Sprint Communications Company L.P. v. Time Warner Cable Inc. et al

Filing 529

MEMORANDUM AND ORDER - It is ordered that defendants' motion for review of the Clerk's taxation of costs 523 is hereby granted in part and denied in part, as set forth herein. Costs shall be taxed against defendants in favor of plaintiff in the total amount of $1,040,845.95. Signed by District Judge John W. Lungstrum on 12/3/2019. (ses)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS

SPRINT COMMUNICATIONS CO., L.P.,

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Plaintiff,
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v.
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TIME WARNER CABLE, INC., et al.,
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Defendants.
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_______________________________________)

Case No. 11-2686-JWL

MEMORANDUM AND ORDER
This matter comes before the Court on the motion by defendants (“TWC”), pursuant
to Fed. R. Civ. P. 54(d)(1), for review of the Clerk’s taxation of costs in favor of plaintiff
(“Sprint”) (Doc. # 523). As more fully set forth below, the motion is granted in part and
denied in part. The motion is granted with respect to Sprint’s costs for nine depositions
taken solely in another case; but the motion is denied with respect to Sprint’s costs for the
six other challenged depositions that were taken in the instant case. Accordingly, the costs
taxed by the Clerk shall be reduced in the amount of $17,918.85, and thus costs shall be
taxed in the total amount of $1,040,845.95.

I.

Background

Sprint filed three related patent infringement actions in this Court, against TWC and
two other companies, which cases were consolidated for pretrial purposes. Plaintiff filed

a fourth infringement suit, against Cox Communications, Inc. and related entities
(collectively “Cox”), which was litigated in federal court in Delaware, and which the
parties settled, with each party bearing its own costs. A jury found against TWC and
awarded damages to Sprint, and judgment was eventually awarded by this Court in favor
of Sprint in the amount of $145,983,548.00. The Federal Circuit affirmed the judgment.
Sprint submitted a bill of costs (with a supporting brief) in the amount of
$1,157,002.05. TWC objected to various items, including with respect to costs for “over a
dozen” depositions taken in the Cox case in Delaware, which TWC did not attend, after
discovery had closed in the present case. TWC specifically identified only one such
deposition, however. In its reply, Sprint argued that the costs of any such depositions
should be taxed, but it withdrew a few other items, and it reduced its request for costs to a
total amount of $1,117,783.15. On September 30, 2019, the Clerk taxed costs in favor of
Sprint in the amount of $1,058,764.80. The Clerk denied Sprint certain requested costs,
including some costs relating to depositions.1 TWC then filed the instant motion for
review. Specifically, TWC objects to the taxation of costs with respect to 15 depositions
(referenced by particular invoices submitted by Sprint), on the basis that such depositions
were taken in the Delaware case against Cox and involved witnesses that had already been
deposed in the present action.

1

The Clerk notified the parties by email of the bases for the rejection of certain
costs. Because the Court has referenced that email and the Clerk’s mark-up of Table B,
the Clerk is instructed to file those two items as exhibits to the bill of costs previously filed.
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II.

Governing Standards

Fed. R. Civ. P. 54(d) states that costs should be allowed to the prevailing party. See
id. The applicable statute provides that “[f]ees for printed or electronically recorded
transcripts necessarily obtained for use in the case” may be taxed as costs. See 28 U.S.C.
§ 1920(2). Such costs must be “reasonably necessarily to the litigation of the case.” See
In re Williams Sec. Litig. – WCG Subclass, 558 F.3d 1144, 1148 (10th Cir. 2009) (quoting
Mitchell v. City of Moore, Okla., 218 F.3d 1190, 1204 (10th Cir. 2000)).

That

determination is based not on hindsight but on the facts and circumstances at the time the
cost was incurred. See id. The “necessarily obtained” standard, however, “does not allow
a prevailing party to recover costs for materials that merely added to the convenience of
counsel or the district court.” See id. at 1247 (internal quotations and citation omitted).
The prevailing party bears the burden of establishing the amount of costs to which it is
entitled. See id. at 1148. Whether materials are necessarily obtained for use in the case
present a question of fact for the district court, which possesses broad discretion in
awarding costs. See id. at 1148-49.

III.

