Amazon.com, Inc. v. Personal Web Technologies, LLC

• Court: District Court, N.D. California
• Decided: March 2, 2021
• Docket: 5:18-cv-00767
• Status: Unknown

Opinion

2 UNITED STATES DISTRICT COURT 3 NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION 4

IN RE: PERSONALWEB Case No. 18-md-02834-BLF 5 TECHNOLOGIES, LLC ET AL., PATENT LITIGATION 6 ORDER GRANTING IN PART AND 7 AMAZON.COM, INC., and AMAZON DENYING IN PART MOTION FOR WEB SERVICES, INC., ATTORNEYS’ FEES AND COSTS 8 Plaintiffs [Re: ECF 636] 9 v. Case No.: 5:18-cv-00767-BLF 10 PERSONALWEB TECHNOLOGIES, LLC [Re: ECF 184] and LEVEL 3 COMMUNICATIONS, LLC,

11 Defendants, Case No.: 5:18-cv-05619-BLF 12 [Re: ECF 88] 13 PERSONALWEB TECHNOLOGIES, LLC, and LEVEL 3 COMMUNICATIONS, LLC, 14 Plaintiffs, 15 v.

16 TWITCH INTERACTIVE, INC.,

17 Defendant.

18 Having found this case exceptional under 35 U.S.C. § 285, the Court must now determine 19 the amount of reasonable attorneys’ fees and costs owed at the end of this multidistrict litigation 20 (“MDL”) for alleged patent infringement that ensnared Amazon and over 80 of its customers. In 21 February 2020, Defendants Amazon.com, Inc., Amazon Web Services, Inc., and Twitch Interactive, 22 Inc. (collectively “Amazon”) prevailed against Plaintiff PersonalWeb Technologies, LLC 23 (“PersonalWeb”) at summary judgment and judgment was entered in favor of all Defendants. ECF 24 381; ECF 578; ECF 643. After an August 6, 2020 motion hearing, the Court found the case 1 reserved the question of the reasonableness of Amazon’s requested fees. H’rg, ECF 625; Order 2 Awarding Fees, ECF 636 at 34. In its prior motion, Amazon requested attorney fees totaling 3 $6,100,000.00 and non-taxable expenses of $323,668.06. Mot. for Attorney Fees and Costs 4 (“Mot.”), ECF 593 at 15. Amazon also reserved its right to submit a supplemental fee request for future fees related to preparing the fees motion. Gregorian Declaration (“Gregorian Decl.”) ¶ 21, 5 ECF 592-1. Now, PersonalWeb challenges the reasonableness of Amazon’s request. Suppl. Br., 6 ECF 644. For the reasons that follow, the Motion is GRANTED IN PART and DENIED IN PART.1 7 I. BACKGROUND 8 Separate from this MDL, in December 2011, PersonalWeb commenced a patent 9 infringement suit in Texas federal court against Amazon and its customer Dropbox, Inc. See 10 PersonalWeb Techs., LLC v. Amazon.com Inc., No. 6:11-cv-00658 (E.D. Tex. Filed Dec. 8, 2011) 11 (the “Texas Action”). PersonalWeb eventually stipulated to dismissing its claims with prejudice, ending the action. ECF 315-7; ECF 315-8. Four years later in January 2018, PersonalWeb 12 resurrected its claims, filing over 85 lawsuits across the country against various Amazon customers 13 for their use of Amazon’s Simple Storage Service (“S3”) and alleging infringement of the same 14 patents implicated in the Texas Action. See ECF 295; ECF 1, Schedule A. Amazon quickly 15 intervened to defend its customers, and counterclaims from both parties ensued. Amazon.com, Inc. 16 et al v. Personal Web Technologies, LLC et al, 18-5:18-cv-00767-BLF (N.D. Cal. Filed February 5, 17 2018) (the “DJ Action”), ECF 62, 71. In June 2018, the cases were consolidated into the current MDL proceeding and assigned to 18 this Court. Compl., ECF 1. With Plaintiff’s approval, the Court selected the Twitch case as the 19 representative customer action to proceed and stayed all other customer cases pending resolution. 20 ECF 313. In two phases, the Court granted Amazon’s motions for summary judgment as to all 21 claims. ECF 381; ECF 578. 22 On March 20, 2020, Amazon moved for attorney fees and costs. Mot. On October 6, 2020, 23 this Court granted the Motion and concluded that the case was exceptional

24 1 because (1) PersonalWeb’s infringement claims related to Amazon S3 were objectively baseless and not reasonable when brought 2 because they were barred due to a final judgment entered in the Texas Action; (2) PersonalWeb frequently changed its infringement 3 positions to overcome the hurdle of the day; (3) PersonalWeb unnecessarily prolonged this litigation after claim construction 4 foreclosed its infringement theories; (4) PersonalWeb’s conduct and positions regarding the customer cases were unreasonable; and (5) 5 PersonalWeb submitted declarations that it should have known were not accurate. 6 Order Awarding Fees at 33. Because PersonalWeb failed to object to the reasonableness of 7 Amazon’s requested fees in its opposition brief, the Court ordered supplemental briefing. Id. 8 PersonalWeb filed its Supplemental Brief on October 30, 2020. Suppl. Br., ECF 644. Amazon filed 9 its Response on November 16, 2020. Response, ECF 646. 10 II. LEGAL STANDARD 11 A. Exceptional Case Status 12 The first issue to resolve is the proper methodology of calculating the amount of attorneys’ 13 fees to which Amazon is entitled. In patent infringement actions, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285; see Octane Fitness, 14 LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 553 (2014). Supreme Court precedent 15 determining the reasonableness of fees applies uniformly to all federal fee-shifting statutes 16 permitting the award of reasonable fees, such as § 285. See City of Burlington v. Dague, 505 U.S. 17 557, 562 (1992). Furthermore, courts “apply Federal Circuit law to the issue of attorney fees in 18 patent infringement cases.” Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1299 (Fed. Cir. 19 2004). District courts have “‘considerable discretion’ in determining the amount of reasonable attorney fees under § 285” because of “the district court’s superior understanding of the litigation 20 and the desirability of avoiding frequent appellate review of what essentially are factual matters.” 21 Homeland Housewares, LLC v. Sorensen Research, 581 Fed. Appx. 887, 881 (Fed. Cir. 2014) 22 (quoting Bywaters v. U.S., 670 F.3d 1221, 1228 (Fed. Cir. 2012)) (internal quotation marks omitted); 23 see also Hensley v. Eckerhart, 461 U.S. 424, 437 (1983). 24 The Court has already determined that this case is exceptional, meriting an award of 1 attorneys’ fees. See Order Awarding Fees; see also Octane, 572 U.S. at 555 (“a district court may 2 award fees in the rare case in which a party's unreasonable conduct—while not necessarily 3 independently sanctionable—is nonetheless so ‘exceptional’ as to justify an award of fees.”). The 4 parties now dispute the implication of this finding. PersonalWeb urges this Court to apply a “but for” standard that awards fees accrued litigating frivolous conduct and excludes fees accrued 5 litigating non-frivolous conduct. See Suppl. Br. at 1-2. Amazon counters that awarding fees related 6 to discrete acts of litigation misconduct is the incorrect standard to apply. Response at 1. This Court 7 agrees with PersonalWeb that it should apply the “but for” standard as described in Goodyear Tire 8 & Rubber Co. v. Haeger, 137 S. Ct. 1178 (2017), but is mindful that there are limits to the degree 9 of parsing required. Homeland Housewares, LLC v. Sorensen Research, 581 F. App'x 877, 881 (Fed. 10 Cir. 2014) (“We decline, however, to require such granularity from the district court, particularly 11 because it is the ‘totality of the circumstances,’ and not just discrete acts of litigation conduct, that justify the court's award of fees.” (quoting Octane, 572 U.S. at 554). 12 PersonalWeb’s proposed methodology originates in Fox v. Vice, 563 U.S. 826 (2011). There, 13 the Supreme Court held that when a plaintiff asserts both frivolous and non-frivolous claims, the 14 defendant may recover only the amount incurred because of the frivolous claims. Id. at 826. In such 15 cases, fees are determined according to “whether the fees requested would not have accrued but for 16 the” misconduct. Id. at 839-40; see also Goodyear, 137 S. Ct. at 1187. 17 Several years later, the Supreme Court applied the “but for” standard to a court’s inherent authority to sanction a litigant for bad faith conduct by ordering it to pay the other side’s legal fees. 18 Goodyear, 137 S. Ct. at 1183-84. It explained that fee-shifting in the sanction context must be 19 compensatory rather than punitive. Id. at 1186. As such, “the court can shift only those attorney’s 20 fees incurred because of the misconduct at issue.” Id. An award that “extends further than that—to 21 fees that would have been incurred without the misconduct—then . . . crosses the boundary from 22 compensation to punishment. Id. Hence, a “causal connection” is required between the misbehavior 23 and the legal fees imposed, which “is most appropriately framed as a but-for test: The complaining 24 party . . . may recover ‘only the portion of his fees that he would not have paid but for’ the 1 this reasoning in the patent context, explaining that fees awarded under § 285 are “compensatory, 2 not punitive” and “[i]n such a statutory sanction regime, a fee award may go no further than to 3 redress the wronged party for losses sustained.” In re Rembrandt Techs. LP Patent Litig., 899 F.3d 4 1254, 1279 (Fed. Cir. 2018) (quoting Goodyear, 137 S. Ct. at 1186) (internal marks omitted). “Critically, the amount of the award must bear some relation to the extent of the misconduct.” Id. 5 Amazon emphasizes that Goodyear applied the “but for” fee-shifting methodology in a 6 different context, where the court was concerned with its inherent power to sanction. Response 1. 