-NLS Presidio Components Inc v. American Technical Ceramics Corp, No. 3:2008cv00335 - Document 413 (S.D. Cal. 2011)
Court Description: ORDER granting in part and denying in part 405 Motion for Taxation of Costs. Signed by Judge Irma E. Gonzalez on 2/17/2011. (amh)
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-NLS Presidio Components Inc v. American Technical Ceramics Corp Doc. 413 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 PRESIDIO COMPONENTS, INC., CASE NO. 08cv335-IEG(NLS) Plaintiff, 12 vs. Order on ATC’s Motion to Re-Tax Costs [Doc. 405] 13 14 AMERICAN TECHNICAL CERAMICS CORP., 15 Defendant. 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendant American Technical Ceramics Corp. (“ATC”) moves the Court to re-tax costs pursuant to Fed. R. Civ. P. 54 and Civ. L.R. 54.1. The Court previously found the motion appropriate for submission on the papers and without oral argument, and the hearing date was vacated. For the reasons explained herein, ATC’s motion is GRANTED IN PART AND DENIED IN PART. Background By order filed April 30, 2009, the Court found in favor of ATC on its counterclaim against Presidio under 35 U.S.C. § 292 for falsely marking the BB capacitors with the ‘356 patent after October 24, 2008. [Doc. No. 165, pp. 10-11.] The Court declined to determine the precise amount of the fine for which Presidio was liable under § 292 until the time of trial. [Id., p. 13.] In its August 5, 2010 order on the parties’ post-trial motions, the Court set the amount of civil fine for which Presidio is liable based upon ATC’s false marking counterclaim. [Doc. No. 348, p. 62.] In -1- 08cv335 Dockets.Justia.com 1 the same order, the Court concluded Presidio was a “successful plaintiff” entitled to costs pursuant 2 to 35 U.S.C. § 284 with regard to its claims against ATC. [Id., p. 58.] 3 Following additional post-trial motions, the Clerk entered final judgment on October 26, 4 2010. Both parties thereafter submitted a Bill of Costs. By order filed December 17, 2010, the 5 Clerk taxed costs in favor of Presidio in the total amount of $50,745.51. [Doc. No. 404, p. 7.] The 6 Clerk denied ATC’s request for costs. [Id., p. 2.] ATC now moves the court to re-tax costs. 7 Timeliness of Motion 8 Presidio first argues ATC’s motion is untimely. The Clerk’s order taxing costs was filed 9 on December 17, 2010. Pursuant to Fed. R. Civ. P. 54, “on motion served within the next 7 days, 10 the court may review the clerk’s action” taxing costs. The seventh day for filing a motion to re-tax 11 costs fell on Friday, December 24, 2010, a legal holiday in this Court. Therefore, ATC’s time to 12 file its motion to re-tax costs extended “until the end of the next day that is not a Saturday, 13 Sunday, or legal holiday.” Fed. R. Civ. P. 6(a)(1)(C). ATC’s motion, filed on Monday, December 14 27, 2010, was timely. 15 16 17 Discussion 1. Is ATC Entitled to Costs on its False Marking Claim? ATC first challenges the Clerk’s failure to tax costs against Presidio based upon ATC’s 18 false marking claim. Pursuant to 28 U.S.C. § 1918(a), “[c]osts shall be included in any judgment, 19 order, or decree rendered against any person for the violation of an Act of Congress in which a 20 civil fine or forfeiture of property is provided for.” The Court found in favor of ATC, and against 21 Presidio, on ATC’s false marking claim under 35 U.S.C. § 292, a qui tam provision which is penal 22 in nature. United States Gypsum Co. v. Pacific Award Metals, Inc., 438 F. Supp. 2d 1101, 1105 23 (N.D. Cal. 2006); Pequignot v. Solo Cup Co., 640 F. Supp. 2d 714, 724 (E.D. Va. 2009). That 24 section provides for a fine of “not more than $500 for every such offense.” 25 Notwithstanding the language of 28 U.S.C. § 1918(a), Presidio argues ATC is not entitled 26 to costs on its false marking claim because ATC is not a “prevailing party” within the meaning of 27 Fed. R. Civ. P. 54(d)(1). Presidio cites a number of cases discussing the determination of 28 “prevailing party” status where parties are each awarded damages in connection with their -2- 08cv335 1 respective claims and counterclaims. However, none of these cases cited by Presidio involve 2 claims or counterclaims “in which a civil fine ... is provided for” pursuant to 28 U.S.C. § 1918. 3 Upon review, the Court concludes ATC is entitled to costs under § 1918 because it obtained a 4 judgment against Presidio on its false marking claim under § 292. 