WBIP, LLC v. Kohler Co.

Filing 295

Judge Nathaniel M. Gorton: ORDER entered. MEMORANDUM AND ORDER: " For the foregoing reasons, 1) Kohler's motion for disallowance of costs (Docket No. 284 ) is, with respect to the expenses of obtaining the transcripts of the depositions of Christopher Barry and Robert Brooks, ALLOWED, but is otherwise DENIED; 2) Kohler is ordered to pay WBIP for $1,660,445 in attorneys' fees; 3) Kohler is taxed $20,882 in costs incurred by WBIP; and 4) Kohler is to pay $423,267 in pre-judgment interest to WBIP. So ordered." (Moore, Kellyann)

United States District Court
District of Massachusetts
WBIP, LLC,
Plaintiff,
v.
KOHLER CO.,
Defendant.

)
)
)
)
)
)
)
)
)
)
)

Civil Action No.
11-10374-NMG

MEMORANDUM AND ORDER
GORTON, J.
Plaintiff WBIP, LLC (“WBIP”) alleges that defendant Kohler
Co. (“Kohler”) infringes its patents directed to marine power
generators.

The Court has previously ruled that WBIP is

entitled to reasonable attorneys’ fees and costs pursuant to 35
U.S.C. § 285, which entitles the prevailing party in an
exceptional patent infringement case to reasonable fees.

The

parties have submitted memoranda with respect to the
reasonableness of WBIP’s requested fees and Kohler has moved for
the disallowance of certain costs claimed by WBIP.

WBIP has

also submitted a final, agreed-to accounting of pre-judgment
interest.
For the reasons that follow, the Court will award to WBIP
$1,660,444.69 in attorneys’ fees, $20,882.14 in costs and
$423,267 in pre-judgment interest.
-1-

I.

Attorneys’ Fees
WBIP seeks attorneys’ fees totaling $2,288,050 for the work

performed by three attorneys.

Kohler responds that the request

is excessive and that an award between $637,053 and $955,579
would be appropriate.
A.

Legal Standard

Courts generally apply the “lodestar approach” when
awarding attorneys’ fees pursuant to 35 U.S.C. § 285. Agfa Corp.
v. Creo Prods., Inc., No. 00-10836, 2004 WL 2387288, at *1 (D.
Mass. Oct. 5, 2004) (citing Codex Corp. v. Milgo Elec. Corp.,
717 F.2d 622, 631-32 (1st Cir. 1983)).

The lodestar figure is

calculated by “multiplying the number of hours productively
spent by a reasonable hourly rate.” Torres-Rivera v. O’NeillCancel, 524 F.3d 331, 336 (1st Cir. 2008) (citing Hensley v.
Eckerhart, 461 U.S. 424, 433 (1983)).

After calculating the

initial lodestar figure, Court has the discretion to adjust that
figure upwards or downwards based on equitable factors such as
the results obtained in the litigation. Id. (citing Hensley, 461
U.S. at 434).
B.

Application
1.

Hours Expended

The Court finds that the lodestar amount requested by WBIP
reflects a reasonable number of hours worked on this complex,
hard-fought patent litigation.

Kohler’s arguments for reducing
-2-

the number of hours to be factored into the lodestar are, with
one exception, unavailing.
First, with respect to fees incurred prior to May 15, 2013,
WBIP has provided sufficient detail in its itemized statement
and the hours it spent preparing for trial were, in the view of
this Court, reasonable.

The Court will, however, reduce by 50%

the hours billed as travel time for Attorney Zeliger because
WBIP has not provided an account of how much of his travel time
was allocated to billable tasks.

WBIP has requested $28,247.50

in fees for 41.7 hours of travel time and therefore the Court
will subtract half of that amount from its lodestar calculation.
Next, WBIP has not waived its right to request fees
incurred between May, 15, 2013 and June 17, 2013 merely because
it did not include them in its motion for fees filed on June 18,
2013.

