Pro-Troll Inc. v. Proking Spoon LLC

Background

Pro-Troll Inc. owns a design patent for a fishing lure, identified as the ’663 Patent. Pro-Troll sued Proking Spoon LLC and KMDA, Inc., alleging infringement of that patent and tortious interference with prospective economic relationships. KMDA moved for summary judgment, and the court previously granted that motion. The court concluded that no reasonable jury could find the patented and accused designs substantially the same to an ordinary observer, and that the tortious-interference claim was preempted by federal law and also failed on its merits.

The opinion notes that Pro-Troll had obtained an entry of default against Proking Spoon, but had not sought default judgment against it. It also notes that Pro-Troll and KMDA had stipulated to dismissal of KMDA’s counterclaims. According to the opinion, the remaining claims were Pro-Troll’s claims against Proking Spoon.

Attorney-fee standard

KMDA sought attorney fees under 35 U.S.C. § 285, which permits a court to award reasonable fees to the prevailing party in an exceptional patent case. The court explained that an exceptional case is one that stands out because of the strength of a party’s legal and factual position or because of the unreasonable way the case was litigated. The party seeking fees must prove exceptionality by a preponderance of the evidence, meaning that the claim is more likely true than not.

The court considered the entire case and relevant factors such as whether Pro-Troll’s claims were frivolous, objectively unreasonable, or pursued for an improper purpose, and whether its litigation conduct was unusually aggressive or disproportionate.

Court’s analysis

The court held that Pro-Troll’s position was not exceptionally weak. Although summary judgment had been entered for KMDA, Pro-Troll had made several arguments that were not controversial, correctly described parts of the ordinary-observer test, and presented a central argument about how to identify the novel and ornamental features protected by the design patent. The court had rejected that argument but had acknowledged that Pro-Troll’s general legal principles were correct. Reaching the summary-judgment conclusion required substantial analysis, so the result did not show that Pro-Troll’s position was exceptionally weak.

The court also found no indication that Pro-Troll had used unusually aggressive litigation tactics, acted disproportionately to the value of the case, or delayed the litigation. The court rejected KMDA’s arguments based on the original complaint’s lack of detail, KMDA’s pre-answer notice about the alleged flaw in the infringement claim, and Pro-Troll’s statement that it lacked enough information to admit or deny an allegation about the accused products. The court said those circumstances, without more, did not establish an exceptional case.

The court further explained that the prior conclusion that the patented and accused designs were “plainly dissimilar” did not automatically make the case exceptional. It distinguished decisions cited by KMDA because those cases involved additional circumstances, such as extremely conclusory briefing or continued prosecution without supporting evidence.

Disposition

The court concluded that this was not the rare case that stood out because of the substantive weakness of Pro-Troll’s claims. Judge Eric C. Tostrud therefore denied Defendant KMDA, Inc.’s Motion for Attorneys’ Fees.