Case 1:22-cv-22706-RNS Document 176 Entered on FLSD Docket 05/06/2023 Page 1 of 22
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
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`Case No. 1:22-cv-22706-RNS
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` BELL NORTHERN RESEARCH, LLC,
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`JURY TRIAL DEMANDED
` HMD AMERICA, INC.; HMD GLOBAL OY;
` SHENZHEN CHINO-E COMMUNICATION
` CO., LTD.; HON HAI PRECISION
` INDUSTRY CO., LTD; TINNO MOBILE
` TECHNOLOGY CORP.; SHENZHEN TINNO
` MOBILE CO., LTD.; TINNO USA, INC.;
` UNISOC TECHNOLOGIES CO., LTD.;
` SPREADTRUM COMMUNICATIONS USA,
` INC.; WINGTECH TECHNOLOGY CO.;
` LTD.; WINGTECH INTERNATIONAL, INC.;
` BEST BUY CO., INC.; BEST BUY STORES
` L.P.; TARGET CORP.; WALMART INC.,
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`Plaintiff,
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`v.
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`Defendant(s).
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`PLAINTIFF BELL NORTHERN RESEARCH, LLC’S MEMORANDUM OF LAW IN
`OPPOSITION TO DEFENDANT HON HAI PRECISION INDUSTRY CO., LTD’S
`MOTION FOR EXCEPTIONAL CASE STATUS
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`Case 1:22-cv-22706-RNS Document 176 Entered on FLSD Docket 05/06/2023 Page 2 of 22
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................................... 1
`I.
`FACTUAL BACKGROUND .............................................................................................. 2
`II.
`A. BNR’s First Filed Case Against Hon Hai Resulted in Dismissal Without Prejudice as to
`Hon Hai and All Defendants ....................................................................................................... 2
`B. BNR’s Second Filed Case Against Hon Hai Also Resulted in Dismissal Without Prejudice
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`.............................................................................................................................................. 5
`III.
`LEGAL STANDARD .......................................................................................................... 7
`A. Section 285 Attorneys’ Fees Are Limited to Exceptional Cases and Only to a Prevailing
`Party ............................................................................................................................................ 7
`B. FRCP 54 Attorney Fee Motions Must Be Filed 14 Days After Entry of Judgement .......... 8
`C. Local Rule 7.3 Mandates Certain Requirements for Motions for Attorneys’ Fees ............. 9
`IV. ARGUMENT ....................................................................................................................... 9
`A. BNR’s Case Against Hon Hai Is Not Exceptional ............................................................. 10
`B. BNR Has Been Reasonable Throughout the Litigation ..................................................... 12
`C. Hon Hai’s Motion Does Not Meet the Standards of 35 U.S.C. § 285, FRCP 54, and Local
`Rule 7.3 ..................................................................................................................................... 13
`V. CONCLUSION ..................................................................................................................... 17
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`Case 1:22-cv-22706-RNS Document 176 Entered on FLSD Docket 05/06/2023 Page 3 of 22
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`TABLE OF AUTHORITIES
`
`Cases
`Beach Blitz Co. v. City of Miami Beach,
`No. 1:17-cv-23958-UU,
`2018 U.S. Dist. LEXIS 165462 (S.D. Fla. Sept. 24, 2018) ................................................ 14, 15
`Bivens v. Ball Healthcare Servs.,
`No. 18-097-CG-M,
`2019 U.S. Dist. LEXIS 10727 (S.D. Ala. Jan. 23, 2019).................................................... 15, 16
`CRST Van Expedited, Inc. v. E.E.O.C.,
`578 U.S. 419 (2016) .................................................................................................................... 8
`Ctr. Way Co. Ltd. v. Individuals,
`No. 22-61705-CIV-SINGHAL,
`2023 U.S. Dist. LEXIS 52198 (S.D. Fla. Mar. 27, 2023) ..................................................... 8, 13
`Direct Fitness Solutions, LLC v. Direct Fitness Solutions, LLC,
`281 F. Supp. 3d 697 (N.D. Ill 2017) ......................................................................................... 12
`F&G Research, Inc. v. Google Inc.,
`No. 06-cv-60905-CMA,
`2007 U.S. Dist. LEXIS 70072 (S.D. Fla. Sep. 20, 2007) ......................................................... 12
`Kearney v. Auto-Owners Ins. Co.,
`422 Fed.Appx. 812 (11th Cir. 2011) ......................................................................................... 16
`Mixing & Mass Transfer Techs., LLC v. SPX Corp.,
`No. 19-529 (MN),
`2020 U.S. Dist. LEXIS 206000 (D. Del. 2020) .................................................................... 8, 13
`NetSoc, LLC v. Chegg Inc.,
`No. 18-cv-10262-RA,
`2020 U.S. Dist. LEXIS 232321 (S.D.N.Y. Dec. 10, 2020) ...................................................... 13
`O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC,
