United States District Court, E.D. Wisconsin
DECISION AND ORDER
William C. Griesbach, Chief Judge.
35 U.S.C. § 285 allows an award of attorneys' fees
in “exceptional cases.” On September 21, 2016, I
declared that this was such a case and ordered Acuity to pay
T&M's reasonably incurred attorneys' fees and
expenses. T&M now seeks a total of $926, 263.64 in
attorneys' fees and other expenses. For the reasons
below, T&M is entitled to receive attorneys' fees and
other expenses totaling $849, 324.74.
facts of the underlying action are set forth more fully in
the court's Findings of Fact and Conclusions of Law and
Order for Judgment. (ECF No. 51.) In brief, T&M filed
this patent infringement suit in August 2014. It sought
judgment declaring that its patents and Acuity's patent
are interfering patents and that Acuity's patent is
invalid. On June 1, 2016, the court invalidated Acuity's
patent. The court found on September 21, 2016 that this was
an “exceptional” case pursuant to 35 U.S.C.
§ 285 and granted T&M's motion for
attorneys' fees and nontaxable costs incurred in the
calculates attorneys' fees using the
“lodestar” amount: “the number of hours
that any attorney worked on the case multiplied by a
reasonable hourly rate.” Jeffboat, LLC v. Director,
Office of Workers' Compensation Programs, 553 F.3d
487, 489 (7th Cir. 2009) (citing Hensley v.
Eckerhart, 461 U.S. 424, 433 (1983); Mathur v. Bd.
of Trs. of S. Ill. Univ., 317 F.3d 738, 742 (7th Cir.
2003)). The court may then adjust the figure depending on a
variety of factors, including the time and labor required,
the novelty and difficulty of the issue, the degree of the
success achieved, the experience and ability of the
attorneys, the amount involved and the results obtained, and
awards in similar cases. Hensley, 461 U.S. at 429-30
n.3. The party seeking an award of attorneys' fees bears
the burden of proving the reasonableness of the fees.
Spegon v. Catholic Bishop, 175 F.3d 544, 550 (7th
Cir. 1999) (citation omitted).
General Objections to Attorneys' Fees
begins by raising general objections to T&M's fees
which I will address at the outset. First, Acuity argues that
the fees T&M seeks in this case are facially
unreasonable. Courts in this circuit have routinely relied on
the American Intellectual Property Law Association (AIPLA)
survey to determine the reasonableness of requested fees.
See, e.g., Intellect Wireless, Inc. v. HTC
Corp., No. 09-C-2945, 2015 WL 136142 (N.D. Ill. Jan. 8,
2015); Marctec, LLC v. Johnson & Johnson,
07-CV-825-DRH, 2010 WL 680490 (S.D. Ill. Feb. 23, 2010);
Eli Lilly & Co. v. Zenith Goldline Pharm., Inc.,
264 F.Supp.2d 753 (S.D. Ind. 2003). The AIPLA survey
“examines the economic aspects of intellectual property
law practice, including individual billing rates and typical
charges for representative IP law services.” (ECF No.
88-4 at 5.) Indeed, both parties rely on the AIPLA survey to
argue their respective positions.
asserts that its fees are reasonable under AIPLA standards
because they fall below the median total costs in the AIPLA
survey. According to the survey, the average total cost of
patent infringement litigation where between $1, 000, 000 and
$10, 000, 000 is at stake is $2, 000, 000. (ECF No. 88-4 at
41.) T&M contends that although it did not seek damages,
it entered into an exclusive license agreement with a third
party, BlueScope Buildings North America, Inc. (BBNA), for
its use of the patented invention. Under the agreement, BBNA
has paid royalties totaling $2, 589, 064.44. T&M claims
$1, 350, 000.00 of the royalties have been paid since the
case was filed in August 2014. (McLain Decl. Ex. A, ECF No.
92-1.) As such, if the court uses this amount as a benchmark,
T&M's total costs, $926, 263.64, were approximately
$1, 000, 000 lower than the AIPLA's reported median.
Acuity argues that the AIPLA survey data shows that
T&M's request is unreasonable. Acuity claims that the
court should look at the total cost of cases involving less
than $1, 000, 000, where the median total cost is $600, 000.
It asserts that cases involving more than $1, 000, 000 are
generally more complex than the case here. In this case,
Acuity notes that the trial to the court lasted only three
days. The parties conducted limited discovery and did not
retain any expert witnesses who testified at trial.
counters that extensive discovery was not required because it
was able to utilize most of the materials produced in a
previous case, T&M Inventions LLC v. Acuity Brands
Lighting Inc., 12-CV-0091. Even though most of the work
was completed in the first case, T&M notes that it was
still required to review and analyze that work here. It
contends that the shifting character of Acuity's defense
and the relatively esoteric area of law involved justify the
attorneys fees and expenses claimed.
I conclude that T&M has shown that based on the royalties
they receive under the licensing agreement for the patented
invention, the amount at stake in this case was between $1,
000, 000 and $10, 000, 000. While Acuity's criticisms
arguably warrant some adjustment, T&M's overall
request is reasonable as reflected by the data in the AIPLA
Acuity argues T&M's fees are unreasonable because
they are 125% greater than Acuity's total fees and costs.
But it is not unreasonable for the plaintiff's fees to
exceed the defendant's in a case like this where T&M
had the burden to prove the invalidity of Acuity's patent
by a preponderance of the evidence. Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). In
order to meet its burden of proof, T&M was arguably more
likely to have higher fees than Acuity. In hindsight, it is
often easier to criticize the amount of work expended on
behalf of a client as excessive, but until the conclusion of
the case and the rendering of a final verdict, attorneys do
not know what the judge or jury is thinking and it is