PersonalWeb Technologies, LLC et al v. Twitch Interactive, Inc., No. 5:2018cv05619 - Document 302 (N.D. Cal. 2023)
Court Description: ORDER GRANTING IN PART AND DENYING IN PART 280 AMAZON'S MOTION FOR FURTHER SUPPLEMENTAL FEES. Signed by Judge Beth Labson Freeman on 12/15/2023. (mdllc, COURT STAFF) (Filed on 12/15/2023)
Download PDF
<![CDATA[
1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 8 IN RE PERSONALWEB TECHNOLOGIES, LLC, ET AL., PATENT LITIGATION 9 AMAZON.COM, INC. And AMAZON WEB SERVICES, INC., 10 Plaintiffs, 7 United States District Court Northern District of California 11 v. 12 13 14 15 Case No. 18-md-02834-BLF Case No. 18-cv-00767-BLF Case No. 18-cv-05619-BLF ORDER GRANTING IN PART AND DENYING IN PART AMAZON’S MOTION FOR FURTHER SUPPLEMENTAL FEES PERSONALWEB TECHNOLOGIES, LLC, et al., Defendants. Re: ECF No. 880 (Case No. 18-md-02834) PERSONALWEB TECHNOLOGIES, LLC, et al., Re: ECF No. 280 (Case No. 18-cv-05619) Re: ECF No. 375 (Case No. 18-cv-00767) Plaintiffs, 16 v. 17 TWITCH INTERACTIVE, INC., Defendant. 18 19 20 Pending before the Court is Amazon.com, Inc., Amazon Web Services, Inc., and Twitch 21 Interactive, Inc.’s (collectively, “Amazon”) Motion for Further Supplemental Fees (the “Motion”). 22 See Mot., ECF No. 880.1 Amazon seeks attorney fees and costs from PersonalWeb Technologies, 23 LLC (“PersonalWeb”) for work performed between March 2021 and March 2023. See id. at 1. 24 PersonalWeb disputes the majority of the fees. See Corrected Opp’n (“Opp’n”), ECF No. 889-1. 25 The Court heard oral argument on the Motion on November 16, 2023. Having considered the 26 parties’ written submissions and oral arguments, the Court GRANTS IN PART and DENIES IN 27 28 1 All ECF citations refer to the docket of the lead case, In re PersonalWeb Technologies Patent Litigation, No. 18-md-2834 (N.D. Cal.). 1 PART the Motion, for the reasons described below. 2 I. United States District Court Northern District of California 3 BACKGROUND This multi-district litigation stems from PersonalWeb filing dozens of suits in 2018 against 4 Amazon and a bevy of its customers, in which it asserted patent infringement claims that this 5 Court has found—in an order affirmed by the Federal Circuit—were objectively baseless and not 6 reasonable when brought. See Order Re Exceptional Case 33, ECF No. 636; In re PersonalWeb 7 Techs. LLC, 85 F.4th 1148, 1154–57 (Fed. Cir. 2023). The Court granted Amazon’s motions for 8 summary judgment in two phases, and by February 3, 2020, Amazon had won on summary 9 judgment as to all claims. See ECF Nos. 394, 578. The Court entered judgment against 10 PersonalWeb in the MDL action and all member cases on October 28, 2020. See J., ECF No. 643. 11 The Court then entered an amended judgment on July 27, 2021, that incorporated fees and costs 12 awarded by the Court in orders issued on March 2, 2021, and April 19, 2021. See Am. J., ECF 13 No. 708; see also infra, at Part I(A). 14 A. 15 Amazon moved for attorney fees and costs for the first time in March 2020. See ECF No. Prior Requests for Attorney Fees and Costs 16 593. The Court granted that motion in October 2020, reasoning that the case was exceptional 17 because: 18 19 20 21 22 23 (1) PersonalWeb’s infringement claims related to Amazon S3 were objectively baseless and not reasonable when brought because they were barred due to a final judgment entered in the Texas Action; (2) PersonalWeb frequently changed its infringement positions to overcome the hurdle of the day; (3) PersonalWeb unnecessarily prolonged this litigation after claim construction foreclosed its infringement theories; (4) PersonalWeb’s conduct and positions regarding the customer cases were unreasonable; and (5) PersonalWeb submitted declarations that it should have known were not accurate. Order Re Exceptional Case 33. On March 2, 2021, following additional briefing requested by the 24 Court on whether the fees requested by Amazon were reasonable, the Court awarded Amazon over 25 $4.6 million in attorney fees and $203,300.10 in non-taxable costs for work performed from 26 January 2018 through January 2020. See First Fee Award 9, 30, ECF No. 648. 27 On March 11, 2021, Amazon filed a supplemental declaration in support of a request for 28 2 1 additional attorney fees incurred from February 2020 through February 2021. See ECF No. 649. 2 On April 19, 2021, the Court granted in part and denied in part the additional attorney fee request. 3 See Second Fee Award, ECF No. 656. With respect to one category of fees—Amazon’s work 4 related to PersonalWeb’s appeal of the Court’s final summary judgment order, for which it 5 requested $106,291.43—the Court declined to award fees while the appeal was pending, and 6 denied the request without prejudice to Amazon moving again for the same fees. See id. at 2–3. 7 After excluding this amount and applying certain other reductions to the requested fees, the Court 8 awarded Amazon $571,961.71 in fees and $11,120.97 in non-taxable costs. See id. at 4. Accordingly, the Amended Judgment entered on July 27, 2021, incorporated these fee and United States District Court Northern District of California 9 10 cost awards, as well as post-judgment interest accrued through July 14, 2021, and amounted to 11 $5,403,122.68. See Am. J. 3. PersonalWeb’s Actions Following Fee Awards 12 B. 13 The parties agree that, to date, PersonalWeb has not paid any portion of the judgment 14 entered against it. See, e.g., Mot. 10. Instead, mere days after the Court issued the second of its 15 two orders awarding fees and costs on April 19, 2021, PersonalWeb commenced two procedural 16 tracks through which it attempted to circumvent this Court’s jurisdiction over post-judgment 17 proceedings. First, on April 22, 2021, PersonalWeb took the position that it was not represented 18 by counsel with respect to Amazon’s attempts to secure or enforce any monetary award. See ECF 19 No. 661-1. Over the next 16 months, PersonalWeb continued to stymie Amazon’s efforts to 20 enforce the judgment by instructing its then-counsel to file no fewer than seven motions to 21 withdraw or substitute counsel and notices of a purported substitution of counsel—with no 22 substitute counsel ever properly identified, see ECF Nos. 674, 678, 679, 683, 688, 728, 7672— 23 until at last PersonalWeb had its new counsel file a sufficient notice of appearance on August 8, 24 2022, see ECF No. 770. Second, on April 27, 2021, PersonalWeb’s principals and secured creditors filed suit in 25 26 27 28 Amazon states that PersonalWeb’s then-counsel attempted to withdraw six times, see Mot. 6, but appears not to have counted the notice of withdrawal filed on August 2, 2022, see ECF No. 767, which the Court denied and struck for noncompliance with its prior orders, see ECF No. 769. 2 3 United States District Court Northern District of California 1 California state court to place PersonalWeb into a receivership. See ECF No. 717-2. 2 Unsurprisingly, PersonalWeb made no objection to the receivership, and the state court appointed 3 a receiver on May 10, 2021. See ECF Nos. 717-4, 717-6, 747-4. PersonalWeb then stipulated to 4 the entry in state court of an order stating that the state court possessed exclusive jurisdiction over 5 PersonalWeb’s property and assets, and enjoining PersonalWeb’s judgment holders from 6 enforcing any judgment against PersonalWeb. See ECF No. 717-6. Next, PersonalWeb 7 repeatedly attempted to use the state court’s receivership jurisdiction to assert that this Court 8 lacked jurisdiction to oversee the enforcement of its judgment, see, e.g., ECF No. 728, forcing the 9 Court to issue an order directing PersonalWeb’s counsel to obtain precise confirmation from the 10 receiver that the receiver would authorize PersonalWeb to retain and compensate counsel for the 11 ongoing proceedings in this Court, see ECF No. 760. Within one month of the Court’s order, 12 PersonalWeb provided the Court a written response from the receiver confirming that the receiver 13 was authorized to pay attorney fees for PersonalWeb’s counsel in this action and would in fact pay 14 such fees for as long as funding was available. See ECF No. 766. 15 In response to these actions, Amazon has served post-judgment discovery on 16 PersonalWeb; twice requested the Court compel compliance with its discovery requests; and 17 intervened in the state court receivership action. See Mot. 6–7; see also, e.g., Decl. of Todd R. 18 Gregorian (“Gregorian Decl.”) ¶ 22, ECF No. 873. 