Depositions Taken Also in This Case

TWC challenges costs for 15 depositions. In its response, Sprint notes that six of
the depositions (Casner, Gilliam, Hodge, M. Nelson, Patterson, Setter) were taken not only
in the Delaware action but also in the present action involving TWC, as demonstrated by
the caption on the first page of each transcript. TWC does not dispute that those depositions
were also noticed in the present action. Moreover, the transcripts demonstrate that counsel
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for TWC appeared at four of the depositions, and TWC’s counsel asked questions at three
depositions. Thus, the premise for TWC’s objection does not hold with respect to six of
the 15 depositions.
TWC nonetheless argues in its reply brief – albeit without citation to authority – that
Sprint should be deemed to have waived this argument (that the six depositions were in
fact taken in the present case) because Sprint failed to make that point in conferring with
TWC and in briefing the issue to the Clerk. The Court declines to circumvent a decision
on the merits in that way, however, as it is not persuaded that the equities entirely favor
TWC on this issue. In short, TWC also contributed to any confusion. It is true that after
TWC raised the issue, Sprint failed to appreciate that some of the invoices that referred
only to the Delaware case were for depositions that also were taken in the Kansas cases;
but TWC has not shown that it identified the particular invoices (out of 275 invoices
submitted by Sprint for depositions) to which it objected. Then, in its brief to the Clerk,
when TWC objected to costs for “over a dozen” depositions taken in the Delaware case, it
specifically identified only one such deposition. Thus, Sprint responded only to TWC’s
general argument that costs should not be taxed for depositions taken only in the Delaware
case.
TWC then filed the instant motion, which includes a chart identifying the 15
challenged depositions (with the dates of the depositions, the cost amounts for the
transcripts and videos, and the identifying numbers for particular invoices submitted by
Sprint).

TWC apparently did so, however, without checking to see whether those

depositions were also noticed in the present case, and without noticing that its counsel had
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attended four of the depositions. This is despite the clue offered by the deposition dates,
as the six depositions noticed in this action occurred prior to the end of fact discovery
(somewhat contradicting TWC’s argument that the depositions generally took place well
after discovery had ended). Accordingly, the Court will not penalize Sprint by refusing to
consider the actual merits of its claim for costs for these six depositions.2
TWC also argues in its reply brief that Sprint has failed to satisfy its burden to show
that the transcripts and videos for these six depositions were necessarily obtained for the
present litigation. The Court rejects this argument. As it made clear in its motion, TWC
did not object generally to such costs for depositions taken in the present case. These six
witnesses were identified as persons with relevant information, and there is no suggestion
that earlier depositions of the same witnesses made these depositions unnecessary. The
Court in its discretion overrules TWC’s objection to the Clerk’s taxation of costs for these
six depositions taken in the present case.

IV.

Depositions Taken Only in the Delaware Case

Sprint does not dispute that the other nine challenged depositions (Ball, Barland,
Houh, Kalinoski, Min, T. Nelson, Overy, Rao, Wicker) were taken only in the Delaware
case, after the close of fact discovery in the present case, without notice to or participation

2

Although Sprint suggests that its request for costs represents only a small fraction
of the amount of the judgment, the $1.1 million requested is still quite significant in an
absolute sense, and thus the issues deserve careful attention by the parties and the Court.
In that respect, the Court is disappointed by the apparent lack of rigor and scrutiny
employed by both sides in addressing this issue.
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by TWC3, of witnesses who had already been deposed in the present case. TWC argues
that costs should not be taxed for such depositions.
First, the Court will not disallow the costs solely because the depositions were taken
in a different action. The operative statute does not require that the transcripts be for
proceedings in the instant case; rather, it requires only that they be “necessarily obtained
for use” in the instant case. See 28 U.S.C. § 1920(2); see also Davis v. Williams, 2010 WL
1955935, at *2 (S.D. Ga. May 13, 2010) (noting that the statute does not require the
deposition to have been taken in the case sub judice). Although some courts have denied
costs for transcripts of proceedings in other cases, those courts merely determined that the
transcripts were not necessarily obtained in their particular circumstances. See, e.g., Ayala
v. Rosales, 2016 WL 2659553, at *7 (N.D. Ill. May 9, 2016) (obtaining transcript was
merely convenient, not necessary); Lockridge v. Per Mar Sec. & Research Corp., 2015 WL
1000689, at *1 (D. Minn. Mar. 5, 2015) (allowing costs for depositions in a separate case
presents concerns; on the record before it, court could not conclude that the depositions
were reasonably necessary for instant litigation); Thein v. Feather River Comm. Coll., 2013
WL 4012637, at *22 (E.D. Cal. Aug. 6, 2013) (party did not show how cases were related);
Coach, Inc. v. Siskiyou Buckle Co., 2012 WL 13055491, at *2 (D. Or. Oct. 30, 2012) (party
did not explain why court transcripts in other case were necessarily obtained); Pickett v.
Tyson Fresh Meats, Inc., 2004 WL 3712721, at *4-5 (M.D. Ala. Aug. 3, 2004) (although
obtaining transcript may have been prudent, it was not necessary for proper presentation of

