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Case Found "Exceptional" After Summary Judgment of Noninfringement; Fees & Costs Awarded From Markman Ruling Forward

By Michael C. Smith

Sorkin v. Universal Building Products, 1:08cv133 (E.D. Tex., Jan. 25, 2010)
Judge: Ron Clark

Holding: Motion for Enhanced Damages/Attorneys' Fees GRANTED

Defendant received a summary judgment of noninfringement following Judge Clark's Markman ruling, and now sought to have the case declared "exceptional" under 35 USC section 285 and fees of $300,738.94 for its defense of the action awarded, plus costs.  Judge Clark granted the motion, finding that following the Markman ruling the plaintiff's literal infringement claims (no doctrine of equivalents claims were asserted) were objectively baseless and pursued in subjective bad faith.  He therefore awarded fees and expenses, but only from that point forward ($63,533.50 in fees and $4,103.79 in costs).

Of interest to those with a thing for procedural issues is the Court's explanation of the difference between exceptional status and a Rule 11 basis for a fee award, as well as its discussion of what costs were and were not recoverable, with some being under 28 USC 1920, and some under 35 USC 285 (an important additional source for costs that are not recoverable under 1920).  Kudos to the defendant for a particularly well-documented submission on copy costs, by the way - anybody can win a patent case but rarely can a law firm adequately support a request for copy costs.  Judge Clark wrote that "[defendant] submitted a detailed list to the court of the costs of individual copies, what documents each charge corresponds to, and the appropriate invoices. All relate to documents copied and produced to [plaintiff], courtesy copies provided to the court, and color photographs used in [defendant's] claim construction and summary judgment filings."  The court awarded costs under Section 285 for photocopies, postage, Westlaw research, and PACER research. "The court finds that these costs, all of which are for research and office expenses, are reasonably included in 'those sums that the prevailing party incurs in the preparation for and performance of legal services related to the suit.'"

Full post as published by Eastern District of Texas Federal Court Practice on February 11, 2010 (boomark / email).