*1 1330 responds finding support registration The PTO would
evidence. Therefore, the Board’s state- likelihood did find a reverse Board mark. finding to a ments do re- amount finding its confusion and confusion. marks, verse the fifth DuPont fac- fame tor, supported is neutral substantial
evidence. Conclusion Symbolic’s remain- We considered that the agree with PTO Board ing arguments, they but conclude that of reverse confu did-not .find a likelihood findings merit. The Board’s without factual DuPont fifth The Board sion. treated by substantial supported explained factor as “neutral” that the legal conclusions were not errone- registrants’ lack of “purported fame” For a matter of law. as reasons set ous Symbol consequence.” of “little marks was above, forth affirm the Board’s deci- II, I, Symbolic 1412; ic U.S.P.Q.2d 116 at sion. III, Symbolic 6746544, *8; 2015 at WL 2015 at *8. That determina WL AFFIRMED precedent tion is consistent with our hold
ing of a purported that the lack fame mark,
registrant’s probative has “little val analysis.
ue” in likelihood of confusion
Majestic Distilling, at
Symbolic points to footnote in the of its opinions support
Board’s conten- FASTENERS, tion that the likelihood of INC., Board found a ROMAG Plaintiff-Cross-Appellant reverse Therein the not- confusion. Board the extent that Mr. Adams “[t]o ed well-known, [Symbolic’s] mark are FOSSIL, INC., I, Inc., Fossil Stores [Symbolic’s] supports
such fact refusal of Macy’s, Inc., Macy’s Retail Hold- application, because when confusion like- ings, Inc., Defendants-Appellants ly, Registrant prior is the which must I, prevail.” Symbolic U.S.P.Q.2d at Dillard’s, Inc., Inc., Nordstrom, II, Symbolic added); (emphasis n.7 Stores, Inc., Bon-Ton Bon-Ton (emphasis at *8 n.9 WL Stores, Department Inc., Belk, Inc., III, added); Symbolic WL Zappos.com, Zappos Retail, Inc., added). (emphasis n.10 The Board *8 made Defendants findings no to the factual mark. fame'of the 2016-1115 2016-1116 in the context of the When viewed 2016-1842 whole, cited foot- opinion Board’s as appears response note to be the Board’s Appeals, Court of United States Symbolic’s regarding al- arguments Federal Circuit.
leged the mark. The fame Adams and August Decided: merely that to the extent explains footnote agreed Symbolic that the Board famous,
Adams or mark are such a *3 Freiman, Wiggin Dana
Jonathan
LLP,
Haven, CT, argued
plaintiff-
New
cross-appellant.
represented by Tonia
Also
H.
Cooper
A.
-Savour,
Zivin,
&
Norman
LLP,
Dunham,
York,
New
NY.
Parent
Reavis
Brocchini,
Lawrence
LLP,.
York, NY, argued for
New
defen-
by
dants-appellants.
represented
Also
Jeffrey
Gibney Anthony
E.
&
Dupler,
LLP,
York, NY;
Flaherty,
New
Lauren
Al-
Law
of Lauren S.
Offices
Albert,
York, NY;
bert, New
Geiger,
Nicholas
LLP, Hartford, CT.
Cantor Colburn
NEWMAN, DYK, and
Before
HUGHES,
Judges.
Circuit
dissenting-
Opinion concurring-in-part,
Judge
impart filed
Circuit
NEWMAN.
DYK,
Judge.
Circuit
magnetic snap
ed to
Romag
fasteners.
li
censed
and the ’367 trade
Fasteners,
Romag
(“Romag”)
Inc.
owns
n
manufacturer,
mark to a Chinese
which
(“126
5,722,126
patent”)
U.S. Patent No.
supplied authentic ROMAG magnetic
fasteners,
magnetic
snap
which it sells
snaps for
in handbags
use
manufactured
trademark, ROMAG,
registered
under its
distributed
Fossil. In
a batch
(“’367
Reg.
2,095,367
U.S. Trademark
No.
handbags appeared
to contain
trademark”). Romag
Fossil,
sued
Inc. and
magnetic
counterfeit
snaps,
ROMAG
“Fossil”) for,
(together,
various retailers
led
for,
alia,
to sue Fossil
inter
alia, patent infringement,
inter
trademark
patent infringement
trademark
infringement, and violation of the Connect
*4
violation of the CUTPA.
of
details
(“CUT-
icut Unfair Trade Practices Act
Romag’s
PA”)
infringement suit are
in the U.S. District
Court
described
(“district
of
our
court”).
prior
I,
opinion, Romag
District
Connecticut
at
817 F.3d
The jury
Romag,
returned a verdict for
jury
783-84.
found
Fossil liable for
finding
engaged
that Fossil had
in patent
patent
infringement,
and trademark
as
infringement
and
trademark
and
unfair well
engaging
as for
prac
unfair trade
practices. A two-day
trade
bench trial re
tices under the CUTPA. The patent and
solving
followed,
other issues
after which
infringement
ap
trademark
verdicts were
judgment
the district court entered
on the
pealed,
judgment
and we affirmed
of
jury
judg
This
verdict.
court affirmed
liability.
merits,
Id.
