Patent Applicant Can’t Overturn Fee Order

An Alexandria U.S. District Court rejects a patent applicant’s latest ef­fort to avoid paying the court-ordered sum of $36,320.49 for expenses, includ­ing attorney’s fees, of the Patent and Trademark Office pursuant to § 21(b) (3) of the Lanham Act, in the wake of a summary judgment ruling for the PTO on the ground that plaintiff ’s mark was generic.

Plaintiff’s Rule 60(b) motion fails for at least three reasons. First, Rule 60(b) is not an appropriate vehicle for the relief plaintiff seeks. Second, to award plaintiff the relief he seeks would be to contravene the mandate of the 4th Cir­cuit, which has twice rejected plaintiff’s attempt to avoid paying the ordered costs. Third, plaintiff’s argument about Baker Botts LLP v. ASARCO LLC, 135 S.Ct. 2158 (2015), is simply wrong.

Rule 60(b)(5) cannot be used to grant plaintiff relief from a money judgment, such as the fees order. Neither that rule nor Rule 60(b)(6) is an appropriate ve­hicle for vacating a money judgment on the basis of a change in decisional law.

Plaintiff seeks contravention of the 4th Circuit’s mandate. Any issue con­clusively decided by the 4th Circuit on appeal is beyond the power of a district court to decide following the appeal. The 4th Circuit’s mandate remains in place and entitles the PTO to fees and expenses under § 21(b)(3). There is no basis by which a district court can say otherwise.

Plaintiff’s error in reading Baker Botts is that he conflates dicta with a holding. The case repeatedly quotes language that, in the abstract, may suggest that the American Rule applies in all fee-shifting contexts. Yet, it is a maximum with a pedigree at least as long as the American Rule’s that gen­eral expressions going beyond the case ought not to control the judgment in a subsequent suit when the very point is presented for decision. The question of whether the American Rule applies only to prevailing party statutes was not squarely presented to the Supreme Court in Baker Botts. The Supreme Court’s general statements about the American Rule do not constitute hold­ings, and they do not bind the Supreme Court or any other court. There is sim­ply no basis at all to conclude that a change in binding decisional authority has occurred.

Plaintiff’s motion to vacate the fee order is denied.

Shammas v. Lee (Ellis) No. 1:12cv1462, May 9, 2016; USDC at Alexandria, Va.; John N. Jennison for plaintiff; Dennis C. Barghaan Jr., AUSA, for defendant. VLW 016-3-239, 7 pp.