SP Technologies, LLC v. Garmin Limited et al

Filing 393

MEMORANDUM Opinion and Order: For the reasons stated in the Memorandum, Defendants' motions for a bill of costs [362, 363] are granted in part and denied in part. The court awards TomTom $14,202.99 and Garmin $11,729.65 in costs. Signed by the Honorable Rebecca R. Pallmeyer on 1/10/2014: Mailed notice(etv, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
SP TECHNOLOGIES, LLC
Plaintiff,
v.
GARMIN INTERNATIONAL, INC. and
TOMTOM, INC.,
Defendants.

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No. 08 CV 3248
Judge Rebecca R. Pallmeyer

MEMORANDUM OPINION AND ORDER
Plaintiff SP Technologies, LLC ("SPT") is the assignee of U.S. Patent Number 6,784,873
(the "'873 Patent"), a method and medium for entering data onto a computer via a touch-screen
keyboard. In 2008, SPT brought this action charging Defendants Garmin International, Inc.
("Garmin") and TomTom, Inc. ("TomTom"), makers of touch-screen navigation devices, with
infringing the '873 patent.

Defendants moved for summary judgment on the grounds of

invalidity, arguing that the relevant claims of the '873 patent were anticipated by an earlier
navigation system that was sold with the 1996 Acura RL, several years before the application
for the '873 Patent. The court granted Defendants' motion for summary judgment. Defendants
now seek recovery of costs.

SPT objects, arguing that Defendants have requested costs that

are not authorized by 28 U.S.C. § 1920 and have otherwise overstated the amounts to which
they are entitled. For the reasons explained here, Defendants' motions [362, 363] are granted
in part and denied in part.
DISCUSSION
Federal Rule of Civil Procedure 54(d)(1) provides that "[c]osts other than attorneys' fees
shall be allowed as of course to the prevailing party unless the court otherwise directs."
FED.R.CIV.P. 54(d)(1). Rule 54(d) "establishes a presumption in favor of a cost award" within
certain categories. Cefalu v. Village of Elk Grove, 211 F.3d 416, 427 (7th Cir. 2000). That
presumption is a strong one. See Contreras v. City of Chicago, 119 F.3d 1286, 1295 (7th Cir.

1997); Congregation of the Passion, Holy Cross Province v. Touche, Ross & Co., 854 F.2d 219,
222 (7th Cir. 1988) ("the presumption is difficult to overcome"). The relevant statute, 28 U.S.C.
§ 1920 ("Section 1920"), permits a prevailing party to recover (1) fees of the clerk and marshal;
(2) fees of the court reporter for printed or electronically recorded transcripts necessarily
obtained for use in the case; (3) fees and disbursements for printing and witnesses; (4) fees for
exemplification and copies of papers necessarily obtained for use in the case; (5) docket fees
under 28 U.S.C. § 1923; and (6) compensation of court-appointed experts and interpreters. 28
U.S.C. § 1920; Harney v. City of Chicago, 702 F.3d 916, 927 (7th Cir. 2012). In assessing a bill
of costs, the court considers whether the prevailing party has identified expenses of the type
authorized by the statute and whether the costs were reasonably incurred. Majeske v. City of
Chicago, 218 F.3d 816, 824 (7th Cir. 2000) (citing Weeks v. Samsung Heavy Indus. Co., Ltd.,
126 F.3d 926, 945 (7th Cir. 1997)).

The party opposing the award bears the burden of

demonstrating that costs are not appropriate.

Harney, 702 F.3d at 927 (citing Beamon v.

Marshall & Ilsley Trust Co., 411 F.3d 854, 864 (7th Cir. 2005)).
The court will address SPT's objections in turn.
I.

Pro Hac Vice Filing Fees
TomTom and Garmin each seek reimbursement of $200.00 in costs paid for the pro hac

vice admission for their out-of-state attorneys. Such filing fees are not taxable. See Liquid
Dynamics Corp. v. Vaughan Co., Inc., No. 01 C 6934, 2002 WL 31207212, at *1 (N.D. Ill. Oct. 2,
2002); Int'l Oil, Chem. & Atomic Workers, Local 7-517 v. Uno-Ven Co., No. 97 C 2663, 1998 WL
895557, at *4 (N.D. Ill. Dec. 14, 1998). Defendants have acknowledged that such costs are not
normally recoverable, but nonetheless argue that such costs should be taxed because the fees
were incurred as result of SPT's decision to file suit in this district. (TomTom Reply [382] at 11;

2

Garmin Reply [383] at 3.) Section 1920 makes no such exception, and the court thus declines
to award costs for pro hac vice filing fees.
II.

Summons and Subpoenas
SPT objects to Garmin's request for $1,129.24 for costs of service of process. (Pl.'s

Resp. to Garmin Bill of Costs [379] at 2-3.) Garmin relied upon private process servers. The
Seventh Circuit has held that fees for private process servers are taxable as costs under 28
U.S.C. § 1920(1), provided that the rates charged by the process servers do not exceed those
charged by the U.S. Marshals to effectuate service of process. See Collins v. Gorman, 96 F.3d
1057, 1060 (7th Cir.1996) ("[T]he prevailing party [can] recover service costs that do not exceed
the marshal's fees, no matter who actually effected service.").

