Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 1 of 24 Page ID #:24892
`
`Peter H. Kang, SBN 158101
`pkang@sidley.com
`SIDLEY AUSTIN LLP
`1001 Page Mill Road, Building 1
`Palo Alto, California 94304
`Tel: (650) 565-7000
`Fax: (650) 565-7100
`
`ADDITIONAL COUNSEL LISTED
`ON SIGNATURE PAGE
`
`Attorneys for Defendant
`UNIVERSAL REMOTE CONTROL, INC.
`
`
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
`
`Case No. 8:12-CV-00329 AG (JPRx)
`
`Assigned to: Hon. Andrew J. Guilford
`
`DEFENDANT UNIVERSAL
`REMOTE CONTROL, INC.’S
`SUPPLEMENTAL SUBMISSION
`RE: AWARD OF ATTORNEYS’
`FEES
`
`
`))))))))))))))
`
`UNIVERSAL ELECTRONICS, INC.,
`
`Plaintiff and Counterclaim-
`Defendant,
`
`
`v.
`
`UNIVERSAL REMOTE CONTROL,
`INC.,
`
`
`Defendant and
`Counterclaimant.
`
`
`
`
`
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Universal Remote Control Exhibit: 1059 Page 000001
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 2 of 24 Page ID #:24893
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ................................................................................................ 1
`I.
`RELEVANT BACKGROUND ............................................................................ 2
`II.
`III. ARGUMENT ........................................................................................................ 5
`A.
`The Hours That URC’s Counsel Actually Expended in This
`Litigation Were Reasonable ....................................................................... 7
`The Hourly Rates at Which URC Was Actually Billed by
`Counsel Were Reasonable ........................................................................ 12
`Calculation of the Lodestar Figure ........................................................... 13
`Third-Party Surveys Confirm that URC’s Fee Request Is
`Reasonable ................................................................................................ 13
`Other Factors Further Demonstrate that URC’s Fee Request Is
`Reasonable ................................................................................................ 14
`URC Is Also Entitled to Recover its Expenses, Including its
`Expert Witness Fees ................................................................................. 16
`IV. CONCLUSION ................................................................................................... 18
`
`
`B.
`
`C.
`D.
`
`E.
`
`F.
`
`
`
`
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`i
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000002
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 3 of 24 Page ID #:24894
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Blum v. Stenson
`465 U.S. 886, 104 S. Ct. 1541, 79 L. Ed. 2d 891 (1984) ..................................... 12
`Central Soya Co., Inc. v. Geo. A. Hormel & Co.
`723 F.2d 1573 (Fed. Cir. 1983) ...................................................................... 16, 17
`Chromalloy Amer. Corp. v. Alloy Surfaces Co.
`353 F. Supp. 429 (D. Del. 1973) .......................................................................... 12
`Fischer v. SJB-P.D. Inc.
`214 F.3d 1115 (9th Cir. 2000) ................................................................................ 6
`Gates v. Deukmejian
`987 F.2d 1392 (9th Cir. 1992) ................................................................................ 7
`Gonzalez v. City of Maywood
`729 F.3d 1196 (9th Cir. 2013) ................................................................................ 6
`Hensley v. Eckerhart
`461 U.S. 424, 103 S. Ct. 1933, 76 L. Ed. 2d 40 (1983) ............................... 6, 7, 15
`Highmark Inc. v. Allcare Health Mgmt. Sys., Inc.
`__ U.S. __, 134 S. Ct. 1744, 188 L. Ed. 2d 829 (2014) ................................... 6, 16
`Innovative Biometric Tech., LLC v. Toshiba Amer. Info. Sys., Inc.
`Case No. 09-CV-81046-KLR (S.D. Fla. Aug. 30, 2012) ....................................... 4
`Intellect Wireless, Inc. v. HTC Corp.
`No. 09 C 2945, 2015 U.S. Dist. LEXIS 2864 (N.D. Ill. Jan. 8, 2015) ................... 4
`Kerr v. Screen Guild Extras, Inc.
`526 F.2d 67 (9th Cir. 1975) .............................................................................. 6, 14
`Mathis v. Spears
`857 F.2d 749 (9th Cir. 1988) ......................................................................... passim
`Mathis v. Spears
`No. CV 80-4481 MRP, 1986 U.S. Dist. LEXIS 235900 (C.D. Cal.