19 C. 20 In addition, over the course of this action, PersonalWeb has timely appealed this Court’s Appeals in This Action 21 two summary judgment rulings, its claim construction ruling, and its prior awards of attorney fees 22 and costs. See Mot. 3–6. The Federal Circuit upheld the Court’s first summary judgment ruling in 23 2020; PersonalWeb then petitioned the Supreme Court for certiorari on April 2, 2021, see 24 PersonalWeb Techs., LLC v. Patreon, Inc., No. 20-1394, 2021 WL 1298201 (S. Ct. Apr. 2, 2021), 25 and, following briefing, the Supreme Court denied certiorari in May 2022, see 142 S. Ct. 2707 26 (2022) (Mem.). PersonalWeb appealed the second summary judgment ruling and claim 27 construction ruling in March 2020, see ECF No. 587, and the Federal Circuit upheld both rulings 28 in August 2021, see ECF Nos. 709, 710. PersonalWeb also appealed the Court’s order awarding 4 United States District Court Northern District of California 1 attorney fees and costs of $5,401,625.06; the Federal Circuit affirmed that ruling on November 3, 2 2023. See In re PersonalWeb Techs. LLC, 85 F.4th at 1164. 3 D. 4 Amazon requests $2,856,570.62 in attorney fees and $193,299.37 in costs for work The Present Motion 5 performed between March 2021 and March 2023. See Not. of Revised Fees, Exh. A (“Total Fee 6 Chart”), ECF No. 914. The path to these numbers involved a series of filings. On May 5, 2023, 7 Amazon submitted declarations from counsel for Fenwick & West, LLP (“Fenwick”), Steptoe 8 Johnson LLP (“Steptoe”), and Paul Hastings LLP (“Paul Hastings”) regarding a further request for 9 supplemental fees for work performed between March 2021 and March 2023, but did not file an 10 underlying fee motion with the declarations. See Gregorian Decl.; Decl. of Steven K. Davidson 11 (“Davidson Decl.”), ECF No. 874; Declaration of Stephen B. Kinnaird (“Kinnaird Decl.”), ECF 12 No. 875. The Gregorian Declaration included a fee chart and cost chart. See Gregorian Decl., 13 Exhs. B–C, ECF Nos. 873-5, 873-6. The Court ordered Amazon to file a motion for supplemental 14 fees, see ECF No. 876, after which Amazon filed the pending Motion, although it did not include 15 further declarations or a cost chart, and its attached fee chart—which categorized the requested 16 fees into Federal Appeals (Fees); Federal Appeals (Other); Post-Judgment Enforcement; State 17 Court Judgment Enforcement; and Case Management—did not indicate total hours per category or 18 the full sum of attorney fees requested by Amazon. See Mot., Exh. A, ECF No. 880-1. The 19 Motion initially requested over $3.13 million in fees for work performed from March 2021 to 20 March 2023; $106,291.43 in previous appeal fees incurred between February 2020 and February 21 2021; and $193,605.69 in costs (which was not mentioned in the Motion, which merely referenced 22 “further supplemental . . . costs as set forth in [Amazon’s] declarations”). See Mot. 1, 10. 23 After PersonalWeb filed its opposition to the Motion, Amazon filed a notice of revisions to 24 its Motion to withdraw over $340,000 of fees and costs incurred in connection with opposing two 25 anti-SLAPP motions in state court. See Anti-SLAPP Not., ECF No. 893. The notice included a 26 revised fee chart—which used the same categories as the prior chart and still provided no totals— 27 and cost chart. See id. at Exh. B (“Final Hourly Chart”), ECF No. 893-5; Exh. C (“Cost Chart”), 28 ECF No. 893-6. Amazon then filed a reply in support of its motion, which stated in an 5 1 accompanying declaration—though not in the reply brief—that Amazon was further withdrawing 2 nearly $37,000 of attorney fees incurred in connection with litigation of alter ego issues in state 3 court, but did not include a revised fee chart reflecting the change in Amazon’s fee request. See 4 Reply, ECF No. 903; Decl. of Todd. R. Gregorian in Supp. of Reply (“Gregorian Reply Decl.”) ¶¶ 5 2–8, ECF No. 903-1. At the hearing on the Motion, the Court requested that Amazon submit a chart reflecting United States District Court Northern District of California 6 7 the total amounts it requested per fee category, and that Amazon subdivide the category of 8 “Federal Appeals (Other)” to inform the Court of the amount requested for each appeal. The 9 Court additionally instructed PersonalWeb to file a supplemental opposition detailing its 10 objections to fees incurred in federal court that PersonalWeb asserts were incurred in pursuit of 11 alter ego claims. PersonalWeb submitted its supplemental opposition on November 21, 2023, see 12 Supple. Opp’n, ECF No. 910; Amazon submitted its fee chart on November 28, 2023, see Total 13 Fee Chart; and Amazon filed a supplemental reply regarding the alter ego issue on December 5, 14 2023, see Suppl. Reply, ECF No. 919. Amazon’s Total Fee Chart divides the “Federal Appeals 15 (Other)” category into two appeals—one on the Kessler issue and the other on non-infringement 16 and claim construction—but additionally states that over $52,000 in fees previously ascribed to 17 “Federal Appeals (Other)” is in fact attributable to “Fees on Fees” (previously termed “Federal 18 Appeals (Fees)”), and that over $57,000 previously also ascribed to “Federal Appeals (Other)” is 19 attributable to the state court receivership proceedings. See Total Fee Chart 1 nn.3–4.3 Despite 20 having made large changes to the requested fee amounts in multiple categories outside of those 21 initially described as “Federal Appeals (Other),” Amazon did not submit a revised fee chart 22 informing the Court of the timekeepers and number of hours applicable to each category. 23 II. “The court in exceptional cases may award reasonable attorney fees to the prevailing 24 25 LEGAL STANDARD party.” 35 U.S.C. § 285. “District courts may determine whether a case is ‘exceptional’ in the 26 27 28 The Total Fee Chart states that these fees were previously categorized as “Federal Appeals,” but the prior charts had no such standalone category, and the Court has traced the shifting fee amounts to the “Federal Appeals (Other)” category. 6 3 United States District Court Northern District of California 1 case-by-case exercise of their discretion, considering the totality of the circumstances.” Octane 2 Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554, (2014); see also Eon-Net LP v. 3 Flagstar Bancorp, 653 F.3d 1314, 1324 (Fed. Cir. 2011) (“[W]e are mindful that the district court 4 has lived with the case and the lawyers for an extended period.”). “The legislative purpose behind 5 § 285 is to prevent a party from suffering a ‘gross injustice,’” and not to punish a party for losing. 6 Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir. 2017); see also Octane 7 Fitness, 572 U.S. at 548 (noting fees not awarded “as a penalty for failure to win a patent 8 infringement suit”) (citation omitted). Although § 285 “imposes no specific evidentiary burden, 9 much less such a high one” as a clear and convincing evidence standard, the Supreme Court has 10 noted that patent infringement litigation is generally governed by a preponderance of the evidence 11 standard. Octane Fitness, 572 U.S. at 557. The Federal Circuit has recognized that although civil litigation “often includes numerous 12 13 phases,” a case “should be viewed more as an ‘inclusive whole’ rather than as a piecemeal process 14 when analyzing fee-shifting under § 285.” Therasense, Inc. v. Becton, Dickinson & Co., 745 F.3d 15 513, 516 (Fed. Cir. 2014) (quoting Comm’r, I.N.S. v. Jean, 796 U.S. 154, 161–62 (1990)). Not 16 only does a district court possess the “inherent equitable power to make whole a party injured by 17 an egregious abuse of the judicial process,” but “Congress enacted Section 285 to codify in patent 18 cases the ‘bad faith’ equitable exception” to the general rule that parties bear their own fees and 19 costs, and to “authorize[] awards of attorney fees to prevailing defendants ‘to enable the court to 20 prevent a gross injustice to an alleged infringer.’” Mathis v. Spears, 857 F.2d 749, 758 (Fed. Cir. 21 1988) (quoting S. Rep. No. 1503, 79th Cong., 2d Sess. (1946), reprinted in 1946 U.S. Code Cong. 22 Serv. 1386, 1387). Accordingly, “§ 285 does not bar the trial court from awarding fees for the 23 entire case, including any subsequent appeals.” Therasense, 745 F.3d at 517 (citing Jean, 496 24 U.S. at 160); see also Rohm & Haas Co. v. Crystal Chem. Co., 736 F.2d 688, 692 (Fed. Cir. 1984) 25 (“Neither § 285 nor its legislative history distinguishes between awarding attorney fees in the 26 district court and in the appellate court.”). 