Roche Diagnostics Operations Inc. et al v. Lifescan Incorporated et al

Filing 1087

REPORT AND RECOMMENDATIONS re 1049 DENYING Renewed MOTION to Declare this Case Exceptional and for an Award of Fees and Related Expenses filed by Nova Biomedical Corporation, 1050 DENYING Renewed Motion for Attorneys' Fees associated w ith Counterclaims filed by Corange International Limited, Roche Diagnostics Operations Inc.. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 10/20/2017. Signed by Judge Mary Pat Thynge on 10/3/17. (kjk)

IN THE UNITED STATES DISTRICT COURT!
FOR THE DISTRICT OF DELAWARE

ROCHE DIAGNOSTICS OPERATIONS,
INC. and CORANGE INTERNATIONAL
LIMITED,
Plaintiffs,

v.
ABBOTT DIABETES CARE, INC,
ABBOTT DIABETES CARE SALES
CORPORATION, BAYER HEALTHCARE,
LLC, DIAGNOSTICS DEVICES, INC.,
LIFESCAN, INCORPORATED and NOVA
BIOMEDICAL CORPORATION,

.\

(..o) .

..

ti) '·

Defendants.

REPORT AND RECOMMENDATION

I.

INTRODUCTION

On November 21, 2007, Roche Diagnostics Operations, Inc.

~md

Corange

International Limited (collectively, "Roche") filed this action alleging that Nova
Biomedical Corporation ("Nova"), LifeScan, Inc. ("LifeScan"), and four other defendants
I

infringed U.S. Patent Nos. 7,276,146 ("the '146 patent") and 7,276,147 ("the '147
patent") (collectively, the "patents-in-suit") relating to methods for measuring bloodglucose levels. 1 On January 11, 2008, Nova filed its answer, affirmative defenses, and
counterclaims. 2 On April 15, 2008, Roche filed an amended complai.nt. 3 On May 5,
2008, Nova answered the amended complaint and again set forth affirmative defenses
1

D.I. 1. At different times and for different reasons, all defendants other than
Nova and LifeScan were dismissed from the case. D.I. 1072 at 2 n.5.
2 D.I. 47.
3
D.I. 142.
I

and asserted counterclaims. 4 On May 28, 2008, Roche answered Nova's affirmative
defenses and counterclaims. 5 The parties were ultimately unsuccessful on their
respective claims and counterclaims. Currently before the court are Nova's Renewed
Motion to Declare this Case Exceptional and for an Award of Fees and Related
Expenses6 and Roche's Renewed Motion for Attorneys' Fees Associated with Nova's
Counterclaims. 7
II.

NOVA'S RENEWED MOTION TO DECLARE THIS CASE EXCEPTIONAL AND
FOR AN AWARD OF FEES AND RELATED. EXPENSES 8

Nova argues that because Roche's purportedly unreasonable litigation tactics
prolonged this case far beyond what any reasonable litigant would have done, the court
should declare this case exceptional and award Nova its reasonable attorneys' fees and
expenses. 9

A.

Background

The background facts presented by Nova in support of its motion are as follows:
on November 21, 2007, Roche sued Nova arid other defendants for infringement of the
'146 and '147 patents relating to methods for measuring blood-glucose levels. 10 Both
patents claim priority to the same provisional application and have similar
specifications. 11
4

0.1.181.
D.I. 199.
6
D.I. 1049.
7
D.I. 1050.
8
D.I. 1049.
9
D.I. 1051 at 1.
i
10
D.I. 1. Of the original six defendants, only Nova and LifeScan, Inc. remained
in the case through final judgment and appeals. D.I. 1051 at 2.
11
D.I. 1051 at 2.
5

2

On December 15, 2008, the court held a Markman hearing and issued its
decision on September 15, 2009. 12 On September 29, 2009, Roche filed a motion for
reconsideration of the Markman decision, 13 which the court denied at a January 21,
2010 Pretrial Conference. 14 Based on its construction of "electrode," the court granted
summary judgment of non-infringement on July 27, 2010. 15 Roche appealed. 16 On
January 25, 2012, the Federal Circuit issued its opinion remanding for further
proceedings regarding claim construction, including the propriety of Roche's motion for
reconsideration. The court's Mandate issued on March 2, 2012. 17
This case was then assigned to the Honorable Richard G. Andrews, and the
court held another Markman hearing on September 5, 2012. 18 On December 5, 2014,
the court issued a Memorandum Opinion that: (1) held Roche's motion for
reconsideration was procedurally improper and properly denied by Judge Farnan; and
(2) affirmed the court's earlier construction of "electrode." 19 The court entered final
judgment on January 16, 2015. 20 On February 13, 2015, Roche appealed the final
judgment and the construction of the disputed term "electrode." 21 On October, 31,
2016, the Federal Circuit affirmed the construction of "electrode" and judgment of non-

12

D.I. 563; D.I. 564.
D.I. 636.
14
D.I. 859 at 5:24-6:6.
15
D.I. 850; D.I. 536; D.I. 1051 at 2.
16
D.I. 852.
17
D.I. 948-1 at 15-16; D.I. 948.
18
When filed, this case was assigned to the Honorable Joseph J. Farnan. Upon
Judge Farnan's retirement, the case was reassigned to the Honorable Richard G.
Andrews. See Docket Entry dated March 16, 2012.
19
D.I. 1025; D.I. 1026.
20
D.I. 1032.
21
D.I. 1035.
13

3

infringement. 22

B.

legal Standards Applicable to Nova's Motion

Under the principle known as the American Rule, each litigant is responsible for
its attorneys' fees and costs. This principle applies equally to prevailing and losing
parties unless a specific statute authorizes the shifting of attorneys' fees. 23
In patent litigation, 35 U.S.C. § 285 authorizes an award of reasonable attorneys'
fees to prevailing parties "in exceptional cases." 24 "When deciding whether to award
attomey[s'] fees under§ 285, [the] court engages in a two-step inquiry." 25 In step one,
the court "determines whether the case is exceptional."26 If the case is exceptional,
step two requires an evaluation of "whether an award of attorneys' fees to the prevailing
party is justified."27
The United States Supreme Court recently clarified "[a]n '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."28 "District courts may
determine whether a case is 'exceptional' in the case-by-case exercise of their

22

D. I. 1041 .
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1753
(2014) (quoting Marx v. Gen. Revenue Corp., 133 S. Ct. 1166, 1175 (2013)) (under the
American Rule, each litigant pays "his own attorney[s'] fees, win or lose").
24
35 U.S.C. § 285.
25
Gevo, Inc. v. Butamax Advanced Biofuels LLC, C.A. No. 13-576-SLR, 2014
WL 4247735, at *1 (D. Del. Aug. 26, 2014) (quoting MarcTec, LLC v. Johnson &
Johnson, 664 F.3d 907, 915 (Fed. Cir. 2012)) (internal quotation marks omitted).
26 Id.
27 Id.
28
Octane, 134 S. Ct. at 1756.
23

4

discretion, considering the totality of the circumstances." 29 Courts may use such nonexclusive factors as frivolousness, motivation, and objective unreasonableness in
analyzing the factual or legal components, and the need in particular circumstances to
advance considerations of compensation and deterrence. 30
In step two, courts in the Third Circuit use the "lodestar" approach to calculate
attorneys' fees, i.e., they "multiplyD the amount of time reasonably expended by
reasonable hourly rates." 31 A court may reduce hourly rates and/or exclude
"unnecessary hours" from the lodestar calculation. 32
A party must obtain at least some relief on the merits to qualify as "prevailing." 33
This qualification, however, does not entitle prevailing parties to automatically recover
attorneys' fees. 34 A court's inquiry into shifting attorneys' fees is not warranted unless
relief on the merits has altered the legal relationship of the parties. 35
The party seeking attorneys' fees must prove its contentions by a preponderance
of evidence, 36 but it is not required to show subjective bad faith. 37 It also bears the

Id.
Id. n.6.
31
Tech. Innovations, LLC v. Amazon.com, Inc., C.A. No. 11-690-SLR, 2014 WL
3703582, at *2 (D. Del. July 23, 2014).
32
Hensley v. Eckerhart, 461 U.S. 424, 433 (1983); see a/so Homeland
Housewares, LLC v. Hastie2Market, LLC, C.A. No. 2013-1537, 2014 WL 4400184, at
*2 (Fed. Cir. Sept. 8, 2014) (affirming both the award of attorneys' fees in connection
with the non-infringement defense and the denial to award fees for the defendant's
subsequent pursuit of invalidity claims); Tech. Innovations, 2014 WL 3703582, at *2
(declining to award fees for hours "expended as part of a reasonable defense effort").
33
/nland Steel Co. v. LTV Steel Co., 364 F.3d 1318, 1320 (Fed. Cir. 2004).
34 Id.
35
Id.; Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Hum.
Res., 532 U.S. 598, 605 (2001 ).
36
Octane, 134 S. Ct. at 1758.
37
Id. at 1757.
29

30

5

burden of establishing the reasonableness of its fees. 38

C.

Discussion

Nova contends it is the prevailing party because it successfully defended against
Roche's claims of infringement, with this court entering judgment of non-infringement
and the Federal Circuit affirming that judgment on appeal. 39 According to Nova, the fact
that it did not also prevail on its non-patent counterclaims is irrelevant to the
determination of the prevailing party. 40 Nova states its counterclaims were a response
to the infringement claims filed by Roche. 41 Nova contends that this court's judgment of
non-infringement, affirmed by the Federal Circuit, conferred on Nova the valuable
commercial benefit of being free from fear of suit for practicing Roche's claimed
inventions. 42 Nova asserts that because it prevailed on the purportedly central issue in
this case-i.e., the infringement claims brought by Roche-it is the one and only
prevailing party in this litigation. 43
Roche disputes the assertion that Nova is the sole prevailing party. 44 Roche

38

See Hensley, 461 U.S. at 433. Nova states that if the court grants its motion, it
will submit a detailed accounting of its fees as directed by the court. D.I. 1051 at 2.
39
D.I. 1051 at 10.
40
Id. at 10-11 (citing Devex Corp. v. General Motors Corp., 494 F. Supp. 1369,
1390 (D. Del. 1980) ("[The] prevailing party is the party which, although it might not
sustain all of its claims, receives a favorable judgment.")). Pursuantto FED. R. C1v. P.
54(d)(2)(C), "[t]he court may decide issues of liability for fees before receiving
submissions on the value of services."
41
Id. at 11.
42 Id.
43
Id. (citing Brooks Furniture Mfg., Inc. v. Dutalier Int'/, Inc., 393 F.3d 1378,
1381 (Fed. Cir. 2005) ("Determination of the prevailing party is based on the relation of
the litigation result to the overall objective of the litigation, and not on a count of the
number of claims and defenses."), abrogated on other grounds by Octane Fitness, LLC
v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) ).
44
D.I. 1072 at 7.