`June 27, 1986), aff’d, 857 F.2d 749 (Fed. Cir. 1988) ............................................. 7
`Monolith Portland Midwest Co. v. Kaiser Alum. & Chem. Corp.
`407 F.2d 288 (9th Cir. 1969) .................................................................................. 7
`Moore v. Jas. H. Matthews & Co.
`682 F.2d 830 (9th Cir. 1982) ................................................................................ 12
`Morales v. City of San Rafael
`96 F.3d 359 (9th Cir. 1996) .............................................................................. 6, 14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`ii
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000003
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 4 of 24 Page ID #:24895
`
`Oplus Technologies, Ltd. v. Sears Holdings Corp.
`Case No. 2:12-cv-05707-MRP-Ex (C.D. Cal. Feb. 3, 2014) ................................. 4
`PACT XPP Techs., AG v. Xilinx, Inc.
`No. 2:07-CV-563-RSP, 2013 U.S. Dist. LEXIS 125819
`(E.D. Tex. Sept. 3, 2013) ........................................................................................ 7
`Pierce v. Underwood
`487 U.S. 552, 108 S. Ct. 2541, 101 L. Ed. 2d 490 (1988) ................................... 14
`PPG Industries, Inc. v. Celanese Polymer Specialties Co.
`840 F.2d 1565 (Fed. Cir. 1988) .............................................................................. 8
`Takeda Chem. Indus., Ltd. v. Mylan Labs., Inc.
`549 F.3d 1381 (Fed. Cir. 2008) ........................................................................ 6, 17
`Trend Prod. Co. v. Metro Indus., Inc.
`No. CV 84-7740 AHS, 1989 U.S. Dist. LEXIS 11861
`(C.D. Cal. Apr. 11, 1989) ................................................................................. 7, 11
`Water Techs. Corp. v. Calco Ltd.
`709 F. Supp. 821 (N.D. Ill. 1989) ........................................................................... 7
`
`
`STATUTES
`35 U.S.C. § 285 ............................................................................................ 5, 6, 16, 17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`iii
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000004
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 5 of 24 Page ID #:24896
`
`TABLE OF ABBREVIATIONS
`
`
`Tr. …………………Complete trial transcript (May 6–21, 2014) [ECF No. 398-1]
`
`Tr. Ex………………Admitted trial exhibits (as shown in ECF No. 409)
`
`Kang Decl………….Declaration of Peter H. Kang (filed herewith)
`
`Miro Decl…………..Declaration of Douglas A. Miro (filed herewith)
`
`Brookey Decl………Declaration of Brian K. Brookey (filed herewith)
`
`Supp. Miro Decl……Supplemental Declaration of Douglas A. Miro
` filed with URC’s Reply in support of its Motion for Attorney
`Fees (Feb. 23, 2015) [ECF No. 466-1]
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`iv
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000005
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 6 of 24 Page ID #:24897
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`I.
`
`INTRODUCTION
`In its March 10, 2015 Order Granting Defendant’s Motion for Attorneys’ Fees
`(ECF No. 475), the Court found, among other things, that Plaintiff Universal
`Electronics, Inc. (“UEI”) filed this lawsuit motivated by a desire for “payback” for
`Defendant Universal Remote Control, Inc.’s (“URC”) successful competition in the
`marketplace, that UEI asserted baseless claims “where there was no case at all,” and
`that UEI hid its petition to “correct” inventorship from the Court and URC resulting in
`a waste of resources. Accordingly, the Court granted URC’s motion for attorneys’
`fees and, after considering the option of awarding URC its attorneys’ fees for the
`entire case, instead ordered UEI to reimburse URC for “the portions of the case
`attributable to the ’426 and ’067 Patents, and the motion for reconsideration regarding
`the ’367 Patent.” ECF No. 475 at 15. The only task remaining is to set that amount,
`and URC is entitled to the full amount of fees and expenses it incurred in defending
`against the portions of the case which the Court found to be exceptional.
`In previously opposing URC’s motion for fees, UEI argued that any substantive
`award would be too much, even before seeing URC’s supporting documentation.
