Case 1:13-cv-00633-DEP Document 176 Filed 11/20/14 Page 1 of 13
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF NEW YORK
INSTITUTE and DYNAMIC
Civil Action No.
SKIERMONT PUCKETT LLP
2200 Ross Avenue
Dallas, TX 75201
PAUL J. SKIERMONT, ESQ.
AMY E. LaVALLE, ESQ.
DONALD E. TILLER, ESQ.
LENNY HUANG, ESQ.
ALEXANDER E. GASSER, ESQ.
HESLIN ROTHENBERG FARLEY
& MESITI P.C.
5 Columbia Circle
Albany, NY 12203
NICHOLAS MESITI, ESQ.
HARRIS BEACH PLLC
333 West Washington Street
Syracuse, NY 13202
JAMES R. MULDOON, ESQ.
STEVEN P. NONKES, ESQ.
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FENWICK & WEST LLP
555 California Street
San Francisco, CA 94101
TERESA M. CORBIN, ESQ.
HECTOR J. RIBERA, ESQ.
RYAN J. MARTON, ESQ.
DAVID M. LACY KUSTERS, ESQ.
WILLIAM A. MOSELEY, JR., ESQ.
& TRIVELPIECE, P.C.
308 Maltbie Street
Syracuse, NY 13204
MITCHELL J. KATZ, ESQ.
DAVID E. PEEBLES
U.S. MAGISTRATE JUDGE
DECISION AND ORDER
Plaintiffs Rensselaer Polytechnic Institute ("RPI") and Dynamic
Advances, LLC ("Dynamic"), the owner of and an exclusive licensee under
the patent in suit, respectively, have commenced this action against
defendant Apple, Inc. ("Apple"), alleging patent infringement. The patent at
issue discloses a natural language interface ("NLI") consisting of a method
for processing natural language inputs provided by a user through a
search of language-based databases. Plaintiffs allege that Apple's Siri
personal assistant, available on devices such as iPhones and iPads,
infringes the claims of their patent. Apple has denied infringement,
asserted several affirmative defenses, and counterclaimed seeking a
declaratory judgment of non-infringement and patent invalidity.
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Currently pending before the court is plaintiffs' application for costs
and attorney's fees pursuant to a prior order in which such costs and fees
were allowed in connection with plaintiffs' motion to compel discovery. For
the reasons set forth below, plaintiffs are hereby awarded attorney's fees
in the sum of $104,964, and costs in the amount of $8,599, for a total
award of $113,563.
At the center of this case is United States Patent No. 7,177,798
("’798 Patent"), issued on February 13, 2007, and entitled "Natural
Language Interface Using Constrained Intermediate Dictionary of Results."
Dynamic, as the exclusive licensee under the ’798 Patent, filed suit
against Apple in this court on October 19, 2012, alleging infringement of
the patent. See Dynamic Advances, LLC v. Apple, Inc., No. 12-CV-1579
(N.D.N.Y. filed Oct. 19, 2012). The instant action was subsequently filed
by Dynamic, joined by RPI on June 3, 2013, and the first suit was
On September 10, 2014, oral argument was heard in connection
with discovery cross-motions by the parties. Dkt. No. 155. At the
conclusion of the hearing, I granted plaintiffs' request for costs and
attorney's fees in connection with two discrete matters identified in their
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motion, one related to a failed Rule 30(b)(6) deposition of Scott Dennison,
and the other related to defendants' failure to provide plaintiffs with
requested and relevant discovery materials. 1 The bench decision rendered
on September 10, 2014, in connection with the parties' cross-motions, was
memorialized in an order dated September 17, 2014. Dkt. No. 150. In that
order, inter alia, I directed plaintiffs to prepare and submit a proper fee
application, with appropriate evidentiary support, quantifying the amounts
of fees and costs sought, and provided for the filing of opposition papers
by Apple. Dkt. No. 150 at 6.
On October 1, 2014, plaintiffs submitted a comprehensive and wellsupported application for costs and attorney's fees, requesting an award of
attorney's fees in the amount of $108,214.50, and costs in the sum of
$8,599.27, for a total award of $116,813.77. Dkt. No. 157-1 at 6. Apple
has since responded, arguing principally that it fails to reflect a proper
apportionment of attorney time and costs among the various issues
presented, and that much of the effort reflected in the attorney's fees
Although, admittedly, there is room for confusion, Apple is incorrect in arguing
that attorney's fees were awarded only in connection with the failed Rule 30(b)(6)
deposition. See generally Dkt. No. 162. While it is true that the order dated September
17, 2014, specifically refers only to the failed deposition, Dkt. No. 150 at 6, the court's
bench decision from September 10, 2014, which was explicitly incorporated by
reference into the later order, clearly indicates that costs would also be awarded in
connection with plaintiffs' motion to compel discovery under Federal Rules of Civil
Procedure 37(a)(5). Dkt. No. 155 at 88.
