Case 2:11-cv-03720-GW-JEM Document 249 Filed 06/27/13 Page 1 of 15 Page ID #:7341
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
CaseNo.
: O~te
CV 11-3720-GW(JEMx)
Title
June 27, 2013
. Homeland Housewares, LLC v. Sorensen Research and Development Trust
Presen~:The
Hgr(orable . GEORGE H. WU, UNITED STATES DISTRICT JUDGE
None Present
Court Reporter I Recorder
Javier Gonzalez
Deputy Clerk
Tape No.
Attorneys Present for Plaintiffs:
Attorneys Present for Defendants:
None Present
None Present
PROCEEDINGS:
(IN CHAMBERS): RULINGS ON (1) MOTION FOR ATTORNEY
FEES AND (2) REQUEST TO STRIKE EXPERT REPORT
Attached hereto is the Court's Rulings on the above-entitled motion. The Court GRANTS Homeland's
Fees Motion in part and DENIES it in part, awarding fees in the amount of$253,777.37. The Court
GRANTS Homeland's Motion to Strike the Osswald Report.
Initials ofPreparer
cv -90 (06/04)
CIVIL MINUTES- GENERAL
JG
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Homeland Housewares, LLC v. Sorensen Research and Development Trust, Case No. CV11-3720. Rulings on (1) Motion for Attorney Fees and (2) Request to Strike Expert Report
I. Background
PlaintiffHomeland Housewares, LLC ("Plaintiff' or "Homeland") filed suit against Sorensen
Research and Development Trust ("Defendant" or "Sorensen") on April 29, 2011, seeking a
declaratory judgment ofnon-infringement, invalidity, and unenforceability of Sorensen's U.S. Patent
No. 6,599,460 (the '"460 patent"). See Compl., Docket No. 1. Sorensen counterclaimed for
infringement. See Docket No. 34. Homeland manufactures and sells food blenders called the
"Magic Bullet" and the "Baby Bullet," which are sold along with "an assortment of plastic cups and
mugs." Docket No. 124 at 6. Sorensen alleged that those plastic cups are molded using an
infringing process. !d. at 7.
The Court considered the key issues multiple times. The Court construed the disputed
claims. Docket No. 113. The Court considered, and denied, Sorensen's motion to reconsider the
construction of the term "threshold rate." Docket No. 140. The Court granted Homeland's motion
for summary judgment of non-infringement. !d. The Court denied Sorensen's motion to enter
judgment in the case without addressing Homeland's invalidity claim. Docket No. 151. The Court
denied Homeland's motion for summary judgment of invalidity, and granted Sorensen's motion for
cross-summary judgment on Homeland's invalidity claim. Docket No. 191. The Court denied
Sorensen's Motion to Revise the Court's Order for Summary Judgment ofNon-Infringement, and
Sorensen's Motion for Rule 11 Sanctions. Docket No. 197.
Homeland now moves for an award of attorney fees under 3 5 U.S. C. § 285 ("Fees Motion").
Docket No. 202. Homeland also requests that the Court again strike the declaration of Dr. Tim
Osswald. Docket No. 227. The Court circulated a tentative ruling on the Fees Motion and heard oral
argument on May 20,2013. Docket No. 231. The Court ordered supplemental briefing, which the
parties have now submitted. Docket Nos. 238,241, and 248. The Court now issues this final ruling
on those matters.
II. Legal Standards
A. Attorney Fees Pursuant to 35 U.S. C.§ 285
35 U.S.C. § 285 provides that "[t]he court in exceptional cases may award reasonable
attorney fees to the prevailing party." "Such fees are awarded when: 1) a court finds that there is
clear and convincing evidence that the case is exceptional; and 2) the court then exercises its
discretion to award fees to the prevailing party." JCU Med., Inc. v. Alaris Med. Sys., Inc., SACV 0400689 MRP (VBKx), 2007 U.S. Dist. LEXIS 34467, *3 (C.D. Cal. Apr. 16, 2007), aff'd, F.3d 1368,
1380 (Fed. Cir. 2009). "A case may be deemed exceptional when there has been some material
inappropriate conduct related to the matter in litigation, such as willful infringement, fraud or
inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified
litigation, conduct that violates Fed.R.Civ.P. 11, or like infractions." Brooks Furniture Mfg., Inc.
v. Dutailier Int'l, Inc., 393 F.3d 1378, 1381 (Fed. Cir. 2005). "Absentmisconductinconductofthe
litigation or in securing the patent, sanctions may be imposed against the patentee only if both ( 1)
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the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless." Id.
"There is a presumption that the assertion of infringement of a duly granted patent is made in good
faith. Thus, the underlying improper conduct and the characterization of the case as exceptional
must be established by clear and convincing evidence." !d. at 1382 (citations omitted).
Whether a case is exceptional is "a factual determination reviewed for clear error[,]" and a
district court's determination of whether attorney fees are warranted is reviewed for abuse of
discretion. Cybor Corp. v. FAS Tech., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en bane)
(citations omitted). "Once the court finds a case exceptional, it may award fees based on 'the
relevant considerations, such as the closeness of the case, the tactics of counsel, the flagrant or good
faith character of the parties' conduct, and any other factors contributing to imposition of punitive
sanctions or to fair allocation of the burdens of litigation."' ICU Med, 2007 U.S. Dist. LEXIS
34467, at *8 (quoting Perricone v. Medicis Pharm. Corp., 432F.3d 1368, 1380-81 (Fed. Cir. 2005)).
