Case 2:17-cv-00514-JRG Document 29-4 Filed 01/22/18 Page 1 of 5 PageID #: 211
`Case 2:17-cv—00514-JRG Document 29-4 Filed 01/22/18 Page 1 of 5 PageID #: 211
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 2:17-cv-00514-JRG Document 29-4 Filed 01/22/18 Page 2 of 5 PageID #: 212
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`UN IT ED STA TES DISTRIC T C O U RT
`SO UT H ERN D IST RICT O F FL O RIDA
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`C A SE N O . 14-cv-80651-M IDD LEBR O O K S
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`A D VA N CED GRO UN D IN FO RM ATION
`SY STEM S, lN C .,
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`Plaintiff,
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`LIFE360, IN C.,
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`D efendant.
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`/
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`ORDER GR ANTING IN M RT AND DENYJNG IN PART DEFENDANT'S M OTION FOR
`A TTO R N EY S' FEE S
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`Life360 Inc. ($$Life360''), the prevailing party in this patent case, has moved for award of
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`attom eys' fees and non-taxable expenses, along with pre- and post- judgment interest. The
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`Plaintiff, Advanced Ground Information Systems, Inc. (çW G1S'') responds that its infringement case
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`was objectively reasonable, litigated in good faith, and there is no basis for any award of attorneys'
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`fees. I have reviewed the M otion, the Response, Life360's Reply, and presided over the jury trial
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`which resulted in a finding of no infringement. The jury, however, did not invalidate the AGIS
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`patent.
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`35 U.S.C. j 285 of the Patent Act provides that a district court çiin exceptional cases may
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`aw ard reasonable attorney fees to the prevailing party.'' The Suprem e Court has held that çtan
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`dexceptional' case is sim ply one that stands out from others w ith respect to the substantive strength
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`of a party's litigating position (considering both the goveming law and the facts of the case) or the
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`tm reasonable m nnner in w hich the case w as litigated.'' O ctane Fitness, L LC v. IC ON H ealth dr
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`Fitness; Inc., 134 S. Ct. 1749, 1756 (2014). This requires a case-by-case exercise in discretion,
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`considering the totality of the circum stances.
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`Sanctionable conduct is not a necessary
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`Case 2:17-cv-00514-JRG Document 29-4 Filed 01/22/18 Page 3 of 5 PageID #: 213
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`benchm ark. Id. M oreover, courts m aintain an inherent pow er to order fee-shifting Sswhen the losing
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`party has facted in bad faith, vexatiously, w antonly, or for oppressive reasons , . . .'' 1d. (quoting
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`Alyeska Pipeline Service Co. v. Wilderness sbcfey', 42 1 U.S. 240, 258-59 (1 975)).
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`This was an exeeptionally weak case, especially with respect to the asserttd m ethod claim s,
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`w hich w ere the only claim s rem aining after claim construction. Every asserted m ethod claim
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`involved steps that could only be perfonned by multiple users on different cellular phones, or even
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`by third-party servers. lnfringement of a m ethod claim requires a showing that a single rlrl
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`perform ed each and every step of the claim , and inducem ent liability m ust be predicated on an ad
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`of direct infringement (i.e. for a m ethod claim , infringem ent by a single party). f imelight Xe/wwrkt
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`Inc. v. Akamai Techs., lnc. , 134 S. Ct. 2 1 1 1 (2014). See also, agl/cl?zltz/ Techs., 1nc v. f imelight
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`Networks, Inc., 786 F.3d 899 (Fed. Cir. 2015), on reh 'g en banc, 797 F.3d 1020, and reh 'g en banc
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`granteJ opinion vacated, 612 F. App'x 617. Users of the Life360 app could not perform the
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`asserted m ethod claim because no user had control of other users in a circle. M oreover, neither
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`Life360 or its users controlled or m aintained 1ia rtm ote netw ork strver'' that could transm it m aps to
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`other users in the eircle. A dditionally, Claim l of the 1954 Patent required accessing a w ebsite that
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`enables a user to establish both public and private netw orks, but any contention that the Life360 app
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`allowed users to do so w as com pletely untenable aher claim construction.
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`These Parties never com peted, never lost business to each other, indeed had never heard of
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`each other before AG IS law yers sent a dem and letter to Life360, a startup com pany that, w hilt
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`show ing prom ise, had never m ade a profit. The letter dem anded that Life360 either negotiate a
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`royalty or shut down its service. The Com plaint claim ed, w ithout any basis that it w as being
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`irreparably harmed by Life360, that Life 360 should be enjoined from operation. W hile I stop short
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`of a finding of bad faith, continued assertion of these claim s seem ed designed to extract settlem ent
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`not based upon the m erits of the claim but on the high cost of litigation.