5 ATC sought $26,077.35 in costs, representing $505.06 for service of process, $24,691.69 6 for deposition and trial transcripts, and $880.61 for witness fees. [Doc. No. 392.] The Court will 7 address the availability of each of these categories of costs. 8 A. Service of Process 9 Presidio objects that ATC requests fees for expedited service of process but did not obtain 10 a Court order for expedited service pursuant to Civ. L.R. 54.1(b)(1) (“Fees for expedited service 11 are allowable only if the Court ordered service to be effected on an expedited basis.”). [Doc. No. 12 394, p. 3.] Presidio also objects that the subpoenas were entirely unrelated to and unnecessary for 13 ATC’s request for fines for false marking. 14 ATC provides no basis upon which the Court should award its costs for expedited service 15 of process, and the Court finds such cost not allowable pursuant to Local Rules. In its bill of costs, 16 ATC did not break out the cost of expediting service, such that the Court cannot determine what 17 portion of the claimed cost is proper. Therefore, the Court will allow ATC $880.61 in costs for 18 witness fees associated with service of process, but denies ATC’s request for the remaining 19 $505.06 for service of subpoenas. 20 B. Hearing and Trial Transcripts 21 Presidio objects that the hearing and trial transcripts for which ATC seeks costs are 22 unrelated to ATC’s claim for false marking. [Doc. 394, p. 4.] Upon review, ATC either implicitly 23 or explicitly relied upon each of the hearing and trial proceedings in asking the Court to set the 24 amount of the fine under 35 U.S.C. § 292. [Doc. Nos. 310-312.] Therefore the Court finds these 25 costs appropriate. 26 C. Deposition Transcripts 27 Presidio objects that ATC seeks costs for both a stenographic and video copy of the 28 deposition transcripts for Alan and Lambert Devoe, Presidio, and Gunter Vorlop. [Doc. No. 394, -3- 08cv335 1 pp. 5-6.] Pursuant to Civ. L.R. 54.1(b)(3)(b), “[i]f both video and stenographic depositions are 2 taken, they both will be allowed as costs only if the video deposition is used at trial.” Presidio 3 concedes ATC played a brief portion of the video depositions of Alan Devoe and Mr. Vorlop at 4 trial. Therefore the Court finds those costs allowable. However, the Court disallows the cost of the 5 video depositions for Lambert Devoe and Presidio. 6 Presidio also objects that none of the depositions for which ATC seeks costs are relevant to 7 ATC’s request for fines for false marking. Upon review, ATC either implicitly or explicitly relied 8 upon the testimony of these individuals with regard to its claim under 35 U.S.C. § 292. Therefore, 9 the Court finds the stenographic costs appropriate. 10 D. Summary 11 In summary, the Court awards ATC the following costs: 12 Category 13 Witness Fees $880.61 $880.61 14 Service of Process $505.06 -0- 15 Hearing/Trial Transcripts $6,527.35 $6,527.35 16 Deposition Transcripts Witness/Pages Date Requested Permitted 21 22 11/19/2009 $3,798.10 $1,687.10 1/25/2009 $4,029.08 $1,979.58 1/6/2009 $4,295.65 $4,295.65 Dougherty 3/5/2009 $1,121.86 $1,121.86 Kennedy 2/27/2009 $715.10 $715.10 $26,077.36 20 $4,204.55 Vorlop 19 $4,204.55 Presidio 18 11/18/2008 L. Devoe 17 A. Devoe $21,411.80 Total 2. Did the Clerk err in calculating costs recoverable by Presidio? 23 ATC argues the Clerk erred in awarding Presidio costs for a number of items, each of 24 which is addressed below. In its opposition, Presidio concedes there were $3,740.33 in costs 25 (reflected in Appendix E to ATC’s motion) which should not have been taxed by the Clerk. [Doc. 26 No. 406, p. 11.] 27 A. Expedited transcripts and copies 28 Pursuant to the language of 28 U.S.C. § 1920, fees for transcripts and copies of materials -4- 08cv335 1 both may be taxed as costs if they were “necessarily obtained for use in the case.” Likewise, 2 courts consider whether a party seeking costs for expedited services has shown the faster service 3 was “necessary.” Maris Distributing Co. v. Anheuser-Busch, Inc., 302 F.3d 1207, 1226 (11th Cir. 4 2002) (noting that although costs for expedited trial transcripts should not be allowed as a matter 5 of course, they may be permitted where necessary given the length and complexity of the case); 6 Kalai v. Hawaii, 2009 Wl 2224428, *11 (D. Hawaii 2009) (disallowing cost for expedited 7 deposition transcript where party failed to demonstrate the need for such service); Meier v. United 8 States, 2009 WL 982129, *2 (N.D. Cal. 2009) (permitting cost for expedited deposition transcripts 9 where they were necessary “in order