After
trial on the
ment of patent
infringe
and trademark
Romag requested attorney’s fees under
ment;
judgment
other
of the
aspects
Act,
Act,
the Patent
Lanham
and CUTPA.
Fasteners,
appealed.
Romag
See
Inc.
Fossil, Inc.,
2014-1896, 2014-1897,
v.
Nos.
Under the
Act and the Lanham
Patent
889,
686 Fed.Appx.
2017
1906904 Act,
WL
“[t]he court
exceptional cases
(Fed.
2017)
II”).1
May 3,
(“Romag
Cir.
attorney
award reasonable
pre
§
vailing
285;
party.” 35
15
U.S.C.
U.S.C.
Romag sought attorney’s fees under the
1117(a).
§
Fitness,
In Octane
LLC v.
285,
Act,
Act,
§
Patent
35
Lanham
U.S.C.
—
Fitness,
Inc.,
ICON
&
Health
U.S.
1117(a),
§
15 U.S.C.
CUTPA.
and
The dis-
—,
1749,
134 S.Ct.
1. The
Court's
(“Romag
decision in SCA
817
782
Cir.
giene
Aktiebolag
Quality Baby
I"),
Products
v. First
which affirmed
district
reduc
court’s
—
Products, LLC,
—,
954,
U.S.
S.Ct.
137
jury
damages
tion
awarded
967,
(2017),
by denying an award first conten We address J.A. 7. that court in not tion the district erred Act, to the the respect Lanham With awarding attorney’s the Lan- fees under prevailing the applied court Second Act, Octane ham standard the respect to 15 with U.S.C. precedent Circuit of applies to both the award fees under the 1117(a) of a recovery § “allows rea Act. Patent Act and under the Lanham only on attorney’s fee sonable that al The district court here concluded Louis Vuitton Malleti or bad faith.” fraud though ‘exceptional’ this is the “case under 111 er v. 676 F.3d LY S.A. Act an more lenient Patent standard USA 2012) (citations, marks, (2d quotation Fitness, Cir. it not find d[id] nounced Octane omitted). Under this stan alterations fraudulently or in that Defendant acted dard, “in the found faith Louis stan bad Vuitton [under faith, fraud, of bad or willfulness in respect absence ... to trademark dard] Defendants, this case is not part fringement on ... to recover its reasonable meaning ‘exceptional’ within Lanham Act. attorney’s fees under” the Plaintiff is not Lanham Act and entitled 9. We J.A conclude that applies attorney’s that the Octane recover its reasonable fees.” erred and standard court also the Lanham Act. J.A. The district awarded attorney’s fees under the CUTPA. Romag Octane, al- Before the Second Circuit 15 recovery attorney’s the' award fees under fees under appeals lowed 1117(a) only § if Romag cross-appeals there was bad Act. the U.S.C. Patent infringement part or under the Lanham Act. faith willful denial fees Vuitton, jurisdiction under 28 See Louis 676 have U.S.C. defendants. 1295(a)(1). question § at 111. The whether F.3d
1335
Act
attorney’s
standard survives after Octane. There
fees is identical. Both
no
have been
Second Circuit decisions on
provide that
statutes
excep
“[t]he court in
I,
this issue since Octane.2 In
we
tional
cases
award reasonable attor
prevailing
Circuit
followed
Second
rule
ney
prevailing
party.” 35
infringer prof
the award
285;
§
1117(a).
§
U.S.C.
15 U.S.C.
Act,
finding
under
Lanham
after
Congress
“[W]hen
uses the
language
same
Supreme
that there were no
Court cases- in
having
two
similar purposes,
statutes
Here,
issue. See
F.3d at
.785.
it
appropriate
to presume that Con
however,
intervening
there is
relevant Su
gress intended that text to have the same
which,
think,
preme
authority
Court
we
meaning in both statutes.”
City
Smith v.
would lead the
Second Circuit
follow
Jackson,
228, 233,
544 U.S.
125 S.Ct.
other circuits which have held that
(2005).
fact,
L.Ed.2d
applies
Octane standard
to the Lanham determining what constitutes an “excep
Dunham’s, Inc.,
Act. See
Badalamenti
Act,
tional”-case under the Patent
the Oc
(“[I]f
1990)
896 F.2d
Cir.
tane Court looked to Noxell Corp. v. Fire
regional circuit
not spoken,
court has
Bar-B-Que Restaurant,
house
1No.
predict
must
how
court would
(D.C.
