JANSSEN PHARMACEUTICALS, INC. et al v. ACTAVIS ELIZABETH LLC et al

Filing 618

CLERK'S OPINION re 584 MOTION for Taxation of Costs filed by PLAINTIFF/COUNTERCLAIM DEFENDANT DEPOMED, INC. (William T. Walsh, Clerk) (jo, )

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

DEPOMED, INC. and GRUNENTHAL GMBH,
Plaintiffs/Counterclaim
Defendants
v.

Civil Action No. 13-4507 (CCC)

ACTAVIS ELIZABETH LLC and ALKEM
LABORATORIES LIMITED,
Defendants/Counterclaim
Plaintiffs.

AND CONSOLIDATED CASES

Civil Action No. 13-7803 (CCC)
Civil Action No. 13-6929 (CCC)
Civil Action No. 14-3941 (CCC)
Civil Action No. 14-4617 (CCC)
Civil Action No. 15-6797 (CCC)
______________________________________________________________________________
CLERK’S OPINION GRANTING IN PART AND DENYING IN PART
DEPOMED’S MOTION TO TAX COSTS
This matter has come before the Clerk on the motion [Dkt. Entry 584]1 of
Plaintiff/Counterclaim Defendant Depomed, Inc. (“Depomed”) to tax costs against
Defendants/Counterclaim Plaintiffs Actavis Elizabeth LLC, Actavis UT (collectively,
“Actavis”), Alkem Laboratories Limited (“Alkem”), and Roxane Laboratories, Inc. (“Roxane”)
(collectively, “Defendants”) pursuant to Fed. R. Civ. P. 54 (d) and Local Civil Rule 54.1.
1

Unless otherwise noted, references herein are to Docket Entries in the lead case,
Civ. A. No. 13-4507.

Defendants oppose this motion.
This is the first of two motions to be considered by the Clerk in these consolidated cases.
A second opinion will address the separate motion of Plaintiff Grunenthal GmbH (“Grunenthal”)
to tax costs against these same Defendants.
In these six consolidated Hatch-Waxman cases, Depomed and Grunenthal (together,
“Plaintiffs”) asserted that three of their patents were infringed by the Defendants’ filing of
Abbreviated New Drug Applications .2 The patents-in-suit, i.e., U.S. Reissue Patent No. 39,593
(the “RE593 patent”), U.S. Patent No. 7,994,364 (“the ‘364 patent”) and U.S. Patent No.
8,536,130 (“the ‘130 patent”) are directed to compositions and methods relating to Plaintiffs’
NUCYNTA® tapentadol hydrochloride products. Grunenthal owns the patents and licenses them
to Depomed. Plaintiffs asserted that Defendants’ generic versions of tapentadol hydrochloride
products for which they sought approval from the United States Food and Drug Administration
(“FDA”) infringed their patents.3

2

A fourth patent, U.S. Patent No. 8,309,060 (“the ‘060 patent”), was asserted by
Plaintiffs against Actavis only and all related proceedings were stayed by Order of November 19,
2015 [Dkt. Entry 287], pending the appeal to the United States Court of Appeals for the Federal
Circuit from a decision of the Southern District of New York finding the claims of that patent to
be invalid.
3

The parties were distilled to the currently named, but during the course of the
litigation included plaintiff Janssen Pharmaceuticals, Inc. and defendants Ascend Laboratories,
LLC (13-4507), Actavis LLC, Actavis, Inc. (Civ. A. Nos. 13-4507, 15-6797), Sandoz (Civ. A.
Nos. 13-7803, 13-6929 ) and Watson Laboratories, Inc. (which was replaced by Actavis
Laboratories UT, Inc. (“Actavis UT”)) (Civ. A. No. 14-4617), and counterclaim defendant NPS
Pharmaceuticals, Inc. (13-4507). All of these parties were dismissed. However, Actavis LLC
and Actavis Inc., dismissed as defendants by stipulations, agreed to be bound by orders entered
against Actavis Elizabeth LLC (“Actavis Elizabeth”). (Actavis UT was accused of infringing the
RE593 and ‘364 patents, but not the ‘130 patent.) While the lead case was filed on July 25, 2013,
Depomed only became a plaintiff on May 6, 2015 [Dkt. Entry 72], when it acquired the U.S.
rights to the Nucynta products from Janssen.
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The Clerk, who is somewhat hampered by the sealing of many of the docket entries,
gives a very cursory procedural history herein. As in the normal course of Hatch-Waxman
litigation, the Defendants filed counterclaims for declaratory judgments of non-infringement,
invalidity and/or unenforceability of the patents. The cases were governed by a Stipulated
Discovery Confidentiality Order [Dkt. Entry 127] and a Stipulation and Order Concerning
Protocol for Discovery of Electronically Stored Information [Dkt. Entry 154]. They proceeded
through a Markman hearing on the claims of the RE593 and ‘364 patents on November 25, 2014
[Dkt. Entry 180], and the filing of in limine motions on January 11, 2016 [Dkt. Entries 301-04].
By January 25, 2016, all six cases were consolidated for all purposes, including trial.
[Dkt. Entry 326]. The various in limine motions were denied on February 22, 2016 [Dkt. Entry
364], and so too were Plaintiffs’ and Roxane’s motions for summary judgment, and Plaintiffs’
motion to dismiss Actavis Elizabeth’s third counterclaim to correct or delete the use code for the
‘130 patent on March 4, 2016. [Dkt. Entries 390-94].
Also on March 4, 2016, the parties entered into a Stipulation and Order of Infringement,
whereby they agreed that the Defendants would be liable for infringement of each asserted claim
of the RE593 and ‘364 patents found to be not invalid. [Dkt. Entry 400].
On March 6, 2016, the parties consented to the bifurcation of Actavis Elizabeth’s third
counterclaim from the trial. [Dkt. Entry 407].
The Court conducted a 10-day bench trial on March 9-11, 14-17, 21-23, 2016 [Dkt.
Entries 409, 412, 414, 416-19, 421-23]. Between the conclusion of the trial and closing
arguments on April 27, 2016 [Dkt. Entry 460], the parties filed post-trial briefs and proposed
findings of fact and conclusions of law [Dkt. Entries 448-49, 451-52, 454-57].
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On May 18, 2016, the Court enjoined the Defendants from launching their allegedly
infringing products pending the earlier of the entry of the Court’s trial decision or September 30,
2016. [Dkt. Entry 468].
The Court issued its trial order on September 30, 2016 [Dkt. Entry 537], finding no
invalidity of the three patents, or unenforceability of the ‘364 patent. Therefore, pursuant to the
Stipulation and Order of Infringement, all Defendants were found to have infringed the RE593
and ‘364 patents. Alken alone, not Actavis Elizabeth or Roxane, was determined to have
induced infringement of the ‘130 patent. The injunction was renewed, pending the Court’s entry
of final judgment. Also, Actavis Elizabeth’s third counterclaim was severed from the action and
returned to the reopened Civ. A. No. 15-6797.
On October 28, 2016, Alkem filed a notice of appeal to the Federal Circuit [Dkt. Entry
540] but the appeal was deactivated due to Actavis’ pending severed third counterclaim [Dkt.
Entry 560]. However, the FDA changed the use code for the ‘130 patent and consequently,
on January 30, 2017, Actavis and Depomed consented to the withdrawal of Actavis Elizabeth’s
third counterclaim without prejudice. Civ. A. No. 15-6797 [Dkt. Entry 87].
Thereafter, the parties exchanged letters concerning the proposed form of final judgment,
disagreeing on the taxation of costs. Actavis asserted that taxation should be stayed pending the
appeal and that it was also premature because the judgment to be entered would be certified
pursuant to Fed. R. Civ. P. 54(b) due to the pending, stayed proceedings on the ‘060 patent.
[Dkt. Entries 556, 566, 569]. Actavis argued that taxation should await final judgment as to all
claim against all parties. Alternatively, it maintained that Plaintiffs were not the prevailing

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party because Roxane and Actavis Elizabeth prevailed on the infringement of the ‘130 patent,
a central issue in the case. Further, Actavis argued that the Court could find that neither party
prevailed or that even if Plaintiffs were deemed the prevailing party, the Court should exercise its
discretion in this case of mixed judgment and not award Plaintiffs any costs. [Dkt. Entry 569].
Depomed’s position was that Plaintiffs were the prevailing party because they prevailed
on all but one adjudicated issue and that in accordance with this Court’s local rule, a judgment on
costs should not be stayed pending the appeal. [Dkt. Entry 565, 570]. Rather, the Court was
required to make the determination of the prevailing party following the trial on the merits and
there was no just reason to delay an award in this costly litigation. Also, piecemeal litigation
could be avoided by including the appeal of this Court’s cost decision with the appeal on the
merits of the case.
The Court ultimately accepted Depomed’s position. On April 11, 2017, the Court entered
its Final Judgment and Injunction [Dkt. Entry 582], reflecting the findings of its September 30
order in favor of Plaintiffs on all claims except the claims of infringement of the ‘130 patent by
Actavis Elizabeth and Roxane. Due to the pending ‘060 patent proceedings, the Court certified
pursuant to Fed. R. Civ. P. 54(b) that there was no just reason for delay in entering final
judgment as to all claims adjudged in that final judgment. The Court further ordered that
“[p]ursuant to Fed. R. Civ. P. 54, Plaintiffs are the Prevailing Party entitled to costs” and that
“Plaintiffs shall serve and file their Bill of Costs and Disbursements in accordance with Local
Rule 54.1.”4 Id.
4

