KX Tech LLC v. Dilmen LLC et al

Filing 50

REPORT AND RECOMMENDATION. For the reasons set forth in the attached, the Court recommends that $36,200.02 be awarded to plaintiff as reasonable attorney's fees and costs. 30 pages. Objections due by 7/12/2017. Signed by Judge Sarah A. L. Merriam on 6/28/2017. (Katz, S.)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
------------------------------x
:
KX TECH LLC
:
:
v.
:
:
DILMEN LLC, et al.
:
:
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Civ. No. 3:16CV00745(CSH)

June 28, 2017

REPORT AND RECOMMENDATION
Plaintiff KX Tech LLC (“plaintiff”) brought this action
alleging patent infringement pursuant to 35 U.S.C. §1, et seq.
and the Connecticut Unfair Trade Practices Act (“CUTPA”) against
defendants Dilmen LLC and Huseyin Dilmen (hereinafter
collectively referred to as the “defendants”). [Doc. #1]. On
February 15, 2017, Judge Charles S. Haight granted plaintiff’s
unopposed motion for default judgment, and referred this matter
to the undersigned for purposes of conducting an inquest as to
the appropriate amount of damages, costs and attorney’s fees to
be awarded, if any. See Doc. #34 at 9-10. A formal referral for
this purpose was entered on February 15, 2017. [Doc. #35]. For
the reasons set forth below, the Court recommends that
$36,200.02 be awarded to plaintiff as reasonable attorney’s fees
and costs.

1

I.

Procedural Background1
Plaintiff commenced this action against defendants on May

17, 2016, alleging infringement of four of plaintiff’s patents.
See generally Doc. #1, Complaint. Defendants were served on June
26, 2016. [Doc. ##8, 9]. Defendants filed an Answer to the
Complaint on August 18, 2016. [Doc. #20]. On November 2, 2016,
counsel for defendants filed a motion to withdraw as attorneys
of record because defendants terminated defense counsel’s
representation and instructed counsel to withdraw their
appearances. See Doc. #23 at 1. On November 10, 2016, Judge
Haight entered an electronic order regarding the motion to
withdraw, stating in pertinent part that:
Defendant Dilmen, LLC is advised to obtain counsel and
have them enter an appearance on or before November
23, 2016 and Huseyin Dilmen is advised to either
obtain counsel and have them enter an appearance on
or before November 23, 2016 or enter a pro se
appearance by that date. If Defendants do not do so,
then a default judgment may be entered against
Defendants once the motion to withdraw is granted by
this Court.
Doc. #24 (emphases in original). Defendants failed to comply
with Judge Haight’s November 10, 2016, Order. As a result, Judge
Haight granted the motion to withdraw and cautioned: “Defendants
are now left without an appearance entered in this matter and

The Court presumes familiarity with the general factual
background of this matter, which is set forth in Judge Haight’s
Ruling on Plaintiff’s Motion for Default Judgment. See Doc. #34
at 5-7.
1

2

are at risk of default judgment should Plaintiff so move this
Court.” Doc. #25.
On December 14, 2016, plaintiff filed a Motion for Default
Entry 55(a) and Motion for Default Judgment against defendants.
[Doc. #26]. On December 15, 2016, Judge Haight granted
plaintiff’s Motion for Default Entry 55(a), and denied, without
prejudice, plaintiff’s Motion for Default Judgment. [Doc. #28].
On January 11, 2017, plaintiff re-filed its Motion for Default
Judgment [Doc. #29], which Judge Haight granted as to liability
on February 15, 2017. [Doc. #34]. Judge Haight also enjoined
defendants “from making, using, offering for sale or selling any
and all goods which infringe on Plaintiff’s asserted United
States patents[.]” Id. at 9. Judge Haight referred plaintiff’s
request for damages, costs and attorney’s fees to the
undersigned for an inquest as to the appropriate amount, if any,
to be awarded. See id.; see also Doc. #35. Default judgment as
to liability on all of plaintiff’s claims was entered against
defendants on February 16, 2017. [Doc. #37].
On February 23, 2017, the undersigned held a telephonic
conference with counsel for plaintiff to discuss Judge Haight’s
referral and the scheduling of an evidentiary hearing. [Doc.
##38, 39]. During this call, the Court directed counsel for
plaintiff to file a supplemental memorandum in support of
plaintiff’s request for damages. See Doc. #40. On March 22,
3

2017, plaintiff filed a Motion for Hearing on Damages, Costs and
Attorney’s Fees. [Doc. #42]. On this same date, the Court
granted plaintiff’s motion and scheduled an evidentiary hearing
for April 20, 2017. [Doc. ##43, 44].
On March 22, 2017, the Court also entered an Order
requiring plaintiff to file a pre-hearing memorandum of law.
[Doc. #45]. The Court ordered plaintiff to cause a copy of the
Order to be served on defendants by April 13, 2017, and for
plaintiff to file a proof of service. See id. at 3.
Plaintiff timely filed its pre-hearing memorandum of law on
April 10, 2017. [Doc. #46]. In its memorandum, plaintiff
represented that it elected not to pursue damages, and instead
would seek only an award of costs and attorney’s fees pursuant
to 35 U.S.C. sections 284 and 285. See id. at 3-4. In light of
this representation, and plaintiff’s assertion that it intended
to solely rely on affidavits and documentary evidence to support
its claim for fees and costs, see id. at 2, on April 12, 2017,
the Court issued an Order canceling the April 20, 2017,
evidentiary hearing. See Doc. #47. The Court provided defendants
until April 28, 2017, to object to the costs and fees sought.
See id. The Court also ordered plaintiff to mail a copy of this
Order to defendants at their last known address. See id.

