Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 1 of 50
`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 1 of 50
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`EXHIBIT 9
`EXHIBIT 9
`
`

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`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 2 of 50
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`ATTORNEY OR PARTY WITHOUT ATTORNEY (Name and Address):
`TODD R. GREGORIAN (CSB NO. 236096)
`CHRISTOPHER S. LAVIN (CSB NO. 301702)
`FENWICK & WEST LLP
`555 CALIFORNIA STREET, 12TH FLOOR
`SAN FRANCISCO, CA 94104
`
`TELEPHONE NO.:
`
`(415) 875-2300
`
`FOR COURT USE ONLY
`
`ATTORNEY FOR LIEN CLAIMANT:
`
`AMAZON.COM, INC.; AMAZON WEB SERVICES, INC.;
`TWITCH INTERACTIVE, INC.
`SUPERIOR COURT OF CALIFORNIA, COUNTY OF LOS ANGELES
`6230 SYLMAR AVENUE
`
` NAME OF COURT:
`
`STREET ADDRESS:
`
`MAILING ADDRESS:
`
`CITY AND ZIP CODE:
`
`BRANCH NAME:
`
`VAN NUYS, CA 91401
`VAN NUYS COURTHOUSE EAST
`
`PLAINTIFF:
`
`EUROPLAY CAPITAL ADVISORS, LLC, ET AL.
`
`DEFENDANT:
`
`PERSONALWEB TECHNOLOGIES, LLC
`AMENDED
`NOTICE OF LIEN
`(Attachment—Enforcement of Judgment)
`
`CASE NUMBER:
`21VECV00575
`
`ALL PARTIES IN THIS ACTION ARE NOTIFIED THAT
`1. A lien is created by this notice under
`a.
`Article 3 (commencing with section 491.410) of Chapter 11 of Title 6.5 of Part 2 of the Code of Civil Procedure.
`Article 5 (commencing with section 708.410) of Chapter 6 of Title 9 of Part 2 of the Code of Civil Procedure.
`b.
`2. The lien is based on a
`a.
`right to attach order and an order permitting the creation of a lien (copies attached).
`b.
`money judgment.
`3. The right to attach order or the money judgment is entered in the following action:
`Title of court (specify):
`a.
`UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`b.
`c.
`
`d.
`e.
`
`Name of case (specify):
`IN RE: PERSONALWEB TECHNOLOGIES, LLC ET AL. PATENT LITIGATION
`5:18-MD-02834-BFL
`Number of case (specify):
`(specify):
`OCTOBER 28, 2020
`Date of entry of judgment
`Dates of renewal of judgment (specify):
`MARCH 2, 2021; APRIL 19, 2021; JULY 27, 2021
`
`4. The name and address of the judgment creditor or person who obtained the right to attach order are (specify):
`AMAZON.COM, INC.; AMAZON WEB SERVICES, INC.; TWITCH INTERACTIVE, INC.
`5. The name and last known address of the judgment debtor or person whose property is subject to the right to attach order are
`(specify):
`PERSONALWEB TECHNOLOGIES, LLC, 112 EAST LINE STREET, SUITE 204, TYLER, TX 75702
`
`6.
`
`The amount required to satisfy the judgment creditor's money judgment or to secure the amount to be secured by the attachment
`at the time this notice of lien is filed is
`$
`5,404,804.56
`7. The lien created by this notice attaches to any cause of action of the person named in item 5 that is the subject of this action or
`proceeding and to that person's rights to money or property under any judgment subsequently procured in this action or proceeding.
`8. No compromise, dismissal, settlement, or satisfaction of this action or proceeding or any of the rights of the person named in item
`5 to money or property under any judgment procured in this action or proceeding may be entered into by or on behalf of that person,
`and that person may not enforce any rights to money or property under any judgment procured in this action or proceeding by a writ
`or otherwise, unless one of the following requirements is satisfied:
`a.
`the prior approval by order of the court in this action or proceeding has been obtained;
`b.
`the written consent of the person named in item 4 has been obtained or that person has released the lien; or
`c.
`the money judgment of the person named in item 4 has been satisfied.
`NOTICE The person named in item 5 may claim an exemption for all or any portion of the money or property within
`30 days after receiving notice of the creation of the lien. The exemption is waived if it is not claimed in time.
