Lead Creation v. Schedule A - Opp'n To Fees

Case 1:22-cv-10377-JMF-SDA Document 161 Filed 04/05/23 Page 1 of 16
MAH Advising LLC

Attorneys At Law
One World Trade Center 3030 N. Rocky Point Drive W

Suite 8500 Suite 150
New York, NY 10007 Tampa, FL 33607
BY ELECTRONIC FILING
The Honorable Justice Jesse M. Furman.
United States District Judge
United States District Court for the Southern District of New York
Thurgood Marshall
United States Courthouse
40 Foley Square
New York, NY 10007
Re: Lead Creation Inc. v. The Partnerships and Unincorporated Associations

Identified on Schedule “A,” Civil Case No. 22-CV-10377 (S.D.N.Y.)
Dear Justice Furman,
Counsel for MAH Advising LLC would like to clarify and resubmit the following amended
motion. Currently pending is a motion for attorney’s fees against Plaintiff and Counsel (ECF
134). Counsel is not responding on behalf of Plaintiff but on behalf of our law firm, which
there is currently adverse motion against us individually in which we have standing to oppose.
Therefore, MAH Advising LLC respectfully requests the court to review the amended
opposition only to Counsel’s liability in the pending sanctions motion.
MAH ADVISING LLC
By: /s/ Michael A. Hurckes

Michael A. Hurckes, Esq.
One World Trade Center
Suite 8500
New York, NY 10007
Tel. 917-791-0636
Fax: 929-374-1016
Email: mh@mahadvising.com
Bar #: 5910898
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
LEAD CREATION INC., Case No.: 1:22-cv-10377

Plaintiff,
v.
THE PARTNERSHIPS and

UNINCORPORATED ASSOCIATIONS
IDENTIFIED ON SCHEDULE “A,”,
Defendants.
__________________________________________________________________________
MAH ADVISING LLC OPPOSITION TO DEFENDANTS’ MOTION FOR
ATTORNEY FEES FROM MAH ADVISING LLC
__________________________________________________________________________