7 But Fox concerned a § 1983 claim where the court dismissed the plaintiff’s federal claims with 8 prejudice after the plaintiff admitted they were invalid. 563 U.S. at 830. In that case, the Supreme 9 Court was considering § 1988, which allowed an award of reasonable fees to a prevailing party in 10 certain civil rights cases. Fox, 563 U.S. at 829-30. It reversed the district court’s grant of fees for 11 defending the entire suit in federal court, holding that the “but for” test applied. Id. at 839-40; see also Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1106 (Fed. Cir. 2003) (holding that where 12 a court finds a case exceptional, the amount of the award must relate to the misconduct). And 13 numerous courts have since applied the Fox-Goodyear standard to § 285 assessments. See, e.g., In 14 re Rembrandt Tech. LP Patent Litigation, 899 F.3d 1254 (Fed. Cir. 2018); Flowerider Sur, Ltd. v. 15 Pac. Surf Designs, Inc., No. 315-cv-01879-BEN-BLM, 2020 WL 5645331 (S.D. Cal. Sept. 22, 16 2020); Indus. Print Tech., LLC v. Cenveo, Inc., No. 3:15-cv-01195-M, 2020 WL 5057738, (N.D. 17 Tex. Aug. 26, 2020); Cave Consulting Grp., Inc. v. Truven Health Analytics Inc., 293 F. Supp. 3d 1038, 1043 (N.D. Cal. 2018); Envtl. Mfg. Sol., LLC v. Peach State Labs, Inc., 274 F. Supp. 3d 1298 18 (M.D. Fla. Aug. 14, 2017). 19 Amazon contends that § 285 permits the Court to award fees for an exceptional case based 20 on the “totality of the circumstances,” which allows for an award for the entire case, including any 21 subsequent appeals. Response 1 (citing Therasense, Inc. v. Beton, Dickinson & Co., 745 F.3d 513, 22 517 (Fed. Cir. 2014). In Goodyear, the Supreme Court explained that “[i]n exceptional cases, the 23 but-for standard even permits a trial court to shift all of a party’s fees, from either the start or some 24 midpoint of a suit, in one fell swoop.” 137 S. Ct. at 1186 (emphasis added). But the Supreme Court 1 the defendant did—his entire course of conduct throughout, and indeed preceding, the litigation— 2 was part of a sordid scheme to defeat a valid claim.” Id. at 1188 (internal citations and quotation 3 marks omitted) (citing Chambers v. NASCO, Inc., 501 U.S. 32, 51 (1991)). Such conduct, which 4 was also in the sanctioning context, was so egregious that it amounted to “fraudulent and brazenly unethical efforts.” Id. at 1188 (quoting Chambers, 501 U.S. at 58). In other words, there are 5 circumstances in which a case may be exceptional under § 285, but the prevailing party is 6 nonetheless not entitled to full attorneys’ fees. See, e.g., Rembrandt, 899 F.3d at 1267, 1280 (Fed. 7 Cir. 2018) (affirming a case as exceptional under § 285, but concluding that the district court 8 nonetheless failed to “establish at least some ‘causal connection’ between the misconduct and the 9 fee award”). 10 The Federal Circuit has upheld a full award of attorney fees—but it was “against a party 11 whose ‘extensive misconduct was enough to compromise an abusive pattern or a vexatious strategy that was pervasive enough to infect the entire litigation.” Rembrandt, 899 F.3d at 1279 (citing 12 Monolithic Power Sys. Inc. v. O2 Micro International Ltd., 726 F.3d 1359, 1369 (Fed. Cir. 2013)). 13 Describing Monolithic Power, the Federal Circuit in Rembrandt explained that the full award was 14 proper only because the party’s “rampant misconduct so severely affected every stage of the 15 litigation.” Id. at 1279. In Rembrandt, however, the misconduct was not so egregious, meaning the 16 full award that the district court granted was not warranted. See Rembrandt, 889 F.3d at 1277-80 17 (“Rembrandt instead argues that the fee award is excessive and unreasonable because the district court failed to establish a causal connection between the claimed misconduct and the fees awarded”). 18 Unlike Monolithic Power, in Rembrandt “the claimed misconduct affected only some patents 19 asserted against some defendants.” 889 F.3d at 1280. The Federal Circuit remanded so that the 20 district court could reassess the amount because “the district court did not establish a causal 21 connection between the misconduct and [the] fees, and it did not offer any other reason for its fee 22 award” as required by Goodyear. Rembrandt, 889 F.3d at 1280. 23 Courts in this Circuit have also applied the “but for” test in the § 285 context. Analyzing the 24 underlying policy reasons for the Supreme Court’s applying the “but for” standard to § 1988, Judge 1 claims after a motion to dismiss was granted in part and denied in part. Cave Consulting, 293 F. 2 Supp. 3d at 1049. And Judge Benitez applied the “but for” standard to determine the reasonableness 3 of the time expended litigating the case in Flowerider Sur, 2020 WL 5645331, at *5-6. 4 This Court finds that the “but for” standard articulated by Goodyear applies, as PersonalWeb’s misconduct did not so infect the case that a full award, without any discernment of 5 a causal connection between the improper acts and the fees accrued, is warranted. In granting fees, 6 this Court concluded that the case was exceptional. Order Awarding Fees at 32. The Court explained 7 that “this case both lacked substantive strength and was litigated in an unreasonable manner” and 8 that PersonalWeb “repeatedly flip flopped its positions to suit the argument of the day” Order 9 Awarding Fees at 33 (internal quotation marks and citation omitted). But the Court also noted that, 10 “[t]aken separately, the fragments of the story might not make PersonalWeb’s conduct look 11 exceptional.” Order Awarding Fees at 32-33. Elsewhere, the Court pointed to benign examples of PersonalWeb’s conduct: “PersonalWeb’s infringement positions were not objectively baseless and 12 thus, do not support a finding of an exceptional case.” Id. at 15. Thus, although the Court concluded 13 that some of PersonalWeb’s infringement claims were “objectively baseless and not reasonable 14 when brought,” Order Awarding Fees 33, its conduct did not rise to “rampant misconduct” affecting 15 “every stage of the litigation.” Rembrandt, 889 F.3d at 1279. In other words, the facts here depart 16 from Monolithic Power and Chambers such that the “but for” standard in Goodyear is warranted. 17 In applying this standard, the Court will exclude requested fees not directly traceable to PersonalWeb’s egregious conduct, but will nonetheless continue to assess the totality of the 18 circumstances as directed under Octane. Overall, the Court has previously determined that 19 PersonalWeb repeatedly changed its infringement theories—telling the MDL panel that the cases 20 all involved S3, then reporting to this Court that Ruby on Rails was preeminent, until that theory 21 was completely abandoned. And later, ten months into the litigation, PersonalWeb yet again shifted 22 its infringement theories, this time to CloudFront along with a disturbing interlude where it appeared 23 that PersonalWeb pursued claims it did not own and signed court papers without Level 3’s consent. 24 After that, PersonalWeb unnecessarily prolonged portions of the case and sought to backtrack on its 1 Amazon to expend extra work at nearly every juncture. 2 B. Reasonableness of Fees 3 In examining the reasonableness of fees and in applying the “but for” standard, the 4 mechanics of the determination “does not require a tedious, line-by-line investigation of the hours . . . expended.” Rembrandt, 889 F.3d at 1280. Goodyear details this Court’s task: 5 This but-for causation standard generally demands that a district court 6 assess and allocate specific litigation expenses—yet still allows it to exercise discretion and judgment. The court’s fundamental job is to 7 determine whether a given legal fee-say, for taking a deposition or drafting a motion—would or would not have been incurred in the 8 absence of the sanctioned conduct. The award is then the sum total of the fees that, except for the misbehavior, would not have accrued. But as we stressed in Fox, trial courts undertaking that task need not, and 9 indeed should not, become green-eyeshade accountants . . . . The essential goal in fee shifting is to do rough justice, not to achieve 10 auditing perfection. Accordingly, a district court may take into account its overall sense of a suit, and may use estimates in 11 calculating and allocating an attorney’s time. 137 S. Ct. at 1187 (internal brackets, quotation marks, and citations omitted); see also Flowerider 12 Sur, 2020 WL 5645331, at *5 (applying the Goodyear standard in the § 285 context). 