IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF NORTH CAROLINA
`WESTERN DIVISION
`
`NO. 5:10-CV-25-FL
`
`MEMORANDUM OPINION
`and ORDER
`(UNDER SEAL)1
`
`)))))))))
`
`SAS INSTITUTE, INC.,
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` Plaintiff / Judgment Creditor,
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` v.
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`WORLD PROGRAMMING LIMITED,
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` Defendant / Judgment Debtor.
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`This matter returns to the court’s attention on a number of motions including: 1) motion for
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`relief under the All Writs Act, 28 U.S.C. § 1651, (“AWA”) and Rule 60 of the Federal Rules of Civil
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`Procedure (DE 809-5) by plaintiff and judgment creditor SAS Institute Inc. (“SAS”); 2) oral motion
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`for modification of injunction made in open court March 4, 2019, by defendant and judgment debtor
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`World Programming Limited (“WPL’); and 3) unopposed motions to seal (DE 860, 868, 872) by
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`WPL. For the following reasons, SAS’s motion is granted, WPL’s oral motion is denied as moot,
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`and its motions to seal are granted. Reasoning for the court’s February 15, 2019, order that no sum
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`collected or to be collected by the judgment creditor in the United States is subject to payment to
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`the judgment debtor on the basis of the United Kingdom Protection of Trading Interests Act 1980
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`(“PTIA”), also is set forth herein.
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`1 The court’s analysis relies, in part, on documents filed under seal. Within 14 days, the parties jointly shall
`return to the court by U.S. Mail, addressed to the case manager, a copy of this order marked to reflect any perceived
`necessary redactions. Upon the court’s inspection and approval, a redacted copy of this sealed order will be made a part
`of the public record.
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`
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`Case 5:10-cv-00025-FL Document 881 Filed 03/18/19 Page 1 of 36Case 5:10-cv-00025-FL Document 891 Filed 04/01/19 Page 1 of 36
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` XXXXXXXXXX
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`SAS Institute Inc.
`EXHIBIT 2011
`Page 1 of 36
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`BACKGROUND
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`Reference is made to prior orders of this court and the opinion of the United States Court of
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`Appeal for the Fourth Circuit in SAS Inst., Inc. v. World Programming Ltd., 874 F.3d 370 (4th Cir.
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`2017), which detail the background and procedural history of this case up to this court’s judgment
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`entered July 15, 2016,2 and appeal therefrom. The court turns its attention more particularly below
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`to the judgment creditor’s efforts to enforce its judgment against the judgment debtor, WPL, a
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`competitor of SAS, based in the United Kingdom. Judgment enforcement activities are complex.
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`At present they involve this court and courts in California and the United Kingdom.
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`A.
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`Judgment Enforcement
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`On November 9, 2016, this court granted WPL’s emergency motion for temporary stay of
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`execution of the court’s judgment pending resolution of motion for stay pending appeal, premised
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`in part upon WPL’s deposit into an escrow account maintained in the United States of “80% of all
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`revenues received by WPL in relation to licensing of WPS in the [US].” (DE 633-1; see Order (DE
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`668) at 2). On February 9, 2017, the court granted the judgment debtor’s motion for stay of
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`execution pending appeal, conditioned upon judgment debtor’s filing of proof of supersedeas bond
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`2 All references herein to the “judgment” or “court’s judgment,” unless otherwise specified, are to the court’s
`July 15, 2016, judgment, which amended and superseded a prior judgment entered October 16, 2015. The court’s
`judgment also is incorporated by reference in amended judgment entered December 8, 2017, and second amended
`judgment entered May 3, 2018. Judgment is premised upon summary judgment rulings and jury verdict findings that
`WPL breached a license agreement for SAS’s software product, the SAS Learning Edition License Agreement, by using
`it to produce and market a competing software product, World Programming System (“WPS”), resulting in compensatory
`damages in the amount of $26,376,635. The court also premised its judgment upon jury verdict finding that WPL
`fraudulently induced SAS to enter into the license agreement, and that this conduct violated the North Carolina Unfair
`and Deceptive Trade Practices Act (“UDPA”), resulting in the same compensatory damages, which was trebled to
`$79,129,905.00 in accordance with the UDPA. The court denied, in pertinent part, SAS’s claims for copyright
`infringement and injunction. With respect to that denial, SAS had moved after the jury verdict to enjoin WPL
`permanently from “marketing, selling, or licensing (including renewal or relicensing) of WPL’s World Programming
`System for use in the United States.” (Mot. & Prop. Order (DE 536-1) at 2). This court’s reasons for denial of SAS’s
`motion for permanent injunction are set forth in memorandum opinion and order entered June 17, 2016. (See Order (DE
`601) (Faber, J.)).