`Because UEI’s lawsuit and its own subsequent misconduct caused this case to be
`exceptional and thus caused URC to expend significant time, money, and resources to
`defend against UEI’s improperly-motivated gamesmanship, UEI should be held
`accountable for the full amount requested. That amount is already apportioned, and
`thus excludes millions of dollars spent by URC in defense of large portions of this
`case. Further, in an effort to eliminate disputes, URC has excluded from the requested
`amount several categories of fees and costs which arguably are awardable.
`In support of its fee request, URC now provides its submission regarding the
`amount of attorneys’ fees and expenses URC is entitled to recover from UEI. The
`evidence underlying URC’s fee request, including detailed billing invoices and
`expense receipts, is also provided in connection with the accompanying declarations
`of URC’s counsel. Finally, pursuant to the Court’s request, URC also submits an
`
`
`
`1
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000006
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 7 of 24 Page ID #:24898
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Excel spreadsheet, in native format, in which the attorneys’ daily time entries have
`been consolidated and organized chronologically. The level of detail and amount of
`supporting evidence provided by URC more than justifies and explains the amount of
`the award sought.
`The amount of fee award URC herein requests is thus more than reasonable,
`and indeed because it only covers a portion of this case, will not make URC whole
`with regard to the harm inflicted by UEI’s “Niro plan.” The Court should therefore
`reject any arguments by UEI that this amount ought to be reduced further. Based on
`all of this evidence, and for the reasons explained below, UEI should now compensate
`URC in an amount of at least $4,661,341.55 for its reasonable attorneys’ fees and
`$860,911.50 for its reasonable expenses, for a total of at least $5,522,253.04.
`II. RELEVANT BACKGROUND
`UEI is a publicly-traded company with over $560 million in net sales and over
`$460 million in total assets in 2014. See Kang Decl. Ex. 50 at 24. In contrast, URC is
`a small company, with fewer than 100 employees. See Tr. 707:10.
`On March 2, 2012, UEI filed this action accusing URC of infringing four
`patents: U.S. Patent Nos. 5,568,367 (“the ’367 patent”), 6,587,067 (“the ’067
`patent”), 5,414,426 (“the ’426 patent”), and 5,614,906 (“the ’906 patent”). As
`evidenced by e-mails exchanged between UEI CEO Paul Arling, Executive Vice
`President Mark Kopaskie, then-Senior Vice President Lou Hughes, and then-Vice
`President Steve Gutman, see, e.g., Tr. Ex. 1358, UEI’s lawsuit was improperly
`motivated by a desire to exact revenge on URC for its successful competition in the
`marketplace, and the Court ruled that at least some of UEI’s claims were objectively
`baseless. See generally ECF No. 475. Indeed, all four of the UEI patents-in-suit have
`now been found to be invalid, the Court granted summary judgment in URC’s favor
`on the ’426 and ’067 patents based on non-infringement and lack of marking, and the
`jury found two of the patents to be unenforceable for a host of reasons. See ECF No.
`60 at 15–20; ECF No. 222 at 29–31, 43–50; ECF No. 407; ECF No. 475 at 3.
`
`
`
`2
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000007
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 8 of 24 Page ID #:24899
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`URC initially retained its existing counsel Ostrolenk Faber LLP (“Ostrolenk”),
`a law firm specializing in intellectual property matters located in New York City near
`URC, which is in Harrison, New York. See Miro Decl. ¶ 2. Ostrolenk has been
`providing legal services to URC since 2002. For its local counsel, URC retained
`Christie, Parker & Hale LLP (“CPH”), a law firm also specializing in intellectual
`property located in Southern California. See Brookey Decl. ¶ 2. URC’s counsel from
`CPH later moved to the Tucker Ellis LLP law firm during the course of this litigation.
`See id. ¶ 4.
`UEI’s assertion of the ’426 and ’067 patents in particular raised a large number
`of issues that needed to be litigated. For example, the ’426 and ’067 patents presented
`not only the kinds of complicated non-infringement, invalidity, and damages issues
`that would arise in any patent case, but also complex issues related to inventorship,
`implied license/breach of contract, laches, equitable estoppel, res judicata, unclean
`hands, patent misuse, and marking, all of which were highly relevant and hotly
`disputed.
