Thursday, January 13, 2011

A win alone in a patent case doesn't get you fees. And don't try to rely on your settlement negotiations as evidence of litigation misconduct.

I've written previously about the Stone Strong case. Stone Strong was awarded an injunction precluding Del Zotto from infringing Stone's patent. Post trial, Stone moved for fees, arguing the case was "exceptional" because: (1) Del Zotto's infringement was willful; (2) Del Zotto's litigation tactics were vexatious and unnecessary; and (3) the question of infringement was not a close one. Del Zotto opposed.

The Court wasn't convinced by Stone. There was no willfulness finding and Del Zotto's defense was not unreasonable:
To find "exceptional" circumstances in this case would be tantamount to a finding that every patent infringement action, without more, is exceptional merely because it proceeds to trial.
The Court also granted Del Zotto's motion in limine to exclude any consideration of the parties' settlement negotiations in considering Stone's attorney fee request. Stone sought to offer theses negotiations as evidence of Del Zotto's inappropriate litigation conduct. The Court wouldn't have it:
Federal Rule of Evidence 408 prohibits the admission of [settlement negotiations] when it is "offered to prove liability for ... a claim that was disputed as to validity or amount ..." There appears to be no decision of the Federal Circuit dealing with the application of Rule 408 in disposing of post trial claims for attorney's fees under 35 U.S.C. § 285, but such a claim is well within the plain and clear language of the rule....The court will not consider the settlement correspondence attached to the Plaintiff's motion.
Motion for fees denied.

Stone Strong, LLC v. Del Zotto Products of Florida, Inc., Case No. 5:08-CV-503, slip op. (M.D. Fla. Jan. 5, 2011)(J. Hodges)

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