Opinion
No. 03-C-553-C.
October 21, 2004.
Jon G. Furlow, Milwaukee, WI, John B. Lunseth, II, Minneapolis, MN, Terence J. Clark, for Plaintiffs.
William F. Bauer, Coyne, Niess, Schultz, Becker Bauer, Madison, WI, Paul W. Schwarzenbart, Lee, Kilkelly, Paulson Younger, Eugenia G. Carter, La Follette, Godfrey Kahn, S.C., Madison, WI, Marshall G. MacFarlane, Young Basile, P.C., Ann Arbor, MI, Anthony J. Kane, Terhaar, Archibald, Pfefferle Griebel, LLP, Minneapolis, MN, Angelo J. Bufalino, Vedder, Price, Kaufman Kammholz, Chicago, IL, Kristin L. Murphy, Rader, Fishman Grauer, Bloomfield Hills, MI, for Defendants.
OPINION AND ORDER
In this civil action, plaintiffs Ardisam, Inc. and Spring Form, Inc. contended that defendants Ameristep, Inc., Hunter's View, Ltd. and Eastman Outdoors infringed plaintiffs' U.S. Patent No. 5,038,812 (the '812 patent) by making, using, selling and offering for sale hunting blinds that utilize and embody the patented invention, which is a "quickly erectable, quickly collapsible, self supporting portable structure." In an August 2, 2004, opinion and order I granted defendants' motion for summary judgment, finding that defendants' products did not infringe the '812 patent.
Now before the court is defendant Eastman Outdoors' motion for attorney fees, expenses and costs, pursuant to 35 U.S.C. § 285, Fed.R.Civ.P. 11 and Fed.R.Civ.P. 54(d), and defendant Hunter's View's motion for attorney fees and expenses pursuant to 35 U.S.C. § 285. Under 35 U.S.C. § 285, a court may award reasonable attorney fees to the prevailing party in "exceptional cases." Merely prevailing is not enough to show that a case is exceptional; there must be evidence of bad faith, fraud, gross negligence or unclean hands on the part of the losing party. To put it another way, a court may find a case exceptional if the conduct of the losing party would make it grossly unjust for the prevailing party to be left with the burden of litigation expenses. Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1364 (Fed. Cir. 1990).
Defendant Eastman Outdoors filed its motion for attorney fees and costs on September 1, 2003 and defendant Hunter's view filed its motion on September 3, 2003. Plaintiffs filed a brief in opposition to defendants' request for attorney fees on September 27, 2004, stating, among other things, that defendants' motion for attorney fees was untimely under Fed.R.Civ.P. 54(d)(2)(B), which requires parties to file such motions within 14 days after entry of judgment. Assuming judgment was entered in this case on August 2, 2004, defendants had until August 16, 2004, to file a motion for attorney fees.
On October 7, 2003, defendants Eastman Outdoors and Hunter's View filed a joint motion under Fed.R.Civ.P. 6(b)(2) to extend the time to file their motions for attorney fees. Rule 6(b)(2) gives a court discretion, upon motion, to enlarge the time for filing motions "after the expiration of the specified period" "where the failure to act was the result of excusable neglect." On October 8, 2004, I granted defendants' joint motion for an extension of time. On October 14, 2004, plaintiffs submitted a letter objecting to the court's decision to grant defendants' motion for an extension of time. According to the letter, plaintiffs did not receive defendants' motion for an extension of time until after the court ruled on it. In addition, plaintiffs point out that defendants did not file their motion to extend the time allowed for filing motions for attorney fees until after plaintiffs raised the argument that defendants' motion for fees was untimely. Defendants did not respond to plaintiffs' timeliness argument in their reply briefs to their motions for attorney fees but instead addressed the argument in their motion to extend the time allowed for filing motions for attorney fees.
Because I granted defendants' motion for an extension of time before considering plaintiffs' argument about timeliness, I will construe plaintiffs' October 14, 2004 letter as a motion to reconsider the grant of defendants' motion for an extension of time under Fed.R.Civ.P. 6(b)(2).
A. Timeliness of Defendants' Motion for Attorney Fees
Defendants recognize that their motions for attorney fees were untimely by 16 or more days under Fed.R.Civ.P. 54(d)(B). They argue, however, that the court should enlarge the time required to file such motions because their failure to act was the result of "excusable neglect." Fed.R.Civ.P. 6(b)(2).
