mCom IP, LLC v. City National Bank of Florida

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

CASE NO. 23-23427-Civ-Scola/Lett

MCOM IP LLC,

Plaintiff,

v.

CITY NATIONAL BANK OF FLORIDA,

Defendant.

________________________________________/

REPORT AND RECOMMENDATION ON DEFENDANT’S MOTION FOR

ATTORNEY’S FEES

THIS CAUSE is before the Court pursuant to a referral from District Judge

Robert N. Scola of Defendant City National Bank of Florida’s Motion for Attorney’s

Fees and Costs against the Plaintiff mCom IP LLC (“Motion for Attorney’s Fees”, ECF

No. 38) under 35 U.S.C. § 285, 28 U.S.C. § 1927, and the Court’s Order Striking

Plaintiff’s Complaint [ECF No. 25]. [ECF No. 50.] This matter arises out of a patent

infringement action brought by the Plaintiff for an alleged infringement of U.S.

Patent No. 8,862,508 (the ‘508 Patent). The Defendant requests an award of

attorney’s fees in the amount of $72,508.52 in their original Motion for Attorney’s

Fees, with an additional $12,097.50 for work after the filing of that Motion. The

Defendant also requests an additional $2,225 in costs and the three hours of

preparation for the Hearing held on the Motion [ECF No. 53], for a total of $87,111.

For the reasons mentioned below, the Court recommends that the District

Court grant Defendant’s Motion for Attorney’s Fees.

I. Background

Plaintiff filed its Complaint on September 8, 2023, alleging one count of Patent

Infringement of the ‘508 Patent. [ECF No. 1]. In the Prayer for Relief in this

Complaint, Plaintiff requested the Court to declare the case to be “exceptional” within

the framework of 35 U.S.C. § 285 in order to be awarded its attorneys’ fees, expenses,

and costs. Compl. at 5. The Defendant file a Motion to Dismiss on December 11, 2023

[ECF No. 16], but before it was ruled upon, on its own motion, the District Court

struck the Plaintiff’s Complaint as a shotgun pleading on February 13, 2024, giving

the Plaintiff leave to amend its pleadings. [ECF No. 25].

Plaintiff filed an Amended Complaint on February 26, 2024, see Pl.’s First

Amend. Compl. [ECF No. 26], in which Plaintiff again requested for the Court to

declare the case “exceptional” under 35 U.S.C. 285 and award attorneys’ fees incurred

as a part of the case. Id. at 16. Defendant filed a Motion to Dismiss [ECF No. 30].

Part of the basis for the Motion to Dismiss lies in the ‘508 Patent itself. On February

8, 2023, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board

issued a Final Written Decision, determining that claims 1, 3-7, 9-13, 15, 16, and 18-

20 of the ‘508 Patent were unpatentable. See Unified Patents, LLC v. mCom IP, LLC,

IPR2022-00055, Final Written Decision (PTAB Feb. 8, 2023) [ECF No. 30-1].1

Importantly, the remaining claims of 2, 8, 14, and 17 all rely on other claims that

were dismissed in the 2023 opinion of the Patent Trial and Appeal Board. See Mot.

Dismiss at 9-11, 13-20. In their Response, Plaintiff relies on a Western District of

1 The Court is permitted to take judicial notice of PTAB documents. Viskase Corp. v.

Am. Nat. Can Co., 261 F.3d 1316, 1328 n. 2 (Fed. Cir. 2001).

Texas opinion denying a motion to dismiss involving the 508 Patent. See Pl's Resp. at

12 (citing mCom IP, LLC v. WoodForest Nat’l Bank, 6:21-cv-989, 2022 WL 22870277

(W.D. Tex. April 14, 2022)). However, the WoodForest decision pre-dated the PTAB

decision, which is why, among other reasons, the District Court dismissed Plaintiff’s

Amended Complaint without leave to amend. See Order Granting Motion to Dismiss

[ECF No. 34]. Plaintiff filed an appeal with the Eleventh Circuit on the District

Court’s opinion that is currently pending. [ECF No. 36].

For the duration of the litigation, Victoria Brient, Esq. has been the only

counsel of record for Plaintiff. However, “[w]ith the exception of a hand full of

telephone conferrals and participation in the initial case conference under Fed. R.

