Dippin’ Dots v. Mosey: The Attorney Fee Appeals
2008-13379/2008-1125 Dippin’ Dots v. Mosey
ND/TX 3:96-cv-1959
Dippin’ Dots appeals from Judge Thomas Thrash, Jr.’s orders awarding over $3.2 million in attorney fees to defendants under § 285. Note that Judge Thrash is from the ND/GA.
This action has a long history and began in 1996 when Dippin’ Dots sued Mosey asserting infringement of 5,126,156 and trade dress, all related to a cryogenically frozen ice cream product. Additional defendants were added and counterclaims, including those of the antitrust flavor, were asserted. The court granted summary judgment to defendants on the trade dress claim (affirmed by 11th Circuit here), and, after a jury trial, a judgment was entered of non-infringement, invalidity and unenforceability. Defendants also prevailed on the Walker-Process antitrust counterclaim, but were awarded no damages. The CAFC mostly affirmed, but reversed on the antitrust counterclaim.
Attorneys Fees. In 2005 the court had awarded one group of defendants (the Manufacturing Parties) $1.9 million in attorneys fees and another (Frosty Bites) $676,000, both under the Clayton Act. Frosty Bites also received $504,000 under § 285.
The Clayton Act awards were vacated when the CAFC reversed at to the Walker-Process claim. However, at that time a CAFC motions panel ruled that the § 285 award order had not been appealed.
Now, on remand, the court took up the issue of whether to award attorney fees under § 285 to “replace” those vacated under the Clayton Act. The court apparently had not made a § 285 award previously because those fees would have been “duplicative” of those awarded under the Clayton Act.
The court ruled that the case was exceptional and, although the antitrust judgment was vacated, noted that it did not change the finding that Dippin’ Dots had committed fraud and inequitable conduct before the PTO. Thus, the court granted the requested fees, less a small amount attributable to the trade dress claim. The court rejected Dippin’ Dots request to exclude fees attributable to the antitrust claim, noting that the issues between that claim and the patent claims were so intertwined so as to permit recovery.
The newest appeal has been consolidated with 2008-1125, which had been deactivated. The district court also granted a partial stay of enforcement–but not to original § 285 award for $504,000 which the court said could not be appealed based on the failure to include it in the previous appeal. However, the CAFC has granted a temporary stay of enforcement on that award pending further briefing next week.
Notes: Judge Thrash also weighed in on the “attorneys’ fees” vs. “attorney fees” debate and favors the latter. Avoid “attorneys fees” at all costs.
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