UNITED STATES DISTRICT COURT EASTERN DISTRICT OF VIRGINIA NORFOLK DIVISION __________________________________________ ) ) ) Plaintiff, ) v. ) ) AOL, INC. et al., ) ) Defendants. ) __________________________________________) I/P ENGINE, INC., Civ. Action No. 2:11-cv-512 DECLARATION OF CHARLES J. MONTERIO, JR. IN SUPPORT OF I/P ENGINE INC.’S BILL OF COSTS PURSUANT TO 28 U.S.C. § 1920, FED. R. CIV. P. 54(D)(1), AND LOCAL RULE 54(D)(1) I, Charles J. Monterio, Jr., declare as follows: 1. I am an attorney with the law firm of Dickstein Shapiro LLP, 1825 Eye Street N.W., Washington, DC 20006 and am counsel for Plaintiff I/P Engine, Inc. (“I/P Engine”) in the above-captioned litigation. 2. This declaration is made pursuant to 28 U.S.C. § 1920 and submitted in support of Plaintiff I/P Engine’s Bill of Costs. I have personal knowledge of the facts stated herein and, if called as a witness, could testify competently hereto. Each item of cost for which recovery is sought was necessarily and actually incurred in this litigation. Many of the costs sought in I/P Engine’s Bill of Costs were derived from contemporaneous accounting records and invoices maintained by Dickstein Shapiro LLP or I/P Engine itself. Summary spreadsheets followed by the records for each category of costs are attached hereto as exhibits. I. FEES OF THE CLERK AND MARSHALL 3. I/P Engine incurred an initial fee for the filing of its Complaint of $350.00. A true and correct copy of this invoice is attached as Exhibit A. 4. I/P Engine also paid $825.00 in fees for the Pro Hac Vice Applications of its attorneys: Brett Hamilton, Charles Monterio, Jr., Frank Cimino, Jr., Kenneth Brothers, Deanna Allen, Jonathan Falkler, Leslie Jacobs, Dawn Rudenko, Krista Carter, Katie Scott and James Ryerson. True and correct copies of these invoices are also attached as Exhibit A. 5. II. I/P Engine seeks a total of $1,175.00 for Fees of the Clerk. FEES FOR SERVICE OF SUMMONS AND SUBPOENAS 6. I/P Engine incurred fees for service of deposition subpoenas via private process servers in the amount of $568.75. True and correct copies of the invoices of the process servers are attached hereto as Exhibit B. 7. I/P Engine seeks a total of $568.75 for Fees for Service of Summons and Subpoenas. III. FEES FOR PRINTED OR ELECTRONICALLY RECORDED TRANSCRIPTS NECESSARILY OBTAINED FOR USE IN THE CASE A. Transcripts for Depositions of Fact and Expert Witnesses 8. I/P Engine seeks recovery of $60,684.49 in video-taped depositions necessarily obtained for use in this litigation. As a first matter with regard to necessity, I/P Engine notes that nearly all of the witnesses for whom it took depositions appeared at trial either live or via portions of their video-taped depositions. Further, all but one of the witnesses (John Diorio) were listed on the Defendants’ Pretrial Disclosures, dated September 19, 2012, under the designations “will be present at trial,” or “may be present at trial,” either one of which required I/P Engine to be prepared to address their testimony at trial. Moreover, the majority of these 2 deponents appeared in at least one of Defendants’ Initial Disclosures where they were identified as individuals “likely to have discoverable information” pursuant to Fed. R. Civ. P. 26(a)(1)(A)(i). Consequently, each of these depositions were necessary to the preparation of I/P Engine’s case at the time they were taken. A summary of this information appears in the table below: Summary Regarding Necessity of Depositions Taken for Case Witness Initial DisclosuresPre-Trial Witness Trial Transcript listed List James W. Maccoun Google 4th Supp. Defendants’ Pre-Trial Google 30(b)(6) Initial Disclosures, Disclosures, 9/19/12 9/4/12 Celia A. Denery Defendants’ Pre-Trial 10/23/12 AM (video) IAC 30(b)(6) Disclosures, 9/19/12 Jonathan G. Alferness Google Initial Defendants’ Pre-Trial 10/24/12 AM/PM Google 30(b)(6) Disclosures, Disclosures, 9/19/12 11/18/11 Kevin Cotter IAC Initial Defendants’ Pre-Trial 10/23/12 AM (video) IAC 30(b)(6) Disclosures, Disclosures, 9/19/12 11/18/11 Marie N. Bamford Defendants’ Pre-Trial Gannett 30(b)(6) Disclosures, 9/19/12 Stephen M. Kurtz AOL Initial Defendants’ Pre-Trial 10/23/12 AM (video) Gannett 30(b)(6) Disclosures, Disclosures, 9/19/12 11/18/11 James Christopherson Target’s 2nd Supp. Defendants’ Pre-Trial 10/23/12 AM (video) Target 30(b)(6) Initial Disclosures, Disclosures, 9/19/12 9/4/12 Sanjay Datta Google 4th Supp. Defendants’ Pre-Trial Google 30(b)(6) Initial