United States District Court, N.D. California
ORDER DENYING DEFENDANT MARVELL SEMICONDUCTOR'S MOTION FOR ATTORNEY'S FEES Re: Dkt. No. 377
WILLIAM H. ORRICK, District Judge.
Plaintiff France Telecom, S.A. sued defendant Marvell Semiconductor, Inc. for direct and indirect patent infringement. The jury found Marvell liable for direct infringement, but not indirect infringement. I subsequently granted Marvell's post-trial motion for a directed verdict of no direct infringement because there was no proof that Marvell used the patented method in the United States. Marvell argues that this case is exceptional and moves for attorney's fees. Marvell's motion is DENIED. Considering the totality of the circumstances, this case does not stand out from others with respect to the substantive strength of France Telecom's litigation position or the manner in which the case was litigated.
France Telecom owns U.S. Patent 5, 446, 747 ("the '747 patent"), which discloses a method for correcting errors in telecommunication and other data transmissions, commonly referred to as turbo coding. In June 2012, France Telecom filed an infringement lawsuit alleging that Marvell manufactures communications processors (chips) that use the method disclosed in the '747 patent. Dkt. No. 1. France Telecom alleged that the accused chips are specially adapted for use in communications devices and that use of the patented method is essential for using those devices to transmit or receive data on 3G networks.
On April 14, 2014, I granted Marvell's motion for partial summary judgment, precluding damages based on sales of the accused chips outside the United States by Marvell's non-party affiliate, Marvel Asia Pte. Ltd. ("MAPL"). Dkt. No. 159. I also denied Marvell's motion for summary judgment of invalidity for failure to claim patent-eligible subject matter. Id.
Trial was held from September 16, 2014 to September 30, 2014. The jury found Marvell liable for direct infringement, but not liable for indirect infringement (contributory or induced infringement) or willful infringement. Dkt. No. 320. The jury rejected Marvell's invalidity defenses and awarded France Telecom $1.7 million in damages. Id.
After the verdict, I granted Marvell's motion for judgment as matter of law of no direct infringement because France Telecom did not prove that Marvell used the accused method in the United States. Dkt. No. 369 at 3. I denied Marvell's motion for judgment of invalidity for failure to recite patent-eligible subject matter. I also denied a motion by France Telecom for a new trial on the issues of willfulness, induced infringement, and damages.
On April 15, 2015, Marvell filed the present motion for attorney's fees, seeking fees incurred from the date of its partial summary judgment onward. Dkt. No. 377. I heard oral argument on June 17, 2015.
Under the Patent Act, "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. An "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., 134 S.Ct. 1749, 1756 (2014). "[D]istrict courts may determine whether a case is exceptional' in the case-by-case exercise of their discretion, considering the totality of the circumstances." Id. While there is no precise rule or formula for finding a case exceptional, the Supreme Court has identified a non-exclusive list of factors a district court may consider in evaluating whether a case is exceptional, including "frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence." Id. at 1756 n.6.
Marvell argues that this case is exceptional because France Telecom (i) proceeded to trial without any evidence that Marvel used the patented method in the United States despite the summary judgment order which held that Marvell could not be liable for sales by its non-party affiliates and (ii) engaged in unreasonable litigation tactics, including relitigating matters already resolved. Having considered the nonexclusive factors suggested ...