GARFUM.COM CORPORATION v. REFLECTIONS BY RUTH

Filing 56

OPINION. Signed by Chief Judge Jerome B. Simandle on 3/30/2016. (TH, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

GARFUM.COM CORPORATION,
HONORABLE JEROME B. SIMANDLE
Plaintiff,
Civil No. 14-5919 (JBS/KMW)
v.
OPINION

REFLECTIONS BY RUTH D/B/A
BYTEPHOTO.COM,
Defendant.

APPEARANCES:
Lawrence C. Hersh, Esq.
17 Sylvan Street, Suite 102B
Rutherford, New Jersey 07070
and
Austin Hansley, Esq. (pro hac vice)
AUSTIN HANSLEY PLLC
5050 Quorum Drive, Suite 700
Dallas, Texas 75254
Attorneys for Plaintiff
Frank L. Corrado, Esq.
BARRY, CORRADO & GRASSI, PC
2700 Pacific Avenue
Wildwood, New Jersey 08260
and
Joseph C. Gratz, Esq. (pro hac vice)
DURIE TANGRI LLP
217 Leidesdorff Street
San Francisco, California 94111
and
Daniel K. Nazer, Esq. (pro hac vice)
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, California 94109
Attorneys for Defendant

1

SIMANDLE, Chief Judge:
This matter comes before the Court upon the Motion of
Defendant Reflections by Ruth d/b/a Bytephoto.com (“Defendant”)
for Attorneys’ Fees (“Defendant’s Motion” [Docket Item 46].)
Defendant seeks a declaration from this Court that this patent
case is “exceptional” pursuant to 35 U.S.C. § 285 and requests
that this Court grant it attorneys’ fees based on the conduct of
Plaintiff Garfum.com Corporation (“Plaintiff” or “Garfum”) in
both bringing suit and the manner in which the suit was
litigated.

Plaintiff opposes.

For the reasons that follow,

Defendant’s Motion will be GRANTED IN PART.

I.

FACTUAL BACKGROUND AND PROCEDURAL HISTORY
Defendant Reflections by Ruth is a sole proprietorship run

by Ruth Taylor in the business of landscape photography.
(Taylor Cert. [Docket Item 46-4] ¶¶ 2–3.)

Ruth Taylor and her

husband, Steve Taylor, own and operate Bytephoto.com
(“Bytephoto”) as a hobby.

(Id. ¶¶ 4–5.)

They acquired

Bytephoto from its original owners in 2009.

(Id. ¶ 6.)

The

Taylors operate Bytephoto at a loss, generating just over $300
in revenue in 2013, and costing approximately $1,400 to operate.
(See id. ¶¶ 5, 9–10.)

Bytephoto is run through Reflections by

Ruth and not as an independent entity.

(Id. ¶ 17.)

Bytephoto

has hosted photo competitions decided by user vote since at

2

least 2003, when Ruth first won a Bytephoto competition before
acquiring the site.

(Id. ¶ 8.)

Plaintiff Garfum.com is also a small, family-owned business
that was started in 2007 by Michael Garofalo.
[Docket Item 52-1] ¶ 2.)

(Garofalo Decl.

On June 26, 2007, Garofalo filed a

provisional patent application that ultimately resulted in U.S.
Patent No. 8,209,618 (the “’618 Patent”), which issued on June
26, 2012.

(Id. ¶ 3; Def.’s Mot. Br. [Docket Item 46-6] at 3;

Pl.’s Opp. [Docket Item 52] at 2–3.)

The day before the ’618

Patent issued, Garofalo filed U.S. Patent Application No.
13/531,615 (the “’615 Application”), a continuation of the ’618
Patent.

(Garofalo Decl. ¶ 3.)

On September 23, 2014, Plaintiff filed suit against
Defendant, alleging infringement of one or more claims of the
’618 Patent.

(Compl. [Docket Item 1] ¶¶ 9–15.)

Plaintiff filed

three other similar lawsuits on the same day against three other
defendants to enforce the same patent.

(Garofalo Decl. ¶ 3.)

The instant suit was filed without any prior contact by
Plaintiff to Defendant.

(Taylor Cert. ¶ 11.)

Defendant

attempted to find counsel, and was informed that any
intellectual property attorneys in the area would require at
least a $10,000 retainer and that defending the suit could cost
hundreds of thousands of dollars.

(Id. ¶ 12.)

Defendant hired

a law firm from Doylestown, Pennsylvania -- Ryder, Lu, Mazzeo &
3

Konieczny LLC -- to assist in negotiating with Plaintiff before
entering an appearance or filing an answer in this suit.

(See

id.¶¶ 12–13.)
Plaintiff initially offered Defendant a license to the ’618
Patent for $50,000.

(Hanley Decl. [Docket Item 52-3] ¶ 4.)

Defendant then sent Plaintiff a certification from Ruth Taylor
stating that Bytephoto had an income of just over $300 in 2013
and a little under $500 in 2014.

(Taylor Cert. ¶ 15 & Ex. A.)

Plaintiff then requested Bytephoto’s tax returns.
Ex. B.)

(Id. ¶ 16 &

Because Bytephoto is operated as part of Reflections by

Ruth by the Taylors, Defendant did not have a separate tax
return for Bytephoto, and sent tax returns for Reflections by
Ruth to Plaintiff.

(Id. ¶ 17 & Ex. C.)

Almost two months

later, Plaintiff lowered its demand to $5,000.
D; Hanley Decl. ¶ 4; Garofalo Decl. ¶ 6.)

(Id. ¶ 18 & Ex.

After this was

rejected, Plaintiff again lowered its demand to $2,500.
Cert. ¶ 19; Hanley Decl. ¶ 4.)

(Taylor

During this period of

negotiations, Defendant was able to retain pro bono counsel
through assistance from the Electronic Frontier Foundation
(“EFF”).

(Taylor Cert. ¶ 20.)

One week after the $2,500 demand was made, on February 13,
2015, Defendant filed a motion to dismiss under 35 U.S.C. § 101,
arguing that the ’618 Patent claims unpatentable subject matter.
(Hanley Decl. ¶ 5; Def.’s Mot. Br. at 7–8; see also Def.’s Mot
4

to Dismiss (“DMTD”) [Docket Item 18].)

Defendant also answered

the complaint, denying the claim for patent infringement, and
counterclaimed for a declaratory judgment of noninfringement and
invalidity and/or unenforceability of the ’618 Patent.
generally Answer [Docket Item 19].)

(See

Plaintiff, on the basis

that they would not be able to obtain enough damages to justify
continuing suit, then offered to resolve the case through mutual
dismissals and a covenant not to sue.
Cert. [Docket Item 48-1] Ex. C.)