Civ. P. 26” as well as “email communications about mutual extensions of time and

selection of mediators,” the case was actually litigated by mCom’s national lead

counsel, William Ramey, Esq. Decl. of Salvatore Fazio (“Fazio Decl.”) ¶ 7 [ECF No.

38-1]. Attorney William Ramey from RAMEY LLC, a law firm based in Houston,

Texas, never entered an appearance or moved for pro hac vice admission.

Following dismissal, the Defendant filed the subject Motion for Attorney’s

Fees, requesting that the Court find the case “extraordinary” and grant an award of

attorney’s fees pursuant to 35 U.S.C. § 285, while also requesting attorney’s fees for

vexatious litigation under 28 U.S.C. § 1927. Defendant based this request on several

points: (1) the “shotgun pleading” that occurred in the case, (2) the PTAB decision

and the resulting lack of patentable subject matter that made the pleadings

inherently unreasonable, and (3) the motivation for bringing the action was purely to

extract a settlement. [ECF No. 38].

As to the first point, the Defendant noted the sua sponte dismissal from the

Court on the initial Complaint, and the subsequent dismissal of the Amended

Complaint without leave to amend. As to the second, Defendant detailed the history

of the mCom patent and its failure in PTAB, as well as the District Court’s analysis

of the inherently intertwined patent material in the Complaint that relied on claims

that had been dismissed. As to the third, Defendant noted the myriad claims from

mCom across various courts that ended consistently in either voluntary dismissal or

settlement in the pleadings stage, and none proceeded to trial or ever even reached

an adjudication by summary judgment. Fazio Decl. ¶ 9. Defendant also emphasized

its on-going communication with mCom about the existence of a license agreement

with Defendant’s vendor, NCR, for the patented process. Id. ¶¶ 10-14. mCom, through

its attorney William Ramey, previously litigated a case with NCR, which ended in a

stipulated dismissal in 2021. See mCom IP, LLC v. NCR Corporation, No. 6:21-CV-

00325 (W.D. Tex. filed Apr. 5, 2021). Despite its many requests to Mr. Ramey directly,

who has been acting as de facto lead counsel in this matter, Defendant obtained the

license between NCR and mCom and, pursuant to an order of this Court [ECF No.

53], filed it under seal [ECF No. 54] in the present case after obtaining it through its

own independent efforts through subpoena and with no assistance from mCom.

In its Response, Plaintiff argued: 1) that the Motion filed by Defendant was

untimely, 2) the case itself does not qualify as “exceptional” for purposes of Section

285, and 3) Section 1927 sanctions are not warranted. See Resp. Mot. Award of

Attorneys’ Fees & Costs [ECF No. 42]. As to timeliness, Plaintiff asserts Section 285

and Federal Rule of Civil Procedure 54(d)(2)(E) preclude the Local Rules that permit

a 60-day window to file for attorney’s fees. Id. at 12. Despite the previous assertions

that the case was “exceptional,” Plaintiff argued extensively in their Response that

this case is no longer “exceptional,” but rather ordinary and simple. Id. at p. 16-23.

In refuting the propriety of Section 1927 sanctions, Plaintiff relied on the argument

that it conducted an adequate pre-suit investigation, it attempted to revise its

complaint consistent with the District Court’s Order, and that Defendant’s citation

to the myriad suits by mCom on this patent that resolved quickly did not establish

an abusive pattern of litigation. Id. at 17-19. Plaintiff relied predominantly on the

failure of CNBFL to produce the license agreement from NCR at various stages of the

litigation, ignoring any pre-suit investigation that could have been done by them

given Ramey and mCom’s previous litigation with NCR. Id. at 12-15.

II. Analysis

As a preliminary matter, the Court notes that under 28 U.S.C. § 1295, the

United States Court of Appeals for the Federal Circuit would have jurisdiction over

any appellate matter arising from these patent claims. See Imagineering, Inc. v. Van

Klassens, Inc., 53 F.3d 1260, 1263 (Fed. Cir. 1995) (finding that an appeal of a 35

U.S.C § 285 award of attorney’s fees after the underlying patent claim terminated

was appropriately heard in the Federal Circuit). While this Court is ordinarily bound

by the decisions of the Eleventh Circuit, because an appeal would be heard in the

Federal Circuit, this Court applies the law that would be applied by that court. See

Ventrassist Pty Ltd. v. Heartware, Inc., 377 F. Supp. 2d 1278, 1282 (S.D. Fla. 2005)

(citing American Household Products, Inc. v. Evans Mfg., Inc., 139 F. Supp. 2d 1235,

1239 (N.D. Ala. 2001)).

