Certusview Technologies, LLC v. S & N Locating Services, LLC et al

Filing 329

ORDER Denying 257 Motion for Attorney Fees. The Court DENIES WITHOUT PREJUDICE Defendants' Motion for Exceptional Case Finding & Attorneys' Fees, ECF No. 257. Defendants may re-file such motion within fourteen (14) days after the latte r of the Federal Circuit's ruling on the merits of Plaintiff's pending appeals (Nos. 15-1404, 15-1571) or the Court's entry of judgment with respect to Defendants' inequitable conduct counterclaims. Signed by District Judge Mark S. Davis and filed on 6/1/15. Copies distributed to all parties 6/1/15. (ldab, )

UNITED

FOR THE

STATES

DISTRICT

COURT

EASTERN DISTRICT OF VIRGINIA

Norfolk Division

CERTUSVIEW TECHNOLOGIES,

LLC,

Plaintiff,
Civil Action No.

v.

S&N LOCATING SERVICES,

2:13cv346

LLC,

and

S&N COMMUNICATIONS,

INC.,

Defendants

MEMORANDUM ORDER

This matter is before the Court on a Motion for Exceptional

Case Finding and Attorneys'
LLC

and

S&N

Communications,

ECF No. 257.

award

Fees filed by S&N Locating Services,
Inc.

In their motion,

attorneys'

fees

to

(collectively

"Defendants").

Defendants request that the Court

Defendants

because

this

"exceptional case" within the meaning of 35 U.S.C.
In this action,
asserted

that

Defendants

patents-in-suit") .
No.

55.

CertusView Technologies,

patents-in-suit

seeking to
because

2014,

ECF No.

197.

1M 15,

LLC

five

19,

they

an

§ 285.
("Plaintiff")
patents

23,

27,

("the

32,

ECF

Defendants moved for judgment on

invalidate the asserted claims of

subject matter under 35 U.S.C.
Pleadings,

infringed

See Am. Compl.

On October 28,

the pleadings,

had

is

did

§ 101.

not

claim

Defs.'

On January 16,

2015,

the

patent-eligible

Mot.

for J. on the

the Court granted

Defendants leave to amend their answer to assert an inequitable
conduct counterclaim against Defendants.

248.

Order at 2-3,

ECF No.

On January 21, 2015, the Court granted Defendants'

motion

for judgment on the pleadings and held that each of the asserted
claims of the patents-in-suit were invalid because they did not
See Opinion and Order at

claim patent-eligible subject matter.
95, ECF No.

judgment

250.

in

Therefore,

favor

of

infringement action.

on that same day,

Defendants

in

Plaintiff's

which

filed

their

asserted

against

patent

Judgment, ECF No. 251.

In accordance with the Court's Order,
Defendants

the Court entered

First

numerous

Plaintiff.

Amended

Answer

No.

253.

2015,

and

Counterclaims,

conduct

inequitable

ECF

on January 23,

counterclaims

On

February

17,

2015,

Plaintiff noticed an appeal of the Court's ruling on Defendants'
motion for judgment on the pleadings.
267.

On April 10,

2015,

appeal with respect to

Appeal,
Court

ECF No.
denied

Defendants'

Thus,
before

at

Defendants'
the

Court.

Plaintiff's

Court

the Court.

Notice of

By Opinion and Order of May 22,

stage,
of

ECF No.

Plaintiff filed a subsequent notice of

another ruling of

inequitable

this

the

319.

Notice of Appeal,

motion

conduct

two

strike

counterclaims.

appeals

Appeals

to

for

in

this
the

a

the

number

of

ECF

matter

Federal

2 015,

are

No.

3 25.

pending

Circuit

and

inequitable conduct counterclaims are pending before

The

Patent

Act

provides:

"The

court

in

exceptional

cases

may award reasonable attorney fees to the prevailing party."
U.S.C.

§

285.

