Summary
finding that the argument that the ASCII disks helped the prevailing party pinpoint deposition testimony indicated it was used "merely for the convenience of counsel" and therefore not taxable
Summary of this case from United States v. Solvay S.A.Opinion
No. 3-98-CV-2712-M
March 4, 2002
MEMORANDUM ORDER
Plaintiff Harris Corporation has submitted a cost bill in the amount of $114,186.45 as the prevailing party in this patent infringement action. Defendants object to costs for printing expenses, photocopies, transcripts, and fees paid to the special master. The objections have been referred to United States Magistrate Judge Jeff Kaplan for recommendation pursuant to 28 U.S.C. § 636(b) and an order of reference dated January 17, 2002.
After these objections were filed, the magistrate judge ordered the attorneys to confer on the cost items in an attempt to resolve all matters in dispute. As a result of this conference, plaintiff reduced its request from $114,186.45 to $104,252.65. The parties also reached agreement on fees paid to the clerk and marshal, witness fees, and compensation of interpreters. (Jt. Stat. Rep. at 1-2).
I.
A prevailing party in a civil action is entitled to recover its costs "unless the court otherwise directs." FED. R. Civ. P. 54(d). Taxable costs include: (1) fees paid to the clerk and marshal; (2) court reporter fees for all or part of a deposition transcript; (3) witness fees and related expenses; (4) printing costs; and (5) fees for copies of papers necessarily obtained for use in the case. See 28 U.S.C. § 1821 1920. A district court may decline to award statutory costs but may not award costs omitted from the statute. Crawford Fitting Co. v. I. T. Gibbons, Inc., 482 U.S. 437, 44142, 107 S.Ct. 2494, 2497, 96 L.Ed.2d 385 (1987); Coats v. Penrod Drilling Corp., 5 F.3d 877, 891 (5th Cir. 1993), cert. denied, 114 S.Ct. 1303 (1994).
II.
Defendants object to the following cost items: (1) $2,597.53 in printing costs; (2) $19,173.55 for photocopy expenses; (3) $17,712.38 for deposition and trial transcripts; and (4) $44,964.56 for fees paid to the special master. The Court will consider these objections in turn.
A.
Plaintiff seeks $2,597.53 in printing costs. of these costs, $2,585.53 was paid to Texas Legal Copies, Inc. for 9,952 "blow backs" prepared from michrofische documents. (Cost Bill, App. at 42, 44, 46). Plaintiff contends that these "blow back" costs are recoverable because defendants requested certain documents in that form during discovery. (Jt. Stat. Rep., Exh. A at 6-7). A prevailing party may recover the costs associated with documents it produces in fulfilling its discovery obligations to opposing parties. See AA Sales Associates, Inc. v. JT T Products Corp., 2001 WL 855867 at *2 (N.D. Ill. Jul. 27, 2001). Although defendants argue that plaintiff has failed to prove that opposing counsel ever asked for discovery materials in "blow back" form, they do not deny that assertion. (Jt. Stat. Rep. at 8). Consequently, the Court will accept plaintiff's representation and allow this cost item.
Plaintiff also seeks $12.00 for printing trial exhibits containing computerized graphics. However, such costs are not recoverable without prior court approval. See Louisiana Power Light Co. v. Kellstrom, 50 F.3d 319, 335 (5th Cir.), cert. denied, 116 S.Ct. 173 (1995). Since plaintiff did not obtain pretrial approval to prepare these exhibits, this cost item is disallowed.
B.
Next, plaintiff requests $19,173.55 in photocopy expenses. Costs of photocopies obtained for use in the litigation are recoverable upon proof of necessity. 28 U.S.C. § 1920(4); see also Holmes v. Cessna Aircraft Co., 11 F.3d 63, 64 (5th Cir. 1994). The prevailing party need not "identify every xerox copy made for use in the course of legal proceedings." Fogleman v. ARAMCO, 920 F.2d 278, 286 (5th Cir. 1991). However, it must demonstrate some nexus between the costs incurred and the litigation. Id. Charges for multiple copies of documents, attorney correspondence, and other such items are not taxable as costs. Id.
