UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

SFP WORKS, LLC, 

 

 Plaintiff, Civil Action No. 14-13575 

 Honorable Denise Page Hood 

 Magistrate Judge David R. Grand 

v. 

 

BUFFALO ARMORY, LLC, 

 

 Defendant. 

__________________________________/ 

REPORT AND RECOMMENDATION TO DENY DEFENDANT’S MOTION 

FOR AWARD OF ATTORNEYS’ FEES UNDER 35 U.S.C. SECTION 285 [86] 

Before the Court is Defendant Buffalo Armory, LLC’s (“Buffalo Armory”) Motion for 

Award of Attorneys’ Fees Under 35 U.S.C. Section 285, which was filed on November 28, 2016. 

(Doc. #86). Plaintiff SFP Works, LLC (“SFP”) filed a response in opposition to this motion on 

December 22, 2016 (Doc. #91), and Buffalo Armory filed a reply on January 10, 2017 (Doc. 

#96). An Order of Reference was entered on February 3, 2017, referring this matter to the 

undersigned for a report and recommendation pursuant to 28 U.S.C. § 636(b)(1)(B). (Doc. #97). 

The Court heard oral argument on this motion on March 14, 2017. 

I. REPORT

A. Background 

In this patent infringement suit, SFP alleged that Buffalo Armory infringed its patent, 

U.S. Patent No. 8,480,824 (the “‘824 Patent”), by continuing to use SFP’s patented steel 

treatment technology after the expiration of a license granting Buffalo Armory the right to use 

this process. On October 31, 2016, the District Court entered an Opinion and Order (the 

“Opinion”) granting Buffalo Armory’s motion for summary judgment on SFP’s patent 

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infringement claim. (Doc. #83). In its Opinion, the Court specifically found that Buffalo 

Armory’s “Star Process” did not literally infringe on the ‘824 Patent because, in the Star Process, 

steel is heated for 5.6 seconds, not “rapidly heat[ed], within 5 seconds,” as set forth in the 

relevant claims of the ‘824 Patent. (Id. at 6-18). The District Court also held that SFP could not 

prevail on its infringement claim under the “doctrine of equivalents,” because such a claim was 

barred by the principle of prosecution history estoppel. (Id. at 18-26). 

Buffalo Armory has now filed the instant motion seeking an award of attorneys’ fees and 

expenses as the prevailing party under 35 U.S.C. § 285. (Doc. #86). It claims that SFP pursued 

patent infringement claims “that were incredibly weak and contradicted by the prosecution 

history, the specification of the ‘824 patent, and SFP’s discovery responses.” (Id. at 1). As a 

result, Buffalo Armory asserts that the bases for alleged infringement in this case were 

“objectively unreasonable,” making this case “exceptional” within the meaning of § 285 and 

thereby justifying an award of more than $587,000 in attorneys’ fees and expenses. 

B. Legal Standard 

Section 285 of the Patent Act provides that a court “in exceptional cases may award 

reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. Recently, the Supreme Court 

set forth the standard for determining whether a case is “exceptional” under § 285: 

... an ‘exceptional’ case is simply one that stands out from others with 

respect to the substantive strength of a party’s litigating position 

(considering both the governing law and the facts of the case) or the 

unreasonable manner in which the case was litigated. District Courts may 

determine whether a case is ‘exceptional’ in the case-by-case exercise of 

their discretion, considering the totality of the circumstances. 

Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). In Octane 

Fitness, despite articulating a less rigid standard than that previously in place, the Supreme Court 

emphasized that a fee award under § 285 should still be the exception, not the rule. Id. at 1757. 

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Factors to be considered in determining whether a case is “exceptional” include, but are not 

limited to, “frivolousness, motivation, objective unreasonableness (both in the factual and legal 

components of the case) and the need in particular circumstances to advance considerations of 

compensation and deterrence.” Id. at 1756, n. 6 (internal quotations omitted). Here, Buffalo 

Armory primarily argues that attorneys’ fees are appropriate under the “objectively 

unreasonable” prong of the “exceptional circumstances” analysis.1

C. Analysis 

Buffalo Armory first asserts that SFP’s argument that the Star Process met the “rapidly 

heating, within 5 seconds” limitation of the ‘824 Patent was objectively unreasonable.2

 

Specifically, Buffalo Armory claims that, in June 2015, it provided SFP with “definitive 

evidence” that its process did not rapidly heat steel in less than or equal to 5 seconds (but, rather, 

did so in 5.6 seconds). (Doc. #86 at 16). Buffalo Armory argues that, instead of accepting this 

fact and conceding that Buffalo Armory’s process did not literally infringe on the ‘824 Patent, 