MAH ADVISING LLC
One World Trade Center Suite
8500
New York, NY 10007
Tel. 917-791-0636
Fax: 929-374-1016
Bar #: 5910898
2
TABLE OF CONTENTS
TABLE OF AUTHORITIES .................................................................................................. 4
FACTUAL BACKGROUND .................................................................................................. 6
ARGUMENTS.......................................................................................................................... 7
A. MAH relied on the assertions and claims of the assigner inventor and has made
no misrepresentations to USPTO. MAH Complied with its Duty of Candor and Good
Faith While Dealing With USPTO. .................................................................................... 7
B. Plaintiff’s suit was not baseless, frivolous, unreasonable or instituted in bad faith
and Plaintiff or its attorney did not engage in misconduct before the court or USPTO.
The Patent-in-suit is still valid. ......................................................................................... 11
C. Defendants are not entitled to attorney’s fees from MAH ADIVSING LLC as this
is not an exceptional case. Plaintiff withdrew its infringement suit early in the
litigation and Defendants are not the prevailing party................................................... 13
D. Plaintiff’s attorney cannot be held personally liable for any attorney’s fees. ....... 16
3
TABLE OF AUTHORITIES
Cases
Am. Nat'l Can Co. v. Cont'l PET Techs., Inc., No. B:90-CV-558 (EBB), 1995 U.S. Dist.
LEXIS 20733, at *9 (D. Conn. Aug. 21, 1995) 11
Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1316 (Fed. Cir. 2010) 12
Beckman Instruments, Inc., v. Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) 13
Burger v. Brookhaven Med. Arts Bldg., 131 A.D.2d 622, 624, 516 N.Y.S.2d 705, 708 (App.
Div. 1987) 16
Celluloid Mfg. Co. v. Russell, 37 F. 676 (C.C.N.Y. 1889) 7
Commercial Recovery Corp. v. Bilateral Credit Corp., LLC, 2013 U.S. Dist. LEXIS 180205,
at *14 (S.D.N.Y. Dec. 19, 2013) 14
Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1460 (Fed. Cir. 1998). 12
Eltech Systems Corp. v. PPG Industries, Inc., 903 F.2d 805, 811 (Fed. Cir. 1990) 13
Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009) 7
Farrell v. Hellen, 2004 U.S. Dist. LEXIS 3638 (S.D.N.Y. Mar. 10, 2004) 16
Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1215 (Fed. Cir. 1987) 15
HR US LLC v. Mizco Int'l, Inc., Civil Action No. 07-CV-2394 (DGT)(JO), 2010 U.S. Dist.
LEXIS 103123, at *9 (E.D.N.Y. Sep. 28, 2010) 13, 14
In re OxyContin Antitrust Litig., 530 F Supp 2d 554, 573 [SDNY 2008] 8
Kangaroos USA, Inc. v. Caldor, Inc., 778 F.2d 1571, 1573 (Fed. Cir. 1985) 7
Liberty Leather Prods. Co. v. VT Int'l, 909 F. Supp. 193, 196 (S.D.N.Y. 1996) 11
Micro Motion, Inc. v. Exac Corp., 686 F. Supp. 789, 796 (N.D.Cal. 1987) 8
Nat'l Sav. Bank v. Ward, 100 U.S. 195, 200 (1879) 16
Pentech Intl., Inc. v Hayduchok, 1990 US Dist LEXIS 15391, at *34-35 [SDNY Nov. 12,
1990]) 8
PPC Broadband, Inc. v Corning Opt. Communs. RF, LLC, 2015 US Dist LEXIS 189014, at
*9-10 [NDNY May 20, 2015, No. 5:11-cv-761 (GLS/DEP)]) 7
Quintel Corp., N.V. v. Citibank, N.A., 589 F. Supp. 1235, 1245 (S.D.N.Y. 1984) 16
Regeneron Pharms., Inc. v Merus B.V., 144 F Supp 3d 530, 559 [SDNY 2015] 9
Regeneron Pharms., Inc. v Merus B.V., 144 F Supp 3d 530, 559-560 [SDNY 2015]) 10
Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1582 (Fed. Cir. 1991) 8
Succession Picasso v. Spedding, 1997 U.S. Dist. LEXIS 1481, at *9 (S.D.N.Y. Feb. 11,
1997) 12
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) 9
Xerox Corp. v. Dennison Mfg. Co., 322 F. Supp. 963, 968 [**1346] (S.D.N.Y. 1971) 7
Statutes
37 C.F.R. § 1.56(a) 8
37 CFR § 1.56(e) 8
4
Michael A. Hurckes, Esq. of MAH Advising LLC respectfully opposes Defendants
Motion for Attorney's Fees from MAH Advising LLC.
FACTUAL BACKGROUND
Plaintiff (Lead Creation) is the bona fide assignee of the Patent-in-suit which carries a
presumption of validity. The prior art references and the issue of obviousness have already
been dealt with by the USPTO. Defendants have provided no defense to the infringement and
have failed to establish a prima facie case for invalidating the Patent-in-suit. Contrary to
