After a series of procedurally complex twist and turns that resulted in an agreement by plaintiff to not oppose defendants’ motion for summary judgment, U.S. District Judge Paul A. Engelmayer (S.D.N.Y.) granted defendants Lori Cheek and Cheek’d Inc.’s motion for attorney fees under 35 U.S.C. § 285 and ruled that plaintiff’s counsel should pay.
Plaintiff Alfred Pirri, Jr. first brought suit against defendants in 2017, seeking a declaratory judgment of patent invalidity and various state law causes of action based on allegations that he had, years before Ms. Cheek, conceived of the idea for “online dating in reverse” embodied in defendants’ U.S. Patent No. 8,543,465, and that his therapist had betrayed his confidences and shared Mr. Pirri’s idea with Ms. Cheek. The court dismissed that action for lack of subject matter jurisdiction, and Mr. Pirri filed suit again in January 2019, this time seeking to be added as an inventor to the patent under 35 U.S.C. § 256, as well as asserting various state law claims based on the same allegations. The court granted defendants’ motion to dismiss the state law claims, finding that they were each clearly time-barred. Mr. Pirri then sought to amend the complaint to add claims for joint inventorship based on allegations that Ms. Cheek developed the idea for the patent with twenty of her colleagues, as well as for defamation and slander based on allegations that Ms. Cheek had, among other things, posted on social media regarding the case and expressed her desire for retribution against Mr. Pirri. The court denied Mr. Pirri’s motion to amend, reasoning that Mr. Pirri did not have standing to assert joint inventorship claims on behalf of others, and that the court lacked supplemental jurisdiction over his proposed claims for defamation and slander.
Near the close of discovery Mr. Pirri moved to withdraw his joint inventorship claim and unilaterally preclude an award of attorneys’ fees under 35 U.S.C. § 285, ostensibly because he feared for his life based on Ms. Cheek’s alleged behavior. Mr. Pirri also sought dismissal so that he could proceed in state court and assert other claims against defendants, including for criminal harassment. The court rejected Mr. Pirri’s motion noting that allowing him to withdraw his federal claim two days before the conclusion of fact discovery “would enable vexatious conduct.” Defendants moved for summary judgment, and, after several rounds of letters, Mr. Pirri agreed to not oppose the motion.
After judgment was entered in their favor, defendants sought to recover their attorneys’ fees incurred from the close of discovery, when they argue Mr. Pirri lacked any good faith basis to continue to pursue his claim, oppose summary judgment, and demand a trial. The court noted that Mr. Pirri’s opposition to the motion for attorneys’ fees was “all but devoid of legal argument” and instead contained only “an extended, and at times more extreme version, of the accusatory screed he has trained on” defendants throughout the case.
The court agreed with defendants that this was an “exceptional case” under 35 U.S.C. § 285, noting that Mr. Pirri’s filings “stand apart . . . for the sheer lack of colorable factual (or legal) support; for their tendentious, bizarre, non-responsive and caustically accusatory arguments; and for their disregard for, and selective presentation of, evidence.” The court also found that the deterrence value of sanctions was particularly important given Mr. Pirri’s persistence in filing groundless claims and arguments. The court ruled that the attorneys’ fees award should be borne by Mr. Pirri’s counsel, noting that, although it was not imposing sanctions under Rule 11, counsel had not carried out his Rule 11 duties responsibly. On May 26, 2020, defendants submitted their fee application seeking $17,000 for fees and asked the court to consider awarding an additional $20,000 for the months spent conducting discovery.
Case: Pirri v. Cheek et al., 19-CV-180 (S.D.N.Y.).