4

Defendants have filed no objection to plaintiff’s request for
costs and fees.2
II.

Discussion
“When the Court enters a default judgment, it must accept

as true all of the factual allegations of the complaint, but the
amount of damages are not deemed true.” Tiffany (NJ) Inc. v.
Luban, 282 F. Supp. 2d 123, 124 (S.D.N.Y. 2003) (internal
citation and quotation marks omitted). Accordingly, “[t]he
district court must instead conduct an inquiry in order to
ascertain the amount of damages with reasonable certainty.”
Credit Lyonnais Sec. (USA), Inc. v. Alcantara, 183 F.3d 151, 155
(2d Cir. 1999) (citation omitted). Such an inquest “involves two
tasks: determining the proper rule for calculating damages on
such a claim, and assessing plaintiff’s evidence supporting the
damages to be determined under [Rule 55].” Id.
“Because the default order entered in this case establishes
[defendants’] liability, the only remaining issue is whether
[plaintiff] has supplied adequate support for the relief it
seeks.” Keystone Glob. LLC v. Auto Essentials, Inc., No.

Plaintiff attempted to serve the defaulted defendants with a
copy of plaintiff’s Memorandum of Law and the Court’s March 22,
2017, and April 12, 2017, Orders, but the package was returned
to plaintiff as undeliverable. See Doc. #49. Plaintiff’s counsel
represents that “Defendants have left this country under
deportation orders, and have not provided any contact
information either to Plaintiff or the Court[.]” Id. at 2.
2

5

12CV9077(DLC), 2015 WL 224359, at *3 (S.D.N.Y. Jan. 16, 2015)
(internal citations omitted) (collecting cases). “By its terms,
[Rule] 55(b)(2) leaves the decision of whether a hearing is
necessary to the discretion of the district court.” Fustok v.
ContiCommodity Servs., Inc., 873 F.2d 38, 40 (2d Cir. 1989). A
hearing is not necessary as long as the Court “ensure[s] that
there was a basis for the damages specified in a default
judgment.” Id. When a hearing is not deemed necessary, it is
appropriate for the Court to rely “upon detailed affidavits and
documentary evidence[.]” Id.; accord Keystone, 2015 WL 224359,
at *3 (“The Second Circuit has held that a damages inquest may
be held on the basis of documentary evidence alone as long as
the court has ensured that there was a basis for the damages
specified in the default judgment.” (citing Fustok, 873 F.2d at
40 (internal quotation marks omitted))); IPVX Patent Holdings,
Inc. v. Taridium, LLC, No. 12CV5251(KAM)(SMG), 2014 WL 4437294,
at *2 (E.D.N.Y. Aug. 6, 2014) (“A court may make this
determination based upon evidence presented at a hearing or upon
a review of detailed affidavits and documentary evidence.”
(collecting cases)), report and recommendation adopted, 2014 WL
4437307 (Sept. 9, 2014); Cadlerock Joint Venture, L.P. v. Prado,
No. 07CV1207(JS)(WDW), 2008 WL 4561611, at *2 (E.D.N.Y. Oct. 7,
2008) (“The amount of damages can be determined without a
hearing as long as the court satisfies itself, through review of
6

documentary evidence or affidavits, that the amount is
reasonable.” (citing Transatlantic Marine Claims Agency, Inc. v.
Ace Shipping Corp., 109 F.3d 105, 111 (2d Cir. 1997))).
Here, plaintiff has provided two declarations and other
documentary evidence supporting its claims for infringement, an
award of attorney’s fees and costs, and additional details
concerning defendants’ post-judgment activities. See generally
Doc. ##46-2, 46-3. Defendants have not submitted any opposition
to the materials provided by plaintiff. Because plaintiff’s
declarations and documentary submissions provide a basis for an
award of the fees and costs sought, no hearing is required. See
IPVX Patent Holdings, 2014 WL 4437294, at *2-3.
A. Exceptional Case
Plaintiff contends that this case should be deemed
“exceptional” in light of “Defendants’ conduct, and Defendants’
continuing actions to evade detection and enforcement[.]” Doc.
#46 at 7. In support of this position, plaintiff specifically
relies on: (1) defendants’ failure to defend the case; (2)
defendants’ willful refusal to respond to plaintiff’s discovery
requests, leaving plaintiff with no basis upon which to support
a request for damages; (3) defendants’ disregard of two cease
and desist letters; and (4) defendants’ continued sales of the
infringing products under a different name in an attempt to
evade plaintiff’s cease and desist demand. See id. at 7-8.
7

1. Applicable Law
“Section 285 of the Patent Act authorizes a district court
to award attorney’s fees in patent litigation. It provides, in
its entirety, that ‘[t]he court in exceptional cases may award
reasonable attorney fees to the prevailing party.’” Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749,
1752 (2014) (quoting 35 U.S.C. §285). Construing section 285,
the Supreme Court held
that an “exceptional” case is simply one that stands out
from others with respect to the substantive strength of
a party’s litigating position (considering both the
governing law and the facts of the case) or the
unreasonable manner in which the case was litigated.
District courts may determine whether a case is
“exceptional” in the case-by-case exercise of their
discretion,
considering
the
totality
of
the
circumstances.
Id. at 1756 (footnote omitted). In making such a determination,
“there is no precise rule or formula” to be followed; rather,
the Court should use its “equitable discretion” in light of the
above considerations. See id. (quoting Fogerty v. Fantasy, Inc.,
510 U.S. 517, 534 (1994)); see also id. at n.6 (In making this
determination, district courts may “consider a ‘nonexclusive’
list of ‘factors,’ including ‘frivolousness, motivation,
objective unreasonableness (both in the factual and legal
components of the case) and the need in particular circumstances
to advance considerations of compensation
and deterrence.’” (citation omitted)).
8

