Acrylicon USA, LLC v. Silikal GMBH

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[PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 21-12853
____________________
ACRYLICON USA, LLC,
a Delaware limited liability company,
Plaintiff-Appellee
Cross-Appellant,
versus
SILIKAL GMBH & CO.,
a foreign corporation,
et al,
Defendants,
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2 Opinion of the Court 21-12853
SILIKAL GMBH,
a foreign company,
Defendant-Appellant
Cross-Appellee.
____________________
Appeals from the United States District Court
for the Northern District of Georgia
D.C. Docket No. 1:14-cv-01072-TWT
____________________
Before NEWSOM, MARCUS, Circuit Judges, and MIDDLEBROOKS, Dis-
trict Judge. ∗
MARCUS, Circuit Judge:
AcryliCon USA, LLC (“AC-USA”) and Silikal GmbH
(“Silikal”) have been fighting for years over a trade secret. This is
their third trip to our Court. The last time they were before this
Court, a panel erased some of the relief awarded to AC-USA after
a jury trial. See AcryliCon USA, LLC v. Silikal GmbH, 985 F.3d
1350, 1374–75 (11th Cir. 2021) (AcryliCon II). Specifically, we re-
versed the district court’s decision denying Silikal’s motion for
judgment as a matter of law on AC-USA’s misappropriation of
∗ Honorable Donald M. Middlebrooks, United States District Judge for the
Southern District of Florida, sitting by designation.
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21-12853 Opinion of the Court 3
trade secrets claim and vacated the damages awarded to AC-USA
on its breach of contract claim. Id. at 1366, 1374. In that opinion,
we also concluded that the “permanent” injunction the district
court had entered was, in fact, preliminary in nature (not perma-
nent) and that it necessarily dissolved because the district court did
not include it in the original final judgment. Id. at 1360 n.25.
We remanded the case to the district court to determine the
appropriate amount of attorney’s fees the prevailing party should
receive. Id. at 1374. On remand, the district court basically entered
the same amount of attorney’s fees it had originally awarded. D.E.
575 at 3. The district court also entered a “permanent” injunction
barring the use of the trade secret at issue, concluding that it was
obliged to do so by our holding in AcryliCon I. D.E. 575 at 2; D.E.
589 at 2; see AcryliCon USA, LLC v. Silikal GmbH & Co., 692 F.
App’x 613, 617 (11th Cir. 2017) (per curiam) (AcryliCon I).
As we see it, the district court misread our holdings, includ-
ing our unambiguous determination in AcryliCon II that no per-
manent injunction had been entered because the district court’s
original final judgment did not include one. See AcryliCon II, 985
F.3d at 1360 n.25. The district court could not simply “reenter” a
permanent injunction against Silikal without first making the ap-
propriate findings pursuant to Rule 65 of the Federal Rules of Civil
Procedure. Fed. R. Civ. P. 65(d). We also conclude that the district
court abused its discretion when it awarded AC-USA nearly its full
attorney’s fees even after we reversed, in AcryliCon II, significant
portions of the relief AC-USA had been previously awarded.
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4 Opinion of the Court 21-12853
We vacate and remand for further proceedings consistent
with this opinion.
I.
This dispute began with the breach of a Global Settlement
Agreement (“agreement”) between two parties that shared a trade
secret, AC-USA and Silikal. The trade secret consisted of the for-
mula for 1061 SW, a flooring resin Silikal manufactured and sold.
Under the agreement, AC-USA and its affiliate, AcryliCon Interna-
tional, Ltd. (“AC-International”), became Silikal’s exclusive distrib-
utors of 1061 SW and Silikal could not sell the resin without Acryl-
iCon’s written permission. AcryliCon II, 985 F.3d at 1357–58.
AC-USA first sued Silikal in the Northern District of Georgia
in 2014, alleging that Silikal breached the agreement by “manufac-
turing the 1061 SW resin, selling it on a global scale, and taking
credit for AcryliCon Systems in its marketing.” Id. at 1359. AC-
USA moved for partial summary judgment on its contract
claim, and for a permanent injunction barring Silikal from produc-
ing or selling 1061 SW. Id. at 1360. The district court granted AC-
USA’s motions and issued a permanent injunction against Silikal, in
part because “[p]revious counsel for [Silikal] admitted . . . at a sta-
tus conference before [the District Court] that there have been
sales of [1061 SW] in violation of the global settlement agreement”
and that Silikal did not “dispute that there [had] been a breach of
contract.” Id. at 1360–61 (alterations in original) (quotation marks
omitted).
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Silikal then filed an interlocutory appeal challenging the en-
try of a permanent injunction. Silikal argued that the district court
erred by (1) denying its motion to dismiss for lack of personal juris-
diction and (2) entering a permanent injunction. AcryliCon I, 692
F. App’x at 615. We declined to exercise our pendent appellate ju-
risdiction to consider Silikal’s personal jurisdiction argument on in-
terlocutory appeal. Id. Although we acknowledged that AC-USA
did not follow the agreement’s pre-suit notice provisions to perfec-
tion, we still upheld the injunction, characterizing it as both “pre-
liminary” and “permanent” in nature at different points in the opin-
ion. Id. at 617–18.
