PersonalWeb Technologies LLC v. EMC Corporation

4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION PERSONAL WEB TECHNOLOGIES, 8 LLC, et al., Case No. 5:13-cv-01358-EJD 9 Plaintiffs, ORDER DENYING PLAINTIFFS’ MOTION TO STAY PENDING 10 v. FEDERAL CIRCUIT APPEAL 11 EMC CORPORATION, et al., Re: Dkt. No. 93 a 2 Defendants.

13 Plaintiffs PersonalWeb Technologies and Level 3 Communications LLC have filed a || motion to stay the determination of Defendants EMC Corporation and VMware, Inc.’s motion for © 15 attorneys’ fees and costs pending the resolution of Plaintiffs’ appeal. Having considered the || Parties’ briefs, the Court DENIES Plaintiffs’ motion for a stay pending the Federal Circuit appeal.

(«17 I. BACKGROUND Zz 18 Plaintiffs first filed this case in the Eastern District of Texas on December 8, 2011 and || asserted eight patents against Defendants. The case was transferred to this District on August 8, || 2013. Dkt. No. 3. On January 13, 2014, this Court granted Defendants motion to stay the case 21 pending inter partes review (“IPR”). Dkt. No. 41. Defendants successfully challenged the || asserted claims in six’ of the eight claimed patents in IPR proceedings, which the Federal Circuit 23 summarily affirmed. Dkt. Nos. 61, 66. Plaintiffs subsequently dismissed with prejudice the |i | Specifically, U.S. Patent No. 5,978,791 (“the ’791 patent”), Patent No. 6,415,280 (“the ’280 || patent’), Patent No. 7,945,544 (“the 544 patent”), Patent No. 7,945,539 (“the °539 patent’), Patent No. 7,949,662 (“the ’662 patent’), and Patent No. 8,001,096 (“the ’096 patent’). Dkt. No. 27 66.

Case No.: 5:13-cv-01358-EJD || ORDER DENYING PLAINTIFFS’ MOTION TO STAY PENDING FEDERAL CIRCUIT APPEAL seventh patent after the U.S. Patent and Trademark Office (“PTO”) invalidated certain claims || during a reexamination proceeding. See Dkt. No. 68. On November 22, 2019, Defendants moved || for judgment on the pleadings on the final remaining patent, U.S. Patent No. 7,802,310 (“the 310 || patent’). Dkt. No. 78. On January 29, 2020, this Court granted Defendants’ motion and entered || judgment for Defendants. Dkt. Nos. 83, 84. Plaintiffs have appealed that order. Dkt. No. 89.

6 After the Court entered judgment, the Parties filed a joint stipulation, which set forth a || briefing schedule for Defendants’ motion for attorneys’ fees. Dkt. Nos. 85, 86. Defendants filed || their motion for attorneys’ fees on March 11, 2020 (pursuant to the briefing schedule). Dkt. Nos. || 90,91. Plaintiffs’ opposition is due on April 22, 2020. Dkt. No. 86. Rather than following the || stipulated briefing schedule, Plaintiffs informed Defendants that they would seek a “stay” of all 11 briefing on attorney fees until after their appeal is completed. On March 23, 2020, Plaintiffs filed || their motion to stay. Personal Web’s L.R. 6-3 Motion to Extend Its Time to File an Opposition to 13 Defendants’ Attorney’s Fees Motion (“Mot.”), Dkt. No. 93. Defendants filed an opposition on || March 27, 2020. Defendants’ Opposition to PersonalWeb’s Motion for Stay (“Opp.”), Dkt. No. 3 |} 94. a 16 Il. DISCUSSION 17 If an appeal on the merits of a case is taken, courts have discretion to defer the 18 determination of fees while an appeal is pending. Fed. R. Civ. P. 54(d) advisory committee’s || notes to 1993 amendment. However, “the weight of authority is that the usual course is for the || Court to consider attorneys’ fees promptly after the merits decision rather than stay a motion for 21 attorneys’ fees until resolution of the appeal.” Sports Dimension v. Coleman Co., Inc., 2015 WL 22 10013784, at *3 n.1 (C.D. Cal. June 4, 2015) (quotation marks and citation omitted). Courts 23 consider four factors to determine whether to stay awarding attorneys’ fees and costs pending || appeal: (1) “whether the stay applicant has made a strong showing that he is likely to succeed on || the merits;” (2) “whether the applicant will be irreparably injured absent a stay;” (3) “whether || issuance of the stay will substantially injure the other parties interested in the proceeding;” and (4) a Case No.: 5:13-cv-01358-EJD 28 ORDER DENYING PLAINTIFFS’ MOTION TO STAY PENDING FEDERAL CIRCUIT “where the public interest lies.” Hilton v. Braunskill, 481 U.S. 770, 776 (1987); see also Emblaze || Ltd. v. Apple, Inc., 2015 WL 1304779, at *2 (N.D. Cal. Mar. 20, 2015) (applying factors to determine whether to stay taxation of costs pending appeal and noting that “[i]n considering these || factors, courts in this district have repeatedly denied requests to stay taxation of costs”). A || plaintiff need not satisfy all four factors.

