Defendant Shine Bathrooms had already been hit with an order for default judgment and double damages in a patent case brought by Robern, Inc.  And the hits keep coming for Shine, as it was recently ordered to pay over $250,000 in attorneys’ fees under the “exceptional case” standard of 35 U.S.C. § 285.

Notably, Judge Seeborg awarded attorneys’ fees even though there had been no explicit finding of willfulness.  The opinion explains the relationship between willfulness and exceptional case fees: a finding of willfulness is “a sufficient basis” for awarding exceptional case attorneys’ fees, and “when a trial court denies attorney fees in spite of a finding of willful infringement, the court must explain why the case is not ‘exceptional.’”[1]  An express finding of willfulness is not an absolute prerequisite, however.  In Shine’s case, even though there had not been an explicit finding of willfulness in the order for default judgement, “most of the factors relevant to awarding enhanced damages—including those related to willfulness—weighed heavily against defendant.”[2]

To demonstrate that its fees were reasonable, Robern used the familiar “lodestar” method, submitting invoices and summaries showing the hours billed on various litigation tasks, as well as evidence demonstrating the reasonableness of the hourly rates.  The total amount sought was $278,880.36.  Judge Seeborg, while noting that the amount may be on the high side for a case resolved on default judgement, explained that the amount was appropriate here because the defendant had initially appeared and defended the case, necessitating substantial but reasonable work on the part of Robern’s attorneys.[3]  He did, however, apply a standard 10% “haircut” to arrive at a total fee amount of $250,992.32.[4]

Investigative Evidence Included in the Complaint.  Not mentioned in the attorneys’ fees order was the investigative-style evidence submitted as Exhibit C to the Complaint[5] that included “an anonymous letter enclosing photographs, invoices, and a sales report”[6] showing that, despite having assured Robern that it would cease selling the accused product, Shine Bathroom was actually re-labeling the accused products so that they could continue to be sold.   

Founded in 1968, Robern is now a subsidiary of Kohler Co.


Robern, Inc. v. Shine Bathrooms, Inc., Case No. 3:16-cv-00133-RS (JCS), Dkt. 80 (N.D. Cal. Jan. 28, 2019).


[1]  Robern, Inc. v. Shine Bathrooms, Inc., Case No. 3:16-cv-00133-RS (“Robern”), Dkt. 80 at 1 (N.D. Cal. Jan. 28, 2019), quoting Modine Mfg. Co. v. Allen Grp., Inc., 917 F.2d 538, 543 (Fed. Cir. 1990).

[2]  Id. at 1-2.

[3]  Id. at 2.

[4]  Id.

[5]  Robern, Dkt. 1 (N.D. Cal. Jan. 8, 2016) (“Complaint”); Robern, Dkt. 1-3.

[6]  Complaint at 4-5.