6

contends Nova ignores that Roche prevailed on Nova's '229 patent claim, which Nova
dismissed with prejudice. 45 Moreover, Roche contends Nova ignores that Roche
prevailed before a jury, in post-trial briefing, and on appeal with respect to Nova's Swiss
law counterclaims. 46 Roche asserts there is no question that it "succeed[ed] on ...
significant issue[s] in litigation which achieve[d] some benefit the parties sought in
bringing the suit." 47
Roche also disputes that Nova is the sole party entitled to fees. 48 The Supreme
Court has stated:
In Hensley, we noted the possibility that a plaintiff might prevail on one
contention in a suit while also asserting an unrelated frivolous claim. In
this situation, we explained, a court could properly award fees to both
parties-to the plaintiff, to reflect the fees he incurred in bringing the
meritorious claim; and to the defendant, to compensate for the fees he
paid in defending the frivolous one. 49
Roche concludes, therefore, that Nova is not the sole party entitled to fees. As
the prevailing party on Nova's Swiss law counterclaims, Roche maintains it is entitled to
an award on attorneys' fees in connection with those counterclaims. 50

Id.
Id.
Id. (quoting Hensley v. Eckerhart, 461 U.S. 424, 433 (1983)).
48 Id.
49
Fox v. Vice, 563 U.S. 826, 835 (2011) (citing Hensley, 461 U.S. at 435, n.1 O);
see also FUR Sys., Inc. v. Sierra Media, Inc., 965 F. Supp. 2d 1184, 1199-1200 (0. Or.
2013) ("As the Supreme Court observed in Hensley v. Eckerhart, 461 U.S. 424 (1983),
a single civil rights lawsuit can contain distinctly different claims for relief that are based
on different facts and legal theories, and as a result, 'these unrelated claims [must] be
treated as if they had been raised in separate lawsuits."' (alteration in original) (quoting
Hensley, 461 U.S. at 435)).
50
0.1. 1072 at 8 (citing Roche's co-pending Renewed Motion for Attorneys' Fees
(0.1. 1050, 1052)).
45

46
47

7

Federal Circuit law governs the determination of which party has prevailed. 51 To
be a "prevailing party," that party must have received at least some relief on the merits
and that relief must materially alter the legal relationship between the parties by
modifying one party's behavior in a way that "directly benefits" the opposing party. 52
Nova is the prevailing party vis-a-vis Roche's patent infringement claims, the claims on
which this suit was brought. This court entered judgment of non-infringement of the
patents-in-suit on January 16, 201553 and, on September 22, 2016, the Federal Circuit
filed its opinion and entered judgment affirming the construction of "electrode" and
judgment of non-infringement. 54 Therefore, Nova received some relief on the merits
that materially altered the legal relationship between the parties that. directly benefitted
Nova. 55
Because the determination of a "prevailing" party does not automatically entitle
the prevailing party to recovery attorneys' fees, the court must furth~r determine
whether the case is "exceptional." "An 'exceptional' case is simply one that stands out
from others with respect to the substantive strength of a party's litigating position

51

SSL Servs., LLC v. Citrix Sys, Inc., 769 F.3d 1073, 1086 (Fed. Cir. 2014).
Id.; see also D. Del. LR 54.1 (c) ("The defendant is the prevailing party upon a
dismissal or summary judgment or other termination of the case without judgment for
the plaintiff on the merits.").
53
0.1. 1032.
54
0.1. 1041-1. The Federal Circuit's Mandate issued October31, 2016. D.I.
1041.
55
The court notes Roche did not vigorously argue that Nova was not the
prevailing party with respect to its infringement claims against Nova. Instead, in its
opposition brief, Roche focused its argument on Nova not bing the sole prevailing party
and that Nova was not the sole party entitled to any fee award. Roche's positions with
respect to those arguments are more fully set forth in its motion for fees associated with
Nova's Swiss law counterclaims. The court addresses those arguments, below, in its
consideration of Roche's motion.
52

8

(considering both the governing law and the facts of the case) or the unreasonable
manner in which the case was litigated."56 "District courts may determine whether a
case is 'exceptional' in the case-by-case exercise of their discretion, considering the
totality of the circumstances." 57
Nova makes several arguments in support of its request that the court declare
this exceptional and award its reasonable attorneys' fees and expenses. First, Nova
alleges Roche knew before filing this case that the accused Nova products use macroelectrodes, and that Roche knew, or should have known, the asserted claims were
limited to micro-electrodes less that 100 µm based on the specification, the intrinsic
record, and the disclaimer of macro-electrodes during prosecution. Nova states the
sole named inventor testified that the specification of the patents related only to microelectrodes. 58 Instead of acknowledging that limitation, and therefore. the noninfringement of the accused products, Nova maintains Roche asserted a baseless claim
construction in an attempt to cover the macro-electrodes in Nova's accused products. 59
Nova contends Roche continued to press this case in bad faith after the court
adopted Nova's proposed construction of "electrode," which limited the claims to microelectronics of less than approximately 100 µm. 60 Nova maintains the case could have
ended years ago if Roche had simply stipulated to non-infringement and let the case go
up on appeal. 61 Instead, Roche filed a purportedly improper motion for reconsideration,

56

s7
58
s9

60
61

Octane, 134 S. Ct. at 1756.
Id.
D.I. 1051 at 3.
Id.
Id.
Id.
9

arguing a new claim construction position that Nova states was directly contrary to the
positions it had taken at the Markman hearing. 62 According to Nova, Roche's litigation
tactics needlessly prolonged the case and forced Nova (and the court) to expend
significant resources for far longer than necessary, including preparing for a 201 O trial
on infringement, only to have Roche concede non-infringement at the pretrial
conference. 63
Nova argues that in addition to contradicting the position Ro~he took before and
during the Markman hearing, its new claim construction position was wholly without
merit as it was unsupported by the intrinsic record that limited the claims to microelectrodes of less than 100 µm, its own prosecution disclaimer of macro-electrodes,
and the inventor's testimony. 64 Nova also noted the Federal Circuit remarked that,
"[e)ven the extrinsic evidence Roche cited is inconsistent with its assertion that 1,000
µm is the established width for micro-electrodes." 65 Nova states Roche argued its new,
inconsistent, construction twice to Judge Farnan, at the 2012 Markman hearing, and
twice at the Federal Circuit-and it was never accepted. 66 Nova mairitains that Roche
Id.
63 Id.
64 Id.
65 Id.
66
Id. at 3-4. Nova also mentions that it is a smaller company than Roche. Id.
("Roche pressed on, costing Nova, a much smaller competitor with a better product,
millions of dollars in fees and costs."); id. at 11 ("Roche brought and prosecuted this
case in bad faith, with the apparent aim of bleeding dry a much smaller competitor
knowing that its infringement claims were without merit and its interpretation of the
claims was baseless in light of the intrinsic evidence." (footnote omitted)); id. at 17
(Roche's first appeal "was an attempt to prolong and multiply this litidation to harm
Nova, a much smaller competitor having a far superior product."). Other than its
statements that Nova is a smaller company than Roche, and its assertion that Roche
prosecuted this case "with the apparent aim of bleeding [Nova) dry," Nova presents no
62

10

pursued its new construction despite the intrinsic record providing no support for that
construction. 67
I

Nova concludes that, in view of the totality of the circumstances, Roche's
contradictory claim construction and infringement positions, its unreasonable and
improper litigation tactics, and its vexatious efforts to prolong this case warrants a
finding of an exceptional case and it should be awarded its attorneys' fees and
expenses for the entire case, including both appeals. 68
Roche insists this is not an exceptional case as the decision to bring suit and the
positions it took with respect to the construction of the terms of the patents-in-suit were
not "uncommon, rare, or not ordinary," as required by the Supreme Court to find a case
i

exceptional. 69 Roche argues Nova fails to establish that Roche's claims were
exceptionally meritless, that Roche brought or maintained this lawsuit in bad faith, or
that Roche engaged in any other unreasonable conduct that could support finding this
case exceptional. 70
Roche argues Nova's assertion that it is the sole prevailing party ignores that it
had to dismiss with prejudice its '229 patent claim and that Roche prevailed on Nova's

evidence that the respective sizes of the parties demonstrates this case is exceptional.
The court determines that the parties' size disparity does not support an inference of
bad faith. See, e.g., Sport Dimension, Inc. v. Coleman Co., Inc., C.A. No. 14-00438
BRO (MRWx), 2015 WL 10013784, at *8 (C.D. Cal. June 4, 2015) ("Citing the
discrepancy in the parties' sizes ... does not help [plaintiff] to satisf~. its burden of
demonstrating that [defendant's] actions were exceptional.").
67
D.I. 1051 at 4.
•
6s Id.
69
D. I. 1072 at 1 (citing Octane Fitness, 134 S. Ct. at 1756).
70 Id.

1

11

Swiss law counterclaims. 71 Roche also maintains that from the ojet of the case, its
claim construction position was fully supported by intrinsic and extrihsic evidence, and
provided a ·reasonable basis for its infringement position. 72 It notes fhat simply because
the court agreed with Nova on a claim construction issue does not rhean Roche's
I

position was exceptionally meritless or was made in bad faith. 73 Roche states that after
',

I

Judge Farnan's Markman ruling, it promptly pursued the path available in this court to
correct the perceived error with the construction-a motion for reconsideration. 74 After
that motion was denied, Roche accepted a judgment of non-infringement.75 According
to Roche, any delays associated with reconsideration, and Nova's need to prepare for
trial on Roche's patent claims in the meantime, were neither within Roche's control nor
intended or desired byRoche. 76 Rather, Roche alleges it was Nova lthat refused any
deferral of further briefing on summary judgment to address reconsi1eration. 77 Roche
I
1,

contends Judge Farnan's request for additional briefing on reconsideration confirms

i

that Roche's argument was not frivolous or unfounded, as does his ci:icknowledgment
.

I

that Roche had a "great point" on the claim construction issue. 78
Roche contends the Federal Circuit's decisions further suppoM the claim

71

72

73
74
75

Id. at 4.
Id.
Id.
Id.
Id. at 5.

,

~w

I'

77

.

Id.
78
Id. (quoting D.I. 859 at 5:24-6:6 {"I've looked at the paper o~ reconsideration.
It's a great point for the Federal Circuit, and I actually think you might have a point. But
it will be interesting to see what they say. So we will be moving ahe~d with that Rule 54
judgment.")).
i

12

construction position.

79

Roche states that in Roche I, the Federal Circuit considered the

merits of the parties' claim construction positions, including the "persuasive[ness]" of
Roche's argument, but ultimately decided to vacate this court's judgment of noninfringement and remand the case for further consideration of claim construction. 80 In
Roche II, the Federal Circuit treated the claim construction issue entirely on its merits

and did not dismiss any of Roche's arguments as baseless. 81 Roche also insists that in
Roche II, the Federal Circuit did not consider Nova's procedural arguments, which Nova

now relies heavily upon in its motion of alleged misconduct by Roche. 82
Nova contends Roche knew, or should have known, that the asserted claims do
not cover its accused products because the patents-in-suit claim methods for
determining glucose in blood using micro-electrodes up to 100 µm wide, while the
accused Nova products used macro-electrodes with a width of 762 µm. 83 Nova
i

contends Roche brought its infringement claims in bad faith becaus~ it knew those
claims were without merit and its interpretations of the claims were baseless in light of
!

the intrinsic evidence.

84

The patents-in-suit claim methods for determining glucose in blood using microelectrodes up to 100 µm wide. 85 Both patents claim priority to a November 2001
provisional application titled "Electrodes, Methods, Apparatuses Comprising Micro-

79

so
a1
a2
83
84
85

Id.
Id.
Id.
Id.
D.I. 1051 at 3, 4, 6.
Id. at 11.
Id. at 4.

13

'1

Electrode Arrays," which explains that: "[t]he present invention relates to arrays of
micro-electrodes, methods of preparing the arrays, and to uses of the arrays." 86 In
October 2002, Roche filed two separate applications based on the 2001 provisional
application. 87 The first application, from which the '147 patent issued as a continuation,
contained the same specification as the provisional application. 88 The second
application, which issued as the '146 patent, added new examples and corresponding
figures to the specification. 89 Consequently, Nova avers, both patents-in-suit share a
common specification up to and including Example 1, referred to by Nova as the
"Common Specification." 90 Nova contends the common specification limited the claims
to micro-electrodes of less than about 100 µm. 91 While the com mo~ specification
'

acknowledged prior art use of micro-electrodes of "very small dimension" (e.g., 1-3 µm),

I

it contrasted the claimed micro-electrodes as "relatively larger'' (e.g.,! 'in the range from

1

15 or 20 or 25 µm, up to about 100 µm") than those in the prior art. 9 Nova emphasizes
I
I

the Common Specification repeatedly described the claimed inventi~n as limited to
I

micro-electrodes. 93 Nova also states the Common Specification explicitly defined the
1,

claimed micro-electrodes, as contrasted with "non-microelectrodes, i[e., 'macroelectrodes,"' based on their smaller width of "less than 100 µm" and their predominantly
I

Id.
a? Id.
aa Id.
a9 Id.
90 Id.
91 Id.
92
Id. at 4-5 (quoting '147 patent, 2:43-50).
93
Id. at 5 (citing '147 patent, 2:42-43; 3:3-4; 3:16-18; 3:21-23; and 3:38-39).
a6

14

I
I

I

I

non-planar diffusion pattern. 94 According to Nova, the Common Sp'ecification did not
disclose any method or example using electrodes wider that 100 µm, and the only
I

example common to both patents, Example 1, used micro-electrodes of 25 µm. 95 Nova
contends the named inventor, Chris Wilsey, confirmed at his deposition that his
invention was limited to micro-electrodes and that the '147 patent contained no
examples of a macro-electrode. 96
Nova also states that Roche disclaimed coverage of macro-electrodes during
'

prosecution, consistent with the Common Specification.
.