While AcryliCon I (which addressed primarily the district
court’s decision to exercise its equitable power and enter an injunc-
tion) was pending in this Court, the case went to trial before a jury
on AC-USA’s legal claims. Of the original seven claims, only two
were submitted to the jury: the damages amount on the common
law breach of contract claim and a misappropriation of trade se-
crets claim under the Georgia Trade Secrets Act of 1990. 1 Acryl-
iCon II, 985 F.3d at 1362. See GA. CODE ANN. §§ 10-1-760–767
(2020). A jury awarded AC-USA damages in the total amount of
$1.5 million on each of the two claims, and the district court
awarded AC-USA an additional $3 million in punitive damages on
1 Silikal moved for judgment as a matter of law on all of AC-USA’s claims and
AC-USA responded by withdrawing five of the seven claims. The district
court granted Silikal’s motion as to those five claims. AcryliCon II, 985 F.3d
at 1361–62.
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6 Opinion of the Court 21-12853
the misappropriation claim. AcryliCon II, 985 F.3d at 1362. The
district court later denied Silikal’s post-verdict motion for judg-
ment as a matter of law on the misappropriation and contract
claims and entered final judgment for AC-USA in the amount of
$5,861,415 -- $4.5 million in damages and $1,361,415 in attorney’s
fees. Id. at 1363, 1368. Notably, the district court’s final judgment
did not include the entry of any injunctive relief. D.E. 449; Acryl-
iCon II, 985 F.3d at 1360 n.25.
Silikal appealed the district court’s judgment. Among other
things, Silikal argued that the district court’s $1.5 million damages
judgment was only for the misappropriation claim and not for the
contract claim. AC-USA disagreed, claiming that the judgment
awarded the same total sum of $1.5 million for both the misappro-
priation and contract claims. Id. at 1363. Finding the judgment
ambiguous, we issued a limited remand while retaining jurisdic-
tion, instructing the district court to clarify its judgment. Id. The
district court promptly entered a revised final judgment, which
clarified that each claim was an independent ground for the $1.5
million award. D.E. 543.
Silikal appealed the trial court’s revised final judgment,
which resulted in our opinion in AcryliCon II. We reached four
conclusions relevant to this (the third) appeal. First, the Court held
that AC-USA failed, as a matter of law, to prove its misappropria-
tion claim and, therefore, reversed the district court’s judgment en-
tered in favor of AC-USA on that count. AC-USA could not estab-
lish that Silikal misappropriated the trade secrets because, under
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Georgia law, the secret must have been acquired under circum-
stances giving rise to a duty to maintain its secrecy. Id. at 1367. At
most, the evidence showed that Silikal owed such a duty to AC-
International, but not to the party-plaintiff in the case, AC-USA. Id.
Second, we reversed the district court’s judgment that the
$1.5 million damage award could be sustained by the jury’s verdict
on the contract claim once we reversed the district court on the
misappropriation claim. We held that, as a matter of law, AC-USA
had failed to prove actual damages on its consequential damages
theory. Id. at 1370. AC-USA could, however, recover nominal
damages because Silikal did breach the contract. Id. at 1368. At
this point, only a nominal damages award and attorney’s fees re-
mained.
Third, we concluded that AC-USA is entitled to attorney’s
fees on its breach of contract claim notwithstanding that it failed to
prove actual damages because, under Georgia law, even a nominal
damages award would still materially alter the legal relationship
between the parties, so that AC-USA was the “prevailing party.”
Id. at 1375. We vacated the $1,361,415 attorney’s fees award, how-
ever, and remanded the case to the district court for determination
of an appropriate attorney’s fee consistent with the opinion. Id.
Finally, we held that the “permanent” injunction issued by
the district court and affirmed by this Court earlier in the case was
actually preliminary in nature and had “dissolved” when the dis-
trict court did not include a permanent injunction in its final judg-
ment. Id. at 1360 n.25. We remanded the case to the district court
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8 Opinion of the Court 21-12853
“for a determination of the sum of nominal damages and attorney’s
fees to which AC-USA is entitled.” Id. at 1375.
On remand, the district court explained that it understood
AcryliCon II this way: “Although the Eleventh Circuit vacated the
judgment under the Georgia Trade Secrets Act, this did not disturb
this Court’s finding that AcryliCon was also entitled to recover its
attorneys’ fees and costs under the Global Settlement Agreement.”
D.E. 575 at 3. Notwithstanding that we directed that judgment be
entered for Silikal on the misappropriation claim and held that AC-
USA could not prove actual damages on its breach of contract claim
as a matter of law, the district court awarded nearly the same
amount of attorney’s fees on remand, subtracting only $66,396.15
for the expenses of AC-USA’s damages expert. D.E. 589 at 2; D.E.