(Hanley Decl. ¶ 6; Gratz

Defendant would not agree to

this resolution without a stipulation of invalidity of the ’618
Patent to resolve its counterclaim.

(Hanley Decl. ¶ 6.)

Plaintiff then offered to pay a portion of Defendant’s
attorneys’ fees if Defendant would provide a breakdown of fees
and costs, but Defendant declined and said it would not seek
fees at all if Plaintiff would stipulate to invalidity.

(Id.

¶ 7; Gratz Cert. Ex. D.)
On April 6, 2015, Plaintiff filed an opposition to the
motion to dismiss, and on April 13, 2015, Defendant replied.
(Hanley Decl. ¶ 8; see also Pl.’s Opp. to DMTD [Docket Item 38];
Def.’s Reply for DMTD [Docket Item 41].)

On May 19, 2015, the

Court 1 set a hearing on the motion for May 27, 2015.

1

(See Order,

At the time, the case was assigned to Judge Joseph E. Irenas.
Unfortunately, Judge Irenas passed away in October, 2015. The
case was then reassigned to the undersigned.
5

May 19, 2015 [Docket Item 42].)

The next day, Plaintiff

executed a covenant not to sue and filed a motion to dismiss the
complaint and the counterclaims.

(Hanley Decl. ¶ 9; see also

Pl.’s Mot. to Dismiss [Docket Item 43]; Covenant Not To Sue
(Patterson Decl. [Docket Item 43-2] Ex. A).)

Plaintiff’s

counsel explains that Plaintiff issued this covenant after
“[h]aving essentially run out of options.”

(Hanley Decl. ¶ 9.)

Defendant’s counsel notes that the covenant was unprompted and
had the effect of Plaintiff “unilaterally dismissing its claims
with prejudice.”

(Gratz Cert. ¶ 15.)

On May 21, 2015, the

Court granted Plaintiff’s motion to dismiss, dismissed
Defendant’s motion to dismiss as moot, and closed the case.
(See Order, May 21, 2015 [Docket Item 45].)
Following dismissal of the case, Defendant’s counsel
contacted Plaintiff requesting Plaintiff pay $10,000 in
attorneys’ fees, otherwise Defendant would file a motion seeking
fees.

(Garofalo Decl. ¶ 10.)

Defendant declined to do so, and

on June 22, 2015, Defendant filed the instant motion for
attorneys’ fees as well as an accompanying motion for costs. 2

2

The motion for costs sought only fees for pro hac vice
admissions. (See Defs.’ Mot. for Costs [Docket Item 47].) The
Clerk denied Defendant’s request for costs on the grounds that
pro hac vice admission fees are not properly taxable in a bill
of costs, but did determine that “Defendant is the ‘prevailing
party’ because . . . it obtained a voluntary dismissal with
prejudice by Plaintiff.” (Clerk’s Order, June 25, 2015 [Docket
Item 49] at 3.)
6

II.

JURISDICTION
This action for patent infringement arises under the patent

laws of the United States.

Accordingly, the Court exercises

subject matter jurisdiction pursuant to 28 U.S.C. § 1331 and
§ 1338(a).

Although the covenant not to sue divested this Court

of jurisdiction over the declaratory judgment counterclaims, and
the Plaintiff’s motion to dismiss divested this Court of
jurisdiction over the original complaint, the Court retains
independent jurisdiction over the request for attorneys’ fees.
Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229, 1242 (Fed.
Cir. 2008) (citations omitted).

III. STANDARD
“The court in exceptional cases may award reasonable
attorney fees to the prevailing party.”

35 U.S.C. § 285.

The

Supreme Court has recently clarified the standard to be applied
in these cases, explaining that “an ‘exceptional’ case is simply
one that stands out from others with respect to [1] the
substantive strength of a party’s litigating position
(considering both the governing law and the facts of the case)
or [2] the unreasonable manner in which the case was litigated.”
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct.
1749, 1756 (2014) (emphasis added).

This disjunctive standard

explicitly overruled previous Federal Circuit case law that had

7

required a finding that the case was both objectively baseless
and subjectively brought in bad faith.

See id. at 1754.

Further, a party need only prove its entitlement to fees by a
preponderance of the evidence.

Id. at 1758.

The Court in Octane Fitness reserved the determination of
whether a case is “exceptional” under 35 U.S.C. § 285 to the
discretion of the District Court, instructing courts to
“consider[ ] the totality of the circumstances.”

Id. at 1756.

The Court further referred to a nonexclusive list of factors
that could aid courts in this determination, “including
‘frivolousness, motivation, objective unreasonableness (both in
the factual and legal components of the case) and the need in
particular circumstances to advance considerations of
compensation and deterrence.’”

Id. at 1756 n.6 (citing Fogerty

v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)).

The conduct

need not be independently sanctionable to render the case
“exceptional.”

See id. at 1756–57 (“But sanctionable conduct is

not the appropriate benchmark.”).
The issue of whether to award fees under 35 U.S.C. § 285 is
an issue of Federal Circuit law.

Q-Pharma, Inc. v. Andrew

Jergens Co., 360 F.3d 1295, 1299 (Fed. Cir. 2004).

“The

methodology of assessing a reasonable award under 35 U.S.C.
§ 285 is within the discretion of the district court.”

8

Mathis

v. Spears, 857 F.2d 749, 755 (Fed. Cir. 1988) (citing Lam, Inc.
v. Johns-Manville Corp., 718 F.2d 1056, 1068 (Fed. Cir. 1983)).

IV.

DISCUSSION
Defendant moves for attorneys’ fees on the grounds that

this case is “exceptional” under 35 U.S.C. § 285 because
Plaintiff’s suit was brought in bad faith and Plaintiff’s
conduct in litigating this case was unreasonable.
Br. at 11–19.)

(Def.’s Mot.

Plaintiff opposes both of these grounds, and

also argues that Defendant is not the prevailing party.
Opp. at 7–12.)

(Pl.’s

The Court will address prevailing party status

first, and then move on to assess whether the case is
exceptional.

As will be explained below, the Court finds that

Defendant is the prevailing party, the case is exceptional, and
in its discretion will award partial fees to Defendant.

A.

PREVAILING PARTY STATUS UNDER 35 U.S.C. § 285

Determining whether a party is the “prevailing party” for
the purposes of 35 U.S.C. § 285 is an issue of Federal Circuit
law rather than Third Circuit law.

See Highway Equipment Co.,

Inc. v. FECO, Ltd., 469 F.3d 1027, 1032 (Fed. Cir. 2006).