"Section 285 grants the district court the power to award attorney fees in exceptional cases,
but it places no procedural limitations on the court's ability to make such an award provided that it
has jurisdiction over the case." Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 n.3 (Fed.
Cir. 2005). "Claims for attorney's fees are collateral to the underlying lawsuit for which the fees are
sought" and are separate from a trial court's decision on the merits for purposes of the time limits
set for appeals under Fed. R. App. P. 4. !d. at 1354 n.2 (citing Budinich v. Becton Dickinson & Co.,
486 u.s. 196,200-01 (1988).
B. Determining the Prevailing Party in a Patent Case
Federal Circuit law applies to the determination of the prevailing party in a patent case.
Manildra Mill. Corp. v. Ogilvie Mills, Inc., 76 F .3d 1178, 1181-82 (Fed. Cir. 1996). "Determination
of the prevailing party is based on the relation of the litigation result to the overall objective of the
litigation, and not on a count of the number of claims and defenses." Brooks Furniture Mfg., Inc.,
393 F .3d at 13 81 (holding that when declaratory judgment plaintiff established its non-infringement
of the asserted patent, it prevailed in the litigation, notwithstanding "[t]hat other defenses, such as
invalidity of the patent, were unsuccessful or withdrawn.").
C. Requests to Strike Untimely Evidence Directed to Issues the Court Has Already
Decided
"Papers submitted to the district court after the ruling that is challenged on appeal should be
stricken from the record on appeal." Kirshner v. Uniden Corp. ofAm., 842 F .2d 1074, 1077 (9th Cir.
1988) (emphasis omitted). "We are here concerned only with the record before the trial judge when
his decision was made." Id. (citation and quotation omitted).
III. Analysis
A. Homeland's Motion Is Timely
Sorensen contends that Homeland's motion for attorney fees is untimely because the Court
entered its Order Denying Sorensen's Motion to Revise the Court's Summary Judgment of NonInfringement on March 25,2013 (Docket No. 197), but Homeland did not file its Fees Motion until
April22, 2013 (Docket No. 202). Sorensen's Opp'n to Fees Motion ("Opp'n"), Docket No. 211 at
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6-7. 1 Sorensen argues that the Order served as the Court's final judgment in this case. !d. But as
Homeland points out, Fed. R. Civ. P. 58 provides that, with exceptions not relevant here, "[e]very
judgment and amended judgment must be set out in a separate document," and the Court had not
issued a separate judgment. Docket No. 226 at 5. The Ninth Circuit "has repeatedly asked district
courts to clarify their intent by issuing separate, final judgments in accord with Fed.R.Civ.P. 58."
Kourtis v. Cameron, 358 F. App'x 863, 866 (9th Cir. 2009).
The lack of a final written judgment entered by the clerk of the district court is not
a technicality. A final written judgment is an indication to the parties and to this
court that the district court considers its task completed. Entry of a final written
judgment also provides a definite date for computing the timeliness of post judgment
motions and notices of appeal.
Woodv. Coast Frame Supply, Inc., 779 F.2d 1441, 1442-43 (9th Cir. 1986). Further, Local Rule 586 provides that the"[ n ]otation in the civil docket of entry of a memorandum of decision, an opinion
of the Court, or a minute order of the Clerk shall not constitute entry of judgment pursuant to
F.R.Civ.P. 58 and 79(a) unless specifically ordered by the judge." The Court has not made any such
order regarding the order that Sorensen argues constitutes the Court's final judgment in this case,
so it is not the final judgment. Thus, Homeland's motion is timely filed and ripe for determination.
It would have been a simple matter for Sorensen to point out to the Court that all outstanding
issues had been resolved by the Court's last order, and request that the Court enter judgment in the
case. Instead, Sorensen has required Homeland and the Court to devote resources to addressing the
issue of whether the Court can hear Homeland's Fees Motion. Unfortunately, Sorensen's actions
on this issue are representative of its conduct in this litigation as a whole. As further discussed
below, Sorensen has repeatedly declined to take simple steps necessary to advance its case, instead
preferring to burden the Court with repetitive, unnecessary, and ineffective arguments.
Pursuant to the Court's Order at the May 20, 2013 hearing (Docket No. 231), the parties
lodged a proposed judgment on May 28, 2013. Docket No. 232. The Court entered judgment that
same day. Docket No. 233.
,,
B. Homeland Is the Prevailing Party
Homeland is the prevailing party. See Brooks Furniture Mfg., Inc., 393 F .3d at 13 81 (holding
that when the declaratory judgment plaintiff established its non-infringement of the asserted patent,
it prevailed in the litigation, notwithstanding "[t]hat other defenses, such as invalidity of the patent,
were unsuccessful or withdrawn."). Sorensen attempts to distinguish Brooks on the ground that in
Brooks, the accused infringer voluntarily dismissed its invalidity claim after prevailing on its noninfringement claim, whereas here, Homeland insisted on litigating invalidity, and lost. Opp'n at 8
n.2.