Pursuant to 28 C.F.R. §

0.114(a)(3) (effective through Oct. 29, 2013), when the U.S. Marshals serve process personally,
it costs $55.00 per hour for each item served plus travel costs and any other out-of-pocket
expenses. Garmin submitted eleven invoices from private process servers in support of its
request for summons and subpoena costs. (Service Invoices [363-1], Ex. B to Garmin Bill of
Costs, at 9-19.) None of these invoices state the hourly rate charged by the process server, the
actual time spent serving process, or any information regarding travel or expenses. The court
cannot determine whether the amount requested for service of process is taxable without
information regarding the amount of time the private process servers spent serving process and
how far they traveled to do so. See Vardon Golf Co., Inc. v. Karsten Mfg. Corp., No. 99 C 2785,
2003 WL 1720066, at *8 (N.D. Ill. Mar. 31, 2003). The costs appear to be consistent with what
Marshals might charge, but the court "will not award potentially unjustified costs based upon
speculation." Id. Instead, the court will award the minimum charge of the U.S. Marshals:
$55.00 per incident of service for a total of $550.00.
III.

Transcripts

3

A.

Hearing Transcripts

TomTom requests $368.20 for copies of various hearing transcripts.

Specifically,

TomTom seeks $109.20 for the transcript of the April 10, 2009 Markman hearing, and $259.00
for other hearings and status conferences in this case. (TomTom Reply [382] at 2-3.) SPT
contends that TomTom has not provided an explanation of what type of hearings these were, or
why obtaining transcripts for them was reasonable and necessary to the litigation. (Pl's Resp. to
TomTom Bill of Costs [376] at 2-3.) In response, TomTom has explained that the transcript of
the Markman hearing was obtained so that TomTom's counsel and experts could consult that
transcript when preparing expert reports or summary judgment motions. (Id. at 3.) TomTom
ordered additional transcripts to provide its out-of-state counsel with a record of those hearings,
and for use in filing and responding to various motions filed in this case. (Id.) The court is
satisfied that these costs were reasonably and necessarily incurred and should be taxed.
Garmin also seeks $369.55 for copies of various hearing transcripts. Local Rule 54.1(b)
provides that "the costs of the transcript or deposition shall not exceed the regular copy rate as
established by the Judicial Conference of the United States and in effect at the time the
transcript or deposition was filed unless some other rate was previously provided for by order of
court." Garmin has explained that the invoices were for hearings that occurred close in time to
the filing of a motion or some other event for which the transcript was required. (Garmin Reply
at 4-5.) The court is satisfied that these costs were reasonably and necessarily incurred and
that expedited rates were justified.
B.

Deposition Transcripts

Recovery of costs for deposition transcripts is authorized by Section 1920(2), which
permits an award of costs for transcripts "necessarily obtained for use in the case." 28 U.S.C. §
1920(2). The court awards deposition charges if the deposition appears reasonably necessary

4

in light of the facts known at the time of the deposition. See Little v. Mitsubishi Motors N. Am.,
Inc., 514 F.3d 699, 702 (7th Cir. 2008). TomTom seeks $14,094.35 for the depositions. SPT
first objects to the costs for Courtney Sherrer ($975.49, 4/27/091), John Walker ($337.58), Peter
Boesen ($772.90), Jeffrey Harty ($1,134.60), Thomas Mann ($206.80, 6/8/09), and Jocelyn
Vigreux ($584.572, 8/5/09), because the invoices TomTom submitted initially included only the
total cost, and did not provide such details as number of pages, rates, and the type of transcript
ordered. (Pl.'s Resp. at 3-5.) In its reply, TomTom has provided the number of pages and has
calculated the approximate cost per page for the disputed depositions as follows:
Deponent
Courtney Sherrer

Pages
193

Amount Paid
Approx. Cost/Page
$975.40
$5.05

John Walker

51

$337.58

$6.61

Peter Boesen

294

$772.90

$2.62

Jeffrey Harty

228

$1,134.60

$4.97

Thomas Mann

38

$206.80

$5.44

Kathleen Kedrowski

341

$1,949.19

$5.71

Michael Shamos

186

$1,208.22

$6.49

SPT also contends more generally that all transcription costs sought by Defendants are
excessive. Local Rule 54.1(b) (quoted above) generally limits transcription costs to those
established by the Judicial Conference of the United States. N.D. Ill. L.R. 54.1(b). The Seventh
Circuit has held that the Judicial Conference Rate applies to deposition charges by private court
reporters. See Cengr v. Fusibond Piping Sys., Inc., 135 F.3d 445, 453-54 (7th Cir. 1998). The
Judicial Conference Rate is $3.65 per page for original deposition transcripts and $0.90 for

1

deponent.