575 at 3. Next, the district court acknowledged that “Silikal suc-
ceeded in getting the Court of Appeals to vacate the judgment
awarding the Plaintiff compensatory and punitive damages.” D.E.
575 at 3. Therefore, it reasoned, Silikal “was the prevailing party
on the appeal under the terms of the [agreement]” and was entitled
to $485,325.00 in attorney’s fees for its successful appeal. Id. at 3–
4.
Last, the district court awarded $100 in nominal damages to
AC-USA for its successful breach of contract claim and entered a
permanent injunction enjoining Silikal “from disclosing or using in
any way, directly or indirectly, the 1061 SW resin or the formula
for the 1061 SW resin and from selling or distributing the 1061 SW
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21-12853 Opinion of the Court 9
resin to anyone other than the Plaintiff, unless the Plaintiff consents
otherwise in writing.” D.E. 589 at 1–2.
The parties timely cross-appeal. AC-USA appeals the award
of appellate attorney’s fees to Silikal, and Silikal appeals the entry
of a permanent injunction and the amount of attorney’s fees
awarded to AC-USA. Silikal also asks us to reassign the case to a
different judge.
II.
We review de novo the district court’s interpretation of our
mandate. Cox Enters., Inc. v. News-Journal Corp., 794 F.3d 1259,
1272 (11th Cir. 2015). We review fees and costs awards for abuse
of discretion. Yellow Pages Photos, Inc. v. Ziplocal, LP, 846 F.3d
1159, 1163 (11th Cir. 2017). A “district court by definition abuses
its discretion when it makes an error of law.” Quintana v. Jenne,
414 F.3d 1306, 1309 (11th Cir. 2005) (quotation marks omitted).
And we review de novo a district court’s interpretation of a con-
tract’s prevailing-party, fee-shifting provision. Frankenmuth Mut.
Ins. Co. v. Escambia Cnty., 289 F.3d 723, 728 (11th Cir. 2002).
A.
We begin with the district court’s entry of a permanent in-
junction. The long history of this case and its trips back and forth
to our Court have created some confusion about whether a perma-
nent injunction was originally entered in this case. We do our best
to clear it up now.
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In February 2016, the district court “permanently enjoined”
Silikal from “disclosing or using in any way, directly or indirectly,
the 1061 SW resin or the formula for the 1061 SW resin and from
selling or distributing the 1061 SW resin to anyone other than the
Plaintiff, unless the Plaintiff consents otherwise in writing.” D.E.
219 at 9 (emphasis added). Silikal took an interlocutory appeal of
that order. We affirmed the injunction, calling it alternatively “pre-
liminary” and “permanent” from one sentence to the next. Acryl-
iCon I, 692 Fed. App’x. at 617–18. That was not a model of clarity
for the district court or the parties.
But when the district court entered its original final judg-
ment on August 16, 2017, the order made no mention of injunctive
relief at all. See generally D.E. 449. Therefore, we clarified in
AcryliCon II that “[w]hile the District Court called the injunction
permanent, it was in fact preliminary. The injunction therefore
dissolved when the Court entered its final judgment.” 985 F.3d at
1360 n.25. We explained our ruling this way:
A preliminary injunction only becomes a permanent
injunction when the district court includes a perma-
nent injunction in its final judgment. See Associated
Builders & Contractors Fla. E. Coast Chapter v. Mi-
ami-Dade Cnty., 594 F.3d 1321, 1323–24 (11th Cir.
2010) (per curiam) (“Once an order of permanent in-
junction is entered, any preliminary injunction
merges with it . . . .”).
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Here, the District Court entered the injunction
against Silikal when it granted AC-USA’s partial mo-
tion for summary judgment on the Contract claim.
The Court’s entry of summary judgment decided
only the issue of liability, not damages. For that rea-
son, it was not a final judgment, and the injunction
was preliminary. See Fort v. Roadway Express, Inc.,
746 F.2d 744, 747 (11th Cir. 1984) (“A final judgment
is generally recognized as being an order of the court
which ‘leaves nothing for the court to do but execute
on the judgment.’”) (citation omitted); Warren Pub-
lishing, Inc., v. Microdos Data Corp., 115 F.3d 1509,
1511 n.1 (11th Cir. 1997) (en banc); see also Liberty
Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 742 (1976). The
Court did not include a permanent injunction in its
final judgment, and the preliminary injunction there-
fore dissolved when the Court entered its final judg-
ment. AC-USA has not filed a cross-appeal challeng-
ing the Court’s failure to include a permanent injunc-
tion in its final judgment, so we will not address the
issue on appeal.