Sorensen quotes the statement in Brooks that"[d]etermination ofthe prevailing party is based
1
Along with its29-page opposition, Sorensen filed a request for leave to file a brief in excess of25 pages.
Docket No. 211-1. While Sorensen's position could have been represented more effectively in 25 pages than in the
29 page brief it submitted, the Court allows the overlength filing.
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on the relation of the litigation result to the overall objective ofthe litigation .... " !d. But the
language in Brooks replaced by ellipses in Sorensen's quotation shows that Homeland is, in fact, the
prevailing party.
·
Determination of the prevailing party is based on the relation of the litigation result
to the overall objective of the litigation, and not on a count of the number of claims
and defenses. See Texas State Teachers Ass 'n v. Garland Independent School Dist.,
489 U.S. 782, 789 (1989) ("'plaintiffs may be considered "prevailing parties" for
attorney's fees purposes if they succeed on any significant issue in litigation which
achieves some of the benefit the parties sought in bringing the suit."') (quoting
Hensley v. Eckerhart, 461 U.S. 424, 433 (1983).
Dutailier accused Brooks of infringing its patent and demanded that Brooks cease
producing the accused chairs. Brooks brought this declaratory action to preserve its
position, and succeeded in doing so. Brooks raised several defenses to the charge of
patent infringement, any of which would have achieved Brooks' goal. Thus when
Brooks established its non-infringement of the Dutailier patent, it prevailed in the
litigation. That other defenses, such as invalidity of the patent, were unsuccessful or
withdrawn, does not change the outcome in Brooks' favor. We agree with the district
court that Brooks was the prevailing party.
Brooks, 393 F.3d at 1381 (Fed. Cir. 2005) (parallel citations omitted). Brooks expressly rejected the
"count of number of claims and defenses" as the measure of the prevailing party, so Sorensen's
contention that neither party "won" because each prevailed on a claim must be rejected. 2 Opp'n at
8-9. The "benefit [Homeland] sought in bringing the suit" was not specifically invaliding the patent,
but in establishing that it was not liable for infringement, as Sorensen had claimed it was. Hensley,
461 U.S. at 433. Further, the language in Brooks does not, as Sorensen argues, Opp'n at 8 n.2,
distinguish between "unsuccessful" defenses and "withdrawn" defenses.
"The freedom to practice an invention without fear of suit by the patentee is a valuable
commercial benefit. By removing the potential threat of the patentee instituting an infringement
action, the competitor necessarily alters the patentee's subsequent behavior to his benefit." Manildra
Mill. Corp. v. Ogilvie Mills, Inc., 76 F .3d 1178, 1183 (Fed. Cir. 1996). "When a finding of
noninfringement occurs, the result is ' [a] judicial declaration that one is free from another's right to
exclude,' thereby' alter[ing] the legal relationship between the parties."' United Access Techs., LLC
v. EarthLink, Inc., CIV. A. NO. 02-272-MPT, 2012 U.S. Dist. LEXIS 82478, *13 (D. Del. June 14,
2012) (quoting Manildra Mill., 76 F.3d at 1183). Here, as in United Access,
[T]his court did not determine the Patents were valid per se, but concluded [the
2
Sorensen argues that Homeland should be judicially estopped from claiming that its invalidity claim is
unimportant to the prevailing party analysis. Opp'n at 9-11. Judicial estoppel is not applicable here. While
Homeland clearly argued that it was important to adjudicate invalidity, that is not inconsistent with the analysis in
Brooks.
·
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accused infringer] failed to carry its burden to prove they were invalid. Therefore,
the court's determination on validity did not materially alter the legal relationship
between the parties by modifying [the accused infringer's] behavior in a way that
directly benefitted [the patentee] because when [the accused infringer] raised its
various invalidity defenses, the Patents already enjoyed a presumption of validity.
Regarding validity, the legal relationship existing between the parties before, during
and after this matter remained the same.
United Access, 2012 U.S. Dist. LEXIS 82478, at *12-13 (holding that the accused infringer, who
prevailed on non-infringement but not invalidity, defeated the patentee's right to exclude and was
thus the prevailing party). 3
That Homeland insisted on continuing to litigate invalidity and ultimately lost on that issue
after having prevailed on infringement is a negative factor in the Court's consideration of
Homeland's entitlement to fees, but under the Federal Circuit's controlling caselaw, Homeland is
still the prevailing party.
C. This Case Is Exceptional
1. The Parties Present Different Perspectives on the Litigation
Homeland argues that after receiving Sorensen's demand letter, Homeland proactively
provided evidence ofnon-infringement before initiating this declaratory judgment suit. Fees Motion
at 1-2. Homeland argues that, as ultimately adjudicated by the Court in granting summary judgment
of non-infringement, Sorensen did not then, and did not ever, produce admissible evidence of
infringement. Id. at 2. Homeland faults Sorensen's investigation of its infringement claim, both
before and after Homeland filed its case, noting in particular Sorensen's failure to produce
admissible evidence that it even measured the dimensions of the accused products. !d. at 3 (quoting
the Court's finding in granting summary judgment of noninfringement that "Sorensen has put
forward no admissible evidence indicating that the walls are not of uniform thickness . . . .")