27 III. 28 DISCUSSION Amazon now seeks $2,856,570.62 in fees and $193,299.37 in costs for work undertaken by 7 1 its attorneys between March 2021 and March 2023. See Mot. 2; Total Fee Chart 1–2. In 2 evaluating Amazon’s request, the Court divides the work into the following categories: (1) 3 Amazon’s defense of PersonalWeb’s petition for certiorari of the Federal Circuit’s decision 4 affirming the Court’s first summary judgment order and of PersonalWeb’s appeal of the Court’s 5 claim construction and second summary judgment orders; (2) Amazon’s pursuit of fees, including 6 defending the appeal of the Court’s fee award; (3) Amazon’s work to enforce the Court’s 7 judgment in federal court; and (4) Amazon’s intervention efforts in state court.4 Within each 8 category, the Court will evaluate both the recoverability of the fee category under the applicable 9 law and, if it determines that some or all of the fees are recoverable, the reasonableness of the 10 requested fees. The Court will then turn to costs. Before doing so, however, the Court notes with grave displeasure that the overriding theme United States District Court Northern District of California 11 12 of PersonalWeb’s post-judgment conduct has been one of bad-faith evasion of the Court’s 13 judgment and abuse of due process protections. PersonalWeb’s two-track strategy of attempting 14 to avoid this Court’s jurisdiction, see supra, at Part I(B), has been disgraceful, and as clear an 15 example of bad faith as any that this Court has had the displeasure of observing from the bench. 16 Yet it is but one facet of PersonalWeb’s obvious strategy of litigating this case with “obfuscation, 17 deflection and mischaracterization.” In re PersonalWeb Techs. LLC, 85 F.4th at 1162–63 (quoting 18 Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1357 (Fed. Cir. 2002)). Having noted the context in which the instant Motion arises, the Court now turns to the 19 20 recoverability and reasonableness of the fees requested by Amazon. 21 A. 22 Amazon first seeks fees based on (1) PersonalWeb’s petition for certiorari of the Federal 23 Appeals of Claim Construction and Summary Judgment Orders Circuit’s decision affirming the Court’s Kessler ruling in its first summary judgment order, see 24 25 26 27 28 The Court recognizes that Amazon has included a “case management” fee category in its various fee charts, see, e.g., Final Hourly Chart; Total Fee Chart, and that the declarations preceding the Motion discussed these fees, see Gregorian Decl. ¶ 22(e). However, Amazon’s Motion does not request case management fees. See generally Mot. The Court informed Amazon that it would not act on any fee request without a motion for further supplemental fees for the Court to consider, see ECF No. 876, and the Court accordingly does not take notice of Amazon’s case management fees. 4 8 1 ECF No. 394, as well as (2) PersonalWeb’s appeal to the Federal Circuit of the Court’s claim 2 construction ruling, see ECF No. 485, and its second summary judgment order on non- 3 infringement, see ECF No. 578. See Mot. 3–5. The Court reviews the latter category first. 4 1. Amazon requests $3,881.94 in attorney fees for work performed from March 2021 through 5 United States District Court Northern District of California Appeal of Claim Construction and Non-Infringement Orders 6 March 2023 defending PersonalWeb’s appeal of the Court’s claim construction and non- 7 infringement orders, as well as $106,291.43 in attorney fees for 169.7 hours of work that the Court 8 previously denied without prejudice prior to the Federal Circuit’s decision on appeal, for a total of 9 $110,173.37. See Total Fee Chart 1; Second Fee Award 2–3. PersonalWeb does not dispute the 10 recoverability of Amazon’s fees for this category of work,5 nor the reasonableness of counsel’s 11 fees except with respect to Amazon’s post-judgment enforcement efforts. See generally Opp’n. The Court has already found this case to be exceptional under § 285 and awarded fees for 12 13 prior work incurred in connection with the claim construction and non-infringement, and the 14 Federal Circuit has affirmed both the exceptionality finding and the awarded fees. See generally 15 Order Re Exceptional Case; see also First Fee Award 18–21; In re PersonalWeb Techs. LLC, 85 16 F.4th at 1162–63. Having found the case exceptional, so that the requested fees are recoverable, 17 the Court further finds that Amazon’s request is reasonable in light of the work performed and 18 skill required in successfully opposing PersonalWeb’s appeal on claim construction and non- 19 infringement. The Court will grant the requested attorney fees of $110,173.37. 20 2. Petition for Certiorari Regarding Kessler Ruling 21 Amazon next requests $499,017.28 in fees for its work on the Kessler issue. See Total Fee 22 Chart 1. The Court previously found that the fees Amazon incurred in connection with its motion 23 for summary judgment on claim preclusion and Kessler doctrine issues, including its defense of 24 PersonalWeb’s appeal to the Federal Circuit of the order on these issues, were recoverable under 25 35 U.S.C. § 285 because Amazon would not have incurred these fees but for the exceptional 26 27 28 Although PersonalWeb states that it opposes Amazon’s request for $612,871.22—the original amount requested for the “Federal Appeals (Other)” category, which included the claim construction and non-infringement appeal, see Gregorian Decl., Exh. B—its argument only concerns the Kessler issue. See Opp’n 8–9. 9 5 1 nature of PersonalWeb’s decision to bring claims that were “objectively baseless and clearly 2 untenable” in light of the Federal Circuit’s Kessler doctrine. See Order Re Exceptional Case 13; 3 First Fee Award 16; Second Fee Award 3–4. Amazon argues that the Court should maintain a 4 consistent approach and grant the requested fees. PersonalWeb counters that the Kessler fees are 5 not recoverable under § 285 because events subsequent to the Court’s entry of the Second Fee 6 Award—including a Delaware district court’s decision disagreeing with the Court’s Kessler 7 analysis and the Supreme Court’s call for the views of the Solicitor General regarding 8 PersonalWeb’s petition for certiorari—indicate that PersonalWeb’s Kessler position was not 9 objectively baseless, so that its conduct was not exceptional within the meaning of § 285. See 10 United States District Court Northern District of California 11 12 Opp’n 8–9. a. Recoverability In the time since PersonalWeb filed its opposition (and therefore also subsequent to the 13 events PersonalWeb characterizes as rendering its conduct unexceptional), the Federal Circuit has 14 affirmed the fees awarded by the Court in the First Fee Award and Second Fee Award, including 15 those related to Amazon’s work on PersonalWeb’s appeal to the Federal Circuit of the Court’s 16 Kessler ruling. See In re PersonalWeb Techs. LLC, 85 F.4th at 1154–62 (affirming finding that 17 case was exceptional for five reasons, one of which was that PersonalWeb’s claims were 18 objectively baseless under Kessler and should not have been brought). In its decision, the Federal 19 Circuit also held that it did not “matter that, on appeal to the Supreme Court of [the Kessler 20 ruling], Solicitor General views were sought” because “[t]his is a common occurrence.” Id. at 21 1156. Accordingly, the Court finds that Amazon’s fees incurred in relation to PersonalWeb’s 22 petition for certiorari in continued pursuit of its Kessler arguments are recoverable under § 285. 23 24 b. Reasonableness As noted above, PersonalWeb does not contest the reasonableness of Amazon’s attorney 25 fees outside of the post-judgment enforcement context. See supra, at Part III(A)(1). In reviewing 26 Amazon’s request, the Court notes that Amazon’s decision to move over $100,000 in fees from 27 the “Federal Appeals (Other)” category to the “Fees on Fees” and “State Court Receivership 28 Proceeding” categories, see supra, at Part I(D), without providing an updated chart of hours and 10 United States District Court Northern District of California 1 timekeepers, means that the Court is largely unable to determine which timekeeper hours even 2 roughly make up the $499,017.28 in fees now requested. It is not the Court’s duty to review 3 several hundreds of pages of billing sheets and determine which lines relate to which category of 4 work. It appears, however, that Amazon retained Paul Hastings to represent it before the Supreme 5 Court on this matter, and that Paul Hastings attorneys were Supreme Court specialists who did not 6 perform other work in this matter. See Gregorian Decl. ¶ 7; Kinnaird Decl. ¶¶ 1–5. Paul Hastings 7 attorneys performed 121.5 hours of work at a $1,500 hourly rate, and 37.7 hours at a $725 hourly 8 rate, for a total of $209,582.50 in fees. See Final Hourly Chart 1–2. The attorneys’ work 9 encompassed devising appellate strategy, developing legal arguments, drafting pleadings, and 10 coordinating and reviewing work. See Kinnaird Decl. ¶¶ 4(a)–(b). The Court finds the hours 11 worked by the Paul Hastings attorneys, as well as the hourly rates, to be reasonable in light of the 12 work performed and specialization and skill required for a Supreme Court practice. 