Life Technologies Corporation v. Life Technologies Corporation et al

Filing 233

MEMORANDUM ORDER Regarding 227 Motion Determination of Issues on Remand. Signed by Judge Theodore D. Chuang on 5/18/2020. (heps, Deputy Clerk)

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UNITED STATES DISTRICT COURT
DISTRICT OF MARYLAND

LIFE TECHNOLOGIES CORPORATION,
Plaintiff,
v.
LIFE TECHNOLOGIES CORPORATION,
Civil Action No. TDC-10-3527
Defendant,
and
KRISHNAMURTHY GOVINDARAJ,
Interested Party.

MEMORANDUM ORDER
In 2012, Plaintiff Life Technologies Corporation (“Plaintiff”) secured a default judgment
against Defendant Life Technologies Corporation (“Defendant”) for trademark infringement and
unfair competition under the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) (2018), based on
Defendant’s use of the same business name as Plaintiff. In 2016, after discovery on damages, the
district court (Titus, J.) issued a damages award of over $1.7 million and an award of attorney’s
fees and costs of over $555,000 against both Defendant and its president, Dr. Krishnamurthy
Govindaraj, who was not named as a defendant. This case is now before this Court on remand
from the United States Court of Appeals for the Fourth Circuit in Life Technologies Corporation
v. Govindaraj, 931 F.3d 259 (4th Cir. 2019) (“Life Technologies”). The underlying facts and the
procedural history of this case until that appeal are set forth in that opinion and need not be restated
here. Id. at 262-269.

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In Life Technologies, the Fourth Circuit did not disturb the district court’s entry of default
judgment and award of damages and attorney’s fees against Defendant but vacated the award of
damages and attorney’s fees entered as to Govindaraj on the grounds that he was never joined as
a party to this action. Id. at 265-66, 269. After affirming the district court’s holding of Govindaraj
in contempt of court for failing to comply with the requirement in a January 9, 2014 court order to
sign consent and release forms relating to various email accounts, the Fourth Circuit concluded
that where the district court “did not specify whether any of the combined damages and fees award
was entered against Govindaraj personally as a sanction for contempt,” it was “unable to determine
whether any of the combined damages and fees award should be upheld as a reasonable sanction
for contempt, or whether the entirety of the award against Govindaraj personally must be vacated.”
Id. at 269. It therefore remanded the case for a determination of “whether any portion of the
damages and fees award against Govindaraj was imposed as a sanction for his contempt of court
and, if so, the amount of that sanction.” Id. at 269. The court stated that the district court could,
if appropriate, “re-enter judgment against Govindaraj personally only as to any such sanction for
his contempt.” Id.
At this Court’s request, the parties filed briefs on this issue. Having reviewed the briefs
and submitted materials, the Court finds that no hearing is necessary. D. Md. Local R. 105.6. For
the reasons set forth below, the Court finds that no part of the damages and attorney’s fee award
against Govindaraj was imposed as a sanction for his contempt of court and does not re-enter
judgment against Govindaraj.
DISCUSSION
Plaintiff and Govindaraj have taken diametrically opposed positions on the issue to be
decided on remand. Although conceding that the damages award was unrelated to any contempt

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order, Plaintiff asks this Court to re-impose, as personal sanctions against Govindaraj for contempt
of court, the total amount of the $555,555.35 award of attorney’s fees, costs, and expenses (“the
Fee Award”) issued by United States District Judge Roger W. Titus. Plaintiff argues that this
entire amount “was originally imposed as a sanction against Govindaraj for his contempt.” Pl.’s
Mem. on Remand at 4-5, No. 227. The Court therefore narrows its review to the Fee Award.
Govindaraj, however, asserts that the Court should not reinstate any part of the judgment because
Judge Titus did not tie any part of the Fee Award to either of Govindaraj’s two specific acts of
contempt, and Plaintiff cannot show that any part of the award was caused by Govindaraj’s
contumacious conduct.
As an initial matter, the Court defines the scope of its inquiry on remand as directed by the
Fourth Circuit. At two points in its opinion, the Fourth Circuit directed this Court to determine
not whether some part of the damages and fee award could be or should be assessed against
Govindaraj as sanctions for his contempt of court, but whether any portion “was originally imposed
as a sanction for his contempt of court” and whether “any monetary sanctions for contempt were
awarded against Govindaraj personally.” Id. at 269. By twice using the past tense, the Fourth
Circuit definitively directed the Court to review the record to determine whether Judge Titus had,
in fact, imposed such an award, not whether the record could support such an award.
As to which contempt orders the Fourth Circuit asked this Court to consider, the Court
notes that in the post-judgment discovery proceedings, Govindaraj was found in contempt of court
twice. On December 20, 2012, Govindaraj was found in contempt of a March 15, 2012 court
order, entered upon the grant of default judgment in favor of Plaintiff, enjoining Defendant and its
agents, including Govindaraj, from continuing to use the prohibited “Life Technologies
Corporation” trademark (“the First Contempt Order”). Judgment Order ¶¶ 1-5, ECF No. 54; First

