United States District Court, N.D. Illinois
February 4, 2004.
CATALINA MARKETING INTERNATIONAL, INC., Plaintiff, COOLSAVINGS.COM, INC.; COOLSAVINGS, INC.; LANDMARK COMMUNICATIONS, INC.; and LANDMARK VENTURES VII, LLC, Defendants
The opinion of the court was delivered by: JOHN W. DARRAH, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiffs, Catalina Marketing International ("Catalina") filed a
patent infringement suit against Defendants, Coolsavings.com, Inc. and
Coolsavings, Inc. (collectively "Coolsavings"). Subsequently, Catalina
amended their complaint and added Defendants Landmark Communications,
Inc. ("Communications") and Landmark Ventures VII, Inc.
("Ventures")(collectively "Landmark"). Landmark was subsequently
dismissed for lack of personal jurisdiction and final judgment of
non-infringement was entered on August 8, 2003. Defendants have moved for
an award of attorney's fees pursuant to 35 U.S.C. § 285.
A brief summary of the history of the litigation is necessary to the
analysis of the Defendants' motions.
Catalina filed its complaint for infringement of the Lemon-Kelly Patent
against Coolsavings in Florida in November 1999. In April 2000, the case
was transferred to this Court. That same
month, Coolsavings served its first set of requests for documents
and things on Catalina. Catalina served its responses in May 2000.
In August 2000, Coolsavings filed a Motion for Summary Judgment of
Noninfringement. In March 2001, this Court granted Coolsavings' Motion
for Summary Judgment of Noninfringement. Catalina appealed that ruling;
and, in May 20002, the Federal Circuit affirmed in part, reversed in
part, vacated in part, and remanded the case.
Upon returning to this Court, the parties engaged in settlement
discussions and engaged a private mediator. Following an unsuccessful
settlement discussion with a magistrate judge in October 2002, this Court
entered a scheduling order that included a period of time during which
Catalina was entitled to discovery on the relationship between
Coolsavings and Landmark. In December 2002, Catalina moved to amend its
complaint to add Landmark as defendants. In February 2003, Catalina was
granted leave to file an amended complaint. Following the filing of the
amended complaint, Landmark moved to have the case dismissed for lack of
personal jurisdiction. In July 2003, Landmark was dismissed for lack of
personal jurisdiction. Catalina appealed the dismissal of Landmark that
In February 2003, Coolsavings' Motion to Compel, in which it sought, in
part, documents related to a previous case involving Catalina and the
Lemon-Kelly Patent, was granted. In April 2003, a Markman hearing was
held. In June 2003, this Court issued its construction of the disputed
terms. On August 8, 2003, this Court entered the parties' Agreed Final
Judgment and Dismissal Order. Catalina appealed the claim construction on
September 4, 2003.
Both Coolsavings and Landmark have moved for attorneys' fees pursuant
to 35 U.S.C. § 285. Section 285 of Title 35 provides that a district
court "in exceptional cases may award reasonable
attorney's fees to the prevailing party." An award of fees is a two-step
process. First, the court must find that the case is an "exceptional
case". If the court determines an exceptional case exists, it then, in
its discretion, must decide whether to award attorney's fees. Badalamenti
v. Dunham's, Inc., 896 F.2d 1359, 1365 (Fed. Cir. 1990) (Badalamenti).
The party seeking an exceptional case status has the burden of proving
that its case is exceptional by clear and convincing evidence.
Badalamenti, 896 F.2d at 1364. Circumstances that support a finding of an
exceptional case include inequitable conduct in the procurement of a
patent, willful infringement, misconduct during litigation, vexatious or
unjustified litigation, or a frivolous suit. Standard Oil Co. v. American
Cynamid Co., 774 F.2d 448, 455 (7th Cir. 1985). A frivolous infringement
suit is one in which the patentee knew or, on reasonable investigation,
should have known was baseless. An inference of bad faith may be found
through wrongful intent, recklessness, or gross negligence. Eltech Sys.
Corp. v. PPG Indus., Inc., 903 F.2d 805, 811 (Fed. Cir. 1990).
Catalina first argues that both Coolsavings' and Landmark's motion for
attorneys' fees should be denied because the parties failed to comply
with Federal Rule of Civil Procedure 54(d)(2) and Local Rule 54.3(d).
Federal Rule of Civil Procedure 54(d)(2) provides, in pertinent part,
that "[u]nless otherwise provided by statute or order of the court, the
motion [for attorney's fees] must be filed no later than 14 days after
entry of judgment." The fourteen-day requirement of Rule 54(d)(2)(B),
however, is preceded by Local Rule 54.3, which extends the time to file a
motion for fees to ninety days. See Johnson v. Lafayette Fire Fighters
Assoc., 51 F.3d 726, 730 (7th Cir. 1995). Accordingly, Defendants'
motions are timely.
