Tang v. Northpole, Ltd. et al
MEMORANDUM OPINION AND ORDER denying 28 Motion for Attorney Fees. Signed by Honorable Robert T. Dawson on April 6, 2012. (adw)
IN THE UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF ARKANSAS
Case No. 11-5112
NORTHPOLE, LTD. and
TOFASCO OF AMERICA, INC.,
MEMORANDUM OPINION AND ORDER
Currently before the Court is Defendant Northpole, Ltd.’s
Motion for Attorney Fees and Costs.
For the reasons
explained herein, Defendant’s Motion is DENIED.
In February, 2002, Plaintiff advised Defendants Northpole
and Tofasco that a lawsuit could ensue based on what he believed
to be infringement of his patent of a collapsible patio chair.
(Doc. 1, Ex. B).
Nine years later, in April of 2011, Plaintiff
filed a complaint in this Court alleging patent infringement and
seeking an injunction to compel the defendants to discontinue
the manufacturing, marketing and/or selling of any product in
violation of Plaintiff’s patent.
Plaintiff also seeks damages
and an award of attorney’s fees and costs.
On June 10, 2011, Northpole filed a Motion to Dismiss on
believing Plaintiff had abandoned his claim of infringement, and
that it detrimentally relied on Plaintiff’s misconduct.
22, 2011, Plaintiff requested the Court give additional time to
additional time to conduct discovery for his response.
The Court granted Plaintiff until September 16, 2011, to
respond to Northpole’s motion.
(Text Only Order entered July
When Plaintiff had not filed a response by September
dismissing Northpole without prejudice from this matter.
Attorney Fees and Costs, arguing that this case is “exceptional”
and that in the spirit of equity and fairness it should be
Plaintiff’s “baseless allegations of infringement.”
On the same date, Plaintiff moved to join previously dismissed
allegations he would make were the same as those originally
asserted against Northpole and that the facts and allegations
Tofasco. (Doc. 30).
On November 9, 2011, the Court granted
Northpole’s original Motion to Dismiss on the merits.”
memorandum in support of its Motion for Attorney Fees and Costs
“exceptional case” warranting the departure from the traditional
“American Rule” that parties bear their own costs in litigation.
Northpole does not address the other prerequisite for an award
of fees under the cost-shifting statute--the party must be a
The Supreme Court’s decision in Buckhannon Bd. & Care Home,
Inc. v. W.Va. Dep’t of Health & Human Res., 532 U.S. 598 (2001)
sets out the principles that control interpretation of statutes
using the term “prevailing party.”
In Buckhannon, the Supreme
Court addressed whether the term “prevailing party”, a legal
term of art employed in numerous federal statutes, includes “a
party that has failed to secure a judgment on the merits or a
court-ordered consent decree, but that nonetheless achieved the
desired result because the lawsuit brought about a voluntary
petitioners in Buckhannon contended that they were entitled to
attorney’s fees under the so called “catalyst theory,” which
states that a party is a “prevailing party,” even absent any
relief on the merits, if it achieves the desired result because
the lawsuit precipitated a voluntary change in the other party’s
requiring instead a judicially sanctioned change in the parties’
Id. at 605. Therefore, to qualify as a
prevailing party after Buckhannon, a litigant has to obtain a
judgment on the merits, a court-ordered consent decree, or some
other court-ordered action that effects a change in the legal
relationship between the parties.
Although Buckhannon dealt with the Fair Housing Amendments
Act and the Americans with Disabilities Act, the Eighth Circuit
applies broadly to the fee-shifting statutes that employ the
“prevailing party” language.
Cody v. Hillard, 304 F.3d 767 (8th
decree, it was clearly a “judicially sanctioned change” in the
parties’ relationship that conferred prevailing party status on
the class of prisoners which brought long-running prison civil
In Sierra Club v. City of Little Rock, the plaintiff was
awarded summary judgment.
351 F.3d 840 (8th Cir. 2003). Because
the court refused to grant any of the relief plaintiff sought,
In Advantage Media, L.L.C. v. City of Hopkins, Minn., 511
F.3d 833 (8th Cir. 2008), a sign company brought a § 1983 action
alleging that the city’s sign code was unconstitutional.
enforcement of the code and entered the jury’s verdict awarding
no damages to the company, but the court denied the company’s
motion for attorney’s fees.
On appeal, the Eighth Circuit found
that the injunction in this case had not materially affected the
parties’ legal relationship because the constitutionally suspect
provisions of the sign ordinance had never been applied to the
Id. at 838.
The Court in Advantage looked to the
Supreme Court’s recent decision in Sole v. Wyner to support the
status...does not attend achievement of a preliminary injunction
that is reversed, dissolved, or otherwise undone by the final
plaintiff who “secures a preliminary injunction, then loses on
the merits as the case plays out and judgment is entered against
her has won a battle but lost the war.”
Advantage Media at 838
(internal citations omitted).
While it was successful in its attempt to gain dismissal
following what Plaintiff described as his attorney’s “scheduling
Court specifically ordered that Northpole be rejoined as a party
in order for a determination to be made on its Motion to Dismiss
on Grounds of Equitable Estoppel. (Doc. 36).
The Court has not
made any decision as yet on the merits of the parties’ claims
qualify it for prevailing party status.
Unless and until the
Court rules on the Motion to Dismiss and creates a judicially
sanctioned, material alteration of the legal relationship of the
parties, there can be no prevailing party.
Accordingly, Northpole’s Motion for Attorney Fees and Costs
(Doc. 28) is DENIED.
It is so ordered this 6th Day of April, 2012.
/s/ Robert T. Dawson
Honorable Robert T. Dawson
United States District Judge
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