97

In responbe to a rejection of
I
I

claims based on prior art, Judge Farnan found "the patentee disting1.Jished the prior art,
in part, on the basis of its use of macroelectrodes as opposed to mibroelectrodes," and
i

construed the "electrode" terms as limited to "micro-electrodes havirlg a width of 15 µm
I
up to approximately 100 µm." 98
Nova alleges Roche knew Nova's accused produces did not use microI

electrodes. 99 Nova's accused products, which were on sale and readily available prior
I
'

to the suit, used macro-electrodes with a width of 764 µm. 100 Additio,nally, Nova
'

maintains Roche had specific knowledge of Nova's product before it filed its provisional

94

Id. (quoting '147 patent, 4:10-29).
Id. (citing '147 patent, 19:28-32).
96
Id. (citing D.I. 361, Ex. 0 at 39:6-13 (Wilsey testifying that at the time the
provisional application was filed, the invention related to, and claimed arrays of microelectrodes and that there were no examples of macro-electrodes)). As Roche points
out however, neither the Federal Circuit nor this court apparently considered Wilsey's
testimony to be particularly important as none of those court's opiniofis mention that
testimony, despite Nova repeatedly raising the issue. D.I. 1072 at 12.
97
.
Id. at 6.
I
98
Id. at 6, 14 (quoting D.I. 563 at 8-9 (2009 Markman Decision)).
99
Id. at 6.
100 Id.
95

15

I

application in 2001. 101 In 1999, soon after Nova developed its new 'glucose sensor in
I

I

1998, Nova approached Roche about working as Nova's marketingipartner on its new
glucose sensor. 102 In September 2009, representatives of Roche aJtended a meeting at
Nova to discuss the new product, during which Roche was given a slide presentation
I

regarding Nova's technology, a tour of Nova's research and develoJment and
I

manufacturing facilities, a demonstration of prototypes of Nova's tedhnology, and an
I

opportunity to test the new strips.

103

I

Nova maintains, therefore, that: its prototype,

commercialized as the Nova Max product, was known to Roche two years before
I

Roche filed the provisional application to which the patents-in-suit claim priority. 104
Based on the intrinsic evidence, Nova concludes Roche knel or should have
I
I

!

known its construction of "electrode" was baseless. 105 Nova reiterat$s that the Common
I

Specification described the use of "flexible substrate" with "micro-el~ctrodes,"
I

contrasted "micro-electrodes" with prior art micro-electrodes-explain'ing the micro!

electrodes of the patents were "relatively larger," "in the range of 15 fr 20 or 25 µm, up
to about 100 µm, more preferably from greater than or about 25 or 3 0 µm to about 50
µm," and defined the micro-electrodes of the claimed invention by th~ir small width of
1

"less than 100 µm" compared to larger "macro-electrodes.'1106 Nova again points out the
I

! '
Common Specification disclosed no method or example of using electrodes wider than
I
!

Id.
i
Id. (citing D.I. 1000, Ex. 4 at 18:3-8).
[
103
Id. (citing D.I. 814 (1/26/2010 Trial Tr.) at 268:17-269:21; D.I. 1000, Ex. 4 at
93:8-25, 96:21-98:20).
104 Id.
105
Id. at 12.
106
Id. (quoting '147 patent, 2:20-24, 3:3-4, 2:43-50, 3:9-12, 4:10-29).
101

102

16

100 µm1, and the only example common to both specifications, Example 1, used micro-

!

electrodes that were 25 µm. 107 Nova concludes, therefore, that the Common
Specification makes clear that the claimed electrodes of the patents-in-suit were limited
to micro-electrodes with a width of less than 100 µm. 108

,
I
I

In addition to the Common Specification's purportedly clear definition of the

I
claimed micro-electrodes, Nova contends Roche's disavowal of larder macro-electrodes
during prosecution also demonstrates that Roche's positions were Jaseless and
pursued in bad faith. 109 Nova states that, to overcome prior art rejedtions, the patentee
argued the cited prior art references used macro-electrodes, not milro-electrodes, and
notes that Judge Farnan also found "the patentee distinguished the \prior art, in part, on
!

the basis of its use of macroelectrodes as opposed to microelectrodrs." 110 Nova
contends this prosecution history disclaimer of macro-electrodes, standing alone,
!

should have been enough to deter Roche (or any reasonable plainti\f) from filing this
I

I

case against Nova, whose accused products were known to use macro-electrodes. 111
•
I
Despite the forgoing evidence, Nova contends Roche not onl¥ brought this
'

meritless case, but pursued a construction of "electrode" that was ndt limited to micro'1

!

electrodes in an attempt to get its narrow claims to read on Nova's accused products

107

Id. at 12-13.
Id. at 13.
109 Id.
110
Id. (quoting 0.1. 563 at 8).
111
Id. Nova also noted the testimony of Roche's inventor that the provisional
application related arrays of micro-electrodes and that the '147 patent had no examples
of a macro-electrode as further evidence of the unreasonableness Rbche's claim
construction. Id. (quoting D.I. 361 Ex. 0 at 39:6-13, 48:1-16).
108

17

that it knew used macro-electrodes. 112 Nova, therefore, maintains

~ache's
I

.unreasonable claim construction position warrants a finding that this case is
exceptional. 113
Naturally, Roche disagrees. Under 35 U.S.C. § 285, "exceptional" has its
ordinary meaning of '"uncommon,' 'rare,' or 'not ordinary."' 114 An "e*ceptional" case is
'1

one that "stands out from others" when considering the "totality of tHe circumstances." 115
I
1

A case can be found "exceptional" for: (1) lack of substantive strength of litigating
position, (2) subjective bad faith, or (3) unreasonable conduct. 116 R?che notes that
assertions of infringement of a duly granted patent are presumed to:,be made in good
faith. 117 However, when a "patentee is manifestly unreasonable in a,ssessing
I

infringement, while continuing to assert infringement in the court, anl inference is proper
I

of bad faith, whether grounded in or denominated wrongful intent, r~cklessness, or
!

gross negligence."

118

The court does not agree with Nova that Roche was manifestly unreasonable in
bringing, and maintaining, this action. Roche does not dispute it kn~w of the size of the
I

112

Id. at 13-14.
Id. at 15 (citing Vehicle Interface Techs., LLC v. Jaguar Land Rover N.A.,
LLC, C.A. No. 12-1285-RGA, 2015 WL 94620636, at*3 (D. Del. Dec. 28, 2015) ("A
case may be declared exceptional if plaintiff relied on a claim construction that is so
lacking in evidentiary support that it is objectively unreasonable or indicates bad faith.");
Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1307 (Fed: Cir. 2013) ("When
patentees have sought unreasonable claim constructions divorced ftpm the written
oescription, ... court[s] ha[ve] found infringement claims objectively baseless.")).
114
Octane, 134 S. Ct at 1756.
115 Id.
116
Id. at 1756-57.
117
D.I. 1072 at 6 (citing Springs Window Fashions, LP v. Nov0 Indus., L.P., 323
I
·
F.3d 989, 999 (Fed. Cir. 2003)).
118
Eltech Sys. Corp. v. PPG Indus., Inc., 903 F.2d 805, 811 (~ed. Cir.1990).
113

18

I
I

electrodes in the accused products. Instead, in its original briefing for the first Markman
hearing, and at that hearing, Roche argued that the term "electrode~' in the asserted
i

claims covered both micro- and macro-electrodes and argued against disavowal of
macro-electrodes during prosecution. The court disagreed with Rodhe, finding "the
I
1

patentee distinguished the prior art, in part, on the basis of its use of macroelectrodes
I

as opposed to microelectrodes" and determined the

'"microelectrod~' terms ... refer to
I

i

microelectrodes having a width of 15 µm up to approximately 100 µm." 119 However,
"simply being wrong about claim construction should not subject a party to sanctions
where the construction is not objectively baseless." 120 Also, the court did not indicate it
believed Roche's arguements were baseless or without merit.
Roche disputes Nova's contention that it "must have known t1at its
reconsideration request was procedurally improper," 121 and the couj disagrees with
Nova that the filing of that motion evidences bad faith or was objectiyely unreasonable.
I

After the court issued its September 15, 2009 Markman opinion, on September 29,
I

I

2009, Roche filed its motion for reconsideration pursuant to Local RL!ile 7.1.5 and cited
.

I

both the Third Circuit standard for reconsideration and the Federal 9ircuit's standards
on rolling claim construction. 122 Roche states that its motion

explain~d how new

evidence, including defendants' expert testimony, contradicted aspects of the court's

119

D.I. 563 at 8-9.
iLOR, LLC v. Google, Inc., 631 F.3d 1372, 1380 (Fed. Cir. 2001 ); see also
LendingTree, LLC v. Zif/ow, Inc., 54 F. Supp. 3d 444, 458 (W.D.N.C.\2014)
("Reasonable argument-even an unsuccessful one-does not make ~ case
exceptional.").
·
121
0.1. 1072 at 13.
122
D.I. 636-639; see also D.I. 655, 663, 694, 699.
1

120

19

I

construction, and explained how other evidence showed the court'~ construction of the
I
'1

electrode terms was based on a misapprehension of certain controlling factual and
I

legal issues.

123

In its motion for reconsideration, Roche did not challenge the court's

determination that the claims should be limited to micro-electrodes,] but requested the
'

I

court revise the definition of the "electrode" terms "to include the ful' scope of the
!

normal meaning of 'microelectrode,' i.e., microelectrodes having a vyidth of up to
approximately 1,000 µm." 124
The court ultimately denied Roche's motion. At the January 14, 2010 pretrial
conference, the court indicated it was inclined to deny the motion fo~ reconsideration
stating, "I've read the briefing. I'm not convinced that I made a mistake or that I didn't
I
'

I

123

D.I. 1072 at 13 (citing 0.1. 636; D.I. 637-639, 663, 699, 774).
124
D.I. 636 at 1. Roche identifies intrinsic and extrinsic evide~ce that purportedly
supports its position that describe micro-electrodes as extending up to 1,000 µm in
width. See 0.1. 1072 at 9 (citing '146 patent, 26:33-34, 27:45-46, 281:25-27 (references
to electrodes of up to 1,000 µmin width); 0.1. 986, Ex. 12, p.34 at lihes 3-7 (claims 1-2)
(the priority application, which only identified 100 µm as an upper liniit in a dependent
claim (leaving the broad, independent claim open-ended at the upp~r limit under the
doctrine of claim differentiation)); D.I. 986, Ex. 13 at R1073-75, 7082-84, 1088, 1095,
I
1102, 1117-18 (file histories of the patents in suit, including inventor iWilsey's
contemporaneous Excalibur Report, part of the file history of both patents, which
explicitly calls electrodes having widths of 300 µm, 500 µm, and 1,000 µm as
"microelectrodes"); and 0.1. 986, Ex. 15 at 146, 204-05, 209, Ex. 16 at R007719443-46,
and Ex. 17 at R007719451-53; 0.1. 984 at 'WIT 7-8, 10-14 (extrinsic e~idence, including
expert testimony on diffusion patterns and several extrinsic treatises :and technical
dictionaries, which described micro-electrodes as being up to 1 mm or 1,000 µm,
including the Bard & Faulkner's textbook, Electrochemical Methods, Fundamentals and
Applications, and the Electrochemical Dictionary)). Roche also argu~s that any
purported disavowal of macro-electrodes during prosecution does ndt make its claim
construction and infringement position unreasonable. It contends th~t it argued on
reconsideration and appeal that, even accepting the disavowal of m~cro-electrodes, the
I
intrinsic and extrinsic evidence support its position that the claims still encompassed
electrodes of up to 1 ,000 µm in width. D. I. 1072 at 11 .
1

1

I

20

consider all the arguments." 125 Despite that state·ment, the court invited Roche to
submit additional briefing "to give you an opportunity to put somethihg in place to tell me
that I shouldn't" deny the motion for reconsideration. 126 At the

Janu~ry 21, 201 O pretrial

conference, Roche was unable to convince the court to grant its morion. However, the
court stated, "I've looked at the paper on reconsideration. It's a great point for the
Federal Circuit, and I actually think you might have a point. But it wl,11 be interesting to
I

see what they say [about Roche's arguments]. So we will be

movin~ ahead with that

Rule 54 judgment." 127 Shortly thereafter, on February 16, 2010, Roche moved for a
Rule 15(b) judgment of non-infringement on its patent claims. 128 onl July 27, 201 O, the

T
I
I

court granted Roche's motion and Roche filed its Notice of Appeal.