`In the interest of streamlining proceedings and minimizing the costs that would
`be associated with litigating these numerous complex issues, URC proposed a staged
`procedure for the case under which claim construction would be adjudicated before
`fact discovery commenced. See ECF No. 41 at 12–13. The Court adopted this
`procedure. ECF No. 42. In connection with the Court’s claim construction
`determinations, the Court found the asserted claims of the ’367 patent were invalid for
`indefiniteness. See ECF No. 60 at 15–20. UEI then moved for reconsideration of the
`Court’s ruling on the ’367 patent, which was denied in short order on May 14, 2013.
`See ECF No. 79. The Court has found that UEI’s motion for reconsideration was so
`meritless that it justified an award of attorneys’ fees. See ECF No. 475 at 13.
`Following the Court’s claim construction ruling, fact discovery commenced on
`March 4, 2013 and continued beyond the fact discovery cut-off of October 31, 2013,
`see ECF No. 121, and into January 2014. Fact discovery continued beyond the cut-off
`
`
`
`3
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000008
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 9 of 24 Page ID #:24900
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`due to UEI’s belated document productions and productions of witnesses for
`deposition, provided only after URC moved to compel a number of times. See, e.g.,
`ECF No. 447-1 at 10–12, 23–25; ECF No. 153; ECF No. 475 at 6–7. The Court has
`recognized that UEI’s discovery conduct was improper, obstructionist, and included
`“gamesmanship,” which was an additional basis for the award of attorneys’ fees.1 See
`id. at 6–7, 9–11.
`As fact discovery concluded and the parties moved into the expert discovery
`period, UEI continued to aggressively litigate its claims with an eye to trial, serving a
`damages expert report seeking compensatory damages of well over $20 million, which
`when trebled under a willful infringement theory could have amounted to over $60
`million, not including prejudgment interest and the value of an injunction. See Kang
`Decl. ¶ 24 & Ex. 48; ECF No. 1 at 12. Although URC had hoped that the case could
`be resolved earlier, had reasonable minds prevailed, it was apparent that UEI was
`using the “Niro plan” in this litigation to impose maximum litigation costs on URC all
`the way through trial and push URC “to the brink.” Thus, in late 2013, URC was
`forced to retain trial counsel Sidley Austin LLP to prepare URC’s case for trial and
`
`1 UEI chose to retain as counsel the law firm of Niro, Haller & Niro, which UEI’s Lou
`Hughes described as a “
`
`.” See Supp. Miro Decl. Ex. 30. This minimized UEI’s litigation costs
`while maximizing the unfair burdens that URC would experience, given the Niro
`firm’s reputation for vexatious and abusive litigation misconduct. See Oplus
`Technologies, Ltd. v. Sears Holdings Corp., Case No. 2:12-cv-05707-MRP-Ex (C.D.
`Cal. Feb. 3, 2014), ECF No. 220 at, e.g., 17–18 (Pfaelzer, J.) (criticizing Niro firm for
`“pursu[ing] a vexatious and harassing litigation strategy . . . . in a manner that was
`overly aggressive, uncooperative, and outside the boundaries of professional
`behavior”); Innovative Biometric Tech., LLC v. Toshiba Amer. Info. Sys., Inc., Case
`No. 09-CV-81046-KLR (S.D. Fla. Aug. 30, 2012), ECF No. 340 at 13–17, 21 (finding
`the Niro firm jointly and severally liable for attorneys’ fees and costs, where it used
`“tactics [that] were motivated solely to keep the case going and drive up Defendants’
`costs to extract settlements from those who knew the case lacked merit, but settled to
`avoid litigation costs.”); see also Intellect Wireless, Inc. v. HTC Corp., No. 09 C 2945,
`2015 U.S. Dist. LEXIS 2864, at *3–*15 (N.D. Ill. Jan. 8, 2015) (finding Niro firm
`jointly and severally liable for a parties’ attorneys’ fees and costs in a matter involving
`an inventor’s false statements made to the PTO, of which the Niro firm was aware
`prior to filing suit).