13 Hence, for guidance on the reasonableness of fees so that this Court may do “rough justice,” 14 it still looks to the lodestar amount, which is presumptively reasonable. Dague, 505 U.S. at 562; 15 Vogel v. Harbor Plaza Center, LLC, 893 F.3d 1152, 1161 (9th Cir. 2018); see also Flowerider Sur, 16 2020 WL 5645331, at *4-6 (applying both the “but for” standard and the lodestar method); Peach 17 State Labs, 274 F. Supp. 3d at 1314-27 (same). The lodestar calculation requires examination of “the number of hours reasonably expended on the litigation multiplied by a reasonable hourly rate.” 18 Pa. v. Del. Valley Citizens’ Council for Clean Air, 478 U.S. 546, 564 (1986). “This calculation 19 provides an objective basis on which to make an initial estimate of the value of a lawyer’s services.” 20 Id. (citing Hensley, 461 U.S. at 433). 21 The reasonable hourly rate is determined by “the rate prevailing in the community for similar 22 work performed by attorneys of comparable skill, experience, and reputation.” Chalmers v. City of 23 Los Angeles, 796 F.2d 1205, 1210-11 (9th Cir. 1986), amended on other grounds, 808 F.2d 1373 24 (9th Cir. 1987) (citing Blum v. Stetson, 465 U.S. 886, 895 n.11 (1984)). The relevant community is 1 979 (9th Cir. 2008). The prevailing market rate is guided by attorney affidavits as well as “decisions 2 by other courts awarding similar rates for work in the same geographical area by attorneys with 3 comparable levels of experience.” Trujillo v. Orozco, No. 5:17-cv-00566-EJD, 2018 WL 1142311, 4 at *2 (N.D. Cal. Mar. 2, 2018); see also United Steelworkers of Am. v. Phelps Dodge Corp., 896 F.2d 403, 407 (9th Cir. 1990). 5 The number of hours is based only on the amount of time “reasonably expended on the 6 litigation” and excludes “hours that are excessive, redundant, or otherwise unnecessary.” Hensley, 7 461 U.S. at 433-34. The moving party bears the initial burden of providing relevant documentation. 8 Id. at 433. “Where the documentation of hours is inadequate, the district court may reduce the award 9 accordingly.” Id. Furthermore, while the lodestar amount provides guidance, “[t]here is no precise 10 rule or formula for making these determinations.” Id. at 436. A court “necessarily has discretion in 11 making this equitable judgment.” Id. at 437. As such, as part of its assessment of the reasonable hours, the Court considers “whether a given legal fee . . . would or would not have been incurred in 12 the absence of the sanctioned conduct.” Flowerider Sur, 2020 WL 5645331, at *5. 13 The following reductions to Amazon’s lodestar calculations are based solely on percentage 14 cuts. Although the Court would consider a line-by-line reduction, PersonalWeb has chosen to submit 15 its opposition based on percentage reductions and Amazon does not object to this methodology. The 16 Court thus proceeds in accordance with guidance from the Supreme Court, Federal Circuit, and 17 Ninth Circuit. 18 III. DISCUSSION In its original motion for fees, Amazon requested “attorney fees from January 8, 2018 19 through February 29, 2020,” amounting to a total of $6,100,000.00 and non-taxable expenses 20 totaling $323,668.06. Mot. at 15. PersonalWeb requests that the Court reduce this request to 21 $1,302,947.86 in fees and $203,300.10 in costs. Suppl. Br. 1. This reduction is based on 22 PersonalWeb’s belief that (1) “the majority” of Amazon’s request has no relation to the claim and 23 conduct the Court found exceptional and (2) Amazon’s counsel engaged in unreasonable billing 24 practices. 1 A. Amazon’s Proffered Fee Data As a preamble, the Court considers PersonalWeb’s challenge to the fee data provided by 2 Amazon. See Suppl. Br. at 3. This challenge is related to the discount scheme Fenwick & West LLP 3 (“Fenwick”) applied to Amazon’s fees. In its Motion for Attorney Fees and Costs, Amazon 4 explained that “Amazon and Twitch incurred $6,987,341.17 in fees for Fenwick’s work between 5 January 2018, when the case began, through January 2020” after applying “write-offs and 6 discounts.” Gregorian Decl. ¶ 19.2 These write-offs and discounts included an exclusion of “556.3 7 hours and $189,009.85 of work” from 29 timekeepers. Id. ¶ 17. The excluded hours could be traced to “ramp up” time for attorneys who were newly recruited onto the case, as well as other 8 inefficiencies. Id. Amazon also received a “final” discount of about 13%, which accounts for 9 Amazon’s ultimate $6,100,000.00 fee request. Id. ¶ 19; see also id., Exh. 6 (detailing effective 10 hourly rate before and after final discount). Amazon is commended for its candid and appropriate 11 billing reductions. That said, its presentation of hours expended has caused some confusion. 12 PersonalWeb argues that although Amazon represented that it is only requesting fees 13 incurred after applying the discounts described above, its fee request for each category is based on 14 the effective rates of the attorneys before the discount. Suppl. Br. at 3 (citing Gregorian Decl., Exh. 6). And, contrary to the discount scheme described above, PersonalWeb’s expert contends that 15 Amazon first multiplied the relevant number of hours billed by the pre-discount billing rate set forth 16 in the Gregorian Declaration. Knapton Declaration, ECF 644-1 ¶ 9. According to PersonalWeb, 17 these calculations resulted in a total of $6,987,341.17 in fees. PersonalWeb’s expert concludes that 18 Amazon then wrote-off $189,009.85 in fees and 556.3 hours of time from $6,987,341.17 to reach 19 Amazon’s ultimate request of $6,100,000.00. See id. ¶ 10 (“Based on my review of Fenwick’s 20 invoices, this exclusion is apparently what comprises the ‘Final Discount’ that results in the 21 $6,100,000.00 in requested fees.”). The Court is puzzled by this conclusion, not least because (1) Amazon clearly and cogently laid out the how it arrived at the $6,100,000.00 figure, see Gregorian 22 Decl. ¶¶ 17-19, and (2) PersonalWeb’s explanation does not account for almost $700,000.00 in fees. 23

24 2 Amazon “in fact [has] paid in excess of $7.25 million in attorney fees” to defend this case. 1 The Court has thoroughly examined the documentation provided by Amazon. Upon totaling 2 the amounts in Amazon’s proffered Breakdown of Categories table, the Court discovered that the 3 fees totaled $6,987,341.17—not $6,100,000.00. See id. In other words, as PersonalWeb argued, this 4 table is a result of multiplying hours billed by the effective billing rate before the final discount. While Amazon provided the Court with another table titled Overview of Totals, this table only 5 details the total billed hours and effective billing rate after the final discount was applied for each 6 category, requiring the Court and PersonalWeb to calculate the total requested fee for each category. 7 Amazon’s decision to proffer a detailed fee table based only on pre-discount billing rates is 8 unnecessary in light of Defendant’s request for percentage-based deduction. See Gregorian Decl., 9 Exh 6 at 2-12. The Court thus relies on the “Total Billed Hours” and “Effective Rate with Final 10 Discount” figures in the Overview of Totals table to conduct the below analysis. See Gregorian 11 Decl., Exh 6 at 2-12. These figures are also referenced in Defendant’s supplemental brief. See generally Suppl. Br. 12 B. Fox-Goodyear “But For” Standard 13 The Court first considers PersonalWeb’s argument that “the majority” of Amazon’s fee 14 request has no relation to the claim and conduct the Court found exceptional. PersonalWeb generally 15 contends that Amazon should only be able to recover for three categories of work: “S3 only” issues, 16 post claim construction, and changed infringement positions. Suppl. Br. at 3. For the reasons 17 discussed below, the Court disagrees and grants the lion’s share of Amazon’s fee request. 18 1. Case Management Amazon seeks to recover $1,079,001.52 in attorneys’ fees for 2143.3 hours of work related 19 to case management. Gregorian Decl., Exh. 6. PersonalWeb argues that these hours should mostly 20 be excluded given that “Amazon has provided no evidence that the vast majority of time spent on 21 ‘Case Management’ would not have otherwise been expended by Amazon since ‘S3 only’ 22 infringement was removed relatively early in the case (before most discovery and claim 23 construction).” Suppl. Br. at 3. It contends Amazon should only receive $269,750.38 in this 24 category. Id. at 4. Amazon replies that “[t]his complex patent MDL required a significant amount 1 the MDL. The case law recognizes that this time may be not only necessary, but the most efficient 2 way to coordinate work on the case.” Response at 5. 