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`2
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`SAS Institute Inc.
`EXHIBIT 2011
`Page 2 of 36
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`

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`in the amount of $2,191,770.00, and continued maintenance of the aforementioned escrow account
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`modified to accumulate 100% of revenues based on sales in the United States, estimated to total
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`approximately
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` in a one-year period. (Order (DE 696) at 8-10). Upon conclusion of
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`appeal activities in favor of the judgment creditor, the clerk of court released the escrow amount to
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`SAS and the bond amount also was paid to the judgment creditor.
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`In December 2017, SAS commenced execution upon the judgment by initiating enforcement
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`proceedings in California and the United Kingdom. The court highlights below activities in each
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`forum and continuing developments impacting the case before this court.
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`1.
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`California case
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`On December 28, 2017, SAS commenced a judgment enforcement action in the United States
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`District Court for the Central District of California (hereinafter, the “California court”), by
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`registering the judgment, and the California court thereafter issued a writ of execution against WPL.
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`See SAS Institute Inc. v. World Programming Ltd., 2:18-CV-603-VAP (C.D. Cal.) (hereinafter the
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`“California case”). Upon renewed motion for assignment order filed by SAS, the California court
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`entered order September 5, 2018, providing for direct assignment to SAS of rights to payment from
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`specified WPL customers located anywhere in the world, except in the United Kingdom, until this
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`court’s judgment is satisfied. (California case, Docket 98 (hereinafter the “September 5, 2018,
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`assignment order”)). In particular, the California court ordered:
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`The Court assigns to SAS WPL’s right to payments from entities identified on SAS’s
`Customer List, as supplemented by Hewitt’s Schedule 1-1, as customers with
`accounts receivable, active customers, and customers with recently expired licenses.
`All of WPL’s rights and interest, whether or not the right is conditioned on future
`developments, to payment due or to become due from these companies shall be and
`hereby are assigned to SAS until such a time as the North Carolina judgment in the
`amount of $79,129,905.00 is fully satisfied or until further order of the Court.
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`3
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`EXHIBIT 2011
`Page 3 of 36
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`The Court DENIES IN PART the Motion to the extent it seeks assignment of WPL’s
`right to payments by resellers of its software and by “non-customers,” i.e., the
`entities identified in paragraph 8 of the Robinson Declaration. As SAS withdrew its
`request for assignment of WPL’s right to payments from customers located in the
`United Kingdom, those customers are excluded from this Order.
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`(Id. at 9) (emphasis added). The “Customer List” referenced in the September 5, 2018, assignment
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`order includes 155 customers with billing addresses in the United States and 258 customers with
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`billing addresses outside of both the United States and the United Kingdom (See California case,
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`Docket 74-1 (Ex Parte) at 4-11 (“Schedule 1-1”)).
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`On September 11, 2018, WPL filed notice of appeal of the September 5, 2018, assignment
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`order to the United States Court of Appeals for the Ninth Circuit. In the California case, WPL also
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`filed that day motion to stay that part of the assignment order pertaining to customers outside of both
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`the United States and the United Kingdom. WPL filed a similar motion before this court to stay
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`execution of the judgment for customers outside of both the United States and the United Kingdom
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`pending completion of United Kingdom judgment-recognition proceedings.