The Court entered a Corrected Final Judgment and Injunction Nunc Pro Tunc
[Dkt. Entry 616] on September 20, 2017, to remove the erroneous references in the original to
Actavis LLC and Actavis, Inc. but indicated that the correction did not alter the stipulations
whereby those entities agreed to by bound by the Court’s Final Judgment and Injunction.
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In accordance therewith, on May 10, 2017, Plaintiffs each filed a bill of costs. [Dkt.
Entries 584-1, 584-3].
On May 9 and 10, 2017, Alkem, Roxane and Plaintiffs all filed notices of appeal to the
Federal Circuit. [Dkt. Entries 583, 586, 587]. The appellate court reactivated Alkem’s appeal
and consolidated them all on May 25, 2017. [Dkt. Entry 608]. They remain pending.
Now before the Clerk is Depomed’s bill of costs, amounting to $282,666.33, and
consisting of the fees for: filing ($1,600.00); service ($388.34); printed and electronically
recorded transcripts ($41,320.43); witnesses ($58,151.92); exemplification and copies
($132,125.64); and trial support technicians ($49,080.00). [Dkt. Entry 584-1]. Defendants
object to all categories of costs except for the filing and service fees.
I.

Standards for Awarding Costs

Depomed’s motion is controlled by Fed. R. Civ. P. 54(d) (1), which provides that
“[u]nless a federal statute, these rules, or a court order provides otherwise, costs---other than
attorney’s fees---should be allowed to the prevailing party.”
In patent cases, the definition of “prevailing party” is governed by Federal Circuit law,
which defines that term as one who obtains relief on the merits of its claim that materially alters
the legal relationship between the parties by modifying its opponent’s behavior in a way that
directly benefits that party. Manildra Milling Corp. v. Ogilvie Mills, Inc., 76 F.3d 1178, 1181-82
(Fed. Cir. 1996) (citing Farrar v. Hobby, 506 U.S. 103, 111-13 (1992)).
While the first inquiry of determining prevailing party status is a matter of Federal Circuit
law, the second, i.e., that of whether and how much to tax, is a matter of regional circuit law. Id.
at 1183. Therefore, Third Circuit law controls the Clerk’s decision as to the types and amount of
costs to be taxed.
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In this Circuit, there is a strong presumption in favor of awarding costs to the prevailing
party. “‘Only if the losing party can introduce evidence, and the district court can articulate
reasons within the bounds of its equitable power, should costs be reduced or denied to the
prevailing party.’” Reger v. Nemours Found., Inc., 599 F.3d 285, 288 (3d Cir. 2010) (quoting
In re Paoli RR Yard PCB Litig., 221 F.3d 449, 468 (3d Cir. 2000)).
Despite the presumption favoring the prevailing party, the district court and Clerk may
tax only those types of costs set forth in 28 U.S.C. § 1920:
(1) Fees of the clerk and marshal;
(2) Fees 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 the costs of making copies of any materials
where the copies are necessarily obtained for use in the case;
(5) Docket fees under section 1923 of this title;
(6) Compensation of court appointed experts, compensation of interpreters, and
salaries, fees, expenses, and costs of special interpretation services under
section 1828 of this title.
Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441 (1987).
More recently, the Supreme Court reiterated that § 1920 taxable costs are “limited to
relatively minor, incidental expenses,” and are “narrow in scope.” Taniguchi v. Kan Pacific
Saipan, Ltd., 566 U.S. 560, 573 (2012). In Taniguchi, the Court interpreted the “compensation
of interpreters” provision in § 1920 (6) as allowing for the cost of oral translation but not
document translation. While this specific subsection of § 1920 is not invoked here, the Clerk
is cognizant of the Supreme Court’s overriding concern with curbing taxable costs.
In applying the above principles, a prevailing party’s costs “often fall well short of the
party’s actual litigation expenses.” In re Paoli, 221 F.3d at 458. Moreover, despite the
presumption of granting costs to a prevailing party, that party must provide sufficient
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information to carry its burden of showing that the costs sought fall within the limits of § 1920.
Romero v. CSX Transp., Inc. 270 F.R.D. 199, 201-202 (D.N.J. 2010).
In addition to Rule 54(d) and 28 U.S.C. § 1920, the Clerk’s decision is guided by
Local Civil Rule 54.1, which “establishes the general procedures to be followed in those cases
where a party is entitled to recover costs” under § 1920. Lite, N.J. Federal Practice Rules,
Comment 2 to Rule 54.1 (Gann 2018 ed.) at 284.
Pursuant to Manildra Milling, Plaintiffs are the prevailing party because the Court’s
finding of infringement of the patents-in-suit materially altered the legal relationship of the
parties in a way that directly benefitted Plaintiffs. Moreover, this Court already made such a
determination, after having reviewed the parties’ letter submissions, and so provided in its
final judgment.
Additionally, Depomed has complied with the procedural requirements of L. Civ. R.
54.1, as mandated by the final judgment. It timely filed and served a notice of motion, verified
AO 133 form, Plaintiff Depomed, Inc.’s Bill of Costs and Disbursements (“Depomed’s Bill of
Costs”), and the Declaration of Michael A. Sitzman, Esq. (“Sitzman Decl.”), appending
supporting invoices. [Dkt. Entry 584]. Therefore, the Clerk will now examine the specific costs
requested by Depomed, in the order in which they appear in § 1920.
II.

Fees of the Clerk and Marshal, § 1920 (1)

Under subsection (1) of § 1920, Depomed seeks the cost of filing five of the six
complaints as a fee of the clerk and that of serving the complaints as a fee of the marshal.
Defendants do not object to either cost.
A. Filing Fees
Depomed asks for the cost of filing five of the six complaints, i.e., all but Civ. A. No.
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13-6929 (for which Grunenthal asks), or $400.00 each. These fees consist of the $350.00 fee
set forth in 28 U.S.C. § 1914(a) for the filing of a civil action, and the $50.00 administrative
fee established in the Judicial Conference’s “District Court Miscellaneous Fee Schedule.”
Subsection (b) of § 1914 allows the clerk to collect fees in addition to the $350.00 fee of
subsection (a), as prescribed by the Judicial Conference. Accordingly, the entire $400.00
amount per complaint constitutes “fees of the clerk.”
The Clerk notes that the $400.00 fee was paid for each of these five complaints, Sitzman
Decl., Ex. 2, and yet, Depomed mistakenly asks for just $1,600.00. The Clerk will award
$2,000.00 in filing fees.
B. Service of Process
Depomed wishes to recoup a total of $388.34 paid to private process servers as a
§ 1920 (1) fee of the marshal. This consists of service of the summons and complaint in Civ.
A. No. 13-4507 upon Ascend Laboratories ($120.00), the “Actavis Defendants” ($90.00), and
Alkem ($95.00), and the summons and complaint in Civ. A. No. 14-4617 upon Watson ($83.34).
Sitzman Decl., Ex. 3.
Subsection (1) explicitly authorizes taxation of the costs of just the “clerk and marshal.”
However, this Court has held that the fees of private process servers are taxable under the
combined reading of § 1920 and § 1921, which allows the court to tax as costs the fees for
serving a subpoena on a witness. Ricoh Corp. v. Pitney Bowes Inc., Civ. No. 02-5639, 2007 WL
1852553, at *3 (D.N.J. June 26, 2007); Hurley v. Atlantic City Police Dep’t, Civ. Nos. 93-260,
94-1122, 1996 WL 549298, at *8 (D.N.J. Sept. 17, 1996).
Therefore, the Clerk taxes this cost as well, with the exception of the $120.00 cost of
service on Ascend. The Clerk will not tax against these Defendants the cost of service on a party
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which was dismissed from the lead case about two months after its filing. [Dkt. Entry 64].
The cost of service is taxed in the amount of $268.34.
Combining the costs of filing and service, § 1920 (1) costs are taxed in the total amount
of $2,268.34.
III.