All of the work performed after May 15, 2013 concerned

post-trial matters and it would have been presumptuous for WBIP
to assume, as of June 18, 2013, that the Court would rule in its
favor on those motions.
WBIP may recover fees incurred with respect to post-trial
filings that were no successful.

While the Court has the

discretion to subtract unreasonable or unproductive time from
the lodestar, a party is not required to prevail on every
disputed issue during the litigation to avoid a reduced fee
award.

Thus, while WBIP was unsuccessful in persuading the
-3-

Court to reconsider its denial of a permanent injunction, it
will nevertheless be reimbursed for the $14,590 in fees incurred
in litigating that motion.

The only reason that the Court gave

for denying permanent injunctive relief was WBIP’s limited
manufacturing capacity and the Court acknowledged in its denial
of the motion that it may have misapprehended the relevant
facts.

Thus, there was a colorable basis for the motion to

reconsider even if it was ultimately unsuccessful.

Similarly,

WBIP is entitled to fees incurred in opposing the motion for a
new trial or a remittitur, even though the Court ultimately gave
WBIP a choice between accepting a remittitur or re-trying the
case, because the remittitur still resulted in an award of
significant damages and WBIP avoided a new trial with its
attendant risks.
WBIP is also entitled to fees for time spent responding to
pleadings filed by Kohler with respect to the reexamination of
patents by the U.S. Patent and Trademark Office.

WBIP has not

sought fees incurred during the reexamination proceedings
themselves and it was appropriate for counsel to respond to
Kohler’s argument that reexamination of the subject patents
weighed against a finding of willfulness or that the proceedings
were exceptional.

-4-

2.

Hourly Rate

The hourly rates claimed by counsel are also reasonable.
Although its counsel agreed to a contingency fee, WBIP has
provided the hourly rates normally charged by counsel.

Michael

Zeliger, a partner at K&L Gates who specializes in intellectual
property litigation, billed at rates between $600 and $735 per
hour and spent 1,054.4 hours on the case.

David Simons, who has

worked in patent litigation since 1998, billed at rates ranging
from $580 to $650 per hour and spent 2,027.9 hours.

Andrea

Gates, an associate specializing in intellectual property
litigation, charged between $345 and $425 an hour and spent
949.8 hours on the litigation.

The Court finds that those

hourly rates are commensurate with those charged by equally
experienced patent litigators in Boston.
3.

Discretionary Adjustment

After subtracting 50% of Attorney Zeliger’s travel time,
the lodestar figure is $2,213.926.1

The Court will exercise its

discretion by reducing that amount by 25% such that the final
award will be $1,660,445.

While this case was an “exceptional”

case warranting an award of attorneys’ fees, the Court
previously declined to award double or treble damages for

1

In the interest of brevity and common sense, the Court has
rounded off all amounts to the nearest dollar.
-5-

willful infringement and it finds that a similar reduction is
warranted with respect to attorneys’ fees.
II.

Costs
WBIP seeks $23,251 in costs.2

Kohler agrees that $13,644 is

taxable to Kohler but objects to $7,238 spent to obtain
deposition transcripts which were not introduced into evidence
at trial.
A.

Legal Standard

Fed. R. Civ. P. 54(d)(1) provides that
[u]nless a federal statute, these rules, or a court
order provides otherwise, costs ... should be allowed
to the prevailing party.
Congress has also set boundaries for what costs of litigation
are taxable.

For instance, 28 U.S.C. § 1920 provides, in

relevant part, that a court may award to prevailing parties fees
imposed by the clerk of court, “[f]ees for printed or
electronically recorded transcripts necessarily obtained for use
in the case,” and fees for obtaining copies of materials where
the copies are “necessarily obtained for use in the case.”
Here, the dispute centers on whether the costs of obtaining
deposition transcripts are taxable to Kohler.