`Date:
`12/7/2021
`
`TODD R. GREGORIAN
`(TYPE OR PRINT NAME)
`
`Form Approved by the
`Judicial Council of California
`AT-180, EJ-185 [New January 1, 1985]
`
`NOTICE OF LIEN
`(Attachment—Enforcement of Judgment)
`
`/s/ TODD R. GREGORIAN
`
`(SIGNATURE OF LIEN CLAIMANT OR ATTORNEY)
`
`CCP 491.410, 708.410
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 3 of 50
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`
`
`
`TODD R. GREGORIAN (CSB No. 236096)
`tgregorian@fenwick.com
`CHRISTOPHER S. LAVIN (CSB No. 301702)
`clavin@fenwick.com
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone:
`415.875.2300
`Facsimile:
`415.281.1350
`
`Michael J. Baratz (Pro Hac Vice)
`MBaratz@steptoe.com
`Steven Davidson (Pro Hac Vice)
`sdavidson@steptoe.com
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, D.C. 20036
`Telephone:
`202.429.6468
`Facsimile:
`202.261.0557
`
`ATTORNEYS FOR AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., and
`TWITCH INTERACTIVE, INC.
`SUPERIOR COURT OF THE STATE OF CALIFORNIA
`COUNTY OF LOS ANGELES, NORTHWEST DISTRICT (VAN NUYS)
`
`BRILLIANT DIGITAL ENTERTAINMENT,
`INC., a Delaware corporation; EUROPLAY
`CAPITAL ADVISORS, LLC, a Delaware limited
`liability company; CLARIA INNOVATIONS,
`LLC, a Delaware limited liability company; and
`MONTO HOLDINGS PTY LTD, an Australian
`company,
`
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC, a
`Texas limited liability company; and DOES 1
`through 100, Inclusive,
`
`Defendant.
`
`
`Plaintiff,
`
` Case No.: 21VECV00575
`
`PROOF OF SERVICE OF AMENDED
`NOTICE OF LIEN (WITH EXHIBITS A-
`D) OF AMAZON.COM, INC., AMAZON
`WEB SERVICES, INC., AND TWITCH
`INTERACTIVE, INC.
`
`Date Action Filed: April 27, 2021
`
`
`
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`FENWICK & WEST LLP
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`PROOF OF SERVICE OF AMENDED NOTICE OF LIEN
`
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`1
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`Case No.: 21VECV00575
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`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 4 of 50
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`
`
`PROOF OF SERVICE
`The undersigned declares as follows:
`I am a citizen of the United States and employed in Santa Clara County, State of California.
`I am over the age of eighteen years and not a party to the within-entitled action. My business
`address is Fenwick & West LLP, 555 California Street, San Francisco, CA 94104. On the date set
`forth below, I served a copy of the following document: AMENDED NOTICE OF LIEN (WITH
`EXHIBITS A-D) OF AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND TWITCH
`INTERACTIVE, INC. on the interested parties in the subject action by placing a true copy thereof as
`indicated below, addressed as follows:
`
`
`Michael Gerard Fletcher
`Craig A. Welin
`Bruce David Poltrock
`Frandzel Robins Bloom & Csato, L.C.
`1000 Wilshire Boulevard, 19th Floor
`Los Angeles, CA 90017-2427
`mfletcher@frandzel.com
`cwelin@frandzel.com
`bpoltrock@frandzel.com
`
`Attorneys for Plaintiffs
`
`Ronald Richards
`Law Offices of Ronald Richards & Associates, A P.C.
`P.O. Box 11480
`Beverly Hills, CA 90213
`ron@ronaldrichards.com
`
`Attorneys for Defendant
`
`
`
`
`Alan M. Mirman
`Michael E. Bubman
`Mirman, Bubman & Nahmias, LLP
`21860 Burbank Blvd., Suite 360
`Woodland Hills, CA 91367
`amirman@mbnlawyers.com
`mbubman@mbnlawyers.com
`
`Attorneys for Receiver
`
`
`
`
`PROOF OF SERVICE OF AMENDED NOTICE OF LIEN
`
`2
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`Case No.: 21VECV00575
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`FENWICK & WEST LLP
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`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 5 of 50
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`BY FIRST LEGAL ELECTRONIC ONLINE COURT SERVICES: The document was
`sent by electronic service by transmitting a true and correct pdf version via each individuals’
`email addresses(s) through First Legal Electronic Online Court Services.