1985),
a Lanham
”).
decide
issue....
case,
Act
explaining that
‘excep
“the term
tional’ in the Lanham Act’s identical fee-
decided,
Third,
Since Octane was
shifting provision,
1117(a),
§
15 U.S.C.
Fourth, Fifth, Sixth, and Ninth Circuits
[also]
mean[s]
‘not run-of-
‘uncommon’
all held that
the Octane “Court was
” Octane,
the-mill.’
statutory under overruled, § party’s arguments howev- if a are Act. This doctrine was U.S.C. er, Supreme Court if objectively decision the case was unreasonable Fleischmann, and unfair Octane, Trademark at litigated in bad faith. 134 S.Ct. brought (Canada) cases under competition 1756; v. Dow Corp. Nova Chem. however, Act], present par- [Lanham Co., 856 F.3d 1016-17 Chems. attorney for compelling need ticularly 2017). exceptional case Whether fees, are under denied totality of the circum under viewed pro- Fleischmann doctrine.... Octane, case, at 134 S.Ct. stances attorney limit posed would amendment 1756, for defer which we award ‘exceptional cases’ and the judgment under of discretion abuse attorney fees within would review, Highmark, 134 How S.Ct. at 1749. court. discretion ever, obligated find an abuse we 93-1400, reprinted at as Rep. S. No. if a “based its district eourt discretion 7132, 7135-36. 1974 U.S.C.C.A.N. ruling on erroneous of the law or an view clearly erroneous assessment on a Thus, that the Cir- conclude Second Cooter, at evidence.” U.S. Octane, that, light cuit would hold 2447. We conclude S.Ct. have the same stan- Lanham Act should errors. court here made several recovering attorney’s fees as the dard Patent Act. A the district court
Fossil contends attorney’s fees not have would awarded response to in Romag’s patent if it ap- Act even the Lanham under allegation, initially pre fringement Fossil argues standard. Fossil plied the Octane invalidity. anticipation sented only theory attorney’s subsequently de and obviousness. the Lanham Act was that Fos- fees under pursue to not these de cided continue to non-infringement defense—that sil’s fenses, infringement claim as magnetic actually snaps issue here were However, the relatively amount small. snaps—was objectively authentic ROMAG that Fossil de concluded unreasonable. And since the district court *7 to defenses until af clined abandon these already found that this was defense trial, this to be a ter the and considered respect patent to not unreasonable with Romag. to key awarding fees factor infringement, argues that the dis- Specifically, the district held that finding trict court make “the same would formally withdraw its Fossil’s “failure Resp. Act.” Appellant under the Lanham However, invalidity [anticipation obviousness] this Rep. Br. we think & 47. in to the close of issue is best left district the defenses after the until on first remand. in weigh instance of fees this favor an award 6-7,
case.” J.A. record establishes that before trial.3 the were withdrawn II First, 5, 2014, pre- during the March We next address whether conference, following ex- trial the two awarding court erred under 35 § indicate that changes this case. occurred which U.S.C. 285 dissent, invalidity Contrary defenses at do not Fossil withdrew its we conclude that court was that Fossil If they’re aware would Court: not pursuing it, ... pursuing why not be invalidity your defenses. isn’t motion moot? asserting [A]re
Court: defendants Romag: gone ... We’ve all way affirmative defenses to the ..., through this case now they prior claim art? obviousness and right decided trial they before that don’t it; wish I pursue think we’re Honor, At point, your Fossil: we are to judgment. entitled going to assert those defenses. that, Any problem Court: Mr. Cass Court: Okay. [Fossil I think plain- counsel]? don’t J.A. 2107. tiff again. wants see this Fossil: I validity think we indicated Fossil: I think it’s moot issue. We defenses would not be asserted. didn’t raise And I it.... then think at pretrial stage we indicated we wer- Court: And obviousness. en’t going to. ... Fossil: Yes. Court: ifSo the defendants clari-
J.A. 2190-91. that they’re claiming fied invalidity [,] Second, charge ... 18, 2014, should during properly in- pre- March struct is a conference, that the valid patent, court specifi- parties dispute cally do stated that that. “we clarified our last hearing that there’s no already Fossil: believe addressed it being advanced.” J.A. 2255. ..., your Honor.
Third, following exchange—which place day took before the district court Honor, Romag: they’ve Your never pat- ruled Rule motion on They’re claims. withdrawn them these validity—indicates ent that the court and up to They’ve gone answer. trial with all parties of the invalidity were aware At the last moment information. prior defenses’ withdrawal to trial: they I don’t think withdraw it. Honor, Romag: plaintiff Your moves for makes it moot.... judgment as a matter law under Rule 50.... has not put [T]he defendant any evidence with the invalidi- Honor, I Fossil: believe Your some- ty.... And since was one of their already where in the record defenses, it seems to us we’re entitled go to dismissed. did not trial on that.,,.
