John Bean Technologies v. B GSE Group et al
Filing
340
MEMORANDUM DECISION AND ORDER denying 285 MOTION to Alter Judgment to Enhance Damages Award; granting in part and denying in part 286 MOTION for Pre-judgment and Post-judgment Interest; granting in part and denying in par t 278 MOTION for Attorney Fees, leaving JBT with an attorneys' fee award of $1,869,923.74 and nontaxable expenses of $301,169.01, for a total award of $2,171,092.75; granting 295 MOTION for Leave to Register Judgment in Other Districts. Signed by Judge Robert J. Shelby on 9/21/23 (alt)
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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
JOHN BEAN TECHNOLOGIES
CORPORATION, a Delaware corporation,
MEMORANDUM DECISION AND
ORDER
Plaintiff,
v.
Case No. 1:17-cv-00142-RJS
B GSE GROUP, LLC, a North Carolina
limited liability company, and BRYAN
BULLERDICK, an individual,
Chief Judge Robert J. Shelby
Defendants.
After a six-day trial, a jury returned verdicts in favor of Plaintiff John Bean Technologies
Corporation (JBT), assessing total damages of $1,125,033 against Defendants B GSE Group,
LLC (BGSE) and Bryan Bullerdick. 1 Now before the court are several post-trial motions JBT
filed seeking, among other things, enhanced or exemplary damages, 2 pre- and post-judgment
interest, 3 attorneys’ fees and nontaxable expenses, 4 and leave to register the court’s Judgment in
other districts. 5 For the reasons discussed below, JBT’s Motion for Enhanced Damages is
DENIED, JBT’s Motion for Pre- and Post-Judgment Interest is GRANTED IN PART and
DENIED IN PART, JBT’s Motion for Attorneys’ Fees and Expenses is GRANTED IN PART
and DENIED IN PART, and JBT’s Motion for Leave to Register the Judgment in Other Districts
is GRANTED.
1
Dkt. 262; Dkt. 263.
2
Dkt. 285, JBT’s Motion for Enhanced Damages.
3
Dkt. 286, JBT’s Motion for Pre- and Post-Judgment Interest.
4
Dkt. 278, JBT’s Motion for Award of Attorneys’ Fees and Nontaxable Expenses.
5
Dkt. 295, Motion for Leave to Register Judgment in Other Districts.
1
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BACKGROUND AND PROCEDURAL HISTORY 6
This action arises out of a collapsed business relationship between JBT and Defendants,
who once worked together to provide ground support equipment for F-35 military aircraft. 7 JBT
claimed Defendants used its proprietary materials and trade secrets to bolster their own
competitive position and deprive JBT of certain contractual opportunities, including F-35
subcontracts at Naval Air Station Lemoore (Lemoore P-328), Marine Corps Air Station Beaufort
(Beaufort P-465), and Kadena Air Base (Kadena P-803). 8 Defendants counterclaimed, asserting,
among other things, that JBT’s post-suit conduct constituted an unfair and deceptive trade
practice under North Carolina law. 9 After several years of pre-trial litigation, a jury trial was
held to resolve questions that were left unresolved by the court’s Summary Judgment Order. 10
After two days of deliberation, 11 the jury returned unanimous verdicts in favor of JBT on
all of its claims, assessing total damages of $1,125,033 against Defendants. 12 Specifically, the
jury denoted the following awards on the Amended Verdict Form submitted by the parties:
1. $323,256 on JBT’s misappropriation of trade secrets claims (Claims 1 & 2);
2. $323,256 on JBT’s claim for unfair competition and false designation of
origin under the Lanham Act (Claim 3);
3. $323,256 on JBT’s claim for breach of the parties’ 2011 Confidentiality
Agreement (Claim 5);
The court assumes the parties’ familiarity with the facts and procedural history of this long-running dispute, which
has been detailed at length in previous court orders. See, e.g., Dkt. 184, Memorandum Decision and Order
(Summary Judgment Order) at 3–16 (published as John Bean Techs. Corp. v. B GSE Grp., LLC, 480 F. Supp. 3d
1274 (D. Utah 2020)); Dkt. 339, Memorandum Decision and Order at 1–6. Therefore, the court will reiterate only
the facts and procedural history relevant to the instant motions.
6
7
Dkt. 99, First Amended Complaint (Amended Complaint) ¶¶ 1–15; Summary Judgment Order at 1–3.
8
Summary Judgment Order at 7–15.
See Dkt. 49, Defendants’ Amended Answer and Counterclaims; Dkt. 108, Defendants’ Answer to First Amended
Complaint and Counterclaims.
9
See Dkt. 199, Joint Status Report at 2–3 (summarizing the issues remaining for trial); Dkts. 253–257, 261, Minute
Entries for Proceedings Held from September 29, 2022 to October 6, 2023.
10
11
See Dkt. 257; Dkt. 261.
12
See Dkt. 262; Dkt. 263.
2
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4. $323,256 on JBT’s claim for breach of the parties’ 2011 Non-Disclosure
Agreement (Claim 6);
5. $323,256 on JBT’s claim for breach of the parties’ 2012 Distributorship
Agreement (Claim 7);
6. $96,664 on JBT’s claim for tortious interference with the Lemoore P-328
project (Claim 8);
7. $43,181 on JBT’s claim for tortious interference with the Beaufort P-465
project (Claim 8); and
8. $61,932 on JBT’s claim for tortious interference with the Kadena P-803
project (Claim 8). 13
After the verdict was read, the jury sought to clarify its intention behind the repeated
entries for $323,256 for Claims 1–3 and 5–7. In open court, it confirmed that it found
Defendants liable on all these claims, with the total damages reflected by a single award of
$323,256. 14 When combined with the jury’s assessment of damages on JBT’s tortious
interference claims, JBT was therefore left with a damages award of $525,033. 15 Additionally,
the jury found punitive damages were warranted on JBT’s tortious interference claim, which it
set at $500,000 against BGSE and $100,000 against Bullerdick. 16 In addition to these damages,
the jury found, by clear and convincing evidence, that Defendants’ conduct was “willful and
malicious” for the purpose of JBT’s trade secret misappropriation claims and “willful” for the
purpose of its Lanham Act claim. 17
After the court entered its Judgment, 18 JBT moved for an award of exemplary damages
on its trade secret misappropriation claims, as well as statutory enhancement of the jury’s
damages award on its Lanham Act claim. 19 JBT contends these additional damages are
13
Dkt. 262 at 2–7.
14
Dkts. 326–335, Trial Transcript (Trial Transcript) at 1118:25–1123:14.
15
Dkt. 262.
16
Dkt. 263.
17
Dkt. 262 at 2–3.
18
Dkt. 273, Judgment on the Jury Verdicts.
19
Dkt. 285.
3
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warranted because “[t]his is not a case of ordinary misconduct.” 20 Rather, “[t]his is a case of
extraordinary willful intent to scheme and deceive an entire market of buyers, including the U.S.
government.” 21 JBT also moves for an award of pre- and post-judgment interest, 22 recovery of
attorneys’ fees and expenses, 23 and leave to register the Judgment in other districts. 24 Having
fully reviewed the parties’ briefing and finding that oral argument would not be materially
helpful, 25 the court now rules on the instant Motions.
DISCUSSION
As noted, JBT has filed several motions seeking to expand the scope of its recovery
against Defendants, ranging from enhanced damages to attorneys’ fees and expenses. 26 The
court will address each request in turn, starting with JBT’s request for enhanced damages. For
the reasons discussed below, the court concludes that the consolidated nature of the jury’s
damages award leaves it unable to properly ascertain exemplary or enhanced damages for
specific claims, and thus denies JBT’s Motion for Enhanced Damages. 27 While the court grants
JBT’s request for post-judgment interest, it declines to award prejudgment interest given Utah
courts’ “reluctan[ce] to award prejudgment interest on lost profits . . . [or] unjust enrichment,” 28
both of which were considered by the jury in reaching its final damages award. 29 Moreover, the
20
Id. at 3.
21
Id.
22
Dkt. 286.
23
Dkt. 278.
24
Dkt. 295.
25
See DUCivR 7-1(g).
26
See generally Dkt. 278; Dkt. 285.
27
Dkt. 285.
28
ClearOne Communs., Inc. v. Chiang, 432 F. App’x 770, 774–75 (10th Cir. 2011) (applying Utah law).
29
See infra Section II.
4
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court determines that an award of attorneys’ fees and expenses is warranted given the gravity of
Defendants’ misconduct, but it significantly reduces JBT’s requested amount to account for
unreasonable, unnecessary, or otherwise unsupported fees and expenses. 30 Finally, the court
grants JBT’s request for leave to register the Judgment in other districts. 31
JBT’s Motion for Exemplary or Enhanced Damages 32
I.
The court first considers JBT’s request for exemplary or enhanced damages for its trade
secret misappropriation and Lanham Act claims, respectively. In doing so, the court starts with
the governing legal standards before turning to the merits of JBT’s requests.
LEGAL STANDARDS
Utah’s Uniform Trade Secret Act (UTSA) provides that exemplary damages may be
awarded for trade secret misappropriation if “willful and malicious” misappropriation is
shown. 33 In particular, it allows exemplary damages up to twice the amount of damages awarded
for “actual loss caused by misappropriation and the unjust enrichment caused by
misappropriation that is not taken into account in computing actual loss.” 34 Similarly, under the
federal Defend Trade Secrets Act (DTSA), the court may “award exemplary damages” up to
twice the amount of assessed damages “if the trade secret [was] willfully and maliciously
misappropriated.” 35
In determining whether to award exemplary damages under these statutes, courts in this
District consider the following factors:
30
See Dkt. 278.
31
See Dkt. 295.
32
Dkt. 285.
33
Utah Code Ann. § 13-24-4(2).
34
Id. § 13-24-4(1).
35
18 U.S.C. § 1836(b)(3)(C).
5
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(1) the deliberateness of the defendant’s actions; (2) the defendant’s good-faith
belief that it was not misappropriating a trade secret; (3) the defendant’s behavior
as a party in litigation; (4) the defendant’s size and financial condition; (5) the
closeness of the case; (6) the duration of the defendant’s misconduct; (7) the
presence of any remedial action by the defendant; (8) the defendant’s motivation
for harm; and (9) the defendant’s attempts to conceal its misconduct. 36
In short, “an award of exemplary damages is appropriate where . . . it is supported by the verdict
and accomplishes the public objective of punishing and deterring malicious conduct.” 37
“[W]here the question of willful and malicious misappropriation has already been decided by the
jury,” some courts have cautioned that a district court’s “discretion [over exemplary damages] is
limited.” 38 “In such circumstances, a court may refuse to enhance damages only if it can do so
without second guessing the jury or contradicting its findings.” 39
In addition to the DTSA and UTSA, the Lanham Act also allows the court to enhance the
jury’s damages award to account for the gravity of the defendant’s misconduct. It states, “the
court may enter judgment, according to the circumstances of the case, for any sum above the
amount found as actual damages, not exceeding three times such amount.” 40 While the decision
to enhance damages lies within the discretion of the district court, case law cautions that such
36
Bimbo Bakeries USA, Inc. v. Sycamore, No. 2:13-cv-00749-DN-DBP, 2018 U.S. Dist. LEXIS 54556, at *9 (D.
Utah Mar. 29, 2018) (citing USA Power, LLC v. PacifiCorp, 372 P.3d 629, 660 (Utah 2016) (adopting the factors
outlined in Read Corp. v. Portec, Inc., 970 F.2d 816, 827–28 (Fed. Cir. 1992))); see also ClearOne Communs., Inc.
v. Bowers, 643 F.3d 735, 759 (10th Cir. 2011) (affirming a district court’s award of exemplary damages based on an
analysis of the Read factors).
Storagecraft Tech. Corp. v. Kirby, No. 2:08-cv-00921-DN, 2012 U.S. Dist. LEXIS 140706, at *5 (D. Utah Sep.
27, 2012); see also Russo v. Ballard Med. Prods., No. 2:05-cv-59-TC, 2007 U.S. Dist. LEXIS 16291, at *7 (D. Utah
Mar. 7, 2007) (declining to award exemplary damages where the court did “not find a public objective would be
served” by such an award).
37
Storagecraft Tech. Corp., 2012 U.S. Dist. LEXIS 140706 at *4–5; see also ClearOne Communs., Inc. v. Chiang,
No. 2:07-CV-37-TC, 2009 U.S. Dist. LEXIS 35311, at *17 (D. Utah Apr. 20, 2009), rev’d on other grounds sub
nom., ClearOne Communs., Inc. v. Biamp Sys., 653 F.3d 1163 (10th Cir. 2011) (“Special weight is placed on the
jury’s verdict. The jury carefully weighed the evidence, and its factual findings (which were based on clear and
convincing evidence) should be respected.” (collecting cases)).
38
Storagecraft Tech. Corp., 2012 U.S. Dist. LEXIS 140706, at *4–5 (quoting BioCore, Inc. v. Khosrowshahi, No.
98-2031-KHV, 2004 U.S. Dist. LEXIS 2167, at *13 (D. Kan. Feb. 2, 2004)).
39
40
15 U.S.C. § 1117(a).
6
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enhancements “should constitute compensation and not a penalty.” 41 For example, “courts have
concluded that enhancements are warranted to properly compensate a plaintiff where the
measure of damages is conservative and otherwise understates the award.” 42 In reaching this
determination, courts generally look to equitable considerations. 43
APPLICATION
As prefaced above, JBT moves for exemplary damages pursuant to the UTSA and DTSA
based on Defendants’ “willful and malicious” trade secret misappropriation, as well as for
enhanced damages under the Lanham Act. 44 It argues these additional measures are warranted
given “[t]he brazen nature in which Defendants handed JBT’s trade secrets to its competitors,
photoshopped product images, . . . doctored e-mails[,] and lied to general contractors” as part of
their effort to undermine JBT’s competitive position and generate business for BGSE. 45 JBT
seeks the maximum possible award under these enhancement mechanisms—that is, “an award of
enhanced damages in the amount of $646,512 on its two trade secrets claims” 46 and “all of
BGSE’s unjust enrichment of $525,033[] and JBT’s damages (lost profits) of $201,777,” which it
Vitamins Online, Inc. v. HeartWise, Inc., No. 2:13-cv-00982-DAK, 2020 U.S. Dist. LEXIS 210754, at *68 (D.
Utah Nov. 10, 2020), aff’d on other grounds, 71 F.4th 1222 (10th Cir. 2023) (quoting Novell, Inc. v. Network Trade
Ctr., Inc., 25 F. Supp. 2d 1233, 1244 (D. Utah 1998)).
41
Abbott Labs. v. H&H Wholesale Servs., Inc., No. 15-cv-5826 (CBA) (LB), 2022 U.S. Dist. LEXIS 232695, at *33
(E.D.N.Y. Dec. 27, 2022) (internal quotation marks and citations omitted); see also ALPO Petfoods, Inc. v. Ralston
Purina Co., 997 F.2d 949, 955 (D.C. Cir. 1993) (“An enhancement is appropriate to compensate a Lanham Act
plaintiff only for such adverse effects as can neither be dismissed as speculative nor precisely calculated.”); Marten
Transp., Ltd. v. Plattform Advert., Inc., No. 14-2464-JWL, 2016 U.S. Dist. LEXIS 97754, at *45 (D. Kan. July 26,
2016) (addressing the “anomalous” nature of the statute, which “provide[s] for an award over the amount found as
actual damages while requiring such award to be compensatory and not punitive”).
42
See, e.g., Vitamins Online, 2020 U.S. Dist. LEXIS 210754, at *68; Bimbo Bakeries, 2018 U.S. Dist. LEXIS
54556, at *7; Atlas Biologicals Inc. v. Kutrubes, No. 15-cv-00355-CMA-KMT, 2019 U.S. Dist. LEXIS 161501, at
*38 (D. Colo. Sep. 23, 2019) (stating “the [c]ourt has discretion to treble damages, subject to equitable
considerations, in order to remedy a violation of the Lanham Act”).
43
44
Dkt. 285 at 4.
45
Id. at 3.
46
Id. at 14.
