Ocean Tomo, LLC vs. Patentratings, LLC

Motion to Strike or Tax Costs

Cal. Super. - 4th Dist.June 26, 2014

ELECTRONICALLY FILED Superior Court of California, County of Orange 1 BUCEALTER c . 08/21/2017 at 04:28:00 Phd rolessional Lorporation Clerk of the Superior Court 2|[ MICHAEL L. MEEKS (SBN: 172000) By Angelina Mguyen-Do, Deputy Clerk STEVEN BROWER (SBN: 93568) 3|| BRANDON Q. TRAN (SBN: 223435) 18400 Von Karman Avenue, Suite 800 41 Irvine, CA 92612-0514 Telephone: (949) 760-1121 5|| Fax: (949) 720-0182 Email: mmeeks@buchalter.com Attorneys for Plaintiff and Cross-Defendant 7\ OCEAN TOMO, LLC, an Illinois Limited Liability Company 8 SUPERIOR COURT OF THE STATE OF CALIFORNIA 9 FOR THE COUNTY OF ORANGE 10 OCEAN TOMO, LLC, an Illinois limited CASE NO. 30-2014-00730938-CU-BC-CJC 11 liability company, Honorable Nathan Scott 12 Plaintiff, Dept. C12 vs. 2 OCEAN TOMO, LLC’S NOTICE OF 14 PATENTRATINGS, LLC, a California limited MOTION AND MOTION TO TAX liability company; JONATHAN BARNEY, an COSTS AGAINST JONATHAN 15 individual, and DOES 1 through 10, inclusive, BARNEY; DECLARATION OF BRANDON Q. TRAN IN SUPPORT 16 Defendants. THEREOF 17 Date: December 18, 2017 Time: 2:00 p.m. 18 Dept.: C12 19 Reservation No. 72647754 20 . Complaint filed: ~~ June 26, 2014 21|| AND CROSS-ACTION. Trial date: December 7, 2016 22 23 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 24 PLEASE TAKE NOTICE THAT that on December 18, 2017 at 2:00 p.m., or as soon 25|| thereafter as the matter may be heard, in Department C12 of the above entitled court, located at 26] 700 Civic Center Drive West, Santa Ana, California, Ocean Tomo, LLC will, and hereby does, 27|| move the court for an order taxing Jonathan Barney’s Memorandum of Costs. 28 1 OCEAN TOMO, LLC’S NOTICE OF MOTION AND MOTION TO TAX COSTS AGAINST JONATHAN BARNEY BUCHALTER A PROFESSIONAL CORPORATION Tavixe BN 29878060V1 A ProFkss BUCHALTER TONAL CORFORAT IRVINE o w 3 O Y n b 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 oN This motion is made on the grounds that Jonathan Barney (“Barney”) has requested costs that are either not authorized by sections 1032 or 1033.5 of the Code of Civil Procedure, or are unreasonable and/or were unnecessary to the resolution of this case. Barney’s claimed costs include items which are not recoverable and/or the amount is unreasonable and excessive and should be reduced. This motion is based on this notice, the attached supporting memorandum, on all pleadings and papers on file in this action, and such other evidence and oral argument as may be before the court at the time of the hearing of the motion. DATED: August 21, 2017 BUCHALTER A Professional Corporation MICHAEL L MEEKS STEVEN BROWER BRANDON Q. TRAN Attorneys for Plaintiff and Cross-Defendant OCEAN TOMO, LLC 2 OCEAN TOMO, LLC’S NOTICE OF MOTION AND MOTION TO TAX COSTS AGAINST JONATHAN BARNEY BN 29878060V1 A PROFESSIONA BUCHALTER F 1. CORPORATION IRVINE 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION AND SUMMARY OF COSTS TO BE TAXED The California Code of Civil Procedure provides that a prevailing litigant is only entitled by law to limited categories of trial costs. However, even then the costs must be reasonable in amount and necessary to the litigation. In submitting his Memorandum of Costs in this case, Jonathan Barney (“Barney”) has claimed expenses to which he is simply not entitled to, or he fails to establish that the costs were reasonable and necessary. Consequently, the Court should grant Ocean Tomo, LLC’s Motion to Tax Costs and award Barney only $583.40 in costs. In summary form, the following claimed costs are improper or excessive and should be taxed for Jonathan Barney: Item Description Claimed Allowable 1 Filing and motion fees $749.15 $249.15 4 Deposition costs $2,316.00 $0.00 5. Service of Process $372.78 $0.0 8. Witness costs $44,085.50 $0.00 11. Models, Blowups and Photocopying $3,135.69 $0.0 12. Other $334.25 $334.25 Totals $50,993.37 $583.40 IL. ARGUMENT A. Barney Is Not Entitled to Recover Expert Witness