United States District Court, E.D. Michigan, Southern Division
ORDER ACCEPTING REPORT AND RECOMMENDATION
PAGE HOOD United States District Judge
matter comes before the Court on Magistrate Judge David R.
Grand's Report and Recommendation (Doc. #108) regarding
Defendant's Motion for Award of Attorneys' Fees.
(Doc. #86). Defendant filed objections in response to
Magistrate Judge Grand's Report, and Plaintiff SFP filed
a brief in opposition to Defendant's objections to the
Report. Even though neither the Report and Recommendation nor
the Local Rules provide for such a filing, Defendant filed a
reply to Plaintiffs response, which the Court has reviewed
brought this action alleging that Defendant infringed
Plaintiffs patent, U.S. Patent No. 8, 480, 824 (the "824
Patent"), by using Plaintiffs patented steel treatment
technology after Defendant's license granting the right
to use that process expired. The case was assigned to U.S.
District Judge Gerald E. Rosen. On October 31, 2016, Judge
Rosen entered an Opinion and Order granting Defendant's
motion for summary judgment on Plaintiffs patent infringement
claim (the "Opinion"). (Doc. #83). In the Opinion,
Judge Rosen found that Defendant's "Star
Process" did not infringe on the 824 patent because, in
the Star Process, steel is heated for 5.6 seconds, not
"rapidly heat[ed], within 5 seconds, " as set forth
in the relevant claims of the 824 Patent. (Id. at
6-18). Judge Rosen also held that Plaintiffs infringement
claim under the "doctrine of equivalents" failed
because it was barred by the principle of prosecution history
estoppel. (Id. at 18-26).
then filed a Motion for Award of Attorneys' Fees as the
prevailing party under 35 U.S.C. § 285. (Doc. #86).
Defendant claims that Plaintiffs patent infringement claims
"were incredibly weak and contradicted by the
prosecution history, the specification of the 824 patent, and
Plaintiffs discovery responses." Id. Defendant
asserts that the bases for Plaintiffs infringement claims
were "objectively unreasonable, " making this case
"exceptional" within the meaning of Section 285,
such that an award of more than $587, 000 in attorneys'
fees and expenses is justified. On February 1, 2017, because
of Judge Rosen's retirement, this case was randomly
reassigned to the undersigned.
285 provides that a court "in exceptional cases may
award reasonable attorney fees to the prevailing party."
35 U.S.C. § 285. Recently, the Supreme Court set forth
the standard for determining whether a case is
"exceptional" under §285:
... an "exceptional" case is simply 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. District Courts may
determine whether a case is "exceptional" in the
case-by-case exercise of their discretion, considering the
totality of the circumstances.
Octane Fitness, LLC v. ICON Health & Fitness,
Inc., 134 S.Ct. 1749, 1756 (2014). In Octane
Fitness, despite articulating a less rigid standard than
previously had existed, the Supreme Court emphasized that a
fee award under § 285 should still be the exception, not
the rule. Id. at 1757. Factors to be considered in
determining whether a case is "exceptional"
include, but are not limited to, "frivolousness,
motivation, objective unreasonableness (both in the factual
and legal components of the case) and the need in particular
circumstances to advance considerations of compensation and
deterrence." Id. at 1756, n. 6 (internal
Motion for Award of Attorneys' Fees, Defendant primarily
argues that attorneys' fees are appropriate in this case
under the "objective unreasonableness" prong of the
"exceptional circumstances" analysis.
Magistrate Judge Grand's Report and
Judge Grand recommended that the Court deny Defendant's
Motion for Award of Attorneys' Fees under Section 285.
Magistrate Judge Grand concluded that Defendant failed to
show that Plaintiff: (1) initiated the lawsuit without an
adequate pre-filing investigation or for vexatious purposes,
or (2) engaged in litigation misconduct. (Doc. #108 at 6).
Magistrate Judge Grand stated that the Opinion does not
reflect that Judge Rosen believed Plaintiffs arguments were
frivolous, exceptionally weak, or advanced in bad faith.
Magistrate Judge Grand stated that: (a) Judge Rosen noted
that Plaintiff presented evidence of some "actual
infringement;" and (b) at oral argument, Defendant's
counsel acknowledged that Defendant's process was capable
of functioning in a manner that would infringe on Plaintiffs
patent. (Doc. #108 at 6 (citing Doc. #83 at 15-18)).
Magistrate Judge Grand found that the arguments presented by
Plaintiff are not objectively unreasonable, this case is more
typical than exceptional, and an award of attorneys' fees
is not warranted. Id. at 5-6.
"Drawing the Steel" ...