13 The Court is unable to discern from Amazon’s submissions what other hours and 14 corresponding fees were incurred in connection with the petition for certiorari. The only other 15 discussion of these fees notes merely that the “Federal Appeals (Other)” category includes the 16 Supreme Court appeal as well as the Federal Circuit appeals of the Kessler ruling and the non- 17 infringement ruling, and that the tasks performed “include legal research and preparation of appeal 18 briefs and other court submissions, client correspondence, and related conferences.” Gregorian 19 Decl. ¶ 22(b). This information, without a clearer picture of the actual hours worked on the 20 petition for certiorari, does not provide the Court with a sufficient basis for a further award. See In 21 re Rembrandt Techs. LP Patent Litig., 899 F.3d 1254, 1279 (Fed. Cir. 2018) (“[A]ttorney fees 22 under § 285 are compensatory, not punitive. . . . In such a statutory sanction regime, a fee award 23 may go no further than to redress the wronged party for losses sustained.”) (alterations, quotation 24 marks, and internal citations omitted). 25 26 Accordingly, the Court will grant Amazon $209,582.50 for attorney fees incurred due to PersonalWeb’s petition for certiorari of the Kessler ruling. 27 B. 28 Amazon next requests $344,990.62 in attorney fees incurred in seeking fees, including Motions and Appeals Regarding Fee Awards 11 1 responding to PersonalWeb’s appeal of the fees previously awarded by the Court. See Mot. 5–6; 2 Total Fee Chart 1. Amazon’s initial request was for $292,505.92 for its fee appeal, but it informed 3 the Court in its Total Fee Chart that it is now including another $52,484.70 previously categorized 4 as “Federal Appeals (Other).” See Total Fee Chart 1 & n.3. PersonalWeb’s only opposition 5 argument for this category of fees was that no award should be granted while the fee appeal was 6 pending. See Opp’n 3. However, as the Court has noted, the Federal Circuit has since affirmed 7 the previous fee awards. See In re PersonalWeb Techs. LLC, 85 F.4th at 1163. 8 United States District Court Northern District of California 9 As the Court has previously held, § 285 permits recovery of fees for time spent on the issue of attorney fees. See First Fee Award 23 (citing, e.g., Central Soya Co. v. Geo. A. Hormel & 10 Co., 723 F.2d 1573, 1578 (Fed. Cir. 1983)); see also Second Fee Award 3–4. The Court has 11 determined from Amazon’s submissions that its attorneys spent 481.9 hours on the fee appeal, 12 making up the initial fee request of $292,505.92. See Final Hourly Chart 1–2. The Court is 13 unable to determine how many hours make up the additional $52,484.70 in requested fees that 14 Amazon shifted from a different category, and in any event finds 481.9 hours to be reasonable in 15 light of the work required. Accordingly, the Court will award Amazon $292,505.92 in attorney 16 fees for its work incurred in pursuing fees. 17 C. 18 Amazon requests $1,164,436.67 in fees for 1,979.4 hours of work performed before this Post-Judgment Enforcement in Federal Court 19 Court between March 2021 and March 2023 related to Amazon’s attempts to enforce the 20 Amended Judgment. See Mot. 6–7; Final Hourly Chart 1–2; Total Fee Chart 1. The work 21 encompassed in this fee request includes: 22 25 post-judgment discovery, subpoenas to related third-party entities, motion practice, case management conference statements, opposing Stubbs Alderton & Markiles LLP’s numerous motions to withdraw as counsel, other pleadings, court appearances, . . . team conferences to discuss strategy, correspondence with the clients, review of PersonalWeb and its investors’ document productions, and preparation of court submissions. 26 Gregorian Decl. ¶ 22(c). Unlike the fees discussed above, which were incurred in connection with 27 PersonalWeb’s appeals and Amazon’s pursuit of fees, see supra, at Parts III(A)–(B), the Court has 28 not previously determined whether fees Amazon incurred for post-judgment enforcement work are 23 24 12 1 recoverable in this action. Amazon argues that these fees are recoverable under § 285 because 2 they were reasonable expenses incurred in prosecuting this action, and were necessitated by 3 PersonalWeb’s bad-faith tactics. See Mot. 7. PersonalWeb challenges both the general 4 recoverability under § 285 of fees incurred for post-judgment enforcement or collection work, as 5 well as the recoverability of fees Amazon incurred by seeking post-judgment discovery in federal 6 court regarding PersonalWeb’s potential alter egos and by bringing an unsuccessful motion to 7 compel document production from third parties. See Opp’n 3–4, 9–10; Suppl. Opp’n 2–4. The 8 Court addresses these recoverability arguments in turn. 9 United States District Court Northern District of California 10 1. Recoverability of Post-Judgment Enforcement Fees – In General As the Court has previously explained, it finds that the “but for” test for fee recoverability 11 is warranted here because although the case is exceptional, PersonalWeb’s misconduct “did not so 12 infect the case that a full award, without any discernment of a causal connection between the 13 improper acts and the fees accrued,” should be granted. First Fee Award 7. That is, the Court will 14 exclude requested fees “not directly traceable to PersonalWeb’s egregious misconduct,” and 15 otherwise assess the totality of the circumstances in determining whether fee recovery is 16 appropriate under § 285. See id. at 7–8. 17 PersonalWeb argues that § 285 does not provide for the recovery of post-judgment 18 enforcement fees, but rather is intended “to compensate the prevailing party for its monetary 19 outlays in the prosecution or defense of the suit.” Opp’n 3–4 (quoting Mathis, 857 F.2d at 755). 20 The implication of PersonalWeb’s argument is that post-judgment enforcement or collection work 21 occurs after the prosecution or defense of the suit, and is therefore outside the scope of § 285. See 22 id. Amazon responds that the fees incurred in attempting to enforce the judgment must be 23 considered to be part of the “inclusive whole” of the case that must be considered in awarding fees 24 under § 285. See Reply 2–3. 25 PersonalWeb’s argument must be rejected. First, PersonalWeb’s quotation from Mathis— 26 which is the only case cited by PersonalWeb—is taken from the Court’s rejection of the argument 27 that fees were only available to prevailing patent owners (rather than any prevailing party). See 28 Mathis, 857 F.2d at 755. The thrust of the discussion in Mathis is to broaden the view of fees 13 United States District Court Northern District of California 1 recoverable under § 285, not to narrow it. See id. Further, the Federal Circuit has made clear that 2 although “[c]ivil litigation often includes numerous phases[,] . . . a case should be viewed more as 3 an ‘inclusive whole’ rather than as a piecemeal process when analyzing fee-shifting under § 285.” 4 Therasense, 745 F.3d at 516 (citing Jean, 496 U.S. at 161–62). For example, although it may be 5 true that “nothing in [§] 285, or in any other provision of the Patent Act, address[es] post- 6 judgment fees,” see Opp’n 3, it is well-settled that a party may recover fees on appeal, which, of 7 course, is generally taken only after final judgment. See Therasense, 745 F.3d at 517 (“Indeed, § 8 285 does not bar the trial court from awarding fees for the entire case, including any subsequent 9 appeals.”) (citation omitted); see also Williamson v. UNUM Life Ins. Co. of Am., 160 F.3d 1247, 10 1250 (9th Cir. 1998) (“The final judgment rule, which is embodied in 28 U.S.C. § 1291, 11 empowers the circuit courts to hear appeals from all final judgments issued by the district courts.”) 