. According to Roche, in the first appeal Nova did not raise anJ procedural
objection or argue that any of Roche's reconsideration arguments

Oli

evidence should

be ignored and agreed that the merits of Roche's claim construction arguments should
be addressed. 130 In that appeal, the Federal Circuit stated:

125

D.I. 858 at 46:9-11, 47:7-9.
Id. at 47:12-13.
127
D.I. 859 at 5:24-6:6. Nova's argument that Roche's motiori for
reconsideration forced it to continue to prepare for a 2010 trial on infringement that was
"never going to happen" is misplaced. The court did not finally rule dn that motion until
the January 21, 2010 pretrial conference. Prior to that date, the part,es could not be
certain what the court's ruling would be and necessarily would have to continue trial
preparation in the event that the court granted Roche's motion.
:
128 D.I. 812.
I
129
D.I. 850, 851, 852.
I
130
D.1.-1072 at 14. On remand, this court stated, "[o]n the one hand, the Federal
I
Circuit's statement [that "Nova ... do[es] not dispute on appeal ... that Roche's
argument should be addressed on the merits"] sounds like a conclus/on that any
procedural objections were waived. On the other hand, Defendants rave represented
that they did not waive the [procedural] arguments in their briefing. WI hen I pressed
them on the point, the response was underwhelming. Defendants['] ... provided
126

1

21

I
I

The procedural posture of this case ... deprives us of the dtrict court's
resolution (and illumination) of the issues that are raised with respect to
the construction of the term "electrode." Roche raised its cul-rent claim
construction argument to the district court in a motion for recbnsideration
which the district court denied. The district court did not addtess whethe;
reconsideration was procedurally appropriate, and, if so, whether Roche's
argument has merit. Nova ... do[es] not dispute on appeal, !however,
that Roche's argument should be addressed on the merits. 131,
!

The Federal Circuit did not indicate it believed Roche's positions to pe baseless or
'

without merit, and commented that "Roche counters (rather persua~ively, in our view)
that this statement [in the specifications regarding the dimensions of electrodes], and
other similar statements in the specification, is merely a non-limiting description of a
I
I

preferred embodiment of the claimed invention." 132 The Federal Cireuit then "vacate[d]
'

the judgment of non-infringement ... and remand[ed] to the district bourt to consider
I

the parties' arguments that pertain to the scope of the term 'electrode."' 133
On remand, the parties provided further briefing on Roche's droposed claim
construction of "electrode," and whether Judge Farnan was justified [in denying Roche's
motion for reconsideration on procedural grounds. 134 On December 5, 2015, a
Memorandum Opinion issued finding that Roche's motion for recons]ideration was
procedurally improper and adopted this court's original claim construction. This opinion
I

citations do not show any argument at all about reconsideration being procedurally
improper. I do not see any evidence that Defendants put the Federcil Circuit on notice
that Defendants were arguing that the Federal Circuit should affirm the claim
construction based on the waiver argument." D.I. 1025 at 8-9.
131
Roche I, 452 F. App'x at 994 (emphasis added).
132
Id. at 995.
133
Id. at 998; see also id. at 997 ("Accordingly, we remand the case to the district
court for the purpose of construing the term 'electrode' and any subs equent proceeding
that might be necessary once the court construes that term.").
134
D.I. 1051 at 8.
1

22

noted "such a decision is particularly warranted here where Roche is not only raising an
argument it did not make [at the first Markman hearing], but an

arg~ment that is
I

contrary to the argument it did make" 135 The court also considered the merits of
Roche's construction of "electrode" in light of the record before it, in'cluding the parties'
post-remand briefing, with over 1,500 pages of extrinsic evidence

a~d the expert
I
I

declarations submitted by Roche." 136 The court did not find

Roche'~ new extrinsic

evidence persuasive and affirmed its prior construction of "electrodJ." 137 Although the
court determined that the original construction of "electrode" was supported due to
Roche's procedurally improper motion for reconsideration, and on the merits, there is
i

again no statement by the court that Roche's claim construction arguments were
!

unfounded or frivolous.

138

On January 15, 2015, the parties filed a stipulation and Joint Motion for Entry of
Final Judgment of Noninfringement. 139 On January 16, 2015, the co urt entered a Final
1

135

D.I. 1025 at 8. The court also found that Roche's "'new extrinsic evidence'
was mostly new only in the sense that it had not been presented by Roche before and
that, in the opinion of the court, that '"new extrinsic evidence' was not new and therefore
was not a proper ground for reconsideration." Id. at 7.
136
D.I. 1051 at 8-9 (citing D.I. 964-987, 1004, 1005).
137
D.I. 1025 at 15.
138
Cf., e.g., Vehicle Operation Techs. LLC v. Ford Motor Co., C.A. No. 13-539RGA, 2015 WL 4036171, at *3 (D. Del. July 1, 2015) (finding case exceptional based
on previous rulings "that any objectively reasonable pre-suit investigation would reveal
that the entire action was meritless" and plaintiff's claim construction 1"was frivolous and
objectively unreasonable"); Chalumeau Power Sys. LLC v. Alcatel-U.1cent Holdings Inc.,
I
C.A. No. 11-1175-RGA, 2014 WL 4675002, at*2-3 (.Del. Sept. 12, 2014) (awarding
fees where plaintiffs proposed constructions, "taken as a whole ... iere frivolous,"
finding dne proposed construction "was one of the wors[t] proposed bonstructions I've
I
ever seen so far," and determining plaintiff "filed a frivolous lawsuit with the sole
purpose of extorting a settlement fee").
139
D.I. 1029.
'

1

23

Judgment of non-infringement. 140 On February 23, 2015, Roche filed a Notice of
'1

Appeal.141

I

In the second appeal, Roche argued that this court's construlion was improperly
based on a preferred embodiment, that the Common Specification'l discussion of
diffusion precludes a 100 µm limit for micro-electrode width, and thlt Examples 3 4

I

, ,

and 5 of the '146 patent show that micro-electrodes can have a width greater than 100
I
µm.

142

i

The Federal Circuit rejected each of Roche's arguments. 143 IHaving decided in
1

Roche I that the procedural posture of the case at that time

prevent~d the court from
I

.

definitively ruling on Roche's construction of "electrodes" set forth in\ its motion for
I

reconsideration, the Roche II appeal was the first time the Federal Circuit was able to

I
Roche's arguments, the Federal Circuit did not indicate Roche's po~i!ions were

rule on the merits of the parties' claim construction positions. Again although rejecting

meritless or unreasonable.
Consequently, considering the totality of the circumstances, tie court does not
find this to be an exceptional case and Nova's motion should be denied.
Ill.

I

ROCHE'S RENEWED MOTION FOR ATTORNEYS' FEES ASSOCIATED WITH
144
NOVA'S COUNTERCLAIMS
I
This court has determined, and the Federal Circuit affirmed, t~at Swiss law
140
141
142
143

D.I. 1032.
D.I. 1035.
Roche II, 660 Fed. App'x at 936-37.
Id. The Federal Circuit also found "the court did not clearly err in finding
Roche's extrinsic evidence unpersuasive" and stated "[e]ven the extrinsic evidence
Roche cited is inconsistent with its assertion that 1,000 µm is an estJblished width limit
for microelectrodes." Id. at 939. The court filed its opinion and ente~ed its judgment on
September 22, 2016, D.I. 1041-1, and its Mandate issued October 31, 2016. D.I. 1041.
144
D.I. 1050.
24

:I

governs certain of Nova's counterclaims. 145 According. to Roche, S~iss law follows the
"English Rule" of awarding attorneys' fees and expenses to the prelailing party of such
·claims as a matter of course. 146 As the prevailing party on Nova's cbunterclaims, Roche
contends it is entitled to an award of fees for defense against thosel,claims. 147
I

A.

Background
1,

The background facts presented by Nova in support of its motion are as follows:
in answering Roche's amended complaint, Nova sought declarations of non1

I

infringement (First Counterclaim) and invalidity (Second Counterclairn). 148 Nova also
filed counterclaims for patent infringement (Third Counterclaim), bre.ach of contract
'

(Fourth Counterclaim), misappropriation of trade secrets (Fifth Cou~terclaim), unfair
competition (Sixth Counterclaim), and conversion (Seventh Counterllaim). 149
On May 28, 2008, Roche answered Nova's affirmative

defen~es and
I

counterclaims, including a defense that Nova's Fourth, Fifth, Sixth, dnd Seventh
Counterclaims ('the Swiss law counterclaims") fail to state a claim

u~on which relief
I

150

may be granted .

Roche's prayer for relief on Nova's counterclaimk included a

request for an award of attorneys' fees in connection with the countJrclaims. 151 On that
.

I

I

.

same date, Roche filed a motion to dismiss Nova's Fourth, Fifth, Sixth, and Seventh

See Oral Order of January 25, 2010 ("After considering th~ parties'
arguments, the Court concludes that the laws of Switzerland apply · all of the
counterclaims asserted by Nova in the action."); D.I. 948-1 at 16-17.
146
D.I. 1052 at 1.
147 Id.
148
D.I. 181.
149 Id.
150
D.I. 199.
151
D.I. 199.
145

25

Counterclaims under FED. R. C1v. P. 12(b )(6) for failure to state a clkim, and in so
moving, asserted that those counterclaims were subject to Swiss laL based on a prior
contractual agreement (the "Agreement") between that parties. 152

It

its motion, Roche

argued that because Nova presented its counterclaims under U.S. cwmmon law, which
.
I
I

Roche argues does not apply, each of the Fourth through Seventh Counterclaims fails
.

I

to state a claim upon which relief can be granted and should be dismissed. 153
.

I
I
II

152

D.I. 200 at 1. The referenced Agreement is a non-disclosLre agreement
between Hoffman-La Roche, Ltd. ("HLR") and Nova. See D.I. 1054i(Dasser Deel.), Ex.
C. According to Nova, on September 8, 1999, Gerd Grenner, HLR's Chief Technology
Officer, traveled to Waltham, Massachusetts to meet with Nova's P~esident, Frank
Manganaro, to discuss Nova's new glucose monitoring technology and the potential for
I
HLR to become a marketing partner for Nova's technology. D.I. 1068 at 3 (citing D.I.
814 at 250-51 ). Because Nova's technology was proprietary and c9nfidential, Nova
requested that HLR execute Nova's non-disclosure agreement, which was sent to
Grenner in advance of the meeting. Id. (citing D.I. 814 at 263-64). i[nstead of signing
Nova's agreement, Grenner arrived on September 8 with Roche's two-page form nondisclosure agreement, Id. (citing D.I. 1054, Ex. C), which Manganard signed without
lawyer review or discussion of the terms. Id. (citing D.I. 816 at 869 (G[ renner describing
the Agreement as "our standard confidential agreementD drafted by our counsel in
Switzerland")). The purpose of the Agreement was to facilitate the disclosure of Nova's
confidential information, subject to certain terms and conditions. Id. [(citing D.I. 1054,
Ex. E). The Agreement was executed on September 8, 1999 and its final line stated
"[t]his Agreement shall be governed in all respects by the laws of S1itzerland." D.I.
1054 , Ex. C at 2. Nova maintains there is nothing in the Agreement regarding
resolution of disputes arising from the agreement, the venue or forurti for hearing such
disputes, or attorneys' fees. D.I. 1068 at 3 (citing D.I. 1054, Ex. C).
153
D.I. 200 at 1. This motion to dismiss was never formally decided; the court
addressed issues raised in the motion at and before trial, by decidin@ that Swiss law
applied to the counterclaims and that Nova could only proceed on its breach of contract
and unfair competition counterclaims (Fourth and Sixth Counterclai~s). See Oral Order
of January 25, 201 O; D.I. 816 at 997-98. Hereinafter, therefore, the bourt will refer to
Nova's Fourth through Seventh Counterclaims as the "Swiss law coJnterclaims." The
Federal Circuit affirmed this court's determination of the application Jf Swiss law to
those counterclaims. D.I. 948-1 at 16-17. During fact discovery, all tlaims directed to
I
Nova's patent infringement allegation were dismissed with prejudice by stipulation
between the parties, with each party bearing its own costs and attor~eys' fees in
connection with activities pertaining to that patent infringement dispute. D.I. 342. The
court ordered the stipulation on October 29, 2008. D.I. 344.
1

1

1

26

According to Roche, Nova's Swiss law counterclaims created a "case within a
I

case," requiring the parties to expend significant effort, at considerable expense, on
issues related to those counterclaims, including conducting specific discovery of Nova,
responding to Nova's discovery, participating in third party discovefY:, and filing and/or
I

responding to numerous motions.

154

Roche maintains that, althoug~ discovery

proceeded on Roche's patent claims and Nova's Swiss law counterblaims, the issues
were treated separately, as evidenced by this court's establishment

lpt separate and

distinct discovery rules for the non-patent issues. 155
Following fact discovery, Roche engaged the services of two experts with
respect to Nova's Swiss law counterclaims, resulting in expert reports and depositions
on issues solely related to such counterclaims. 156 At the close of fadt and expert
I

discovery, Roche filed a motion for summary judgment on Nova's sJviss law
counterclaims. 157
Roche further avers that Nova's Swiss law counterclaims reql!lired numerous
additional pre-trial motions and preparation of exhibits and other su,missions relating to
the counterclaims. 158 Those submissions included Roche's motion t© bifurcate trial on
1.

