United States District Court, D. Massachusetts
B. Saris Chief United States District Judge
22, 2016, the Court found that the defendants engaged in
litigation misconduct that supported a partial award of
attorneys' fees under 35 U.S.C. § 285. See Trs.
of Boston Univ. v. Everlight Elecs. Co., Ltd., No.
12-CV-11935-PBS, 2016 WL 3976603 (D. Mass. July 22, 2016).
The Court awarded BU two discrete sets of fees under §
285: (1) fees incurred in preparation for and during its
October 2014 trip to Taiwan to inspect sales documents and
(2) fees incurred as a direct result of Everlight's
litigation misconduct regarding the contents of the sales
data that it provided to BU. The Court also awarded expert
fees pertaining to the latter for the additional time spent
by Alan Ratliff preparing supplemental expert reports.
Finally, the Court awarded costs pursuant to 35 U.S.C. §
284. Costs were apportioned between the defendants as
follows: for costs accruing prior to Lite-On's Rule 68
offer on July 23, 2015, all three defendants were deemed
jointly and severally liable; beginning July 23, 2015, only
Everlight and Epistar were liable for costs.
parties now contest the amount to which BU is entitled. BU
seeks nearly $1.5 million in fees and costs. The defendants
oppose the majority of BU's request, asserting that BU
should be awarded the $53, 194.45 initially enumerated in the
Bill of Costs plus no more than $123, 778.06 in additional
fees and costs. The defendants' calculation proceeds as
follows: First, the defendants contend that many of the
claimed fees are unrelated to the two issues identified by
the Court and that none of these fees should be recovered.
Second, the defendants concede that the requested fees
related to the 2014 trip to Taiwan are recoverable from
Epistar. Third, the defendants argue that only one-third of
the remaining fees -- which relate in some way to
Everlight's production of inaccurate sales data -- should
be awarded because this briefing did not pertain solely to
Everlight. Rather, the defendants suggest, this briefing
typically addressed issues raised by the other two defendants
and Everlight should therefore only be responsible for its
one-third share. Finally, as to costs, the defendants assert
that only a small sliver is properly taxable.
Court applies this same analytical framework and awards the
$53, 194.45 previously requested in BU's original Bill of
Costs as well as $157, 315.28 in attorneys' fees, expert
fees, and additional costs. Below, the Court appends a
summary table of the disputed fees and costs, and its ruling
as to each.
Court DENIES BU's request for attorneys'
fees and/or expert fees pertaining to the following: (1) the
briefing, discovery, and expert preparation performed to
access Everlight's SAP system; (2) the preparation of the
initial report on damages; and (3) the opposition to
Everlight's motion for partial summary judgment on
damages. None of these fees resulted from the litigation
misconduct identified by the Court.
Court ALLOWS the plaintiff's unopposed request
for $44, 072.50 in attorneys' fees pertaining to its
October 2014 trip to Taiwan. Epistar is ordered to pay these
Court ALLOWS, in the amount of $49, 755.00, the
plaintiff's request for attorneys' fees incurred for
additional briefing related to Everlight's inaccurate
sales data. The defendants urged the Court to award only
one-third of the requested fees; the plaintiff offered no
alternative means of apportioning its fee request where the
briefing related to multiple issues or multiple defendants.
In assessing the plaintiff's request, the Court did not
tabulate a word count of each of the many briefs filed in
this case. The Court did, however, assess whether the
requested fees were incurred as a result of the litigation
misconduct related to Everlight's sales base. Where the
fees relate to briefing solely or primarily about
Everlight's inaccurate sales data, the Court awards all
of the requested fees. Where the fees do not relate to this
issue, the Court does not award any of the requested fees.
And where the fees pertain in some way to Everlight's
sales base, but also relate to issues involving the other two
defendants, the Court awards one-third of the requested fees,
the ratio the defendants proposed.
Court's award of attorneys' fees therefore includes
all of the requested fees incurred between May 14 and August
5, 2014 related to the initial review of sales data
spreadsheets; one-third of the fees incurred between
September 19 and October 8, 2015 related to the
plaintiff's motion to strike the defendants' new
damages evidence; none of the fees incurred between October 6
and October 8, 2015 related to motions in limine six and
seven; one-third of the fees incurred between October 9 and
October 10, 2015 related to the plaintiff's motion for
leave to file a supplemental damages report and subsequent
briefing; all of the fees incurred between October 30 and
November 6, 2015 related to the trial briefs; and all of the
fees incurred between November 2 and November 10, 2015
related to the remaining briefing. See Docket No.
1791, Ex. 3. Everlight is ordered to pay these attorneys'
Court ALLOWS, in the amount of $47, 720.73, the
plaintiff's request for expert fees related to the
supplemental expert damages reports. This figure represents
one-third of the requested expert fees incurred between
October 9 and December 11, 2015, as these expert reports
responded to damages arguments propounded by all three
defendants. Everlight is ordered to pay these expert fees.
Court ALLOWS the costs in the Bill of Costs totaling
$53, 194.45. The Court ALLOWS an additional $15,
767.05 in costs that the defendants concede is properly
recoverable under Federal Rule of Civil Procedure 54(d), 28
U.S.C. § 1920, and/or 35 U.S.C. § 284. The Court
does not award costs pursuant to 35 U.S.C. § 285. Costs
are apportioned pursuant to the Court's July 22, 2016
order discussed above.
defendants assert that the plaintiff has not provided
contemporaneous records of the fees and costs that it seeks.
Alfonso Chan, an attorney representing the plaintiff in this
litigation, declared under penalty of perjury that the
spreadsheets provided to the Court “are accurate
contemporaneous records of the hours and costs awarded by the
Court” and that he “cross-checked entries against
the case dockets, discovery records, and employment records
of when each employee clocked in and out of the office and
his/her computer.” Docket No. 1791, Ex. 1 at ¶ 5.
The spreadsheets list the relevant attorney's initials,
the date the work was performed, a description of the work