`
`
`
`4
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`REDACTED
`
`Universal Remote Control Exhibit: 1059 Page 000009
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 10 of 24 Page ID
` #:24901
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`ensure that its interests were fully protected. See Kang Decl. ¶¶ 3–4; see also, e.g.,
`ECF No. 140. Counsel from the Ostrolenk and Tucker Ellis law firms continued to be
`actively and effectively involved as co-counsel.
`After expert discovery, the parties filed summary judgment motions. On March
`24, 2014, the Court issued its summary judgment rulings. See ECF Nos. 222 & 223.
`Among other things, the Court granted summary judgment that URC did not infringe
`the ’426 patent and that UEI had not complied with the marking requirement with
`respect to the ’067 and ’426 patents. See ECF No. 222 at 29–31, 43–50; see also ECF
`No. 475 at 7. The Court also entered summary judgment on URC’s license-related
`affirmative defense and counterclaim, removing that issue from the case. See ECF
`No. 223 at 3.
`After the Court’s claim construction and summary judgment rulings narrowed
`UEI’s potential damages case to just the ’906 patent, the parties then proceeded to
`trial, where they contested the following issues: infringement of the ’906 patent,
`invalidity of the ’906 patent, damages for infringement of the ’906 patent, invalidity
`of the ’426 patent for improper inventorship, unenforceability of the ’426 patent due
`to patent misuse, laches, and estoppel, and unenforceability of both the ’906 and ’426
`patents due to unclean hands. See ECF No. 407. Trial concluded on May 21, 2014.
`See ECF No. 397. Before the jury, URC prevailed on every single issue. See ECF
`No. 407. However, the Court decided that UEI’s misconduct did not rise to the level
`of patent misuse, estoppel, or unclean hands as the jury had found. See ECF No. 435.
`UEI’s SEC filings indicate that UEI CEO Paul Arling and Executive Vice
`President Mark Kopaskie have been actively trading stock of the company they
`manage, and indeed they have sold approximately $3.4 million and $2.1 million worth
`of UEI stock, respectively, in the last ten months. See Kang Decl. ¶ 27 & Exs. 51–66.
`III. ARGUMENT
`Under 35 U.S.C. § 285, a prevailing party in exceptional cases, such as URC
`here, is entitled to recover its “reasonable attorney fees.” The quantum of attorneys’
`
`
`
`5
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000010
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 11 of 24 Page ID
` #:24902
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`fees to be awarded under section 285 is within the discretion of the trial court.
`Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., __ U.S. __, 134 S. Ct. 1744, 1749,
`188 L. Ed. 2d 829 (2014) (“all aspects of a district court’s § 285 determination” are
`subject to abuse of discretion standard of review); see also Takeda Chem. Indus., Ltd.
`v. Mylan Labs., Inc., 549 F.3d 1381, 1390–91 (Fed. Cir. 2008) (same) (affirming $16
`million award including attorneys’ fees, expenses, and expert fees).
`A party’s request for attorneys’ fees is typically evaluated under a “lodestar”
`analysis under which the number of hours the prevailing party reasonably expended
`on the litigation is multiplied by a reasonable hourly rate. See Hensley v. Eckerhart,
`461 U.S. 424, 433, 103 S. Ct. 1933, 76 L. Ed. 2d 40 (1983). The product of this
`computation is the “lodestar,” which is the presumptively reasonable fee. Gonzalez v.
`City of Maywood, 729 F.3d 1196, 1202 (9th Cir. 2013). In evaluating the
`reasonableness of the hours and the rates, courts in the Ninth Circuit take into account
`the so-called “Kerr factors,” which include: (1) the novelty and complexity of the
`issues, (2) the special skill and experience of counsel, (3) the quality of the
`representation, (4) the results obtained, and (5) whether the representation was
`conducted on a contingency basis.2 See Morales v. City of San Rafael, 96 F.3d 359,
`363–64 & n.9 (9th Cir. 1996) (citing Kerr v. Screen Guild Extras, Inc., 526 F.2d 67,
`70 (9th Cir. 1975)).
