Patent Incivility Justifies Fee Shifting

• Author: Grant H. Hackley
• Pages: 16-17

Photo illustration by Elmarie Jara

Patent Incivility

Justifies Fee Shifting

By Grant H. Hackley,

Litigation News

Associate Editor

Unreasonable patent litig ation conduct can expose

a litigant —and their counsel—to fe e shifting in

exceptional case s. The U.S. Court of Appea ls for

the Federal Circu it afrmed a distric t court’s award

of attorney fees to a defend ant and also awarded fees and

double costs for the frivolous appea l. ABA Litigation Section

leaders suggest th at attorneys be mindful of the r ules of pro-

fessional conduct and b e willing to tell a client “no” when the

circumsta nces warrant, lest they nd t hemselves facing sanc-

tions for frivolous attempts to adva nce the client’s interests.

It’s Not You, It’s Me

In Pirri v. Cheek , the plaintiff alleged he invented a rever se

online datin g application, where p eople meet in the real

world prior to dating vir tually. The plaintiff claimed t hat he

had shared his idea w ith his therapist, who then shared the

idea with the defenda nt. The plaintiff purpor tedly learned

of this breach of his con dence when he saw a rerun of the

television series Sh ark Tank , in which the defendant had pro-

moted a simila r idea. The pla intiff sued for joint inventorship

and various common-l aw torts. T he trial court dismissed

most of the claims , leaving only the patent-based claim.

The trial cou rt then denied as futile t he plaintiff’s

request for leave to amend his compla int to add a “litany”

of new and unrelated st ate law claim s, including a defa-

mation claim for an i ncident that had occurred 10 years

removed from the alleged i nfringement. When the defen-

dant moved for summa ry judgment on the patent case, the

trial cour t ordered that the plaintiff st ipulate to summary

judgment or oppose it on a good-fa ith basis. Instead, the

plaintif f sought to dis-

miss the complai nt

with prejudice,

ostensibl y to

avoid the fee-shif ting provision of 35 U.S.C. § 285. Section

285 provides that, in t he patent context, “[t]he court in

exceptional case s may award reasonable attorney fees to the

prevailing par ty.” After several cou rt conferences and addi-

tional denied reque sts from the plaintiff th at he be perm it-

ted to dismiss t he claim, the plaintif f ultimately consented

to summary judg ment in the defendant’s favor.

The defendant then moved for at torney fees on several

grounds, includi ng section 285 and the trial cour t’s inher-

ent authority. The trial cou rt determined that this c ase was

exceptional, noti ng that the plaintiff’s “lings s tand apart

from those of other fai led civil plaintiffs for the sheer l ack of

colorable factual (or legal) support .” The court fu rther called

out the plaintif f’s “tendentious, bi zarre, non-responsive and

caustically ac cusatory arguments,” and awarded fees and

costs to the defenda nt under section 285. The trial cour t

also found the plai ntiff’s attorney to be jointly responsible

for payment of the defendant’s fees a nd costs, as he had pre-

pared, signed , and led all the relevant submissions. T he

plaintiff appealed.

The federal circ uit afrmed the tria l court’s award of attor-

ney fees and costs a nd awarded fees and double costs relating

to the appeal under Federa l Rule of Appellate Procedure 38.

The appellate cour t also held the plaintiff’s attorney joi ntly

responsible for these addit ional fees. The court descr ibed the

arguments ra ised below as “bafing” and held that cou nsel’s

appellate brieng “fa r exceeds the bounds of proper deco-

rum.” The plainti ff had characterized the defend ant’s appel-

late brieng and conduc t as “an outright lie,” “cheating to

win,” “gamesmansh ip,” and “frivolous.” The appellate cour t

found that none of those acc usations had

any basis in fact and t hat they

justied the award of appel late

fees and double costs.

Published in Litigation News Volume 47, Number 1, Fall 2021. © 2021 by the Ameri can Bar Association. Re produced with per mission. All rights re served. This info rmation or any porti on thereof may not be c opied or disseminated in any f orm or

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