Costs of Printed or Electronically Recorded Transcripts, § 1920 (2)

Pursuant to § 1920 (2), Depomed requests the $41,320.43 cost of printed hearing
transcripts and both printed and videotaped deposition transcripts. Defendants oppose both.
A. Hearing Transcripts
Of the requested total, $11,380.78 consists of the cost of the transcripts of the March 8,
2016 Pretrial Conference, the 10-day trial and summations on April 27, 2016.
As the parties recognize, fees for recorded transcripts are taxable under § 1920 (2)
if the transcripts were “necessarily obtained for use in the case.” Local Civil Rule 54.1(g) (6)
identifies circumstances under which the transcripts will be deemed necessary:
The cost of a reporter’s transcript is allowable only (A) when specifically
requested by the Judge, master, or examiner, or (B) when it is of a statement
by the Judge to be reduced to a formal order, or (C) if required for the record
on appeal. . . Copies of transcripts for an attorney’s own use are not taxable in
the absence of a prior order of the Court. All other transcripts of hearings,
pretrials and trials will be considered by the Clerk to be for the convenience
of the attorney and not taxable as costs.
Defendants maintain that none of the costs are recoverable because the transcripts merely
served the convenience of counsel. They assert that Depomed has not segregated from an entire
set of transcripts those pages which were actually used, that the invoices do not separate taxable
from non-taxable services and further, that there is a discrepancy between the rates charged by
different court reporters. Defs.’ Opp. at 2-4.

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The Clerk is satisfied with the explanations given by Depomed for the necessity of the
hearing and trial transcripts. As for the hearing transcript, Defendants have not refuted
Depomed’s statement that “[d]uring the Pretrial Conference, the Court provided direction as
to several evidentiary matters that later arose during the trial,” Dep.’s Bill of Costs at 4-5
n.6.
Regarding the daily trial transcripts, Depomed has indicated several uses of them. It has
cited specific instances where the daily trial transcripts were used at trial. Dep.’s Reply at 3.
Both sides cited heavily to the trial transcripts in their Proposed Findings of Fact, upon which the
Court relied in writing its opinion, as well as citing to the individual trial witnesses’ testimony.
[Dkt. Entry 536]. Furthermore, due to the large number of exhibits to be admitted into evidence,
the Court and the parties adopted a procedure whereby the daily transcript of the prior days of
trial would be used to admit exhibits into evidence. As stated by Depomed’s counsel on the third
day of trial, “I think we agree and all the defendants seem to agree we would like to refer to the
transcript to enter some exhibits.” [Dkt. Entry 427] 3/11/16 Tr. 4:7-10. By requiring the parties’
submission of Proposed Findings of Fact and adopting this procedure for evidence admission,
the Court implicitly requested that the parties order the daily trial transcripts.
However, the Clerk cannot find the transcript of the closing arguments necessary.
Depomed’s justification consists entirely of its counsel’s averment that the “[t]ranscripts of the
pretrial hearing and summations were utilized during the trial, for trial preparation, as well as for
briefings and post-trial submissions and were therefore necessarily obtained for this case as a
part of the daily trial transcripts.” Sitzman Decl. ¶ 5. The transcript of the pretrial hearing may
have been used for those trial purposes but the transcript of summations, which occurred on

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April 27, 2016, a week after the parties submitted their Proposed Findings of Fact on April 19,
2016 [Dkt. Entries 449, 452], was not. Accepting the well-known legal precept that summations
do not constitute evidence, the Clerk denies this $670.95 cost. Dep.’s Bill of Costs, Ex. 4.
Having found the transcripts of the Pretrial Conference and trial necessary, the Clerk
must still address the specific arguments made by Defendants for denying their costs. First,
Defendants make the impractical suggestion that the prevailing party must parse those pages
of the transcripts actually used from those not, so that the Clerk can tax the cost of the former
and not the latter. No support for this argument is given and the Clerk rejects it out of hand.
Secondly, Defendants object to taxing the full requested amounts on the ground that the
invoices do not break out charges for non-taxable services. The Clerk has no reason to believe
that services other than an original transcript were charged by court reporters Robert Tate and
Charles P. McGuire. The Tate invoice merely shows the number of pages priced at $2.42 per
page for the “original.” Charles P. McGuire likewise charged the rate of $2.41 per page.
The amounts of $1,834.01 and $537.24 invoiced by these two reporters will be taxed.
While two reporters used reasonable rates, Yvonne Davion’s rate of $9.65 per page
for the transcript of the Pretrial Conference and eight whole or partial days of trial is four
times as much, as Defendants point out. Depomed responds that “[t]he higher-cost reporter,
Yvonne Davion, was this Court’s regular reporter at the time of the March 2016 trial, and
Defendants have certainly not alleged that Plaintiffs should have procured a different reporter.”
Dep.’s Reply at 4. The Davion invoice does not indicate any special services, but the Clerk
finds this rate to be too high for just an original of the transcript. If no other services were
procured at that rate, it was incumbent upon Depomed to inquire why the rate was so high.

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Davion’s rate of $9.65 per page is exactly four times the rate of $2.41 per page and would
appear to constitute the total amount charged to four parties. Depomed seeks to recoup
$8,338.58 of the $18,354.30 total invoiced by Davion and does not explain the basis for this
apportionment. Depomed paid a $5,000.00 deposit and then 25% of the balance of $13,354.30,
or an additional $3,338.58. The requested amount constitutes approximately 45% of the total.
Therefore, the Clerk taxes these pages at the $2.41 per page rate and allows Depomed 45% of the
adjusted total of $4,583.82 (1902 pages @ $2.41 per page) or $2,062.72.
Hearing and trial transcripts are allowed in the total amount of $4,433.97 ($1,834.01 +
$537.24 + $2,062.72).
B. Deposition Transcripts
Also pursuant to § 1920 (2), Depomed asks the Clerk to tax the $29,939.65 cost of
printed and electronically recorded transcripts of the depositions of Defendants’ experts
($9,983.95), Plaintiffs’ experts ($10,562.90) and fact witnesses ($9,392.80). Its request in
connection with printed transcripts for all of these witnesses excludes the costs of realtime,
rough drafts, expedition, shipping and handling, exhibits and litigation support services.
Depomed also seeks the videotaping costs for the depositions of Plaintiffs’ testifying experts
and fact witness, Jack Anders. For those same witnesses, Depomed requests the costs of video
synchronization as well. Sitzman Decl., ¶¶ 6-8.
Printed Transcripts
Defendants initially objected to taxing most of the deposition transcripts, citing L. Civ. R.
54.1(g) (7), which limits the costs to those of “taking and transcribing depositions used at trial.”
(emphasis added). They argued that most of the transcripts were not used at the trial and that

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certain invoices do not separate out the costs of printed transcripts from video services. Defs.’
Opp. at 4-9. They repeated their argument, rejected above, that “Depomed has not met its
burden of identifying whatever few handfuls of pages that were cited or necessary to support its
claims.” Id. at 5. Defendants initially asked the Clerk to tax only $12,115.54 of the requested
$29,939.65. Id. at 8-9. However, after considering Depomed’s reply, they concede that
$23,469.65 should be granted, Def.s’ Sur-Reply at 2, Ex. A.
In its reply, Depomed discusses the broad view, accepted not only by this Court, but
nationwide, that “[f]or the costs to be taxable, the depositions need not have been used at trial,
and must only ‘appear reasonably necessary to the parties in light of a particular situation
existing at the times they were taken.’” Thabault v. Chait, Civ. No. 85-2441, 2009 WL 69332,
at *7 (D.N.J. Jan 7, 2009) (quoting Datascope Corp. v. SMEC, Inc., Civ. No. 81-3948, 1988 WL
98523, at *3 (D.N.J. Sept. 15, 1988)); Lewis v. City of Chicago, No. 04 C 6050, 2012 WL
6720411, at *5 (N.D. Ill. Dec. 21, 2012) (“[t]he proper inquiry is whether the deposition was
‘reasonably necessary’ to the case at the time it was taken, not whether it was used in a motion
or in court”).
The Third Circuit had held ten years earlier that the “used at trial” language of our
local rule, upon which Defendants rely, had to yield to the less restrictive standard in § 1920 (2)
of “necessarily obtained.” In re Baby Food Antitrust Litig., 166 F.3d 112, 138 (3d Cir. 1999).
This Court has further stated that “[a]n attorney needs deposition transcripts to prepare
for both direct and cross-examination even if the transcripts are not directly introduced into
evidence during trial.” Hurley, 1996 WL 549298, at *5.
The relevance of all of the deponents cannot be doubted. In connection with each of
Defendants’ and Plaintiffs’ experts, Depomed asserts that the printed deposition transcript was
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used in preparation for cross-examination and during examination at trial. Dep.’s Bill of Costs
at 5-8. In its bench opinion, the Court cites the testimony of every one of these experts, on both
sides, as well as the testimony of fact witness, Jack Anders, as having been given live at the trial.
[Dkt. Entry 536]. The testimony of the remaining ten fact witnesses was included in the final
deposition designations. Dep.’s Bill of Costs at 8-10.
In the event that Defendants still press their initial arguments, the Clerk addresses the two
specific objections made by them. First, they contend that the invoices for the printed transcripts
do not separate out the charges for videotaping services. A review of the invoices reveals that
this is incorrect, as does the declaration of Lauren Grossman, Billing Manager of Veritext Legal
Solutions (“Grossman Decl.”), submitted with Depomed’s reply. [Dkt. Entry 609-1].
Second, they maintain that the charges for expedition of the Anders transcript should be
denied. Depomed bases the necessity of expedition on the fact that this fact witness, Depomed’s
Vice President of Finance, was deposed only 12 days before the commencement of trial and it
argues that this Court has allowed such costs when exigencies so demand. Janssen Pharm. N.V.
v. Mylan Pharm., Inc., Civ. Nos. 03-6220, 03-6185, 2007 WL 925535, at *8 (D.N.J. Mar. 23,
2007). Letters to the Court in February 2016 discuss at length the parties’ dispute regarding the
scope of this witness’ anticipated trial testimony and Defendants’ rejected in limine motion.
[Dkt. Entries 339, 342-1]. Despite Depomed’s objection to Defendants’ deposing Anders so
close to trial on the ground that Defendants had ample opportunity to do so long beforehand,
Anders was deposed on February 26, 2016. Having reviewed the circumstances surrounding
this deposition, the Clerk appreciates the need for expedition of this transcript and will tax its
cost to Defendants.