Id.Thus, it was the law of the case that no permanent injunc-
tion against Silikal had ever been entered by the district court. See
This That & the Other Gift & Tobacco, Inc. v. Cobb Cnty., 439
F.3d 1275, 1283 (11th Cir. 2006) (quotation marks omitted) (“Under
the ‘law of the case’ doctrine, the findings of fact and conclusions
of law by an appellate court are generally binding in all subsequent
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12 Opinion of the Court 21-12853
proceedings in the same case in the trial court or on a later ap-
peal.”). 2 Nonetheless, when, on remand from AcryliCon II, AC-
USA asked the district court to “reaffirm its permanent injunction,”
see D.E. 549 at 3, the district court agreed, reasoning:
reentering the permanent injunction is not incon-
sistent with the mandate of AcryliCon II and not reen-
tering the injunction would be inconsistent with the
mandate of AcryliCon I. Therefore, the Plaintiff’s
Motion for Permanent Injunction [Doc. 569] is
GRANTED.
D.E. 575 at 2. The district court’s interpretation of the interplay
between our two previous opinions amounts to legal error. Acryl-
iCon II made it crystal clear that no permanent injunction had been
entered once the district court entered its final judgment. Thus,
we must vacate the district court’s entry of a permanent injunction.
What’s more, even if the district court had not made a mis-
take of law, it failed to make the requisite findings under Federal
Rules of Civil Procedure 60 and 65. Rule 60 allows a federal district
court to give “relief from a judgment or order,” usually by
2 Even if it were the law of the case after AcryliCon I that the entry of a per-
manent injunction had been affirmed -- and that is not at all clear from our
ruling in AcryliCon I -- neither the AcryliCon II panel nor this panel would be
bound by that determination because clear legal error is an exception to the
law-of-the-case doctrine. See Jenkins Brick Co. v. Bremer, 321 F.3d 1366,
1370–71 (11th Cir. 2003) (“Indeed, the [Supreme] Court made clear that the
‘clear error’ exception to the law-of-the-case doctrine applies to legal errors.”).
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21-12853 Opinion of the Court 13
amending that judgment or order. Fed. R. Civ. P. 60 (capitalization
omitted). Rule 65, in turn, lays out the procedural requirements
and legal and factual findings a district court must make before it
may enter any injunctive relief. Fed. R. Civ. P. 65.
First, Rule 60. As is clear by now, no permanent injunction
was entered when the district court entered its first final judgment
on August 16, 2017. Nor was the question of whether a permanent
injunction had been properly entered by the district court before
our Court. The panel put it this way: “AC-USA has not filed a cross-
appeal challenging the Court’s failure to include a permanent in-
junction in its final judgment, so we will not address the issue on
appeal.” AcryliCon II, 985 F.3d at 1360 n.25. So, if the district court
wanted to enter a permanent injunction in 2021 -- five years after it
entered the preliminary injunction -- it needed to amend its original
final judgment.
Although AC-USA posits that the district court could have
done so using Rule 60(a) of the Federal Rules of Civil Procedure to
provide injunctive relief, as we see it, Rule 60(b) is the only govern-
ing rule arguably applicable here. Rule 60(a) provides that “[t]he
court may correct a clerical mistake or a mistake arising from over-
sight or omission whenever one is found in a judgment.” Fed. R.
Civ. P. 60(a). Rule 60(a) does not fit these circumstances because
this is not nearly a “clerical mistake.” “While the district court may
correct clerical errors to reflect what was intended at the time of
ruling, ‘[e]rrors that affect substantial rights of the parties . . . are
beyond the scope of rule 60(a).’” Weeks v. Jones, 100 F.3d 124, 128
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14 Opinion of the Court 21-12853
(11th Cir. 1996). See also Burton v. Johnson, 975 F.2d 690, 694 (10th
Cir. 1992) (noting a district court is not permitted “to clarify a judg-
ment pursuant to Rule 60(a) to reflect a new and subsequent intent
because it perceives its original judgment to be incorrect”). The
substantive rights of the parties are most assuredly affected by the
entry of a permanent injunction limiting what Silikal could do with
its 1061 SW resin.
Rule 60(b), in turn, reads this way:
On motion and just terms, the court may relieve a
party or its legal representative from a final judgment,
order, or proceeding for the following reasons:
(1) mistake, inadvertence, surprise, or excusable ne-
glect;
(2) newly discovered evidence that, with reasonable
diligence, could not have been discovered in time to
move for a new trial under Rule 59(b);
(3) fraud (whether previously called intrinsic or ex-
trinsic), misrepresentation, or misconduct by an op-
posing party;
(4) the judgment is void;
(5) the judgment has been satisfied, released, or dis-
charged; it is based on an earlier judgment that has
been reversed or vacated; or applying it prospectively
is no longer equitable; or
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21-12853 Opinion of the Court 15
(6) any other reason that justifies relief.
Fed. R. Civ. P. 60(b). A motion under subsections (1), (2), or (3)
must be made within a year after the entry of the judgment. Fed.
