UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

East Coast Sheet Metal Fabricating Corp., d/b/a EastCoast CAD/CAM

v. Civil No. 12-cv-517-LM Opinion No.

Autodesk, Inc.

O R D E R

East Coast Sheet Metal Fabricating Corp. (“EastCoast”) sued

Autodesk, Inc. (“Autodesk”) for patent infringement and also

asserted several claims under state law, which it dropped before

judgment was rendered on them. In an order dated January 15,

2015, the court: (1) granted summary judgment to Autodesk on its

defense that the patents in suit were invalid, due to the

unpatentability of EastCoast’s subject matter; (2) ruled in

Autodesk’s favor on its defense that the accused products did

not infringe the patents in suit; and (3) denied as moot

Autodesk’s motion for judgment as a matter of law that EastCoast

could not prove damages in the form of lost profits. In an

order dated March 3, 2015, the court amended its previous order

to specify that it was dismissing, as moot, Autodesk’s three

counterclaims for declaratory judgment, including a request for

a declaratory judgment that the patents in suit were unenforceable due to EastCoast’s inequitable conduct before the

U.S. Patent and Trademark Office (“PTO”). Before the court is

Autodesk’s motion for attorney’s fees and related nontaxable

expenses. EastCoast objects. It also suggests, in the

alternative, that the court could defer ruling on attorney’s

fees until its appeal has run its course. The court declines to

defer its consideration of the motion before it.1 Rather, for

the reasons that follow, the court denies Autodesk’s motion for

attorney’s fees.

I. The Legal Standard

“Although parties to civil litigation typically bear the

burden of paying their own counsel, see Alyeska Pipeline Serv.

Co. v. Wilderness Soc’y,

(1975), statutes and

contractual provisions sometimes alter that burden.” Cent.

Pension Fund of the Int’l Union of Operating Eng’rs &

Participating Emp’rs v. Ray Haluch Gravel Co.,

(1st Cir. 2014) (parallel citations omitted). The Patent Act

1 When presented with a similar request, Judge Wilkin declined: “If this Court decides the fees issue now, the Federal Circuit may consider the overlapping summary judgment and fees issues together, saving judicial resources.” Cf. Linex Techs., Inc. v. Hewlett-Packard Co., No. C 13-159 CW,

, at *3 (N.D. Cal. Sept. 15, 2014) (citing Nystrom v. TREX Co.,

(Fed. Cir. 2003) (opposing piecemeal appeals)); see also Intex Rec. Corp. v. Team Worldwide Corp., -- - F. Supp. 3d ---, ---,

(D.D.C. Jan. 9, 2015).

2 includes a provision that can shift the burden of paying for

counsel. See

. In addition, federal courts have

the inherent power to award attorney’s fees as a sanction. See

Charbono v. Sumski (In re Charbono), --- F.3d ---, ---,

(1st Cir. June 15, 2015). The Federal Rules of

Civil Procedure (“Federal Rules”) also empower courts to

sanction parties by awarding attorney’s fees. See Fed. R. Civ.

P. 11(c)(4). Having identified three basic sources of authority

for the assessment of attorney’s fees, the court describes in

more detail the legal standards associated with each.

A. The Patent Act

The Patent Act provides that “[t]he court in exceptional

cases may award reasonable attorney fees to the prevailing

party.”

. “[A]n ‘exceptional’ case is simply

one 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.,

(2014).

Under the second branch of the § 285 analysis, unreasonable

litigation generally refers to litigation misconduct, which

“includes ‘willful infringement, fraud or inequitable conduct in

3 procuring the patent, misconduct during litigation, vexatious or

unjustified litigation, conduct that violates Fed. R. Civ. P.

11, or like infractions.’” Id. (quoting Brooks Furn. Mfg., Inc.

v. Dutailier Int’l, Inc.,

(Fed. Cir. 2005),

overruled on other grounds by Octane Fitness,

).

A party must prove its entitlement to fees under § 285 by a

preponderance of the evidence. See Octane Fitness,

. “District courts may determine whether a case is

‘exceptional’ in the case-by-case exercise of their discretion,

considering the totality of the circumstances.”

.

Given that focus on the totality of the circumstances, “a case

should be viewed more as an ‘inclusive whole’ rather than as a

piecemeal process when analyzing fee-shifting under § 285.”