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As noted above, for these printed transcripts, Depomed asks for only the costs of the
original plus certified copy or a certified copy, along with reporter attendance fees, and not
extraneous charges which the Clerk has previously determined serve only attorney convenience
or are in the nature of attorney’s fees. All requested fees for printed transcripts are granted.
Videotaping Charges
In addition to the above § 1920 (2) charges for printed transcripts, Depomed asks the
Clerk to tax the videotaping charges of the depositions of Plaintiffs’ experts, i.e., Joel Bernstein,
Michelle Brown, Michael Ossipov and William Roush, as well as fact witness, Jack Anders.
Requested charges include the costs of both the video-transcripts and synchronization and
Ms. Grossman has clarified that the $95/hr. charge for “Video-Transcript Synchronization”
consists of $60/hr. for the video-transcript and $35/hr. for the digitization and synchronization.
Grossman Decl. ¶ 5.
In their sur-reply, Defendants maintain their objection to taxing any of these videotaping
charges on the grounds that § 1920 (2) allows for the cost of either the printed transcript or
the videotaped version but not both. Defs.’ Sur-Reply at 2. Defendants also point out that
the Clerk has previously found that the costs of video-synchronization are non-taxable. Defs.’
Opp. at 7.
Depomed emphasizes that it is not requesting videotaping charges of depositions noticed
by Plaintiffs, but only of those video depositions taken at the insistence of Defendants. Dep.’s
Bill of Costs at 6-8 nn.8-9. As this Court has noted, “Defendants’ actions alone, of serving
video deposition subpoenas, seems to mean that the video depositions of these witnesses were
considered by Defendants to be necessary for trial.” Janssen Pharm., 2007 WL 925535, at *4.

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The losing party which urges that video depositions be taken cannot later claim that it should
not be responsible for the resulting charges. Id. Accordingly, the Clerk will tax the costs of the
video-transcripts at $60/hr.
The Clerk agrees with Defendants, however, that the costs of video-synchronization are
another matter. Video synchronization is a service which times the videotape to the lines of the
transcript and facilitates the editing of the videotape. The Clerk has previously held that this
is a non-taxable convenience to counsel which falls outside of the bounds of § 1920. Mylan Inc.
v. SmithKline Beecham Corp., Civ. No. 10-4809, 2015 WL 1931139, at *9 (D.N.J. Apr. 28,
2015) (quoting Kalitta Air L.L.C. v. Central Texas Airborne Sys. Inc., 741 F.3d 955, 959
(9th Cir. 2013)). See also Brandon v. GlaxoSmithKline, LLC, Case No.: 7:15-cv-01804, 2018
WL 372307, at *3 (N.D. Ala. Jan. 11, 2018) (“Defendant offers no authority approving an award
of costs for synchronizing a videotaped deposition, and courts have denied awarding such costs
under § 1920 for such services,” citing cases). Depomed appears to recognize this in its reply.
Dep.’s Reply at 8.
Therefore, from the total § 1920 (2) costs, the Clerk will deduct just the $35/hr. charges
for the video-synchronization of the depositions of Plaintiffs’ experts and Jack Anders, noticed
by Defendants, as follows: Joel Bernstein, 8/14/14 - 4 hrs. ($140.00); Joel Bernstein 10/1/15 7 hrs. ($245.00); Michelle Brown - 6.5 hrs. ($227.50); Michael Ossipov - 5 hrs. ($175.00);
William Roush, 9/10/15 - 8 hrs. ($280.00); William Roush, 11/18/15 - 4.5 hrs. ($157.50); and
Jack Anders - 5.5 hrs. ($192.50). Dep.’s Bill of Costs, Exs. 6, 7. Deducting this $1,417.50 sum
from the requested total costs of $29,939.65, the costs of printed and electronically recorded
deposition transcripts are taxed in the amount of $28,522.15.

-17-

Combining the costs of hearing ($4,433.97) and deposition ($28,522.15) transcripts,
costs granted pursuant to § 1920 (2) amount to $32,956.12.
IV.

Witness Fees, § 1920 (3)

Depomed wishes to recoup $58,151.92 as § 1920 (3) witness fees for the appearance at
trial and deposition of its expert witnesses Joel Bernstein, Michelle Brown, Michael Ossipov and
William Roush, as well as fact witnesses Jack Anders, Helmut Buschmann, Thomas Christoph,
Michael Gruss and Juergen Haeussler. Dep.’s Bill of Costs, Ex. 8.
Defendants oppose portions of all of the requested fees except for those of Jack Anders
(save for a typographical error), Juergen Haeussler and William Roush’s September 5, 2014
deposition.5 As a general matter, they do not contest any of the fees requested for attendance
or lodging, but do maintain that the costs of first-class airfares should be halved. Based upon
circumstances and the asserted insufficiency of proofs, Defendants take issue specifically with
the fees of Drs. Bernstein and Roush, which they ask the Clerk to fully deny or at most, tax at
50%. They agree to the taxation of only $20,436.36 in witness fees. Defs.’ Opp. at 10-15.
As noted in our local court rule, allowable witness fees are controlled by § 1821:
(1) The fees of witnesses for actual and proper attendance shall be allowed,
whether such attendance was voluntary or procured by subpoena. The rates
for witness fees, mileage and subsistence are fixed by statute (see 28 U.S.C.
§ 1821). Witness fees and subsistence are taxable only for the reasonable
period during which the witness was within the District. Subsistence to the
witness under 28 U.S.C. § 1821 is allowable if the distance from the courthouse

5

Defendants agree to taxing only $2,160.83 of Mr. Anders’ fees, the sum derived
from totaling $80.00 in attendance fees, $136.00 in lodging and $1,944.83 in travel expenses, per
Depomed’s chart, Dep.’s Bill of Costs at 11. However, the Clerk has found that the figure of
$1,944.83 is a typographical error because receipts support travel costs totaling $1,994.83.
Therefore, Depomed’s requested total of $2,210.83 is correct and will be granted.
-18-

to the residence of the witness is such that mileage fees would be greater than
subsistence fees if the witness were to return to his or her residence from day
to day.
L. Civ. R. 54.1(g) (1).
L. Civ. R. 54.1(g) (7) further provides that “[f]ees for the witness at the taking of a
deposition are taxable at the same rate as for attendance at trial. (See L. Civ. R. 54.1(g)(1).)”
Section 1821 of Title 28 provides for the payment of witnesses’ fees and allowances
for their attendance in federal court and at depositions. 28 U.S.C. § 1821(a) (1). Subsection (b)
therein allows a $40 per day attendance fee “for the time necessarily occupied in going to and
returning from the place of attendance at the beginning and end of such attendance or at any time
during such attendance.” Subsection (c) allows for the actual expenses of travel over “the
distance necessarily traveled to and from such witness’s residence by the shortest practical
route in going to and returning from the place of attendance,” using “a common carrier at the
most economical rate reasonably available.” Recoverable transportation costs include a mileage
allowance for travel by privately owned vehicle at rates prescribed by the Administrator of
General Services (“GSA”), toll charges, taxicab fares and parking fees. Subsection (d) allows
for a subsistence fee for a required overnight stay, provided that the per diem rate does not
exceed the allowance established by the GSA, pursuant to 5 U.S.C. § 5702(a), in the area of
attendance. While subsection (d) allows for both lodging and meals, Depomed asks for just
the former.
The Clerk first addresses the non-controversial items. He has confirmed that Depomed
asks for a reasonable number of days of attendance for each witness, including necessary days
of travel. Defendants do not contest this category, and therefore, those costs are granted in full.