3 PersonalWeb’s argument that Amazon should only receive $269,750.38 out of 4 $1,079,001.52 in fees implies that PersonalWeb’s misconduct was only responsible for about 25% of Amazon’s case management needs. Not so. PersonalWeb’s frivolous conduct was a significant 5 contributor to the need for case management. See generally Order Awarding Fees. Nonetheless, 6 Amazon’s request requires a haircut. Although it is particularly difficult to attribute case 7 management activities to the particular misconduct present in this case, PersonalWeb’s ever-shifting 8 infringement theories—S3, Ruby on Rails, the late emergence of CloudFront and complete 9 abandonment of Ruby on Rails, and, finally, PersonalWeb’s extraordinary declaration that Twitch 10 was not a representative customer case only fifteen months after insisting just the opposite —support 11 Amazon’s need for significant case management efforts. Thus, the Court will reduce case management fees by 25% to reflect a fair reduction related to otherwise necessary activities. The 12 Court reduces the lodestar by $269,750.38 in fees and 535.83 hours. The Court determines Amazon 13 is entitled to $809,251.14 in fees for 1607.5 hours of work in this category. 14 2. MDL 15 Amazon seeks to recover $145,613.05 in attorneys’ fees for 296.8 hours of work related to 16 MDL. Gregorian Decl., Exh. 6. PersonalWeb argues that “Amazon should not receive fees here 17 because the Court held that PersonalWeb’s conduct to win centralization was not exceptional since PersonalWeb ‘did not hide the ball as to Ruby on Rails from the MDL Panel.’” Suppl. Br. at 4 (citing 18 Order Awarding Fees at 16). Amazon responds that “it was Amazon’s . . . presence in the MDL that 19 made it possible for the Court to resolve the case as efficiently as it did. And had the Court accepted 20 PersonalWeb’s proposal to have multiple customer cases go forward, the MDL proceeding would 21 have been significantly more expensive.” Response at 3. 22 The Court agrees with Amazon. PersonalWeb’s argument takes the Order Awarding Fees 23 drastically out of context, and illustrates that the company continues to “slice and dice this case in a 24 way that gave it an escape hatch.” Order Awarding Fees at 27. The Court previously concluded in 1 engaged in conduct that “‘stands out from others’ as exceptional.” Id. at 26-27. For example, the 2 Court concluded that PersonalWeb adopted “shifting positions in a final attempt to unravel the MDL 3 after summary judgment and to keep some of the customer cases in play.” Id. at 25-26. Because 4 Amazon would have not incurred these fees but for PersonalWeb’s frivolous conduct, the Court determines Amazon is entitled to $145,613.05 in fees for 296.8 hours of work in this category. 5 3. Investigating and Responding to PersonalWeb’s Claims 6 Amazon seeks to recover $212,047.88 in attorneys’ fees for 410.5 hours of work related to 7 investigating and responding to PersonalWeb’s claims. Gregorian Decl., Exh. 6. PersonalWeb 8 argues all but $41,709.65 of these fees should be excluded because “[o]ut of the 84 complaints filed 9 by PersonalWeb, only seven solely allege claims of S3 infringement and these were not filed until 10 September 12, 2018.” Suppl. Br. at 4. According to PersonalWeb, “the majority of hours spent 11 investigating and responding to PersonalWeb’s complaints cannot be attributed to the ‘S3 only’ claims, and because Amazon would have incurred most of the fees in this category even if 12 PersonalWeb had not alleged its ‘S3 only’ infringement claims, they should not be included.” Id. 13 Amazon responds that “[t]hese costs relate entirely to Amazon’s attempt to defend claims that the 14 Court has already found were baseless, and to do so in the most efficient way possible.” Response 15 at 2. 16 PersonalWeb, again, reads this Court’s Order Awarding Fees far too narrowly. 17 PersonalWeb’s abandoned infringement theories serially dominated the case, leading to unnecessary work across multiple categories of litigation. The fees in this category include time expended 18 “investigating and answering PersonalWeb’s complaints against Twitch and Amazon’s customers 19 and PersonalWeb’s counterclaims against Amazon; investigating the accused technology; and 20 providing technology tutorials to this Court during case management conferences.” Gregorian Decl. 21 ¶ 22c; see, e.g., id. Exh. 4 at 11 (time entry for “Investigate infringement allegations re: Ruby on 22 Rails.”). PersonalWeb’s flavor-of-the-week strategy required Amazon to expend substantial time 23 investigating PersonalWeb’s ever-shifting claims. The Court will reduce investigative fees by 25% 24 to reflect a fair reduction related to otherwise necessary activities. The Court reduces the lodestar 1 of work in this category. 2 4. Declaratory Judgment Complaint 3 Amazon seeks to recover $83,411.31 in attorneys’ fees for 174.1 hours of work related to 4 Amazon’s declaratory judgment complaint. Gregorian Decl., Exh. 6. PersonalWeb argues that Amazon should be limited to recovering only $41,705.66 because “even after the Court found that 5 claim preclusion/Kessler applied to S3 only infringement claims, that did not fully dispose of 6 Amazon’s DJ complaint.” Suppl. Br. at 4-5. Amazon responds that “[t]hese costs relate entirely to 7 Amazon’s attempt to defend claims that the Court has already found were baseless, and to do so in 8 the most efficient way possible.” Response at 2. 9 The time that Amazon spent on the declaratory judgment complaint cannot solely be traced 10 to PersonalWeb’s misconduct. For example, as this Court explained in its Order Awarding Fees, 11 “PersonalWeb correctly notes that it had not asserted the ’791 Patent against Amazon or Twitch. Thus, the ’791 Patent was a part of this case only in Amazon’s Declaratory Judgment Action.” Order 12 Awarding Fees at 20 fn. 20 (internal citations omitted). But the Court does not accept PersonalWeb’s 13 proposed fee reduction. Amazon filed the declaratory judgment complaint in direct response to the 14 dozens of customer cases filed by PersonalWeb, which were largely predicated on S3 infringement 15 claims. Indeed, PersonalWeb accused S3 in 62 of the 85 cases. See ECF 295 at 3 (detailing 16 infringement categories by action). But for this slew of complaints, Amazon would likely not have 17 needed to file the declaratory judgment action. The Court reduces the fees in this category by 15% to account for the fact that some of the time Amazon expended in this category was unrelated to S3. 18 Accordingly, the Court reduces the lodestar by $12,511.70 in fees and 26.12 hours. The Court 19 determines Amazon is entitled to $70,899.61 in fees for 148 hours of work in this category. 20 5. PersonalWeb’s Motion to Dismiss 21 Amazon seeks to recover $33,813.91 in attorneys’ fees for 73.4 hours of work related to 22 PersonalWeb’s motion to dismiss. Gregorian Decl., Exh. 6. The parties do not dispute that fees 23 related to this motion should be included in the award. See Suppl. Br. at 5. The Court determines 24 Amazon is entitled to $33,813.91 in attorneys’ fees for 73.4 hours of work in this category. 1 Amazon seeks to recover $151,668.62 in attorneys’ fees for 340.4 hours of work related to 2 Amazon’s motions to stay. Gregorian Decl., Exh. 6. PersonalWeb argues that Amazon should not 3 be able to recover any fees related to this motion “[b]ecause the motions to stay sought to avoid 4 consolidation in the MDL, and the Court held that PersonalWeb’s MDL efforts were not unreasonable or baseless, Amazon should not recover its fees for its numerous, identical motions to 5 stay.” Suppl. Br. at 5 (citing Order Awarding Fees at 16). Amazon again responds that “[t]hese costs 6 relate entirely to Amazon’s attempt to defend claims that the Court has already found were baseless, 7 and to do so in the most efficient way possible.” Response at 2. 8 Amazon is entitled to full attorneys’ fees arising out of the motions to stay. As the Court 9 explained in its Order Awarding Fees, “starting in January 2018, PersonalWeb filed 85 lawsuits 10 against different Amazon customers in various courts around the country, alleging that those 11 customers’ use of Amazon S3 service infringed the same patents at issue in the Texas Action.” Order Awarding Fees at 2. And this Court was crystal clear when it found “PersonalWeb’s infringement 12 claims related to Amazon S3 were objectively baseless and not reasonable when brought because 13 they were barred due to a final judgment entered in the Texas Action.” Id. at 33. The Court finds 14 that PersonalWeb’s S3-related misconduct led Amazon to file its declaratory judgment suit, the 15 motions to stay, and the motion for a preliminary injunction. What’s more, had Amazon not filed 16 the motions to stay, it would have undoubtedly incurred even more legal fees in actively defending 17 the menagerie of customer cases. The Court determines Amazon is entitled to $151,668.62 of fees for 340.4 hours of work in this category. 