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Contempt Order at 1, ECF No. 94. Then, on September 11, 2014, Govindaraj was found in
contempt of court for failing to comply with the requirement in a January 9, 2014 court order to
execute consent and release forms relating to certain email accounts in response to Plaintiff’s
discovery requests in furtherance of the calculation of damages (“the Second Contempt Order”).
Because in his appeal to the Fourth Circuit, Govindaraj challenged only the Second Contempt
Order, and the Fourth Circuit thus did not analyze the First Contempt Order, the request on remand
arguably could be construed as limited to whether Judge Titus specifically ordered Govindaraj to
pay any part of the Fee Award as sanctions relating to the Second Contempt Order. Nevertheless,
because the Fourth Circuit referenced the First Contempt Order and noted that in issuing it the
district court “with[e]ld judgment as to the sanction to impose,” Life Technologies, 931 F.3d at
263, the Court construes its mandate as considering whether the record supports a finding that any
portion of the Fee Award was imposed against Govindaraj personally as a sanction based on either
the First Contempt Order or the Second Contempt Order.
Judge Titus issued his grant of the Fee Award to Plaintiff in an oral ruling during an April
19, 2016 hearing (“the April 2016 Hearing”) on Plaintiff’s Motion for Attorneys’ Fees, Costs, and
Expenses (“the Fees Motion”) and memorialized that ruling in a written Order on May 27, 2016
(“the May 2016 Order”). A review of the record reveals that Judge Titus never awarded attorney’s
fees as a sanction against Govindaraj pursuant to either First Contempt Order or the Second
Contempt Order. As the Fourth Circuit noted, Judge Titus made no statements in either his oral
or written rulings on the Fees Motion that explicitly or implicitly tied the award of attorney’s fees,
in part or in whole, to his previous findings of contempt, and the Court finds no such ruling in any
other part of the record. Indeed, nowhere in Judge Titus’s statements at the hearing did he actually
reference either the First or Second Contempt Order. See Apr. 2016 Hrg. Tr., ECF No. 206. The

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court’s subsequent written Order also made no mention of the prior Contempt Orders or of any
award of sanctions for the violations referenced in the Contempt Orders. See Damages and Fees
Order, ECF No. 201.
In arguing that Judge Titus implicitly imposed such a sanction, Plaintiff relies on the
various references by Judge Titus during the April 2016 Hearing to Govindaraj’s obstructionist
tactics during the post-judgment discovery period. For example, Judge Titus stated that during
post-judgment discovery, Plaintiff had to “go through extensive detective work that it should not
have had to go through, but for the intransigence of the corporate defendant and its principal, Dr.
Krishnamurthy.” Apr. 2016 Hrg. Tr. at 53. Plaintiff asserts that based on such statements, “Judge
Titus found Govindaraj’s conduct and defiance of court orders to be the cause of the attorney’s
fees and costs incurred by” Plaintiff, and that “Judge Titus also intended for Govindaraj himself
to pay those fees and costs.” Pl.’s Mem. on Remand at 11.
While it is true that Judge Titus intended to hold Govindaraj personally liable for paying
the Fee Award, Plaintiff’s analysis is flawed because it improperly conflates Judge Titus’s award
of damages and attorney’s fees against Govindaraj personally under the Lanham Act and the
justification for such an award, with an award imposed as a sanction under the First Contempt
Order or the Second Contempt Order. A review of the transcript of the April 2016 Hearing reveals
that Judge Titus’s discussion of Govindaraj’s obstructive actions was provided in support of an
award of attorney’s fees under the Lanham Act, not pursuant to the Contempt Orders. The Lanham
Act provides that “[t]he court in exceptional cases may award reasonable attorney fees to the
prevailing party,” as well as costs. 15 U.S.C. § 1117(a). On March 15, 2012, at the judgment
stage, Judge Titus deemed this case “exceptional based on Defendant’s willful conduct” such that
Defendant was “required. . . to pay Plaintiff’s costs, expenses and attorneys’ fees incurred in this