A. 35 U.S.C. § 285 Attorney’s Fees

The party seeking attorney’s fees bears the burden of establishing entitlement

to those fees. Hensley v. Eckerhart, 461 U.S. 424, 437 (1983). Under 35 U.S.C. § 285,

trial courts are given the discretion to award attorney’s fees and costs in patent cases

to a prevailing party in “exceptional cases.” Octane Fitness, LLC v. ICON Health &

Fitness, Inc., 572 U.S. 545 (2014) provides guidance regarding what constitutes an

“exceptional case.” The Court overturned the previous structure to determine

“exceptional” cases under 35 U.S.C. § 285 found within Brooks Furniture Mfg., Inc. v.

Dutailier Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005), and instead established a less-

rigid framework to apply to patent litigation to award attorney’s fees. See Octane

Fitness, LLC, 572 U.S. at 548. The Court in Octane noted that the previous framework

allowed for attorney’s fees to be awarded only in instances of “litigation-related

misconduct of an independently sanctionable magnitude or determines that the

litigation was both ‘brought in subjective bad faith’ and ‘objectively baseless.’” Id. at

555 (citing to Brooks, 393 F.3d at 1381). The standard set forth in Octane now allows

for an award of attorney’s fees in which a party’s unreasonable conduct, while not

independently sanctionable, is nonetheless so “exceptional” to justify a fee award. Id.

Similarly, the Court in Octane found that the second category of fee awards was too

restrictive in requiring both objectively baseless litigation and that the litigation was

brought in bad faith. Id.

Pursuant to Octane, trial courts now view Section 285 attorney’s fees motions

through the lens of a simple discretionary inquiry, imposing no specific evidentiary

burden. See id. at 557. Thus, the litigation in these patent-based disputes is governed

by a preponderance of the evidence standard. Id. at 557-58.

Courts have since established general guidelines to follow in applying the

Octane “exceptional” standard. This framework is not precise, but provides “several

suggestions that might guide a district court’s discretionary decision.” See id. (citing

Univ. of Utah v. Max-Plank-Gesellschaft zur Foerderung der Wissenschaften e.V., 851

F. 3d 1317, 1323 (Fed. Cir. 2017)). “There is no per se rule that a case is exceptional

if litigation costs exceed the potential damages.” AEN Int’l Co. v. Uniclass Tech. Co.,

932 F.3d 1371, 1373 (Fed. Cir. 2019). Rather, the district court must determine if,

under the totality of the circumstances of a case, the case stands out “with respect to

the substantive strength of a party’s litigating position or the unreasonable manner

in in which the case was litigated.” Intell. Ventures I LLC v. Trend Micro Inc., 944

F.3d 1380, 1384 (Fed. Cir. 2019). A “district court has discretion, in an appropriate

case, to find a case exceptional based on a single, isolated act.” Id.

Cases in the Federal Circuit can be used to draw factual parallels to the case

at hand in how to apply this discretionary standard. In Bayer CropScience AG v. Dow

AgroSciences LLC, 851 F.3d 1302, 1303-05 (Fed. Cir. 2017), the court found the

plaintiffs’ litigation conduct unreasonable based on their “contorted reading” of an

agreement, their failure to perform a diligent pre-suit investigation of their claims,

and a frivolous motion for a preliminary injunction. In Lumen View Tech., LLC v.

Findthebest.com, Inc., 811 F.3d 479, 483 (Fed. Cir. 2016), the plaintiff’s allegations

were ill-supported and unfounded, particularly in light of the parties’

communications and claim constructions. Perhaps most guiding, in Elec. Commc’n

Techs., LLC v. ShoppersChoice.com, LLC, 963 F.3d 1371, 1377 (Fed. Cir. 2020), the

Federal Circuit reversed a denial of awards to the defendant. In that case, plaintiff

attempted to enforce a patent on a generically described computer system, and the

district court granted judgement on the pleadings to the defendant after conducting

the appropriate Alice Corp. Party Ltd. v. CLS Bank International, 573 U.S. 208 (2014)

analysis on abstract ideas. Id. at 1374-75. In the subsequent litigation on the

defendant’s motion for attorney’s fees, the defendant cited evidence that the plaintiff

sent standardized demand letters and filed repeated patent infringement actions (a

total of more than 150 defendants) for the purpose of obtaining low-value “license

fees” and forcing settlements. Id. at 1375. The Federal Circuit found that the pattern

of filing copious amounts of patent infringement suits, requesting a low-value

settlement, and failure to proceed in litigation past the claim construction hearings

“indicates the use of litigation to achieve quick settlement with no intention of testing

the strength of the patent or its allegations of infringement.” Id. at 1377.