Defendants’ baseless claims, Plaintiff’s Counsel (MAH) was provided information that Lead
Creation is an e-commerce company that sells various products for which it owns the
intellectual property rights to and has been in operation since 2015. (See Exhibit 1). MAH had
no prior knowledge of any foreign litigation related to the Patent-in-suit. MAH conducted due
diligence on the US patent in US Courts and found nothing of relevance. Only when the
Defense Counsel finally appeared after 3 months of no communication, did they present any
evidence whatsoever, and the evidence they did produce was of the Ouyangs and not Plaintiff
or MAH. Inventors of the Patent-in-suit (Ouyangs) in Clause 3(b) of the Patent Acquisition
Agreement stated that:
“(3)(b) … Except as otherwise disclosed in this Agreement, there are no actions, suits,
investigations, claims, or proceedings threatened, pending, or in progress relating in
any way to the Patent Rights.”
“(3)(c)None of Seller, any prior owner, or their respective agents or representatives
have engaged in any conduct, or omitted to perform any necessary act, the result of
which would invalidate any of the claims of the Patents or hinder their enforcement.
MAH has made a declaration under oath that it had no knowledge of any foreign judicial
decisions that have absolutely no bearing on a US Court. Lead Creation was entitled to its
5
statutory presumption of validity and MAH engaged in no misconduct before this court. There
is no evidence to suggest otherwise, Defendants have made baseless allegations that there is
“fishy conduct” on part of MAH and other baseless and frivolous claims that lack any
evidentiary showing.
ARGUMENTS
A. MAH relied on the assertions and claims of the assigner inventor and has made no
misrepresentations to USPTO. MAH Complied with its Duty of Candor and Good
Faith While Dealing With USPTO.
Defendants have provided various prior art references in support of their argument to
invalidate the Patent-in-suit but failed to assess the extensive references cited by the USPTO
and Ouyangs. The USPTO ESAT history is attached hereto as Exhibit-2 and Exhibit-3.
“[I]nequitable conduct . . . must be pled with particularity under [Federal] Rule [of Civil
Procedure] 9(b)." Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir.
2009) "A pleading that simply avers the substantive elements of inequitable conduct, without
setting forth the particularized factual bases for the allegation, does not satisfy Rule 9(b)." Id.
at 1326. "[I]n pleading inequitable conduct in patent cases, Rule 9(b) requires identification of
the specific who, what, when, where, and how of the material misrepresentation or omission
committed before the PTO." Id. at 1327. While the intent element "may be averred generally,
. . . the pleadings [must] allege sufficient underlying facts from which a court may reasonably
infer that a party acted with the requisite state of mind." PPC Broadband, Inc. v Corning Opt.
Communs. RF, LLC, 2015 US Dist LEXIS 189014, at *9-10 [NDNY May 20, 2015, No. 5:11-
cv-761 (GLS/DEP)])
6
However, the party asserting the fraud must prove the specific intent to mislead the
Patent Office or at least gross negligence; inadvertent nondisclosures will not suffice. See
Kangaroos USA, Inc. v. Caldor, Inc., 778 F.2d 1571, 1573 (Fed. Cir. 1985); Xerox Corp. v.
Dennison Mfg. Co., 322 F. Supp. 963, 968 [**1346] (S.D.N.Y. 1971); Celluloid Mfg. Co. v.
Russell, 37 F. 676 (C.C.N.Y. 1889). The information concealed must also be material, in the
sense that disclosure might well have warranted denial of the patent. See SCM Corp., 318 F.
Supp. at 448. No fraud is proven if the information is "merely cumulative, that is, if it is less
pertinent than, and adds nothing to, what is already known to [the] patent examiner." Micro
Motion, Inc. v. Exac Corp., 686 F. Supp. 789, 796 (N.D.Cal. 1987). Pentech Intl., Inc. v
Hayduchok, 1990 US Dist LEXIS 15391, at *34-35 [SDNY Nov. 12, 1990])
Ouyangs had no duty to disclose foreign applications under 37 CFR § 1.56(e) as it was
not a “continuation-in-part" application. Furthermore, there was no obligation to claim the
benefit of a grant of a foreign patent application. Defendants have failed to assert any specific
instances of fraud or disruption due to the inadvertent nondisclosures by MAH. Defendants