7
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further contends “should [] be trebled.” 47 If granted, these enhancements would nearly
quadruple the jury’s non-punitive damages award. 48
In arguing for enhancement, JBT points out that the trial record is replete with examples
of deceit and betrayal by Defendants, ranging from their divulgement of JBT’s trade secrets to
the co-opted photos and materials used as part of BGSE’s submittals. 49 And it stresses that the
jury found, by clear and convincing evidence, that Defendants’ conduct was indeed “willful and
malicious.” 50 Under these circumstances, JBT contends “all nine Read factors” favor an award
of exemplary damages and that further enhancement under the Lanham Act is needed to “ensure
[] Defendants are completely deprived of their profits from willful and malicious conduct.” 51
A. An Award of Exemplary or Enhanced Damages Is Precluded by the Jury’s
Consolidated Damages Award
But this is not a typical case. Notwithstanding the purported merits of JBT’s position, the
court lacks a critical piece of information needed to properly assess exemplary or enhanced
damages under the statutes: the specific damages attributed to these claims. As discussed,
exemplary damages under the DTSA and UTSA, as well as enhanced damages under the
Lanham Act, are tied to the damages amounts assessed for trade secret misappropriation and
Lanham Act violations, respectively. 52 In the context of JBT’s trade secret misappropriation
claims, for example, exemplary damages cannot exceed twice the amount of damages awarded
47
Id. at 16.
Compare Dkt. 262 (assessing non-punitive damages of $525,033 for all of JBT’s claims), with Dkt. 285
(requesting enhanced or exemplary damages of $1,978,653).
48
49
See Dkt. 285 at 6, 12–14.
Dkt. 285 at 4 (citing Dkt. 262 at 2); see also Dkt. 262 at 3 (finding, by clear and convincing evidence, that
BGSE’s actions “[w]ith respect to JBT’s claim for false designation of origin . . . were willful”).
50
51
Dkt. 285 at 3–4.
52
18 U.S.C. § 1836(b)(3)(C); Utah Code Ann. § 13-24-4(2); 15 U.S.C. § 1117(a).
8
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for “actual loss caused by misappropriation and the unjust enrichment caused by
misappropriation.” 53 Similarly, enhanced damages under the Lanham Act are tied to damages
resulting from Lanham Act violations, though there appears to be more leeway for assessing lost
profits. 54 But here, the court has a single damages award—$323,256—encompassing damages
from six different claims, 55 only three of which are eligible for statutory enhancement. In the
face of such an opaque award, the court cannot ascertain “loss[es] caused by misappropriation”
or losses attributed to Defendants’ Lanham Act violations without resorting to speculation.
Nevertheless, the parties offer competing theories for how the court should ascertain the
relevant damages amounts. JBT posits that the court can award exemplary damages of
$646,512—reflecting an enhancement of two times the “$323,256 [awarded] to JBT for
Defendants’ misappropriation of trade secrets.” 56 For its Lanham Act claim, JBT argues the
court should enhance the jury’s damages award to at least $525,033, which is “the minimum
amount of lost profits presented to the jury[] by Defendants’ own expert.” 57 For their part,
Defendants counter that “for all of the claims for which liability was established at [s]ummary
[j]udgment, and for all of the additional conduct JBT presented at trial[,] . . . the jury awarded
JBT only $323,256.” 58 As such, Defendants state the court should, at most, apportion that
amount equally among the six claims, leading to an amount of $53,876 per claim. 59 Under
53
Utah Code Ann. § 13-24-4(1)–(2); see also 18 U.S.C. § 1836(b)(3)(B)(i) (reflecting an analogous limit for
exemplary damages).
54
15 U.S.C. § 1117(a).
See Dkt. 262 (reflecting the same damages amount for claims 1–3 and 5–7); Trial Transcript at 1122:6–14
(clarifying that “everywhere in the verdict form . . . $323,256 appears . . . that that number be awarded once,” rather
than for each claim).
55
56
Dkt. 285 at 14.
57
Id. at 15.
58
Dkt. 300, Defendants’ Response to JBT’s Motion for Enhanced Damages at 3.
59
See id. at 13 n.77.
9
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Defendants’ theory, the greatest enhancement for each of JBT’s trade secret misappropriation
claims would be $107,752. Defendants further assert that enhanced damages under the Lanham
Act are not suitable, as the consolidated damages award adequately compensates JBT for
relevant losses. 60
The parties’ competing approaches suffer from the same fatal defect—they both assume
the court has an overriding power to speculate specific damage amounts from an otherwise
indivisible award. However, “it is not within the province of this [c]ourt to speculate as to how
the jury arrived at the amount of damages.” 61 Nor can the court simply carve up a consolidated
award among several causes of action to determine “actual damages” for the purpose of
anchoring exemplary or enhanced damages. 62 As a sister court observed, “[e]nhancement by
speculation can never be permitted.” 63 This sort of guesswork also raises the risk of additur—a
court-imposed increase of a jury’s award of damages 64—which is deemed “an unconstitutional
60
See id. at 13–20.
Saint-Jean v. Emigrant Mortg. Co., 337 F. Supp. 3d 186, 208 (E.D.N.Y. 2018) (declining to “bifurcate economic
from emotional damages” assessed as part of a consolidated award); see also Garcia v. Tyson Foods, Inc., 770 F.3d
1300, 1308 (10th Cir. 2014) (“[S]peculation about how the jury calculated damages . . . is improper as long as the
award is within the range of evidence.”); N. Am. Specialty Ins. Co. v. Britt Paulk Ins. Agency, Inc., 579 F.3d 1106,
1113 (10th Cir. 2009) (explaining that courts are “generally unwilling to disturb or second guess the jury’s verdict”
so long as the “jury [was] instructed not to award duplicative damages and it return[ed] a total damage figure within
the range of evidence”). As discussed in this court’s concurrent Order denying Defendants’ Renewed Motion for
Judgment as a Matter of Law, the jury was appropriately instructed to avoid duplicative damages and the total
damage figure fell well within the range of evidence presented at trial. See Dkt. 339 at 11–13, 18–19.
61
See Rotating Prods. Sys. v. Bock Specialties, Inc., No. 95-WM-1707, 97-WM-278, 2001 U.S. Dist. LEXIS 25147,
at *27–31 (D. Colo. Mar. 19, 2001), aff’d, 42 F. App’x 460 (Fed. Cir. 2002) (declining to enhance a consolidated
$640,000 jury award for seven claims, four of which “provide[d] no basis for enhancing damages”); see also Harvey
v. Gen. Motors Corp., 873 F.2d 1343, 1349 (10th Cir. 1989) (holding that enhancement requires a showing that the
“injuries are capable of logical, reasonable or practical division,” while applying Wyoming law).
62
63
Rotating Prods., 2001 U.S. Dist. LEXIS 25147, at *31.
64
Black’s Law Dictionary (11th ed. 2019) (defining additur as “the increase of a jury’s award of damages”).
10
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reexamination of the jury verdict in violation of the Seventh Amendment.” 65 Where, as here, “a
jury verdict is ambiguous,” Tenth Circuit case law cautions against district courts’ speculation of
damages because “it is [] possible that the jury found a lower total damages figure,” and
therefore, “a judgment for [a] higher amount risks additur.” 66
“Indeed, it is conceivable that the jury may have allocated little or no damages to those
causes of action which allow enhancement or exemplary damages.” 67 Here, the court cannot say
with certainty that even one dollar was directly attributed to JBT’s trade secret misappropriation
claims given the jury’s clarification that the “number . . . awarded was the total number”
awarded for the several claims, “not the number [awarded] on each one.” 68 Therefore, an
enhancement of two dollars risks exceeding the statutory maximum for exemplary damages
under the DTSA or UTSA and hews dangerously close to additur. 69 Similarly, the court cannot
enhance the damages for Defendants’ Lanham Act violations without knowing what “amount
[was] found as actual damages.” 70 Under these circumstances, it “would be a matter of pure
Lyon Dev. Co. v. Bus. Men’s Assurance Co. of Am., 76 F.3d 1118, 1125 (10th Cir. 1996); see also ClearOne
Communs., 653 F.3d at 1179 (“A court-imposed increase of damages encroaches on the defendant’s right to a jury
trial because it ‘is a bald addition of something which in no sense can be said to be included in the verdict.’”
(quoting Dimick v. Schiedt, 293 U.S. 474, 486 (1935))).
65
ClearOne Communs., 653 F.3d at 1179–82 (reversing a district court’s enhanced and exemplary damages awards
because, among other things, it impermissibly assumed that the jury apportioned damages).
66
67
Rotating Prods., 2001 U.S. Dist. LEXIS 25147, at *29.
68
See Trial Transcript at 1119:6–9 (emphasis added). While JBT acknowledges “it was determined in open court
that the [j]ury intended a single award of $323,256,” Dkt. 285 at 3 n.1, it still states that the jury awarded $323,256
for Defendants’ misappropriation of trade secrets and the same amount for its Lanham Act claims. See id. at 14–15.
But JBT does not explain how it reaches this conclusion in light of the jury’s clear confirmation that $323,256 was
“not the number [awarded] on each” claim, but rather “the total number.” Trial Transcript at 1119:6–9. In any
event, the court cannot reconcile JBT’s puzzling approach with the jury’s clarification in open court.
69
See ClearOne Communs., 653 F.3d at 1179.
70
15 U.S.C. § 1117(a); see also Bimbo Bakeries, 2018 U.S. Dist. LEXIS 54556, at *6 (“Because the jury did not
find an amount of actual damages, there is no basis to determine what three times actual damages . . . might be.”).
11
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speculation to determine what amount of the damages,” if any, “is attributable to those causes [of
action] which allow . . . enhancement.” 71
Of course, there were diligent efforts to prevent such an unsatisfactory outcome. The
verdict forms proposed by the parties, 72 as well as the one finally adopted by the court, 73 all
contained placeholders for specific damages amounts for each cause of action and did not
provide a place for aggregated damages. In the context of JBT’s trade secret misappropriation
claims, the jury was instructed that it “should award the amount of money that will fairly and
adequately compensate JBT for measurable losses of money caused by [Defendants’] trade secret
misappropriation.” 74 The verdict form reiterated: “You may only award an amount that would
fairly compensate JBT for damages proximately caused by [Defendants’] use of its trade
secrets.” 75 Additionally, the jury was advised that damages for Defendants’ Lanham Act
violations needed to be caused by the false designation of origin. 76
But even with carefully designed verdict forms and clear instructions, juries sometimes
color outside the lines. When the result is an ambiguous verdict, “the court’s options are to
explain the ambiguity to the jury and send the jury back into deliberations with instructions to
clarify the ambiguity or to order a new trial.” 77 In this case, members of the jury noticed the
ambiguity themselves and immediately sought to clarify their intention. 78 As discussed, the jury
71
Rotating Prods., 2001 U.S. Dist. LEXIS 25147, at *30–31.
72
See generally Dkt. 213, Dkt. 235; Dkt. 244; Dkt. 252.
73
Dkt. 262.
74
See Dkt. 266, Final Substantive Jury Instructions (Jury Instructions), No. 19 (emphasis added).
75
Id.
76
Id., Nos. 23–25.
77
Unit Drilling Co. v. Enron Oil & Gas Co., 108 F.3d 1186, 1193 (10th Cir. 1997).
78
See Trial Transcript 1118:25–1120:18 (recounting how the jury became concerned that its intent could be
misconstrued after hearing the verdict read out loud).
12
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entered the same amount—$323,256—for several causes of action on the verdict form. But after
the verdict was read, the jury clarified its “intention [] that everywhere in the verdict form . . .
$323,256 appears . . . that that number be awarded once,” rather than for each claim. 79 Neither
side raised any objections to the jury’s clarification before it was discharged, nor did they
challenge the court’s reflection of the consolidated award as part of the final Judgment. 80 And
while Defendants contest the sufficiency of the evidence supporting the jury’s award, 81 the
parties’ post-trial briefing leaves the consolidated nature of the jury’s award relatively
undisturbed. So, whether by the jury’s own ingenuity or the parties’ acquiescence, it is still the
controlling verdict in this case, unwieldy as it is.
In sum, the court concludes that the consolidated nature of the jury’s award is fatal to its
assessment of exemplary or enhanced damages under the DTSA, UTSA, or Lanham Act.
Recognizing that “[e]nhancement by speculation can never be permitted,” 82 the court must
therefore decline JBT’s request for exemplary and enhanced damages.
B. A Weighing of the Equities Militates Against an Award of Lost Profits
JBT also seeks disgorgement of BGSE’s profits under the Lanham Act, which is not
strictly tied to the “amount found as actual damages,” as with enhanced damages under
15 U.S.C. § 1117(a). 83 But it is still the case that “such sum[s]” must “constitute compensation
79
See id. 1122:6–14.
See generally Dkt. 270, Defendants’ Objections to Proposed Judgment (challenging JBT’s Proposed Judgment on
the grounds that it was premature and contained improper references to post-judgment interest, taxable costs, and
future awards); Dkt. 271, JBT’s Response to Defendants’ Objections to Proposed Judgment.
80
81
See generally Dkt. 284, Defendants’ Motion for Judgment as a Matter of Law.
82
Rotating Prods., 2001 U.S. Dist. LEXIS 25147, at *31.
See 15 U.S.C. § 1117(a) (“In assessing profits the plaintiff shall be required to prove defendant’s sales only;
defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter
judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not
exceeding three times such amount.”).
83
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and not a penalty.” 84 Additionally, “an award of profits under the Lanham Act is truly an
extraordinary remedy and should be tightly cabined by principles of equity.” 85 JBT recognizes
this burden, but contends an enhanced award is necessary to compensate it for “any
unquantifiable damages, such as loss of goodwill, reputation and market share” resulting from
Defendants’ misconduct. 86 The court disagrees.
First, the court concludes JBT is not undercompensated by the jury’s damages award.
Despite JBT’s concerns of “unquantifiable damages” resulting from Defendants’ misconduct, the
jury was clearly instructed to consider broad factors in shaping its damages award, including
“[a]ny injury to or loss of JBT’s reputation [or] . . . goodwill.” 87 It was also advised that JBT
was “entitled to any profits earned by BGSE that are attributable to its illegal conduct, in
addition to actual damages.” 88 Without evidence to the contrary, the court presumes the jury
followed these instructions. 89 Moreover, the question of damages was hotly contested
throughout litigation, with extensive testimony provided at trial by experts on both sides. The
jury opted for a holistic approach on damages, awarding $323,256 across several claims and an
additional $201,777 on JBT’s tortious interference claims—“match[ing] to the dollar
Defendants’ expert’s calculation of Defendants’ total unjust profits.” 90 While JBT maintains
actual damages or lost profits resulting from Defendants’ misconduct were much higher, the
84
Id.
85
Western Diversified Servs., Inc. v. Hyundai Motor Am., Inc., 427 F.3d 1269, 1274 (10th Cir. 2005).
86
Dkt. 285 at 17.
87
Jury Instructions, No. 24.
88
Id., No. 25.
See Helmer v. Goodyear Tire & Rubber Co., 828 F.3d 1195, 1200 (10th Cir. 2016) (explaining that courts
“generally presume that juries follow the instructions given to them” (internal quotation marks and citation
omitted)).
89
90
Dkt. 285 at 15 n.4.
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court sees no reason to disrupt the jury’s findings or risk duplicative damages for conduct
already sanctioned by the jury’s award.
Second, the court is mindful that an award of lost profits under the Lanham Act should
not be punitive or constitute a windfall for the plaintiff. By now, the misconduct that prompted
JBT’s Lanham Act claim—among other claims—has been thoroughly sanctioned by an award of
compensatory damages, 91 punitive damages, 92 and now, attorneys’ fees and expenses. 93 Further
awards are not necessary to achieve the deterrence or compensatory aims of the Lanham Act’s
enhancement provision. 94
For these reasons, the court declines to award further disgorgement of BGSE’s profits
under the Lanham Act, or grant exemplary or enhanced damages for JBT’s trade secret
misappropriation and Lanham Act claims, respectively. Accordingly, JBT’s Motion for
Enhanced Damages is denied in its entirety. 95
JBT’s Motion for Pre- and Post-Judgment Interest 96
II.
A. Prejudgment Interest
JBT requests an award of prejudgment interest “from at least the time of [Defendants’]
misappropriation of JBT’s trade secrets,” and proposes $116,321.06 “[u]sing simple interest and
applying the historic rates under Utah law” starting on August 31, 2015. 97 Defendants object on
91
Dkt. 262.
92
Dkt. 263.
93
See infra Section III.
See Marten Transp., No. 14-2464-JWL, 2016 U.S. Dist. LEXIS 97754, at *51–52 (declining to award lost profits
because, among other reasons, an “award of punitive damages (when considered with the attorney fees awarded [])
already provide[d] a windfall to [the plaintiff] while providing sufficient punishment and deterrence . . . ; thus, an
additional award of [the defendant’s] profits [was] not necessary to achieve any such aim”).
