MARCIA S. KRIEGER, Chief District Judge.
The Court assumes the reader's familiarity with the proceedings to date. Greatly summarized, Mr. Bovino alleged that Amazon was infringing upon his patent, which describes a computer with an integrated case possessing "resilient ribs." The Court ultimately granted
Amazon filed the instant motion
Separately, Mr. Bovino moved
The Court referred Mr. Bovino's motion to the Magistrate Judge for a Recommendation. The Magistrate Judge recommended
35 U.S.C. § 285 provides that in "exceptional cases" involving claims of patent infringement, the Court can award attorney fees to the prevailing party — here, Amazon. An "exceptional" case is one in which "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., 134 S.Ct. 1749, 1756 (2014). The matter is one confined to the sound discretion of this Court, to be determined on a case-by-case basis, considering factors such as "frivolousness, motivation, objective unreasonableness, . . . and the need in particular circumstances to advance considerations of compensation and deterrence." Id. at n. 6.
Amazon argues that the exceptional nature of this case is demonstrated by various facts: (i) Mr. Bovino asserting a "crazy infringement theory" based on a strained reading of claim limitations involving "ribs" positioned on the "exterior surface" of a computer case; (ii) in addition to an allegedly colorable claim for indirect infringement, Mr. Bovino also asserted an untenable claim for direct infringement and demanded $20,000 from Amazon when Amazon asked him to withdraw the direct infringement claims; (iii) Mr. Bovino took shifting positions on issues of claim construction during the litigation; and (iv) Mr. Bovino is a "non-practicing entity" (what is sometimes referred to more colloquially as a "patent troll"), seeking merely to extract nuisance-value settlements.
Although the Court agrees with Amazon that several aspects of Mr. Bovino's approach to this litigation were unusual, the Court cannot say that, taken as a whole, the action rises to the category of "exceptional" such that fees should be awarded against Mr. Bovino. The Court notes that Mr. Bovino's Complaint pleads direct infringement and contributory infringement together in a single sentence ("Amazon has infringed and is continuing to directly infringe, contribute to the infringement of, and/or induce the infringement of [the patent]").
The Court also agrees with Amazon that Mr. Bovino was overly-aggressive in identifying accused products. As the Court's summary judgment order notes, some of the example cases that Mr. Bovino challenges are so obviously distinctive from the invention claimed in the patent that only magical thinking could explain their identification as accused products. However, other accused products contained the type of "ribs" that are central to Mr. Bovino's patent. Thus, there is some degree of overreach, through coupling many dubious contentions of infringement to a relative handful that were arguable.
Over inclusion of information, evidence and argument can overwhelm the litigation, and certainly the recent modifications of Fed. R.Civ. P. 1 impose a burden on counsel and the parties to avoid excess, but there is no indication that Amazon suffered from Mr. Bovino's excess. Aside from a single example in which Amazon briefly questioned Mr. Bovino about an accused product that had only a textured surface, not any colorable examples of ribs, Amazon does not point to extensive time and effort devoted to litigating the more dubious examples of Mr. Bovino's accused products. Many lawsuits involve claims or assertions on the far periphery of reasonableness, and this action is no different. But on this limited record, the Court cannot conclude that Mr. Bovino's overbroad claims meaningfully magnified an otherwise colorable claim of indirect patent infringement, so as to transform an ordinary case into an exceptional one for which fee shifting is appropriate.
Finally, the Court simply disagrees with Amazon that Mr. Bovino's construction of key terms, particularly the term "ribs," was so unreasonable as to put this action in the "exceptional" category. To be sure, Mr. Bovino's construction of the term "ribs" was unpersuasive, entitling Amazon to summary judgment in its favor. But the Court cannot say that Mr. Bovino's positions were so unreasonable as to be frivolous or otherwise warrant a shifting of fees. The difference between narrow "ribs" and wider "strips" is arguably one of degree, and the identification of a particular feature as a "rib" or a "groove" is, as the Court noted, one that can shift depending on one's frame of reference.
To be sure, Mr. Bovino's claims in this case were sloppily-drafted, overzealously-pursued, and ultimately unpersuasive. But the Court cannot say that they were so frivolous, objectively unreasonable, or otherwise "exceptional" as to warrant an award of fees in Amazon's favor. This case demonstrates the need for the recent amendments to Rule 1. But, the Court finds, in its discretion, that this case does not fall within the category of "exceptional" under 35 U.S.C. § 285, and thus denies Amazon's motion for attorney fees.
The Court will not belabor the analysis of this issue.
Although the Court agrees with Mr. Bovino that the offer's stated duration of "a couple of days" could arguably extend to the three business days that lapsed before Mr. Bovino announced his acceptance of the offer, the Court agrees with the Magistrate Judge that Amazon's offer lapsed before Mr. Bovino's purported acceptance, albeit for a different reason. The terms of Amazon's offer, which, among other things, called for Mr. Bovino to voluntarily withdraw his claims and agree to bear his own costs, could only be performed by Mr. Bovino
This outcome is confirmed by Amazon's 10:23 a.m. e-mail to Mr. Bovino's counsel, referencing Amazon's entitlement to costs (and arguably attorney fees), but suggesting that "there maybe a way to avoid that." The Court reads this communication as an indication of Amazon's understanding that the prior offer (voluntary dismissal by Mr. Bovino with both sides to bear their own costs and fees) was no longer viable, as well as an invitation to Mr. Bovino to begin negotiations for a new offer, one which would allow the parties to "avoid" Amazon seeking its litigation costs, as it was now entitled to do. Such a communication would not have been necessary if the parties reasonably believed that Amazon's original offer — which required the parties to bear their own costs and fees — remained open.
Accordingly, the Court adopts the Magistrate Judge's Recommendation and denies Mr. Bovino's motion.
For the foregoing reasons, Amazon's Motion for Attorney Fees