Digital Reg of Texas, LLC v. Adobe Systems Incorporated et al

Filing 826

ORDER GRANTING IN PART AND DENYING IN PART 794 ADOBE'S MOTION FOR ATTORNEYS' FEES. Signed by Judge Claudia Wilken on 5/1/2015. (mklS, COURT STAFF) (Filed on 5/1/2015)

1

IN THE UNITED STATES DISTRICT COURT

2

FOR THE NORTHERN DISTRICT OF CALIFORNIA

3
4

DIGITAL REG OF TEXAS, LLC
No. C 12-1971 CW
Plaintiff,

5
6
7
8

ORDER ON ADOBE’S
MOTION FOR
ATTORNEYS' FEES

v.
ADOBE SYSTEMS, INC., et al.,

(Docket No. 794)
Defendants.
________________________________/

9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19

On March 9, 2015, the Court awarded Adobe attorneys’ fees
under 35 U.S.C. § 285 due to Digital Reg's litigation misconduct
with respect to two of its fact witnesses: Patrick Patterson and
Carl Venters.

Docket 815.

attorneys' fees insufficient and ordered Adobe to submit a
supplemental declaration providing more detailed billing records.
Adobe submitted its supplemental declaration on March 23, 2015.
Having considered the parties' briefs and supporting
documentation, the Court grants Adobe's fee request with moderate
reductions.
DISCUSSION

20
21
22
23
24
25
26
27
28

The Court found Adobe's itemization of

Adobe seeks $90,586.12 in attorneys' fees.

This figure

includes the initial $45,838.43 sought in relation to the
deposition and testimony of Mr. Patterson and Mr. Venters.

In

addition, Adobe requests $42,115.05 for fees incurred in bringing
the fees motion and $2,632.64 for forensic expert fees incurred in
relation to Mr. Venters' testimony.
Digital Reg objects to and opposes Adobe's requested fees on
a number of grounds.

First, Digital Reg contends that Adobe's

1

time entries include block billing and generic descriptions that

2

warrant a reduction of twenty percent.

3

keeping method by which each lawyer and legal assistant enters the

4

total daily time spent working on a case, rather than itemizing

5

the time expended on specific tasks.

6

2854994, at *2 (N.D. Cal.).

7

calculating a fee award where there is sufficient detail to

8

identify precisely the task accomplished.

9

Qi, 2015 WL 224970, at *3 (N.D. Cal.) (citing Stonebrae, L.P. v.

Block billing is the time-

Apple v. Samsung, 2014 WL

Block-billing can provide a basis for

See PQ Labs, Inc. v.

United States District Court
For the Northern District of California

10

Toll Bros., Inc., 2011 WL 1334444 at *8 (N.D. Cal.).

11

billing entries are sufficiently detailed to identify the tasks

12

accomplished and to allow the Court to assess the reasonableness

13

of the time spent on those tasks.

14

accounts for over-inclusive billing entries.

15

Court declines to reduce the award for block-billing.

16
17

I.

Adobe's

Moreover, Adobe's fee request
Consequently, the

Fees Incurred due to Digital Reg's Litigation Misconduct
Digital Reg argues that Adobe is not entitled to fees for

18

pre-trial depositions under the March 9 order.

19

Adobe "fees incurred in relation to the changed testimony and

20

resulting additional discovery and motion practice associated with

21

Mr. Patterson and Mr. Venters."

22

argues that this award should not include fees relating to pre-

23

trial depositions because Digital Reg's misconduct was only

24

associated with its behavior at trial.

25

as narrow as Digital Reg contends.

26

incurred "in relation to" Digital Reg's misconduct, not only fees

27

directly resulting from the misconduct.

28

Federal Circuit precedent, which requires that the amount of

The Court awarded

Docket No. 815.

2

Digital Reg

However, the award is not

The order granted all fees

This is consistent with

1

attorneys' fees awarded bear "some relation" to the extent of

2

misconduct.

Read Corp. v. Portec, Inc., 970 F.2d 816, 831 (Fed.

3

Cir. 1992).

Digital Reg's misconduct undermined Adobe's efforts

4

in preparing for and taking the pre-trial depositions.

5

had Digital Reg properly prepared its witnesses and the documents

6

their testimony relied on for the pre-trial depositions, the

7

subsequent issues would not have arisen.

8

depositions are related to Digital Reg's misconduct.

9

Moreover,

Thus, the pre-trial

Digital Reg also argues that Adobe's requested fee amount

United States District Court
For the Northern District of California

10

fails to apply deductions properly for fees it split with another

11

defendant.

12

reduced fees billed under the .0008 billing number by fifty

13

percent to account for the fact that Adobe split these fees with

14

another jointly-represented defendant.

15

Supplemental Declaration reveals that the reduction has been

16

properly implemented for all lawyers except Mr. Reines.