`
`BY E-MAIL: The document was sent electronically via email at the email address(es)
`indicated on the attached service list, under C.C.P. § 1010.6, C.R.C. Rules 2.251 and 3.751,
`and First Amended General Order – In Re Los Angeles Superior Court – Mandatory
`Electronic Filing For Civil.
`
`BY U.S MAIL [PURSUANT TO C.C.P. § 708.410(c)]: The document was enclosed in a
`sealed envelope or package addressed to the persons at the addresses in the attached service
`list and I placed the envelope for collection and mailing, following our ordinary business
`practices. I am readily familiar with this business’s practice for collecting and processing
`correspondence for mailing. On the same day that correspondence is placed for collection
`and mailing, it is deposited in the ordinary course of business with the United States Postal
`Service, in a sealed envelope with postage fully prepaid.
`
` I
`
` declare under penalty of perjury under the laws of the State of California and the United
`States that the above is true and correct.
`
`Date: December 7, 2021
`
`/s/ Raymond Pelayo
` Raymond Pelayo
`
`
`
`
`PROOF OF SERVICE OF AMENDED NOTICE OF LIEN
`
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`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 6 of 50
`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 6 of 50
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 7 of 50
`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 7 of 50
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`AO 451 (Rev. 12/12} Clerk’s Certification ofa Judgment to be Registered in Another District
`UNITED STATES DISTRICT COURT
`for the
`
`Northern District of California
`
`PersonalWeb Technologies, LLC
`Plaintiff
`Vv.
`
`Amazon.com, Inc.
`Defendant
`
`Civil Action No, 5:18-md-02834-BLF
`
`CLERK’S CERTIFICATION OF A JUDGMENTTO BE REGISTERED IN ANOTHERDISTRICT
`
`I certify that the attached judgment is a copy of a judgmententered by this court on (date)
`
`10/28/2020
`
`:
`
`I also certify that, as appears from this court's records, no motion listed in Fed. R. App. P. 4(a)(4)(A)is pending
`before this court, the time for appeal has expired, and no appeal has beenfiled or, if one was filed, it is no longer
`pending.
`
`Date:__12/7/2021
`Say,
`CLERK OF COURT
`\\ Mark B. Busby
`, i) NumiFiBana
`
`
`
`Signature of Clerk or Deputy Clerk
`
`

`

`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 8 of 50
`ase 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 8 of 50
`Case 5:18-md-02834-BLF Document 643 Filed 10/28/20 Page 1 of 2
`
`UNITED STATES DISTRICT COURT
`
`NORTHERNDISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`IN RE: PERSONALWEB
`TECHNOLOGIES, LLC ET AL., PATENT
`
`LITIGATION
`
`
`
`NorthernDistrictofCalifornia
`
`Case Nos.
`18-md-02834-BLF
`
`18-cv-00149-BLF,
`18-cv-00150-BLF, 18-cv-00154-BLF
`18-cv-00155-BLF, 18-cv-00156-BLF
`18-cv-00157-BLF, 18-cv-00159-BLF
`18-cv-00160-BLF, 18-cv-00161-BLF
`18-cv-00162-BLF, 18-cv-00163-BLF
`18-cv-00165-BLF, 18-cv-00166-BLF
`18-cv-00169-BLF, 18-cv-00170-BLF
`18-cv-00171-BLF, 18-cv-00173-BLF
`18-cv-00175-BLF, 18-cv-00176-BLF
`18-cv-00177-BLF, 18-cv-00178-BLF
`18-cv-00183-BLF, 18-cv-00196-BLF
`18-cv-00409-BLF, 18-cv-00767-BLF
`18-cv-03452-BLF, 18-cv-03453-BLF
`18-cv-03455-BLF, 18-cv-03457-BLF
`18-cv-03458-BLF, 18-cv-03459-BLF
`18-cv-03461-BLF, 18-cv-03462-BLF
`18-cv-03463-BLF, 18-cv-03571-BLF
`18-cv-03572-BLF, 18-cv-03573-BLF
