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`Case 5:18-md-02834-BLF Document 654 Filed 04/02/21 Page 1 of 6
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`MICHAEL A. SHERMAN (SBN 94783)
`masherman@stubbsalderton.com
`JEFFREY F. GERSH (SBN 87124)
`jgersh@stubbsalderton.com
`WESLEY W. MONROE (SBN 149211)
`wmonroe@stubbsalderton.com
`VIVIANA BOERO HEDRICK (SBN 239359)
`vhedrick@stubbsalderton.com
`STUBBS ALDERTON MARKILES, LLP
`15260 Ventura Boulevard, 20TH Floor
`Sherman Oaks, CA 91403
`Telephone:
`(818) 444-4500
`Facsimile:
`(818) 444-4520
`
`Attorneys for PersonalWeb Technologies, LLC
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`IN RE PERSONAL WEB TECHNOLOGIES,
`CASE NO.: 5:18-md-02834-BLF
`LLC, ET AL., PATENT LITIGATION
`
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`
`Defendants.
`
`PERSONALWEB TECHNOLOGIES, LLC,
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`Plaintiffs,
`v.
`TWITCH INTERACTIVE, INC.,
`
`Defendant.
`
`Plaintiffs,
`
`Case No.: 5:18-cv-00767-BLF
`Case No.: 5:18-cv-05619-BLF
`PERSONALWEB TECHNOLOGIES,
`LLC’S BRIEF IN RESPONSE TO
`GREGORIAN DECLARATION [DKT.
`649]
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`PERSONALWEB’S BRIEF IN RESPONSE TO GREGORIAN DECL.
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`CASE NOS: 5:18-MD-02834-BLF; 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 654 Filed 04/02/21 Page 2 of 6
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`I.
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`INTRODUCTION
`Pursuant to the Court’s order (Dkt. 650), PersonalWeb Technologies, LLC (“PersonalWeb”)
`files this brief in response to Amazon.com, Inc., Amazon Web Services, Inc., and Twitch Interactive,
`Inc.’s (collectively, “Amazon”) supplemental fee request seeking a total of $694,147.86 in additional
`attorneys’ fees for work between February 2020 and February 2021, and $11,120.97 in costs (Dkt.
`649.) Of the total fees requested, Amazon seeks $106,291.43 in fees for 169.7 hours billed for the
`appeal on claim construction and Amazon’s motions for summary judgment of non-infringement,
`$4,460.42 for 7.7 hours related to the motions for summary judgment for non-infringement, and
`$63,978.92 for 83.1 hours billed for case management.
`PersonalWeb respectfully requests that the Court deny the requested $106,291.43 in fees
`relating to the appeal on claim construction and non-infringement as this appeal was not the “but for”
`result of the basis for the Court’s exceptionality finding. Alternatively, PersonalWeb requests that the
`Court postpone its ruling on this portion of the fee request because the Federal Circuit has not yet ruled
`on this pending appeal. PersonalWeb also requests that this Court reduce the requested $4,460.42 in
`fees for work billed on the summary judgment motions for non-infringement by 25% to $3,345.31,
`and reduce the requested $63,978.92 in case management fees by 25% to $47,984.19. These requested
`deductions are consistent with the Court’s ruling granting in part and denying in part Amazon’s motion
`for attorneys’ fees and costs. Therein, the Court recognized that fees associated with the new grounds
`for non-infringement did not form a basis for the exceptionality finding (Dkt. 648 at 21) and that the
`sought-after case management fees “require[d] a haircut” of 25%. (Dkt. 648 at 12.) The requested 25%
`reduction is consistent with the 25% reduction to the lodestar made by this Court to these same
`categories of fees incurred prior to February 2020. (Id. at 12:6-7, 11-12.)
`II. THIS COURT HELD THAT FEES NOT DIRECTLY TRACEABLE TO WHAT THE
`COURT HAS CHARACTERIZED AS PERSONALWEB’S MISCONDUCT MUST BE
`EXCLUDED FROM ANY ATTORNEYS’ FEE AWARD TO AMAZON
`In its order granting in part and denying in part Amazon’s Motion for Attorneys’ Fees and
`Costs (Dkt. 648), the Court found “that the ‘but for’ standard articulated by the Court in Goodyear
`applies, as PersonalWeb’s misconduct did not so infect the case that a full award, without any
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`PERSONALWEB’S BRIEF IN RESPONSE TO GREGORIAN DECL.
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`CASE NOS: 5:18-MD-02834-BLF; 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 654 Filed 04/02/21 Page 3 of 6
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`discernment of a causal connection between the improper acts and the fees accrued, is warranted.”