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application related to the failed deposition represents effort that would be
required to prepare for the second 30(b)(6) deposition(s) ordered by the
court, and thus should have been omitted or, at a minimum, discounted.
See generally Dkt. No. 162. In their reply, plaintiffs ask the court to award
attorney's fees associated with their preparation of the fee petition, in the
additional amount of $21,302.50. See generally Dkt. No. 169.
Calculation of Attorney's Fees Generally
Having already determined that an award of costs and attorney's
fees is warranted, the task of the court now shifts to determining the
appropriate amount to award. In this circuit, fee awards are governed by
the Second Circuit's instructive decision in Arbor Hill Concerned Citizens
Neighborhood Ass'n v. Cnty. of Albany, 522 F.3d 182, 183-84 (2d Cir.
2008). Under the protocol announced in Arbor Hill, a court must first
consider whether the rates at which compensation is sought are those that
a "reasonable, paying client would be willing to pay" before multiplying that
figure by the number of hours expended. Arbor Hill, 522 F.3d at 190-91;
see also Lewis v. City of Albany Police Dep't, No. 04-CV-0152, 2008 WL
2103565, at *1 (N.D.N.Y. May 20, 2008) (Hurd, J.) ("Attorney's fees are
awarded by determining a presumptively reasonable fee, reached by
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multiplying a reasonable hourly rate by the number of reasonably
expended hours."). Determination of the rate at which a reasonable client
would be willing to compensate for the services rendered is informed by
several factors of varying degrees of relevance,
including, but not limited to, the complexity and
difficulty of the case, the available expertise and
capacity of the client=s other counsel (if any), the
resources required to prosecute the case effectively
. . . the timing demands of the case, [and] whether
an attorney might have an interest (independent of
that of his client) in achieving the ends of the
Arbor Hill, 522 F.3d at 184. Arbor Hill also reinforced the appropriateness
of considering the so-called "Johnson factors" when establishing a
reasonable rate, including
(1) the time and labor required; (2) the novelty and
the difficulty of the questions; (3) the level of skill
required to perform the legal service properly; (4)
the preclusion of employment by the attorney due to
acceptance of the case; (5) the attorney=s
customary hourly rate; (6) whether the fee is fixed or
contingent; (7) the time limitations imposed by the
client or the circumstances; (8) the amount involved
in the case and the results obtained; (9) the
experience, reputation, and ability of the attorneys;
(10) the 'undesirability' of the case; (11) the nature
and length of the professional relationship with the
client; and (12) awards in similar cases.
Arbor Hill, 522 F.3d at 186 n.3, 190 (discussing Johnson v. Ga. Highway
Express, Inc., 488 F.2d 714, 717-19 (5th Cir. 1974), abrogated on other
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grounds by Blanchard v. Bergeron, 489 U.S. 87, 92-93, 96 (1989)). The
Second Circuit cautioned that a court should also "bear in mind that a
reasonable, paying client wishes to spend the minimum necessary to
litigate the case effectively." Arbor Hill, 522 F.3d at 190.
Appropriate Rates to be Applied
The first step in determining an appropriate fee award is to establish
the reasonable hourly rates to be applied. In making that analysis, I have
taken notice of the complexity of this action and the highly specialized
expertise required to properly prosecute patent infringement claims
against a defendant of Apple's size and resources. In their application,
plaintiffs request that the court apply hourly rates ranging from $450 on the
high end, for lead counsel Paul J. Skiermont, Esq., to $185 for paralegals.
Plaintiff's application is well supported with an indication of rates typically
charged by plaintiffs' counsel to patent clients; market data reflecting, if
anything, that the rates sought are well below the national average for
experienced patent litigation attorneys; and rates charged by Apple's
retained counsel, Fenwick & West, LLP. Accordingly, and because Apple
does not challenge the rates at which plaintiffs' fee application is
calculated, I will apply the requested rates, as follows:
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Paul J. Skiermont, Esq.
Alexander E. Gasser, Esq.
Shellie Stephens, Esq.
Clifford Chad Henson, Esq.
Julie Forbes (paralegal) 2
The next step in the attorney's fees calculus is determining the
number of hours for which plaintiffs are deserving of compensation. In
their application, plaintiffs' counsel describes the methodology filed in
preparing the fee petition. Dkt. No. 160 at 4. The process begins with the
requirement that attorneys at Skiermont Puckett, LLP, keep
contemporaneous records of their hours expended on a particular matter.
