Opticurrent, LLC v. Power Integrations, Inc. et al

Filing 345

ORDER Re 293 Plaintiff's Bill of Costs. Signed by Judge Edward M. Chen on 7/3/2019. (emcsec, COURT STAFF) (Filed on 7/3/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OPTICURRENT, LLC,

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Plaintiff,

Case No. 17-cv-03597-EMC
ORDER RE PLAINTIFF’S BILL OF
COSTS

v.

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POWER INTEGRATIONS, INC., et al.,

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United States District Court
Northern District of California

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Defendants.

Docket No. 293

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Plaintiff Opticurrent, LLC (“Opticurrent”) seeks costs totaling $23,077.38. See Docket

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No. 293. Defendant Power Integrations, Inc. (“PI”) urges the Court to deny Opticurrent’s request

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for costs in its entirety or, in the alternative, to disallow certain costs. See Docket No. 310.
I.

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A.

DISCUSSION

Award of Costs
Federal Rule of Civil Procedure 54(d) provides that “costs—other than attorney’s fees—

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should be allowed to the prevailing party.” Here, Opticurrent prevailed in showing that PI

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infringed claim 1 of U.S. Patent No. 6,958,623 (the “’623 patent”) literally and under the doctrine

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of equivalents, and is entitled to costs determined according to the law of the regional circuit. See

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Manildra Mill. Corp. v. Ogilvie Mills, Inc., 76 F.3d 1178, 1183 (Fed. Cir. 1996). The Ninth

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Circuit recognizes a presumption that the prevailing party is entitled to costs but allows the district

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court discretion not to award them. See Escriba v. Foster Poultry Farms, Inc., 743 F.3d 1236,

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1247 (9th Cir. 2014). The following can be grounds for denying costs: “(1) the issues in the case

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were close and difficult; (2) the prevailing party’s recovery was nominal or partial; (3) the losing

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party litigated in good faith; and, perhaps, (4) the case presented a landmark issue of national

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importance.” Champion Produce, Inc. v. Ruby Robinson Co., 342 F.3d 1016, 1023 (9th Cir.

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2003).
PI argues that the first three considerations listed in Champion Produce weigh against

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awarding Opticurrent costs in this case. According to PI, this was a close case, as reflected in the

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jury’s finding that PI directly infringed the ’623 patent but did not induce infringement;

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Opticurrent’s recovery was partial; and PI litigated in good faith whereas Opticurrent engaged in

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misconduct. Docket No. 310 at 1–3. However, PI has failed to overcome the presumption that

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Opticurrent is entitled to costs. First, the jury’s conclusion that PI did not induce infringement

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does not make this a “close and difficult” case on the question of direct infringement. Cf.

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TransPerfect Glob., Inc. v. MotionPoint Corp., No. C-10-02590 CW (DMR), 2014 WL 1364792,
at *3 (N.D. Cal. Apr. 4, 2014) (ruling that a verdict of direct infringement “is a clear loss for

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United States District Court
Northern District of California

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[defendant],” even if jury found no contributory or induced infringement). PI was found to have

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infringed the sole patent at issue both literally and under the doctrine of equivalents. Although

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there were vigorous arguments on the merits regarding the connection or not to a power supply,

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the issue was not particularly difficult, and the jury reached its unanimous verdict fairly quickly.

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See, e.g., Beckway v. DeShong, No. C07-5072 TEH, 2012 WL 1380217, at *2 (N.D. Cal. Apr. 20,

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2012) (considering length of jury deliberations in determining whether case was close and

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difficult). Second, Opticurrent’s recovery, while partial, was nevertheless substantial—over $1

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million in past damages. Third, while this case has been fiercely litigated, neither party has

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engaged in actions that rise to the level of misconduct, as the Court has previously explained. See

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Docket No. 336 at 43.
Opticurrent, as the prevailing party, is entitled to recover its costs.

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B.

Amount of Costs
PI disputes two specific categories of costs billed by Opticurrent. The first is the costs

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associated with the deposition of Kenneth Mackillop. Mr. Mackillop’s deposition was made

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necessary by Opticurrent’s oversight, which led Judge Orrick to allocate costs thereof. In 2018,

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the parties engaged in summary judgment briefing before Judge Orrick concerning the date of

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conception of the ’623 patent. Mr. Mackillop was a relevant fact witness who was able to

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corroborate the date of conception asserted by Opticurrent, but Opticurrent did not submit his
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affidavit until after the Court had issued its summary judgment ruling. See Docket No. 132 at 2–3.

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While Judge Orrick accepted the late filing on a motion for reconsideration, he observed that

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“Opticurrent should have produced the Mackillop affidavit with the original motion papers” and

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allowed PI to depose Mr. Mackillop’s to mitigate any prejudice to PI. Id. at 5. However, Judge

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Orrick ordered that “[t]he cost of the transcript, court reporter’s fee, travel (if required) and two

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hours of the PI’s lawyer’s time who is taking the deposition shall be paid by Opticurrent.” Id. PI

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is thus correct that Opticurrent, not PI, must bear the $1,278.35 in costs associated with Mr.

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Mackillop’s deposition.

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The second disputed category is the costs associated with videotaping depositions. PI
argues, citing Frlekin v. Apple Inc., No. 1303775WHA, 2016 WL 354862, at *2 (N.D. Cal. Jan.

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United States District Court
Northern District of California

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25, 2016), that “costs associated with video should not be allowed where the witnesses are

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available at trial and where the video was not actually ever used.” Docket No. 310 at 3. However,

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as Opticurrent points out, statutory authority, this district’s local rules, and “the weight of recent

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authority . . . hold[] that fees for both the videotaped and stenographic versions of the same

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transcript are taxable.” Fowler v. California Highway Patrol, No. 13-CV-01026-TEH, 2014 WL

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3965027, at *5 (N.D. Cal. Aug. 13, 2014); see 28 U.S.C. § 1920(2) (authorizing taxation of “[f]ees

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for printed or electronically recorded transcripts necessarily obtained for use in the case”)

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(emphasis added); N.D. Cal. Civ. L.R. 54-3(c)(1) (“The cost of an original and one copy of any

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deposition (including videotaped depositions) taken for any purpose in connection with the case is

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allowable.”). PI fails to show Opticurrent’s decision to videotape the deposition was

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unreasonable. Accordingly, Opticurrent may recover the costs of videotaping depositions.
II.

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CONCLUSION

For the foregoing reasons, Opticurrent is entitled to costs totaling $21,799.03 (i.e.,
$23,077.38 – $1,278.35).
IT IS SO ORDERED.
Dated: July 3, 2019
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EDWARD M. CHEN
United States District Judge
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