The First Circuit

has held that depositions introduced into evidence or used at

2

WBIP has since acknowledged that its original request
erroneously included $2,369 in nontaxable costs and therefore
amended its request. It now contends that it is entitled to
costs totaling $20,882.
-6-

trial are taxable. Templeman v. Chris Craft Corp., 770 F.2d 245,
249 (1st Cir. 1985).

A district court has the discretion to

award costs for depositions not put into evidence or used at
trial if “special circumstances warrant it.” Id.
B.

Application

Kohler does not oppose awarding WBIP $13,644 in costs
associated with filing its complaint ($350), certain deposition
transcripts ($3,588) or copying fees ($9,706).

The Court agrees

and will tax those costs to Kohler.
Kohler does oppose awarding the costs of obtaining
transcripts from the depositions of several witnesses.
WBIP acknowledged in its opposition to Kohler’s Motion for
Disallowance of Costs that it was not entitled to reimbursement
of the $2,369 it spent to obtain deposition transcripts of two
experts retained by Kohler because it had not used those
transcripts at trial.

The Court will therefore allow the motion

by Kohler to disallow the $2,369 in costs to obtain the
deposition transcripts of Robert Brooks and Christopher Barry.
Kohler opposes awarding the cost of obtaining the
transcripts of the depositions of Greg Klompenheuver and Richard
Locke, both of whom were Fed. R. Civ. P. 30(b)(6) witnesses
designated by Kohler.

WBIP did not call them as witnesses or

seek to admit their deposition testimony into evidence but it
did use the transcripts to impeach two witnesses for Kohler.
-7-

Kohler contends that the transcripts were not “necessarily
obtained” for use at trial because, if they were necessary, WBIP
would have read them into the record.

The Court declines to

adopt that narrow reading of 28 U.S.C. § 1920, which
contemplates that a transcript may be “used” even if it is not
offered into evidence.

Here, it is sufficient that the

transcripts of the depositions of two Kohler employees
designated as Rule 30(b)(6) witnesses were used for impeachment
purposes.
Second, Kohler opposes an award of costs for obtaining the
transcripts of the depositions of Paul Wareham and James
Carroll, third parties who were subpoenaed and deposed by
Kohler.

Kohler also designated portions of the testimony of

those witnesses in its Fed. R. Civ. P. 26(a) pretrial
submissions.

Similarly, Kohler opposes the award of costs for

obtaining transcripts of depositions of three employees of
Westerbeke Corporation (an affiliate of WBIP) who were deposed
by Kohler but were not called to testify at trial.

Under the

circumstances, it was appropriate for counsel for WBIP to obtain
the transcripts as part of its preparation for trial. See
Martinez v. Cui, No. 06-40029-FDS, 2009 WL 3298080, at *2 (D.
Mass. Apr. 13, 2009) (explaining that depositions taken at
request of opposing party may be taxable because they are not

-8-

taken for investigative or discovery purposes or purely for
reasons of convenience).
In sum, the Court will award WBIP $20,882 in costs.
III. Pre-Judgment Interest
In its February 12, 2014 Memorandum and Order, the Court
ordered Kohler to pay prejudgment interest at the prime rate,
compounded quarterly.

The parties have conferred and they agree

that Kohler should be ordered to pay $423,267 in pre-judgment
interest.

The final order will be amended accordingly.

ORDER
For the foregoing reasons,
1)

Kohler’s motion for disallowance of costs (Docket No.
284) is, with respect to the expenses of obtaining the
transcripts of the depositions of Christopher Barry
and Robert Brooks, ALLOWED, but is otherwise DENIED;

2)

Kohler is ordered to pay WBIP for $1,660,445 in
attorneys’ fees;

3)

Kohler is taxed $20,882 in costs incurred by WBIP; and

4)

Kohler is to pay $423,267 in pre-judgment interest to
WBIP.

So ordered.
/s/ Nathaniel M. Gorton
Nathaniel M. Gorton
United States District Judge
Dated September 8, 2014

-9-