(emphasis omitted). Homeland notes that Sorensen never built a test mold to check for infringement,
nor did it run computer simulations until after summary judgment of noninfringement had been
entered. !d. at 4. And, Homeland notes that summary judgment of noninfringement was granted on
a number of grounds that Homeland had urged pre-suit, using Sorensen's own proposed claim
constructions of at least three terms. Id. at 8. Homeland argues that Sorensen's pre-suit statement
3
Sorensen argues that the Court should ignore United Access because it "does not carry the weight of
precedent" and "is unsupported by any reported Federal Circuit decision," and that the Court should instead follow
Silicon Graphics, Inc. v. AT! Techs., Inc., 569 F. Supp. 2d 819 (W.D. Wis. 2008). Opp'n, Docket No. 211 at 8, n.2.
As to United Access, it is unclear what Sorensen means by saying that it is "is unsupported by any reported Federal
Circuit decision"; it is a closely reasoned opinion that relies extensively on reported Federal Circuit cases for the
prevailing party analysis. Sorensen fails to note that the Federal Circuit vacated the portion of the Silicon Graphics
decision underlying the attorney fees issue and "[left] it to the parties to reintroduce the prevailing party issue on
remand as it becomes relevant." Silicon Graphics, Inc. v. AT! Techs., Inc.,607 F.3d 784, 801-02 (Fed. Cir. 2010).
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that it had conducted extensive examination and testing of the accused products was untrue, because
the Court found that three unauthenticated drawings were the "sum total of documents evidencing
[Sorensen's] testing." !d. at 13-14 (quoting Docket No. 140 at 9).
For its part, Sorensen focuses on the issues on which it prevailed, including a number of
claim constructions and on summary judgment regarding validity. Opp'n at 1. Sorensen asserts that
it engaged in an adequate pre-filing investigation by obtaining samples of the accused products,
having its experts dissect, measure, and analyze them, and then sending a claim chart to Homeland.
!d. at 2. Sorensen maintains that some of the the assertions in Homeland's pre-suit letters were not
borne out: Homeland relied on a construction of"flow chambers" later rejected by the Court, and
Homeland never identified the "manufacturing engineers" who "confirmed" the flow of plastic in
the mold. !d. at 3. Sorensen notes that the parties made six motions to compel in this case, and that
its position was upheld entirely four times and partially two times. !d. at 5-6.
2. A Final Note on "Threshold Rate"
Before evaluating the parties' positions, the Court first considers a lengthy footnote in
Sorensen's Opposition to the Fees Motion discussing the "threshold rate" limitation of the patent:
The Court noted in Doc. #197, p.8 n.4, that "Sorensen's argument that the change in
the injection pressure and speed matter here undercuts Sorensen's entire theory ofthe
'460 patent." The Court then restated what it believed to be SRDT's theory of the
'460 patent, i.e., "that increasing the thickness at less than a threshold rate controls
whether gaseous voids will form in thin-wall injection molding. Docket No. 164 at
18-22." The error in the Court's reasoning appears to stem from its assumption that
the word "controls" means "solely controls." SRDT never believed, nor asserted,
that "increasing the thickness at less than a threshold rate" solely controls "whether
gaseous voids will form in thin-wall injection molding," neither in Doc. #164,
p.18-22, nor elsewhere. The '460 patent is directed to preventing gaseous voids from
forming in a thin-wall section of a plastic product by increasing the thickness of the
thin-wall section at less than a threshold rate; it is not directed to preventing gaseous
voids from forming in a thin-wall section by varying injection speed and injection
pressure. A patent is only intended to teach the invention being claimed therein, and
there is no requirement that a patent teach other means or ways of resolving the
identified problem, whether known or unknown to the inventor or to a person of
ordinary skill in the art.
Opp'n at 20, n.4. So, Sorensen acknowledges that the problem addressed by the '460 patentgaseous void formation- can be addressed by modifying injection speed and pressure, in addition
to the solution claimed in the '460 patent of modifying the rate of thickness increase in a thin wall
section. That fact further highlights the necessity of the Court's construction of"threshold rate" to
require empirical testing to determine that rate, consistent with the text of the '460 patent and the
inventor's testimony. See Ruling on Markman Hearing, Docket No. 113 at 12-14; Order Granting
Summary Judgment ofNon-Infringement Docket No. 140 at 11-13; Order reCross-Motions for
Summary Judgment re Validity, Docket No. 190 at 5-9.
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The prior art includes methods for injection molding thin wall plastic that increases in
thickness. See Order Granting Summary Judgment of Non-Infringement, Docket No. 140 at 4.