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action.” Judgment Order ¶ 8. Accordingly, on October 3, 2012, Judge Titus awarded Plaintiff
over $246,000 in attorney’s fees, costs, and expenses for the pre-judgment stage of litigation based
on this finding. In the May 2016 Order, Judge Titus again stated that this case was exceptional
under 15 U.S.C. § 1117, such that post-judgment attorney’s fees could be awarded. Moreover, in
his oral ruling on the Fees Motion, Judge Titus specifically found that Govindaraj should be held
jointly liable for “the ultimate judgment in this case,” which consisted of damages and attorney’s
fees under the Lanham Act, because he was the “mastermind” and because he had been “acting in
defiance of orders of this court.” Apr. 2016 Hrg. Tr. at 58. Thus, the record reflects that the grant
of the Fee Award was made pursuant to the Lanham Act, and Judge Titus’s references to
Govindaraj’s obstruction were offered in support of the now-overturned conclusion that
Govindaraj should be held jointly liable for damages and the Fee Award under the Lanham Act.
Judge Titus’s references to Govindaraj’s obstruction were also provided as part of his
analysis of the Robinson factors, the 12 non-exclusive factors considered in analyzing the
reasonableness of an attorney’s fee award. Id. at 57; see Robinson v. Equifax Info. Servs., LLC,
560 F.3d 235, 243-44 (4th Cir. 2009). As relevant here, these factors include “the time and labor
expended,” “the novelty and difficulty of the questions presented,” “the attorney’s opportunity
costs in pressing the instant litigation,” “the customary fee for like work,” and “attorneys’ fees
awards in similar cases.” Robinson, 560 F.3d at 243-44. In that discussion, Judge Titus stated that
“[t]he complexity of this case” was “very substantially aggravated by the intransigence of the
defendant” and that the substantial Fee Award was deserved because of Govindaraj’s actions to
“obstruct and delay any pursuit of a damage award in this case.” Apr. 2016 Hrg. Tr. at 58. Such
findings were necessary and appropriate to justify the size of the Fee Award under the Robinson

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factors. At no point, however, did Judge Titus link such conduct to a separate finding that the Fee
Award was to be imposed against Govindaraj as a sanction for the First or Second Contempt Order.
The events following the issuance of the Contempt Orders further illustrate that the Fee
Award was not issued as a sanction for one of the Contempt Orders. A district court may award
monetary sanctions for civil contempt “to coerce obedience to a court order or to compensate the
complainant for losses sustained as a result of the contumacy.” In re Gen. Motors Corp., 61 F.3d
256, 258 (4th Cir. 1995) (quoting Connolly v. J.T. Ventures, 851 F.2d 930, 932 (7th Cir.1988)).
Attorney’s fees should be awarded as a sanction for contempt only upon a finding of “willful
disobedience of a court order.” Fleischmann Distilling Corp. v. Maier Brewing Co., 386 U.S. 714,
718 (1967); Columbia Gas Transmission Corp. v. Mangione Enters. of Turf Valley, 964 F. Supp.
199, 204 (D. Md. 1996) (citing Alyeska Pipeline Serv. Co. v. Wilderness Soc’y, 421 U.S. 240, 258
(1975)). Although Judge Titus stated, in orally finding Govindaraj in contempt of the March 15,
2012 court order, that he was “withhold[ing] the judgment as to the sanction to impose,” 12/18/12
Hrg. Tr. at 127, ECF No. 213, in the subsequent First Contempt Order he made no reference to
any actual or potential award of attorney’s fees as a sanction for the contempt, and at no subsequent
point in the record was there any reference to the possibility of such a sanction.
In the Second Contempt Order, the Court issued no immediate monetary sanction for the
contempt and instead directed Plaintiff to file a pleading “outlining the monetary damages it ha[d]
sustained as a result of the contempt” by Govindaraj; to, within that filing, “separate out the
attorney’s fees it has incurred in connection with” its motion seeking the Second Contempt Order;
and to “set forth its evidence as to whether [Govindaraj] willfully disobeyed [the] January 9, 2014
order.” Second Contempt Order at 3, ECF No. 151. Although Plaintiff filed the requested
submission on October 9, 2014 as a “Motion for Damages (Including Attorney’s Fees, Costs and