12 (citation omitted). The Court can find no principled reason to cabin post-judgment enforcement 13 work from all other categories of work for which fees are recoverable, particularly in light of the 14 Federal Circuit’s instruction to consider a case as an “inclusive whole.” See Therasense, 745 F.3d 15 at 516. Further, to deem Amazon’s post-judgment enforcement fees broadly unrecoverable under 16 § 285 would only incentivize PersonalWeb and other parties to engage in bad-faith judgment 17 evasion tactics. Such a result is at odds with the rationale for fee-shifting under § 285. See 18 Mathis, 857 F.2d at 758 (“[I]t would be inconsistent with the intent of Section 285 to limit [the] 19 prevailing-party . . . to something less than the fees and expenses to which it was subjected . . . in 20 this ‘very exceptional’ case.”). 21 In considering Amazon’s post-judgment enforcement fees incurred through its discovery 22 efforts in federal court, the Court finds that the requested fees arise out of PersonalWeb’s long 23 campaign to stymie Amazon’s recovery efforts, including by attempting to avoid service of 24 discovery requests and repeatedly filing motions to withdraw counsel without providing for 25 substitute counsel, see supra, at Part I(B), and are a continuation of the pre-judgment tactics that 26 caused the Court to determine the case exceptional and award fees. With the exception of post- 27 judgment work performed solely for the purpose of pursuing an alter ego theory against third 28 parties, which the Court discusses below, see infra, at Part III(C)(2), the Court finds that 14 1 PersonalWeb’s post-judgment delay tactics necessitated Amazon’s discovery efforts in federal 2 court, and related motion practice. Accordingly, the Court finds that that Amazon’s post- 3 judgment enforcement fees are generally recoverable under § 285 as fees incurred in connection 4 with this exceptional case and required due to PersonalWeb’s continuing bad-faith tactics. See 5 Action Star Enterp. Co., Ltd. v. KaiJet Tech. Int’l, Ltd., No. CV 12-08074, 2015 WL 12752877, at 6 *2–3 (C.D. Cal. June 24, 2015) (awarding appellate fees and noting that although appeal need not 7 be independently exceptional for fee award, defendant’s post-judgment delay in releasing escrow 8 funds was “yet another instance of . . . imposing unwarranted costs” that supported a fee award). 9 The Court now turns to PersonalWeb’s independent argument that certain post-judgment 10 United States District Court Northern District of California 11 12 enforcement fees relating to alter ego issues are not recoverable. 2. Recoverability of Post-Judgment Fees – Alter Ego Discovery PersonalWeb asserts that Amazon may not recover fees for post-judgment discovery 13 propounded in federal court related to Amazon’s potential alter ego claims because no alter ego 14 has been named in this action. See Opp’n 4–7; Suppl. Opp’n 2–4. Amazon counters that the 15 disputed fees relate to discovery requests regarding “core issues related to enforcing a judgment, 16 including PersonalWeb’s assets and liabilities, PersonalWeb’s relationship with its principals and 17 to other entities, and transfers among those persons and entities,” and that such information “is 18 necessary, for example, to trace PersonalWeb’s assets and identify potential fraudulent transfers.” 19 Suppl. Reply 1. Amazon further argues that these issues are independent of an alter ego theory, 20 even if the facts may overlap, and that the work was “necessary only because of PersonalWeb’s 21 collusion with its principals and the subpoenaed third parties to manufacture insolvency.” Id. 22 Amazon also notes that although it had deducted fees incurred in defending a declaratory 23 judgment action regarding the alter ego issue brought in state court by certain of PersonalWeb’s 24 investors, “that was a concession to the need to end fee litigation in this Court; it was not a 25 concession that PersonalWeb has any valid objection to the fees requested for work performed in 26 this case.” Id. at 3; see also Gregorian Reply Decl. ¶ 2. 27 28 The Court cannot say that fees incurred for discovery solely related to Amazon’s potential pursuit of alter ego theories in federal court are sufficiently traceable to PersonalWeb’s 15 1 misconduct, so that Amazon would not have incurred these fees but for egregious conduct by 2 PersonalWeb. Accordingly, the Court will not award fees for work solely related to alter ego 3 claims. See In re Rembrandt Techs., 899 F.3d at 1267, 1280. United States District Court Northern District of California 4 Whether Amazon’s fees for work that is relevant to both potential alter ego claims and 5 enforcement of the judgment against PersonalWeb itself is a more difficult question. PersonalWeb 6 argues that this category of work does not exist because Amazon had “actual and constructive 7 knowledge PersonalWeb lacked the assets and revenue streams to satisfy the . . . judgment” as of 8 August 2021, when Amazon appeared in the state court receivership action, so that all discovery 9 Amazon sought after January 2022 was directed at potential alter egos. See Suppl. Opp’n 2–4. 10 Amazon counters that its discovery requests focused on enforcing the judgment against 11 PersonalWeb, and that tracing PersonalWeb’s assets and transfers, for example, was relevant not 12 only to alter ego questions but also for enforcement goals such as identifying potential fraudulent 13 transfers. See Suppl. Reply 1. Amazon further states that its August 2021 appearance in the 14 receivership action did not provide it with the knowledge that PersonalWeb had no assets, and that 15 in fact it is still without a guarantee that the receiver took possession of all of PersonalWeb’s 16 assets. See id. at 3; Decl. of Todd Gregorian in Supp. of Suppl. Reply (“Gregorian Suppl. Reply 17 Decl.”) ¶ 9, ECF No. 919-1. Based on the above, and a review of the billing records identified by 18 the parties, the Court is satisfied that Amazon’s fee request includes fees for work related to both 19 judgment enforcement against PersonalWeb as well as potential alter ego claims. See, e.g., Decl. 20 of Patrick McCormick in Supp. of Suppl. Opp’n (“McCormick Suppl. Opp’n Decl.”), Exh. B, ECF 21 No. 911-2. 22 In considering the totality of the circumstances around this action, the Court finds that 23 Amazon’s post-judgment discovery efforts to locate PersonalWeb’s assets to enforce the judgment 24 are fairly traceable to PersonalWeb’s misconduct throughout this case, including, for example, 25 PersonalWeb’s months-long post-judgment endeavor to pull trial counsel out of this proceeding 26 without substitute counsel in order to become an unrepresented company and therefore unavailable 27 to the Court. See supra, at Part I(B). The Court therefore concludes that Amazon’s fees incurred 28 for post-judgment discovery not solely related to alter ego issues are recoverable under § 285. 16 United States District Court Northern District of California 1 Pursuant to the Court’s discussion with the parties during oral argument on this Motion, 2 PersonalWeb filed an itemized list of the billing entries from Fenwick and Steptoe attorneys for 3 work that PersonalWeb claims was performed in pursuit of Amazon’s alter ego theories, which it 4 claims requires a reduction of $566,411.51 in Amazon’s requested fees. See McCormick Suppl. 5 Opp’n Decl. ¶ 2; id. at Exh. B. Amazon’s supplemental reply identified a subset of those entries 6 that it asserts were solely directed to alter ego work, totaling $10,046.24 in requested fees for 18.7 7 hours of work. See Gregorian Suppl. Reply Decl., Exh. D, ECF No. 919-5. Having reviewed the 8 disputed billing entries, the Court agrees that the entries identified by Amazon relate solely to 9 work on alter ego issues. The Court has further identified the following 11 additional billing 10 entries that indicate work performed solely regarding Amazon’s potential alter ego theories, 11 totaling $8,184.90 in requested fees for 15.9 hours of work. Date Timekeeper Description 12 13 7/6/2022 Alyssa Crooke 7/8/2022 Alyssa Crooke 8/1/2022 Alyssa Crooke 9/14/2022 Alyssa Crooke 10/9/2022 Alyssa Crooke 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10/13/2022 Alyssa Crooke 10/19/2022 Alyssa Crooke 10/20/2022 Alyssa Crooke Review insiders’ production to compare with elements of alter ego theory. Review documents produced by Insiders and organize for responsiveness and relationship to alter ego theory. Review research on alter ego liability and begin reviewing Insiders’ documents for such elements. Review and categorize documents produced by insiders for alter ego motion. Review insiders’ document production for alter ego motion. Review insiders’ document production for alter ego terms. Review insiders’ document production for alter ego arguments. Review Insiders’ document production for alter ego arguments. 