`18-cv-03578-BLF, |8-cv-03579-BLF
`18-cv-03577-BLF, 18-cv-03580-BLF
`18-cv-03581-BLF, 18-cv-03582-BLF
`18-cv-03583-BLF, 18-cv-03584-BLF
`18-cv-03997-BLF, 18-cv-03998-BLF
`18-cv-04037-BLF, 1|8-cv-02140-BLF
`18-cv-04625-BLF, 18-cv-04626-BLF
`18-cv-04627-BLF, 18-cv-04628-BLF
`18-cv-04624-BLF, 18-cv-05195-BLF
`18-cv-05198-BLF, 18-cv-05199-BLF
`18-cv-05201-BLF, 18-cv-05202-BLF
`18-cv-05203-BLF, 18-cv-05204-BLF
`18-cv-05205-BLF, 18-cv-05206-BLF
`18-cv-05200-BLF, 18-cv-05272-BLF
`18-cv-05373-BLF, 1 8-cv-05436-BLF
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

`

`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 9 of 50
`ase 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 9 of 50
`Case 5:18-md-02834-BLF Document 643 Filed 10/28/20 Page 2 of 2
`
`18-cv-05966-BLF, 18-cv-05967-BLF
`18-cv-05968-BLF, 18-cv-05595-BLF,
`18-cv-05596-BLF, 18-cv-05611-BLF,
`18-cv-05600-BLF, 18-cv-05619-BLF
`18-cv-05624-BLF, 18-cv-05625-BLF
`18-cv-06042-BLF, 18-cv-06043-BLF
`18-cv-06045-BLF, 18-cv-06614-BLF,
`18-cv-06615-BLF
`
`JUDGMENTAS TO THE MDL CASE
`AND ALL MEMBER CASES NOTED
`IN THE JUDGMENT
`
`Pursuant to the Court’s order entered on March 13, 2019 in the Multidistrict Litigation,
`
`Case No. 18-md-02834-BLF granting in part and denying in part Amazon.com,Inc.’s and
`
`Amazon Web Services, Inc.’s motion for summary judgment on thebasis thatall infringement
`
`claims made against Amazon’s Simple Storage Service (“‘S3’’) were barred by claim preclusion
`
`and the Kessler doctrine (Dkt. 381), and the Court’s order entered on February 3, 2020 granting in
`
`part and denying in part Amazon.com,Inc.’s and Amazon WebServices, Inc.’s motion for
`
`summary judgmentof noninfringement, and granting Twitch Interactive, Inc.’s motion for
`
`summary judgmentof noninfringement (Dkt. 578), IT Is ORDERED AND ADJUDGEDthat
`
`judgmentas to the MDLcase and all membercases noted in this Judgment be entered in favor of
`
`defendant(s) namedin this action and against Plaintiff PersonalWeb Technologies, LLC and Level
`
`
`
`NorthernDistrictofCalifornia
`
`3 Communications, LLC.
`
`Dated: October28,2020
`
`fom ys hao en
`
`
`
`BETH LABSON FREEMAN
`United States District Judge
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

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`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 10 of 50
`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 10 of 50
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`EXHIBIT B
`EXHIBIT B
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`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 11 of 50
`Cease Bisaree62834-BLFOddooumente4e0 Aildeh034022242 Reggelidf B060
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`IN RE: PERSONALWEB
`TECHNOLOGIES, LLC ET AL., PATENT
`LITIGATION
`
`AMAZON.COM,INC., and AMAZON
`WEB SERVICES, INC.,
`
`ORDER GRANTING IN PART AND
`DENYING IN PART MOTION FOR
`ATTORNEYS’ FEES AND COSTS
`
`Plaintiffs
`
`Vv.
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS,LLC,
`
`[Re: ECF 636]
`
`Case No.: 5:18-cv-00767-BLF
`Re: ECF 184
`[Re:
`
`|
`
`Defendants,
`
`Case No.: 5:18-cv-05619-BLF
`
`Case No. 18-md-02834-BLF
`
`
`
`
`
`
`
`
`
`
`
`PERSONALWEB TECHNOLOGIES, LLC,
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`[Re: ECF 88]
`
`Plaintiffs,
`
`v.
`
`TWITCH INTERACTIVE,INC.,
`
`Defendant.
`
`| hereby certify that the annexed
`instrumentis a true and correct copy
`of the originalonfile in myoffice.