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`Two days later, on September 13, 2018, the California court “defer[red] to the Eastern
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`District of North Carolina to rule on this matter.” (California case, Docket 111). This court denied
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`WPL’s motion to stay execution of the judgment holding: “[WPL] has not demonstrated a
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`meritorious argument in support of stay of all non-[United States] execution of the judgment pending
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`[United Kingdom] judgment-recognition proceedings.” (Order (DE 786)).3
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`On September 13, 2018, the California court entered an amended assignment order, directing
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`WPL to assign its rights to payments to SAS from all customers worldwide, except those in the
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`3 The court also stated: “Moreover, issues raised by those portions of the motion that concern the manner and
`form of demand plaintiff has made upon customers, as allowed by the September 5, 2018, order of the United States
`District Court for the Central District of California, including argument that plaintiff has exceeded the scope of that
`order, more properly are addressed by such court.” (Order (DE 786)).
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`4
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`EXHIBIT 2011
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`United Kingdom. (See California case, Docket 110, at 9). Seven days later, on September 20, 2018,
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`the California court vacated its September 13, 2018, order and restored the September 5, 2018,
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`assignment order, reasoning that it lacked jurisdiction to amend its order on appeal. However, in
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`its September 20, 2018, order, the California court indicated it would be “inclined to issue” the
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`September 13, 2018, order directing WPL to assign its rights to payments to SAS from all customers
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`worldwide, except those in the United Kingdom if the court of appeals allowed a limited remand.
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`(See California case, Docket 118).4
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`On October 12, 2018, the California court denied SAS’s ex parte application for an order
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`directing WPL to turn over all income received from customers located worldwide, except in the
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`United Kingdom, due to lack of jurisdiction pending appeal. (See California case, Docket 123).
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`However, on November 14, 2018, the California court entered a second indicative ruling stating that
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`it would grant SAS’s ex parte application for a turn over order if the court of appeals allowed limited
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`remand. (See California case, Docket 127).
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`SAS then moved for limited remand based upon the California court’s two indicative rulings.
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`Decision on that motion by the United States Court of Appeals for the Ninth Circuit was stayed upon
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`request of SAS, acting at the command of the court in the United Kingdom upon penalty of fine,
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`asset seizure, and/or arrest. SAS also was forbidden by the United Kingdom High Court of Justice,
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`Business and Property Courts of England and Wales Commercial Court (QBD) (the “UK court”)
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`to communicate reason for its stay request. This is discussed more particularly below.
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`2.
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`United Kingdom case
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`4 Federal Rule of Civil Procedure 62.1 provides a mechanism for a district court to enter an “Indicative Ruling
`on a Motion for Relief That Is Barred by a Pending Appeal” where the district court states “that it would grant the motion
`if the court of appeals remands for that purpose.”
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`5
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`EXHIBIT 2011
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`While the California enforcement proceedings were ongoing, United Kingdom enforcement
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`proceedings initiated by SAS also were developing. As pertinent here, WPL defensively advanced
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`several motions and positions in the United Kingdom enforcement proceedings to stop or limit
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`judgment enforcement relief sought by SAS.
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`On January 31, 2018, WPL filed a defense and counterclaim in which it advanced that “SAS
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`should not be permitted to ‘enforce’ its [United States] judgment,” where “it would be contrary to
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`public policy to permit enforcement” and “an abuse of process, inconsistent with earlier English
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`judgments,” and where “the [United States] judgment is impeachable for lack of natural/substantial
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`justice in the proceedings.” (DE 747-3 at 2-3).5
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`On December 13, 2018, the UK court entered judgment in favor of WPL (hereinafter the
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`“UK judgment”), “refus[ing] enforcement [of this court’s judgment] on the grounds of public policy
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`because of conflict with the [European Union] Software Directive.” (UK judgment (DE 816-1) ¶
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`190). The UK court also concluded that SAS’s action in this court was a “collateral attack” on a
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`prior “English judgment” in favor of WPL. (Id. ¶ 126). Furthermore, the UK court concluded that
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`Section 5 of the PTIA prevented recovery on all parts of SAS’s claim under the UDPA, not just the
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`multiple damages portion. (Id. ¶ 244 (“If there is a judgment based upon multiplication, then no
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`part of it may be enforced”).