-19-

Defendants do not contest the lodging costs either and the Clerk has verified that
Depomed has used the correct GSA rates except in two instances: 1/ the applicable rate for the
August 14, 2014 Bernstein deposition in New York is $229.00/night, not $303.00; 2/ the correct
rate for the September 10, 2015 Roush deposition in Washington, D.C. is $222.00/night, not
$179.00. These corrections will be made below.
First- and Business-Class Airfare
Defendants protest that most of the airfares requested are for first- or business-class
travel, as specifically indicated in the submitted invoices or inferable therefrom, based upon the
low assigned seat number. Depomed defends these airfares on the grounds that several flights
were long-distance, international flights, some of the witnesses were of advanced age and
“allowing such witnesses to travel in business- or first-class is the considerate and expected
course.” Dep.’s Reply at 9. Nonetheless, the Clerk agrees that due to the § 1821(c) requirement
of using the “most economical common carrier,” he must deny 50% of the requested first- or
business-class airfare, as he has done in the past. Helsinn Healthcare S.A. v. Teva Pharms. USA,
Inc., Civ. No. 11-3962, 2016 WL 660601, at *8 (D.N.J. Feb. 18, 2016) (citing cases). These
adjustments will be made in the calculations below.
Dr. Bernstein
Next, the Clerk addresses Defendants’ objections to the fees of Dr. Bernstein, who
testified at depositions in New York on August 14, 2014 ($6,656.31) and in Washington, D.C.
on October 1, 2015 ($7,941.63), and at trial in Newark on March 21 and 22, 2016 ($13,439.96).
Defendants complain that for his trial testimony, rather than book a round-trip ticket, this witness
flew out of one location, i.e., Shanghai, and back to a different location, i.e., Abu Dhabi.

-20-

For his August 2014 and October 2015 depositions, Dr. Bernstein traveled round-trip between
Tel Aviv and New York, and round-trip between Tel Aviv and Washington, D.C., respectively.
Defendants press for the denial of all such airfares on the ground that based upon the foregoing,
the place of Dr. Bernstein’s residence is ambiguous and § 1821(c) restricts travel to and from
the witness’ “residence” and to the “shortest practical route.” They argue alternatively for a
reduction in taxation because the class of the tickets was either business-class, as shown on the
receipts, or presumably so, given the high price tags. Defs.’ Opp. at 10-12.
The Clerk rejects Defendants’ argument for outright denial of the airfares. Depomed has
explained that Dr. Bernstein teaches in both Abu Dhabi and Shangai, Dep.’s Reply at 10, and
Defendants themselves admit that Dr. Bernstein testified to splitting his time between those two
locations, Defs.’ Opp. at 10. Therefore, he takes part-time residence at both places and had a
legitimate reason to fly to Abu Dhabi after the trial. The Clerk will not read the statute to require
that a witness neglect his professional obligations due to litigation commitments. Also,
Depomed points out that the Newark to Abu Dhabi distance is shorter than the Newark to
Shanghai distance and Defendants have not shown that a round-trip Newark/Shanghai ticket
would have been cheaper. Dep.’s Reply at 10. As for Tel Aviv being the point of departure for
this witness’ depositions, Depomed explained in its reply that Dr. Bernstein’s home address is
in Tel Aviv. Id.
However, the Clerk does find the airfares to be expensive and will tax them at only 50%.
The remaining costs of ground transportation for Dr. Bernstein’s three appearances, undisputed
by Defendants, have been supported and will be granted.
Dr. Roush
Depomed requests travel fees for Dr. Roush’s trial testimony on March 22, 2016
-21-

($1,311.83), and his depositions in Washington, D.C. on September 10, 2015 ($2,128.40) and
November 18, 2015 ($735.70). Defendants ask the Clerk to tax only $75.00, $1,158.65 and
$530.40, respectively. Defs.’ Opp. at 15. Depomed also asks for $527.20 in travel costs for
Dr. Roush’s September 5, 2014 deposition, and Defendants do not oppose that cost, which
consists of an economy class airfare of $430.20, a $52.00 taxicab fare and a $45.00 parking fee.
Regarding the contested deposition travel costs, the Clerk accepts Defendants’ argument
that the three of the four flights that were first-class should be taxed at only 50%. The costs of
ground transportation have not been challenged and they will be taxed in full.
As for Dr. Roush’s travel costs for his trial testimony, Defendants ask the Clerk to tax
only the $75.00 cost of the car from the Palm Beach International Airport to his home after the
trial, stating, “Depomed’s request for Dr. Roush’s March 2016 travel expenses violate [sic]
L. Civ. R. 54.1(b) in that the invoices appear to be incorrect, the natures of the charges cannot
be readily ascertained and no proper invoice (or explanation) is provided.” Defs.’ Opp. at 13.
Depomed replies, “[t]he bottom line is that Depomed seeks costs for exactly what
Dr. Roush invoiced with respect to his trial testimony: one flight into Newark before trial and
one flight out of Newark after trial.” Dep.’s Reply at 11.
After trying to piece together the various receipts filed, the Clerk agrees with Defendants
that Depomed’s submissions are confusing. There is no receipt for a flight into Newark before
the trial and the two requested airfares consist of the Jet Blue return flight actually taken by
Dr. Roush and the originally scheduled return Delta flight, which was cancelled in favor of the
earlier Jet Blue flight. The Clerk grants just the $483.60 cost of the Jet Blue “Blue Plus” flight,
which was basically a coach fare with an allowance for one free bag, but denies the cost of the
Delta airfare.
-22-

Also, Depomed states that there is a “$244.13 expense for a car for Dr. Roush’s trip to
the airport following the trial.” Dep.’s Reply at 11. However, Dr. Roush testified on March 22
and went to the airport that same night for his return flight, but the trip date for that car invoice
is March 14. Due to this inconsistency, the Clerk will deny that cost as well. Taxed costs for
Dr. Roush’s travel consist of only the $483.60 Jet Blue airfare and the $75.00 car fare from the
airport to Dr. Roush’s home on March 22, or a total of $558.60.
Based upon all of the foregoing, the Clerk taxes the following witness fees, with *
denoting travel costs that include at least one first- or business-class airfare, taxed at 50%:
Witness

Attendance

Lodging

Travel

Total

Jack Anders

$ 80.00

$136.00

$1,994.83

$ 2,210.83

Joel Bernstein, trial-3/21, 22/16

$120.00

$272.00

$6,672.96*

$ 7,064.96

Joel Bernstein, 8/14/14 dep.

$120.00

$458.00

$3,010.31*

$ 3,588.31

Joel Bernstein, 10/1/15 dep.

$ 80.00

$222.00

$3,874.63*

$ 4,176.63

Michelle Brown, trial-3/14, 15, 23 $200.00

$408.00

$1,215.49*6

$ 1,823.49

Michelle Brown, 2/4/16 dep.

$120.00

$358.00

$ 386.02*

$

Helmut Buschmann, trial-3/10

$120.00

$272.00

$2,146.41*

$ 2,538.41

Thomas Christoph, trial-3/14

$120.00

$272.00

$1,951.41*

$ 2,343.41

Michael Gruss, trial-3/10, 11

$160.00

$408.00

$2,280.16*7

$ 2,848.16

Juergen Haeussler, trial-3/11

$ 80.00

$136.00

$ 337.80

$

864.02

553.80

6

Using the appropriate GSA mileage rate of $.54/mi., the correct cost for 113
miles is $61.02 for each of two trips.
7

It is unclear how Depomed arrives at $114.14 for car and parking expenses.
With an exchange rate of 1 Euro = US$1.1212, the 63.1 Euro cost is equivalent to US$70.75.
-23-

Witness

Attendance

Lodging

Travel

Total

$120.00

$272.00

$ 785.34*8

$ 1,177.34

Michael Ossipov, 1/29/16 dep. $120.00

$358.00

$ 583.47*

$ 1,061.47

William Roush, trial-3/22

$120.00

$272.00

$ 558.60

$

950.60

William Roush, 9/5/14 dep.

$ 80.00

$303.00

$ 527.20

$

910.20

William Roush, 9/10/15 dep.

$120.00

$444.00

$1,158.70*

$ 1,722.70

William Roush, 11/18/15 dep. $ 80.00

$179.00

$ 530.40*9

$

Michael Ossipov, trial-3/23

Total:

789.40

$34,623.73
Pursuant to § 1920 (3), witness fees are granted in the amount of $34,623.73.
V.

Fees for Exemplification and Costs of Making Copies, § 1920 (4)

The balance and bulk of Depomed’s requested costs, amounting to $181,205.64, fall
under the § 1920 (4) category of “[f]ees for exemplification and the costs of making copies.”
Subsection (4) consists of two different prongs and under them, Depomed asks for:
1/ exemplification fees in the amount of $128,390.45 for visual aids ($77,310.45) and the
multimedia equipment ($2,000.00) and trial support technicians to display them ($49,080.00)
(listed as “other costs” on Depomed’s AO 133 form); and 2/ the costs of making copies in the
amount of $52,815.19, consisting of the cost of producing documents through the scanning

8

This figure was derived by including an overlooked $200.00 ticket change fee,
granting 50% of the total airfare of $1,439.17, and adding in taxi costs of $30.75 and $35.00.
9