17 Hours Original Fee 1.3 $599.30 Adjusted Fee (Requested by Amazon) $544.70 1.5 $691.50 $628.50 0.8 $368.80 $335.20 2.4 $1,106.40 $1,005.60 1.0 $461.00 $419.00 1.0 $461.00 $419.00 0.5 $230.50 $209.50 1.7 $783.70 $712.30 1 2 3 4 5 10/26/2022 Chris Shawn Lavin 10/31/2022 Alyssa Crooke 11/15/2022 Chris Shawn Lavin 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Analyze summary memorandum and alter ego liability. Review insiders’ production for documents responsive to alter ego theory. Analyze alter ego inquiry regarding connections between PersonalWeb and PersonalWeb investors, conduct records research, and correspondence with team. Total 1.3 $1,063.40 $965.90 1.0 $461.00 3.4 $2,781.20 $2,526.20 15.9 $9,007.80 $8,184.90 $419.00 See Gregorian Suppl. Reply Decl., Exh. D. Because the Court finds that the entries identified by Amazon and those listed in the table above reflect work regarding Amazon’s potential alter ego theories for which fees are not recoverable, the Court reduces the recoverable fees by $18,231.14 for 34.6 hours of work. 3. Unsuccessful Motion to Compel Third-Party Discovery PersonalWeb initially stated in its opposition brief that it opposed “25 entries from January 2023 to May 2023 totaling $72,163 regarding [Amazon’s] unsuccessful motion to compel” documents from third parties. See Opp’n 9. At oral argument, the Court informed counsel for PersonalWeb that no discount would be provided unless PersonalWeb provided a basis for the request by identifying the billing entries and hours devoted to such work. See Nov. 16, 2023 Hr’g Tr. (“Tr.”) 12:3–14:11, ECF No. 913. PersonalWeb’s supplemental opposition and accompanying exhibits do not isolate or discuss this work. See Suppl. Opp’n. However, the billing entries identified by PersonalWeb with respect to the alter ego issue reflect work performed on the motion to compel from January 2023 to March 2023, and the Court will exercise its discretion to review the billing entries in conjunction with the challenge raised in PersonalWeb’s opposition. The Court agrees with PersonalWeb that the fees Amazon incurred in connection with the motion to compel third parties’ documents are not fairly traceable to PersonalWeb. Amazon is correct that it need not win each piecemeal motion or segment of litigation to be awarded fees. See Reply 4 & n.2. However, the fees should “bear some relation to the extent of the misconduct,” lest they become merely punitive, and the Court declines to award Amazon fees against PersonalWeb for a 18 1 motion to compel litigated against third parties. See In re Rembrandt Techs., 899 F.3d at 1279. The Court identifies the following billing entries as concerning Amazon’s motion to 2 3 compel third parties’ documents from January 2023 to March 2023, totaling $10,084.69 in 4 requested fees for 13.8 hours of work. Date Timekeeper Description 5 6 1/16/2023 Chris Shawn Lavin 1/16/2023 Chris Shawn Lavin 1/17/2023 Chris Shawn Lavin 2/15/2023 Todd Gregorian 3/20/2023 Chris Shawn Lavin 3/22/2023 Chris Shawn Lavin 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Hours Original Fee Draft proposed order to motion to joint statement to compel PersonalWeb investors, conduct records research, and correspondence with team. Discussions regarding joint statement to compel PersonalWeb investors, and conduct records research Prepare exhibits to joint statement to motion to compel, draft sealing papers, conduct legal and records research, and correspondence with team. Work on discovery issues and further relief against SAM; confer with opposing counsel re privilege log and revise related motion to compel. Analyze investors' opposition to motion to compel, prepare for and participate in meet and confer, conduct legal and records research, and correspondence and discussions with team and opposing counsel. Revise motion to compel and supporting documents, draft sealing papers, conduct legal and records research, and correspondence and discussions with team and opposing counsel. Total See McCormick Suppl. Opp’n Decl., Exh. B. 19 0.8 $860.00 Adjusted Fee (Requested by Amazon) $594.40 1.6 $1,720.00 $1,188.80 2.5 $2,687.50 $1,857.50 1.8 $2,151.00 $1,168.69 3.3 $3,547.50 $2,451.90 3.8 $4,085.00 $2,823.40 13.8 $15,051.00 $10,084.69 Accordingly, the Court will reduce the recoverable fees by $10,084.69 for 13.8 hours of 1 2 work incurred in moving to compel production from third parties between January 2023 and 3 March 2023. The Court will now review the reasonableness of Amazon’s recoverable fees, which 4 5 total—after deducting the hours and fees spent on the alter ego and motion to compel issues the 6 Court has deemed unrecoverable, see supra, at Parts III(C)(2)–(3)—$1,136,120.84 for 1,931 hours 7 of work. United States District Court Northern District of California 8 4. Reasonableness 9 The Court looks to the lodestar calculation for a presumptively reasonable fee amount. See 10 First Fee Award 8 (citing City of Burlington v. Dague, 505 U.S. 557, 562 (1992); Vogel v. Harbor 11 Plaza Center, LLC, 893 F.3d 1152, 1161 (9th Cir. 2018); Flowerider Sur, Ltd. v. Pac. Surf 12 Designs, Inc., No. 315-cv-01879, 2020 WL 5645331, at *4–6 (S.D. Cal. Sept. 22, 2020); Env’t 13 Mfg. Sols., LLC v. Peach State Labs, Inc., 274 F. Supp. 3d 1298, 1314–27 (M.D. Fla. Aug. 14, 14 2017)). The lodestar calculation is the product of the number of hours reasonably expended on the 15 litigation and the reasonably hourly rate. See id. Here, Amazon requests $1,136,120.84 in recoverable attorney fees for 1,931 hours of 16 17 work, i.e., 1,931 hours of work performed by Fenwick and Steptoe attorneys at an average hourly 18 rate of $588.36. See supra, at Parts III(C)(2)–(3). PersonalWeb argues that the Amazon’s 19 requested hourly rates for its Fenwick attorneys—which averaged $626.17 prior to the Court’s 20 deductions—“are unreasonable given counsel’s lack of experience in post-judgment enforcement 21 work.” 6 See Opp’n 10–11. PersonalWeb relies on a 2022 survey by a company called “Clio” to 22 argue that the Court should use California’s average hourly rate for collections of $295. See 23 Opp’n 9–10. The only information PersonalWeb provides about Clio is that it “conducts an 24 economic survey that includes billing rates for attorneys by state and practice area.” Decl. of 25 Patrick McCormick in Supp. of Opp’n (“McCormick Decl.”) ¶ 1 ECF No. 890-1. Amazon 26 responds that it has already substantially reduced the hourly rates for most counsel in comparison 27 28 6 PersonalWeb does not challenge the reasonableness of Steptoe’s rates. See generally Opp’n. 20 1 to the fees actually incurred; that counsel in fact has experience in handling judgment enforcement 2 matters; and that transferring the case to collections lawyers unfamiliar with the conduct on which 3 the fee request is made would have been less efficient and more costly. See Reply 4–5. In awarding fees, a reasonable hourly rate is determined by “the rate prevailing in the United States District Court Northern District of California 4 5 community for similar work performed by attorneys of comparable skill, experience, and 6 reputation.” Chalmers v. City of Los Angeles, 796 F.2d 1205, 1210–11 (9th Cir. 1986), amended 7 on other grounds, 808 F.2d 1373 (9th Cir. 1987) (citing Blum v. Stetson, 465 U.S. 886, 895 n.11 8 (1984)). The relevant community is typically the forum in which the district court sits. Camacho 9 v. Bridgeport Fin., Inc., 523 F.3d 973, 979 (9th Cir. 2008). Given these principles, the Court 10 rejects PersonalWeb’s suggestion that it use California-wide rates for collections attorneys. The 11 proper geographic situs is the Northern District of California, rather than the state as a whole, and 12 the post-judgment work at issue involved in large part motion practice and discovery that was 13 likely made more efficient by having attorneys familiar with the case performing the necessary 14 work. Further, the Court considers the case as an “inclusive whole” in awarding fees, see 15 Therasense, 745 F.3d at 516 (citation omitted), and PersonalWeb’s egregious conduct leading to 16 this fee award was made in connection with the entire intellectual property case. 17 a. Reasonable Hourly Rate The Court previously approved rates for partner J. David Hadden; partner Todd Gregorian; 18 19 associate Chieh Tung; paralegal Robert Winant; and paralegal Lawrence Gallwas for work 20 performed from 2018 to 2020, and Amazon now requests that same approved rate for those 21 individuals.7 See First Fee Award 25–26; Gregorian Decl. ¶ 5. For those Fenwick attorneys 22 whose work was not previously the subject of a fee award in this action, Amazon requests fees at a 23 discounted 2021 rate: $743.00 for associates Matthew Becker and Christopher Lavin; $714.00 for 24 associate Deena Feit; $623.00 for associate Wenbo Zhang; $419.00 for associates Su Li, Alyssa 25 26 27 28 The billing entries for Amazon’s post-judgment enforcement work also include time billed by attorneys not listed in Amazon’s Final Hourly Chart. Compare, e.g., Gregorian Suppl. Reply Decl., Exh. D, at 17 (entry by Saina Shamilov), with Final Hourly Chart (lacking column for Saina Shamilov). The Court understands that Amazon has not included the fees for such work in its request. See Gregorian Decl. ¶ 11; Suppl. Opp’n 2. 