California Institute of Computer Assisted Surgery, Inc. v. Med-Surgical Services, Inc. et al

Filing 97

ORDER Granting Request for Attorneys' Fees 88 . Signed by Judge Nathanael M. Cousins on 9/27/11. (nclc1, COURT STAFF) (Filed on 9/27/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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CALIFORNIA INSTITUTE OF COMPUTER
ASSISTED SURGERY, INC.

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Plaintiff,

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ORDER GRANTING ATTORNEYS’
FEES UNDER FED. R. CIV. P. 37

v.
Re: Docket No. 88

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Case Number 4:10-CV-05067 CW (NC)

MED-SURGICAL SERVICES, INC., KRISHNA
SUDHAKARAN, MARK KIENE, RORY
RANDALL, and SHIRLEY CLAYTON
Defendants.

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Plaintiff California Institute of Computer Assisted Surgery, Inc. (“CICAS”) filed this

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action against Defendants Med-Surgical Services Inc. (“Med-Surgical”), Krishna Sudhakaran,

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Mark Kiene, Rory Randall, and Shirley Clayton for patent infringement in violation of the U.S.

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Patent Act, 28 U.S.C. § 271. On September 1, 2011, the Court granted Defendants’ motion to

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compel CICAS to serve infringement contentions that comply with Patent Local Rule 3-1, and it

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ordered each party to submit a statement explaining its position regarding a potential award of

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attorneys’ fees to Defendants under Federal Rule of Civil Procedure 37. Dkt. No. 81. Based on

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the statements submitted by the parties on September 8, 2011, the Court finds that an award of

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attorneys’ fees to Defendants is appropriate. Dkt. No. 88.

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4:10-CV-05067 CW (NC)
ORDER GRANTING ATTORNEYS’ FEES
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I. STANDARD OF REVIEW

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Federal Rule of Civil Procedure 37 provides that if a motion to compel disclosure or

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discovery is granted, the court must require the party whose conduct necessitated the motion to

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pay for the movant’s reasonable expenses incurred in making the motion, including attorneys’

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fees. FED . R. CIV . P. 37(a)(5)(A). Rule 37 further states that the court “must not order this

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payment” if the opposing party’s nondisclosure was “substantially justified” or circumstances

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exist that “make an award of expenses unjust.” FED . R. CIV . P. 37(a)(5)(A)(ii)-(iii).
Civil Local Rule 37-4 requires a party seeking attorneys’ fees under Rule 37 to file a

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declaration (1) stating the facts supporting its request, (2) describing its efforts to secure

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compliance without court intervention, and (3) providing detailed billing records and appropriate

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justification for the hourly rates claimed. Civil L.R. 37-4(b).

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II. DISCUSSION

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Defendants claim that, under Rule 37, they are entitled to the attorneys’ fees they incurred

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in making their motion to compel, which allegedly total $25,805. Dkt. No. 88 at 1. They argue

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that Rule 37 covers motions to compel infringement contentions under Patent Local Rule 3-1 and

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that an award of attorneys’ fees is justified because they have spent “substantial resources” in

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trying to obtain compliant infringement contentions from CICAS since March 2011. Id. at 1-2.

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Defendants state that they would accept $13,000.32 in lieu of the $26,805 they allegedly

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incurred. Id. at 2. Defendants do not provide detailed billing records but offer to do so if

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required by the Court. Id.

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CICAS opposes Defendants’ request for attorneys’ fees. First, CICAS alleges that Rule

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37 “only applies to discovery requests and disclosures under Rule 26” and not to requests made

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under the Patent Local Rules. Id. at 3. Second, CICAS argues that an award of attorneys’ fees

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would be unjust because Defendants’ allegedly stated that they would not seek attorneys’ fees

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and CICAS relied on that statement. Id. at 4. Third, CICAS contends that its failure to serve

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compliant infringement contentions was justified because Defendants have withheld several

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documents from it that could have facilitated its drafting of compliant infringement contentions.

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Id. Fourth, CICAS argues that if the Court grants Defendants’ request, the fees awarded should
exclude fees that Defendants incurred in researching and arguing issues that CICAS claims are
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ORDER GRANTING ATTORNEYS’ FEES
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unrelated to the question of whether its infringement contentions were compliant, including

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direct infringement, indirect infringement, and invalidity. Id. at 4-5. Finally, CICAS argues that

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the fees requested by Defendants are excessive, and that a more appropriate amount would be

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$3,330. Id. at 5.
CICAS’ arguments are unpersuasive. A party’s failure to comply with “any duly

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promulgated local rule” may be a ground for the imposition of any authorized sanction. Civil

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L.R. 1-4; see also Civil L.R. 1-2. Moreover, Patent Local Rule 3-1 is a discovery mechanism

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that “takes the place of a series of interrogatories that defendants would likely have propounded

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had the patent local rules not provided for streamlined discovery.” InterTrust Techs. Corp. v.

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Microsoft Corp., No. C 01-1640 SBA, 2003 WL 23120174, *1 (N.D. Cal., Dec. 1, 2003).

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Consequently, any motions filed under Patent Local Rule 3-1 are subject to Rule 37. As the

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Court granted Defendants’ motion to compel under Rule 3-1 and an award of expenses would not

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be unjust in this case, CICAS must pay for the attorneys’ fees Defendants reasonably incurred in

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making their motion to compel.
III. ORDER

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Defendants’ request for attorneys’ fees is GRANTED in an amount to be determined by

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the Court. Defendants must submit a declaration that complies with the requirements of Civil

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Local Rule 37-4 by October 5, 2011.

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IT IS SO ORDERED.

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DATED: September 27, 2011

____________________________
NATHANAEL M. COUSINS
United States Magistrate Judge

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