USADATA Incorporated v. DataWidget LLC

1 WO [5] 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA [8] 9 USADATA Incorporated, No. CV-21-00526-PHX-DLR 10 Plaintiff, ORDER 11 v. 12 DataWidget LLC, et al., 13 Defendants. [15] 16 Pending before the Court is USADATA’s motion for attorney fees and costs, which 17 is fully briefed. (Docs. 49, 52, 53.) The parties are familiar with the background of this 18 case, and the Court adopts the factual background as outlined in its November 1, 2021, 19 order. (Doc. 44.) The Court grants the motion in part. 20 USADATA requests attorney fees and costs under Section 285 of the Patent Act. 21 “The court in exceptional cases may award reasonable attorney fees to the prevailing party” 22 in patent litigation. 35 U.S.C. § 285 . An exceptional case “stands out from others with 23 respect to the substantive strength of a party’s litigating position (considering both the 24 governing law and the facts of the case) or the unreasonable manner in which the case was 25 litigated. District courts may determine whether a case is ‘exceptional’ in the case-by-case 26 exercise of their discretion, considering the totality of the circumstances.” Octane Fitness, 27 LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014). A non-exhaustive list of 28 factors guides this determination: “frivolousness, motivation, objective unreasonableness 1 (both in the factual and legal components of the case) and the need in particular 2 circumstances to advance considerations of compensation and deterrence.” Id. at 554 n.6 3 (quoting Fogerty v. Fantasy, Inc., 510 U.S. 517 , 534 n.9 (1994)). 4 USADATA argues that each Octane factor favors an award of attorney fees. (Doc. 5 49 at 9.) The Court disagrees, largely because USADATA initiated this lawsuit, not patent6 holder DataWidget and licensee E-Printwerx. “A patent holder has the right to vigorously 7 enforce its presumptively valid patent.” DietGoal Innovations, LLC v. Wegmans Food 8 Markets, Inc., 126 F.Supp.3d 680, 685 (E.D. Va. 2015) (quoting Homeland Housewares, 9 LLC v. Sorensen Research & Dev. Trust, 581 Fed. App’x 877, 881 (Fed.Cir.2014)); see 10 also 35 U.S.C. § 282 (a) (patents are presumed to be valid). It’s hard to see how it is 11 unreasonable to defend one’s presumptively valid patent and counterclaiming infringement 12 once attacked. Besides, Defendants made valid arguments, for instance, pointing to a 13 patent examiner’s statement that the “arrangement” of certain components amounted to an 14 inventive concept proper for patent eligibility. (Doc. 44 at 3.) It would make no sense to 15 punish Defendants for not crying “uncle” the moment USADATA attacked the validity of 16 the patent. Fees and costs under Section 285 of the Patent Act are denied. 17 USADATA also requests costs under Federal Rule of Civil Procedure 54(d)(1). A 18 district court may, in its discretion, award taxable costs to the prevailing party under Rule 19 54(d)(1). But “a district court’s discretion to award costs [under Rule 54(d)(1)] is limited 20 to particular types of costs enumerated in 28 U.S.C. § 1920 ,” and nontaxable costs are not 21 one of those particular types. In re Online DVD-Rental Antitrust Litig., 779 F.3d 914 , 926 22 (9th Cir. 2015). The parties do not dispute that USADATA is the prevailing party, 23 obtaining a judgment on the pleadings and subsequent dismissal of remaining claims. 24 (Docs. 44, 47.) Neither do the parties dispute that USADATA is entitled to recover its 25 taxable costs of $647.80. 26 / / / 27 / / / 28 / / / 1 IT IS ORDERED that USADATA’s motion for attorney fees and costs (Doc. 49) 2|| is GRANTED IN PART as follows: USADATA is awarded $647.80 in taxable costs. 3 || USADATA’s request for attorney fees and nontaxable costs is denied. 4 Dated this 28th day of June, 2022. [6] ‘boy tha 9 Upied States Dictria Judge [28] _3-