Therasense, Inc. v. Becton, Dickinson & Co. (Therasense II),

(Fed. Cir. 2014) (citing Comm’r, INS v. Jean,

(1990)).

B. Inherent Power

Notwithstanding “the venerable ‘American Rule,’ which

provides that litigants shall ordinarily pay their own lawyers,”

In re Charbono,

(citations omitted),

courts may, in the exercise of their inherent power, “award

[attorney’s] fees when a party has ‘acted in bad faith,

4 vexatiously, wantonly, or for oppressive reasons.’” RTR Techs.,

Inc. v. Helming,

(1st Cir. 2013) (quoting

Alyeska Pipeline,

). A party requesting an

award of attorney’s fees pursuant to the court’s inherent power

must make its showing of bad faith by clear and convincing

evidence. See Dubois v. U.S. Dep’t of Agric., No. CIV.A. 95–50–

B,

, at *2 (D.N.H. July 17, 1998) (citing Dow

Chem. Pac. Ltd. v. Rascator Maritime S.A.,

(2d

Cir. 1986); Autorama Corp. v. Stewart,

(10th

Cir. 1986)). “District courts are well-advised to use their

inherent power cautiously and to grant attorneys’ fees sparingly

under that power.” RTR Technologies,

(citing

Chambers v. NASCO, Inc.,

(1991); Estate of

Hevia v. Portrio Corp.,

(1st Cir. 2010)).

Indeed, an award of attorney’s fees under the court’s inherent

power is “reserved for egregious circumstances,” Mullane v.

Chambers,

(1st Cir. 2003) (quoting Whitney

Bros. Co. v. Sprafkin,

(1st Cir. 1995)), and

“compelling situations,” Dubois v. U.S. Dep’t of Agric.,

(1st Cir. 2001).

5 C. Rule 11 Power

The Federal Rules “impose[ ] a duty on attorneys to certify

that they have conducted a reasonable inquiry and have

determined that any papers filed with the court are well

grounded in fact, legally tenable, and not interposed for any

improper purpose.” Enos v. Union Stone, Inc.,

(1st Cir. 2013) (quoting Cooter & Gell v. Hartmarx Corp.,

(1990)). “Rule 11 permits a court to impose

sanctions on a party or lawyer for advocating a frivolous

position, pursuing an unfounded claim, or filing a lawsuit for

some improper purpose.” CQ Int’l Co. v. Rochem Int’l, Inc.,

USA,

(1st Cir. 2011) (citing Fed. R. Civ. P.

11(b)). Those sanctions may include attorney’s fees. See Fed.

R. Civ. P. 11(c)(4).

II. Discussion

Autodesk bases its request for attorney’s fees on

, and also asks the court to invoke both its inherent power

and its Rule 11 power to sanction EastCoast by imposing a fee

award. It does so in the following way:

Autodesk’s motion is based on

and Octane Fitness, as well as on East Coast’s sanctionable Rule 11 conduct and/or the Court’s “inherent powers” as a sanction for East Coast’s bad faith conduct, as explained above. Any portion claimed that is available based on more than one of

6 those grounds is sought based on all those grounds under which it is available. Any portion unavailable on any one or more of the stated grounds is requested to the full extent available under any other of the stated grounds.

Def.’s Br. (doc. no. 197-1) 14 (citations omitted). While

Autodesk invokes § 285, Rule 11, and the court’s inherent

powers, it relies nearly exclusively upon § 285 cases in its

memorandum of law. Moreover, given the Supreme Court’s

observation that a party’s misconduct can be exceptional for the

purposes of § 285 without rising to the level of being

independently sanctionable, see Octane Fitness,

, it seems clear that a party that is not entitled to

attorney fees under § 285 would, necessarily, not be entitled to

an award of fees under Rule 11 or pursuant to the court’s

inherent power. Accordingly, the court will analyze Autodesk’s

request for fees under the legal principles applicable to § 285.

There is another reason for disregarding Autodesk’s

invocation of Rule 11. In an order dated September 9, 2014, the

court denied Autodesk’s Rule 11 motion but did so “without

prejudice to Autodesk moving for sanctions if and when it

receives a favorable disposition of EastCoast’s infringement

action.” Order (doc. no. 107) 3-4. The court’s order invited

Autodesk to submit another Rule 11 motion, but did not waive or

alter any of the procedural rules governing the litigation of

7 such motions. One of those rules is that “[a] Rule 11 motion

must be made ‘separately from any other motion,’ Fed. R. Civ. P.

