SURFCAST INC v. MICROSOFT CORPORATION
ORDER granting in part and denying in part 319 Bill of Costs (Costs Taxed in amount of $ 103.50 against Plaintiff) By CLERK OF COURT, Christa K. Berry. (ems)
UNITED STATES DISTRICT COURT
District of Maine
ORDER ON BILL OF COSTS
Federal Rule of Civil Procedure 54(d)(1) allows prevailing parties to submit a
Bill of Costs requesting the taxation of costs that are permitted by statute, saying
“[u]nless a federal statute, these rules, or a court order provides otherwise, costs …
should be allowed to the prevailing party.” Defendant is the prevailing party in
this case in that judgment was entered dismissing the case with prejudice as to
Plaintiff Surfcast’s Amended Complaint. Judgment, ECF No. 316.
Defendant seeks costs in the total amount of $105,131.67 for transcript fees
and for the exemplification and copy costs associated with electronic discovery in
this case. Bill of Costs and Memorandum in Support of Bill of Costs, ECF Nos. 319
and 319-1. Pursuant to the authorizing statute, expenses that may be taxed are
specified in 28 U.S.C. § 1920 and must be costs that were “necessarily incurred in
the case,” pursuant to 28 U.S.C. § 1924. Having made an independent review of the
Bill of Costs in this case and Plaintiff’s Objection to the Bill (Response to Bill of
Costs, ECF No. 320), the Clerk hereby orders costs as explained below.
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Where Plaintiff has not objected to it, the parties appear to agree that the
transcript fee claimed in the amount of $103.50 should be taxed. The transcript,
which was of the August 30, 2013 Markman hearing, was produced at the request of
Defendant. Where this is a patent case, and such a hearing is essential for pretrial
pleading work, the Clerk finds that the transcript was necessarily incurred in the
case, and $103.50 will taxed against Plaintiff.
The propriety of taxing Defendant’s remaining claim of $105,028.17 for the
production of electronic discovery (ESI) is less clear. Prevailing parties are entitled
to recover the statutorily authorized costs for copying under 28 U.S.C. § 1920(4),
which states that the fees should be “for exemplification and the costs of making
copies of any materials where the copies are necessarily obtained for use in the
In its memorandum supporting the Bill of Costs, Defendant cites several
courts that have found “e-discovery costs as appropriately falling within the scope of
section 1920(4).” Memorandum in Support of Bill of Costs, ECF No. 319-1, p. 1,
citing In re Ricoh Co., Ltd Patent Litig., 661 F.3d 1361 (Fed. Cir. 2011) and others.
Id. at pp 2-3. The cases cited by Defendant are persuasive for the proposition that
electronic production of documents may constitute “exemplification” or “costs of
making copies” within the meaning of subsection 1920(4); but they also implicitly
acknowledge that not all ESI activities are copies. Where the First Circuit has not
expressly addressed the issue of whether or not subsection 1920(4) includes
electronic discovery production and to what extent electronic discovery production
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activities amount to copying or exemplification, the Clerk is reluctant to expand the
meaning of § 1920(4) in this case.
The Supreme Court has held that Rule 54(d)(1) permits the Court to decline
costs but not to tax costs in the absence of expressed statutory authority. Crawford
Fitting Company v. J. T. Gibbons, 482 U.S. 437, 441-445 (1987). See also Farmer v.
ARAMCO, 379 U.S. 227, 235 (1964) [(warning that “the discretion given to district
judges should be sparingly exercised with reference to expenses not specifically
allowed by statute” and cited by the First Circuit in Templeman v Chris Craft Corp.,
770 F.2d 245 at 248 (1st Cir. 1985)].
The Clerk must also be aided by sufficiently supportive and demonstrably
necessary and explanatory documentation. The First Circuit has said that, to be
taxable, copies must be “reasonably necessary to the maintenance of the action” or
furnished to the Court and opposing counsel. Rodriguez-Garcia v. Davila, 904 F.2d
90, 100 (1st Cir. 1990). “While a page-by-page justification is not required, the
prevailing party must offer some evidence of necessity.” Bowling v. Hasbro, Inc.,
582 F.Supp.2d 192, 210 (D.R.I.2008) (internal quotations and citations omitted).
See also In re Motor Freight Express, 80 Bankr.44 (Bankr.E.D.Pa.1987) quoted in In
re San Juan Dupont Plaza Hotel Fire Litigation, 111 F.3d 220, 237 (1st Cir.1997).
Despite the 310 pages of documents provided to justify the hefty ESI claim in
this case, there is insufficient explanation about the necessity of the copies, the
necessity of the ESI procedures described (i.e. ESI Processing, ESI Pre-ProcessingData Triage, Production Setup, TIFF to PDF Conversion, Export, TIFF Creation,
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Production-TIFF, etc. ), or how the enumerated ESI procedures constitute steps of
exemplification or making copies. Copies must further be necessarily obtained for
use in the case. The prevailing party may not recover expenses for copies made for
the attorneys’ convenience or regarding issues upon which they have not prevailed.
See Virginia Panel Corp v. Mac Panel Co., 887 F. Supp 880, (W.D. Va. 1995).
As noted in the case cited by Defendant, phrases such as “document
production” on an invoice and “other similarly generic statements…are unhelpful in
determining whether those costs are taxable.” In re Ricoh Co., Ltd. Patent
Litigation, 661 F.3d 1361 at 1368 (2011). The Ricoh court held that inadequate
documentation did not support an award of taxation because “a bill of cost must
represent a calculation that is reasonably accurate under the circumstances.” Id. at
1368. [citing Summit Tech., Inc. v. Nidek Co., 435 F.3d 1371 at 1380 (Fed.Cir. 2006)
after citing English v. Colo. Dept. of Corr. 248 F.3d 1002 at 1013 (documentation is
not to be filled with generic references)].
Plaintiff has ably cited a number of persuasive cases, such as Race Tires Am.
Inc. v. Hoosier Racing Tire Corp. 674 F.3d 158, (3rd Cir. 2012), that seem to have
support in not only the Third Circuit, but also the Fourth, Sixth and Ninth. As the
Third Circuit synoptically explained in Camesi v. University of Pittsburgh Medical
Center, 673 Fed. Appx. 141 at 145 (2016), while citing Race Tires, “As with predigital era discovery, ESI entails a number of steps essential to the ultimate act of
production. Just as none of the steps that preceded the actual act of making copies
in the pre-digital era would have been considered taxable, with ESI only the
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functional equivalent of ‘making copies’ is taxable.” Id. (quotations and citations
omitted). Finding the Race Tires court’s logic persuasive, the Clerk cannot make a
clear finding of taxation in this case without an adequate explanation of
Defendant’s claims. The Clerk cannot determine if the charges are for data
collection, culling, sorting, conversion to agreed-upon formats, production or taxable
copying and exemplification.
Therefore, in light of the prevailing party’s failure to adequately explain and
demonste necessity, and in light of the traditionally narrow construction of §
1920(4), the Clerk will not tax the charges claimed for ESI work in this case. Like
the Race Tires court, the Clerk derives “no Congressional intent to ‘shift all the
expenses of a particular form of discovery—production of ESI—to the losing party,”
especially in light of the limited record in this case. Race Tires Am. Inc., 674 F.3d at
The Clerk of Court hereby taxes costs in favor of Defendant in the amount of
one hundred and three dollars and fifty cents ($103.50).
IT IS SO ORDERED.
/s/ Christa K. Berry
Clerk, U.S. District Court
Dated this 28th day of November, 2017
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