Specht et al v. Google Inc et al

Filing 352

REPLY by Defendant Google Inc Memorandum in Support of its Motion for Attorney's Fees and Sanctions (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4)(Finn, Herbert)

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
ERICH SPECHT, et al.
Plaintiffs,
v.
GOOGLE INC.,
Defendant.

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C.A. No. 09-cv-2572
Judge Leinenweber
Magistrate Judge Cole

GOOGLE INC.’S REPLY MEMORANDUM IN SUPPORT OF ITS
MOTION FOR ATTORNEY’S FEES AND SANCTIONS

Herbert H. Finn
Jeffrey P. Dunning
Cameron M. Nelson
GREENBERG TRAURIG, LLP
77 W. Wacker Drive, Suite 3100
Chicago, IL 60601
[phone]
Counsel for Defendant Google Inc.

CHI 61,184,621v1 6-2-11

TABLE OF CONTENTS
I.

PLAINTIFFS’ MOTIONS TO STRIKE LACK MERIT ................................................... 1
A.
B.

Google’s Motion Was Filed Within 14 Days of the Entry of Judgment by
the Clerk, and Therefore Was Timely Under Rule 54(d)(2)................................... 3

C.

II.

Google’s Request for Attorney’s Fees Under 15 U.S.C. §1117(a) is Clearly
Governed by Rule 54(d)(2), Not Rule 59(e) ............................................................. 1

Murphy’s Motion to Strike Google’s Request for Sanctions Under 28
U.S.C. §1927, or Alternatively for an Order Requiring Google to Produce
Witnesses for an Evidentiary Hearing, is Likewise Without Merit ........................ 6

THIS IS AN EXCEPTIONAL CASE UNDER 15 U.S.C. §1117(a) ENTITLING
GOOGLE TO AN AWARD OF ATTORNEY’S FEES .................................................... 8
A.
B.

Plaintiffs’ Decisions to Sue Nearly Fifty Defendants and Assert Inflated
Damages Claims Against All of Them Were Not Objectively Reasonable ......... 11

C.
III.

The USPTO’s Refusal to Register Google’s ANDROID Mark Does Not
Make Plaintiffs’ Decision to Sue Objectively Reasonable ................................... 10

Disparity in Size Does Not Require a Finding for Plaintiffs ................................ 13

MURPHY AND FLEMING SHOULD BE SANCTIONED FOR THEIR ROLE
IN UNREASONABLY AND VEXATIOUSLY MULTIPLYING THE
PROCEEDINGS ............................................................................................................... 14
A.

As the Architect of this Litigation, Murphy Bears Overall Responsibility
for His Unreasonable and Vexatious Conduct...................................................... 14
1.

2.

Murphy Had No Reasonable Factual Basis on Which to Name
Android, Inc. and its Former Owners as Defendants................................ 15

3.

Murphy Had No Reasonable Basis For Seeking a TRO or
Preliminary Injunction .............................................................................. 16

4.
B.

Murphy Had No Reasonable Factual Basis on Which to Name
Every Member of the Open Handset Alliance (OHA) as a
Defendant.................................................................................................. 15

Murphy Had No Reasonable Basis on Which to Seek to Depose
the Co-Chairman of Google’s Board of Directors .................................... 17

Plaintiffs’ Co-Counsel Fleming Bears Primary Responsibility for
Unreasonably and Vexatiously Multiplying Proceedings During Discovery....... 18
1.

Fleming’s Representation of Plaintiffs Was Undertaken Based on
Either an Inadequate Investigation or With Full Knowledge That
Plaintiffs’ Claims Were Meritless............................................................. 19

2.

Fleming’s Refusal to Respond to Interrogatories and Document
Requests Was Unreasonable and Vexatious ............................................. 20

i
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3.
4.

Fleming’s Reliance on Documents That Were Not Produced
Timely or Never Produced at All Was Unreasonable and Vexatious....... 24

5.

Fleming’s Failure to Negotiate a Protective Order in Good Faith
Was Unreasonable and Vexatious ............................................................ 25

6.
IV.

Fleming’s Pursuit of Third-Party Discovery Was Unreasonable and
Vexatious .................................................................................................. 23

Fleming’s Untimely Attempt to Add New Defendants Was
Unreasonable and Vexatious..................................................................... 25

CONCLUSION................................................................................................................. 27

ii
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TABLE OF AUTHORITIES
Cases
Abbott Labs. v. Mead Johnson & Co.,
971 F.2d 6 (7th Cir. 1992) ........................................................................................................ 17
Am. Nat’l Bank and Trust Co. of Chicago v. Secretary of Housing and Urban Dev.,
946 F.2d 1286 (7th Cir. 1991) .................................................................................................... 3
Autotech Technology Limited Partnership v. Automationdirect.com,
471 F.3d 745 (7th Cir. 2006) .................................................................................................... 11
Bittner v. Sadoff & Rudoy Indus.,
728 F.2d 820 (7th Cir. 1984) ...................................................................................................... 2
Budinich v. Becton Dickinson & Co.,
486 U.S. 196 (1988).................................................................................................................... 2
Cardenas v. Prudential Ins. Co. of America,
2003 WL 21293757, *1 (D.Minn. May 16, 2003).................................................................... 18
Exchange Nat’l Bank of Chicago v. Daniels,
763 F.2d 286 (7th Cir. 1985) ...................................................................................................... 2
FM Industries, Inc. v. Citicorp Credit Services, Inc.,
614 F.3d 335 (7th Cir. 2010) ...................................................................................................... 9
Folwell v. Hernandez,
210 F.R.D. 169 (M.D.N.C. 2002) ............................................................................................. 18
Hairline Creations, Inc. v. Kefalas,
664 F.2d 652 (7th Cir. 1981) ...................................................................................................... 1
Houston v. Grenier,
174 F.3d 287 (2nd Cir. 1999) ..................................................................................................... 5
In re Council,
2006 WL 2087042, *1 (E.D.Pa. July 21, 2006).......................................................................... 4
In re Dixie Restaurants, Inc.,
105 F.3d 1405 (Fed. Cir. 1997) ................................................................................................ 10
In re Specht,
622 F.3d 697 (7th Cir. 2010) .................................................................................................... 27
In re Sulfuric Acid Antitrust Litigation,
231 F.R.D. 351 (N.D.Ill. 2005)................................................................................................. 21
Knorr Brake Corp. v. Harbil, Inc.,
738 F.2d 223 (7th Cir. 1984) .................................................................................................... 19
Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC,
626 F.3d 958 (7th Cir. 2010) ............................................................................................. passim

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Ogborn v. United Food and Comm’l Workers Union, Local No. 881,
305 F.3d 763 (7th Cir. 2002) .................................................................................................. 4, 5
Roadway Express, Inc. v. Piper,
447 U.S. 752 (1980).................................................................................................................... 8
Ropak Corp. v. Plastican, Inc.,
2006 WL 1005406, *5 (N.D.Ill. Apr. 17, 2006) ....................................................................... 21
SGS-Thomson Microelectronics, Inc. v. Int’l Rectifier Corp.,
31 F.3d 1177, 1994 WL 374529, *4 (Fed. Cir. July 14, 1994).................................................. 3
Specht v. Google Inc.,
2010 WL 5288154, *14-15 (N.D.Ill. Dec. 17, 2010) ......................................................... 15, 20
Specht v. Google Inc.,
660 F.Supp.2d 858 (N.D.Ill. 2009) ........................................................................................... 12
Transcap Assoc., Inc. v. Euler Hermes American Credit Indemnity Co.,
2009 WL 1543857, *3 (N.D.Ill. June 3, 2009)......................................................................... 21
U.S. v. Fiorelli,
337 F.3d 282 (3rd Cir. 2003) ...................................................................................................... 4
White v. New Hampshire Dept. of Employment Security,
455 U.S. 445 (1982).................................................................................................................... 2
Statutes
15 U.S.C. §1117.......................................................................................................................... 1, 6
15 U.S.C. §1117(a) ............................................................................................................... 1, 7, 27
28 U.S.C. §1927...................................................................................................................... 1, 6, 7
Rules
Fed.R.Civ.P. 54(d)(2)...................................................................................................................... 1
Fed.R.Civ.P. 58............................................................................................................................... 3
Fed.R.Civ.P. 59(e) .......................................................................................................................... 1

iv
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Google filed a single motion seeking (i) a finding that this is an exceptional case under 15
U.S.C. §1117 justifying an award of Google’s reasonable attorney’s fees, and (ii) sanctions
against Plaintiffs’ attorneys under 28 U.S.C. §1927 due to their having unreasonably and
vexatiously multiplied these proceedings (“Motion”, Dkt. No. 314). In response, Plaintiffs and
their current counsel, Martin Murphy (“Murphy”), continue such conduct by needlessly filing
four separate pleadings (Dkt. Nos. 332, 333, 347 and 348). Plaintiffs’ former counsel Patrick
Fleming (“Fleming”) and his law firm has also filed a response (Dkt. No. 343). As instructed by
the Court, Google responds to all of those filings below.1
I.