also failed to assert that prior art not before the USPTO is material to the validity of the Patent-
in-suit. On August 19, 2008 the USPTO by office action rejected the claims of the Patent-in-
suit. The office action is attached hereto as Exhibit-4. The inventors of the patent-in-suit
(“Ouyangs”) filed a response to the office action. The response to the office action is attached
hereto as Exhibit-5. Defendants have failed to establish a prima facie case of invalidity. The
prior art submitted by Defendants does not encompass each and every element of the
challenged claim.
[T]he duty to disclose all information known to be material to patentability is deemed
to be satisfied if all information known to be material to patentability of any claim issued in a
patent was cited by the Office or submitted to the Office." 37 C.F.R. § 1.56(a). As the Federal
7
Circuit has explained, "[w]hen a reference was before the examiner, whether through the
examiner's search or the applicant's disclosure, it can not be deemed to have been withheld
from the examiner." Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1582
(Fed. Cir. 1991). In re OxyContin Antitrust Litig., 530 F Supp 2d 554, 573 [SDNY 2008]).
[A]s a general rule, this doctrine should only be applied in instances where the patentee's
misconduct resulted in the unfair benefit of receiving an unwarranted claim." Regeneron
Pharms., Inc. v Merus B.V., 144 F Supp 3d 530, 559 [SDNY 2015])
The prior art disclosed by Defendants is cumulative to the art before the USPTO in the
prosecution history. The immateriality of the prior reference is further made clear by comparing
it to the patent disclosure, which was before the USPTO. (Exhibit-2 & 3) Prior art is not
material if it is merely cumulative or is no more material than other references already before
the PTO Examiner; there is no duty to disclose a reference that is of the same or less materiality
as what is already disclosed. Dymo Costar Corp. v Seiko Instruments USA, Inc., 2000 US Dist
LEXIS 23128, at *29 [D Conn Mar. 20, 2000, No. 3-00-cv-4 (JCH) DW])
The Federal Circuit's en banc decision in Therasense, Inc. v. Becton, Dickinson & Co.,
649 F.3d 1276 (Fed. Cir. 2011) sets forth the governing legal standard. After noting that
asserting claims of inequitable conduct had "become a significant litigation strategy" that can
"cast a dark cloud over a patent's validity and paint the patentee as a bad actor" and increase
the costs and complexity of infringement litigation, id. at 1288, the Court proceeded to
"tighten[] the standards for finding both intent and materiality in order to redirect a doctrine
that has been overused to the detriment of the public." Id. at 1290.
A court's determination of inequitable conduct proceeds in two parts: the accused
infringer, who bears the burden of proof on this claim, must prove both that a nondisclosed
8
reference was material and that the patent applicant acted with the requisite intent. Defendants
have failed to establish both these factors.
"[A]s a general matter, the materiality required to establish inequitable conduct is but-
for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for
material if the PTO would not have allowed a claim had it been aware of the undisclosed prior
art." Id. at 1291. The Court is therefore required to place itself in the shoes of a patent examiner
and determine whether it would have allowed the claim "if it had been aware of the undisclosed
reference." Id. In making its determination as to materiality, "the court should apply the
preponderance of the evidence standard and give claims their broadest [**51] reasonable
construction." Id. at 1291-92 (citing Manual [*560] of Patent Examining Procedure ("MPEP")
§§ 706, 2111 (8th ed. Rev.8, July 2010)) Regeneron Pharms., Inc. v Merus B.V., 144 F Supp
3d 530, 559-560 [SDNY 2015])
Defendants have failed to establish any deceptive intent attributable to MAH. It is not
difficult in hindsight to find items that could have been brought to the attention of the Patent
Office. It is far more difficult to prove that MAH intentionally misled the USPTO by failing to
disclose material information of which the patent examiner was unaware. If an inventor has the
legitimate subjective belief that his conduct is not deceptive, then even behavior that is,