The present case falls squarely within the standard set by the Octane Court

for the award of attorney’s fees. The District Court ruled in favor of the Defendant in

the Order Granting Defendant’s Motion to Dismiss, so the Defendant is clearly the

prevailing party in the case. Given the previous ruling of the Patent and Trial Board

on the underlying application, while not every claim was dismissed, every

independent claim was dismissed requiring Plaintiff to have considered the viability

of the present litigation in light of the PTAB’s ruling. Additionally, having the

licensee agreement with NCR and the previous litigation conducted by William

Ramey should have put the Plaintiff on notice that the claim would not pass muster.

As the Defendant points out, in its initial pleadings, Plaintiff asserted that this case

was “exceptional” and therefore worthy of a fee multiplier. It is only after its loss that

the case has now become “ordinary.” Furthermore, the District Court determined that

the original pleadings merited dismissing as a “shotgun” pleading, and even after

being given leave to file an amended complaint, Plaintiff still failed to present a case

to sufficiently satisfy the Fed. R. Civ. P. 12(b)(6) burden. Given the standard set forth

in Octane, the precedent found within the Federal Circuit for “extraordinary” cases

in patent law, and the facts present in this case, the Court finds that the action here

does qualify as “extraordinary” and the Defendant as the prevailing party is entitled

to attorney’s fees.

B. 28 U.S.C. § 1927 Attorney’s Fees

The Defendant also requested an award of attorney’s fees under 28 U.S.C. §

1927, alleging liability for excessive costs due to vexatious litigation. An award of

Section 1927 fees requires three things: 1) that the attorney engaged in unreasonable

and vexatious conduct, 2) that the conduct itself multiplied the proceedings, and 3)

that the dollar amount of the sanction must bear a financial nexus to the excess

proceedings. See Peterson v. BMI Refractories, 124 F.3d 1386, 1396 (11th Cir. 1997).

Determining “bad faith” for purposes of a Section 1927 claim requires a court to look

objectively at the conduct of the attorney, not the attorney’s subjective intent, to

determine if the actions of the attorney represent an intentional or reckless disregard

to the attorney’s duties to the court. See Norelus v. Denny’s, Inc., 628 F.3d 1270, 1282

(11th Cir. 2010).

The Defendant cites to Phonometrics, Inc. v. ITT Sheraton Corp., 64 F. App’x.

219 (Fed. Cir. 2003) (Phonometrics I), to support its claim for Section 1927 sanctions.

In Phonometrics, the court upheld the ruling for Section 1927 attorney’s fees,

particularly because the Federal Circuit previously ruled on the claim construction

issue that the plaintiff presented and warned them against continued litigation on

an issue that it had previously decided. Id. at 221. In that Phonometrics decision, the

Federal District Court of Appeals referenced a separate matter involving the same

plaintiff, finding that their claim on the underlying patent was vexatious, unjustified,

and conducted in bad faith in Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d

1459 (Fed. Cir. 1998). Id. at 220. This case predated the decision that came later in

Phonometrics I. The court in Phonometrics I found that the vexatious conduct by the

attorneys and the unnecessary litigation from the case itself satisfied both the

standard required for sanctions under Section 1927 as well as Section 285, given the

responsibility of the attorneys to litigate responsibly and not proceed in the face of a

failed suit. See id. at 221.

Similar behavior occurred here and therefore Section 1927 sanctions are

warranted. While the Court takes no pleasure in imposing sanctions on Attorney

Victoria Brieant, especially in light of the representation by defense counsel that not

only had Attorney Brieant been friendly and helpful during the case, but she avoided

additional litigation insofar that she did not seek an entry of default when the record

suggested she could. However, in many other respects Attorney Brieant, as the only

counsel of record in this matter for the plaintiff, unreasonably and without sufficient

diligence allowed this matter to proceed when all facts compelled a different response.