The single largest copying expense sought by plaintiff is $16,148.41 for exhibits used at the Markman hearing and at trial. However, as previously stated, plaintiff failed to obtain pretrial approval to prepare any exhibits. Consequently, these copying charges are not taxable to defendants. See Kellstrom, 50 F.3d at 335.
Nor can plaintiff recover $9,270.00 for copies made by outside legal counsel. Plaintiff explains that it actually incurred some $46,350.00 in photocopying charges and "conservatively estimates that at least 20% of those costs were necessarily obtained for use in the case . . ." (Jt. Stat. Rep. at 4). No matter how "conservative" or "reasonable" plaintiff believes this estimate to be, it is nothing more than rank speculation. None of the underlying invoices or materials submitted by plaintiff describe the contents of the documents that were copied by outside counsel. Without such information, the Court cannot possibly determine whether these copies were necessarily obtained for use in the case. These costs are disallowed.
Although plaintiff offers to provide a declaration to establish the necessity of these copies, this offer comes too late. (Jt. Stat. Rep. at 4). Both parties were given an opportunity to submit evidence in support of their respective arguments as part of the joint status report. It is unclear why plaintiff failed to attach a declaration to the report.
Plaintiff also seeks $876.01 in copying costs associated with "discovery documents." The Court has already determined that plaintiff can recover costs incurred in fulfilling its discovery obligations. See § 11(A) above, citing AA Sales Associates, 2001 WL 855867 at *2. However, it appears that these copying charges relate to documents "produced to and received from defendants." (Jt. Stat. Rep., Exh. A at 8) (emphasis added). It is impossible to determine from this cryptic description whether copies of documents received from defendants were necessary to litigating the case. See J W Fence Supply Co. v. United States, 1999 WL 907549 at *1 (S.D. Ind. Sept. 3, 1999), aff'd, 230 F.3d 896 (7th Cir. 2000). Plaintiff further explains that the documents were provided to its experts for review "and supported their opinions on infringement and proper scope of equivalents." (Jt. Stat. Rep., Exh. A at 8). Even if this non-specific explanation were sufficient to satisfy plaintiffs burden, it is impossible to tell how many copies of the various documents were made. Although multiple copies may well have been necessary depending on the nature of the document and the number and location of experts involved, the Court cannot determine from the paucity of information provided by plaintiff whether such was the case or whether some or all of the copies were merely made for counsel's own convenience. See McIlveen v. Stone Container Corp., 910 F.2d 1581, 1584 (7th Cir. 1990). None of these costs will be allowed.
Finally, plaintiff requests $62.40 for photocopy charges attributable to "Exceptional case documents for Sanyo — used to rebut Sanyo's allegation of exceptional case." (Jt. Stat. Rep., Exh. A at 9). This description is far too vague to permit the Court to determine whether these costs are recoverable. Accordingly, they are disallowed.
C.
Plaintiff seeks $17,712.38 in costs associated with various deposition and trial transcripts. A prevailing party is entitled to recover the costs of taking, transcribing, and reproducing depositions that are "necessarily obtained for use in the case." 28 U.S.C. § 1920(2); see also Coats, 5 F.3d at 891. Costs associated with a deposition taken primarily for discovery or investigative purposes are not recoverable. Fogleman, 920 F.2d at 285; Card v. State Farm Fire and Casualty Co., 126 F.R.D. 658, 661-62 (N.D. Miss. 1989), aff'd, 902 F.2d 957 (5th Cir. 1990). However, costs should not be disallowed merely because the deposition was not ultimately used at trial or in connection with a dispositive motion. Such costs are taxable if the deposition appeared reasonably necessary at the time it was taken. 10 C. WRIGHT A. MILLER, FEDERAL PRACTICE AND PROCEDURE § 2676 at 424 (3d ed. 1998).
With respect to each of the 21 depositions at issue, plaintiff has adequately shown that these depositions were necessarily obtained for use in the case. Indeed, the overwhelming majority of this testimony was either: (1) offered at trial, at the Markman hearing, or in connection with plaintiff's motion for summary judgment; or (2) relevant to defendants' exceptional case claim. (Jt. Stat. Rep., Exh. A at 1-6). The costs of the depositions transcripts are therefore properly taxable.