objectively viewed, grossly negligent or grossly reckless conduct, but without culpable intent,
does not of itself meet the requisite showing of intent to deceive. Dymo Costar Corp. v Seiko
Instruments USA, Inc., 2000 US Dist LEXIS 23128, at *33 [D Conn Mar. 20, 2000, No. 3-00-
cv-4 (JCH) DW]
9
B. Plaintiff’s suit was not baseless, frivolous, unreasonable or instituted in bad faith
and Plaintiff or its attorney did not engage in misconduct before the court or
USPTO. The Patent-in-suit is still valid.
First, Defendants have failed to show that an inadvertent omission to disclose prior art
or invalidity of similar patents by foreign patent offices to the USPTO was material after the
patent had been granted: i.e., that a reasonable patent officer would have found it important in
relation to the patent’s application or validity.
Second, the references to the foreign patents are similarly immaterial; indeed, the
USPTO did not rely on these patents when it granted the Patent-in-suit as there is no burden to
disclose all relevant prior patents if the references are cumulative or less material than those
already before the examiner.
Lastly, Defendants argue that MAH failed to represent or verify that there was an
unintentional delay in the payment of maintenance fees related to the Patent-in-suit. MAH
relied on the truthfulness of the statements made by Ouyangs, the original inventors.
Defendants have made no showing that this statement was false by any concrete evidence or
preponderance of evidence. Defendants have also failed to establish that these statements were
made with the intent to deceive. See, e.g., Newell Companies Inc. v. Kenney Manufacturing
Company, 864 F.2d 757, 769 (Fed. Cir. 1988), cert. denied, 493 U.S. 814, 107 L. Ed. 2d 30,
110 S. Ct. 62 (1989) (affirming lower court holding that nondisclosure alone before PTO did
not warrant finding of inequitable conduct); cf. American Can Co. v. Crown Cork & Seal Co.,
693 F.2d 653, 657 (7th Cir. 1982) (holding " innocent or negligent omissions or misstatements
before the patent office do not justify the award, but willfulness or bad faith if established by
clear and convincing evidence are adequate even if not equalling fraud." Liberty Leather Prods.
Co. v. VT Int'l, 909 F. Supp. 193, 196 (S.D.N.Y. 1996)
10
A plaintiff may not be sanctioned, however, simply because he does not have enough
evidence to survive a summary judgment motion. Oliveri v. Thompson, 803 F.2d 1265, 1279
(2nd Cir. 1986), cert. denied, 480 U.S. 918 (1987). A claim dismissed on summary judgment
may advance a factually and legally tenable, although unpersuasive, argument. Mareno v.
Rowe, 910 F.2d 1043, 1047 (2nd Cir. 1990), cert. denied, 498 1028 (1991). A sanctionable
claim, on the other hand, is frivolous and has neither a factual nor a legal foundation.
Am. Nat'l Can Co. v. Cont'l PET Techs., Inc., No. B:90-CV-558 (EBB), 1995 U.S. Dist. LEXIS
20733, at *9 (D. Conn. Aug. 21, 1995).
Defendants have failed to make a clear showing of bad faith or to establish that the
actions of MAH were so devoid of merit as to result in an undisputed conclusion of impropriety.
Defendants have failed to establish that MAH’s actions were taken for reasons of harassment
or delay or for other improper purposes.
[T]he fact that information later found material was not disclosed cannot, by itself,
satisfy the deceptive intent element of inequitable conduct."). Mistake or negligence, even
gross negligence, does not support a ruling of inequitable conduct. Aspex Eyewear, Inc. v.
Clariti Eyewear, Inc., 605 F.3d 1305, 1316 (Fed. Cir. 2010)
Although a court may also impose costs and counsel's fees on a party seeking voluntary
dismissal of a case when that party has commenced or conducted an action in "bad faith,
vexatiously, wantonly, or for oppressive reasons" under Fed. R. Civ. [*10] P. 41(a)(2), Dow
Chemical Pacific Ltd. v. Rascator Maritime S.A., 782 F.2d 329, 344 (2d Cir. 1986) (citing F.D.
Rich Co. v. United States ex rel. Industrial Lumber Co., 417 U.S. 116, 129, 40 L. Ed. 2d 703,
94 S. Ct. 2157 (1974)), such an award is warranted only when there is "clear evidence" that the
challenged actions "are entirely without color and [are taken] for reasons of harassment or delay
or for other improper purposes." Succession Picasso v. Spedding, 1997 U.S. Dist. LEXIS 1481,
