of Derocher’s declaration that says nothing about his interview at the PTO. See Def.’s Br. (doc. no. 197-1) 11 (citing id., Ex. M (doc. no. 197-15), at 11:11-21, 15:21-17:12).
12 In addition to arguing that the court should not consider
Autodesk’s inequitable-conduct argument in the first instance,
EastCoast also argues that a patent applicant’s characterization
of prior art cannot form the basis for an inequitable-conduct
claim. EastCoast has the better argument.
Generally speaking, “[i]nequitable conduct is an equitable
defense to patent infringement.” Am. Calcar, Inc. v. Am. Honda
Motor Co., 768 F.3d 1185, 1188 (Fed. Cir. 2014) (citing
Therasense, Inc. v. Becton, Dickinson & Co. (Therasense I), 649
F.3d 1276, 1285 (Fed. Cir. 2011)). A party raising that defense
must prove “that the patent applicant (1) misrepresented or
omitted information material to patentability, and (2) did so
with specific intent to mislead or deceive the PTO.” Am.
Calcar, 768 F.3d at 1188-89 (quoting Ohio Willow Wood Co. v.
Alps S., LLC, 735 F.3d 1333, 1344 (Fed. Cir. 2013)). When
raised as a defense, inequitable conduct must be proved by clear
and convincing evidence. See Am. Calcar, 768 F.3d at 1188. But
where, as here, inequitable conduct is raised as a basis for an
award of attorney fees under 35 U.S.C. § 285, the court applies
the preponderance of the evidence standard prescribed by Octane
Fitness. See 134 S. Ct. at 1758.
In its opening brief, Autodesk relied upon LaBounty Mfg.,
Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066 (Fed. Cir. 1992).
13 In that case, the Federal Circuit affirmed a determination that
a patentee had committed inequitable conduct by failing to
disclose material prior art. See id. at 1076. Here, Autodesk
acknowledges that EastCoast did disclose the prior art at issue,
but accuses Autodesk of making a “selective disclosure” of that
prior art and misrepresenting it to the PTO during the course of
an interview.
In its supplemental brief, EastCoast relies upon Young v.
Lumenis, Inc., 492 F.3d 1336 (Fed. Cir. 2007). That case stands
for the common-sense proposition that when a patent examiner has
been alerted to a prior art reference and can form his or her
own opinion of it, the applicant’s characterization is not an
“affirmative misrepresentation of material fact” that would
constitute inequitable conduct. Id. at 1348 (quoting Molins v.
Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995)).
Autodesk responds by citing Apotex Inc. v. UCB, Inc., 763
F.3d 1354 (Fed. Cir. 2014), in which the Federal Circuit
affirmed the district court’s decision that the plaintiff’s
patent was unenforceable due to inequitable conduct. But Apotex
involved a much wider range of conduct than that alleged by
Autodesk. In Apotex, the patentee completely withheld certain
relevant prior art. See id. at 1359. It also omitted important
details regarding the prior art from the specification. See id.
14 at 1361. Furthermore, the patentee repeatedly made affirmative
misrepresentations of material facts to the PTO through counsel
and a hired expert, deliberately withheld the truth from that
expert, and represented in the specification that the inventor
had conducted experiments that he had not conducted. See id. at
1361-62.
The alleged misconduct before the PTO on which Autodesk
bases its claim for attorney fees pales in comparison with the
misconduct established in Apotex. Here, Autodesk identifies no
prior art that EastCoast withheld from the PTO. It does not
identify any deficiency in the treatment of the prior art in the
specifications of the patents in suit. It identifies no pattern
of misrepresentation by EastCoast, and it does not claim that
EastCoast manufactured false evidence for submission to the PTO.
Rather, Autodesk’s argument is based upon two factors,
EastCoast’s “characterization” of prior art that it disclosed to
the PTO (prior art that the examiner was free to examine him or
herself), and a single meeting with a patent examiner about
which Autodesk has produced little evidence. In sum, the
conduct by the patentee in Apotex stands out as exceptionally
egregious; EastCoast’s conduct before the PTO does not. Thus,
that conduct provides no basis for an award of attorney fees to
Autodesk under 35 U.S.C. § 285.
