Judge Andrews Denies Motion for Attorneys’ Fees

November 11, 2015

Publication| Intellectual Property


In TruePosition, Inc. v. Polaris Wireless, Inc., C.A. No. 12-646-RGA (D. Del. Oct. 19, 2015), Judge Andrews denied defendant’s 35 U.S.C. § 285 motion for attorneys’ fees. Although defendant, the prevailing party in the underlying case, argued that fees were appropriate because of improper motivation, frivolousness, and objective unreasonableness on the part of plaintiff, the court concluded that the case failed to qualify as “exceptional.”

In so holding, Judge Andrews analyzed whether the case was exceptional, including the factors of “bad faith litigation, objectively unreasonable positions, inequitable conduct before the PTO, litigation misconduct, and sometimes whether the infringement is willful.” However, Judge Andrews relied on an Eastern District of Texas case, Trover Group Inc. vs. Dedicated Micros USA, for the proposition that it is nonetheless “inappropriate” when a dispute over fees becomes a “a second trial, or in this case a first trial, on the merits of the case.”

Specifically, in explaining his decision not to award fees, Judge Andrews commented that defendant could not establish that plaintiff lacked a proper motivation to initiate the lawsuit, nor could defendant show that plaintiff had no plausible infringement theory. Furthermore, Judge Andrews noted that in reviewing the parties’ substantial exhibits and technical arguments regarding the case and alleged attorney misconduct, the same “mini trial” for fee assessment that the Trover Group court warned against was present. Notably, the court commented that the affidavits and declarations submitted by plaintiff made it unclear as to whether the patent was so obviously anticipated as to deem the case exceptional. In short, the court described the underlying case as “hard fought” but not exceptional, and denied defendant’s motion.


This continues a trend in the District of Delaware of exercising caution when it comes to awarding fees under 35 U.S.C. § 285. Although Delaware courts have awarded fees under Section 285 in the past, the cases where fees are awarded are truly exceptional.

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