Parallel Iron LLC v. NetApp, Inc, C.A. No. 12-769-RGA, March 25, 2015.

Andrews, J.  Defendant’s request for attorney’s fees is granted in part.  Defendant is instructed to submit a joint proposed order reflecting the award. Defendant’s request for discovery and an injunction are denied.

This suit was filed in June, 2012 alleging infringement of three patents which accused by way of example products implementing parallel Network File System (pNFS).  Subsequent amended disclosures identified only the use pNFS as the basis for alleging infringement.  In May, 2013, plaintiff served 2,600 pages of infringement contentions naming specific products with no mention of pNFS.  In August 2013, plaintiff confirmed it was no longer accusing pNFS.  The court granted a stay pending resolution of related cases.  In January 2014, Plaintiff granted a license with a sublicense to defendant with no payment obligation by defendant.  In March, 2014, the court granted defendant’s motion for fees under its inherent powers rather than section 285 since the case resolved by means of a license and not a decision on the merits.  The court then conducted an in camera review and determined that plaintiff initiated the suit without a good-faith belief that the accused instrumentalities implemented pNFS in an infringing manner.  Plaintiff strung defendant along for over a year before finally stating they had no intention of accusing products implementing pNFS.  The court agrees with defendant that local counsel fees do not have a bearing on the overall reasonableness of the fee request because that cost was shared by more than 20 defendants.  The court further finds defendant did not violate rule 408 by referring to settlement discussions.  Defendant is further entitled to fees incurred in bringing the fee motion.  The court took issue with the hourly rate billed by New York counsel.  The relevant rate is the prevailing rate in the forum.  The $594,162 amount requested must be modified by multiplying by a fraction consisting of the blended hourly rate of Delaware attorneys involved as the numerator and the blended rate of the attorneys involved as the denominator.  “Blended hourly rate” is based on the hourly rates of the attorneys taking into account the proportion of work the attorneys did.  The numerator should be based on the AIPLA Report of the Economic Survey.  Defendant’s request for discovery of assets is denied as premature under Rule 69(a)(2) and injunctive relief is denied as speculative.