Case 5:18-md-02834-BLF Document 903 Filed 09/15/23 Page 1 of 6
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`J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`SAINA S. SHAMILOV (CSB No. 215636)
`sshamilov@fenwick.com
`MELANIE L. MAYER (admitted pro hac vice)
`mmayer@fenwick.com
`TODD R. GREGORIAN (CSB No. 236096)
`tgregorian@fenwick.com
`RAVI R. RANGANATH (CSB No. 272981)
`rranganath@fenwick.com
`CHRISTOPHER S. LAVIN (CSB No. 301702)
`clavin@fenwick.com
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`Telephone:
`(650) 988.8500
`Facsimile:
`(650) 938.5200
`
`Counsel for AMAZON.COM, INC.,
`AMAZON WEB SERVICES INC., and
`TWITCH INTERACTIVE, INC.
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`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.,
`Plaintiffs,
`
`v.
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Defendants.
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`
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiffs,
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`v.
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`TWITCH INTERACTIVE, INC.,
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`Defendant.
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`REPLY ISO FURTHER SUPPLEMENTAL
`FEES REQUEST
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`Case No. 5:18-md-02834-BLF
`Case No. 5:18-cv-00767-BLF
`Case No. 5:18-cv-05619-BLF
`REPLY OF AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., AND
`TWITCH INTERACTIVE, INC. IN
`SUPPORT OF FURTHER
`SUPPLEMENTAL FEES REQUEST
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`Date: December 7, 2023
`Time: 9:00 a.m.
`Place: Courtroom 3, 5th Floor
`Judge: Honorable Beth Labson Freeman
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`CASE NOS.: 5:18-md-02834-BLF;
`5:18-cv-00767-BLF; 5:18-cv-05619-BLF
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`FENWICK & WEST LLP
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`Case 5:18-md-02834-BLF Document 903 Filed 09/15/23 Page 2 of 6
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`The Court should award Amazon its full revised requested fees for supplemental work
`performed in this case. That amount now reflects more than $1.1 million in voluntary reductions
`from the total Amazon incurred defending the Court’s rulings on appeal and addressing the
`maneuvers PersonalWeb and its counsel deployed to evade the judgment. (Dkt. 880 (“Mot.”);
`Dkt. 893.)
`1.
`The Court should award the fees Amazon incurred defending multiple appeals.
`Amazon’s motion sought fees incurred with respect to PersonalWeb’s appeal of the
`non-infringement ruling and the petition for certiorari concerning the Kessler ruling. (Mot. at 3-5.)
`Although PersonalWeb asks the Court to deny this request in full, it did not include argument
`concerning the non-infringement appeal, and thus the Court should award those fees. As to Kessler,
`Amazon argued that the Court already awarded earlier appellate fees on this issue. (Id. at 4.) In
`response, PersonalWeb argues the Court should nonetheless deny recovery because its petition for
`certiorari was not “objectively baseless.” (Dkt. 889-1 at 9.) But that is not the standard: an appeal
`need not be “independently exceptional” to justify an award of appellate fees under Section 285.
`See Action Star Enter. Co. v. KaiJet Tech. Int’l, Ltd., No. 12-cv-08074 BRO (MRWX), 2015 WL
`12752877, at *3 (C.D. Cal. June 24, 2015). PersonalWeb’s Kessler positions were part of the
`reason the Court found the case exceptional, making those fees recoverable. Moreover,
`PersonalWeb’s cert petition was wasteful—it could never have made any practical difference for
`the outcome of this case. Even if PersonalWeb had achieved a complete reversal of the Kessler
`ruling at the Supreme Court, that would not undo either this Court’s separate judgment of
`noninfringement or its exceptional case ruling. The Court should award Amazon the full amount
`requested for the work on those appeals.
`2.
`The Court should award fees that Amazon incurred obtaining the fee award.
`PersonalWeb argues that the Court should exclude fees incurred in the Federal Circuit
`appeal of the original fee award as premature because that appeal is still pending. (Dkt. 889-1 at 3.)
`The Circuit took the appeal under submission in June 2023. To the extent there is still no ruling by
`the time of the December 2023 hearing on this motion, Amazon requests that the Court nevertheless
`award the fees rather than defer, to avoid further proceedings concerning attorney fees.
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`CASE NOS.: 5:18-md-02834-BLF;
`5:18-cv-00767-BLF; 5:18-cv-05619-BLF
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`ATTORNEYS AT LAW
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`FENWICK & WEST LLP
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`Case 5:18-md-02834-BLF Document 903 Filed 09/15/23 Page 3 of 6
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`3.
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`The Court should award fees that Amazon incurred in post-judgment
`proceedings.
`The remainder of PersonalWeb’s arguments concern fees incurred in other post-judgment
`proceedings. These include post-judgment discovery and attempts to seek compliance with the
`Court’s orders, work to address both the attempted withdrawal of PersonalWeb’s counsel and
`PersonalWeb’s other efforts to evade the judgment by placing itself in a state court receivership,
`and asserting that in federal court as a bar to collection.
