Refac's conduct toward specific defendants cannot go unmentioned. With respect to defendant Diebold, Inc. Refac unnecessarily contacted and harassed many of Diebold's customers some of whom were not even parties to this suit. Refac, rather than stop these practices voluntarily, had to be enjoined by Court Order.
In a last ditch attempt to demonstrate its good faith, Refac on this motion for attorneys fees, now seeks to prosecute an "alternate position" that the patent is valid as describing a without replacement theory. This however, is contrary to the position taken by Refac throughout this litigation and will not be entertained by this Court at this time. There was more than ample opportunities for Refac to raise this claim before and during the summary judgment proceedings as well as on reargument. Refac submitted not less than five lengthy briefs and an equal number of detailed certifications on those motions. Moreover, Refac has argued time and time again that the defendants utilize a with replacement system. Based upon the record in this case, it would be incongruous for this Court to even consider plaintiff's 180 degree shift in position. However, even assuming the patent is valid under a without replacement theory this assumption dramatically supports the assessment of counsel fees in this case. These defendants have not infringed that system and should not have had to defend this suit.
In a supplemental submission to the Court dated March 31, 1989, plaintiff makes an informal motion to strike all references to other cases in which Refac is a party. This Court agrees with plaintiff that references to other Refac matters are not relevant to the instant motion. Defendants have cited to the Court many other Refac matters pending in this court as well as other federal courts. While defendants may feel that the quantity of suits is somehow indicative of less than good faith motives, this Court disagrees. Each case must be judged on its own merits. The fact that one Refac case may have been frivolous does not mean that other Refac cases are not valid. Therefore, this Court has not, and will not rely on references to any other Refac matter in determining whether this case is exceptional.
Lastly, plaintiff claims that resolution of this matter requires a testimonial hearing. I am satisfied that no such hearing is necessary. Courts have decided motions for fees without a hearing. See Nordek Corp. v. Garbe Iron Works, Inc., 221 U.S.P.Q. (BNA) 632, 635 (N.D. Ill. 1983). The record before me is substantial. The parties have submitted numerous briefs, certifications, affidavits and letters at every minute stage of the proceeding, including unsolicited (and in many instances, unwarranted) submissions. Extensive oral arguments have occurred. The standard for a fee award is an objective one; all that is required is to show that Refac knew, or should have known, that the case was frivolous. The record resoundingly reflects that Refac knew, or should have known that this action was frivolous. As such, I will award fees to the defendants.
For the reasons outlined in this Opinion, it is hereby
ORDERED that plaintiff's motion to strike references to other Refac suits is GRANTED; and it is further
ORDERED that defendants IBM, Diebold, Manufacturers Hanover Trust, Unysis, NCR and Olivetti's motion for attorneys fees is GRANTED. Defendants are hereby directed to file and serve appropriate affidavits of services rendered in connection with this matter within 30 days of this Opinion and Order for this Court to determine what fees shall be awarded.
Dated: April 12, 1989.