United States District Court, D. Connecticut
RULING ON PLAINTIFF'S REQUEST FOR REINSTATEMENT
OF PATENT ACT ATTORNEY'S FEES AND COSTS AND AN AWARD OF
LANHAM ACT ATTORNEY'S FEES AND COSTS
Bond Arterton, U.S.D.J.
jury returned a verdict finding Defendants Fossil, Inc. (now
known as Fossil Group, Inc.), and Fossil Stores I, Inc.,
liable for trademark infringement, false designation of
origin, state common law unfair competition, violation of the
Connecticut Unfair Trade Practices Act ("CUTPA"),
and patent infringement,  the Court granted Plaintiff Romag's
request for attorney's fees under the Patent Act and
CUTPA, but not under the Lanham Act. The parties both
appealed that Ruling, and as discussed below, the Federal
Circuit vacated and remanded. Plaintiff now
moves [Doc. # 543] for reinstatement of the
Patent Act attorney's fees and costs and for an award of
Lanham Act attorney's fees and costs. Oral Argument was
held on April 17, 2018. For the following reasons, Plaintiffs
Motion is denied and the attorney's fee award is reduced
by $265, 736.00, resulting in a final award of $2, 391,
616.04, plus prejudgment and post-judgment interest, with
costs reduced by $54, 877.54 for a total of $102, 830.92.
Court assumes the parties' familiarity with the
procedural history of this case, but includes below a brief
summary of the Court's earlier relevant findings, as well
as the Federal Circuit's decision vacating and remanding
this case for determination of attorney's fees consistent
with its findings.
Court's July 2014 Memorandum of Decision it found that
the Reiter Declaration, which Plaintiff had filed in support
of its motion for a Temporary Restraining Order
("TRO"), was misleading. Romag Fasteners, Inc.
v. Fossil, Inc., 29 F.Supp.3d 85, 105 (D. Conn. 2014)
(hereinafter "Romag I"), aff'd, 817
F.3d 782 (Fed. Cir. 2016), cert, granted, judgment
vacated, 137 S.Ct. 1373 (2017), and vacated in
part, 686 Fed.Appx. 889 (Fed. Cir. 2017). The Court
sanctioned Romag for this deception.
Mr. Reiter's declaration suggested that he had discovered
the counterfeit snaps in November by mere happenstance,
conflicting with his testimony at trial that "he went to
Macy's that day with the express purpose of confirming
his suspicions that Fossil was using counterfeit ROMAG snaps
in their handbags," and his acknowledgement that he had
strong suspicions by late October that counterfeit snaps (the
existence of which he had been informed about in May 2010)
were being used in Fossil bags. Id. Based upon these
findings, inter alia, the Court concluded that Romag
acted in bad faith by delaying its TRO filing until the
beginning of the holidays-intentionally sitting "on its
rights between late May 2010 and late November 2010 to
orchestrate a strategic advantage and improperly obtain
emergency injunctive relief on a timetable of its choosing,
not on the irreparability of its harm." Id. at
106. Consequently, the Court sanctioned Plaintiff, precluding
it "from recovering its expenditures in relation to the
prosecution of its TRO." Id.
The Court's Original Award of Attorney's
August 14, 2014, the Court issued its Ruling on Plaintiffs
Motion for Attorney's fees, in which it denied Plaintiff
Lanham Act fees, while granting attorney's fees under the
Patent Act and CUTPA. See Romag Fasteners, Inc. v.
Fossil, Inc., No. 3:10CV1827 JBA, 2014 WL 4073204 (D.
Conn. Aug. 14, 2014) (hereinafter "Romag
Court denied Lanham Act fees based on (1) Fossil's
non-willful infringement; (2) the finding that Fossil had not
"acted fraudulently or in bad... faith" in its
non-infringement position; (3) the Court's ruling denying
Romag's Rule 50(a) motion on Fossil's
non-infringement argument, which precluded a frivolousness
finding; and (4) the finding that Fossil's
"arguments with respect to non-infringement were not
entirely groundless." Id. at *5.
it held that "based on the totality of the circumstances
and a consideration of the factors suggested in Octane
Fitness, ... this is an 'exceptional' case
within the meaning of the Patent Act and ... Plaintiff is
entitled to recover its reasonable attorney's fees under
that statute." Id. at *4. The Court found that
Fossil's defense "bordered on frivolous," based
on the "tenor" of Judge William Young's
indefiniteness summary judgment decision and that Fossil
"fail[ed] to formally withdraw its remaining invalidity
defenses until after the close of evidence," which, the
Court stated, "Plaintiff argue[d] necessitated its
presentation of evidence with respect to patent validity in
its case-in-chief." Id. at *3-4. Finally, it
reasoned that Fossil "aggressively pursue[d] invalidity
counterclaims ... to prolong litigation and
exponentially" increase litigation cost and risk.