Nova's Swiss law counterclaims from trial on Roche's patent infringe,ment claims. 159
''

Roche contends that at the January 14, 2010 pretrial hearing, Judge Farnan
'1

'

I

D.I. 1052 at 3 (citing D.I. 1055 (Fritsch Deel.) at 11~ 24-25).1
Id. at 2 (citing D.I. 147 (Scheduling Order) at§§ 3(a)(i)(2), (li)(3), and (ii)(2)).
156
Id. (citing D.I. 1055 at~ 26).
157
D.I. 540-544; see also D.I. 1055 at C!f 27. Roche filed anot~er motion for
summary judgment on Nova's Affirmative defenses it states pertainea in part to the
counterclaims. D.I. 1052 at 2 n.4 (citing D.I. 525-528).
158
D.I. 1052 at 2 (citing D.I. 683, 687, 732, 755-57; D.I. 1055 at ,-r41128-29).
159
Id. at 3 (citing D.I. 732-34; D.I. 1055at 'If 28).
154
155

I

27

found Nova's Swiss law counterclaims were separate and distinct fJom Roche's patent
claims: "I think there is some factual overlap, but I don't think there is an issue overlap.
And I think the counterclaims and patent issues can be tried separately, both in a legal
1

sense and in a time sense." 160
Roche argues that at the January 21, 2010 pretrial hearing, the court effectively
!

turned the "case within a case"-Nova's Swiss law counterclaims-into its own separate
I

matter by (1) deciding that it would resolve Roche's patent claims with a judgment
under FED. R. C1v. P. 54(b), and (2) rejecting Nova's arguments that\a trial on its Swiss
i

law counterclaims should be stayed pending the appeal of Roche's patent claims so
I

Roche's patent claims and Nova's Swiss law counterclaims could b~ tried together. 161
II

On January 25, 2010-the eve of the trial on Nova's Swiss law counterclaims-this

160

D.I. 858 at 37:15-19.
D.I. 1052 at 3 (citing D.I. 859 at 5:24-6:6 ("I've looked at tHe paper on
reconsideration. It's a great point for the Federal Circuit, and I actua~lly think you may
have a point. But it will be interesting to see what they say. So we will be moving
ahead with that Rule 54 judgment."); D.I. 859 at 6:17-8:1 ("And then re come to the
trial that's going to start on the 26th. Not a convincing case under the 7th Amendment,
even with the Eagles cuff links. But I want to starkly state the issue, !because it comes
up so frequently. What I understand Nova to be asking for is a unitary trial which would
have liability and damages. I previously had separated the issue of d,amages and did
not allow discovery. So we come to our present status with these cdunterclaims that
need to be tried. No damages discovery. And a request for a unitary trial and a
continuance of the allegations against Roche. I think you said in the paper four or five
months or something like that. I'm going to deny the request. I'm gd ing to find that the
7th Amendment does not require after a separation of issues, particularly as distinct as
liability and damages are in legal theory, does not require trial by theisame jury. It's a
great issue. And I've said it as clearly as I can. So that my ruling is that you can always
separate liability and damages. And the Court-the District Courts ca 1n try those two
separate juries. There's no 7th amendment right to the same jury evrn where, as the
argument in this case is made by Nova, that there may be factual overlay. So I think
that takes care of that.").
161

1

1

1

28

court determined that Swiss law applied to the counterclaims. 162 A.five-day jury trial
addressing only the counterclaims was conducted from January 26 to February 1,
2010.

163

On January 28, 2010, after receiving testimony from Dr. Felix Dasser, Roche's

expert on Swiss law, and with the court interposing its own questionls, the court
I
1

confirmed that Swiss law applied to Nova's claims and that Nova co uld proceed only
with its breach of contract and unfair competition claims. 164
I

On February 1, 2010, the court instructed the jury to adjudicale Nova's Swiss law
breach of contract and unfair competition counterclaims. 165 On Feb~uary 2, 201 O, the
jury returned a verdict in favor of Roche on those counterclaims, e.g., that Nova had not
I

I

proven Roach breached the contract or that Roche engaged in unfair competition. 166
,

I

Following the verdict, on February 12, 2010, Nova filed a motion for judgment as a
matter of law on its breach of contract and unfair competition countJ(claims. 167 On
March 3, 301 O, Nova filed a motion for a new trial. 168 On July 27, 20110, the court issued
a Memorandum Opinion and Order denying Nova's post-trial motions. 169 The court
entered judgment in Roche's favor that same day. 170

I
I

See Oral Order of January 25, 2010 ("After considering th~1 parties'
arguments, the Court concludes that the laws of Switzerland apply to all the
counterclaims asserted by Nova in the action.").
163
See D.I. 814-19.
164
D.I. 816 at 998-98.
165
D.I. 819 at 1372-1393.
166
D.I. 807.
I
167
D.I. 81 O. Roche filed its opposition to Nova's motion for judgment as a matter
of law on March 1, 2010. D.I. 834.
I
·
168
D.I. 836. Roche filed its opposition to Nova's motio'n for a mew trial on March
22, 2010. D.I. 841.
169
D.I. 847, 848; see also D.I. 1055 at !ff 30.
170
D.I. 851. The court's judgment also ordered Judgment be entered pursuant to
FED. R. C1v. P. 54(b) in favor on Nova on non-infringement of Roche'~ '146 and '147
162

1

29

On July, 27, 2010, Roche filed a Notice of Appeal regarding the claim
construction issue that led to the Rule 54(b) judgment on its patent biaims. 171 On
August 26, 2010, Nova filed a Notice of Cross Appeal relating to thj trial and the

Accordi~g to Roche, its
appeal concerning its patent claims and Nova's appeal relating to It~ Swiss law

judgment for Roche on Nova's Swiss law counterclaims. 172

counterclaims were consolidated at the Federal Circuit. 173 On

Janu~ry 25, 2012, that
I

court issued its decision affirming "the district court's resolution of all issues and the
I

jury's verdict of no-liability regarding Nova's counterclaims." 174 The federal Circuit
issued its Mandate on March 2, 2012. 175 Roche avers that its defense at the Federal
Circuit required substantial attorney effort, including appellate

motio~ practice and

briefing, and oral argument development. 176
On March 9, 2011, Roche submitted a Motion for Attorney Fels Associated with
Nova's Counterclaims. 177 Also on March 9, 2011, Nova filed a Motion to Declare This
I

Case Exceptional, for an Award of Fees and Related Expenses, andl to Defer Briefing
on This Motion Until All Appeals are Exhausted. 178 By stipulation of the parties, briefing
on those motions was initially deferred. 179 The parties' March 23,

20lr 1 Stipulated Order

patents.
171

D.1.1052 at 4 n.6 (citing D.I. 852).
,
Id. at 4 (citing D.I. 863; D.1.1055 at~ 31 ).
173
Id. at 4 n.6 (citing D.I. 948).
1
174
D.I. 948-1 at 18. That decision also addressed the claim construction issues
I
and "vacate[d] the judgment of non-infringement ... and remand[ed] to the district court
to consider the parties' arguments that pertain to the scope of the tenm 'electrode."' Id.
175
D.I. 948.
176
D.I. 1055 at~ 31.
177
D.I. 937.
178
D.I. 939.
179
DJ. 1052 at 4.
172

1

30

for Deferral of Briefing for Motions for Fees, So Ordered by the court the following day,
deferred full briefing on the parties' fees motions until the "latter of (Ii) thirty (30) days
after the Federal Circuit issues its final mandate following exhaustidn of all appeals, or
(ii) thirty (30) days after the time to file any further appeals is exhaulted." 180 Despite the
language of the stipulation, Roche states that-out of an abundance of caution-on April
2, 2012, it filed an Opening Brief in Support of its Motion for Attorne¥ Fees Associated
with Nova's Counterclaims and supporting declarations. 181 On April 18, 2012, the court
issued an order regarding its interpretation of the Stipulated Order f©r Deferral of
Briefing stating: 'The Court interpreting its prior order ( D. I. 941 ) to ,rovide that briefing
on this Motion and Nova's Fees Motion (D.I. 939) would not occur until after all
appellate rights have been exhausted" and ordered "that no further tiefs need be, or
should be, filed in relation to these two motions until the conditions Jf D.I. 941 are
I

met." 182 On May 14, 2012, the court issued an additional order dismissing the parties'
motions for attorney fees, D.I. 937 & D.I. 939, as not being ripe for dbcision and
provided leave to refile after the conditions oft.he Stipulated Order fJ Deferral of
Briefing for Motions for Fees, D.I. 941, were met. 183

I

Between 2012 and 2015, the parties addressed the claim con',struction issue
related to Roche's patent claims that the Federal Circuit remanded t0 this court. 184 On
I
I

January 16, 2015, the court issued a Final Judgment finding that unqer the court's
I
I

180
181
182
183
184

D.I.
D.I.
D.I.
D.I.
D.I.

941.
1052 at 5 (Citing D.I. 941, 955-959; D.I. 962-64).
977.
982.
1052 at 5.
31

I

I·

construction of the term "electrode" after remand, Nova's accused fulood glucose
monitoring systems do not infringe Roche's '146 and '147 patents Jnd that Judgment
.

I

be entered in favor of Nova on non-infringement of those patents.

1On February 13,

18

2015, Roche again appealed the Judgment relating to its patent claims. 186
On September, 22, 2016, the Federal Circuit issued its Opinibn and entered
Judgment in the second appeal. 187 The Federal Circuit affirmed thiJ court's
construction of "the term 'electrode' in a way that excluded Oefenda\nts' products. The
district court's claim construction was correct and we therefore

affir~ the court's

judgment of non-infringement. "188 The Federal Circuit issued tts Maldate on October
31, 2016. 189
Given the Federal Circuit's September 22, 2016 Judgment, the time for Roche to
appeal to the Supreme Court expired December 21, 2016. 190 Roch1 states that
pursuant to the parties' stipulation, 0.1. 941, and the prior order of this court, 0.1. 982,
I

Roche filed its motion within 30 days of the expiration of its time to file an appeal to the
Supreme Court. 191

B.

Discussion

The parties dispute whether Roche is a prevailing party. A party is a prevailing
party "when actual relief on the merits of his claim materially alters

185
186
187
188
189
190
191

0.1. 1032.
0.1. 1035.
0.1. 1041-1.
Id. at 2.
0.1. 1041.
0.1. 1052 at 5 (citing Sup. Ct. R. 13(1 )).
Id.
32

t~e legal relationship

between the parties by modifying the ... behavior [of one party] in a way that directly
benefits [the other party]." 192
Roche contends it is a prevailing party because it successfully defended itself
against all of Nova's Swiss law counterclaims by securing (a) a

ruli~g that Swiss law

governed those counterclaims, which mooted two of the counterclailms, and (b) a jury
verdict did not breach its contract with Nova or committed any acts bf unfair

.

competition, a verdict affirmed on appeal. 193
Nova argues Roche is not the prevailing party in this litigation because Roche did
not succeed in its overall objective in the litigation, which sought relilf based on

.

Nova's alleged infringement of Roche's patents. 194 Nova contends that its lack of
success with regard to its counterclaims does not mean Roche is thl prevailing party
because "[d]eterrnination of the Rrevailing party is based on the re/ajion of the litigation
result to the overall objective of the litigation, and not on a count of the number of
claims and defenses." 195 Nova claims it is the prevailing party becaJse Roche failed in
its "overall objective of the litigation," since the central issue (on whidh Roche filed this
action) was Nova's alleged infringement of Roche's patents, and Rolhe failed to prove
.Nova infringed those patents. 196 The court has determined, above, t at Nova was the
prevailing party with respect to Roche's patent claims. The question that must be

192

Farrarv. Hobby, 506 U.S. 103, 111-12 (1992).

