Fee Dispute Hotline
(312) 907-7275

Assisting with High-Stakes Attorney Fee Disputes


News Blog

Judge Hints at Over-Litigation Before Awarding Fees in IP Case

April 1, 2020 | Posted in : Billing Record / Entries, Fee Award, Fee Entitlement / Recoverability, Lawyering, Litigation Management

A recent Delaware Law Weekly story by Scott Graham, “Delaware Judge Puts Foot Down on Over-Litigation in Shoe Design Case,” reports that it sounds as if U.S. District Judge Maryellen Noreika of the District of Delaware is ready to move on from a hard-fought design patent and trademark dispute over Tieks ballet flats.  Gavrieli Brands LLC won a $2.9 million judgment last year after persuading a jury that a Kickstarter-funded company was infringing the distinctive design of its shoes.  Jurors found that Soto Massini (USA) Corp.’s Terzetto Milano flats infringed four Gavrieli design patents and the Tieks trade dress, and that the company intentionally committed false advertising.

Noreika made that verdict hurt a little more, entering an injunction that orders Soto Massini to destroy remaining inventory of accused shoes and refrain from selling any others that are “not colorably different.”  She also held Soto Massini CEO Thomas Pichler personally liable for damages, and found the case exceptional under the Lanham Act.  Noreika noted that she’d already declined to dismiss Pichler from the case, and rejected defense arguments that she had done so “without explanation.”

“At the conclusion of the February 11, 2019 argument, the Court read its ruling from the bench, along with the accompanying reasoning, all of which appears on the record in this case,” she wrote in a 29-page order in Gavrieli Brands v. Soto Massini.  In finding the case exceptional, Noreika rapped Soto Massini for “discovery deficiencies, questionable assertions made by Mr. Pichler, prejudicially late disclosures, surprise requests at trial and improper arguments at trial.”

Soto Massini was represented by Stamoulis & Weinblatt and SML Avvocati.  In fairness to them, Noreika stated that she “could not determine whether the unreasonable manner in which this case was litigated is attributable to Defendants or to Defendants’ counsel.”  But Noreika threw a little shade their way too.  “Plaintiff over-litigated this case,” she wrote. “Although Plaintiff is certainly entitled to enforce its intellectual property rights and pursue litigation, the Court believes some of the fees incurred by Plaintiff could have been avoided.”

That, combined with Pichler’s likely inability to satisfy the judgment, meant that Noreika will award fees “only for the most egregious actions by Defendants,” such as their midtrial request for a claim construction hearing.  She gave Gavrieli two weeks to submit an accounting.  That should not include any fees for briefing the fee motion, she added, “at least in part because a fee amount or estimate should already have been provided.”