`incegh
`Clerk, U.S. District Court
`Northern District of California
`
`by:JunieSarrro
`Deputy Clerk
`Date:
`12/7/2021
`
`Having found this case exceptional under 35 U.S.C. § 285, the Court must now determine
`
`the amount of reasonable attorneys’ fees and costs owed at the end of this multidistrict litigation
`
`(“MDL”) for alleged patent infringement that ensnared Amazon and over 80 ofits customers. In
`
`February 2020, Defendants Amazon.com,Inc., Amazon WebServices, Inc., and Twitch Interactive,
`
`Inc.
`
`(collectively “Amazon”) prevailed against Plaintiff PersonalWeb Technologies, LLC
`
`(“PersonalWeb”) at summary judgment and judgment wasentered in favorof all Defendants. ECF
`
`381; ECF 578; ECF 643. After an August 6, 2020 motion hearing, the Court found the case
`
`exceptional and awarded Amazon attorney fees and costs but, upon request of PersonalWeb,
`
`—_—
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`do
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`Ww
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`& G
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`N
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`UnitedStatesDistrictCourt
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`ase 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 12 of 50
`Case 5:18-md-02834-BLF Document 648 Filed 03/02/21 Page 2 of 30
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`reserved the question of the reasonableness of Amazon’s requested fees. H’rg, ECF 625: Order
`
`Awarding Fees, ECF 636 at 34.
`
`In its prior motion, Amazon requested attorney fees totaling
`
`$6,100,000.00 and non-taxable expenses of $323,668.06. Mot.
`
`for Attorney Fees and Costs
`
`(“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.”) 4 21,
`
`ECF 592-1. Now, PersonalWeb challenges the reasonableness of Amazon’s request. Suppl. Br.,
`
`ECF644. For the reasons that follow, the Motion is GRANTED IN PART and DENIEDIN PART.!
`
`I.
`
`BACKGROUND
`
`Separate from this MDL,
`
`in December 2011, PersonalWeb commenced a patent
`
`infringement suit
`
`in Texas federal court against Amazon and its customer Dropbox,
`
`Inc. See
`
`PersonalWeb Techs., LLC v. Amazon.com Inc., No. 6:11-cv-00658 (E.D. Tex. Filed Dec. 8, 2011)
`
`(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
`
`resurrected its claims, filing over 85 lawsuits across the country against various Amazon customers
`
`for their use of Amazon’s Simple Storage Service (“S3”) and alleging infringement of the same
`
`patents implicated in the Texas Action. See ECF 295; ECF 1, Schedule A. Amazon quickly
`
`intervened to defend its customers, and counterclaims from both parties ensued. Amazon.com, Inc.
`
`et al v. Personal Web Technologies, LLC et al, 18-5:18-cv-00767-BLF(N.D. Cal. Filed February 5,
`
`2018) (the “DJ Action”), ECF 62, 71.
`
`In June 2018, the cases were consolidated into the current MDL proceeding and assigned to
`
`this Court. Compl., ECF 1. With Plaintiff's approval, the Court selected the Twitch case as the
`
`representative customer action to proceed and stayed all other customer cases pending resolution.
`
`ECF 313. In two phases, the Court granted Amazon’s motions for summary judgmentas to all
`
`claims. ECF 381; ECF 578.
`
`On March 20, 2020, Amazon movedfor attorney fees and costs. Mot. On October 6, 2020,
`
`this Court granted the Motion and concluded that the case was exceptional
`
`' & detailed breakdown of the Court’s ruling can be found in Appendix A.
`2
`
`
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`NorthernDistrictofCalifornia
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`Case 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 13 of 50
`ase 5:18-md-02834-BLF Document 742-10 Filed 04/22/22 Page 13 of 50
`Case 5:18-md-02834-BLF Document 648 Filed 03/02/21 Page 3 of 30
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`because (1) PersonalWeb’s infringement claims related to Amazon
`S3 were objectively baseless and not reasonable when brought
`because they were barred due to a final judgment entered in the
`Texas Action; (2) PersonalWeb frequently changedits infringement
`positions to overcome the hurdle of the day;
`(3) PersonalWeb
`unnecessarily prolonged this litigation after claim construction
`foreclosedits infringement theories; (4) PersonalWeb’s conduct and
`positions regarding the customer cases were unreasonable; and (5)
`PersonalWeb submitted declarations that it should have known were
`not accurate.