`
`
`2 After calculating the lodestar figure, the Court may enhance or reduce the award
`based on other Kerr factors not included in the Court initial analysis, to the extent
`applicable, including (1) the time and labor required, (2) the preclusion of other
`employment by the attorney due to acceptance of the case, (3) the customary fee, (4)
`time limitations imposed by the client or the circumstances, (5) the “undesirability” of
`the case, (6) the nature and length of the professional relationship with the client, and
`(7) awards in similar cases. See Morales, 96 F.3d at 363–64. However, because the
`initial lodestar figure is presumptively correct, it should only be enhanced or reduced
`in “rare and exceptional cases.” Fischer v. SJB-P.D. Inc., 214 F.3d 1115, 1119 n.4
`(9th Cir. 2000).
`
`
`
`6
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000011
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 12 of 24 Page ID
` #:24903
`
`A. The Hours That URC’s Counsel Actually Expended in This
`Litigation Were Reasonable
`“Where . . . a prevailing party ‘has obtained excellent results, his attorney
`should recover a fully compensatory fee. Normally this will encompass all hours
`reasonably expended on the litigation.’” Mathis v. Spears, 857 F.2d 749, 755 (9th Cir.
`1988) (quoting Hensley, 461 U.S. at 435). A court “may accept as reasonable the
`number of hours actually expended by counsel, provided the expenditure of time is
`supported by the complexity and length of the litigation.” Trend Prod. Co. v. Metro
`Indus., Inc., No. CV 84-7740 AHS (JRx), 1989 U.S. Dist. LEXIS 11861, at *6 (C.D.
`Cal. Apr. 11, 1989) (Stotler, J.); see also Mathis v. Spears, No. CV 80-4481 MRP,
`1986 U.S. Dist. LEXIS 235900, at *6 (C.D. Cal. June 27, 1986) (Pfaelzer, J.), aff’d,
`857 F.2d 749 (Fed. Cir. 1988) (same).
`“A request for attorney’s fees should not result in a second major litigation.”
`Hensley, 461 U.S. at 437. Where a case is complex and billing records are
`voluminous, a court need not conduct an “hour-by-hour analysis” of the fee request.
`Gates v. Deukmejian, 987 F.2d 1392, 1399 (9th Cir. 1992); see also Water Techs.
`Corp. v. Calco Ltd., 709 F. Supp. 821, 823–24 (N.D. Ill. 1989) (holding that a “day-by-
`day accounting” of the hours expended is unnecessary and that “the issue of reasonable
`fees should be settled in the most expeditious manner possible”) (quoting Monolith
`Portland Midwest Co. v. Kaiser Alum. & Chem. Corp., 407 F.2d 288, 298 (9th Cir.
`1969)). Indeed, where, as here, fees are to be apportioned based on the subject matter
`of the work involved, the Supreme Court has recognized that an “hour-by-hour”
`apportionment would not only be burdensome, but in many cases it would be
`impossible. See Hensley, 461 U.S. at 435 (“Much of counsel’s time will be devoted
`generally to the litigation as a whole, making it difficult to divide the hours expended
`on a claim-by-claim basis.”). To avoid such problems, it is permissible to use
`percentages of time spent on portions of the case in order to calculate the lodestar
`figure. See Gates, 987 F.2d at 1399–1400; see also, e.g., PACT XPP Techs., AG v.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`7
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000012
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 13 of 24 Page ID
` #:24904
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Xilinx, Inc., No. 2:07-CV-563-RSP, 2013 U.S. Dist. LEXIS 125819, at *8–*11 (E.D.
`Tex. Sept. 3, 2013) (awarding fees based on percentages of total hours expended on
`litigation by timeframe, where percentages were calculated using the number of patents
`at issue during each timeframe).
`Here, the hours actually spent by URC’s attorneys defending against the ’067
`and ’426 patents in this matter, both of which raised many complex issues, were
`reasonably incurred in defense of this matter and should be recompensed in full.3 The
`total hours expended by URC’s attorneys on all issues and patents in this case are
`detailed in the accompanying declarations. See generally Kang Decl. ¶¶ 5–15 & Exs.
`1–18, 33–47; Miro Decl. ¶¶ 4–6 & Exs. 1–36; Brookey Decl. ¶¶ 5–6 & Exs. 1–2.