94
95
Dkt. 285.
96
Dkt. 286.
97
Id. at 3–4.
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the grounds that “the jury’s award for [] trade secret misappropriation factored in BGSE’s alleged
unjust enrichment,” which they argue limits the availability of prejudgment interest under
relevant case law. 98 Additionally, Defendants point out that the jury considered misconduct from
as late as October 16, 2018 when assessing damages under JBT’s claims. 99 Therefore,
Defendants contend “[t]here is no reason to believe that August 31, 2015, was the date all of the
damages were incurred.” 100 Lastly, Defendants challenge JBT’s method of calculating
prejudgment interest and assert “the federal rate should apply.” 101 For the reasons discussed
below, the court concludes prejudgment interest is not appropriate in this case.
As a general matter, federal law governs prejudgment interest for federal claims, while
state law determines the availability of prejudgment interest for pendent state claims. 102 But the
choice of law for prejudgment interest becomes less clear when, as here, the court is confronted
with a consolidated damages award reflecting state and federal claims. When faced with a
similar verdict nearly four decades ago, one district court described the question of whether to
apply state or federal law as “puzzling” and muddled by “admittedly mixed” authority. 103 The
court ultimately sidestepped the question, noting that both state law and the discretion afforded
by federal law supported such an award. 104 In another case, the First Circuit discussed with
Dkt. 301, Defendants’ Response to JBT’s Motion for Pre- and Post-Judgment Interest at 2–3 (citing Russo, 2007
U.S. Dist. LEXIS 16291, at *4–6).
98
99
Id. at 3–4 (citing Jury Instructions, No. 22).
100
Id. at 3.
101
Id. at 4–5.
Olcott v. Del. Flood Co., 327 F.3d 1115, 1126 (10th Cir. 2003) (“Where state law claims are before a federal court
on supplemental jurisdiction, state law governs the court’s award of prejudgment interest.”); United Phosphorus,
Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1236 (10th Cir. 2000) (stating that the Tenth Circuit “look[s] to
federal law to determine the propriety of prejudgment interest on the federal claims and to Kansas law for the
pendent state claim”); see also Vitamins Online, 2020 U.S. Dist. LEXIS 210754, at *63–68 (applying federal law to
determine propriety of prejudgment interest on Lanham Act claims and Utah law for a pendent state law claim).
102
103
Ward v. Succession of Freeman, No. 85-1254, 1987 U.S. Dist. LEXIS 1392, at *1 (E.D. La. Feb. 20, 1987).
104
Id. at *2.
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approval a district court’s decision to deny prejudgment interest based solely on federal
principles where “all claims, both federal and state, were sent to the jury together, resulting in a
general verdict.” 105
In a more recent case dealing with a consolidated damages award for state and federal
claims, a district court concluded, “the fact that the jury did not specifically allocate the damages
among [the plaintiff’s] various claims does not outright preclude an award . . . for prejudgment
interest.” 106 However, it described the situation as “problematic” and applied both legal
frameworks to respective claims before concluding that prejudgment interest was not warranted
under state or federal law. 107
Though case law provides less clarity than one would hope, the court is persuaded that
the prudent approach is to apply state law to the state claims and federal law to the federal
claims, 108 consistent with the Tenth Circuit’s general approach to choice of law for prejudgment
interest. 109 If prejudgment interest is available on all of the claims, the court can properly assess
prejudgment interest for a consolidated damages award. 110 However, if damages are not
warranted on JBT’s state claims, for example, prejudgment interest must be withheld because the
105
Wojtkowski v. Cade, 725 F.2d 127, 129 (1st Cir. 1984); see also Pioneer Hi-Bred Int’l v. Holden Found. Seeds,
Inc., 35 F.3d 1226, 1246 (8th Cir. 1994) (concluding that a district court did not err by refusing to award
prejudgment interest for a damages award reflecting both state and federal claims when federal common law
principles weighed against such an award).
106
Jadwin v. Cty. of Kern, No. 07-CV-0026-OWW-DLB, 2010 U.S. Dist. LEXIS 30949, at *42 (E.D. Cal. Mar. 31,
2010).
107
Id. at *42–48.
108
Cf. id.
109
See United Phosphorus, 205 F.3d at 1236.
Cf. Jadwin, 2010 U.S. Dist. LEXIS 30949, at *42–48 (“Because prejudgment interest is theoretically available on
all of [the plaintiff’s] claims submitted to the jury, the fact that the jury did not specifically allocate the damages
among [the plaintiff’s] various claims does not outright preclude an award . . . for prejudgment interest.”); see also
Ward, 1987 U.S. Dist. LEXIS 1392, at *1–3 (granting prejudgment interest where it was warranted under state law
and as a matter of federal discretion).
110
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court “cannot tell to what extent, if any, the jury’s awards of damages . . . were based on the state
claims” as opposed to the federal claims. 111 This seems to be the best way to preserve the court’s
longstanding approach to choice of law and avoid unintentionally burdening Defendants with
prejudgment interest when it would otherwise be incompatible with state or federal law.
Because the court ultimately concludes prejudgment interest is inappropriate under Utah
law, it addresses only this legal framework. As the Utah Supreme Court explains, “[t]he purpose
of awarding prejudgment interest is ‘to compensate a party for the depreciating value of the
amount owed over time and, as a corollary, to deter parties from intentionally withholding an
amount that is liquidated and owing.’” 112 Under Utah law, “[p]rejudgment interest may be
recovered where the damage is complete, the amount of the loss is fixed as of a particular time,
and the loss is measurable by facts and figures.” 113 This does not mean “that at the time the
damages accrued, all of the damage figures must be known and remain static throughout the
litigation.” 114 Rather, the focus is “on the measurability and calculability of the damages.” 115
“Where damage figures are subject to calculation, . . . even if the method of calculating is
uncertain, or the damage figures change, prejudgment interest is appropriate.” 116
Cf. Wojtkowski, 725 F.2d at 129; see also Sw. Rec. Indus., Inc. v. FieldTurf, Inc., No. 01-50073, 2002 U.S. App.
LEXIS 30245, at *25–26 (5th Cir. Aug. 13, 2002) (concluding a district court did not abuse its discretion by denying
prejudgment interest where “[the] submission of a general damage question made it impossible to determine which
portion of the award was attributable to” the claims eligible for prejudgment interest).
111
Encon Utah, LLC v. Fluor Ames Kraemer, LLC, 210 P.3d 263, 275 (Utah 2009) (quoting Carlson Distrib. Co. v.
Salt Lake Brewing Co., 95 P.3d 1171, 1179 (Utah Ct. App. 2004)).
112
113
Id. at 272 (quoting Saleh v. Farmers Ins. Exch., 133 P.3d 428, 436 (Utah 2006)).
114
Id.
115
Id.
116
Id. at 273.
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Defendants argue the damages here likely derive from BGSE’s unjust enrichment, which
they maintain “does not qualify for prejudgment interest” under Utah law. 117 They point out that
damages were heavily litigated and “the jury weighed [] competing opinions from experts, some
of which exceeded the award, and ‘likely considered . . . unjust enrichment in determining the
damages.’” 118 Because JBT’s claims centered on “several projects and several different dates,”
Defendants further challenge that “one can only speculate about the amount of damages,”
thereby precluding an award of prejudgment interest. 119 JBT counters that “federal law controls
the prejudgment interest question” and asserts “[i]t is common in this . . . [D]istrict[] to award
prejudgment interest on an award based on the defendant’s profits.” 120 However, as discussed,
the court applies Utah law to determine the propriety of prejudgment interest on JBT’s state
claims.
Importantly, “Utah courts are reluctant to award prejudgment interest on lost profits . . .
[or] unjust enrichment.” 121 In the former case, this is because “the very nature of lost future
profits injects an air of uncertainty and speculation into the calculation of damages,” requiring
the jury to “speculate . . . what profits would have been generated had the defendant not acted
wrongfully.” 122 “Damages in such cases do not represent an actual, ascertainable loss; they
represent the factfinder’s best approximation of that loss.” 123 Similarly, Utah courts are wary of
prejudgment interest for unjust enrichment, cautioning that it is not only speculative, but also
117
Dkt. 301 at 2–3 (quoting Russo, 2007 U.S. Dist. LEXIS 16291, at *4–6).
118
Id.
119
Id. at 3.
120
Dkt. 313, JBT’s Reply in Support of Its Motion for Pre- and Post-Judgment Interest at 4.
121
ClearOne Communs., 432 F. App’x at 774–75 (applying Utah law).
Id. at 774 (quoting Anesthesiologists Assocs. of Ogden v. St. Benedict’s Hosp., 852 P.2d 1030, 1042 (Utah Ct.
App. 1993), rev’d on other grounds, 884 P.2d 1236 (Utah 1994)).
122
123
Id.
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risks duplicating what may have already been contemplated by a jury’s unjust enrichment
award. 124
Still, Utah courts “recognize[] that prejudgment interest is sometimes appropriate on an
award of lost profits, if the lost profits calculation is based on ‘known, calculable figures,’ and is
shown to be non-speculative.” 125 In Encon Utah, LLC v. Fluor Ames Kraemer, LLC, for
example, the Utah Supreme Court affirmed a trial court’s conclusion that prejudgment interest
was appropriate on a case dealing with lost profits for work performed under a fixed-price
contract with a consistent ten percent profit. 126 In the context of unjust enrichment, the Utah
Court of Appeals affirmed a trial court’s grant of prejudgment interest on an unjust enrichment
award where it was based on “the dollar amounts written on [] forged checks,” and was therefore
readily ascertainable. 127
But this is not such a clear-cut case. The question of damages arising from Defendants’
misconduct was heavily litigated, with extensive exhibits and expert testimony presented by both
sides. These experts “used speculative assumptions to extrapolate lost profits,” 128 drawn largely
from historical profit-and-loss statements and understandings of the advantages provided by
JBT’s trade secrets and confidential materials. 129 In estimating BGSE’s unjust enrichment,
JBT’s expert cautioned he could not “say for certain[]” whether the BGSE’s profits were derived
124
See id. at 775–76 (applying Utah case law).
125
KTM Health Care Inc. v. SG Nursing Home LLC, 436 P.3d 151, 173 (Utah Ct. App. 2018) (quoting Encon Utah,
210 P.3d at 274).
126
210 P.3d at 274.
127
Kimball v. Kimball, 217 P.3d 733, 750–51 (Utah Ct. App. 2009).
128
BC Technical, Inc. v. Ensil Int’l Corp., No. 02-CV-700-TS, 2009 U.S. Dist. LEXIS 1829, at *27 (D. Utah Jan. 9,
2009) (applying Utah law and denying plaintiff’s request for prejudgment interest given “[t]he speculative nature of
the evidence” of damages presented to the jury).
See, e.g., Trial Transcript at 913:20–921:22 (discussing the methodology used by JBT’s expert to estimate JBT’s
lost profits and BGSE’s unjust enrichment for a specific F-35 project); see also 1045:15–1099:10 (reflecting
testimony from Defendants’ damages expert).
129
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from “actual costs and revenue” and noted there were other costs that he did not have the data to
quantify “with a reasonable degree of certainty.” 130 Ultimately, the jury was charged with
wading through these competing approaches to determine the appropriate damages award—
considering, among other things, “JBT’s lost profits” and Defendants’ “unjust enrichment”—
“even if that amount [was] more than the actual damages suffered by JBT.” 131 While the court
found the evidence presented at trial was sufficient to sustain the jury’s damages award, 132 it is
far too speculative to warrant prejudgment interest under Utah’s more exacting standards. 133
Moreover, as Defendants point out, the fact that the jury may have considered lost profits and
unjust enrichment cuts against the need to further compensate JBT with prejudgment interest. 134
In sum, the court concludes prejudgment interest is not appropriate for JBT’s state claims
given the malleable nature of damages in this case and the risk of allowing a double recovery for
130
Id. at 921:21–927:19.
See Jury Instructions, No. 19 (instructing the jury it could consider lost profits and unjust enrichment on JBT’s in
awarding damages on JBT’s trade secret misappropriation claims); see also id., No. 20 (same), No. 28 (instructing
the jury it could “consider the amount of lost profits” to JBT and “the profits obtained by [Defendants]” when
assessing damages for JBT’s breach of contract claims), No. 32 (instructing the jury that damages on JBT’s tortious
interference claims could “include the amount of profit that JBT would have received, but did not actually receive,
as a result of [Defendants’] interference”).
131
132
Dkt. 339 at 11–13, 18–19.
133
See ClearOne Communs., 432 F. App’x at 775 (denying a request for prejudgment interest for claims under Utah
law, noting that the “use of proxies or estimates, even if actual sales were involved in their computation, does not
constitute the mathematical certainty necessary for an award of prejudgment interest”); see also id. at 776
(explaining that “[t]he fact that the jury agreed with [one expert’s] valuation . . . does not mean that the damages
were calculable with mathematical accuracy”); USA Power, 372 P.3d at 667 (“[E]vidence that is sufficient to permit
a jury to consider whether to award damages for lost profits may still be insufficient to justify an award of
prejudgment interest.”).
See Russo, 2007 U.S. Dist. LEXIS 16291, at *4 (denying prejudgment interest “because the [underlying] award
[was] not definitely calculable and [was] based on unjust enrichment); see also Dejavue, Inc. v. U.S. Energy Corp.,
993 P.2d 222, 228 (Utah Ct. App. 1999) (finding no error where a trial court denied prejudgment interest on a
consolidated damages award that possibly reflected damages for unjust enrichment); Shoreline Dev. v. Utah Cty.,
835 P.2d 207, 212 (Utah Ct. App. 1992) (holding that, “[g]iven the risk of double recovery, . . . [p]rejudgment
interest may not be subsequently added by a trial court to a jury’s award for unjust enrichment”).
134
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factors already considered by the jury. 135 And because the jury’s consolidated damages award
makes it “impossible to determine which portion of the award was attributable to” those
claims, 136 JBT’s request for prejudgment interest must be denied in its entirety. Accordingly, the
court does not address Defendants’ contentions regarding the appropriate starting date for the
accrual of prejudgment interest or the correct rate to apply. 137
B. Post-Judgment Interest
In addition to prejudgment interest, JBT requests an award of post-judgment interest
under 28 U.S.C. § 1961, “starting from entry of the judgment on November 1, 2022, . . . as well
as on any other amount awarded to JBT.” 138 When compared to JBT’s request for prejudgment
interest, this request is decidedly less controversial. “Defendants do not contest that 28 U.S.C.
§ 1961(a) provides that ‘Interest shall be allowed on any money judgment in a civil case
recovered in a district court.’” 139 And, for once, the consolidated nature of the jury’s damages
award does not preclude this relief because “[f]ederal law governs the calculation of postjudgment interest in federal court, which is considered a procedural matter, even on state-law
claims.” 140 Therefore, the court grants JBT’s request for post-judgment interest. 141
See Russo, 2007 U.S. Dist. LEXIS 16291, at *4–6 (denying prejudgment interest where “the jury weighed the
conflicting opinions of experts who testified to a spectrum of damages, some in excess of the jury’s award,” and “the
jury likely considered [] unjust enrichment in determining the damages”).
135
136
See Sw. Rec. Indus., 2002 U.S. App. LEXIS 30245, at *25–26.
137
See generally Dkt. 301 at 3–5.
138
Dkt. 286 at 4.
139
Dkt. 301 at 5 (quoting 28 U.S.C. § 1961).
Pedroza v. Lomas Auto Mall, Inc., 663 F. Supp. 2d 1123, 1130 (D.N.M. 2009) (citing Transpower Constructors v.
Grand River Dam Auth., 905 F.2d 1413, 1423–24 (10th Cir. 1990)).
140
141
See id. (granting post-judgment interest because “the request [was] unopposed[] and . . . accord[ed] with the law
on the subject”).
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JBT’s Motion for Attorneys’ Fees and Expenses 142
III.
The court next turns to JBT’s requests for attorneys’ fees and nontaxable expenses. JBT
argues that an award of attorneys’ fees is warranted under the Lanham Act, DTSA, and UTSA
given the nature and extent of Defendants’ misconduct. 143 It further contends that attorneys’ fees
and expenses related to other, noncompensable claims should be granted given the “common
core of facts” underlying JBT’s affirmative claims. 144 Additionally, JBT seeks an award of
attorneys’ fees spent defending against two of Defendants’ counterclaims. 145 Finally, JBT
requests reimbursement for certain nontaxable expenses which were “incidental to the services of
JBT’s attorneys,” such as “costs for travel . . . , legal research, . . . and other miscellaneous
costs.” 146 The court addresses each request in turn.