at *9 (S.D.N.Y. Feb. 11, 1997)
11
C. Defendants are not entitled to attorney’s fees from MAH ADIVSING LLC as this
is not an exceptional case. Plaintiff withdrew its infringement suit early in the
litigation and Defendants are not the prevailing party.
The determination of whether to award attorney's fees under § 285 is a two-step process.
Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1460 (Fed. Cir. 1998). A district court must first
make a factual determination that the case is exceptional. Then the district court must exercise
its discretion to decide whether an award of fees is appropriate.
Initially, the prevailing party must establish, by clear and convincing evidence, that,
under the totality of the circumstances, the case is exceptional. Beckman Instruments, Inc., v.
Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989); Eltech Systems Corp. v. PPG Industries,
Inc., 903 F.2d 805, 811 (Fed. Cir. 1990). Factors that may be considered in a determination of
exceptionality include "misconduct during litigation, vexatious or unjustified litigation, or a
frivolous suit." Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 455 (Fed. Cir.
1985) (affirming district court's determination of non-infringement and invalidity and
remanding for a determination of exceptionality). HR US LLC v. Mizco Int'l, Inc., Civil Action
No. 07-CV-2394 (DGT)(JO), 2010 U.S. Dist. LEXIS 103123, at *9 (E.D.N.Y. Sep. 28, 2010).
Defendants have failed to establish that MAH engaged in any misconduct during
litigation or engaged in vexatious or unjustified litigation or how this case is exceptional. MAH
submitted all available evidence, complied with all court orders, and was truthful before the
tribunal. The people who were not truthful were the Ouyangs who intentionally misled and
misrepresented the facts to Plaintiff and MAH.
However, a district court may, in its discretion, decline to award attorney's fees even if
a case is found to be exceptional. Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d 538, 543
(Fed. Cir. 1990) (affirming district court's denial of § 285 fees to prevailing patentee even
though the jury found willful infringement and the case was found to be exceptional) [*11];
12
J.P. Stevens Co. v. Lex Tex, Ltd., 822 F.2d 1047, 1050-53 (Fed. Cir. 1987) (affirming district
court's denial of § 285 fees to prevailing accused infringer despite finding of exceptionality).
In deciding whether or not to exercise discretion and award fees, a district court may consider
"the closeness of the question, litigation behavior, and any other factors whereby fee shifting
may serve as an instrument of justice." Nat'l Presto Indus., Inc. v. West Bend Co., 76 F.3d
1185, 1197 (Fed. Cir. 1996) (affirming district court's discretionary denial of attorney's fees
despite jury's finding of willful infringement, which was sufficient to meet the "extraordinary
case" criterion of § 285). HR US LLC v. Mizco Int'l, Inc., Civil Action No. 07-CV-2394
(DGT)(JO), 2010 U.S. Dist. LEXIS 103123, at *10-11 (E.D.N.Y. Sep. 28, 2010)
The defeat of a litigation position, even on summary judgment, does not warrant an
automatic finding that the suit was objectively baseless, all of the circumstances must be
considered. It is true that Plaintiff voluntarily dismissed the case, however, the invention
claimed in the Patent-in-suit and infringing products of Defendants are not so extremely
dissimilar as to establish, by clear and convincing evidence, that Plaintiff's and MAH’s pursuit
of the infringement claim was manifestly unreasonable.
Absent misconduct in conduct of the litigation or in securing the patent, sanctions may
be imposed against the patentee [under § 285] only if both (1) the litigation is brought in
subjective bad faith, and (2) the litigation is objectively baseless." Brooks Furniture Mfg. v.
Dutailier Int'l, Inc.., 393 F.3d 1378, 1381 (Fed. Cir. 2005). The law presumes that the assertion
of infringement of a duly, granted patent is made in good faith. Springs Willow Fashions, LP
v. Novo Indus., L.P., 323 F.3d 989, 999 (Fed. Cir. 2003). Commercial Recovery Corp. v.
Bilateral Credit Corp., LLC, 2013 U.S. Dist. LEXIS 180205, at *14 (S.D.N.Y. Dec. 19, 2013).
The payment of attorney's fees for the victor is not to be regarded as a penalty for failure