PLAINTIFFS’ MOTIONS TO STRIKE LACK MERIT
Plaintiffs and Murphy each moved to strike Google’s Motion (Dkt. Nos. 332, 333).

These motions are meritless, and merely comprise more of Plaintiffs’ and Murphy’s
obstructionist and vexatious tactics.
A.

Google’s Request for Attorney’s Fees Under 15 U.S.C. §1117(a) is Clearly
Governed by Rule 54(d)(2), Not Rule 59(e)

Plaintiffs’ first frivolous argument is that a motion for attorney’s fees under the
exceptional case provision of 15 U.S.C. §1117(a) constitutes a motion to alter or amend the
judgment under Fed.R.Civ.P. 59(e), and must be analyzed under the “manifest error of law”
standard applicable to Rule 59(e) (Dkt. No. 332, pp. 1-4). Plaintiffs’ only support for that
argument is a thirty-year-old Seventh Circuit decision, Hairline Creations, Inc. v. Kefalas, 664
F.2d 652 (7th Cir. 1981), which is no longer good law on that issue.
In 1981 there was no Federal Rule which addressed the filing of a motion for attorney’s
fees. Id. at 656. Because the law was unclear as to when a motion for attorney’s fees under

1

On April 28, 2011 the Court granted Google leave to file a single oversize brief responding to
all of the papers filed by Plaintiffs and their counsel (Dkt. No. 336).
1
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§1117(a) must be filed, the Hairline Creations court held that the ten-day period for a motion to
alter or amend the judgment under Rule 59(e), rather than the indefinite “reasonable time”
requirement of Rule 54(d), should apply to such motions. Id. at 659-60. That holding was
designed to ensure that the determination of a request for attorney’s fees “occur close in time to
the judgment in order to prevent unnecessary relitigation.” Id. at 659.
Notably, the Supreme Court expressly rejected this approach a year later:
A motion for attorney’s fees is unlike a motion to alter or amend a judgment. It
does not imply a change in the judgment, but merely seeks what is due because of
the judgment. It is, therefore, not governed by the provisions of Rule 59(e).
White v. New Hampshire Dept. of Employment Security, 455 U.S. 445, 452 (1982) (citation
omitted). And again, in 1988:
[W]e think it indisputable that a claim for attorney’s fees is not part of the merits
of the action to which the fees pertain. Such an award does not remedy the injury
giving rise to the action, and indeed is often available to the party defending
against the action.
Budinich v. Becton Dickinson & Co., 486 U.S. 196, 200 (1988). Furthermore, the Seventh
Circuit has expressly recognized that “Hairline Creations is an outlier” and questioned whether,
in view of the Supreme Court’s decision in White, Hairline Creations was still good law. Bittner
v. Sadoff & Rudoy Indus., 728 F.2d 820, 827-28 (7th Cir. 1984). The Seventh Circuit expressly
noted that it “may reexamine Hairline if the occasion arises.” Exchange Nat’l Bank of Chicago
v. Daniels, 763 F.2d 286, 293-94 (7th Cir. 1985).
But the occasion never arose, because the Federal Rules of Civil Procedure were
amended in 1993 to add Rule 54(d)(2), which expressly provides that “unless a statute or court
order provides otherwise,” a motion for attorney’s fees must “be filed no later than 14 days after
the entry of judgment.” (emphasis added). The Advisory Committee Notes to the new Rule
54(d)(2) stated that “[p]rompt filing affords an opportunity for the court to resolve fee disputes

2
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shortly after trial, while the services performed are freshly in mind [and] to make its ruling on a
fee request in time for any appellate review of a dispute over fees to proceed at the same time as
review on the merits of the case.” The new Rule 54(d)(2) precisely addressed the Hairline
Creations court’s concern that the determination of a request for attorney’s fees “occur close in
time to the judgment in order to prevent unnecessary relitigation.” At least one Circuit Court
came to that conclusion shortly after 1993, noting that “Hairline was decided by the Seventh
Circuit before Budinich and White and hence has little precedential value.” SGS-Thomson
Microelectronics, Inc. v. Int’l Rectifier Corp., 31 F.3d 1177, 1994 WL 374529, *4 (Fed. Cir. July
14, 1994).
In light of the Supreme Court decisions in Budinich and White, and the enactment of Rule
54(d)(2) in 1993, Plaintiffs’ and Murphy’s arguments are frivolous.
B.

Google’s Motion Was Filed Within 14 Days of the Entry of Judgment by the
Clerk, and Therefore Was Timely Under Rule 54(d)(2)

Plaintiffs’ next frivolous argument is that Google’s Motion was untimely because the
Court purportedly “entered” its judgment on February 24, 2011, even though the judgment was
not entered on the docket by the Clerk until March 11, 2011.2
A judgment order is effective only when the Clerk enters it in the court’s docket, not
when it is signed or filed by the Court:

2

Under Fed.R.Civ.P. 58, a judgment is not effective until it is set forth on a separate document
and entered on the District Court civil docket. Am. Nat’l Bank and Trust Co. of Chicago v.
Secretary of Housing and Urban Dev., 946 F.2d 1286, 1288 (7th Cir. 1991). While Plaintiffs
claim that “the technical requirements of Rules 54 and 58 need not be met for an Order to be
final and appealable” (Dkt. No. 332, p. 6), the cases cited by Plaintiffs for that proposition have
nothing to do with the issue of determining the timeliness of a motion under Rule 54(d), but
rather address the entirely unrelated issue of whether a court’s order disposing of less than all of
the claims asserted in a case qualified as an appealable judgment under Rule 54(b), and are thus
entirely inapposite to the issue before this Court.
3
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[Plaintiff] confuses the date that the district court filed its judgment with the date
that it entered judgment. The date in the lefthand column of the district court’s
docket sheet provides the filing date-here September 22-whereas the bracketed
date at the end of the entry provides the entry date-here September 25, as reflected
by the notation “[e]ntry date 9/25/00.” [T]he entry date controls [under Rule
54(d)].
Ogborn v. United Food and Comm’l Workers Union, Local No. 881, 305 F.3d 763, 769-70 (7th
Cir. 2002); see also U.S. v. Fiorelli, 337 F.3d 282, 287 (3rd Cir. 2003) (“Rules 58 and 79 make
clear that ‘entry’ is the formal act of adding the judgment or order to the clerk’s docket and that
the date of entry must be memorialized by a separate notation. Thus, although an order may be
signed by the district court, received by the clerk, and entered in the docket on different days, the
entry date controls.”) (citing Ogborn); In re Council, 2006 WL 2087042, *1 (E.D.Pa. July 21,
2006) (citing decisions from various courts of appeals, including Ogborn, for the “clear” rule that
the time for post-judgment filings “begins to run not from the date an order is signed by a judge,
nor from the date that an order is ‘filed,’ but, rather, from the date that an Order is ‘entered’ onto
the public docket by the Clerk’s Office”).
There can be no reasonable dispute that the entry of judgment in this case occurred on
March 11, 2011. The relevant entries on the Court’s docket sheet3 read as follows:
02/24/2011

