United States District Court, D. New Jersey
IOTTIE INC. and HSM CO., LTD., Plaintiffs,
MERKURY INNOVATIONS, Defendant.
MCNULTY, UNITED STATES DISTRICT JUDGE
awarded summary judgment to defendant Merkury Innovations in
this patent infringement case. Now before the court is
Merkury's motion for an award of attorney's fees
pursuant to 35 U.S.C. § 285. (ECF No. 94). For the
reasons expressed herein, I do not find the case to be
exceptional, and die motion is therefore denied.
relevant statute, 35 U.S.C. § 285, permits an award of
attorney's fees to the prevailing party in a patent case
that is "exceptional." An exceptional case is 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). The issue
calls for an exercise of the court's discretion, based on
the totality of the circumstances of the individual case.
Factors to be considered include "frivolousness,
motivation, objective unreasonableness ... and the need in
particular circumstances to advance considerations of
compensation and deterrence." Id. at 1756 n.6.
write solely for the parties, familiarity with the history of
the matter is assumed.
case was filed in September 2015. (ECF No. 1). On December
22, 2015, iOttie moved for entry of default, which was
granted. (ECF No. 9). Merkury moved to vacate the clerk's
entry of default. (ECF No. 11). That motion was granted on
February 23, 2016. (ECF No. 12).
filed for summary judgment on June 23, 2017. (ECF No. 65).
Merkury and iOttie submitted an amended joint claim
construction and prehearing statement on November 7, 2017.
(ECF No. 87). On December 29, 2017, I issued an opinion and
order granting Merkury's motion for summary judgment.
(ECF Nos. 92, 93). On January 26, 2018, Merkury filed the
motion for attorney's fees that is now before the Courty.
(ECF No. 94).
argues that iOttie's claim-construction arguments were
frivolous and unreasonable, and also that iOttie's
litigation conduct led to unnecessary costs. Merkury seeks an
award of attorney's fees on these grounds.
the totality of the circumstances, iOttie's proposed
claim-construction arguments were not so unreasonable as to
necessitate an award of attorney's fees. At the summary
judgment stage, iOttie proposed that the term "for
fixing or moving" should be construed as:
[A] knob and hole (or structure which is an insubstantial
change from a knob and hole) which provides for
fixing a bracket in place if force applied is not
sufficient to overcome friction sufficient to overcome
friction force holding the bracket, and which also enables
moving a bracket if the force applied is sufficient
to overcome friction force holding the bracket.
iOttie Inc. v. Merkury Innovations, No. 15-cv-6597,
2017 WL 6643834, at *8 (D.N.J. Dec. 29, 2017). I found that
this proposed construction did not arise from the
"ordinary and customary meaning" of the phrase
"for fixing or moving." Id. at *9. I thus
adopted Merkury's proposed construction-i.e., "for
fastening into place or allowing to be moved."
Id. This proposed construction was not so frivolous
or objectively unreasonable to compel the imposition of
attorney's fees. And even when I adopted Merkury's
proposed claim construction, iOttie raised genuine, colorable
issues on two of the three prongs of the function-way-result
test. Id. at *11-13. This suggests that iOttie's
position was no so unreasonable to be deemed frivolous.
no evidence of untoward motive, apart from iOttie's
general motivation to obtain an award of damages. Nor is
there a showing of bad faith or intent to harass. Declining
to impose attorney's fees here would not likely embolden
others or embolden iOttie to continue this litigation. ...