SFP “doubled down” and offered a “tortured” construction of the “within 5 second” limitation 

 

1

 Buffalo Armory also argues that this case is exceptional because “there is ‘the need in 

particular circumstances to advance considerations of compensation and deterrence.’” (Doc. #86 

at 27 (quoting Octane Fitness, 134 S. Ct. at 1756 n. 6)). Specifically, Buffalo Armory asserts 

that it should be compensated for attorneys’ fees it was forced to incur to defend this action, 

while SFP “had the luxury of pursuing [its] claims” through a $2 million intellectual property 

infringement abatement policy. (Id. at 28-29). But Buffalo Armory presented no evidence that 

SFP pursued its claims simply because it had this insurance policy; indeed, counsel for SFP 

indicated at the hearing that insurance coverage was limited, and SFP paid insurance premiums 

and incurred substantial out-of-pocket expenses. And, even if the existence of SFP’s insurance 

made it an easier (or less risky) decision to pursue the claims in this case, for the reasons 

discussed below, the Court would still find that sanctions are not warranted here. 

2

 Buffalo Armory also argues that SFP “presented another objectively unreasonable claim 

interpretation to support its infringement claim” – namely the “drawing the steel ... to form ... a 

second thickness” limitation. (Doc. #86 at 22-27). The District Court’s Opinion, however, 

declined to consider whether the accused process met (or failed to meet) the “drawing the steel 

limitation.” (Doc. #83 at 18, n. 5). As a result, this Court cannot conclude from the record 

before it that SFP’s “drawing the steel” argument was objectively unreasonable. 

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that did not include the complete heating time in the main heating unit. (Id. at 17). Buffalo 

Armory also argues that SFP’s argument that the Star Process infringed under the “doctrine of 

equivalents” was objectively unreasonable. (Id. at 20-22). The District Court ultimately rejected 

both of SFP’s infringement arguments (Doc. #83 at 9-13, 18-26), and Buffalo Armory now 

asserts that they were “objectively unreasonable,” justifying an award of attorneys’ fees.

In response, SFP argues that its approach to proving infringement was “completely 

reasonable”; its expert (Dr. Marder) opined that Buffalo Armory’s process literally satisfied the 

“rapidly heating” element and, thus, was infringing on the ‘824 Patent. (Doc. #91 at 15-17). 

SFP argues that although the District Court ultimately disagreed with Dr. Marder’s opinion, there 

is no basis for suggesting that he acted unreasonably in rendering his opinion, or that SFP was 

unreasonable in relying on that opinion. (Id. at 17-18). SFP also points out that Dr. Marder 

opined that Buffalo Armory was infringing under the doctrine of equivalents; according to SFP, 

the District Court did not disagree with Dr. Marder’s opinion in this respect, but instead merely 

“focused on a complex issue of patent law” in finding this argument barred by the doctrine of 

prosecution history estoppel. (Id. at 18). 

A review of the case law makes clear that a party’s arguments are not objectively 

unreasonable simply because they did not carry the day. For example, in Printerton, Inc. v. 

BreezyPrint Corp., 2015 WL 7149442, at *5 (S.D. Tex. Nov. 10, 2015), after finding no 

infringement and granting the defendant’s motion for summary judgment, the court denied the 

defendant’s motion for attorneys’ fees. The Printerton court noted that, despite the fact that the 

defendant pointed to “various unsuccessful legal and factual positions” asserted by the plaintiff 

during the litigation, overall, the plaintiff’s claims were not “so exceptionally meritless that they 

‘descend to the level of frivolous argument or objective unreasonableness.’” Id. at *3 (quoting 

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Gametek LLC v. Zynga, Inc., 2014 WL 4351414, at *3 (N.D. Cal. Sept. 2, 2014)). Other courts 

have reached similar conclusions, finding that attorneys’ fees are not warranted under § 285 

where one side simply advances a losing argument. See, e.g., Stragent, LLC v. Intel Corp., 2014 

WL 6756304, at *4 (E.D. Tex. Aug. 6, 2014) (declining to award attorneys’ fees and stressing 

that “the mere fact that the losing party made a losing argument is not a relevant consideration; 

rather, the focus must be on arguments that were frivolous or made in bad faith”); Fitbug Ltd. v. 

Fitbit, Inc., 2015 WL 3543116, at *4 (N.D. Cal. June 5, 2015) (declining to award attorneys’ fees 

where, considering the totality of the circumstances, “this case neither stands out from others 

with respect to the substantive strength of a party’s litigating position ... or the unreasonable 

manner in which the case was litigated, nor was it groundless, unreasonable, vexatious, or 

pursued in bad faith”) (internal citations and quotations omitted); SmartMetric, Inc. v. 