310

MINUTE entry before Honorable Harry D. Leinenweber:Plaintiffs’
Motion for reconsideration is denied on all counts. Google’s oral motion
to dismiss without prejudice Counts II, IV, V, VI, VII of the counterclaim
is granted. The Court having previously granted Google’s Motion for
summary judgment on Counts I-V of Plaintiffs’ Second Amended
Complaint, and Counts I and III of Google’s counterclaim. Judgment is
hereby final for purposes of appeal. Civil case terminated. Mailed notice
(wp, ) (Entered: 03/11/2011)

02/24/2011

311

ENTERED JUDGMENT on 2/24/2011:Mailed notice(wp, ) (Entered:
03/11/2011)

3

A copy of the relevant portion of the Court’s docket sheet, obtained through the Court’s
CM/ECF system, is attached as Ex. 1 hereto.
4

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Clearly, the entry date of judgment in this case was March 11, 2011, as reflected by the notation
“(Entered: 03/11/2011)” in Docket Entry No. 311.4 The fact that the Court filed the judgment
order with the Clerk on February 24 is of no consequence. Ogborn, 305 F.3d at 769-70. Thus,
under Local Rule 54.1, Google’s Motion was due within 14 days after March 11, 2011. Because
Google filed its Motion on March 22, it was timely.
Under Plaintiffs’ frivolous argument, Google’s Motion for Attorney’s Fees would have
been due before Google even received a copy of the Court’s judgment order. Google’s counsel
did not receive the Court’s written judgment order until that order was entered on the docket on
March 11.5 But Plaintiffs argue that Google was required to file its Motion within 14 days after
February 24 – or by March 10.
This is yet another example of Plaintiffs’ and Murphy’s unreasonable and vexatious
conduct. Plaintiffs and Mr. Murphy were well aware of the Ogborn decision prior to filing their
motion to strike, since Google cited the Ogborn decision in its Motion for Leave to File an
Oversize Brief in Support of its Motion for Attorney’s Fees (Dkt. No. 315, p. 3). Given
Murphy’s penchant for digging up thirty-year-old cases which have been overruled, Murphy
must have encountered Ogborn in his research as well. And even if he had not, he certainly was
aware of it when Google cited it. Yet, this binding precedent is never once acknowledged, let
alone distinguished by Plaintiffs or Murphy.
4

Where a federal court clerk enters a document in the docket one or more days after it was filed,
the CM/ECF program automatically generates “a notation that explicitly shows the date the
document was entered. This appears as a bracketed phrase, for example, ‘[Entry date 04/01/99]’
or ‘[EOD 4/1/99].’“ Houston v. Grenier, 174 F.3d 287, 288-89 (2nd Cir. 1999).
5

Copies of the e-mails generated by the Court’s CM/ECF system transmitting the minute order
and judgment order reflected in Docket Entry Nos. 310 and 311, clearly showing that those
orders were not sent to counsel until March 11, 2011, are attached as Ex. 2.

5
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Plaintiffs’ additional argument that Google somehow timed the filing of its Motion “to
prejudice Plaintiffs’ attorney [Murphy] and bury him in paperwork so that he can’t concentrate
on the appellate brief” (Dkt. No. 332, p. 8) is utter nonsense; it has nothing to do with timeliness
under the Rules, and in any event Plaintiffs and Murphy could have simply requested additional
time.
C.

Murphy’s Motion to Strike Google’s Request for Sanctions Under 28 U.S.C.
§1927, or Alternatively for an Order Requiring Google to Produce Witnesses
for an Evidentiary Hearing, is Likewise Without Merit

Murphy filed a separate motion to strike Google’s request for sanctions against Murphy
under 28 U.S.C. §1927 (Dkt. No. 333). Once again, Murphy’s motion is frivolous.
First, Murphy confuses the issues by stating the truism that §1927 does not provide a
basis for sanctioning a party (Dkt. No. 333, pp. 2-3). True enough – Google seeks sanctions
under §1927 against Plaintiffs’ counsel, not Plaintiffs themselves.
Murphy next argues that “[i]t is impossible to respond to Google’s motion in that it fails
to separate out fees and costs it is seeking against plaintiffs from costs and fees it seeks against
the attorneys” or to “specify exactly what amount Google is claiming as ‘excess costs and fees’“
(Dkt. No. 333, p. 3). Murphy cites no authority for the proposition that Google is required to
provide such a breakdown, and no such authority exists. Indeed, Rule 54(d)(2)(C) expressly
provides that the Court “may decide issues of liability for fees before receiving submissions on
the value of services.” Nor is Google required to appropriate some fees to Plaintiffs while
appropriating others to Plaintiffs’ counsel. Google is entitled to all of its fees and costs from
Plaintiffs under 15 U.S.C. §1117. And it is entitled to all of its fees and costs from Plaintiffs’
counsel under 28 U.S.C. §1927. There is no reason that both Plaintiffs and their counsel cannot
be responsible for the same fees -- albeit on different bases.

6
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Murphy then devotes the remainder of his motion to attempting to impugn the conduct of
Google and its counsel, as if that would somehow justify Murphy’s own unreasonable and
vexatious conduct. (Dkt. No. 333, pp. 3-12.) Such personal attacks have become par for the
course for Plaintiffs and their counsel. As usual, Murphy cites no evidence to support his
allegations; the single invoice Murphy relies upon does not illustrate any misconduct, and in any
event that invoice was improperly retained by Murphy after his co-counsel represented it had
been destroyed.6 Indeed, the Court has sanctioned Murphy for his outrageous conduct in that
regard (Dkt. No. 351).7
Murphy’s reckless and unsupported accusations of misconduct by Google and its counsel,
in addition to being thoroughly irrelevant to the issue before the Court, comprise the very type of
vexatious conduct which the exceptional case provision of 15 U.S.C. §1117(a) and sanctions
under 28 U.S.C. §1927 are intended to prevent. See Nightingale Home Healthcare, Inc. v.
Anodyne Therapy, LLC, 626 F.3d 958, 966 (7th Cir. 2010) (noting that plaintiff, in responding to
motion for attorney’s fees under §1117(a), “continue[d] its frivolous litigation tactics” by
arguing misconduct by its adversary).
Murphy’s request for an “evidentiary hearing” is also frivolous. None of the witnesses
Murphy purports to call have any bearing on Murphy’s misconduct. For example, Murphy
demands that two of Google’s most senior officers appear and testify at the hearing – despite the
fact that they have had no involvement with this lawsuit or the underlying conduct at issue. It is
Murphy’s, not Google’s or its counsel’s, conduct that is at issue here. Rule 54(d)(2)(C) merely
6

See Google’s Motion for Protective Order (Dkt. No. 337) and the Court’s Order granting that
motion (Dkt. No. 351).
7

As Google seeks an award of fees addressing the totality of Murphy’s conduct throughout this
entire case, Google has not separately addressed the issue of appropriate sanctions for Murphy’s
conduct in this instance, which the Court has already found to have lacked justification.
7

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requires that the Court “give an opportunity for adversary submissions on the motion.” The
Court has done so here by considering Plaintiffs’ and Murphy’s excessive briefing.
While Murphy cites the Supreme Court decision in Roadway Express, Inc. v. Piper, 447
U.S. 752, 767 (1980), for the proposition that attorney’s fees should not be awarded under §1927
“without fair notice and an opportunity for a hearing on the record,” that decision certainly does
not require the Court to hold an evidentiary hearing and permit an attorney defending against a
motion under §1927 to undertake a fishing expedition into purported misconduct on the part of
its adversary. Murphy has not identified any evidence that is relevant to the issues before the
Court. Murphy’s request for an Order requiring Google’s attorneys and senior officers to appear
at an evidentiary hearing comprises nothing more than another vexatious tactic conceived for the
purpose of causing expense and inconvenience for Google, with no legal basis whatsoever. And,
this is becoming something of a habit for Murphy – he earlier attempted to drag Google’s senior
officers into this lawsuit, despite their utter lack of involvement in any relevant conduct.8
II.