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`2
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`Case 2:17-cv-00514-JRG Document 29-4 Filed 01/22/18 Page 4 of 5 PageID #: 214
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`AGIS, in arguing the case was not exceptional, points to the denial of summary judgment
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`and the fact that I submitted the case to the jury and did not grant Life360's Motion for Judgment as
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`a M atter of Law. 1 considered granting summary judgment in favor of Life360 but did not because
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`of an argum ent that the claim ed m ethod steps w ere perfonned autom atically as a result of sending
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`an invitation to join a circle. W hile I reserved ruling on the Motion for Judgment, I did so having
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`decided that, should it prove necessary, I would enter judgment in favor of Life360 on the
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`infringem ent claim .
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`Having concluded the case w as exceptional, 1 turn to the am ount of fees that should be
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`aw arded. The Com plaint in the case w as filed on M ay 15, 2014. The Suprem e Court's decision in
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`Limelight A è/w /r/cz, 134 S. Ct. 2 1 1 1 w as decided June 2, 2014. This decision confirm ed the single
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`part im pedim ent to the m ethod claim s. On N ovem ber 21, 2014, I issued a M arkm an O rder which
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`held the system claim s indefinite and construed ivcom m on interest netw ork'' and itprivate'' and
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`ktpublic'' networks. G iven the Suprem e Court's decision and m y M arkm an construction, A G IS had
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`no reasonable chance of success on its claim s. I therefore award fees from N ovem ber 2 l , 2014
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`through the conclusion of trial, M arch 13, 2015.
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`Life360 also seeks to recover expert witness fees, pre- and post- judgment interest, and non-
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`taxable expenses. But 35 U.S.C. j 285 only authorizes a court to award reasonable attorney fees not
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`expert witness fees, Amsted Indus. Inc. v. Buckeye Steel Castings Co. , 23 F.3d 374, 377-79 (Fed.
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`Cir. 1994), and as noted above, I am exercising discretion solely pursuant to j 285 and not relying
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`upon any inherent power to sanction conduct, Therefore, expert witness fees are not aw arded.
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`W ith respect to prejudgment interest, the Federal Circuit has held in a pçe-octane Fitness
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`decision that çûa district court does have authority, in cases of ibad faith or other exceptional
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`circumstancess' to award prejudgment interest on the unliquidated sum of an award made under
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`Section 285.9' Mathis v, Spears, 857 F.2d 749, 761 (Fed. Cir. 1988). The court went on to say,
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`Case 2:17-cv-00514-JRG Document 29-4 Filed 01/22/18 Page 5 of 5 PageID #: 215
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`however, çigtlhat the court has a common law authority to exercise its inherent equitable power does
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`not mean it must do so.'' f#. Assuming but not deciding that j 285 authorizes the award of
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`prejudgment interest in the absence of a finding of bad faith, in the circumstances of this case, l do
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`not find it appropriate. Furtherm ore, I do not find the aw ard of non-tM able expenses to be
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`w arranted.
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`W hile A G IS raised questions about aspects of the fees requested, the reply represents that
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`the invoices attached to its M otion are the bills that w ere subm itted to Life360. The nm ounts of fees
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`betw een N ovem ber 21
`1 These fees are reasonable in
`, 2014 and M arch 13, 2015 total $684,190.25.
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`the view of the Court and, due to the exceptional nature of the case, should be aw arded.
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`A ccordingly, it is hereby
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`ORDERED AND ADJUDGED that Defendant's Motion for Attomeys' Fees (DE 190) is
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`G M N TED IN PA RT A ND DEN IED IN PA R T . Judgm ent in the am ount of $684,190.25 shall
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`be entered in favor of Life360.
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`SO ORDERED in Chambers at West Palm Beach, Florida, this / day of December,
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`2015.
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`Copies to;
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`Counsel of R ecord
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`LD M . M ID D LEBROO K S
`U NITED STA TES D ISTRICT JU D GE
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`1 This total includes the sum of lead cotm sel fees, $602,346.25, plus local counsel fees, $81,844.
`Lead counsel fees were calculated by taking the sum of $920,045.00 (total fees incurred by lead
`counsel) see (DE 191-2 at 2), and subtracting $317,698.75 (lead cotmsel fees incurred before
`November 21, 2014 and after M arch 13, 2015), see (fJ at 3-31). Local counsel fees were calculated
`in a sim ilar m nnner.
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`4
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