Where included, dates specify between multiple depositions for a single

copies.2 Therefore, unless the rate charged was less than the Judicial Conference rate, the
court will award $3.65 per page for original deposition transcripts, $0.90 for copies and $4.55
per page where the invoice indicates an original and a copy. TomTom will be awarded
transcription costs as follows:
Deponent

Pages

Cost/Page

Courtney Sherrer

197

$0.90

$177.30

John Walker

59

$0.90

$53.10

Peter Boesen

294

$0.90

$264.60

Jeffrey Harty

228

$0.90

$205.20

Thomas Mann

40

$0.90

$36.00

Kathleen Kedrowski

341

$3.65

$1,244.65

Michael Shamos

186

$3.65

$678.90

Peter Geelen

258

$3.65

$941.70

Jocelyn Vigreux (5/28/09)

234

$0.90

$210.60

Randal Davis (3/3/10)

264

$2.45

$646.80

Joseph Gemini

362

$3.65

$1,321.30

Peter Nelson (3/23/10)

316

$0.90

$284.40

Peter Nelson (4/9/10)

301

$3.65

$1,098.65

TOTAL

2

trnscrpt.htm

Amount Awarded

$7,163.20

See

http://www.ilnd.uscourts.gov/home/clerksoffice/CLERKS_OFFICE/CrtReporter/

111

(See TomTom Dep. Trans. Invoices, Ex. A to TomTom Bill of Costs; TomTom Reply at 3-4.)

1

11

igreux was deposed a second time after this court granted a motion to compel

brought by SPT. (See Jul. 27, 2009 Minute Order [245]). TomTom does not seek costs for this
deposition. (TomTom's Bill of Costs at 2, n. 1; TomTom Reply at 3, n. 2.)

The court awards Garmin the following transcription costs:
Deponent
Min Kao

Cost/Page
$2.85

Amount Awarded
$205.20

Courtney Sherrer

197

$4.55

$896.35

John Walker

59

$4.55

$268.45

Peter Boesen

328

$4.00

$1,312.00

Jeffrey Harty

252

$4.55

$1,146.60

Thomas Mann (3/30/10)

232

$4.55

$1,055.60

Thomas Mann (6/8/09)

40

$4.55

$182.00

Kathleen Kedrowski
Randall Davis
Randal Davis (3/3/10)
Randal Davis
Joseph Gemini
Scott Moore
David Ayers
Kevin Rauckman

341
201
311
264
362
205
89
68

$0.90
$0.90
$0.90
$2.45
$0.90
$0.90
$0.90
$0.90

$306.90
$180.90
$279.90
$646.80
$325.80
$184.50
$80.10
$61.12

Daniel Bartel

178

$0.90

$160.20

Glenn Peterman

127

$0.90

$114.30

Peter Nelson (3/23/10)

316

$0.90

$284.40

Peter Nelson (4/9/10)
V

Pages
72

301

$0.90

$270.90

TOTAL
$7,962.10
3See Garmin Dep. Trans. Invoices, Ex. C to Garmin Bill of Costs; Garmin Reply at 7-8.)
C.

Delivery Costs4

V

3

PT separately object to the transcript costs related to Min Kao in their entirety.

SPT objects on the grounds that "[t]his deposition was ordered as a sanction to Garmin for its
failure to timely produce numerous license agreements." (Pl's Resp. to TomTom Bill of Costs at
12.) The fact that the court ordered Kao's deposition has no bearing on the propriety of an
award of Garmin's transcription costs, however. SPT's objection is overruled.

TomTom's request for costs associated with the shipping or delivery of the transcripts of
Pieter Geelen ($38.00), Jocelyn Vigreux ($15.00), and Randall Davis ($64.20) "[U]nder the
Judicial Conference guidelines, postage costs are considered ordinary business expenses that
may not be charged in relation to obtaining transcripts." Alexander v. CIT Tech. Fin. Servs.,
Inc., 222 F. Supp. 2d 1087, 1091 (N.D. Ill. 2002). TomTom acknowledges that such cost are
generally not taxable. (TomTom Reply at 5.) SPT's objection to shipping costs totaling $117.20
is sustained.
D.

Expedited Transcripts

SPT objects to $2,278.08 in expedited deposition transcript charges associated with the
depositions of SPT's experts Joseph Gemini and Peter Nelson. (Pl.'s Resp. at 7-8.) In
response to SPT's argument that TomTom has failed to demonstrate that expedited transcripts
were reasonable and necessary, TomTom explains that expedited transcripts were necessary to
enable counsel and experts to review the transcripts in preparing for subsequent rebuttal
depositions. (TomTom Reply at 5-6.) Specifically, SPT's damages expert, Gemini, was
deposed on March 9, 2010, and TomTom's rebuttal damages expert, Kedrowksi, was deposed
eight days later on March 17, 2010. SPT's technical expert, Dr. Nelson, was deposed on March
23, 2010 on his non-infringement expert report, and TomTom's rebuttal non-infringement expert,
Shamos, was deposed two days later on March 25, 2010. (Id. at 6.) TomTom's explanation
satisfies the court that expedited transcripts for these experts were appropriate. SPT's objection
is overruled.
E.

4

5.)