193

D.I. 1052 at 6.
D.I. 1068 at 3-4.
195
D. I. 1068 at 5 (quoting Brooks Furniture Mfg. v.- Dutalier Inti!, Inc., 393 F .3d
1378, 1381 (Fed. Cir. 2005), abrogated on other grounds by Octane Fitness, LLC f.
ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014)).
194

196

Id.
33

answered here is whether Roche can also be a prevailing party with respect to Nova's
Swiss law counterclaims.
Nova contends Roche is not the prevailing party due to its success in defending
against Nova's Swiss law counterclaims because the law does not support piecemeal
determination of a prevailing party. 197 For support, Nova cites the Federal Circuit's
statement that "Rule 54 does not allow every party that won on some claims to be
deemed a 'prevailing party.' For the purposes of costs and fees, there can only be one
winner." 198
Supreme Court precedent indicates, in some instances, there may be more than
one prevailing party. In Hensley v. Eckerhart, the Court held that a party can be
deemed a prevailing party even though it prevailed on some claims and lost on others,
where there are "distinctly different claims for relief that are based on different facts and
legal theories," and the court has treated those unrelated claims "as if they had been
raised in separate lawsuits." 199 The Court also noted that in applying fee-shifting
statutes, both plaintiff and defendant can be prevailing parties and both can recover
fees in a single suit involving multiple unrelated claims. 200
In Fox v. Vice, the Supreme Court reiterated:
In Hensley, we noted the possibility that a plaintiff might prevail on one
contention in a suit while also asserting an unrelated frivolous claim. In
this situation, we explained, a court could properly award fees to both
parties-to the plaintiff, to reflect the fees he incurred in bringing the
meritorious claim; and to the defendant, to compensate for the fees he

197
198
199

200

Id.
Id. (quoting Shum v. Intel Corp., 629 F.3d 1360, 1367 (Fed. Cir. 2010)).
461 U.S. 424, 434-35 (1983).
Id. at 434-35, 435 n.10.
34

paid in defending the frivolous one. 201
Although both Hensley and Fox considered claims brought under 42 U.S.C. § 1988, the

Hensley court held "[t]he standards set forth in this opinion are generally applicable in
all cases in which Congress has authorized an award of fees to a 'prevailing party."' 202
Here, the court finds that Roche's patent claims and Nova's Swiss law
counterclaims are "distinctly different claims for relief that are based on different facts
and legal theories" and the court has treated those unrelated claims "as if they had
been raised in separate lawsuits." At the January 14, 201 O pretrial hearing, Judge
Farnan indicated that Nova's Swiss law counterclaims were separate and distinct from
Roche's patent claims: "I think there is some factual overlap, but I don't think there is
an issue overlap. And I think the counterclaims and patent issues can be tried
separately, both in a legal sense and in a time sense." 203 The distinction between the
parties' claims is also evident from the court's determination at the January 21, 2010
pretrial conference that it would resolve Roche's patents claims with judgment under
FED. R. C1v. P. 54(b) and rejected Nova's request that the trial on its counterclaims be
postponed until after the appeal on Roche's patent claims were resolved.
The court also finds that Roche is a prevailing party because "actual relief on the

201

Fox v. Vice, 563 U.S. 826, 835 (2011) (citing Hensley, 461 U.S. at 435, n.1 O);
see also FUR Sys., Inc. v. Sierra Media, Inc., 965 F. Supp. 2d 1184, 1200 (D. Or. 2013)
(The district court rejected defendant's reliance on Shum to argue the Lanham Act
envisions only one prevailing party, noting "[a]s the Supreme Court observed in Hensley
v. Eckerhart, 461 U.S. 424 (1983), a single civil rights lawsuit can contain distindly
different claims for relief that are based on different facts and legal theories, and as a
result, 'these unrelated claims [must] be treated as if they had been raised in separate
lawsuits."' (second alteration in original) (quoting Hensley, 461 U.S. at 435)).
202
Hensley, 461 U.S. at 433 n.7.
203
0.1. 858 at 37:15-19.
35

merits of [Nova's Swiss law counterclaims] materially alter[ed] the legal relationship
between the parties by modifying the ... behavior [of one party] in a way that directly
benefits [the other party]" 204 in that it secured a ruling that Swiss law governed the
counterclaims, which mooted two of the counterclaims and obtained a jury verdict,
affirmed on appeal, that Roche did not breach its contract with Nova and did not commit
any acts of unfair competition, thus avoiding a potentially large damages award and an
injunction prohibiting its sale of certain products.
Roche contends that as a prevailing party on claims contractually governed by
Swiss law, it is entitled to an award of attorneys' fees. 205 Roche alternatively argues
that the "English Rule" applies by virtue of the Agreement, and that even under a choice
of law analysis, Swiss law dictates its entitlement to fees. 206 Finally, Roche contends
that at the very minimum, its attorneys' fees should be calculated according to the
lodestar method under Delaware law. 207
Nova argues that even if, as the court has found, Roche were a prevailing party,
Delaware law governs an award of attorneys' fees because: (1) the parties did not
agree that the "English Rule" would apply, (2) under Delaware's conflict of law analysis,
attorneys' fees are governed by the law of the forum, and (3) even if the court were to
conduct its own conflict of law analysis under the Restatement, the result would be the
same. 208 Nova also maintains that Roche's request under the lodestar approach should

204
205
206
207
208

Farrar v. Hobby, 506 U.S. 103, 111-12 (1992).
D.I. 1052 at 8.
/d. at 8-13.
Id. at 17-20 ..
D.I. 1068 at 6-17.
36

be denied, Roche's request for fees under Swiss law was waived, and Roche's expert's
analysis of Swiss law is flawed and does not support its claim for attorneys' fees. 209
The court first addresses Nova's contention that Roche's request for fees under
Swiss law was waived. "Claims for attorney fees are items of special damages which
must be specifically pleaded under Federal Rule of Civil Procedure 9(g) .... In the
absence of allegations that the pleader is entitled to attorney's fees, therefore, such
fees cannot be awarded." 210 Nova states the purposed of FED. R. C1v. P. 9(g) is to put
the other party on notice of the special damages claim, particularly where a party is
invoking foreign law. 211 Nova maintains Roche did not specifically include a request for
attorneys' fees on Nova's Swiss law counterclaims in its answer to those counterclaims,
and has thus waived its right to request its attorneys' fees post-judgment. 212
The court agrees with Roche that it has not waived its right to seek attorneys'
fees. Roche's reply to Nova's counterclaims requested "(g) [t]hat this Court find this
case to be exceptional and award Roche its attorney fees, costs, and expenses, in this

action,"213 thereby putting Nova on notice that Roche would be seeking attorneys' fees

209

Id. at 17-20.
Maidmore Realty Co., Inc. v. Maidmore Realty Co, Inc., 474 F.2d 840, 843 (3d
Cir. 1973) (internal citation omitted).
211
D.I. 1068 at 18 (citing Kramer v. Am. Pac. Corp., No. 94C-08-167-WTO, 1998
WL 442766, at *3 ("If anything, there is more reason for notice of an attorneys' fee
claim which is based on foreign law, different from the usual rule in the forum State and
different from at least the traditional general American rule.").
212 Id.
213
D.I. 81 at 14 (emphasis added); see also D.I. 199 (Roche's Reply to Nova's
Counterclaim) at 13 (requesting "That this Court find this case to be exceptional and
award Roche its attorney fees, costs, and expenses in this action.") (emphasis added).
210

37

in connection with all of Nova's counterclaims. 214 Through Roche's motion to dismiss,
Nova knew early in the case that Roch.e contended that Swiss law applied to Nova's
counterclaims: "the agreement between Nova and HLR expressly dictates that all
claims arising out of the agreement shall be governed by Swiss law. Therefore, all of
Nova's Fourth through Seventh Counterclaims are governed by Swiss law." 215 Roche
argued:
Nova has not provided any notice pursuant to Rule 44.1, FED. R. C1v. P.,
that these Counterclaims are brought under Swiss law. To the contrary,
Nova's Counterclaims are presented under U.S. common law, which does
not apply. Therefore, each of these Fourth through Seventh
Counterclaims fails to state a claim upon which relief can be granted and
should be dismissed. 216
The court agrees with Roche that the cases cited by Nova do not compel a
determination that Roche waived its right to seek attorneys' fees. In Maidmore Realty,
the Third Circuit affirmed the award of reasonable attorneys' fees for "services
performed in connection with [the] action" where the party was awarded fees based on
a pleading seeking "court costs of this action, including a reasonable attorney's fee." 217

214

This includes, in Roche's estimation, an award of attorneys' fees under Swiss

law.
215

D.I. 200at1.
Id.; see also, e.g., Maale v. Kirchgessner, No. 08-80131-CIV, 2011 WL
1549058, at *3, *5 (S.D. Fla. Apr. 22, 2011) (The court rejected plaintiff's argument that
defendant waived its right to argue Turks and Caisos law and defendant's responsive
pleading did not specifically state she would seek attorneys' fees pursuant to the
English rule in violation of FED. R. C1v. P. 9(g) where defendants "repeatedly relied upon
the forum selection clause and choice of law provision [of the parties' agreement] in
their affirmative defenses and motions for summary judgment. As such, the Court finds
that [plaintiff] had notice since very early in the litigation that Turks and Caicos law may
apply to the claims such that [defendant] did not waive the application of the law of the
Turks and Caicos Islands.").
217
Maidmore Realty, 474 F.2d at 843 (emphasis omitted).
216

38

The court denied as special claims for attorneys' fees for pre-filing fees "services
allegedly rendered over the five year period prior to filing the cross-complaint," which
the court determined must be specifically pied as special damages under FED. R. C1v.
P. 9(g).2rn
Other cases cited by Nova where the court determined a party waived the right to
seek attorneys' fees involved parties who did much less than Roche to provide
sufficient notice of its intention to seek fees. In Bensen v. Am. Ultramar Ltd.,
"defendants failed to include a request for attorney's fees in their amended answer" and
the court "rejected defendants' contention that their original request for 'costs and
disbursements' and 'such other and further relief the Court may deem just and proper'
was adequate to plead a request for attorney's fees." 219 In Kramer v. Am. Pac. Corp.,
"[defendant] for the first time in the litigation, while a final judgment was on appeal, filed
a claim for attorneys' fees." 220 In United Indus., Inc.

v. Simon-Harlley, Ltd., plaintiff's

"complaint did not include a request for attorneys' fees." 221 Plaintiff's "failure to request
attorneys' fees in its complaint or pretrial order precluded discovery." 222
Unlike those cases, Roche put Nova on notice that it would seek attorneys fees
in connection with Nova's counterclaims and made clear that it contended Swiss law

218 Id.
219 No. 92 CIV. 4420 KMW NRB, 1997 WL 317343, at *10-11, n.29 (S.D.N.Y.
1997). Defendants also apparently did not provide notice to plaintiff of their intention to
seek attorneys' fees in any motions during the pend ency of the litigation as the court
noted defendants "did not invoke the English rule until after trial." Id. at *10.
220 No. 94C-08-167-WTQ, 1998 WL 442766, at *1 (Del. Super. Ct. July 28,
1998).
221 91 F.3d 762, 763 (5th Cir. 1996).
222 Id. at 764.

39

applied to those counterclaims. Consequently, the court determines Roche did not
waive its rightto seek attorneys' fees under Swiss law. Whether Roche is entitled to an
award of such fees is a different question as the parties dispute whether an award of
attorneys' fees under Swiss law is warranted.
The parties disagree as to whether Swiss law applies to Roche's request for
attorneys' fees by virtue of the non-disclosure Agreement. Roche contends it does. It
notes that this court and the Federal Circuit determined Nova's Swiss law counterclaims
were governed by Swiss law due to the Agreement's provision that it "shall be governed
in all respects by the laws of Switzerland." 223 Roche argues that this broad choice of
Swiss law applies not just to the Swiss law counterclaims, but also to the issue of
attorneys' fees. 224 Swiss law follows the "English Rule" of awarding attorneys' fees to
the prevailing party as a matter of course. 225 Roche maintains by entering their
Agreement and selecting Swiss law "in all respects," the parties opted into the English
Rule for the issue of fees. 226 Roche concludes, therefore, that as the prevailing party on
Nova's Swiss law counterclaims, it is entitled to an award of attorneys' fees and
expenses incurred in the defense of those counterclaims. 227
The parties' disagreement on whether Swiss law applies to Roche's request for

223

D.I. 1052 at 8 (citing D.I. 1055, Ex. A; Oral Order of Jan. 25, 2010; D.I. 948-1

at 16-17).