Disclosures, Disclosures, 9/19/12 9/4/12 Ruben E. Ortega Google 2nd Supp. Defendants’ Pre-Trial by subpoena Initial Disclosures, Disclosures, 9/19/12 8/7/12 Jonathan Diorio Google 4th Supp. 10/18/12 AM (video) Google Initial Disclosures, 9/4/12 Derek Leslie-Cook Google 4th Supp. Defendants’ Pre-Trial 10/23/12 AM (video) Google Initial Disclosures, Disclosures, 9/19/12 9/4/12 3 Summary Regarding Necessity of Depositions Taken for Case Witness Initial DisclosuresPre-Trial Witness Trial Transcript listed List Lyle Ungar, Ph.D Gannett’s 1st Supp. Defendants’ Pre-Trial 10/24-26/12 Liability Expert Initial Disclosures, Disclosures, 9/19/12 2/22/12 Robert Hickernell, Jr. AOL Supp. Initial Defendants’ Pre-Trial 10/23/12 AM (video) AOL 30(b)(6) Disclosures, Disclosures, 9/19/12 12/5/11 Gary Holt Google 4th Supp. Defendants’ Pre-Trial 10/18-19/12 (video) Google Initial Disclosures, Disclosures, 9/19/12 9/4/12 Gary A. Culliss Defendants’ Pre-Trial by subpoena Disclosures, 9/19/12 Bartholomew Furrow Google Initial Defendants’ Pre-Trial 10/18-19/12 (video); Google Disclosures, Disclosures, 9/19/12 10/24/12 (live) 11/18/11 Keith R. Ugone, Ph.D. Defendants’ Pre-Trial 10/26/12; 10/30/12 Damages Expert Disclosures, 9/19/12 th Nicholas Fox Google 4 Supp. Defendants’ Pre-Trial 10/22/12 PM (video) Google Initial Disclosures, Disclosures, 9/19/12 9/4/12 Alexander Berger AOL Initial Defendants’ Pre-Trial by subpoena and Disclosures, Disclosures, 9/19/12 Hudson Bay 30(b)(6) 11/18/11 Mark Blais Defendants’ Pre-Trial Lycos by subpoena Disclosures, 9/19/12 Andrew D. Perlman Defendants’ Pre-Trial 10/17/12 AM by subpoena Disclosures, 9/19/12 1. 9. Depositions of Defendants’ and I/P Engine’s Fact Witnesses I/P Engine took the following 16 30(b)(1) or 30(b)(6) depositions of Defendants’ witnesses, the costs of which it seeks to have taxed as costs: James Maccoun, Celia Denery, Jonathan Alferness, Marie Bamford, Stephen Kurtz, James Christopherson, Sanjay Datta, Ruben Ortega, Jonathan Diorio, Derek Leslie-Cook, Robert Hickernell, Jr., Gary Holt, Gary Culliss, Bartholomew Furrow, Nicholas Fox, and Mark Blais. 10. I/P Engine also seeks reimbursement for the depositions of two of its own witnesses, Andrew D. Perlman and Alexander Berger for which it incurred costs. 4 11. All of these depositions were utilized extensively by I/P Engine in discovery, motions for summary judgment and/or in preparation for trial. I/P Engine seeks the costs for the court reporter, the original, and one copy of each deposition with exhibits, and reasonable delivery fees. I/P Engine has adjusted the billable costs to remove charges for Realtime, Rough ASCII copies, and LEF/SBF files. True and correct copies of the invoices relating to these depositions are attached as Exhibit C. 2. 12. Depositions of Inventor Witnesses Defendants took the depositions of two inventor witnesses, Andrew K. Lang and Donald Kosak. I/P Engine seeks reimbursement for the copy of those depositions for which it incurred costs. These depositions were utilized extensively by I/P Engine in discovery, motions for summary judgment and/or in preparation for trial. A true and correct copy of the invoice relating to this deposition is attached as Exhibit C. 3. 13. Depositions of Defendants’ Expert Witnesses I/P Engine took the depositions of two expert witnesses, Lyle Ungar, Ph.D. and Keith Ugone, Ph.D. Both of these depositions were utilized extensively by I/P Engine in discovery, motions for summary judgment and/or in preparation for trial. I/P Engine seeks the costs for the court reporter, the original, and one copy of each deposition with exhibits, and reasonable delivery fees. I/P Engine has adjusted the billable costs to remove charges for Realtime, Rough ASCII copies, and LEF/SBF files. True and correct copies of the invoices relating to these depositions are attached as Exhibit C. B. Court Hearing Transcripts 14. I/P Engine seeks recovery of $252.00 in fees to the court reporter for certain hearing transcripts. These transcripts were utilized by I/P Engine in discovery motions, motions 5 for summary judgment and/or in preparation for trial. Accordingly, the hearing transcripts were necessary. A true and correct copy of the invoices detailing these fees is attached hereto as Exhibit C. C. Trial Transcripts 15. I/P Engine seeks recovery of $4,922.75 in fees to the court reporter for the trial transcript. A 15-day jury trial was conducted for this litigation beginning on October 16, 2012 and ending November 6, 2012. I/P