`The requested fees are authorized by statute. PersonalWeb’s first argument is that §285
`does not permit recovery of fees for any proceedings to enforce a judgment in a patent infringement
`case. There is no authority that supports this position. The Federal Circuit has instructed that a
`case must be viewed as “an inclusive whole,” and has thus authorized “awarding fees for the entire
`case, including any subsequent appeals.” Ameranth, Inc. v. Domino’s Pizza, Inc., No. 12-cv-0733
`DMS (WVG), 2021 WL 2550057, at *1 (S.D. Cal. June 21, 2021) (citations and quotations
`omitted). The statute authorizes even the recovery of fees incurred seeking attorney fees, a non-
`patent issue that occurs post-judgment. (See Mot. at 5.) And courts have expressly held that fees
`incurred to enforce a judgment or settlement of a patent case are recoverable under §285. Schmidt
`v. Zazzara, 544 F.2d 412, 413-15 (9th Cir. 1976) (allowing recovery under §285 of attorney fees
`incurred enforcing a consent judgment); Fitness IQ, LLC v. TV Prod. USA, Inc., No. 10-cv-2584
`WMC, 2012 WL 13175920, at *5 (S.D. Cal. Sept. 14, 2012) (same as to enforcement of settlement
`agreement); j2 Glob. Inc. v. Fax87, No. 13-cv-05353 DDP (AJWX), 2016 WL 7260588, at *5 (C.D.
`Cal. Dec. 15, 2016) (allowing plaintiff to recover fees “for any further litigation” if a default
`judgment was violated); cf. Action Star, 2015 WL 12752877, at *3 (awarding fees following a
`post-judgment escrow dispute). PersonalWeb cites Mathis v. Spears, 857 F.2d 749, 755 (Fed. Cir.
`1988)—a case decided long before Octane Fitness and Therasense announced the current §285
`standards. But even Mathis held only that any prevailing party—whether a patentee or an accused
`infringer—may recover under §285. It did not interpret an award for an entire “case” as excluding
`judgment enforcement; to the contrary, the court there stated that “it would be inconsistent with the
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`REPLY ISO FURTHER SUPPLEMENTAL
`FEES REQUEST
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`CASE NOS.: 5:18-md-02834-BLF;
`5:18-cv-00767-BLF; 5:18-cv-05619-BLF
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`FENWICK & WEST LLP
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`Case 5:18-md-02834-BLF Document 903 Filed 09/15/23 Page 4 of 6
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`intent” of the statute “to limit [the] prevailing party [] to something less than the fees and expenses
`to which it was subjected” by its opponent. Id. at 758.
`PersonalWeb’s next argument is that California Code of Civil Procedure §685.040 does not
`apply in federal court or allow recovery here. (Dkt. 889-1 at 4.) But to the extent the Court accepts
`PersonalWeb’s argument that §285 does not apply, then §685.040 would, and it too, authorizes an
`award. See Carnes v. Zamani, 488 F.3d 1057, 1060 (9th Cir. 2007). The section entitles judgment
`creditors to “reasonable and necessary costs of enforcing a judgment,” and those include attorney
`fees incurred to enforce a judgment that, as here, is based on a federal statute that authorizes fees.
`Sayta v. Martin, No. 16-cv-03775-LB, 2022 WL 267405, at *2 (N.D. Cal. Jan. 28, 2022), rev’d on
`other grounds, 2023 WL 5447676 (9th Cir. Aug. 24, 2023); see also Erickson v. Sympathy for the
`Rec. Indus. ex rel. Mermis, No. 10-cv-00636 HRL, 2011 WL 1211533, at *2 (N.D. Cal. Mar. 30,
`2011)) (permitting the recovery of post-judgment attorney fees under §685.040 where the
`underlying judgment was based on violations of the Copyright Act, which provides for the recovery
`of reasonable attorney’s fees to a prevailing party as part of the costs).1
`The award should include the fees incurred in the related state court actions. Under
`either statute, Amazon is entitled to recover for a parallel proceeding to enforce the judgment. §285
`authorizes recovery of fees incurred in closely related proceedings, see Mot. at 7-8 (discussing
`authorities), and §685.040 authorizes fees incurred in a separate action to enforce a judgment, as
`well as “defending the validity of the judgment against challenge in a separately filed attack.”
`Globalist Internet Techs., Inc. v. Reda, 167 Cal. App. 4th 1267, 1274–75 (2008). Both standards
`are met here. PersonalWeb’s principals filed the state court actions specifically to undermine the
`Court’s judgment and prevent it from ever being enforced. (See Mot.; Dkt. 871-7; Gregorian Reply
`Decl. ¶¶3-5.) PersonalWeb asserted the state court receivership and injunction in this case as a
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`1 PersonalWeb cites Bass v. First Pac. Networks. Inc., 219 F.3d 1052 (9th Cir. 2000), but that
`case is irrelevant. Bass asked whether federal or state law governed fee recovery in a Rule 65.1
`surety proceeding where the district court was exercising supplemental jurisdiction over state law
`claims. The case did not address either Rule 69(a) or §685.040 at all. See id.