THIS IS AN EXCEPTIONAL CASE UNDER 15 U.S.C. §1117(a) ENTITLING
GOOGLE TO AN AWARD OF ATTORNEY’S FEES
An exceptional case finding is justified where a party’s claim was “objectively

unreasonable – was a claim or defense that a rational litigant would pursue only because it would
impose disproportionate costs on his opponent – in other words only because it was extortionate
in character if not necessarily in provable intention.” Nightingale Home Healthcare, Inc. v.
Anodyne Therapy, LLC, 626 F.3d 958, 965 (7th Cir. 2010).9 As discussed in Google’s Motion

8

See Plaintiffs’ Motion for Leave to Take Certain Depositions Prior to Filing Their Second
Amended Complaint (Dkt. No. 114) and the Court’s Order denying that motion (Dkt. No. 118).

9

Plaintiffs incorrectly represent that the Nightingale decision set forth a three-factor test for
determining whether a plaintiff’s decision to pursue a lawsuit was so akin to an “abuse of
process” so as to render the case exceptional (Plaintiffs’ Response, Dkt. No. 347, p. 6).
Although the Nightingale decision discusses each of the factors noted by Plaintiffs, it does not
8
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and herein, Plaintiffs’ pursuit of its infringement claims against Google was clearly objectively
unreasonable and “extortionate in character.”
At the outset, Plaintiffs complain that Google “chose this forum for the specific purpose
of imposing disproportionate costs on Specht” (Plaintiffs’ Response, Dkt. No. 347, pp. 2-3, 7).
Again, Plaintiffs are the poor victim. Apparently, Plaintiffs forget that it was they who sued
Google -- not the other way around. They also forget that they chose the forum by filing this
lawsuit in the first place, without ever contacting Google beforehand. Plaintiffs’ complaint that
Google did not “contact[ ] Specht to work out an agreement” (Id., p. 2) is particularly ridiculous - as there was nothing to work out; Plaintiffs had no rights in any relevant marks. And even if
they did have rights, Plaintiffs chose not to contact Google and instead file a lawsuit seeking
relief on an order of magnitude beyond anything Plaintiffs’ marks could ever be worth – such
claims naturally encourage Defendants to respond vigorously.

See FM Industries, Inc. v.

Citicorp Credit Services, Inc., 614 F.3d 335, 340 (7th Cir. 2010) (plaintiff’s “stupendous”
demand for $15 billion in damages “led defendants to generate far more paper, and endure higher
legal bills, than any plausible claim would have warranted”). Moreover, Google is the only party
that ever attempted to initiate a dialog regarding settlement of this case – attempts which
Plaintiffs consistently rebuffed (see Google’s Motion, Dkt. No. 314, p. 16; see also Declaration
of P. Andrew Fleming, Dkt. No. 344, Ex. A, at ¶ 16 (“I never approached Google about
settlement. Google initiated settlement discussions twice.”)).

fashion them into any sort of test requiring the Court to evaluate each of them, as Plaintiffs
suggest. Rather, as noted above, the Nightingale decision states that a Court can find a case to be
exceptional if a party’s claim was “objectively unreasonable”. Id. at 965.
9
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A.

The USPTO’s Refusal to Register Google’s ANDROID Mark Does Not Make
Plaintiffs’ Decision to Sue Objectively Reasonable

Plaintiffs’ decision to file this lawsuit was not “objectively reasonable.” The USPTO
denied Google’s application to register the ANDROID mark, on the basis that Google’s mark
was purportedly confusingly similar with Android Data Corporation’s registered ANDROID
DATA mark (Plaintiffs’ Response, Dkt. No. 347, p. 5). But the trademark examiners at the
USPTO make such determinations on a limited factual record, and had to assume that Plaintiffs’
mark was valid. An examiner is simply not allowed to consider any evidence which calls into
question the validity of an existing registration (such as evidence of abandonment). See In re
Dixie Restaurants, Inc., 105 F.3d 1405, 1408 (Fed. Cir. 1997) (noting that a registration is
presumed valid and “it is not open to an applicant to prove abandonment of a registered mark” in
an ex parte application proceeding) (citation omitted). Google even submitted evidence showing
Plaintiffs’ abandonment of the ANDROID DATA mark to the examiner, but the examiner could
not (and did not) consider that evidence (see exhibits to Plaintiffs’ Complaint, Dkt. No. 1, at pp.
41-55).
Unlike the trademark examiner, Plaintiffs (and their counsel) were fully aware that:
*

in April 2009 that they had not made any bona fide trademark use of the
ANDROID DATA mark since at least 2003;

*

Android Data Corporation had not existed for several years, and had to be
resurrected by filing years worth of belated annual reports; and

*

Plaintiffs could not show the sale of a single product or service under the asserted
marks since 2003.

Indeed, Specht told Kenneth Robblee as much when Robblee expressed interest in
purchasing Specht’s long-defunct corporation.10 Having learned from Robblee that he might be
10

See Transcript of Robblee Deposition, Google’s Summary Judgment Ex. 48, at Dkt. No. 25717, pp. 97-102, 116-124.
10
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sitting on something “golden,” Plaintiffs (with the advice and consent of counsel) sued Google
despite knowing full well that Specht had not made any bona fide use of the asserted marks in
commerce for the better part of a decade. Murphy admitted that the motivation for filing the
lawsuit was for obtaining nuisance value settlements from a large number of defendants. Any
objectively reasonable person (including Plaintiffs’ counsel) in Specht’s position would have
understood that Specht’s five-plus years of non-use were fatal to Plaintiffs’ claims.

Thus,

Plaintiffs cannot demonstrate that the decision to bring this lawsuit was objectively reasonable.
B.

Plaintiffs’ Decisions to Sue Nearly Fifty Defendants and Assert Inflated
Damages Claims Against All of Them Were Not Objectively Reasonable

Plaintiffs’ attempt to justify their conduct in naming nearly fifty defendants and asserting
counterfeiting claims against them in order to claim absurdly inflated damages likewise fails to
show that those actions were objectively reasonable.11 First, Plaintiffs repeat their unpersuasive
argument that they were justified in suing all forty-eight members of the Open Handset Alliance
(OHA) because the OHA was supposedly a partnership that “created” the ANDROID software
(Plaintiffs’ Response, Dkt. No. 347, p. 8) – a claim which remains unsupported by any facts or
the law. Plaintiffs don’t even bother to address the actual legal requirements for creation of a
legal partnership – because to do so would be fatal to their argument.12 Nor did Plaintiffs ever

11

This Court has previously held that there was no legitimate basis for Plaintiffs’ decision to
name 48 defendants or to assert allegations of counterfeiting against each and every one of them.
Specht v. Google Inc., 660 F.Supp.2d 858, 865-66 (N.D.Ill. 2009). This decision was later
confirmed by the Seventh Circuit. See In re Specht, 622 F.3d 697, 701 (7th Cir. 2010) (noting
that this suit “began with 47 defendants too many (raising the question whether Specht chose the
list of defendants to induce unwarranted payments in settlement)”).
12