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`The UK judgment also granted relief to WPL on a counterclaim asserted under Section 6 of
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`the PTIA to claw back two-thirds (2/3) of all amounts SAS collects in satisfaction of this court’s
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`judgment. The court held that the PTIA entitles WPL to recover against SAS “two-thirds of any
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`5 Unless otherwise specified, page numbers in citations to documents filed in this court’s Electronic Case Filing
`(ECF) system provide the page number as shown on the ECF system (e.g., DE 747-3 at 2-3) and not the page number
`showing on the face of the underlying document (e.g., page denominated “1” and “2” of the WPL defense and
`counterclaim).
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`6
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`EXHIBIT 2011
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`amount which [WPL] may have paid,” representing the multiple damages portion of the judgment.
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`(Id. ¶ 267; see id. ¶¶ 250, 269-270) (quotations omitted). The court held that WPL was entitled to
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`this clawback even “where it has not yet paid sums exceeding the value of the compensatory part
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`of the judgment and interest thereon.” (Id. ¶ 252). According to the UK court, the PTIA “assumes
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`a pro rata recovery” of compensatory and multiplied damages, and “satisfaction is plainly not a
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`qualifying condition.” (Id. ¶ 272).
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`The UK court noted the possibility that an appropriation could be “made at the time of
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`payment” by a creditor, “so as to make the payment one in respect of the compensatory element
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`only.” (Id. ¶ 270). With respect to the escrow account and bond payments already disbursed in this
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`case, however, the UK court rejected SAS’s attempt to make an appropriation later through notice
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`of partial satisfaction of judgment, on the basis that “it would seem inequitable to permit it to be
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`made defensively.” (Id.). Finally, the UK court rejected SAS’s arguments for a set-off against the
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`portion of the judgment that remains unpaid. (Id. ¶ 273).
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`a.
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`Injunction
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`Eight days after entry of the UK judgment, on December 21, 2018, based upon an ex parte
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`application of WPL, the UK court entered an ex parte injunction and order (“UK injunction”) which
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`commences with the following notice to SAS:
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`7
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`(UK injunction (DE 816-2 at 2)). Multiple prohibitions bar SAS from taking action in the United
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`States including that SAS shall not:
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`1)
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`“Pursue, continue, or take any further steps . . . for the purposes of seeking the in personam
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`relief identified in the . . . First and Second Limited Remand Motions” that SAS had filed
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`in the Ninth Circuit (Id. ¶ 3.a.);
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`2)
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`“Seek to obtain from the [California court], or any other court of the USA (state or federal),
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`the orders foreshadowed by and/or contemplated in (i) the [California court’s indicative
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`ruling 1] and (ii) the [California court’s indicative ruling 2], or any similar orders.” (Id. ¶
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`3.b.);
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`3)
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`“[C]ommence, bring, continue, pursue or take any steps in, any claims, proceedings,
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`applications, or motions before any court of the USA (state or federal)” to seek:
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`i.
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`ii.
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`iii.
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`Relief of similar nature and/or effect [to items 1) and 2)
`above]
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`Relief which imposes (or purports to impose) . . .
`requirements on WPL to assign or transfer to SAS . . . any
`assets and/or receivables of WPL and/or any debts owed to
`WPL, and/or any assets, receivables or debts that may in the
`future be owed to WPL. . . .[or]
`
`Relief which expands or amends or varies the In Rem
`Assignment Order to have in personam effects of the kinds
`identified [in the preceding subsection]. This encompasses
`adjustments or modifications to any prior order or ruling to
`impose such a requirement.
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`(Id. ¶ 3(c)).
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`8
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`4)
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`“[C]ommence, bring, continue, pursue or take any steps in, any claims, proceedings,
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`applications, or motions before any court of the USA (state or federal)” to “[p]revent or
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`restrain, or seek to prevent or restrain, WPL from:”
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`i.
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`ii.
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`Pursuing, continuing, or taking steps in: this Anti-Suit Injunction
`Application, any related application before this Court, and/or this action;
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`Commencing, bringing, continuing, pursuing, or taking any steps in, any
`further application or claim before this Court for anti-suit injunction relief or
`related relief, or damages or compensation, in relation to: (1) the California
`Enforcement Proceedings, applications or motions therein, (2) the North
`Carolina Liability Proceedings[6]; or (3) any other proceedings, applications
`or motions in the USA that are or may in the future be on foot arising out of
`the North Carolina Liability Proceedings, including efforts to enforce the
`North Carolina Money Judgment there, and/or the enforcement of judgments
`given therein.