Engine’s counsel ordered daily copies of the trial transcripts, which were utilized for several purposes including to: (a) assist I/P Engine in the ongoing preparation and presentation of its case; (b) provide a record of the Court’s rulings on evidentiary and other matters; (c) provide a record of the testimony of each witness; and (d) enable I/P Engine to prepare to respond to motions for judgment as a matter of law submitted to the Court during trial. Accordingly, the daily transcript was necessary. A true and correct copy of the invoices detailing these fees is attached hereto as Exhibit C. D. Total Transcript Costs 16. With respect to depositions, court hearings and trials, I/P Engine seeks a total of $65,859.64 for Fees for Printed or Electronically Recorded Transcripts Necessarily Obtained for Use in the Case. IV. FEES FOR WITNESSES 17. I/P Engine incurred fees for attendance at trial, subsistence fees for attendance at trial, travel fees for witnesses at trial, witness fees for attendance at depositions, subsistence fees for attendance at depositions and travel fees for attendance at depositions in the amount of $29,128.73. A further breakdown of these fees are attached hereto as Exhibit D and reflected on page 2 of Form AO 133 which is being filed concurrently herewith. 6 18. V. I/P Engine seeks a total of $29,128.73 for Fees for Witnesses. FEES FOR EXEMPLIFICATION AND THE COSTS FOR MAKING COPIES OF ANY MATERIALS WHERE THE COPIES ARE NECESSARILY OBTAINED FOR USE IN THE CASE A. Trial Exhibits 19. I/P Engine seeks recovery of $81,495.96 in exemplification fees for copies of trial exhibits necessarily obtained for use in this case. I/P Engine has made adjustments to the fee totals to reduce billable charges to three sets of exhibits where appropriate. True and correct copies of the invoices associated with trial exhibits are attached as Exhibit E. B. Additional Documents 20. I/P Engine seeks further exemplification costs of $5,211.93 for additional documents necessarily obtained for use in this case from outside parties where copies were needed for document production and/or case analysis. True and correct copies of the invoices associated with these documents are attached as Exhibit E. C. Total Exemplification and Copying Costs 21. With respect to trial exhibits and additional documents, I/P Engine seeks a total of $86,707.89 for Fees for Exemplification and the Costs for Making Copies of Any Materials Where the Copies are Necessarily Obtained for Use in the Case. VI. TOTAL COSTS 22. The total amount of costs claimed by I/P Engine under Fed. R. Civ. P. 54(d) and 28 U.S.C. §§ 1821 and 1920 is $183,440.01. I/P Engine respectfully submits that this amount, while substantially less than the total costs actually incurred by I/P Engine during the course of litigating its claims of patent infringement against Defendants, represents the costs taxable against Defendants under controlling law. I, or persons under my supervision, have reviewed the 7 costs requested by I/P Engine for accuracy, and state that they are true and accurate to the best of my knowledge and belief. 23. Accordingly, I/P Engine respectfully requests that the Court award it $183.440.01 as its costs of suit. I declare under penalty of perjury of the laws of the United States of America that the foregoing is true and correct. Dated: December 3, 2012 By: ___/s/ Charles J. Monterio, Jr. ______ Charles J. Monterio Jr. DICKSTEIN SHAPIRO LLP 1825 Eye Street, NW Washington, DC 20006 Telephone: (202) 420-2200 Facsimile: (202) 420-2201 Counsel for Plaintiff I/P Engine, Inc. 8 CERTIFICATE OF SERVICE I hereby certify that on this 3rd day of December, 2012, the foregoing DECLARATION OF CHARLES J. MONTERIO, JR. IN SUPPORT OF I/P ENGINE INC.’S BILL OF COSTS PURSUANT TO 28 U.S.C. § 1920, FED. R. CIV. P. 54(D)(1), AND LOCAL RULE 54(D)(1), was served via the Court’s CM/ECF system, on the following: Stephen Edward Noona Kaufman & Canoles, P.C. 150 W Main St Suite 2100 Norfolk, VA 23510 senoona@kaufcan.com David Bilsker David Perlson Quinn Emanuel Urquhart & Sullivan LLP 50 California Street, 22nd Floor San Francisco, CA 94111 davidbilsker@quinnemanuel.com davidperlson@quinnemanuel.com Robert L. Burns Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190 robert.burns@finnegan.com Cortney S. Alexander Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 3500 SunTrust Plaza 303 Peachtree Street, NE Atlanta, GA 94111 cortney.alexander@finnegan.com /s/ Jeffrey K. Sherwood 9