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Where Both Parties Behave Badly in Litigation, Attorneys’ Fees Are Unlikely to Be Awarded

On April 25, 2019, in Int’l Designs Corp., LLC, et. al. v. Hair Art Int’l, Inc., Judge George H. Wu in the Central District of California denied Hair Art’s motion for attorneys’ fees under 35 U.S.C. § 285.  Judge Wu concluded that, based on an analysis of the totality of the circumstances, “[t]his case was certainly ‘exceptional,’ but it was exceptional in that both parties made litigation choices leading to a significant waste of party and judicial resources.”  (Emphasis added.)  This opinion provides helpful guidance regarding Section 285 culpability, especially to parties substituting counsel.  Here, although Hair Art jettisoned its original counsel partway through the case, the court nonetheless considered prior counsel’s conduct in its analysis—and denied an award of attorneys’ fees due to prior counsel’s behavior.

After International Designs Corp. (“IDC”) sued Hair Art for patent infringement in 2017, the court resolved what it termed “excessive motion practice,” including five motions to dismiss and seven “various ex parteapplications and peripheral motions” in the pleading stage.  Following claim construction, Hair Art replaced its counsel.  New counsel filed a motion for summary judgment on non-infringement near the close of fact discovery in early 2019, and also dropped a counter-claim alleged by prior counsel after expressing uncertainty about its underlying legal basis.  After Judge Wu granted Hair Art’s motion for summary judgment and entered final judgment, Hair Art moved for attorneys’ fees.

Applying the Supreme Court’s standard set forth in Octane Fitness, Judge Wu denied the motion even while noting that the case was “certainly exceptional” because both parties were equally culpable for their unreasonable litigation conduct.  In particular, the parties failed to follow norms of professionalism and civility, chose to litigate the case through excessive motion practice, and submitted “unfocused” briefs.  Further, although a case may be “exceptional” if the substantive strength of the plaintiff’s case is objectively weak, here the court declined to find that IDC’s case was weak.  The court rejected Hair Art’s argument in this regard, noting that while IDC failed to provide evidence during claim construction, if it had done so the question of infringement at summary judgment would have been much closer.

Notably, Judge Wu concluded that Hair Art remained responsible for its prior counsel’s unreasonable litigation conduct, even though it substituted counsel.  The result in this case also underscores the lack of patience courts are likely to have with Section 285 motions in circumstances like this case.  Mercutio’s famous line—“a plague o’ both your houses”—rings true: attorneys’ fees are likely unavailable if both parties behave badly in litigation. 

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume IX, Number 134


About this Author

 Andrew H. DeVoogd Member Boston Mintz Patent Litigation Licensing & Technology Transactions International Trade Commission Strategic IP Monetization & Licensing Federal District Court IP Due Diligence

Drew is an experienced patent litigator and trial attorney whose work encompasses a broad range of technologies. He regularly represents clients in high stakes International Trade Commission investigations involving some of the world's largest technology companies. He also litigates patent matters and other business disputes in federal district courts around the country, and advises clients in complex IP licensing and related transactions. Drew excels at helping clients make sense of nuanced legal issues while developing effective strategies to protect and leverage their intellectual...

Rithika Kulathila, Mintz Levin Law Firm, Litigation Law Attorney, Boston

Rithika is a litigator with a technical background in biochemistry and molecular biology. Rithika uses her technical and legal experiences when working with companies in the life sciences, biotechnology, health care, and technology sectors.

Rithika earned her JD from UC Berkeley Law School, while also serving as a judicial extern to the Hon. Susan Y. Illston of United States District Court for the Northern District of California and a legal intern for the medical-legal partnership at the East Bay Community Law Center in Berkeley, California. Rithika earned a Law & Technology Certificate, and participated in the Berkeley Technology Law Journal and the Workers’ Rights Disability Law Clinic. She also served as co-president of the Healthcare and Biotech Law Society and the South Asian Law Student Association.

Prior to attending law school, Rithika worked as an academic and support services coordinator for a nonprofit that works with middle school and high school girls and served as a health policy intern for a former Massachusetts State Senator.