11(c)(2), and ‘not simply . . . as an additional prayer for

relief contained in another motion.’” Lamboy-Ortiz v. Ortiz-

Vélez,

(1st Cir. 2010) (quoting Fed. R. Civ.

P. 11(c)(2) advisory committee’s note). Because Autodesk has

not filed a separate Rule 11 motion, the court may not award

attorney’s fees to Autodesk as a Rule 11 sanction against

EastCoast. See Lamboy-Ortiz,

; see also Irwin

Indus. Tool Co. v. Bibow Indus., Inc., Civ. Action No. 11-30023-

DPW,

, at *1 (D. Mass. Mar. 31, 2014). That

said, conduct that would constitute a violation of Rule 11 may

qualify as litigation misconduct for the purposes of § 285. See

Octane Fitness,

.

In the discussion that follows, the court considers the two

branches of the § 285 analysis identified by the Supreme Court

in Octane Fitness, i.e., the strength of EastCoast’s litigating

position, and the manner in which it has litigated this case.

See

. The court begins with the manner in

which EastCoast has litigated, which seems to be the primary

focus of Autodesk’s claim for attorney fees.

8 A. Manner in Which EastCoast Has Litigated

The court considers in turn Autodesk’s arguments that it is

entitled to attorney fees under

because

EastCoast: (1) engaged in inequitable conduct before the PTO;

(2) pursued frivolous infringement claims; (3) pursued frivolous

non-patent claims; and (4) engaged in discovery misconduct.

Notwithstanding its obligation to consider this case as a whole,

see Octane Fitness,

, the court will, for

analytical purposes, consider Autodesk’s arguments one by one.

Cf. SFA Sys., LLC v. Newegg Inc., --- F.3d ---, ---,

(Fed. Cir. July 10, 2015).

1. Conduct During Patent Procurement

A patentee’s inequitable conduct while procuring its patent

may warrant a finding of exceptionality for the purposes of §

285. See Octane Fitness,

; see also Stragent,

LLC v. Intel Corp., No. 6:11-cv-421,

, at *3

(E.D. Tex. Aug. 6, 2014); Momenta Pharms., Inc. v. Teva Pharms.

USA, Inc.,

(D. Mass. 2014).

Autodesk first claimed that EastCoast engaged in

inequitable conduct before the PTO in a counterclaim seeking a

declaratory judgment of unenforceability. See Answer to Second

Am. Compl. (doc. no. 32) 21-25. After the court granted summary

9 judgment in favor of Autodesk, and dismissed Autodesk’s

counterclaims as moot, Autodesk moved the court to amend its

“judgment . . . to reflect that Autodesk’s inequitable conduct

claim was dismissed as a matter of the Court’s discretion and

that Autodesk is entitled to raise enforceability in its fees

motion.” Mot. to Alter or Amend (doc. no. 198) 1-2. In its

order granting Autodesk’s motion, the court declined “to add an

additional sentence to the order that specifically entitles

Autodesk to raise the issue of inequitable conduct in its motion

for fees.” Order (doc. no. 210) 2. Rather, the court directed

that

[i]n the context of Autodesk’s motion for fees, the parties shall litigate both: (1) the propriety of addressing inequitable conduct in the context of the motion for fees (an issue that has already been joined by the parties); and (2) the merits of Autodesk’s inequitable-conduct argument (which has also been addressed by the parties).

Id. at 3.

Although the parties have addressed the merits of

Autodesk’s inequitable-conduct claim, they have not addressed

the question of whether it was proper to litigate the issue of

inequitable conduct for the first time in a motion for attorney

fees. In the face of that silence, and Autodesk’s in

particular, coupled with lingering concerns about “the counsel

fee tail continuing endlessly to wag the merits’ dog,” Wagenmann

10 v. Adams,

(1st Cir. 1987), the court has

researched the question it directed the parties to brief. That

research, in turn, confirms the propriety of considering

Autodesk’s inequitable-conduct argument at this stage of the

proceedings.

In Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp.