A. JBT Is Entitled to Attorneys’ Fees Under the Lanham Act
LEGAL STANDARDS
The Lanham Act provides that the “court in exceptional cases may award reasonable
attorney fees to the prevailing party.” 147 “District courts may determine whether a case is
‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the
circumstances.” 148 The Supreme Court further explains that “an ‘exceptional’ case is [] one that
stands out from others with respect to the substantive strength of a party’s litigating position
(considering both the governing law and the facts of the case) or the unreasonable manner in
142
Dkt. 278.
143
Id. at 3–6.
144
Id. at 6–7.
145
Id. at 8–11 (referencing Defendants’ counterclaims brought under the North Carolina Unfair or Deceptive Trade
Practices Act and the Utah Truth in Advertising Act).
146
Id. at 11–12.
147
15 U.S.C. § 1117(a).
148
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014).
23
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which the case was litigated.” 149 Similarly, the Tenth Circuit notes while “no one factor is
dispositive, a case may be deemed exceptional because of [] its lack of any foundation, . . . the
unusually vexatious and oppressive manner in which it is prosecuted, or [] perhaps for other
reasons as well.” 150 Additionally, courts can also consider such relevant factors as
“frivolousness, motivation, objective unreasonableness . . . and the need . . . to advance
considerations of compensation and deterrence.” 151
APPLICATION
JBT contends this case is exceptional for three reasons: (1) because “the jury found that
BGSE’s conduct . . . was a willful violation of the Lanham Act,” which it maintains is “by itself
[] enough to support an award of fees”; 152 (2) Defendants’ Lanham Act defenses were objectively
unreasonable; 153 and (3) “Defendants continued their wrongful actions after being put on notice
of their violations.” 154 Defendants counter that JBT’s reverse passing off claim under the
Lanham Act was a novel one for the Tenth Circuit, and state “[t]here existed a legitimate dispute
concerning what goods BGSE allegedly reverse passed off.” 155 Defendants also defend their
record at trial, noting, “[t]he damages JBT sought to impose on Defendants were not close to
149
Id.
King v. PA Consulting Grp., Inc., 485 F.3d 577, 584 (10th Cir. 2007) (quoting Nat’l Ass’n of Pro. Baseball
Leagues, Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143, 1146 (10th Cir. 2000)); see also Derma Pen, LLC v. 4Ever
Young Ltd., 999 F.3d 1240, 1243–46 (10th Cir. 2021) (holding that Octane Fitness’s guidance on exceptionality
should extend to the Lanham Act context and advising that the King factors are still “useful inquiries for identifying
exceptional cases under the Octane [Fitness] standard”).
150
Octane Fitness, 572 U.S. at 554 n.6 (referencing the “nonexclusive” list of “factors” applied to “a similar
provision in the Copyright Act” in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994)).
151
152
Dkt. 278 at 5 (collecting cases).
153
Id. at 5–6.
154
Id. at 6.
155
Dkt. 299, Defendants’ Response to JBT’s Motion for Award of Attorneys’ Fees and Nontaxable Expenses at 4
(citing Summary Judgment Order at 33–37).
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what the jury ultimately awarded.” 156 As such, they argue “[t]here was nothing unusually weak
about [their] defense” and “no fees should be awarded under the Lanham Act” as a result. 157
Considering the totality of the circumstances, the court concludes this is an exceptional
case warranting an award of reasonable attorneys’ fees. As discussed when resolving the parties’
cross-motions for summary judgment, the evidence underlying JBT’s Lanham Act claim
demonstrated blatant misconduct by Defendants:
In the project submittals for Lemoore P-328, Beaufort P-465, Kadena P-803, and
Lemoore P-378(A), BGSE included a lengthy excerpt copied from the JBT HPCF
O&M Manual. BGSE removed all references to JBT and superimposed BGSE’s
logo over JBT’s. Further, the submittals contained JBT’s HPCF 3000 Tech. Sheet,
stripped of its JBT identifiers and replaced with BGSE’s. The two-page technical
specification purported to provide engineering details for a BGSE PC Air unit, even
though no such unit existed. Thus, although BGSE represented that it was offering
for sale a BGSE product to be manufactured by Twist, the substance of the submittal
revealed the product being offered for sale was actually produced by JBT. 158
While the court gave thoughtful consideration to Defendants’ argument that these actions fell
outside the scope of the Lanham Act, summary judgment was not a close call. 159 Moreover, the
jury determined there were “additional false designations of origin by BGSE” based on the
evidence presented at trial. 160 Given the extensive and compelling evidence of Defendants’ false
designation of origin, their hopes of defeating JBT’s Lanham Act claim were distant at best.
Of course, Defendants were entitled to zealously advocate for themselves and the merits
of their position. But litigation is a risky endeavor, particularly with a starting position as
tenuous as Defendants’. Whereas many parties faced with uncontroverted evidence of rampant
156
Id. at 5 n.17.
157
Id. at 5.
158
Summary Judgment Order at 37–38.
159
See id. at 31–41.
160
Dkt. 262 at 3.
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misconduct will attempt to reconcile, or perhaps mitigate the fallout of their misconduct,
Defendants doubled down. They exacerbated the risk of fee-shifting under the Lanham Act by
continuing to use JBT’s proprietary materials and altered photographs even after JBT filed
suit, 161 and then responding to JBT’s claims with several unavailing counterclaims. 162 While
Defendants’ litigation conduct was not necessarily sanctionable in isolation, 163 they still forced
JBT to spend several years and millions of dollars to obtain compensation for Defendants’
blatant Lanham Act violations. 164 Ultimately, Defendants’ limited success at reducing the jury’s
damages award came at a great cost. And in exceptional cases such as this one, the Lanham Act
suggests this cost should be borne by the party that made it necessary in the first place. 165
Though not strictly necessary for the court’s finding of exceptionality, another factor
weighs on the relevant “considerations of compensation and deterrence” in this case—the nature
of the parties’ relationship and industry. 166 After several years of heated litigation, it can be easy
to lose sight of the fact that JBT and Defendants were once business partners working to support
one of the United States’ most advanced military aircrafts—the F-35. 167 Yet, despite the
161
See generally Dkt. 288, Exhibits to JBT’s Motion for Enhanced Damages.
See Dkt. 49; Dkt. 108; see also Dkt. 121, Minute Entry for Proceedings Held on September 25, 2018
(summarizing the court’s decision to dismiss Defendants’ sixth counterclaim by oral ruling); Summary Judgment
Order at 67 – 77 (granting JBT summary judgment on all but one of Defendants’ remaining counterclaims).
162
To be clear, Defendants’ litigation conduct was not completely without controversy. The court repeatedly ordered
Defendants to show cause why they should not be held in contempt for allegedly violating its preliminary injunction
order. See Dkt, 41; Dkt. 63. However, at the scheduled civil contempt hearing, the parties reached a resolution on
the purported violations, prompting the court to enter a stipulated order resolving the orders to show cause. Dkt. 83,
Minute Entry for Proceedings Held on December 8, 2017; Dkt. 91, Stipulated Order.
163
164
See generally Dkt. 278.
165
15 U.S.C. § 1117(a).
See Octane Fitness, 572 U.S. at 554 n.6 (quoting Fogerty, 510 U.S. at 534); see also King, 485 F.3d at 592
(explaining that “a case may be deemed exceptional because of [] its lack of any foundation, . . . the unusually
vexatious and oppressive manner in which it is prosecuted, or [] perhaps for other reasons as well” (emphasis
added)).
166
167
See generally Summary Judgment Order at 1–7.
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profound trust they were given to work alongside highly-classified defense technology,
Defendants’ actions were anything but reassuring. They misappropriated trade secrets, 168 spread
misinformation about JBT’s manufacturing capabilities, 169 and used JBT’s proprietary materials
and photographs as part of their effort to undermine JBT’s competitive position. 170 While this
kind of misconduct cannot be tolerated in any industry, it is particularly concerning given its
proximity to critical warfighting technology, among parties entrusted to act with far more
discretion. In determining whether a case is exceptional, Octane Fitness explains that a range of
factors may be relevant, including “the need in particular circumstances to advance
considerations of compensation and deterrence.” 171 Under these rare circumstances, the court
concludes the twin “considerations of compensation and deterrence” demand a full accounting of
the costs of Defendants’ Lanham Act violations and the attorneys’ fees spent to remedy them.
“After [] more than six years of often contentious litigation, [the] court [has become]
singularly familiar with this case and these parties.” 172 And this case has proven to be far from
routine, both in terms of the substantive strength of JBT’s litigating position and Defendants’
determination to contentiously litigate it to the very end. For these reasons, the court concludes
this case is indeed “exceptional” and warrants reasonable fee-shifting under the Lanham Act. 173
168
Id. at 19–31.
169
Id. at 2, 12–13.
170
See generally id. at 3–15 (summarizing Defendants’ misconduct).
171
572 U.S. at 554 n.6 (quoting Fogerty, 510 U.S. at 534).
See Derma Pen, 999 F.3d at 1245 (explaining the deferential standard of review for a district court’s finding of
exceptionality given its “singular[] familiar[ity]” with the case).
172
173
See 15 U.S.C. § 1117(a).
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B. JBT is Entitled to Attorneys’ Fees Under the DTSA and UTSA
Both the DTSA and the UTSA permit an award of reasonable attorneys’ fees to the
prevailing party if a trade secret has been willfully and maliciously misappropriated. 174 JBT
contends this requirement “was met by the jury’s unanimous finding that Defendants
misappropriated JBT’s trade secrets willfully and maliciously by clear and convincing evidence,”
and urges the court to grant attorneys’ fees under both statutes. 175 Defendants stake their
opposition to the fact “[t]he trade secret at issue”—one of JBT’s operations manuals—contained
sections that overlapped third-party sources. 176
On balance, the court concludes this is a clear case for an award of attorneys’ fees under
the DTSA and UTSA. Indeed, the operations manual at the center of JBT’s trade secret
misappropriation claims contained vast amounts of confidential information, including
information specific to JBT. 177 Bullerdick acknowledged as much when he sent the manual—
labeled as “confidential”—to one of JBT’s competitors, Twist, Inc., to support its efforts to
develop a product that could compete with JBT’s ground equipment. 178 And, as noted, the jury
found that Defendants’ misappropriation of the manual was both willful and malicious. 179 Far
from exonerating Defendants, the circumstances of Defendants’ misappropriation of JBT’s
174
See 18 U.S.C. § 1836(b)(3)(D); Utah Code Ann. § 13-24-5.
175
Dkt. 278 at 3–4; see also Dkt. 262 at 2.
176
Dkt. 299 at 5–6.
See generally Dkt. 339 at 20 (discussing Defendants’ argument that the partial overlap with third-party materials
absolved their contractual duties to preserve the manual’s confidentiality).
177
See Summary Judgment Order at 24 n.153 (noting Bullerdick’s testimony that the manuals were not considered
confidential was contradicted by his own email to Twist providing the HPCF Manual and describing it as such).
178
179
Dkt. 262 at 2.
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manual fully support an award of reasonable attorneys’ fees. 180 Accordingly, the court exercises
its discretion to grant JBT’s request for attorneys’ fees under the DTSA and UTSA. 181
C. The Common Core Approach Applies to All of JBT’s Affirmative Claims, Except
Trademark Infringement and Defamation
Having found JBT is entitled to attorneys’ fees on its Lanham Act and trade secret
misappropriation claims, the court next considers whether this award properly encompasses
JBT’s other affirmative claims. Under Utah law, “parties need not segregate fees for
compensable and noncompensable claims if the claims ‘sufficiently overlap and involve the
same nucleus of facts.’” 182 “Put differently, if a compensable claim is ‘inextricably intertwined’
with a noncompensable claim, fees related to the noncompensable claim are ‘appropriately
included in the fee calculation.’” 183 Utah case law even contemplates recovery of fees for
unsuccessful claims, as long as the “plaintiff achieve[d] success on a significant, interrelated
claim.” 184 Similarly, under federal law, “when a plaintiff brings multiple claims, and the claims
‘involve a common core of facts or will be based on related legal theories,’ the fee applicant may
claim all hours reasonably necessary to litigate those claims.” 185 If the plaintiff has achieved a
See, e.g., StorageCraft Tech. Corp. v. Kirby, No. 2:08-cv-00921, 2012 U.S. Dist. LEXIS 140704, at *5 (D. Utah
Sep. 27, 2012) (concluding that the “jury’s finding of willful and malicious misappropriation . . . entitles [the
plaintiff] to an award of attorneys’ fees and costs” under the UTSA); Bimbo Bakeries, 2018 U.S. Dist. LEXIS
54556, at *11 (same); see also ClearOne Communs., Inc. v. Chiang, No. 2:07-cv-37-TC-DN, 2009 U.S. Dist. LEXIS
121061, at *9 (D. Utah Dec. 30, 2009) (exercising the discretion to award attorneys’ fees under Utah Code Ann.
§ 13-24-5 where it was “remedial, to make [the plaintiff] whole for the cost of bringing the litigation”).
180
181
See 18 U.S.C. § 1836(b)(3)(D); Utah Code Ann. § 13-24-5.
First Am. Title Ins. Co. v. Nw. Title Ins. Agency, 906 F.3d 884, 900 (10th Cir. 2018) (quoting Daynight, LLC v.
Mobilight, Inc., 248 P.3d 1010, 1013 (Utah Ct. App. 2011)).
182
Airstar Corp. v. Keystone Aviation LLC, 514 P.3d 568, 585 (Utah Ct. App. 2022) (quoting Golden Meadows
Props., LC v. Strand, 241 P.3d 375, 384 (Utah Ct. App. 2010)).
183
184
Dejavue, 993 P.2d at 227 (quoting Jane L. v. Bangerter, 61 F.3d 1505, 1512 (10th Cir. 1996)); see also id.
(“[W]hen a plaintiff brings multiple claims involving a common core of facts and related legal theories, and prevails
on at least some of its claims, it is entitled to compensation for all attorney fees reasonably incurred in the
litigation.”).
185
Atlas Biologicals, Inc. v. Kutrubes, No. 1:15-cv-00355-CMA-KMT, 2020 U.S. Dist. LEXIS 121433, at *10 (D.
Colo. July 10, 2020) (quoting Hensley v. Eckerhart, 461 U.S. 424, 435 (1983)).
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significant result in the case, the Tenth Circuit instructs that “it [is] legally incorrect for the
district court to reduce the plaintiff[’s] fee request on the basis of the plaintiff[’s] ‘only partial
success’ for [its] interrelated claims.” 186
JBT posits that its “successful claims for trade secret misappropriation and false
designation of origin . . . share common core facts with its other claims,” entitling it to recover
all of its attorneys’ fees under the common core approach, 187 though it later concedes to a five
percent reduction to account for its voluntarily dismissed trademark infringement claim. 188 It
argues, “[a]ll of these claims were based upon [Defendants] having access to, wrongly retaining
and using JBT’s trade secrets and other confidential and proprietary information to bid and win
awards for military projects,” negating the need to carve out the fees related to its Lanham Act
and trade secret misappropriate claims. 189 For their part, Defendants contend the common core
approach is unwarranted, and challenge JBT’s assertion that its claims were overlapping as “too
conclusory.” 190 Defendants further critique that JBT’s purportedly overlapping claims were even
asserted against different parties, with some directed only at Bullerdick and others at BGSE. 191
Though Defendants emphasize the differences between JBT’s claims, they all arose out of
the same basket of misconduct. In effect, Defendants used the advantages and resources they
gained as JBT’s business partner to undermine JBT’s competitive position and win F-35
subcontracts. 192 Accordingly, the court concludes the same common nucleus of facts properly
186
Robinson v. City of Edmond, 160 F.3d 1275, 1284 (10th Cir. 1998).
187
Dkt. 278 at 6–7.
188
Dkt. 305, JBT’s Reply in Support of Its Motion for Award of Attorneys’ Fees and Nontaxable Expenses at 4 n.3.
189
Dkt. 278 at 7.
190
Dkt. 299 at 10.
191
Id.
192
See generally Summary Judgment Order at 3–15 (summarizing Defendants’ misconduct).
