United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON DEFENDANTS' APPLICATIONS
FOR ATTORNEYS' FEES
DENNIS SAYLOR IV, UNITED STATES DISTRICT JUDGE.
5, 2018, the Court granted in part and denied in part
defendants' motions to recover attorneys' fees
pursuant to 35 U.S.C. § 285. The Court instructed
“[e]ach party seeking an award of fees” to file
“an application for fees, with affidavits and a
detailed breakdown of time and costs, within 21 days”
of the order. (June 5, 2018 order at 39).
26, 2018, each of the six defendants filed an application for
fees. DataTern filed a consolidated objection to
defendants' applications. Each defendant's
application and DataTern's relevant objections to that
application will be considered in turn.
Court's June 5 order provided that defendant
MicroStrategy, Inc. was to be awarded two categories of fees:
(1) “fees reasonably related to plaintiff's
judge-shopping activities - generally, fees incurred prior to
these cases being consolidated and stayed against the
customers, ” which occurred on July 17, 2012; and (2)
“fees reasonably incurred after the Court's
claim-construction decision, ” which occurred on
February 7, 2017. (Id. at 37).
application requests fees and costs of $591, 032.71 for the
first category and $431, 212.92 for the second. MicroStrategy
also requests $157, 505 for the work its attorneys performed
in seeking attorneys' fees. In total, MicroStrategy
requests $1, 179, 750.63.
contends that MicroStrategy's fee application should be
rejected in its entirety for two principal reasons: (1)
because it fails to establish a nexus between the fees listed
in its application and the limits described in the
Court's June 5 order, and (2) because its request is
Fees Reasonably Related to Judge-Shopping
its first contention, DataTern is correct that MicroStrategy
must establish a reasonable “nexus” between the
requested fees and the limits described by the Court's
June 5 order. A fee award must “‘bear some
relation to the extent of the misconduct.'”
Integrated Technology Corp. v. Rudolph Technologies,
Inc., 629 Fed.Appx. 972, 977 (Fed. Cir. 2015) (quoting
Special Devices, Inc. v. OEA, Inc., 269
F.3d 1340, 1344 (Fed. Cir. 2001)). As the Court noted in its
June 5 order, as a general matter, only fees incurred prior
to July 17, 2012, could be considered reasonably related to
DataTern's judge-shopping activities.
true that MicroStrategy has only requested fees from the
appropriate time period. Nonetheless, the fees incurred must
be reasonably related to the judge-shopping activities that
the order identified. MicroStrategy and its customers
undoubtedly would have incurred substantial fees due to the
filing of the litigation regardless of the efforts to
consolidate the cases in front of a single judge that
DataTern apparently believed would be desirable. A fee award
is only appropriate to compensate defendants for the
“extra legal effort to counteract the
misconduct”; it is not intended to give them a
windfall. Highmark, Inc. v. Allcare Health Mgmt.
Sys., 687 F.3d 1300, 1316 (Fed. Cir. 2012), vacated
on other grounds, 572 U.S. 559 (2014).
has submitted an application that appears to exclude only a
single category of attorneys' fees-fees incurred in
investigating potential counterclaims against DataTern.
Otherwise it has simply requested all fees it incurred prior
to July 17, 2012, without attempting to show any connection,
of any kind, between the fees incurred and the misconduct.
Court has reviewed the time entries submitted by
MicroStrategy and is unable to ascertain whether any specific
entries relate to or arise out of the judge-shopping
activities. It is certainly likely that MicroStrategy
incurred some additional fees related to those activities,
although the order of magnitude is probably closer to $5,
900, or perhaps $59, 000, than $590, 000. In any event, it is
not the role of the Court to cull through the time entries,
ascertain which relate to the improper conduct, and determine
a reasonable amount. Because it cannot make a reasonable fee
determination based on the evidence provided, no fees will be
awarded to MicroStrategy arising out of the judge-shopping
activities of DataTern.
Fees Reasonably Incurred after Claim-Construction
substance, the Court's June 5 order concluded that
DataTern's claims became unreasonable at some point after
the Court's claim construction order on February 7, 2017.
The boundary line between reasonable and unreasonable
persistence in a litigating position is hazy under the best
of circumstances; nevertheless, such a line exists, and
DataTern crossed it here, for the reasons outlined in the
June 5 order.
has claimed attorneys' fees for every single time entry
on or after February 7, 2017. For the Court to find that
DataTern's litigating position became unreasonable
immediately on February 7 would require, in effect, that the
company dismiss its claims the moment the decision is
rendered-presumably, without even consultation between the
attorneys and the client, and without any consideration of
possible alternatives. That is, of course, an extreme and
however, MicroStrategy has made no effort to distinguish
between fees incurred because of an unreasonable prolongation
of the litigation and fees that would have been incurred even
if DataTern acted entirely reasonably. Under the
circumstances, and without assistance from MicroStrategy, the
Court concludes (perhaps generously) that DataTern's
position became unreasonable no later than six weeks after
the February 7 claim-construction decision-that is, by March
21, 2017. By that point, DataTern had ample time to review