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`(Id. ¶ 6.a.).
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`The UK injunction commanded SAS to take affirmative action to halt proceedings before
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`the United States Court of Appeals for the Ninth Circuit and the California court. In particular, the
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`UK court commanded SAS not to file a brief due that day in connection with SAS’s motion to
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`remand to the California court for entry of indicative ruling. (Id. ¶ 3(d)). It also commanded SAS
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`to procure from the United States Court of Appeals for the Ninth Circuit or the court below “a stay
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`or stays” of certain pending motions, including motions relating to the September 5, 2018,
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`assignment order and indicative rulings. (Id. ¶ 4). SAS has carefully complied with these directives.
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`(See Millen Decl. (DE 809-8) ¶¶ 11-12).
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`The UK injunction provides for a “Return Date” at which the UK court “will consider
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`whether [the UK injunction] shall be continued and/or what further order shall be made.” (UK
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`6 The UK injunction defines this term to include the instant case, and expressly includes applications for
`injunctive relief in relation to this court’s March 2, 2018, discovery order “and any other similar orders.” (UK Injunction
`(DE 816-2) ¶ 6.a. & Sched. B. ¶ 6.i.).
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`EXHIBIT 2011
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`injunction (DE 816-2) ¶ 13). At present, the UK court is scheduled to reconvene proceedings March
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`22, 2019, for this purpose. A statement by WPL’s United Kingdom counsel, Alexander Carter-Silk
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`(“Carter-Silk”), filed in the UK court on January 14, 2019, recites that WPL seeks, in part, “a
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`mandatory order that SAS withdraw the Turnover Order Application and the First and Second
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`Limited Remand Motions,” which motions presently are stayed in the California court and Ninth
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`Circuit. (Fourth Witness Statement of Carter-Silk (DE 827-18) ¶ 28(a)) (emphasis in original).
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`3.
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`North Carolina case
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`During the time enforcement proceedings as described were ongoing before the California
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`and UK courts, the following additional activities were taking place before this court pertinent to
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`the instant motions. On October 5, 2018, SAS filed a notice of partial satisfaction of judgment
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`reporting that on January 5, 2018, SAS received $2,191,770.00, and on March 2, 2018, SAS
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`received $2,110,144.00, which it applied to interest and compensatory damages awarded in the
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`court’s judgment. (Notice (DE 790) at 1-2). These amounts, which should have been credited
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`earlier under applicable North Carolina law,7 correspond to the supersedeas bond and payment of
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`escrow account funds paid into the court’s registry as required by the court’s February 9, 2017,
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`order. WPL moved to strike the notice.
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`On January 11, 2019, SAS filed ex parte the instant motion for relief under the AWA and
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`Rule 60 of the Federal Rules of Civil Procedure, for an order amending the judgment in this case to
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`enjoin WPL from future sales of its software products for use within the United States until it
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`7 No prejudice was shown by the judgment debtor arising from delay. The applicable North Carolina statute
`incorporates no penalty for any late filing unless the judgment creditor fails to file notice of receipt of payment “within
`30 days following written demand by the debtor.” N.C. Gen. Stat. § 1-239(c). No demand was made by the judgment
`debtor. When brought to the court’s attention, the court directed the judgment creditor immediately and in the future,
`to make certain that credits timely are made. This direction scrupulously has been adhered to.
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`10
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`satisfies the court’s judgment. SAS requests, in the alternative, to enjoin WPL from future sales of
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`its software products to new customers for use within the United States until it satisfies the court’s
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`judgment. (See Mem. (DE 809-6 at 28)). In support of its motion, SAS relies on declaration of its
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`attorney, Pressly M. Millen (“Millen”), in conjunction with: 1) WPL’s motion for stay of mandate
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`filed in the court of appeals; 2) the September 5, 2018, assignment order; 3) the UK judgment and
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`injunction; and 4) WPL’s standard terms for license agreement prior to and after December 10,
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`2018, with redline comparison of the same.