18 7. Motion for Preliminary Injunction 19 Amazon seeks to recover $219,985.69 in attorneys’ fees for 454.3 hours of work related to 20 Amazon’s motion for a preliminary injunction. Gregorian Decl., Exh. 6. PersonalWeb argues that 21 fees for these hours are not recoverable because “this motion was an attempt to supersede 22 consolidation in the MDL.” Suppl. Br. at 5. Amazon again responds that “[t]hese costs relate entirely 23 to Amazon’s attempt to defend claims that the Court has already found were baseless, and to do so 24 in the most efficient way possible.” Response at 2. 1 misconduct is a “but for” cause of the attorneys’ fees Amazon incurred related to the motion for a 2 preliminary injunction. The Court determines Amazon is entitled to $219,985.69 of fees for 454.3 3 hours of work in this category. 4 8. Summary Judgment on Claim Preclusion and the Kessler Doctrine Amazon seeks to recover $592,831.33 in attorneys’ fees for 1050.3 hours of work related to 5 summary judgment on claim preclusion and Kessler doctrine issues. Gregorian Decl., Exh. 6. The 6 parties do not dispute that fees related to this motion should be included in the award. Suppl. Br. at 7 5. The Court determines Amazon is entitled to $592,831.33 in attorneys’ fees for 1050.3 hours of 8 work in this category. 9 9. Motion for Judgment on the Pleadings 10 Amazon seeks to recover $147,464.68 in attorneys’ fees for 263.9 hours of work related to 11 Amazon’s motion for judgment on the pleadings. Gregorian Decl., Exh. 6. PersonalWeb argues that “[b]ecause the Court denied the entire MJOP, Amazon should not be awarded any fees on its failed 12 motion.” Suppl. Br. at 5. Amazon responds that “PersonalWeb accused CloudFront for the first time 13 ten months into the case—one of the changes in infringement positions that the Court found made 14 the case exceptional.” Response at 3. 15 The Court agrees with PersonalWeb. Amazon moved for judgment on the pleadings alleging 16 that PersonalWeb lacked standing to bring infringement claims against CloudFront. See ECF 413. 17 The Court easily resolved this motion in favor of PersonalWeb. See ECF 578 at 23-26. Even crediting Amazon’s attack on the timeliness of PersonalWeb’s claims against CloudFront, the Court 18 cannot impute misconduct to PersonalWeb based on a failed litigation decision by Amazon. The 19 Court determines Amazon is not entitled to fees based on time spent on its motion for judgment on 20 the pleadings. The Court reduces Amazon’s lodestar by $147,464.68 in fees and 263.9 hours. 21 10. Infringement Contentions 22 Amazon seeks to recover $72,896.40 in attorneys’ fees for 151.7 hours of work related to 23 PersonalWeb’s infringement contentions. Gregorian Decl., Exh. 6. PersonalWeb argues these fees 24 should be excluded because “PersonalWeb’s infringement contentions as to S3 and CloudFront were 1 such, any fees Amazon expended analyzing PersonalWeb’s infringement contentions relating to S3 2 applied equally to the S3/CloudFront combination that survived the claim preclusion summary 3 judgment motion.” Suppl. Br. at 6. Amazon responds that it “had to perform all this work as part of 4 its defense of an exceptional case that the Court did find ‘substantively weak’ and ‘unreasonably litigated.’. . . Given the case schedule, Amazon could not have avoided drafting the contentions 5 without waiving its defenses.” Response at 3-4. 6 The Court agrees with Amazon. As Amazon correctly argued in its supplemental briefing, 7 the case schedule required Amazon to review and respond to PersonalWeb’s contentions. Response 8 at 3-4. Buttressing this conclusion is the fact that in June 2019 PersonalWeb moved to amend its 9 infringement contentions in bad faith. See Order Awarding Fees at 24-26. This choice required 10 Amazon to expend even more time in this category. Id. The Court determines Amazon is entitled to 11 $72,896.40 in fees for 151.7 hours of work related to infringement contentions. 11. Invalidity Contentions 12 Amazon seeks to recover $139,924.68 in attorneys’ fees for 329.7 hours of work related to 13 Amazon’s invalidity contentions. Gregorian Decl., Exh. 6. PersonalWeb argues that “Amazon never 14 argued invalidity in any of their summary judgment motions, did not allege invalidity as an area that 15 should weigh in favor of exceptionality in its Motion, and invalidity was neither related to any 16 specific customer defendant nor ‘S3 only’ specific.” Suppl. Br. at 6 (internal citation omitted). 17 Amazon again responds that it “had to perform all this work as part of its defense of an exceptional case that the Court did find ‘substantively weak’ and ‘unreasonably litigated.’ For example, 18 Amazon’s invalidity contentions would not have been needed at all but for PersonalWeb filing 80+ 19 baseless lawsuits that it then unreasonably prolonged by changing its theories repeatedly.” Response 20 at 3. 21 For similar reasons as those articulated in Section III.B.10, the Court finds that 22 PersonalWeb’s misconduct is a “but for” cause of the attorneys’ fees Amazon incurred related to 23 invalidity contentions. Moreover, that Amazon never argued invalidity in its summary judgment 24 motions does not mean that PersonalWeb’s misconduct did not require Amazon to complete this 1 this category. 2 12. Damages Contentions 3 Amazon seeks to recover $10,745.50 in attorneys’ fees for 22.7 hours of work related to 4 damage contentions. Gregorian Decl., Exh. 6. PersonalWeb argues that these fees should be excluded as “Amazon restricted their damages contentions solely to CloudFront infringement” and 5 “the Court did not find PersonalWeb’s CloudFront infringement claims were baseless.” Suppl. Br. 6 at 6. Amazon again responds that “Amazon had to perform all this work as part of its defense of an 7 exceptional case that the Court did find ‘substantively weak’ and ‘unreasonably litigated.’. . . Given 8 the case schedule, Amazon could not have avoided drafting the contentions without waiving its 9 defenses.” Response at 3-4. 10 The Court agrees with PersonalWeb. Amazon does not dispute that this fee category only 11 covers damage contentions for CloudFront infringement claims. These fees cannot be fairly traced to PersonalWeb’s misconduct.3 The Court determines Amazon may not recover requested attorneys’ 12 fees for this category. The Court reduces Amazon’s lodestar by $10,745.50 in fees and 22.7 in hours 13 of work. 14 13. Claim Construction 15 Amazon seeks to recover $520,714.93 in attorneys’ fees for 953.9 hours of work related to 16 claim construction. Gregorian Decl., Exh. 6. PersonalWeb argues that these fees should be excluded 17 because “the Court did not find that the constructions advanced by PersonalWeb were baseless or presented in an unreasonable manner.” Suppl. Br. at 6. Amazon responds that “such fees were 18 specifically incurred due to PersonalWeb’s pursuit of weak claims that each had multiple flaws (as 19 shown by the Court’s summary judgment ruling). The Court also expressly found PersonalWeb’s 20 attempt to prolong the case by reinterpreting the Court’s claim constructions made the case 21 exceptional.” Response at 5. 22 The Court finds that PersonalWeb’s misconduct is a “but for” cause of some of the fees 23 incurred by Amazon in this category. For example, the Court found that “PersonalWeb’s attempt to 24 1 work around the Court’s claim construction ruling was egregious and exceptional” in part because 2 “[t]he Court’s claim construction order had clearly construed the terms ‘unauthorized or unlicensed’ 3 as ‘not compliant with a valid license’ and ‘authorization’ as ‘a valid license.’” Order Awarding 4 Fees at 21. Yet the Court cannot trace all of the requested fees to PersonalWeb’s misconduct. See, e.g., id. at 14 (“PersonalWeb made reasonable, albeit unsuccessful, arguments that the terms 5 authorized/unauthorized or licensed/unlicensed should be given their plain and ordinary meaning.”). 6 The Court reduces Amazon’s requested fees by 25% to account for the fact that some of this time 7 can be traced to necessary litigation activities unrelated to PersonalWeb’s misconduct. The Court 8 reduces the lodestar by $130,178.73 in fees and 238.48 hours. Amazon is entitled to $390,536.20 in 9 fees for 715.43 hours of work in this category. 