United States District Court, D. Maine
SURFCAST, INC. Plaintiff,
MICROSOFT CORP., Defendant.
ORDER ON BILL OF COSTS
Rule of Civil Procedure 54(d)(1) allows prevailing parties to
submit a Bill of Costs requesting the taxation of costs that
are permitted by statute, saying “[u]nless a federal
statute, these rules, or a court order provides otherwise,
costs … should be allowed to the prevailing
party.” Defendant is the prevailing party in this case
in that judgment was entered dismissing the case with
prejudice as to Plaintiff Surfcast's Amended Complaint.
Judgment, ECF No. 316.
seeks costs in the total amount of $105, 131.67 for
transcript fees and for the exemplification and copy costs
associated with electronic discovery in this case. Bill
of Costs and Memorandum in Support of Bill of
Costs, ECF Nos. 319 and 319-1. Pursuant to the
authorizing statute, expenses that may be taxed are specified
in 28 U.S.C. § 1920 and must be costs that were
“necessarily incurred in the case, ” pursuant to
28 U.S.C. § 1924. Having made an independent review of
the Bill of Costs in this case and Plaintiff's Objection
to the Bill (Response to Bill of Costs, ECF No.
320), the Clerk hereby orders costs as explained below.
Plaintiff has not objected to it, the parties appear to agree
that the transcript fee claimed in the amount of $103.50
should be taxed. The transcript, which was of the August 30,
2013 Markman hearing, was produced at the request of
Defendant. Where this is a patent case, and such a hearing is
essential for pretrial pleading work, the Clerk finds that
the transcript was necessarily incurred in the case, and
$103.50 will taxed against Plaintiff.
propriety of taxing Defendant's remaining claim of $105,
028.17 for the production of electronic discovery (ESI) is
less clear. Prevailing parties are entitled to recover the
statutorily authorized costs for copying under 28 U.S.C.
§ 1920(4), which states that the fees should be
“for exemplification and the costs of making copies of
any materials where the copies are necessarily obtained for
use in the case.”
memorandum supporting the Bill of Costs, Defendant cites
several courts that have found “e-discovery costs as
appropriately falling within the scope of section
1920(4).” Memorandum in Support of Bill of
Costs, ECF No. 319-1, p. 1, citing In re Ricoh Co.,
Ltd Patent Litig., 661 F.3d 1361 (Fed. Cir. 2011) and
others. Id. at pp 2-3. The cases cited by Defendant
are persuasive for the proposition that electronic production
of documents may constitute “exemplification” or
“costs of making copies” within the meaning of
subsection 1920(4); but they also implicitly acknowledge that
not all ESI activities are copies. Where the First Circuit
has not expressly addressed the issue of whether or not
subsection 1920(4) includes electronic discovery production
and to what extent electronic discovery production activities
amount to copying or exemplification, the Clerk is reluctant
to expand the meaning of § 1920(4) in this case.
Supreme Court has held that Rule 54(d)(1) permits the Court
to decline costs but not to tax costs in the absence of
expressed statutory authority. Crawford Fitting Company
v. J. T. Gibbons, 482 U.S. 437, 441-445 (1987). See
also Farmer v. ARAMCO, 379 U.S. 227, 235 (1964)
[(warning that “the discretion given to district judges
should be sparingly exercised with reference to expenses not
specifically allowed by statute” and cited by the First
Circuit in Templeman v Chris Craft Corp., 770 F.2d
245 at 248 (1st Cir. 1985)].
Clerk must also be aided by sufficiently supportive and
demonstrably necessary and explanatory documentation. The
First Circuit has said that, to be taxable, copies must be
“reasonably necessary to the maintenance of the
action” or furnished to the Court and opposing counsel.
Rodriguez-Garcia v. Davila, 904 F.2d 90, 100 (1st
Cir. 1990). “While a page-by-page justification is not
required, the prevailing party must offer some evidence of
necessity.” Bowling v. Hasbro, Inc., 582
F.Supp.2d 192, 210 (D.R.I.2008) (internal quotations and
citations omitted). See also In re Motor Freight
Express, 80 Bankr.44 (Bankr.E.D.Pa.1987) quoted in
In re San Juan Dupont Plaza Hotel Fire Litigation,
111 F.3d 220, 237 (1st Cir.1997).
the 310 pages of documents provided to justify the hefty ESI
claim in this case, there is insufficient explanation about
the necessity of the copies, the necessity of the ESI
procedures described (i.e. ESI Processing, ESI
Pre-Processing-Data Triage, Production Setup, TIFF to PDF
Conversion, Export, TIFF Creation, Production-TIFF, etc.), or
how the enumerated ESI procedures constitute steps of
exemplification or making copies. Copies must further be
necessarily obtained for use in the case. The prevailing
party may not recover expenses for copies made for the
attorneys' convenience or regarding issues upon which
they have not prevailed. See Virginia Panel Corp v. Mac
Panel Co., 887 F.Supp. 880, (W.D. Va. 1995).
noted in the case cited by Defendant, phrases such as
“document production” on an invoice and
“other similarly generic statements…are
unhelpful in determining whether those costs are
taxable.” In re Ricoh Co., Ltd. Patent
Litigation, 661 F.3d 1361 at 1368 (2011). The
Ricoh court held that inadequate documentation did
not support an award of taxation because “a bill of
cost must represent a calculation that is reasonably accurate
under the circumstances.” Id. at 1368. [citing
Summit Tech., Inc. v. Nidek Co., 435 F.3d 1371 at
1380 (Fed.Cir. 2006) after citing English v. Colo. Dept.
of Corr. 248 F.3d 1002 at 1013 (documentation is not to
be filled with generic references)].
has ably cited a number of persuasive cases, such as Race
Tires Am. Inc. v. Hoosier Racing Tire Corp. 674 F.3d
158, (3rd Cir. 2012), that seem to have support in
not only the Third Circuit, but also the Fourth, Sixth and
Ninth. As the Third Circuit synoptically explained in
Camesi v. University of Pittsburgh Medical Center,
673 Fed.Appx. 141 at 145 (2016), while citing Race
Tires, “As with pre-digital era discovery, ESI
entails a number of steps essential to the ultimate act of
production. Just as none of the steps that preceded the
actual act of making copies in the pre-digital era would have
been considered taxable, with ESI only the functional
equivalent of ‘making copies' is taxable.”
Id. (quotations and citations omitted). Finding the
Race Tires court's logic persuasive, the Clerk
cannot make a clear finding of taxation in this case without
an adequate explanation of Defendant's claims. The Clerk
cannot determine if the charges are for data collection,
culling, sorting, conversion to agreed-upon formats,
production or taxable copying and exemplification.
in light of the prevailing party's failure to adequately
explain and demonste necessity, and in light of the
traditionally narrow construction of § 1920(4), the
Clerk will not tax the charges claimed for ESI work in this
case. Like the Race Tires court, the Clerk derives
“no Congressional intent to ‘shift all the
expenses of a particular form of discovery-production of
ESI-to the losing party, ” especially in light of the
limited record in this case. Race Tires Am. Inc.,
674 F.3d at 171.
Clerk of Court hereby taxes costs in favor of Defendant in
the amount of one hundred and three ...