United States Court of Appeals for the Federal Circuit 

2009-1045 

WEDGETAIL, LTD. and BOBBY D. KING, 

Plaintiffs-Appellees, 

v. 

HUDDLESTON DELUXE, INC., 

 

Defendant-Appellant. 

 Andy Tindel, Provost Umphrey Law Firm, LLP, of Tyler, Texas, argued for 

plaintiffs-appellees. 

 Marc M. Gorelnik, Townsend and Townsend and Crew LLP, of San Francisco, 

California, argued for defendant-appellant. With him on the brief were Nancy L. 

Tompkins, and Megan M. Chung. 

Appealed from: United States District Court for the Eastern District of Texas 

Judge David Folsom 
United States Court of Appeals for the Federal Circuit 

2009-1045 

WEDGETAIL, LTD. and BOBBY D. KING, 

Plaintiffs-Appellees, 

v. 

HUDDLESTON DELUXE, INC., 

Defendant-Appellant. 

Appeal from the United States District Court for the Eastern District of Texas in 

case no. 07-CV-0202, Judge David Folsom. 

______________________ 

DECIDED: August 12, 2009 

______________________ 

Before SCHALL, GAJARSA, and DYK, Circuit Judges. 

GAJARSA, Circuit Judge. 

Huddleston Deluxe, Inc. appeals from an order of the U.S. District Court for the 

Eastern District of Texas that dismissed with prejudice Wedgetail Ltd.’s claims of 

infringement and Huddleston’s declaratory judgment counterclaims, and established 

that each party was to bear its own costs and legal fees. Specifically, Huddleston 

appeals the district court’s decision not to award attorney fees under 35 U.S.C. § 285. 

 
Because we find that the district court’s decision was not an abuse of discretion and, at 

most, amounts to harmless error, we affirm. 

BACKGROUND 

Wedgetail is the assignee of U.S. Patent No. 6,857,220 B2, which is directed to 

“flexible fishing lure tails and appendages”—i.e., fishing lures that simulate swimming 

motions when dragged through water. Wedgetail filed suit against Huddleston for 

infringement of the ’220 patent; Huddleston, in turn, filed counterclaims of noninfringement and invalidity. 

After the district court held a claim construction hearing and issued its claim 

construction order, Wedgetail determined “that it may be difficult to establish 

infringement under certain of the Court’s constructions.” Wedgetail thus filed a motion 

to dismiss all claims with prejudice, in which it granted Huddleston a covenant not to 

sue. Huddleston opposed solely on the ground that Wedgetail’s proposed order of 

dismissal would deprive Huddleston of the opportunity to seek attorney fees as the 

prevailing party. 

The district court granted Wedgetail’s motion, dismissed all claims with prejudice, 

and ordered “that each party shall bear their own costs and attorney’s fees.” 

Huddleston immediately appealed to this court. We have jurisdiction over the appeal of 

the district court’s final judgment under 28 U.S.C. § 1295(a)(1). 

DISCUSSION 

35 U.S.C. § 285 provides that “[t]he court in exceptional cases may award 

reasonable attorney fees to the prevailing party.” This provision is an exception to the 

so-called “American Rule”: 

2009-1045 2 
Under the American Rule each party bears its own attorney fees and 

expenses. As an exception to that rule, courts have exercised their 

inherent equitable power to make whole a party injured by an egregious 

abuse of the judicial process. . . . Congress enacted Section 285 to codify 

in patent cases the “bad faith” equitable exception to the American Rule. 

. . . Recognizing the good faith/bad faith distinction, Congress expressly 

limited such awards to “exceptional cases.” 

Sun-Tek Indus., Inc. v. Kennedy Sky Lites, Inc., 929 F.2d 676, 678 (Fed. Cir. 1991) 

(internal quotation marks and citations omitted). “The determination of whether a case 

is exceptional and, thus, eligible for an award of attorney fees under § 285 is a two-step 

process. First, the district court must determine whether a case is exceptional, a factual 

determination reviewed for clear error. After determining that a case is exceptional, the 

district court must determine whether attorney fees are appropriate, a determination that 

we review for an abuse of discretion. A district court abuses its discretion when its 

decision is based on clearly erroneous findings of fact, is based on erroneous 

interpretations of the law, or is clearly unreasonable, arbitrary or fanciful.” Cybor Corp. 

v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc) (citations omitted). 

“[T]he exceptional nature of the case must be established by clear and 

convincing evidence.” Cambridge Prods., Ltd. v. Penn Nutrients, Inc., 962 F.2d 1048, 

1050 (Fed. Cir. 1992). As this court has consistently found, however, only a limited 

universe of circumstances warrant a finding of exceptionality in a patent case: 

“inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and 

otherwise bad faith litigation; a frivolous suit or willful infringement.” Epcon Gas Sys., 

Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1034 (Fed. Cir. 