For example, at the hearing in this matter, Attorney Brieant was asked about the

substance of communications between NCR and her client to determine whether

Defendant was indeed a beneficiary under the settlement agreement between her

client and NCR such that the claims in this matter were improvidently brought.

Attorney Brieant was unable to answer the question instead deferring to Attorney

Ramey who communicated with NCR on mCom’s behalf. Attorney Brieant indicated

that she was neither copied nor did a diligent inquiry into the content of those

communications, which, given the effect of those communications on this case, should

have been led or thoroughly probed into by Attorney Brieant.

Attorney Brieant’s conduct resulted from following the lead of Attorney

William Ramey. Operating behind the scenes and driving the process, attorneys for

the Defendant often found themselves working with Attorney Ramey, who never filed

a notice of appearance or attempted to pro hac vice himself as a party to the case.

Perhaps this is because of Attorney Ramey’s extensive issues with the American legal

system, including allegations of improper practice of law and a failure to properly

obtain pro hac vice admission as recently as 2024. See, e.g., Koji IP, LLC v. Renesas

Electronics America, Inc., No. 24-cv-03089, 2024 WL 4008753 (N.D. Cal. August 29,

2024) (ordering Attorney Ramey to show cause for consistently failing to properly

admit himself as counsel in an action for a state where he was not admitted to the

local bar). Despite failing to move for pro hac vice admission or otherwise appearing

in this matter, Attorney Ramey functioned in a primary role spearheading the

interactions with Defendant’s counsel, while Brieant took a back-seat.

Moreover, Attorney Brieant has been admonished before through

Administrative Order 2023-54 for a case involving her actions (or lack thereof) as

local counsel on a pro hac vice matter. In light of the repeated behavior, the Court is

compelled to take more corrective action to encourage Attorney Brieant to undertake

a more thorough vetting process of out-of-state counsel and the matters they seek to

litigate in future court proceedings. The adage “if you lie down with dogs, you can

expect to wake up with fleas” rings true here. Particularly given the knowledge that

Attorney Ramey had of the rejection from PTAB, the reliance of the remaining patent

claims on the underlying patent material that PTAB invalidated, and the NCR

license agreement, the conduct from the attorneys in this case rises to the level of

vexatious and unnecessary. As such, it is the recommendation of this Court to impose

Section 1927 sanctions.

C. Timeliness of Motion

As noted above, Plaintiff also tries to avoid the imposition of fees by asserting

that Defendant’s Motion for Attorney’s Fees is untimely. Plaintiff states that Federal

Rule of Civil Procedure 54(d)(2) provides that a motion for attorney’s fees must be

filed within fourteen days after the entry of judgment. This ignores the remainder of

the statute, which also provides for special procedures by local rule to allow for

rulings on attorney’s fees. Fed. R. Civ. P. 54(d)(2)(D). The Local Rules provide for a

60-day window for the filing of motions for attorney’s fees. S.D. Fla. L. R. 7.3.

Accordingly, the Court finds that Defendant timely filed its Motion.

D. Reasonableness of Fees

After determining entitlement to attorney’s fees, the Court is then tasked with

determining the reasonableness of the requested amount of fees. Courts typically

begin this analysis with the “lodestar” method, which is the number of hours

reasonably expended on the litigation multiplied by a reasonable hourly rate. See

Hensley, 461 U.S. at 434; Thornton v. Wolpoff & Abramson, L.L.P., 312 F. App’x 161,

163-64 (11th Cir. 2008). Once that number is determined, it carries a presumption of

reasonableness. See Blum v. Stenson, 465 U.S. 886, 897 (1984). The lodestar amount

may be adjusted by courts upward or downward based on other considerations.

Hensley, 461 U.S. at 433-37.

To determine appropriate fees, courts are guided by the decision in Johnson v.

Ga. Hwy. Exp., Inc., 488 F.2d 714, 717-19 (5th Cir. 1974)2, which lays out twelve

2 Fifth Circuit cases decided on or before September 30, 1981, are binding precedent

in the Eleventh Circuit unless they have been overruled by the Eleventh Circuit

judges sitting en banc. Bonner v. City of Prichard, 661 F.2d 1206 (1981).

factors for consideration: 1) the time and labor required, 2) the novelty and difficulty

of the questions, 3) the skill requisite to perform the legal service properly, 4) the

preclusion of other employment by the attorney due to the acceptance of the case, 5)

the customary fee, 6) whether the fee is fixed or contingent, 7) time limitations

imposed by the client or the circumstances, 8) the amount involved 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. See also Mallory v. Harkness, 923 F.