`955 F.3d 990 (Fed. Cir. 2020)............................................................................................... 8, 13
`Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
`572 U.S. 545 (2014) .................................................................................................................... 8
`Orlando Commc’ns LLC v. LG Elecs., Inc.,
`No. 6:14-cv-1017-Orl-22KRS,
`2015 U.S. Dist. LEXIS 33845 (M.D. Fla. Mar. 16, 2015) ....................................................... 15
`Semtek Int’l Inc. v. Lockheed Martin Corp.,
`531 U.S. 497 (2001) .................................................................................................................. 15
`Shipping & Transit, LLC v. 1A Auto, Inc.,
`283 F. Supp. 3d 1290 (S.D. Fla. 2017) ..................................................................................... 12
`Traxcell Techs., LLC v. AT&T Corp.,
`No. 2:17-cv-00718-RWS-RSP,
`2022 U.S. Dist. LEXIS 237105 (E.D. Tex. Dec. 22, 2022) ...................................................... 13
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`WPEM, Inc. v. SOTI Inc.,
`No. 2:18-cv-00156-JRG,
`2020 U.S. Dist. LEXIS 17449 (E.D. Tex. Feb. 4, 2020) .......................................................... 13
`ZT IP, LLC v. VMWare, Inc.,
`No. 3:22-cv-0970-BS,
`2023 U.S. Dist. LEXIS 19165 (N.D. Tex. Feb. 6, 2023) .......................................................... 13
`
`
`Statutes
`35 U.S.C. § 285 ........................................................................................................................... 2, 8
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`Rules
`Fed. R. Civ. P. 54 ................................................................................................................... passim
`Local Rule 7.3 ........................................................................................................................ passim
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`Case 1:22-cv-22706-RNS Document 176 Entered on FLSD Docket 05/06/2023 Page 5 of 22
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`Pursuant to Local Rule 7.1(c), Plaintiff Bell Northern Research, LLC (“BNR” or
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`“Plaintiff”) submits this opposing memorandum of law against Defendant Hon Hai Precision
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`Industry Co., Ltd.’s (“Hon Hai” or “Defendant”) Motion for Exceptional Case Status (the
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`“motion”). (Dkt. 1631.) For the reasons that follow, the motion should be denied.
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`I.
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`INTRODUCTION
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`Hon Hai’s motion is wrong on the facts and wrong on the law. BNR had every right to
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`sue Hon Hai, one of the world’s largest consumer electronics manufacturers, for infringing its
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`patents relating to mobile phones and tablets in this Court. Nothing in Hon Hai’s motion to
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`dismiss for lack of personal jurisdiction (Dkt. 78) or its motion for exceptional case status (Dkt.
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`163) establishes otherwise. Moreover, after BNR filed suit against Hon Hai, BNR reasonably
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`engaged with Hon Hai throughout the litigation, and the record shows this. Contrary to the
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`declarations filed by Hon Hai’s counsel and the arguments in its motion, BNR did not refuse to
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`consider any information or make frivolous allegations against Hon Hai.
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`Rather, BNR conducted a diligent pre-suit investigation before bringing suit against Hon
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`Hai (Ex. 8 at ¶ 10), and BNR stands by the infringement and jurisdictional allegations in the
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`Complaint against Hon Hai. Hon Hai’s motion to dismiss was filed on December 19, 2022, and
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`to avoid implicating jurisdiction in this Court under Rule 4(k)(2), Hon Hai acknowledged in that
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`motion that it could be sued in California. (Dkt. 78 at 14–15.) Therefore, in an effort to
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`streamline the litigation and avoid burdening the Court, BNR proposed dismissing Hon Hai
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`without prejudice. Hon Hai agreed. Dismissal papers were filed and Hon Hai was out of this
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`case shortly thereafter. As part of its overall litigation strategy, BNR may now sue Hon Hai in
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`California. These facts do not warrant fees to Hon Hai.