Other Transcript Formats

Garmin has withdrawn its request for $33.16 in delivery costs. (Garmin Reply at

In addition to the cost of the original and a copy of the transcripts, TomTom seeks
recovery of the costs of condensed transcripts, rough ASCII transcripts, and LiveNote LEF for
the depositions of Peter Geelen ($558.75), Jocelyn Vigreux ($352.50, 5/28/09), Randall Davis
($264.00, 3/3/10), Joseph Gemini ($543.00), Peter Nelson ($474.00, 3/23/10 and $451.50,
4/9/10). These costs are considered supplementary when sought in addition to the
stenographic deposition transcript. See Mother & Father v. Cassidy, 338 F.3d 704, 712 (7th Cir.
2003) (Section 1920(2) "applies only to court reporter fees and photocopies of deposition
transcripts"); see also Shanklin Corp. v. Am. Packaging Mach., Inc., No. 95 C 1617, 2006 WL
2054382, at *4 (N.D. Ill. July 18, 2006); Solon v. Kaplan, No. 00 C 2888, 2004 WL 1672909, at
*2 (N.D. Ill. July 23, 2004); Fait v. Hummel, No. 01 C 2771, 2002 WL 31433424, at *2 (N.D. Ill.
Oct. 30, 2002). TomTom asserts that these transcripts were used in digesting deposition
testimony to prepare for subsequent expert depositions, and that Live Note assisted in taking
and defending the depositions because the depositions involved technical or business
testimony. (TomTom Reply at 6.) These reasons do not rise above the mere convenience of
TomTom's attorneys. SPT's objection to these costs totaling $2,643.75 is sustained.
Garmin also requests reimbursement for ASCII disks, rough disks, draft transcripts
(ASCII), ETV disks, condensed e-transcripts, and word indexes totaling $4,685.50. Like
TomTom, Garmin explains that the additional formats were used in digesting deposition
testimony to prepare for subsequent expert depositions, aid in the preparation of briefs and
motions, and anticipated to assist referencing the transcript both before and during trial.
(Garmin Reply at 6-7.) Again, it appears these additional formats were for counsel's
convenience. SPT's objection to this amount, $4,685.50, for additional transcript costs, is also
sustained.
F.

Videotaping

TomTom also requests costs for the videotaping of the depositions of Joseph Gemini
($1,300.00) and Peter Nelson ($1,300.00, 3/23/10 and $1,235.00, 4/9/10). SPT argues that
both Gemini and Nelson are experts retained by SPT, and there is no indication that these
witnesses would not have been available for trial. Generally, "[c]ourts in this circuit will not
award costs for videotaping depositions where a transcript was also purchased." Delgado v.
Village of Rosemont, No. 03 C 7050, 2006 WL 3147695, at *8 (N.D. Ill. Oct. 31, 2006); Solon,
No. 00 C 2888, 2004 WL 1672909, at *2; but see Little, 514 F.3d at 701-02 (holding that under
the 1993 amendment to Federal Rule of Civil Procedure 30 a court may award costs for both
videotaping and transcribing a deposition)). A party may, however, recover costs for both a
videotaped deposition and transcript of the same deposition provided that both are reasonably
necessary. Vardon Golf Co., Inc., No. 99 C 2785, 2003 WL 1720066, at *9 (citation omitted).
TomTom seeks an award for both the stenographic transcripts and the videotaping, but has
made no showing that both a videotaped deposition and transcript of the these depositions were
reasonably necessary. Garmin similarly seeks $4,693.75 for the videotaping of eight
depositions and has also made no showing that it required both a transcript and a videotape of
these depositions. The court sustains SPT's objections to the $3,835.00 sought by TomTom
and to the $4,825.85 requested by Garmin (including $132.10 in Missouri state tax to which SPT
separately objected).
G.

Court Reporter Appearance Fees

SPT also objects to TomTom's request for court reporter appearance fees for the
depositions of Gemini ($169.36) and Nelson ($136.00, 3/23/10 and $114.40, 4/9/10).5 (Pl.'s

5

SPT objected to taxation of the court reporter's airfare ($1,512.00) incurred in

traveling to Amsterdam for the deposition of Pieter Geelen. TomTom had agreed to split these

Resp. to TomTom Bill of Costs at 10-11.) Pursuant to Local Rule 54.1(b), "[c]ourt reporter
appearance fees may be awarded in addition to the per page limit, but the fees shall not exceed
the published rates on the Court website unless another rate was previously provided by order
of court." N.D. Ill. L.R. 54.1(b). The current published rate is $110.00 for one-half day (4 hours
or less), and $220.00 for a full-day attendance fee.6 SPT objects because the invoices
TomTom has attached to its fee petition do not include the number of hours spent by the court
reporter or the hourly rate charged. TomTom states in its reply, however, that Gemini's
deposition lasted a full day and Nelson was deposed for two full days. (TomTom Reply at 7.)
The court overrules SPT's objection to an award of these costs because they are within the
limits set by Local Rule 54.1.
Garmin, too, seeks recovery of $1,092.00 in court reporter appearance fees, incurred for
the following depositions: Thomas Mann ($238.00, 3/30/09, 7.5 hours; $62.00, 6/8/09, 2 hours);
Jeffrey Harty ($190.00, 6 hours); John Walker ($62.00, 2 hours); Courtney Sherrer ($190.00, 6
hours); and Peter Boesen ($350.00, 10 hours). (Garmin Court Reporter Invoices [363-1], Ex. C
to Garmin Bill of Costs, at 21-23, 27, 45, 49.) The fees sought for the first Mann deposition and
for the Boesen deposition exceed the limits set by Local Rule 54.1, and thus will be reduced to
$220.00 each. Accordingly, Garmin will be awarded $944.00 in court reporter appearance
costs.
H.