judgment on those claims. *8 thought Court: I the defendant at our Well, Court: sort of that’s what pretrial conference indicated [it] would thought happened.... had invalidity pursuing not be defense. added). (emphasis J.A. 3865-68 The follow- on patent, Fossil: On and trademark ing day, the district court clarified that “a correct, your that’s Honor. of portion [Romag’s] yesterday motion was
seeking a judgment against the defendant February Op. 12 teleconference. See Dissent 1344. “degree specify of nec- invalidity. represent The defendants does force on the essary invalidity September J.A. 1752. On that withdrawn- their to rotate.” they have 19, 2012, summary for justice, partial that Fossil moved In the interest defense. prejudice.” judgment ground. ... the motion defense withdrawn While [is] on Young, pending, Judge at the J.A.2426. was who case,4 over the presiding time was held also no refer- Significantly, Fossil made 9, 2013, Markman April on hearing and and anticipation ence obviousness “capable “rotatable” to mean construed instructions, preliminary jury opening rigidly being and not rotated secured.” statement, testimony, proposed witness appeared J.A. 1682. This construction form, jury and. final instructions. verdict necessary for making force define the Thus, Romag’s claim that “Fossil did Indeed, “rotatable.” on fasteners October invalidity until after defenses withdraw sua 23, 2013, Judge Young granted, complete,” Appellee Br. testimony was sponte, summary judgment for by the rec- misleading and contradicted issue, holding the indefiniteness that that there appears ord. conclude be ’126 “ro- was definite because parties full between awareness “capa- be construed to mean tatable” can patent invalidity that the de- district court rotated.” J.A. ble 1753. being trial, and withdrawn before fenses were During attornéy’s fees proceedings, .only motion reaffirmed the Rule .50 court here district concluded understanding. that common The district Judge Young’s on the tenor “[b]ased concluding that Fos- clearly erred [summary judgment] opinion, it [was] clear formally these sil withdraw de- “did argument that Defendants’ re- until after tri- prejudice [the] fenses with patent invalidity spect their defense any is there support al.” 6. J.A. Nor J;A. bordered frivolous.” indefin'iteness finding “ag- that Fossil Specifically, the district court 6. found that pursue[d] gressively counter- Judge Young had “likened evi- Defendants’ attempt prolong litigation.” claims in an support dence in of its indefiniteness de- J.A. 7. ” ‘woefully inadequate showing.’ fense to a note that the Finally, district court Id. also concluded finding that Fossil’s made no light Judge Young’s ruling, “[i]n objec- anticipation obviousness Defendants’ indefiniteness [the] tively unreasonable. . entirely meritless was raised (citation improper purposes.” J.A. 38 B omitted). quotation internal marks These findings erroneous assessments Romag’s patent infringe- response record. presented also allegation, ment First, indefiniteness, court erred in conclud- argu- invalidity defense Young ing patent’s ing ’126 claim “ro- Judge that the term found Fossil’s “woefully because the indefiniteness in- tatable” was indefinite preside Judge Young, litigation, did not "from U.S. District Court but over the *9 , Massachusetts, including sitting subsequent phases, pre-trial for the District of was the conferences, trial, (cid:127) jury attorney's designation in of the District Connecti- early stages proceedings. presided over the of cut. He of portion Judge (emphases added) (citations The relevant J.A. adequate.” 1753-57 omitted). opinion states: Young’s passage, Based this we do hot read party summary that moves for
[A] Judge opinion to Young’s describing runs the risk that if it makes a judgment “woefully Fossil’s indefiniteness defense as inadequate not woefully showing, only inadequate” in the sense that Fossil’s theo- summary judg- motion for might own ry objectively was unreasonable. The eases denied, may grant ment be the court upon Judge Young relied not do' summary judgment against sua sponte otherwise; suggest they simply deal movant. from [Citations six cases procedural requirements granting for Circuit and four from the Second cases summary judgment against moving propo- supporting the First Circuit n party. inadequacy of the movant’s sition.] showing merely necessary predicate a body .precedent constitutes This for grant summary judgment adequate than more notice against moving party, just as it is summary judgment enter Court requirement summary judgment under against moving party. action is Such Rather, any Judge Young circumstances. here. :.. proper proffer[s] Fred- concluded that while it was “true” that the expert erick Kucklick as [its] patent quantified had not the amount opines only Kucklick indefiniteness.... necessary, force “this Court’s construction renders [Fossil’s ‘rotatable’ indefinite- evidence] ness J.A. immaterial.” patent ’126 does not an provide Thus, Judge Young’s opinion appears to acceptable way degree to quantify the grant summary sua sponte judgment consistently necessary of force de- Romag because Fossil’s indefiniteness ar- the term fine ‘rotatable’ for gument was the claim precluded con- infringement purposes. The ’126 Judge struction. also not do read degree regarding silent Young’s summary judgment opinion necessary of force the at- qualify “tenor” that indicates that Fossil’s legs as relative to ‘rotatable’ tachment indefiniteness defense “bordered on frivo- washer. the base lous.” these are That’s it. While statements Second, Fossil, note that it true, Court’s construction “rotat- Romag, summary who moved judg- renders them able” immaterial. What is Although ment on indefiniteness issue. more, opinions nothing these more dispositive, suggest we find this to dixit, ipse than an Cir- the Federal always Romag did not view Fossil’s indefi- general cuit has concluded that such argument niteness as frivolous. conclusory testimony “does suffice reasons, For these we conclude that invalidity” as evidence of suf- substantial court, relying on Judge Young’s carry ficient burden defendants’ that,Fossil’s ruling, holding erred indefi- In proof. absence sufficient niteness on frivolous. defense bordered