“Section 285 demands a simple discretionary inquiry; it
imposes no specific evidentiary burden[.] Indeed, patentinfringement litigation has always been governed by a
preponderance of the evidence standard[.]” Id. at 1758 (citing
Bene v. Jeantet, 129 U.S. 683, 688 (1889)). In determining
whether plaintiff has established that this matter is
“exceptional,” for purposes of an award of attorney’s fees
pursuant to 35 U.S.C. §285, the Court thus applies a
preponderance of the evidence standard.
2. Findings of Fact3
Judge Haight’s Ruling on Motion for Default Judgment
establishes that defendants infringed plaintiff’s patents, and
are liable for such infringement. See generally Doc. #34 at 5-7;
see also id. at 7 (“Plaintiff has established its claims of
patent infringement, and is entitled to default judgment on each
of those claims.”). Accordingly, here, the Court focuses its
attention on whether the circumstances of this case are
“exceptional,” so as to support an award of attorney’s fees
pursuant to 35 U.S.C. §285.

The Court’s findings of fact are based on the allegations of
the Complaint regarding liability and the admissible evidence
regarding attorney’s fees and costs contained in plaintiff’s
submissions. See Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty
Corp., 973 F.2d 155, 158 (2d Cir. 1992); see also Keystone, 2015
WL 224359 at *3.
3

9

Plaintiff is the assignee and rightful owner of two United
States Patents, Nos. 8,673,146 and 8,137,551, issued on March
18, 2014, and March 20, 2012, respectively. See Doc. #1,
Complaint at ¶15; see also Doc. #1-7, #1-8, Complaint at Exs. F,
G. These patents relate to the filter housing assembly for water
filters installed in refrigerators by the manufacturer
(hereinafter referred to as the “Push-Push Technology Patents”).
See Doc. #1, Complaint at ¶¶16-19; see also Doc. #1-9, Complaint
at Ex. H. On December 9, 2015, plaintiff notified defendants via
a cease and desist letter that defendants -- through the sale of
filter cartridges sold by Coral Premium Water Filters and Mirage
Basics -- were offering for sale and/or selling water filters
that infringed plaintiff’s Push-Push Technology Patents. See
Doc. #46-2, April 7, 2017, Pegnataro Declaration (hereinafter
“Pegnataro Decl.”) at Ex. 2; see also Doc. #1, Complaint at
¶¶20, 27, 39; Doc. #1-9, Complaint at Ex. H. An agent for
defendants, “Dilmen,” signed a United Sates Postal Service
Return Receipt for the December 9, 2015, cease and desist
letter. See Doc. #46-2, Pegnataro Decl. at Ex. 2; see also Doc.
#1-9, Complaint at Ex. H.4

In the 26(f) Report, the parties set forth, in pertinent part,
the following “Statement of Undisputed Facts”: (1) “Defendant
Dilmen LLC d/b/a Coral Premium Water Filters performs business
under the umbrella entity of Performancesupplies (at
Amazon.com)[;]” (2) “Defendant Huseyin Dilmen is the sole
operator and owner of Dilmen LLC d/b/a Coral Premium Water
4

10

Plaintiff is also the assignee and rightful owner of four
additional patents, Nos. D656,578, D656,579, D656,580, and
9,061,225, the first three of which were issued on March 27,
2012, and the last on June 23, 2015. See Doc. #1, Complaint at
¶21; see also Doc. #1-10, #1-11, #1-12, #1-13, Complaint at Exs.
I, J, K, L. These patents relate to cassette filer cartridges
installed in refrigerators by the manufacturer (hereinafter
referred to as the “Cassette Filer Technology Patents”). See
Doc. #1, Complaint at ¶¶22-23; see also Doc. #1-14, Complaint at
Ex. M. On November 11, 2015, plaintiff notified defendants via a
cease and desist letter that defendants -- through the sale of
cassette filters sold by Coral Premium Water Filters and Mirage
Basics -- were offering for sale and/or then selling water
filters that infringed plaintiff’s Cassette Filter Technology
Patents. See Doc. #46-2, Pegnataro Decl. at Ex. 1; see also Doc.
#1, Complaint at ¶¶24, 50, 59; Doc. #1-14, Complaint at Ex. M.
An agent for defendants, “Dilmen,” signed a United Sates Postal
Service Return Receipt for the November 11, 2015, cease and

Filters[;]” (3) “Defendant Huseyin Dilmen is the sole owner of
the United States Trademark Registration No. 4,798,472 for
selling product in interstate commerce under the mark CORAL
PREMIUM WATER FILTERS, including water filters for
refrigerators[;]” and (4) “Defendant Huseyin Dilmen is the sole
owner of the United States Trademark Application Serial No.
86/613,293 for selling water filters in interstate commerce
under the mark MIRAGE BASICS.” Doc. #21 at 5.
11