To establish a partnership, a plaintiff must show that the parties (1) joined together to carry on
a trade or venture, (2) for their common benefit, (3) with each contributing property or services
to the enterprise, and (4) having a community of interest in the profits. Autotech Technology
Limited Partnership v. Automationdirect.com, 471 F.3d 745, 748 (7th Cir. 2006) (citation
omitted). The burden of proving the existence of a partnership is on the person who claims such
a relationship exists. Id.
11
CHI 61,184,621v1 6-2-11

plead the existence of a partnership or identify a single piece of evidence showing that Google
entered into an agreement with any of the other 47 named defendants (much less all of them)
which would give rise to a legal partnership.
As this Court noted in dismissing Plaintiffs’ claims against 47 of those 48 defendants, the
prerequisite for trademark infringement is use of a trademark in commerce. Specht v. Google
Inc., 660 F.Supp.2d 858, 863-64 (N.D.Ill. 2009). Plaintiffs did not allege any actual use of the
ANDROID mark in commerce by any of the non-Google defendants in their original or First
Amended Complaint. An objectively reasonable litigant would not have sued first and asked
questions later – the approach taken by Plaintiffs in this case.
Likewise, Plaintiffs attempt to rewrite history by suggesting that (i) they only asserted a
claim of $2 million in statutory damages for counterfeiting against Google, and (ii) that claim
was based on a purported finding by the USPTO that “Google was using an identical mark”
(Plaintiffs’ Response, Dkt. No. 347, pp. 8-9). Neither of these statements are true. First,
Plaintiffs’ original Complaint and First Amended Complaint both expressly requested an award
of “statutory damages of $2,000,000 against each of the Defendants” (see Complaint, Dkt. No.
1, p. 18; First Amended Complaint, Dkt. No. 38, p. 22) (emphasis added).13

Second, the

trademark examiner who examined Google’s application to register the ANDROID mark never
stated that it was “identical” to Plaintiffs’ registered ANDROID DATA mark (as the marks quite
clearly are not identical). He merely found those marks to be “sufficiently similar to cause a
likelihood of confusion under Trademark Action Section 2(d)” (see exhibits to Plaintiffs’
Complaint, Dkt. No. 1, at p. 34).
13

Indeed, it was reported in the press at the time that Plaintiffs filed this lawsuit that Plaintiffs
were seeking nearly $100 million in damages from the named defendants (See Forbes.com
article, Google’s Summary Judgment Ex. 57, at Dkt. No. 257-26).

12
CHI 61,184,621v1 6-2-11

Plaintiffs’ argument that their lead counsel Murphy is “a generalist and not a specialist in
the area of trademark litigation” (Plaintiffs’ Response, Dkt. No. 347, p. 9) does not excuse
Plaintiffs’ reckless pursuit of those claims. Indeed, knowing of Murphy’s expertise (or purported
lack thereof), Plaintiffs still decided to hire Mr. Murphy to represent them. Having chosen
counsel, Plaintiffs cannot now disavow that same counsel, because it may have been a poor
choice.14
C.

Disparity in Size Does Not Require a Finding for Plaintiffs

While Plaintiffs note that “disparity in size will often be relevant in evaluating the
legitimacy of the suit” (Plaintiffs’ Response, Dkt. No. 347, p. 9, citing Nightingale, 626 F.3d at
964), the mere fact that there is a size disparity between Plaintiffs and Google does not require a
finding that this is not an exceptional case. Using a lawsuit to improperly distort markets, as
Plaintiffs attempted to do here, is the more compelling disparity. Here Plaintiffs are attempting
to use their lack of assets as a shield to assert meritless claims. Plaintiffs did not bring this
lawsuit to remedy some harm in the marketplace; they brought this lawsuit to create harm.
This lawsuit is the precise opposite of what trademark law exists to protect. It is not
uncommon for individuals or small entities to file nuisance suits of questionable merit against
large, successful corporations such as Google, in the hope that the defendant will make a
business decision to settle up front rather than incur the costs of defending against the suit (which
often are likely to total many times a plaintiff’s initial demand). Plaintiffs’ suit in this case was
predicated on that very model – as Murphy’s interview with Forbes.com made clear early on
(Forbes.com article, Google’s Summary Judgment Ex. 57, at Dkt. No. 257-26).

14

The Court is reminded that Mr. Murphy is Plaintiff Erich Specht’s brother-in-law.
13

CHI 61,184,621v1 6-2-11

Moreover, while Plaintiffs argue that an award of attorney’s fees would be unreasonable,
because of Plaintiffs’ purportedly “limited resources” (Plaintiffs’ Response, Dkt. No. 347, pp. 910), Google notes that Plaintiffs have offered no evidence as to the extent of their resources. In
fact, Plaintiffs’ claim that their pursuit of this case has generated “$2.5 million in unpaid attorney
time and over $175,000 in unreimbursed costs” (Plaintiffs’ Response, Dkt. No. 347, p. 7)
undermines Plaintiffs’ claims of “limited resources.” Somebody is paying at least those costs, if
not those fees. In view of Plaintiffs’ dogged pursuit of their meritless claims (to the purported
tune of $2.5 million of attorney time), Google’s request to be reimbursed for its fees incurred in
defending against those claims is hardly “excessive and unreasonable.”
III.

MURPHY AND FLEMING SHOULD BE SANCTIONED FOR THEIR ROLE IN
UNREASONABLY AND VEXATIOUSLY MULTIPLYING THE PROCEEDINGS
Both Murphy and Fleming have filed separate responses to Google’s Motion, arguing

why they should not personally be sanctioned for their conduct in unreasonably and vexatiously
multiplying these proceedings.15 While it is unnecessary and impractical for Google to address
every point raised in those responses, Google responds to the most salient points below.
A.

As the Architect of this Litigation, Murphy Bears Overall Responsibility for
His Unreasonable and Vexatious Conduct

At the outset, Google notes that Murphy attempts to defend his conduct in this case based
in large part on information (such as deposition testimony) subsequently obtained by Plaintiffs
through discovery – information which was not available to him at the time of those actions.16
Such information, which was not in Murphy’s possession at the time those actions were taken,
cannot provide justification for those actions after the fact.

15

See Murphy’s Response, Dkt. No. 348, and Fleming’s Response, Dkt. No. 343.

16

See, e.g., Murphy’s Response, Dkt. No. 348, at p. 4 (citing the Android, Inc. Stock Purchase
Agreement, which “was produced after the FAC [First Amended Complaint] was filed”).
14

CHI 61,184,621v1 6-2-11

1.

Murphy Had No Reasonable Factual Basis on Which to Name Every
Member of the Open Handset Alliance (OHA) as a Defendant

As discussed in Sec. II.B, supra, Plaintiffs have not identified a single piece of evidence
which would support a finding that Google formed a legal partnership with any of the other 47
original defendants, which would have provided Plaintiffs or Murphy with a reasonable factual
basis for naming every member of the OHA as a defendant in this case. Murphy suggests that
the fact that Google released a press release stating that its “Android” software was “Developed
by the Open Handset Alliance” was sufficient for him to form a reasonable belief that the OHA
was a legal partnership, and that he must sue every one of its members (Murphy’s Response,
Dkt. No. 348, p. 1, n.1). Nonsense.
Moreover, Murphy still doesn’t have the facts right.

He claims that “the software

companies, that were part of the OHA, created the Android software” (Id., pp. 1-2). That is
simply false.

Google created the “Android” software.17

The fact that Google created a

marketing alliance to market and promote its “Android” software does not create a legal
partnership when none of the indicia of a partnership is present.

Murphy’s “partnership”

argument is nothing more than an after-the-fact argument concocted by Murphy to justify his
decision to name in excess of fifty defendants without any reasonable basis for doing so.
2.

Murphy Had No Reasonable Factual Basis on Which to Name Android, Inc.
and its Former Owners as Defendants

Murphy argues that it was reasonable for him to add Android, Inc. and its four individual
owners as defendants because those individuals sold the company to Google in 2005 (Murphy’s
17

See Specht v. Google Inc., 2010 WL 5288154, *3 (N.D.Ill. Dec. 17, 2010) (noting that on
November 12, 2007, “Google released the Android software development kit, which allowed
software developers to create Android applications”). The “software companies” to which
Murphy refers develop applications software for mobile devices which use Google’s “Android”
software as an operating system.

