1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 CLINICOMP INTERNATIONAL, INC., Case No.: 17-cv-02479-GPC (DEB)

12 Plaintiff,

ORDER AWARDING DEFENDANT

13 v. ATTORNEYS’ FEES UNDER 35

U.S.C. § 285

14 CERNER CORPORATION, 15 Defendant. 16 17 On February 3, 2023, the Court granted Defendant Cerner Corporation (“Cerner”)’s 18 motion for attorneys’ fees pursuant to 35 U.S.C. § 285; found this case to be “exceptional;” 19 and awarded Cerner its reasonable attorneys’ fees incurred since August 29, 2022. (Dkt. 20 No. 133.) On February 24, 2023, Cerner filed its brief in support of its request for its 21 attorneys’ fees incurred since August 29, 2022. (Dkt. No. 136.) On March 10, 2023, 22 CliniComp filed its response to Cerner’s request for attorneys’ fees. (Dkt. No. 141.) On 23 March 17, 2023, Cerner filed its reply. (Dkt. No. 149.) For the reasons set forth below, 24 the Court awards Cerner $802,334.60 in attorneys’ fees under 35 U.S.C. § 285. 25 I. BACKGROUND 26 CliniComp is the owner of U.S. Patent No. 6,665,647 (“the ’647 Patent”) by 27 assignment. (Dkt. No. 1, Compl. ¶ 2.) In the present action, CliniComp alleged that Cerner 28 directly infringes claims 1, 2, 5, 10-13, 15-18, and 20-23 of the ’647 Patent by making, 1 using, selling, and/or offering to sell within the United States Cerner’s CommunityWorks, 2 PowerWorks, and Lights on Network services (collectively “the accused services”). (Dkt. 3 No. 103, Ex. 2 at 21; see also Dkt. No. 1, Compl. ¶¶ 15-16.) 4 On December 11, 2017, CliniComp filed a complaint for patent infringement against 5 Cerner, alleging infringement of the ’647 Patent. (Dkt. No. 1, Compl.) On May 16, 2018, 6 the Court granted Cerner’s motion to dismiss CliniComp’s claims for willful infringement 7 and indirect infringement as well as the relief sought in connection with these claims of 8 injunctive relief, treble damages, and exceptionality damages. (Dkt. No. 18 at 21.) On 9 June 25, 2018, Cerner filed an answer to CliniComp’s complaint. (Dkt. No. 19.) 10 On March 5, 2019, the Patent Trial and Appeal Board (“PTAB”) instituted an inter 11 partes review (“IPR”) as to claims 1-25 and 50-55 of the ’647 Patent. (Dkt. No. 30-1, Ex. 12 A.) On March 7, 2019, the Court granted a stay of the action pending completion of the 13 IPR proceedings. (Dkt. No. 31.) On March 26, 2020, the PTAB issued a final written 14 decision, determining that claims 50-55 of the ’647 Patent are not patentable in light of the 15 prior art, but that claims 1-25 of the ’647 Patent are patentable.1 (Dkt. No. 32, Ex. A at 93- 16 94.) On April 20, 2021, the Federal Circuit affirmed the PTAB’s determination that claims 17 1-25 of the ’647 Patent are patentable.2 (Dkt. No. 38-2, Ex. B at 10.) On June 24, 2021, 18 the Court granted the parties’ joint motion to lift the stay of the action. (Dkt. No. 44.) 19