There

must be a “judicially sanctioned change in the legal
relationship of the parties” for one party to have “prevailing
party” status.

Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t

of Health & Human Res., 532 U.S. 598, 605 (2001).
9

The Court in

Buckhannon held that a defendant’s voluntary change in conduct
that renders the suit moot, even where it accomplishes what the
plaintiff sought, “lacks the necessary judicial imprimatur on
the change.”

Id. (emphasis in original).

Explicitly applying

the holding of Buckhannon to 35 U.S.C. § 285, the Federal
Circuit has held that “as a matter of patent law, the dismissal
with prejudice, based on the covenant [not to sue] and granted
pursuant to the district court’s discretion under Rule 41(a)(2),
has the necessary judicial imprimatur to constitute a judicially
sanctioned change in the legal relationship of the parties.”
Highway Equipment, 469 F.3d at 1035 (citations omitted).
Plaintiff submits that because it voluntarily granted
Defendant a covenant not to sue, there has been no decision in
favor of Defendant.

(Pl.’s Opp. at 11–12.)

In its brief,

Plaintiff cites to a number of district court cases, which are
either inapposite or have been subsequently reversed by the
Federal Circuit for failing to comport with the analysis of
Highway Equipment.

Plaintiff further cites to a Fifth Circuit

case which the Federal Circuit expressly considered and
distinguished in deciding Highway Equipment.
Under the Federal Rules of Civil Procedure, a plaintiff may
only voluntarily dismiss an action without the Court’s approval
by filing “(i) a notice of dismissal before the opposing party
serves either an answer or a motion for summary judgment; or
10

(ii) a stipulation of dismissal signed by all parties who have
appeared.”

Fed. R. Civ. P. 41(a)(1)(A) (emphasis added).

If

neither of those conditions apply, then dismissal may only come
“by court order, on terms that the court considers proper.”
Fed. R. Civ. P. 41(a)(2).

Here, Plaintiff provided the covenant

not to sue after Defendant had answered, and no stipulation of
dismissal signed by all parties was offered.

Therefore,

dismissal could only be under Rule 41(a)(2).

Further, the

dismissal was with prejudice as to Plaintiff’s claims.
Accordingly, Highway Equipment speaks directly to this issue,
and Defendant is indeed the prevailing party. 3

B.

DETERMINATION OF WHETHER CASE IS EXCEPTIONAL

Defendant asserts that the claims of the ’618 Patent are
directed towards unpatentable subject matter under 35 U.S.C.
§ 101 as explained by the Supreme Court in Alice Corp. Pty. Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014).
Br. at 11–13.)

(Def.’s Mot.

Defendant further argues that Plaintiff’s

3

This is also in agreement with the Clerk’s Order finding
Defendant the prevailing party under Rule 54, as noted above.
While this Court has not been asked to review the Clerk’s Order,
the Court notes that the Federal Circuit “ha[s] likewise held
that a defendant was the prevailing party for purposes of costs
under Rule 54 where the plaintiff voluntarily dismissed its case
against one defendant with prejudice.” Highway Equipment, 469
F.3d at 1035 (citing Power Mosfet Techs., L.L.C. v. Siemens AG,
378 F.3d 1396, 1416 (Fed. Cir. 2004)). The Federal Circuit has
“treated the prevailing party issue under Rule 54 and 35 U.S.C.
§ 285 similarly.” Id. (citations omitted).
11

arguments in defending against Defendant’s motion to dismiss
were meritless and contrary to the text of the patent.
13–16.)

Plaintiff responds that the patent is valid.

Opp. at 9–11.)
conduct.

(Id. at
(Pl.’s

Defendant also challenges Plaintiff’s litigation

The Federal Circuit has explained that “under Octane

Fitness, the district court must consider whether the case was
litigated in an unreasonable manner as part of its exceptional
case determination, and that district courts can turn to [the
Federal Circuit’s] pre-Octane Fitness case law for guidance.”
SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1349 (Fed. Cir.
2015).
The Court must evaluate the “substantive strength of the
party’s litigating position.”
1756.

Octane Fitness, 134 S. Ct. at

Then, even if a party’s position is ultimately meritless,

the question is whether it was “so merit-less as to ‘stand out’
from the norm and, thus, be exceptional.”

SFA Sys., LLC v.

Newegg, Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015) (quoting
Octane Fitness, 134 S. Ct. at 1756)).

Here, the parties fully

briefed the issue of validity under 35 U.S.C. § 101, but then
Plaintiff voluntarily dismissed the case before a decision on
the merits issued.

Thus, there has been no finding from the

Court regarding the validity of the ’618 Patent under 35 U.S.C.
§ 101.

The Court will not reach a finding on validity here, but

will assess the merits of Plaintiff’s argument for validity
12

under 35 U.S.C. § 101 and also assess Plaintiff’s litigation
conduct, all in the context of this 35 U.S.C. § 285 motion.

1.

MERITS OF PLAINTIFF’S CASE

The basis of Defendant’s challenge to the substantive
strength of Plaintiff’s position is that “[a]ny reasonable
attorney would have appreciated that the claims of the ’618
[P]atent would not survive a challenge under 35 U.S.C. § 101.”
(Def.’s Mot. Br. at 13.)

Under the test for patent eligible

subject matter as explained by the Supreme Court in Alice, a
court assessing validity under 35 U.S.C. § 101 must make two
inquiries:

(1) whether the patent claims laws of nature,

natural phenomena, or abstract ideas; and (2) if so, whether the
claims include an “inventive concept” such that “the additional
elements ‘transform the nature of the claim’ into a patenteligible application.”

134 S. Ct. at 2355 (citing Mayo

Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
1294–97 (2012)).
A court may address the issue of patent eligible subject
matter before construing terms, especially where, as here, the
patentee does not point to any specific terms or constructions
that would alter the analysis.

See Bancorp Servs., L.L.C. v.

Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1273 (Fed.
Cir. 2012) (“[W]e perceive no flaw in the notion that claim

13

construction is not an inviolable prerequisite to a validity
determination under § 101.”); CyberFone Sys., LLC v. Cellco
P’ship, 885 F. Supp. 2d 710, 715 (D. Del. 2012) (declining to
construe claims before a § 101 analysis where “plaintiff did not
explain how claim construction might alter such analysis”),
aff’d, 558 F. App’x 988 (Fed. Cir. 2014).

i.

Abstract Idea

At step one of the Alice test, the claims of the ’618
Patent are directed to an abstract idea, specifically the
abstract idea of ranking content by popularity and within a
category.