10 14. Fact Discovery 11 Amazon seeks to recover $1,331,489.17 in attorneys’ fees for 2,753.4 hours of work related to fact discovery. Gregorian Decl., Exh. 6. PersonalWeb argues that “[a]fter the March 13, 2019 12 order granting in part Amazon’s motion for summary judgment on claim preclusion/Kessler, fact 13 discovery did not relate to S3, and instead was limited to PersonalWeb’s other ‘reasonable 14 infringement arguments.’” Suppl. Br. at 6. It seeks to limit this category to $332,872.29, which 15 represents “fees sought . . . from the beginning of the case through March 13, 2019.” Id. Amazon 16 responds that this request “ignor[es] the other reason that the Court found the case exceptional.” 17 Response at 4. The Court agrees with Amazon. As the Court detailed in its Order Awarding Fees, 18 PersonalWeb’s misconduct continually gave Amazon the run around, increasing the amount of fact 19 discovery in which Amazon needed to engage. Thus, the Court will reduce fact discovery fees by 20 30% to reflect a fair reduction related to otherwise necessary activities. The Court reduces the 21 lodestar by $399,446.75 in fees and 826 hours. Amazon is entitled to $932,042.42 in fees for 22 1927.38 hours of work in this category. 23 15. Discovery Disputes & Motions to Compel 24 Amazon seeks to recover $307,874.85 in attorneys’ fees for 554.3 hours of work related to 1 Fact Discovery section, PersonalWeb argues that this request should be limited to $76,969.71. 2 Suppl. Br. at 6-7. Amazon again responds that this request “ignor[es] the other reason that the Court 3 found the case exceptional.” Response at 4. 4 For similar reasons as those articulated in Section III.B.14, the Court agrees with Amazon. However, not all of Amazon’s requested fees in this category can be traced to PersonalWeb’s 5 misconduct. For example, in its Order Awarding Fees, the Court documented a discovery dispute 6 during which Amazon argued PersonalWeb was withholding “damaging” information by asserting 7 privilege. Order Awarding Fees at 11. When the Court held a case management conference 8 regarding the parties’ purported discovery dispute, Amazon withdrew it arguments on the issue. 9 Order Awarding Fees at 11 fn. 5. To reflect the fact that both parties engaged in conduct leading to 10 discovery disputes and motions to compel, the Court will reduce fees in this category by 50%. The 11 Court reduces the lodestar by $153,937.43 in fees and 277.15 hours. Amazon is entitled to $153,937.43 in fees for 277.15 hours of work in this category. 12 16. Expert Discovery 13 Amazon seeks to recover $687,311.13 in attorneys’ fees for 1,593.1 hours of work related 14 to expert discovery. Gregorian Decl., Exhs. 5-6. PersonalWeb argues that “Amazon may be entitled 15 to certain attorneys’ fees incurred relating to Mr. de la Iglesia’s expert report and more specifically, 16 to those fees incurred rebutting Mr. de la Iglesia’s report . . . [O]nly fees in this category incurred 17 after August 23, 2019, when Mr. de la Iglesia’s report was served, should be considered.” Suppl. Br. at 7. Accordingly, PersonalWeb requests that the Court limit this fee category to $102,275.85. 18 Id. Amazon responds that it is entitled to full attorneys’ fees in this category because “[m]ost expert 19 discovery fees could have been avoided if PersonalWeb had not engaged in” unreasonable conduct. 20 Response at 5. It also argues that the caselaw on which PersonalWeb relies refers to retained expert 21 fees]. Id. 22 The Court finds that neither party correctly identifies the proper fee award here. As a starting 23 point, certainly Amazon is entitled to fees expended rebutting the improper expert report submitted 24 by Mr. de la Iglesia—but that is not the full extent of the proper fee award. Amazon was also forced 1 PersonalWeb. As outlined in the prior order, Amazon had no choice but to work up its case until 2 each theory was abandoned and start over when a new theory appeared. For this, Amazon is entitled 3 to a substantial portion of fees in this category. The Court also highlights that PersonalWeb’s fee 4 expert does not offer any analysis of Amazon’s expert discovery that was actually devoted to theories outside of the exceptional case order. 5 Having reviewed the billing records and supporting analysis submitted by Amazon, the 6 Court determines that Amazon expended significant time on expert discovery related to abandoned 7 or discredited theories. The Court will reduce the expert discovery fee request by 35%, which is this 8 Court’s best estimate of the time Amazon dedicated to the defense of properly interposed theories 9 of infringement. The Court reduces the lodestar by $240,558.90 in fees and 557.24 hours. Amazon 10 is entitled to $446,752.23 in fees for 1,034.87 hours of work related to expert discovery. 11 17. Summary Judgment for Non-Infringement Amazon seeks to recover $213,777.16 in attorneys’ fees for 370.1 hours of work related to 12 summary judgment for non-infringement. Gregorian Decl., Exh. 6. PersonalWeb argues that these 13 fees should be limited to $160,332.87, which represents a 25% cut, because “Amazon should not be 14 granted any fees associated with the new grounds of non-infringement as the Court recognized that 15 Amazon ‘sought a finding of non-infringement as to all the grounds raised in their motions’ so that 16 ‘the prolongation of the case at that stage did not rest solely on PersonalWeb’s shoulders.’” Suppl. 17 Br. at 8 (citing Order Awarding Fees at 22). Amazon believes this proposal is reasonable under the Court’s prior order. Response at 6. Upon agreement of the parties, the Court reduces the lodestar by 18 $53,444.29 in fees and 92.53 hours. Amazon is entitled to $160,332.87 in attorneys’ fees for 277.6 19 hours of work in this category. 20 18. PersonalWeb’s Rule 54(b) Motion 21 Amazon seeks to recover $13,705.99 in attorneys’ fees for 25.8 hours of work related to 22 PersonalWeb’s Rule 54(b) motion. Gregorian Decl., Exh. 6. PersonalWeb argues that this fees 23 should be excluded as it “offered to have judgment entered against it, but Amazon declined because 24 it wanted to obtain judgment of non-infringement on additional grounds.” Suppl. Br. at 8. Amazon 1 PersonalWeb’s motion and move for summary judgment” and that “[t]hese fees were necessary to 2 avoid costly piecemeal appeals from the MDL and should be included in the award.” Response at 6 3 (citing ECF 559, Order Awarding Fees). 4 PersonalWeb’s Rule 54(b) Motion was not unreasonable. Although Amazon emphasizes that it had “good reasons” to oppose this motion for efficiency reasons, this alone does not render the 5 motion frivolous or in bad faith. See Order Awarding Fees at 22 (“The Court is not so sure” that 6 PersonalWeb’s Rule 54(b) motion was “another bad faith gambit” ). The Court determines Amazon 7 is not entitled to fees flowing from this motion and reduces Amazon’s lodestar by $13,705.99 in 8 fees and 25.8 hours of work. 9 19. Federal Circuit Appeal 10 Amazon seeks to recover $135,720.79 in attorneys’ fees for 271.1 hours of work related to 11 PersonalWeb’s Federal Circuit Appeal. Gregorian Decl., Exh. 6. At the time of the supplemental briefing, PersonalWeb argued that “[t]his appeal is still pending as PersonalWeb’s petition for an en 12 banc review remains pending.” Suppl. Br. at 8. Amazon responds that, since PersonalWeb filed its 13 brief, the Federal Circuit denied PersonalWeb’s petition for rehearing en banc. Response at 6. 14 Amazon also argues that “regardless of the appeal regarding the Kessler doctrine, PersonalWeb’s 15 S3 claims fail also under the Court’s non-infringement summary judgment ruling.” Id. 16 On June 17, 2020, the Federal Circuit affirmed this Court’s summary judgment order. See 17 ECF 606. On November 10, 2020, the Federal Circuit denied PersonalWeb’s petition for panel rehearing or rehearing en banc. See ECF 645. PersonalWeb’s only objection to an award of these 18 fees is abrogated. The Court determines Amazon is entitled to $135,720.79 in attorneys’ fees for 19 271.1 hours of work related to the federal circuit appeal. 20 20. Motion for Attorney Fees and Costs 21 PersonalWeb requests that the Court reject Amazon’s $450,000 request in fees “they claim 22 they incurred between March 2020 and June 24, 2020” associated with their motion for attorneys’ 23 fees and costs. Suppl. Br. at 10; see also Gregorian Decl. ¶ 21. In its view, this request is punitive 24 and without substantiation. Id. Amazon responds that these fees are “fully awardable and routinely 1 (Fed. Cir. 1983). Amazon argues that it could not avoid these costs, that PersonalWeb never offered 2 to pay any part of these fees, and that PersonalWeb’s conduct greatly increased the cost of this 3 motion. The caselaw is on the side of Amazon. Courts have interpreted § 285 to allow for the 4 recovery of fees for time spent on the issue of attorneys’ fees itself. See Central Soya Co, 723 F.2d 5 at 1578 (Fed. Cir. 1983) (citing with approval Codex Corp. v. Milgo Elec. Corp., 541 F. Supp. 1198, 6 1201 (D. Mass. 1982) (“The compensatory purpose of § 285 is best served if the prevailing party is 7 allowed to recover his reasonable expenses in prosecuting the entire action. These expenses include 8 lawyers' fees for time spent on the issue of attorneys' fees itself. It does, however, find that a 9 reduction is appropriate.”)); see, e.g., Drop Stop LLC v. Jian Qing Zhu, No. CV 16-07916 AG 10 (SSX), 2018 WL 1407031, at *7 (C.D. Cal. Jan. 22, 2018), aff'd, 757 F. App'x 994 (Fed. Cir. 2019). 