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Expenses) Incurred as a Result of Dr. Krishnamurthy’s Contempt of Court,” (“Contempt Fees
Motion”), and the motion was fully briefed by Plaintiff and Govindaraj, the Court subsequently
denied that motion without prejudice. See ECF No. 174. In so doing, Judge Titus failed to make
any specific finding, or even to discuss, whether the submitted evidence established that
Govindaraj’s behavior amounted to “willful disobedience” of the court order. See Fleischmann,
386 U.S. at 718; Columbia Gas, 964 F. Supp. at 204. Although Judge Titus then directed Plaintiff
to file a consolidated motion for attorney’s fees, and Plaintiff submitted the Fees Motion through
which the parties briefed the issue of whether Govindaraj willfully disobeyed the court order
underlying the Second Contempt Order, neither in his oral ruling nor in his subsequent written
order did Judge Titus engage in any analysis of that issue or make any findings of fact on that
question. The fact that Judge Titus specifically signaled to the parties that he needed to make a
finding on whether Govindaraj willfully disobeyed the court order before he would award
attorney’s fees as sanctions based on the Second Contempt Order, but then never made such a
required finding, bolsters the conclusion that he did not impose the Fee Award against Govindaraj
personally as a sanction for his acts of contempt.
Finally, Plaintiff’s claim that Judge Titus imposed the entire amount of the Fee Award
against Govindaraj personally as a sanction for the Contempt Orders is completely untenable and
inconsistent with the record. First, Plaintiff’s present request for $555,555.35 is inconsistent with
Plaintiff’s calculation, submitted in the Contempt Fees Motion, that the fees and costs incurred in
relation to the Second Contempt Order totaled $152,096,26. More broadly, in support of its overall
request of $555,555.35 in the Fees Motion, Plaintiff described the proposed award amount as based
on all “fees, costs, and expenses. . . . incurred after April 13, 2012.” Fees Mot. at 17, ECF No.
187-1. On its face, therefore, the Fee Award includes attorney’s fees for work performed before

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the First Contempt Order, and long before the Second Contempt Order, was issued. Furthermore,
Plaintiff has acknowledged that the Fee Award includes fees related to: filing two motions to
compel, filing two motions for contempt, attending three days of evidentiary contempt hearings,
attending an evidentiary discovery hearing, issuing at least 13 subpoenas, attending 11 telephonic
discovery conferences, obtaining 15 extensions of the discovery period, and generally undertaking
“an exhausting request process” for Govindaraj’s emails. Pl.’s Mem. on Remand at 3. Consistent
with this representation, Plaintiff’s billing records contain entries for work on a broad range of
legal work and discovery matters beyond the work associated with the proceedings relating to the
two Contempt Orders. See, e.g., Murphey Decl. Ex. 1 at 3, ECF No. 188-3 (“Research Fourth
Circuit case law regarding whether and the extent to which the Court’s Order can be applied extra
territorially.”); id. at 7 (“Analyze federal rules regarding due date for discovery responses falling
on a weekend[.]”); Murphey Decl. Ex. 2 at 15, ECF No. 188-4 (“Draft outline of talking points for
discussions with Google/gmail and USUHS in-house counsel regarding their responses to
subpoenas for Dr. [Govindaraj’s] emails[.]”). Thus, even if Judge Titus had undertaken to identify
attorney’s fees and costs reasonably related to the Contempt Orders, there is no way he could have
concluded that the entire Fee Award should be imposed as a sanction for those Contempt Orders.
The Court therefore wholly rejects Plaintiff’s claim that the full Fee Award was imposed on
Govindaraj as a sanction for the Contempt Orders.
As to any lesser award, although the record appears to provide sufficient evidence from
which a factfinder could reach a reasonable conclusion on the amount of attorney’s fees and costs
expended as a result of Govindaraj’s acts of contempt referenced in the Second Contempt Order,
the Fourth Circuit did not direct or authorize this Court to make such a determination. As to the
specific question posed to this Court on remand, where the record lacks any evidence to support

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the conclusion that Judge Titus ordered Govindaraj to pay attorney’s fees, in full or in part, as a
sanction for the acts of contempt referenced in the First or Second Contempt Orders, the Court
will not reinstate the Fee Award, or any amount of attorney’s fees, as a judgment against
Govindaraj.
CONCLUSION
For the foregoing reasons, and in resolution of the directive from the United States Court
of Appeals for the Fourth Circuit on remand, the Court finds that no portion of the damages and
fees award against Govindaraj was imposed as a sanction for his contempt of court. Accordingly,
it is hereby ORDERED that no part of the judgment against Govindaraj shall be reinstated.

Date: May 18, 2020

/s/ Theodore D. Chuang
THEODORE D. CHUANG
United States District Judge

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