desist letter. See Doc. #46-2, Pegnataro Decl. at Ex. 1; see
also Doc. #1-14, Complaint at Ex. M.
On February 16, 2016, plaintiff’s Attorney Robert Curcio
emailed defendant Dilmen and demanded that defendants remove the
“infringing Coral filters” from sale on Amazon.com. Doc. #46-2,
Pegnataro Decl. at Ex. 3; see also Doc. #1, Complaint at ¶25;
Doc. #1-15, Complaint at Ex. N.
After receiving the November 15, 2015, December 9, 2015,
and February 16, 2016, notices, defendants began offering for
sale and/or selling the infringing products under a different
label, in an attempt to conceal their ongoing infringing
activities. See Doc. #46-2, Pegnataro Decl. at ¶7; see also id.
at Ex. 4; Doc. #1, Complaint at ¶70; Doc. #34 at 7 (Ruling on
Motion for Default Judgment: “Accepting Plaintiff’s allegations
as true and having reviewed the present record before the Court,
Defendants began offering for sale and/or selling the infringing
products under a different label in an attempt to again evade
and undermine Plaintiff’s intellectual property rights.”).
Plaintiff filed its Complaint on May 17, 2016. [Doc. #1].
Counsel for defendants filed notices of appearance in July and
August, 2016. See Doc. ##11, 18, 19. An answer to the Complaint
was filed on August 18, 2016. [Doc. #20]. The parties filed
their Rule 26(f) Report on September 28, 2016, in which they
anticipated discovery would be needed on, inter alia, “whether
12

and to what extent [plaintiff] has suffered damages, loss of
profits, or other alleged compensable injuries.” Doc. #21 at 6.
About a month later, on November 2, 2016, counsel for defendants
filed a motion to withdraw their appearances, asserting that
defendants had “informed [counsel] that they are terminating the
attorney-client relationship and have instructed [counsel] to
withdraw from further representation in this matter.” Doc. #23
at 1. On November 10, 2016, Judge Haight entered an order
stating that the motion to withdraw would be granted on November
23, 2016, for good cause shown. See Doc. #24. In this same
Order, Judge Haight required that by November 23, 2016,
defendants obtain counsel and have counsel enter an appearance,
or alternatively for defendant Dilmen, that he enter a pro se
appearance. See Doc. #24. Judge Haight cautioned defendants that
failure to enter such appearances could result in the entry of a
default judgment in plaintiff’s favor once the motion to
withdraw was granted. See id. On November 23, 2016, Judge Haight
granted the motion to withdraw and again cautioned: “Defendants
are now left without an appearance entered in this matter and
are at risk of default judgment should Plaintiff so move this
Court.” Doc. #25.5

The Court infers from the docket that because defendants fired
their counsel shortly after the 26(f) Report was filed, and
where defendants failed to thereafter appear, plaintiff was not
provided an opportunity to conduct meaningful discovery. See
5

13

Plaintiff filed a motion for default and motion for default
judgment on December 14, 2016. [Doc. #26]. Judge Haight granted
the motion for default, but declined to enter default judgment
in light of the two-step process required by Federal Rule of
Civil Procedure 55. See Doc. #28 (quoting City of New York v.
Mickalis Pawn Shop, LLC, 645 F.3d 114, 128 (2d Cir. 2011)).
Judge Haight’s Order further provided: “If no motion to set
aside this entry of default is filed by January 6, 2017, then
Plaintiff may renew its Motion for Default Judgment and Motion
for Attorneys Fees ... on or before January 16, 2016[.]” Id.
(sic) (emphasis removed). Pursuant to this Order, plaintiff
filed a renewed motion for default judgment on January 11, 2017.
See Doc. #29. Judge Haight deferred consideration of the renewed
motion until defendants were provided with adequate notice of
the default. See Doc. #30.6

Fed. R. Civ. P. 26(d)(1) (“A party may not seek discovery from
any source before the parties have conferred as required by Rule
26(f)[.]”). Plaintiff’s attorneys’ billing records suggest that
defendants made “inadequate” initial disclosures. See Doc. #463, April 7, 2017, Declaration of Sheila Panza in Support of
Plaintiff’s Memorandum of Law Regarding Costs and Attorney’s
Fees (“Panza Decl.”) at Ex. 1, Time and Expense Details report
(“Legal research regarding lack of initial disclosure from
defendant.”).
On January 30, 2017, the Court received a letter motion from
defendants requesting that this matter be “postponed” as
defendant Dilmen “was ordered to be deported on 11/17/16 by
immigration judge, therefore I am not in USA and I do not have
an attorney[.]” Doc. #32. Judge Haight denied this “purported
letter motion” on several grounds. See Doc. #33.
6

14

On February 15, 2017, Judge Haight granted plaintiff’s
unopposed motion for default judgment. [Doc. #34]. In addition
to finding defendants liable on all counts of plaintiff’s
Complaint, Judge Haight also found that a “permanent injunction
is warranted[,]” and permanently enjoined defendants “from
infringing on the Push Technology Patents and the Cassette
Technology Patents held and assigned to Plaintiff[.]” Doc. #34
at 8. Judge Haight further stated:
[G]iven that Defendants continue to advertise and seek
to sell these products on the internet, the Court will
grant Plaintiff, as set forth below, the additional
relief sought regarding the destruction of infringing
products and an order to cease advertising them.
Defendants must vacate or otherwise destroy the
infringing
products,
advertisements,
catalogs,
brochures and to alter all internet sites promoting the
infringing goods to remove [any] and all references to
the infringing products.
Id. at 8-9 (alteration and emphasis added); see also id. at 910. Despite this explicit order, defendants have continued to
offer for sale and/or sell the infringing products. See Doc.
#46-2, Pegnataro Decl. at ¶¶8-9; see also id. at Ex. 5.
3. Conclusions of Law
After considering the totality of the circumstances, the
Court finds that this case is “exceptional,” and an award of
attorney’s fees is proper.7 The combination of (1) defendants’

