IRREVOCABLE TRUST OF ANTHONY J. ANTONIOUS v. NIKE, INC.
MEMORANDUM OPINION AND ORDER denying Defendant's 150 Motion for Attorney Fees, etc. Signed by Judge Kevin McNulty on 04/24/2017. (ek)
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
Civil Action No. 1 1-cv-06327 (KM)
IRREVOCABLE TRUST of
ANTHONY J. ANTONIOUS,
MEMORANDUM OPINION AND
MCNULTY, District Judge
I awarded summary judgment to the defendant, NIKE, Inc., after the
close of fact and expert discovery in this patent case Now before the Court is
Nike’s motion for an award of attorney’s fees pursuant to 35 U.S.C.
no. 150) For the reasons expressed herein, the motion is DENIED.
The statute, 35 U.S.C.
§ 285. (ECF
§ 285, permits an award of attorney’s fees to the
prevailing party in a patent case that is “exceptional.” An exceptional case is
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., 134 S. Ct. 1749, 1756 (2014). The
issue calls for an exercise of the court’s discretion, based on the circumstances
of the individual case. Factors to be considered include “frivolousness,
motivation, objective unreasonableness.
and the need in particular
circumstances to advance considerations of compensation and deterrence.” Id.
As I write solely for the parties, familiarity with the history of the matter
is assumed. Here are the broad outlines.
This case was filed in 2011. On September 20, 2012, the parties, in
keeping with our Local Rules for patent cases, filed a joint statement,
identifying those patent terms agreed upon and those in dispute. (ECF no.
One of the terms agreed upon was “aerodynamic configuration.” The
parties agreed that “aerodynamic configuration means an aerodynamica
efficient configuration which minimizes turbulence, reduces drag, and
increases laminar flow around the club head when swung.” (ECF no. 35 at
As to the other patent terms in dispute, I convened a Markman hearing
on April 29, 2013, and construed them. (ECF nos. 54, 55) Fact discovery closed
on February 25, 2015. (ECF no. 80) Expert discovery closed on May 7, 2015.
(ECF no. 82)
NIKE then moved for summary judgment that it had not infringed. That
motion focused on the single issue of whether NIKE’s accused golf club heads
possess the claimed “aerodynamic configuration.” Construction of that term,
recall, had been agreed upon in 2012, well in advance of the Markman hearing
and the bulk of discovery in the case. I decided the motion as presented,
granting summary judgment to NIKE. (ECF nos. 131, 140)
The Trust then filed a motion to reopen discovery and vacate summary
judgment, which attempted to recast its experts’ opinions and argued that
certain ill-advised positions had been the result of counsel’s illness.’ I denied
that motion. (ECF no. 146) Final judgment was entered on December 19, 2016.
(ECF no. 148)
The Trust has given NIKE much to work with in arguing that this was an
exceptionally frivolous case. Its own experts appeared to concede the issue of
“aerodynamic configuration,” and their later attempts to backtrack were not
persuasive. The Trust, after suffering setbacks, resorted to motions to amend
That motion, filed with leave of the court, built on the Trust’s belated
“amended” summary judgment papers, which I did not consider on the original
summary judgment motion. (ECF nos. 113, 114, 117)
or reconsider that can only be called frivolous. And I found the merits
patent claim to be sorely lacking.
In short, frivolousness there was—but perfidy there was not. The Trust
agreed at the outset to the construction of “aerodynamic configuration
proved to be dispositive. The other construction issues on which it fought
little or no difference to the case. The Trust’s experts, too, seemingly testifie
honestly in depositions to their views as to aerodynamic configuration,
NIKE’s summary judgment motion relied heavily on those experts’ statem
I saw no evidence of untoward motives, apart from a plaintiffs generic
motivation to obtain an award of damages. Nor is bad faith required
the plaintiff’s pursuit of these claims. I do not say that the litigation was
pursued unskillfully, but it may well have been underfunded. Another factor,
only a makeweight, is that the plaintiff is a trustee who may have felt a
fiduciary duty to pursue the claims on behalf of heirs.
Deterrence of frivolous lawsuits is an important goal. Many have
remarked on the asymmetric warfare that can be waged by a non-practicing
patent holder with little to lose. I do not think, however, that the result here,
after six years of litigation, would embolden others. Specific deterrence of the
Trust, too, seems to of minimal concern. According to the affidavit of the
plaintiff’s trustee, the ‘754 patent is close to expiring, the Trust is close to
bankruptcy, and it has no other assets aside from expired patents. (ECF no.
156-1) Nor is NIKE a defendant whose business has been impaired by the
expenditure of attorney’s fees, so compensation is not urgent, even assuming
that an award of attorney’s fees could be collected.
The defendant having filed a motion for attorney’s fees (ECF no. 150);
and the plaintiff having filed a response (ECF no. 156); and the defendant
having filed a reply (ECF no. 160); and the defendant also having filed an
unopposed motion (ECF no. 161) to seal parts of the supporting affidavit; for
the reasons expressed in the foregoing opinion, and good cause appearing
IT IS this 24th day of April, 2016,
ORDERED that the defendant’s motion for an award of attorney’s fees,
pursuant to 35 U.s.c § 285 (ECF no. 150) is DENIED.
The motion to seal (ECF no. 161) is granted in a separate order.
United States District Judge
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