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`1 Citations to “Mot.” refer to Dkt. 163.
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`1
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`The allegations in Hon Hai’s motion that BNR did not engage with Hon Hai’s counsel
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`are also incorrect. As to the first filed case, BNR always stood by the allegations in its
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`Complaint that Hon Hai infringed. (Ex. 13 at ¶ 3–8). The issue of alleged lack of personal
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`jurisdiction was never raised as to that first Complaint. Hon Hai’s counsel raised the
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`jurisdictional issue after the second filed case. BNR’s counsel then asked for a draft of Hon
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`Hai’s motion to dismiss many weeks before it was supposed to be filed, but received nothing.
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`(Ex. 8; Ex. 9.) Counsel for Hon Hai apparently does not recall this happening, but it did.
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`Legally, Hon Hai’s motion also fails to satisfy the basic requirements for fee motions
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`under 35 U.S.C. § 285, Federal Rule of Civil Procedure (“FRCP”) 54, and Local Rule 7.3. In the
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`first instance, there was nothing “exceptional” about Hon Hai’s dismissal without prejudice, and
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`BNR may still sue Hon Hai for patent infringement in California, thereby nullifying Hon Hai’s
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`status as a “prevailing party” under 35 U.S.C. § 285. The motion also fails on its face to show
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`compliance with FRCP 54 and Local Rule 7.3.
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`For all of the above reasons, Hon Hai’s motion should be denied.
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`II.
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`FACTUAL BACKGROUND
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`A.
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`BNR’s First Filed Case Against Hon Hai Resulted in Dismissal Without
`Prejudice as to Hon Hai and All Defendants
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`On April 26, 2022, BNR filed a Complaint alleging patent infringement against Hon Hai
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`And various other defendants (the “-21035 case”). Bell Northern Research, LLC v. HMD
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`America, Inc., No. 1:22-cv-21035-RNS, Dkt. 1 (S.D. Fla. Apr. 6, 2022). The Complaint of the -
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`21305 case included the allegation that Hon Hai “introduce[d] products and services into the
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`stream of commerce that incorporate infringing technology, knowing that they would be sold in
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`this judicial district and elsewhere in the United States.” Id. at ¶ 6. Indeed, Hon Hai to this day
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`touts itself as the “largest electronics manufacturer” in the world. (Ex. 1 at 1.) The first
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`Complaint alleged infringement under 35 U.S.C. § 271 against defendants including Hon Hai on
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`13 patents with 19 exemplary phones and tablets as the accused products. Id. at ¶ 98. Specific
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`allegations relating to the infringing technology of these accused products were detailed
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`throughout the Complaint. See id. at ¶¶ 99–345.
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`Before filing the first Complaint, BNR conducted a thorough due diligence on the
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`infringement of each named defendant, including Hon Hai. (Ex. 8 at ¶ 10.) With respect to Hon
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`Hai, that due diligence included locating public documents and information linking Hon Hai to
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`the accused products in the first Complaint. (Id.) For example, BNR reviewed the following
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`public documents before filing the first Complaint against Hon Hai:
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`• https://asia.nikkei.com/Business/Nokia-brand-returns-under-Foxconn (Ex. 3);
`• https://www.cdrinfo.com/d7/content/nokia-phones-reborn-india-next-year-hon-hai-
`manufacture-them (Ex. 5);
`• https://www.prnewswire.com/news-releases/hmd-global-founded-to-create-new-
`generation-of-nokia-branded-mobile-phones-and-tablets-579916811.html (Ex. 14);
`• https://www.foxconn.com/en-us/about/worldwide (Ex. 15).
