United States District Court, E.D. Texas, Sherman Division
IMPERIUM IP HOLDINGS (CAYMAN), LTD.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, and SAMSUNG SEMICONDUCTOR, INC.
MEMORANDUM OPINION AND ORDER
L. MAZZANT UNITED STATES DISTRICT JUDGE
before the Court is Imperium IP Holdings (Cayman), Ltd.'s
(“Imperium”) Motion for § 285 Attorneys'
Fees and Non-Taxable Costs (Dkt. #363). After reviewing the
relevant pleadings, the Court grants in part and denies in
part Imperium's motion.
9, 2014, Imperium filed the instant action against
Defendants, alleging infringement of United States Patent
Nos. 6, 271, 884 (the “'884 Patent), 7, 092, 029
(the “'029 Patent”), and 6, 836, 290 (the
“'290 Patent”). On February 8, 2016, the jury
returned a verdict finding the following: (1) Defendants
infringed Claims 1, 5, 14, and 17 of the '884 Patent; (2)
Defendants infringed Claims 1, 6, and 7 of the '029
Patent; (3) Defendants willfully infringed the
patents-in-suit; and (4) Claim 10 of the '290 Patent was
invalid for obviousness (Dkt. #253). The jury awarded $4,
840, 772 in damages for infringement of the '884 Patent
and $2, 129, 608.50 in damages for infringement of the
'029 Patent (Dkt. #253). The jury's award represents
an implied royalty rate of four cents per product for the
'884 Patent and two cents per product for the '029
Patent. On August 24, 2016, the Court awarded enhanced
damages for willful infringement and entered final judgment
(Dkt. #329; Dkt. #330).
11, 2017, Imperium filed the present motion for
attorneys' fees and non-taxable costs (Dkt. #363). On May
26, 2017, Defendants filed a response (Dkt. #372). On June 5,
2017, Imperium filed a reply (Dkt. #381). On June 13, 2017,
Defendants filed a sur-reply (Dkt. #387).
285 of Title 35 of the United States Code provides,
“The court in exceptional cases may award reasonable
attorney fees to the prevailing party.” 35 U.S.C.
§ 285. “When deciding whether to award attorney
fees under § 285, a district court engages in a two-step
inquiry.” MarcTec, LLC v. Johnson &
Johnson, 664 F.3d 907, 915 (Fed. Cir. 2012). The court
first determines whether the case is exceptional and, if so,
whether an award of attorney fees is justified. Id.
at 915-16 (citations omitted). The Supreme Court has defined
“an ‘exceptional' case [as] 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.”
Octane Fitness LLC v. Icon Health & Fitness,
Inc., 134 S.Ct. 1749, 1756 (2014).
courts should consider the “totality of the
circumstances” and use their discretion to determine on
a case-by-case basis whether a case is
“exceptional.” Id. A nonexclusive list
of factors includes “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 n.6. Cases that may merit
an award of attorney fees include “the rare case in
which a party's unreasonable conduct-while not
necessarily independently sanctionable-is nonetheless so
‘exceptional' as to justify an award of fees”
or “a case presenting either subjective bad faith or
exceptionally meritless claims.” Id. at 1757.
A party seeking attorney fees under § 285 must prove the
merits of their contentions by a preponderance of the
evidence. Id. at 1758.
contend they are a prevailing party as the jury in this case
and the U.S. Patent Trial and Appeal Board in a parallel
proceeding found two of the three patents-in-suit invalid.
Defendants further contend they prevailed because the Patent
Office granted ex parte reexamination of the third
patent-in-suit. Imperium counters that it is the prevailing
party because it obtained an infringement judgment for
plaintiff may be considered a prevailing party for
attorney's fees purposes “if they succeed on any
significant issue which achieve some of the benefit the
[party] sought in bringing suit.” Farrar v.
Hobby, 506 U.S. 103, 109 (1992) (quoting Hensley v.
Eckerhart, 461 U.S. 424, 433 (1983)). This occurs when a
plaintiff “obtain[s] an enforceable judgment against
the defendant from whom fees are sought, or comparable relief
through a consent decree or settlement.” Id.
at 111 (citations omitted). “In short, a plaintiff
‘prevails' when actual relief on the merits of his
claim materially alters the legal relationship between the
parties by modifying the defendant's behavior in a way
that directly benefits the plaintiff.” Id. at
111-12. There can be only one prevailing party, but a
“party is not required . . . to prevail on all claims
in order to qualify.” Shum v. Intel Corp., 629
F.3d 1360, 1367-68 (Fed. Cir. 2010).
there can be only one prevailing party, the Court finds that
Imperium is the “prevailing party” in this case.
Imperium was successful in proving Defendants infringed
asserted claims in the '884 and '029 Patents. The
jury awarded Imperium $4, 840, 772 in damages for
infringement of the '884 Patent and $2, 129, 608.50 in
damages for infringement of the '029 Patent. Following
trial, the Court trebled the jury's damages award for
Defendants' willful infringement. Imperium's damages
judgment against Defendants “materially alters the
legal relationship” between the parties. This is true
because “[a] judgment for damages in any amount . . .
modifies [Defendants'] behavior for [Imperium's]
benefit by forcing [Defendants'] to pay an amount of
money [they] otherwise would not pay.” Farrar,
506 U.S. at 113. While the jury found the '290 Patent
invalid, the Court recognizes that Imperium is not required
to succeed on every claim to be the prevailing party.
Shum, 629 F.3d at 1367-68. Further, the Court is
unconvinced that the Patent Office's grant of ex parte
reexamination for the '884 Patent has any significant
bearing on the Court's determination of the prevailing
Imperium is a prevailing party and thus is eligible for its