The parties, both in briefing the original motion to

dismiss based on 35 U.S.C. § 101 and reaffirmed in briefing on
this motion, have only semantic differences in characterizing
the claims of the ’618 Patent.

Defendant refers to the ’618

Patent as “conducting a competition decided by popular vote,
albeit one that occurs online.”

(Def.’s Mot. Br. at 12.)

Plaintiff tries to turn attention away from the steps recited in
the claims and towards the grander ambition of “content
organization within a database”, but the method by which the
patent organized content is by popular vote.

14

(Pl.’s Opp. to

DMTD at 7; see Pl.’s Opp. at 9 (incorporating by reference
Plaintiff’s Opposition to Defendant’s Motion to Dismiss).) 4
In Alice, the Court did not “delimit the precise contours
of the ‘abstract ideas’ category.”

134 S. Ct. at 2357.

But the

Court has held “fundamental economic practice[s] long prevalent
in our system of commerce” are abstract ideas.

See id. at 2356

(citing Bilski v. Kappos, 561 U.S. 593, 611 (2010)).

Following

Alice, courts have also considered “long prevalent” practices
outside of the realm of economics to be abstract ideas.

See,

e.g., BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
107 F. Supp. 3d 639, 650 (N.D. Tex. 2015) (“Filtering content,
or ‘determining who gets to see what,’ is an abstract idea
because it is a longstanding method of organizing human
activity.”), appeal argued, No. 15-1763 (Fed. Cir. Mar. 8,
2016); DietGoal Innovations LLC v. Bravo Media LLC, 33 F. Supp.
3d 271, 283–84 (S.D.N.Y. 2014) (finding a patent claiming a

4

Plaintiff further appears to argue that the novelty of the
claims should indicate that they are not directed to an abstract
idea. (See Pl.’s Opp. at 9 (“The invention of the ’618 Patent
presents a novel method to improve [database] functionality.
Therefore, the ’618 Patent is directed to patent eligible
subject matter.”) However, the novelty issue under 35 U.S.C.
§ 102 is irrelevant to at least the analysis of an abstract idea
under 35 U.S.C. § 101. See Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 714–15 (Fed Cir. 2014) (“We do not agree with
[plaintiff] that the addition of merely novel or non-routine
components to the claimed idea necessarily turns an abstraction
into something concrete. In any event, any novelty in
implementation of the idea is a factor to be considered only in
the second step of the Alice analysis.”).
15

method of meal planning directed toward an abstract idea),
aff’d, 599 F. App’x 956 (Fed. Cir. 2015) (per curiam).

Further,

even if the claims do not explicitly claim an abstract idea,
where the “ordered combination of steps recites an abstraction,”
then the court must find that the patent is directed to an
abstract idea.

See Ultramercial, 772 at 714–15.

Here, without purporting to construe the claims of the
patent, the steps of independent claim 1 include:

(1) creating

one user account for each user where each account can upload
content; (2) creating a network of users; (3) categorizing
uploaded content; (4) organizing content in a competitive
format; (5) letting each user vote on the content; and (6)
ranking the content based on votes.
33.

’618 Patent col. 19 ll. 8–

The other independent claim is mostly the same, but

includes the additional step of having multiple rounds.
Patent col. 19 l. 47–col. 20 l. 25.

’618

The respective dependent

claims do not significantly modify these basic steps.
Patent col. 19 ll. 34–46, col. 20 ll. 26–45.

See ’618

This ordered

combination recites an abstraction -- ranking content by
popularity and within a category.

ii.

Inventive Concept

The second step of the Alice analysis requires determining
whether there is an “inventive concept” present, i.e.,

16

“additional elements [that] ‘transform the nature of the claim’
into a patent-eligible application.”
(quoting Mayo, 132 S. Ct. at 1297).

134 S. Ct. at 2355
As will be explained, the

claims of the ’618 Patent do not appear to contain this
inventive concept.

Defendant argues that “[t]he claims merely

ask for generic computer functionality” and also that the
“specification repeatedly and explicitly states that the claimed
method is to be performed using generic computer and network
technology.”

(Def.’s Mot. Br. at 12–13 (emphasis removed).)

Plaintiff counters that the patent “discloses a specific method
for solving a specific problem with computer networks, i.e., the
problem of sharing multimedia files among a plurality of users
of a computer network.”

(Pl.’s Opp. at 9.)

Plaintiff’s argument seems to rely on the Federal Circuit’s
holding in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014).

In DDR Holdings, the court found claims

patent eligible where the patent presented a solution
“necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer
networks.”

773 F.3d at 1257.

The patent-in-suit in DDR

Holdings described a system of generating a composite web page
when a user clicked on a third-party merchant’s advertisement
that combined the visual elements of the “host” website with the
content of the third-party merchant.
17

Id. at 1248.

The court

explained that “these claims stand apart because they do not
merely recite the performance of some business practice known
from the pre-Internet world along with the requirement to
perform it on the Internet.”

Id. at 1257.

However, the court

explicitly cautioned that “not all claims purporting to address
Internet-centric challenges are eligible for patent.”

Id. at

1258.
“In determining whether technology created the relevant
problem, courts look to whether the claims at issue override
some conventional sequence of events taking place within a
particular technological environment.”

Source Search Techs.,

LLC v. Kayak Software Corp., 111 F. Supp. 3d 603, 611 (D.N.J.
2015) (citing Messaging Gateway Sols., LLC v. Amdocs, Inc., No.
14-732-RGA, 2015 WL 1744343, at *5 (D. Del. Apr. 15, 2015)).
“Merely improving speed and efficiency through implementation
over the internet or computers does not root problem and
solution in computer technology.

Courts look to whether a human

being could perform the same steps, albeit at a slower pace.”
Id. at 612 (citations omitted).
The claims of the ’618 Patent are more like the type of
claims rejected in Alice that “merely require[d] generic
computer implementation [and] fail[ed] to transform that
abstract idea into a patent-eligible invention.”

134 S. Ct. at

2357; see also Ultramercial, 772 F.3d at 716 (“Given the
18

prevalence of the Internet, implementation of an abstract idea
on the Internet in this case is not sufficient to provide any
‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’”
(modification in quote) (quoting Mayo, 132 S. Ct. at 1297)).
“[T]ransformation into a patent-eligible application requires
‘more than simply stat[ing] the [abstract idea] while adding the
words “apply it.”’”

Alice, 134 S. Ct. at 2359 (quoting Mayo,

132 S. Ct. at 1294).
Looking at the claims, these are exactly of the type
distinguished by the court in DDR Holdings.

The claims “merely

recite the performance of some business practice known from the
pre-Internet world along with the requirement to perform it on
the Internet.”