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`The Nokia branded accused products in this case involve HMD Global Oy as the
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`“exclusive licensee” of the Nokia brand as it relates to these accused products and Hon Hai as
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`the manufacturer. (Ex. 2 at 11; Ex. 14.) Prior public reports indicated that HMD Global Oy and
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`Hon Hai—through its business unit FIH Mobile—were involved in a $350 million deal that
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`would drive the “return of the Nokia brand” to global markets. (Ex. 3 at 1; Ex. 4 at 1.) At
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`roughly around the same time as this deal, public reporting further indicated that Hon Hai was
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`expanding operations in India, and would “manufacture cellphones under the Nokia brand in
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`India,” as part of that business expansion. (Ex. 5 at 1.)
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`About a month after the -21035 case was filed, counsel for BNR was contacted by
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`counsel for Hon Hai and the parties communicated about the case over the phone and via email
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`from May 11 until August 24, 2022. (Ex. 6 at 1–7; Ex. 13 at ¶ 3–8.) Part of those
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`communications were to arrange a 90-day extension on May 20th for Hon Hai to respond to the
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`first Complaint in exchange for waiving service, taking its response date to the end of August,
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`2022. (Ex. 6 at 1–7; Ex. 13 at ¶ 3–8.) During the telephone conversations, counsel for Hon Hai
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`never raised an issue of alleged lack of personal jurisdiction over Hon Hai in this Court. (Id.)
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`Instead, counsel for Hon Hai indicated that Hon Hai did not manufacture the accused devices for
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`HMD (another defendant) and should be dismissed for that reason. (Id.) However, counsel for
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`Hon Hai never offered any evidence of Hon Hai’s supposed non-involvement in making the
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`accused products in the first Complaint, such as a declaration from Hon Hai. (Id.) Further, Hon
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`Hai’s counsel’s statements about Hon Hai’s alleged non-involvement in making the accused
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`products were contrary to public documents BNR had located and evaluated prior to filing the
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`first Complaint against Hon Hai (see above).
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`Just prior to the extended due date for Hon Hai to respond to the first Complaint on
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`August 25, 2022, the -21035 case was dismissed without prejudice by BNR against all of the
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`named defendants in that case (including Hon Hai). Bell Northern Research, LLC, No. 1:22-cv-
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`21035-RNS, Dkt. 55 (S.D. Fla. Aug. 25, 2022.) BNR’s reasons for dismissing the first
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`Complaint had nothing to do with Hon Hai’s counsel’s foregoing statements. Indeed, the second
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`Complaint (this case) was filed that same day, August 25, 2022, against both Hon Hai and the
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`other defendants alleging the same bases for infringement, including as against some additional
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`accused products and naming some additional defendants. Bell Northern Research, LLC v. HMD
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`America, Inc., No. 1:22-cv-22706-RNS, Dkt. 1 (S.D. Fla. Aug. 25, 2022) (the “-22706 case”).
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`Thus, the above, pre-suit diligence regarding Hon Hai’s infringement of the asserted
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`patents that applied to the first Complaint applied equally to the same allegations against Hon
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`Hai in the second Complaint of August 25, 2022. Moreover, when Hon Hai eventually filed its
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`motion to dismiss in this case and accompanying declaration, statements in that declaration that
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`Hon Hai provides components and services to FIH Mobile that may be used in the accused
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`products and owns 63% of FIH Mobile’s stock (see Dkt. 78-1 at ¶¶ 16–18) appear to confirm the
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`pre-suit infringement due diligence carred out by BNR from the public documents (see above).
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`All of this supports BNR’s allegations of infringement against Hon Hai based on its activities in
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`connection with those accused products.
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`B.
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`BNR’s Second Filed Case Against Hon Hai Also Resulted in Dismissal
`Without Prejudice
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`In the second Complaint that BNR filed, which is the Complaint in this case, BNR
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`alleged that Hon Hai introduced products and services into the stream of commerce that
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`incorporated infringing technology. (See id. at ¶ 6.) BNR alleged the same stream of commerce
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`theory in the -21035 case. (Dkt. 1 at ¶ 6.)
