District Judge P. Kevin Castel denied defendants Acco Brands Corp.’s and Staples, Inc.’s motion for attorneys’ fees and costs under 35 U.S.C. § 285, and granted in part their motion for an order requiring plaintiff to post an appeal bond pursuant to Rule 7 of the Federal Rules of Appellate Procedure. The court had previously granted defendants’ motion for summary judgment of invalidity and non-infringement.

In their motions for fees and costs, defendants advanced four main arguments. First, they argued that the infringement positions plaintiff had taken during the case were “nonsensical” and “[in]coherent.” The court explained, however, that defendants had devoted a single paragraph to this issue in their motion, and failed to “demonstrat[e] why such pejorative labels are appropriate.” Second, defendants claimed plaintiff had conducted an “inadequate” pre-suit investigation. But, the court concluded that its summary judgment decision turned less on plaintiff’s infringement positions than on questions of claim construction. As the court explained, this case was unlike “cases in which a defendant’s noninfringement can be factually proven and a plaintiff’s putative cause of action clearly eliminated before filing suit.” Third, defendants claimed that plaintiff had failed to secure third-party expert testimony in support of his doctrine of equivalents argument. The court noted, however, that defendants had not cited any authority suggesting that expert testimony is a requirement, and further, that plaintiff had properly relied on the testimony of Acco’s director of product innovation. Finally, defendants argued that plaintiff’s conduct in settlement discussions demonstrates that he had filed the action merely to extract an unreasonable settlement. Specifically, plaintiff’s first two settlement offers came before any sales figures were produced, and were accompanied by a statement that the offer will change if litigation begins. The court, however, noted that it was Acco’s in-house counsel that solicited a settlement proposal before any sales figures were produced, and ruled that the statement accompanying the offers did not constitute egregious conduct. Thus, the court denied the motion for fees and costs.

Defendants also requested an appeal bond in an amount sufficient to cover their estimated fees and costs in defending against plaintiff’s appeal. The judge denied the request to include the estimated fees, explaining that the purpose of a Rule 7 bond is to ensure that appellees recover the costs to which they may be entitled if they prevail, and defendants had failed to prove they are entitled to any fees even if they prevail. But, the judge granted defendants’ alternative request for a bond covering just their estimated costs of $2,000.

Case: Chizmar v. Acco Brands Corp. et al., No. 14-CV-2181 (PKC), 2015 BL 229234 (S.D.N.Y. July 17, 2015)