See DDR Holdings, 773 F.3d at 1257.

The

practice of ranking things in categories based on popular vote
was well known before the advent of the internet, or even
computers, and the requirement to involve an online database
does not make the claim inventive.

Further, any person with pen

or paper could perform the same steps of the method claimed in
the patent -- tallying votes and organizing content based on
those tallied votes.

It is of no moment that the votes may be

numerous or the amount of content to organize voluminous; the
patent itself claims “a plurality” meaning only more than one.
See, e.g., ’618 Patent at col. 19 l. 11–12 (“creating a
19

plurality of user accounts, each of the user accounts
corresponding to the one of the plurality of users . . . .”).
Thus, the claim limitations would be met by only two users
voting.
Plaintiff also argues that the claims “ha[ve] additional
features and meaningful, non-conventional, non-generic
limitations, including specific features that address issues
with database organization.”

(Pl.’s Opp. to DMTD at 11–13

(citing Barnett Decl. [Docket Item 38–2]).)

Plaintiff further

argues that the ’618 Patent was an improvement over the prior
art because “a conventional database could not deliver to a user
the ‘funniest video’ or the ‘best photograph.’”
(citing Barnett Decl. ¶¶ 10, 16, 18–19).)

(Id. at 7

In support of this,

Plaintiff’s expert submits that “the claim term ‘establishing a
hierarchy for the uploaded multi-media content’ requires more
than conventional methods, but rather, a specific database
design.”

(Barnett Decl. ¶ 20 (emphasis added).)

However, as the specification of the patent makes clear in
explaining the block diagram of Figure 1 that encompasses the
claimed invention:
Databases 194, 197 store software, descriptive data,
digital content, system data, and any other data item
required by the other components of server apparatus
167. Databases used as databases 194, 197 are provided
as, for example, a database management system (“DBMS”),
an object-oriented database management system (“ODBMS”),
a relational database management system (e.g., DB2,
20

ACCESS,
etc.),
a
file
system,
and/or
another
conventional database package. In alternative examples,
each of database 194, 197 are implemented using objectoriented technology or via text files that are accessed
with a Structured Query Language (SQL) or other tools
known to those having ordinary skill in the art.
’618 Patent col. 10 ll. 11–22 (emphasis added).

This is in

direct opposition to the claims of Plaintiff and its expert that
a conventional database could not implement the claims of the
’618 Patent.
Even if the claims were limited to database technology, the
Court has made clear that “limiting the use of an abstract idea
‘to a particular technological environment’” does not make the
claim patent eligible.

Alice, 134 S. Ct. at 2359 (quoting

Bilski, 561 U.S. at 610–11).

This is still just taking the

abstract idea and saying “apply it.”

That the claims do not

appear to have an inventive concept should have been obvious to
the Plaintiff in the post-Alice environment.

2.

REASONABLENESS OF PLAINTIFF’S CONDUCT IN
LITIGATION

Defendant contends that Plaintiff’s conduct here was
“classic nuisance litigation.”

(Def.’s Mot. Br. at 16.)

Plaintiff responds that its conduct was reasonable and it was
indeed Defendant’s behavior that was improper.
7–8.)

(Pl.’s Opp. at

The Court is unpersuaded by most of Plaintiff’s arguments

in opposition, and agrees in part with Defendant that this case

21

was not litigated in a manner showing confidence in a strong
litigation position.
Plaintiff’s initial settlement demand of $50,000 was high,
but not unreasonably so if it believed that it could obtain at
least that much in damages at trial.

Even once Defendant had

tendered a sworn statement from Ruth Taylor that Bytephoto
operated at a loss of approximately $1,000 annually and
Plaintiff had received Defendant’s tax returns, the continued
high demands were still not unreasonable, as they were starting
positions for negotiation.

Plaintiff argues that because it

dropped the demand by 90% to $5,000, and then a further 50% to
$2,500, it acted reasonable.

(Pl.’s Opp. at 7–8.)

While the

first percentage drop could be artificially inflated by simply
having a large initial demand, the second percentage drop shows
continued negotiation in attempting to reach a settlement to
protect Plaintiff’s intellectual property rights. Plaintiff
points to its ability to negotiate settlements in the other
three simultaneously filed cases as evidence of its reasonable
litigation strategy.

(Pl.’s Opp. at 8.)

That Plaintiff was

able to successfully obtain settlements with three other
simultaneously sued defendants could weigh in favor of a finding
that this was part of Plaintiff’s litigation tactics, or it
could support a conclusion that Plaintiff’s claims had some
vitality worth protecting and litigating.
22

However, the fact that Plaintiff offered a walk away which
Defendant rejected after the filing of Defendant’s original
motion to dismiss does give the Court pause.

Defendant rejected

the walk away, apparently on the grounds that Defendant wanted a
declaration of invalidity of the patent to settle its
counterclaim of invalidity.

But then Plaintiff voluntarily

dismissed the entire case and provided a covenant not to sue
right after the Court set the motion to dismiss for a hearing.
If Plaintiff had truly wanted a walk away earlier,
Plaintiff could have provided the covenant not to sue rather
than opposing the motion.

As Plaintiff explained, the walk away

was offered once Plaintiff “[r]ealiz[ed] that pursuing the case
further did not make any financial sense in light of the low
potential damages and that it did not have the financial
wherewithal to engage in protracted litigation.”
4; Garofalo Decl. ¶ 7; Hanley Decl. ¶ 6.)

(Pl.’s Opp. at

But opposing the

motion to dismiss meant that Plaintiff was pursuing the
litigation further even though it apparently no longer made
financial sense.

The financial situation of Defendant did not

change, nor did any other material fact change between the
filing of the motion to dismiss and the motion being set for a
hearing.
Further, the fact that the covenant not to sue was tendered
almost immediately after the Court set the motion hearing makes
23

it appear as though Plaintiff was running away from any decision
on the merits.

The Court does not understand Plaintiff’s

characterization of providing the covenant not to sue as
“[h]aving essentially run out of options.”
Hanley Decl. ¶ 9.)

(Pl.’s Opp. at 5;

For Plaintiff to claim that it had no other

option but to provide a covenant not to sue to avoid the
attendant consequences of bringing a lawsuit is at odds with the
fact that Plaintiff is the one who filed suit.

On this ground,

Plaintiff’s conduct was unreasonable.

3.

EXCEPTIONAL NATURE OF THE CASE

Having evaluated the merits of Plaintiff’s arguments and
litigation conduct, the Court now turns to whether Plaintiff’s
positions were “exceptional” under 35 U.S.C. § 285.