(Brasseler I),

(Fed. Cir. 1999), the Federal

Circuit affirmed the district court’s grant of summary judgment

to the defendant on a patent-infringement claim. See

. Then, it “remanded [the case] to the district court for a

determination of whether [it] was an exceptional case entitling

Stryker to attorney fees in accordance with

.”

Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp. (Brasseler II),

(Fed. Cir. 2001). In remanding, the court

of appeals acknowledged that Stryker appeared to have based its

§ 285 attorney fees claim on allegations beyond those involving

the legal theory that entitled it to summary judgment. See

Brasseler I,

. And, indeed, while Stryker won

summary judgment because the patent in suit was invalid under

(b), see id. at 889, it moved for attorney fees on

grounds that, among other things, the patentee had engaged in

misconduct before the PTO, see Brasseler II,

,

an issue that played no role in the grant of summary judgment.

11 Based upon Brasseler II, and the Federal Circuit’s remand order

acknowledging that the attorney fees issue would involve legal

questions beyond those that supported the grant of summary

judgment, this court cannot agree with EastCoast that Autodesk

is barred from litigating the question of inequitable conduct

before the PTO in its motion for attorney fees. Accordingly,

the court turns to the merits of that argument.

Autodesk argues that EastCoast inventors Joseph Massaro and

David Derocher engaged in inequitable conduct “when they

withheld a full disclosure of [a particular piece of] prior art

with which they were intimately familiar.” Def.’s Br. (doc. no.

197-1) 10. More specifically, Autodesk contends: “Although

[that prior art] was mentioned in the application for the

patents in suit, East Coast [sic] failed to mention that [it]

satisfied all or nearly all of the claimed features.” Id. at

11. Where, precisely, that failure took place, Autodesk does

not say. Autodesk also makes a vague and ill-supported

reference to an interview at the PTO involving an examiner and

the inventors of the apparatuses claimed in the patents in suit.2

2That reference is ill-supported because in its argument on this point, Autodesk cites to a portion of Derocher’s declaration that says nothing about his interview at the PTO. See Def.’s Br. (doc. no. 197-1) 11 (citing id., Ex. M (doc. no. 197-15), at 11:11-21, 15:21-17:12).

12 In addition to arguing that the court should not consider

Autodesk’s inequitable-conduct argument in the first instance,

EastCoast also argues that a patent applicant’s characterization

of prior art cannot form the basis for an inequitable-conduct

claim. EastCoast has the better argument.

Generally speaking, “[i]nequitable conduct is an equitable

defense to patent infringement.” Am. Calcar, Inc. v. Am. Honda

Motor Co.,

(Fed. Cir. 2014) (citing

Therasense, Inc. v. Becton, Dickinson & Co. (Therasense I),

(Fed. Cir. 2011)). A party raising that defense

must prove “that the patent applicant (1) misrepresented or

omitted information material to patentability, and (2) did so

with specific intent to mislead or deceive the PTO.” Am.

Calcar,

-89 (quoting Ohio Willow Wood Co. v.

Alps S., LLC,

(Fed. Cir. 2013)). When

raised as a defense, inequitable conduct must be proved by clear

and convincing evidence. See Am. Calcar,

. But

where, as here, inequitable conduct is raised as a basis for an

award of attorney fees under

, the court applies

the preponderance of the evidence standard prescribed by Octane

Fitness. See

.

In its opening brief, Autodesk relied upon LaBounty Mfg.,

Inc. v. U.S. Int’l Trade Comm’n,

(Fed. Cir. 1992).

13 In that case, the Federal Circuit affirmed a determination that

a patentee had committed inequitable conduct by failing to

disclose material prior art. See

. Here, Autodesk

acknowledges that EastCoast did disclose the prior art at issue,

but accuses Autodesk of making a “selective disclosure” of that

prior art and misrepresenting it to the PTO during the course of

an interview.

In its supplemental brief, EastCoast relies upon Young v.

Lumenis, Inc.,

(Fed. Cir. 2007). That case stands

for the common-sense proposition that when a patent examiner has

been alerted to a prior art reference and can form his or her

own opinion of it, the applicant’s characterization is not an

“affirmative misrepresentation of material fact” that would

constitute inequitable conduct.

at 1348 (quoting Molins v.

Textron, Inc.,

(Fed. Cir. 1995)).