20 21 1 Specifically, the PTAB concluded that Cerner had shown by a preponderance of the evidence that: (1) claims 50-52 are not patentable based on Evans; (2) claims 53 and 54 are 22 not patentable based on Evans and Rai; (3) claims 50-53, and 55 are not patentable based 23 on Johnson and Evans; and (4) claim 54 is not patentable based on Johnson, Evans, and Rai. (Dkt. No. 32, Ex. A at 93-94.) The PTAB further concluded that Cerner had not 24 shown by a preponderance of the evidence: (1) that claims 1-5, 10-13, and 15-25 are 25 unpatentable based on Johnson and Evans; or (2) that claims 6-9, and 14 are unpatentable based on Johnson, Evans, and Rai. (Id. at 93.) 26 2 On November 15, 2021, the PTO issued an inter partes review certificate for the 27 ’647 Patent, stating: “Claims 1-25 are found patentable” and “Claims 50-55 are cancelled.” 28 (Dkt. No. 71-2, Ex. A at A-20–A-21.) 1 On July 23, 2021, Cerner filed an amended answer to CliniComp’s complaint. (Dkt. 2 No. 52.) On October 7, 2021, the Court issued a scheduling order for the action. (Dkt. No. 3 55.) On July 28, 2022, the Court issued a claim construction order, construing the disputed 4 claim terms from the ’647 Patent. (Dkt. No. 91.) 5 On November 15, 2022, the Court granted Cerner’s motion for summary judgment 6 of non-infringement. (Dkt. No. 120.) Specifically, the Court held that Cerner demonstrated 7 that the accused services do not infringe the asserted claims of the ’647 Patent as a matter 8 of law. (Id. at 44.) On November 16, 2022, the Court entered a judgment in the action in 9 favor of Defendant Cerner and against Plaintiff CliniComp. (Dkt. No. 121.) 10 On December 30, 2022, the Clerk of Court taxed costs in favor of Cerner in the 11 amount of $8,265.80. (Dkt. No. 131 at 3.) On February 3, 2023, the Court granted Cerner’s 12 motion for attorneys’ fees pursuant to 35 U.S.C. § 285, and the Court awarded Cerner its 13 reasonable attorneys’ fees incurred since August 29, 2022. (Dkt. No. 133 at 23.) By the 14 present briefing, Cerner requests that the Court award it $802,334.60 for its attorneys’ fees 15 incurred since August 29, 2022. (Dkt. No. 144 at 1, 11; Dkt. No. 149 at 6.) 16 II. DISCUSSION 17 Cerner requests that the Court award it $802,334.60 in attorneys’ fees under the 18 lodestar method. (Dkt. No. 144 at 1-2; Dkt. No. 149 at 6.) An award of attorneys’ fees 19 under 35 U.S.C. § 285 must be “reasonable.” Kilopass Tech., Inc. v. Sidense Corp., 82 F. 20 Supp. 3d 1154, 1164 (N.D. Cal. 2015); see SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 21 1295, 1311 (Fed. Cir. 2019) (“Section 285 permits a prevailing party to recover reasonable 22 attorneys’ fees.”). “The requirement that fees awarded be reasonable is a safeguard against 23 excessive reimbursement.” IPS Grp., Inc. v. Duncan Sols., Inc., No. 15-CV-1526-CAB 24 (MDD), 2018 WL 3956019, at *1 (S.D. Cal. Aug. 17, 2018) (citing Mathis v. Spears, 857 25 F.2d 749, 754 (Fed. Cir. 1988)). 26 In calculating an attorneys’ fee award under § 285, “a district court usually applies 27 the lodestar method, which provides a presumptively reasonable fee amount by multiplying 28 a reasonable hourly rate by the reasonable number of hours required to litigate a 1 comparable case.” Lumen View Tech. LLC v. Findthebest.com, Inc., 811 F.3d 479, 483 2 (Fed. Cir. 2016) (citing Perdue v. Kenny A. ex rel. Winn, 559 U.S. 542, 551, 554 (2010)); 3 see also Staton v. Boeing Co., 327 F.3d 938, 965 (9th Cir. 2003) (“When a statute provides 4 for such fees, it is termed a ‘fee-shifting’ statute. Under a fee-shifting statute, the court 5 ‘must calculate awards for attorneys’ fees using the ‘lodestar’ method.’”). “Ultimately, a 6 ‘reasonable’ number of hours equals ‘the number of hours which could reasonably have 7 been billed to a private client.’” Gonzalez v. City of Maywood, 729 F.3d 1196, 1202 (9th 8 Cir. 2013) (quoting Moreno v. City of Sacramento, 534 F.3d 1106, 1111 (9th Cir. 2008)). 9 A district court should not award “fees for hours expended by counsel that were ‘excessive, 10 redundant, or otherwise unnecessary.’” SRI, 930 F.3d at 1311 (quoting Hensley v. 11 Eckerhart, 461 U.S. 424, 437 (1983)); accord Gonzalez, 729 F.3d at 1203. 12 “The fee applicant bears the burden of establishing entitlement to an award and 13 documenting the appropriate hours expended and hourly rates.” Hensley, 461 U.S. at 437; 14 see Welch v. Metro. Life Ins. Co., 480 F.3d 942, 945–46 (9th Cir. 2007) (“The party 15 seeking fees bears the burden of documenting the hours expended in the litigation and must 16 submit evidence supporting those hours and the rates claimed.”). “Once the party seeking 17 fees meets that initial burden of adequately documenting the hours requested, the burden 18 shifts to the opposing party” to challenge the accuracy and reasonableness of the hours 19 billed. Maloney v. T3Media, Inc., No. CV 14-05048-AB VBKX, 2015 WL 3879634, at 20 *4 (C.D. Cal. May 27, 2015); see Hiken v. Dep’t of Def., 836 F.3d 1037, 1045 (9th Cir. 21 2016) (“‘[T]he party opposing the fee application has a burden of rebuttal that requires 22 submission of evidence to the district court challenging the accuracy and reasonableness 23 of the hours charged or the facts asserted by the prevailing party in its submitted 24 affidavits.’” (quoting Gates v. Deukmejian, 987 F.2d 1392, 1397–98 (9th Cir. 1992)). 