`(Dkt. 648 at 7); Goodyear Tire & Rubber Co. v. Haeger, 137 S. Ct. 1178 (2017). In so holding, the
`Court concluded that PersonalWeb’s “conduct did not rise to ‘rampant misconduct’ affecting ‘every
`stage of the litigation.’” (Dkt. 648 at 7 quoting In re Rembrandt Techs. LP Patent Litig., 899 F.3d
`1254, 1279 (Fed. Cir. 2018).) The Court ruled that in applying this standard, it would “exclude
`requested fees not directly traceable to PersonalWeb’s egregious conduct, but [would] nonetheless
`continue to assess the totality of the circumstances as directed under Octane.” (Dkt. 648 at 7.)
`Based on this standard applied by this Court, it should deny Amazon’s requested attorneys’
`fees relating to the appeal on claim construction and non-infringement as the record does not support
`a finding that Amazon incurred these fees in response to egregious conduct by PersonalWeb, or
`postpone its determination on these fees until the Federal Circuit rules on this appeal. Likewise, the
`Court should reduce the fees relating to Amazon’s motions for summary judgment for non-
`infringement by 25% because Amazon is not entitled to fees expended to argue its independent
`grounds for non-infringement which did not support the Court’s finding of exceptionality. A 25%
`reduction to the requested case management fees is also fair and warranted because the misconduct
`found by the Court did not so taint the case that “a full award, without any discernment of a causal
`connection between the improper acts and the fees accrued, is warranted.” (Dkt. 648 at 7.)
`1. Federal Circuit Appeal on Claim Construction and Non-Infringement (169.7 hours -
`$106,291.43)
`This appeal stems from this Court’s February 3, 2020 order granting in part and denying in
`part Amazon’s summary judgment motions of non-infringement (Dkt. 578) and the Court’s claim
`construction order. In its order granting fees, the Court held that the “but for” standard articulated by
`Goodyear applied here, “as PersonalWeb’s misconduct did not so infect the case that a full award, without
`
`any discernment of a causal connection between the improper acts and the fees accrued, is warranted.”
`
`(Dkt. 648 at 7:4-6.) Indeed, the Court noted that “[t]aken separately, the fragments of the story might not
`
`make PersonalWeb’s conduct look exceptional.” (Id. at 7:9-11 quoting kt. 636 (Order Awarding Fees) at
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`32-33. “Thus, although the Court concluded that some of PersonalWeb’s infringement claims were
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`CASE NOS: 5:18-MD-02834-BLF; 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`‘objectively baseless and not reasonable when brought,’ Order Awarding Fees 33, its conduct did not rise
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`PERSONALWEB’S BRIEF IN RESPONSE TO GREGORIAN DECL.
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`Case 5:18-md-02834-BLF Document 654 Filed 04/02/21 Page 4 of 6
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`to “rampant misconduct” affecting “every stage of the litigation.” Rembrandt, 889 F.3d at 1279.” (Dkt.
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`CASE NOS: 5:18-MD-02834-BLF; 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`648, at 7:12-16.) Therefore, the Court should deny these fees as the basis for the Court’s finding of
`exceptionality was not the “but for” cause of this appeal. The Court recognized Amazon’s new
`grounds of non-infringement resulted in “the prolongation of the case at that stage” not resting “solely
`on PersonalWeb’s shoulders.” (Dkt. 636 at 22.) Further, the appeal is not directed to, for example,
`PersonalWeb’s expert reports, motion to amend its infringement contentions, or any change of
`positions by PersonalWeb. Alternatively, the Court should postpone its ruling on this set of fees until
`after the appeal is concluded. The Federal Circuit has not issued its ruling on this appeal, which
`remains pending. (Case No. 20-1566, Dkt. 64 (Parties submitted oral argument to Federal Circuit panel
`on March 1, 2021).) This is consistent with the approach this Court has previously taken regarding
`appellate fees sought for appeals not yet finalized. See Phigenix, Inc. v. Genentech Inc., No. 15-CV-
`01238-BLF, 2019 WL 2579260, at *18 (declining to award appellate fees because it was possible
`Phigenix would win on appeal, abrogating Genentech’s status as the prevailing party).
`Once the Federal Circuit rules on this appeal and if the issue of attorneys’ fees is not moot as
`a result of the Federal Circuit’s ruling, PersonalWeb requests that it be given an opportunity to briefly
`address this portion of the attorneys’ fees at that time. This is necessary because PersonalWeb is
`appealing all grounds underlying this Court’s finding of non-infringement, including the new grounds
`of non-infringement raised by Amazon in its motions for summary judgment. Even if Amazon were
`to prevail on appeal, it should not be granted any fees associated with its new grounds of non-
`infringement as this Court recognized that Amazon “sought a finding of non-infringement as to all the
`grounds raised in their motions” so that “the prolongation of the case at that stage did not rest solely
`on PersonalWeb’s shoulders.” (Dkt. 636, Order re Motion for Attorneys’ Fees at 22.).)