Autodesk responds by citing Apotex Inc. v. UCB, Inc.,

(Fed. Cir. 2014), in which the Federal Circuit

affirmed the district court’s decision that the plaintiff’s

patent was unenforceable due to inequitable conduct. But Apotex

involved a much wider range of conduct than that alleged by

Autodesk. In Apotex, the patentee completely withheld certain

relevant prior art. See

. It also omitted important

details regarding the prior art from the specification. See

14 at 1361. Furthermore, the patentee repeatedly made affirmative

misrepresentations of material facts to the PTO through counsel

and a hired expert, deliberately withheld the truth from that

expert, and represented in the specification that the inventor

had conducted experiments that he had not conducted. See

.

The alleged misconduct before the PTO on which Autodesk

bases its claim for attorney fees pales in comparison with the

misconduct established in Apotex. Here, Autodesk identifies no

prior art that EastCoast withheld from the PTO. It does not

identify any deficiency in the treatment of the prior art in the

specifications of the patents in suit. It identifies no pattern

of misrepresentation by EastCoast, and it does not claim that

EastCoast manufactured false evidence for submission to the PTO.

Rather, Autodesk’s argument is based upon two factors,

EastCoast’s “characterization” of prior art that it disclosed to

the PTO (prior art that the examiner was free to examine him or

herself), and a single meeting with a patent examiner about

which Autodesk has produced little evidence. In sum, the

conduct by the patentee in Apotex stands out as exceptionally

egregious; EastCoast’s conduct before the PTO does not. Thus,

that conduct provides no basis for an award of attorney fees to

Autodesk under

.

15 2. Strength of EastCoast’s Patent Claims

Autodesk next contends that EastCoast is liable for

attorney fees because it was frivolous for EastCoast to accuse

two specific Autodesk products of infringement, and it treated

those products as infringing deep into the litigation process.

In essence, Autodesk argues that EastCoast’s pursuit of weak

patent-infringement claims was an unreasonable and vexatious

litigation tactic. See SFA Systems,

.

“‘Litigation misconduct generally involves unethical or

unprofessional conduct by a party or his attorneys during the

course of adjudicative proceedings,’ and includes advancing

frivolous arguments during the course of the litigation or

otherwise prolonging litigation in bad faith.” Highmark, Inc.

v. Allcare Health Mgmt. Sys., Inc. (Highmark I),

(Fed. Cir. 2012), vacated and remanded on other grounds

by

(2014) (Highmark II), (quoting Old Reliable

Wholesale, Inc. v. Cornell Corp.,

(Fed. Cir.

2011); citing Computer Docking Station Corp. v. Dell, Inc.,

(Fed. Cir. 2008)). In other words, under the

manner-of-litigation branch of the § 285 analysis, the problem

with weak legal arguments arises when litigation is prolonged

because of them.

16 In SFA Systems, the Federal Circuit described three cases

in which it had affirmed district court findings of litigation

misconduct that justified awards of attorney fees under

. See

. In the first of

those cases, the patentee destroyed relevant documents and

produced misleading extrinsic evidence. See

at *5 (citing

Eon-Net LP v. Flagstar Bancorp,

, 1324–25 (Fed.

Cir. 2011)). In another case, the patentee misrepresented both

the law of claim construction and the trial court’s construction

of the claims at issue and also introduced expert testimony that

did not meet even the lowest standards for reliability. See

at *6 (citing MarcTec, LLC v. Johnson & Johnson,

(Fed. Cir. 2012)). Finally, in the third case described in

SFA Systems, the court of appeals affirmed a finding of

exceptionality when the patentee filed claims against an accused

infringer’s customers only to drop them after extensive

litigation had taken place, misrepresented the date of key

evidence, and used motion practice to hide false evidence. See

(citing Monolithic Power Sys., Inc. v. O2 Micro Int’l, Ltd.,

(Fed. Cir. 2013)). With the guidance of SFA

Systems in mind, the court turns to the specifics of this case.

EastCoast has filed a total of four complaints in this

case. In its original complaint, it alleged that the patents in

17 suit were infringed by “products such as the AutoCAD MEP and

Autodesk Fabrication Products.” Compl. (doc. no. 1) ¶ 23. In

its Amended Complaint, EastCoast alleged that the patents in

suit were infringed by

products such as the AutoCAD MEP and Revit MEP product families, including AutoCAD MEP, AutoCAD MEP + Fabrication FABmep, AutoCAD MEP + Fabrication FABmep + Fabrication CADmep, AutoCAD MEP + Fabrication CADmep; Revit MEP, Revit MEP + Fabrication FABmep, Revit MEP + Fabrication FABmep + Fabrication CADmep.