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`REPLY ISO FURTHER SUPPLEMENTAL
`FEES REQUEST
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`3
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`CASE NOS.: 5:18-md-02834-BLF;
`5:18-cv-00767-BLF; 5:18-cv-05619-BLF
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`ATTORNEYS AT LAW
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`FENWICK & WEST LLP
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`Case 5:18-md-02834-BLF Document 903 Filed 09/15/23 Page 5 of 6
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`reason why it did not have to pay the judgment or obey the Court’s discovery orders. And
`PersonalWeb’s principals filed a declaratory judgment action on the alter ego issue in part to ensure
`that this Court would not entertain a post-judgment motion on that issue. (Gregorian Reply Decl. ¶6.)
`Neither state court action should ever have been filed, but both are intertwined with this case.
`PersonalWeb also contends that fee recovery should be denied because Amazon has not yet
`succeeded in enforcing the judgment. (Dkt. 889-1 at 9:28.) This much is true: PersonalWeb has
`not paid any of the $5.4 million it owes, and its principals have chosen instead to multiply the state
`court proceedings (and have been sanctioned separately for it by the Superior Court (see Dkt. 893-
`1)). But that is a reason to award fees, not to deny them. Moreover, whether Amazon won every
`individual motion—though it has prevailed on most, allowing it to uncover PersonalWeb’s
`principals’ fraud on the Superior Court—is also not the standard for recovery.2 Amazon prevailed
`in the case, which authorizes it to seek fees. See Erickson, 2011 WL 1211533, at *2; see also
`Greyhound Fin. Corp. v. TSM Fin. Grp., Inc., No. 92-cv-3750, 1995 WL 562068, at *4 (N.D. Ill.
`Sept. 21, 1995) (awarding plaintiff fees for a separate unresolved alter ego action to collect the
`judgment because plaintiff “had ample reason the believe that ordinary collection procedures would
`be ineffective”).
`4.
`The rates of Amazon’s counsel are reasonable.
`Finally, PersonalWeb contends that Amazon’s counsel’s rates are unreasonable for the post-
`judgment work. (See Dkt. 889-1 at 10.) As explained in its moving papers, the billing for
`Amazon’s counsel is commensurate with the prevailing billing rates for similar work. Moreover,
`Amazon has requested substantially reduced rates for most of its counsel than it actually incurred.
`(See Mot. at 10.) By comparison, PersonalWeb’s principals have hired Kirkland & Ellis LLP to
`represent some of their investment entities in resisting the judgment in all three pending actions.
`While these attorneys have refused to disclose their billing rates, the available evidence suggests
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`2 To support this argument, PersonalWeb points to a motion to compel documents from its
`privilege log. (Dkt. 889-1 at 9.) But even there, the Court denied the motion to compel without
`prejudice to renewal later. (Dkt. 877 at 5.)
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`REPLY ISO FURTHER SUPPLEMENTAL
`FEES REQUEST
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`CASE NOS.: 5:18-md-02834-BLF;
`5:18-cv-00767-BLF; 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 903 Filed 09/15/23 Page 6 of 6
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`that they are substantially higher than the requested rates here. (See Gregorian Reply Decl. ¶11;
`Ex. 4.) PersonalWeb also suggests that some of Amazon’s counsel lack experience in handling
`judgment enforcement matters and in California state court. (See Dkt. 889-1 at 11.) This criticism
`is unfounded because counsel has such experience (Gregorian Reply Decl. ¶¶9-10), and
`unwarranted as it would have been far less efficient, and more costly, to transfer the case entirely
`to “collections” lawyers unfamiliar with the twelve-year history of PersonalWeb’s lawsuits against
`Amazon and the misconduct on which the fee award is based.
`***
`Amazon is mindful that the proceedings in this Court must come to an end. It intends to
`direct further requests for relief against PersonalWeb and its investor entities to the Superior Court.
`But PersonalWeb and its principals have abused the courts for years now. A substantial further
`award would deter that conduct—sending the message that parties may not evade a federal
`judgment by manipulating their finances and invoking the protections of California law under false
`pretenses—and will help bring this matter to a close. Limiting liability for that conduct would only
`encourage more of it. For these reasons, Amazon respectfully requests that the Court award its full
`requested fees.
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`September 15, 2023
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`FENWICK & WEST LLP
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`By: /s/ Todd R. Gregorian
` Todd R. Gregorian
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`Attorney for Amazon.com, Inc.,
`Amazon Web Services, Inc., and
`Twitch Interactive, Inc.
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`REPLY ISO FURTHER SUPPLEMENTAL
`FEES REQUEST
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`CASE NOS.: 5:18-md-02834-BLF;
`5:18-cv-00767-BLF; 5:18-cv-05619-BLF
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`FENWICK & WEST LLP
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