In light of the default judgment of liability entered against
defendant, plaintiff is the “prevailing party” for purposes of
35 U.S.C. §285. See, e.g., Shariff v. Alsaydi, No.
7

15

litigation misconduct, (2) the strength of plaintiff’s
litigation position, (3) the willful infringement of plaintiff’s
patents, (4) the disregard of Judge Haight’s permanent
injunction, and (5) the need for deterrence, supports this
conclusion.
First, defendants frustrated the litigation process by
failing to participate in the defense of this matter. Rather
than defend this action, defendants instead chose to terminate
their attorneys shortly after the filing of the answer and Rule
26(f) Report. See Doc. ##20, 21, 23. As a result, plaintiff was
unable to obtain meaningful discovery, including discovery
related to its potential damages. See Doc. #21 at 6. Therefore,
although liability has been established, plaintiff has been left
“with no basis for predicting (and therefore, requesting)
damages under either a lost profits theory or a reasonably
royalty theory.” Doc. #46 at 8 (sic). The timing of defendants’
termination of counsel’s representation, and defendants’
subsequent failure to participate in the defense of this matter,
appear to be deliberate attempts to frustrate the litigation
process. Cf. Sprint Commc’ns Co. L.P. v. Chong, No.

11CV6377(FB)(SMG), 2013 WL 4432218, at *4 (E.D.N.Y. Aug. 15,
2013) (“Having obtained a default judgment against defendants,
plaintiff is a prevailing party eligible to recover attorney’s
fees and costs.” (citation omitted)).
16

13CV3846(RA), 2014 WL 6611484, at *5 (S.D.N.Y. Nov. 21, 2014)
(awarding attorney’s fees in Lanham Act case deemed exceptional
where party, among other factors, “frustrated the litigation
process by failing to participate, ... obstructed the plaintiffs
and caused unnecessary delay”).
Second, the strength of plaintiff’s litigation position may
be inferred from defendants’ default, as “an innocent party
would presumably have made an effort to defend itself.” Chloe v.
Zarafshan, No. 1:06CV3140(RJH)(MHD), 2009 WL 2956827, at *7
(S.D.N.Y. Sept. 15, 2009) (collecting cases). This too supports
an “exceptional” case finding.
Third, defendants have continued to offer the infringing
products for sale after receiving notice of the infringement.
See generally Doc. #46-2, Pegnataro Decl. at Exs. 1, 2, 3.
Further, after receiving such notice, defendants began offering
for sale and/or selling the infringing products under a
different label, in an attempt to evade and undermine
plaintiff’s intellectual property rights. See Doc. #46-2,
Pegnataro Decl. at ¶7; see also id. at Ex. 4; Doc. #1, Complaint
at ¶70; Doc. #34 at 7. This willful infringement of plaintiff’s
patents also supports a finding that this case is “exceptional.”
Indeed, plaintiff’s allegations of defendants’ willful
infringement are deemed admitted by virtue of defendants’
default. See Doc. #1, Complaint at ¶¶35, 46; Cf. Malletier v.
17

Carducci Leather Fashions, Inc., 648 F. Supp. 2d 501, 504
(S.D.N.Y. 2009) (“Here, by virtue of its default, [defendant]
has admitted [plaintiff’s] allegation that it acted knowingly
and intentionally or with reckless disregard or willful
blindness to [plaintiff’s] rights.” (citation omitted)
(alterations added)). An inference of willfulness may be drawn
from defendants’ default. Cf. Fallaci v. New Gazette Literary
Corp., 568 F. Supp. 1172, 1173 (S.D.N.Y. 1983) (“[W]e draw a
further inference of willfulness from the defendant’s failure to
appear and defend this action, especially in light of
plaintiff’s allegation of willfulness[.]”). Accordingly, this
combined with the other factors considered herein weighs in
favor of an award of attorney’s fees under 35 U.S.C. §285. See,
e.g., Keystone, 2015 WL 224359, at *7 (awarding reasonable
attorney’s fees in patent infringement action where defendants
willfully infringed plaintiff’s patents).
Fourth, even after Judge Haight permanently enjoined
defendants from “offering for sale or selling any and all goods
which infringe Plaintiff’s asserted United States patents[,]”
see Doc. #34 at 9-10, defendants continued to offer the
infringing products for sale, thereby flouting the Orders of the
District Court. See Doc. #46-2, Pegnataro Decl., at ¶¶8-9; id.

18

at Ex. 5.8 This too supports a finding that this case is
“exceptional.”
Finally, the Court considers the particular circumstances
here and the need “to advance considerations of compensation and
deterrence.” Octane Fitness, 134 S. Ct. at 1756 n.6 (citation
omitted). Given defendants’ refusal to acknowledge plaintiff’s
several cease and desist letters, and their apparent violation
of Judge Haight’s permanent injunction, an award of attorney’s
fees in this case may serve to deter any further infringement of
plaintiff’s patents. See, e.g., Gust, Inc. v. AlphaCap Ventures,
LLC, No. 15CV6192(DLC), 2016 WL 7165983, at *9 (S.D.N.Y. Dec. 8,
2016) (finding “‘deterrence prong’ of the Octane Fitness test
also weigh[ed] in favor of an exceptional case finding”).
Section 285 is remedial and its aim “is to compensate a [party]
for attorneys’ fees it should not have been forced to incur.”