2009-1045 3 
2002); see also, e.g., Brasseler, U.S.A. I, L.P., v. Stryker Sales Corp., 267 F.3d 1370, 

1380 (Fed. Cir. 2001) (same); id. (“Exceptional cases are normally those involving bad 

faith litigation or those involving inequitable conduct by the patentee in procuring the 

patent.”); Hoffman-La Roche Inc. v. Invamed Inc., 213 F.3d 1359, 1365 (Fed. Cir. 2000) 

(“Among the types of conduct which can form a basis for finding a case exceptional are 

willful infringement, inequitable conduct before the P.T.O., misconduct during litigation, 

vexatious or unjustified litigation, and frivolous suit. Such conduct must be supported by 

clear and convincing evidence.” (quoting Beckman Instruments, Inc., v. LKB Produkter 

AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989))); Multiform Desiccants, Inc. v. Medzam, Ltd., 

133 F.3d 1473, 1481–82 (Fed. Cir. 1998) (“Findings of exceptional case have been 

based on a variety of factors; for example, willful or intentional infringement, inequitable 

conduct before the Patent and Trademark Office, vexatious or unjustified litigation, or 

other misfeasant behavior.”); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1579 (Fed. Cir. 

1996) (“Bad faith litigation, willful infringement, or inequitable conduct are among the 

circumstances which may make a case exceptional.”); Cambridge Prods., 962 F.2d at 

1050–51 (“In the case of awards to prevailing accused infringers . . . ‘exceptional cases’ 

are normally those of bad faith litigation or those involving fraud or inequitable conduct 

by the patentee in procuring the patent.”); Bayer Aktiengesellschaft v. Duphar Int’l 

Research B.V., 738 F.2d 1237, 1242 (Fed. Cir. 1984) (“In awarding attorney fees to a 

prevailing accused infringer, such exceptional circumstances include, inter alia, 

inequitable conduct during prosecution of a patent, misconduct during litigation, 

vexatious or unjustified litigation, or a frivolous suit.”). 

2009-1045 4 
“[M]indful of the limited circumstances in which an award of attorney fees is 

appropriate,” Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1329 (Fed. Cir. 2003), 

this court has rejected an “expansive reading of § 285,” which would permit findings of 

exceptionality in circumstances other than those listed above, id., and (absent litigation 

misconduct or inequitable conduct before the PTO) has permitted the award of attorney 

fees to a prevailing accused infringer “only if both (1) the litigation is brought in 

subjective bad faith, and (2) the litigation is objectively baseless,” Brooks Furniture Mfg., 

Inc. v. Dutailer Int’l, Inc., 393 F.3d 1378, 1381 (Fed. Cir. 2005) (emphasis added). 

Because of the high level of deference owed to district courts on this issue and 

the limited circumstances that could qualify as exceptional, this court has not imposed a 

blanket requirement that a district court provide its reasoning in attorney fee cases. 

See, e.g., Serio-US Indus., Inc. v. Plastic Recovery Techs. Corp., 459 F.3d 1311, 1322 

(Fed. Cir. 2006) (upholding denial of fees despite no statement of reasons, because 

“the record as a whole in this case adequately supports the denial of attorney fees”); 

Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1584 (Fed. Cir. 1993) 

(upholding denial of fees despite no statement of reasons, because record “provide[s] a 

sufficient basis upon which we can review the exercise of the trial court’s discretion”). 

Instead, we have held only that a statement of the district court’s reasoning is generally 

necessary to enable review when an attorney fees motion is granted, see, e.g., 

Innovation Tech., Inc. v. Splash! Med. Devices, LLC, 528 F.3d 1348, 1350–51 (Fed. Cir. 

2008); Stephens v. Tech Int’l, Inc., 393 F.3d 1269, 1276 (Fed. Cir. 2004) (reversing 

award of fees because a “district court must provide reasoning for its determination that 

a case is exceptional for us to provide meaningful review”), or when attorney fees are 

2009-1045 5 
denied despite the presence of one or more of the circumstances listed above, see, 

e.g., Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 1377 (Fed. Cir. 

2002) (remanding unexplained denial of fees where record reflected “serious and open 

questions” as to whether plaintiff “ever had a good faith belief in its claim”); Tate Access 

Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 972 (Fed. Cir. 2000) (“While a 

finding of willful infringement does not mandate that damages be increased or that 

attorneys fees be awarded, after an express finding of willful infringement, a trial court 

should provide reasons for not increasing a damages award or for not finding a case 

exceptional for the purpose of awarding attorneys fees.” (internal quotation marks and 

citations omitted)); U.S. Envtl. Prods. Inc. v. Westall, 911 F.2d 713, 718 (Fed. Cir. 1990) 

(“Under . . . circumstances . . . where the court did find misconduct in determining 

substantive issues, we conclude that we require the benefit of the court’s analysis . . . in 

order to review the court’s ruling.”). As discussed below, Huddleston directs us to 

nothing in the record here that could compel a finding of exceptionality or would 

otherwise suggest a need for the district court to provide its reasoning. Accordingly, the 

lack of detailed analysis by the district court in this case does not warrant reversal. 