In Pioneer Investment Services Co. v. Brunswick Associates L.P., 507 U.S. 380 (1993), the Supreme Court addressed the question of excusable neglect. The Court granted certiorari because some courts of appeals had required a showing that the movant's failure to meet the deadline was beyond its control, while others, such as the Court of Appeals for the Seventh Circuit, had adopted a more flexible approach. Id. at 387 n. 3 (citing Lorenzen v. Employees Retirement Plan of Sperry Hutchinson Co., 896 F.2d 228, 232-33 (7th Cir. 1990)). The Court adopted the more flexible approach, holding that excusable neglect could be found in situations in which delays were caused by "intervening circumstances beyond the party's control" as well as in situations involving "late filings caused by inadvertence, mistake, or carelessness." Id. at 388. "Although inadvertence, ignorance of the rules, or mistakes construing the rules do not usually constitute 'excusable' neglect, it is a somewhat 'elastic concept' and is not limited strictly to omissions caused by circumstances beyond the control of the movant." Id. at 392.
The determination whether neglect is excusable "is at bottom an equitable one, taking account of all relevant circumstances surrounding the party's omission." Id. at 395, 113 S.Ct. 1489. To determine what sorts of neglect is "excusable, the Court set out a balancing test to be applied attorney fees under both 35 U.S.C. § 285 and Rule 11. Therefore, I understand defendant to concede that it did not serve its Rule 11 motion on plaintiffs 21 days before filing the motion in this court. Even if defendant had met Rule 11's safe harbor provision, it did not file its Rule 11 motion separately; defendant combined its motion for sanctions with its motion for attorney fees under 35 U.S.C. § 285 and costs under Fed.R.Civ.P. 54(d). Therefore, I will deny defendant's motion for sanctions under Fed.R.Civ.P. 11.
C. Bill of Costs
In addition to attorney fees, defendant Eastman Outdoors has moved for reimbursement of costs totaling $2,640.22. Dft.'s Reply in Support of Bill of Costs, dkt. #144, at 3. (Defendant Hunter's View did not file a motion for costs under Fed.R.Civ.P. 54(d)(1)). This amount includes 1) $198.62 for copy costs; 2) $2,051.00 for expert witness fees; 3) $35.00 for downloading the '812 patent from Nerac; 4) $245.60 for retrieving documents and research concerning the '812 patent; and 5) $110.00 for illustration costs.Under Fed.R.Civ.P. 54(d)(1), costs other than attorney fees are allowed as of course to the prevailing party unless the court otherwise directs. Defendant has already amended its request for reimbursement by deleting $4,232.08 in costs. Nevertheless, plaintiffs argue that the remaining $2,640.22 should be denied because the court did not rely on the items for which defendant seeks reimbursement when making its decision to grant defendant's motion for summary judgment. Plaintiffs' argument is unavailing. Defendants had no way to predict how the court would resolve the case. Because the court does not require parties to be clairvoyant about how a court will dispose of a case, parties are free to pursue whatever strategy they believe will bolster their case. None of these costs is excessive or unreasonable in the defense of a patent infringement case. (As an example, plaintiffs argue that defendant is entitled to reimbursement of only those costs related to copies furnished to the court, not those provided to attorneys. However, under Kulumani v. Blue Cross Blue Shield Association, 224 F.3d 681, 685 (7th Cir. 2000), "[t]wo copies of every document filed with the court or provided to opposing counsel makes sense." Given the number of attorneys involved in this case, $198.62 in copy costs is not excessive.) I will grant defendant Eastman Outdoor's request for costs in the amount of $2,640.22.
ORDER
IT IS ORDERED that
1. This court's October 8, 2004 order granting defendants Eastman Outdoors and Hunter's View's motion to enlarge the time under Fed.R.Civ.P. 6(b)(2) to file a motion for attorney fees is VACATED;
2. Defendants Eastman Outdoors and Hunter's View's motion to enlarge the time to file a motion for attorney fees is DENIED;
2. Defendants Eastman Outdoors and Hunter's View's motion for attorney fees under 35 U.S.C. § 285 is DENIED as untimely pursuant to Fed.R.Civ.P. 54(d)(2)(B);
3. Defendant Eastman Outdoors's motion for sanctions under Fed.R.Civ.P. 11 is DENIED;
4. Defendant Eastman Outdoors's request for an award of costs under Fed.R.Civ. 12 P. 54(d)(1) is GRANTED in the amount of $2,640.22.