IP Law Daily, PATENT—E.D. Pa.: Ricoh USA entitled to attorney fees for defending ‘very weak’ infringement case, (Apr 24, 2023)

By Kevin M. Finson, J.D.

Midwest Athletics and Sports Alliance employed shifting sands approach in pursuing new infringement theories.

An infringement case brought by Midwest Athletics and Sports Alliance against printer manufacturer Ricoh USA was “exceptional” under the Patent Act, warranting an award of attorney fees to Ricoh for purposes, the federal district court in Philadelphia has decided, because the plaintiff had litigated in an unreasonable fashion, apparently intending to use the costs of litigation to force settlement rather than for good faith resolution of the dispute. The plaintiff also employed shifting sands approach in pursuing new infringement theories. However, Ricoh’s motion to hold the plaintiff’s former counsel jointly and severally liable for a previous award of attorney fees as a discovery sanction was denied as untimely (Midwest Athletics and Sports Alliance LLC v. Ricoh USA, Inc., April 18, 2023, Wolson, J.).

Midwest Athletics and Sports Alliance LLC (MASA) sued Ricoh USA, Inc. (Ricoh) for infringement of 19 patents relating to printing technology. After years of litigation, the issues were narrowed to five patents, U.S. Patents Nos. 6,718,285; 7,720,425; 7,502,582; 6,411,314; and 6,509,974. The ’285 patent was directed at the operation of printing systems, including tracking the life of user-replaceable components and notifying the user when it was time to replace those components. The ’425 patent and ’582 patent (the "Pentachrome Patents") were directed at improving the quality of a printed document by printing five-color images. The ’314 patent and the ’974 patent (the "Workflow Patents") relate to managing the workflow process for a print job. MASA alleged that various combinations of Ricoh products could be used to infringe each patent.

After substantial disputes over standing and discovery, the trial court granted summary judgment of non-infringement, which was upheld by the Federal Circuit in a summary order. Ricoh then moved for attorney fees, as well as for an order holding MASA’s former attorneys at Kramer Levin Naftalis & Frankel LLP jointly and severally liable for a prior award of attorney fees as sanctions under 28 U.S.C. § 1927.

Joint and several liability—prior sanctions order. Ricoh had previously been awarded attorney fees under Section 1927 based on MASA’s unreasonable litigation of standing issues concerning enforcement of the Pentachrome Patents during a specific period of thime, which that been resolved in July of 2019. The court held that waiting until now, nearly three and a half years later, to seek an order holding the law firm as well as the party liable was not reasonable and would not be allowed. The court reiterated that MASA’s lawyers took positions which no reasonable lawyers could take in good faith, and that it was declining to revisit the award of fees only because so much time had passed, not because the court condoned their behavior. The court then determined that Ricoh is entitled to $65,346.10 for MASA’s misconduct.

Attorney fees-exceptional case. The court next found the case was exceptional for purposes of the Patent Act’s fee-shifting provision, 35 U.S.C. § 285, because MASA engaged in last-minute assertions of new infringement theories, advanced unsupported claims of privilege made without the required privilege logs, and pursued claims for which no evidence existed after the close of discovery. The court also noted an acute need to deter MASA from similar litigation misconduct in light of other pending infringement matters. The court directed Ricoh to prepare a fee petition.

The Case is No. 2:19-cv-00514-JDW.

Attorneys: Eileen M. Patt (Kramer Levin Naftalis & Frankel, LLP) for Midwest Athletics and Sports Alliance LLC. Lisa Lynn Furby (Jones Day) for Ricoh USA, Inc.

Companies: Midwest Athletics and Sports Alliance LLC; Ricoh USA, Inc.

Cases: Patent PennsylvaniaNews