BIAX Corporation v. NVIDIA Corporation et al

Filing 1077

ORDER. NVIDIA is awarded $1,283,030.77 in attorney's fees and $28,648.24 in non-taxable costs. The Sony defendants are awarded $688,773 in attorney's fees and $10,913 in non-taxable costs. By Judge Philip A. Brimmer on 8/12/13. (mnfsl, )

BIAX Corporation v. NVIDIA Corporation et al

Doc. 1077

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 09-cv-01257-PAB-MEH
BIAX CORPORATION,
Plaintiff,
v.
NVIDIA CORPORATION,
SONY COMPUTER ENTERTAINMENT AMERICA, INC., and
SONY ELECTRONICS INC.,
Defendants.
_____________________________________________________________________
ORDER
_____________________________________________________________________
This matter is before the Court on Defendants’ Motion for Recovery of Attorneys’
Fees and Expenses Incurred After Claim Construction [Docket No. 956/981] filed by
defendants Sony Computer Entertainment America, Inc. and Sony Electronics Inc.
(collectively, “the Sony defendants”) and NVIDIA Corporation (“NVIDIA”).
I. BACKGROUND
Plaintiff BIAX Corporation (“BIAX”) brought suit against NVIDIA and the Sony
defendants, alleging that defendants infringed and induced infringement of U.S. Patent
No. 5,517,628 (the “’628 Patent”) and U.S. Patent No. 6,253,313 (the “’313 Patent”)
(collectively, the “patents”), both assigned to BIAX. On February 15, 2012, the Court
granted defendants’ motions for summary judgment on all of BIAX’s claims. Docket No.
941. On March 30, 2013, the Court found that defendants are entitled to recover
attorney’s fees pursuant to 35 U.S.C. § 285 for the time period starting on June 23,

Dockets.Justia.com

2011, when BIAX’s expert, Dr. Richard Davidson, conceded the issue of infringement,
and ending on March 26, 2012, when the Court issued its order granting summary
judgment. Docket No. 1037 at 17.
II. DISCUSSION
The Sony defendants seek recovery of $660,044 in attorney’s fees and $10,913
in costs for the period from June 23, 2011 through March 26, 2012, as well as $105,259
in attorney’s fees for preparation of the attorney’s fee motion. Docket No. 1039 at 6-7,
¶¶ 22-26. NVIDIA seeks recovery of $1,226,508.71 in fees and $28,648.24 in costs for
the period from June 23, 2011 through March 26, 2012, as well as $56,522.06 for
preparation of the attorney’s fee motion. Docket No. 1045 at 1. BIAX argues that the
amount requested is unreasonable in light of “(i) Defendants’ failure to mitigate by
seeking summary judgment promptly, . . .; (ii) defense counsel’s billing rates, some 30%
above reasonable rates in this market, . . . ; and (iii) Defendants’ persistent use of
multiple high-billing attorneys for litigation tasks.” Docket No. 1018 at 15. BIAX
principally relies on the analysis and opinions of Gregg I. Anderson, a patent attorney
licensed in Colorado and California, in support of its argument that the claimed fees and
expenses are unreasonable. Docket No. 1018-1 at 2, ¶ 2.
A. Attorney’s Fees
To fix a reasonable fee award, a court must begin by calculating the “lodestar
amount.” Robinson v. City of Edmond, 160 F.3d 1275, 1281 (10th Cir. 1998). The
lodestar amount is the “number of hours reasonably expended on the litigation
multiplied by a reasonable hourly rate.” Hensley v. Eckerhart, 461 U.S. 424, 433