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encompasses all of JBT’s successful claims and its unsuccessful false advertising claim. 193
These claims all centered on Defendants’ misuse of JBT’s proprietary materials to make
successful bids and were therefore “inextricably intertwined” with the conduct that gave rise to
JBT’s Lanham Act and trade secret misappropriation claims. 194
However, the court agrees that JBT’s voluntarily dismissed trademark infringement claim
falls outside this common core of facts. 195 In its Reply, JBT withdrew its request for fees
associated with this claim, proposing a “conservative[] . . . [five percent] reduction” in its total
request to account for this change. 196 While the court accepts this proposed reduction, 197 it
concludes that a further reduction is needed to account for another unsuccessful claim that falls
outside the common core. In particular, JBT’s unsuccessful defamation claim bears only a
tangential relationship with the common core of facts giving rise to JBT’s compensable claims.
Whereas those claims dealt with Defendants’ misuse or misconstruction of JBT’s proprietary
materials, 198 JBT’s defamation claim was based on Defendants’ statements about their former
business partner. 199 While this conduct ran parallel to Defendants’ misappropriation of JBT’s
trade secrets and false designation of origin, it is not “inextricably intertwined” with JBT’s
193
See Amended Complaint ¶¶ 156–78, 185–99, 205–12.
See id.; Atlas Biologicals, 2020 U.S. Dist. LEXIS 121433, at *9 (granting attorneys’ fees on a breach of fiduciary
duty claim as its factual basis “substantially overlapped” the plaintiff’s Lanham Act claim); see also Golden
Meadows Props., 241 P.3d at 384 (explaining that fees related to a noncompensable claim are “appropriately
included in” an award of attorneys’ fees if the claim is “inextricably intertwined” with an otherwise compensable
claim).
194
See Dkt. 299 at 10 (“The claims in this case are not intertwined and they require different proof. BGSE’s use of
metatags in its website have no relation to whether BGSE misappropriated JBT’s PC-air operations manual.”).
195
196
Dkt. 305 at 5 n.3.
See Paradigm All., 2011 U.S. Dist. LEXIS 7153, at *6 (accepting the plaintiff’s “estimated reduction of five
percent of the aggregated total [of attorneys’ fees]” based on “the [c]ourt’s own extensive involvement with the
litigation”).
197
198
See generally Amended Complaint ¶¶ 156–78, 185–99, 205–12.
199
See Summary Judgment Order at 61–64 (discussing JBT’s defamation claim).
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compensable claims. 200 The factual elements required to state a claim for false designation or
trade secret misappropriation are distinct from the allegedly defamatory statements made by
Bullerdick. 201 Following JBT’s lead, the court concludes it is therefore appropriate to reduce the
fee request by a further five percent, leading to a ten percent reduction of recoverable fees. 202
D. JBT is Entitled to Attorneys’ Fees on One of Defendants’ Counterclaims
JBT also seeks to recover the fees spent defending against Defendants’ counterclaims
under the North Carolina Unfair or Deceptive Trade Practices Act (UDTPA) and the Utah Truth
in Advertising Act (UTIAA). 203 For the reasons discussed below, the court concludes JBT can
recover attorneys’ fees under the UTIAA, but not the UDTPA.
i.
UDTPA
The UDTPA provides that a prevailing party may recover reasonable attorneys’ fees for
defending against an unsuccessful UDTPA claim if the party bringing the claim “knew, or should
have known, [it] was frivolous and malicious.” 204 “A claim is frivolous if a proponent can
present no rational argument based upon the evidence or law in support of it” and it is malicious
Cf. Paradigm All., Inc. v. Celeritas Techs., LLC, No. 07-1121-EFM, 2011 U.S. Dist. LEXIS 7153, at *5 (D. Kan.
Jan. 25, 2011) (concluding that a plaintiff’s “contract claims and [] misappropriation of trade secrets claim [under
the Kansas Uniform Trade Secret Act] arose from a set of facts that were inextricably intertwined” with other,
noncompensable claims, but that a defamation counterclaim and other claims fell outside the common core).
200
Compare Summary Judgment Order at 19–41 (discussing the legal and factual bases for JBT’s trade secret
misappropriation and Lanham Act claims), with id. at 61–64 (discussing the allegedly defamatory statements that
JBT contends constitute defamation per se).
201
See Dkt. 305 at 5 n.3; see also Paradigm All., 2011 U.S. Dist. LEXIS 7153, at *6–7 (applying a five percent
reduction to each claim or counterclaim that fell outside the common core of facts); Wopsock v. Dalton, No. 2:12-cv00570-RJS, 2020 U.S. Dist. LEXIS 174744, at *21–22 (D. Utah Sep. 22, 2020) (applying a ten percent reduction
because the “billing records intermingle[d] time spent on [compensable claims] with time spent on
[noncompensable] claims”).
202
203
Dkt. 278 at 8–11.
204
N.C. Gen. Stat. § 75-16.1
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“if it is wrongful and done intentionally without just cause or excuse or as a result of ill will.” 205
“The decision whether or not to award attorney fees under [the UDTPA] rests within the sole
discretion of the trial [court].” 206
Here, Defendants’ UDTPA counterclaim survived the summary judgment stage because
the court found there was “a genuine dispute of material fact” whether JBT’s communications
caused Defendants to lose a contract. 207 While the court expressed some doubts about whether
Defendants could prove any damages, 208 Defendants still presented evidence at trial and
submitted the claim to the jury. Defendants’ UDTPA counterclaim may have been unavailing,
but “[c]laims are not frivolous simply because they are weak.” 209 Under these circumstances, the
court cannot conclude Defendants knew or should have known the UDTPA claims were frivolous
and malicious. 210 As such, JBT’s request for attorneys’ fees associated with Defendants’ UDTPA
counterclaim is denied.
ii.
UTIAA
The threshold for recovering attorneys’ fees under the UTIAA is somewhat less exacting.
In contrast to the UDTPA, reasonable fee awards are not limited to situations where the claimant
“knew, or should have known, [it] was frivolous and malicious.” 211 Instead, the statute directs
W. Franklin Pres. L.P. v. Nurtur N.C., LLC, No. 1:14-cv-266, 2016 U.S. Dist. LEXIS 69714, at *16–17 (E.D.N.C.
May 27, 2016) (quoting Blyth v. McCrary, 646 S.E.2d 813, 819 n.5 (N.C. Ct. App. 2007) (citations, quotation marks,
and alterations omitted)).
205
206
Blankenship v. Town & Country Ford, Inc., 622 S.E.2d 638, 643 (N.C. Ct. App. 2005).
207
Summary Judgment Order at 77.
208
Id.
209
Southeast Air Charter, Inc. v. Stroud, 2015 NCBC 66, 63 (N.C. Super. Ct. June 30, 2015).
210
See Hatteras/Cabo Yachts, LLC v. M/Y Epic, No. 4:17-cv-00025-BR, 2021 U.S. Dist. LEXIS 236968, at *5–6
(E.D.N.C. Dec. 9, 2021) (denying an award of attorneys’ fees under the UDTPA where, “[a]lthough [the claim was]
ultimately deemed legally insufficient, [it] survived—at least in part—a motion to dismiss and one for summary
judgment” and the “counterclaim plaintiffs made efforts to introduce [] evidence at trial”).
211
See N.C. Gen. Stat. § 75-16.1.
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that “[t]he court shall award attorneys’ fees to the prevailing party.” 212 Defendants argue the
court cannot determine whether JBT was the prevailing party because it “issued no written
opinion when it dismissed [their] UTIAA counterclaim. It did so by minute order.” 213 In the
alternative, Defendants challenge the sufficiency of JBT’s efforts to properly delineate
recoverable fees under the UTIAA and posit that its “allocations are mere guesses . . . or []
otherwise do not rise to a level sufficient for [the court] to make the necessary findings.” 214 The
court disagrees with both contentions.
First, the court did not dismiss Defendants’ UTIAA counterclaim by simply entering a
minute order on the docket. It delivered a lengthy oral ruling that was heard by Defendants’
counsel and transcribed by a court reporter. 215 In this ruling, the court explained that
Defendants’ counterclaim failed to comply with a key notice requirement, warranting
dismissal. 216 While the court did not specify whether dismissal was with or without prejudice,
JBT was unequivocally the prevailing party. The claim asserted against it was dismissed and the
court expressed doubts about whether a UTIAA claim even provided the type of relief
Defendants sought. 217 Under these circumstances, the plain language of the statute and relevant
212
Utah Code Ann. § 13-11a-4(2)(c) (emphasis added).
213
Dkt. 299 at 16 (citing Dkt. 121, Minute Entry for Proceedings Held on September 25, 2018).
214
Id. at 16–17.
See Dkt. 123, Transcript for the Proceedings on September 25, 2018 at 19:12–28:22 (reflecting the court’s oral
ruling dismissing Defendants’ UTIAA counterclaim).
215
216
Id. at 20:17–28:7.
217
See id. at 25:9–12 (“As an initial matter . . . it’s not clear at all . . . that Section 13-11a-4 authorizes standalone
suits for damages in any event.”).
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case law suggests reasonable attorneys’ fees are not only available under the UTIAA, but
mandatory. 218
Second, the court disagrees with Defendants’ contention that JBT failed to properly
allocate its billing entries. 219 On the contrary, the relevant records evince careful and constrained
efforts by JBT to reduce entries to account for the time that was actually spent defending against
the UTIAA claim. 220 The resulting fees account for approximately one percent of JBT’s total
attorneys’ fee request. 221 Accordingly, JBT’s request for attorneys’ fees on its defense against
Defendants’ UTIAA counterclaim is granted.
E. Reasonableness of JBT’s Fee Request
Having determined JBT is entitled to recover attorneys’ fees spent pursuing all but two of
its affirmative claims, as well as the fees spent defending against Defendants’ UTIAA
counterclaim, the court now considers whether its requested fees are reasonable.
JBT initially requested $2,616,746.68 in attorneys’ fees for its common core claims, 222
which it later reduced to $2,485,909.35 after withdrawing its request for fees related to its
See Utah Code Ann. § 13-11a-4(2)(c); Xlear, Inc. v. Focus Nutrition, LLC, No. 2:16-cv-643-DB, 2018 U.S. Dist.
LEXIS 149534, at *2 (D. Utah Aug. 31, 2018) (“Under th[e] statutory language, if Defendant is determined to be the
prevailing party under the facts presented, the [c]ourt shall award attorneys’ fees for its defense of the UTIAA
claim.”); see also Beach Blitz Co. v. City of Mia. Beach, 13 F.4th 1289, 1300 (11th Cir. 2021) (holding that even
when the district court dismissed claims without prejudice, its order granting a Rule 12(b)(6) motion carried
“judicial imprimatur” and could convey prevailing party status).
218
219
Dkt. 299 at 16–17.
See generally Dkt. 279, Declaration of Steven Zeller ¶¶ 10–12 (discussing counsel’s methodology for calculating
the number of hours they spent on Defendants’ UTIAA counterclaim and showing that less than 60 hours are
attributed to the counterclaim); Dkt. 279-1, Exhibit 1: Dykema Fee Records; Dkt. 280, Declaration of David Billings
¶¶ 9, 11 (“Based on this allocation $3,742.50 in fees have been allocated to the UTIAA counterclaim . . . . The total
fees requested by JBT billed by Fabian VanCott is $78,927.55.”); Dkt. 280-1, Exhibit 1: Fabian VanCott Fee
Records.
220
221
See Dkt. 278 at 17.
222
Dkt. 278 at 17.
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trademark infringement claim. 223 As discussed, it is appropriate to reduce JBT’s fee award by an
additional five percent to account for the need to eliminate JBT’s defamation claim from the
common core of claims entitled to attorneys’ fees. 224 Additionally, JBT requests $30,698.83 for
its defense against Defendants’ UTIAA counterclaim, 225 for a total attorneys’ fee request of
nearly $2.4 million. 226
In determining the reasonableness of a request for attorneys’ fees, district courts in the
Tenth Circuit generally employ the familiar “lodestar” approach by multiplying counsel’s hours
reasonably spent on the litigation by a reasonable hourly rate. 227 Under the lodestar approach,
the party requesting the fees—JBT—bears the burden to “prove and establish the reasonableness
of each dollar, each hour, above zero.” 228 JBT must also provide evidence supporting the hours
223
See Dkt. 305 at 5 n.3.
224
See supra Section III(C).
225
Dkt. 278 at 17.
The court observes a slight discrepancy between the Dykema fees listed in JBT’s Motion for Attorneys’ Fees and
the Dykema billing records attached as an exhibit to Steven Zeller’s Declaration. Compare Dkt. 278 at 17
(requesting $2,657,742.29 for Dykema counsel’s work), with Dkt. 279-1 (reflecting $2,660,659 in attorneys’ fees
after accounting for Dykema counsel’s allocations and reductions). It is unclear why there is a $2,916.71 difference
between the two sums, but the court is inclined to recognize the lower figure set out in the Motion because (1) it
benefits the paying parties—Defendants—and (2) it is the clearest indication of JBT’s fee request. Nevertheless,
there are times where the court’s evaluation centers on the Dykema billing records—for example, when adjusting
billing rates or excluding specific time entries. To reconcile the discrepancy between the Motion and the billing
records, the court starts from the slightly lower figure set out in JBT’s Motion ($2,657,742.29) but then applies the
reductions as they are determined based on the billing records. On balance, this approach slightly favors Defendants
while recognizing that “[t]he essential goal in shifting fees is to do rough justice, not to achieve auditing perfection.”
Fox v. Vice, 563 U.S. 826, 838 (2011).
226
See, e.g., United Phosphorus, 205 F.3d at 1233 (applying the lodestar approach to determine the reasonableness
of an attorneys’ fee award under the Lanham Act); Derma Pen, LLC v. 4EverYoung Ltd., No. 2:13-cv-00729-DN,
2019 U.S. Dist. LEXIS 113345, at *4–5 (D. Utah July 8, 2019) (same); Bimbo Bakeries USA, Inc. v. Sycamore, No.
2:13-cv-00749, 2019 U.S. Dist. LEXIS 36041, at *3–4 (D. Utah Mar. 5, 2019) (applying the lodestar approach for
attorneys’ fees granted on a plaintiff’s trade secret claim); Jensen v. W. Jordan City, No. 2:12-cv-736-DAK, 2017
U.S. Dist. LEXIS 170076, at *77–78 (D. Utah Oct. 13, 2017) (using the lodestar approach to determine the
reasonableness of an attorneys’ fees award under the common core approach).
227
228
Mares v. Credit Bureau of Raton, 801 F.2d 1197, 1210 (10th Cir. 1986).
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worked and the claimed rate. 229 Where this is found lacking, “the district court may reduce the
award accordingly.” 230
i. Reasonable Hours
“[T]he first step in calculating the lodestar [is to] determin[e] the number of hours
reasonably spent by counsel for the party seeking fees.” 231 In assessing the reasonableness of
counsel’s claimed hours, the court considers: “(a) whether the hours are supported by adequate
billing records; (b) whether the attorney has exercised billing judgment; and (c) whether the
hours expended on each task are reasonable.” 232
a. Billing Records
The fee applicant must submit to the court “meticulous, contemporaneous time records
that reveal, for each lawyer for whom fees are sought, all hours for which compensation is
requested and how those hours were allotted to specific tasks.” 233 JBT’s counsel from both
Fabian VanCott (local counsel) and Dykema Gossett PLLC (Dykema counsel) have submitted
detailed time records and billing statements covering the period from mid-2017 to the end of trial
on October 6, 2022. 234 During this six-year period, counsel’s records show they spent roughly
six thousand hours litigating JBT’s common core claims and defending against the UTIAA
counterclaim. 235 Additionally, lead attorneys from Fabian VanCott and Dykema—David Billings
and Steven Zeller, respectively—provide further context on counsel’s representation during the
229
Hensley, 461 U.S. at 433.
230
Id.
231
Case by Case v. Unified Sch. Dist. No. 233, 157 F.3d 1243, 1250 (10th Cir. 1998).
232
Webb v. Cty. of Stanislaus, No. 2:21-mc-00696-JNP-JCB, 2022 U.S. Dist. LEXIS 78387, at *8 (D. Utah Apr. 29,
2022) (citing Case, 157 F.3d at 1250).
233
Case, 157 F.3d at 1250.
234
See Dkt. 279-1; Dkt. 280-1.
235
Id.
37
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relevant period, supported by the aforementioned billing records. 236 Though Defendants
challenge some of the billing entries provided by counsel, they do not raise any general concerns
with the adequacy of the records. 237
Still, the records are not perfect—JBT admits as much. 238 Many of the proffered time
entries contain descriptions of multiple tasks without explaining how time should be allocated
among them, following a practice generally known as “block billing.” 239 And there are other
time entries with vague or generic task descriptions, such as “review of documents,” 240 “trial
preparation,” 241 or “prepare for hearing.” 242 While these billing shortcuts are discouraged
because they hinder the court’s ability “to determine the time allotted . . . to specific tasks and the
reasonableness of that time,” 243 they are not necessarily fatal to JBT’s fee application. 244 Instead,
where counsel’s billing shortcuts prevent meaningful review, the court construes the deficient
236
Dkt. 279; Dkt. 280.