15
CHI 61,184,621v1 6-2-11

Response, Dkt. No. 348, pp. 2-4). But Murphy identifies no facts showing that Android, Inc.
ever used the ANDROID trademark in commerce,18 or any legal basis to conclude that the act of
incorporating or selling a company under the name “Android, Inc.” could somehow give rise to
liability for trademark infringement. The fact that the company’s corporate name was “Android,
Inc.” does not mean that any “ANDROID” trademark existed at the time it was acquired by
Google.
The real explanation for Murphy’s decision to name the individual owners of Android,
Inc. as defendants is quite simple. Murphy learned that Google had paid those individuals a
significant amount of money in order to acquire Android, Inc. (see Murphy’s Ex. 3, Dkt. No.
349, at pp. 2-3, noting that “the eventual purchase price was estimated at as much as $50
million”). These individuals simply represented additional deep pockets from which Murphy
hoped to extract settlement payments by threatening them with a potential liability of $2 million
in statutory damages for counterfeiting (among other baseless claims).

That decision was

unreasonable and vexatious, and further contributed to unduly multiplying these proceedings.
3.

Murphy Had No Reasonable Basis For Seeking a TRO or Preliminary
Injunction

Murphy argues that his filing of a Motion for TRO/Preliminary Injunction (Dkt. No. 6)
was justified “to stop Google from promoting Android at a trade show and on its site” (Murphy’s
Response, Dkt. No. 348, p. 4). However, just as in the original motion itself, Murphy ignores the
fact that a required element of a motion for a TRO or preliminary injunction is a showing of
irreparable harm to the movant. Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6, 11-12 (7th

18

Android, Inc. was nothing more than a startup company which never sold a single product or
service or earned a dime of profit during its short life. Indeed, Murphy acknowledges that
evidence produced by Google showed that Android, Inc. “had a negative net worth of $1
million” at the time it was acquired by Google (Murphy’s Response, Dkt. No. 348, p. 2, n.5).
16
CHI 61,184,621v1 6-2-11

Cir. 1992). Indeed, that is the very purpose of preliminary injunctive relief – to maintain the
status quo in order to prevent irreparable harm to a movant that cannot be compensated by
money damages alone.
Murphy failed to explain then, and fails to explain now, how in May 2009 Google’s
promotion of its “Android” software (which it had released 18 months earlier and had
continuously distributed and promoted during that period) would somehow have irreparably
harmed Plaintiffs – whose “Android Data” software had been out of the marketplace for years.
Moreover, Murphy misrepresents the nature of the relief sought by Plaintiffs’ Motion for
Preliminary Injunction/TRO, as merely “to stop Google from promoting Android at a trade show
and on its site” (Murphy’s Response, Dkt. No. 348, p. 4). Rather, Plaintiffs sought a broad
injunction “restraining and enjoining the defendants from . . . using any trademark, including
Android, that imitates or is confusingly similar to or in anyway similar to Plaintiff’s trademark
Android Data…” (Dkt. No. 6, p. 4) (emphasis added).

Plaintiffs requested a TRO and

preliminary injunction precluding Google or any other company from making any use of the
ANDROID mark whatsoever. Such a request was manifestly unreasonable and vexatious, in
view of the lack of any harm (irreparable or otherwise) which Google’s use of the ANDROID
mark caused to Plaintiffs.
4.

Murphy Had No Reasonable Basis on Which to Seek to Depose the CoChairman of Google’s Board of Directors

Murphy moved early on in this case – before having taken any discovery at all – for an
Order permitting Plaintiffs to take expedited depositions of, among others, the Co-Chairman of
Google’s Board of Directors (and its founder) Larry Page (Dkt. No. 114).19 The law is clear that,

19

The Court denied Plaintiffs’ motion at oral hearing (Dkt. No. 118).

17
CHI 61,184,621v1 6-2-11

before seeking to depose such high-level officers of a large company, a party should seek to
obtain relevant information through other means (such as through written discovery and
depositions under Rule 30(b)(6)).20 Murphy had no reasonable basis for attempting to depose
Page before taking any discovery at all, and that motion was merely another unreasonable and
vexatious tactic calculated to put pressure on Google to settle with Plaintiffs.
B.

Plaintiffs’ Co-Counsel Fleming Bears Primary Responsibility for
Unreasonably and Vexatiously Multiplying Proceedings During Discovery

The primary purpose for Plaintiffs’ hiring of Fleming and the Novack Firm was to handle
discovery in this case (see Murphy’s Response, Dkt. No. 348, pp. 5-6).21 As such, Fleming
should be held responsible for Plaintiffs’ unreasonable and vexatious conduct during discovery –
which was extensive.
At the outset, Google does not seek sanctions against Fleming for conduct in which he
was not involved, such as Murphy’s actions prior to Fleming’s appearance in this case or after
his withdrawal.

Thus, Fleming’s argument regarding “events that preceded Mr. Fleming’s

appearance in this case” (Fleming’s Response, Dkt. No. 343, pp. 4-6) is simply moot. Nor is it

20

See, e.g., Folwell v. Hernandez, 210 F.R.D. 169 (M.D.N.C. 2002) (noting that, prior to
permitting the deposition of a high level corporate executive, courts should require the party
seeking the deposition to conduct a Rule 30(b)(6) deposition); Cardenas v. Prudential Ins. Co. of
America, 2003 WL 21293757, *1 (D.Minn. May 16, 2003) (noting that “courts frequently restrict
efforts to depose senior executives where the party seeking the deposition can obtain the same
information through a less intrusive means, or where the party has not established that the
executive has some unique knowledge pertinent to the issues in the case”).
21

Plaintiffs previously refused to produce a copy of the engagement agreement between
Plaintiffs, Murphy and the Novack Firm, on the basis that that agreement was somehow
privileged and/or immune from discovery. In Fleming’s Response, Fleming discloses that, under
that agreement, the Novack Firm would receive a higher share of any recovery in the event that
this case were appealed (Fleming’s Response, Dkt. No. 343, p. 25). Ordinarily, such a voluntary
disclosure would constitute a waiver of any privilege or immunity that may have existed with
respect to the terms of that agreement, since one may not use privilege as both a sword and a
shield. But rather than reopen discovery in view of this waiver, the Court should simply
disregard any new revelations in Fleming’s brief.
18
CHI 61,184,621v1 6-2-11

Google’s responsibility to tease out, for those portions of the case where both Murphy and
Fleming were counsel, whether a particular vexatious action was undertaken at the direction of
Murphy or Fleming; Murphy and Fleming were both counsel of record, and both involved in
signing Plaintiffs’ various frivolous motions and other papers. Thus, they should be jointly and
severally liable for any vexatious conduct which occurred while both of them were counsel of
record.
1.

Fleming’s Representation of Plaintiffs Was Undertaken Based on Either an
Inadequate Investigation or With Full Knowledge That Plaintiffs’ Claims
Were Meritless

As addressed at length in Google’s prior Motion for Summary Judgment and its Motion
for Attorney’s Fees, any reasonable prefiling investigation by Plaintiffs’ counsel would have
revealed that Plaintiffs had made no use whatsoever of their ANDROID DATA mark in
commerce for over five years prior to filing this suit. Accordingly, had Fleming conducted a
basic investigation of the facts prior to appearing on behalf of Plaintiffs (such as actually
reviewing copies of Specht’s business records showing use in commerce), he would have readily
determined that Plaintiffs’ claims of trademark infringement lacked any substantial merit,
because Plaintiffs had abandoned all rights to the ANDROID DATA trademark years earlier.
Thus, it is reasonable for this Court to draw the conclusion that Fleming either conducted
no such investigation prior to filing his appearance, or, worse yet, was aware of the lack of any
bona fide trademark use but chose to appear on Plaintiffs’ behalf anyway. Either way, the
totality of Fleming’s actions in prosecuting this litigation on behalf of Plaintiffs can be deemed
to have been both vexatious and unreasonable. The Court need not find that Fleming had a
subjective bad-faith intent; the Court may find the existence of objective bad faith based on
Fleming’s actions in “prosecut[ing] a claim that lack[ed] a plausible legal or factual basis.”
Knorr Brake Corp. v. Harbil, Inc., 738 F.2d 223, 227 (7th Cir. 1984).
19
CHI 61,184,621v1 6-2-11

Fleming attempts to convince the Court that Plaintiffs’ claims had merit, by rearguing
matters that have already been determined by the Court (see Fleming’s Response, Dkt. No. 343,
pp. 6-9). While it is not necessary to address each of those issues in detail, one point bears
particular discussion. Fleming’s argument that Google did not use its ANDROID mark in
commerce until “the first Android mobile device was [placed] on the market until October 2008”
is a prime example of Fleming’s advocacy of a meritless position. It is undisputed that Google
began using the ANDROID mark in commerce by distributing its “Android” software starting in
November 2007. The Court found Plaintiffs’ own admissions in its pleadings to be conclusive
on this point. Specht v. Google Inc., 2010 WL 5288154, *14-15 (N.D.Ill. Dec. 17, 2010).
Fleming cannot claim his position throughout this case that Google did not use the ANDROID
mark in commerce until nearly a year later was objectively reasonable – when his own pleadings
said otherwise.
2.