17

Def.'s Suppl. Decl. ¶ 6, Docket No. 819.

18

$21,720.38 for work conducted by Mr. Reines.

19

account the fifty percent reduction and the 69.92% fee cap in

20

place during trial, Adobe is only entitled to $16,399.125.

21

$4,932.86 must be deducted from Adobe's fee award.

22

Adobe's Supplemental Declaration states that it has

A review of Adobe's

See

Adobe requests
However, taking into

Thus,

Digital Reg also challenges Adobe's inclusion of work related

23

to witnesses other than Mr. Patterson and Mr. Venters.

24

contends that it has discounted its request to address this issue.

25

A review of the Supplemental Declaration reveals that Adobe has

26

accounted for over-inclusive billing by Mr. Pradhan, Mr. Bonini,

27

and Ms. Han.

28

percentage of the total hours billed towards the fees request.

Adobe

For these lawyers, Adobe only applied a certain

3

1

See id. at ¶¶ 17, 23, and 25.

2

has failed to apply a similar deduction.

3

27 (including preparations for Farley and Ornstein depositions).

4

A three percent reduction in the fee award is warranted to account

5

for Adobe's failure to account for over-inclusive billing.

6

However, for other lawyers, Adobe
See id. at ¶¶ 6, 11, and

Thus, the Court awards $39,678.40 for all fees incurred in

7

relation to Mr. Venters and Mr. Patterson.

8

a $4,932.86 reduction to account for deductions under the .0008

9

billing code and an additional three percent reduction to account

United States District Court
For the Northern District of California

10
11
12

This figure represents

for fees requested for unrelated work.
II.

Forensic Experts Fees
Digital Reg opposes Adobe's inclusion of fees for forensic

13

experts employed to gather documents and verify the completeness

14

of the collection of documents from Mr. Venters.

15

include fees for forensic experts in its initial motion for

16

attorneys' fees.

17

declaration to provide more detailed billing information to

18

support its fee request.

19

fees in the declaration.

20

Adobe did not

The Court ordered Adobe to submit a supplemental

Adobe was not authorized to include new

Even if Adobe had included expert fees in its initial

21

request, they are not recoverable under 35 U.S.C. § 285.

22

285 allows for the award of attorneys' fees only.

23

Circuit has held that § 285 does not authorize the award of expert

24

witness fees.

25

23 F.3d 374, 377 (Fed. Cir. 1994).

26

Adobe provides no authority to suggest that forensic experts

27

should be treated differently from expert witnesses under § 285.

28

Thus, Adobe's request to include forensic expert fees is DENIED.

Section

The Federal

Amsted Indus. Inc. v. Buckeye Steel Castings Co.,

4

The Court sees no reason and

1

III.

2

Attorneys' Fees for Bringing the Attorneys' Fees Motion
With respect to fees incurred in bringing the attorneys' fees

3

motion, Digital Reg takes issue with the number of hours, the

4

billing rates, and the inclusion of work related to the bill of

5

costs.

6

A.

7

Number of Hours Claimed
Digital Reg argues that the number of hours for which Adobe

8

requests fees is unreasonable.

9

percent of fees incurred for the 109.7 hours of work it performed

Adobe seeks to recover fifty

United States District Court
For the Northern District of California

10

relating to its fees motion.

11

number of hours and the allocation of fifty percent.

12

Digital Reg objects both to the

Attorneys' fees must be proportionate to the degree of

13

success of the prevailing party.

14

424, 432 (1983).

15

on the basis that it prevailed on half of its fees claims.

16

considered conduct surrounding Mr. Venters and Mr. Patterson as

17

two separate instances of misconduct.

18

apportionment on the grounds that a substantial portion of the

19

work in filing its fees motion was required regardless of the

20

issues raised.

21

on one of the four grounds and consequently, should only be

22

awarded twenty-five percent of its fees.

23

Hensley v. Eckerhart, 461 U.S.

Adobe requests fifty percent of the total fees
Adobe

Adobe further supports its

Digital Reg argues that Adobe was only successful

Neither party correctly characterizes Adobe's fees motion.

24

Adobe requested fees for three allegedly exceptional instances of

25

conduct; it argued that Digital Reg (1) asserted baseless claims,

26

(2) relied on unreasonable expert testimony, and (3) engaged in

27

litigation misconduct.

28

Mr. Venters was included under the litigation misconduct argument.

Conduct surrounding both Mr. Patterson and

5

1

Thus, Adobe was successful on one-third of its grounds for fees.

2

However, the fifty percent apportionment figure is reasonable

3

given that the litigation misconduct argument had two parts and

4

that a substantial portion of the work conducted in bringing the

5

claim would have been necessary regardless of the number of claims

6

brought.