Id. at *4.
respect to fashioning the appropriate award, the Court found
that the CUTPA claim, under which the Court had also awarded
fees, "was so intertwined with its other causes of
action that the vast majority of its costs and fees cannot be
apportioned between the claims at issue in this case."
Id. at *8. The Court did, however, exclude from the
award those costs and fees that were incurred solely in
relation to Plaintiffs claim for an award of Defendant's
profits under the Lanham Act. Id.
judgment entered in favor of Romag and the Court awarded $2,
657, 352.04 in attorney's fees and $157, 708.46 in
Federal Circuit Ruling
parties appealed and cross-appealed the Court's fee
awards, and on August 9, 2017, a majority of the Federal
Circuit panel vacated the fee awards and remanded to this
Court based upon several key findings.
Federal Circuit held that this Court should have applied
Octane to its Lanham Act "exceptional
case" determination. Romag Fasteners, Inc. v.
Fossil, Inc., 866 F.3d 1330, 1334-36 (Fed. Cir. 2017)
(hereinafter "Romag IV). It also faulted the
Court's decision not to consider, "in connection
with its totality of circumstances analysis, Romag's
earlier litigation misconduct," for which the Court had
issued sanctions. Id. at 1340. Indeed, it held that
"the fact that this misconduct has already been
sanctioned should be weighed more heavily, rather than be
the Federal Circuit held that the Court erred in the
(1) Finding that Fossil had not withdrawn its invalidity
defenses until after testimony was complete, which
"[wa]s misleading and contradicted by the record."
Id. at 1338.
(2) Finding as a key factor for awarding fees to Romag
"that Fossil declined to abandon [invalidity] defenses
until after the trial[, ]" as "[t]he record
establishes that the defenses were withdrawn before
trial." Id. at 1336.
(3) Holding that Fossil's indefiniteness defense bordered
on frivolous," as the Federal Circuit did "not read
Judge Young's opinion to be describing Fossil's
indefiniteness defense as 'woefully inadequate' in
the sense that Fossil's theory was objectively
unreasonable"; or "to have a 'tenor' that
indicates that Fossil's indefiniteness defense
'bordered on frivolous.'" Id. at 1339.
(4) Finding that the Court's earlier Rule 50(a) Ruling on
infringement precluded it from basing an exceptional case
ruling on Fossil's argument; but this Court's
conclusion that Fossil's noninfringement position did not
make the case exceptional was not error because "the
[C]ourt also found that Fossil's arguments with respect
to noninfringement were not entirely groundless."
Id. at 1341.
Federal Circuit "remanded to the district court to
consider the Lanham Act and the Patent Act attorney's
fees and the claimed expert fees under the correct standard,
free of the errors identified" in the Federal
Circuit's Ruling. Id. at 1341-42.
remand, Romag asks that the Court award it attorney's
fees under the Lanham Act and that it reinstate its previous
award of attorney's fees under the Patent Act, and expert
witness fees under the Court's inherent authority. In the
event the Court declines to reinstate the award of
attorney's fees under the Patent Act, Plaintiff contends
that this Court, consistent with its prior decision that was
not challenged on appeal, should modify the total fee award
to deduct only those fees solely related to Romag's
patent infringement claim. Finally, Romag claims entitlement
to an award of pre- and post-trial interest on the patent
Patent and Lanham Act Fees
Supreme Court in Octane Fitness held that for a case
to be an "exceptional case" justifying an award of
attorney's fees, a finding of fraud or bad faith is not
required. Rather, the case must "simply [be] one that
stands out from others with respect to the substantive
strength of a party's litigating position ... or the
unreasonable manner in which the case was litigated . . .,
considering the totality of the circumstances."
Octane Fitness, LLC v. Icon Health & Fitness,
Inc.,134 S.Ct. 1749, 1756 (2014). While Octane
Fitness was a Patent Act case, the Federal Circuit
anticipated that the Second Circuit would hold that the
Lanham Act has the same standard for recovering
attorney's fees ...