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`The instant motion was accompanied by and contained within an ex parte motion to file
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`motions under seal, (DE 809), along with an emergency motion under the AWA to preserve the
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`court’s jurisdiction, with reference to the declaration of Millen in support thereof (DE 809-1 to 809-
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`4). That same day, the court entered an order granting SAS’s emergency motion, providing:
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`pending further order of the Court, “WPL” is HEREBY ENJOINED from licensing
`“WPS” to any “new customer” for use within the United States. For the purposes of
`this injunction, . . . a “new customer” is any person or entity that held no active
`license to WPS on 11 January 2019. This injunction expires automatically once
`World Programming Limited has satisfied the $79,129,905 judgment in this case.
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`(DE 810). WPL filed a memorandum in opposition to the instant motion, together with a motion
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`for prompt dissolution of the ex parte injunction. WPL relies upon a declaration of its attorney,
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`Wayne F. Dennison (“Dennison”), in conjunction with: 1) the UK judgment, injunction, and
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`directions order; as well as 2) declaration of Oliver R. Robinson (“Robinson”), a company director
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`of WPL.
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`On January 28, 2019, the court set a schedule for briefing and noticed hearing on the motions
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`then pending for February 15, 2019.
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`11
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`SAS filed reply in support of the instant motion combined with a response to the motion for
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`dissolution. In support thereof, SAS relies upon a second declaration of Millen, in conjunction with:
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`1) correspondence between WPL customers and Millen in September and October 2018; 2)
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`correspondence between Millen and WPL counsel; 3) California case docket; 4) WPL filings and
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`witness statements in the UK proceedings; and 5) excerpts of WPL’s supplemental objections and
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`responses to SAS’s first post-judgment interrogatories.
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`WPL filed reply in support of its motion for prompt dissolution on February 6, 2019,
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`accompanied by declaration of WPL counsel, James A. Barta (“Barta”), in conjunction with: 1)
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`prior filings made in the instant case; 2) correspondence between counsel for SAS and WPL in 2017
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`and 2018; 3) declaration of WPL UK counsel, Carter-Silk; 4) declaration of WPL California counsel,
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`Joel S. Miliband (“Miliband”), and correspondence between counsel attached thereto; and 5) filings
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`made by SAS in UK proceedings in December 2017 and October 2018.
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`SAS filed notice on February 13, 2019, containing additional documents: 1) additional
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`witness statements by Carter-Silk and Miliband filed in UK proceedings; 2) filings in the California
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`case; and 3) a WPL press release, dated December 17, 2018.
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`With benefit of all these materials, the court held hearing February 15, 2019. Certain orders
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`were made and supplemental submissions directed to be filed in advance of continued hearing set
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`for March 4, 2019, as briefly summarized below:
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`1)
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`The court held in abeyance SAS’s instant motion, pending receipt of certain accounting
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`information;
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`2)
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`The court ordered WPL to file under seal an accounting of all sums received from and after
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`September 5, 2018, from all customers, without geographical limitation, specifying the name
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`and invoice address of each customer;8
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`3)
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`The court ordered WPL to pay by February 22, 2019, to SAS all sums the judgment debtor
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`had received from customers invoiced in the United States from and after September 5,
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`2018;9
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`4)
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`5)
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`6)
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`The court ordered SAS to timely file notice of receipt of any sum paid, to be credited to the
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`judgment in accordance with North Carolina General Statute § 1-239(c);10
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`The court ordered that no sum previously collected or to be collected by SAS in the United
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`States is subject to payment to WPL on the basis of the PTIA;11
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`The court denied the judgment debtor’s motion to strike satisfaction of judgment (DE 791);12
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`and
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`8 WPL did so on February 22, 2019 (DE 852).
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`9 WPL did so on February 22, 2019, by paying
`accounting. (See DE 852 and DE 853-1 at 32).
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` to SAS, as represented in its
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`10 SAS filed a notice of partial satisfaction of judgment (No. 2) on February 19, 2019, which states that
`additional payments (as of that date) were received by SAS in the amounts of $228,786.00 and $357,734.00 (totaling
`$586,520). SAS filed a further notice of partial satisfaction of judgment (No. 3) on March 1, 2019, which states that
`additional payments (as of that date) were received by SAS in the amount of $1,171,249.65.