Id.
Id. at 9 (citing D.I. 1054 at ~1f 9-1 O); see also Applera Corp. v. MP
Biomedicals, LLC, Cal. App. 4th 769, 789 (2009) ("According to plain~iff (and defendant
does not dispute this point), Swiss law provides for the award bf attorney fees to the
prevailing party as a matter of course (the 'English Rule').").
226
D.I. 1052 at 9.
227 Id.
224
225

40

attorneys' fees rests on whether the right to those fees is procedural or substantive.
"The law of the forum governs procedural matters." 228
In Relax Ltd. v. ANIP Acquisition Co., the court addressed whether attorneys'
fees should be awarded based on a choice of law clause stating the agreement "shall
be governed by English law." 229 There, the court held that the attorneys' fees issue was
substantive and that "the parties' choice of English law should control the resolution of
that [issue]." 230 In reaching that conclusion, the court considered the following factors
identified in the RESTATEMENT (SECOND) OF CONFLICT OF LAWS§ 122, cmt. a.
("RESTATEMENT§ 122"):
First, whether the parties shaped their actions with reference to the local
. law of a certain jurisdiction; second, whether the issue is one whose
resolution would likely to affect the ultimate result of the case; third,
whether the precedents have tended consistently to classify the issue as
procedural or substantive for conflict of law purposes; and fourth, whether

228

Gavin v. Club Holdings, LLC, C.A. No. 15-175-RGA, 2016 WL 1298964, at *3
(D. Del. Mar. 31, 2016) (citation and footnote omitted). Nova suggests that Judge
Farnan already decided that attorneys' fees are procedural under Delaware law. See
D.I. 1068 at 1 ("[f]he Court has already determined that the choice-of-law clause in
Roche's two page form non-disclosure agreement applied only to which Swiss
substantive law would govern the counterclaims asserted by Nova, and did not apply to
procedural matters (such as attorneys' fees) which are governed by the law of the
forum."); id. at 7 ("Judge Farnan already held that the choice-of-law provision was
limited to substantive issues (i.e., which counterclaims could be asserted under Swiss
law). Judge Farnan held that issues that are procedural under Delaware law (such as
attorneys' fees) would be governed by the law of the forum.") (citations omitted). The
court disagrees that Judge Farnan made such determination. He found that the issue
of the standard of proof was procedural in nature, but made no finding concerning the
applicable law for any award of attorneys' fees to Roche. D.I. 816 at 998 ("I disagree
with the analysis [Dr. Dasser has] made concerning whether or not ... the standard of
proof is substantive or procedural. I find that in this forum, it's procedural in nature; and
therefore ... I am applying" the law of the forum.).
229
No. N1 OC-06-032 JRS, 2011 WL 2162915, at *1 (Del. Super. Ct. May 26,
2011 ).
230
Id. at *6- 7.

41

an effort to apply the rules of judicial administration of another jurisdiction
would impose an undue burden on the forum. 231
When analyzing the first factor, whether the parties shaped their actions with
reference to the local law of a certain jurisdiction, Roche states the Relax court applied
the Delaware Court of Chancery's decision in El Paso Nat. Gas Co. v. Amoco Prod.
Co., 232 which, like here, involved a contractual provision invoking the law of a jurisdiction
that allows counsel fees to the prevailing party. 233 Having included a provision that the
parties' agreement "shall be governed by English law," the Relax court determined "the
first factor of the § 122 analysis tips in favor of [plaintiff's] position that the English rule
should apply because the parties 'shaped th~ir actions' according to English law." 234
Roche argues that by stating that the parties' agreement "shall be governed in all
respects by the laws of Switzerland,"235 the court should find that the first factor weighs
in favor of applying Swiss law to the question of an attorneys' fees award. 236
The court does not agree that in this case the inclusion of the Agreement's

231

Id. at *6; see also Gavin, 2016 WL 1298964, at *3 ("Under Delaware's conflict
of laws rules, the Restatement (Second) of Conflict of Laws analysis determines which
jurisdiction's substantive laws apply.") (citation omitted); Boyce Thompson Inst. v.
Medimmune, Inc., C.A. No. 07C-11-217 JRS, 2009 WL 1482237, at *6 (Del. Super. Ct.
May 9, 2009) ("Delaware courts look to the Restatement (Second) of Conflict of Laws
for guidance when resolving choice of law disputes.").
232
C.A. No. 12083, 1994 WL 728816, at *5 (Del. Ch. Dec. 16, 1994).
233
D.I. 1052 at 11. The Reiax court itself noted, however, another district court
declined to follow El Paso. See Relax, 2011 WL 2162915, at *6 n.29 (citing Atchison
Dofasco, Inc., C.A. No. 93-244-JWL, 1995 WL 655183, at *6 (D. Kan.
Casting Corp.
Apr. 13, 1999) (expressly rejecting El Paso and holding that the general choice of law
_provision in a contract has no bearing on whether counsel fees are procedural or
substantive)).
234
Relax, 2011 WL 2162915, at *6-7.
235
D.I. 1054, Ex. Cat 2.
236
D.I. 1052 at 11-13.

v.

42

statement regarding Swiss law demonstrates the parties' "shaped their actions"
according to Swiss law. As Nova points out, there is no evidence the parties
considered recovery of attorneys' fees when executing the Agreement. 237 Nova states
trial testimony shows that Agreement was presented to Nova for the first time at the
September 8, 1999 meeting at Nova's facility where Nova showed Roche its
prototypes. 238 Moreover, the court also agrees with Nova that it is highly unlikely that
Manganaro, a non-lawyer running a company in Massachusetts, would have known
about, or considered, the attorneys' ordinances in any of Switzerland's 26 cantons
when he executed the non-disclosure Agreement Roche presented that morning. 239
Cases cited by Roche demonstrate the importance of the parties' assumptions or
expectations as to what law would apply to any potential request for attorneys' fees in
relation to the Agreement. In RLS Assoc. v. United Bank of Kuwait, the court applied
the English Rule to the question of attorneys' fees where the parties "entered into a
contract governed by English law and both assumed, well into the litigation, that the

English rule on attorneys' fees would apply." 240 Likewise, the court in Boyd Rosene &
Assoc., Inc. v. Kansas Mun. Gas Agency, found application of the parties' general
choice of law provision to the issue of fees to be "consistent with the parties'

expectations." 241 Here, whether Swiss law even governed Nova's counterclaims was a
significant point of dispute that was not resolved until the day before trial began, 242 and
237

D.I. 1068 at 12.
Id. (citing D.I. 814 at 264).
239 Id.
240
464 F. Supp. 2d 206, 218-20 (S.D.N.Y. 2006) (emphasis added).
241
174 F.3d 1115, 1126-28 (10th Cir. 1999) (emphasis added).
242
See 1/25/2010 Oral Order.
238

43

other issues concerning the application of Swiss law were not resolved by the court until
the third day of trial after hearing from Roche's Swiss law expert. 243 The court
concludes that the parties did not "shape their actions with reference to the local law of
a certain jurisdiction" and, therefore, the first factor weighs in favor of applying forum
law.
With regard to the second factor, whether the issue is one whose resolution
would likely affect the ultimate result in the case, Nova and Roche agree that thi~ factor
favors the application of forum law. 244
With respect to the third factor, whether the precedents have tended consistently
to classify the issue as procedural or substantive for conflict of law purposes, the Relax
court candidly stated, "it can safely be said that the 'precedents' addressing this issue in
Delaware are anything but consistent." 245 In Chester v. Assiniboia Corp., the court held
an award of attorneys' fees in Delaware "is a procedural matter governed by the law of
the forum .... "246 In addition to Relax, other courts in this state have held that the

243

D.I. 1068 at 12 (citing D.I. 816 at 997-99).
Id. at 13; D.I. 1079 at 7; see also Relax, 2011 WL 2162915, at *7 ("[l]t is clear
that resolution of the counsel fee issue will not affect the ultimate result of the case.
Indeed, the opposite is true-it is the result of the case that triggers the need to consider
the counsel fee issue. In this sense, the counsel fee issue can be considered a postverdict issue that would favor the application of the forum law.") (citation omitted).
245
Relax, 2011 WL 2162915, at *7.
246
355 A.2d 880, 882 (Del. 1976) (citation omitted) (addressing right to counsel
fees under a Delaware statute, 18 Del. C. § 4102); see also Chrysler Corp. v. Viglino,
260 A.2d 160, 161-62 (Del. 1969) (holding that a specific fee-shifting statute governing
fees in workmen's compensation cases is procedural); Whiteside v. New Castle Mut.
Ins. Co., 595 F. Supp. 1096, 1100 (D. Del. 1984) (addressing the same statute
considered in Chester, 18 Del. C. § 4102, the court stated that "[u]nder Delaware
conflicts rules, attorney's fees are considered 'procedural' (in the conflicts sense), and
Delaware courts apply Delaware attorney's fees provisions") (citing Chester, 355 A.2d
at 882).
244

44

award of attorneys' fees is substantive. In El Paso, the court determined the award of
attorneys' fees was substantive. 247 That court held plaintiff's reliance on Whiteside,
Chester, and Chrysler "for the proposition that determination of attorneys' fees is
'procedural' and thus governed by Delaware law is unavailing." 248 :
Whiteside involved an action in diversity for collection of counsel fees for
prevailing in a dispute over a homeowner's policy pursuant to 18 Del. C. §
4102. Its conflicts analysis is based upon the significant relationship test
of Restatement (Second) of Conflict of Laws § 188(2) which applies only
in the absence of effective choice of law by the parties. Similarly, Chester
dealt with recovery of attorneys' fees in connection with damages of an
insured ship where the policy did not contain a choice of law provision.
Lastly, Chrysler Corp. merely classifies a workers compensation fees
statute as "procedural" in order to retroactively apply the statute and does
not address conflict of laws issues. 249
The El Paso court stated "none of the cited cases involve the arguable creation of
substantive contractual rights by reason of designating as governing the law of a state
that included, as Texas arguably does, a statutory right to attorney's fees. 250 The Relax
court agreed with "the view expressed in El Paso that the Delaware decisions which
have determined that the award of counsel is procedural are distinguishable because
they have considered the question in the context of various Delaware statutory
schemes that allow for counsel fees." 251 Despite that agreement, the court determined
"the fact remains that the question of whether the award of counsel fees presents a

247

1994 WL 728816, at *5; see also lmmedient Corp. v. HealthTrio, Inc., C.A.
No. 01 C-08-216-RRC, 2007 WL 656901, at *2 (Del. Super. Ct. Mar. 5, 2007) (finding an
award of attorneys' fees to be substantive, not procedural, and applying the parties'
contractual choice of law to that issue).
248
El Paso, 1994 WL 728816, at *5.
249
Id. at *5 n.4~
250
Id. at *5.
251
Id. at *7.
45

procedural or substantive issue is not settled in Delaware. This factor weighs equally
on both sides of the scale." 252 The court agrees with the Relax court that given the
unsettled nature in Delaware as to whether the award of attorneys' fees is a procedural
or substantive issue, it likewise determines the third factor is neutral. 253
Nova argues the fourth factor, whether an effort to apply the rules of judicial
administration of another jurisdiction would impose an undue burden on the forum,
weighs in favor of applying the law of the forum because application of Swiss law would
be unduly burdensome on this court. 254
Roche's expert, Dasser, states Swiss law traditionally follows the "English Rule"
of charging the costs associated with conducting procedures in Swiss courts against the
unsuccessful party. 255 Each Swiss Canton has its own laws and ordinances for
assessing costs. In this case, the relevant Canton is Basel-Stadt because the Roche
entity that is a party to the Agreement, HLR, is in that Canton, and thus Nova's
counterclaims would have been properly brought in that Canton had Nova filed the
claims in Switzerland. 256
In the Canton of Basel-Stadt, the costs paid by the unsuccessful party to the
successful party include "ordinary legal costs," which include legal costs and expenses
incurred in the legal action, and may also include "extraordinary legal costs," which

Id.
Roche does not make a forceful argument concerning the third factor, stating
that due to the to the issue not being settled in Delaware, "this factor either favors
application of Swiss law or, at a minimum, is neutral." D.I. 1079 at 7.
254
D. I. 1068 at 15-16.
255
D.I. 1052 at 13 (citing D.I. 1054 at ,-icir 9-10).
256
Id. (citing D.I. 1054at,-i'lI11-12).
252
253

46

include the attorneys' fees (determined by applying the relevant cantonal tariff) of the
successful party on the claim in dispute, subject to any offsets depending on the
outcome of the case. 257
Under Swiss law, the "extraordinary legal costs" are not calculated based on the
actual legal costs associated with the action. Rather, Swiss courts determine the award
based on "the amount in controversy," i.e., the damages claimed and the value or cost
of any requested injunctive relief. 258 A Swiss court assessing "extraordinary legal costs"
would not have access to the actual attorneys' fees of the parties. 259
As a consequence of basing the award on the "amount in controversy," the
prevailing party might only be compensated for a part of its actual legal expenses if the
amount in controversy is low, or it might be compensated for more than its actual legal
expenses if the amount in controversy is high. 260 An overriding principle is that the
award not be beyond a reasonable relation to the importance and complexity of the
case, the responsibility of counsel, and the time spent. 261 In the Canton of Basel-Stadt,
the amount in controversy is used to determine, in the first instance, a certain range of
the "extraordinary legal costs" that a losing litigant is required to pay. 262 Within the
range, Swiss courts determine the compensation in accordance with all relevant
circumstances, including, but not limited to, the actual amount of time reasonably spent

257
258
259
260
261
262

Id.
Id.
Id.
Id.
Id.
Id.