However, plaintiff is not entitled to recover incidental costs associated with these depositions, such as the cost of ASCII disks and delivery charges. Plaintiff's argument that "[t]he ASCII disks were used for searching deposition testimony and pinpointing things that witnesses said without scouring the entire transcript" shows that they were used merely for the convenience of counsel. ( Id. at 5). See also Scallet v. Rosenblum, 176 F.R.D. 522, 527 (W.D. Va. 1997) (holding that minuscripts and disk copies of depositions are for convenience of counsel); M.E. Fields v. General Motors Corp., 171 F.R.D. 234, 236 (N.D. Ill. 1997) (analogizing disk copy of deposition to computerized research, which is not taxable). Plaintiff is entitled to recover $10,048.22 in court reporter fees for deposition transcripts.
Some of the invoices submitted by plaintiff do not segregate the charges for ASCII disks and delivery fees from the cost of the deposition transcripts. (Cost Bill, App. at 13, 14, 21, 22; Jt. Stat. Rep., Exh. B). However, it appears from other invoices that the regular charge for an ASCII disk was $15.00 and that delivery fees ranged from $15.00 to $30.00. (Cost Bill, App. at 15, 16, 24, 25). With respect to invoices that are not segregated, the Court has deducted $15.00 to account for the ASCII disk and $20.00 to account for the delivery fee to arrive at the cost of the deposition transcript.
Plaintiff also seeks costs for transcripts of a Markman hearing conducted by the special master and Daubert hearing before the magistrate judge. As with the cost of deposition transcripts, these costs are taxable if the transcripts were necessarily obtained for use in the case. Majeske v. City of Chicago, 218 F.3d 816, 825 (7th Cir. 2000), cert. denied, 121 S.Ct. 779 (2001); J.T. Gibbons, Inc. v. Crawford Fitting Co., 760 F.2d 613, 615-16 (5th Cir. 1985), aff'd, 107 S.Ct. 2494 (1987). This standard is met here. Transcripts of these court proceedings were clearly necessary for counsel to determine whether to seek review of any adverse rulings. Consequently, plaintiff is entitled to recover $934.18 for the Markman hearing transcript and $86.09 for the Daubert hearing transcript.
The Court reaches a different conclusion with respect to daily trial transcripts. Plaintiff argues that the daily transcripts were necessary to prepare for witness examinations and final argument and to "ensure a smooth trial presentation and that the points made were clear and understandable." (Jt. Stat. Rep., Exh. A at 4). Notwithstanding the complexity of this case, the Court concludes that daily trial transcripts were for the convenience for counsel and not necessary in the sense contemplated by 28 U.S.C. § 1920. See In re Nissan Antitrust Litigation, 577 F.2d 910, 912-13, 918 (5th Cir. 1978), cert. denied, 99 S.Ct. 843 (1979) (holding that cost of daily transcript was not recoverable in multi-district antitrust suit that consolidated over two dozen separate actions and took five weeks to try).
D.
Lastly, plaintiff requests $44,964.56 for fees paid to the court-appointed special master. "The compensation of a master is fixed by the court and paid as the court may direct." Carpa, Inc. v. Ward Foods, Inc., 567 F.2d 1316, 1324 (5th Cir. 1978), overruled on other grounds by, Copper Liquor, Inc. v. Adolph Coors Co., 701 F.2d 542 (5th Cir. 1983) (en banc). Such fees are recoverable as costs without proof of necessity. Studiengesellschaft Kohle mbH v. Eastman Kodak Co., 713 F.2d 128, 134 (5th Cir. 1983). In its order appointing the special master, the Court directed that these fees "will be taxed as court costs at the conclusion of trial." See ORDER, 5/21/99. Plaintiff is entitled to these costs.
CONCLUSION
The parties have agreed that plaintiff is entitled to recover $10,970.51 for witness fees, $150.00 for fees paid to the clerk, $184.80 for service of summonses and subpoenas, and $11,197.32 for compensation of interpreters. The Court determines that plaintiff is entitled to $2,585.53 for printing costs, $11,068.49 for deposition and hearing transcripts, and $44,964.56 for fees paid to the special master.
Accordingly, defendants' objections to plaintiff's bill of costs are sustained in part and overruled in part. The clerk shall tax costs against defendants in the amount of $81,121.21.
SO ORDERED.