11 This is particularly true given PersonalWeb created delays in this proceeding by asking the Court to 12 delay its ruling, see ECF 594, and by completely failing to raise any arguments about the 13 reasonableness of fees in the original briefing on this motion, thereby necessitating the round of 14 briefing currently before the Court, see Order Awarding Fees at 33. In order to evaluate the 15 reasonableness of Amazon’s fee request in this category, the Court has requested supplemental 16 documentation as offered by Amazon in its initial motion for fees to support this request. See ECF 17 647. The Court will issue a follow-up order on this portion of the fee request. 18 19 21. Costs 20 Amazon seeks $323,668.06 in non-taxable costs. Mot. at 15; Gregorian Decl. ¶ 20. “These 21 costs are related to litigating this case, such as data hosting fees; copy services and delivery charges 22 for depositions, chambers copies and proof of service; transcript order fees; court call fees; expert 23 witness fees; meals and travel costs for attending depositions and hearings; graphic and presentation 24 consultant fees; and research vendor fees.” Gregorian Decl. ¶ 20; see also id., Exh. 5 (summary of 1 costs). PersonalWeb requests that this Court limit an award of costs to $203,300.10. Suppl. Br. at 1. 2 Although PersonalWeb discusses this reduction in the context of expert discovery, its expert justifies 3 the reduction more broadly: 4 A total of $370,412.14 is listed – but some of that is marked “BOC” by Amazon indicating that they were also shown on the Bill of Costs 5 and are not now sought. Some are for experts that did not do work that was within the “exceptional case” ambit. Some have only a 6 fully-redacted description. They are all shown and marked as acceptable or not in Exhibit 4. 7 Knapton Decl. ¶ 56; see also id., Exh. 4. Amazon does not specifically address PersonalWeb’s 8 proposed cost reduction. See generally Response. 9 The Court has reviewed Amazon’s summary of non-taxable costs and Knapton’s associated 10 chart. The Court agrees with PersonalWeb’s reduction; as the Court explained above, Amazon may 11 not recover expert fees or costs untethered to the existence of “fraud or bad faith whereby the very 12 temple of justice has been defiled.” MarcTec, 664 F.3d at 921. PersonalWeb’s proposed reduction 13 properly takes into account this limitation. The Court also credits Knapton’s finding that some of 14 Amazon’s cost entries are redacted. See Knapton Decl., Exh. 4 at 12-13. The Court will not award 15 these redacted costs. Finally, the Court highlights that PersonalWeb’s proposed cost award amounts 16 to about two-thirds of Amazon’s request. This reduction is proportional to the overall fee reduction 17 the Court detailed above, further indicating PersonalWeb’s reduction is appropriate. The Court 18 awards Amazon $203,300.10 in non-taxable costs. 19 *** 20 Based on the foregoing, the lodestar is $4,615,242.28 in fees for 9,263.43 hours of work. 21 Amazon is also entitled to $203,300.10 in non-taxable costs. The Court DEFERS ruling on 22 Amazon’s request for fees related to the instant motion. 23 24 1 C. Reasonable Fee Award 2 Now that the Court has addressed which fees are attributable to Plaintiffs' misconduct, the 3 Court must determine whether the amount of fees claimed is reasonable. The award of attorney fees 4 under 35 U.S.C. § 285 must be reasonable. The Supreme Court has said that “[t]he ‘lodestar’ figure has, as its name suggests, become the guiding light of our fee-shifting jurisprudence.” Dague, 505 5 U.S. at 562. There is thus “a ‘strong presumption’ that the lodestar represents the ‘reasonable’ fee.” 6 Id. (citation omitted). Ascertaining what constitutes a “reasonable” fee requires determining “the 7 number of hours reasonably expended on the litigation multiplied by a reasonable hourly rate.” Del. 8 Valley Citizens' Council, 478 U.S. at 564. “This calculation provides an objective basis on which to 9 make an initial estimate of the value of a lawyer's services.” Id. (citing Hensley, 461 U.S. at 433). 10 Supreme Court “case law construing what is a ‘reasonable’ fee applies uniformly to all” federal fee 11 shifting statutes that permit the award of reasonable fees. Dague, 505 U.S. at 562. 1. Reasonable Hourly Rate 12 Reasonable hourly rates for determining the lodestar figure are the “prevailing market rates 13 in the relevant community.” Blum, 465 U.S. at 895; Avera v. Sec'y of Health & Human Servs., 515 14 F.3d 1343, 1349 (Fed. Cir. 2008) (holding that “to determine an award of attorneys' fees, a court in 15 general should use the forum rate in the lodestar calculation”). In establishing the reasonable hourly 16 rate, the Court may take into account, among other factors, “(1) the novelty and complexity of the 17 issues, (2) the special skill and experience of counsel, (3) the quality of representation, and (4) the results obtained.” Cabrales v. Cnty. of Los Angeles, 864 F.2d 1454, 1464 (9th Cir. 1988) (internal 18 marks and citation omitted). 19 Amazon’s fee request is based upon the following effective rates of Fenwick counsel: 20 $905.95 for partner J. David Hadden; $748.60 for partner Sania Shamilov; $699.82 for partner 21 Melanie Mayer; $649.27 for partner Todd Gregorian; $648.27 for associate Philip Hack; $625.92 22 for associate Ravi Ranganath; $659.85 for associate Allen Wang; $577.55 for associate Elizabeth 23 Hagan; $618.28 for associate Shannon Turner; $406.85 for associate Chieh Tung; $430.06 for 24 associate Crystal Nwaneri; $370.20 for associate TJ Fox; $282.20 for associate Kwan Chan; $282.20 1 Lawrence Gallwas. Gregorian Decl. at 5-6. 2 “In intellectual property cases, federal courts routinely rely on the American Intellectual 3 Property Law Association (“AIPLA”) economic survey results published every other year.” Int'l 4 Intellectual Mgmt. Corp. v. Lee Yunn Enters., 2009 WL 9137315, at *3 (citing Mathis v. Spears, 857 F.2d 749, 754 (Fed. Cir. 1988)); see also Phigenix, Inc. v. Genentech Inc., 2019 WL 2579260, 5 at *11 (N.D. Cal. June 24, 2019) (relying on AIPLA survey rates). The 2019 AIPLA indicates that 6 the mean 2018 billing rate for partners at private firms in the San Francisco area was $665, the 7 median rate was $650, the rate for the third quartile was $826, and the rate for the 90th percentile 8 was $1,023. Gregorian Decl., Ex. 3 at I-29. Although the survey does not contain data for associate 9 billing rates in the San Francisco area, it does generally detail the average billing rates for a partner- 10 track attorneys. See Gregorian Decl., Ex. 3 at I-42. For example, it notes that the mean 2018 billing 11 rate was $309 for associates with fewer than five years of IP Law experience, $406 for associates with five to six years of experience, $364 for associates with seven to nine years of experience, $444 12 for associates with ten to fourteen years of experience, and $405 for associates with fifteen to 13 twenty-four years of experience. Id. These figures account for billing rates in areas with far lower 14 costs of living than San Francisco, such as Minneapolis-St. Paul and Philadelphia. Id. These rates 15 are comparable to the ones Amazon requests here. 16 PersonalWeb does not dispute the reasonableness of these rates. Given the reputation of the 17 law firm, the qualifications and responsibilities of these particular attorneys, the complexity of this case, and the results obtained, the Court finds these rates to be “in line with those prevailing in the 18 community for similar services by lawyers of reasonably comparable skill, experience and 19 reputation.” Blum, 465 U.S. at 896 n.11. 20 2. Reasonable Hours Expended 21 In determining a reasonable amount of time spent, the Court should only award fees based 22 on “the number of hours reasonably expended on the litigation” and exclude “hours that are 23 excessive, redundant, or otherwise unnecessary.” Hensley, 461 U.S. at 433–34. “There is no precise 24 rule or formula for making these determinations.” Id. at 436. “The court necessarily has discretion 1 attorneys' fees in patent cases. Bywaters v. United States, 670 F.3d 1221, 1227–28 (Fed. Cir. 2012) 2 (“we have consistently applied our law to claims for attorneys' fees under section 285 of the Patent 3 Act because section 285 relates to an area of substantive law within our exclusive jurisdiction”). 