Stites & Harbison, PLLC

ALEXANDRIA, Va—The law firm of Stites & Harbison today reported a recent decision from the federal court in Alexandria awarding the firm over $70,000 for attorneys' fees and costs after the firm successfully defended a patent infringement claim in December 2003.  The U.S. District Court for the Eastern District of Virginia held the plaintiff and its counsel liable for the costs, citing "…extraordinary circumstances where bad faith or abuse can form a basis for doing so," a rule provided by the U.S. Court of Appeals for the Fourth Circuit in its instructions to federal courts within its jurisdiction.

The federal district court originally found in favor of the defendant in the case, Suntiger, Inc., et al v. Telebrands Advertising Corp., et al, where the plaintiff had claimed contempt of a previous permanent injunction in a prior patent infringement case.  Stites & Harbison attorneys Marvin Petry and Stephen Weyer, of the firm's Alexandria office, argued in their motion for attorneys' fees that the contempt motion brought by the plaintiff and its counsel was frivolous and without merit.

Both the plaintiff and its attorney, Banner & Witcoff, of Chicago, were consequently found liable to the defendant for the defendant's costs in defending itself against the plaintiff's contempt motion.  Citing six specific circumstances, the court ordered March 29, 2004, that the plaintiff and its counsel were liable for $71,145.21 in attorneys' fees and costs and that the plaintiff's counsel alone was liable for an additional $1,318.86.

Here's what the court cited as misdeeds by Suntiger and its lawyers:

Proffering a new opinion of its expert that contradicted the expert's opinion at trial
Ignoring the law of the case, particularly the claim construction
Failing to recognize the predicates needed to assert a doctrine of equivalents position in a summary contempt proceeding
Belatedly asserting such an argument
Belatedly asserting other facts and arguments
Necessitating multiple motions and briefs.

"It's rare for a court to award attorneys' fees in patent cases," said Ross F. Hunt, partner in charge of Stites & Harbison's Alexandria office, "something reserved for the most egregious cases and only after the court has employed less harsh sanctions to no avail.

"It's even rarer that the law firm bringing the case is held liable."

About Stites & Harbison

Stites & Harbison PLLC is a regional business and litigation firm with approximately 250 attorneys with offices in Alexandria, Va.; Atlanta; Jeffersonville, Ind.; Louisville, Frankfort and Lexington, Ky.; Nashville, Tenn.; and, Washington, DC.  Nearly a third of the firm's attorneys are women.  Twenty-five Members of the firm are named in the current edition of The Best Lawyers in America, and over 70 percent of all partners and counsel to the firm are listed as AV-rated in the current Martindale-Hubbell Law Directory.

Stites & Harbison strives to be a preeminent law firm based in strategic Southeastern locations and sought by business and institutional clients nationwide for sophisticated transactions, difficult litigation and complex regulatory matters.  The firm established its Alexandria practice in January 2004, when it combined with Larson & Taylor, a highly respected intellectual property boutique.

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For further information, contact Kennedy Helm III, Chairman, Stites & Harbison.