Plaintiff offers screenshots of Amazon.com dated March 29,
2017, to “demonstrate the infringing cartridges are still being
offered for sale under the Coral Filter label by defendant Coral
Premium Water Filters after the order for Default Judgment.”
Doc. #46-2, Pegnataro Decl. at ¶9; see also id. at Ex. 5. While
this exhibit is “hardly sufficient [itself] to establish
infringement (which, however, has already been established by
the allegations of the Complaint and defendant’s default), these
screenshots do show that [defendants] had been offering for
sale” the products Judge Haight enjoined defendants from selling
on February 15, 2017. IPVX Patent Holdings, 2014 WL 4437294, at
*3.
8

19

Kilopass Tech., Inc. v. Sidense Corp., 738 F.3d 1302, 1313 (Fed.
Cir. 2013).
Accordingly, the Court recommends that this case be
classified as “exceptional” pursuant to 35 U.S.C. §285, and that
plaintiff be awarded its reasonable attorney’s fees. Cf. Cognex
Corp. v. Microscan Sys., Inc., No. 13CV2027(JSR), 2014 WL
2989975, at *4 (S.D.N.Y. June 30, 2014) (applying Octane Fitness
standard to award attorney’s fees to plaintiffs in patent
infringement case where the jury found willful infringement and
where defendant had “engaged in unreasonable litigation tactics
that ... wasted the Court’s time and ... required plaintiffs to
expend significant resources”).
B. Reasonable Attorney’s Fees
Plaintiff’s memorandum seeks $34,712.50 in attorney’s fees.
See Doc. #46 at 9. The declaration submitted in support of the
fees sought and the supporting documentation, however, seek a
total of $38,562.50. See Doc. #46-3, Panza Decl. at ¶6; see also
id. at Ex. 1, Time and Expense Details report. For purposes of
below, the Court assumes plaintiff seeks an award for the higher
amount.
“The district court retains discretion to determine what
constitutes a reasonable fee.” Millea v. Metro-N. R. Co., 658
F.3d 154, 166 (2d Cir. 2011) (citation and internal quotation
marks omitted). However, such “discretion is not unfettered,”
20

and “the district court must abide by the procedural
requirements for calculating those fees articulated by [the
Second Circuit] and the Supreme Court.” Id. Both of these courts
“have held that the lodestar — the product of a reasonable
hourly rate and the reasonable number of hours required by the
case — creates a ‘presumptively reasonable fee.’” Id.
(collecting cases). “The presumptively reasonable fee boils down
to what a reasonable, paying client would be willing to pay,
given that such a party wishes to spend the minimum necessary to
litigate the case effectively.” Simmons v. N.Y. City Transit
Auth., 575 F.3d 170, 174 (2d Cir. 2009) (citation and internal
quotation marks omitted)). To determine the presumptively
reasonable fee a district court must engage in the following
four-step process: “(1) determine the reasonable hourly rate;
(2) determine the number of hours reasonably expended; (3)
multiply the two to calculate the presumptively reasonable fee;
and (4) make any appropriate adjustments to arrive at the final
fee award.” Parris v. Pappas, 844 F. Supp. 2d 262, 266 (D. Conn.
2012) (citation and internal quotations marks omitted).
1. Reasonable Hourly Rate
The Court first turns to the hourly rate sought, here:
$350-$400 for Attorney Robert Curcio9; $400 for Attorney Peter W.

The Time and Expense Details report reflects that Attorney
Curcio billed at the rate of $350 per hour in 2015 and between
9

21

Peterson; $275 for Attorney David Pegnataro; and $225 for Patent
Agent Thomas Ciesco. See Doc. #46-3, Panza Dec. at ¶5. In
determining the reasonableness of the hourly rate sought, the
Court is guided by the following principles:
The court must determine the reasonable hourly rate by
reference to the prevailing market rates in the relevant
community, for similar services by lawyers of reasonably
comparable skill, experience, and reputation. The
relevant community is the district in which the case is
litigated. The burden rests with the prevailing party to
justify the reasonableness of the requested rate. The
attorney should establish his hourly rate with
satisfactory evidence — in addition to the attorney’s
own affidavits. The court may also rely on judicial
notice of the rates awarded in prior cases and the
court’s own familiarity with the rates prevailing in the
district. The specific rate that is reasonable for a
given attorney depends on such factors as the attorney’s
experience and expertise, the novelty and complexity of
the issues presented, and the overall success achieved
in the case.
Hugee v. Kimso Apartments, LLC, 852 F. Supp. 2d 281, 298
(E.D.N.Y. 2012) (internal citations and quotation marks
omitted). Generally, when assessing whether the hourly rates
sought are reasonable, the Court first reviews the billing
party’s background and experience. See Wise v. Kelly, 620 F.
Supp. 2d 435, 443 (S.D.N.Y. 2008) (citations omitted).
Here, plaintiff has failed to meet its burden of
establishing the reasonableness of the requested hourly rates.
The record before the Court is devoid of information by which to