R. Civ. P. 60(c)(1). AC-USA seeks to amend a judgment entered in
2017; at the earliest, its motion to amend under Rule 60(b) would
be filed in 2022 -- far too late for relief under the Rule. 3 Moreover,
AC-USA is not claiming that the judgment is void (Rule 60(b)(4))
or, pursuant to Rule 60(b)(5), that the judgment has been satisfied,
released, or discharged.
That leaves only Rule 60(b)(6), pursuant to which a motion
must be made “within a reasonable time.” Fed. R. Civ. P. 60(c)(1).
Rule 60(b)(6) is a catchall provision that is available only when
Rules 60(b)(1) through (b)(5) are inapplicable. Kemp v. United
States, 142 S. Ct. 1856, 1861 (2022). And even then, “extraordinary
circumstances” must justify relief. Id. (quotation marks omitted).
AC-USA did not move for Rule 60(b)(6) relief in district court and
its availability was not briefed in this Court, so we express no opin-
ion as to whether the district court could or should grant such relief
under Rule 60(b)(6).
3 Rule 60(c)(1)’s one-year time limit is not extended by the pendency of an
appeal. Transit Cas. Co. v. Sec. Trust Co., 441 F.2d 788, 791 (5th Cir. 1971).
See also Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en
banc) (adopting as binding precedent all decisions of the former Fifth Circuit
handed down prior to October 1, 1981).
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16 Opinion of the Court 21-12853
We reject, however, Silikal’s claim that a newly entered per-
manent injunction was barred by this Court’s holding in AcryliCon
II. It accurately cites the mandate rule, which “is a specific applica-
tion of the ‘law of the case’ doctrine which provides that subse-
quent courts are bound by any findings of fact or conclusions of
law made by the court of appeals in a prior appeal of the same
case.” Friedman v. Mkt. St. Mortg. Corp., 520 F.3d 1289, 1294 (11th
Cir. 2008) (quotation marks omitted). But the mandate rule does
not and could not extend to issues the appellate court never ad-
dressed, and thus, the district court is free to address, as a matter of
first impression, those issues not disposed of on appeal. See Cote
v. Philip Morris USA, Inc., 985 F.3d 840, 846 (11th Cir. 2021).
Moreover, the district court erred in including a permanent
injunction on remand for an additional reason -- it did not make the
required Rule 65 findings. Rule 65(d) is unambiguous in prescrib-
ing that “[e]very order granting an injunction” must “(A) state the
reasons why it issued; (B) state its terms specifically; and (C) de-
scribe in reasonable detail -- and not by referring to the complaint
or other document -- the act or acts restrained or required.” Fed.
R. Civ. P. 65(d)(1). In considering whether to grant a perma-
nent injunction, a court must address whether the plaintiff has
demonstrated the following:
(1) [the plaintiff] has suffered an irreparable injury;
(2) remedies available at law, such as monetary dam-
ages, are inadequate to compensate for that injury;
(3) considering the balance of hardships between the
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21-12853 Opinion of the Court 17
plaintiff and defendant, a remedy in equity is war-
ranted; and (4) the public interest would not be dis-
served by a permanent injunction.
Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200,
1208 (11th Cir. 2008) (citing eBay Inc. v. MercExchange, L.L.C., 547
U.S. 388, 391 (2006)).
The district court made many, if not all, of these findings
when it entered the February 2016 preliminary injunction. D.E.
219 at 6–7. But as we have held, that injunction dissolved when it
was not included in the district court’s original final judgment; and
there were no Rule 65 findings made in its final judgment after re-
mand. D.E. 575. If the district court intended to enter a permanent
injunction, it had to make the appropriate findings of fact and draw
the proper conclusions of law.
In short, the district court erred by including a permanent
injunction for three reasons. It mistakenly believed that the entry
of an injunction was required by the mandate in AcryliCon I; it pro-
vided no basis for amending its original final judgment four years
later pursuant to Rule 60(b)(6); and it did not make the requisite
Rule 65 findings. If AC-USA moves the district court and the court
intends to amend the judgment to enter a permanent injunction on
remand, the district court must do so in accordance with the re-
quirements found in Rule 60(b)(6) and Rule 65.
B.
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18 Opinion of the Court 21-12853
Next, we consider Silikal’s claim that the district court
abused its discretion when it awarded AC-USA nearly the full
amount of attorney’s fees it had sought, even after we reversed sig-
nificant portions of AC-USA’s relief in AcryliCon II. Since the dis-
trict court failed on remand to separate out what portion of the
attorney’s fees were fairly attributable to each claim, it committed
legal error under Georgia law and abused its discretion. See Man-
aged Care Advisory Grp., LLC v. CIGNA Healthcare, Inc., 939 F.3d
1145, 1153 (11th Cir. 2019) (quotation marks omitted) (noting that
“[a]n error of law is an abuse of discretion per se”).