Sorensen now admits that it knew that its solution to the formation of gaseous voids in such injection
molding- adjusting the rate of thickness increase until no gaseous voids are formed - was not the
only solution to the problem. Thus, its proposed construction of"threshold rate," which would have
captured processes for molding products with increasing thickness that address the gaseous void
problem by adjusting injection speed and pressure without adjusting the rate of increase in the
thickness of the mold, was not only incorrect, but unreasonably broad. Sorensen should have known
that it needed to develop evidence that Homeland employed the '460 patent's method of avoiding
gaseous voids, not some other method (if any). Instead, Sorensen asserted infringement based only
on its belief that there was an increase in thickness in one small portion of Homeland's product,
essentially attempting to expand the scope of the patent to include any non-defective injection
molded product with ribs in which the thickness of the plastic increased. And as discussed in the
following section, Sorensen did not even manage to develop admissible evidence of the dimensions
of Homeland's products.
,,
3. Sorensen Committed Litigation Misconduct
"Inadequacy of pre-filing preparation may be relevant to the 'exceptional' case question."
Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1035 (Fed. Cir. 2002). However,
an inadequate pre-suit investigation does not mandate an exceptional case finding. !d. "[E]ven
where infringement allegations are objectively unreasonable, a patentee may have reason to believe
that its allegations are supportable so as to negate a finding of bad faith." Highmark, Inc. v. Allcare
Health Mgmt. Sys., Inc., 687 F.3d 1300, 1313 (Fed. Cir. 2012).
Sorensen appears to have conducted some sort of pre-suit investigation, although the conduct
or results of that investigation have not been adequately preserved, the issue has been confused by
subsequent measurements taken by Sorensen, and none of Sorensen's measurements have been
presented to the Court in admissible form. See April15, 2011 pre-suit letter from Chris Kuczynski,
counsel for Sorensen, to Joseph Trojan, counsel for Homeland, Docket No. 203-3 (enclosing
unauthenticated drawings of the accused products that appear to reference measurements); Dep. of
Paul Brown at 29:11-34:12, 41:8-76:5, Exhibit M to Kramer Decl. in support ofOpp'n, Docket No.
213-3 (reflecting a great deal of confusion by the person at Sorensen who measured the products
about when he did so, how many times he did so, what the measurements were, whether certain
drawings reflect those measurements, and what products were measured); Order Denying Sorensen's
Motion to Revise the Court's Order for Summary Judgment ofNon-Infringement and for Rule 11
Sanctions, Docket No. 197 (noting Sorensen's continuing failure to present any admissible evidence
of infringement).
Homeland argues that Sorensen's failure to ever authenticate the measurements of the
accused product's dimensions is not only evidence that Sorensen is lying about having conducted
a pre-suit investigation, but "suggests something even more nefarious" - that Sorensen's own
"measurements contradicted its accusation of infringement." Homeland's Reply In Supp. of its Fees
Motion, Docket No. 226 at 12. Sorensen argues that the fact that it "overlooked [submitting] a
declaration authenticating the photographs of the caliper measurements in opposing the summary
judgment motion for non-infringement ... though unfortunate" does not demonstrate objective or
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subjective baselessness. Opp'n at 22. Based on the Court's observation of this litigation, an
inference of an "unfortunate" failure seems more likely than an inference of nefariousness.
However, Sorensen's failure to correct that omission at any time, including in connection with its
Motion to Revise the Court's Order for Summary Judgment ofNon-Infringement (Dkt. 186) and for
Rule 11 Sanctions (Dkt. 182) - or even now - is at the very least bizarre, and in all events,
exceptional.
.
"Litigation misconduct and unprofessional behavior are relevant to the award of attorney
fees, and may suffice, by themselves, to make a case exceptional." Epcon Gas Sys., 279 F.3d at
1034. The Court has previously noted that Sorensen has repeatedly relied on argument "where facts
... are required." Docket No. 197 at 8. Additionally, Sorensen has repeatedly reargued numerous
issues in the case without adequate justification. See, e.g., Section A above; filing multiple motions
for reconsideration, Docket Nos. 114 and 186; filing additional, repetitive, uninvited briefs after the
Court took an issue under submission, Docket No. 140 at 5 n. 2; bringing a dispute about deposing
Joe Meyer to the Court, then abandoning the deposition, and then later basing a Rule 11 motion in
part on speculation about what such a deposition might have shown, Docket Nos. 151 at 7, 152, 197
at 3-7. And as discussed below, Sorensen has again attempted to put the unredacted Osswald report
into the record, despite the Court's prior order striking it and requiring a redacted version to be filed.
Sorensen's repeated unreasonable litigation conduct unjustifiably burdened the Court,
Homeland, and even itself, because developing the evidence would have been simpler, less costly,
and potentially more effective than its paper litigation strategy. While the case would not necessarily
have been simple had it been litigated properly, it would have either have cleared the threshold
hurdle of showing that the dimensions of the accused product indicated potential infringement, or
it would have stopped then. Regardless of the adequacy ofits pre-filing investigation or Sorensen's
state of mind, it was clear and convincing misconduct to make Homeland litigate infringement given
the state of Sorensen's evidence ofthe accused products' dimensions.
D. Sorensen Should Not Bear Homeland's Fees Incurred After the Court Granted
Summary Judgment of Non-Infringement, and Should Not Bear Homeland's Fees for
Unsuccessful Discovery Motion Practice
"§ 285 is limited to circumstances in which it is necessary to prevent 'a gross injustice' to
the accused infringer." Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1329 (Fed. Cir. 2003).