$375 and $400 per hour in 2017. See Doc. #46-3, Panza Decl. at
Ex. 1, Time and Expense Details report.
22

assess the reasonableness of the rates requested for any of the
three identified attorneys, or the patent clerk. The
declarations submitted in support of plaintiff’s request for
attorney’s fees provide no information about any of the
attorneys’ legal education, professional experience, number of
years of practice, or any other facts that would permit an
informed assessment of the reasonableness of the hourly rates
sought. The declarations similarly lack any telling information
as to the patent clerk’s background. Further, although the Court
assumes from the hourly rates sought that Attorneys Curcio and
Peterson are partners, and Attorney Pegnataro an associate, even
this basic information is not provided.
Nevertheless, the Court takes judicial notice of the
billing rates customarily awarded in this District. See Farbotko
v. Clinton Cty. of N.Y., 433 F.3d 204, 209 (2d Cir. 2005)
(Courts may take “judicial notice of the rates awarded in prior
cases and the court’s own familiarity with the rates prevailing
in the district.” (collecting cases)); Wise, 620 F. Supp. 2d at
442 (“In deciding what reasonable rates are in the community,
the court may rely upon its own knowledge of private firm hourly
rates, and may take judicial notice of a law firm’s reputation
for high quality work.” (internal citations and quotation marks
omitted)). In September 2015, Judge Arterton awarded, absent
objection, hourly rates between $300 and $425 for experienced
23

partners litigating an intellectual property matter in this
District. See Romag Fasteners, Inc. v. Fossil, Inc., No.
3:10CV1827(JBA), 2016 WL 1192648, at *2 (D. Conn. Mar. 28,
2016); see also Sony Elecs., Inc. v. Soundview Techs., Inc., 389
F. Supp. 2d 443, 448 (D. Conn. 2005) (awarding hourly rate of
$400 to “a litigation partner with substantial experience in the
litigation of patent and antitrust issues”). Although it is
unclear whether Attorney Pegnataro is an associate, Courts in
this district have recently awarded between $225 and $275 per
hour for experienced associates. See, e.g., Bridgeport & Port
Jefferson Steamboat Co. v. Bridgeport Port Auth., No.
3:03CV599(CFD), 2011 WL 721582, at *6 (D. Conn. Feb. 22, 2011);
Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., No.
3:10CV60(JBA), 2012 WL 4092515, at *2 (D. Conn. Sept. 17, 2012)
(awarding $225 per hour to second year patent associate);
Crawford v. City of New London, No. 3:11CV1371(JBA), 2015 WL
1125491, at *3 (D. Conn. Mar. 12, 2015) (awarding $250 per hour
to associate who had been practicing law for eight years and
noting this rate “appears to be in line with the rates charged
by other associates with his level of experience”). Although the
rates billed by Attorneys Curcio, Petersen and Pegnataro appear
commensurate with those customarily billed in Connecticut, this
is not enough to support a finding that the full hourly rates
sought are reasonable, as “[a]n attorney who seeks payment from
24

his client’s adversary must make some factual showing that he is
worthy of the rates he charges.” Kahn v. Gen. Motors Corp., No.
88CV2982(PNL), 1992 WL 208286, at *3 (S.D.N.Y. Aug. 14, 1992).
Accordingly, because plaintiff provided no information
concerning the background and experience of any attorney that
might explain the differing hourly rates at which their services
were billed, or which might provide the Court a means by which
to assess whether the billed hourly rates are reasonable, the
Court recommends a reduction of ten percent (10%) from the total
amount claimed for billed attorney time. See id. (deducting 20%
from total amount claimed where there was no evidence of record
justifying reasonableness of hourly rate sought); see also Nat’l
Ass’n for Specialty Food Trade, Inc. v. Construct Data Verlag
AG, No. 04CV2983(DLC)(KNF), 2006 WL 5804603, at *6 (S.D.N.Y.
Dec. 11, 2006) (reducing request for hourly rate of $230 to $200
for senior paralegal where no background information was
provided), report and recommendation adopted sub nom., Nat’l
Ass’n for the Specialty Food Trade, Inc. v. Construct Data
Verlag AG, 2007 WL 656274 (Feb. 23, 2007).
As to the $225 hourly rate sought for the “patent clerk,”
plaintiff again provides no information concerning this
individual’s background and experience which might assist the
Court in assessing the reasonableness of the hourly rate sought.
Plaintiff also fails to describe what, exactly, a “patent clerk”
25

is responsible for, or whether this individual is more akin to a
paralegal. The Court has been unable to locate any award of an
hourly rate to a “patent clerk” in this District. A review of
the Time and Expense Details report submitted by plaintiff
indicates that the patent clerk billed a total of 5.5 hours to
prepare the exhibits to the Complaint. See Doc. #46-3, Panza
Decl. at Ex. 1, Time and Expense Details report. Because the
patent clerk billed only for the administrative task of
preparing exhibits to the Complaint,10 the Court recommends that
the patent clerk’s hourly rate be reduced to $150 per hour, to
be commensurate with the hourly rates typically awarded for the
work of paralegals in this District. See, e.g., A. v. Hartford
Bd. of Educ., No. 3:11CV01381(GWC), 2017 WL 187138, at *7 (D.
Conn. Jan. 17, 2017) (awarding $140 per hour for paralegal
work); Crawford, 2015 WL 1125491, at *6 (same); Bank of N.Y.
Mellon v. Bell, No. 3:11CV1255(JAM), 2015 WL 778668, at *2 (D.
Conn. Feb. 24, 2015) (awarding $150 per hour for paralegal
work).
2. Hours Reasonably Expended
The Court next turns to the reasonableness of the hours
billed in connection with this litigation. In determining the

“[P]reparing exhibits ... is a task that normally would have
been performed by a paralegal[.]” G.B. ex rel. N.B. v. Tuxedo
Union Free Sch. Dist., 894 F. Supp. 2d 415, 439 (S.D.N.Y. 2012).
10