2

(1983). A party seeking an award of attorney’s fees must establish the reasonableness
of each dollar and each hour for which the party seeks an award. Jane L. v. Bangerter,
61 F.3d 1505, 1510 (10th Cir. 1995).
1. Reasonable Hours
Sony seeks fees for approximately 1070.25 hours of work between June 23,
2011 and the entry of the Court’s Order on March 26, 2012, as well as the time spent
preparing the motion for attorney’s fees.1 Docket Nos. 958 and 1039. NVIDIA seeks
fees for approximately 2,946.6 hours of work during the same time period, as well as
the time spent preparing the motion for attorney’s fees. Docket No. 1045.
In determining the reasonableness of the hours expended, a court considers
several factors. First, it considers whether the fees pertain to tasks that would ordinarily
be billed to a client. See Ramos v. Lamm, 713 F.2d 546, 554 (10th Cir. 1983),
overruled on other grounds by Penn. v. Del. Valley Citizens’ Council for Clean Air, 483
U.S. 711, 717 n. 4 (1987). In Missouri v. Jenkins by Agyei, 491 U.S. 274, 288 n.10
(1989), the Supreme Court found non-compensable “purely clerical or secretarial tasks
[which] should not be billed at a paralegal rate, regardless of who performs them.” The
Court reasoned that such non-legal work may command a lesser rate, but its “dollar
value is not enhanced just because a lawyer does it.” Id. A litigant “is entitled for good
reason to considerable secrecy about what went on between client and counsel, and
among counsel” and may redact fee petitions accordingly, so long as those “redactions
1

The Court calculated this figure by adding the monthly hourly totals for the
months of July 2011 onward to the hourly totals for the week between June 23, 2011
and June 30, 2011 and the hourly totals for the period between January 2012 and April
2012, when the attorney’s fee petition was completed.
3

do not impair the ability of the court to judge whether the work was an appropriate basis
for fees,” in which case a court “might be obligated to deny them.” Democratic Party of
Wash. State. v. Reed, 388 F.3d 1281, 1286 (9th Cir. 2004).
The party claiming fees “has the burden of proving hours to the district court by
submitting meticulous, contemporaneous time records that reveal, for each lawyer for
whom fees are sought, all hours for which compensation is requested and how those
hours were allotted to specific tasks,” Case v. Unified Sch. Dist. No. 233, Johnson
Cnty., Kan., 157 F.3d 1243, 1250 (10th Cir. 1998), as well as demonstrating that
counsel used “billing judgment” in winnowing down the hours actually spent to those
reasonably expended. Praseuth v. Rubbermaid, Inc., 406 F.3d 1245, 1257 (10th Cir.
2005). If a request does not demonstrate billing judgment, a court should take extra
care to ensure that an attorney has not included unjustified charges in his billing
statement. Id.
A court should also consider whether the amount of time spent on a particular
task appears reasonable in light of the complexity of the case, the strategies pursued,
and the responses necessitated by an opponent’s maneuvering. Id. Ultimately, the
Court’s goal is to fix a fee that would be equivalent to what the attorney would
reasonably bill for those same services in an open market and fees will be denied for
excessive, redundant, and otherwise unnecessary expenses. Ramos, 713 F.2d at 553.
However, “the district court need not identify and justify every hour allowed or
disallowed, as doing so would run counter to the Supreme Court’s warning that a
‘request for attorney’s fees should not result in a second major litigation.’” Malloy v.

4

Monahan, 73 F.3d 1012, 1018 (10th Cir. 1996) (citing Mares v. Credit Bureau of Raton,
801 F.2d 1197, 1203 (10th Cir. 1986)); see also Fox. v. Vice, 131 S. Ct. 2205, 2216
(2011) (“trial courts need not, and indeed should not, become green-eyeshade
accountants. The essential goal in shifting fees . . . is to do rough justice, not to
achieve auditing perfection.”).
With respect to both Sony and NVIDIA, BIAX argues that the hours awarded
should be reduced because defendants waited too long after the claim construction was
issued to file their motions for summary judgment. Docket No. 1018 at 14-15.
However, as the Court stated in its March 30, 2013 Order, the burden was not on
defendants to prove the baselessness of BIAX’s claims. Docket No. 1037 at 13 n.9.
Given the pace of this litigation and the aggressiveness with which the parties
prosecuted their disputes,2 the time between the claim construction and the filing of the
summary judgment motions is not indicative of unreasonable delay. Moreover, the
Court has already determined that the time period for which defendants can recover
fees runs from June 23, 2011, when BIAX’s expert witness, Dr. Richard Davidson,
stated that the accused devices do not infringe all of the claim limitations, through
March 26, 2012, when the Court entered its order on summary judgment. Docket No.
1037 at 13. BIAX’s arguments do not provide any basis for altering that determination.
BIAX also argues that both parties relied excessively on the use of high-billing
partners, as opposed to associates. Docket No. 1018 at 15. Mr. Anderson opines that
2