25 The determination of the amount of reasonable attorneys’ fees under § 285 is “‘a 26 matter that is committed to the sound discretion of a district court judge.’” In re Rembrandt 27 Techs. LP Pat. Litig., 899 F.3d 1254, 1278 (Fed. Cir. 2018) (quoting Lumen View, 811 28 F.3d at 483). In awarding fees, a district court must “explain how it came up with the 1 amount,” and that explanation “must be ‘concise but clear.’” Moreno, 534 F.3d at 1111 2 (quoting Hensley, 461 U.S. at 437); see also United Steelworkers of Am. v. Phelps Dodge 3 Corp., 896 F.2d 403, 407 (9th Cir. 1990) (“[H]ours actually expended in the litigation are 4 not to be disallowed without a supporting rationale.”). “Where the difference between the 5 lawyer’s request and the court’s award is relatively small, a somewhat cursory explanation 6 will suffice. But where the disparity is larger, a more specific articulation of the court’s 7 reasoning is expected.” Moreno, 534 F.3d at 1111. 8 In support of its fees request, Cerner explains that the undiscounted hourly rates for 9 defense counsel in this action are as follows: (1) $1,465, $1,120, and $1,055 for the three 10 partners; (2) $805 and $610 for the two associates; and (3) $495, $420, and $415 for the 11 three paralegals. (Dkt. No. 144 at 2-3.) Cerner further explains that the actual hourly rates 12 paid by Cerner are lower than this due to the benefit of a negotiated discount that Cerner 13 received from defense counsel. (Id. at 2-3.) 14 The Court finds these hourly rates to be reasonable. First, “rate determinations in 15 other cases . . . are satisfactory evidence of the prevailing market rate.” United 16 Steelworkers, 896 F.2d at 407. District courts in other complex patent cases have found 17 similar rates to be reasonable in awarding attorneys’ fees. See, e.g., Orthopaedic Hosp. v. 18 Encore Med., L.P., No. 319CV00970JLSAHG, 2021 WL 5449041, at *13 (S.D. Cal. Nov. 19 19, 2021) (approving hourly rates of up to $1,260 for partners and $1,065 for associates as 20 reasonable); NuVasive, Inc. v. Alphatec Holdings, Inc., No. 3:18-CV-347-CAB-MDD, 21 2020 WL 6876300, at *3 (S.D. Cal. Mar. 20, 2020) (approving hourly rates of $1,005 and 22 $860 for partners as reasonable); Facebook, Inc. v. Power Ventures, Inc., No. 08-CV- 23 05780-LHK, 2017 WL 3394754, at *7 (N.D. Cal. Aug. 8, 2017) (approving Orrick’s hourly 24 rates of up to $1,200 for a partner, $800 for an associate, and $430 for a paralegal as 25 reasonable); Healthier Choices Mgmt. Corp. v. Philip Morris USA, Inc., No. 1:20-CV- 26 4816-TCB, 2022 WL 870206, at *4 (N.D. Ga. Feb. 22, 2022) (approving hourly rates of 27 28 1 up to $1,318 for partners, $935 for associates, and $450 for paralegals as reasonable). 2 Second, “[t]he reasonableness of the requested rates is strongly supported by the fact that 3 these are the rates that counsel billed to [Cerner] and that [Cerner] has already paid.” 4 Facebook, 2017 WL 3394754, at *7; see Wi-LAN, 2022 WL 1224901, at *4 (“The Federal 5 Circuit has explicitly approved the award of attorney fees under § 285 at the rates that the 6 attorneys actually charged.” (citing SRI, 930 F.3d at 1311)). Third, that Cerner received a 7 discount on the hourly rates at issue also supports the reasonableness of the rates. See 8 Orthopaedic Hosp., 2021 WL 5449041, at *14. Fourth, “the fact that this matter is a 9 complex, high-stakes patent litigation” further supports the reasonableness of the rates. Id.; 10 see also Yufa v. TSI Inc., No. 09-CV-01315-KAW, 2014 WL 4071902, at *5 (N.D. Cal. 11 Aug. 14, 2014) (“[T]he field of intellectual property law requires specialized knowledge.”). 12 Finally, CliniComp does not challenge the reasonableness of Cerner’s hourly rates. 13 Turning to the reasonable number of hours expended, “to determine whether 14 attorneys for the prevailing party could have reasonably billed the hours they claim to their 15 private clients, the district court should begin with the billing records the prevailing party 16 has submitted.” Gonzalez, 729 F.3d at 1202. As part of its fee request, Cerner has provided 17 the Court with detailed billing records with time billed in one-tenth of an hour increments 18 and with specific narratives detailing each billed task. (See Dkt. No. 144, Bobrow Decl. 19 Ex. 1.) After reviewing these billing records, the Court finds the hours expended by 20