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`At some point, Hon Hai obtained new counsel. Hon Hai’s new counsel and BNR’s
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`counsel first conferred on an unopposed 30-day extension request for this -22706 case2 that was
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`filed on September 23, 2022. (Dkt. 43.) About a week later on Friday, September 30th, Hon
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`Hai’s counsel emailed BNR’s counsel stating that Hon Hai “intends to file a motion to dismiss
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`for lack of personal jurisdiction,” and asked if BNR’s counsel was available to meet and confer
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`on Monday or Tuesday pursuant to Local Rule 7.1(a)(3). (Ex. 7 at 1.) Counsel for BNR
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`confirmed that they were available that afternoon, as requested by Hon Hai, on Monday, October
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`3, 2022. (Id.)
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`During the meet and confer on October 3, 2022, counsel for BNR conveyed at the outset
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`of the call that BNR was open to hearing Hon Hai’s position and receiving any information about
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`the motion. (Ex. 8 at ¶ 4; Ex. 9 at ¶ 4.) Hon Hai’s counsel indicated that Hon Hai did not sell to
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`Nokia, but did sell to Foxconn International Holdings Mobile. (Ex. 8 at ¶ 5; Ex. 9 at ¶ 5.) Hon
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`Hai’s counsel also conveyed that Hon Hai had an office in California. (Ex. 8 at ¶ 6; Ex. 9 at ¶ 6.)
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`Counsel for BNR requested a draft of the motion that Hon Hai intended to file. (Ex. 8 at ¶ 7; Ex.
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`2 Citations to “Dkt.” refer to the -22706 case.
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`9 at ¶ 7.) Counsel for Hon Hai provided a non-committal response and that Hon Hai intended to
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`file its motion on October 24th. (Ex. 8 at ¶ 8; Ex. 9 at ¶ 8.) In response to Hon Hai’s counsel,
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`counsel for BNR indicated that they would see Hon Hai’s motion papers after filing. (Ex. 8 at ¶
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`9; Ex. 9 at ¶ 9.)
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`On October 20, 2022, Defendants HMD Global Oy, HMD America, Inc., Tinno Mobile
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`Technology Corp., Shenzhen Tinno Mobile Co., Ltd., TInno USA, Inc., Wingtech Technology
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`Co., Ltd., Wingtech International, Inc., and Walmart Inc. filed a motion that BNR opposed for
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`the Court to set a common response deadline of January 16, 2023 for all Defendants who had
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`either been served or had waived service. (Dkt. 59 at 1.) Hon Hai was not one of the moving
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`parties in this motion, nor are they identified as having conferred with the other Defendants in
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`the Certification of Pre-Filing Conference in the motion. (Id. at 5.)
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`On October 24, 2022—the day that Hon Hai said it would file its motion to dismiss—the
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`Court reset the response deadline for all Defendants to December 19, 2022. (Dkt. 64.) Hon Hai
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`did not file its intended motion on October 24, 2022 as previously forecasted by Hon Hai’s
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`counsel.
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`On December 19, 2022, Hon Hai filed its motion to dismiss under FRCP 12(b)(2) for
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`lack of personal jurisdiction. (Dkt. 78.) The following week, counsel for BNR conferred with
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`counsel for Hon Hai and two other Defendants requesting a 3-week extension for BNR to
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`respond to the multiple pending motions to dismiss. (Ex. 10.) After conferring, BNR filed its
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`motion to extend the response deadlines to January 24, 2023 (Dkt. 104), which the Court
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`granted. (Dkt. 105.)
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`On January 23, 2023, counsel for BNR conferred with counsel for Hon Hai regarding a 1-
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`week extension for further discussion on “dropping” Hon Hai and where jurisdiction may be
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`proper. (Ex. 11.) Hon Hai confirmed that it did not oppose BNR’s requested extension. (Id.)
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`Counsel for BNR and Hon Hai later conferred via teleconference on January 26, 2023 and
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`reached agreement that BNR would dismiss Hon Hai without prejudice. (Id.) On January 31,
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`2023, BNR filed as unopposed its motion to dismiss without prejudice Hon Hai and Spreadtrum
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`Communications USA, Inc (“Spreadtrum”). (Dkt. 126.) Defendants HMD Global Oy and HMD
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`America, Inc. opposed the motion (Dkt. 129), and Hon Hai filed a notice of clarification that
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`voiced its opposition to “an order that each party shall bear its own costs, expenses, and
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`attorneys’ fees.” (Dkt. 128.) The Court denied without prejudice BNR’s motion. (Dkt. 130).