As Magistrate Judge Hegarty noted, this case was heavily (and, at times,
“bitterly”) disputed, with nearly a third of a billion dollars in damages at stake and an
unusually high number of discovery disputes. Docket No. 664 at 2-3. As of August
2013, there were over one thousand docket entries.
5

each defendant had “three or four lawyers billing $600 per hour or above, all at a
partner level” and that there was “surprisingly little” support provided by associate
attorneys, despite the fact that “[m]uch of that work on a case like this would typically be
pushed down to lower rates.” Docket No. 1018-1 at 19-20, ¶ 49.
NVIDIA’s filings indicate that, although it is seeking fees for the work of four
partner-level attorneys, only two of them–Chris Ottenweller and Alex Chachkes–billed at
a rate over $600.00 per hour. Docket No. 970 at 19. The majority of hours requested
by NVIDIA–nearly ninety percent–was billed by associates and paralegals. See Docket
No. 970 at 2. Likewise, only two of the Sony defendants’ attorneys–Christian Chadd
Taylor and Laura Hepburn–billed at over $600.00 per hour, and their hours accounted
for less than forty percent of the total claimed hours. Docket No. 958 at 6, 13 ¶¶ 6, 14.
Mr. Anderson does not explain why work on “a case like this” would typically be
assigned to less experienced attorneys, especially given the complexity of the subject
matter, the contentiousness of the litigation, and the dollar amounts at stake.3 The
Court finds that defendants’ staffing levels were not unreasonable.
Finally, BIAX argues that defendants unnecessarily retained local counsel. Mr.
Anderson opines that “[g]iven the [Electronic Case Filing] system, local counsel is all
but an anachronism,” “nice for meetings and the like, but . . . otherwise unnecessary.”
Docket No. 1018-1 at 23, ¶ 52(c). However, BIAX does not offer, and the Court has not
found, any case law to suggest that local counsel is unnecessary. On the contrary, it
appears from the billing statements that local counsel assisted by advising out-of-state
3

Nor does Mr. Anderson address the fact that, according to the docket, BIAX
was also represented by at least four partners.
6

counsel on compliance with the local rules, reviewing court filings, helping prepare for
appearances, and appearing in court. See generally, Docket No. 963 at 2-5; Docket
No. 1012 at 322-51. These tasks appear to have been reasonable at the time they
were undertaken. Finally, local counsel accounts for a little over one percent of the
hours claimed by defendants. See Docket No. 970 at 2; Docket Nos. 958, 963. In
addition, the Sony defendants are seeking fees only for the time of local counsel Bruce
Featherstone and not the other attorneys and paraprofessionals at his firm who
assisted him. Docket No. 963 at 1, ¶ 2. Thus, defendants are not claiming excessive
hours for local counsel.
In sum, neither the timing of the motion for summary judgment nor the staffing of
the litigation provides a basis for applying a blanket reduction to the hours claimed.
a. The Sony Defendants
In support of their fee petition, the Sony defendants submitted a declaration from
Christian Chadd Taylor, a senior partner at Kirkland & Ellis LLP (“Kirkland & Ellis”) with
supervisory responsibility over this case; a declaration from Bruce A. Featherstone, a
partner at the local law firm Featherstone DeSisto, LLC; and a supplemental declaration
from David Rokach, a partner at Kirkland & Ellis with responsibility for this case. Docket
Nos. 958, 963, and 1039. All three declarations contain tables listing the number of
hours worked each month and a brief summary of the tasks completed by each
attorney and legal assistant for whom fees are sought.4 Id. Mr. Taylor states that “Sony

4

A sample entry regarding Mr. Taylor’s time reads as follows:

Month

Hours

Primary Tasks
7

is also willing to make its bills available for in camera review upon request.” Docket No.
958 at 2, ¶ 3. Mr. Anderson objects to the Sony defendants’ submission on the
grounds that it is not “adequate to describe with any certainty what was done.” Docket
No. 1018-1 at 20, ¶ 49. However, this criticism is not so much directed at a claim that
the tasks performed were unnecessary or took too long, but rather that “there were way
more lawyers involved than necessary to litigate even a relatively complex patent
lawsuit.” Id.
The Court agrees with Mr. Anderson that, to some extent, Sony’s records lack
precision. The summary tables, which are broken down by month but not by day and
which group tasks together instead of allocating each task to a specific block of time, do
not completely satisfy the Sony defendants’ burden to show “how those hours were
allotted to specific tasks.” Case, 157 F.3d at 1250. Moreover, they do not satisfy the
requirement under local rules to submit “a detailed description of the services rendered
[and] the amount of time spent” because they are insufficiently detailed to assess the
reasonableness of the time allocated to each task. D.C.Colo.LCivR 54.3(B)(1). The
local rules do not provide for submitting additional materials upon a finding that those
already produced are insufficient. See id.

July 2010 49.25

Supervision of responsive briefing re BIAX motions to compel
production of documents (Dkt. #259, 310); Preparation for and
participation in July 14 hearing with Magistrate Judge Hegarty re
BIAX motions to compel; Formulate strategy for motion for
clarification of claim construction rulings (Dkt. #335); and
Preparation and management of case strategy and discovery
plan.

Docket No. 958 at 2.
8

The Court finds that, although the “documentation of hours is inadequate,”
Bangerter, 61 F.3d at 1510, a fee award is appropriate, given the complexity of the
subject matter, the demanding pace of the litigation, and the excellent results obtained
by defendants. See Hensley, 461 U.S. at 435 n.10. However, the Court will exercise
its discretion to reduce the award to account for the Court’s inability to review in greater
detail the time records. See Bangerter, 61 F.3d at 1510 (upholding reduction in
compensable hours of thirty-five percent to account for imprecise time records);
Mallinson-Montague v. Pocrnick, 224 F.3d 1224, 1235 (10th Cir. 2000) (upholding onethird reduction of hours to account for “lumping of tasks into large blocks of time, with its
concomitant lack of specificity and possibility of overlap with the work of other
attorneys”). The Court will reduce the total fees awarded to Sony by ten percent to
account for the imprecision of its submissions.
b. NVIDIA
In support of its contention that its claimed hours are reasonable, NVIDIA has
submitted invoices from Orrick, Herrington & Sutcliffe LLP (“Orrick”) and from its local
counsel, Ballard Spahr LLP (“Ballard”), which list the date, description, and time
expended for each task. Docket No. 1012. Mr. Anderson opines that the Court should
reduce NVIDIA’s fee award because it submitted invoices that are overly redacted and
lacking in sufficient detail. Docket No. 1018-1 at 19-20, ¶ 49.
Mr. Anderson asserts that NVIDIA’s invoices are not “adequate to describe with
any certainty what was done” and do not “discuss[] anything substantive.” Docket No.
1018-1 at 20, ¶ 49. However, Mr. Anderson does not identify examples of specific line

9

items that are too vague. On the contrary, Orrick and Ballard’s task descriptions are
sufficiently detailed to determine whether the time spent on each task is reasonable and
to dispel any doubt that NVIDIA is seeking fees for non-compensable tasks. See Case,
157 F.3d at 1250; see also, e.g., Docket No. 1012 at 178 (“Prepare for Nusbaum
deposition; research prior motions for law regarding hypothetical negotiations; review
Min expert report and provide information to the team re Davidson deposition; resolve
scheduling issues regarding Weinstein and Nusbaum depositions.”); id. at 180 (“outline
new Daubert motion on Davidson’s opinions on ‘instructions’”); id. at 268 (“Emails with
Orrick regarding requests for admission to serve on BIAX today (.1); review requests for
admission (.4)”). Thus, the Court will not impose an across-the-board discount on each
attorney’s time, as recommended by Mr. Anderson. Docket No. 1018-1 at 22-23,
¶ 52(b).
The Court notes that a number of line items are entirely redacted, leaving no
indication of what the task involved or even how much time was spent on it, although it
appears that some of these tasks were nonetheless included in NVIDIA’s fee request.
See, e.g., Docket No. 1012 at 179, 184, 185. Although these redactions “impair the
ability of the court to judge whether the work was an appropriate basis for fees,”
Democratic Party of Wash. State, 388 F.3d at 1286, the amount of time claimed for
redacted entries (approximately ten hours) represents such a small percentage of the
overall number of hours claimed (close to three thousand hours) that the Court can
confidently state that the claimed hours are reasonable. See Docket No. 1012 at 193,
205, 216, 224, 235, 240, 244, 249-50, 254, and 262.