Fleming’s Refusal to Respond to Interrogatories and Document Requests
Was Unreasonable and Vexatious

Fleming argues that “[a]ll of Plaintiffs’ objections and responses [to Google’s
interrogatories] were made in good faith and in compliance with the Federal rules” (Fleming’s
Response, Dkt. No. 343, pp. 9-13). Hardly. The record demonstrates that Plaintiffs’ objections
and responses (or lack of responses) to Google’s interrogatories – all of which were signed by
Fleming or by attorneys from the Novack Firm working under his supervision – were part of a
calculated plan to obfuscate Plaintiffs’ lack of any bona fide use of the ANDROID DATA
trademark in commerce after 2003, and thus were objectively unreasonable.
First, contrary to Fleming’s claims, the record shows that Plaintiffs’ First Supplemental
Response to Google’s First Set of Interrogatories was not provided in good faith. Plaintiffs’ First
Supplemental Response (signed by Fleming) comprised nothing more than nine pages of

20
CHI 61,184,621v1 6-2-11

untimely boilerplate objections to Google’s Interrogatories (which had been served on Plaintiffs
five months earlier), and did not provide even a scintilla of factual information (see Ex. C to
Fleming’s Appendix, Dkt. No. 344).

Further, Plaintiffs’ boilerplate recitations that such

information could be “determined by examining, auditing, compiling, abstracting, or
summarizing Plaintiffs’ business records” do not even remotely approach a proper response
under Rule 33(d),22 and cannot possibly be deemed a good faith response in view of Fleming’s
admission that Plaintiffs “were still in the process of reviewing over ten years of ESI” at that
point and had not yet produced any of it (Fleming’s Response, Dkt. No. 343, p. 10, emphasis
added). Plaintiffs’ First Supplemental Response did not provide a single complete or useful
response to any of Google’s Interrogatories, and cannot be deemed anything but an unreasonable
attempt to obstruct and multiply the proceedings, which required not one but two Court orders
(Dkt. Nos. 148, 161) to rectify.
Second, Fleming’s actions in regard to two additional motions to compel discovery filed
by Google further demonstrates Fleming’s penchant (displayed on numerous occasions) for

22

Pursuant to Rule 33(d), a party who relies on business records in responding to an interrogatory
must specify the records “in sufficient detail to enable the interrogating party to locate and
identify them as readily as the responding party could.” Transcap Assoc., Inc. v. Euler Hermes
American Credit Indemnity Co., 2009 WL 1543857, *3 (N.D.Ill. June 3, 2009). Simply referring
the requesting party to unspecified documents for the answers to interrogatories is “an abuse of
the [Rule 33(d)] option”. See In re Sulfuric Acid Antitrust Litigation, 231 F.R.D. 351, 366
(N.D.Ill. 2005). In addition, a party invoking Rule 33(d) has the obligation of showing that “the
burden of deriving or ascertaining the answer is substantially the same for the party serving the
interrogatory as for the party served.” Simply reciting the language of the Rule does not meet
that burden. See Ropak Corp. v. Plastican, Inc., 2006 WL 1005406, *5 (N.D.Ill. Apr. 17, 2006)
(simply stating that other parties “can determine the answers themselves by reviewing the
documents” is insufficient to meet that burden). Even after being ordered to provide proper
responses to Google’s Interrogatories, Plaintiffs continued to take the meritless position that
Google should be required to “go fish” among the many thousands of pages of discovery
produced by Plaintiffs in order to obtain the requested information regarding Plaintiffs’ sales
(Fleming’s Response, Dkt. No. 343, pp. 10-11). Such flagrant abuse of Rule 33(d) is certainly
unreasonable and vexatious.
21
CHI 61,184,621v1 6-2-11

refusing to cooperate in resolving routine discovery matters. First, Fleming suggests that the
Court somehow vindicated Plaintiffs in association with Google’s motion to compel Plaintiffs to
identify witnesses they intended to call at trial – which is simply not the case. As noted in
Google’s motion to compel (Dkt. No. 186), Google filed that motion because, despite the fact
that Plaintiffs had supplemented their responses to Google’s Interrogatories on three separate
occasions, Plaintiffs had refused to provide any response to an interrogatory requesting them to
identify witnesses that they intended to call at trial (Id., p. 2). A reasonable and good faith
response to such an interrogatory would have been for Fleming to identify witnesses known to
Plaintiffs at the time, while reserving the right to supplement that list should other relevant
witnesses be identified. That is not what Fleming did. Rather, Fleming attempted to hide the
ball, requiring Google to file yet another motion to compel to request information that he should
have readily provided.
Fleming’s conduct leading to Google’s third motion to compel (Dkt. No. 199) further
demonstrates his vexatious and unreasonable tactics.

Google posed a simple interrogatory

requesting that Plaintiffs identify all instances of which they were aware where any person was
confused into believing that Google’s and Plaintiffs’ respective products were somehow related
(Id., p. 2) – a standard interrogatory in a trademark infringement case. Rather than simply admit
that Plaintiffs were not aware of any instances of actual confusion, Fleming asserted a laundry
list of frivolous objections, which were then regurgitated in a supplemental response (Id.).
Fleming now reiterates the meritless objection that answering that interrogatory about facts
within Plaintiffs’ knowledge somehow required expert discovery, and then concludes that
because the Court granted Google’s motion to compel, but did not award fees, Plaintiffs’
position was justified (Fleming’s Response, Dkt. No. 343, pp. 12-13). Moreover, Fleming

22
CHI 61,184,621v1 6-2-11

ignores entirely the fact that Google’s motion also addressed Plaintiffs’ unjustified refusal to
produce responsive communications between Plaintiffs and third parties relating to this lawsuit
(Dkt. No. 199, pp. 4-7) – a point on which the Court likewise ruled in Google’s favor.
3.

Fleming’s Pursuit of Third-Party Discovery Was Unreasonable and
Vexatious

Fleming next plays fast and loose with the facts in an attempt to justify Plaintiffs’
untimely pursuit of written discovery from third parties (Fleming’s Response, Dkt. No. 343, p.
18). Specifically, Fleming claims that “the parties discussed a proposed discovery schedule that
called for ‘written discovery’ to close at the end of March 2010 [and] the Court did not adopt the
proposed schedule or set a deadline for written discovery” (Id.). While the Court’s order did not
specify that written discovery would close at the end of March, that was only because Fleming
confirmed in open court that the parties were “on the same page” that written discovery would
close at “the end of March” (see Transcript from February 23, 2010 hearing, Dkt. No. 242, 12:614, attached as Ex. 3). While Fleming now claims to have understood that date as relating only
to “written discovery between the parties,” Fleming did not bother to share his “understanding”
with either Google or the Court before proceeding to issue numerous third-party discovery
subpoenas after that date.
Further, Fleming now attempts to justify his pursuit of subpoenas to a number of third
party wireless carriers concerning sales of mobile devices under unrelated third party marks on
the basis that such information “could be relevant to determining a reasonable royalty in this
case” (Fleming’s Response, Dkt. No. 343, pp. 15-17). Fleming does not explain how (or cite any
authority in support of his position that) sales of phones by third parties under different
trademarks could be relevant to the issue of damages in this case. In any event, Fleming
concedes that Plaintiffs ultimately abandoned any further pursuit of the requested information

23
CHI 61,184,621v1 6-2-11

from those parties – thereby undermining their position that such information was relevant in the
first place.
4.

