Netlist, Inc v. Smart Modular Technologies, Inc

Filing 511

ORDER RE: PREVAILING PARTY DETERMINATION FOR PURPOSES OF BILL OF COSTS re 481 Bill of Costs, filed by Diablo Technologies Inc, 483 Bill of Costs, filed by Netlist Inc, 471 Bill of Costs,, filed by Diablo Technologies Inc, 484 Objection filed by Netlist Inc. Signed by Judge Yvonne Gonzalez Rogers on 9/1/15. (fs, COURT STAFF) (Filed on 9/1/2015)

Download PDF
1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 NETLIST, INC., Case No.: 13-cv-5962 YGR 8 Plaintiff, 9 vs. ORDER RE: PREVAILING PARTY DETERMINATION FOR PURPOSES OF BILL OF COSTS 10 DIABLO TECHNOLOGIES, INC., (DKT. NO. 471, 481, 483, 484) Northern District of California United States District Court 11 Defendant. 12 13 Plaintiff Netlist, Inc. (“Netlist”) filed its Bill of Costs (and Amended Bill of Costs) on the 14 contention that, as a plaintiff that obtained some relief on some of its claims, it is a prevailing party 15 entitled to its costs. Relying on the U.S. Supreme Court’s decision in Farrar v. Hobby, 506 U.S. 16 103, 113 (1992), Netlist argues that where there is a mixed verdict with only some successes by the 17 plaintiff, even if it is only awarded nominal damages, the plaintiff is the prevailing party. 18 Defendant Diablo Technologies, Inc. (“Diablo”) objects that Netlist prevailed only on its two 19 Lanham Act claims, obtained only nominal damages of one dollar on each of those claims, and lost 20 on all significant claims in the litigation. Thus, it is not a prevailing party and is not entitled to costs. 21 There can only be one prevailing party in any given case. Shum v. Intel Corp., 629 F.3d 22 1360, 1367 (Fed. Cir. 2010). It is true that “a plaintiff who wins nominal damages is a prevailing 23 party.” Farrar, 506 U.S. at 112-113. In Farrar, the civil rights plaintiff proved a Constitutional 24 violation, but did not establish damages proximately caused by that violation, and so was awarded 25 only nominal damages on his claims. Id. at 107-08. However, the Farrar case did not address a 26 mixed verdict situation. 27 “[A] plaintiff ‘prevails’ when actual relief on the merits of his claim materially alters the 28 legal relationship between the parties by modifying the defendant’s behavior in a way that directly 1 benefits the plaintiff.” Farrar, 506 U.S. at 111-12. There is no question that nominal damages 2 constitute “actual relief on the merits… materially alter[ing] the legal relationship between the 3 parties by modifying the defendant’s behavior in a way that directly benefits the plaintiff.” Id. 4 “Rule 54(d) has no special rule or exception for mixed judgment cases, where both parties have some 5 claims decided in their favor.” Shum, 629 F.3d at 1367. However, in a mixed judgment case, the 6 Court must examine the parties’ respective successes to determine which one of the two is the 7 prevailing party. Id. If plaintiff’s success is only limited and does not alter the defendant’s behavior 8 in any way that significantly benefits the plaintiff, it is not the prevailing party. Id. at 1368-69. 9 Here, the Court has considered and denied Diablo’s motion for judgment as a matter of law on Netlist’s Lanham Act claims. Thus, Netlist succeeded on those claims. However, that success is 11 United States District Court Northern District of California 10 only of limited significance, given that the conduct on which it was based was discontinued years 12 ago and has no forward-looking effect on the parties. It does not alter Diablo’s behavior in any 13 significant way. Further, the significant successes here were in favor of Diablo, which prevailed on 14 the breach of contract and misappropriation of trade secret claims, as well as the correction of 15 inventorship claim. 16 Based on an examination of the parties' respective successes, the Court finds that Diablo is 17 the prevailing party in this action for purposes of Rule 54 of the Federal Rules of Civil Procedure. 18 The Clerk of the Court is directed to proceed with consideration of Diablo’s Amended Bill of 19 Costs (Dkt. No. 481) and any objections thereto. 20 IT IS SO ORDERED. Date: September 1, 2015 21 22 ____________________________________ YVONNE GONZALEZ ROGERS UNITED STATES DISTRICT COURT JUDGE 23 24 25 26 27 28 2

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?