indefiniteness, Fossilfs] fail claim and the declares must Court C ’126 that the the in- withstands challenge definiteness awarding and that defense attorney’s fees under Act, longer is no in this case. the Patent declined *10 totality court the during “consider[ district must Romag’s ] conduct earlier to consider Octane, at 134 S.Ct. had of the circumstances.” the district court litigation that the pre 1756. This the conduct timing of includes respect to the sanctioned. With . attorney’s seeking vailing party of that is suit, Romag Fos- merits was aware Gaymar In Industries Cincinnati fees. v. by May of but infringement did sil’s Products, F.3d 1369 Sub-Zero until November commence its lawsuit (Fed. 2015), that “the Cir. we clarified that thus found 2010. The court of district a parties relevant factor conduct J.A. “Romag’s delay was unreasonable.” totality-of-the-circum under Octane’s “suf- delay, of this Fossil had Because 67. inquiry, including stances the conduct as a re- prejudice fered material economic proposi For this the movant.” Id. 1373. findings led the dis- sult.” J.A. 68. These tion, Gaymar cited Power Technol conclusion “inescapable trict court Mosfet AG, F.3d 1396 ogies, LLC Siemens carefully timed this suit that Plaintiff 2004), a which affirmed district holiday advantage of the imminent to take § of 285 fees “because all denial to be to exercise shopping season able parties had conducted themselves leverage in an at- most over Defendants required prac when without decorum tempt quick profitable a extract cred a court ... and ticing federal before fact, Romag In moved settlement.” J.A. 67. each of parties with some share ited injunction on for TROa a preliminary in (emphasis Id. at 1415 the bad behavior.” days November before three original). Friday, using Black a that declaration “sparse” district be court found in de- court erred therefore representa- “misleading
which contained consider, in clining connection with this, tions.” J.A. Based all totality analysis, of circumstances it because sanctioned Romag’s mis- litigation misconduct. earlier Id, faith.” “acted bad on the the- disregarded conduct cannot ory equivalent fees is failure award However, during proceedings at- Indeed, double-sanctioning Romag. fees, torney’s the district court concluded already fact that this has been misconduct already Court or- ha[d] because “the weighed more heavi- sanctioned should be recover its dered Plaintiff excluded, in ly, rather than be TRO and re- fees connection with the § analysis. U.S.C. 285 royalty award jury’s duced the reasonable light Plaintiffs [and] [be- laches scope cause these were limited issues D ,.., need, no sanction [it to further saw] alleged error One other denying [Romag] by an award not in fact an error. In district court was The district erred this case.”5 J.A. 7. response Romag’s patent and trade in reaching this conclusion. allegations, pre infringement
mark defense, non-infringement sented a where determining whether case magnetic fees, § the batch asserted exceptional for 35 U.S.C. earlier, court's Hygiene Hygiene makes the district sanctions held that 5. As SCA stated infringement Romag's TRO laches is a defense to in connection with misconduct during statutory period. S.Ct. at 967 inappropriate. However, (2017). that SCA party no contends
1341 in snaps genuine at issue fact RO- to were non-infringement not trial, snaps. Romag Thus, After entirely groundless/’ MAG moved J.A. as re for judgment Octane, as a matter re- quired law' with prop district court spect position. to this noninfringement erly strength evaluated “the substantive court motion denied this ’and allowed a litigating party’s position.” S.Ct. 134 jury pro- to During decide issue. finding, 1756. Based on this no we see ceedings fees, attorney’s the district error in the .district refusal to con court ruling deny- found “this Court’s an sider this issue as factor adverse in the 50(a) ing precludes Rule motion circumstances, Plaintiffs totality of because par “[a] finding [non-infringe- that Defendant’s] a ty’s on position issues of law ultimately frivolous, argument so ment] was need not be correct them not groundless as to an of fees.” justify award out,’ or *stand[]. be found reasonable.” J.A. 5. Sys., Inc., LLC Newegg SFA v. 793 F.3d 2015) (alteration 1348 Cir. appeal, Romag On contends that original). It is not relevant Fossil’s concluding the district court erred non-infringement have been 50(a) to grant refusal a motion Rule weak, if it did rise to level of being fees; awarding precludes attorney’s We objectively See unreasonable. Univ. of agree 50(a) Romag that Rule motions Utah v. zur Max-Planck-Gesellschaft are often aas matter of course denied Foerderung e.V., der Wissenschaften without resolving the of the merits motion. 1317, 1323(Fed. 2017). “Thus, permitted while a district court is judgment enter as matter of law when E legally concludes that the evidence it is insufficient, required it so.” do court, The district under inherent Sys., Food Inc. Swift-Eckrich, Unitherm powers, portion, awarded of its U.S. S.Ct. 163 expert fees incurred witness connection (2006); Wright see also 9B L.Ed.2d & summary with Fossil’s motion for judg- Miller, Federal Practice Procedure ment on This was based indefiniteness. (3d (“The § update) ed. 2017 finding Fossil’s indefiniteness ar- judge required is not to grant judgment as gument according was without merit a matter of even in a case in it law Young’s Judge we decision. Because power might appropriate has the that finding, set also set aside aside so.”). here, is especially do This true expert witness fee.award. Romag’s where the court denied supplemental fees awarded con- 50(a) “dissecting] Rule motion without application for attorney’s nection with Thus, evidence.” J.A. 2425. light fees are also set aside our 50(a) mo court’s denial Rule conclusions, tion finding preclude does that Fos noninfringement position sil’s frivo
lous. Conclusion
However, here, the district court This case the.district relied remanded 50(a) deny more Rule to consider Act ruling than its the Lanham and the attorney’s attorney’s Act fees on issue. Patent fees and The district claimed standard, also “arguments expert found that under the correct Fossil’s II On errors identified above.