(citing D.I. 1054 at '1113).
(citing D.I. 1054 at ,-r,-r 14-16, 19).
(citing D.I. 1054at'ff17).
at 14 (citing D. I. 1054 at '11,-r 17-18).
(citing D.I. 1054 at ,-r 17).
(citing D.I. 1054 at ,-r 20).
47

by counsel. 263
The amount in controversy determines the "basic fees" for the type of case (i.e.,
oral or written proceeding). 264 The basic fee then may be adjusted to account for, inter

alia, additional hearings and additional written submissions, up to a maximum
surcharge of 280% of the basic fee. 265 For this case, the percentage that would be
used to establish the basic fee (i.e., the percentage that a Swiss court would apply to
the amount in controversy for calculating fees to be paid by a losing party) is between a
minimum of 1.5% and a maximum of 3% of the amount in controversy. 266 As noted
above, the basic fee then may be adjusted to account for, inter alia, additional hearings
and additional written submissions, up to a maximum surcharge of 280% of the basic
fee.267
To establish the amount in controversy, a Swiss court looks first to the damages
claim or to the claims and relief requested. 268 Under Swiss law, a party alleging breach
of contract and unfair competition is entitled to claim as damages the other party's
profits from its allegedly improper activities, the profits that party lost as a result of the
breach or unfair competition, or a reasonable royalty for the other party's activity. 269
In this case, a Swiss court would find the first measure of damages-Roche's
profits from its allegedly improper activities, along with the cost to Roche of an

263 Id.
264 Id.
265 Id.
266 Id.
267 Id.
268 Id.
269 Id.

(citing D.I. 1054 at ,-r 20).
(citing D. I. 1054 at ,-J 21 ).
(citing D.I. 1054 at ,-r 21).
(citing D.I. 1054 at ,-r 22).
(citing D.I. 1054 at ,-J 22).
(citing D. I. 1054 at ,-r 23).
at 14-15 (citing D.I. 1054 at ,-r 23).

48

injunction as requested by Nova-are the "amount in controversy'' for Nova's
counterclaims. 270
Roche states that while the parties had not yet reached the d~mages phase of
the case, Nova's Answer and Counterclaims and its requested relief confirm the
"amount in controversy" for this case include Roche's net profits gained from its alleged
misuse of Nova information and the value (or cost) of an injundion to Roche. 271 Nova
asserted that "Roche improperly used Nova's confidential and proprietary Information,
provided under the Agreement, to develop Roche's own blood glucose monitoring
strips."272 Nova also asserted that "Roche's use of Nova's proprietary Information to
. develop its own glucose monitoring strips constitutes a breach of Paragraph 3 of the
· Agreement." 273 Nova asserted both damages for past conduct and a right to an
injunction against future conduct based on its alleged breach and unfair competition:
"Nova has sustained damages as a result of Roche's breach and, on information and
belief, will continue to sustained damages and suffer irreparable harm unless Roche is
enjoined by this Court."274 Nova further asserted that: "Roche's improper use of Nova's
confidential and proprietary information has inhibited Nova's ability to realize returns on
its investment in. innovation, research and development and impeded Nova's ability to
earn revenue. On information and belief, such damage will continue and cause
irreparable harm unless Roche is enjoined by this Court." 275

270
271
272
273
274
275

Id.
Id.
Id.
Id.
Id.
Id.

at 15 (citing 0.1. 1054at1f 24).
(citing 0.1. 181 ).
(quoting 0.1. 181 at 1f 22).
(quoting 0.1. 181 at 1f 35).
(quoting 0.1. 181 at 1f 36).
(quoting 0.1.181at1f42).
49

In its Prayer for Relief, Nova requests (1) damages for Roche;s alleged use of
Nova's confidential information in the development of its Aviva product and (2) an
injunction preventing Roche from selling its Aviva product. 276
At trial, Nova attempted to establish that Roche developed its·ACCU-CHECK®
Aviva product using information obtained from Nova. 277 Had Nova been successful,
under Swiss law, it would have been entitled to claim that the "damages sufficient to
compensate [Nova] for Roche's breach( es) of the Agreement" and "Roche's unfair
competition" were Roche's profits obtained from the sale of its Accu~CHECK® Aviva
product. 278 Under Swiss law, Nova's damages for unfair competition could include
disgorgement of Roche's profits. 279 Furthermore, the "amount in controversy'' of the
requested injunction is equal to Roche's net profits that would be lost as a result of the
injunction. 280
Roche calculates the overall "amount in controversy''-including both Roche's net
profits and projected future net profits/injunction costs is at least 3.211 billion CHR or
$3.023 billion. 281 Based on that amount in controversy, Roche states that using the
minimum percentage (1.5%) that a Swiss court applies to establish the basic fee,
without any upward adjustments to account for, inter alia, additional hearings and
additional written submissions, the fees awarded to Roche for this c~se would be at

Id. (citing 0.1. 181 at 16-17, mf M, N, S, and T).
Id. at 16 (citing 0.1. 814 at 169-70, 188-89; 0.1. 815 at 326-29; 0.1. 817at
1189-91 ).
.
278
Id. (quoting 0.1. 181 at 16-17, 1J1J Mand S).
279
Id. (citing 0.1. 1054 at mf 23, 25).
280
Id. (citing 0.1. 1054 at mf 19, 24, 25).
281 Id.
276

277

50

least $45.35 million. 282
Nova argues applying Swiss law in this case would be unduly burdensome on
the court. 283 It contends that undue burden is demonstrated by the voluminous
declarations and supporting exhibits of law and analysis by the parties' Swiss law
experts Dasser and Michael Kramer regarding whether the Fees Ordinance even
applies at all, and if so, which provisions would apply and how to apply them. 284 Nova
maintains the issue here is not as simple as applying a "loser pays" rule. 285
Nova argues that, on its face, the Fees Ordinance is not intended to be applied
outside of the canton, given the statement that the ordinance is "applicable to all
proceedings in the courts and independent administrative appellate courts of the
Canton of Basel-Stadt." 286 Nova also insists the Fees Ordinance applies only to
attorneys representing clients before the courts of Basel-Stadt, which can only be done
by attorneys registered to practice there. 287
Even if the court determined the Fees Ordinance could be applied outside of the
Canton of Basel-Stadt, Nova contends the court would need to determine the
appropriate allocation of fees and costs based on the "Principles" set forth in § 172 of
the Code of Civil Procedure of 8 February 1875 and the specific rules governing the
calculation. 288 Nova disputes Roche's contention that it is as simple as multiplying the

282

Id. at 16-17 (citing D.I. 1054 at 'if 26).
D. I. 1068 at 15-16.
284
Id. at 15.
285
Id. (citing D.I. 1069 (Kramer Deel.) at 37-68).
286
Id. (quoting D.I. 1054, Ex. I at§ 1; D.I. 1054, Ex. Bat Art. 1 ("This Code
governs proceedings before the cantonal authorities .... ")).
287 Id.
288
Id. at 15-16 (citing D.I. 1069 at fj'f 38 et seq.).
283

51

"amount in controversy" by 1.5%. Nova argues that because damages were bifurcated
here and the case did riot reach that stage, there has been no assertion by Nova of
damages sought and no fact or expert discovery regarding the "amount in
controversy." 289 Nova contends that Roche's speculation regarding the amount in
dispute cannot satisfy this essential element. 290 Nova argues that had it prevailed on its
counterclaims, Roche would not have agreed that the "amount in controversy," i.e.,
damages awarded to Nova, would have been $3.023 billion. According to Nova, under
the Basel-Stadt civil procedure code that Roche asserts is applicable here, the parties
would have been required to state the maximum amount of their damages claim,
something that did not occur. 291 The court then, in its final decision, would make a
determination about the legal costs. 292 Nova argues that because none of those
procedures were followed, any determination of the amount in controversy now, more
than six years post-judgment, would require both fact and expert discovery by the
parties, with attendant discovery disputes and motion practice. 293 A determination of
the amount in controversy would require a mini-trial on what damages Nova would have
· been awarded, under Swiss law, had it been successful on its counterclaims. 294 Nova
contends that after that determination was made, the court would then need to apply
the appropriate offsets under the Fees Ordinance for the other claims and

289
290
291
292
293
294

Id. at 16.
Id.
Id.
Id. (citing 1069 at
Id.
Id.

,.m 43-46).
52

counterclaims in this case, including those on which Nova prevailed. 295 Nova concludes
that conducting a full-blown damages phase at this point and then applying the cantonal
Fees Ordinance and the appropriate allocations among the parties would place an
undue burden on this court. 296
Roche's includes minimal response to Nova's arguments with regard to the
fourth factor. It cites two cases where courts simply declared, without discussion, that
the application of the English rule would not be unduly burdensome on that court. 297
Roche contends Nova and its expert, Kramer, try to make a simple concept appear
complicated by interjecting a series of irrelevant issues into the analysis. 298 Roche
argues that Kramer repeatedly misstates Swiss law and misinterprets the sources he
relies on, 299 that his argument that Swiss courts in Basel-Stadt would apply an offset for
Roche's claim in the litigation are incorrect as a matter of Swiss law, 300 and that Kramer
is also wrong that Roche's award would be subject to an offset for early termination. 301
Roche also argues that despite Nova's failure to specify an amount in controversy in its

Id. (citing D.I. 1069 at ~9143-52, 55-67).
Id.
297
D.I. 1079 at 8 (citing Relax, 2011 WL 2162915, at *7 ("The fourth factor has
little significance here. Neither the English rule nor the American rule, in application,
would be unduly burdensome to the Court."); Microsoft Corp. v. Patent Revenue
Partners, LLC, C.A. No. 8092-VCP, 2015 WL 6122331, at *5 (Del. Ch. Oct. 15, 2015)"
("[A)s in Relax, it is unlikely that the application of either the English Rule or the
American Rule in this case would be unduly burdensome to the Court.")).
298
Id. at 9 (citing D.I. 1080 (Second Dasser Deel.) at ~'if 4-18, 23-30, 39-47, 5563, 72-76).
299
/d. (citing D.I. 1080 at1J'TI 4, 7, 8, 11, 12, 14, 25, 28, 29, 31, 42-50, 60-62, 64,
66, 72).
300
Id. at 9-10 (comparing D.I. 1054 at mf 27-28 and D.I. 1080 at 'ff 29 with D.I.
1069 at~ 43).
301
Id. at 10 (citing D.I. 1069 at ~,-r 62-63).
295
296

53

complaint, there are situations where Swiss court make and apply their own
assessment of an amount in controversy in determining the amount of attorneys' fees to
. award under the tariff. 302
The court disagrees with Roche's assertion that "the Court's analysis under
Swiss law is exceedingly straightforward." 303 ~s Roche's reply brief demonstrates, the
parties' experts strongly disagree as to the interpretation and application of Swiss law.
The court also envisions the parties having to engage in protracted discovery and
motion practice and a potential "mini-trial" to determine the amount in controversy after
which appropriate application of Swiss law would be required to estaplish any fee
award. On the facts of this case, the court determines application of. Swiss law would
be an undue burden on this court and, therefore, the fourth Restatement factor weighs
in favor of applying the law of the forum.
The court finds that, taken together, the four relevant Restatement factors
indicate Roche's application for an award of attorneys' fees is a matter of procedure,
i.e., favoring application of forum law. Because there is no basis for an award of
attorneys' fees under Delaware law, Roche's motion should be denied.

IV.

RECOMMENDED DISPOSITION
Consistent with the findings contained in the Report and Recommendation,
IT IS RECOMMENDED that:
(1)

Nova's Renewed Motion to Declare this Case Exceptional and for an
Award of Fees and Related Expenses (D.I. 1049) be DENIED; and

302
303

Jd. (citing D.I. 1080at1f1f19-21, 30, 32-38).
Id. at 9.

54

(2)

Roche's Renewed Motion for Attorneys' Fees Associated with Nova's
Counterclaims (D.I. 1050) be DENIED.

Pursuant to 28 U.S.C. § 636(b)(1 )(8), FED. R. C1v. P. 72 (b)(1 ), and D. DEL. LR
72.1, any objections to the Report and Recommendation shall be filed within fourteen
(14) days limited to ten (10) pages after being served with the same. Any response
shall be limited to ten (10) pages.
The parties are directed to the Court's Standing Order in Non-Pro Se Matters for
Objections Filed under FED. R. C1v. P. 72 dated November 16, 2009, a copy of which is
found on the Court's website (www.ded.uscourts.gov.)

Isl Marv Pat Thynge

October 3, 2017

UNITED STATES MAGISTRATE JUDGE

55