Exhibit Copies

costs with SPT prior to the deposition, and accordingly, TomTom has withdrawn its request for
these costs. (TomTom Reply at 5, n. 3.)
6

See

CrtReporter/trnscrpt.htm

http://www.ilnd.uscourts.gov/home/clerksoffice/CLERKS_OFFICE/

TomTom seeks $1,918.95, and Garmin seeks $3,318.80, for copies of deposition
exhibits. Under Section 1920(4) the court may tax as costs "[f]ees for exemplification and
copies of papers necessarily obtained for use in the case." Courts interpret this section to mean
that photocopying charges for discovery and court copies are recoverable, but charges for
copies made for attorney convenience are not. See Kulumani v. Blue Cross Blue Shield Ass'n,
224 F.3d 681, 685 (7th Cir. 2000); McIlveen v. Stone Container Corp., 910 F.2d 1581, 1584 (7th
Cir. 1990). SPT asserts that all of the exhibits used in the depositions were produced during
discovery by the three parties. (Pl.'s Resp. to TomTom Bill of Costs at 9-10; Pl.'s Resp. to
Garmin Bill of Costs at 8-9.) SPT points out that Defendants took several of the depositions,
and presumably had a copy of the exhibits they marked. SPT also notes that for the depositions
taken by its counsel (Geelen, Vigreux, and Davis), SPT provided Defendants' counsel with
copies of the marked exhibits. (Pl.'s Resp. to TomTom Bill of Costs at 10; Pl.'s Resp. to Garmin
Bill of Costs at 9.) Defendants thus had all of the deposition exhibits in their possession, SPT
urges, and should not be permitted to recover costs for additional copies obtained for the
convenience of the attorneys. See Cengr, 135 F.3d at 456 ("Because [defendant] was already
in possession of the deposition exhibits—plaintiff provided extra copies of the exhibits to
defendant at the deposition and produced the same exhibits during discovery—we will not allow
[defendant] to recover the costs of copying the 60 pages of exhibits ($19.20)."); Srail v. Village
of Lisle, No. 07 C 2617, 2008 WL 5272459, at *3 (N.D. Ill. Dec. 15, 2008) ("[Defendant] has not
shown that the deposition exhibits were anything other than extra copies of documents already
in its possession. As a result, it has not shown that the exhibits were reasonably necessary.")
The court agrees. The costs of the exhibit copies will not be charged to SPT.
IV.

Witness Fees
A.

Witness Travel Expenses

TomTom seeks an award of $34,459.73 for witness fees.7 SPT first objects to
TomTom's request for $462.20 for the airfare and hotel and $267.00 for subsistence for Jocelyn
Vigreux's May 28, 2009 deposition, and $1,144.00 in travel expenses for its expert Michael
Shamos.

(Pl.'s Resp. to TomTom Bill of Costs at 12-13.) Vigreux, TomTom's president,

resides in Boston, and flew to Washington, D.C.—where TomTom's attorneys are located—for
his deposition. (Id. at 13.) Vigreux traveled to Washington at TomTom's request, not to
accommodate SPT, whose attorneys are located in Chicago. (Id.) Shamos, who resides in
Pittsburgh, Pennsylvania, was also deposed in Washington, D.C. (Id.) SPT contends that it
should not have to pay for the witness travel to Washington, D.C. because the depositions were
held there for the convenience of TomTom's attorneys. (Id.) TomTom responds that travel
costs would have been incurred by at least one party regardless of where the depositions were
held (TomTom Reply at 8), but SPT's attorneys, who traveled to Washington for the depositions,
could presumably have traveled to Boston and Pittsburgh instead. In short, the witness's travel
expenses would not have been incurred if Vigreux and Shamos had been deposed in their
home locations. As it was TomTom who elected to have these depositions take place in
Washington, D.C., SPT's objections to costs associated the witnesses' travel and lodging are
sustained. See McBrian, Inc. v. Liebert Corp., 173 F.R.D. 491, 493 (N.D. Ill. 1997).
Similarly, Garmin seeks $925.64 in costs for its expert Randall Davis to travel from
Massachusetts, where he resides, to Garmin's office in Kansas City, Missouri. Garmin contends

7

TomTom originally sought $34,509.73, but has adjusted that figure to $34,459.73 based

on SPT's objection to $50.00 in expenses identified on the invoice submitted by TomTom's
expert Kathleen Kedrowski. As those expenses were not itemized, TomTom has withdrawn its
request to tax those expenses. (TomTom Reply at 8, n. 4.)

that Davis was not deposed in Kansas City for the convenience of its own attorneys, but rather,
because it was the most convenient location for Davis and opposing counsel. (Garmin Reply at
9-10.) Garmin offers no support for that statement, however, and SPT's objection to recovery of
the expenses for this witness's travel and lodging is also sustained.
B.