`URC is also submitting herewith attorney billing invoices that detail all work
`performed by the attorneys, patent agents, and paralegals throughout these
`proceedings on a day-by-day basis that is the subject of URC’s fee request (and that
`excludes time spent on extraneous tasks or which would have likely sparked disputes).
`See generally Kang Decl. ¶¶ 5–15 & Exs. 1–18, 33–47; Miro Decl. ¶¶ 4–6 & Exs. 1–
`36; Brookey Decl. ¶¶ 5–6 & Exs. 1–2. Furthermore, as the Court has requested, URC
`has prepared Excel spreadsheets, which URC is submitting herewith in native format,
`that consolidates the time entries contained in all of these invoices and presents the
`data chronologically for the Court’s convenience. See Kang Decl. ¶¶ 12, 14 & Exs.
`17–18. The work described in these time entries was supervised by senior partners in
`the respective law firms, was necessary to the proper defense of URC against UEI’s
`claims in this action, and was reasonable in scope. Kang Decl. ¶¶ 13–14 & Exs. 2–16;
`
`3 URC also filed petitions for inter partes review of the ’426 and ’067 patents, which
`resulted in (a) URC discovering the fact that UEI had surreptitiously filed a petition to
`“correct” the inventorship of the ’426 patent, and (b) the invalidation of the ’067
`patent by the PTO. URC would be justified in seeking attorneys’ fees for its work in
`these administrative proceedings. See PPG Industries, Inc. v. Celanese Polymer
`Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). However, to minimize disputes URC
`does not seek to include such fees in this fee request, and has redacted time entries
`associated from the IPR proceedings from the billing records submitted with this fee
`request.
`
`
`
`8
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000013
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Filed 03/24/15 Page 14 of 24 Page ID
` #:24905
`
`Miro Decl. ¶¶ 4–5 & Exs. 1–36; Brookey Decl. ¶ 5 & Exs. 1–2.
`The Court, moreover, has required that URC apportion its fee request to include
`only the “portions of the case attributable to the ’426 and ’067 Patents, and the motion
`for reconsideration regarding the ’367 Patent.” ECF No. 475 at 15. It is impracticable
`if not impossible for URC to prepare an “hour-by-hour” apportionment of its fees on a
`patent-by-patent basis for purposes of this fee request. URC’s counsel could not have
`anticipated that the Court would require URC to make this particular apportionment
`post-trial and did not bill their time on a patent-by-patent basis, even assuming that
`would have been possible. Rather, as is standard practice, URC’s counsel used block
`billing descriptions. See Kang Decl. ¶ 13; Miro Decl. ¶ 4; Brookey Decl. ¶ 5. These
`billing descriptions described counsel’s activities on a daily basis without any attempt
`at apportionment by patent. Moreover, in the three years that this litigation has
`consumed, URC’s attorneys have generated literally thousands of daily time entries.
`Accordingly, in order to provide the Court with a reasonable calculation of the
`hours expended which are attributable to the ’426 and ’067 patents and the motion for
`reconsideration regarding the ’367 patent , URC is utilizing two different
`apportionment methodologies: a “patent-based” apportionment and an “issue-based”
`apportionment. Both approaches are supported under the case law, and URC presents
`both as a check to confirm that the apportionments are reasonable. First, URC has
`divided the litigation into discrete time periods, and, for each such time period, URC
`has determined what patents and legal issues were the subject of the work performed
`by URC’s attorneys on this matter. URC has determined that the case generated 25
`distinct legal issues, as more fully explained below. Two sets of percentages, one on a
`patent-by-patent basis and one on an issue-by-issue basis, have then been calculated to
`determine the percentage of the hours expended that were “attributable to the ’426 and
`’067 Patents, and the motion for reconsideration regarding the ’367 Patent,” as the
`Court requires. This is illustrated in the chart below:
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`9
`DEF’T UNIVERSAL REMOTE CONTROL, INC.’S SUPP. SUBMISSION RE: AWARD OF ATTORNEYS’ FEES
`CASE NO. 8:12-CV-00329 AG (JPRX)
`
`Universal Remote Control Exhibit: 1059 Page 000014
`
`

`

`Case 8:12-cv-00329-AG-JPR Document 502 Fil