15 2. Strength of EastCoast’s Patent Claims
Autodesk next contends that EastCoast is liable for
attorney fees because it was frivolous for EastCoast to accuse
two specific Autodesk products of infringement, and it treated
those products as infringing deep into the litigation process.
In essence, Autodesk argues that EastCoast’s pursuit of weak
patent-infringement claims was an unreasonable and vexatious
litigation tactic. See SFA Systems, 2015 WL 4154110, at *5.
“‘Litigation misconduct generally involves unethical or
unprofessional conduct by a party or his attorneys during the
course of adjudicative proceedings,’ and includes advancing
frivolous arguments during the course of the litigation or
otherwise prolonging litigation in bad faith.” Highmark, Inc.
v. Allcare Health Mgmt. Sys., Inc. (Highmark I), 687 F.3d 1300,
1315-16 (Fed. Cir. 2012), vacated and remanded on other grounds
by 134 S. Ct. 1744 (2014) (Highmark II), (quoting Old Reliable
Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 549 (Fed. Cir.
2011); citing Computer Docking Station Corp. v. Dell, Inc., 519
F.3d 1366, 1379 (Fed. Cir. 2008)). In other words, under the
manner-of-litigation branch of the § 285 analysis, the problem
with weak legal arguments arises when litigation is prolonged
because of them.
16 In SFA Systems, the Federal Circuit described three cases
in which it had affirmed district court findings of litigation
misconduct that justified awards of attorney fees under 35
U.S.C. § 285. See 2015 WL 4154110, at *5-6. In the first of
those cases, the patentee destroyed relevant documents and
produced misleading extrinsic evidence. See id. at *5 (citing
Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1324–25 (Fed.
Cir. 2011)). In another case, the patentee misrepresented both
the law of claim construction and the trial court’s construction
of the claims at issue and also introduced expert testimony that
did not meet even the lowest standards for reliability. See id.
at *6 (citing MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907,
920 (Fed. Cir. 2012)). Finally, in the third case described in
SFA Systems, the court of appeals affirmed a finding of
exceptionality when the patentee filed claims against an accused
infringer’s customers only to drop them after extensive
litigation had taken place, misrepresented the date of key
evidence, and used motion practice to hide false evidence. See
id. (citing Monolithic Power Sys., Inc. v. O2 Micro Int’l, Ltd.,
726 F.3d 1359, 1367 (Fed. Cir. 2013)). With the guidance of SFA
Systems in mind, the court turns to the specifics of this case.
EastCoast has filed a total of four complaints in this
case. In its original complaint, it alleged that the patents in
17 suit were infringed by “products such as the AutoCAD MEP and
Autodesk Fabrication Products.” Compl. (doc. no. 1) ¶ 23. In
its Amended Complaint, EastCoast alleged that the patents in
suit were infringed by
products such as the AutoCAD MEP and Revit MEP product families, including AutoCAD MEP, AutoCAD MEP + Fabrication FABmep, AutoCAD MEP + Fabrication FABmep + Fabrication CADmep, AutoCAD MEP + Fabrication CADmep; Revit MEP, Revit MEP + Fabrication FABmep, Revit MEP + Fabrication FABmep + Fabrication CADmep.
Am. Compl. (doc. no. 15) ¶ 33. The list of accused products in
the Second Amended Complaint is identical to the list in the
Amended Complaint. See Second Am. Compl. (doc. no. 26) ¶ 33.
In its Third Amended Complaint, EastCoast identifies the accused
products this way:
a) AutoCAD MEP in combination with Fabrication FABmep; b) AutoCAD MEP in combination with Fabrication CADmep; c) AutoCAD MEP in combination with Fabrication FABmep and Fabrication CADmep; d) Revit MEP in combination with Fabrication FABmep; e) Revit MEP in combination with Fabrication CADmep; and f) Revit MEP in combination with Fabrication FABmep and Fabrication CADmep.