21 22 3 Although the Court cites to cases from the Northern District of California and the Northern District of Georgia, this is permissible because as another court in this District 23 has explained: “based on the Court’s knowledge of local billing rates and of the practices 24 of national law firms, large national law firms . . . do not charge different rates based on the jurisdiction in which a complex patent lawsuit is filed.” NuVasive, 2020 WL 6876300, 25 at *3 n.1; see also Wi-LAN Inc. v. Sharp Elecs. Corp., No. CV 15-379-LPS, 2022 WL 26 1224901, at *4 (D. Del. Apr. 25, 2022) (“[T]his Court remains of the view that the appropriate ‘market’ for assessing rates in a high-stakes patent litigation like the instant 27 case is the market for national (and Delaware) counsel who litigate patent cases in 28 Delaware.”). 1 Cerner’s counsel to be reasonable. 2 Although CliniComp does not challenge the total number of hours billed by Cerner’s 3 attorneys, CliniComp challenges Cerner’s requested fees on the grounds that the amount 4 reflects a disproportionately high use of partners for routine matters. (Dkt. No. 141 at 1- 5 5.) CliniComp contends that district courts have held that when a case is appropriately 6 staffed, partner time should account for no more than 30% of the total time. (Id. at 2 (citing 7 Larson v. United Nat. Foods W. Inc., No. CV-10-00185-PHX-DGC, 2013 WL 4507473, 8 at *2 (D. Ariz. Aug. 23, 2013).)4 CliniComp notes, for example, that Cerner’s partners 9 accounted for 71% of the hours expended on Cerner’s motion for summary judgment and 10 72% of the hours expended on Cerner’s motion for attorneys’ fees.5 (Id. at 3.) CliniComp 11 argues that, in light of this “top-heavy billing” by Cerner, the Court should exercise its 12 discretion and reduce Cerner’s requested fee amount by 50%, to correct a purported 82% 13 14 15 4 The Court notes that to support this contention, CliniComp cites to a single district 16 court case that involved claims for violation of the Family Medical Leave Act and for disability discrimination and did not involve complex claims for patent infringement. See 17 Larson, 2013 WL 4507473, at *1. Further, in that case, the district court did not broadly 18 state that when a case is appropriately staffed, partner time should generally account for no more than 30% of the total time. Rather, the district court specifically stated “a reasonable 19 fee in this case includes no more than 30% of the time at partner rates.” Id. at *2 (emphasis 20 added). 21 5 In its brief, CliniComp asserts that achieving summary judgment on claims that a party considered to be meritless does not require that most of the work be done by a partner, 22 and CliniComp notes that Cerner asserted that CliniComp’s claim for patent infringement 23 was meritless following the issuance of the Court’s claim construction order. (Dkt. No. 141 at 3 (citing Larson, 2013 WL 4507473, at *2.) The Court notes that although this may 24 generally be true, the present case involved complex technology. Further, as explained in 25 the Court’s February 3, 2023 order granting Cerner’s motion for attorneys’ fees, CliniComp changed its theory of infringement at least three times during the summary 26 judgment stage of this case. (See Dkt No. 133 at 13-19.) A theory of infringement that 27 changes three times in a few months, even if meritless, probably demands more attention from partners at the summary judgment stage than a meritless claim for patent infringement 28 1 overbilling by partners. (Id. at 4-5.) 2 In response, Cerner contends that its staffing decisions were reasonable and justified 3 by the demands of its clients in the legal market. (Dkt. No. 149 at 1.) Cerner contends: “It 4 is widely recognized that, for the last decade, clients have been pushing back on the use of 5 junior lawyers, particularly given the increase in associate salaries and billing rates. 6 Clients, including Cerner, find it more efficient to use more senior attorneys because they 7 get the work done in significantly less time than junior lawyers.” (Id. (citing Dkt. No. 149- 8 1, Bobrow Decl. ¶ 5).) Cerner explains that this is underscored by “the shrinking delta 9 between partner and non-partner billing rates as associate salaries increase.” (Id.) Cerner 10 further notes that the discounted hourly rates for two of its partners on this case were less 11 than or commensurate with the rates of non-partner attorneys that courts in this District 12 have found to be reasonable in other cases. (Id. at 1-2.) 13 Although the Court agrees with CliniComp that Cerner’s law firm could have better 14 utilized its associates in this case,6 Cerner’s counsel has provided reasonable explanations 15 for its staffing decisions. (See Dkt. No. 149 at 1-4; Dkt. No. 149-1, Bobrow Decl. ¶¶ 5-7.) 16 Further, the Court agrees with Cerner that the problem with CliniComp’s challenge is that 17 it fails to consider the discounted hourly rates that Cerner was paying the partners at issue. 18 In light of those discounts, Cerner was essentially paying reasonable senior associate-level 19 hourly rates for the work of two of three partners in this case. See, e.g., Orthopaedic Hosp., 20 2021 WL 5449041, at *13 (approving hourly rates of up to $1,065 for associates as 21 reasonable); Healthier Choices, 2022 WL 870206, at *4 (approving hourly rates of up to 22 $935 for associates as reasonable); Facebook, 2017 WL 3394754, at *7 (approving 23 Orrick’s hourly rates of up to $800 for an associate). As such, the Court rejects 24 CliniComp’s characterization of Cerner’s staffing decisions as “top-heavy billing,” and the 25