4 However, district courts have “‘considerable discretion’ in determining the amount of reasonable attorney fees under § 285.” Homeland Housewares, 581 F. App'x at 881 (internal citations omitted). 5 The party seeking fees bears the initial burden of establishing the hours expended litigating 6 the case and must provide detailed time records documenting the tasks completed and the amount 7 of time spent. Hensley, 461 U.S. at 434; Welch v. Met. Life Ins. Co., 480 F.3d 942, 945–46 (9th Cir. 8 2007). “Where the documentation of hours is inadequate, the district court may reduce the award 9 accordingly.” Hensley, 461 U.S. at 433. The district court may also exclude any hours that are 10 excessive, redundant, or otherwise unnecessary. Id. at 434. However, the party seeking fees need 11 not provide comprehensive documentation to prevail. Id. at 437 & n.12. There are two means by which a court may determine whether the number of hours is 12 “reasonable.” Gonzalez v. City of Maywood, 729 F.3d 1196, 1202 (9th Cir. 2013). First, a court may 13 conduct either an “hour-by-hour analysis of the fee request” and exclude those hours for which it 14 would be unreasonable to compensate the prevailing party. Id. at 1203 (citing Gates v. Deukmejian, 15 987 F.2d 1392, 1399 (9th Cir. 1992)). Second, “when faced with a massive fee application the 16 district court has the authority to make across-the-board percentage cuts either in the number of 17 hours claimed or in the final lodestar figure as a practical means of [excluding non-compensable hours] from a fee application.” Id. (citation omitted). 18 PersonalWeb argues that “due to unreasonable billing,” a 50% to 75% cut to the fees and 19 costs for case management and fact discovery is warranted. Suppl. Br. at 8-10. It specifically argues 20 that Amazon’s counsel engaged in top-heavy billing and overstaffing on depositions and at 21 meetings. The Court addresses each concern in turn. 22 i. Allegations of Top-Heavy Billing 23 PersonalWeb first argues that “Amazon’s Fact Discovery category shows an unreasonable 24 division of labor between senior- and junior-level attorneys.” Suppl. Br. at 9 (citing Knapton Decl. 1 partners Melanie Mayer and Saina Shamilov by 50% from $223,510.68 to $111,755.34. Id. Amazon 2 rejects PersonalWeb’s characterization and argues that “[p]artner hours account for only 19.6% of 3 this work, over half of which were Ms. Mayer’s, who defended multiple depositions and supervised 4 fact discovery.” Response at 4 (citing Supp. Gregorian Decl., Exhs. 6, 18). It also argues that “PersonalWeb cites no authority suggesting that these hours are unreasonable or excessive; instead, 5 it points to cases where, unlike here, attorneys ‘billed excessive hours for routine and duplicative 6 work.’” Id. (quoting Hernandez v. Taqueria El Grullense, 2014 WL 2611214, at *2-3 (N.D. Cal. 7 June 11, 2014)). 8 Although the Court is sensitive to misallocation of resources by attorneys in the form of top- 9 heavy billing, the Court is satisfied that other reductions imposed in this order and by Amazon itself 10 account for any such billing here. Amazon has already discounted its fees request by 556.3 hours 11 and $189,009.85 of work from 29 timekeepers. Gregorian Decl. ¶ 19. Many of these hours no doubt were hours spent by more junior associates. See Phigenix, Inc. v. Genentech Inc., No. 15-CV-01238- 12 BLF, 2019 WL 2579260, at *16 (N.D. Cal. June 24, 2019). The Court will not cut additional hours 13 from Amazon’s request based on top-heavy billing. 14 ii. Allegations of Overstaffing at Depositions 15 PersonalWeb next argues that Amazon seeks fees “for four partners and more than eight 16 associates to take and defend depositions together.” Suppl. Br. at 9 (citing Knapton Decl. ¶ 44). 17 PersonalWeb believes that “it is excessive to have two (or more) attorneys attend the same deposition where only one attorney was handling the deposition.” Id. (citing Rosenfeld v. U.S. Dep’t 18 of Justice, 903 F. Supp. 2d 859, 879 (N.D. Cal. 2012)). It asks the Court to reduce the fees requested 19 for depositions by 75%, such that Amazon is “entitled to no more than $332,872.29 for Fact 20 Discovery.” Id. (citing Knapton Decl. ¶ 44). Amazon argues that its depositions were reasonably 21 staffed. Response at 4 (citing Supp. Gregorian Decl., Exh. 17). It also argues that PersonalWeb’s 22 contention that two attorneys may not attend a deposition is without merit. Response at 4. Finally, 23 it argues that 24 1 was “training time,” when those attorneys took or defended the depositions in question; and (2) it includes Twitch’s in house 2 counsel and two summer associates who attended depositions but, as PersonalWeb itself acknowledges, were excluded from the fee 3 request for that time.

4 Id. (citing Suppl. Gregorian Decl., Exh. 18 ¶ 17, Knapton Decl., Exh. 6). 5 Upon review of Amazon’s billing records, the Court finds that Fenwick’s fee request includes 6 hours billed by, at most, two attorneys per deposition. See Supp. Gregorian, Exh. 17. The Court finds 7 this staffing choice reasonable given the complexity of the matter, and PersonalWeb does not cite 8 any caselaw to suggest otherwise. See Oberfelder v. City of Petaluma, 2002 WL 472308, at *7 (N.D. 9 Cal. Jan. 29, 2002) (“the attendance of more than two attorneys is not per se duplicative”); see also 10 Lopez v. S.F. Unified Sch. Dist., 385 F. Supp. 2d 981, 993-994 (N.D. Cal. 2005) (refusing to reduce 11 fees for multiple attorneys present at a deposition given size and complexity of the case). The Court 12 declines to exclude hours on this basis. 13 iii. Allegations of Numerous Attorneys at the Same Meeting 14 PersonalWeb challenges Amazon’s request for “$1,441,880.00 for 1,860.3 hours spent on 15 internal meetings, notes and calls” because each attorney on Amazon’s team billed for his or her 16 attendance at conferences. Suppl. Br. at 9-10 (citing Knapton Decl. ¶ 38). PersonalWeb argues that “good billing judgment” counsels that Amazon’s counsel should not bill for every attorney present 17 on calls and meetings. Id. at 10. In support of this contention, they cite to cases where courts reduced 18 fee requests by 20-25%. See, e.g., Our Children’s Earth Found. v. U.S. Envtl. Prot. Agency, No. 13- 19 CV-02857-JSW, 2016 WL 1165214, at *9 (N.D. Cal. Mar. 25, 2016) (reducing requested fees by 20 25% for internal conferences); S. Yuba River Citizens League & Friends of River v. Nat’l Marine 21 Fisheries Serv., No. CIV. S-06-2845-LKK, 2012 WL 1038131, at *5 (E.D. Cal. Mar. 27, 2012), 22 aff’d 581 F. App’x 693 (9th Cir. 2014) (reducing requested fees by 20% for internal conferences). 23 PersonalWeb, nonetheless, requests a 75% reduction of Amazon’s case management fees. Suppl. Br. at 10. Amazon argues that, due to the complex nature of this case, these meetings were necessary 24 | from these meetings. /d. (citing Supp. Gregorian Decl. §] 4). Finally, it notes that caselaw cited by 2 || PersonalWeb did not involve complex multidistrict litigation. Jd. 3 The Court finds PersonalWeb’s request for a 75% reduction of fees borders on ridiculous. 4 As Amazon correctly recognizes, this case is a complex patent MDL that requires significant 5 coordination. And although the Court is often skeptical of the value of incessant meetings involving ‘ multiple attorneys, PersonalWeb’s expert has done nothing more than provide stock criticism of the meeting and conference hours without identifying any specific irregularities. See Knapton Decl. □□ ’ 38-39. Knapton’s 75% reduction recommendation is supported solely by his belief that “some sort 8 of adjustment for reasonableness is necessary” and is untethered to any particular meeting or 9 activity. 10 The Court has reviewed the billing records and concludes that the combination of Amazon’s decision to exclude billing requests by 29 timekeepers and the Court’s 25% reduction for case D management fees amply addresses any over-billing in this category and thus no further deduction is

necessary. TK oe A In sum, the lodestar calculated in Section III.B of this Order is reasonable. 15 |l iv. ORDER 16 For the foregoing reasons, Amazon’s motion for reasonable attorneys’ fees is GRANTED 17 IN PART AND DENIED IN PART. The Court finds that Amazon is entitled to $4,615,242.28 in 18 fees for 9,263.43 hours of work and $203,300.10 in non-taxable costs.

19 IT IS SO ORDERED.

20 || Dated: March 2, 2021 kom hh hammer 21 BETHLABSON FREEMAN □□□ United States District Judge 22 23 24 25