Third Am. Compl. (doc. no. 119) ¶ 11. The difference between
the Second Amended Complaint and the Third Amended Complaint is
that while the Second Amended Complaint asserted that the
patents in suit were infringed by AutoCAD MEP and Revit MEP
(“the MEP products”) standing alone, the Third Amended Complaint
only identifies the MEP products as infringing when used in
18 combination with other Autodesk products such as Fabrication
FABmep and Fabrication CADmep.
Autodesk argues that EastCoast’s case was exceptionally
weak because the infringement claims against the MEP products
were frivolous from the start, yet remained in the case until
EastCoast finally decided not to include them in its Third
Amended Complaint. Autodesk’s argument misses the mark.
EastCoast’s claims that the MEP products, on their own,
infringed the patents in suit may have been weak, and those
claims did remain in the case for nearly 20 months. But, the
court is obligated to consider the case as a whole. See Octane
Fitness, 134 S. Ct. at 1756; Therasense II, 745 F.3d at 516. In
so doing, the court notes that at least the last three of
EastCoast’s complaints, if not all four, included claims against
combinations of products, not just the MEP products standing
alone. Given the complexity and the relative novelty of the
issues the court had to address in granting summary judgment to
Autodesk on EastCoast’s claims against its combinations of
products, those claims were not frivolous. Moreover, while it
is true that EastCoast’s claims against the MEP products
standing alone remained in the case until EastCoast filed its
Third Amended Complaint, it cannot be said that EastCoast’s
pursuit of those claims prolonged this case, given that
19 EastCoast jettisoned its claims against the MEP products before
its claims against the combination products were adjudicated.
This is not a case such as Cartner v. Alamo Group, Inc., 561
Fed. App’x 958, 969-70 (Fed. Cir. 2014), in which a plaintiff in
a patent-infringement suit continued to pursue claims after they
were rendered frivolous by the court’s claim-construction order.
Under the totality of the circumstances of this case, the
appropriate question is not how long EastCoast’s claims against
the MEP products remained in the case but, rather, whether the
litigation as a whole was prolonged by EastCoast’s pursuit of
those claims. Because EastCoast dropped its claims against the
individual MEP products before Autodesk received summary
judgment on EastCoast’s claims against the product combinations,
EastCoast’s pursuit of claims against the individual MEP
products does not qualify as litigation misconduct for the
purposes of 35 U.S.C. § 285.
3. Strength of EastCoast’s Non-Patent Claims
Autodesk contends that EastCoast is liable for attorney
fees because it pursued several frivolous non-patent state-law
claims until it decided not to include them in its Third Amended
Complaint. Like the argument discussed in the previous section,
this argument is also best understood as falling under the
20 manner-of-litigation rubric. The court begins by noting that
two of the supposedly frivolous state-law claims survived a
motion to dismiss. See Order (doc. no. 25) 1. In any event,
for the same reasons that apply to the patent claims discussed
in the previous section, the court concludes that EastCoast’s
pursuit of its non-patent state-law claims against Autodesk does
not qualify as litigation misconduct for the purposes of 35
U.S.C. § 285.
4. Discovery
Autodesk’s final litigation-misconduct argument concerns
the manner in which EastCoast conducted discovery. Autodesk
argues that this case is exceptional because: (1) EastCoast’s
original “complaint failed to identify any particular ‘products
or processes (by model number, trade name, or other specific
identifying characteristic),’ as required by SPR 2.1,” Def.’s
Br. (doc. no. 197-1) 12; (2) EastCoast’s infringement
contentions included illegible screenshots (from an Autodesk
website) and substantively addressed only one of the three
patents in suit; (3) EastCoast’s final infringement contentions
were identical to its preliminary infringement contentions; (4)
EastCoast produced an expert opinion propounding a theory of
infringement that was different from the one advanced in the
21 final infringement contentions; and (5) EastCoast initially
denied the existence of, then belatedly produced, a videotape on
which its expert based his opinion. While Autodesk decries
those purported discovery abuses, it makes no real effort to
demonstrate how they cause EastCoast’s litigation of this case
to stand out from other patent litigation. EastCoast, in turn,
offers substantive responses to each of Autodesk’s arguments.