Catalina also argues that Defendants failed to comply with subsections
(d) and (e) of Local Rule 54.3, which require a pre-motion conference
between the parties in an attempt to agree on the amount of fees and the
filing of a joint statement concerning any disputes of the parties.
However, Local Rule 54.3(b) provides that the court may require the
parties to comply with the procedures set forth in the Local Rule as a
post-filing rather than a pre-filing procedure. Such a procedure is
applicable to the instant case because the determination of whether the
parties are to be awarded any fees pursuant to 35 U.S.C. § 285 prior
to requiring the parties to attempt to agree on the amount of such fees
is clearly more efficient.
Catalina argues that Landmark is not entitled to fees because it is not
a prevailing party. To be a "prevailing party," one must receive at least
some relief on the merits that alters the legal relationship of the
parties. See Buckhannon Ed. & Care Home, Inc. v. West Virginia Dept. of
Health & Human Resources, 532 U.S. 598, 603-06 (2001) (Buckhannon).
Enforceable judgments on the merits and court-ordered consent decrees are
examples of an alteration in the legal relationship between the parties.
See Buckhannon, 532 U.S. at 605. A party is not a "prevailing party"
simply because it has achieved its desired result. See Buckhannon, 532
U.S. at 600, 605.
Here, Landmark was dismissed for lack of personal jurisdiction. No
decision of the merits of the case was determined by this Court.
Instead, this Court held that Catalina could not bring its suit against
Landmark in this Court. The legal relationship between the parties and
the alleged infringement was not altered by this Court's ruling. Catalina
is free to file suit, making identical allegations, in another court.
Accordingly, Landmark was not a prevailing party. See Lichtenheld v.
Juniper Features, Ltd., 1996 WL 685443 (N.D. Ill. Nov. 21, 1996)
(dismissal for lack of personal jurisdiction does not make a party a
Assuming arguendo, that Landmark was a "prevailing party," Landmark is
still not entitled to fees because it has failed to establish the instant
case was an exceptional case.
Landmark argues that the case is exceptional because Catalina failed to
adequately investigate whether personal jurisdiction existed before
filing its amended complaint. However, a review of Catalina's arguments,
and the justification for such arguments, that Catalina made in
opposition to Landmark's Motion to Dismiss, while ultimately rejected by
this Court, demonstrate that Catalina had investigated the relationship
between Landmark and Coolsavings. Landmark has failed to show by clear
and convincing evidence that by adding Landmark as defendants, Catalina
engaged in misconduct during litigation, filed vexatious or unjustified
litigation, or filed a frivolous suit.
Coolsavings argues that this case is exceptional because Catalina knew
or should have known that, when the claims were construed, the accused
Coolsavings system did not infringe the Lemon-Kelly Patent because
Catalina's own expert from previous litigation construed the disputed
limitations the same as Coolsavings had construed the limitations and
that such construction demonstrated no infringement. Coolsavings made a
similar argument in the claim construction proceedings of the instant
case. However, this Court found that Catalina did not make any relevant
or admissible adoptive or judicial admissions as to the previous claim
interpretations. Catalina also defended its changed claim construction
citing what it contended were changes in the law that required the claim
construction to be revised. Furthermore, Catalina advanced several
arguments, supported by appropriate case law, in support of its claim
construction and was successful in many of its arguments. Coolsavings has
failed to demonstrate by clear and convincing evidence that Catalina's
claim construction was so unreasonable or unjustified to constitute a
showing of vexatious or unjustified litigation.
Coolsavings also argues that Catalina's delay in producing the
documents from previous litigation and the addition of Landmark as
defendants demonstrate that this is an exceptional case. However,
Catalina's delay in producing the documents from the previous litigation
that supported Coolsavings' claim construction does not constitute
misconduct during the litigation that rises to the level of an
exceptional case. The delay in producing the documents, while not
excused, was extended in light of the history of the case and the
parties' attempt to settle. In addition, the documents that were produced
were later found not to be relevant or admissible. Lastly, as discussed
above, Catalina's attempt to add Landmark as defendants did not
constitute misconduct during the litigation.
Based on the above, the Defendants have failed to show by clear and
convincing evidence that Catalina engaged in misconduct during
litigation, undertook vexatious or unjustified litigation, or filed a
frivolous suit. Accordingly, Defendants' motions for an award of
attorneys' fees are denied.
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