Am. Compl. (doc. no. 15) ¶ 33. The list of accused products in

the Second Amended Complaint is identical to the list in the

Amended Complaint. See Second Am. Compl. (doc. no. 26) ¶ 33.

In its Third Amended Complaint, EastCoast identifies the accused

products this way:

a) AutoCAD MEP in combination with Fabrication FABmep; b) AutoCAD MEP in combination with Fabrication CADmep; c) AutoCAD MEP in combination with Fabrication FABmep and Fabrication CADmep; d) Revit MEP in combination with Fabrication FABmep; e) Revit MEP in combination with Fabrication CADmep; and f) Revit MEP in combination with Fabrication FABmep and Fabrication CADmep.

Third Am. Compl. (doc. no. 119) ¶ 11. The difference between

the Second Amended Complaint and the Third Amended Complaint is

that while the Second Amended Complaint asserted that the

patents in suit were infringed by AutoCAD MEP and Revit MEP

(“the MEP products”) standing alone, the Third Amended Complaint

only identifies the MEP products as infringing when used in

18 combination with other Autodesk products such as Fabrication

FABmep and Fabrication CADmep.

Autodesk argues that EastCoast’s case was exceptionally

weak because the infringement claims against the MEP products

were frivolous from the start, yet remained in the case until

EastCoast finally decided not to include them in its Third

Amended Complaint. Autodesk’s argument misses the mark.

EastCoast’s claims that the MEP products, on their own,

infringed the patents in suit may have been weak, and those

claims did remain in the case for nearly 20 months. But, the

court is obligated to consider the case as a whole. See Octane

Fitness,

; Therasense II, 745 F.3d at 516. In

so doing, the court notes that at least the last three of

EastCoast’s complaints, if not all four, included claims against

combinations of products, not just the MEP products standing

alone. Given the complexity and the relative novelty of the

issues the court had to address in granting summary judgment to

Autodesk on EastCoast’s claims against its combinations of

products, those claims were not frivolous. Moreover, while it

is true that EastCoast’s claims against the MEP products

standing alone remained in the case until EastCoast filed its

Third Amended Complaint, it cannot be said that EastCoast’s

pursuit of those claims prolonged this case, given that

19 EastCoast jettisoned its claims against the MEP products before

its claims against the combination products were adjudicated.

This is not a case such as Cartner v. Alamo Group, Inc., 561

Fed. App’x 958, 969-70 (Fed. Cir. 2014), in which a plaintiff in

a patent-infringement suit continued to pursue claims after they

were rendered frivolous by the court’s claim-construction order.

Under the totality of the circumstances of this case, the

appropriate question is not how long EastCoast’s claims against

the MEP products remained in the case but, rather, whether the

litigation as a whole was prolonged by EastCoast’s pursuit of

those claims. Because EastCoast dropped its claims against the

individual MEP products before Autodesk received summary

judgment on EastCoast’s claims against the product combinations,

EastCoast’s pursuit of claims against the individual MEP

products does not qualify as litigation misconduct for the

purposes of

.

3. Strength of EastCoast’s Non-Patent Claims

Autodesk contends that EastCoast is liable for attorney

fees because it pursued several frivolous non-patent state-law

claims until it decided not to include them in its Third Amended

Complaint. Like the argument discussed in the previous section,

this argument is also best understood as falling under the

20 manner-of-litigation rubric. The court begins by noting that

two of the supposedly frivolous state-law claims survived a

motion to dismiss. See Order (doc. no. 25) 1. In any event,

for the same reasons that apply to the patent claims discussed

in the previous section, the court concludes that EastCoast’s

pursuit of its non-patent state-law claims against Autodesk does

not qualify as litigation misconduct for the purposes of

.

