United States District Court, N.D. California
M.A. MOBILE LTD., Plaintiff,
INDIAN INSTITUTE OF TECHNOLOGY KHARAGPUR, et al., Defendants.
ORDER ON MOTION FOR ATTORNEY FEES AND MOTION TO
WITHDRAW AS COUNSEL Re: Dkt. Nos. 658, 659, 667, 678,
William H. Orrick United States District Judge.
long and complex litigation, and longer and more complex
course of dealings between the parties, ended when I granted
summary judgment in favor of defendant Indian Institute of
Technology, Kharagpur (“IIT”) and against
plaintiff M.A. Mobile Ltd. on September 5, 2019. Now before
me are two more disputes. First, IIT moves for attorney fees,
arguing that M.A. Mobile pursued its claim for
misappropriation of trade secrets in bad faith. I disagree
and will deny that motion. Second, M.A. Mobile attorney
Sanjiv Singh moves to withdraw as counsel, while M.A. Mobile
opposes that motion and asserts that Singh is obligated to
represent it on appeal. For the reasons set forth below, I
disagree that Singh is obligated to continue representing
M.A.Mobile given the breakdown in their relationship, not to
mention the limitation of his engagement agreement to
litigation in the district case. Singh's motion to
withdraw from this closed case is granted.
not repeat the lengthy factual history of this case, which I
explained in detail in my September 5, 2019 Summary Judgment
Order. See Order Granting Motion for Summary
Judgment [Dkt. No. 655] 1-19. Relevant here, on September 19,
2019, IIT moved for attorney fees under California's
Uniform Trade Secrets Act (“CUTSA”) and my
inherent authority. Motion for Attorney Fees (“Fee
Mot.”) [Dkt. No. 658-4]. After opposing that motion, on
October 4, 2019, Singh moved to withdraw as counsel for M.A.
Mobile. Motion to Withdraw (“Withdrawal
Mot.”) [Dkt. No. 667]. He asserts that withdrawal is
appropriate for several reasons, among them a breakdown in
communication with M.A. Mobile's sole owner Mandana
November 1, 2019, M.A. Mobile filed a motion for an extension
of time in which to oppose through specially appearing
counsel William Balin, which I granted. Dkt. Nos. 675, 676.
Singh then filed an administrative motion requesting
permission to oppose the motion I had already granted,
arguing that it included “scandalous and false”
information and noting that he intended to file a Rule 11
motion for sanctions if Balin refused to withdraw certain
accusations. Dkt. No. 678. In its opposition to the motion to
withdraw, M.A. Mobile recharacterized the dispute as one over
whether Singh is obligated to represent it on appeal. M.A.
Mobile Opposition to Motion to Withdraw (“M.A. Mobile
Oppo.”) [Dkt. No. 680].
MOTION FOR ATTORNEY FEES
asks that I award it attorney fees for part of its defense of
this case under California's Uniform Trade Secrets Act
(“CUTSA”) and my inherent authority. “[A]
district court may levy sanctions pursuant to its inherent
power . . . when the losing party has acted in bad faith,
vexatiously, wantonly, or for oppressive reasons.”
Evon v. Law Offices of Sidney Mickell, 688 F.3d
1015, 1035 (9th Cir. 2012) (internal quotation marks
omitted). Under CUTSA, courts have authority to award
reasonable attorney's fees and costs to the prevailing
party in the event that a claim of misappropriation is made
in bad faith. Cal. Civ. Code § 3426.4. “California
courts have held that bad faith ‘requires objective
speciousness of the plaintiff's claim, as opposed to
frivolousness, and its subjective bad faith in bringing or
maintaining the claim.'” Direct Techs., LLC v.
Elec. Arts, Inc., 836 F.3d 1059, 1071 (9th Cir. 2016)
(quoting Gemini Aluminum Corp. v. Cal. Custom Shapes,
Inc., 95 Cal.App.4th 1249, 116 (2002)); see also
Gabriel Techs. Corp. v. Qualcomm Inc., 560 Fed.Appx.
966, 973-74 (Fed. Cir. 2014) (agreeing with the district
court that there was objective speciousness and subjective
bad faith where plaintiffs failed to articulate their trade
secrets after seven attempts and where it was clear the
claims were time-barred). Trial courts have broad discretion
in ruling on fees motions. See Gemini, 95
Cal.App.4th at 1262; Integral Dev. Corp. v. Tolat,
No. 12-cv-06575 JSW, 2015 WL 674425, at *10 (N.D. Cal. Feb.
Mobile's trade secret misappropriation claims were not
objectively specious, nor is there evidence to support a
finding of subjective bad faith. The facts that IIT relies on
in support of its motion show weaknesses in M.A. Mobile's
case, but those weaknesses do not establish speciousness.
Neither does my summary judgment ruling. In addition, M.A.
Mobile's decision to pursue its claims despite IIT
pointing out contradictory evidence does not establish
subjective bad faith. The motion for attorney fees is DENIED.
end of its opposition, M.A. Mobile objects to IIT's bill
of costs, asserting that it lacks detail, and asks that I
stay the imposition of costs during the pendency of the
appeal. When considering whether to stay an award of attorney
fees and costs pending appeal, courts apply the factors set
forth in Hilton v. Braunskill, 481 U.S. 770, 776
(1987). See League For Coastal Prot. v. Kempthorne,
No. 05-cv-0991-CW, 2007 WL 1982778, at *3 (N.D. Cal. July 2,
2007). Those factors include:
(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) where the
public interest lies.
Braunskill, 481 U.S. at 776. M.A. Mobile provides no
reasons why these factors support a stay, and I see none.
Parties are frequently responsible for costs imposed in the
district court case even when an appeal is pending. See
Kempthorne, 2007 WL 1982778, at *3 (rejecting
defendants' “speculation” regarding inability
to recover fees and costs paid in the event of success on
appeal). I decline to stay payment of any costs to which IIT
MOTION TO WITHDRAW AS COUNSEL
motion to withdraw raises two central reasons why his
representation cannot continue; his communication with
Farhang has broken down, and M.A. Mobile has breached the
terms of his engagement. In his reply to IIT's response,
Singh further asserts that he will likely be a material
witness if not a plaintiff in a separate case that a third
party is preparing against Farhang. See Withdrawal Mot.
4; Singh Decl. ISO Reply to IIT ¶ 3; Singh Decl. ISO
Reply to M.A. Mobile ¶ 18.
response, M.A. Mobile argues that the question before me is
different: “Whatever happened during the pendency of
the case in District Court is now over; the only issue before
the court now is whether counsel will represent his client on
appeal.” M.A. Mobile Oppo. 6. In response to the
“Issues” referenced by Singh, M.A. Mobile
disputes that Farhang failed to engage with Singh in order to
resolve them or that other aspects of her conduct have made
Singh's representation unreasonably
difficult. Id. at 6-11.
parties have two disputes: one over continued representation
before me and one over appellate representation. I address
each one in turn.