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`Order Awarding Fees at 33. Because PersonalWeb failed to object to the reasonableness of
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`Amazon’s requested fees in its opposition brief, the Court ordered supplemental briefing. Jd.
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`PersonalWebfiled its Supplemental Brief on October 30, 2020. Suppl. Br., ECF 644. Amazonfiled
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`its Response on November 16, 2020. Response, ECF 646.
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`Il.
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`LEGAL STANDARD
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`A. Exceptional Case Status
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`Thefirst issue to resolve is the proper methodology of calculating the amountof attorneys’
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`fees to which Amazonisentitled. In patent infringementactions, “[t]he court in exceptional cases
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`may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285, see Octane Fitness,
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`LLC v. ICON Health & Fitness,
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`Inc., 572 U.S. 545, 553 (2014). Supreme Court precedent
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`determining the reasonableness of fees applies uniformly to all
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`federal fee-shifting statutes
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`permitting the award of reasonable fees, such as § 285. See City of Burlington v. Dague, 505 U.S.
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`557, 562 (1992). Furthermore, courts “apply Federal Circuit law to the issue of attorney fees in
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`patent infringement cases.” Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1299 (Fed.Cir.
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`2004). District courts have “‘considerable discretion’ in determining the amount of reasonable
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`attorney fees under § 285” because of “the district court’s superior understanding ofthe litigation
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`and the desirability of avoiding frequent appellate review of what essentially are factual matters.”
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`Homeland Housewares, LLC v. Sorensen Research, 581 Fed. Appx. 887, 881 (Fed. Cir. 2014)
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`(quoting Bywaters v. U.S., 670 F.3d 1221, 1228 (Fed. Cir. 2012)) (internal quotation marks omitted);
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`see also Hensley v. Eckerhart, 461 U.S. 424, 437 (1983).
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`The Court has already determined that this case is exceptional, meriting an award of
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`attorneys’ fees. See Order Awarding Fees; see also Octane, 572 U.S. at 555 (“a district court may
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`award fees in the rare case in which a party's unreasonable conduct—while not necessarily
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`independently sanctionable—is nonetheless so ‘exceptional’ as to justify an awardof fees.”). The
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`parties now dispute the implication of this finding. PersonalWeb urges this Court to apply a “but
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`for” standard that awards fees accrued litigating frivolous conduct and excludes fees accrued
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`litigating non-frivolous conduct. See Suppl. Br. at 1-2. Amazon counters that awardingfees related
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`to discrete acts oflitigation misconductis the incorrect standard to apply. Response at 1. This Court
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`agrees with PersonalWebthatit should apply the “but for” standard as described in GoodyearTire
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`& Rubber Co. v. Haeger, 137 S. Ct. 1178 (2017), but is mindful that there are limits to the degree
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`of parsing required. Homeland Housewares, LLC v. Sorensen Research, 581 F. App'x 877, 881 (Fed.
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`Cir. 2014) (“We decline, however, to require such granularity from the district court, particularly
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`because it is the ‘totality of the circumstances,’ and notjust discrete acts of litigation conduct, that
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`justify the court's award of fees.” (quoting Octane, 572 U.S. at 554).
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`PersonalWeb’s proposed methodologyoriginates in Fox v. Vice, 563 U.S. 826 (2011). There,
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`defendant may recover only the amountincurred becauseofthe frivolous claims. Jd. at 826. In such
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`cases, fees are determined according to “whether the fees requested would not have accrued butfor
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`the” misconduct. Jd. at 839-40; see also Goodyear, 137 S. Ct. at 1187.
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`Several years later, the Supreme Court applied the “but for” standard to a court’s inherent
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`the Supreme Court held that whenaplaintiff asserts both frivolous and non-frivolous claims, the
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`authority to sanctionalitigant for bad faith conduct by orderingit to pay the other side’s legalfees.
