A recent Law 360 story, “Earlier Fee Threats Doom Fee Award in IP Case, Judge Says,” reports a federal judge has denied packaging maker RockTenn CP LLC’s request that a patent owner in an unsuccessful infringement suit against it be required to cover its attorneys’ fees, ruling that RockTenn used threats to seek fees to try to get the patent owner to drop his suit.

U.S. District Judge Kristine G. Baker ruled that plaintiffs Ted Wiley’s suit against RockTenn was not “exceptional,” the standard for awarding fees to the prevailing party in a patent suit.  But she said that even if Wiley’s suit had been unreasonable, she would decline to award fees due to RockTenn’s actions in the case.

“Exhibits in the record support that RockTenn threatened to seek fees from the beginning of this litigation,” she wrote.  “Exhibits in the record also support Mr. Wiley’s contention that RockTenn attempted to use the threat of fees to persuade Mr. Wiley to abandon all of his claims.”  For instance, after Wiley agreed to settle the case for $20,000, RockTenn responded that it was refusing to settle, but would consider not seeking attorneys’ fees if Wiley immediately dismissed all of his claims with prejudice.

“For these reasons, considering the totality of the circumstances, the court determines this is not an exceptional case,” the judge said.  “Even if this were an exceptional case, the court would exercise its discretion to decline to award fees.”

According to the judge, “Wiley’s claims of patent infringement have been unclear in this litigation” and the parties disputed which of RockTenn’s products were accused of infringement.  She granted RockTenn summary judgment that one  of its products did not infringe, and the parties later resolved the dispute in consent judgment.

RockTenn then sought $165,737.85 in attorneys’ fees, arguing that Wiley’s case was exceptional under the standard for awarding fees set by the U.S. Supreme Court’s recent Octane Fitness ruling because Wiley made unreasonable claims of infringement and failed to conduct an adequate presuit investigation.

The judge ruled that she could not conclude that the case was exceptional, finding no evidence that Wiley made intentional misrepresentations or engaged in other conduct that would justify a fee award.  The case is Wiley v. RockTenn CP LLC, case number 4:12-cv-00226, in the U.S. District Court for the Eastern District of Arkansas.