Fees are

awarded “not as a penalty for failure to win a patent
infringement suit, but as appropriate only in extraordinary
circumstances.”

Octane Fitness, 134 S. Ct. at 1753 (internal

quotation marks and citation omitted).

Defendant points to the

fact that Plaintiff’s arguments were contrary to the text of the
patent, and that Plaintiff submitted a conclusory and irrelevant
expert declaration.

(Def.’s Mot. Br. at 13–16.)

Plaintiff does

not specifically dispute this, merely continuing to claim that
the patent is valid and incorporating all arguments made in its
original opposition to the motion to dismiss.

24

(Pl.’s Opp. at

9.)

Plaintiff also points to a June 2015 notice of allowance

issued by the U.S. Patent and Trademark Office (the “PTO”) in
the ’615 Application, arguing that the similarity of allowed
claims in the ’615 Application and the claims of the ’618 Patent
support validity under 35 U.S.C. § 101.

(Pl.’s Opp. at 9–11.)

Of relevance here is that Plaintiff’s suit was filed at the
end of 2014 and the issue of invalidity under 35 U.S.C. § 101
was briefed in the spring of 2015.

Before briefing concluded on

this issue in April 2015, the parties had the benefit of the
Alice decision from the Supreme Court, and many courts had
opined on the issue -- both district courts and the Federal
Circuit -- after the Supreme Court issued its Alice decision in
June 2014.

Thus, although the law on patent eligible subject

matter had been in flux, a sufficient number of cases had been
decided by the time of briefing that Plaintiff should have
realized that its arguments under 35 U.S.C. § 101 were
untenable.
The fact that Plaintiff made untenable arguments directly
contrary to the plain text of the specification is also
troubling.

The court in Lakim Industries, Inc. v. Linzer

Products Corp., No. 12-cv-4976-ODW, 2013 WL 1767799 (C.D. Cal.
Apr. 24, 2013), aff’d, 552 F. App’x 989 (Fed. Cir. 2014) (per
curiam), was faced with a similar issue.

There, during claim

construction the patentee argued that the claim term “paint
25

roller” meant something highly specialized.

Id. at *3–4.

The

court had rejected this argument, and pointed to the fact that
the patent specifically referred to “any commercially available
paint roller.”

Id. at *5.

Faced with the fact that the

patentee proposed a construction “contrary to all the intrinsic
evidence,” the court found the claim construction position
objectively baseless in determining whether to assess fees.

Id.

Plaintiff here has done the same thing by arguing for
patentability on the grounds that the patent claimed something
specialized when that argument goes against the plain text of
the patent.

The Court additionally finds that Plaintiff’s

expert’s declaration was entirely conclusory and unsupported.
The notice from the PTO also cannot provide cover to
Plaintiff’s positions taken in litigation.
allowance was transmitted on June 19, 2015.
at cover.)

The notice of
(See Office Action

This was well after the commencement of litigation

and the briefing of the original motion to dismiss.

While it

may be evidence that reasonable minds could differ, without any
mention of 35 U.S.C. § 101 in the notice of allowance, this
Court cannot draw such a conclusion.
Additionally, Plaintiff has failed to respond to the
arguments that its position was unreasonable, merely reasserting
that its position was correct and incorporating by reference its
arguments in opposition to the motion to dismiss.
26

(Pl.’s Opp.

at 9.)

While it is true that if the arguments were correct,

they would automatically be reasonable, Plaintiff failed to
proffer support of why its arguments were reasonable even if
incorrect.

All Plaintiff has done is repeat the original

arguments by incorporation and cite to the after-issued PTO
notice.
The test under Octane Fitness for whether a case is
exceptional is determined on the totality of the circumstances.
See Octane Fitness, 134 S. Ct. at 1756.

Further, the Court in

Octane Fitness referred to the “the need in particular
circumstances to advance considerations of compensation and
deterrence.”

Id. at 1756 n.6 (internal quotation and citation

omitted).
Where a patentee “repeatedly offer[s] insupportable
arguments on behalf of an obviously weak patent” including
“wholly conclusory declarations” to support its position, this
will support a finding that the case is “exceptional” under 35
U.S.C. § 285.

See eDekka LLC v. 3balls.com, Inc., No. 15-cv-

541, 2015 WL 9225038, at *3–4 (E.D. Tex. Dec. 17, 2015).

Also

looking at the conduct of Plaintiff here, this Court agrees with
Defendant that Plaintiff’s suit was dismissed to avoid a
decision on the merits, but Plaintiff continued to litigate even
when it realized it had an incredibly weak litigation position.
See Eon-Net v. Flagstar Bancorp, 653 F.3d 1314, 1326–27 (Fed.
27

Cir. 2011) (affirming a finding of “indicia of extortion” where
plaintiff filed over 100 lawsuits and immediately offered
settlements between $25,000 and $75,000).

While not presenting

“indicia of extortion,” the present case presents the type of
conduct of serial filings on a non-defensible patent that should
be deterred.
Accordingly, this case is deemed “exceptional” under 35
U.S.C. § 285 due to Plaintiff’s litigation conduct in
propounding unreasonable positions in support of validity under
35 U.S.C. § 101, and then dismissing the case to avoid a
decision on the merits.

The Court will in its discretion award

fees under 35 U.S.C. § 285.

However, the Court will cabin the

fee award to reflect that Plaintiff’s conduct was not
exceptional from the case’s inception.

See LendingTree, LLC v.

Zillow, Inc., 54 F. Supp. 3d 444, 462–64 (W.D.N.C. 2014)
(finding the case exceptional under the totality of the
circumstances and awarding attorneys’ fees only for parts of the
case); cf. Homeland Housewards, LLC v. Hastie2Market, LLC, 581
F. App’x 877, 881 (Fed. Cir. 2014) (declining to require courts
to limit costs to those incurred to responding to specific acts
of misconduct, but affirming decision to limit award to certain
parts of the litigation under the court’s discretion).

It was

only in responding to the motion to dismiss that Plaintiff’s
litigation tactics took a turn, and so the Court will only award
28

fees to Defendant for work conducted on or after April 6, 2015,
the date on which Plaintiff opposed the motion to dismiss.
Further, by the time this date was reached, the handwriting on
the wall for this sort of patent became clear under Alice and
its progeny, such that the decision of Plaintiff to nonetheless
continue the suit and force the Defendant to incur more counsel
fees became exceptional under 35 U.S.C. § 285.

C.

FEES FOR THE FEE MOTION

Assuming that the Court found the case exceptional and
awarded fees, Defendant has also requested that it be awarded
further fees in briefing the instant motion.
Br. at 20–21.)