free remand, analysis, on a correct based not, however, my colleagues’ I do share an evaluate whether court-should *12 district its dis- view that the court abused appropriate. is of fees award awarding attorney with re- cretion fees AND REMÁNDED
VACATED spect to the issues. ' that Fossil court observed The district
Costs
theories,
invalidity
including
its
pressed
party.
arguments,
to neither
anticipation
obviousness
Costs
and
trial,.at
time Fossil
until the eve of
'
as-
to offer assurance that these
seemed
NEWMAN,
Judge, concurring-
Circuit
Nonetheless,
not be
pects
pursued.'
would
dissenting-in-part.
in-part,
invalidity
its
Fossil did not withdraw either
attorney
issue
award
The sole
counterclaims,
invalidity
or its
Supreme
fees,
application
Court’s
on
patent expert-on
its
its
maintained
witness
set forth
Octane
standard as
adjusted
list,
kept “prior art” on its trial exhibit
and
Fitness,
Fitness,
v.
LLC ICON
&
Health
representations
I
note of the
list.
take
—
—,
U.S.
134 S.Ct.
by my'colleagues,
repre-
but such
quoted
(2014)
Highmark Inc.
and
L.Ed.2d
trial
after
at the
and
trial
sentations
eve
—
System,
Management
Health
Allcare
by
begun
reasonably
viewed
U.S. —,
1744,
I that recognized court with- district invalidity of. the was not drawal counts ruling initial motion In the begun, until after trial had when achieved attorney to the for fees issue effectively granted court Ro- the district infringement, of trademark Charge Rule 50 motion. Tr. Confer- mag’s pre-Oc- applied the Circuit’s court Second ence, 1, 2014, 45:3-11, April ECF No. 439. attorney requir- fee standard 'tane Fitness observed, As the district court or ing fraud bad Louis “evidence faith.” required prepare its witnesses had been USA, Inc., LY Malletier S.A. v. Vuitton in- on the prepared and to remain 2012). (2d agree I 676 F.3d pre- validity throughout extensive issues adop- my colleagues general that the “the eve of proceedings and until circuits, in regional trademark tion Op. Ct. trial.” Dist. 6. cases, patent-based attorney of the fee Fitness, fortji in standard set Octane ren- where, how, I do discern likely not that it more than ders Sec- discretion, for abused path would ond Circuit also take reasonably that observed cases. trademark others,” out case “stood from the. Fitness, concluding I share that remand words of Octane Thus the view pursue[d] the dis- appropriate “aggressively determination whether, attempt prolong Octane Fit- in an trict court counterclaims standard, attorney litigation exponentially fees are increase the ness warranted pursuing lawsuit.” infringement cost and risk Dist. the trademark here Op. Ct. found.