10

2. Hourly Rate
The Sony defendants request fees at the following rates:
Person

Experience (Years)

2010

2011

Christian Chadd Taylor (Kirkland & Ellis,
Senior Partner)

18

$715

$742

David Rokach (Kirkland & Ellis, Junior
Partner)

9

$504

$549

Laura Hepburn (Kirkland & Ellis, Partner)

15

$625

$652

John Edwards (Kirkland & Ellis, Associate)

6

$490

$526

Lesley Ahlberg (Senior Legal Assistant)

$234

$270

Sarah Whitney (Kirkland & Ellis, Project
Assistant)

$148

$157

$530

$530

Bruce Featherstone (Featherstone DeSisto,
Partner)

35

Docket Nos. 958 and 963. NVIDIA requests fees at the following rates:
Person

Exper ience
(Years)

2010

2011

2012

Chris Ottenweller (Partner,
Orrick)

35

$714.00

$748.00

$739.50

Alex Chachkes (Partner,
Orrick)

15

$612.00

$641.75

$637.50

Donald Daybell (Associate,
Orrick)

11

$510.00

$522.75

$531.25

Ulysses Hui (Associate,
Orrick)

11

$510.00

$522.75

$531.25

Christina Von der Ahe
(Associate, Orrick)

5

N/A

$429.25

$476.00

Richard Swope (Associate,
Orrick)

7

$450.50

$429.25

$454.75

11

Amy Dalton (paralegal)

$199.75

$199.75

$208.25$212.50

Kevin Metti (paralegal)

$148.75

$148.75

$148.75$153.00

Roger Thomasch (Partner,
Ballard)

$585.00

$585.00

Jon Bernhardt (Partner,
Ballard)

$425.00

$425.00

Docket No. 970.
A “reasonable rate” is defined as the prevailing market rate in the relevant
community for an attorney of similar experience. Guides, Ltd. v. Yarmouth Group Prop.
Mgmt., Inc., 295 F.3d 1065, 1078 (10th Cir. 2002); Malloy v. Monahan, 73 F.3d 1012,
1018 (10th Cir. 1996). The party requesting fees bears “the burden of showing that the
requested rates are in line with those prevailing in the community.” Ellis v. Univ. of Kan.
Med. Ctr., 163 F.3d 1186, 1203 (10th Cir. 1998). In order to satisfy her burden, plaintiff
must produce “satisfactory evidence–in addition to the attorney’s own affidavits–that the
requested rates are in line with those prevailing in the community for similar services by
lawyers of reasonably comparable skill, experience and reputation.” Blum v. Stenson,
465 U.S. 886, 895 n.11 (1984).
In support of their requested rates, defendants offer the experience of their
attorneys and paraprofessionals; a 2010 National Law Journal (“NLJ”) billing survey,
Docket No. 957-2; a 2010 NLJ nationwide sampling of law firm billing rates, Docket No.
972-2; a declaration from trial attorney Daralyn J. Durie, Docket No. 974; and a 2011
survey prepared by the American Intellectual Property Law Association (“AIPLA”),
Docket No. 975-2.
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The NLJ reports indicate that, in 2010, Denver firms billed between $285 and
$810 per hour for partners and between $170 and $530 per hour for associates.
Docket No. 957-2 at 4; Docket No. 972-2 at 3-4. The AIPLA survey indicates that, in
2010, partners with thirty-five or more years of experience billed between $380 and
$653 hourly and partners with between fifteen and twenty-four years of experience
billed between $350 and $550 hourly. Docket No. 975-2 at 3. It further indicates that
associates with five to six years of experience billed between $240 and $370 hourly;
associates with seven to nine years of experienced billed between $275 and $435
hourly; and associates with ten to fourteen years of experienced billed between $300
and $503 hourly. Docket No. 975-2 at 4. The NLJ nationwide sampling also indicates
that one of the law firms representing BIAX, Dorsey & Whitney, bills between $440 and
$795 for partners and between $180 and $290 for associates. Docket No. 972-2 at 3.
BIAX argues that defendants’ billing rates are unreasonable in comparison with
rates in the Denver market. Docket No. 1018 at 15. In support of this argument, BIAX
offers Mr. Anderson’s statement that “California rates for senior partners at large law
firms as represent Defendants are at $150 to $250 an hour more for a patent litigation
lawyer in a comparable law firm in Denver.” Docket No. 1018-1 at 18, ¶ 46. After
reviewing the materials defendants submitted and consulting his personal experience
and knowledge, Mr. Anderson concluded that “a reasonable hourly rate for this litigation
for lead counsel is $550 per hour for lead counsel or higher level lawyers.” Docket No.
1018-1 at 19, ¶ 48.
A comparison of defendants’ requested rates and the rates disclosed in the NLJ
reports indicates that defendants’ requested fees are within the range that Denver
13

