Rembrandt Diagnostics, LP v. Alere, Inc. et al
Filing
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ORDER Granting in Part Motion to Retax Costs. Signed by Judge Cathy Ann Bencivengo on 6/5/2019. [Doc. No. 360 (anh)
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UNITED STATES DISTRICT COURT
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SOUTHERN DISTRICT OF CALIFORNIA
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REMBRANDT DIAGNOSTICS, LP,
Case No.: 16-CV-698-CAB-NLS
Plaintiff,
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v.
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ORDER GRANTING IN PART
MOTION TO RETAX COSTS
ALERE, INC.; ALERE TOXICOLOGY
SERVICES, INC.; INNOVACON, INC.;
and INSTANT TECHNOLOGIES, INC.,
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[Doc. No. 360]
Defendants.
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Before the Court is Plaintiff’s motion to retax costs. [Doc. No. 360.] Plaintiff timely
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filed the instant motion pursuant to Civil LR 54.1(h)(1). Defendants opposed the motion
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[Doc. No. 362], and Plaintiff filed a reply. [Doc. No. 363.] The motion has been fully
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briefed and the Court finds it suitable for determination on the papers and without oral
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argument. See S.D. Cal. CivLR 7.1(d)(1). For the reasons set forth below, Plaintiff’s
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motion to retax costs is granted in part.
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I.
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Plaintiff Rembrandt Diagnostics, LP brought this patent infringement action against
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Defendants Alere, Inc. and its affiliates. At trial, Plaintiff argued that Defendants’ iCup
BACKGROUND
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16-CV-698-CAB-NLS
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product infringed claim 10 of U.S. Patent No. 6,548,019. Trial began on November 26,
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2018, and the jury returned a verdict in favor of Defendants on November 30, 2018. [Doc.
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No. 342.]
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$225,107.00. [Doc. No. 351.] On March 8, 2019, Plaintiff objected to Defendants’ bill of
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costs. [Doc. No. 354.] After a hearing held on March 14, 2019, the Clerk of Court taxed
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costs in the amount of $179,595.76 against Plaintiff on April 30, 2019. [Doc. No. 359.] In
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Plaintiff’s motion to retax costs, it specifically opposes the costs taxed for visual aids in
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the amount of $114,072.00, but does not oppose the other costs taxed in Defendants’ favor.
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[Doc. No. 360-1 at 2.] Therefore, all other costs taxed will remain the same.
On February 25, 2019, Defendants moved for costs in the amount of
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II.
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“Unless a federal statute, these rules, or a court order provides otherwise, costs—
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other than attorney’s fees—should be allowed to the prevailing party.” Fed. R. Civ. P.
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54(d)(1); see also S.D. Cal. CivLR 54.1(a) (“Unless otherwise ordered by the court, or
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stipulated by the parties, the prevailing party is entitled to costs.”). This rule creates a
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presumption in favor of awarding costs to the prevailing party. Stanley v. Univ. of S. Cal.,
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178 F.3d 1069, 1079 (9th Cir. 1999); Champion Produce, Inc. v. Ruby Robinson Co., Inc.,
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342 F.3d 1016, 1022 (9th Cir. 2003). District courts have the discretion to overcome this
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presumption, but may only do so in cases that are “extraordinary” and it would be
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“inappropriate or inequitable to award costs.” Ass’n of Mexican-American Educators v.
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California, 231 F.3d 572, 593 (9th Cir. 2000). 28 U.S.C. § 1920 “enumerates expenses
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that a federal court may tax as a cost under the discretionary authority found in Rule 54(d).”
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Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441–42 (1987); see also Grove
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v. Wells Fargo Fin. Cal., Inc., 606 F.3d 577, 579 (9th Cir. 2010) (“Ordinarily, section 1920
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‘defines the full extent of a federal court’s power to shift litigation costs absent express
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statutory authority.’” (quoting W. Virginia Univ. Hosps., Inc. v. Casey, 499 U.S. 83, 86
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(1991))). Statutory authority to tax costs related to graphics arises under 28 U.S.C. §
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1920(4), which permits the Court to award “[f]ees for exemplification and copies of papers
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necessarily obtained for use in the case.” 28 U.S.C. § 1920(4).
LEGAL STANDARD
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The Ninth Circuit construes “exemplification” narrowly: “fees are permitted only
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for the physical preparation and duplication of documents, not the intellectual effort
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involved in their preparation.” Romero v. City of Pomona, 883 F.2d 1418, 1428 (9th Cir.
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1989) (overruled in part on other grounds by Townsend v. Holman Consulting Corp., 914
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F.2d 1136, 1141 (9th Cir. 1990)); see also Maxwell v. Hapag-Lloyd Aktiengesellschaft,
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Hamburg, 862 F.2d 767, 770 (9th Cir. 1988) (“In the context of § 1920, ‘exemplification
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and copies of papers’ has been interpreted to include all types of demonstrative evidence,
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including photographs and graphic aids.”). “The cost of preparing charts, diagrams,
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videotapes and other visual aids to be used as exhibits is taxable if such exhibits are
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reasonably necessary to assist the jury or the court in understanding the issues at the trial.
