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Bovino v. Levenger Co.

United States District Court, D. Colorado

April 21, 2016

JERALD A. BOVINO, Plaintiff,
v.
LEVENGER COMPANY, Defendant.

OPINION AND ORDER

RAYMOND P MOORE United States District Judge.

Pending before the Court is defendant Levenger Company’s (“defendant”) Motion for Attorneys’ Fees (“the motion”), pursuant to 35 U.S.C. § 285 (“§ 285”). (ECF No. 79.) Plaintiff Jerald Bovino (“plaintiff”) has filed a response to the motion, and defendant has filed a reply. (ECF Nos. 85, 89.) Both parties have also filed supplemental authorities in support of their respective positions (see ECF Nos. 92, 94), and defendant filed a response to plaintiff’s notice of supplemental authorities (ECF No. 95).

I. Procedural Background

This case began on January 16, 2014, with the filing of plaintiff’s Complaint, raising, in one cause of action, claims against defendant for direct patent infringement, willful patent infringement, contributory patent infringement, and induced patent infringement all related to U.S. Patent No. 6, 977, 809 (“the ‘809 Patent”). (ECF No. 1 at ¶¶ 6, 11-20.) Plaintiff alleged that defendant’s “use, sale, offering for sale and/or manufacturing” of portable computer cases infringed the ‘809 Patent. (Id. at ¶ 8.) The Complaint alleged that the abstract for the ‘809 Patent stated the following:

The present invention is directed to a portable computer having an integral case that incorporates a resilient material to protect the portable computer from wear and tear encountered when transporting and/or using the portable computer. The integral case also includes a retractable strap means that can be utilized to facilitate the transporting of the portable computer. The integral case for the portable computer also includes an identification pocket on the exterior surface of the integral case for incorporating identification documents for the portable computer.

Id. at 2 n.1.

On May 2, 2014, defendant filed an Amended Answer and Counterclaims to the Complaint. (ECF No. 33.) Among other things, defendant alleged that the ‘809 Patent does not cover portable computer cases; instead, it covers personal computers with an integrated case, and that defendant “does not make, use, offer to sell, or sell portable computers.” (Id. at 7-8.).

On April 29, 2014, defendant filed a Motion to Dismiss Indirect and Willful Infringement. (ECF No. 27.) Plaintiff responded to the motion, and plaintiff filed a reply. (ECF Nos. 35, 37.) On March 9, 2015, the Court granted the motion to dismiss in part and denied it in part. (ECF No. 55.) The Court dismissed plaintiff’s claims for induced patent infringement for any acts occurring prior to the filing of the Complaint and for willful infringement. (Id. at 9.) The Court denied the motion to dismiss with respect to plaintiff’s claims for induced patent infringement for acts occurring after the filing of the Complaint and for contributory patent infringement. (Id. at 9-10.)

While the motion to dismiss was pending, defendant served plaintiff with its Initial Invalidity Contentions on October 9, 2014. (ECF No. 89-2.)[1] Therein, defendant informed plaintiff of six prior art patents that allegedly invalidated all of the claims related to the ‘809 Patent. (Id. at 3-4.) The six prior art patents were the following: U.S. Patent No. 6, 101, 086 (“the Kim Patent”); U.S. Patent No. 6, 426, 870 (“the Oross Patent”); U.S. Patent No. 6, 179, 122 (“the Moncrief Patent”); U.S. Patent No. 6, 052, 279; U.S. Patent No. 5, 835, 344 (“the Alexander Patent”); and U.S. Patent No. 6, 229, 697 (“the Selker Patent”). (Id. at 4.) Plaintiff served a response to defendant’s initial invalidity contentions on October 30, 2014, distinguishing the prior art patents. (ECF No. 89-3.)

In December 2014 and January 2015, the parties filed Claim Construction Briefs, and defendant then filed a response to plaintiff’s Claim Construction Brief. (ECF Nos. 49-51.) In plaintiff’s Claim Construction Brief, he asserted that he had been “granted a patent on a combined portable computer and case integrally affixed thereto.” (ECF No. 50 at 14.)

Prior to the holding of a claim construction hearing, on April 21, 2015, plaintiff filed a Motion for Voluntary Dismissal of Claim for Direct Infringement (“the first motion for voluntary dismissal”). (ECF No. 59.) Although plaintiff indicated that the first motion for voluntary dismissal was unopposed (id. at 1), defendant filed a response thereto, asserting that defendant had not conferred, pursuant to the Local Rules for the U.S. District Court for the District of Colorado, with opposing counsel prior to filing the first motion for voluntary dismissal. (ECF No. 60 at 1-2). Defendant further argued that plaintiff’s remaining claims for indirect patent infringement should also be dismissed as they were baseless, and informed that it intended to file a motion for attorneys’ fees and costs. (Id. at 4-5.) Plaintiff then filed a reply. (ECF No. 63.)

A little over two months after the filing of the first motion for voluntary dismissal, plaintiff moved to voluntarily dismiss his remaining indirect patent infringement claims, and for the parties to bear their own fees and costs (“the second motion for voluntary dismissal”). (ECF No. 66.) Plaintiff asserted that, in light of an unfavorable ruling in a different case pending in this District (“the Amazon case”), and the disclosure of new prior art references in that case, he no longer wished to continue this action against defendant. (Id. at 3.) Defendant then responded to the second motion for voluntary dismissal. (ECF No. 68.)

On July 8, 2015, the Court granted the first motion for voluntary dismissal, and granted in part and denied in part the second motion for voluntary dismissal. (ECF No. 69.) With respect to the second motion for voluntary dismissal, the Court granted it to the extent that plaintiff’s remaining claims for indirect patent infringement were dismissed, but plaintiff’s request for the parties to bear their own attorneys’ fees and costs was denied. (Id. at 4.) Shortly thereafter, the Court also dismissed defendant’s counterclaims without prejudice. (ECF No. 78.)

On July 30, 2015, defendant filed the instant motion for attorneys’ fees. (ECF No. 79.) Defendant asserted four principal grounds justifying an award of attorneys’ fees: (1) plaintiff’s direct patent infringement claim was contradicted by plaintiff’s own claim construction brief; (2) plaintiff argued an objectively meritless construction of the term “resilient ribs”; (3) a settlement agreement in a different case before this District (“the Apple case”) barred plaintiff’s claims against defendant; and (4) plaintiff litigated this case in an unreasonable manner. (Id. at 2-3, 6-15.) Plaintiff responded to the motion, arguing that this was not an exceptional case justifying the award of attorneys’ fees because he reasonably chose to end this case after 91 new prior art references were disclosed in the Amazon case, six of which “would likely invalidate” the ‘809 Patent. (ECF No. 85 at 5-6.) Plaintiff asserted that the 91 prior art references had been newly disclosed on May 18, 2015. (Id. at 5.) Plaintiff further argued that he chose to end this case because of an adverse claim construction in the Amazon case, and the outcome of another case in the Northern District of ...


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