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`11 The court indicated memorandum opinion explaining the court’s reasoning for its order in this part would
`follow separately.
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`12 However, the court reserved for further consideration upon the appropriate motion judgment crediting
`processes.
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`13
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`
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`EXHIBIT 2011
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`7)
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`The court denied the judgment debtor's motion for prompt dissolution of ex parte injunction
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`(DE 771).13
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`Supplemental filings have been made also to include, on behalf of SAS: 1) declaration of
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`forensic accountant Samuel Hewitt (“Hewitt”), with attached schedules and exhibits, 2) further
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`declaration of Millen, and 3) declaration of John Boswell, Chief Legal Officer of SAS. WPL also
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`relies upon declaration of Barta, in conjunction with: 1) declaration of Robinson; 2) Hewitt Schedule
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`1-1 filed in the California case; 3) December 13, 2018, order by the UK court entering judgment in
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`favor of WPL on its counterclaim in the sum of $2,867,922.67, with 8% interest; 4) letter from
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`WPL’s UK counsel to SAS’s counsel regarding the UK proceedings; and 5) UK civil procedure
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`rules.
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`On March 3, 2019, WPL filed notice regarding inadvertent issuance of a license and free
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`licenses, in violation of this court’s injunction, and corrective measures taken and proposed. On
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`March 4, 2019, the date of hearing, SAS filed notice containing customer invoices from WPL and
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`a list of WPL’s active software licenses as of February 25, 2019. That same date WPL filed notices
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`containing: 1) WPL customer correspondence and invoices; 2) declaration of Robinson attaching
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`charts showing US monthly receipts and revenues; 3) a March 2018 order of the UK court; and 4)
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`letters from counsel for WPL to counsel for SAS dated March and April 2018.
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`With benefit of these additional materials, on March 4, 2019, the court heard further
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`arguments of counsel. The judgment debtor made oral motion to modify the current injunction to
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`state “no new licensing to U.S. customers,” as opposed to enjoining licensing for use in the US. (Tr.
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`13 Written order was then entered in open court supplanting the court’s January 11, 2019, emergency order,
`enjoining judgment debtor “from licensing ‘WPS’ to any ‘new customer’ for use within the United States,” and
`explaining its reasons for doing so. (DE 846).
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`14
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`
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`(DE 874) at 93). The court took under advisement the oral motion and the instant motion.14 This
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`order now follows.
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`A.
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`“Clawback”
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`COURT’S DISCUSSION
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` The court memorializes here the reasoning for its February 15, 2019, order that “no sum
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`previously collected or to be collected by the judgment creditor in the United States is subject to
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`payment to the judgment debtor on the basis of the United Kingdom Protection of Trading Interests
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`Act of 1980.” (Order (DE 848) at 2).
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`1.
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`The AWA
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`The AWA provides that “[t]he Supreme Court and all courts established by Act of Congress
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`may issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to
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`the usages and principles of law.” “This Court has repeatedly recognized the power of a federal
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`court to issue such commands under the All Writs Act as may be necessary or appropriate to
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`effectuate and prevent the frustration of orders it has previously issued in its exercise of jurisdiction
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`otherwise obtained.” United States v. New York Tel. Co., 434 U.S. 159, 172 (1977). The AWA
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`is a “legislatively approved source of procedural instruments designed to achieve the rational ends
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`of law.” Id. (quotations omitted). “Unless appropriately confined by Congress, a federal court may
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`avail itself of all auxiliary writs as aids in the performance of its duties, when the use of such historic
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`aids is calculated in its sound judgment to achieve the ends of justice entrusted to it.” Id. at 172-73
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`(quotations omitted).
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`14 The court also heard from the judgment creditor on issue raised in the judgment debtor’s notice March 3,
`2019, concerning WPL’s inadvertent issuance of free licenses. In light of the court’s ruling and where SAS declines
`to permit any “carve-out” from the court’s injunction to allow any continued free use, as is its right, no free licenses shall
`be allowed.
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`15
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`
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`In In re March, 988 F.2d 498, 500 (4th Cir. 1993), the United St