Expert Fees

TomTom seeks $12,615.00 for the fees of its infringement expert, Shamos, and
$6,435.00 for the fees of its damages expert, Kedrowski. TomTom and Garmin agreed to split
the cost of invalidity expert, Davis. TomTom seeks $13,466.53 in costs for Davis and Garmin
seeks $12,987.50. Under Rule 54(d), district courts will not award costs that are not authorized
by statute. See Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441-43 (1987);
Republic Tobacco Co. v. N. Atl. Trading Co., 481 F.3d 442, 447 (7th Cir. 2007). TomTom here
seeks expert fees pursuant to FED. R. CIV. P. 26(b)(4)(E), which are recoverable as costs under
Rule 54(d). See Chambers v. Ingram, 858 F.2d 351, 360-61 (7th Cir. 1988) (discussing Rule
26(b)(4)(C), which as amended is Rule 26(b)(4)(E) ). Rule 26(b)(4)(E) provides that "[u]nless
manifest injustice would result, the court must require that the party seeking discovery (i) pay
the expert a reasonable fee for time spent in responding to discovery. . . ." In determining
whether expert fees are appropriate under Rule 26(b)(4)(E)(i), courts consider whether the fees
are reasonable and whether the entire cost should be borne by the opposing party. See
Chambers, 858 F.2d at 360. In other words, "[Rule 26(b)(4)(E)(i)] gives the court the discretion
to order the seeking party [to] pay the responding party a fair portion of the fees and expenses
incurred in obtaining information from the expert." Rhee v. Witco Chem. Corp., 126 F.R.D. 45,
48 (N.D. Ill. 1989).
SPT nevertheless objects to these costs, arguing that TomTom is not entitled to them
because TomTom did not signal its intentions by conditioning the expert depositions on the

reimbursement of these expenses. (Pl.'s Resp. to TomTom Bill of Costs at 16.) As SPT sees
things, TomTom is effectively making an untimely 26(b)(4)(C) motion through its bill of costs.
(Id.) The court disagrees. Rule 26(b)(4)(E) does not require a party to seek payment before the
expert is produced, and as noted, expert fees pursuant to Rule 26(b)(4)(E) are recoverable as
costs under Rule 54(d). See Chambers, 858 F.2d at 360-61. SPT also contends that it should
not have to pay TomTom's expert fees because SPT retained its own experts and thus did not
benefit from the work of TomTom's experts. (Pl.'s Resp. at 17.) Rule 24(b)(4)(C) was
"designed to 'meet the objection that it is unfair to permit one side to obtain without cost the
benefit of an expert's work for which the other side had paid, often a substantial sum.'" Rhee,
126 F.R.D. at 48. "Exercise of this discretion is dependent upon whether the seeking party is
learning about the other party's case, for purposes such as developing an effective expert cross
examination, or going beyond this to develop his own case." Id. SPT directs the court's
attention to Porter v. Creative Nail Design, Inc., No. 87 C 789, 1988 WL 37699 (N.D. Ill. Apr. 18,
1988), in which a judge of this district denied fees where the non-prevailing party had retained
its own expert. In Porter, however, the court distinguished between fees incurred in the
development of the expert's opinion, and those incurred during deposition. Id. at *2-3. The
former were deemed not recoverable because the non-prevailing party had retained its own
expert, and thus, did not depose the opponent's expert for the primary purpose of preparing its
own case. Id. at *2. Fees incurred related to the deposition, on the other hand, were awarded
because there had been no showing of manifest injustice pursuant to Rule 26(b)(4)(C)(I). Id. at
*3.
Here, SPT has made no showing of manifest injustice, and the court concludes that
TomTom is entitled to recover fees incurred for the depositions of its experts. TomTom has
explained in its reply memorandum that it is also seeking recovery of expert discovery expenses

