Nexans Inc. et al v. Belden Inc. et al
MEMORANDUM ORDER denying 103 MOTION for Attorney Fees and Costs filed by Berk-Tek LLC, Nexans Inc. Signed by Judge Sue L. Robinson on 5/26/2017. (nmfn)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
NEXANS INC. and BERK-TEK LLC,
) Civ. No. 12-1491-SLR/SRF
BELDEN INC., BELDEN
TECHNOLOGIES, INC., and BELDEN
At Wilmington this 26th day of May, 2017, having reviewed plaintiffs' motion for
attorney fees and costs, as well as the papers filed in connection therewith;
IT IS ORDERED that said motion (D.I. 103) is denied, for the reasons that follow:
1. Background. Plaintiffs Nexans, Inc. and Berk-Tek LLC (collectively, "BerkTek") manufactures and sells an extensive range of telecommunications cables and
cabling systems. Defendants (collectively, "Belden") also offer cables and cabling
systems for purchase. (See D.I. 49 at 5) In prior litigation, Belden asserted certain of
its patents 1 against Superior Essex Communications LP and LS Cable LTD; 2 at the
U.S. Patent Nos. 6,074,503 ("the '503 patent"); 7,135,641 ("the '641 patent");
7,663,061 ("the '061 patent"); and 7,977,575 ("the '575 patent").
Belden Techs. Inc. v. Superior Essex Commc'ns LP, Civ. No. 08-63-SLR (D.
Del.); Belden Techs. Inc. v. LS Corp., Civ. No. 08-823-SLR (D. Del.); Belden, Inc. v.
Superior Essex, Inc., Civ. No. 11-678-SLR (D. Del.); Belden, Inc. v. LS Corp., Civ. No.
same time, inter partes reexamination proceedings were instituted by Superior Essex in
connection with the '641, '575, and '061 patents. Claim 1 of the '503 patent and claim
13 of the '641 patent were invalidated by this court in Belden Techs. Inc. v. Superior
Essex Commc'ns LP, 802 F. Supp. 2d 555 (D. Del. 2011). On November 9, 2011,
Belden and Superior Essex filed a joint motion to "Vacate Judgment and Subsequently
Enter Consent Final Judgment." (Civ. No. 08-63-SLR, D.I. 328) Based on the
settlement, Belden also filed petitions to terminate the pending reexaminations, which
were subsequently granted. (D.I. 107, exs. A-C)
2. Soon thereafter, Belden sent a demand letter to Berk-Tek. (D.I. 27, ex. A)
The demand letter identified multiple Berk-Tek products as being "covered by Belden's
patents" and demanded that Berk-Tek make "restitution" and either "cease infringing or
enter into an appropriate license agreement." (Id.) The letter added: "As you may
know, Belden has in the past been required to enforce its [intellectual property] rights.
As a result of that effort, Belden has secured judgments that certain of its patents are ..
. infringed by Superior Essex." (Id.) Belden and Berk-Tek entered into a "standstill
agreement," which expired on October 31, 2012. During the term of that agreement,
Belden provided Berk-Tek with claim charts accusing the Berk-Tek copper product line
of infringing the '503, '641, and '575 patents. (D.I. 27, ex. D) Berk-Tek filed the instant
declaratory judgment action on November 19, 2012. Two days later, Belden filed
mirror-image complaints against Berk-Tek and Hitachi Cable in the Southern District of
lndiana, 3 generating a motion practice in both courts. 4 Thereafter, the instant action
was jointly stayed pending the outcome of the new round of inter partes review
instituted in the PTO by Berk-Tek. 5 In the spring of 2014, the PTO invalidated all of the
asserted claims of the '503, '641, '575, and '061 patents. (D.I. 107, exs. F-1) Belden
did not appeal the PTO's decision regarding the '641 patent, but did appeal the
remaining decisions. The Federal Circuit affirmed all of the PTO's invalidity findings. 6
Thereafter, the parties filed a joint motion to dismiss all claims and counterclaims with
prejudice in this case, which motion was granted by the court. (D.I. 100, 101) Aside
from the motion practice described above, Berk-Tek did not have to respond to any
discovery requests or engage in the claim construction exercise.
3. Standard of review. Section 285 of Title 35 of the United States Code
provides, in its entirety, "[t]he court in exceptional cases may award reasonable attorney
fees to the prevailing party." 35 U.S.C. § 285. "When deciding whether to award
attorney fees under§ 285, a district court engages in a two-step inquiry." MarcTec,
LLC v. Johnson & Johnson, 664 F.3d 907, 915 (Fed. Cir. 2012). The court first
determines whether the case is exceptional and, if so, whether an award of attorney
fees is justified. Id. at 915-16 (citations omitted). The Supreme Court has defined "an
See Belden Inc. v. Nexans Inc., Civ. No. 12-1722 (S.D. Ind.); Belden Inc. v.
Hitachi Cable America Inc., Civ. No. 12-1724 (S.D. Ind.).
(See, e.g., D. I. 12, 18, and 24)
(0.1. 85) The court notes in this regard, however, that Belden opposed the first
motion to stay filed by Berk-Tek, generating yet another round of briefing.
See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015); Belden Inc. v.
Berk-Tek LLC, 610 F. App'x 997 (Fed. Cir. 2015).
'exceptional' case [as] 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."
Octane Fitness LLC v. Icon Health & Fitness, Inc.,_ U.S._, 134 S. Ct. 1749, 1756
4. District courts should consider the "totality of the circumstances" and use their
discretion to determine on a case-by-case basis whether a case is "exceptional." Id.
"[A] 'nonexclusive' list of 'factors,' [to consider] includ[es] 'frivolousness, motivation,
objective unreasonableness (both in the factual and legal components of the case) and
the need in particular circumstances to advance considerations of compensation and
deterrence."' Id. at n.6. Cases which may merit an award of attorney fees include "the
rare case in which a party's unreasonable conduct-while not necessarily
independently sanctionable-is nonetheless so 'exceptional' as to justify an award of
fees" or "a case presenting either subjective bad faith or exceptionally meritless claims."
Id. at 1757. A party seeking attorney fees under§ 285 must prove the merits of their
contentions by a preponderance of the evidence. Id. at 1758.
5. Analysis. In reviewing the proceedings relating to the above captioned case,
it is important to note that it was Berk-Tek - not Belden - who initiated the instant
litigation, and it was Berk-Tek - not Belden - who filed the IPRs. Indeed, although the
court denied Belden's motion to dismiss, in its related decision the court observed that
there was "no evidence of record that Nexans had received any concrete indications of
an imminent lawsuit." (D.I. 42 at 10) The court understands that Belden tried to
change venue initially and that this trial strategy generated work for both the court and
Berk-Tek. Deciding the proper venue in the opening skirmishes of a case is typical not exceptional - in the court's experience. Likewise, the question of whether to stay
litigation pending review by the PTO is a typical, not exceptional, part of the court's pretrial practice. The litigation was stayed at a relatively early stage of the pretrial process,
and the work generated by Belden's litigation strategy was not exceptional. 7
6. Conclusion. For the reasons stated, the court declines to exercise its
discretion in awarding fees and costs pursuant to 35 U.S.C. § 285, as the case was not
The circumstances at bar are far removed from those attendant to what the
court has deemed exceptional, that is, when a party not only uses every litigation tool
available pre-trial, trial, and post-trial, but moves to reargue decisions made by the
court, thus multiplying the work and making it that much more difficult to move the case
forward to resolution.
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