21 7 United States District Court Northern District of California 1 Crooke, and Adrian Rios; and $361 for staff attorney Michelle Waziri. See id. ¶¶ 5–6. According 2 to the 2021 American Intellectual Property Law Association’s survey, the average hourly billing 3 rate in 2020 for a partner-track attorney at a private firm in the San Francisco consolidated 4 metropolitan statistical area (“CMSA”) was $737.00, and the midpoint was $910.00. See 5 Gregorian Decl., Exh. 3, at I-49, ECF No. 873-3. The minimum average billing rate for 6 intellectual property lawyers in the San Francisco CMSA was $433.00, and the minimum median 7 was $500.00. See id. at F-26. In light of these figures, the Court finds Amazon’s requested rates 8 reasonable for work performed from March 2021 to March 2023. See Int’l Intellectual Mgmt. 9 Corp. v. Lee Yunn Enterps., No. CV 08-7587 R, 2009 WL 9137315, at *3 (C.D. Cal. Dec. 14, 10 2009) (“In intellectual property cases, federal courts routinely rely on the American Intellectual 11 Property Law Association (‘AIPLA’) economic survey results published every other year.”) 12 (citing Mathis, 857 F.2d at 754); see also First Fee Award 26 (relying on 2019 AIPLA survey). 13 b. Reasonable Hours Expended 14 PersonalWeb does not challenge the number of hours expended beyond asserting that the 15 Court should apply a 25% reduction in fees “to account for Amazon’s failure to omit” entries for 16 work “that Amazon would have performed regardless of PersonalWeb’s alleged post-judgment 17 exceptional conduct, . . . and other items such as Amazon’s failed attempt to compel production” 18 from third parties. Opp’n 10. Although the Court has previously granted percentage reductions of 19 fees in this action, it explained at the hearing that (1) those reductions were made at 20 PersonalWeb’s request and without significant opposition from Amazon and (2) PersonalWeb’s 21 current request to carve off 25% from the significant amount of work Amazon performed in post- 22 judgment discovery is too arbitrary. See Tr. 12:20–13:17. Accordingly, the Court requested that 23 PersonalWeb identify the billing entries it challenged, and has addressed those challenges and 24 deducted certain fees as unrecoverable. See supra, at Parts III(C)(2)–(3). 25 The Court additionally notes that Amazon has already discounted its fee request by 175.9 26 hours of work from 30 timekeepers across its entire fee request, used previously approved lesser 27 billing rates for several timekeepers, and used 2021 billing rates for other timekeepers for work 28 performed from 2021 to 2023. See Gregorian Decl. ¶¶ 11, 19. These choices result in a request 22 1 that is $764,774.17 less than the fees actually incurred and invoiced. See id. ¶ 19. The Court finds 2 that no additional hourly deductions are necessary following Amazon’s voluntary deductions. United States District Court Northern District of California 3 5. Conclusion Regarding Post-Judgment Enforcement in Federal Court 4 Based on the foregoing, the Court will award $1,136,120.84 in recoverable attorney fees 5 for 1,931 hours of work performed on post-judgment enforcement matters in federal court from 6 March 2021 to March 2023. 7 D. 8 Amazon requests $619,053.23 in fees incurred for work in the California state court Intervention in State Court Receivership Proceedings 9 receivership proceedings. See Mot. 7–10; Final Hourly Chart 1–2; Total Fee Chart 1. Amazon 10 originally requested over $940,000 in fees for its work in the state court proceedings, but then 11 removed $344,172,10 in its requested fees for work performed on an anti-SLAPP motion, 12 removed an additional $36,886.94 for work performed on alter ego litigation, and added 13 $57,487.80 in fees previously categorized as federal appellate fees. See Gregorian Decl., Exh. B; 14 Anti-SLAPP Not. 1; Gregorian Reply Decl. ¶ 2; Total Fee Chart 1 n.4. Amazon provided its most 15 recent hourly chart in connection with the reduction in anti-SLAPP fees; accordingly, the Court is 16 unaware of the timekeeper hour changes made to reduce the fee request by $36,886.94 or increase 17 it by $57,487.80. See Final Hourly Chart. At oral argument, Amazon indicated that the fee 18 request included work performed in connection with “intervention in the receivership action, [and] 19 certain actions we’ve had to take there, such as compelling the receiver to actually give us 20 information as another creditor of PersonalWeb, and appealing the original denial of intervention.” 21 Tr. 17:9–13. 22 As with Amazon’s request for fees for post-judgment enforcement work performed in 23 federal court, the Court has not previously determined whether these fees requested for work 24 performed in the state court receivership proceedings are recoverable. Amazon argues that these 25 fees are recoverable (1) under § 285 as an ancillary proceeding requiring work that would not have 26 been necessary but for PersonalWeb’s principals’ exceptional conduct before the Court, and (2) 27 under the interplay of Federal Rule of Civil Procedure 69, which Amazon asserts permits the 28 application of California law to the fee request, and California Code of Civil Procedure § 685.040. 23 1 See Mot. 7–9. PersonalWeb counters that the state court work was performed in post-judgment 2 proceedings for which fees are not contemplated by § 285; that Rule 69 is inapplicable; that 3 California law, even if applicable, prohibits the recovery of the attorney fees sought by Amazon; 4 that the fees are not recoverable in this venue; and that the fees were incurred in litigation against 5 entities and individuals other than PersonalWeb. See Opp’n 3–8. 6 United States District Court Northern District of California 7 1. Recoverability The Court has already rejected PersonalWeb’s overarching argument that post-judgment 8 enforcement fees—in any court—are not recoverable under § 285. See supra, at Part III(C)(1). 9 The first question at hand is therefore whether § 285 permits recovery of fees incurred for 10 Amazon’s work in the state court receivership proceeding to pursue the recognition and 11 enforcement of the Court’s Amended Judgment. As Amazon acknowledges, this question does 12 not appear to have been previously adjudicated. See Tr. 16:10–12 (“[W]e don’t have a case that is 13 on all fours under [§] 285. What we have is a collection of district courts that have applied [§] 285 14 to different post-judgment proceedings.”). 15 The Court once again takes as a starting principle the Federal Circuit’s instruction that 16 district courts should view a case as an “inclusive whole” when awarding fees under § 285, and 17 the guidance that “§ 285 does not bar the trial court from awarding fees for the entire case, 18 including any subsequent appeals.” Therasense, 745 F.3d at 516–17 (citation omitted). The 19 requested fees were incurred in a state court receivership action, and thus in a formally separate 20 case from this action. See Mot. 7. Importantly, however, the facts in this case indicate that 21 PersonalWeb—which made no objection to the receivership in a process that began within 10 days 22 of the Court’s Second Fee Award—entered the receivership in a bid to become judgment proof, 23 and indeed a preliminary injunction preventing any creditors from enforcing judgments was 24 entered just three weeks after the issuance of the Second Fee Award. See supra, at Part I(B). 25 Accordingly, in order to attempt to enforce the judgment following these actions, Amazon had 26 little choice but to move to intervene and ensure that its claim was made known to the receiver. 27 Further, counsel for Amazon has represented that Amazon can now only collect on the judgment 28 against PersonalWeb through the receivership action. See Tr. 18:23–19:8. 