incurred after "the time the patent went into reexamination and the PTO made its preliminary
determination rejecting the claims." (TomTom Reply at 10.) TomTom acknowledges that the
additional time for which it seeks recovery was time the experts spent preparing for their
depositions. (Id. at 10-11.) "As a general rule, courts in this Circuit have ruled that the time
experts spend preparing for depositions is not compensable under Rule 26." Royal Maccabees
Life Ins. Co. v. Malachinski, No. 96 C 6135, 2000 WL 1377111, at *5 (N.D. Ill. Sept. 25, 2000)
(citation omitted). In some circumstances, however, it may be reasonable to award those
amounts pursuant to Section 1920. See Fairley v. Andrews, No. 03 C 5207, 2008 WL 961592,
at *5 (N.D. Ill. Apr. 8, 2008); Waters v. City of Chicago, 526 F. Supp. 2d 899, 900-01 (N.D. Ill.
2007); Profile Prod., LLC v. Soil Mgmt. Tech., Inc., 155 F. Supp. 2d 880, 886 (N.D. Ill. 2001); but
see Rhee, 126 F.R.D. at 47-48.
In support of this request, TomTom and Garmin provided two invoices for Davis: the first
is for 9.5 hours in February 2010, and the second for 8.5 hours of deposition time in March 2010
and an additional 18.5 hours. (Davis Invoices, Ex. B to TomTom Bill of Costs.) Aside from the
deposition time, these invoices do not specify how the time was spent.8 Shamos's invoices
show a total of 21.3 hours: 3.2 hours on March 23, 2010; 10.1 hours on March 24, 2010; 3.5
hours on March 25, 2010; and 4.5 hours on March 25, 2010. (See Shamos Invoices, Ex. B to
TomTom Bill of Costs.) Similarly, these invoices do not include any itemization or description of
the work for which TomTom was billed. TomTom has responded that 16.8 of these hours were
spent on deposition preparation, but has not provided the court with any additional information
regarding how the time was spent. (TomTom Reply at 10-11.) Kedrowski's invoice shows
thirteen hours from February 1, 2010 until April 30, 2010. Of that time, TomTom asserts that

8

The time descriptions appear to have been redacted on these invoices.

seven hours were for deposition preparation. Again, TomTom neither offers any explanation of
what the witness did to prepare during these seven hours, nor identifies which of the remaining
six hours was for deposition attendance.
The court concludes that neither TomTom nor Garmin has provided information
necessary for the court to evaluate whether the hours sought for deposition preparation are
reasonable and whether these costs should be borne by SPT. In the absence of a sufficiently
detailed explanation of the appropriateness of the time spent on deposition preparation, the
costs of the experts' purported preparation time will be denied. See Fait, No. 01 C 2771, 2002
WL 31433424, at *4 (denying costs where invoices did not state the number or type of
documents that the expert was required to review in preparation for his deposition and
described deposition preparation sessions as "Plan for trial," "New report," "Work on arbitration,"
"Report preparation," and "Report issues."). Instead, the court awards only the time for
deposition attendance: 8.5 hours for Davis and 4.5 hours for Shamos. No costs will be awarded
for Kedrowski, as the court has no basis for determining how much time to award for her
deposition attendance.
C.

Experts' Hourly Rates
SPT also challenges the hourly rates charged by TomTom's experts, arguing that the

rates are not reasonable. Shamos's fee is $750.00 per hour for deposition testimony, and
$550.00 per hour otherwise. Davis's fee is $750.00 per hour for depositions and $700.00
otherwise. Kedrowski's fee is $495.00 per hour. In determining the reasonableness of an
expert's fee, the court may consider: "(1) the witness' area of expertise; (2) the education and
training required to provide the expert insight that is sought; (3) the prevailing rates for other
comparably respected available experts; (4) the nature, quality, and complexity of the discovery
responses provided; (5) the cost of living in the particular geographic area." Fait, No. 01 C

2771, 2002 WL 31433424, at *4 (citing McClain v. Owens–Corning Fiberglas Corp., No. 89 C
6226, 1996 WL 650524, at *3 (N.D. Ill. Nov. 7, 1996)). Other factors relevant to the decision
include the amount that the expert charged the party who retained him or her, the amoutn the
expert ordinarily charged for "related matters" and "any other factor likely to be of assistance to
the court in balancing the interests implicated by Rule 26." Fait, 2002 WL 31433424, at *4,
citing McClain, 1996 WL 650524, at *5.
Here again, TomTom and Garmin offer little evidence to support the rates requested.
Dr. Davis is a professor at the Massachusetts Institute of Technology, Dr. Shamos is a
professor at Carnegie-Mellon University, and Ms. Kedrowski is a director at Navigant
Consulting. (TomTom Reply at 10-11.) TomTom contends that all three are nationally
renowned and have decades of experience, but offers nothing more in support of the rates
claimed. (Id.) By way of comparison, SPT's damages expert, Gemini, who has twenty years of
accounting experience, charged a rate of $385.00 an hour, and SPT's technical expert, Peter
Nelson, Professor and Dean of the College of Engineering at University of Illinois at Chicago,
charged a rate of $375.00 an hour. (Pl.'s Resp. to TomTom Bill of Costs at 18.)
SPT contends that neither the technology at issue nor the damages analysis in this case
were excessively challenging or complex. (Id.) SPT observes that Davis himself opined that
"one of ordinary skill in the art" for purposes of this case is someone who "would have had at
least a Bachelor's degree in electrical engineering, computer engineering or computer science,
or a similar degree; or at least three-to-four years of experience in the computer programming
industry." (Davis Report [376-3], Ex. W to Pl.'s Resp. to TomTom Bill of Costs, ¶ 12.) Shamos,
similarly, stated that such a person would have only "an undergraduate degree in computer
science or at least two years' programming experience." (Shamos Report [376-3], Ex. X to Pl.'s
Resp. to TomTom Bill of Costs, ¶ 20). Without suggesting that anyone of ordinary skill in the art

would qualify as an expert, the court believes the rates charged by SPT's experts are sufficient
to attract necessary witnesses. The court will tax the costs for Defendants' experts' deposition
time at $385.00 per hour. TomTom and Garmin will each recover $1,636.25 for Davis's
deposition attendance, and TomTom will recover $1,732.50 for Shamos's deposition
attendance.
V.