Fees Even if a Section 998 offer of compromise can provide the basis for recovery of expert fees, any such recovery is discretionary. See, Rouland v. Pac. Specialty Ins. Co. (2013) 220 Cal. App. 4th 220, 229 ("Even when an offer satisfies all of section 998's requirements, the decision whether to award expert witness fees, as opposed to any of the statute's other cost-shifting penalties, is vested in the trial court's sound discretion. [A party] is not entitled to its expert witness fees as a matter of right."). Moreover, such fees must still be reasonable. As the Supreme Court explained, “[a]llowable costs include ordinary witness fees and the fees of experts ordered by the court, so long as they are ‘reasonably necessary’ to the conduct of the litigation and 3 OCEAN TOMO, LLC’S NOTICE OF MOTION AND MOTION TO TAX COSTS AGAINST JONATHAN BARNEY BN 29878060V1 A PROFESSIC BUCHALTER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ONAL CORPORATION ‘reasonable’ in amount". Davis v. KGO-T.V. (1998) 17 Cal.4th 436, 441. Consequently, Barney has the burden of demonstrating not only that it was reasonably necessary to use an expert, but also that the costs associated with the expert were reasonable. Ladas, 19 Cal. App. 4th at 774. Here, in support of his request for expert fees, Barney does not present any evidence for either Ocean Tomo or the Court to determine whether the expert fees were reasonable in amount or necessary to the litigation. The attachment Barney submitted with his Memorandum of Costs provides no information identifying the hours claimed, the expert's hourly fee, the individuals who performed the work, what work was performed, or any costs which the expert alleged incurred. Significantly, the Memorandum of Costs do not explain why such significant fees were incurred after his expert deposition was taken on December 9, 2015. Based on Barney’s Notice of Expert Designation, Michael Issa would be “sufficiently familiar with the pending action to submit to a meaningful oral deposition concerning the testimony described ..., including his expert opinions and the bases thereof.” See, Declaration of Brandon Q. Tran, § 2 and Exhibit “1.” Moreover, at his deposition, Mr. Issa testified that he did not contemplate any other work after his deposition, outside of reviewing Ms. Deborah Dickson’s deposition testimony. See, Declaration of Brandon Q. Tran, § 3 and Exhibit “2.” Likewise, the attachment fails to explain why there are services being performed in this matter in July 2017, after the trial was concluded. Without any of this information, Barney fails to make a prima facie showing that these expert costs are both reasonable in amount and reasonably necessary to the conduct of the litigation. As a result, the entirety of Barney's expert costs should be taxed. B. Barney Other Costs Are Not Recoverable or Are Unreasonable and Unnecessary Barney’s right as the “prevailing party” to recover costs under Code of Civil Procedure section 1032 is not absolute. Even with respect to costs that are otherwise recoverable under section 1032, this Court retains authority to determine whether Barney’s costs are allowable 4 OCEAN TOMO, LLC’S NOTICE OF MOTION AND MOTION TO TAX COSTS AGAINST JONATHAN BARNEY BN 29878060V1 BUCHALTER A PROFESSIONAL IRVINE 10 11 12 13 14 15 16 17 18 19 20 2] 22 23 24 25 26 27 28 CarPORATION pursuant to the restrictions of section 1033.5, subdivision (c), which require that any award of costs be subject to the following: “(2) Allowable costs shall be reasonably necessary to the conduct of the litigation rather than merely convenient or beneficial to its preparation. “(3) Allowable costs shall be reasonable in amount.” Code Civ. Proc., §1033.5, subds. (c)(2) and (3); see also, Nelson v. Anderson (1999) 72 Cal.App.4th 111, 129; Ladas v. California State Auto. Assn. (1993) 19 Cal.App.4th 761, 774. The court is “limited to determining whether any allowable costs were reasonably 9% &¢ necessary and reasonable in amount,” “and to awarding or denying additional