United States District Court, D. Arizona
Honorable Steven P. Logan United States District Judge
the Court is Defendant Rich Godfrey & Associates,
Inc.'s Motion for Award of Attorneys' Fees and
Related Non-Taxable Costs (the “Motion”) (Doc.
97) The Motion is fully briefed, and the Plaintiff requested
oral argument. For the reasons that follow, the Motion will
March 12, 2015, the Plaintiff filed this lawsuit against
several parties, including the Defendant, claiming patent
infringement, breach of contract and fraud, among other
causes of action. (Doc. 52) Multiple defendants moved for
partial summary judgment on their counterclaim of invalidity,
and the Court granted the motion on September 29, 2017. (Doc.
91) The Court's order granting partial summary judgement
dismissed the Plaintiff's complaint in its entirety and
terminated the case. The Defendant timely filed this Motion
for attorneys' fees on October 27, 2017.
Standard of Review
Rule of Civil Procedure 54(d) provides “[u]nless a
federal statute, these rules, or a court order provides
otherwise, costs-other than attorney's fees-should be
allowed to the prevailing party.” Fed.R.Civ.P. 54. The
Defendant brings the Motion for an award of attorneys'
fees pursuant to 35 U.S.C. § 285, under which a court
may award reasonable attorneys' fees to a prevailing
party in “exceptional cases.” 35 U.S.C. §
285 An “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). 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. Merely losing on
a motion for summary judgment is not a basis for an
exceptional case finding, and the movant seeking
attorneys' fees in patent litigation must prove its
entitlement to fees by a preponderance of evidence.
Cambrian Sci. Corp. v. Cox Commcn's, Inc., 79
F.Supp.3d 1111, 1114-1115 (C.D. Cal. 2015) (quoting
Octane Fitness in stating that if so, every party
prevailing on summary judgment would be entitled to
attorneys' fees-a result inconsistent with the Supreme
Court's holding that an exceptional case “stands
out from others.”)
to 35 U.S.C. § 285, the Defendant requests an award of
$91, 812.00 for attorneys' fees and non-taxable expenses
(not including the fees incurred in preparing the Motion,
which have also been requested in an undetermined amount).
(Doc. 97 at 15) The Plaintiff does not contest that the
Defendant is a prevailing party as required by 35 U.S.C.
§ 285. In fact, the Defendant's partial motion for
summary judgment was granted, and the Plaintiff's
complaint was dismissed in its entirety. (Doc. 91) Therefore,
the Court finds that the Defendant was the prevailing party
for the purpose of considering an award of attorneys'
fees, and the Court will focus its analysis on whether the
Defendant has proven that this case is so exceptional as to
warrant an award of attorneys' fees.
first prong of the Octane Fitness test requires the
Court to review whether this case “stands out”
from other cases due to the substantive strength of the
Plaintiff's litigating position, considering both the
governing law and the facts of the case. Octane
Fitness, 134 S.Ct. at 1756. To this point, the Defendant
argues that the Plaintiff's litigating position was
meritless due to evidence exchanged between the parties
during discovery, which the Defendant argues fully
demonstrated the invalidity of the Plaintiff's patent.
(Doc. 97 at 9) The Plaintiff argues that this case is not
exceptional within the meaning of 35 U.S.C. § 285. (Doc.
112 at 7)
Court finds that the strength of the Plaintiff's
litigating position was not so weak as to classify this case
as exceptional by the Octane Fitness standard. While
the Plaintiff argued the validity of its patent in a losing
effort, this Court does not find that its conduct or position
in bringing the claims at issue were meritless or have risen
to the level of misconduct. It is undisputed that the 2006
DB-30 minibike was based off of the Plaintiff's design.
(Doc. 91 at 7) However, the Plaintiff was free to disagree
with the information exchanged between the parties during
discovery and the Defendant's interpretation of the
validity of the patent. Furthermore, it is the
Plaintiff's position that another court had already
identified some merit to the Plaintiff's argument that
the asymmetrical components of the ‘203 design
distinguished it from the 2006 DB-30 minibike design. (Doc.
112 at 9) In weighing whether the ‘203 Patent was
anticipated by the 2006 DB-30 minibike design, the Court
necessarily reviewed each party's depictions of the
minibikes to compare and contrast their features. (Doc. 91 at
6-11) The Court's finding that the bikes were
“nearly identical” was not a foregone conclusion,
and the Plaintiff's arguments for the stylistic
differences between the minibikes were not baseless. (Doc. 91
at 11) Accordingly, the Court finds the Plaintiff's
litigating position was not meritless, although not strong
enough to survive a motion for summary judgment.
second prong of the Octane Fitness test requires the
Court to consider whether the case was litigated in an
unreasonable manner. Octane Fitness, 134 S.Ct. at
1756. On this point, the Defendant argues that the
Plaintiff's decision to file this case, the
Plaintiff's opinion of the scope of its ‘203
patent, and the aggressiveness with which the Plaintiff
litigated its case rises to the level of unreasonable
litigation conduct. (Doc. 97 at 11) The Court disagrees. The
Plaintiff's opposition to the need for a Markman
hearing did not rise to the level of unreasonableness.
Furthermore, there is no evidence before the Court that the
Plaintiff's litigation tactics were predatory or that the
Plaintiff engaged in conduct worthy of sanctions. Again, the
Plaintiff was free to disagree with the Defendant's
position on the validity of the patent and with the
Defendant's theory of the case. Therefore, the Court
finds that the Defendant has not proven by a preponderance of
the evidence that the Plaintiff litigated its case in an
foregoing reasons, the Court concludes that the Defendant
failed to establish that this case is one of those
“rare case[s]” that should be deemed
“exceptional.” Octane Fitness, 134 S.Ct.
at 1757. This Court finds that the “substantive
strength” of the Plaintiff's litigating position
and its litigation conduct did not rise to a level that
causes this case to “stand out” when considered
in light of the totality of the circumstances. The Court will
exercise its considerable discretion not to award
attorneys' fees to the Defendant under 35 U.S.C. §
IT IS ORDERED that the ...