Lumos Technology Co., Ltd. v. Jedmed Instrument Company

Filing 157

MEMORANDUM OPINION & ORDER....JEDMEDs December 9, 2017 motion for attorneys fees is denied. (Signed by Judge Denise L. Cote on 2/13/2018) (gr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
LUMOS TECHNOLOGY CO., LTD.,
:
:
Plaintiff,
:
:
-v:
:
JEDMED INSTRUMENT COMPANY,
:
:
Defendant.
:
:
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16cv6939(DLC)
MEMORANDUM OPINION
& ORDER

APPEARANCES
For the Plaintiff:
Xiyan Zhang
Pete Wolfgram
Stratum Law LLC
2424 East York Street, Suite 306
Philadelphia, PA 19130
For the Defendant:
Darren M. Geliebter
Eric J. Huang
Lombard & Geliebter LLP
305 Broadway, 7th Floor
New York, NY 10007
For non-party Holland & Knight LLP
Charles A. Weiss
Grace L. Pan
Holland & Knight LLP
31 West 52nd Street
New York, NY 10019
DENISE COTE, District Judge:
On October 22, 2017, plaintiff Lumos Technology Co., Ltd.,
(“Lumos”) moved to voluntarily dismiss this patent infringement
action with prejudice.

The defendant, JEDMED Instrument Company

(“JEDMED”) has now moved for an award of attorneys’ fees and
costs.

For the reasons explained below, the motion is denied.

Background
Lumos is a foreign corporation that hopes to enter the U.S.
market with products protected by its U.S. patent ‘906.1

The

patent is entitled Light Source Module for Macro Photography and
describes a self-illuminating digital imaging device with a
barrel, a contact unit, and a lighting unit for macro
On September 2, 2016, it brought suit against

photography.

JEDMED, claiming infringement of that patent.

Lumos was

originally represented by the law firm Holland & Knight; that
firm was replaced by Stratum Law on September 11, 2017.
On August 4, 2017, the Court construed disputed claim
terms, which were few in number.

Lumos Tech. Co. v. JEDMED

Instrument Co., No. 16cv6939(DLC), 2017 WL 3328245 (S.D.N.Y.
Aug. 4, 2017).
13, 2017.
prejudice.

A summary judgment motion was filed on October

On October 22, Lumos moved to dismiss the action with
On November 6, Lumos signed a covenant not to sue

that was acceptable to JEDMED, and the action was dismissed with
prejudice on November 9.

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JEDMED’s motion for attorneys’ fees

The patent is No. 8,746,906.
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was filed on December 8, and became fully submitted on February
1, 2018.

Discussion
JEDMED moves for an award of roughly $525,000 in attorneys’
fees against both Lumos and its counsel pursuant to 28 U.S.C.
§ 1927, 35 U.S.C. § 285, and Fed. R. Civ. P. 11.

It is only

necessary to consider the Section 285 prong of this motion.
JEDMED did not follow the procedural requirements for bringing a
Rule 11 motion for sanctions, and this Court declines JEDMED’s
invitation to impose such sanctions sua sponte.

Nor has JEDMED

shown that Lumos engaged in conduct during the course of this
litigation that would warrant Section 1927 sanctions.

See

Zurich Am. Ins. Co. v. Team Tankers A.S., 811 F.3d 584, 591 (2d
Cir. 2016) (sanctions under Section 1927 are appropriate
“against any attorney who so multiplies the proceedings in any
case unreasonably and vexatiously” but “only when there is a
finding of conduct constituting or akin to bad faith” (citation
omitted)).

While the litigation was contentious and made more

difficult because of the plaintiff’s reluctance to participate
in discovery, none of its conduct warrants Section 1927
sanctions.
The standard for an award of Section 285 sanctions is well
established.

They are available in an “exceptional case,” which
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is a case “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).

A court is to consider the “totality of the

circumstances” in determining whether a case is exceptional.
Romag Fasteners, Inc. v. Fossil, Inc., 866 F.3d 1330, 1333 (Fed.
Cir. 2017) (citation omitted).

“[A] case presenting either

subjective bad faith or exceptionally meritless claims may
sufficiently set itself apart from mine-run cases to warrant a
fee award.”
supplied).

Octane Fitness, 134 S. Ct. at 1757 (emphasis
The determination that a case is exceptional for the

purposes of Section 285 must be made by “a preponderance of the
evidence.”

Rothschild Connected Devices Innovations, LLC v.

Guardian Protection Servs., Inc., 858 F.3d 1383, 1387 (Fed. Cir.
2017) (citation omitted).
One “factor [that] the totality-of-the-circumstances
approach” may include is whether a party “failed to perform a
diligent pre-suit investigation of its claims.”