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`After conferring with Defendants, BNR filed a second motion to dismiss without
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`prejudice as to Hon Hai and Spreadtrum. (Dkt. 131.) On February 6, 2023, the Court dismissed
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`without prejudice Hon Hai and Spreadtrum consistent with FRCP 41(a)(2), but did not adopt the
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`terms of the proposed order submitted by BNR that “each party shall bear its own costs,
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`expenses, and attorneys’ fees.” (Dkt. 132.)
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`About a month after being dismissed from the case, counsel for Hon Hai emailed counsel
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`for BNR regarding exceptional case status. (Ex. 12.) The parties met and conferred on March
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`23, 2023. (Id.) As memorialized in Exhibit 12, BNR conveyed that Hon Hai was not entitled to
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`any fees and pointed out certain problems with Hon Hai’s draft motion and declarations. (Id.)
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`Although Hon Hai did not agree with what BNR conveyed during the meet and confer regarding
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`the inappropriateness of the exceptional case status motion, counsel for Hon Hai provided BNR
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`with updated declarations and a new email exhibit. (Id.) The parties further conferred on
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`briefing schedules, and BNR’s responsive brief in opposition is being filed pursuant to this
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`Court’s Order of April 20, 2023. (Dkt. 168.)
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`III. LEGAL STANDARD
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`A.
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`Section 285 Attorneys’ Fees Are Limited to Exceptional Cases and Only to a
`Prevailing Party
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`Section 285 is the Patent Act’s fee-shifting statute and provides that “[t]he court in
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`Case 1:22-cv-22706-RNS Document 176 Entered on FLSD Docket 05/06/2023 Page 12 of 22
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`exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285.
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`An “exceptional” case under 35 U.S.C. § 285 “is simply one that stands out from others with
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`respect to the substantive strength of a party’s litigating position (considering both the governing
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`law and the facts of the case) or the unreasonable manner in which the case was litigated.”
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`Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 545 (2014). “District courts
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`may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion,
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`considering the totality of the circumstances.” Id.
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`A “prevailing party” determination under 35 U.S.C. § 285 requires a “material alteration
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`of the legal relationship of the parties” that is marked by “judicial imprimatur.” O.F. Mossberg
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`& Sons, Inc. v. Timney Triggers, LLC, 955 F.3d 990, 992 (Fed. Cir. 2020) (quoting CRST Van
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`Expedited, Inc. v. E.E.O.C., 578 U.S. 419, 422 (2016) (affirming district court’s denial of § 285
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`attorneys’ fees where a Rule 41 dismissal without prejudice was found to not alter the legal
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`relationship between the parties and did not confer prevailing-party status); see Mixing & Mass
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`Transfer Techs., LLC v. SPX Corp., No. 19-529 (MN), 2020 U.S. Dist. LEXIS 206000, at *7–8
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`(D. Del. 2020) (denying motion for attorneys’ fees and holding that a court ordered dismissal
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`without prejudice did not confer prevailing-party status under § 285 because the dismissal would
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`not prevent plaintiff from reasserting the same claims against defendants in another action); see
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`also Ctr. Way Co. Ltd. v. Individuals, No. 22-61705-CIV-SINGHAL, 2023 U.S. Dist. LEXIS
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`52198, at *1 (S.D. Fla. Mar. 27, 2023) (prevailing party status not conferred by voluntary
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`dismissal under Rule 41(a)(1)(A)(i)).
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`B.
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`FRCP 54 Attorney Fee Motions Must Be Filed 14 Days After Entry of
`Judgement
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`Under Rule 54, “[a] claim for attorney’s fees and related nontaxable expenses
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`must be made by motion[.]” Fed. R. Civ. P. 54(d)(2)(A). The Rule 54 motion must “(i) be filed
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`no later than 14 days after the entry of judgment; (ii) specify the judgment and the statute, rule,
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`or other grounds entitling the movant to the award; (iii) state the amount sought or provide a fair
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`estimate of it; and (iv) disclose, if the court so orders, the terms of any agreement about fees for
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`the services for which the claim is made.” Fed. R. Civ. P. 54(d)(2)(B)(i)–(iv). “The court may
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`decide issues of liability for fees before receiving submissions on the value of services.” Fed. R.