237
See generally Dkt. 299.
See Dkt. 305 at 9–10 (“JBT made a good faith effort to allocate all time entries according to the protocol set forth
in [Dkt. 279]. . . . Admittedly, such effort was not perfect.”).
238
See Harolds Stores, Inc. v. Dillard Dep’t Stores, Inc., 82 F.3d 1533, 1554 n.15 (10th Cir. 1996) (“‘Block billing’
refers to the time-keeping method by which each lawyer and legal assistant enters the total daily time spent working
on a case, rather than itemizing the time expended on specific tasks.”).
239
240
See Dkt. 279-1 at 2, 16, 33, 38.
241
See id. at 92–110.
242
See id. at 6, 19, 77–78.
243
See Utah Physicians for A Healthy Env’t, Inc. v. Diesel Power Gear, LLC, No. 2:17-cv-00032-RJS, 2022 U.S.
Dist. LEXIS 120277, at *9 (D. Utah July 6, 2022) (quoting Cadena v. Pacesetter Corp., 224 F.3d 1203, 1215 (10th
Cir. 2000)).
244
See, e.g., id. (explaining that block-billed entries can be deemed reasonable “if the reviewing court is [] able to
discern the specific tasks performed during that entry, and assess that those tasks were reasonable for the allotted
time”); First Mercury Ins. Co. v. Wonderland Homes, No. 1:19-cv-00915-JLK-SKC, 2021 U.S. Dist. LEXIS 136485,
at *8 (D. Colo. July 22, 2021) (“[W]hile counsel’s practice of block billing in this matter is frowned on and renders
[the court’s] task more difficult, the Tenth Circuit has ‘never mandated a reduction or a denial of a fee request based
on block billing.’ (quoting BP Pipelines (N. Am.) Inc. v. C.D. Brown Constr., Inc., 473 F. App’x 818, 835 (10th Cir.
2012))); Flitton v. Primary Residential Mortg., Inc., No. 2:03-cv-481-DAK, 2009 U.S. Dist. LEXIS 44235, at *17
(D. Utah May 7, 2009) (declining to reduce a fee award based on vague entries such as “trial prep” and “motion to
compel,” concluding that “most of the entries [were] adequately descriptive for purposes of reviewing the fee
application”).
38
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entry against JBT—for example, by striking an entire block-billed entry that contains a noncompensable task along with compensable ones. 245 Additionally, the court excludes JBT’s
“PLACEHOLDER” time entry for 0.8 hours. 246
b. Billing Judgment
Next, the court must ensure JBT’s counsel properly “exercised billing judgment.” 247
“Billing judgment consists of winnowing the hours actually expended down to the hours
reasonably expended.” 248 In doing so, “[c]ounsel for the prevailing party should make a good
faith effort to exclude from a fee request hours that are excessive, redundant, or otherwise
unnecessary.” 249
JBT claims “counsel . . . exercised appropriate billing judgment by carefully reviewing
each billing entry . . . to determine whether those fees were reasonable.” 250 However, neither
Billings nor Zeller explain how they exercised billing judgment beyond “reviewing each billing
entry” and apportioning counsel’s hours among the affirmative claims and counterclaims. 251
Billings suggests that all of the hours claimed by Fabian VanCott were deemed “reasonable and
necessary,” which leads the court to conclude that local counsel’s reductions were likely
minimal. 252 However, the records from Dykema counsel evince some reductions for “travel” and
See Longdo v. Pelle, No. 15-cv-01370-RPM, 2016 U.S. Dist. LEXIS 194036, at *10 (D. Colo. Sep. 8, 2016)
(striking an entire time entry because it did “not separate any properly-billable time from the non-billable [] time”);
Martin v. SGT, Inc., No. 2:19-cv-00289-RJS, 2023 U.S. Dist. LEXIS 90346, at *30 (D. Utah May 22, 2023)
(construing deficient billing records in a manner that favored the party paying the fees).
245
246
Dkt. 279-1 at 49.
247
Case, 157 F.3d at 1250.
248
Id.
249
Hensley, 461 U.S. at 434.
250
Dkt. 278 at 14.
251
See generally id.; Dkt. 279-1; Dkt. 280-1.
252
Dkt. 280 ¶¶ 3, 14.
39
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other non-compensable time entries, demonstrating at least some billing judgment. 253
Nevertheless, Defendants point to a number of time entries where counsel’s billing judgment fell
short, such as time entries for drafting a press release or supporting another lawsuit. 254
Defendants also critique the relatively high rate of billing by partners when compared with
associates and paralegals. 255 After closely scrutinizing the proffered billing records, the court
agrees with Defendants that these deficiencies undermine counsel’s purported exercise of billing
judgment and warrant a closer look at the reasonableness of JBT’s fee request.
When, as here, “a party’s attorneys do not exercise proper billing judgment, the court is
obligated to exclude unreasonable hours from the fee request.” 256 It “approach[es] this
reasonableness inquiry much as a senior partner in a private law firm would review the reports of
subordinate attorneys when billing clients” 257—that is, by removing “hours that were
unnecessary, irrelevant[,] and duplicative.” 258 The court’s “overriding consideration [is] whether
the [] hours were ‘necessary’ under the circumstances.” 259
In reviewing the records provided by JBT, it is clear that many of counsel’s proffered
hours were non-billable, duplicative, or otherwise unreasonable. But as there are nearly three
thousand time entries associated with JBT’s fee request, it is “practically impossible” for the
court to “identify and justify each disallowed hour.” 260 In cases such as these, “in which the
253
See Dkt. 279-1 at 79, 108 (showing that JBT is not requesting attorneys’ fees for “travel” and other tasks).
254
See Dkt. 299 at 6–7.
255
Id. at 10–13.
Utah Physicians for a Healthy Env’t., Inc. v. Diesel Power Gear, LLC, No. 2:17-cv-00032-RJS, 2021 U.S. Dist.
LEXIS 15091, at *26 (D. Utah Jan. 26, 2021) (citing Malloy v. Monahan, 73 F.3d 1012, 1018 (10th Cir. 1996)).
256
257
Robinson, 160 F.3d at 1281 (internal quotation marks and citation omitted).
258
Case, 157 F.3d at 1250 (internal quotation marks and citation omitted).
259
Robinson, 160 F.3d at 1281.
260
Case, 157 F.3d at 1250 (internal quotation marks and citation omitted).
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parties generated thousands of pages of written work product and [] submitted [] over a hundred
pages [of] billing statements, it is neither practical nor desirable to expect the [] judge to have
reviewed each paper in the massive case file to decide, for example, whether a particular motion
could have been done in 9.6 hours instead of 14.3 hours.” 261 Under these circumstances, the
Tenth Circuit has noted, “[a] general reduction of hours claimed in order to achieve what the
court determines to be a reasonable number is not an erroneous method, so long as there is
sufficient reason for its use.” 262 Here, the court discerns two general categories of hours that are
“non-billable” or “otherwise unreasonable,” and must therefore be excluded or reduced from
JBT’s attorneys’ fee award.
1. Allocation of Hours to Partners
First, the court reduces Dykema counsel’s hours to account for the unreasonable
proportion of hours billed by senior partners. For example, from May 16 to May 30, 2019,
Dykema counsel spent over ninety hours reviewing Defendants’ Response to JBT’s Motion for
Partial Summary Judgment, 263 researching relevant case law, and drafting a twenty-page Reply
brief. 264 While these hours were not necessarily excessive given the case’s posture and
complexity, it is notable that the lion’s share of the work—seventy-five percent—was done by
two senior partners: Edward Weil, with “over thirty-five years [of experience] as a litigation
attorney,” and Zeller, with twenty-six years. 265 By contrast, associates performed about twenty
261
Id.
262
Mares, 801 F.2d at 1203 (10th Cir. 1986) (collecting cases).
263
See Dkt. 145; Dkt. 147 [SEALED].
See Dkt. 164, JBT’s Reply Memorandum in Further Support of Its Motion for Partial Summary Judgment on Its
Affirmative Claims; Dkt. 166 [SEALED].
264
265
See Dkt. 279 ¶¶ 18–19.
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hours of work, focused largely on research and editing. 266 Of course, law firms are “at liberty to
decide how to staff cases and utilize attorney time,” but that does not “render the corresponding
billing reasonable.” 267 On the contrary, “there is work that may be ably done by an associate,
such as research, compiling documents, and drafting motions, the value of which is not enhanced
merely because it is done by a senior partner.” 268
Here, the allocation of nearly seventy-five percent of the work to senior partners with
over sixty years of combined experience strikes the court as excessive. 269 And it is hardly an
isolated incident. In addition to the partner-heavy bill for JBT’s Reply, Dkystra partners
performed a disproportionate amount of work on other pre-trial matters, including responding to
a Daubert motion, 270 opposing Defendants’ Motion for Summary Judgment, 271 and preparing
JBT’s Amended Complaint. 272 Moreover, Zeller appears to have played a particularly prominent
role during the discovery process, performing nearly as much document review as the associates
266
See generally Dkt. 279-1 at 72–75 (detailing Dykema counsel’s efforts from May 16 to May 30, 2019).
Charbonneau v. Mortg. Lenders of Am. L.L.C., No. 2:18-cv-02062-HLT, 2021 U.S. Dist. LEXIS 196865, at *14–
15 (D. Kan. Oct. 13, 2021).
267
268
Am. Petroleum Inst. v. U.S. E.P.A., 72 F.3d 907, 916 (D.C. Cir. 1996).
See, e.g., City of Las Cruces v. Lofts at Alameda, LLC, No. 17-809 JCH/GBW, 2022 U.S. Dist. LEXIS 124633, at
*25 (D.N.M. July 14, 2022) (reducing hours where partners billed sixty-five percent of the time for a discovery
dispute, explaining that “a fifty-fifty split between partners and associates [seems] more appropriate”); Beastie Boys
v. Monster Energy Co., 112 F. Supp. 3d 31, 51-53 (S.D.N.Y. 2015) (concluding “a material reduction in the
requested fee award [was] merited” where a “firm billed nearly 2.5 times as many partner hours as associate hours”);
see also Charbonneau, 2021 U.S. Dist. LEXIS 196865, at *14–17 (collecting cases).
269
See Dkt. 148, JBT’s Response to Defendants’ Motion to Preclude the Testimony and Expert Report of David R.
Duski; Dkt. 150 [SEALED]. Though counsel’s block billing makes it difficult to determine the amount of time spent
on specific workstreams, the court estimates counsel spent 73.1 hours reviewing Defendants’ Motion to Exclude,
Dkt. 128, researching relevant case law, and drafting JBT’s Response. Only 13.5 hours were billed by an associate,
Christina Brunty, with the remaining time billed by Zeller, Weil, and another partner, Heather Kramer.
270
See Dkt. 154, JBT’s Memorandum in Opposition to Defendants’ Motion for Summary Judgment; Dkt. 156
[SEALED]. The court estimates Dkystra counsel spent 153.2 hours preparing an opposition to Defendants’ Motion
for Summary Judgment, Dkt. 126, three-quarters of which was performed by Zeller and Weil.
271
See Amended Complaint. The court estimates Dkystra counsel spent 64.5 hours preparing the Amended
Complaint. Most of the work appears to have been performed by Zeller and Weil (58%), with most of the remainder
allocated to a senior associate billed between $375 to $395.
272
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assigned to the case. 273 While there are certainly situations that call for the expertise of seasoned
counsel, these tasks are a normal part of pre-trial litigation, where “associates [should] shoulder
much of the work, under the active supervision of partners.” 274
The division of labor understandably shifts gears as the case heads to trial and
experienced trial attorneys start taking a more hands-on approach. 275 Yet, JBT’s billing records
evince an enthusiastic use of senior partners throughout the entire litigation. 276 In total, Dykema
partners account for sixty-four percent of the time requested for JBT’s affirmative claims and
UTIAA counterclaim defense, with associates and paralegals accounting for the rest. 277 While
“it is hard to argue with success,” 278 it would be unreasonable to burden Defendants with the full
cost of JBT’s top-heavy approach. Following the lead of other district courts, the court will
therefore reduce Dykema counsel’s bill by ten percent. 279
273
See generally Dkt. 279-1.
274
Beastie Boys, 112 F. Supp. 3d at 51.
See id. (explaining that while “associates shoulder much of the work” with respect to discovery and other pretrial tasks, “trial work tends to be more partner-intensive, befitting partners’ greater trial expertise”).
275
276
See generally Dkt. 279-1; Dkt. 280-1.
Based on the Dykema billing records, Dkt. 279-1, Dykema partners billed 3,381 out of the 5,286.9 hours
requested for work on JBT’s affirmative claims and the UTIAA counterclaim.
277
See Flying J Inc. v. Comdata Network, Inc., No. 1:96-CV-066BSJ, 2007 U.S. Dist. LEXIS 84554, at *65 (D. Utah
Nov. 15, 2007) (“The fact is that [Defendant’s] counsel ultimately prevailed in this proceeding, and the plaintiffs’
counsel did not. The outcome itself suggests that [Defendant] correctly invested the necessary litigation resources in
its defense, while the plaintiffs somehow fell short of their own goal.”).
278
See, e.g., Catholic Bens. Ass’n LCA v. Azar, No. CIV-14-240-R, 2018 U.S. Dist. LEXIS 139058, at *32–34 (W.D.
Okla. Aug. 15, 2018) (applying a ten percent reduction where eighty-four to eighty-seven percent of hours were
billed by partners or senior counsel); Hitchens v. Thompson Nat’l Props., LLC, No. 12-cv-02367-LTB-BNB, 2014
U.S. Dist. LEXIS 73186, at *11 (D. Colo. May 29, 2014) (applying “an across-the-board reduction of 10% of
[partners’] billed hours . . . to reflect work that could have reasonably been performed by associates”);
Homeaway.com, Inc. v. City of N.Y., 523 F. Supp. 3d 573, 592–93 (S.D.N.Y. 2021) (reducing fee award by fifteen
percent where partners billed over half of all hours); see also Charbonneau, 2021 U.S. Dist. LEXIS 196865, at *14–
16 (collecting cases showing reductions of fifteen to forty percent to account for “top-heavy” bills).
279
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2. Unnecessary or Unrelated Tasks
Second, the court excludes time entries that were either unnecessary or unrelated to JBT’s
case against Defendants. For example, JBT requests compensation for 7.7 hours for senior
partners’ review and revision of a press release following issuance of the court’s Summary
Judgment Order. 280 To be compensable, Tenth Circuit case law suggests the “assistance provided
must be actually necessary or essential to proper representation rather than merely comforting or
helpful.” 281 With a few narrow exceptions, preparation of a press release falls within the latter,
noncompensable category. 282 Because JBT does not explain how counsel’s efforts regarding the
press release were “actually necessary or essential to proper representation,” 283 these time entries
are therefore excluded from JBT’s award.
Yet, far more concerning than these noncompensable requests is counsel’s failure to fully
exclude time entries related to a separate action against a non-party—Twist. Of course, Twist
and Defendants are hardly strangers to each other. As discussed herein, one of JBT’s central
allegations was that Bullerdick transmitted JBT’s trade secrets to Twist to assist Twist’s
development of a product that could compete with JBT’s ground equipment. 284 But Twist was
never made a party to this action, 285 and it would be wholly inappropriate to burden Defendants
with the fees JBT spent pursuing distinct claims against a non-party.
280
See Dkt. 279-1 at 83–84.
281
Case, 157 F.3d at 1252.
282
Cf. Catholic Bens. Ass’n, 2018 U.S. Dist. LEXIS 139058, at *23–24 (assuming that work drafting press releases
was “purely promotional and therefore non-compensable” when the fee applicant failed to offer evidence to support
his claim that press work helped “recruit[] potential class members and educate[] current ones”).
283
Case, 157 F.3d at 1252.
284
See Summary Judgment Order at 2, 12, 26–30.
285
See generally Dkt. 2, Verified Complaint; Amended Complaint.