(See Def.’s Mot.

A party seeking attorneys’ fees pursuant to 35

U.S.C. § 285 is permitted to seek fees for the fee petition
itself.

Lugus IP, LLC v. Volvo Car Corp., Civ. No. 12-2906

(JEI/JS), 2015 WL 1399175, at *6 n.5 (D.N.J. Mar. 26, 2015)
(citation omitted).

Having awarded Defendant partial fees based

on its fee motion, the Court will also award Defendant partial
fees for the litigation of the fee motion itself.

Because the

fee motion was not entirely successful, the Court, exercising
its “considerable discretion” will award only one-half of the
fees requested for the fee motion.

See Bywaters v. United

States, 670 F.3d 1221, 1228 (Fed. Cir. 2012); Renna v. Cty. of
Union, N.J., Civ. No. 11-3328 (KM), 2015 WL 93800, at *11

29

(D.N.J. Jan. 7, 2015) (“While prevailing parties may collect
reasonable fees for the time spent preparing a fee petition,
courts may reduce these fees to reflect the partial success of
the petition.” (internal quotation marks and citation omitted)),
report and recommendation adopted, 2015 WL 1815498 (D.N.J. Apr.
21, 2015); Precision Links Inc. v. USA Prods. Grp., Inc., No.
08-cv-576, 2014 WL 2861759, at *4 (W.D.N.C. June 24, 2014)
(awarding two-thirds of requested fees where defendant was
required to expend extra effort to litigate baseless
infringement claims).
Defendant will be permitted to make a supplemental
submission regarding services rendered with respect to the reply
brief.

However, the Court will not permit the inclusion of any

hours expended in reviewing this decision or preparing the
supplemental submissions.

D.

CALCULATION OF FEES

Having concluded that the case is exceptional under 35
U.S.C. § 285 and having awarded partial attorneys’ fees to
Defendant in its discretion, the Court must determine the amount
of the fee to be awarded.
54.2 governs fee awards.

In this district, Local Civil Rule
The party seeking fees must provide

affidavits setting forth the nature of services rendered, a
record of the dates and times of services rendered, a

30

description of the services rendered on each date, a description
of the professional experience of each person rendering
services, and the normal billing rate for the person rendering
services.

L.Civ.R. 54.2(a).

be submitted to the court.

Further, any fee agreements shall
L.Civ.R. 54.2(b).

“In the Third Circuit, courts calculate attorneys’ fees
pursuant to the ‘lodestar’ approach, which requires multiplying
the amount of time reasonably expended by reasonable hourly
rates.”

Lugus IP, 2015 WL 1399175, at *6 (citations omitted).

“[T]he fee applicant bears the burden of establishing
entitlement to an award and documenting the appropriate hours
expended and hourly rates.”

Wagner v. Shinseki, 733 F.3d 1343,

1349 (Fed. Cir. 2013) (quoting Hensley v. Eckerhart, 461 U.S.
424, 437 (1983)).

Even where the motion for fees is unopposed,

the party seeking fees bears the burden of proving
reasonableness.

See Spectrum Produce Distrib., Inc. v. Fresh

Mktg., Inc., Civ. No. 11-6368 (JBS/KMW), 2012 WL 2369367, at *3
(D.N.J. June 20, 2012) (“Even if a default judgment case,
therefore, Plaintiff must establish the threshold reasonable
lodestar to the Court’s satisfaction.”).
Plaintiff has not challenged any of the time entries or the
fees charged.

The entire opposition brief rests on the fact

that no fees should be awarded at all because this case is not
“exceptional” under 35 U.S.C. § 285, and fails to contemplate
31

what the result would be if, as has occurred, the Court
disagrees with that position.

In the Third Circuit, “when an

opposing party has been afforded the opportunity to raise a
material fact issue as to the accuracy of representations as to
hours spent, or the necessity for their expenditure, and
declines to do so, no reason [exists] for permitting the trial
court to disregard uncontested affidavits filed by a fee
applicant.”

United States v. Eleven Vehicles, Their Equip. &

Accessories, 200 F.3d 203, 212 (3d Cir. 2000) (citation
omitted); see also Bayer CropScience AG v. Dow AgroSciences LLC,
No. 12-256 (RMB/JS), 2015 WL 108415, at *8 (D. Del. Jan. 5,
2015) (applying Third Circuit law to fee award under 35 U.S.C.
§ 285 to decline making a sua sponte reduction in hours billed),
recommendation adopted-in-part, 2015 WL 1197436 (D. Del. Mar.
13, 2015); Asahi Glass Co., Ltd. v. Guardian Indus. Corp., No.
09-515-SLR, 2013 WL 936451, at *2 (D. Del. Mar. 11, 2013)
(noting this obligation when assessing the amount of hours to
include in a fee award under 35 U.S.C. § 285).

However, this

principle does not relieve Defendant of its burden to adequately
support its fee request.

1.

HOURLY RATE

The first step in applying the lodestar formula is
determining the appropriate hourly rate.

32

As this Court

explained in Spectrum Produce, “[t]o show the reasonableness of
a requested rate, counsel ‘must produce satisfactory evidence -in addition to their own affidavits -- that the requested rates
are in line with those prevailing in the community for similar
services by lawyers of reasonably comparable skill, experience,
and reputation.’”

2012 WL 2369367 at *4 (internal modifications

omitted) (quoting Blum v. Stenson, 465 U.S. 886, 896 n.11
(1984)).

“Mere conclusory affidavits from counsel are not

enough to establish the reasonableness of a rate.”

Id.

(internal quotations omitted).
Three attorneys provided services to Defendant in
litigating this case before this Court during the relevant time
frame:

(1) Frank L. Corrado, Esq. of Barry, Corrado & Grassi,

PC as local counsel in this court (Corrado Cert. [Docket Item
46-1] ¶ 2); (2) Daniel K. Nazer, Esq. of EFF (Nazer Cert.
[Docket Item 48] 5 ¶¶ 2, 4); and (3) Joseph C. Gratz, Esq. of
Durie Tangri LLP (Gratz Cert. [Docket Item 48-1] ¶¶ 2, 4). 6

5

The certifications of Mr. Nazer and Mr. Gratz were initially
filed as unsigned documents at Docket Items 46-2 and 46-3,
respectively, and substituted by the filings of signed versions.
6

Another attorney from EFF, Vera Ranieri, Esq. also provided
services to Defendant in litigating this case before this Court,
but her involvement ceased before April 6, 2015. (Nazer Cert.
¶ 8 & Ex. C.) In addition, two other attorneys, Denis
Yanishevskiy, Esq. and Frank A. Mazzeo, Esq. of Ryder, Lu,
Mazzeo & Konieczny LLC, provided assistance to Defendant in
assisting with the negotiations that took place prior to EFF’s
involvement in the case. (Yanishevskiy Cert. [Docket Item 46-5]
33

The submitted certifications contain the level of detail
required by Local Civil Rule 54.2, and Plaintiffs do not dispute
either the reasonableness of the hourly rate or the time
expended for each task.

