Shammas v. Focarino
990 F. Supp. 2d 587
E.D. Va.2014Background
- Post-judgment 15 U.S.C. § 1071(b) action reviewing TTAB decision on PROBIOTIC for fertilizers.
- Questions: whether § 1071(b)(3) includes PTO attorney/paralegal salaries as expenses; whether $11,436.15 for Rule 37 movant-attorney fees is reasonable.
- Discovery order (Mar 5, 2013) required exchange of new evidence by deadlines; late submission of additional new evidence by Shammas violated the order.
- PTO struck late-new-evidence as sanction under Rule 37(b)(2)(A)(ii); summary judgment granted for PTO on grounds TTAB found PROBIOTIC generic.
- PTO seeks: (i) all expenses under § 1071(b)(3) including salaries and copying; (ii) fees under Rule 37(b)(2)(C).
- Court awards: § 1071(b)(3) expenses totaling $32,836.27 in attorney salaries, $3,090.32 in paralegal salaries, $393.90 copying; Rule 37 fees awarded as $2,280.00.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether “all expenses of the proceeding” includes attorney’s fees. | Shammas argues fees are not included. | Shammas argues fees are included as expenses under the statute. | Yes; § 1071(b)(3) includes attorney’s salaries as expenses. |
| Whether the PTO's $11,436.15 Rule 37(b)(2)(C) fee is reasonable. | Plaintiff does not oppose fees but contends the amount is excessive. | Fees are reasonable but the amount is inflated. | No; prevailing market-rate fee is $2,280.00. |
Key Cases Cited
- Fox v. Vice, 131 S. Ct. 2205 (2011) (fee shifting; litigation expenses include attorney’s fees equivocal to prevailing rates)
- Shammas v. Rea, 978 F. Supp. 2d 599 (E.D. Va. 2013) (sanctions under Rule 37; attorney’s fees sui generis; strike of late evidence)
- Hensley v. Eckerhart, 461 U.S. 424 (1983) (exclude hours not reasonably expended in fee awards)
- Robinson v. Equifax Information Servs., LLC, 560 F.3d 235 (4th Cir. 2009) (lodestar factors: time, difficulty, and skill)