7

Digital Reg also contends that the number of hours Adobe

8

expended on briefs for its fees motion was excessive.

9

attorneys' fee award may only include hours "reasonably expended"

An

United States District Court
For the Northern District of California

10

on litigation.

11

5451411, at *3 (N.D. Cal.)(citing Hensley v. Eckerhart, 461 U.S.

12

424, 433 (1983)).

13

Manges (Weil), billed sixty-seven hours for briefing Adobe's fee

14

motion.

15

hours reviewing, editing, and commenting on the same briefing, and

16

paralegals spent an additional twenty hours cite-checking and

17

proofreading.

18

unreasonable, Digital Reg cites Apple v. Samsung, in which the

19

Court found it unreasonable that a partner with almost twenty-five

20

years of experience needed fifty hours to draft a fourteen-page

21

motion and to review a fifteen-page reply, when five associates

22

had billed 85.8 hours for the same motion.

23

The extreme circumstances exhibited in Apple are not found in the

24

present case.

25

B.

26

Apple, Inc. v. Samsung Electronics Co., 2012 WL

Mr. Beebe, an associate at Weil, Gotshal &

Mr. Reines, a partner, billed an additional twenty-two

In support of its contention that these hours are

2012 WL 5451411 at *4.

The Court finds the number of hours reasonable.

Billing Rates
Digital Reg argues that Weil's billing rates are also

27

unreasonable and warrant a reduction of Adobe's fees request.

28

is the obligation of the party seeking fees "to provide evidence
6

It

1

outside of an attorney affidavit that its counsels' hourly rates

2

are reasonable."

3

5451411, at *6 (N.D. Cal.).

4

attorneys' fee, the Court may take into account a number of

5

factors, including: (1) the novelty and complexity of the issues;

6

(2) the special skill and experience of counsel; (3) the quality

7

of representation; and (4) the results obtained.

8

Deukmejian, 987 F.2d 1392, 1402, n.12 (9th Cir. 1992).

9

reasonable rate inquiry should also be informed by reference to

United States District Court
For the Northern District of California

10

Apple, Inc. v. Samsung Electronics Co., 2012 WL
In calculating a reasonable

Gates v.

the prevailing market rates in the forum district.

11

The

Id. at 1405.

The hourly billing rates for Adobe's attorneys who worked on

12

the fees motion range from $747 to $967.50 for partners and $499

13

to $765 for associates.

14

submits an excerpt from the 2013 American Intellectual Property

15

Law Association (AIPLA) report of the Economic Survey, showing

16

that third quartile rates in San Francisco in 2012 were $825 for

17

partners and $576 for associates.

18

are above the AIPLA third quartile rates, Adobe argues that these

19

numbers are outdated and that rates have increased since that

20

time.

21

In support of Weil's billing rates, Adobe

Acknowledging that its numbers

Adobe also cites recent case law from this district where, it

22

contends, courts have awarded fees "in line" with Weil's rates;

23

however, only one of these cases actually involved rates as high

24

as those of Weil.

25

*5 (N.D. Cal.)(finding rates ranging from $355 to $1,095 per hour

26

for partners and associates were within the prevailing rates).

27

the rest of the cases, the rates upheld are consistent with the

28

AIPLA third quartile rates.

See Banas v. Volcano Corp., 2014 WL 7051682, at

See, eg., Kilopass Tech., Inc. v.
7

In

1

Sidense Corp., 2015 WL 1065883, at *11 (N.D. Cal.)(finding rates

2

as high as $830 in line with prevailing rates in that community).

3

The AIPLA figures and bulk of the case law fail to support Adobe's

4

contention that Weil's rates are in line with the prevailing

5

market rates in the district.

6

warranted to bring the rates in line with prevailing market rates.

7

Because a fee cap was in place in trial, this reduction is only

8

required for the fees incurred in bringing the fees motion.

9

C.

United States District Court
For the Northern District of California

10

Consequently, a fee reduction is

Fees Related to Bill of Costs
Finally, Digital Reg objects to Adobe's inclusion of 0.6

11

hours of work performed by Ms. Mehta conferring with Adobe

12

regarding costs.

13

associated with its bill of costs.

14

Adobe is not entitled to recover any fees

To account for Adobe's high billing rates and inclusion of

15

work performed on its bill of costs, the Court reduces Adobe's

16

requested fee amount by ten percent.

17

Adobe $37,903.55 in fees incurred in bringing the attorneys' fees

18

motion.

19
20

Therefore, the Court awards

CONCLUSION
Accordingly, Adobe's motion for attorneys' fees (Docket

21

No.794) is GRANTED IN PART and DENIED IN PART.

22

$77,581.95 in fees.

23

Adobe is awarded

IT IS SO ORDERED.

24
25
26

Dated: May 1, 2015
CLAUDIA WILKEN
United States District Judge

27
28
8