to win a patent infringement suit. The exercise of discretion in favor of such an allowance
13
should rely upon a finding of unfairness or bad faith in the conduct of the losing party, or some
other equitable consideration of similar force, which makes it grossly unjust that the winner of
the particular lawsuit is left to bear the burden of his own counsel fees which prevailing litigants
normally bear. Therefore, to obtain attorney's fees under § 285, Defendants must establish both
the underlying improper conduct and the exceptional nature of the case by clear and convincing
evidence, which they have failed to demonstrate.
A dismissal without prejudice under Rule 41, however, cannot result in a party having
prevailing party status. As the U.S. Supreme Court held long ago, when a party dismisses an
action without prejudice under Rule 41(a)(1), this dismissal "does not operat[e] as an
adjudication upon the merits . . . ." Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 396, 110
S. Ct. 2447, 110 L. Ed. 2d 359 (1990). O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC,
No. 3:12-cv-00198 (VAB), 2018 U.S. Dist. LEXIS 156931, at *13 (D. Conn. Sep. 14, 2018)
This case is not exceptional and Defendants have failed to establish any claims that
MAH misled the USPTO, or engaged in abusive or bad faith tactics. Defendants are blatant
infringers as the Patent-in-suit that comes with the presumption of validity and the assertion of
infringement of a duly, granted patent was made in good faith.
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. Courts may
determine whether a case is “exceptional” in the case-by-case exercise of their discretion,
considering the totality of the circumstances. There is no precise rule or formula for making
these determinations.
Counsel representation of good faith belief that the Patent-in-suit was valid were
confirmed by experienced patent examiners during the examination proceedings before the
14
USPTO. Defendants have not shown that they suffered a "gross injustice" as the result of
Plaintiff's prosecution of this case. It has not been held that every case of proven inequitable
conduct must result in an automatic attorney fee award. Gardco Mfg., Inc. v. Herst Lighting
Co., 820 F.2d 1209, 1215 (Fed. Cir. 1987)
D. Plaintiff’s attorney cannot be held personally liable for any attorney’s fees.
Beyond all doubt, the general rule is that the obligation of the attorney is to his client
and not to a third party Nat'l Sav. Bank v. Ward, 100 U.S. 195, 200 (1879). Under the immunity
and privilege rule, an attorney is immune and/or privileged from liability to non-clients for
conduct within the scope of their representation of their clients. An attorney is immune from
liability to non-clients arising from the attorney’s work in good faith and on behalf of his client.
This rule makes sense because an attorney owes a duty of care to his or her own client, not to
third parties.
Under New York law an attorney cannot be held liable to third parties for injuries
caused by services performed on behalf of a client or advice offered to that client, absent a
showing of fraud, collusion, or a malicious or tortious act. Farrell v. Hellen, 2004 U.S. Dist.
LEXIS 3638 (S.D.N.Y. Mar. 10, 2004). An attorney is not generally responsible for the motives
of his clients. Quintel Corp., N.V. v. Citibank, N.A., 589 F. Supp. 1235, 1245 (S.D.N.Y. 1984).
Absent a showing of fraud or collusion, or of a malicious or tortious act, an attorney is not
liable to third parties for purported injuries caused by services performed on behalf of a client
or advice offered to that client. Burger v. Brookhaven Med. Arts Bldg., 131 A.D.2d 622, 624,
516 N.Y.S.2d 705, 708 (App. Div. 1987)
The facts that Defendants have set forth are insufficient to amount to allegations of
fraud, collusion or malicious representation on the part of MAH regarding Defendants’
infringement. Further, an attorney cannot be sanctioned for pursuing a reasonable and plausible
15
claim especially when the attorney did not decline to withdraw it upon an express request by
their adversary after its likelihood of success on the merits were potentially decreased.
CONCLUSION
For the foregoing reasons, Defendants’ Motion for Attorney’s fees from MAH Advising LLC
must be denied.
Date: April 5, 2023
MAH ADVISING LLC

