Nilssen: Sanctioned (Yet) Again

Posted on | February 8, 2010 | No Comments

2010-1139 Nilssen v Wal-Mart
ND/IL 04-cv-5363
Judge Robert Gettlemen

Plaintiffs Ole Nilssen & Geo Foundation appeal from the order of Judge Gettlemen finding the case exceptional and awarding attorneys fees.

Prior to starting this action in 2004 Nilssen had sued Osram Sylvania for infringing most of the patents in this case–all related to compact fluorescent lamps (“CFLs”). Following a 2006 bench trial, Judge Darrah (ND/IL) in Osram found the patents unenforceable due to inequitable conduct by Nilssen before the PTO. This was affirmed by the Federal Circuit in 2007. Judge Darrah also found that case exceptional and awarded attorneys’ fees–a decision also upheld by the Federal Circuit in 2008.

Following Judge Darrah’s original decision, defendants in this case demanded that Nilssen dismiss the case and stipulate to judgment. Nilssen initially refused but, after defendants’ filed for summary judgment, agreed as to 5 of the patents, but argued that the other 2 were not at issue in Osram and were neither invalid nor unenforceable. Judge Gettlemen disagreed and found those other 2 unenforceable as well.

Judge Gettlemen’s opinion (all 4+ pages) is rather short on details, but he concludes that the case exceptional for the same reasons as did Judge Darrah. (Order, p. 3). The Judge was un-sympathetic to Nilssen’s argument that he resisted summary judgment in this case because of a good faith belief that Osram would be reversed on appeal:

According to plaintiffs, this [Osram] was a “close” case based on “technical violations.” Of course, “close” only counts in horseshoes, and plaintiffs’ losses in the Osram litigation were complete and decisive.

Id. The Judge likewise rejected Nilssen’s plea that he had been punished enough in Osram, noting that § 285 is not about “punishment” but “compensation” for defendants who were forced to incur significant expenses to defend against a case that never should have been brought.

Notes: Osram also contained more than a small amount of litigation misconduct, something which doesn’t appear in this case (or at least isn’t discussed in any detail). For example, there is no explanation as to whether Nillsen’s summary judgment position vis-a-vis the other 2 patents was frivolous. The Federal Circuit in Osram did find that the exceptionality decision was supported by both the inequitable conduct as well as the litigation misconduct.

In addition, Judge Gettlemen also notes that another Nilssen case ended recently with an exceptional case finding and award of attorneys’ fee. Nilssen v. General Electric (ND/IL 06-cv-4155).

However, I found a subsequent decision from Judge Wiseman in the MD Tennessee denying a motion for attorneys’ fees in Nilssen v. Universal Lighting. Judge Wiseman expressly noted that his case lacked the litigation misconduct of the Osram case.

2010-1139 Exceptional Order

2010-1139 Nilssen TN Decision