With regard to the defendant's contention that the fee application does not allow them to distinguish to what extent it includes expenses related to the reexamination proceedings before the Patent Office, the plaintiff's attorney Robert E. Paulsen, Esq. attests in his Supplemental Affidavit dated August 25, 1995, at P 6, that the fee application does not include fees and related expenses incurred in connection with the 023 patent reexamination proceedings. The Court accepts this representation by counsel.
The Court, however, finds the plaintiff's request for fees and expenses related to the Declaratory Judgment action in Texas to be problematic. The plaintiff's contend that they are entitled to the attorneys' fees and expenses incurred in the Texas action because that action is "part and parcel" of the present action. On the other hand, the defendant contends that the plaintiff has not cited any authority to support its claim for fees and expenses incurred in the Texas action. According to Intermedics, no statute or authority permits a trial court in one lawsuit to award attorneys' fees and expenses incurred in a separate lawsuit, even if the subject matter of the two lawsuits is related.
In the Court's view, the plaintiff is not entitled to the fees and expenses incurred in the Declaratory Judgment action. The general rule seems to be that a district court may not award fees for work performed in related cases in other jurisdictions. See, e.g., Lundin v. Mecham, 299 U.S. App. D.C. 7, 980 F.2d 1450, 1461 (D.C. Cir. 1992) (attorneys' fees in related cases cannot be recovered under the Equal Access to Justice Act); Home Placement Service, Inc. v. Providence Journal Co., 739 F.2d 671, 677 (1st Cir. 1984) (denying attorneys' fees and costs incurred in a related anti-trust case between the same parties, despite the related action providing the record for the action in which the fees and costs were awarded).
The only exception to this rule is when the related action is a prior administrative or state court proceeding that is "intimately connected" with the action in which the fees are awarded, or is otherwise "necessary" to the prosecution of the claims recoverable under the statute authorizing the fees. See Lundin, 980 F.2d at 1462 (citing cases). The reason for this exception is that a federal court has jurisdiction over cases which require administrative proceedings or state court determinations before the federal action is adjudicated. However, no such jurisdiction exists over a related case treating identical issues in a different circuit. Id.
The United States Court of Appeals for the Third Circuit has expanded the above-described exception, and allows recovery of attorneys' fees and costs incurred in related proceedings if (1) the fees and expenses incurred in the related litigation "resulted in work product that was actually utilized in the instant litigation," (2) the plaintiff was not previously compensated for those fees and expenses, and (3) the time spent on the related litigation was "inextricably linked" to the issues raised in the present litigation. See Gulfstream III Assocs., Inc. v. Gulfstream Aerospace Corp., 995 F.2d 414, 420 (3d Cir. 1993); Keenan v. City of Philadelphia, 983 F.2d 459, 474 (3rd Cir. 1992).
Based on the above principles of law, the plaintiff is not entitled to the attorneys' fees or costs it incurred in the Declaratory Judgment action, even under the more liberal Third Circuit standard. The Declaratory Judgment action did not result in any work product being actually used in the patent infringement case tried before this Court, and was neither necessary nor preliminary to the adjudication of the 023 patent infringement claims prosecuted by the plaintiff here. In the Court's view, the hours spent on the Texas action by M&F and Locke Purnell attorneys were devoted to a motion to dismiss the action or transfer it to this Court. The hours were not related to work on the infringement claims which formed "the basis of the claim giving rise to the fee award." Rosario, 749 F.2d at 1004.
According to Osteonics's counsel, the present fee application includes $ 155,656.50 in fees representing approximately 793.25 hours of M&F attorney work, and $ 12,464.61 in related costs, which were incurred by the plaintiff in defending against Intermedics's Declaratory Judgement action in Texas. See the Supplemental Affidavit of Andrea L. Wayda, Esq., dated August 31, 1995, at P 7. This amount, plus any fees for law clerk and paralegal work expended in the Texas action, will be deleted from the present fee application.
4. The Amount of Attorneys' Fees.
As mentioned above, prevailing parties are entitled to reasonable hourly rates which fall within the prevailing marketplace rates in the community for similar services by lawyers of reasonably comparable skill, experience, and reputation. The emphasis is on reasonable. Cruz, 34 F.3d at 1159 (quoting Blum v. Stenson, 465 U.S. 886, 896 n.11, 104 S. Ct. 1541, 1547 n.11, 79 L. Ed. 2d 891 (1984)). The "prevailing community" the district court should look to when considering the lodestar figure is the district in which the court sits. Cruz, 34 F.3d at 1159.
The Plaintiff's counsel has initially submitted a fee application which seeks compensation for 23,851.75 hours of attorney work and 9,550.625 of law clerk and paralegal work expended on this case by M&F from August 1990 until July 26, 1995. The attorneys responsible for the majority of these hours and their hourly rates are as follows:
John A. Diaz 1632.25 hrs. @ $ 275/hr
Robert E. Paulsen 3445.75 hrs. @ $ 240/hr
Christopher A. Hughes 3003.50 hrs. @ $ 215-$ 230/hr
James W. Gould 949.50 hrs. @ $ 230/hr
Michael A. Nicodema 4821.25 hrs. @ $ 150-$ 175/hr
Andrea L. Wayda 3035.25 hrs. @ $ 125/hr
M.J. Timmons 4797.75 hrs. @ $ 125/hr
J. DiMatteo 511.00 hrs. @ $ 125/hr
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