District Judge Laura Taylor Swain granted in part defendants Bed, Bath & Beyond Inc.’s and Cohesion Products, Inc.’s motion for attorneys’ fees and related expenses and held the prosecuting attorney jointly and severally liable with plaintiff Worldwide Home Products, Inc. for the $818,124.65 award. The court previously granted defendants’ motion for summary judgment and declared plaintiff’s patent unenforceable as a product of inequitable conduct. The court found this an exceptional case for purposes of a fee award under 35 U.S.C. § 285 because plaintiff’s attorney willfully misrepresented and selectively withheld prior art from the PTO and then alleged infringement of the wrongfully-procured patent on plaintiff’s behalf. According to the court, “this case involves precisely the type of litigation conduct – frivolous claims motivated by unbridled desire to gain an improper patent monopoly windfall – that should be deterred by courts through the shifting of fees.”

The court found all of defendants’ requested fees and expenses reasonable, except for the request for expert witness fees. It explained that Section 285 does not authorize an award of expert fees, but that such expenses may be awarded as sanctions. Since the court found “plaintiff’s specific knowledge of [its attorney’s] misconduct . . . insufficient to demonstrate that plaintiff itself acted in bad faith,” it rejected defendants’ expert witness fee request.

Finally, the court concluded that plaintiff’s attorney’s conduct was “vexatious and in bad faith.” Therefore, it sanctioned him pursuant to 28 U.S.C. § 1927 and held him jointly and severally liable for the fees and expenses awarded to defendants.

Case: Worldwide Home Products, Inc. v. Bed, Bath & Beyond, Inc., No. 11-cv-3633 (LTS) (MHD) (S.D.N.Y. Apr. 09, 2015)