Bayer

CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1307
(Fed. Cir. 2017) (citation omitted).

This is particularly

significant where a more searching pre-suit investigation of
easily obtainable evidence would have counseled against filing
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the lawsuit.

Id.

Thus, when conducting the Section 285 inquiry

a court may consider whether the plaintiff “inspected the
allegedly infringing products, prepared claim charts, construed
the claims at issue, or . . . read those claims.”

Superior

Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 1378 (Fed.
Cir. 2001); cf. SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344,
1349 (Fed. Cir. 2015) (observing that pre-Octane Fitness case
law is relevant when evaluating “whether [a] case was litigated
in an unreasonable manner”).

There is, however, a “presumption

that an assertion of infringement of a duly granted patent is
made in good faith.”

Checkpoint Sys., Inc. v. All-Tag Sec.

S.A., 858 F.3d 1371, 1376 (Fed. Cir. 2017) (citation omitted).
Accordingly, “fee awards are not to be used as a penalty for
failure to win a patent infringement suit.”
omitted).

Id. (citation

There does not appear to be any legal basis for

entering a fee award against the losing party’s attorney under
§ 285.

See Crescent Publ’g Grp., Inc. v. Playboy Enters., Inc.,

246 F.3d 142, 150 (2d Cir. 2001) (“When a fee-shifting statute
that authorizes the courts to award attorneys' fees to
prevailing parties does not mention an award against the losing
party's attorney, the appropriate inference is that an award
against attorneys is not authorized.” (citation omitted)).
JEDMED principally relies on two contentions to support is
claim for sanctions.

The first assertion is that Lumos’s pre5

suit investigation was inexcusably flawed because it failed to
obtain and examine readily available and inexpensive samples of
the accused devised, and resisted admitting this failure during
discovery.

JEDMED asserts that an examination of the devices

would have demonstrated that JEDMED does not sell, offer for
sale or use the accused devices as required by the claims in
this action.

JEDMED’s accused devices are an anterior chamber

lens (“ACL”) and an eyecup.
unit.

They are not sold as a packaged

Indeed, the eyecup is available for sale either by itself

or in a package with another device not at issue here.

To

infringe the Lumos patent, the eyecup would have to be used “on”
the ACL.
Neither Lumos nor its counsel examined the accused devices
prior to filing suit, but counsel did an extensive investigation
and examined various materials describing the products to
determine that an infringement claim based on the doctrine of
equivalents was, in their view, available.

They determined that

the diameters of the two units were the same, such that they
could theoretically fit together and be used together.2

The parties dispute whether Lumos may rely in its submissions
in opposition to this motion on information it refused to
provide in discovery based on an assertion of privilege. The
Court had ruled that the assertion of privilege would prevent
the plaintiff from relying in the future on the information,
whether offered offensively or defensively. In the context of
this claim for attorneys’ fees, and considering the nature of
the information and its significance to the motion, the Court
2

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Eventually, in November 2016, an investigator obtained what
appeared to be each of the two accused items and counsel
concluded that they appeared to fit together.
JEDMED underscores that Lumos never obtained any evidence
that the two items were ever offered for sale together or used
together by an end user.

JEDMED asserts that Lumos should not

have filed this lawsuit without a reasonable basis to believe
that the eyecup was actually being used on the ACL.

Indeed,

Lumos understood that none of the brochures or manuals for the
products show the eyecup being used with the ACL.
Second, JEDMED accuses Lumos of pursuing an unrealistic
damages theory and proffering only unreasonable settlement
offers.
devices.

JEDMED had made only minimal sales of the accused
Lumos asserts that it was seeking a license fee, and

was entitled to base its settlement offers on its view of the
potential market for mobile medical device imaging in the United
States.

This is the first and only patent infringement action

it has filed to date, and contends it was brought in pursuit of
the legitimate goal of protecting its intellectual property.
JEDMED has not shown that this case is exceptional.

While

it would have been far preferable for Lumos to have obtained the

will consider that information to the extent it is reflected in
this Order. Indeed, JEDMED contends that access to this newlydisclosed information supports its motion for an award of fees.
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defendant’s devices and evidence of the defendant selling them
together prior to filing this action, it did conduct a pre-suit
investigation of sufficient depth to escape a finding that its
filing was done in bad faith.

Nor does Lumos’s conduct in

pursuing settlement render this case exceptional.

Parties often

have differing views, even widely differing views, about the
value of case.

Considering the totality of the circumstances,

JEDMED has failed to show that this case is exceptional.

Conclusion
JEDMED’s December 9, 2017 motion for attorney’s fees is
denied.
Dated:

New York, New York
February 13, 2018
__________________________________
DENISE COTE
United States District Judge

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