Autodesk, Inc. v. Alter et al

Filing 176

ORDER DENYING 167 MOTION FOR ATTORNEY FEES by Judge William H. Orrick. (jmdS, COURT STAFF) (Filed on 8/9/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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AUTODESK, INC.,

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Plaintiff,

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ORDER DENYING MOTION FOR
ATTORNEY FEES

v.

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JOSEPH ALTER, et al.,

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Re: Dkt. No. 167

Defendants.

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United States District Court
Northern District of California

Case No. 16-cv-04722-WHO

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Plaintiff Autodesk, Inc. (“Autodesk”) sued defendants Joseph Alter, Inc. and Joseph Alter

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(collectively, “Alter”), seeking a declaratory judgment of noninfringement of United States Patent

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No. 6,720,962 (“the ’962 patent”) and monetary and injunctive relief for breach of contract. First

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Amended Complaint (Dkt. No. 109). Alter asserted seven counterclaims against Autodesk and the

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Walt Disney Company (“Disney”). Dkt. No. 34.1 As to Autodesk, Alter sought a declaration of

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no license to or exhaustion of the ‘962 patent, and asserted claims of infringement of the ‘962

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patent and intentional and negligent interference with prospective economic advantage. Id. On

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March 15, 2018, I granted summary judgment in Autodesk’s favor, agreeing with Autodesk’s

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interpretation of the release and covenant not to sue provisions in a license and distribution

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agreement between Alter and Disney. Dkt. No. 163. Those provisions, I found, covered

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Autodesk’s actions and defeated Alter’s counterclaims. Id.
Autodesk now moves for an award of attorney fees pursuant to Rule 37(c)(2).2 Autodesk

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The claims against Disney were dismissed pursuant to a stipulation. Dkt. No. 82.

Rule 37(c)(2) provides: “(c) Failure to Disclose, to Supplement an Earlier Response, or to Admit.
. . . (2) Failure to Admit. If a party fails to admit what is requested under Rule 36 and if the
requesting party later proves a document to be genuine or the matter true, the requesting party may
move that the party who failed to admit pay the reasonable expenses, including attorney’s fees,

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argues that because Alter refused to admit to a number of Autodesk’s Requests for Admissions

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(RFAs), Autodesk had to “prove up” various facts by securing a declaration from one of its

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engineers and a declaration from a Disney employee, and the briefing the issues in order to prevail

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on summary judgment. Dkt. No. 167. Alter opposes the motion, arguing that its limited

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objections to some of the RFAs were appropriate and its denials of various RFAs were reasonable

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given Alter’s interpretation of the license and distribution agreement.

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I agree with Alter and will not award fees to Autodesk. Alter’s objections to the RFAs at
issue were reasonable, given the ambiguity and dispute as to the meaning of terms used in the

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RFA. Alter’s denials to the RFAs at issue were based on Alter’s good faith belief as to how the

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disputed terms of the license and distribution agreement should be interpreted. That I agreed on

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United States District Court
Northern District of California

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summary judgment with Autodesk and rejected Alter’s proposed interpretations does not make

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Alter’s reliance on them in denying the RFAs unreasonable.

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The motion for fees under Rule 37(c)(2) is DENIED.

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IT IS SO ORDERED.

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Dated: August 9, 2018

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William H. Orrick
United States District Judge

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incurred in making that proof. The court must so order unless: (A) the request was held
objectionable under Rule 36(a); (B) the admission sought was of no substantial importance; (C)
the party failing to admit had a reasonable ground to believe that it might prevail on the matter; or
(D) there was other good reason for the failure to admit.”
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