By: /s/ Michael A. Hurckes
One World Trade Center Suite
8500
New York, NY 10007
Tel. 917-791-0636
Fax: 929-374-1016
Bar #: 5910898
16
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Lead Creation v. Schedule A - Opp'n To Fees

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Lead Creation v. Schedule A - Opp'n To Fees

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Case 1:22-cv-10377-JMF-SDA Document 161 Filed 04/05/23 Page 1 of 16

MAH Advising LLC

One World Trade Center 3030 N. Rocky Point Drive W

Re: Lead Creation Inc. v. The Partnerships and Unincorporated Associations

Dear Justice Furman,

opposition only to Counsel’s liability in the pending sanctions motion.

MAH ADVISING LLC

By: /s/ Michael A. Hurckes

UNITED STATES DISTRICT COURT

LEAD CREATION INC., Case No.: 1:22-cv-10377

THE PARTNERSHIPS and

ATTORNEY FEES FROM MAH ADVISING LLC

Michael A. Hurckes, Esq.

TABLE OF AUTHORITIES .................................................................................................. 4

FACTUAL BACKGROUND .................................................................................................. 6

Michael A. Hurckes, Esq. of MAH Advising LLC respectfully opposes Defendants

Motion for Attorney's Fees from MAH Advising LLC.

Agreement stated that:

investigations, claims, or proceedings threatened, pending, or in progress relating in

any way to the Patent Rights.”

“(3)(c)None of Seller, any prior owner, or their respective agents or representatives

not a “continuation-in-part" application. Furthermore, there was no obligation to claim the

instances of fraud or disruption due to the inadvertent nondisclosures by MAH. Defendants

[T]he duty to disclose all information known to be material to patentability is deemed

to be satisfied if all information known to be material to patentability of any claim issued in a

misconduct resulted in the unfair benefit of receiving an unwarranted claim." Regeneron

A court's determination of inequitable conduct proceeds in two parts: the accused

have failed to establish both these factors.

3d 530, 559-560 [SDNY 2015])

cv-4 (JCH) DW]

relation to the patent’s application or validity.

already before the examiner.

Co. v. VT Int'l, 909 F. Supp. 193, 196 (S.D.N.Y. 1996)

20733, at *9 (D. Conn. Aug. 21, 1995).

actions of MAH were so devoid of merit as to result in an undisputed conclusion of impropriety.

or delay or for other improper purposes.

at *9 (S.D.N.Y. Feb. 11, 1997)

its discretion to decide whether an award of fees is appropriate.

exceptionality include "misconduct during litigation, vexatious or unjustified litigation, or a

1985) (affirming district court's determination of non-infringement and invalidity and

misrepresented the facts to Plaintiff and MAH.

of the infringement claim was manifestly unreasonable.

evidence, which they have failed to demonstrate.

infringement of a duly, granted patent was made in good faith.

determine whether a case is “exceptional” in the case-by-case exercise of their discretion,

Co., 820 F.2d 1209, 1215 (Fed. Cir. 1987)

Absent a showing of fraud or collusion, or of a malicious or tortious act, an attorney is not

516 N.Y.S.2d 705, 708 (App. Div. 1987)

fraud, collusion or malicious representation on the part of MAH regarding Defendants’

Date: April 5, 2023

MAH ADVISING LLC

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Registry Domain ID: 1950819346_DOMAIN_COM-VRSN

Updated: 2022-09-11 01:36:42 UTC

Created: 2015-08-03 16:00:46 UTC

Name: Registration Private

Organization: Domains By Proxy, LLC

Mailing Address: DomainsByProxy.com 2155 E Warner Rd, Tempe, Arizona, 85284, US

Contact Uri: https://www.godaddy.com/whois/results.aspx?domain=nibbity.com (https://www.godaddy.com/wh

Name: Registration Private

Organization: Domains By Proxy, LLC

Mailing Address: DomainsByProxy.com 2155 E Warner Rd, Tempe, Arizona, 85284, US

Contact Uri: https://www.godaddy.com/whois/results.aspx?domain=nibbity.com (https://www.godaddy.com/wh