United States District Court, M.D. Florida, Fort Myers Division
OPINION AND ORDER 
POLSTER CHAPPELL UNITED STATES DISTRICT JUDGE.
Pending before the Court is United States Magistrate Judge
Mac R. McCoy's Report and Recommendation. (Doc.
166). Judge McCoy recommends (1) denying Plaintiff
Chico's FAS, Inc.'s Renewed Motion and Memorandum to
Find this Case Exceptional and Award Chico's Reasonable
Attorneys' Fees; but (2) granting in part Chico's
request for costs against Defendants Andrea Clair, Anastasios
Koskinas, and 1654754 Ontario, Inc. (Id.).
Chico's objects only to Judge McCoy's recommendation
to deny it attorneys' fees. (Doc. 167).
Defendants have not responded to Chico's objection, and
the time to do so has expired. For the following reasons, the
Court overrules Chico's objection and adopts the Report
request for attorneys' fees is the final chapter in this
patent infringement suit. More than four years ago,
Chico's asked this Court to declare that it had not
infringed on Defendants' design and utility
patents for a camisole bra and that the patents
were invalid. (Doc. 1; Doc. 4; Doc.
28). A year later, Chico's added a claim for
inequitable conduct after it discovered that Clair and
Koskinas supposedly did not alone invent the patented bra.
(Doc. 59). The three-count Third Amended Complaint
became the operative pleading. (Doc. 61).
parties moved for summary judgment, which the Court granted
in part. For Defendants, the Court found that Chico's had
not produced evidence to render the patents unenforceable
based on Clair's and Koskinas' alleged inequitable
conduct. (Doc. 129). For Chico's, the Court
invalidated the utility patents based on a prior art -
i.e., another camisole bra - that existed in the
market before Clair and Koskinas applied for the patents.
(Doc. 128). It also found Beverly Johnson, a
third-party seamstress, to be an inventor of the patented
bra. (Id.). This finding was important because the
patents did not name Johnson as an inventor and misnamed
Koskinas as one.
immediately after the Court issued its decisions on summary
judgment, Johnson assigned Chico's her rights to the
patents. Because federal patent law does not allow a patent
owner to sue a co-owner for infringement (absent consent),
the Court dismissed Defendants' infringement
counterclaims. (Doc. 138). The Court also dismissed
Chico's other claims for the same reason. (Doc.
appealed to the United States Court of Appeals for the
Federal Circuit but lost. Chico's Fas, Inc. v. Clair,
676 F. App'x 1006, 1007 (Fed. Cir. 2017). The
Federal Circuit affirmed that Johnson was an inventor of the
patents and that Koskinas was not. It also concluded that
Johnson did not abandon her ownership rights in the patents
and that Chico's acquired them. Consequently, the Federal
Circuit remanded the case to this Court to correct
investorship, which it did (Doc. 162). That Order
ended the merit side of this case.
that remains now is Chico's request for attorneys'
fees and costs. It seeks $454, 440.40 in attorneys' fees
under 35 U.S.C. § 285 (Doc. 157) and $26, 148.65 in
taxable costs (Doc. 158). Defendants,
unsurprisingly, oppose the half-million dollar request for
fees and costs. (Doc. 164). The Undersigned referred
the matter to Magistrate Judge McCoy, who recommends denying
attorneys' fees because this case is not
“exceptional” under § 285. (Doc.
166). A dissatisfied Chico's objects to that
district court may accept, reject, or modify, in whole or in
part, the magistrate judge's report and recommendation.
28 U.S.C. § 636(b)(1). It reviews de novo any
portion of a magistrate judge's report and recommendation
to which a party has properly objected. Id. But
“[w]hen no timely objection is filed, the court need
only satisfy itself that there is no clear error on the face
of the record in order to accept the recommendation.”
Fed. R. Civ. P. 72's advisory committee's note
(1983) (citations omitted).
285 of the Patent Act authorizes a district court to award
attorney's fees in patent litigation. It provides that
“[t]he court in exceptional cases may award reasonable
fees to the prevailing party.” 35 U.S.C. § 285.
The Supreme Court's decision in Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134
S.Ct. 1749 (2014) is the seminal case on the statute. It said
that § 285 “imposes one and only one constraint on
district court's discretion to award attorney's fees
in patent litigation: The power is reserved for
‘exceptional' cases.” Id. at
1755-56. It explained,
an “exceptional” case is simply one that stands
out from others with respect to the substantive strength of a
party's litigating position (considering both the
governing law and the facts of the case) or the unreasonable
manner in which the case was litigated. District courts may
determine whether a case is “exceptional” in the
case-by-case exercise of their discretion, considering the
totality of the circumstances. . . . [And] [t]here is no
precise rule or formula for making these determinations, but
instead equitable discretion should be exercised in light of
the considerations we have identified.
Id. at 1756 (internal quotations, citations, and
footnotes omitted). The party moving for an award of
attorney's fees must show by a preponderance of the
evidence that the case is exceptional. NXP B.V. v.