## Facts

- Rohm & Haas owned a patent and accused Crystal Chemical Co. and Joe C. Eller of infringement.
- In an earlier Federal Circuit merits decision, the patent was held invalid due to uncured fraud/inequitable conduct before the U.S. Patent and Trademark Office.
- After prevailing on the merits appeal, Crystal applied for attorney fees and expenses incurred on appeal under 35 U.S.C. § 285.
- Crystal also moved for taxation of costs on appeal and reconsideration of the court’s prior assessment of costs under Federal Rule of Appellate Procedure 39.
- Crystal argued the case was “exceptional” because of the fraud finding and because Rohm & Haas allegedly increased appellate expense through excessive, allegedly irrelevant record designations and other obstructive tactics.
- Rohm & Haas opposed both requests; the court considered the parties’ submissions, while noting that responses to fee applications were not to be filed unless the court directed.

## Issues

1. Whether the court should award Crystal reasonable attorney fees and expenses incurred on appeal under 35 U.S.C. § 285 as an “exceptional case.”
2. Whether the court should modify or reconsider its prior allocation of appellate costs under FRAP 39.

## Decision

- The court denied Crystal’s application for attorney fees and expenses on appeal under 35 U.S.C. § 285.
- The court denied Crystal’s motion for costs on appeal and reconsideration of the assessment of costs under FRAP 39.
- The court recognized that § 285 can authorize attorney-fee awards for appellate work but treated the determination as discretionary and limited to exceptional cases.
- The court admonished that, under the applicable local rule, parties should not file responses to fee applications unless directed, though no fee application would be granted without an opportunity to respond.

## Legal Principles

- 35 U.S.C. § 285 permits a court, in its discretion, to award reasonable attorney fees to the prevailing party only in “exceptional cases.”
- Attorney-fee awards under § 285 may extend to fees incurred on appeal, but a merits finding of fraud/inequitable conduct does not automatically require an appellate fee award.
- Allegations that an opponent’s appellate conduct increased expense do not justify fee shifting or altered costs absent a sufficient showing that the appeal presents exceptional circumstances.
- Allocation and reconsideration of appellate costs under FRAP 39 rests within the appellate court’s discretion.
- Fee-application procedure is governed by the court’s local rules; unauthorized filings may be considered but are disfavored.

## Conclusion

The Federal Circuit held that, although § 285 can reach appellate attorney fees, Crystal did not demonstrate exceptional circumstances warranting fee shifting for the appeal, and it also failed to justify reconsideration or additional taxation of appellate costs under FRAP 39.


Rohm & Haas Co. v. Crystal Chem. Co., 736 F.2d 688 (Fed. Cir. 1984)