U.S. Water Services, Inc. v. Novozymes A/S et al

Filing 565

ORDER granting 564 Motion to Stay Post-Judgment Proceedings. Any motions pursuant to Federal Rule of Civil Procedure 54(d) for taxation of costs or for an award of attorney fees must be filed by: (1) 14 days after the deadline to file a notice of a ppeal, if neither party appeals the judgment; (2) if either party appeals the judgment, 30 days after the issuance of a mandate from the United States Court of Appeals for the Federal Circuit, if defendants are still prevailing parties; or (3) by a date set by further order of this court if neither (1) nor (2) applies. Signed by District Judge James D. Peterson on 8/13/2015. (jls)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

U.S. WATER SERVICES, INC. and
ROY JOHNSON,
ORDER
Plaintiffs,
v.

13-cv-864-jdp

NOVOZYMES A/S, and NOVOZYMES
NORTH AMERICA, INC.,
Defendants.

The court entered summary judgment in this case on July 29, 2015, on two bases: the
asserted claims of the patents-in-suit are invalid as anticipated; and the patents-in-suit are not
unenforceable because of inequitable conduct. Dkt. 561. The summary judgment order
disposed of the case, with defendants prevailing.
The parties have now filed a joint motion to stay post-judgment proceedings, which
would include defendants’ bill of costs and defendants’ planned motion for attorney fees.
Dkt. 564. Plaintiffs intend to appeal the merits of the case, and the parties ask to forestall
briefing and consideration of costs and attorney fees until after the appeal is resolved.
Federal Rule of Civil Procedure 54 gives the court discretion to grant this request, but
it runs counter to the general rule articulated by the Seventh Circuit that “district courts in
this circuit should proceed with attorneys’ fees motions, even after an appeal is filed, as
expeditiously as possible.” Terket v. Lund, 623 F.2d 29, 34 (7th Cir. 1980); see also Barton v.
Zimmer, Inc., No. 06-cv-208, 2010 WL 2541707, at *2 (N.D. Ind. June 16, 2010) (briefly
surveying the law and joining “the various district courts in this circuit that have denied
motions to stay a determination of costs pending appeal.”). Indeed, the Supreme Court has

observed that “district courts generally can avoid piecemeal appeals by promptly hearing and
deciding claims to attorney’s fees[, which] will permit appeals from fee awards to be
considered together with any appeal from a final judgment on the merits.” White v. N.H.
Dep’t of Emp’t Sec., 455 U.S. 445, 454 (1982).
The court will deviate from the general rule and grant the motion. The presentation of
the bill of costs is, in most cases, a matter of routine. But in a significant patent case like this
one, it can represent a significant undertaking that prompts a substantial opposition. A
motion for an award of discretionary attorney fees is a significant undertaking under any
circumstances, but it will be particularly so here. If, on appeal, the Federal Circuit disturbs
either part of the court’s summary judgment ruling, then the parties and this court will likely
have to re-do work on attorney fees. If the decision on the validity of the patents-in-suit is
reversed, then the post-trial work will have been for naught.
In patent cases where the issues are straightforward, or where the parties do not
stipulate otherwise, the court will stick to the general rule and will promptly tax costs and
decide motions for attorney fees to avoid the potential for piecemeal appeals. But this case
presents issues of sufficient complexity that it seems prudent to see how the appeal turns out
before we tally up and split the bill.

ORDER
IT IS ORDERED that:
1. The parties’ joint motion to stay post-judgment proceedings, Dkt. 564, is
GRANTED.
2. Any motions pursuant to Federal Rule of Civil Procedure 54(d) for taxation of
costs or for an award of attorney fees must be filed by: (1) 14 days after the
deadline to file a notice of appeal, if neither party appeals the judgment; (2) if

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either party appeals the judgment, 30 days after the issuance of a mandate from
the United States Court of Appeals for the Federal Circuit, if defendants are still
prevailing parties; or (3) by a date set by further order of this court if neither (1)
nor (2) applies.
Entered August 13, 2015.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

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