items of costs that are not mentioned as either allowable or nonallowable.” Code Civ. Proc., §1033.5, subd. (c)(4); see Davis v. KGO-TV, Inc. (1998) 17 Cal.4th 436, 442. The Court has power to disallow even costs “allowable as a matter of right, if they were not ‘reasonably necessary’;” and to reduce the amount of any cost item to that which is “reasonable.” Perko’s Enterprises, Inc. v. RRNS Enterprises (1992) 4 Cal.App.4th 238, 245 [intent and effect of §1033.5, subd. (c)(2) is to authorize a trial court to disallow recovery of costs, including filing fees, when it determines costs were incurred unnecessarily]. Prior to awarding costs, this Court has a duty to determine whether the cost is reasonable in need and amount. Nelson, supra, 72 Cal. App.4th at p. 129 [in awarding item of costs, court must first determine whether statute expressly allows the particular item and whether it appears proper on its face]. If the correctness of the memorandum is challenged either in whole or in part, the burden is then on the party claiming the costs and disbursements to show that the items charged were for matters necessarily relevant and material to the issues involved in the action. Oak Grove School Dist. v. City Title Ins. Co. (1963) 217 Cal.App.2d 678, 699. 1 Barney is not authorized to recover all of his filing fees In requesting costs for his filing fees, Barney requests a $500 filing fee for the Verified Application of David C. Layden to Appear Pro Hac Vice. This is an unreasonable and unnecessary filing. Mr. Layden was not at the trial for this matter. Mr. Layden was not at any of 5 OCEAN TOMO, LLC’S NOTICE OF MOTION AND MOTION TO TAX COSTS AGAINST JONATHAN BARNEY BN 29878060V1 BUCHALTER A PROFESSIONAL Irving OO 0 93 O Y 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 . CORPORATION the hearings for this matter. His name is not on any of pleadings or motions filed in this matter. Thus, Mr. Layden’s application to appear pro hac vice was not reasonable or necessary to this action and the fees for his pro hac vice application should be taxed. 2. Barney fails to establish that his Depositions Costs were reasonable and necessary "Deposition costs" are only recoverable for "taking, videotaping, and transcribing necessary depositions including an original and one copy of those taken by claimant and one copy of the depositions taken by the party, and travel expenses to attend the depositions." Cal. Code. Civ. Proc. § 1033.5(a)(3) (emphasis added). Travel expenses must be "necessary" for the deposition. Thon v. Thompson (1994) 29 Cal. App. 4th 1546, 1549. Section 1033.5(a) does not contemplate that there will be recovery for every type of expense that could conceivably be related to depositions. For his deposition costs, Barney fails to provide any evidence to support his claim for $2,316. The attachment to the Memorandum of Costs fails to explain or substantiate the $2,316 sum. Without such evidence, it is impossible for Ocean Tomo or the Court to determine whether such costs were reasonable and necessary to the litigation. Consequently, the Court should tax Barney’s deposition costs. 3 Barney’s claim for “Service of Process” fees are not permitted by Section 1033.5 Section 1033.5(a)(4) only authorizes recovery for the cost of "[s]ervice of process by a public officer, registered process server, or other means." While such costs can include those "actually incurred in effecting service" such as time staking out a witness, Cal. Code. Civ. Proc. 1033.5(a)(4)(B), they do not extend into other areas beyond the actual costs of the service. Here, Barney appears to be requesting fees for his attempted service of two potential witnesses, Cate Elsten and Justin Lewis, and the actual service of Ms. Elsten. Setting aside the issue that the attempted services are not recoverable, these witnesses were unnecessary to this litigation. First, based on the Court’s ruling on Motion in Limine Number 3, the testimony of 6 OCEAN TOMO, LLC’S NOTICE OF MOTION AND MOTION TO TAX COSTS AGAINST JONATHAN BARNEY BN 29878060V1 BUCHALTER A Proprssional, [rvin . CORTOR E Oo 0 9 S Y hh Bb 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ATION these witnesses and the financial documents they were asked to produce, were irrelevant to this action. See, Declaration of Brandon Q. Tran, 4. Second, neither of these witnesses was called to testify at the trial. Id. As a result, neither were necessary to this litigation and these service of process fees should be taxed in their entirety. 