Chief Judge Stark Partially Grants Motion for Exceptional Case and Attorneys’ Fees

June 5, 2019

Publication| Intellectual Property

In Cosmo Technologies Ltd. v. Actavis Laboratories FL, Inc., No. 15-164-LPS (Mar. 27, 2019), and related case, Chief Judge Stark granted the defendants’ motion to declare the cases exceptional and to award attorneys’ fees. At trial, the Court granted the defendants’ motion for judgment of non-infringement on partial findings under Fed. R. Civ. P. 52(c) at the close of the plaintiffs’ case-in-chief.

According to the decision, the defendants requested in the pre-trial order that the plaintiffs reduce the number of asserted patent claims (at that time, at least 35 claims). The Court required the plaintiffs to narrow their case two weeks before trial, and cautioned the plaintiffs about making further changes without giving advance notice to the defendants. Two business days before trial, the plaintiffs again narrowed their case to three claims from two patents, a narrowing made “without any warning,” as the Court wrote. The Court faulted the plaintiffs for not presenting evidence at trial that a test requiring observation of the composition of the accused products by the naked eye had been performed (as required by the construction of a term in one of the two remaining patents). According to the decision, the plaintiffs never provided the product samples to their infringement expert, nor did they explain why. Chief Judge Stark found the failure to conduct this test to be objectively unreasonable and evidence of the substantive weakness of the plaintiffs’ case. As to the other patent, the plaintiffs never had their expert test the samples of the accused products for stearic acid, the presence of which, the Court stated, was necessary to prove infringement. Citing interests of compensation and deterrence, Chief Judge Stark granted the motion for a finding of exceptional case.

Key Point: Although the Court found the case exceptional and awarded fees starting from the date of the pre-trial conference, the Court did not find that the case should not have been filed. In their motion, the defendants had asked that the case be declared exceptional and sought fees from the date when they produced samples of the accused products to the plaintiffs, nearly a year before trial.

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