Fleming’s Reliance on Documents That Were Not Produced Timely or Never
Produced at All Was Unreasonable and Vexatious

As detailed in Google’s Motion to Exclude, Plaintiffs produced several thousand pages of
documents during the last week of fact discovery (and after Mr. Specht’s deposition), much of
which could (and should) have been produced sooner (Dkt. No. 262). Fleming concedes that
Plaintiffs improperly relied on such information in their response to Google’s Motion for
Summary Judgment, and failed to comply with the Court’s order requiring them to identify and
discuss those materials in a severable section of their brief (Fleming’s Response, Dkt. No. 343,
pp. 19-20).
Incredibly, Fleming then takes the Court to task for excluding certain exhibits relied on
by Plaintiffs (printouts from the “Internet Archive” website at www.archive.org), on the basis
that those exhibits “were not part of the supplemental document production” (Id., p. 20, emphasis
in original). Fleming is right – not only were those documents not part of the supplemental
document production in question, they were not part of any document production by Plaintiffs in
this case.23 Thus, not only did Fleming not follow the Court’s instructions concerning lateproduced documents, he now criticizes the Court for confusing Plaintiffs’ late-produced
documents with Plaintiffs’ non-produced documents. Either way, such conduct is unreasonable
and not in good faith.

23

As noted in Google’s Reply in Support of Motion to Exclude (Dkt. No. 284), Plaintiffs never
produced copies of the Internet Archive evidence on which they attempted to rely at summary
judgment (Id. at pp. 3-4). Indeed, those screen shots were printed in October 2010—months
after the close of discovery (see Google’s Reply in Support of LR56.1 Statement of Facts, Dkt.
No. 289, at pp. 6, 20-23).
24
CHI 61,184,621v1 6-2-11

5.

Fleming’s Failure to Negotiate a Protective Order in Good Faith Was
Unreasonable and Vexatious

After the parties had attempted to negotiate a protective order, and Google had sent
Plaintiffs a draft order, Fleming advised Google in November 2009 that “we do not believe that
any protective order is warranted here,”24 requiring Google to bring a motion before this Court
for entry of an appropriate Protective Order. Fleming now shamelessly criticizes Google for
stating that Plaintiffs “claimed that no protective order was necessary” (Fleming’s Response,
Dkt. No. 343, p. 21). Fleming’s own words demonstrate that Google’s characterization was
accurate.
6.

Fleming’s Untimely Attempt to Add New Defendants Was Unreasonable and
Vexatious

While Fleming argues that Plaintiffs’ attempt to file a Third Amended Complaint adding
four new defendants on the eve of the close of discovery was timely, it is Fleming (not Google)
who “plays fast and loose with the record” (Fleming’s Response, Dkt. No. 343, p. 22). While the
Court did set July 15, 2010 as the deadline for amending the pleadings, the Court made
abundantly clear on the record that the July 15 deadline did not apply to the addition of new
parties to the case:
MR. FLEMING: [O]bviously we are entitled to have an opportunity to review the
discovery, to determine whether additional parties should be joined, and so we
have proposed what we thing is a reasonable timeframe for that, which is July
15th.
*

*

*

*

THE COURT: As far as bringing in new parties it seems to me that there is not
much of a problem to amend the pleadings, but to bring in new parties, it seems to
be after a number of parties were in and then removed, that that is – you know.
So, I will allow you to amend the pleadings up to July 15th, but not to join new
parties.
24

See Ex. 2 to Google’s Motion for Entry of Protective Order, Dkt. No. 140.
25

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*

*

*

*

MR. FLEMING: Well, what is the deadline for joining new parties, if at all?
Presumably that is governed by the Statute of Limitations, Judge, so I am not even
sure if it is necessary for the Court to set a deadline as to this.
THE COURT: If that is the case, then I am not ruling on that. If that is the case –
and I have allowed you to amend the complaint, but I am not authorizing you at
this point to add any new parties.
MR. FLEMING: That is fine, Judge.
THE COURT: You can file a motion to add new parties if you want though.25
The Court never authorized Plaintiffs to add new parties in July 2010. Fleming now argues that
he was permitted to do so by the very Court order which stated he was not permitted to do so.26
Fleming’s argument is, and always has been, frivolous.
Further, Fleming’s claim that he did not learn which wireless carriers utilized Google’s
“Android” software until that information was obtained through depositions of Google’s
witnesses is disingenuous, and was rejected by both this Court and the Seventh Circuit. As the
Seventh Circuit noted:
It is not as if Specht learned only through discovery that AT&T, Sprint, T-Mobile
and Verizon sell phones that use the Android operating system; this information is
widely advertised. The wireless providers could have been named as parties from
the outset.

25

Transcript from February 23, 2010 Hearing, Dkt. No. 242, at 13:17 – 15:11 (attached as Ex. 3)
(emphasis added).

26

Fleming continues to “play fast and loose with the record” by attempting to justify his untimely
filing on the purported basis that “Google refused to produce any 30(b)(6) witnesses in May or
June” (Fleming’s Response, Dkt. No. 343, p. 23) – a statement which is simply false. As set
forth in Google’s response to Plaintiffs’ motion to extend the close of discovery and the exhibits
thereto (Dkt. No. 210), Google offered to make Andy Rubin (Google’s principal 30(b)(6)
witness) available for deposition on June 2—a date which Fleming turned down for no apparent
reason, notwithstanding the fact that Google had advised Fleming of Mr. Rubin’s extremely
limited availability during June.
26
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In re Specht, 622 F.3d 697, 700 (7th Cir. 2010). Moreover, Google had noted months before in
its responses to Plaintiffs’ interrogatories that it derived no revenue from the sale of the Android
software,27 so that fact could hardly have come as a surprise to Plaintiffs, as they now suggest.
Thus, despite Fleming’s best efforts at spin, no reasonable observer could conclude that
Plaintiffs’ attempt to add additional defendants just before the close of discovery was justified.
See id. (noting that it would “be an abuse of discretion” to grant Plaintiffs’ request for leave to
file a Third Amended Complaint adding new parties).
IV.

CONCLUSION
For the reasons set forth in Google’s Motion for Attorney’s Fees and herein, Google

respectfully requests that this Court enter an Order (i) finding that this is an “exceptional case”
under 15 U.S.C. §1117(a) and awarding Google its reasonable attorney’s fees, in an amount to be
determined by the Court in its discretion, after Google’s submission of evidence documenting its
attorney’s fees incurred to date, and (ii) entering appropriate sanctions against Plaintiffs’ counsel
Martin Murphy and Andrew Fleming for their conduct in unreasonably and vexatiously
multiplying these proceedings.
Respectfully submitted,
Dated: June 2, 2011

/s Herbert H. Finn
Herbert H. Finn
Jeffrey P. Dunning
Cameron M. Nelson
GREENBERG TRAURIG, LLP
77 W. Wacker Drive, Suite 3100
Chicago, IL 60601
[phone]
Counsel for Google Inc.

27

See Google’s Responses to Plaintiffs’ Second Set of Interrogatories at p. 3 (attached as Ex. 4).
27

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CERTIFICATE OF SERVICE
I hereby certify that on the date set forth below, I electronically filed the foregoing
GOOGLE INC.’S REPLY MEMORANDUM IN SUPPORT OF ITS MOTION FOR
ATTORNEY’S FEES AND SANCTIONS with the Clerk of Court using the CM/ECF system,
which will send notification of such filings to all counsel of record.

Dated: June 2, 2011

/s Herbert H. Finn

28
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