Id. At appropriate points pre-bills are generated and reviewed by the
attorney in charge of a matter to insure both reasonableness and
conformity with any applicable client agreement. Id. at 4-5. In making that
review, the attorney in charge retains the discretion to write down or delete
hours, or to charge some time at reduced rates. Id.
In this case, a spreadsheet of all relevant entries related to the Rule
30(b)(6) deposition of Scott Denison and plaintiffs' motion to compel was
compiled and sent to each person submitting eligible entries. Dkt. No. 160
Plaintiffs do not seek any recovery for time expended by their local counsel,
Harris Beach PLLC, and Heslin Rothenberg Farley & Mesiti P.C., in conjunction with
the parties' cross-motions. Dkt. No. 160 at 6.
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at 5. The initial spreadsheet identified in excess of 620 hours of work
associated with those two matters. Id. The spreadsheet was then reviewed
by those attorneys and paralegals performing the relevant work. Id.
Following that review, a total of 143 hours of work in connection with the
failed 30(b)(6) deposition and 350 hours in connection with the plaintiffs'
motion to compel were identified. Id.
Once that initial exercise was completed, Attorney Skiermont then
reviewed all of the entries and exercised his discretion to either leave a
time entry as written, remove it entirely, or reduce all or some of the hours
worked. Dkt. No. 160 at 5. In making his review, Attorney Skiermont
eliminated (1) all time entries from more than one week prior to the failed
30(b)(6) deposition, (2) all time entries related to briefing other attorneys
on issues related to the deposition and motion to compel, (3) all block
entries that included any time unrelated to the fee application, and (4) all
time entries related to redundant work that a client would expect to be
written off. Id. at 5-6. As one final measure, Attorney Skiermont then wrote
off additional time in order to bring the petition in line with what
comparable, publicly available fee petitions revealed, resulting in a further
reduction of 58.6 hours. Id. at 6. The final number of hours was then
further reduced by fifteen percent, to the number of hours reflected in the
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instant petition. Id.
Having reviewed the matter, and given the extensive reduction
already implemented by plaintiffs' counsel, I have determined, in my
discretion, that the time expended in connection with preparation for the
failed deposition during the week before the deposition should be further
discounted by thirty percent because it would have been reasonably
expected to be necessary to prepare for any subsequent, court-ordered
Rule 30(b)(6) deposition(s). In addition, because plaintiffs did not prevail
on certain issues raised by them in their motion to compel, I have written
down the amounts sought in connection with the motion to compel by
twenty percent. With those write downs, I will award plaintiffs' fees
calculated as follows:
Utilizing the foregoing methodology, and the calculations listed above, I
award a total of $83,661 to plaintiffs in attorney's fees based upon their
initial fee petition.
Preparation of Fee Application
In their reply papers, plaintiffs request an additional award of
$21,302.50 to compensate them for preparing the fee petition and reply. It
is well-established that a prevailing party entitled to recover fees as a
sanction under Rule 37 of the Federal Rules of Civil Procedure is entitled
to be compensated for the time expended in preparing a fee application.
See, e.g., Ceglia v. Zuckerberg, No. 10-CV-0569, 2012 WL 503810, at *18
(W.D.N.Y. Feb. 14, 2012); Fox v. Cnty. of Cayuga, No. 02-CV-1445, 2006
WL 2772730, at *2 n.2 (N.D.N.Y. Sept. 22, 2006) (Munson, J., adopting
report and recommendation by Peebles, M.J.). Like the original requests,
plaintiffs' application for recovery of attorney's fees associated with
preparing the petition and reply papers is adequately supported, and the
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hours reflected appear to be reasonable. Accordingly, I award the full
amount sought, without reduction, to compensate the plaintiffs for
preparation of the fee application, in the sum of $21,303.
Plaintiffs also seek recovery of a total of $7,606.14 in costs and
disbursements related to the failed Rule 30(b)(6) deposition, and the
additional sum of $993.13 in disbursements relative to the motion to
compel. Defendant has not challenged these requests. Accordingly,
having reviewed and determined that those requests are reasonable and
adequately supported, I will include them in the amount to be awarded to
CONCLUSION AND ORDER
Having carefully considered plaintiffs' application for costs and
attorney's fees, it is hereby
ORDERED that plaintiffs are hereby awarded the sum of $104,964
in attorney's fees, and an additional amount of $8,599 in costs and
disbursements, for a total award of $113,563 in connection with the cross-
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motions argued on September 10, 2014. Payment of that amount must be
made by the defendant within thirty days of the date of this order.