Supp. 1546, 1555 (S.D. Fla. 1996) (applying the Johnson factors in determining

appropriate attorney’s fees). This set of factors has since been used in subsequent

Supreme Court cases, although it is not an all-encompassing list of factors to

determine reasonableness of fees. See Blanchard v. Bergeron, 489 U.S. 87, 91-93

(1989). The moving party for attorney’s fees bears the responsibility of documenting

the reasonableness of the hours worked on a case and the hourly rate. A.C.L.U. of Ga.

v. Barnes, 168 F.3d 423, 427 (11th Cir. 1999).

1. Reasonable Hourly Rate

A reasonable hourly rate is measured by “prevailing market rates in the

relevant community.” Blum, 465 U.S. at 895. The Court is considered to be the expert

in determining the issue of hourly rates in its community and may apply its own

knowledge and experience to form an independent judgment about the appropriate

fee rate. See Ikpe v. Kreative Therapy Rehab Ctr., Inc., No. 19-23217-CIV, 2019 WL

1369502, at *2 (S.D. Fla. Mar. 20, 2019) (citing Norman v. Hous. Auth. Of

Montgomery, 836 F.2d 1292, 1303 (11th Cir. 1988)). Determining market rates

requires the court to consider the Johnson factors in making its determination. See

5AIF Maple 2 LLC v. 5725 Lagorce Partners LLC, No. 21-20298-CIV, 2021 WL

7502576, at *2 (S.D. Fla. July 29, 2021) (citing to Dillard v. City of Elba, 863 F. Supp.

1550, 1553 (M.D. Ala. 1993)). Regardless of a party’s lack of opposition to a proposed

hourly rate or time expended on a case, the Court must ensure that the fee it awards

are reasonable. See Valley v. Ocean Sky Limo, 82 F. Supp. 3d 1321, 1325 (S.D. Fla.

2015).

The Defendant in the present case presented a reasonable hourly rate for the

individuals involved in the litigation process. The hourly rates proposed in their

motion are as follows: $550/hour for Ted Whitlock, a registered patent attorney with

Florida Bar Board Certification in Intellectual Property Law since 2008 and over 30

years of experience as an attorney; $450-$475/hour for Michael Santucci, who has 25

years working on business and intellectual property matters and is a managing

attorney at the firm tasked with representing CNBFL; $450/hour for Elijah Levitt,

who has practiced law for 20 years and was previously a Miami-Dade County Judge;

$350/hour for associate Cintia Calevoso, who has nearly 14 years of legal experience;

$325/hour for associate Salvatore Fazio, who has practiced for almost 8 years; and

rates of $135/hour, $150/hour, and $200/hour for paralegal Joanna Lubczanska, who

has 24 years of work experience in the legal field. See ECF No. 38-2. Importantly,

Plaintiff did not dispute any of these proposed rates in their Response, electing to

only challenge the validity of any fee award at all under 35 U.S.C. § 285 and 28 U.S.C.

§ 1927. On its own review, the Court finds that the rates requested are reasonable in

light of the litigation required in the case, the expertise and experience of the

attorneys and staff involved, and the quality of the work done in the case. The Court

therefore adopts the rates requested by the Defendant as reasonable.

2. Reasonable Hours Expended

The Court must next evaluate the reasonableness of the total hours expended

by defense counsel on the case. Defendant, as the party requesting fees, bears the

burden of providing the Court with sufficiently detailed records so that the Court can

assess the time claimed for each activity. See Hermosilla v. Coca-Cola Co., No. 10-

21418-CIV, 2011 WL 9364952, at *14 (S.D. Fla. July 15, 2011) (citing Barnes, 168

F.3d at 427, 432-33). Defendant also must use sound judgment and exclude hours

that would be unreasonable to bill a client. See Norman, 836 F.2d at 1301. The Court

must also exclude excessive or redundant hours included in the final billing. Id. at

1303. If the hours billed are determined to be unreasonably high, the Court has two

options: conduct an hour-by-hour analysis or reduce the requested hours by an across

the board cut. See Bivins v. Wrap It Up, Inc., 548 F.3d 1348, 1351-52 (11th Cir. 2008).

