Sherman Treaters Ltd. v. Ahlbrandt

115 F.R.D. 519, 1987 U.S. Dist. LEXIS 4650
CourtDistrict Court, District of Columbia
DecidedMarch 30, 1987
DocketCiv. A. No. 84-3319
StatusPublished
Cited by4 cases

This text of 115 F.R.D. 519 (Sherman Treaters Ltd. v. Ahlbrandt) is published on Counsel Stack Legal Research, covering District Court, District of Columbia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sherman Treaters Ltd. v. Ahlbrandt, 115 F.R.D. 519, 1987 U.S. Dist. LEXIS 4650 (D.D.C. 1987).

Opinion

OPINION

JUNE L. GREEN, District Judge.

This matter is before the Court on defendant’s renewed motion for attorneys’ fees and expenses (“Motion for Attorneys’ Fees), plaintiff’s opposition thereto, defendant’s reply brief, and the entire record herein. For the reasons given below, the Court grants defendant’s motion and awards it $30,253.26 in attorneys’ fees and expenses.

I. Background

On October 30, 1984, plaintiff filed the instant action seeking declaratory relief for noninfringement, invalidity, and false marking of defendant’s patent, and dam[521]*521ages for fraud on the United States Patent and Trademark Office and unfair competition. Plaintiff is a British corporation that manufactures ceramic and quartz tube corona discharge treaters for sale and distribution in the United States. Amended Complaint Ü111, 5. Defendant is a citizen of the Federal Republic of Germany and patentee of United States Patent No. 4,446,110. The patent protects specific characteristics of ceramic and quartz tube corona discharge treaters manufactured by Ahlbrandt-System G.m.b.H., of which defendant is president. Answer HU 2, 6.

In December 1983, defendant Ahlbrandt granted an exclusive license to use and sell the patented invention in the United States to Enercon Industries Corporation (“Enercon”) of Wisconsin. Amendment to Marketing Agreement 11 2 (filed Feb. 14, 1985). The agreement specifically granted to Enercon the first right to enforce the patent against third party infringers at Enercon’s expense. If Enercon failed to act, the right to enforce the patent fell to Ahlbrandt-System. Id. at 2 11 (a).

During the course of this litigation, plaintiff moved for partial summary judgment as to noninfringement, invalidity, and false marking of defendant’s patent. Plaintiff alleged that officials from Enercon had “threaten[ed] customers and potential customers with infringement actions in order to secure a better position for Defendant’s machines in the market place.” Plaintiff’s Memorandum of Law in Opposition to Defendant’s Motion for Summary Judgment (“Opposition of Plaintiff”) at 3. Additionally, plaintiff claimed that Enercon placed several advertisements in a trade magazine in which the company falsely stated that it owned the patent in question and falsely described the scope of the patent. Plaintiff claimed that as a result of those ads, companies were discouraged from purchasing corona discharge treater systems from anyone but defendant. Id. at 5-6. Plaintiff further alleged that Enercon acted on behalf of defendant as an agent or representative. Amended Complaint 1111 8, 36-37.

Defendant Ahlbrandt filed a cross-motion for summary judgment in which he argued that this Court had no jurisdiction since no actual controversy existed between plaintiff and defendant. Defendant stated that the real controversy was with Enercon, which had acted on its own behalf as exclusive licensee of the patent.

This Court agreed with defendant and dismissed the case for lack of jurisdiction since no justiciable controversy existed between the parties to this action. Sherman Treaters Ltd. v. Ahlbrandt, 607 F.Supp. 939 (D.D.C.1985). Plaintiff then filed an appeal with the Court of Appeals for the Federal Circuit. The Court of Appeals affirmed this Court’s dismissal in an unpublished opinion issued on October 25, 1985. Sherman Treaters Ltd. v. Ahlbrandt, 785 F.2d 322 (Fed.Cir.1985) (filed as Appendix A, Motion for Attorneys’ Fees). The Court of Appeals denied the plaintiff’s petition for rehearing on November 22, 1985. Plaintiff then petitioned the U.S. States Supreme Court for a writ of certiorari. The Supreme Court denied that petition on April 21, 1986.

With plaintiff’s exhaustion of all possible avenues of recourse, defendant has now renewed its previously filed motion for attorneys’ fees and expenses and seeks recovery in the amount of $89,200.51. The motion t is based on Rules 7 and 11 of the Federal Rules of Civil Procedure, 28 U.S.C. § 1927, and 35 U.S.C. § 285. Defendant avers that “Sherman Treaters Ltd. filed [cjomplaints, motions and discovery papers, all signed by its attorneys, without making any inquiry to determine if its allegations had any foundation in fact. Each filing was a per se violation of Rule 11 Fed.R. Civ.P. which requires some inquiry.” Motion for Attorneys’ Fees at 8. Defendant further states that “Sherman Treaters Ltd.’s frivolous appeal and petitions for rehearing and certiorari, with consequent expenses and delay, dispel any supposition of good faith.” Id. Accordingly, he requests that his motion be granted and that all expenses, including attorneys’ fees, “that he incurred in this Court, the Court of Appeals and the Supreme Court because [522]*522of Sherman Treaters Ltd.’s filing of the [c]omplaints, motions and other papers be assessed against the plaintiff.” Id. at 8-9.

II. Discussion

“The federal courts of the United States early adopted what has become known as the “American Rule” in the handling of attorney fee requests.” Rohm & Haas Co. v. Crystal Chemical Co., 736 F.2d 688, 690 (Fed.Cir.), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). “Absent congressional authorization to the contrary, the American Rule compels each side to bear its own litigation costs unless one party has ‘acted in bad faith, vexatiously, wantonly, or for oppressive purposes.’ ” Gianna Enterprises v. Miss World (Jersey) Ltd., 551 F.Supp. 1348, 1359 (S.D.N.Y.1982) (citing Alyeska Pipeline Service Co. v. Wilderness Society, 421 U.S. 240, 258-59, 95 S.Ct. 1612, 1622, 44 L.Ed.2d 141 (1975)). “The policy behind the Rule is fundamental — to avoid penalizing a party ‘for merely defending or prosecuting a lawsuit.’ ” Rohm & Haas Co., 736 F.2d at 690 (quoting Fleischmann Distilling Corp. v. Maier Brewing Co., 386 U.S. 714, 718, 87 S.Ct. 1404, 1407, 18 L.Ed.2d 475 (1967)).

A. Rule 11

Rule ll,1 the provision on which defendant relies in his efforts to recover his attorneys’ fees, provides a more expansive standard for the imposition of attorneys’ fees. See Abraham v. United States, 582 F.Supp. 257 (S.D.N.Y.), aff'd, 740 F.2d 2 (2d Cir.1984). This rule was amended effective August 1, 1983. The amended version of Rule 11 provides, in pertinent part, that

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Bluebook (online)
115 F.R.D. 519, 1987 U.S. Dist. LEXIS 4650, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sherman-treaters-ltd-v-ahlbrandt-dcd-1987.