Global Patent Holdings, LLC v. Panthers BRHC LLC

Filing 56

REPORT AND RECOMMENDATION that 46 MOTION for Attorney Fees filed by Panthers BRHC LLC BE GRANTED IN PART AND DENIED IN PART. Objections to R&R due by 6/1/2009. Signed by Magistrate Judge Linnea R. Johnson on 5/14/2009. (sa)

UNITED STATES DISTRICT COURT S O U T H E R N DISTRICT OF FLORIDA C AS E NO. 08-80013-CIV-MARRA/JOHNSON

G L O B A L PATENT HOLDINGS, LLC., P l a i n t if f , vs. P A N T H E R S BRHC LLC, d/b/a THE BOCA RESORT & CLUB, D e fe n d a n t. ___________________________________________/

R E P O R T AND RECOMMENDATION

T H IS CAUSE is before the Court on that portion of Defendant's Motion for A tto rn e y's Fees and Costs (D.E. #46) which addresses solely the issue of costs. T h is matter was referred to the undersigned United States Magistrate Judge by the H o n o ra b le Kenneth A. Marra, United States District Judge for the Southern District o f Florida and is now ripe for judicial review. For the following reasons the

u n d e rs ig n e d respectfully recommends that portion of the Motion seeking costs be g ra n ted in part and denied in part in accordance with the terms of the within Order. P la in tiff, Global Patent Holdings, LLC., ("Global") filed the instant action a g a in s t Defendant, Panthers BRHC, LLC. ("Panthers") on January 8, 2008, alleging d ire c t and indirect patent infringement under 17 U.S.C. §271. On August 13, 2008, a fte r Plaintiff filed an Amended Complaint and following a hearing on Defendant's

M o tio n to Dismiss, the District Court dismissed the First Amended Complaint with p re ju d ice and entered Final Judgment in favor of Defendant and against Plaintiff (D .E . #42). S u b s e q u e n tly , on or about September 12, 2008, Defendant filed a Motion for A tto rn e y's Fees and Costs. On January 7, 2009, Judge Marra entered an Order on th e Defendant's Motion, denying Defendant's request for attorney's fees and re fe rrin g to the undersigned United States Magistrate Judge, for report and re c o m m e n d a tio n , the issue of costs.1 In said Order Judge Marra specifically limited th e recovery of costs to those allowable under 28 U.S.C. §1920. Defendant, as the prevailing party in the instant patent infringement action, is e n title d to recover costs pursuant to Rule 54(d) of the Federal Rules of Civil P r o c e d u re and 28 U.S.C. §1920. Rule 54(d) provides that the prevailing party in a la w s u it shall be entitled to recover costs from the opposing party as a matter of c o u r s e unless the court otherwise directs. 28 U.S.C. § 1920, which specifies which c o s ts are recoverable, provides as follows: A judge or clerk of any court of the United States may tax as costs the fo llo w in g : (1 ) (2 ) fe e s of the clerk and marshal; fe e s of the court reporter for all or any part of the s te n o g r a p h ic transcript necessarily obtained for use in the case;

1

Inexplicably, a copy of the subject referral was never received by the undersigned. Instead, the undersigned became aware of the Order of Referral's existence through contact with Judge Marra's Chambers on or about May 7, 2009.

(3) (4 )

fe e s and disbursements for printing and witnesses; fe e s for exemplification and copies of papers n e c e s s a rily obtained for use in the case; d o c k e t fees under § 1923 of this title; c o m p e n s a tio n of court-appointed experts, c o m p e n s a tio n of interpreters, and salaries, fees e xp e n s e s and costs of special interpretation s e rv ic e s under § 1828 of this title.

(5 ) (6 )

O th e r statutory mandates authorize the award of additional costs. See 28 U .S .C . § 1821. The court has limited discretion in awarding costs, and is permitted to tax only those items specified in §1920, unless authorized by statute. Crawford F ittin g Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441-442 (1987)(the court "may not ta x any items not included in 28 U.S.C. §1920); Royal Palace Hotel Associates, Inc. v. International Resort Classics, 178 F.R.D. 595, 602 (M.D. Fla. 1998). The party s e e k in g costs must not only show that the costs claimed are recoverable, but must a ls o provide sufficient detail and sufficient documentation regarding those costs in o rd e r to permit challenges by opposing counsel and meaningful review by the Court. L e e v. American Eagle Airlines, Inc., 93 F.Supp.2d 1322, 1335 (S.D. Fla. 2000); G re e n Constr. Co. v. Kansas Power & Light Co., 153 F.R.D. 670, 675 (D.Kan. 1 9 9 4 )(T h e burden is on the prevailing party to demonstrate that the costs sought are w ith in the scope of §1920). Failure to provide supporting documentation verifying th e costs incurred and the services rendered can be grounds for denial of costs. J o h n s o n v. Mortham, 173 F.R.D. 313, 318 (N.D. Fla. 1997). B y this motion, Defendant seeks to recover costs in the amount of $24,984.11.