`2. Summary Judgment for Non-Infringement (7.7 hours: $4,460.42)
`Similarly, Amazon should not be granted its fees associated with the new grounds of non-
`infringement raised in its summary judgment motions, for the same reason as set for above, i.e. that
`the Court recognized Amazon’s new grounds of non-infringement resulted in “the prolongation of the
`case at that stage” not resting “solely on PersonalWeb’s shoulders.” (Dkt. 636 at 22.) PersonalWeb
`requests that the Court apply the same 25% reduction to this portion of attorneys’ fees requested as it
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`PERSONALWEB’S BRIEF IN RESPONSE TO GREGORIAN DECL.
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`Case 5:18-md-02834-BLF Document 654 Filed 04/02/21 Page 5 of 6
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`CASE NOS: 5:18-MD-02834-BLF; 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`previously did in its order granting in part and denying in part Amazon’s motion for attorneys’ fees,
`thereby reducing this category of fees by $1,115.11 to no more than $3,345.31. (Dkt. 648 at 21.)
`3. Case Management (83.1 hours: $63,978.92)
`The Court previously reduced Amazon’s requested case management fees by 25% and should
`at a minimum do so again here. (Dkt. 648 at 12:6-7, 11-12 (“Nonetheless, Amazon’s request requires
`a haircut....the Court will reduce case management fees by 25% to reflect a fair reduction related to
`otherwise necessary activities.”) While a certain amount of strategy discussion is admittedly necessary
`relating to the briefing schedule for the attorneys’ fees motion and entry of judgment, a large portion
`of Amazon’s 83.1 hours of “case management fees” includes tasks that are not attributable to the
`conduct the Court found exceptional. See e.g. Dkt. 649-1 at 16 (drafting “internal case updates”), 17
`(drafting an “engagement letter and [unspecified] MDL filings for new customers”), 86 (“Update
`Amazon’s internal case tracker per [redacted] request”), and 90 (“respond to [an unspecified] request
`from D. Hadden”). Moreover, Amazon does not specifically identify or link its time entries to the
`broad catchall category of “case management” making it impossible to ascertain if Amazon is seeking
`fees for duplication of efforts by various time keepers, and/or if Amazon labeled the same task as both
`“case management” and summary judgment of non-infringement or attorney fee motion work.
`PersonalWeb respectfully requests that the Court reduce this set of attorneys’ fees “by 25% to reflect
`a fair reduction” as it previously did in its order granting in part and denying in part Amazon’s motion
`for attorneys’ fees, thereby reducing this category of fees by $15,994.73 to no more than $47,984.19
`(Dkt. 648 at 12.)
`III. CONCLUSION
`Based on the foregoing, PersonalWeb respectfully requests the Court deny the fees relating to
`the appeal on claim construction and non-infringement (169.7 hours at $106,291.43). Alternatively,
`PersonalWeb requests the Court postpone its ruling on the fees relating to the appeal on claim
`construction and non-infringement under the appeal has concluded and the Federal Circuit has issued
`its opinion. PersonalWeb further requests the Court reduce the fees attributed to Amazon’s summary
`judgment motions on non-infringement by 25% to a total of $3,345.31(instead of $4,460.42) consistent
`with this same lodestar reduction applied by the Court in its order granting in part and denying in part
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`PERSONALWEB’S BRIEF IN RESPONSE TO GREGORIAN DECL.
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`Case 5:18-md-02834-BLF Document 654 Filed 04/02/21 Page 6 of 6
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`Amazon’s motion for attorneys’ fees. Lastly, PersonalWeb requests the Court reduce the sought case
`management fees by 25% to a total of $47,984.19 (instead of $63,978.92) consistent with this same
`fair lodestar reduction applied by the Court in its order on Amazon’s motion for attorneys’ fees.
`
`Dated: April 2, 2021
`
` STUBBS, ALDERTON & MARKILES, LLP
`
`By: /s/ Michael A. Sherman
`Michael A. Sherman
`
`Attorneys for PERSONALWEB
`TECHNOLOGIES, LLC
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`PERSONALWEB’S BRIEF IN RESPONSE TO GREGORIAN DECL.
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`5
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`CASE NOS: 5:18-MD-02834-BLF; 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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