26 27 6 The Court acknowledges that it also appears to be true that CliniComp’s law firm could have better utilized its associates in this case as well. (See Dkt. No. 149 at 2; Dkt. 28 1 Court rejects CliniComp’s request to reduce Cerner’s requested fee amount by 50%. See 2 || also Finjan, Inc. v. Juniper Network, Inc., No. 3:17-CV-05659-WHA, 2021 WL 3674101, 3 *4 (N.D. Cal. May 20, 2021), report and recommendation adopted by Finjan, Inc. v. 4 || Juniper Networks, Inc., No. C 17-05659 WHA, 2021 WL 3140716 (N.D. Cal. July 26, 5 2021) (“In its strongest form, Finjan’s argument appears to be that Juniper could only 6 ||reasonably defend the case by employing a model where its lead counsel only parachuted 7 for hearings and trial. That is not the only way to reasonably staff a case, or even 8 necessarily advisable given the benefits that experienced counsel can bring to a case.”’). 9 Finally, CliniComp asserts that even if the Court finds Cerner’s hourly rates and 10 || hours expended to be reasonable, the Court may make a discretionary 10% reduction to the 11 requested fees. (Dkt. No. 141 at 5.) The Ninth Circuit has explained that in determining 12 reasonableness of a fees request, a “‘district court can impose a small reduction, no 13 || greater than 10 percent—a “haircut’”—based on its exercise of discretion and without a . . 14 ||. specific explanation.’” Gonzalez, 729 F.3d at 1203 (quoting Moreno, 534 F.3d at 1112). 15 || The Court, exercising its sound discretion, declines to perform a “haircut” to Cerner’s 16 ||requested amount of fees. 17 Hr. CONCLUSION 18 For the reasons above, the Court awards Cerner $802,334.60 in attorneys’ fees under 19 1135 U.S.C. § 285. 20 IT IS SO ORDERED. 21 ||Dated: March 22, 2023 =

23 United States District Judge 24 25 26 27 28