Opinion
Civ. No. 04-6205-AA.
March 16, 2005
ORDER
Plaintiffs move to voluntarily dismiss this action pursuant to Federal Rule of Civil Procedure 41(a)(2). Plaintiffs intend to drop the federal patent infringement claim and the claim for tortious breach of fiduciary duty and refile their remaining claims in state court. Defendant agrees to the voluntarily dismissal but seeks an award of attorney's fees incurred in defending against the dismissed claims. I agree that an award of fees is appropriate in this case.
Under Rule 41(a)(2), "an action shall not be dismissed at the plaintiff's instance save upon order of the court and upon such terms and conditions as the court deems proper." Consequently, it is within the court's discretion to award fees as a condition of voluntary dismissal, but "only those costs incurred for the preparation of work product rendered useless by the dismissal should be awarded. . . ." Koch v. Hankins, 8 F.3d 650, 652 (9th Cir. 1993); see also Wetlands Water Dist. v. United States, 100 F.3d 94, 97-98 (9th Cir 1996) (accord).
Plaintiffs apparently concede that their patent law claim is not viable because they do not hold a patent for their device and that their tort claim is preempted by the Oregon Trade Secret Act. Defendant argues that its work product in preparing to defend the patent and tort claims is rendered useless by the dismissal, because plaintiffs will not pursue those claims in state court and plaintiffs' remaining claims are unrelated. Defendant emphasizes that plaintiffs filed their patent claim without being issued a patent by the U.S. Patent and Trademark Office.
Plaintiffs respond that the fees incurred by defendant would have been avoided had it simply contacted plaintiffs to advise them of the deficiencies in their claims. "Plaintiffs assert that it was very likely the matter of the patent and fiduciary duty claims could have been resolved with a few brief telephone conversations discussing the matters at issue between the parties prior to significant work on the part of Defendants['] counsel." Plaintiff's Reply in Support of Motion to Dismiss, p. 3.
However, a plaintiff is required to have a good faith belief in the viability of a claim before it is filed against a defendant; I reject the notion that a defendant is somehow obligated to render advice to a plaintiff regarding deficiencies in an asserted claim. Moreover, in order to discern those deficiencies, a defendant is required to investigate and research the allegations against it.
I therefore exercise my discretion under Rule 41(a)(2) and award defendant fees incurred in researching and defending the patent law claim but not the claim for tortious breach of fiduciary duty. Whether a patent exists is a factual issue that should be within the knowledge of the plaintiff before a patent infringement claim is filed against a defendant. Indeed, bringing a patent claim when no patent exists arguably rises to the level of "exceptional circumstances" supporting an award of attorney's fees under 35 U.S.C. § 285. Legal issues such as preemption are litigated routinely in this court, however, and plaintiffs agreed to dismiss this claim upon learning that it was preempted.
Defendant also seeks an award of costs in the amount of $13.38 in long distance and facsimile charges and $93.43 in computer research charges. 28 U.S.C. § 1920 sets forth the following categories of costs a court may award:
1) Fees of the clerk and marshal;
2) Fees of the court reporter for all or any part of the stenographic transcript necessarily obtained for use in the case;
3) Fees and disbursements for printing and witnesses;
4) Fees for exemplification and copies of papers necessarily obtained for use in the case;
(5) Docket fees under section 1923 of this title;
(6) Compensation of court appointed experts, compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation services under section 1828 of this title.
Here, defendant seeks costs for costs which are not mentioned in § 1920. The court has no authority to award costs beyond those prescribed in 28 U.S.C. § 1920 absent "plain evidence of congressional intent." Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 445 (1987). Costs for telefax charges and computer research have been rejected as outside the scope of § 1920. See Sheffer v. Experian Information Solutions, 290 F. Supp. 2d 538, 552 (E.D. Pa. 2003) (travel expenses, courier, mail, telephone, telex and fax costs not taxable under § 1920);Yasui v. Maui Electric Co., 78 F. Supp. 2d 1124, 1129-30 (D. Hawaii 1999) (expenses for facsimile transmissions, long distance telephone calls, computer research, postage and courier services are not recoverable as costs under § 1920); Frederick v. City of Portland, 162 F.R.D. 139, 144-45 (D. Or. 1995) (legal research fees not allowed as costs; citing cases). Therefore, these costs will not be allowed.
Accordingly, plaintiff's Motion for Voluntary Dismissal (doc. 11) is GRANTED, in part. Defendant is awarded $1305.00 for attorney's fees incurred in defending plaintiff patent claim. This action is DISMISSED.
IT IS SO ORDERED.