" [A] n

'exceptional'

case

is

simply

one

35
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

which the case was litigated." Octane Fitness,
& Fitness,

Inc. , 134

S. Ct.

to recover attorneys'

1749,

1756

fees pursuant

with Federal Rule of Civil Procedure 54.
v.

Amazon.com,

Inc.,

430 F.3d 1377,

1386

in

LLC v. ICON Health

(2014) .

to

manner

A party wishing

section 285

must comply

IPXL Holdings,
(Fed.

Cir.

L.L.C.

2005).

Such

rule provides:
(A) Claim to Be by Motion. A claim for attorney's fees
and related nontaxable expenses must be made by motion
unless the substantive law requires those fees to be
proved at trial as an element of damages.
(B)
Timing and Contents
of
the
Motion.
Unless
a
statute or a
court order provides otherwise,
the
motion must:

(i) be filed no later than 14 days after the
entry of judgment;
(ii) specify the judgment and the statute, rule,
or other grounds entitling the movant to the
award;

(iii)

state the

estimate of it;

amount sought or provide a

fair

and

(iv) disclose, if the court so orders, the terms
of any agreement about fees for the services for
which the claim is made.

Fed.

R.

Civ.

P.

54(d)(2).

amendments to Rule 54,

In

.

.

its

.

notes

regarding

the

1993

the Advisory Committee has suggested that

" [i] f an appeal on the merits of the case is taken,

the court

may rule on
motion,
under

or

the claim for fees,
may

deny

subdivision

the

motion

(d) (2) (B)

a

appeal has been resolved."
amendments) .

may

defer

without

its ruling

on

the

prejudice,
for

new period

directing
after

filing

Id. advisory committee's note

the

(1993

And the Advisory Committee has also suggested that

"if the claim for fees involves substantial issues or is likely
to be affected by the appellate decision,
prefer to defer consideration of

the

appeal

is

resolved."

committee's note
The

for

an

Court

the district court may

the claim for fees until after

Fed.

R.

Civ.

P.

58

advisory

(1993 amendments).
will

WITHOUT

PREJUDICE

case

exceptional

DENY

finding

and

Defendants'

attorneys'

motion

fees.

Such

denial is appropriate because the appeals currently pending with
respect

to Plaintiff's

and novel—issues
See,

e.g.,

1067-BEN

2014);
SLR,

(D.

that

infringement claims
the

Pacing Techs.,
(JLB) ,

2014

WL

Walker Digital,

12-140-SLR,

Del.

Oct.

Defendants,

Federal
LLC v.

12-141-SLR,

16,

2013)

in part,

Circuit's

at

discretion

to

(unpublished) .

the

Inc.,

(S.D.

Inc.,

12-142-SLR,

seek an award of

deny

*2

Expedia,

Plaintiff's alleged inequitable conduct,

its

ruling may affect.

Garmin Int'l,

2872219,

LLC v.

involve substantial—

2013

Cal.

Civ.
WL

12-CV-

June

Nos.

24,

11-313-

5662145,

Similarly,

attorneys'

No.

at

given

*2

that

fees based on

the Court will exercise

instant motion until

the

Court

has

adjudicated

the

merits

of

Defendants'

inequitable

conduct

counterclaims.

For

the

PREJUDICE

forgoing

Defendants'

Attorneys'

Fees,

Motion

ECF

No.

motion within fourteen
Circuit's
(Nos.

ruling

15-1404,

on

15-1571)

Order

Clerk

to all

IT

IS

SO

is

257.

merits
or

of

Court

DENIES

Exceptional
Defendants

Case
may

WITHOUT

Finding

re-file

&

such

the

of

Plaintiff's

Court's

entry

pending
of

appeals

judgment

with

inequitable conduct counterclaims.

REQUESTED

counsel

for

the

(14) days after the latter of the Federal

the

respect to Defendants'
The

reasons,

to

send

a

copy

of

this

Memorandum

record.

ORDERED.

/s/
Mark
UNITED

Norfolk, Virginia

June

I

, 2015

STATES

S.

Davis

DISTRICT

JUDGE