Given Sorensen's inability to ever produce admissible evidence even on the predicated issue of the
dimensions ofthe accused product, it would be a gross injustice to require Homeland to bear the cost
of the infringement defense, particularly in light of the way Sorensen conducted the litigation.
However, Homeland extended the litigation by successfully opposing Sorensen's motion to
dismiss the case after summary judgment of non-infringement so that Homeland could pursue its
invalidity claim, but then pursued invalidity via theories that contradicted the Court's claim
construction, resulting in summary judgment against Homeland on that issue. See Order re CrossMotions Re Invalidity, Docket No. 190 at 13. And, Homeland's lack of care on the issue of whether
its short shot samples were made by the "same process" as its commercial products, as well as its
subsequent attempted justification for that lack of care (both discussed in the Order Denying
Sorensen's Motion for Rule 11 Sanctions, Docket No. 197) also created additional work for the
parties and the Court.
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Thus, the Court finds that attorney fees should only be awarded for Homeland's defense
through the August 23, 2012 hearing on Homeland's Motion for Summary Judgment of NonInfringement in order to effectuate "a fair allocation of the burdens oflitigation." ICU Med., 2007
U.S. Dist. LEXIS 34467, at *8. 4
Homeland seeks fees for its unsuccessful discovery motion practice on the grounds that it was
"necessitated by Sorensen's misconduct in discovery." Homeland's Suppl. Br., Docket No. 238 at
6. It is too late to make that argument. Homeland had the opportunity to demonstrate Sorensen's
discovery misconduct when litigating its motions to compel. Homeland failed to do so. It cannot
now argue that it ought to have been successful when it was not actually successful.
E. An Award of Expert Fees is Not Warranted Here
A "district court may invoke its inherent power to impose sanctions in the form of reasonable
expert fees in excess of what is provided for by statute," Takeda Chern. Indus., Ltd. v. Mylan Labs.,
Inc., 549 F.3d 1381, 1391 (Fed. Cir. 2008), but only to remedy "fraud or bad faith whereby the very
temple ofjustice has been defiled." MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 921 (Fed.
Cir. 2012) (citations and quotations omitted). The judicial temple has seen tidier days, but the
conduct in this case does not seem to meet the standard of uncleanliness above and beyond that
required for the exceptional case standard articulated by Takeda andMarcTec. The Court therefore
will not award Homeland its expert fees.
F The Fee Award Calculation
Homeland seeks $277,372.70 in fees for its attorney's work through August 23, 2012, and
$51,830 for attorney fees for bringing the Fees Motion. Homeland's Suppl. Br., Docket No. 238 at
1. Homeland notes that its average billing rate for this matter, $282.30/hour, is well below the
average billing rate for IP work in Los Angeles of$388/hour reported in the American Intellectual
Property Law Association's 2011 "Report on the Economic Survey," and that the rates ofthe lawyers
who performed the majority of the work on this case are well below the average rates for lawyers
with similar levels of experience. 5 !d. at 3-4, Trojan Decl. in Supp. of Homeland's Suppl. Br., Ex.
3, Docket No. 238-4 at 9-10, 13. As to the number ofhours spent on the case, Homeland compares
its expenditure of 982.53 hours through the hearing on summary judgment of non-infringement to
the reported Los Angeles average of 1206 hours through the close of discovery. Homeland's Suppl.
Br., Docket No. 238 at 4. While direct comparisons are difficult, the effort expended by Homeland's
4
An alternate approach would be for Homeland to separate out all of its non-infringement work from its
invalidity work, and only award fees for the non-infringement work. The Court does not adopt that approach
because Homeland's invalidity case was a reasonably necessary component of its defense up until the summary
judgment of non-infringement. That is particularly so because Homeland had invalidity arguments based on
Sorensen's proposed construction of"threshold rate," and the Court rejected Sorensen's motion for reconsideration
of that claim construction in the same order in which it granted summary judgment of non-infringement. Docket No.
140. Neither should Homeland be entitled to fees on Sorensen's Motion to Revise the Court's Order for Summary
Judgment of Non-infringement, because Sorensen would not have had an opportunity to bring that motion had
Homeland agreed to dismiss its invalidity claims, without prejudice, after summary judgment of non-infringement.
5
See Mathis v. Spears, 857 F.2d 749, 755 (Fed. Cir. 1988) (holding that district court properly considered
AIPLA billing rate surveys to determine reasonable fee).
