Philadelphia Brief Case Co. v. SPECIALTY LEATHER P. CO., Civ. A. No. 325-55.

• Citation: 160 F. Supp. 153
• Decision Date: 10 March 1958
• Docket Number: Civ. A. No. 325-55.
• Parties: PHILADELPHIA BRIEF CASE COMPANY, a partnership, Plaintiff, v. SPECIALTY LEATHER PRODUCTS CO., Inc., a corporation, Defendant.
• Court: U.S. District Court — District of New Jersey

160 F. Supp. 153

PHILADELPHIA BRIEF CASE COMPANY, a partnership, Plaintiff, v. SPECIALTY LEATHER PRODUCTS CO., Inc., a corporation, Defendant.

Civ. A. No. 325-55.

United States District Court D. New Jersey.

March 10, 1958.

Harold Markowitz, West Orange, N. J., Caesar & Rivise, Philadelphia, Pa., by

Max R. Millman, Philadelphia, Pa., for plaintiff.

Norman N. Popper, Newark, N. J., for defendant.

HARTSHORNE, District Judge.

Defendant applies for attorney's fees in this patent litigation, where it was successful both on the trial and on appeal; Philadelphia Brief Case Company v. Specialty Leather Products Co., Inc., D.C.N.J.1956, 145 F.Supp. 425; 3 Cir., 1957, 242 F.2d 511. The statute in that regard, 35 U.S.C. § 285, provides:

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

In short, the award of attorney's fees in patent cases is the exception, not the rule, the exception to exist where there is "unfairness or bad faith", or the like, on the part of the unsuccessful party, Park-In Theatres v. Perkins, 9 Cir., 1951, 190 F.2d 137, 142, cited with approvaln Pennsylvania Crusher Co. v. Bethlehem Steel Co., 3 Cir., 1951, 193 F.2d 445. That "unfairness or bad faith" existed on the part of the unsuccessful plaintiff here, in bringing its suit, is clear from the opinions both in the District Court and on appeal. Hence, had defendant applied timely, the award of attorney's fees to it would appear to have been warranted.

The difficulty is that the court records show that defendant's application for attorney's fees was not filed until two days after notice of appeal was filed by plaintiff under F.R.C.P. 73(b), 28 U.S. C.A. The filing of this notice of appeal terminated all proceedings in the District Court for attorney's fees or otherwise, and left in the District Court authority only to take the necessary steps to transmit the record in the case to the Third Circuit Court of Appeals, with ancillary matters, Moore's Fed. Practice, 2d ed. § 73.13. Of course, if, as intimated by defendant, plaintiff's then, not present, counsel, from another jurisdiction, breached his understanding with defense counsel, not to enter judgment and appeal therefrom until later, that is another matter. But that is not now, though it may yet be, established.

Defendant further contends that, regardless of whether or not it noticed its motion for attorney's fee before or after the filing of the notice of appeal, its present application for counsel fees is timely, even after remand from the Third Circuit Court of Appeals. In support of this contention, defendant cites Signal Manufacturing Company v. Kilgore Manufacturing Company, 9 Cir., 1952, 198 F.2d 667; Middleton v. Wiley, 8 Cir., 1952, 195 F.2d 844; Maddrix v. Dize, 4 Cir., 1946, 153 F.2d 274, 275. But in the first two of such cases such action is permitted by the court without discussion, and in the last case we deal not with a patent case but with a proceeding under the Fair Labor Standards Act, 29 U.S.C.A. § 201 et seq. Here the Congressional intent as to the allowance of attorney's fees is found by the court to be directly contra to the Congressional intent in patent cases. In patent cases, as above, attorney's fees are not to be allowed as a matter of course, but only "in exceptional cases". On the contrary, under the Fair Labor Standards Act the Maddrix case shows that "Congress intended that the wronged employee should receive his full wages plus the penalty without incurring any expense for legal fees or costs." Of course, the courts must effectuate this intent by permitting action after, as well as before, an appeal.

The only case that discusses the present question is Laufenberg, Inc., v. Goldblatt Brothers, Inc., 7 Cir., 1951, 187 F.2d 823. There, as here, plaintiff in the patent litigation lost...