United States District Court, W.D. Virginia, Charlottesville Division
NORMAN K. MOON, District Judge.
This matter is before the Court on Defendants' Motion for Attorney's Fees ("Motion for Fees") (docket no. 63). Because Defendants are not prevailing parties within the meaning of the term in 35 U.S.C. § 285, I will deny Defendants' Motion.
Charles Robinson ("Plaintiff") filed his Complaint in this patent infringement case on May 22, 2012. Plaintiff alleged infringement of his patent, U.S. Patent D448, 541 ("'541 Patent"), a design patent Plaintiff received in 2001 for a bra with pockets. Plaintiff became aware of Defendants' product, the JoeyBra, shortly after Mr. Bartlow and Ms. Gentry entered their concept into a business plan competition held in the State of Washington in April 2012. Plaintiff contended that the JoeyBra features a pocketed design that infringes his patent, and he moved for a preliminary injunction to halt Defendants' website sales and other promotional activities while this litigation was pending.
In the course of the litigation, Plaintiff filed a Motion for Preliminary Injunction (docket no. 7) and Defendants filed a Motion to Dismiss for Lack of Jurisdiction or Change Venue ("Motion to Dismiss") (docket no. 17). I heard arguments on these motions on July 10, 2012 and September 5, 2012. Ultimately, I denied Defendants' Motion to Dismiss as to JoeyBra LLC, granted Defendants' Motion to Dismiss for lack of jurisdiction as to the individual defendants, Kyle Bartlow, Mariah Gentry, and Does 1-5, and denied Plaintiff's Motion for Preliminary Injunction.
In denying Plaintiff's Motion for Preliminary Injunction, I found both that Plaintiff was not reasonably likely to succeed on the merits of his claim and that Plaintiff had not demonstrated that he faced a risk of irreparable harm. Although Plaintiff argued that the differences between the two bra designs were insignificant, I found the designs appeared substantially different, based on visual inspection of the designs and by applying the ordinary observer test. See Mar. 22, 2013 Mem. Op. at 8 (docket no. 49). Furthermore, because Plaintiff did not have a product on the market twelve years after receiving this patent, I held that he failed to demonstrate that he would suffer loss of profits, market share, or customer goodwill. Those factors led to my conclusion that Defendant did not show he was at risk of suffering irreparable harm. Mar. 22, 2013 Mem. Op. at 10 (docket no. 49).
Plaintiff then filed a Motion for Reconsideration of Denial of Motion for Injunction ("Motion for Reconsideration"), and I held a hearing on this motion on May 6, 2013. I denied the Motion for Reconsideration on May 8, 2013. After the May 8, 2013 order, neither party took further action. This case was dismissed without prejudice for Plaintiff's failure to prosecute on March 27, 2014. See Order Dismissing Case (docket no. 62). On April 10, 2014, Defendants filed the Motion for Fees, which has been fully briefed.
II. LEGAL STANDARD
Under 35 U.S.C. § 285, "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." In evaluating a motion for attorney's fees under § 285, a court must first determine whether the movant is a "prevailing party." See Inland Steel Co. v. LTV Steel Co., 364 F.3d 1318, 1319-20 (Fed. Cir. 2004) ("The question in this case is whether USX is a prevailing party' and thus potentially eligible for the award of attorney fees and costs."). To be a "prevailing party, " a party must have obtained "a court order carrying sufficient judicial imprimatur' to materially change the legal relationship of the parties." Samsung Elecs. Co., Ltd. v. Rambus, Inc., 440 F.Supp.2d 495, 502 (E.D. Va. 2006) (quoting Rice Servs. Ltd. v. United States, 405 F.3d 1017, 1026 (Fed. Cir. 2005)).
Once a court has determined that a party is a prevailing party, it must decide whether the case from which the motion arises is an "exceptional case." See Inland Steel, 364 F.3d at 1321. The prevailing party must prove that the case is exceptional by a preponderance of the evidence. Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749, 1756 (2014). An "exceptional case" is one that "stands out from others with respect to the substantive strength of a party's litigating position... or the unreasonable manner in which the case was litigated." Id. at 1756. Courts make their determinations of exceptionality on a case-by-case basis and consider the totality of the circumstances in making those determinations. Id.
If prevailing party status and exceptionality are established, a court has discretion to award reasonable attorney's fees. Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 1378 (Fed. Cir. 2001); Synthon IP, Inc. v. Pfizer, Inc., 484 F.Supp.2d 437, 441 (E.D. Va. 2007). A court's discretion to award attorney's fees under § 285 is fairly broad and may include consideration of both tangible and intangible factors. Superior Fireplace, 270 F.3d at 1378; see also Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S.Ct. 1744, 1749 (2014).
Defendants request an award of attorney's fees under 35 U.S.C. § 285. In this case, both qualifications under § 285 are at issue: namely, (1) whether Defendants are a "prevailing party" for the purposes of § 285, and (2) whether this is an "exceptional case" under § 285.
Numerous statutes have included fee-shifting provisions for prevailing parties. Because "prevailing party" is not defined in many of those statutes, courts have applied the ordinary meaning of the term and have interpreted it "without distinctions based on the particular statutory context in which it appears." Smyth ex rel. Smyth v. Rivero, 282 F.3d 268, 274 (4th Cir. 2002). To be a "prevailing party, " a party must have obtained "a court order carrying sufficient judicial imprimatur' to materially change the legal relationship of the parties." Samsung Elecs. Co., Ltd. v. Rambus, Inc., 440 F.Supp.2d 495, 502 (E.D. Va. 2006) (quoting Rice Servs. Ltd. v. United States, 405 F.3d 1017, 1026 (Fed. Cir. 2005)). Examples of court orders carrying "sufficient judicial imprimatur" include "enforceable judgment[s] on the merits, " "court-ordered consent decree[s] that materially alter the legal relationship between the parties, " and "equivalent[s] ...