My colleagues second-guess approached. nonetheless date On the uncertainty and existed, depart district court’s obfuscation observations the trial court did required from the deferential review not abuse determining its discretion -in manner, discretionary rulings. respectfully litigated dissent the case was in a opinion. from Part II Fitness, out “stands from others.” Octane
A B attorney for award of standard *13 In response is whether the out from Romag’s case “stands oth- to complaint, 2010, ers with to the substantive was filed in December Fossil strength party’s litigating position pled patent a ... invalidity anas affirmative de- or manner which the fense and for unreasonable a declaratory counterclaimed Fitness, case litigated.” judgment was of patent invalidity. Octane An- Defs.’ swer, Defenses, S.Ct. at review Countercls., Affirmative 1756. We & 15, 2010, 6, 8, court’s action for abuse discretion. Dec. No. ECF 31. These Highmark, responses at My col- S.Ct. 1747. led to preparatory extensive ac- leagues tivity acknowledge this standard and its parties, to attack and defend review, highly yet deferential substitute what district court referred to as “Ro- interpretation mag’s their principal events that the asset.” business Dist. Ct. judge experienced trial Op; first-hand. 6. invalidity challenges Fossil’s includ- expert an report concerning ed invalidity, instance, colleagues For my state that expert witness deposition, discovery, the “[t]he that the [invalidi- establishes record listing of purportedly invalidating prior ty] defenses were withdrawn before trial.” art, summary a motion judgment, for Maj. Op. is That incorrect. The 1336-37. pretrial other proceedings. jury trial record establishes that defenses were 24, was to March start on 2014. scheduled not withdrawn begun, until after when the district court withdrew them on neared, As the trial at a date Romag’s Tr. Rule 50 motion. Charge. Con- 12, February teleconference on status ference, 45:3-11, April ECF No. Romag pointed proposed out that Fossil’s required prepare, to Romag 439. Thus jury instructions and trial brief did and remain for prepared, invalidity these patent Romag request- mention invalidity. issues, as the district court observed. Dist. its ed that Fossil declare intentions re- Op. Ct. to (“Romag’s decision continue to garding invalidity its defenses and coun- present to [Fossil’s] counter in- terclaims:
validity defenses until the claims were for- Romag’s nothing There is counsel: mally prejudice withdrawn with was en- patents. document about When n (cid:127) . foreseeable.”). tirely we phone asked a [Fossil’s counsel] district court abuse its last a meet did dis- conversation week attorney cretion in confer imposing recovery they pursuing any fee whether aspect litigation, all, at Fossil he refused to an- persisted in retaining saying, swer it at tri- he’ll determine defens- [1 nn es years, very go for over al.... to to trial counterclaims three difficult on a repeatedly equivocated as the trial as it is and it’s even case abandoning in- [its] or either pursuing even know when we don’t more difficult validity noninfringement claims.” Id. at putting a defendant whether , time, in one or more they’re putting requested Either 42:16-19. then defense. they’re not. but no commitment: made Teleconference, 39:7- Feb. Tr. like I until counsel: would next Fossil’s 40:2, elaborated on No. EOF Friday, might I be but think able concerns: that, something along the lines stipulate If are not they put- counsel: know, if you they’re established to be in, I think entitled ting it we’re know, counterfeits, then, you we’re not pleadings, particularly on the judgment they’re—you If contesting infringement. counterclaim, they if on their and.... know, know, on validity, I don’t in, to know. we need putting all got re-circle back de- pre- experts. We need need fendants, $28,000 it’s a my but in view response This at pared for their trial. agreement I’m sort of in it’s claim. So game. guessing I think not a litigate everybody’s it at waste time trial, goes entitled point, this we’re *14 point. this are patent whether those issues know Id. at Fossil’s counsel did not 43:11-20. they the Court or whether still before judge’s Romag’s either the trial answer are withdrawn. regarding invalidity questions claims. responded 40:2-11. Fossil’s Id. at counsel support not the ma- This discussion does stipu- offering Romag to by present judge jority’s conclusion that the trial week, “hope” later lation in the invalidity Romag knew that counts elimi- of these be that some issues could already withdrawn.1 It was the “eve nated. trial,” years after than three more So I can counsel: I think that Fossil’s equivocat- pre-trial proceedings, Fossil yet something to get by them the end ed. maybe even hopefully week and we can some eliminate some those issues panel majority The also focuses stipulation. sort conference, exchange pre-trial at a further Id, press Romag 5, at continued being pressed 41:14-17. by March 2014. On held for specificity: that “at this judge, Fossil stated invalidity it point” would not assert counsel: ... as but claim, defenses: [Fos-
merits either pursu- it or pursuing sil’s] [Fossil’s] asserting Court: are the defendants it, why ing don’t we're not see affirmative defenses stage entitled to know at this late art? prior obviousness and claim pursuing or not or [Fossil’s] whether point, your counsel: At Fossil’s we have to motion. whether file a Honor, we going assert those Id. at 42:10-15. defenses. asked, if judge . “intended] The Fossil stipulation Okay. in [the] [it include whether Court: was] portion invalidity of the "at regarding 1. This record intentions trial”—it does show invalidity Fossil defenses be- withdrew its at did not withdraw the n,3. trial, Maj. leading How- the dis- Op, this teleconference. fore to withdrawal ever, Romag's during Fossil stated that it trict court on motion trial. would determine its 5, Conference, Tr. Pretrial Mar. 7:6- portion of [Romag’s] Court: mo- 369. ECF No. Does “at this point” yesterday tion seeking a judgment was change mean that Fossil could not against mind the defendant on the invalidity. point? a later One fault :The Romag represent cannot defendants that they have uncertainty, given their pre- Invalidity that'Fossil had withdrawn defense. viously Romag justice, told that Fossil interest of would “de- withdrawn, termine it at trial.” but it despite And this ex- is withdrawn with prejudice, therefore, change, no judgment still did not withdraw the will enter. But the effect is the invalidity defenses or same for counterclaims. The [Romag]. recognized district court uncertainty, stating “Romag’s decision to continue to Conference, Charge Tr. April 2014, 45:3-
present counter Defendants’ 11, ECF No. 439. invalidity defenses until the claims were portions record cited formally prejudice withdrawn with was en- panel majority do not impugn the district tirely Op. foreseeable.” Dist. Ct. regarding discretion events the tri- panel majority focuses on the trial al judge observed first hand. The plead- judge’s question about the exhibit list at ings, years of trial preparation, and the conference, the March with trial vacillation until begun, after trial had all set to start March 24: support the district court’s discretion finding that this case from out “stands Court: then And there’s several exhibits others” in of its litigation. the manner prior art about that—since we clarified surely required prepare for *15 hearing our last that there’s no inval- issues, trial on the validity including dis- advanced, being idity they covery, depositions, experts, etc. really artifacts that aren’t going to be
offered? if I Let me see can find my C
notes on that. In finding Conference, 18, 2014, an abuse discretion Pretrial
Tr.