The departing Jet Blue flight is taxed in full at $241.10 but the return, first-class
Delta airfare is taxed at 50%, or $205.30 and that amount is added to taxi ($39.00) and parking
($45.00).
-24-

of hard copy documents and conversion of native electronic files to TIFF ($26,699.68) and
copying costs incurred for the preparation of trial materials ($26,115.51). Dep.’s Bill of Costs
at 14-17. As set forth in Depomed’s briefing, the Clerk addresses the latter of the two first and
Defendants’ assertion that none of these costs should be taxed.
A. Costs of Making Copies
There are two components to Depomed’s costs of making copies, i.e., the cost of
production of documents and the cost of copying trial materials.
Cost of Production of Documents
Under § 1920 (4), the costs of making copies are taxable only to the extent that the copies
were “necessarily obtained for use in the case.” As enunciated in the case law cited by the
parties, a dichotomy exists between copies which are deemed necessary and those which merely
serve the convenience of counsel. The cost of copies produced in discovery, and provided to
opposing counsel and the court are taxable, as are the costs of trial exhibits, whereas the costs
of general copying and copies made for the prevailing party are not.
Depomed describes this particular cost as “the scanning of hard copy documents and
conversion of native electronic files to TIFF format for production to Defendants, totaling
$26,699.67.” Sitzman Decl. ¶10. As the Clerk noted earlier, this case was governed by a
Stipulation and Order Concerning Protocol for Discovery of Electronically Stored Information
(“ESI Order”), under which electronic files were to be “converted to *.tif image format with
extracted or OCR text.” [Dkt. Entry 154, ¶ 11a.].
The parties recognize that the taxability of discovery materials is here governed by the
Third Circuit’s ruling in the well-known case of Race Tires Am., Inc. v. Hoosier Racing Tire

-25-

Corp., 674 F.3d 158 (3d Cir. 2012). The facets of the appellate court’s decision are discussed
in the Clerk’s earlier opinions but suffice it to say that the Court ruled that “only the scanning
of hard copy documents, the conversion of native files to TIFF [there, the agreed-upon format],
and the transfer of VHS tapes to DVD involved ‘copying’, and that the costs attributable to only
those activities are recoverable under § 1920 (4)’s allowance for the ‘costs of making copies of
any materials.’” Id. at 171.
The costs sought to be taxed here are described in the supporting invoices of Merrill
Communication LLC as those for “Electronic Processing – File Conversion to TIFF,” “Scan Medium,” “Labor - Technical Labor,” “Scan - Color,” “Scan - 11” x 17” - B/W,” “Copy Glasswork,” “Scan - Difficult Heavy,” “Scan - 11” x 17” - Color,” “Scan - Oversize B/W Per Sq
Ft,” “Scan - Heavy.” Dep.’s Bill of Costs, Ex. 9. The charged services shown on the invoices
of Lighthouse eDiscovery are for “Native Export for Review,” “Image to Image Conversion,”
“Native Conversion to TIFF or PDF,” and “Production - PDF Conversion.” Id.
Defendants object to all of the costs on the grounds that the charges for technical labor
are non-recoverable, the requested costs include extraneous ESI charges which also fall outside
of the costs permitted by the Race Tires Court, and the entries for scanning are ambiguous.
Defs.’ Opp. at 16-17. Depomed replies that Defendants’ extensive requests for the production
of documents led to the production of 1.8 million pages by Depomed and protests that all of its
costs, with the possible exception of the costs of labor, are of the type allowed by the Third
Circuit. Dep.’s Reply at 12-14.
The Clerk is bound by the Third Circuit’s decision and will deny all costs not falling
squarely within that ruling. These include the costs of labor, previously denied by the Clerk

-26-

in Warner Chilcott Labs. Ireland Ltd. v. Impax Labs., Inc., Civ. Nos. 08-6304, 09-2073,
09-1233, 2013 WL 1876441, at *12 (D.N.J. Apr. 18, 2013), and the costs of “Native Export for
Review,” “Image to Image Conversion,” and “Production - PDF Conversion.”
All charges for copying and scanning as well as the costs of “Electronic Processing – File
Conversion to TIFF” and “Native Conversion to TIFF or PDF” are granted. Defendants point
out that the Clerk has previously denied costs described by the prevailing party as scanning costs,
but in the one cited case, none of the invoice charges were for the scanning of hard copy
documents for the losing party. Prometheus Labs., Inc. v. Roxane Labs., Inc., Civ. Nos. 11-230,
11-1241, 2016 WL 1559144, at *13 (D.N.J. Apr. 18, 2016), cited in Defs.’ Opp. at 16. In the
other case cited by Defendants, id. at 17, the Clerk disallowed a scanning cost because he could
not discern whether the cost was for the scanning of hard copy documents or of electronic
documents. Purdue Pharm. Products L.P. v. Actavis Elizabeth LLC, Civ. No. 12-5311, 2016 WL
3450809, at *12 (D.N.J. June 20, 2016).
In the month preceding the Prometheus Labs. decision, the Third Circuit clarified its
earlier Race Tires ruling, explaining that “[e]ven the term ‘scanning,’ as used in Race Tires,
applied only to the ‘scanning of hard copy documents’ as ‘making copies’ for the requesting
party. 674 F.3d at 171 (emphasis added).” Camesi v. Univ. of Pittsburg Med. Ctr, 673 F. App’x
141, 148 (3d Cir. 2016). The Camesi Court distinguished that taxable activity from the nontaxable service of scanning electronic documents for the benefit of the responding party.
In the case at bar, Depomed’s counsel has averred that this $26,699.68 cost was for “the
scanning of hard copy documents and conversion of native electronic files to TIFF format for
production to Defendants” under the ESI Order, Sitzman Decl. ¶ 9, not the scanning of electronic

-27-

documents for Depomed’s own benefit. Therefore, the Clerk grants $25,566.52 in scanning and
conversion costs and denies the balance of $1,113.16.10
Cost of Photocopies
The other § 1920 (4) “cost[s] of making copies” sought by Depomed is the $26,115.51
cost of photocopies incurred during the trial, consisting of $7,373.16 in charges of third party
PCTechnologies and the $18,742.35 cost of Equitrac copies made in-house. Depomed’s counsel
describes this category of costs as including “the expense of preparing copies of deposition
transcripts and materials for witness binders provided to witnesses, submitted to the Court,
and provided to opposing counsel during trial, as well as ordinary copying expenses reasonably
incurred in the trial of this complex patent case.” Sitzman Decl. ¶ 11. Depomed further explains
in its reply that “Depomed set up in-house copy facilities at the Marriot International Hotel in
Newark solely for the purposes of trial in this matter” and therefore, the “copies were necessarily
made for the trial.” Dep.’s Reply at 15.
Defendants would have the Clerk deny all such costs for lack of sufficient detail as to
what documents were copied, why the copies were necessary and the cost per page. Defs.’
Sur-Reply at 4. They point out that “Depomed’s invoices, representing the copying of many
thousands of pages, stand in contrast to the approximately 390 exhibits admitted in this case.”
Defs.’ Opp. at 18. They argue that “28 U.S.C. 1920(4) and Local Rule 54.1(g)(10) do not permit
the prevailing party to recover the cost of every page photocopied in the month of the trial” and
that “Depomed fails to meet its burden of explaining why the ordinary copying expenses were

10

By the Clerk’s calculation, costs requested in this category, as shown in
Depomed’s Ex. 9, actually total $26,679.68, not $26,699.67.

-28-

necessary for trial and were not simply for the convenience of counsel.”11 Id. Further, they
contend that the included costs of binders, binding and tabs are non-taxable. Id at 18-19.
It is true that the prevailing party bears the burden of stating the general purpose of
the photocopies, their necessity and their cost, but it need not give an economically unfeasible
page-by-page justification. The Clerk appreciates the volume of copies which was necessary
during the trial, especially because Depomed prepared a different witness binder for each
witness and made nine copies thereof, i.e., one for the Judge, court reporter, witness, judge’s
staff, co-counsel for Plaintiff Grunenthal, Defendant Actavis, Defendant Roxane, Defendant
Alkem and one copy for itself. Sitzman Decl. ¶ 11.
However, the Clerk finds that based upon Defendants’ objections, deductions are
warranted. First off, this Court and the Clerk have previously found that the costs of tabs,
binders and the like are non-taxable as they do not constitute “copies” and fall rather under the
rubric of attorney’s fees. See e.g., Warner Chilcott Labs. Ireland Ltd., 2013 WL 1876441 at *12
(citing cases). Depomed argues in reply that “the Court requested binders for each witness,
itself and staff and for all opposing parties,” and “these costs were incurred at the Court’s request
in connection with the examination of witnesses.” Dep.’s Reply at 16. However, the Court’s
imposition of certain requirements does not convert non-taxable attorney overhead into taxable
photocopies. Congress did not intend to make taxable the costs of all services made necessary
by order of the court.

11

The Clerk believes that Depomed meant to refer not to subsection (g ) (10) of
L. Civ. R. 54.1, which applies to visual aids, but to (g) (9), which provides in relevant part that
“[t]he cost of copies obtained for counsel’s own use is not taxable.”

