Monolithic Power Systems (MPS) v. O2 Micro (Fed. Cir. 2013).
The court decision here ends with the following statement:
More than a decade ago, the Beckman Instruments court foretold, "we can certainly imagine a case in which litigation misconduct would justify an award of attorney fees for the entire litigation." Beckman Instruments, Inc. v. LBK Produkter AB, 892 F.2d 1547 (Fed. Cir. 1989). We are quite confident that this was the kind of case it had in mind.
Background: In October 2008, MPS filed a declaratory judgment (DJ) action against O2 Micro – asking the district court to issue declarations of noninfringement and invalidity with respect to four O2 Micro patents. U.S. Patent Nos. 6,856,519, 6,809,938, 6,900,993, and 7,120,035. O2 Micro's attorneys had been monitoring case-filing information and, when the company learned that it had been sued, it quickly filed its own complaint regarding the same patents in the USITC (even before MPS was able to serve notice on O2 Micro). O2 Micro then filed a motion to stay the district court. 28 U.S.C. § 1659 provides statutory guidance for staying district court patent litigation while awaiting the outcome of USITC actions. The statute states that when there are parallel proceedings, "the district court shall stay, until the determination of the Commission becomes final, proceedings in the civil action with respect to any claim that involves the same issues [being adjudged at the USITC]. The stay provision has two additional requirements. First, the stay must be requested by one of the parties. Second, as a deadline, the request to stay must be made within either "(1) 30 days after the party is named as a respondent in the proceeding before the Commission, or (2) 30 days after the district court action is filed, whichever is later." 28 U.S.C. § 1659. However O2 Micro apparently waited a bit beyond the 30-day deadline which gave the district court discretion to deny the stay motion.
Losing Case and Covenants Not To Sue: As the litigation progressed, O2 initially provided evidence of a February 1998 invention date based upon the inventor's testimony and an electronic date-stamp on the documents. However, MPS provided evidence that the date-stamp had been back-dated. The district court sided with MPS in ruling that the earliest invention date was July 1999. And, subsequently, the court-appointed technical expert (Prof. Perreault) drafted a memo that the patents were invalid based upon intervening prior art. Before the court could issue its final judgment (likely placing official approval on the expert report) O2 issued a unilateral covenant-not-to-sue that forced dismissal of the lawsuit. O2 had previously issued covenants not to sue in a handful of other cases once the cases began going south.
Full Attorney Fees Awarded: Although the court was unable to make its final invalidity ruling, it did take a major step by awarding MPS its entire attorney fees and costs of $9,000,000+. The patent statute provides for fee-shifting in "exceptional cases." 35 U.S.C. § 285 ("The court in exceptional cases may award reasonable attorney fees to the prevailing party.") The award here was based upon O2's "vexatious litigation strategy, litigation misconduct and unprofessional behavior." To be clear, the problem, according to the Judge, was not just this case, but instead the pattern of bad behavior seen in prior cases as well.
On appeal, the Federal Circuit has affirmed and repeated its earlier statements that "litigation misconduct" alone can be sufficient to make a case exceptional under § 285 – even when the lawsuit itself is not objectively baseless or brought in bad faith. "In other words, litigation misconduct alone may suffice to make a case exceptional."
Pattern from Prior Cases: The Federal Circuit also affirmed that the exceptional case award can be based on a pattern of "vexatious litigation strategy" that extends beyond the particular case or controversy at issue.
[T]he district court's findings of an overall vexatious litigation strategy and numerous instances of litigation misconduct are sufficient to support an exceptional case determination. The record provides ample grounds for the district court to find that O2 Micro had undertaken a vexatious litigation strategy. Having presided over a decade of litigation between O2 Micro and MPS, the district court witnessed several instances in which O2 Micro sued MPS customers in order to prompt MPS to file declaratory judgment actions with the court. In each previous case, O2 Micro withdrew its claims and granted covenants not to sue after substantial litigation had taken place. In the underlying case, O2 Micro employed its modus operandi, this time moving to dismiss only after MPS and ASUSTeK had completed their filings for the final pretrial conference, wasting the parties' and the court's resources. The district court, with its unparalleled familiarity with and insight into O2 Micro's motivations and repeated resort to these tactics, assessed that this pattern amounted to a vexatious litigation strategy that would support a finding of exceptional case. We decline to disturb that assessment.
Now, to be clear, while the prior pattern is relevant to the exceptional case award, the court did not here indicate that the costs of the prior cases could be tacked-on.
Fees from other cases: If you remember, this case involved parallel proceedings before the USITC. And, because the USITC cases generally move faster, the bulk of the costs (discovery) directly stemmed from that case. In calculating the costs, the district court allowed MPS to collect for USITC discovery costs that were then reasonably used in the district court case. On appeal, the Federal Circuit confirmed that result:
Based on the examples of unprofessional behavior provided by the district court and the many more instances of it we were able to glean from the record, we agree with the district court that O2 Micro's rampant misconduct so severely affected every stage of the litigation that a full award of attorney fees was proper here. Under the unique circumstances, the district court's award of ITC-related expenses is also not an abuse of discretion, especially in view of the discovery's application in the district court and the parties' agreement to its dual use.
$9,000,000 pre-trial. It is somewhat amazing that the attorney fees and costs awarded here were $9 million even though no trial occurred. That amount represents a 10% reduction on some fees and a 25% reduction on other fees. $300,000 of that amount went toward calculating the fees! ("Fees generated in preparing attorneys' fees application, $ 343,035). In order to appeal, a losing party who owes some monetary judgment will normally be required to post an appeal bond. FRCP 62(d). Here, O2 has already put-up $9.5 million in order to cover the amount due plus interest.