attorneys were routinely billing in 2010. See Docket Nos. 957-2 and 972-2. Moreover,
it appears that the firm BIAX hires bills in the same range.5 See Docket No. 957-2 at 5.
The fact that the requested rates fall, in some instances, toward the top of the
applicable range is not unreasonable given the complexity of the subject matter, the
high stakes of the case, and the contentiousness of the dispute. See Docket No. 664
at 3 (“I can hardly fault NVIDIA’s counsel for meticulously preparing for every litigation
event in anticipation of another fight and, of course, the significant end game”).
In sum, the Court finds that the requested rates are reasonable.
3. Lodestar
The lodestar for NVIDIA is the requested sum of $1,283,030.77. To calculate
the lodestar for the Sony defendants, the Court subtracted ten percent of the total
amount requested, arriving at a sum of $688,773.
B. Non-Taxable Costs
The Sony defendants request an award of non-taxable costs in the amount of
$10,913, Docket No. 1039 at 7, ¶ 26, and NVIDIA requests $28,648.24. Docket No.
1045 at 1. Defendants seek reimbursement for the following types of expenditures:
airfare and lodging for hearings and depositions; miscellaneous deposition expenses;
online research; printing and duplication costs; and deliveries.6 Docket No. 958 at 1920, ¶ 26; Docket No. 970 at 2-3, ¶ 5.

5

BIAX has not disclosed the hourly rates its attorneys billed in this particular
case. See Docket No. 664 at 2.
6

These costs are separate from and in addition to those taxed by the Clerk of
Court. See Docket Nos. 955, 959, 1008, and 1009.
14

Section 285 of Title 35 permits recovery of costs that are not taxable under 28
U.S.C. § 1920. Central Soya Co., Inc. v. Geo. A. Hormel & Co., 723 F.2d 1573, 1578
(Fed. Cir. 1983). Specifically, a party may recover sums “incur[red] in the preparation
for and performance of legal services related to the suit.” Id.; see also Maxwell v.
Angel-Etts of Cal., Inc., 53 F. App’x 561, 569 (Fed. Cir. 2002) (failure to consider nontaxable costs is an abuse of discretion).
BIAX does not raise specific objections to the requested costs, but Mr. Anderson
suggests applying a blanket reduction of ten percent to account for “overstaffing and
inherent inefficiencies which are reasonable to conclude were present in reviewing the
billing.” Docket No. 1018-1 at 24, ¶ 52(e). As the Court, upon review of the records,
does not find any basis for concluding that defendants’ bills reflect inefficiency, the
Court declines to apply this deduction. In addition, the Court finds that the expenses
claimed were reasonably necessary in “preparation for and performance of legal
services related to the suit” and are sufficiently supported by the submitted invoices and
receipts. See Central Soya, 723 F. 2d at 1578; Docket Nos. 960 and 970.
III. CONCLUSION
For the foregoing reasons, it is
ORDERED that NVIDIA is awarded $1,283,030.77 in attorney’s fees and
$28,648.24 in non-taxable costs. It is further

15

ORDERED that the Sony defendants are awarded $688,773 in attorney’s fees
and $10,913 in non-taxable costs.

DATED August 12, 2013.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

16