United States District Court, D. Maryland
IN RE CTP INNOVATIONS, LLC, PATENT LITIGATION CTP INNOVATIONS, LLC
GEO GRAPHICS INC. CTP INNOVATIONS, LLC
COMMAND WEB OFFSET COMPANY, INC. CTP INNOVATIONS, LLC
SANDY ALEXANDER, INC. CTP INNOVATIONS, LLC
WORZALLA PUBLISHING COMPANY CTP INNOVATIONS, LLC
SPECIALTY PROMOTIONS, INC.
MEMORANDUM & ORDER RE: FEE MOTION
J. Garbis United States District Judge
Court has before it Defendants' Motion for Attorney Fees
[ECF No. 385 in 14-md-2581 and the materials submitted relating
thereto. The Court finds a hearing unnecessary.
CTP Innovations, LLC (“CTP”) is a non-practicing
patent assertion entity that alleged ownership by assignment
of United States Patent Nos. 6, 611, 349 (“the
‘349 Patent”) and 6, 738, 155 (“the
‘155 Patent”) (collectively, “the Patents
in Suit”). Beginning in 2013, CTP sued more than 75
printing companies for infringement of the Patents in Suit
and contacted many more companies and offered licenses to
avoid being sued.
many of these cases settled, on December 12, 2014, the United
States Judicial Panel on Multidistrict Litigation
(“MDL”) issued its Transfer Order [ECF No. 1]
consolidating the then-pending actions and transferring them
for pretrial purposes to this Court. In 2015, more than 20
additional tag-a-long cases were filed and subsequently
transferred to this Court under the MDL. In addition, CTP
stated an intention to file as many as 200 additional
November 29, 2016, this Court issued its Memorandum &
Order Resolving Motions [ECF No. 381], holding that CTP did
not own the rights to sue for infringement of the Patents in
Suit at the time it commenced filing the lawsuits. As a
result, the Court granted Defendants' Joint Rule 12(b)(1)
Motion to Dismiss for Lack of Subject Matter Jurisdiction Due
to Plaintiff's Lack of Standing [ECF No.
354]. In its
decision, the Court noted: “If the matter were not
moot, the Court would have held the Patents in Suit invalid
as not claiming patentable subject matter.” Mem. [ECF
No 381] at 5, n.4.
December 13, 2016, Defendants filed the instant joint Motion
for Attorneys' Fees [ECF No. 385] seeking an award of
attorney fees and/or sanctions pursuant to one or all of 35
U.S.C. § 285, 28 U.S.C. § 1927, and the court's
inherent power to sanction.
the filing of the instant motion, CTP has settled with all
but the five remaining defendants. Notice, ECF No. 537; Stipulation of
Dismissal, ECF No. 540. The Court herein resolves the pending
motion for attorney fees.
Patent Act Fee-shifting Provision
Patent Act's fee-shifting provision provides that
“[t]he court in exceptional cases may award reasonable
attorney fees to the prevailing party.” 35 U.S.C.
determine whether a party is a prevailing party in patent
litigation, courts apply the general principle that “to
be a prevailing party, one must ‘receive at least some
relief on the merits, ' which ‘alters ... the legal
relationship of the parties.'” Inland Steel Co.
v. LTV Steel Co., 364 F.3d 1318, 1320 (Fed. Cir.
2004)(quoting Former Employees of Motorola Ceramic Prods.
v. United States, 336 F.3d 1360, 1364 (Fed. Cir. 2003)).
Patent Act does not define “exceptional, ” but
the United States Supreme Court has provided guidance in
Octane Fitness, LLC v. ICON Health & Fitness,
Inc., __ U.S. __, 134 S.Ct. 1749, 1751 (2014). 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.” Id.
at 1756. “District courts may determine whether a case
is ‘exceptional' in the case-by-case exercise of
their discretion, considering the totality of the
circumstances.” Id. at 1756; see also
Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., __
U.S. __, 134 S.Ct. 1744, 1748 (2014) (“[T]he
determination whether a case is ‘exceptional' under
§ 285 is a matter of discretion.”).
standard of proof for establishing entitlement to fees is by
a preponderance of the evidence. Id. at 1758. If the
district court finds the case exceptional by a preponderance
of the evidence, it must then determine whether it should
exercise its discretion to award attorneys' fees. See
Icon Health & Fitness, Inc. v. Octane Fitness, LLC,
576 F. App'x 1002, 1005 (Fed. Cir. 2014); Inland
Steel, 364 F.3d at 1321; Digeo, Inc. v. Audible,
Inc., 505 F.3d 1362, 1366-67 (Fed. Cir. 2007); see
also Graco, Inc. v. Binks Mfg. Co., 60 F.3d 785, 794-95
(Fed. Cir. 1995)(“A finding by a court that a case is
exceptional is a factual determination, whereas the decision
to award fees is discretionary.”).
amount to be awarded also lies within the sound discretion of
this Court. See Lumen View Tech. LLC v. Findthebest.com,
Inc., 811 F.3d 479, 483 (Fed. Cir. 2016); Monolithic
Power Sys., Inc. v. O2 ...