Offering to Waive the Right to Appeal After Losing a Patent Infringement Litigation Does Not Prevent a Court from Awarding Attorneys' Fees and Costs Incurred by the Winning Party After Rejecting the Waiver Offer

Abstract

A Georgia court awarded attorney fees and costs to a defendant who prevailed in a patent infringement suit on summary judgment. The patent owner's offer to settle the dispute by waiving its right to appeal after losing did not prevent the defendant from recovering its attorneys' fees and costs incurred after rejecting that offer including the fees and costs incurred in pursuing its claim for attorneys' fees and costs.

After Energy Innovation sued NCR for patent infringement and lost, the trial court directed NCR to submit a motion that Energy Innovation pay NCR's attorneys' fees for the litigation. In response, Energy Innovation offered to waive its right to appeal if NCR would not pursue a claim for its attorneys' fees, but NCR refused and proceeded with its request for fees.

To determine the amount of fees to award NCR, the trial court had to determine whether the number of attorney hours for which NCR sought compensation was reasonable. Among other arguments, Energy Innovation asserted that the trial court should not award any attorneys' fees incurred by NCR after Energy Innovation's offer to waive its appeal rights. The trial court disagreed and awarded NCR its attorneys' fees incurred after Energy Innovation's offer, including the fees for time spent in preparing its motion for attorneys' fees. Energy Innovation cited no authority to support its argument, and NCR was entirely reasonable in pursuing its counterclaims and efforts to be made whole.   

Strategy and Conclusion

An offer to waive appeal rights or providing other types of settlement offers after a party has already prevailed in litigation may not be sufficient to argue against an attorneys' fees award accrued after the date of such offer.

The Energy Innovation decision can be found here.