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`Civ. P. 54(d)(2)(C). Under Rule 54(a), a judgment “includes a decree and any order from which
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`an appeal lies.” Fed. R. Civ. P. 54(a).
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`C.
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`Local Rule 7.3 Mandates Certain Requirements for Motions for Attorneys’
`Fees
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`Under Local Rule 7.3, a motion for attorneys’ fees must:
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`be filed and served within sixty (60) days of the
`(1)
`entry of the final judgment or order giving rise to the claim,
`regardless of the prospect or pendency of supplemental
`review or appellate proceedings:
`identify the judgment or other order which gives
`(2)
`rise to the motion, as well as the statute, rule, or other
`grounds entitling the moving party to the award;
`state the amount sought;
`(3)
`(4)
`disclose the terms of any applicable fee agreement;
`(5)
`provide:
`(A) the identify, experience, and qualifications for
`each timekeeper for whom fees are sought;
`(B) the number of hours reasonably expended by
`each such timekeeper;
`(C) a description of the tasks done during those
`hours; and
`(D) the hourly rate(s) claimed for each timekeeper;
`describe and document with invoices all incurred
`(6)
`and claimed fees and expenses not taxable under 28 U.S.C.
`§ 1920;
`be verified; and
`(7)
`(8)
`certify that a good faith effort to resolve issues by
`agreement occurred pursuant to Local Rule 7.3(b),
`describing what was and was not resolved by agreement
`and addressing separately the issues of entitlement to fees
`and amount.
`
`
`9
`
`Local Rule 7.3(a)(1)–(8).
`
`IV. ARGUMENT
`
`

`

`Case 1:22-cv-22706-RNS Document 176 Entered on FLSD Docket 05/06/2023 Page 14 of 22
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`A.
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`BNR’s Case Against Hon Hai Is Not Exceptional
`
`Hon Hai describes itself as the world’s “largest electronics manufacturer” (Ex. 1 at 1) and
`
`its declarant admitted in its response to BNR’s Complaint that “Hon Hai sells mobile device
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`components and services to Foxconn International Holdings Mobile, Ltd., (‘FIH Mobile’).”
`
`(Dkt. 78-1 at ¶ 16.) Hon Hai’s declarant even suggests that Hon Hai’s components are actually
`
`used in the accused products of this case, while also providing the hedging statement that “[t]o
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`the extent that any Hon Hai components are used in the Accused Products, Hon Hai does not
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`oversee or control which products incorporate the components . . . ” (Id.) Yet the same
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`declarant also admits that Hon Hai owns 63% of FIH Mobile’s stock, but “does not control the
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`day-to-day operations of FIH Mobile.” (Id. at ¶ 18.)
`
`Tellingly, this same declaration completely avoids the issue of Hon Hai’s relationship
`
`and involvement with Defendant HMD Global Oy—the exclusive licensee of the Nokia branded
`
`accused products. Instead, the declaration introduces a red herring—Nokia—and fails to deny
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`whether Hon Hai does in fact “make, use, sell, offer to sell, or import any of the Accused
`
`Products to, or on behalf of, [HMD Global Oy].” This is significant, because Hon Hai’s first
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`attorney represented that Hon Hai “doesn’t make devices for HMD.” (See Ex. 6 at 1.) Yet, no
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`reference is made to HMD in Hon Hai’s declaration.
`
`BNR’s Complaint properly alleged patent infringement under 35 U.S.C. § 271 against
`
`Hon Hai in this District based on its involvement with the accused products. BNR’s Complaint
`
`was and is strong. The Complaint’s infringement allegations against Hon Hai were supported by
`
`pre-suit due diligence from public documents, which was confirmed or at least bolstered by the
`
`declaration Hon Hai submitted as part of its motion to dismiss. Indeed, the infringement
`
`allegations are so strong that Hon Hai abandoned its prior tactic in the -21035 case of denying
`
`10
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`

`

`Case 1:22-cv-22706-RNS Document 176 Entered on FLSD Docket 05/06/2023 Page 15 of 22
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`that it committed any act that could even be accused of infringement and instead abruptly shifted
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`in this case to denying personal jurisdiction.
