Court Denies Attorneys’ Fees to Defendant Securing Stipulation of Dismissal With Prejudice

 In a January 26, 2015 ruling, Judge Katherine Polk Failla refused to award attorneys’ fees to a defendant in a copyright case who secured a stipulation of dismissal with prejudice early in the case. The Court did find that the defendant was a “prevailing party” under the Copyright Act fee provision, writing:

Here, the parties agreed to a stipulation of dismissal with prejudice pursuant to Rule 41(a)(1)(A)(ii), because Plaintiff’s opportunity to voluntarily dismiss unilaterally pursuant to Rule 41(a)(1)(A)(i) had expired upon [the defendant’s] filing of an answer. Such a dismissal “has the effect of a final adjudication on the merits favorable to defendant and bars future suits brought by plaintiff upon the same cause of action.” . . . Therefore, because the stipulation of dismissal “immunize[s] [the] defendant from the risk of further litigation on the merits,” . . . Defendant has prevailed.

Judge Failla nevertheless denied an award of fees on the merits, finding that the plaintiff’s claim neither was objectively baseless, frivolous nor brought in bad faith. In response to the defendant’s argument that the plaintiff should have known it was not a proper party, the Court noted the defendant’s tangled business affairs with those of its co-defendant, and wrote that the plaintiff had no factual basis by which to verify [the defendant’s] description of [its business] relationships.” Judge Failla further wrote that her ruling denying in part of a companion defendant’s motion to dismiss suggested that the plaintiff’s claims were not frivolous.

Court Denies Summary Judgment Because of Factual Dispute Between Experts

In a January 14, 2015 ruling, Judge Coleen McMahon denied summary judgment in this patent infringement action because of the parties’ experts’ conflicting testimony. The Court wrote:

In sum, the two sides’ experts differ on two critical points: whether [the prior art] and the [patent-in-suit] disclose the same elements and limitations, and whether one acknowledged difference between them (the plurality of numbers) would have been “obvious” to one skilled in the art. Each side has presented testimony from a purported expert to support its point of view. The experts do not agree. That precludes summary judgment.

In commenting on the experts’ disagreement about the qualifications for a person skilled in the art concerning the patent-in-suit, Judge McMahon wrote:

Two more disparate descriptions of what constitutes a “person having ordinary skill in the art” I cannot imagine. . . . The Court has no idea who is correct, or for that matter how to resolve the issue; this is the first case I can recall in which the parties did not agree on the qualifications of the hypothetical “person having ordinary skill in the art.” . . . If the parties cannot agree on who qualifies as a person skilled in the art, then there is a question of fact to be resolved. This precludes summary judgment as well.