Carnegie Mellon V. Marvell: District Court Denies Request For $17 Million In Attorney's Fees Without Prejudice Pending Appeal Of Underlying Judgment

Carnegie Mellon University ("CMU") filed a motion for attorney fees pursuant to 35 U.S.C. Section 285, seeking attorney fees of approximately $17.2 Million as a prevailing party at the jury trial against Marvell Technology Group ("Marvell") that resulted in a jury verdict of over $1 billion. The jury also found that Marvell's infringement was willful.

Section 285 provides that "the court in exceptional cases may award reasonable attorney fees to the prevailing party." "Although an attorney fee award is not mandatory when willful infringement has been found, precedent establishes that the court should explain its decision not to award attorney fees." Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 37 (Fed. Cir. 2012) cert. denied, 133 S. Ct. 1291 (2013) (citing Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1349 (Fed. Cir. 2011)). As the district court explained, "[t]he inquiry into attorney fees is related to both willfulness and enhanced damages as explained under § 284, given similar considerations are relevant to both. Id. at 38. 'However, the situations in which § 284 and § 285 may be invoked are not identical' because attorney misconduct or other 'aggravation of the litigation process' may weigh heavily in regards to attorney fees, but not as to the enhancement of damages. Id."

The district court also explained that "[w]hen deciding whether to award attorney fees under § 285, a district court engages in a two-step inquiry. First, the Court 'must determine whether the prevailing party has proved by clear and convincing evidence that the case is exceptional,' and then, if the case is exceptional, the Court must decide whether awarding attorney fees is justified. MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 915-16 (Fed. Cir. 2012). A case may be deemed exceptional under § 285 where there has been 'willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, conduct that violates Federal Rule of Civil Procedure 11, or like infractions.' Id. Litigation misconduct and 'unprofessional behavior may suffice, by themselves, to make a case exceptional under § 285.' Id. at 919."

CMU asserted that attorney fees should be awarded not only because of the jury's finding of willfulness, but also because of Marvell's litigation tactics, which CMU claimed caused unnecessary delays and drove up litigation costs, including contradictory non-infringement and...