3

The Court does not agree with Sprint that TWC was somehow represented at those
depositions by counsel for Cox or the other defendant companies.
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the case). TWC has not cited any authority indicating that such costs could never be
allowed.
Moreover, some courts have allowed such costs to be taxed, particularly in
situations in which the party was merely obtaining a copy of a transcript or the other
deposition was used to avoid having to take another deposition. See Phathong v. Tesco
Corp. (US), 2012 WL 4668241, at *1 (D. Colo. Oct. 3, 2012) (allowing costs for
depositions taken in related action; courts have allowed such costs, and parties had
stipulated to the use of the depositions in the instant action, to avoid retaking the
depositions); Blickley v. Ford, 2011 WL 1376972, at *1 (M.D. Fla. Apr. 12, 2011) (cost of
transcribing testimony in other cases was properly taxable as necessarily obtained for use
in the case, even if originally intended for use in another case); Davis, 2010 WL 1955935,
at *2 (Section 1920 does not require that the deposition have been taken in the case sub
judice; allowing the cost as necessarily obtained for use in the case); Glenayre Electronics,
Inc. v. Jackson, 2003 WL 21947112, at *2 (N.D. Ill. Aug. 11, 2003) (costs may be
recovered even for depositions taken in a different case; costs allowed, as the opposing
party was present at the depositions, had the opportunity to examine the deponents, and
actually used the depositions at trial), aff’d, 95 F. App’x 344 (Fed. Cir. 2004); DeKalb
Genetics Corp. v. Pioneer Hi-Bred Int’l, 2002 WL 1969666, at *3 (N.D. Ill. Aug. 26, 2002)
(no reason not to award costs for depositions in related cases involving the same parties
that were reasonably necessary for use in the instant cases); EEOC v. Sears, Roebuck &
Co., 138 F.R.D. 523, 527 (N.D. Ill. 1991) (costs allowed for transcripts of depositions taken
in other actions that were necessarily obtained for use in the case); Surface v. Commerce
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Bank of Hutchinson, 1990 WL 129218, at *5 (D. Kan. Aug. 17, 1990) (Rogers, J.)
(allowing costs for depositions and testimony in other cases involving the same parties and
issues; noting that obtaining such transcripts “was entirely proper and probably was less
expensive than the taking of new depositions”).
Accordingly, the Court will apply the governing standard and determine whether
Sprint necessarily incurred these deposition costs for use in the instant case. The Court
first rejects Sprint’s argument that particular stipulations allowed the depositions to be used
in the instant case. Sprint cites to stipulated protective orders entered both in the present
case and in the Cox case in Delaware. Those orders, however, did not allow for the
unrestricted use of depositions taken in other cases; rather, they merely provided that matter
designated as confidential could be used in other cases without violating the orders.
Sprint next argues that these nine deponents were also witnesses in the instant case
and that the depositions taken in the Delaware case involved the same or similar issues.
Sprint argues that TWC was free to use the Delaware deposition testimony to impeach
these witnesses at trial, but Sprint has not identified any other way in which the deposition
testimony was likely to be used in the instant case. As previously noted, these witnesses
had already been deposed in the present action, and discovery in this Court had already
closed when the depositions were taken and these costs were incurred. The fact that the
depositions were not taken in the other case as a substitute for depositions in the present
action distinguishes this case from many of the cases cited above in which courts allowed
the costs. Thus, although Sprint may well have wanted these deposition transcripts for
possible use in this case, the Court concludes that they were obtained more for convenience
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than out of necessity with respect to the case involving TWC. Moreover, as a pure matter
of causation, it is likely that the transcripts and video recordings were obtained more for
use in the Delaware case than for use in this case. For these reasons, the Court in its
discretion declines to award costs to Sprint for expenses incurred for these nine depositions.
Accordingly, the Court will remove the costs allowed by the Clerk for these
depositions. The Clerk already disallowed some costs relating to these depositions.
Removing the remaining costs means that the award of taxable costs should be reduced in
the amount of $17,918.85.4 The Court therefore awards costs to Sprint in the total amount
of $1,040,845.95.

IT IS THEREFORE ORDERED BY THE COURT THAT defendants’ motion for
review of the Clerk’s taxation of costs (Doc. # 523) is hereby granted in part and denied
in part, as set forth herein. Costs shall be taxed against defendants in favor of plaintiff in
the total amount of $1,040,845.95.

This amount differs from the total of the figures contained in the chart in TWC’s
motion for these nine depositions. As an example of the lack of rigor noted above, six of
the 18 figures (and one of the dates) in the chart for these depositions do not match the
figures from the invoices and from the itemized table submitted by Sprint (Table B),
discrepancies discovered by the Court after a simple cross-check. The Court has also
disallowed two additional items (besides transcript and video costs) submitted by Sprint in
its deposition costs that the Clerk originally allowed (Houh, cost of exhibits; Min,
appearance fee).
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IT IS SO ORDERED.

Dated this 5th day of December, 2019, in Kansas City, Kansas.

s/ John W. Lungstrum
John W. Lungstrum
United States District Judge

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