To refresh: After trial, the district court awarded AC-USA
$1,361,415 in attorney’s fees for its success on the breach of con-
tract claim and the misappropriation claim, for obtaining $4.5 mil-
lion in total damages, and for winning a permanent injunction. In
AcryliCon II, however, we concluded that AC-USA’s misappropri-
ation claim failed as a matter of law, that it was entitled to only
nominal damages on its breach of contract claim, and that no in-
junction had been entered. Thus, we vacated the attorney’s fee
award and remanded for a new determination of legal fees based
on a profoundly different legal landscape. The district court then
awarded AC-USA $1,295,018.89 in attorney’s fees, reducing the
prior award by only $66,396.15 for the expenses of the AC-USA’s
damages expert. D.E. 589 at 2; D.E. 575 at 3.
Under the “well settled law” of Georgia, “a ‘lump sum’ re-
covery for fees associated with claims on which a litigant does not
prevail is not authorized.” Huggins v. Chapin, 233 Ga. App. 109,
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109 (1998) (citing United Cos. Lending Corp. v. Peacock, 267 Ga.
145 (1996)). A court awarding attorney’s fees must have sufficient
evidence “to distinguish between time and expenses attributable to
the successful [ ] claim and time and expenses attributable to [an
attorney’s] other unsuccessful claims.” S. Cellular Telecom v.
Banks, 209 Ga. App. 401, 402 (1993). Where previous relief has
been vacated on appeal, Georgia’s courts have vacated the award
of attorney’s fees and required the trial court to “conduct an evi-
dentiary hearing and apportion the attorney fees award to the
amount attributable only to claims upon which [the plaintiff] pre-
vailed.” Internal Med. All., LLC v. Budell, 290 Ga. App. 231, 240
(2008). We’ve applied essentially the same requirement when eval-
uating attorney’s fee awards under federal law. Beach Blitz Co. v.
City of Miami Beach, 13 F.4th 1289, 1293 (11th Cir. 2021) (directing
the district court on remand to determine what portion of the fees
incurred is fairly attributable to defending against each claim and
to exclude fees incurred in defending on the non-frivolous claim
from the ultimate fee award).
The district court awarded an impermissible “lump sum” on
remand. It wrote that “AcryliCon’s entitlement to attorneys’ fees
and costs was not changed by the Eleventh Circuit’s ruling in Acryl-
iCon II,” but it included no analysis about how much of the approx-
imately $1.3 million fee award was attributable to counsel’s work
on the breach of contract claim (for which AC-USA only recovered
nominal damages), and how much of AC-USA’s work was attribut-
able to the misappropriation claim, which it lost. D.E. 575 at 2–3.
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20 Opinion of the Court 21-12853
Nor did AC-USA submit that information to the district court. In
its motion for entry of judgment after remand, AC-USA simply re-
ferred to its previous motion and briefing on costs and fees and ar-
gued that AcryliCon II did not change its entitlement to attorney’s
fees. D.E. 549 at 4. It offered to “comply with any direction from
the Court” if the district court chose “to employ a different process
as to an award of fees and costs[.]” Id. at 5. This is backwards. The
fee applicant bears the burden of proving the amount of attorney’s
fees expended and also the reasonableness of those fees. See Cotto
L. Grp., LLC v. Benevidez, 362 Ga. App. 850, 860 (2022); see also
Williamson v. Harvey Smith, Inc., 246 Ga. App. 745, 750 (2000) (ex-
plaining that the party seeking fees has “the burden of proof and
must segregate out the hours that are recoverable from those hours
not recoverable”) (quotation marks and citation omitted).
We agree with Silikal that AC-USA’s burden was not met
here. On this record, we cannot tell, for example, how many hours
AC-USA’s counsel spent prosecuting its breach of contract case as
opposed to how much time counsel spent on the failed misappro-
priation claim. This may be important in fashioning an appropriate
fee award because early in this long litigation, Silikal admitted to a
technical breach of the settlement agreement and offered to pay a
judgment of $152,000 in damages and an additional $228,000 in at-
torney’s fees. D.E. 47. AC-USA is left, then, after years of litigation
and appeals, with only a finding of liability on the contract claim
(under which Silikal admitted its liability years ago) and $100 in
nominal damages -- $151,900 below what Silikal initially offered.
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21-12853 Opinion of the Court 21
As Silikal puts it, “the trial produced literally no relief to AC-USA.”
Silikal Br. at 33. Even if the amount of attorney’s fees would be
substantively reasonable based on the remaining relief after Acryl-
iCon II, the bottom line is that the district court must still “provide
this Court with a yardstick by which we may judge whether the
award is reasonable.” See Huggins, 233 Ga. App. at 110.