Mar.
judge,
155:6-11,
majority
given
has
inade-
No.
ECF
370. The exhibits about
quate
guidance
countenance to the Court’s
art
prior
related to
invalidity
Fossil’s
de-
Fitness,
in Octane
that
fenses, yet they
remained
the Exhibit
trial,
list a week béfore the scheduled
and
an “exceptional”
simply
case is
one that
purported
withdrawal still had not
respect
stands out from
with
others
’ n
implemented.
been
strength
party’s
of a
liti-
substantive
gating position (considering both the
panel majority
The
states that a
also
case)
govérning law
facts of
and the
colloquy concerning
motion
a
filed
Ro-
or the
manner in
unreasonable
31,
mag
2014,
on March
“indicates that the
litigated.
case was
District courts
parties
court and the
were aware
“excep-
determine whether a case is
invalidity defenses’ withdrawal
prior
tri-
case-by-ease
tional” in the
exercise
However,
Maj. Op.
al.”
the trial discretion,
their
considering
totality
begun
day,
a week
earlier.
next
at the
of the circumstances.
conference,
April
charge
2014
the dis-
effectively granted
trict court
Fitness,
the motion Octane
1346 Sandoz, F.3d Inc. v. sound administration
as a matter (Fed. 2015)). disputed It is not Cir. court is better justice, .significant expense and Romag, incurred a case whether positioned decide va- preparing defend burden lives with the exceptional, because lidity, much of which could been period of prolonged a case over been, straightfor- spared more had Fossil multifarious question is time:... [T]he concerning litigation its intentions. ward gen- novel, susceptible to useful court, having observed The district these re- of the sort de novo eralization did,not tactics, its its discretion abuse profit from likely provides, view ’attorney my From fees. limited award an abuse-of-discre- experience colleagues’ contrary ruling, respectfully develop. permit will tion.rule dissent. (internal at 1748-49 Highmark, S.Ct. omitted). quotations citations not abuse its dis court did attorney fees. in the assessment
cretion highly is a deferential of discretion “Abuse ASSOCIATES, LTD., AIRPORT ROAD Bayer Crop- review.” appellate standard Square, Clifford E. Olsen—Delta Oak LLC, AgroSciences v. Dow Science AG. Associates, Limited, Serenity dale Vil (Fed. 2017). In mat Cir. F.3d Partnership Commendam, lage, discretion, especially judicial ters Associates, Ltd., Loui Southeastern procedures,.the appel litigation Partnership, siana Southside Limited in sub exercise restraint late court should Ltd., Apartments, Plaintiffs judge for that of the stituting view who Motorola, spot. generally See Glaises, Ltd., Bayou Bloomfield Des Corp., 121 Interdigital Inc. v. Tech. Partnership II, a Louisiana Partner 1997) (“Questions of Commendam, ship in E. Ol Clifford often the tone ten- involve misconduct sen—College Towne, E. Ol Clifford advocacy, rather than the literal or of Square, sen—Collins a Louisiana *16 instances, In such the advocate. words Commendam, Partnership in Clifford fully convey the printed cold record cannot Towne, E. Clifford Olsen—Hammond might aspects of that a trial South, conduct E. Clifford E. Olsen—Jefferson Thus, egregious. River, this court is careful find Clifford E. Ol Olsen—Old Man substituting Partnership, its assessment E. avoid Clifford sen—Walker Association, 1977-B, Cypress judge experi for those of the who Olsen Cove facts intiffs-Appellants firsthand.”). has them This court enced Pla long recognized judge “[t]he parties the conduct of
better able assess STATES, Defendant-Appellee UNITED is this Id. appearing before than court.” 2016-1542 shown, abuse of has been No discretion of Appeals, States Court United no firm that a “definite and conviction Federal Circuit. mistake Univ. Utah v. has been made.” August Decided: Foerderung Zur Max-Planck-Gesellschaft e.V., der Wissenschaften Vision, 2017) (citing Insite