Each attorney certification contains

the assertion by the respective attorneys that the rates charged
are within the prevailing market rate for an attorney of
comparable experience, and Plaintiff does not take issue with
these hourly rates.
Gratz Cert. ¶ 10.)

(Corrado Cert. ¶ 11; Nazer Cert. ¶ 13;
Each certification also attaches a resume of

the attorney or their biographies from their firm websites, and
the certifications from Mr. Nazer and Mr. Gratz also include
brief summaries of the experience of Mr. Nazer and Mr. Gratz.
(Corrado Cert. Ex. B; Nazer Cert. ¶ 6 & Ex. A; Gratz Cert. ¶ 5 &
Ex. A.)
Further, all attorneys explain that their fee arrangement
with Defendant is such that would only recover from a courtordered award of attorneys’ fees.

(Corrado Cert. ¶ 4; Nazer

Cert. ¶¶ 11–12; Gratz Cert. ¶¶ 8–9.)

For Mr. Corrado, the fee

agreement explained that “Hourly rates for any cooperating
attorneys will be at their customary billing rates for
equivalent matters.
Corrado is $450.”

In this case, the hourly rate for Frank L.
(Corrado Cert. ¶ 4.)

Similarly, for Mr.

¶¶ 3, 5). However, because their involvement ended before April
6, 2015, their fees will not be considered.
34

Nazer, the fee agreement stated that “For purposes of fee
awards, reimbursements, settlements, and other [sic] the hourly
rates of the attorneys as of the date of this agreement are:
Daniel Nazer, Staff Attorney ($570) . . . .”
¶¶ 11–12.)

(Nazer Cert.

Finally, Mr. Gratz’s agreement with Defendant did

not spell out his hourly rate, but contained the proviso that
“Durie Tangri shall be entitled to recoup the full value of its
time worked at its customary rates from any such award . . .
awarded by the Court based on time billed and costs disbursed by
Durie Tangri.”

(Gratz Cert. ¶ 9.)

Mr. Gratz certified that his

customary rate for this type of matter was $570 per hour.

(Id.

¶ 8.)
Where the party opposing fees fails to make a specific
opposition to the rate requested, and where the rate is
certified to be commensurate with the prevailing market rates in
the community, the Court may determine that the rate is
appropriate.

See Marshak v. Treadwell, Civ. No. 95-3794 (DRD),

2008 WL 413312, at *12 (D.N.J. Feb. 13, 2008), aff’d in relevant
part, 595 F.3d 478 (3d Cir. 2009).

The Court has considered the

the experience of the billing individuals and the work performed
by each, and finds that Plaintiff will be charged with the
following rates for each attorney who expended work on or after
April 6, 2015 as follows:

35

Corrado:

$450/hour

Nazer:

$570/hour

Gratz:

$570/hour

2.

TIME REASONABLY EXPENDED

The Court next considers the reasonableness of the time
expended on the matter.

For the services rendered with respect

to appearing in this Court and defending the lawsuit, the three
firms involved have submitted certifications.
Mr. Corrado submits that he spent a total of 16.5 hours
working on this matter providing procedural advice, reviewing
and filing pleadings and briefs, communicating with opposing
counsel, and participating in telephone conference with the
Magistrate Judge.

(Corrado Cert. ¶¶ 6 & Ex. A.)

Mr. Nazer

submits that he spent 87.8 hours on this matter, analyzing
claims, drafting briefs regarding the motion to dismiss,
drafting the instant motion for fees, communicating with the
client, and other general litigation and case management tasks.
(Nazer Cert. ¶¶ 7, 15 & Ex. C.)

Finally, Mr. Gratz submits that

he spent 11.5 hours on this matter, providing services such as
analysis of claims, assisting with briefing in support of the
motion to dismiss, communicating with opposing counsel, and
other general litigation and case management tasks.
Cert. ¶¶ 7, 12 & Ex. B.)

(Gratz

Each asserting is supported by the

36

itemized time sheets from the respective attorneys.

(Corrado

Cert. Ex. A; Nazer Cert. Ex. C; Gratz Cert. Ex. C.)
As mentioned above, Plaintiff has not challenged any of the
time entries.

The Court has reviewed the billing records for

each attorney and finds the time entries reasonable as
submitted.

However, the time requested must be constrained to

time expended on or after April 6, 2015, consistent with the
Court granting partial fees.

The Court has considered the

itemized time sheets from each attorney, and finds that
Plaintiff will be charged with the following amounts of hours
for each attorney who expended work on or after April 6, 2015 as
follows:
Corrado:

2.8 hours

Nazer:

32.2 hours (litigation work)
14.85 hours (fee motion work) 7

Gratz:

1.3 hours

As discussed in Section IV.C, supra, Defendant will be
granted leave to submit additional documentation on the hours
spent by Mr. Nazer reviewing the opposition to the fees motion
and preparing a reply.
seven (7) days.

That submission must be made within

Plaintiff will then be permitted to submit any

opposition to those requested hours within seven (7) days.

7

Once

This corresponds to one-half of 29.7 hours spent preparing the
fee motion. (See Nazer Cert. Ex. C.)
37

that information has been provided to the Court, the Court will
determine how many additional hours will be awarded for the fee
motion.

V.

At that time, a final fee award will be entered.

CONCLUSION
For the foregoing reasons, Defendant’s Motion will be

granted-in-part, such that the case is deemed “exceptional”
under 35 U.S.C. § 285, partial attorneys’ fees are awarded, and
the hours billed for the time period of the partial award are
approved as reasonable.

Defendant’s request for fees for

preparing the fee motion is also granted, with a one-half
reduction in hours to reflect the partial success of the motion.
Defendant will be granted leave to submit supplemental
documentation in support of fees regarding services rendered for
reply briefing on the fee application within seven (7) days.
Plaintiff will be permitted to file opposition to the additional
hours requested within seven (7) days of Defendant’s filing.
The accompanying order will be entered.

March 30, 2016
Date

s/ Jerome B. Simandle
JEROME B. SIMANDLE
Chief U.S. District Judge

38