AC-USA does not dispute its burden, nor that the district
court must apportion fees between successful and unsuccessful
claims, but rather it argues that the breach of contract claim and
the misappropriation claim were “so similar that it would be too
difficult to separate the hours spent on each[.]” Krayev v. Johnson,
327 Ga. App. 213, 223 (2014) (quotation marks omitted). See AC-
USA Br. at 16. It is true that, where the work performed on each
claim substantially overlaps with the other, a court may base its
award, at least in part, on the unsuccessful claim. See Huggins, 233
Ga. App. at 110. The district court, however, made no such find-
ing. 4
4 We note, preliminarily, that it may not be so easy to establish that the two
claims are “intertwined.” See Huggins, 233 Ga. App. at 110. Silikal conceded
its breach of contract early in the litigation; the breach of contract claim is
governed by the agreement between the parties, while the misappropriation
claim is a statutory claim governed by Georgia law, and the misappropriation
claim requires AC-USA to prove that the information is a “trade secret” and
that Silikal “misappropriated” that trade secret. See GA. CODE ANN. § 10-1-
760–767. (2020).
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22 Opinion of the Court 21-12853
The district court abused its discretion by failing to deter-
mine what portion of the attorney’s fees incurred was fairly at-
tributable to the successful breach of contract claim as opposed to
the unsuccessful misappropriation claim. On remand, the district
court must apportion the attorney’s fees between the two claims
based on AC-USA’s specific and detailed billing records or conclude
-- based on the evidence -- that it would be impracticable in whole
or in part to separate the legal work performed on the various
claims.
C.
The district court also awarded attorney’s fees to Silikal for
its successful appeal in AcryliCon II. The trial court offered this
rationale: “Silikal succeeded in getting the Court of Appeals to va-
cate the judgment awarding the Plaintiff compensatory and puni-
tive damages. Therefore, the Defendant was the prevailing party
on the appeal under the terms of the Global Settlement Agree-
ment.” D.E. 575 at 3. AC-USA, as cross-appellant, appeals the
$485,325.00 fee award because, it argues, the settlement agreement
contemplates that there could be only one prevailing party -- and
that is AC-USA. We agree with AC-USA that Silikal is not a pre-
vailing party, albeit for a different reason, and reverse the district
court’s award of appellate attorney’s fees.
The relevant provision of the agreement between the par-
ties reads this way:
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21-12853 Opinion of the Court 23
If legal proceedings are commenced in connection
with this Settlement Agreement, the Settling Party or
Parties that do not prevail in such legal proceedings
shall pay the reasonable attorneys’ fees and other
costs and expenses, including investigation costs, in-
curred by the prevailing party in such legal proceed-
ings.
D.E. 561-1 ¶ 16. AC-USA hangs its hat on the agreement’s use of
the term “the” prevailing party, arguing that the agreement allows
for only one party that would be entitled to fees. It also claims that,
even though the agreement uses the plural “legal proceedings,” the
trial and numerous appeals were all part of the same legal proceed-
ing, for which there could be only one prevailing party. Silikal ar-
gues the exact opposite. It claims that AcryliCon II was a separate
legal proceeding “because that appeal was ‘authorized or sanc-
tioned by law’ and was brought by Silikal in this Court when it filed
its appeal.” Silikal Reply Br. at 30. And because Silikal “prevailed”
in AcryliCon II, it is also “the prevailing party.” Id. at 27.
But before reaching the issue of contractual interpretation
to which the parties direct us, we consider whether Silikal was a
“prevailing party” at all. Under Georgia law, Silikal is not a prevail-
ing party and therefore is not entitled to attorney’s fees, even if its
interpretation that the agreement allows for multiple prevailing
parties is otherwise correct. In Benchmark Builders, Inc., v.
Schultz, the Supreme Court of Georgia interpreted a contractual
fee-shifting clause like the one at issue here. See 294 Ga. 12, 13
(2013). The court reasoned that that clause entitled “the prevailing
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24 Opinion of the Court 21-12853
party” to “recover reasonable attorney’s fees from the other party.”
Id. (quotation marks omitted). The court explained, “[u]nlike
plaintiffs who typically must obtain some affirmative relief on their
claim to be deemed the ‘prevailing party,’ . . . defendants prevail
by not having any relief imposed against them.” Id. at 14 (emphasis
added). Even if we assume that AcryliCon II constituted a separate
legal proceeding, Silikal cannot be considered a prevailing party un-
der Georgia law because this Court held that AC-USA was entitled
to nominal damages on its contract claim. And, as we explained in
that opinion, an award of nominal damages standing alone is suffi-
cient to materially alter the legal relationship between the parties
by modifying the defendant’s behavior in a way that directly bene-
fits the plaintiff. AcryliCon II, 985 F.3d at 1375.
Therefore, even though Silikal won substantial relief from
its appeal, it is not the “prevailing party” under the agreement be-
cause some relief was imposed against it. It should not have been
awarded attorney’s fees.
D.
Finally, we reject Silikal’s request to have this case reas-
signed on remand. It offers three reasons why the district court,
purportedly, is unable to set aside its previous views and enforce
this Court’s mandate. First, it says, the district court entered in-
junctive relief despite this Court’s express reasoning found in foot-
note 25 of AcryliCon II. Second, it notes that the district court
awarded nearly identical attorney’s fees on remand. And third, it
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21-12853 Opinion of the Court 25
suggests that the district court made some harsh comments about
Silikal’s litigation strategy.