44
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The Dykema billing records contain forty-five time entries referencing counsel’s efforts
related to Twist. 286 While some of these time entries theoretically relate to the instant action,
there are others denoted as “matters relating to new claims against Twist” and appear unrelated to
JBT’s claims against Defendants. 287 These oversights—coupled with the ambiguity of counsel’s
time records—lead the court to conclude that a correction is needed to mitigate the risk of
burdening Defendants with fees from a separate action against a non-party. Accordingly, the
court excludes all time entries that mention “Twist” for a total reduction of 110.5 hours. While
there is still a risk that other time entries relate to this separate matter without mentioning Twist
by name, close scrutiny of the Dykema billing records indicates this risk is relatively low. And
the court’s deliberate overcorrection—excluding all time entries mentioning “Twist” even though
some of them potentially pertain to this action—amply guards Defendants against the risk of
surviving Twist-related time entries.
3. Reductions Summary
To summarize, JBT initially requested an attorneys’ fee award of approximately $2.74
million, reflecting over five thousand hours of work from Dykema and local counsel on JBT’s
affirmative claims and defense against the UDTPA and UTIAA counterclaims. The court
reduces JBT’s total requested award in several ways. First, fees related to Defendants’ UDTPA
counterclaim are excluded, which reduces the award by $89,124.16 at the outset. 288 Second, the
court excludes Dykema counsel’s unnecessary, unrelated, or unclear time entries, including those
286
See generally Dkt. 279-1.
See id. at 22; see also id. at 62 (“Attention to Documents in Bullerdick Case to be Produced to Twist”), 84
(“[R]eviewed status of Twist Boom Air patent and related litigation; correspond with Mr. Penn re[garding] Twist
Boom Air patent status.”).
287
288
See supra Section III(D)(i); see also Dkt. 278 at 17 (summarizing JBT’s requested attorneys’ fee award).
45
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related to JBT’s press release and the separate action against Twist. 289 This leaves an award of
approximately $2.58 million. Third, the court applies a general reduction of ten percent to
account for the exclusion of JBT’s noncompensable trademark infringement and defamation
claims. 290 Concurrently, Dykema counsel’s fees are reduced by a further ten percent to account
for the firm’s top-heavy allocation of work. 291 These reductions leave a total potential fee award
of $2,070,435.74.
Initial Request
UDTPA Claim
Placeholder
Exclusions
Press Release
Twist Matter
Subtotal
Trademark Infringement (5%)
Reductions Defamation (5%)
Top-Heavy (10%)
Total
Dykema Counsel
$ 2,657,742.29
$
(85,406.13)
$
(486.50)
$
(5,153.50)
$
(63,149.50)
$ 2,503,546.66
$
(125,177.33)
$
(125,177.33)
$
(250,354.67)
$ 2,002,837.33
Local Counsel
$ 78,827.38
$
(3,718.03)
$
$
$
$ 75,109.35
$
(3,755.47)
$
(3,755.47)
$
$ 67,598.42
Total
$ 2,736,569.67
$
(89,124.16)
$
(486.50)
$
(5,153.50)
$
(63,149.50)
$ 2,578,656.01
$
(128,932.80)
$
(128,932.80)
$
(250,354.67)
$ 2,070,435.74
c. Reasonableness of Hours
Having satisfied “the obligat[ion] to exclude unreasonable hours from the fee request,” 292
the court next turns to the factors set forth in Case by Case v. Unified Sch. Dist. No. 233 293 and
289
See supra Section III(E)(b)(2).
290
See supra Section III(C).
291
See supra Section III(E)(b)(1).
292
Utah Physicians, 2021 U.S. Dist. LEXIS 15091, at *26 (citing Malloy, 73 F.3d at 1018).
In making the reasonableness determination, the court “considers the following factors: (1) ‘the complexity of the
case,’ (2) ‘the number of reasonable strategies pursued,’ (3) ‘the responses necessitated by the maneuvering of the
other side,’ and (4) ‘the potential duplication of services.’” Id. at *7 (quoting Case, 157 F.3d at 1250).
293
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Johnson v. Georgia Highway Exp., Inc. to determine whether the resulting award is reasonable or
warrants further adjustment. 294
First, the Case factors generally support the fees sought by JBT. While some elements of
the case were straightforward, there were also many complex legal and factual disputes,
requiring extensive maneuvering by JBT’s counsel. Over the course of nearly six years, they
prosecuted JBT’s case through a labyrinth of counterclaims, amended complaints, cross-motions,
and discovery disputes, finally culminating in a highly technical six-day trial focused on
damages. During that time, counsel also attempted mediation and settlement with Defendants to
no avail. While some of counsel’s time entries reflect duplicative or unnecessary work—such as
work performed on a potential action against a non-party—the court concludes the adjustments
discussed above sufficiently guard against the potential for duplication of services.
The Johnson factors lend further support to the reasonableness of JBT’s fee request.
While the court need not discuss every Johnson factor, 295 several are particularly relevant here.
First, the past six years of litigation have required extensive time and labor from JBT’s counsel,
encompassing not only pre-trial motion practice, but also a six-day trial and now, extensive posttrial briefing. Second, the case required counsel to address some novel questions surrounding
reverse passing off claims under the Lanham Act and difficult questions about how to best
calculate damages resulting from Defendants’ basket of misconduct. Third, JBT’s counsel
488 F.2d 714, 717–19 (5th Cir. 1974) (stating that when considering the reasonableness of attorney fees, the court
should consider: (1) the time and labor required; (2) the novelty and difficulty of the questions; (3) the skill requisite
to perform the legal service properly; (4) the preclusion of other employment by the attorney due to acceptance of
the case; (5) the customary fee; (6) whether the fee is fixed or contingent; (7) time limitations; (8) the amount
involved and the results obtained; (9) the experience, reputation, and ability of the attorney; (10) the undesirability
of the case; (11) the nature and length of the professional relationship with the client; and (12) awards in similar
cases); see also Gottlieb v. Barry, 43 F.3d 474, 482 (10th Cir. 1994) (stating that the Tenth Circuit applies the
twelve Johnson factors in statutory fee cases).
294
295
See Uselton v. Commercial Lovelace Motor Freight, Inc., 9 F.3d 849, 854 (10th Cir. 1993).
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proved to be capable attorneys with an exacting attention to detail. They were able to uncover
the full scope of Defendants’ misconduct and achieve a high degree of success at both summary
judgment and trial. Though the “results obtained” were less than JBT had hoped for, they still
represent a vindication of JBT’s claims against Defendants and defeat of Defendants’
counterclaims. And Defendants can hardly complain about the disparity between JBT’s
requested attorneys’ fees and the $1.1 million damages award when it was their own conduct that
necessitated JBT’s odyssean legal journey. 296 Having considered the rest of the Johnson factors,
the court concludes these factors either support the reasonableness of JBT’s requested fees or
have little bearing on the present case.
In sum, the court declines to reduce JBT’s fee award at this point beyond the reductions
already taken based on the court’s billing judgment and non-compensability of certain claims.
ii. Reasonable Rates
The court next reviews the reasonableness of JBT’s claimed hourly rates. As “[t]he party
requesting fees,” JBT bears “the burden of showing 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.” 297 In contrast to the broad discretion generally afforded to district
courts in assessing attorneys’ fees, the Tenth Circuit cautions district courts not to “ignore[] the
parties’ market evidence and set[] an attorney’s hourly rate using the rates [they] consistently
See City of Riverside v. Rivera, 477 U.S. 561, 581 n.11 (1986) (stating that a party “cannot litigate tenaciously
and then be heard to complain about the time necessarily spent by the plaintiff in response”); see also Brandau v.
Kan., 168 F.3d 1179, 1181 n.1 (10th Cir. 1999) (upholding an attorneys’ fee award that vastly outweighed the
nominal damages award received by the plaintiff); Read v. Okla. Flintrock Prods., LLP, No. 21-CV-316-JFJ, 2023
U.S. Dist. LEXIS 86077, at *17 (N.D. Okla. May 17, 2023) (approving an attorneys’ fee award that was “greater
than the relief obtained” because it was “neither excessive nor unreasonable in light of the time expended and results
obtained”).
296
297
Ellis v. University of Kan. Med. Ctr., 163 F.3d 1186, 1203 (10th Cir. 1998).
48
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grant[].” 298 Moreover, courts may not use their “own knowledge to establish the appropriate rate
unless the evidence of prevailing market rates . . . is inadequate.” 299
The “relevant market” in this case is the Salt Lake City, Utah legal market, where JBT
decided to file suit. 300 Yet, JBT’s Dykema counsel was based in Chicago, Illinois. As such,
Defendants argue that Dykema counsel’s requested rates—ranging between $295 and $715 per
hour—should be reduced to match those of JBT’s local counsel, following an approach from
Bimbo Bakeries USA, Inc. v. Sycamore. 301 For its part, JBT does not dispute that Salt Lake City
is the relevant market, nor does it raise any of the recognized exceptions to the prevailing market
rule. 302 Instead, JBT counters that Dykema counsel’s out-of-state rates are consistent with the
rates for comparable representation in Salt Lake City, referencing, among other things, a report
from the American Intellectual Property Law Association (AIPLA), Billings’s opinion as a
member of the Utah legal community, and recent fee awards from this District. 303
At the outset, the court declines to follow the approach advocated by Defendants.
Notably, the court in Bimbo Bakeries was provided with competing declarations from local
attorneys disputing the requested out-of-state rates and an expert report on prevailing market
298
Case, 157 F.3d at 1255.
United Phosphorus, 205 F.3d at 1234; see also Case, 157 F.3d at 1257 (“Only if the district court does not have
before it adequate evidence of prevailing market rates may the court, in its discretion, use other relevant factors,
including its own knowledge, to establish the rate.”).
299
See Ramos v. Lamm, 713 F.2d 546, 555 (10th Cir. 1983) (stating that the relevant market consists of “the area in
which the litigation occurs” or “the area in which the court sits”); accord Case, 157 F.3d at 1256.
300
301
See Dkt. 299 at 10–13 (citing Bimbo Bakeries, 2019 U.S. Dist. LEXIS 36041, at *7–8).
See generally Dkt. 278; Dkt. 305; see also Lippoldt v. Cole, 468 F.3d 1204, 1225 (10th Cir. 2006) (“Unless the
subject of the litigation is so unusual or requires such special skills that only an out-of-state attorney possesses, the
fee rates of the local area should be applied even when the lawyers seeking fees are from another area.” (internal
quotation marks and citations omitted)).
302
See Dkt. 278 at 15–16 (citing Dkt. 279-3, AIPLA 2019 Report of the Economy Survey; Dkt. 280 ¶ 6); Dkt. 305 at
8–9 (citing ESIP Series 1, LLC v. Doterra Int’l, LLC, No. 2:15-cv-00779-RJS, 2022 U.S. Dist. LEXIS 231525, *13
(Dec. 23, 2022)).
303
49
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rates. 304 But Defendants offer neither. Instead, they seem to argue that the court should reduce
Dykema counsel’s rates to local counsel’s rates as a matter of course. 305 But Bimbo Bakeries
does not stand for such a sweeping proposition, and it would be inappropriate to mandate
reductions based purely on a disparity with local counsel’s rates. As with many out-of-state
representations, local counsel and Dykema counsel performed very different functions. While
local counsel consulted on local rules, reviewed filings, and served as a liaison with the court,
Dykema counsel carried the weight of this years-long litigation.306 They untangled the full scope
of Defendants’ misconduct during discovery and staffed the highly experienced and specialized
team that carried JBT’s claims across the finish line. Given these critical differences between
counsels’ roles, it makes little sense to revert to local counsel’s rates by default.
At the same time, the evidence JBT provided to support the reasonableness of Dykema
counsel’s rates is unhelpful. Billings’s Declaration states that “the hourly rates charged to JBT
for Dykema’s services in this matter [were] fair and reasonable” based on his extensive
experience and familiarity with the case. 307 But he does not fully address the reasonableness of
Dykema counsel’s rates with respect to the Salt Lake City legal market. And the AIPLA survey
attached to JBT’s fee application places Utah in an expansive “Other West” category that spans
thirteen states and fails to provide specific information related to prevailing rates in Salt Lake
304
See Bimbo Bakeries, 2019 U.S. Dist. LEXIS 36041 at *4 n.15; Bimbo Bakeries, No. 2:13-cv-00749, Dkt. 591.
See Dkt. 299 at 12 (“JBT’s local counsel stated that their rates range from $230 to $300 for its partners. . . . In
contrast, Chicago counsel bills at $490 to $715 for partners . . . . To the extent the [c]ourt awards any fees, it should
follow the established practice from Bimbo Bakeries and . . . reduce Dykema’s rates to those of JBT’s local
counsel.”).
305
Compare Dkt. 280-1 (detailing local counsel’s relatively constrained role), with Dkt. 279-1 (detailing Dykema
counsel’s extensive efforts with regards to this action); see also Dkt. 280 ¶ 5 (discussing local counsel’s
understanding of Dykema counsel’s services).
306
307
Dkt. 280 ¶ 6.
50
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City.308 Even when considered together, this evidence hardly satisfies JBT’s “burden of showing
that the requested rates are in line with those prevailing in the community for similar services.” 309
Though JBT falls short of adequately supporting Dykema counsel’s claimed rates in the
context of the Salt Lake City legal market, one thing is clear—Utah’s legal community has
changed considerably over the past few years. International law firms, once relegated to Chicago
and a handful of coastal cities, have opened up Salt Lake City offices with startling frequency,
helping drive rates to levels that would have been unthinkable before the COVID-19
pandemic. 310 Meanwhile, rapid inflation and other economic developments have prompted
courts to revisit rates that were deemed reasonable less than two years ago. 311 Recognizing these
See Dkt. 279-3 at 2, 6; see also ThermoLife Int’l LLC v. BPI Sports LLC, No. CV-20-02091-PHX-SPL, 2023 U.S.
Dist. LEXIS 88164, at *37–38 (D. Ariz. May 18, 2023) (concluding that the data from the AIPLA survey was
“largely meaningless as it relates to the Phoenix legal market” as the “Other West” category “encompass[ed]
numerous other large and diverse legal markets”); Composite Res., Inc. v. Rood, No. 2:21-cv-00500-BLW, 2023
U.S. Dist. LEXIS 38226, at *9 (D. Idaho Mar. 3, 2023) (concluding that the AIPLA survey did not “provide specific
enough information to establish the market rate” in Idaho).
308
309
Ellis, 163 F.3d at 1203 (emphasis added); see also Composite Res., 2023 U.S. Dist. LEXIS 38226, at *7–15
(concluding that “neither [] declarations [from counsel based on general experience] nor the AIPLA Report [were]
sufficient to establish the prevailing market rate” in Idaho).
See, e.g., Jack Dodson, Big Law Has Arrived in Utah, Utah Business Magazine (Aug. 7, 2023),
https://www.utahbusiness.com/big-law-has-arrived-in-utah-what-does-this-mean-for-local-law-firms/; Savannah
Beth Withers Taylor, Roundtable: Utah’s 2023 Legal Landscape, Utah Business Magazine (June 14, 2023),
https://www.utahbusiness.com/roundtable-utah-legal-landscape-experts/; Andrew Maloney, Where Are Partner
Billing Rates Surging the Most in Big Law, American Lawyer (May 24, 2023, 11:18 AM),
https://www.law.com/americanlawyer/2023/05/24/where-are-partner-billing-rates-surging-the-most-in-big-law/
(“Utah led the way in terms of partner billing rate growth among states, with the median rate climbing 6.2% in 2022,
up to about $350 per hour.”); Sara Merken, Large Law Firms Still See Allure of Utah’s ‘Silicon Slopes’, Reuters
(Apr. 5, 2022, 1:49 PM), https://www.reuters.com/legal/legalindustry/large-law-firms-still-see-allure-utahs-siliconslopes-2022-04-05/.
310
See Theo M. v. Beacon Health Options, Inc., No. 2:19-cv-00364-JNP-DBP, 2023 U.S. Dist. LEXIS 131275, at
*16–17 (D. Utah July 27, 2023) (“[B]ecause of rapid inflation after the COVID-19 [p]andemic, the cost of living in
Utah has increased and $450 is a lower relative rate than it was in early 2021. Thus, accounting for the economic
developments of the past two years, the court finds that a $500 per hour rate is [now] appropriate . . . in the Salt
Lake City legal market.”).
311
51
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considerable changes to Utah’s legal landscape, courts have repeatedly accepted rates that are
comparable to those requested by Dykema counsel for certain complex matters. 312
Yet, despite these changes, Dykema counsel’s requested rates are still a bridge too far.