4. Barney claims models, blowups and photocopies expenses that categorically do not qualify as allowable costs under Section 1033.5 The law expressly limits the types of trial exhibits that are recoverable as costs. Costs for exhibits not actually used at trial are not recoverable under 1033.5(a)(12) because the exhibits are not "reasonably helpful to aid the trier of fact." Ladas v. California State Auto Ass'n (1993) 19 Cal. App. 4th 761, 774. Here, again, Barney submits in summary form, the total costs incurred for copying exhibits for the trial. However, the majority of the exhibits, which totaled approximately 365 exhibits, were never used at trial. Thus, these exhibits, and the costs of copying them, were unnecessary to the litigation. Additionally, Barney has submitted costs for the scanning of exhibits. This are not an allowable costs under the Code. Because there is no way for Ocean Tomo to determine which of the exhibits was reasonably necessary for the trial given Barney’s ambiguous attachment, the entirety of the costs should be taxed. I. CONCLUSION For the reason stated above, Ocean Tomo respectfully requests that the Court grant this motion and tax Barney’s costs in the amount of $50,409.97. DATED: August 21,2017 BUCHALTER A Professional Corporation - MICHAEL L MEEKS STEVEN BROWER BRANDON Q. TRAN Attorneys for Plaintiff and Cross-Defendant OCEAN TOMO, LLC By: 7 OCEAN TOMO, LLC’S NOTICE OF MOTION AND MOTION TO TAX COSTS AGAINST JONATHAN BARNEY BN 29878060V1 A PROFESSIONAL BUCHALTER Irving 10 11 12 13 14 15 16 17 18 19 20 21 3 23 24 25 26 27 28 L CORPORATION DECLARATION OF BRANDON Q. TRAN, ESQ. I, Brandon Q. Tran, declare: 1. I am, and continuously have been since 2002, an active member in good standing of the State Bar of California. I am a Senior Counsel with Buchalter, A Professional Corporation, counsel of record for Plaintiff and Cross-Defendant Ocean Tomo, LLC (“OT”). I am one of the attorneys in my firm principally responsible for OT’s representation in this action. Each of the matters hereinafter stated is within my own, first-hand knowledge, or is disclosed by the information contained in the documents attached hereto; and, if called as a witness, I could and would competently testify thereto under oath. 2. On or about October 26, 2015, I received the Notices of Expert Witness Designations and Expert Witness Declaration from both Jonathan Barney and PatentRatings, LLC. Both Notices were identical and designated Mr. Michael Issa as an expert. Attached as Exhibit “1” is a true and correct copy of Mr. Barney’s Notice, which provided that Mr. Issa would be “sufficiently familiar with the pending action to submit to a meaningful oral deposition concerning the testimony described ..., including his expert opinions and the bases thereof.” 3. Thereafter, on or about December 9, 2015, I conducted the deposition of Mr. Issa. Near the conclusion of the deposition, after I had questioned him about his opinions and the basis for those opinions, I asked what work he contemplated. Mr. Issa testified that he planned to revise the exhibits for trial to make it more user friendly and review Ms. Dickson’s files. Attached hereto as Exhibit “2” is a true and correct copy of the pertinent pages of Mr. Issa’s testimony. 4. I attended the trial in this matter and was also present for the Court’s ruling on the motions in limine. Once of the motions I filed was motion in limine number 3 which requested the Court to issue an order precluding the introduction of Ocean Tomo’s financial documents on the basis that it was irrelevant. The Court granted the motion. As a result, neither Cate Elsten nor Justin Lewis were called as witnesses in this trial. 