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`Goodyear, 137 S. Ct. at 1183-84. It explained that fee-shifting in the sanction context must be
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`compensatory rather than punitive. Jd. at 1186. As such, “the court can shift only those attorney’s
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`fees incurred because of the misconductat issue.” /d. An award that “extends further than that—to
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`fees that would have been incurred without the misconduct—then . .. crosses the boundary from
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`compensation to punishment. Jd. Hence, a “causal connection”is required between the misbehavior
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`and the legal fees imposed, which “is most appropriately framed as a but-for test: The complaining
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`party... may recover ‘only the portion of his fees that he would not have paid but for’ the
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`misconduct.’” Id. at 1186-87 (quoting Fox, 563 U.S. at 836)). The Federal Circuit has since applied
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`this reasoning in the patent context, explaining that fees awarded under § 285 are “compensatory,
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`not punitive” and “[iJn such a statutory sanction regime, a fee award may go no further than to
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`redress the wrongedparty for losses sustained.” Jn re Rembrandt Techs. LP Patent Litig., 899 F.3d
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`1254, 1279 (Fed. Cir. 2018) (quoting Goodyear, 137 S. Ct. at 1186) (internal marks omitted).
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`“Critically, the amount of the award must bear somerelation to the extent of the misconduct.” Jd.
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`Amazon emphasizes that Goodyear applied the “but for” fee-shifting methodology in a
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`different context, where the court was concerned with its inherent power to sanction. Response 1.
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`But Fox concerned a § 1983 claim where the court dismissed the plaintiff's federal claims with
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`prejudice after the plaintiff admitted they were invalid. 563 U.S. at 830. In that case, the Supreme
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`Court was considering § 1988, which allowed an award of reasonable fees to a prevailing party in
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`certain civil rights cases. Fox, 563 U.S. at 829-30. It reversed the district court’s grant of fees for
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`defendingthe entire suit in federal court, holding that the “but for” test applied. Jd. at 839-40; see
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`also Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1106 (Fed. Cir. 2003) (holding that where
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`a court finds a case exceptional, the amount of the award must relate to the misconduct). And
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`numerous courts have since applied the Fox-Goodyear standard to § 285 assessments. See, e.g., In
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`re Rembrandt Tech. LP Patent Litigation, 899 F.3d 1254 (Fed. Cir. 2018); Flowerider Sur, Ltd. v.
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`Pac. Surf Designs, Inc., No. 315-cv-01879-BEN-BLM, 2020 WL 5645331 (S.D. Cal. Sept. 22,
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`2020); Indus. Print Tech., LLC v. Cenveo, Inc., No. 3:15-cv-01195-M, 2020 WL 5057738. (N.D.
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`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., LLCv. Peach State Labs, Inc., 274 F. Supp. 3d 1298
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`(M.D. Fla. Aug. 14, 2017).
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`Amazon contends that § 285 permits the Court to award fees for an exceptional case based
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`on the “totality of the circumstances,” which allows for an award for the entire case, including any
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`subsequent appeals. Response | (citing Therasense, Inc. v. Beton, Dickinson & Co., 745 F.3d 513,
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`517 (Fed. Cir. 2014). In Goodyear, the Supreme Court explained that “[i]n exceptionalcases, the
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`but-for standard even permitsa trial court to shift all of a party’s fees, from either the start or some
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`midpointofa suit, in one fell swoop.” 137 S. Ct. at 1186 (emphasis added). But the Supreme Court
`explicatedits definition of “exceptional cases” by providing an example of a case where “everything
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`the defendant did—his entire course of conduct throughout, and indeed preceding. the litigation—
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`waspart of a sordid schemeto defeat a valid claim.” Jd. at 1188 (internal citations and quotation
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`marks omitted) (citing Chambers v. NASCO, Inc., 501 U.S. 32, 51 (1991)). Such conduct, which
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`wasalso in the sanctioning context, was so egregiousthat it amounted to “fraudulent and brazenly
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`unethical efforts.” Jd. at 1188 (quoting Chambers, 501 U.S. at 58).
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`In other words,
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`there are
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`circumstances in which a case may be exceptional under § 285, but
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`the prevailing party is
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`nonetheless not entitled to full attorneys’ fees. See, e.g., Rembrandt, 899 F.3d at 1267, 1280 (Fed.
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`Cir. 2018) (affirming a case as exceptional under § 285, but concluding that the district court
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`nonetheless failed to “establish at least some ‘causal connection’ between the misconduct and the
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`fee award”).