None of these factors, nor anything else in the record, war-
rants so severe a remedy, which is “only appropriate where the trial
judge has engaged in conduct that gives rise to the appearance of
impropriety or a lack of impartiality in the mind of a reasonable
member of the public.” Comparelli v. Republica Bolivariana de
Venez., 891 F.3d 1311, 1328 (11th Cir. 2018) (quotation marks omit-
ted).
Where there is no allegation of actual bias, three factors in-
form our decision to reassign a case on remand:
(1) whether the original judge would have difficulty
putting his previous views and findings aside; (2)
whether reassignment is appropriate to preserve the
appearance of justice; (3) whether reassignment
would entail waste and duplication out of proportion
to the gains realized from reassignment.
Chudasama v. Mazda Motor Corp., 123 F.3d 1353, 1373 (11th Cir.
1997) (quotation marks and citation omitted).
The district court’s conclusion that AcryliCon I compelled
the entry of a permanent injunction on remand from AcryliCon II
was error, but it was not willful or malicious and it in no way sug-
gests that this able and experienced trial judge would have difficulty
setting aside his previous views. As we have already observed, our
opinion in AcryliCon I affirmed the preliminary injunction the
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26 Opinion of the Court 21-12853
district court initially entered, but characterized it as a “permanent
injunction” several times, as well as a “preliminary injunction” sev-
eral times -- perhaps reflecting the district court’s terminology. Alt-
hough AcryliCon II cleared up any lingering doubt about this mat-
ter, we deny the reassignment request when the district court read
our earlier decision “mistakenly, but reasonably.” See Sovereign
Mil. Hospitaller Ord. of Saint John of Jerusalem of Rhodes & of
Malta v. Fla. Priory of the Knights Hospitallers of the Sovereign
Ord. of Saint John of Jerusalem, Knights of Malta, The Ecumenical
Ord., 809 F.3d 1171, 1194 (11th Cir. 2015).
Nor does the district court’s attorney’s fee award support re-
assignment. Silikal claims this shows the district court’s “unwill-
ingness even to deal meaningfully with this case.” Silikal Br. at 40.
Although the district court needed to explain more of its work
when it awarded nearly the same amount of attorney’s fees, this
does not justify the harsh remedy of reassignment. This misstep
“seem[s] more akin to garden-variety errors of law than the kind of
direct defiance or stalemated posture that requires reassignment.”
See Sovereign, 809 F.3d at 1193 (quotation marks omitted). We
have no reason to believe the district court will not comply with
the mandate of this Court.
Finally, the district court’s comments, while barbed, do not
undermine the appearance of justice. The district court wrote, for
example, “[g]iven the Defendant’s litigation strategy of making this
case as difficult and time consuming for the Plaintiff and the Court,
it is not unfair to award both exemplary damages and attorneys’
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21-12853 Opinion of the Court 27
fees under the Georgia Trade Secrets Act.” D.E. 515 at 4. It also
wrote that “[i]n the end, the Defendant as usual talks a big game
but provides no reasonable basis for disputing the Plaintiff’s claim.
. . . Again as usual the Defendant relies upon heated rhetoric rather
than evidence.” Id. at 5. Last, the trial court characterized an ear-
lier Silikal motion as “another poorly disguised and untimely mo-
tion for summary judgment.” D.E. 344.
While these comments may evince a disdain for the litiga-
tion strategy of Silikal’s counsel, we’ve declined to reassign a case
after far sharper commentary. In Sovereign Military Hospitaller
Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida
Priory of the Knights Hospitallers of the Sovereign Order of Saint
John of Jerusalem, Knights of Malta, the Ecumenical Order, the dis-
trict court said that, “although it understood that the parties pre-
sented themselves as Christian charities, it ‘struggle[d] with the par-
ties’ characterizing themselves in that manner.’” 702 F.3d 1279,
1297 (11th Cir. 2012) (alteration in original). The district court also
remarked that members of both organizations “[were] more inter-
ested in dressing up in costumes, conferring titles on each other
and playing in a ‘weird world of princes and knights’ than in per-
forming charitable acts.” Id. Still, we did not reassign the case.
Here, the district court’s comments are unlike those found in Sov-
ereign and they are actually related to the legal merits of the case.
Id.; see also Liteky v. United States, 510 U.S. 540, 555 (1994) (hold-
ing that a judge’s impatience and annoyance did not justify disqual-
ification).
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28 Opinion of the Court 21-12853
We are confident in the district court’s ability to preside
fairly and efficiently over this case, and so we discern no reason to
reassign the matter on remand.
We VACATE the permanent injunction entered against
Silikal, VACATE the attorney’s fee award to AC-USA, and
VACATE the appellate attorney’s fee award to Silikal. We
REMAND for further proceedings consistent with this opinion, in-
cluding a determination of reasonable attorney’s fees to AC-USA.