-29-

Therefore, the Clerk will deduct off the top of the requested total of $26,115.51:
the $1,461.94 cost of binding, drilling and binders ($1,366.30 + 7% tax of $95.64) in the
PCTechnologies invoice; and the $1,779.15 in-house cost of same, or a total of $3,241.09.
Dep.’s Bill of Costs, Ex. 10. The cost of the actual photocopies, for further consideration
by the Clerk, totals $22,874.42.
The Clerk has some concerns with the requested cost of the photocopies themselves.
First, Depomed’s counsel admits that these photocopies include “ordinary expenses reasonably
incurred in the trial of this complex patent case.” Sitzman Decl. ¶ 11. As Defendants point out,
“[t]hose copies could include anything from internal use documents to extra copy sets of
materials to support counsel,” Defs.’ Opp. at 17, such as copies of deposition transcripts for
Depomed’s counsel who attended trial. The Clerk notes that on most days of the trial, six
attorneys appeared on behalf of Depomed and Janssen. [Dkt. Entries 426-30, 433]. The costs
of copies for the convenience of Depomed’s counsel are not recoverable.
Also, Defendants point out that the Equitrac copies were made at the rates of both $.10
and $.20 per page and Depomed has failed to explain the reason for this variation. Defs.’ SurReply at 4 n.1. For example, the $.20 per page rate was applied in two entries on March 9 for
2,330 and 3,290 copies (charged at $466.00 and $658.00) and in two entries on March 16 for
2,618 and 2,728 copies (charged at $523.60 and $545.60). This rate is high for 8” x 11”
black and white copies, which the Clerk usually taxes at the maximum rate of $.15 per page,
and he is left to guess the reason for the unexplained $.20 rate, e.g., oversized or color copies.
Without undertaking the tedious task of tabulation, the Clerk notes that a good percentage of
the Equitrac copies were charged at the higher rate of $.20 per page.

-30-

Accordingly, in order to balance the presumption in favor of granting costs to prevailing
party Depomed and its somewhat deficient justification, the Clerk will grant 50% of the total
$22,874.42 cost of photocopies, or $11,437.21.
Combining the granted cost of photocopies ($11,437.21) with that of producing discovery
($25,566.52), the § 1920 (4) costs of making copies are allowed in the amount of $37,003.73.
B. Fees for Exemplification
The final costs for which Depomed seeks reimbursement are the § 1920 (4) “fees
for exemplification,” comprised of the costs of visual aids ($77,310.45), and the multimedia
equipment ($2,000.00) and trial support technicians ($49,080.00) to display them, amounting to
$128,390.45. Defendants oppose all such costs. Defs.’ Opp. at 19-21, Defs.’ Sur-Reply at 4-5.
Visual Aids
Depomed seeks the costs of Suann Ingle Associates, LLC. for “decisive trial design,”
charged at the rate of $250.00/hr. Dep.’s Bill of Costs, Ex. 11. The services for which Depomed
requests compensation are described in the supporting invoices as “created” and “edited” “PPT”
and “images.” Counsel explains that “[t]hese demonstratives and visual aids were prepared to
aid the Court in viewing the evidence in the case and to ensure that witness examination
proceeded efficiently given the complexity of the scientific topics covered and the large number
of exhibits admitted into evidence.” Sitzman Decl. ¶ 12.
Depomed argues that the preparation of demonstratives was reasonably and necessarily
obtained for use in this case, and in support, it cites decisions by this Court in the Thabault case,
2009 WL at 69332, and by the Clerk in Merck Sharp & Dohme Pharms., SRL v. Teva Pharms.
USA, Inc., Civ. No. 07-1596, 2010 WL 1381413 (D.N.J. Mar. 31, 2010), wherein the costs of
demonstratives were granted.
-31-

The taxation of “exemplification,” which usually involves high costs, is a muddled
area of law in which courts have ruled variously throughout the country. Two approaches have
been taken, i.e., the strict construction of the term by certain circuits, as used in Black’s Law
Dictionary, of “an official transcript of a public record, authenticated as a true copy for use as
evidence,” and the broader construction of an “act of illustration by example,” used by other
circuit courts. Warner Chilcott Labs. Ireland Ltd., 2013 WL 1876441, at *13-14.
Unfortunately for this Clerk, the Third Circuit has endorsed neither position, as it has not
yet defined “exemplification” for the purpose of applying § 1920 (4). Even so, the Clerk is ever
mindful of the restrictive interpretation of § 1920 taken by the United States Supreme Court
in the Taniguchi case and the Third Circuit in the Race Tires case since the issuance of the
Thabault and Merck decisions. He has previously denied the costs of visuals on the grounds
that the charges involved were for intellectual efforts, rather than for physical preparation, and
because the services performed were those of consultants, which the Supreme Court warned
in Taniguchi were not taxable. Id. at 13-17; Prometheus Labs., Inc., 2016 WL 1559144, at
*13-14.
Depomed points out that post-Taniguchi and Race Tires, this Court awarded the costs of
visual aids in a complex patent case, such as this, where the prevailing party limited its request
to the costs of the physical preparation of the visual aids. Otsuka Pharm. Co., Ltd. v. Sandoz,
Inc., Civ. No. 07-1000, 2015 WL 5921049, at *9 (D.N.J. Oct. 9, 2015). Quoting the Thabault
case, the Court stated that “the use of an outside vendor to prepare trial preparation materials
and visual aids was an ‘ordinary litigation expense[] reasonably incurred in the prosecution of
[a] massive, complex litigation’ and cannot be considered for the convenience of counsel.” Id.;
Dep.’s Reply at 17-18.
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The Clerk denies the cost of visuals in the instant case because Depomed has not
fulfilled its burden of demonstrating their necessity to him. While Judge Cooper may have
appreciated the value of the demonstratives in the Otsuka case, the Clerk here is at a loss,
not having had the benefit of witnessing the trial and being restricted to the entries on the docket.
In the case of Lochbridge v. Lindsey Mgmt. Co., Inc., Case No. 5:12-CV-5047, 2016 WL
6780330, at *5 (W.D. Ark. Nov. 15, 2016), wherein the prevailing party sought the cost of
demonstrative boards used during the trial, the court stated, “[t]he Court has no information
about these trial boards, as neither party described them with any particularity in its briefing,
and the undersigned was not the trial judge in this case and therefore did not observe exactly
how the boards were used at the trial.” Id. The court there found there was insufficient evidence
to evaluate whether the items were necessary for trial or “instead were more along the lines of an
extravagant, unneeded purchase.” Id.
While the Clerk presumes that the invoice description of “PPT” refers to a powerpoint
presentation, Depomed has not described the nature of the demonstratives. For example, the first
entry appears to be a slide of a timeline. The subsequent four charges seem to include those for
the creation and/or editing of slides showing the curriculum vitae of the experts involved, e.g.,
“created Bernstein CV PPT,” “edited Steed Cross, Bernstein CV,” “created C.V. PPT decks for
expert witnesses Roush and McClurg,” and “created and edited expert witness C.V. PPTs.”
The Clerk does not appreciate the necessity of slides prepared at the rate of $250 per hour to
show a timeline or the experts’ qualifications. Sometime in the past, such uncomplicated
displays such as a timeline or curriculum vitae would have been prepared for the Court by legal

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staff on a poster board or 8” x 11” sheets. Further, the Clerk presumes that much of this material
was presented in the binders addressed earlier.
The “Graphic Production” entries during the trial which might include charges for the
physical preparation of demonstratives all also include charges for “on call for graphics requests
throughout the day,” or “on call all day,” again, at the rate of $250/hr. for up to 14.5 hours.
Additionally, Depomed has not explained what the “images” for “Bernstein direct,” “Roush
direct,” “Brown direct,” and “Christoph direct” entail. Further, the second invoice from Suann
Ingle Associates, LLC. covers the charges of creating and editing slides and images for
Depomed’s closing, which merely illustrate argument of counsel. Nor does Depomed describe
the five poster boards of which it seeks the costs.
The Clerk understands that this was a complex patent case which involved multiple
parties and patents, and a 10-day trial, resulting in a 167-page bench opinion which addressed
the testimony of 16 live witnesses and about 400 admitted exhibits [Dkt. Entry 536]. The Clerk
can only surmise that the demonstratives included slides of chemical structures of compounds,
tapentadol hydrochloride in particular, because, as Depomed points out, the Court cited to such
demonstratives in its opinion. Dep.’s Reply at 17.
However, in that opinion, presiding Judge Claire C. Cecchi stated, “[s]ome of the
citations in this Opinion contain the demonstratives presented by the witnesses at trial. The
demonstratives do not constitute evidence.” [Dkt. Entry 536 at 27 n.7]. Judge Cecchi further
clarified, “[a]ny demonstrative included in the citations is for convenience and information
purposes only and is to be understood in the context of the testimony given in conjunction with
the demonstrative.” Id.