As Plaintiff correctly observes, the vast majority of the requested costs are for nonta x a b le items not permitted under §1920. These non-taxable costs are as follows: c o m p u te riz e d legal research, PACER fees, telecopy (facsimile) fees, fees for inh o u s e and out-sourced photo copies, attorney travel, long distance telephone

c h a rg e s , legal services, and, messenger service fees. None of these expenses may b e properly taxed as costs under §1920. See Duckworth v. W is e n a n t, 97 F.3d 1393, 1 3 9 9 (11th Cir. 1996)(recognizing that "costs such as general copying, computerized re s e a rc h , postage, courthouse parking fees and expert fees ... are clearly nonre c o ve ra b le ."); LeKlevar v. LCM Medical, Inc., Case No. 94-6004-CIV-LENARD, R e p o rt and Recommendation (D.E. #70) adopted by District Court (D.E. #71)(noting th a t the attorneys' travel expenses, the mediation fee, and the charges for postage, faxe s , long distance telephone calls, courier service, and computerized research are n o t recoverable under §1920); Corsair Asset Management v. Moskovitz, 142 F.R.D. 3 4 7 , 351-53 (N.D. Ga. 1992)(recovery of costs incurred for electronic research, fa c s im ile s , long-distance telephone and commercial messenger service not allowed u n d e r §1920). T h e remainder of the costs sought are as follows: $50.40 for in-house p h o to c o p yin g fees; $874.22 for out-sourced photocopying fees; and $5.00 for u n d o c u m e n te d court costs. Plaintiff objects to everything but the $5.00 u n d o c u m e n te d court cost. Unfortunately, Plaintiff's objections have gone

u n a n s w e re d by the absence of any reply memorandum having been filed on behalf o f Defendant.

Clearly the $5.00 sought for court costs should be taxed as costs. Although th e cost is undocumented, Defendant has identified the nature of the cost as being a fee charged by the Court to obtain a certificate of good standing for purposes of filin g a pro hac vice motion, and the Record reflects that such motion was indeed file d . Accordingly, noting Plaintiff's non-objection to the amount sought, and finding re c o rd support for the charge having been incurred, the Court recommends D e fe n d a n t recover the $5.00 court fee sought. Defendant seeks $50.40 for in-house photocopying costs and $874.22 for o u ts id e copying costs. Copying costs are specifically recoverable under 28 U.S.C.

§1920(4) if they were "necessarily obtained for use in the case." Scroggins v. Air Cargo, 534 F.2d 1124, 1133 (5th Cir. 1976). Copies attributable to discovery, copies of pleadings, correspondence, documents tendered to the opposing party, copies of exhibits and documents prepared for the court's consideration are recoverable. NAACP v. Florida Dep't of Corrections, 2005 U.S. Dist. LEXIS 16943, *7-8 (M.D. Fla. 2005)(noting that the necessity, purpose, and amount of the costs all must be proven); Desisto College, Inc. v. Town of Howey-In-The-Hills, 718 F. Supp. 906, 913 (M.D. Fla. 1989), aff'd, 914 F.2d 267 (11th Cir. 1990). Extra copies of filed papers, correspondence and copies of cases are deemed obtained only for the convenience of counsel, however, are not recoverable. Id. See also Alan v. Freeman, 122 F.R.D. 589, 591 (S.D. Fla. 1988); Roberts v. Charter Nat'l Life Ins. Co., 112 F.R.D. 411, 414 (S.D. Ind. 1986).

In this case no evidence has been provided in the form of bills, invoices, or receipts showing the number of copies made and the amount billed. For the outside copying costs,

Defendant simply states the $874.22 was expended for "Copying binders, creating index and custom tabs for four patent file wrappers." See pg. 25 of Venable Bill, attached as Exh. 1 to Mtn. (D.E. #46). As for the in-house copying charges allegedly incurred of $50.40, there is absolutely no indication at all as to what was copied. As for the outside copying charges allegedly incurred, the Court finds only $218.55 of the $874.22 allegedly incurred, should be taxed as costs herein. Not only has no invoice been submitted; Defendant has failed to provide any explanation of what four file histories were copied, or provide the purpose of such copies. That said, the Court has reviewed the file in this case and it is clear therefrom, that copies of file histories were necessarily obtained for use in the case, and copying costs incurred would therefore be reasonable under the circumstances. One set of copies, however, and not four sets, would be all that would be required for purposes of the case, the remaining three sets delegated to being for convenience of counsel and not properly taxable.2 As for the in-house copying charges allegedly incurred of $50.40, unlike with the outside copying costs, there is absolutely no indication at all as to what was copied, let alone the amount of copies made or for what purpose. It should also be noted that Defendant was given an opportunity to clarify matters for the Court by the filing of a reply, but chose not to do so. Accordingly, the Court recommends that these costs not be taxed. In accordance with the above and foregoing, it is hereby R E C O M M E N D E D that the portion of Defendant's Motion for Attorney's Fees a n d Costs (D.E. #46) that was referred to the undersigned, namely Defendant's M o tio n for Costs, be GRANTED IN PART AND DENIED IN PART in accordance

2

This figure was obtained by deducting 75% from the total sought of $874.22.

w ith the terms hereof. Should the District Court elect to adopt the undersigned's re c o m m e n d a tio n , Defendant should be awarded $218.60 in costs. The parties have ten (10) days from the date of this Report and R e c o m m e n d a tio n within which to serve and file written objections, if any, with the H o n o ra b le Kenneth A. Marra, United States District Judge. Failure to file objections tim e ly shall bar the parties from attacking on appeal the factual findings contained h e re in . LoConte v. Dugger, 847 F.2d 745 (11th Cir. 1988), cert. denied, 488 U.S. 9 5 8 (1988); RTC v. Hallmark Builders, Inc., 996 F.2d 1144, 1149 (11th Cir. 1 9 9 3 ). R E S P E C T F U L L Y SUBMITTED, on this 14 th day of May, 2009, in Chambers a t W e s t Palm Beach, Florida.

LINNEA R. JOHNSON U N IT E D STATES MAGISTRATE JUDGE

CC:

T h e Honorable Kenneth A. Marra A ll Counsel of Record

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