Another 285 attorneys fees decision – this time from WD Tex

Originally published by Michael C. Smith.

A number of years ago I was in chambers with an Eastern District judge and opposing counsel discussing a procedural question in a Fair Labor Standards Act case. I admitted to the judge that I didn’t have a Fifth Circuit case on what the court was having to decide, but I did have a district court opinion that I thought made sense on the issue from another Texas court. The judge asked me who it was by, and when I told him, he smiled and said “well that’s better than the Fifth Circuit.”

It is still not that long since section 285 left the Supreme Court’s drydock in Octane Fitness last year with streamlined new language and that flashy new standard of review, and notwithstanding the useful guidance from the recent TQP v. Newegg case from the Federal Circuit, there is still not a lot of binding authority on the subject. Hence it is always useful to consider what other district courts have said interpreting the post–Octane Fitness 285, even though none are more than persuasive.

As readers know, I posted last week on Judge Gilstrap’s most recent opinion on the subject, and Friday morning I saw another opinion, this time from U.S. District Judge Lee Yeakel of the Western District of Texas – Austin Division. Many Eastern District practitioners are familiar with Judge Yeakel, as he is a frequent participant at bench/bar conferences, federal judge panels, and patent seminars, so I thought they might like to know what he had to say on the subject.

In Ushijima v. Samsung Electronics, Judge Yeakel was presented with a 285 motion by defendant Samsung, which had prevailed in a jury trial.  As readers will recall, this is unlike both Judge Gilstrap’s case and the Federal Circuit’s TQP case involved situations where the plaintiff voluntarily dismissed the case, not defense wins at trial.

Judge Yeakel agreed with the plaintiff that the case was not “exceptional” for 285 purposes, noting that at the time he ruled in the plaintiff’s favor on Samsung’s summary judgment motion and motion for judgment as a matter of law, he had concluded that there were triable fact issues surrounding whether the disclaimed products were the functional equivalent to the Samsung products that contained certain cores. “The court found, and continues to find, that Ushijima’s position on that front, although not strong, is not baseless. Both parties provided expert testimony on this issue. A court should not be quick to declare a case exceptional, when experts in the scientific field before the court disagree on the conclusion to be drawn from language in a patent or on the scope or breadth of the patent.” Accordingly, Judge Yeakel (isn’t it funny my dictation software persists in trying to call him Judge “Jekyll”?  Maybe it’s just me) concluded that neither the strength of the plaintiff’s litigation position nor the manner in which the case had been litigated was unreasonable, and accordingly Samsung had not proven by a preponderance of the evidence that the case was exceptional under section 285.

Curated by Texas Bar Today. Follow us on Twitter @texasbartoday.

from Texas Bar Today http://ift.tt/1hhIVi1
via Abogado Aly Website