24 United States District Court Northern District of California 1 In PPG Industries, Inc. v. Celanese Polymer Specialties Co., Inc., the Federal Circuit 2 reasoned that a party may recover fees under § 285 for work performed in an action separate from 3 the underlying district court proceedings. See 840 F.2d 1565 (Fed. Cir. 1988). There, the 4 defendant in a patent infringement suit before the district court was forced to participate in 5 proceedings before the United States Patent and Trademark Office (“PTO”) when the plaintiff 6 sought reissue applications before the PTO. See id. at 1567–68. The Federal Circuit found that 7 the “parties and the district court clearly intended to replace the district court litigation with the 8 reissue proceedings,” so that the defendant was “forced . . . to perform in the PTO precisely the 9 same type of work [the defendant] would have performed had the case proceeded to trial,” and on 10 that basis reversed the district court’s denial of the defendant’s fees for the proceedings before the 11 PTO. Id. at 1568. Here, although the proceedings in the state court receivership do not require 12 Amazon to engage in patent infringement litigation, PersonalWeb’s use of the receivership as a 13 shield against judgment has forced Amazon to perform judgment enforcement work. Other courts 14 have found § 285 permits recovery of fees incurred to enforce a judgment or settlement agreement. 15 See Schmidt v. Zazzara, 544 F.2d 412, 414–15 (9th Cir. 1976) (affirming award of fees for motion 16 to compel performance of settlement agreement providing for entry of consent judgment where 17 other party engaged in bad-faith attempt to repudiate agreement and judgment); Fitness IQ, LLC v. 18 TV Prods. USA, Inc., No. 10-cv-2584, 2012 WL 13175920, at *5 (S.D. Cal. Sept. 14, 2012) 19 (awarding fees under § 285 for work incurred in enforcing patent settlement). 20 As the court in Fitness IQ noted, the Federal Circuit has noted that where a party seeks 21 fees under § 285 for nonpatent issues in a patent litigation, the nonpatent issues should be “‘so 22 intertwined with he patent issues’ as to make [§] 285 applicable to the case in its entirety.” 23 Gjerlov v. Schuler Lab’ys, Inc., 131 F.3d 1016, 1024 (Fed. Cir. 1997) (citation omitted). Here, the 24 entire underlying litigation involved patent issues. In the post-judgment context, the Court finds 25 that PersonalWeb’s bad-faith litigation tactics—including the delays induced in this action to 26 permit PersonalWeb time to arrange its receivership proceedings—required Amazon to intervene 27 in the state court receivership proceeding to prevent its judgment as the prevailing party in the 28 patent litigation from being rendered meaningless. The Court is greatly concerned that a refusal to 25 United States District Court Northern District of California 1 award fees would create a roadmap for losing parties to avoid accountability for their exceptional 2 conduct, and therefore contravene the very purpose of the § 285. See Mathis, 857 F.2d at 758 3 (Congress enacted § 285 to . . . authorize[] awards of attorney fees to prevailing defendants ‘to 4 enable the court to prevent a gross injustice to an alleged infringer.’”) (citation omitted). The 5 Court accordingly finds that PersonalWeb’s continued exceptional conduct required Amazon’s 6 intervention in the state court proceedings, and that the fees for such work are recoverable under § 7 285. 8 based in part on party’s continued practice of “imposing unwarranted costs” on prevailing party). 9 Because the Court finds Amazon’s requested fees are recoverable under § 285, it need not See Action Star Enterp., 2015 WL 12752877, at *2–3 (awarding fees for appellate work 10 reach the parties’ arguments about the applicability of Federal Rule of Civil Procedure 69 and 11 California Code of Civil Procedure § 685.040. See Mot. 8–10; Opp’n 4–7. 12 13 2. Reasonableness PersonalWeb’s only objection to the reasonableness of the requested fees is based on the 14 hourly rates of Amazon’s Fenwick attorneys. See Opp’n 10–11. The Court finds the hourly rates 15 reasonable for the same reasons discussed above. See supra, at Part III(C)(4)(a). 16 However, in attempting to assess which timekeeper hours were spent on the state court 17 receivership proceedings, the Court faces a struggle similar to that described in its evaluation of 18 the fees requested for the Kessler petition for certiorari. See supra, at Part III(A)(2)(b). Amazon 19 arrived at its request for $619,053.23 in fees by (1) deducting $344,172,10 in fees for work 20 performed on an anti-SLAPP motion from its original request of over $940,000; (2) deducting an 21 additional $36,886.94 for work performed on alter ego litigation; and (3) adding $57,487.80 in 22 fees previously categorized as federal appellate fees. See Gregorian Decl., Exh. B; Anti-SLAPP 23 Not. 1; Gregorian Reply Decl. ¶ 2; Total Fee Chart 1 n.4. Amazon’s most recent hourly chart— 24 provided after the first of the three changes described above—indicates that it spent 827.9 hours 25 and $598,955.17 of work in the state court proceedings. See Final Hourly Chart. The average 26 hourly rate for this work is $723.46. Amazon has since deducted $36,886.94 of work—or about 27 51 hours, using the average hourly rate—performed in state court on the alter ego litigation, which 28 is separate from the receivership proceedings. See Gregorian Reply Decl. ¶ 2. But the Court is 26 1 utterly unable to determine where and how the additional $57,487.80 in fees was spent, and it will 2 not consider this amount. See Total Fee Chart 1 n.4. The Court finds that Amazon has reasonably requested fees of $562,068.23 for about 776.9 3 4 hours of work—i.e., the $598,955.17 request less the $36,886.94 of alter ego work—in the state 5 court receivership proceeding, which required, among other tasks, “appeal of the original denial of 6 intervention, petition for writ of supersedeas (motion for stay), preparation of the complaint-in- 7 intervention, preparation of counterclaims, a successful motion to compel the receiver to share 8 information about the receivership with Amazon, appellate oral argument and Superior Court 9 appearances, and . . . preparation of other court submissions.” Gregorian Decl. ¶ 22(d). United States District Court Northern District of California 10 Accordingly, the Court will award Amazon these fees. 11 E. 12 Lastly, Amazon requests $193,299.37 in non-taxable costs incurred from March 2021 to Costs 13 March 2023. See Mot. 1; Total Fee Chart 2. Amazon had originally requested $193,605.69 in 14 costs, but reduced its request by $306.32 in conjunction with the fee reduction related to the anti- 15 SLAPP litigation in state court. See Anti-SLAPP Not. 1; Total Fee Chart 2 n.5. PersonalWeb 16 does not challenge the request for costs. See generally Opp’n. Amazon’s requested costs “are related to litigating this case, such as data hosting fees 17 18 (including fees required for hosting and reviewing documents as part of the discovery dispute over 19 the attorney fee motion); chambers copies; transcript order fees; and copying fees.” Gregorian 20 Decl. ¶ 25; see also Anti-SLAPP Not., Exh. C (updated cost summary), ECF No. 893-6. The 21 Court has reviewed the cost summary and finds Amazon’s request to be reasonable, and will 22 accordingly grant the request. 23 F. 24 Amazon indicates that it received a discount of $4,048.50 from Steptoe by which the fee Steptoe Discount 25 award should be reduced. See Total Fee Chart 2. The Court will deduct this amount from the 26 final award. 27 IV. 28 ORDER For the foregoing reasons, the Court hereby ORDERS that Amazon’s motion for further 27 1 supplemental fees and costs is GRANTED IN PART and DENIED IN PART. Amazon is 2 awarded attorney fees and costs totaling $2,499,701.73, consisting of the following: 3 4 non-infringement orders, itself constituting $3,881.94 for work performed from 5 March 2021 through March 2023 and $106,291.43 for prior work for which the 6 Court previously denied fees without prejudice; 7 8 9 10 11 United States District Court Northern District of California 1. $110,173.37 for work related to the federal appeals of the claim construction and 12 13 2. $209,582.50 for work related to PersonalWeb’s petition for certiorari of the Kessler ruling; 3. $292,505.92 for work related to pursuing fee awards; 4. $1,136,120.84 for work performed on post-judgment enforcement matters in federal court; 5. $562,068.23 for work performed on post-judgment enforcement in the state court receivership proceedings; and 14 6. $193,299.37 in non-taxable costs; less 15 7. $4,048.50 discounted by Steptoe. 16 17 18 IT IS SO ORDERED. Dated: December 15, 2023 19 20 Beth Labson Freeman United States District Judge 21 22 23 24 25 26 27 28 28
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