6 Plaintiffs fail to show that the Court should stay its determination of attorneys’ fees and || costs pending appeal? The Hilton factors weigh in favor of following the weight of the authority || that attorneys’ fees should be determined without delay. See e.g., Sports Techs. Corp. v. Nobel || Biocare USA LLC, 2018 WL 606149, at *2 (C.D. Cal. Aug. 13, 2018). First, Plaintiffs have made || no showing that they are likely to succeed on appeal other than to say “there is a significant chance 11 that Defendants’ Motion will be mooted by the Federal Circuit.” Mot. at 3. Plaintiffs have thus || failed to make a “strong showing” that they are likely to succeed on the merits. Cf Leiva-Perez v. || Holder, 640 F.3d 962, 966-68 (9th Cir. 2011) (noting that while this factor does not require a || movant to show it is “more likely than not” to succeed on appeal, the movant must show, at a 15 || minimum, that she has a “substantial case” for relief on the merits). Accordingly, this first factor a 16 || supports Defendants.

3 17 Second, Plaintiffs do not contend how they will be irreparably harmed absent a stay.

18 || Instead, Plaintiffs focus on how the Court will be inconvenienced and harmed absent a stay. See || Mot. at 3-4 (arguing the Court could waste time and money by not staying Defendants’ motion for || attorneys’ fees). The closest Plaintiffs get to meeting this factor is to say that they will have to 21 waste time and money litigating a motion that could be mooted by an appellate decision. /d. at 3.

22 Plaintiffs, however, have not introduced evidence indicating that such waste will cause irreparable || harm. For instance, Plaintiffs have neither argued that they have limited financial resources such || that ligating attorneys’ fees would result in bankruptcy nor that the costs of litigation would be *6 2 plaintiffs do not structure their brief around the Hi/ton factors. In fact, Plaintiffs do not even cite || the Hilton standard. The Court thus attempts to match arguments to the various factors.

Case No.: 5:13-cv-01358-EJD 28 ORDER DENYING PLAINTIFFS’ MOTION TO STAY PENDING FEDERAL CIRCUIT “overwhelming.” See Glauser v. GroupMe, Inc., 2015 WL 2157342, at *2—*3 (N.D. Cal. May 7, || 2015). Accordingly, this second factor supports Defendants.

3 Third, while there is no evidence that other parties will be injured by a stay, Defendants || have indicated that they may be prejudiced by a stay because it may jeopardize Defendants’ ability || to recover fees. Opp. at 4. The Court, however, does not know the status of Plaintiffs’ financial || health and so it cannot definitively determine whether Defendants (or other parties) would be || injured by a stay. Plaintiffs argue that no other party will be prejudiced by a stay and that fairness dictates that this Court grant the motion to stay since the Court stayed the case pending IPR || proceedings. Mot. at 5. But, that stay was warranted because the instituted IPRs were (by || definition) likely to succeed. See 35 U.S.C. § 314(a). Here, by contrast, Plaintiffs have not shown 11 they are likely to succeed. Accordingly, while this third factor supports Plaintiffs, it has little || weight.

13 Fourth, public policy considerations weigh in favor of denying a stay. Plaintiffs argue that || the public interest is best served by the Court conserving judicial resources and not engaging in an 15 analysis that may be unnecessary. Mot. at 3-5. The Court disagrees. First, only a small portion a 16 || of the fee request has to do with the portion of the matter on appeal. The fees motion covers all 17 || eight asserted patents; the appeal covers just one patent. Opp. at 4. Further, “judicial economy is || better served by determining attorneys’ fees promptly and when the Federal Circuit has the || opportunity to consider any appeal of the calculation at the same time as the appeal on the merits.”

20 || Spitz Techs. Corp., 2018 WL 6016149, at *2; see also Fed. R. Civ. P. 54(d) advisory committee’s 21 notes to 1993 amendment. And, in the event the Federal Circuit affirms, a stay will further delay || an already seven-years-old case. See BIAX Corp. v. NVIDIA Corp., 2012 WL 1949002, at *2 (D.

23 Colo. May 30, 2012). Lastly, there is a public interest in holding parties to their stipulations. Both || this Court and Defendants have relied on Plaintiffs’ stipulation that it would brief the issue of 25 attorneys’ fees before the appeal. Accordingly, this factor favors Defendants.

27 > Plaintiffs cite caselaw where courts granted a stay. Many of those cases involved cross-appeals Case No.: 5:13-cv-01358-EJD 28 ORDER DENYING PLAINTIFFS’ MOTION TO STAY PENDING FEDERAL CIRCUIT 1 I. CONCLUSION 2 Because three out of the four factors weigh in favor of denying the stay, the stay is || DENIED.

4 IT IS SO ORDERED.

5 || Dated: April 1, 2020 EDWARD J. DAVILA 7 United States District Judge 1]

2B ii

(«17 Z 18 26 |. or appeals based on multiple grounds, which is not the case here. See Opp. at 5n.2. The Court || thus finds these cases unpersuasive.

Case No.: 5:13-cv-01358-EJD || ORDER DENYING PLAINTIFFS’ MOTION TO STAY PENDING FEDERAL CIRCUIT APPEAL