8 OCEAN TOMO, LLC’S NOTICE OF MOTION AND MOTION TO TAX COSTS AGAINST JONATHAN BARNEY BN 29878060V1 1 I declare under penalty of perjury under the laws of the State of California that the 2|| foregoing is true and correct, and that this Declaration is executed on August 21, 2017 at Irvine, Ze - Brandon Q. Tran 3|| California. Oo © 3 a y Wn Bb 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 a OCEAN TOMO, LLC’S NOTICE OF ee AND MOTION TO TAX COSTS POE cc i OR AGAINST JONATHAN BARNEY wre BN 29878060V 1 Exhibit “1” ho a [9 % 6 BROWN RUDNICK LLLP RONALD RUS, #67369 rrus@brownrudnick.com LEO J. PRESIADO, #166721 Ipresiado@brownrudnick.com JUSTIN J. S. MORGAN, #279802 jmorgan@brownrudnick.com 2211 Michelson Drive, 7th Floor [rvine, CA 92612 Telephone: (949) 752-7100 Facsimile: (949) 252-1514 Attorneys for Defendant and Cross-Complainant, JONATHAN BARNEY SUPERIOR COURT OF THE STATE OF CALIFORNIA COUNTY OF ORANGE, CENTRAL JUSTICE CENTER OCEAN TOMO, LLC, an Illinois limited CASE NO. 30-2014-00730938-CU-BC-CJC liability company, NOTICE OF EXPERT WITNESS Plaintiff, DESIGNATION AND EXPERT WITNESS DECLARATION VS. [Code of Civil Procedure § 2034.260] PATENTRATINGS, LLC, a California limited liability company; JONATHAN BARNEY, an individual, and DOES 1 through 10, inclusive, | ASSIGNED FOR ALL PURPOSES TO THE IHON. KIRK H. NAKAMURA, DEPT. C15 Defendant. PATENTRATINGS, LI.C, a California limited | TRIAL DATEL: December 14, 2015 liability company, Cross-Complainant, VS, OCEAN TOMO, LLC, an Illinois limited liability company, oo Cross-Detendant, JONATHAN BARNEY, Cross-Complainant, VS. OCEAN TOMO, LLC, an lilinois limited liability company, Cross-Defendant. NOTICE OF EXPERT WITNESS DESIGNATION - GOSASE vl aManiDE-G32 13844001] tJ J r 0 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: PLEASE TAKE NOTICE that pursuant to Code of Civil Procedure § 2034.260, Defendant and Cross-Complainant Jonathan Barney (“Mr. Barney”) hereby designates the following individual as an expert trial witnesses for the December 14, 2013 jury trial in the above-captioned matter: 1. J. Michael ssa, GlassRatner Advisory & Capital Group, LLC, 19800 MacArthur Boulevard, Suite 820, Irvine, California 92612. Mr. [ssa has been retained as an expert witness by Mr. Bamey. PLEASE TAKE FURTHER NOTICE that Mr. Barney reserves the right to call as witnesses at trial any and all experts designated by other parties in this case, including experts designated by Plaintiff and Cross-Defendant Ocean Tomo, LLC and Defendant and Cross-Complainant PatentRatings, LI.C, and any and all experts that Mr. Barney may wish to call to impeach the testimony of any other expert witnesses, pursuant to Code of Civil Procedure § 2034.310. Discovery is not yet completed in this case. Mr. Barney reserves the right to supplement his expert witness list upon completion of discovery. In addition, Mr. Barney reserves the right to serve a supplemental expert list as provided by Code of Civil Procedure § 2034280. DATED: October 26, 2015 BROWN RUDNICK LLP By: LC ESTADO Attorney¥ for Defendant and Cross-Complainant JONATIIAN BARNEY 7 ps HURARR wLaManBB-032358/067 to LS ] wr 6 EXPERT WITNESS DECLARATION OF LEO J. PRESIADO [, LEO J. PRESIADO, hereby declare as follows: 1. [ am an attorney at law, duly licensed to practice before the above-entitled Court, and am a Partner of the law firm of Brown Rudnick LLP, attorneys of record for Defendant and Cross-Complainant Jonathan Barney (Mr. Barney™). 2. I have first-hand personal knowledge of the matters set forth herein, and if called upon to testify, would and could competently testify thereto. This Declaration is made pursuant to Code of Civil Procedure § 2034.260. 3. Accompanying this Declaration 1s the name of the person whose expert opinion testimony Mr. Barney intends to offer at the trial of this action, either orally or by deposition