Huddleston argues that the district court committed reversible error by failing to 

entertain a motion for attorney fees pursuant to § 285. We disagree. 

As this court stated in IPXL Holdings, L.L.C. v. Amazon.com, Inc., “[n]o provision 

in section 285 exempts requests for attorney fees thereunder from compliance with Rule 

54(d)(2)(B).” 430 F.3d 1377, 1386 (Fed. Cir. 2005). Rule 54(d)(2)(B), in turn, states: 

Unless otherwise provided by statute or order of the court, the motion [for 

attorney fees] must be filed no later than 14 days after entry of judgment; 

must specify the judgment and the statute, rule, or other grounds entitling 

2009-1045 6 
the moving party to the award; and must state the amount or provide a fair 

estimate of the amount sought. 

Fed. R. Civ. P. 54(d)(2)(B). Despite these requirements, Huddleston did not file a 

motion for attorney fees with the district court, but instead merely requested that the 

district court set a briefing schedule for such a motion. Nor did Huddleston state, even 

in its opposition papers, the amount of attorney fees sought. Accordingly, Huddleston’s 

claim would appear to fail procedurally. See IPXL Holdings, 430 F.3d at 1386 

(reversing award of attorney fees where motion for fees was not timely filed with the 

district court). 

Huddleston insists, however, that the filing of a separate motion for attorney fees 

with the district court would have been futile in light of the district court’s order. It thus 

urges this court to treat the district court’s order either as a prejudicial deprivation of 

Huddleston’s right to file a motion or as an erroneous determination that fees are not 

owed. Because there is substantial overlap among the facts relevant to each of these 

arguments, we consider them together. 

The Supreme Court has summarized the doctrine of harmless error in the 

following manner: 

In ordinary civil appeals, . . . the appellant will point to rulings by the trial 

judge that the appellant claims are erroneous, . . . . Often the 

circumstances of the case will make clear to the appellate judge that the 

ruling, if erroneous, was harmful and nothing further need be said. But, if 

not, then the party seeking reversal normally must explain why the 

erroneous ruling caused harm. 

Shinseki v. Sanders, 129 S.Ct. 1696, 1706 (2009). The burden similarly rests on the 

appellant to prove that the district court clearly erred in failing to find a case exceptional 

or abused its discretion in failing to award attorney fees. See Carroll Touch, 15 F.3d at 

1584. 

2009-1045 7 
Here, Huddleston seeks attorney fees after Wedgetail voluntarily dismissed its 

claim with prejudice and granted a covenant not to sue. The record on appeal presents 

neither any apparent misconduct nor any judicial findings of misconduct on Wedgetail’s 

part. To the contrary, the record reflects that Wedgetail immediately sought dismissal of 

its infringement claims upon determining that it could not prevail under the district 

court’s claim construction. Huddleston, meanwhile, has not provided this court with any 

reason to believe that it might successfully obtain an attorney fee award if it were 

afforded the opportunity to present evidence to the district court on remand. To the 

district court, Huddleston merely stated: “Huddleston believes this is one of those 

exceptional and rare cases.” And to this court, Huddleston has offered a vague 

assertion that Wedgetail’s pre–claim construction infringement contentions were 

deficient. But it has provided no support whatsoever for its claims. 

Simply put, Huddleston has failed to demonstrate either that the district court 

clearly erred in failing to find this case exceptional or that Huddleston was harmed by 

the district court’s failure to entertain a motion for attorney fees. A remand is, therefore, 

unwarranted. See Consol. Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 814 (Fed. 

Cir. 1990) (“A remand, with its accompanying expenditure of additional judicial 

resources in a case thought to be completed, is a step not lightly taken and one that 

should be limited to cases in which further action must be taken by the district court or in 

which the appellate court has no way open to it to affirm or reverse the district court's 

action under review. Though findings on ‘exceptional case’ and reasons underlying the 

discretionary action on fees are helpful to an appellate court, remand should not be a 

matter of rote in every case in which findings and reason are not expressly set forth. An 

2009-1045 8 
2009-1045 9 

appellate court need not close its eyes to the record where . . . there is a way clearly 

open to affirm the district court’s action.”); see also Carroll Touch, 15 F.3d at 1584 

(“There is no evidence of record that [the plaintiff] pursued its patent infringement claim 

without a reasonable belief in its merits. [The prevailing defendant] has thus not shown 

that the court’s implicit finding that this was not an exceptional case under section 285 

was clearly erroneous or that the court abused its discretion in denying its motion for 

attorney fees.”). 

CONCLUSION 

Accordingly, because the district court’s decision, although lacking explanation, is 

supported by the record, “[n]o useful purpose would be served by a remand to enable 

the district court to tell us in express terms what we already know from the record.” 

Consol. Aluminum, 910 F.2d at 815. We thus affirm the district court’s decision. 

AFFIRMED

COSTS 

No costs.