“Several courts have held that a Rule 41(a)(2) award of fees [when a lawsuit is dismissed with prejudice] is appropriate only when there is independent statutory authority for such an award”
How later courts described this case
- “Several courts have held that a Rule 41(a)(2) award of fees [when a lawsuit is dismissed with prejudice] is appropriate only when there is independent statutory authority for such an award”
Written by the judges who cited it.
The opinion
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION AT DAYTON
SHERWOOD SENSING SOLUTIONS
LLC,
Plaintiff, Case No. 3:19-cv-366
VS.
HENNY PENNY CORPORATION, District Judge Michael J. Newman
Defendant.
ORDER: (1) GRANTING SHERWOOD’S MOTION TO VOLUNTARILY DISMISS ITS
COMPLAINT (DOC. NO. 37); (2) DISMISSING SHERWOOD’S COMPLAINT WITH
PREJUDICE; AND (3) ORDERING THE CLERK TO ENTER JUDGMENT
ACCORDINGLY
This patent infringement case is before the Court on Plaintiff Sherwood Sensing Solutions
LLC’s (“Sherwood’s”) motion to voluntarily dismiss its complaint with prejudice, under Fed. R.
Civ. P. 41(a)(2), contingent on each party bearing their own costs and fees. Doc. No. 37. The
motion is fully briefed and ripe for review. Doc. No. 39.
1.
This dispute arose from Sherwood’s claim that Defendant Henny Penny Corporation
(“Henny Penny”) was infringing on its patent to a novel food fryer. Doc. Nos. 1, 17. The merits
of that claim were resolved by the Patent Trial and Appeal Board (“PTAB”) in an /nter Partes
Review (“IPR”) proceeding. Doc. No. 38-2.! Henny Penny prevailed. Jd. at PageID 519.
Sherwood concedes that the PTAB’s order moots the complaint filed herein and moves for
voluntary dismissal of its complaint with prejudice. Doc. No. 37 at PageID 444.
' U.S. District Judge Thomas M. Rose -- to whom this case was previously assigned -- stayed this matter
pending IPR. Doc. No. 24.
Fed. R. Civ. P. 41(a)(2) requires a plaintiff to seek a court order or obtain a stipulation to
voluntarily dismiss a complaint where the opposing party has answered. The Court retains
discretion over whether to grant voluntary dismissal. See, e.g., Grover ex rel. Grover v. Eli Lily,
Co., 33 F.3d 716, 718 (6th Cir. 1994). But it is an abuse of discretion not to dismiss a complaint
when the plaintiff requests it be done with prejudice. See, e.g., Smoot v. Fox, 340 F.2d 301, 303
(6th Cir. 1964); Bridgeport Music, Inc. v. London Music, U.K., 345 F. Supp. 2d 836, 841 (M.D.
Tenn. 2004). So the relevant question here is not whether Sherwood’s complaint should be
dismissed, but how. Fed. R. Civ. P. 41(a)(2).
A dismissal with prejudice functions as an adjudication on the merits. See, e.g., Pedreira
v. Sunrise Children’s Servs., Inc., 802 F.3d 865, 870 (6th Cir. 2015). The prevailing party is
generally not entitled to attorney’s fees absent a fee shifting statute. See, e.g., Smoot v. Fox, 353
F.2d 830, 833 (6th Cir. 1965); see also Colombrito v. Kelly, 764 F.2d 122, 133 (2d Cir. 1985)
(“Several courts have held that a Rule 41(a)(2) award of fees [when a lawsuit is dismissed with
prejudice] is appropriate only when there is independent statutory authority for such an award”).
Henny Penny has one such provision potentially available: 35 U.S.C. § 285, which allows for
attorney’s fees “in exceptional cases.”
Anticipating Henny Penny will seek attorney’s fees, Sherwood requests a dismissal order
conditioned on each party bearing their own costs and fees. Doc. No. 37. Henny Penny opposes
this, noting that (1) it has not yet moved for a fee award, but (2) were it to, the Court should
conclude this case was “exceptional” under 35 U.S.C. § 285. Doc. No. 38.
The Court finds that the question of Henny Penny’s entitlement to attorney’s fees is not yet
ripe and expresses no opinion on the issue. Fed. R. Civ. P. 54(d)(2) provides that a motion for an
award of attorney’s fees “must be filed no later than 14 days after the entry of judgment.” S.D.
Ohio Civ. R. 54.2(a) requires an attorney’s fee motion be filed no “later than forty-five days after
the entry of judgment.” Because judgment has not been entered in this case, Henny Penny, at this
time, has no basis to move for a fee award. Indeed, it acknowledges that it has yet to decide to so
move. Doc. No. 38 at PageID 451. Should Henny Penny do so, the Court anticipates addressing
the issues raised by the parties at that time.
Il.
For the foregoing reasons, the Court: (1) GRANTS Sherwood’s motion to voluntarily
dismiss its complaint; (2) DISMISSES Sherwood’s complaint WITH PREJUDICE; and (3)
ORDERS the Clerk to enter judgment accordingly.
IT IS SO ORDERED.
Date: _December 3, 2021 s/Michael J. Newman
Hon. Michael J. Newman
United States District Judge