BARR RUBBER PRODUCTS COMPANY v. Sun Rubber Co.

Citation279 F. Supp. 49
Decision Date10 January 1968
Docket NumberNo. 60 Civ. 4327.,60 Civ. 4327.
PartiesThe BARR RUBBER PRODUCTS COMPANY, Plaintiff, v. The SUN RUBBER COMPANY, and Wonder Products, Inc., Defendants.
CourtU.S. District Court — Southern District of New York

Ely & Golrick, Cleveland, Ohio, Albert L. Ely, Jr., Cleveland, Ohio, of counsel, Darby & Darby, New York City, Harvey M. Brownrout, New York City, of counsel, Theodore A. Lazar, Columbus, Ohio, for plaintiff.

Pennie, Edmonds, Morton, Taylor & Adams, New York City, Thomas F. Reddy, Jr., New York City, of counsel, Hamilton & Cook, Akron, Ohio, Everett R. Hamilton, Phillip L. Kenner, Akron, Ohio, of counsel, for defendants.

MEMORANDUM

FRANKEL, District Judge.

Dealing with the question left open in the court's findings and conclusions of October 20, 1967, as amended on November 21, 1967, 277 F.Supp. 484, plaintiff has applied for an award of attorneys' fees in a substantial amount. Defendant opposes the application, urging that the circumstances and outcome of the several issues are such that each party should be left to bear its own counsel fees. The issue centers, of course, upon 35 U.S.C. § 285, which provides:

"The court in exceptional cases may award reasonable attorney fees to the prevailing party."

Both sides have recognized that the main feature of this case marking it as "exceptional" in a seemingly pertinent sense is the court's finding that the trial record was "blighted by perjury in significant respects." That grave determination has been the subject of extensive written and oral submissions on defendant's application for reconsideration, which was denied, except in minute respects, in an opinion and order of November 21, 1967.1 It seems clear to the court that the findings on this subject — and, most importantly, the extensive labors required of plaintiff's counsel to attain them — warrant and require a substantial award to plaintiff under the statute.

On the other side, defendant recalls correctly that plaintiff pressed, in extensive pretrial as well as trial efforts, a number of contentions which proved, in the court's view, to be wholly or largely baseless. It is strongly arguable that such factors should have no weight in defendant's favor because the test of 35 U.S.C. § 285 centers upon "unfairness" and "bad faith" as criteria in determining whether and how much to award as attorneys' fees. See, e. g., Monolith Portland Midwest Co. v. Kaiser Aluminum & Chemical Corp., 267 F. Supp. 726, 787 (S.D.Cal.1966); Plymouth Rubber Co. v. Minnesota Mining & Mfg. Co., 203 F.Supp. 595, 601 (D. Mass.1962), modified on other grounds and aff'd, 321 F.2d 151 (1st Cir. 1963); Park-In Theatres v. Perkins, 190 F.2d 137, 142 (9th Cir. 1951); AMP Inc. v. Burndy Corp., 332 F.2d 236, 239 (3rd Cir.), cert. denied, 379 U.S. 844, 85 S.Ct. 84, 13 L.Ed.2d 49 (1964). Nevertheless, while plaintiff's good faith is not questioned, the subject lies in discretion, and the burdens entailed by lengthy contentions (both by evidence and argument) found to be essentially unsubstantial ought ultimately to be a factor in the reckoning.

Defendant also argues that its earlier prosecution of the patent to a victory in the Sixth Circuit should diminish or eliminate plaintiff's claim for attorneys' fees. This would normally be a cogent argument. In the circumstances of this case, however, for reasons the court has reviewed earlier (see 277 F.Supp. at 498-503), it is deemed to have no weight for present purposes.

Coming, then, to the delicate subject of hours and dollars, plaintiff shows a total of 4,634.5 hours spent on this protracted case by its lead counsel. It shows $12,051.88 paid for services and disbursements by associate counsel. It lists, in addition, 749 hours by such associates not included in the foregoing figure. And it records a total of $30,267.92 in disbursements by lead counsel over the long and painful career of the litigation.2

Defendant raises no questions about plaintiff's figures, but rests mainly upon the proposition that plaintiff should receive nothing for a variety of reasons touched upon earlier in this memorandum.

In addition, defendant offers some figures to support its offsetting theories, and these supply guidance helpful for the court's ultimate determination. Defendant states in this connection that some 45 days were spent on depositions concerning some of the subjects on which plaintiff did not prevail. For services of counsel relating to those efforts, defendant reports from its attorneys' time records an estimated cost exceeding $20,000. Additional expenses for the same activities — disbursements, excerpting, research, etc. — are stated to bring the total cost above $50,000.

Plaintiff observes, correctly, that not all of the energies devoted to subjects on which defendant succeeded should be included in the "discount" defendant seeks. For example, discovery aimed initially at such subjects proved useful in the end for issues on which plaintiff prevailed, including the vital questions on which defendant's witnesses were found to have testified falsely.

Considering all the issues on which defendant succeeded, extrapolating from the figures defendant has supplied — and acknowledging that this is not a subject susceptible of weighing on jeweler's scales — the court assigns a total sum of $100,000 to this category of defendant's expenses. It seems clear, however, that nothing like all of this should be deducted from the award for plaintiff. To begin with, the problem is not one to be resolved by adding "issues" as fungible counters on one side or the other. All the issues pale in this context against the central one of bad faith on which plaintiff's entitlement is primarily rested. Furthermore, not all the points lost by plaintiff were frivolous or weightless. And, finally, as already noted, not all the expenses even on weightless issues were "wasted" or unnecessary in the final analysis.

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1 cases
  • Barr Rubber Products Company v. Sun Rubber Company
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • 30 Abril 1970
    ...quests for damages, for infringement, and for unfair competition. These decisions are reported at 277 F.Supp. 484 (SDNY 1967) and 279 F. Supp. 49 (SDNY 1968). Both parties appeal. Sun Rubber challenges the court's determination that its patent is invalid and the court's award of attorney fe......

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