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An explanation of how the above related to a material issue in the case will be provided.”
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S.D. Cal. CivLR 54.1.b.7.a.
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III.
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Defendants’ counsel declared that the visual aids consisted of 110 slides used in
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Defendants’ opening statement, 108 slides used during Defendants’ closing argument, and
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149 slides used with live witnesses at trial. [Doc. No. 357 at ¶ 24.] Plaintiff contends the
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Court should retax costs to exclude the $114,072.00 for visual aids in its entirety because
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Defendants fail to sufficiently explain why such visual aids were reasonably necessary,
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how they related to a material issue in the case, and because Defendants failed to establish
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that the alleged hundreds of hours spent were only for physical preparation of the visual
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aids and not for intellectual effort. [Doc. No. 360-1 at 6.]
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DISCUSSION
1. Reasonably Necessary
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In Defendants’ bill of costs, Defendants stated they employed two in-house graphic
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artists to prepare visual aids to assist the jury and the Court in understanding the technology
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at issue, the opinions of Defendants’ technical experts, and the facts at issue in the trial.
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[Doc. No. 351-2 at 4‒5.] Defendants’ counsel declared that the 367 slides utilized at trial
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included graphics or animations visually illustrating Defendants’ non-infringement and
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invalidity arguments. [Doc. No. 357 at ¶ 25.] Defendants contend the visual aids were
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necessary to assist the jury in understanding the scientific principles of their non-
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infringement and invalidity arguments. [Doc. No. 362 at 11.] Moreover, Defendants were
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not merely editing and reformatting readily available material, but created new and
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effective visual aids to convey its arguments to the jury. [Id. at 12.] Even if the alleged
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invention was simple as Plaintiff suggests, Defendants point out that the non-infringement
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and invalidity arguments were not.
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sufficiently established that the visual aids were reasonably necessary to assist the jury in
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understanding their technical arguments.
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Accordingly, the Court finds that Defendants
2. Material Issue
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Likewise, Defendants contend the visual aids related to a material issue because the
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central issues at trial were whether Defendants’ product infringed the patent and whether
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the claim was invalid. [Id. at 9.] As noted above, the visual aids related to Defendants’
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non-infringement and invalidity arguments. Here, “[t]he slides speak for themselves as to
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their relevance to the material issues at trial.” Lucent Techs., Inc. v. Gateway, Inc., 2008
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WL 11338355 at *3 (S.D. Cal. 2008). Accordingly, the Court finds that Defendants
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sufficiently established how the visual aids related to a material issue in the case.
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3. Physical Preparation
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Lastly, Plaintiff contends that Defendants failed to establish that the hours spent
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were solely for physical preparation and not for intellectual effort. [Doc. No. 360-1 at 6.]
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Defendants’ counsel declared in their supplemental declaration in support of the bill of
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costs that they understand from the in-house graphic artists that 80% to 95% of the time
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the graphic artists billed was spent on physical preparation and the remaining time was
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spent meeting with Defendants’ counsel. [Doc. No. 357 at ¶ 26.] Defendants also attached
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to their opposition to this motion declarations from both graphic artists confirming as such.
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[Doc. No. 362-5 at ¶ 13; Doc. No. 362-6 at ¶ 14.] Defendants are only permitted to costs
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“for the physical preparation and duplication of documents, not the intellectual effort
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involved in their preparation.” Romero, 883 F.2d at 1428.
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Defendants contention that they did not seek costs associated with the attorneys’
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intellectual efforts is contradicted by their own and their graphic artists’ declarations. The
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graphic artists state that 80% to 95% relates to time spent creating the visual aids and “[t]he
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remaining time relates to time spent meeting with the attorneys . . ..” [Doc. No. 362-5 at ¶
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13; Doc. No. 362-6 at ¶ 14.] To the extent Defendants attempt to argue that the time
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meeting with the attorneys did not involve any intellectual effort on the part of the
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attorneys, the Court is not persuaded by such argument. Furthermore, 80% to 95% is a
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significant margin and Defendants should have determined the specific amount of time
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spent by the graphic artists that involved physically preparing the visual aids. Accordingly,
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the Court will retax the already substantial amount awarded for visual aids to 80% of the
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previous amount of $114,072.00.
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GRANTED in part and Plaintiff is taxed costs of $91,257.60 for the visual aids.
Therefore, Plaintiff’s motion to retax costs is
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IV.
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For the foregoing reasons, the Court GRANTS in part Plaintiff’s motion to retax
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costs. Plaintiff is taxed costs of $91,257.60 for the visual aids in favor of Defendants
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instead of the previous amount of $114,072.00. The remaining costs taxed by the Clerk of
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Court remain the same.
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CONCLUSION
IT IS SO ORDERED.
Dated: June 5, 2019
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