Based upon its experience of “liv[ing] with [this] case
over a prolonged period of time,” SFA Systems, 2015 WL 4154110,
at *6 (quoting Highmark II, 134 S. Ct. at 1748), the court
concludes that the discovery misconduct alleged by Autodesk is
insufficient to render this case exceptional. Because
EastCoast’s approach to discovery does not cause this case to
stand out, it provides no basis for an award of attorney fees
under 35 U.S.C. § 285.
5. Totality of the Circumstances
Having focused on the individual components of Autodesk’s
manner-of-litigation argument, the court concludes its
discussion of this branch of the exceptionality analysis by
stepping back to consider the totality of the circumstances.
This case involved viable though ultimately unsuccessful patent-
infringement claims against Autodesk’s combinations of products,
22 some overly inclusive pleadings that accused Autodesk’s MEP
products, and several state-law claims that were dropped late in
the litigation. Those factors weigh, at least mildly, in favor
of Autodesk’s request for fees. There are, however, some
strongly countervailing factors. Two of EastCoast’s state-law
claims survived a motion to dismiss. EastCoast’s position
prevailed at claim construction. EastCoast prevailed on several
of Autodesk’s motions for summary judgment before Autodesk
ultimately prevailed on one. Finally, EastCoast dropped its
infringement claims against Autodesk’s stand-alone products
before Autodesk prevailed at summary judgment, rather than
afterward, which means that EastCoast did not prolong this
litigation by pursuing those claims. Moreover, this is not a
case involving a plaintiff advancing baseless claims against
multiple defendants in an attempt to extract nuisance-value
settlements; there is no patent troll here.
In all, Autodesk has demonstrated that this is a relatively
typical patent case, not a case that stands out from the crowd
in terms of the manner in which a patentee has either procured
its patent or litigated its infringement claims. Based upon the
totality of the circumstances, this case falls well short of
having been litigated by EastCoast in a manner that merits an
award of attorney fees under 35 U.S.C. § 285.
23 B. Substantive Strength of EastCoast’s Litigating Position
A case may be exceptional for the purposes of 35 U.S.C. §
285 if it stands out from others because of the weakness of a
party’s litigating position. See Octane Fitness, 134 S. Ct. at
1756. Under this rubric, Autodesk claims that EastCoast’s
position on damages was exceptionally weak because its claim for
lost profits was objectively baseless and unreasonable and
because its claim for a reasonable royalty was unreasonable and
legally unsound. Autodesk cites authority to support its
arguments concerning the reasonableness of EastCoast’s claims
for damages. However, it cites no authority for the proposition
that a claim for excessive damages is a weak litigating position
that would support a claim for attorney fees under 35 U.S.C. §
285, and the court’s own search has revealed no such authority.
Accordingly, the court can see no merit in Autodesk’s argument
on damages. Moreover, attempting to recover more than a case
may ultimately be worth is a common litigation tactic, not
something that makes a case stand out. The bottom line is this:
EastCoast’s claims for damages provide no basis for an award of
attorney fees under 35 U.S.C. § 285.
24 III. Conclusion
For the reasons detailed above, Autodesk’s motion for
attorney’s fees, document no. 197, is denied.
SO ORDERED.
__________________________ Landya McCafferty United States District Judge
July 30, 2015
cc: Thomas Tracy Aquilla, Esq. Kenneth C. Bartholomew, Esq. Robert F. Callahan, Jr., Esq. Joel M. Freed, Esq. Kyle L. Harvey, Esq. Damian R. Laplaca, Esq. Michael S. Lewis, Esq. Richard C. Nelson, Esq. Alexander P. Ott, Esq. Steven R. Pedersen, Esq. Donald J. Perreault, Esq. Artem N. Sokolov, Esq. Rolf O. Stadheim, Esq. George C. Summerfield, Esq.