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`The Federal Circuit has upheld a full award of attorney fees—but it was “against a party
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`whose‘extensive misconduct was enough to compromise an abusive pattern or a vexatiousstrategy
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`that was pervasive enough to infect the entire litigation.” Rembrandt, 899 F.3d at 1279 (citing
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`Monolithic Power Sys. Inc. v. O2 Micro International Ltd., 726 F.3d 1359, 1369 (Fed. Cir. 2013)).
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`Describing Monolithic Power, the Federal Circuit in Rembrandt explained that the full award was
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`proper only because the party’s “rampant misconduct so severely affected every stage of the
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`litigation.” Jd. at 1279. In Rembrandt, however, the misconduct wasnot so egregious, meaning the
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`full award that the district court granted was not warranted. See Rembrandt, 889 F.3d at 1277-80
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`(“Rembrandt instead argues that the fee award is excessive and unreasonable because the district
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`court failed to establish a causal connection between the claimed misconductandthe fees awarded”).
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`Unlike Monolithic Power,
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`in Rembrandt “the claimed misconduct affected only some patents
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`asserted against some defendants.” 889 F.3d at 1280. The Federal Circuit remanded so that the
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`district court could reassess the amount because “the district court did not establish a causal
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`connection between the misconduct and [the] fees, and it did not offer any other reason forits fee
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`award”as required by Goodyear. Rembrandt, 889 F.3d at 1280.
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`Courts in this Circuit have also applied the “but for” test in the § 285 context. Analyzing the
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`underlying policy reasons for the Supreme Court’s applying the “but for” standard to § 1988, Judge
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`Illston held that it applied to an infringement case where the nonmovant dropped oneofits patent
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`claims after a motion to dismiss was granted in part and denied in part. Cave Consulting, 293 F.
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`Supp. 3d at 1049. And Judge Benitez applied the “but for” standard to determine the reasonableness
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`of the time expendedlitigating the case in Flowerider Sur, 2020 WL 5645331, at *5-6.
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`This Court
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`finds that
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`the “but
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`for’ standard articulated by Goodyear applies, as
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`PersonalWeb’s misconduct did not so infect the case that a full award, without any discernment of
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`a causal connection between the improper acts and the fees accrued, is warranted. In granting fees,
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`this Court concluded that the case was exceptional. Order Awarding Fees at 32. The Court explained
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`that “this case both lacked substantive strength and waslitigated in an unreasonable manner” and
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`that PersonalWeb “repeatedly flip flopped its positions to suit the argument of the day” Order
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`Awarding Feesat 33 (internal quotation marks andcitation omitted). But the Court also notedthat,
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`“{t]aken separately, the fragments of the story might not make PersonalWeb’s conduct look
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`exceptional.” Order Awarding Fees at 32-33. Elsewhere, the Court pointed to benign examples of
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`PersonalWeb’s conduct: “PersonalWeb’s infringement positions were not objectively baseless and
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`thus, do not support a finding of an exceptional case.”Jd. at 15. Thus, although the Court concluded
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`that some of PersonalWeb’s infringement claims were “objectively baseless and not reasonable
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`when brought,” Order Awarding Fees33, its conduct did notrise to “rampant misconduct”affecting
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`“every stage ofthe litigation.” Rembrandt, 889 F.3d at 1279. In other words, the facts here depart
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`from Monolithic Power and Chamberssuchthat the “but for” standard in Goodyear is warranted.
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`In applying this standard, the Court will exclude requested fees not directly traceable to
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`PersonalWeb’s egregious conduct, but will nonetheless continue to assess the totality of the
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`circumstances as directed under Octane. Overall,
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`the Court has previously determined that
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`PersonalWeb repeatedly changedits infringement theories—telling the MDL panel that the cases
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`all involved $3. then reporting to this Court that Ruby on Rails was preeminent, until that theory
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`was completely abandoned. Andlater, ten monthsintothe litigation, PersonalWeb yet again shifted
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`its infringementtheories, this time to CloudFrontalong with a disturbing interlude whereit appeared
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`that PersonalWeb pursuedclaimsit did not own and signed court papers without Level 3’s consent.
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`After that, PersonalWeb unnecessarily prolonged portions ofthe case and sought to backtrack onits
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`promise to the Court that Twitch wasrepresentative of all customer cases. This misconductforced
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`Amazon to expend extra work at nearly every j