-9-
Case 2:11-cv-03720-GW-JEM Document 249 Filed 06/27/13 Page 11 of 15 Page ID #:7351
counsel in this case, as a general matter, is not unreasonable. 6
Sorensen objects to specific portions of the fee request. Sorensen's Opp'n to Homeland's
Suppl. Br., Docket No. 241. As already discussed, the Court will not award fees for Homeland's
unsuccessful discovery motion practice. Homeland submitted its detailed billing statements, but did
not identify which entries were related to discovery motion practice. Decl. ofR. Joseph Trojan in
Supp. ofHomeland' s Suppl. Br., Ex. 1, Docket No. 238-2. Sorensen submitted an annotated version
of Homeland's billing statements in which every entry was labeled (e.g., "Al-l"), and identified
which of the entries were related to Homeland's unsuccessful discovery motion practice. Decl. of
Christian Fenton in Supp. of Sorensen's Opp'n to Homeland's Suppl. Br., Docket No. 246 at tj[ 4;
App. "A" to Sorensen's Opp'n to Homeland's Suppl. Br., Docket Nos. 243-244. For entries that
contained descriptions relating both to unsuccessful discovery motion practice and to other matters,
Sorensen did not attempt to apportion the time. Sorensen's Opp'n to Homeland's Suppl. Br. at 4,
n.2. Homeland did not dispute Sorensen's categorization of time entries, and likewise did not
attempt to apportion the time. Homeland's Suppl. Response Br., Docket No. 248.
The Court has independently reviewed the billing entries identified by Sorensen, and has
attempted to reasonably apportion time within a billing entry based on the description given. The
following chart provides the adjustments the Court makes to particular billing entries, using the
identification number on Sorensen's annotated version of the bills. Entries identified by Sorensen
. theu
. entuety.
.
. the chart were determme
. d to be a11owabl em
that do not appear m
Entry
Allowed Percentage
Allowed Amount
Adjustment to Fee
Al2-3
0%
$0
-$1624
Al2-4
0%
$0
-$1972
Al2-5
0%
$0
-$297
Al4-4
75%
$816.75
-$272.25
Al4-7
50%
$693
-$693
Al4-10
50%
$693
-$693
Al5-5
0%
$0
-$726
Al5-7
0%
$0
-$1225
Al6-l
0%
$0
-$1764
Al6-3
0%
$0
-$1960
6
Sorensen also objects that while Homeland submitted information about the qualifications and other
experience of Mr. Trojan and Mr. Dang, it did not do so for the other individuals that appear on the bills. Sorensen's
Opp'n to Homeland's Suppl. Br. 9, Docket No. 241 at 9. As Homeland notes, Mr. Trojan and Mr. Dang performed
the bulk of the work in the case, and the other attorneys worked at the direction of Mr. Trojan at a lower hourly rate.
Homeland's Suppl. Response Br. 4, Docket No. 248 at 4. Sorensen presents no evidence that any charges for those
other attorneys are unwarranted.
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Case 2:11-cv-03720-GW-JEM Document 249 Filed 06/27/13 Page 12 of 15 Page ID #:7352
I .
j.
Entry
Allowed Percentage
Allowed Amount
Adjustment to Fee
A16-5
0%
$0
-$980
A16-8
75%
$841.50
-$280.50
A18-3
0%
$0
-$528
A18-5
0%
$0
-$1419
A20-9
0%
$0
-$1749
A21-1
50%
$231
-$231
A21-9
50%
$742.50
-$742.50
A22-2
50%
$1051.25
-$1051.25
A22-4
0%
$0
-$2218.50
A22-6
0%
$0
-$2146
A23-5
0%
$0
-$564.25
A24-6
50%
$799
-$799
A26-8
75%
$1249.50
-$416.50
A27-1
75%
$918
-$306
A27-7
25%
$289
-$867
A27-9
0%
$0
-$1555.50
A28-1
75%
$1224
-$408
A28-3
0%
$0
-$1509.75
A28-4
50%
$1241
-$1241
A28-6
0%
$0
-$1525
A28-7
50%
$748
-$748
A29-4
75%
$1887
-$629
A29-8
50%
$1139
-$1139
A30-1
75%
$637.5
-$212.5
A30-3
50%
$799
-$799
"•
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Case 2:11-cv-03720-GW-JEM Document 249 Filed 06/27/13 Page 13 of 15 Page ID #:7353
Entry
Allowed Percentage
Allowed Amount
Adjustment to Fee
A30-5
75%
$1479
-$493
A30-8
50%
$1122
-$1122
A30-11
50%
$782
-$782
A30-12
0%
$0
-$2142
A31-2
0%
$0
-$918
A31-3
0%
$0
-$180
A31-4
75%
$1734
-$578
A31-8
50%
$833
-$833
A33-1
50%
$612
-$612
A33-7
50%
$578
-$578
A34-4
50%
$901
-$901
A34-5
0%
$0
-$180
A35-2
0%
$0
-$1768
A35-10
0%
$0
-$160
A37-3
75%
$382.5
-$127.5
Total Adjustment
$-46,666
,,
Homeland's requested fees in the amount of$277,372. 70 are therefore reduced by $46,666,
yielding $230,706.70.
Sorensen argues that no fees should be awarded for the time before Sorensen entered an
appearance in the case, because it could not have been committing litigation misconduct at that time.
Sorensen's Opp'n to Homeland's Suppl. Br. at 5. But Homeland filed suit in response to an
extended correspondence that started with Sorensen's letter accusing Homeland of infringement,
which correspondence contained allegations that, as discussed above, have never been substantiated.
Thus, Sorensen is properly liable for the $6,239.70 in fees it identifies as having been incurred before
Sorensen filed its Answer.