They are higher than other rates determined to be reasonable in this District and would set a new
high watermark with respect to Weil’s claimed rate of $715 per hour. 313 Without “competent,
trustworthy evidence of the market” from JBT or Defendants, 314 the court must rely largely on its
own knowledge of the Salt Lake City legal market to determine appropriate rates for Dykema
counsel. 315 In considering a range of factors—such as the rates awarded for comparable cases,
market conditions, and the qualifications of Dykema counsel—the court concludes a ten percent
reduction is needed to place the requested rates in line with those prevailing in Salt Lake City.
The resulting rates—between $265.50 and $643.50 per hour—still represent a significant rate for
the Salt Lake City legal market, but are nevertheless reasonable given the skill, experience, and
reputation Dykema counsel brought to bear on a difficult and protracted case.
In light of this reduction, JBT’s attorneys’ fee award is further adjusted as follows: 316
312
See, e.g., Waas v. Red Ledges Land Development, Inc., No. 2:20-cv-00580-TC-DBP, 2022 U.S. Dist. LEXIS
1323, 2022 WL 35717, at *4 (D. Utah Nov. 2, 2021) (holding that $650 was a reasonable hourly rate for partners to
bill in Salt Lake City); ESIP Series 1, 2022 U.S. Dist. LEXIS 231525, at *13 (approving rates between $275 and
$695 per hour for “highly experienced attorneys that regularly litigate complex patent infringement cases”); Martin,
2023 U.S. Dist. LEXIS 90346, at *36–38 (finding rates of up to $695 per hour “reasonable based on the skill,
experience, and reputation [] counsel brought to bear on a difficult case”).
See Webb, 2022 U.S. Dist. LEXIS 78387, at *14–15 (rejecting California counsel’s requested rate of $600 per
hour and finding “that a rate of $400 per hour [was] reasonable . . . [and] consistent with the high end of rates other
courts have found to be reasonable” (collecting cases approving rates between $325 and $450 per hour)).
313
Case, 157 F.3d at 1256 (“[I]n order to comply with precedent, the district court must award rates compatible with
competent, trustworthy evidence of the market.”).
314
315
See Utah Physicians, 2021 U.S. Dist. LEXIS 15091, at *34–35 (“If the court has no adequate evidence before it,
only then ‘may the court, in its discretion, use other relevant factors, including its own knowledge, to establish the
rate.’” (quoting Case, 157 F.3d at 1257)).
The court calculated the appropriate reduction by subtracting Dykema counsel’s post-exclusion fees as
determined by the billing records ($2,506,400) by the post-exclusion fees reflecting a ten percent rate deduction for
each time entry ($2,255,760).
316
52
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Initial Request
UDTPA Claim
Placeholder
Exclusions
Press Release
Twist Matter
Subtotal
10% Rate Reduction
Post-Rate Reduction Subtotal
Trademark Infringement (5%)
Reductions Defamation (5%)
Top-Heavy (10%)
Total
Dykema Counsel
$ 2,657,742.29
$
(85,406.13)
$
(486.50)
$
(5,153.50)
$
(63,149.50)
$ 2,503,546.66
$
(250,640.00)
$ 2,252,906.66
$
(112,645.33)
$
(112,645.33)
$
(225,290.67)
$ 1,802,325.33
Local Counsel
$ 78,827.38
$
(3,718.03)
$
$
$
$ 75,109.35
$
$ 75,109.35
$
(3,755.47)
$
(3,755.47)
$
$ 67,598.42
Total
$ 2,736,569.67
$
(89,124.16)
$
(486.50)
$
(5,153.50)
$
(63,149.50)
$ 2,578,656.01
$
(250,640.00)
$ 2,328,016.01
$
(116,400.80)
$
(116,400.80)
$
(225,290.67)
$ 1,869,923.74
F. Nontaxable Expenses
In addition to attorneys’ fees, JBT seeks significant nontaxable expenses, totaling
$328,392.37. 317 These expenses consist of the following:
Travel
Mail/Delivery
Research
Electronic Discovery
Miscellaneous
Total
Dykema Counsel
$
30,158.56
$
1,264.02
$
10,748.05
$
278,309.43
$
6,815.14
$
327,295.20
Local Counsel
$
$
695.38
$
267.46
$
$
134.33
$
1,097.17
$
$
$
$
$
$
Total
30,158.56
1,959.40
11,015.51
278,309.43
6,949.47
328,392.37
As part of an award of attorneys’ fees, the court may award “incidental and necessary
expenses incurred in furnishing effective and competent representation.” 318 Courts have
cautioned such awards should be limited to expenses that are: (1) necessary, (2) reasonable, and
(3) those “typically and customarily charged by law firms to their clients.” 319 “This necessarily
317
Dkt. 278 at 11–12; Dkt. 279 ¶¶ 13–14; Dkt. 280 ¶ 13.
StorageCraft, 2012 U.S. Dist. LEXIS 140704, at *2 (quoting Brown v. Gray, 227 F.3d 1278, 1297 (10th Cir.
2000)); see also Bimbo Bakeries, 2019 U.S. Dist. LEXIS 36041, at *9 (granting nontaxable expenses for “travel,
mail/delivery, research, and miscellaneous” as part of an attorneys’ fee award under the UTSA); Univ. of Kan. v.
Sinks, No. 06-2341, 2009 U.S. Dist. LEXIS 89783, at *49 (D. Kan. Sep. 28, 2009) (collecting cases granting certain
nontaxable expenses as part of an attorneys’ fee award under the Lanham Act).
318
319
StorageCraft, 2012 U.S. Dist. LEXIS 140704, at *17; Bimbo Bakeries, 2019 U.S. Dist. LEXIS 36041, at *8–9
(discussing the requirements for including nontaxable expenses as part of an attorneys’ fee award under the UTSA).
53
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involves a factual inquiry into the billing practices of law firms in the region who provide
services to fee-paying clients.” 320 Common examples of recoverable nontaxable expenses
include “delivery, postage and shipping charges, travel expenses, as well as . . . legal research
charges.” 321
Defendants generally challenge JBT’s showing of reasonableness and necessity for the
requested expenses. They argue that “given JBT’s highly capable local counsel, travel expenses
for JBT’s other counsel are questionable and deserve a significant reduction if not outright
denial.” 322 They further contend JBT “has made no showing that less expensive methods could
not have been used” to facilitate mail and delivery services. 323 Additionally, Defendants criticize
JBT’s vague descriptions of “legal research,” which they assert “mak[es] it impossible to
evaluate whether the research was reasonable or useful.” 324 Finally, Defendants maintain “JBT
has failed to show the reasonableness” of the significant amount claimed for electronic
discovery, which encompasses $19,511.28 for “personnel hours,” $252,357.50 for “data
hosting,” and $6,440.65 for “other.” 325 Given “the inclusion of fee entries relating to JBT’s
separate lawsuit against Twist,” Defendants speculate that JBT’s electronic discovery “database
might also have been used in furtherance of that litigation,” making an award of nontaxable
expenses inappropriate. 326
320
Brown, 227 F.3d at 1297.
321
StorageCraft, 2012 U.S. Dist. LEXIS 140704, at *2.
322
Dkt. 299 at 18.
323
Id.
324
Id. at 19.
325
Id. (citing Dkt. 279 ¶ 13).
326
Id.
54
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After carefully considering Defendants’ arguments and JBT’s underlying expense
records, the court is persuaded that some reductions are needed to limit JBT’s recoverable
expenses to those that were necessary and reasonable under the circumstances.
First, the court excludes certain expenses associated with counsel’s out-of-state travel. As
prefaced above, district courts in the Tenth Circuit do not adopt out-of-state rates for attorneys’
fee awards unless “the subject of the litigation is so unusual or requires such special skills that
only an out-of-state attorney possesses” 327 or the plaintiffs “were unable to locate any counsel
. . . locally who would represent them.” 328 As other courts have explained, “[p]laintiffs should
not be penalized for retaining counsel of their choice, but neither should they be permitted to
impose additional costs on defendants for plaintiffs’ decision to go outside the district.” 329 It
follows that travel expenses associated with a plaintiff’s decision to obtain out-of-state counsel
should not be shifted to the defendant either. In the civil rights context, the Tenth Circuit has
recognized as much, explaining that “because there is no need to employ counsel from outside
the area in most cases, [it does] not think travel expenses for such counsel . . . should be
reimbursed.” 330 Given JBT’s failure to show that this is an “unusual case” warranting
“[d]eparture from this rule,” 331 the court finds a reduction is also appropriate here. To that end,
the court excludes all expenses associated with Dykema counsel’s travel to and from Utah, but
not those associated with other out-of-state depositions. By the court’s calculation, this requires
327
Lippoldt, 468 F.3d at 1225.
328
Enable Okla. Intrastate Transmission, LLC v. 25 Foot Wide Easement, 908 F.3d 1241, 1247 (10th Cir. 2018).
Student Pub. Int. Rsch. Grp. v. Monsanto Co., 721 F. Supp. 604, 618 (D.N.J. 1989), modified on other grounds,
727 F. Supp. 876 (D.N.J. 1989), aff’d, 891 F.2d 283 (3d Cir. 1989).
329
Ramos, 713 F.2d at 559; see also Univ. of Kan., 2009 U.S. Dist. LEXIS 89783, at *53–54 (awarding only 15% of
requested travel expenses because “plaintiffs failed to make a showing that local counsel could not have reasonably
handled th[e] litigation”).
330
331
See supra Section III(E)(ii).
55
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a reduction of $21,442.21, or approximately seventy-one percent, leaving $8,716.35 in awarded
travel expenses.
Second, the court reduces expenses associated with Dykema counsel’s electronic
discovery and research by two-and-a-half percent to account for the risk of overlap between the
instant action and JBT’s lawsuit against Twist. 332 This is roughly equivalent to the deduction
made to account for JBT’s Twist-specific time entries. Given that Twist discovery materials
were still relevant to JBT’s action against Defendants, this deduction is potentially overinclusive,
but the court concludes it is needed to reduce the risk of penalizing Defendants with expenses
that should be borne by another party, if not JBT itself.
Having reviewed the rest of JBT’s requested nontaxable expenses, the court concludes
they were generally necessary, reasonable, and the type of expenses expected to be charged by
law firms to their clients. Accordingly, JBT’s nontaxable expenses are reduced as detailed below,
leaving an amount of $301,169.01.
Travel
Out-of-State Exclusion
Mail/Delivery
Research
Twist Reduction
Electronic Discovery
Twist Reduction
Miscellaneous
Total
Dykema Counsel
$
30,158.56
$
(21,442.21)
$
1,264.02
$
10,748.05
$
(214.96)
$
278,309.43
$
(5,566.19)
$
6,815.14
$
300,071.84
Local Counsel
$
$
$
695.38
$
267.46
$
$
$
$
134.33
$
1,097.17
$
$
$
$
$
$
$
$
$
Total
30,158.56
(21,442.21)
1,959.40
11,015.51
(214.96)
278,309.43
(5,566.19)
6,949.47
301,169.01
JBT’s Motion for Leave to Register Judgment in Other Districts 333
IV.
In the final post-trial motion now before the court, JBT seeks leave to register the
Judgment in the Western District of North Carolina and the Northern District of West Virginia
332
See supra Section III(E)(i)(b)(2).
333
Dkt. 295.
56
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pursuant to 28 U.S.C. § 1963. 334 It notes, “[f]ederal law permits a judgment . . . to be registered
in any other district ‘when the judgment has become final by appeal or expiration of the time for
appeal or when ordered by the court that entered the judgment for good cause shown.’” 335 Here,
JBT contends good cause exists because “Defendants are suspected of owning significant
property in both the Western District of North Carolina and the Northern District of West
Virginia.” 336 They further note that “Bullerdick owns residential real property in Mecklenburg
County, North Carolina” and “BGSE is a North Carolina limited liability property,” 337 attaching
numerous public records search results as exhibits. 338 However, Defendants challenge that
“mere residency in another jurisdiction does not constitute good cause under 28 U.S.C. § 1963,”
and contest JBT’s assertion that relevant persons and entities possess “substantial property” in
other districts that would be subject to execution. 339
“While the Tenth Circuit has not spoken regarding what constitutes good cause in this
setting, other courts have stated that the ‘good cause requirement may be satisfied if the
judgment debtor has substantial property in a foreign district and insufficient property in the
rendering district to satisfy the judgment.’” 340 “It takes very little to make the good cause
showing.” 341 While JBT does not provide any evidence there is “insufficient property [in this
District] to satisfy the judgment,” courts have found this requirement is met where, as here,
334
Id. at 1–3.
335
Id. at 2 (quoting 28 U.S.C. § 1963).
336
Id. at 3.
337
Id.
338
See generally Dkts. 295-1–4, Exhibits to JBT’s Motion for Leave to Register Judgment in Other Districts.
339
Dkt. 307, Defendants’ Response to JBT’s Motion for Leave to Register Judgment in Other Districts at 2–4.
Republic Bank v. AMTEC Precision Prods., Inc., No. 1:06-cv-112 TS, 2008 U.S. Dist. LEXIS 10317, at *3 (D.
Utah Feb. 12, 2008) (quoting Schreiber v. Kellogg, 839 F. Supp. 1157, 1162 (E.D. Pa. 1993)).
340
341
Bunnet & Co. v. Dores, No. 1-15-CV-1104 LY, 2019 U.S. Dist. LEXIS 108077, at *4 (W.D. Tex. June 27, 2019).
57
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Defendants do not dispute the movant’s assertion of insufficient assets in the rendering
district. 342 In terms of the second element—substantial property—case law is clear that the
“judgment creditor need not provide exact evidence of the debtor’s assets.” 343 Instead, the court
“may rely on affidavits and other documentary evidence.” 344 In the absence of contrary evidence
from Defendants, the court concludes JBT has sufficiently demonstrated that Defendants possess
substantial property in other districts, thereby showing “good cause” under 28 U.S.C. § 1963. 345
Accordingly, JBT’s Motion is granted.
CONCLUSION
For the reasons discussed above, JBT’s Motion for Enhanced Damages is DENIED. 346
JBT’s Motion for Pre- and Post-Judgment Interest is GRANTED IN PART and DENIED IN
PART. 347 JBT is entitled to post-judgment interest under 28 U.S.C. § 1961, but not prejudgment
interest. Further, JBT’s Motion for Attorneys’ Fees and Expenses is GRANTED IN PART and
DENIED IN PART, 348 leaving JBT with an attorneys’ fee award of $1,869,923.74 and nontaxable
Treasure Chest Themed Value Mail, Inc. v. David Morris Int’l, Inc., 2019 U.S. Dist. LEXIS 76812, at *4–6
(S.D.N.Y. May 6, 2019); Pharmacy Corp. of Am. v. Concord Healthcare Grp., LLC, No. 3:17-CV-00037-GNS, 2017
U.S. Dist. LEXIS 224752, at *4-5 (W.D. Ky. Oct. 4, 2017) (collecting cases).
342
Ambac Assurance Corp. v. Adelanto Pub. Util. Auth., 2014 U.S. Dist. LEXIS 87697, at *10 (S.D.N.Y. June 26,
2014).
343
344
HSH Nordbank AG N.Y. Branch v. Swerdlow, 2010 U.S. Dist. LEXIS 47956, at *3 (S.D.N.Y. May 14, 2010).
See Republic Bank, 2008 U.S. Dist. LEXIS 10317, at *1–2 (finding good cause existed for registration in other
districts where the defendant denied transacting business in the state where judgment was obtained and equipment
that was the basis for the litigation was located in the state where the plaintiff sought to register judgment); Bank of
Am., N.A. v. Esparza, No. 03-0346 MV, 2017 U.S. Dist. LEXIS 233835, at *7–9 (D.N.M. Oct. 25, 2017) (finding
good cause justifying registration in another state where it was “undisputed the [defendants had] no assets in New
Mexico” and they previously attested that they “receive[d] substantial salaries from [a] company” in another state);
Navigato v. SJ Rests., LLC, No. 09-2101-DJW, 2011 U.S. Dist. LEXIS 103811, at *6–7 (D. Kan. Sep. 14, 2011)
(finding that “the judgment debtors’ own statements and public records” sufficiently evinced “good cause” for
registration in other districts, where, among other concessions, Defendants did not dispute the first prong of the good
cause showing).
345
346
Dkt. 285.
347
Dkt. 286.
348
Dkt. 278.
58
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expenses of $301,169.01, for a total award of $2,171,092.75. Finally, JBT’s Motion for Leave to
Register the Judgment in Other Districts is GRANTED. 349
SO ORDERED this 21st day of September, 2023.
BY THE COURT:
__________________________
ROBERT J. SHELBY
United States Chief District Judge
349
Dkt. 295.
59
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