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Our local rule, L. Civ. R. 54.1(g) (10), specifies that “[t]he reasonable expense of
preparing visual aids . . . is taxable as costs when such visual aids are admitted into evidence”
and Judge Cecchi noted that the demonstratives did not constitute evidence. Depomed points out
that despite the constraint of that rule, the cost of visual aids has been granted in this district even
when the demonstrative exhibits were not admitted into evidence. Dep.’s Reply at 17-18.
Nevertheless, even if the Third Circuit were to embrace the broader definition of
“exemplification,” under § 1920 (4), the demonstrative aids must still have been “necessarily
obtained.” This requirement has been interpreted to exclude the recovery of visuals which
merely illustrated expert testimony or counsel’s argument. Summit Tech., Inc. v. Nidek Co.,
Ltd., 435 F.3d 1371, 1377 (Fed. Cir. 2006) (“As Moore's Federal Practice notes, ‘a video exhibit
or a physical model may not qualify as an “exemplification” if it is essentially explanatory and
argumentative, serving merely as an aid to the argument of counsel and the explanations of
expert witnesses.’ 10 James Wm. Moore et al., Moore's Federal Practice § 54.103[3][d] (3d
ed.2005).”).
In addition to stating that the demonstratives were explanatory, in the sense that “they
were prepared to aid the Court in viewing the evidence in the case,” Sitzman Decl. ¶ 12,
Depomed’s counsel justifies this cost on the ground that the demonstratives “ensure[d] that
witness examination proceeded efficiently given the complexity of the scientific topics covered
and the large number of exhibits admitted into evidence,” id. This very argument was rejected
by one court, which reasoned,
But, to employ this relaxed standard for “necessity” is to read the requirement out of the
statute entirely—every demonstrative expedites presentation of the issues and makes trial
more efficient. Moreover, the incentives of an attorney are to develop trial techniques
beyond what is strictly “necessary” for the presentation of their case. However, the
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statute only allows recovery for exemplifications that were “necessarily obtained for use
in the case,” not for those that merely make trial more efficient, convenient, or
expeditious. § 1920(4). This interpretation is necessary to avoid the allure of expending
vast sums of money on elaborate, professionally prepared exhibits and electronic
presentations that might have jury appeal, but such sensational expense should
appropriately be borne at the peril of excessively imaginative counsel.
Jo Ann Howard & Assocs., P.C. v. Cassity, 146 F. Supp. 3d 1071, 1087 (E.D. Mo. 2015).
The Clerk cannot find that the visual aids in this case were necessary, particularly when
Judge Cecchi herself described them as a “convenience.” Therefore, he denies all such costs,
noting that L. Civ. R. 54.1(g) (10) also advises counsel to obtain a court order before incurring
the expense of such visual aids.
Rental of Multimedia Equipment
In order to present the visual aids, Depomed rented multimedia equipment during the
two weeks of trial and now asks the Clerk to reimburse that $2,000.00 cost, described in the
Suann Ingle Associates, LLC. invoice as: “SIA Equipment Rental for GDC trial team war room
and courtroom. 2 weeks of trial @ $1,000 per week (cables, printer, router, projector, monitor,
switch, adapters).” Dep.’s Bill of Costs, Ex. 11. Defendants contest this cost as well, citing
the Clerk’s prior denial of this type of cost in his more recent Purdue Pharmaceutical Products
decision, 2016 WL 3450809, at *14. Defs.’ Opp. at 21-22.
The Clerk must deny this cost for several reasons. First, if Depomed has failed to show
the necessity of the visual aids, by logical extension, it has not shown the need of the equipment
to display those aids. Secondly, as noted in the above-cited Jo Ann Howard case, 146 F. Supp.
3d at 1087, Depomed has not shown that the courtroom’s electronic display system was
insufficient. Thirdly, while Depomed’s counsel describes this charge as covering “the rental
of multimedia equipment for displaying the demonstratives, trial exhibits, and visual aids in the
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courtroom,” Sitzman Decl. ¶ 13, it is clear from the above-cited description that it covers the
costs of equipment in the war room in addition to that in the courtroom. The requested cost
includes charges for equipment which served the convenience of Depomed’s counsel and was
not necessary.
Trial Support Technicians
The final, but not insignificant, expense requested by Depomed is the $49,080.00 cost
of trial support technicians, described in the Suann Ingle Associates, LLC. invoices as “Trial
Preparation,” charged at rates of $200.00 and $250.00 per hour, and “Trial Presentation
Consulting,” charged at $200.00, $300.00 and $350.00 per hour.12 Dep.’s Bill of Costs, Ex. 11.
An example of a “Trial Preparation” entry, made during closings, is “[m]eet Aquip installers at
courthouse, supervise and test courtroom equipment installation.” The costliest charge for “Trial
Presentation Consulting,” at $5,950.00, incurred during 17 hours on the third day of trial, was for
“[f]urther develop visuals for trial per Sitzman, T Best, D Glandorf, T Kwang, C Ranney, J
Chung; attend trial and coordinate presentations; Direct C Gwinn.”
Defendants contest this cost on the ground that the Clerk has previously denied this class
of expense, finding it akin to expert fees, and also, because some of the entries, such as the one
cited above, include the cost of developing visuals, which they maintain are non-taxable. Defs.’
Opp. at 22-23.
In its reply, Depomed opines that “there is a relative dearth of cases addressing this
subject in this district,” Dep.’s Reply at 20, and relies instead upon cases outside of this district

12

Depomed shows $49,080.00 as the total for this type of “other” cost on its AO
133 form but refers to a “reimbursement of $44,880.00” in its Reply at 19. The Clerk has not
undertaken the task of tallying the charges as he is denying this cost in any event.
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and a 2007 decision, rendered by our former Chief Judge Brown, at a time when costs were also
granted for the cost of legal research, a clearly non-compensable cost today. Ricoh Corp. v.
Pitney Bowes Inc., Civ. No. 02-5639, 2007 WL 1852553, at *3 (D.N.J. June 26, 2007).
While it too is a case outside of this district, the Clerk finds appealing the reasoning used
by the Jo Ann Howard court when it denied the cost of a litigation support specialist on the
ground of lack of necessity:
Even if the use of the specialist “furthered the illustrative purpose” of the exhibits
presented, it cannot be said the use of such a specialist was necessary to put on an
intelligible case. See Behlman v. Century Sur. Co., No. 4:12-CV-1567JAR, 2014 WL
2930658, at *1 (E.D.Mo. June 27, 2014) (disallowing recovery for a trial technician as
not falling within the scope of § 1920). Plaintiffs' counsel could have presented their
case, as many attorneys trying cases before this Court have historically done, through the
use of PowerPoint or the courtroom electronic display system rather than hiring a third
party vendor. . . . Where a cheaper, feasible alternative exists for the presentation of
evidence to the finder of fact, costlier options may not be said to be “necessary” within
the meaning of § 1920(4), and are instead merely “glitz” for which the losing party is not
obligated to pay. See Hunt v. City of Portland, No. CV 08–802–AC, 2011 WL 3555772,
at *14 (D.Or., Aug. 11, 2011) (citing Cefalu, 211 F.3d at 428); Wheeler v. Carlton, No.
3:06–CV–00068GTE, 2007 WL 1020481, at *11 (E.D.Ark., Apr. 2, 2007) (no recovery
for tech vendor used to display exhibits at trial).
146 F. Supp. 3d at 1087-88.
Noting too the Taniguchi Court’s observation that “[t]axable costs are a fraction of the
nontaxable expenses borne by litigants for attorneys, experts, consultants, and investigators,”
566 U.S. at 573, the Clerk reiterates his previously expressed view that the expenses of trial
technicians constitute non-taxable consultant or expert fees. See, e.g., Mylan Inc., 2015 WL
1931139, at *9 (citing other decisions). This conclusion is hard to refute here when the
submitted invoices themselves describe the services as “Trial Presentation Consulting.”
In a fairly recent, very complex case in this district, a special master was appointed to
address the prevailing party’s motion for attorney’s fees and non-taxable costs, as well as its
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bill of costs. Where Decision Quest’s nearly $1.8 million charges for “trial consulting services”
were requested, Special Master O’Keefe recommended that they be granted as a non-taxable cost
within the attorney’s fees motion, not as a taxable cost under Rule 54(d). Avaya, Inc. v.
Telecom, Inc., Civ. No. 06-2490, 2016 WL 10590071, at *40-41 (D.N.J. Sept. 15, 2016). This
Court did not have the opportunity to adopt Special Master O’Keefe’s recommendation because
the Third Circuit vacated the judgment in the underlying case soon thereafter, but his analysis
has not been impugned.
This final “exemplification” fee, like the others, is denied. Pursuant to § 1920 (4), the
fees for exemplification and the costs of making copies are taxed in the amount of $37,003.73.
VI.

Summary

In sum, the Clerk taxes the following costs in favor of Depomed and against Defendants:
Fees of the clerk and marshal, § 1920 (1):

$

2,268.34

Fees for transcripts, § 1920 (2):

$ 32,956.12

Witness fees, § 1920 (3):

$ 34,623.73

Fees for exemplification and copies, § 1920 (4):

$ 37,003.73

TOTAL:

$106,851.92

For the reasons set forth above, the motion of Plaintiff/Counterclaim Defendant
Depomed, Inc. to tax costs against Defendants/Counterclaim Plaintiffs Actavis Elizabeth LLC,
Actavis UT, Alkem Laboratories Limited and Roxane Laboratories, Inc. is hereby GRANTED
IN PART AND DENIED IN PART. An appropriate order follows.
WILLIAM T. WALSH
By: S/John T. O’Brien
Deputy Clerk
February 21, 2018
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