Federal Circuit Limits Attorneys’ Fees in Exceptional Cases
February 5 2016
Two weeks ago, the Federal Circuit Court of Appeals limited the factors a district court may consider in determining the amount of attorneys’ fees to award in an “exceptional” patent infringement case. Lumen View Tech., LLC v. Findthebest.com, Inc. (January 22, 2016) 2016 U.S. App. LEXIS 1087.
Lumen was the exclusive licensee of a patent covering a method for facilitating bilateral and multilateral decisionmaking. The method required analyses of preference data from two groups of people. Findthebest.com (FTB) offered a website with a search feature called “AssistMe” that gave the user information on products and services related to the user’s specific input.
Lumen sued FTB in the Southern District of New York for patent infringement. FTB’s counsel told Lumen on several occasions that FTB’s search method did not use a bilateral or multilateral process. Lumen ignored FTB’s statements, and filed its infringement contentions before obtaining any discovery. FTB then filed a motion for judgment on the pleadings on the grounds that the patent was invalid under 35 U.S.C. §101 as directed to an unpatentable abstract idea. The district court ruled in favor of FTB and dismissed the case. FTB then filed a motion seeking a determination that the case was “exceptional” under 35 U.S.C. §285 and for recovery of its attorneys’ fees on that grounds.
The district court ruled that the case was exceptional and that FTB was entitled to fees. The court awarded FTB the lodestar amount with a multiplier of two, for a total of about $300,000. The court found that the multiplier was justified in order to deter Lumen from filing similar frivolous lawsuits in the future. The court said that the lodestar amount was too small, because the case had been resolved at an early stage, to be an effective deterrent, and so chose to use the multiplier of two.
On appeal, the Federal Circuit affirmed the district court’s exceptional case ruling. The determination of whether a case is “exceptional” is within the district court’s discretion. The test is the “totality of the circumstances” test set forth by the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749 (2014). The appellate court explained that a district court may find a case exceptional based on the strength of a party’s litigation position (considering the facts and the law) or on the unreasonableness of a party’s litigation conduct. The district court had based its finding on the fact that Lumen did not conduct any pre-filing investigation or infringement analysis, and that Lumen’s own claim construction required the use of preference data from multiple parties. The appellate court held that the district court had not abused its discretion in finding the case exceptional:
“The allegations of infringement were ill-supported, particularly in light of the parties’ communications and the proposed claim constructions, and thus the lawsuit appears to have been baseless. Claim construction was unnecessary before finding noninfringement in this case, especially because Lumen View conceded that the claims require preference data from multiple parties.”
As to the district court’s fee award, the Federal Circuit vacated the award and remanded the case. Lumen had argued on appeal that the district court had impermissibly based its enhancement of the lodestar on the need for deterrence, a factor that was already considered in the finding of an exceptional case.
The appellate court explained that the district court has the discretion to decide the amount of reasonable attorneys’ fees to be awarded under §285. In certain cases, the court may enhance the lodestar amount to consider factors that are not covered by the lodestar. For example, the lodestar may be enhanced when the attorney’s time or hourly rate does not reflect the “true market value” of the work performed because the attorney was particularly specialized or because extraordinary litigation expenses were incurred. Factors that are unrelated to the performance of the prevailing party’s counsel, however, are not appropriate in enhancing the lodestar.
In this case, the appellate court held found that the district court had not justified its decision to enhance the lodestar two-fold. According to the court, deterrence cannot be considered in deciding the amount of attorneys’ fees to be awarded under §285. The court vacated the fee award and remanded the case to the district court for further consideration of the amount to be awarded.