to accommodate the tight deposition schedule plaintiff 10 11 himself requested”). Presidio argues the expedited deposition transcripts were reasonable and necessary in this 12 matter given the timing of the depositions compared to scheduled deadlines. Upon review, the 13 Court agrees the expedited deposition transcripts appear reasonable and necessary in light of the 14 overall schedule of discovery and other matters in this case. In addition, although the Court 15 believes Presidio could have exercised greater discretion in planning for necessary copies and 16 exhibits in advance of the Markman hearing and trial, the Court finds the expedited fees associated 17 with those exhibits were necessary. 18 ATC also challenges the Clerk’s allowance of certain costs included in lump-sum 19 deposition invoices, as well as charges for items such as exhibit tabs, binders, and set up fees. 20 Upon review of the disputed costs, the Court also concludes Presidio was entitled to the costs 21 taxed by the Clerk. 22 ATC argues Presidio should not be permitted its costs for the depositions of Edward 23 Godschalk and Stephen Beyel because it became clear during each of these depositions that the 24 witnesses’ testimony would not be used for trial preparation. Upon the Court’s knowledge of the 25 issues in this case, however, the Court believes Presidio reasonably could have believed each of 26 the witnesses possessed knowledge which would be used for trial preparation, rather than mere 27 discovery. Civ. L.R. 54.1(b)(3)(a). 28 -5- 08cv335 1 B. Copying and creation of electronic database 2 ATC argues the entire $9,125.14 invoice for copy charges for 22,000 pages of trial 3 exhibits, at expedited rates, and the creation of an electronic database, were unnecessary and 4 erroneously permitted as costs. Although courtesy copies of exhibits for opposing counsel without 5 request are ordinarily not taxable, Civ. L.R. 54.1(c)(4), the Court directed counsel to exchange 6 copies of all exhibits they intended to use at trial. Given the Court’s knowledge of the case, it is 7 not unreasonable that Presidio waited until shortly before the trial to obtain court copies of all the 8 exhibits it would be using for trial. 9 However, Presidio does not explain the necessity of the $2,270.52 cost for “Image Capture 10 D-Heavy” or the $986.85 cost for “Color Imaging.” As the Court understands it, Presidio had the 11 copy service create and save an electronic image of the original paper documents as they were 12 being copied. Presidio did not use these digital copies of the documents at trial for demonstrative 13 or other purposes. Pursuant to Civ. L.R. 54.1(b)(7)(e), the cost of preparing material for electronic 14 retrievable is taxable only as to exhibits admitted in evidence. Therefore, the Court agrees these 15 costs are not allowable. 16 C. Larger than maximum enlargement costs 17 ATC argues the Clerk erroneously allowed Presidio $3,420.70 in costs for oversized 18 enlargements. The rule cited by ATC, however, pertains to the costs of photographic 19 enlargements. Civ. L.R. 54.1(b)(7)(b). ATC also argues all of the oversize enlargements relate, at 20 least in part, to the willful infringement issue, on which it did not prevail. The Court rejects 21 ATC’s argument and concludes the Clerk properly taxed costs for enlargements. 22 D. Summary 23 In sum, the Court disallows the $2,270.52 for “Image Capture D-Heavy” and $986.85 for 24 “Color Imaging” previously taxed by the Clerk. In addition, there were $3,740.33 in costs 25 (reflected in Appendix E to ATC’s motion) which should not have been taxed by the Clerk 26 because Presidio conceded such costs were not recoverable. Otherwise, the Court overrules 27 ATC’s objections to the Clerk’s calculation of costs. 28 -6- 08cv335 1 2 Conclusion The Court GRANTS IN PART AND DENIES IN PART Defendant ATC’s motion to re- 3 tax costs. The Court GRANTS Defendant ATC’s request that costs be taxed in its favor on the 4 claim under 35 U.S.C. § 292, and directs the Clerk to tax costs in the total amount of $21,411.80 5 against Presidio. The Court GRANTS Defendant ATC’s request to reduce the Clerk’s 6 determination of Presidio’s costs by the total amount of $6,997.70. In all other respects, the 7 ATC’s motion is DENIED. 8 IT IS SO ORDERED. 9 DATED: February 17, 2011 10 11 IRMA E. GONZALEZ, Chief Judge United States District Court 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -7- 08cv335
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