Sorensen also argues that Homeland's fee request is not limited to the extra legal effort
needed to counteract the litigation conduct identified by the Court. Id (citing Highmark, Inc. v.
Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300, 1319 (Fed. Cir. 2012) (remanding case for
apportionment of fees related to claims and actions that supported the exceptional case finding).
This argument ignores that the Court has denied Homeland's requests for portions of the case -12-
Case 2:11-cv-03720-GW-JEM Document 249 Filed 06/27/13 Page 14 of 15 Page ID #:7354
everything that occurred after the Court granted summary judgment of noninfringemenf - even
where Sorensen's misconduct necessitated the additional work, and ignores that, as stated above, it
was "misconduct to make Homeland litigate infringement given the state of Sorensen's evidence
of the accused products' dimensions."
Sorensen "requests the Court to clarify at what point within the litigation the competing
evidence regarding the measurements of the product became such that Sorensen should not have
proceeded" and exclude any attorney fees before that date. Sorensen's Opp'n to Homeland's Suppl.
Br. at 8. The Court has given Sorensen the benefit of the doubt in not adopting Homeland's theory
that Sorensen's inability to authenticate its measurements indicates that the measurements were not
in fact what Sorensen said that they were. Nonetheless, Sorensen needed to have those measurements when it accused Homeland of infringement, and Sorensen's inability to identify when exactly
it lost the ability to provide a sworn declaration authenticating its purported pre-suit measurements
taints the entire litigation. And, the Court's finding that Sorensen committed litigation misconduct
is not limited to the issue of the product dimensions, but also includes, as discussed above,
Sorensen's repetitive and unwarranted filings in the case.
As to Homeland's request for $51 ,83 0 for the Fees Motion itself, the Court finds the amount
disproportionate both to the relative importance of the motion in the case, as well as to the amount
of the award, and reduces it to $23,070.67, which is 10% of the fee award for the work excluding
the Fees Motion. The total fee award is therefore $253,777.37.
G. The Court Again Strikes the Osswald Report
The Court previously struck the Osswald Report because it included material related to
infringement that was not before the Court when the Court decided that Homeland was entitled to
summary judgment of non-infringement. Order on Cross-Motions for Summary Judgment re
Invalidity,DocketNo.191, TentativeOpinionresame,DocketNo. 190at 14-15. TheCourtordered
Sorensen to file a version of the report with the improper material redacted. !d. at 15. Sorensen did
so. Docket No. 192.
Sorensen has now again submitted the unredacted Osswald Report. Docket 213-1. In the
attorney declaration accompanying the report, Sorensen states that "[t]his report is not being offered
on the issue of infringement, but is being offered solely to oppose Homeland's Motion for Attorney
Fees .... " Decl. of Melody A. Kramer in Support of Sorensen's Opp'n to Fees Motion ("Kramer
Decl."), Docket No. 212, ~ 15. In its request to strike, Homeland argues that to the contrary,
Sorensen must be offering the Osswald Report on the issue of infringement, because "[t]he main
contention of Homeland's Motion for Attorney Fees is that Sorensen's infringement claim had no
merit." Docket No. 227 at 1.
Homeland's Fees Motion referred to the allowed portion of the Osswald Report for the
statement that a "molding simulation software package [is] widely used in the plastics industry."
!d. Sorensen argues that Homeland's reference to that portion of the report requires consideration
of the entire report under Fed. R. Evid. 106, which provides that "[i]f a party introduces all or part
7
Indeed, the Court has denied even fees directly linked to Sorensen's misconduct, because those fees would
not have been incurred absent Homeland's decision to unnecessarily extend the case after winning summary
judgment as to non-infringement.
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Case 2:11-cv-03720-GW-JEM Document 249 Filed 06/27/13 Page 15 of 15 Page ID #:7355
of a writing or recorded statement, an adverse party may require the introduction, at that time, of any
other part - or any other writing or recorded statement - that in fairness ought to be considered at
the same time." Docket No. 228 at 5-7.
But here, fairness does not require consideration ofthe entire report. Homeland merely cited
the statement that injection molding simulation software is widely available, "suggesting that it
would have been no trouble for Sorensen to have performed computer simulations earlier." Id at
6. Sorensen asserts that Homeland's argument makes it necessary to consider what actually
happened when a computer simulation was run on an accused product. !d. That is incorrect.
Homeland merely argued that the statement shows that Sorensen could have had the simulation
performed earlier. Sorensen does not dispute that fact, and the Osswald Report nowhere rebuts it.
What the simulations actually showed is irrelevant to the point Homeland made. Consideration of
the entire Osswald Report is not, as Sorensen argues, necessary to evaluate the objective basis for
the litigation. !d. at 7.
The Court disregards all argument by either party based on the previously stricken portions
ofthe Osswald report, and again STRIKES the unredacted Osswald Report (Docket No. 213-1 ). The
redacted version of the Osswald Report is already in the record. Docket No. 192-1.
IV. Conclusion
The Court GRANTS Homeland's Fees Motion in part and DENIES it in part, awarding fees
in the amount of$253,777.37.
The Court GRANTS Homeland's Motion to Strike the Osswald Report.
-14-