4. Discovery

Autodesk’s final litigation-misconduct argument concerns

the manner in which EastCoast conducted discovery. Autodesk

argues that this case is exceptional because: (1) EastCoast’s

original “complaint failed to identify any particular ‘products

or processes (by model number, trade name, or other specific

identifying characteristic),’ as required by SPR 2.1,” Def.’s

Br. (doc. no. 197-1) 12; (2) EastCoast’s infringement

contentions included illegible screenshots (from an Autodesk

website) and substantively addressed only one of the three

patents in suit; (3) EastCoast’s final infringement contentions

were identical to its preliminary infringement contentions; (4)

EastCoast produced an expert opinion propounding a theory of

infringement that was different from the one advanced in the

21 final infringement contentions; and (5) EastCoast initially

denied the existence of, then belatedly produced, a videotape on

which its expert based his opinion. While Autodesk decries

those purported discovery abuses, it makes no real effort to

demonstrate how they cause EastCoast’s litigation of this case

to stand out from other patent litigation. EastCoast, in turn,

offers substantive responses to each of Autodesk’s arguments.

Based upon its experience of “liv[ing] with [this] case

over a prolonged period of time,” SFA Systems,

(quoting Highmark II, 134 S. Ct. at 1748), the court

concludes that the discovery misconduct alleged by Autodesk is

insufficient to render this case exceptional. Because

EastCoast’s approach to discovery does not cause this case to

stand out, it provides no basis for an award of attorney fees

under

.

5. Totality of the Circumstances

Having focused on the individual components of Autodesk’s

manner-of-litigation argument, the court concludes its

discussion of this branch of the exceptionality analysis by

stepping back to consider the totality of the circumstances.

This case involved viable though ultimately unsuccessful patent-

infringement claims against Autodesk’s combinations of products,

22 some overly inclusive pleadings that accused Autodesk’s MEP

products, and several state-law claims that were dropped late in

the litigation. Those factors weigh, at least mildly, in favor

of Autodesk’s request for fees. There are, however, some

strongly countervailing factors. Two of EastCoast’s state-law

claims survived a motion to dismiss. EastCoast’s position

prevailed at claim construction. EastCoast prevailed on several

of Autodesk’s motions for summary judgment before Autodesk

ultimately prevailed on one. Finally, EastCoast dropped its

infringement claims against Autodesk’s stand-alone products

before Autodesk prevailed at summary judgment, rather than

afterward, which means that EastCoast did not prolong this

litigation by pursuing those claims. Moreover, this is not a

case involving a plaintiff advancing baseless claims against

multiple defendants in an attempt to extract nuisance-value

settlements; there is no patent troll here.

In all, Autodesk has demonstrated that this is a relatively

typical patent case, not a case that stands out from the crowd

in terms of the manner in which a patentee has either procured

its patent or litigated its infringement claims. Based upon the

totality of the circumstances, this case falls well short of

having been litigated by EastCoast in a manner that merits an

award of attorney fees under

.

23 B. Substantive Strength of EastCoast’s Litigating Position

A case may be exceptional for the purposes of

if it stands out from others because of the weakness of a

party’s litigating position. See Octane Fitness,

. Under this rubric, Autodesk claims that EastCoast’s

position on damages was exceptionally weak because its claim for

lost profits was objectively baseless and unreasonable and

because its claim for a reasonable royalty was unreasonable and

legally unsound. Autodesk cites authority to support its

arguments concerning the reasonableness of EastCoast’s claims

for damages. However, it cites no authority for the proposition

that a claim for excessive damages is a weak litigating position

that would support a claim for attorney fees under

, and the court’s own search has revealed no such authority.

Accordingly, the court can see no merit in Autodesk’s argument

on damages. Moreover, attempting to recover more than a case

may ultimately be worth is a common litigation tactic, not

something that makes a case stand out. The bottom line is this:

EastCoast’s claims for damages provide no basis for an award of

attorney fees under

.

24 III. Conclusion

For the reasons detailed above, Autodesk’s motion for

attorney’s fees, document no. 197, is denied.

SO ORDERED.

__________________________ Landya McCafferty United States District Judge

July 30, 2015

cc: Thomas Tracy Aquilla, Esq. Kenneth C. Bartholomew, Esq. Robert F. Callahan, Jr., Esq. Joel M. Freed, Esq. Kyle L. Harvey, Esq. Damian R. Laplaca, Esq. Michael S. Lewis, Esq. Richard C. Nelson, Esq. Alexander P. Ott, Esq. Steven R. Pedersen, Esq. Donald J. Perreault, Esq. Artem N. Sokolov, Esq. Rolf O. Stadheim, Esq. George C. Summerfield, Esq.

25