MasterCard Int’l, Inc., 2015 WL 12582630, at *2, 4 (C.D. Cal. Mar. 25, 2015) (finding that the 

plaintiff advanced positions that were “exceptionally weak – if not frivolous” but declining to 

award attorneys’ fees under § 285 because the Octane Fitness standard “presents a very high 

bar”); JS Prods., Inc. v. Kabo Tool Co., 2014 WL 7336063, at *5 (D. Nev. Dec. 22, 2014) 

(concluding that it was not “necessarily unreasonable” for the defendant to pursue its 

infringement claim where, despite the relative weakness of this claim, at least one expert agreed 

with the defendant’s position).

Having carefully considered the parties’ arguments and the record in this case, the Court 

finds that this litigation was far more typical than exceptional, and that an award of attorneys’ 

fees is not warranted. The applicable statute, 35 U.S.C. § 285, calls for an award of attorneys’ 

fees only in “exceptional” cases, and Octane Fitness – despite easing the standard for shifting 

fees in patent cases under that statute– still sets a very high bar and makes clear that attorneys’ 

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fees should only be awarded in rare or unusual cases. In this case, Buffalo Armory has not 

shown that SFP initiated the lawsuit without an adequate pre-filing investigation or for vexatious 

purposes, nor has it shown that SFP engaged in litigation misconduct. As for the objective 

unreasonableness of SFP’s litigation position, while the District Court unequivocally ruled in 

Buffalo Armory’s favor, it gave no impression in its Opinion that it believed SFP’s arguments to 

be frivolous, exceptionally weak, or advanced in bad faith. (Doc. #83). Importantly, the District 

Court specifically noted that SFP had presented evidence of some actual infringement – albeit on 

a very limited basis – which at least suggests that SFP’s belief that infringement occurred was 

not objectively unreasonable. (Id. at 15-18). And, at oral argument, Buffalo Armory’s counsel 

acknowledged that – at any time – Buffalo Armory’s process was capable of functioning in a 

manner that would infringe on the ‘824 patent. This further suggests that SFP’s position was not 

objectively unreasonable. 

In sum, Buffalo Armory has not met the high standard required to establish entitlement to 

an award of attorneys’ fees. The arguments advanced by SFP were not objectively unreasonable, 

and considering the totality of the circumstances, this case does not sufficiently stand out from 

other zealously-litigated patent infringement cases so as to deem it “exceptional” under 35 

U.S.C. § 285. Accordingly, Buffalo Armory’s motion for an award of attorneys’ fees should be 

denied. 

II. RECOMMENDATION 

For the reasons set forth above, IT IS RECOMMENDED that Buffalo Armory’s Motion 

for Award of Attorneys’ Fees (Doc. #86) be DENIED. 

Dated: April 18, 2017 s/David R. Grand 

Ann Arbor, Michigan DAVID R. GRAND 

 United States Magistrate Judge 

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NOTICE TO THE PARTIES REGARDING OBJECTIONS 

The parties to this action may object to and seek review of this Report and 

Recommendation, but are required to act within fourteen (14) days of service of a copy hereof as 

provided for in 28 U.S.C. § 636(b)(1) and Fed. R. Civ. P. 72(b)(2). Failure to file specific 

objections constitutes a waiver of any further right of appeal. Thomas v. Arn, 474 U.S. 140 

(1985); Howard v. Secretary of HHS, 932 F.2d 505, 508 (6th Cir.1991); United States v. Walters, 

638 F.2d 947, 949–50 (6th Cir.1981). The filing of objections which raise some issues, but fail 

to raise others with specificity, will not preserve all the objections a party might have to this 

Report and Recommendation. Willis v. Secretary of HHS, 931 F.2d 390, 401 (6th Cir.1991); 

Smith v. Detroit Fed’n of Teachers Local 231, 829 F.2d 1370, 1373 (6th Cir.1987). Pursuant to 

E.D. Mich. LR 72.1(d)(2), a copy of any objections is to be served upon this magistrate judge. A 

party may respond to another party’s objections within 14 days after being served with a copy. 

See Fed. R. Civ. P. 72(b)(2); 28 U.S.C. §636(b)(1). Any such response should be concise, and 

should address specifically, and in the same order raised, each issue presented in the objections. 

CERTIFICATE OF SERVICE

The undersigned certifies that the foregoing document was served upon counsel of record 

and any unrepresented parties via the Court’s ECF System to their respective email or First Class 

U.S. mail addresses disclosed on the Notice of Electronic Filing on April 18, 2017. 

 s/Eddrey O. Butts 

 EDDREY O. BUTTS 

 Case Manager 

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