`
`Even on personal jurisdiction, counsel for Hon Hai provided scant information about the
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`issue on the meet and confer of October 3, 2022, and confirmed Hon Hai’s office in California.
`
`BNR disputes that Hon Hai’s counsel “offered to provide documentation to BNR substantiating
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`that Hon Hai has no relationship with Nokia, and that there is no personal jurisdiction over Hon
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`Hai in Florida.” (See Mot., Ex. A at ¶ 4.) BNR’s counsel expressly asked for a draft of the
`
`intended motion, and Hon Hai’s counsel provided a non-committal response. (Ex. 8 at ¶ 8; Ex. 9
`
`at ¶ 8.) Even if Hon Hai continues to dispute this point, it cannot dispute that after the October 3,
`
`2022 meet and confer, it did not volunteer any additional information whatsoever or even try to
`
`follow-up before filing its motion to dismiss. Nothing was stopping Hon Hai’s counsel from
`
`sending BNR an email from October 3, 2022 to December 19, 2022 about its intended motion.
`
`Moreover, Hon Hai did not restate any intent to BNR to file a motion to dismiss for lack of
`
`personal jurisdiction after the October 24, 2022 deadline came and went from when it said it
`
`would file.
`
`Hon Hai’s arguments that this case is exceptional under § 285 should be rejected in their
`
`entirety. First, BNR’s claims are not “baseless patent infringement allegations” and Hon Hai
`
`fails to justify why its attack on BNR’s pleading renders this case exceptional. (See Mot. at 3, 8.)
`
`The fulsome basis for BNR’s infringement allegations against Hon Hai are set forth above, and
`
`BNR’s patent infringement allegations meet the standard for pleading in patent cases. Hon Hai
`
`fails to persuasively argue otherwise.
`
`Hon Hai’s cited authorities on this point are misplaced and fail to demonstrate that this
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`case is exceptional or that BNR’s claims are frivolous. See Mot. at 8–10; Shipping & Transit,
`
`LLC v. 1A Auto, Inc., 283 F. Supp. 3d 1290, 1297–98 (S.D. Fla. 2017) (observing that plaintiff’s
`
`11
`
`

`

`Case 1:22-cv-22706-RNS Document 176 Entered on FLSD Docket 05/06/2023 Page 16 of 22
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`patents were substantively weak under 35 U.S.C. § 101); F&G Research, Inc. v. Google Inc., No.
`
`06-cv-60905-CMA, 2007 U.S. Dist. LEXIS 70072, at *38 (S.D. Fla. Sep. 20, 2007) (awarding
`
`Rule 11 sanctions in patent infringement case against Google regarding “scrolling wheel
`
`computer mice” where court found that it is “common knowledge that Google does not sell or
`
`distribute computer mice[]”); Direct Fitness Solutions, LLC v. Direct Fitness Solutions, LLC,
`
`281 F. Supp. 3d 697, 701 (N.D. Ill 2017) (inferring that plaintiff did not have a colorable
`
`trademark claim).
`
`Accordingly, BNR’s Complaint does not support Hon Hai’s theory that BNR “did not
`
`conduct a reasonable pre-suit investigation,” nor are any of BNR’s patent infringement
`
`allegations against Hon Hai frivolous. There is nothing weak about BNR’s patents and the
`
`public information above concerning Hon Hai and the accused products, available on the
`
`Internet, supports BNR’s patent infringement claims against Hon Hai. The global scale of Hon
`
`Hai’s operations, coupled with its prior business registration in Florida, supports BNR’s
`
`allegations, it does not make them frivolous. (See Mot. at 9.) Hon Hai also wrongly argues that
`
`“BNR conducted no jurisdictional investigation before twice filing[sic] its allegations, ignored
`
`repeated notice of jurisdictional and party identity issues.” (See Mot. at 10.) Not so. BNR
`
`conducted a diligent pre-suit investigation and engaged with counsel for Hon Hai.
`
`B.
`
`BNR Has Been Reasonable Throughout the Litigation
`
`Hon Hai wrongly accuses BNR of failing to assess its allegations and argues that BNR
`
`