Fees for Exemplification
SPT objects to TomTom's request for the $360.00 fee it paid to the Internet Archive to

obtain an affidavit authenticating a web page. TomTom argues that this cost was necessary
and reasonable because SPT objected to the authenticity of the website. TomTom asserts it
obtained the affidavit in lieu of deposing a witness on the authenticity of the website. While an
affidavit is not taxable as an exemplification cost under Section 1920(4), the court will permit this
cost to be recovered under Section 1920(3) as a witness fee, as TomTom obtained this affidavit
in lieu of deposing a witness.
VI.

Attorney Travel Expenses9
Finally, TomTom seeks $2,239.60 in travel expenses incurred by its attorney in traveling

for the depositions of Peter Boesen in Oxford, Wisconsin; Courtney Sheerer in St. Petersburg,
Florida; and Thomas Mann in Omaha, Nebraska. Section 1920 contains no provision permitting
cost for a lawyers' travel expenses. See 28 U.S.C. § 1920. TomTom contends that
"exceptional circumstances" warrant the taxation of travel expenses in this case. (TomTom Bill
of Costs at 3.) Neither Section 1920, nor the case law in this Circuit recognize an exception
permitting taxation of attorney travel expenses under exceptional circumstances. See McClain,

9

Garmin has withdrawn its request for $3,326.20 in costs for attorney travel. (Garmin

Reply at 13.)

No. 89 C 6226, 1996 WL 650524, at *5. Further, the court finds nothing exceptional about
traveling out of state to obtain a deposition. TomTom insists that travel to the deposition of the
inventor Peter Boesen, which TomTom asserts included multiple delays, as well as traveling to
a federal prison in rural Wisconsin where Boesen was incarcerated, constitutes exceptional
circumstances. TomTom has not, however, explained how the purported delays affected its
attorneys' travel expenses. Moreover, while travel to a federal prison for a deposition is indeed
unusual in a patent case, TomTom has made no attempt to explain why the expenses incurred
traveling to a federal prison in rural Wisconsin were more exceptional than traveling to any other
location in rural Wisconsin. The court denies TomTom's request for attorney travel expenses.
CONCLUSION
For the reasons stated above, Defendants' motions for a bill of costs [362, 363] are
granted in part and denied in part.

The court awards TomTom $14,202.99 and Garmin

$11,729.65 in costs. Itemized awards are below.
TomTom is awarded the following costs:
Cost
Fees of the Clerk
Docket Fees
Hearing Transcripts

Requested
$200.00
$20.00

Granted
$0.00
Withdrawn

$368.20

$368.20

$14,094.35

$7,163.20

Exhibit Copies

$1,918.95

$0.00

Other Transcript Formats

$2,643.75

$0.00

$117.20

$0.00

Expedited Delivery

$2,278.08

$2,278.08

Videotape

$3,835.00

$0.00

$419.76

$419.76

$1,512.00

Withdrawn

$165.00

$165.00

$27,352.29

$9,533.24

Deposition Transcripts

Delivery

Appearance Fees
Reporter Travel
Processing Fees
Total Transcript Fees

Witness Fees

$80.00

$80.00

Vigreux Travel

$719.20

$0.00

Shamos Travel

$1,144.00

$0.00

$50.00

Withdrawn

Shamos Time

$12,615.00

$1,732.50

Davis Time

$13,466.53

$1,636.25

Kedrowski Time

$6,435.00

$0.00

Affidavit
Total Witness Fees

$360.00
$34,869.73

$360.00
$3,808.75

Other Travel Costs

$2,239.60

$0.00

$64,681.62

$14,202.99

Kedrowski Expenses

TOTALS

Garmin is awarded the following costs:

Requested
Clerk

Granted

$200.00

$0.00

$1,129.24

$550.00

$369.55

$369.55

$13,974.58

$7,962.10

$33.16

Withdrawn

sks, etc.

$4,685.50

$0.00

pes/DVDs

$4,825.85

$0.00

Copies

$3,318.80

$0.00

$1,092.00

$944.00

$225.00

$225.00

cript Fees

$28,524.44

$9,500.65

witness fee

$42.75

$42.75

$925.64

$0.00

$12,987.50

$1,636.25

$42.75

Withdrawn

$13,998.64

$1,679.00

$1,864.31

Withdrawn

$1,203.84

Withdrawn

Mann

$258.05

Withdrawn

Costs

$3,326.20
$47,178.52

$0.00
$11,729.65

rvice of Summons and Subpoena
Transcripts
on Transcripts
/Delivery

nce fees
ng fees

ravel
ees
specified
ss Fees
esen
Sherrer

ENTER:

Dated: January 10, 2014

_________________________________________
REBECCA R. PALLMEYER
United States District Judge