26

reasonableness of the hours sought, the Court is guided by the
following principles:
“[T]he fee applicant bears the burden of establishing
entitlement to an award and documenting the appropriate
hours expended and hourly rates.” Hensley, 461 U.S. at
437. “Applications for fee awards should generally be
documented by contemporaneously created time records
that specify, for each attorney, the date, the hours
expended, and the nature of the work done.” Kirsch, 148
F.3d at 173. The Court should exclude from the fee
calculation hours that were not reasonably expended.
Hensley, 461 U.S. at 434. Hours that are “excessive,
redundant, or otherwise unnecessary should be excluded
and in dealing with such surplusage, the court has
discretion simply to deduct a reasonable percentage of
the number of hours claimed as a practical means of
trimming fat from a fee application, from the lodestar
calculation.” Kirsch, 148 F.3d at 173 (internal
citations and quotation marks omitted).
Blumenschine v. Prof’l Media Grp., LLC, No. 3:02CV2244(HBF),
2007 WL 988192, at *14 (D. Conn. Mar. 30, 2007). Here, plaintiff
has established its entitlement to an award of reasonable
attorney’s fees and has supported its application with
contemporaneous time records and the declaration of the
bookkeeper for the law firm of Delio, Peterson & Curcio, LLC.
Upon careful review, the Court finds that the hours billed are
reasonable. However, as stated above, the Court recommends that
the total billed attorney time, amounting to $37,325.00,11 be
reduced by 10% to account for the inadequacies in the

$38,562.50 (total fees sought), less $1,237.50 incurred for 5.5
hours billed by the “patent clerk” at $225 per hour.
11

27

documentation regarding reasonableness of the hourly attorney
rates requested.
Accordingly, the Court recommends that 5.5 hours at the
rate of $150 per hour be awarded for patent clerk time, for a
total award of $825.
The Court further recommends that the total attorney time
sought, 124.70 hours,12 be awarded at the requested attorney
billing rates, amounting to $37,325, but that this total be
reduced by 10% for an award of $33,592.50 in attorney time.
Therefore, the Court recommends that a total of $34,417.50
in fees be awarded to plaintiff.
C. Costs
Plaintiff seeks costs in the amount of $1,812.52. See Doc.
#46 at 8-9; see also Doc. #46-3, Panza Decl. at ¶7. “Title 35
explicitly authorizes the award of ‘costs as fixed by the
court.’” IPVX Patent Holdings, 2014 WL 4437294, at *6 (citing 35
U.S.C. §284). Plaintiff’s requested costs are comprised of a
$400 filing fee, $1,347.19 for costs related to service of
process, and “delivery costs” of $65.33. See Doc. #46 at 8-9.
Plaintiff’s request for these costs are supported by the
declaration of plaintiff’s bookkeeper, Sheila Panza, and a Time

See Doc. #46-3, Panza Decl. at Ex. 1, Time and Expense Details
report. The Court further notes that 13.5 hours of attorney time
were charged at $0. See id.
12

28

and Expense Details report. See generally Doc. #46-3, Panza
Decl.
The Court finds that plaintiff’s request for reimbursement
of the $400 filing fee and $65.33 delivery costs is reasonable.
However, as to plaintiff’s costs related to service of process,
the Court recommends that only $1,317.19 be awarded. Plaintiff
represents that “even after receiving two Cease and Desist
letters, Defendant was evasive in service of process, requiring
Plaintiff to hire an investigator[.]” Doc. #46 at 8. The Time
and Expense Details report reflects that: $1,310 was incurred as
an “Associate Fee – E120 – Service of Process and Investigations
Phase of Civil Process in Texas;” $7.19 was incurred for a
document legalization fee with the Texas Secretary of State; and
another $30.00 was incurred as an “Associate Fee – Legal
Research.” See Doc. #46-3, Panza Decl. at 6. The Court finds the
$7.19 cost for the document legalization fee is reasonable. The
$1,310 cost for the private investigator is also reasonable in
light of plaintiff’s representations that defendants evaded
service of process, thus necessitating the involvement of a
private investigator to establish defendants’ whereabouts. See
Lora v. J.V. Car Wash, LTC., No. 11CV9010(LLS)(AJP), 2015 WL
4496847, at *16 (S.D.N.Y. July 24, 2015) (granting plaintiff’s
request for private investigator costs when plaintiff provided a
credible explanation for the need for background checks on
29

defendants and “to assess the seriousness of defendants’
bankruptcy threats”), report and recommendation adopted sub
nom., Lora v. J.V. Car Wash, Ltd., 2015 WL 7302755 (Nov. 18,
2015). It is unclear, however, what the $30.00 “Associate Fee –
Legal Research” relates to, or what that research entailed.
Accordingly, the Court recommends that $30.00 be subtracted from
plaintiff’s requests for costs, and that plaintiff be awarded
$1,782.52 in its reasonable costs.
III. Conclusion
Accordingly, for the reasons stated, the Court recommends
that plaintiff be awarded $34,417.50 in attorney’s fees, and
$1,782.52 in costs, for a total award of $36,200.02.
This is a recommended ruling. See Fed. R. Civ. P. 72(b)(1).
Any objections to this recommended ruling must be filed with the
Clerk of the Court within fourteen (14) days of being served
with this order. See Fed. R. Civ. P. 72(b)(2). Failure to object
within fourteen (14) days will preclude appellate review. See 28
U.S.C. §636(b)(1); Rules 72, 6(a) and 6(d) of the Federal Rules
of Civil Procedure; D. Conn. L. Civ. R. 72.2; Small v. Secretary
of H.H.S., 892 F.2d 15 (2d Cir. 1989)(per curiam); F.D.I.C. v.
Hillcrest Assoc., 66 F.3d 566, 569 (2d Cir. 1995).
SO ORDERED at New Haven, Connecticut this 28th day of June,
2017.
/s/
HON. SARAH A. L. MERRIAM
UNITED STATES MAGISTRATE JUDGE
30