Judges are given discretion and must exercise judgment, as there is no specific

formula or rule in making fee determinations. See Hensley, 461 U.S. at 436. The goal

is not to become perfect accountants and to proceed to the ledger of hours with a

microscope trained to each minute entry, but to achieve a fair measure of the hours

worked and the litigation conducted. See Fox v. Vice, 563 U.S. 826, 838 (2011) (Courts

“need not, and indeed should not, become green-eyeshade accountants. The essential

goal in shifting fees (to either party) is to do rough justice, not to achieve auditing

perfection.”).

Plaintiff had the opportunity to object to any amount of time or hours and

declined to do so in their Response. This does not abdicate the court’s responsibility

to review the time sheets provided by the Defendant in its fee amount request. See

Valley, 82 F. Supp. 3d at 1325. Upon review of the billing statements provided by the

Defendant, the Court finds that the hours and time spent on this case to be reasonable

considering the work required. The Defendant’s ledger appears accurate and credible.

Additionally, in the Hearing held on this matter, the Defendant added hours to reflect

the work conducted to prepare for and litigate. The Court finds this amount of time

to be reasonable as well, and adds the requested time to the final billing.

3. Allocation of Fees

In cases where both Section 285 fees and Section 1927 fees are awarded, courts

have held that liability for fees cannot be joint and several. See Phonometrics, Inc.,

64 F. App’x. at 222. As such, the Court is now required to determine how to allocate

the fees, and is guided by determining at what juncture counsel was, or should have

been, on notice to conduct a more diligent search to determine if viable claims existed

in order to avoid engaging in unreasonable conduct that multiplied the proceedings.

The Court finds the natural demarcation to be February 26, 2024 – the date of

the filing of the Amended Complaint. At the time of the filing of the Amended

Complaint, Attorney Brieant knew or should have known of several key points: the

PTAB decision, the statements from defense counsel about the existence of the NCR

license, the substantive arguments for Defendant’s original motion to dismiss, and

the striking of the original complaint by the District Court as “shotgun pleadings.”

Attorneys are obligated to zealously advocate for their clients, but there is a point

where every bar-card-carrying attorney must be able to tell his/her clients that their

claim has no merit and that they will not continue to frivolously litigate. The

Amended Complaint crossed that Rubicon and created increasingly vexatious

litigation.

At the time of filing the Motion for Attorney’s Fees, the total amount incurred

for costs and fees by Defendant amounted to $72,508.50. The additional litigation

from the Motion for Attorney’s fees and subsequent hearing raised the total to

$87,111.02. In totaling the billing that Defendant incurred prior to the receipt of the

First Amended Complaint on February 26, 2024, the bill amount is $33,986.43. The

remainder of billing that occurred after this point amounts to $53,124.59, which

includes $2,255 in expert witness fees for the use of Mark Johnson, Esq. The expert

witness fee, however, will be excluded because his expert services ended up not being

necessary since Plaintiff never challenged defense counsel’s fee rates or incurred fees.

Following the Court’s previous reasoning, the appropriate split based on the initial

suit and the subsequent continuation of frivolous litigation, the Court believes this is

the most reasonable split of the costs and fees.

III. Conclusion

For the reasons stated above, the Court RECOMMENDS that the District

Court GRANT Defendant’s Motion for Attorney’s Fees Against Plaintiff and award

the amount of $33,986.43 under the provision for an “exceptional” case under 35

U.S.C. § 285 and $50,619.59 under 28 U.S.C. § 1927.

Within fourteen days after being served with a copy of this Report and

Recommendation, any party may serve and file written objections to any of the above

findings and recommendations. 28 U.S.C. § 636(b)(1); S.D. Fla. Mag. R. 4(b). The

parties are hereby notified that a failure to timely object waives the right to challenge

on appeal the District Court’s order based on unobjected-to factual and legal

conclusions contained in this Report and Recommendation. 11th Cir. R. 3-1.

DONE and ORDERED in Chambers in Miami, Florida on this 11th day of

March, 2025.

ENJOLIQUE A. LETT

UNITED STATES MAGISTRATE JUDGE

ce: All Counsel of Record

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