John Mezzalingua Associates, Inc v. Corning Gilbert Inc.

Filing 540

MEMORANDUM-DECISION and ORDER - ORDERED that PPC is awarded costs in the amount of $90,741.55, which represents $350 as fees of the Clerk; $32,089.60 as fees for printedor electronically recorded transcripts necessa rily obtained for use in the case; $4,630.00 as fees for witnesses; $53,671.95 as fees forexemplification and the costs of making copies of any materials where thecopies are necessarily obtained for use in the case. Signed by Senior Judge Gary L. Sharpe on 2/3/2017. (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
PPC BROADBAND, INC.,
Plaintiff,

5:11-cv-761
(GLS/DEP)

v.
CORNING OPTICAL
COMMUNICATIONS RF, LLC,
Defendant.
________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
Barclay Damon LLP
One International Place
14th Floor
Boston, MA 02110

JOHN T. GUTKOSKI, ESQ.

80 State Street
Albany, NY 12207

BELLA S. SATRA, ESQ.

Barclay Damon Tower
125 East Jefferson Street
Syracuse, NY 13202

DOUGLAS J. NASH, ESQ.
GABRIEL M. NUGENT, ESQ.
JOHN D. COOK, ESQ.
KATHRYN DALEY CORNISH,
ESQ.
MARK E. GALVEZ, ESQ.

FOR THE DEFENDANT:
Orrick, Herrington Law Firm
51 West 52nd Street
New York, NY 10019

ANDREW D. SILVERMAN, ESQ.
DANIEL A. RUBENS, ESQ.

1152 15th Street NW

MARK S. DAVIES, ESQ.

Washington, DC 2005-1706
DLA Piper LLP
500 Eighth Street NW
Washington, DC 20004

KATHRYN R. GRASSO, ESQ.
STEPHEN J. GOMBITA, ESQ.
JOSEPH P. LAVELLE, ESQ.
ANDREW N. STEIN, ESQ.

401 B Street
Suite 1700
San Diego, CA 92101-4297

SUSAN N. ACQUISTA, ESQ.

Harter, Secrest Law Firm
1600 Bausch & Lomb Place
Rochester, NY 14604-2711

JERAULD E. BRYDGES, ESQ.
ERIKA N.D. STANAT, ESQ.

Gary L. Sharpe
Senior District Judge
MEMORANDUM-DECISION AND ORDER
I. Introduction
Plaintiff PPC Broadband, Inc. commenced this patent infringement
action against defendant Corning Optical Communications RF, LLC.
(Compl., Dkt. No. 1.) After a four-day trial, the jury found in favor of PPC.
(Dkt. No. 358.) Subsequently, the court held a two-day bench trial on
Corning’s equitable defenses and found that Corning had not proven either
defense. (Dkt. Nos. 513-14, 526.) The court also awarded PPC enhanced
damages, supplemental damages, and pre-judgment interest. (Dkt. No.
526.) Judgment was entered against Corning in the amount of
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$61,339,316. (Dkt. No. 529.) PPC then filed a bill of costs seeking
$121,020.36. (Dkt. No. 538.) Pending are Corning’s objections to the bill
of costs. (Dkt. No. 539.) For the reasons that follow, the Clerk is directed
to tax $90,741.55 as costs.
II. Standard of Review
Fed. R. Civ. P. 54(d)(1) authorizes the recovery of costs by a
prevailing party “[u]nless a federal statute, [the Federal Rules of Civil
Procedure], or a court order provides otherwise.” Recoverable costs are
limited to those enumerated in 28 U.S.C. § 1920, which sets out the
following taxable costs:
(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,
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compensation of interpreters, and salaries,
fees, expenses, and costs of special
interpretation services under section 1828 of
this title.
See Whitfield v. Scully, 241 F.3d 264, 269-70 (2d Cir. 2001) (citing
Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441 (1987)),
abrogated on other grounds by Bruce v. Samuels, 136 S. Ct. 627 (2016).
“[B]ecause Rule 54(d) allows costs ‘as of course,’ such an award against
the losing party is the normal rule obtaining in civil litigation,” thereby
placing on the losing party the “burden to show that costs should not be
imposed.” Id. at 270 (quoting Mercy v. Cty. of Suffolk, 748 F.2d 52, 54 (2d
Cir. 1984)). Where a bill of costs is challenged, the reviewing district court
exercises discretion and “decide[s] the cost question [it]self.” Id. at 269
(internal quotation marks and citation omitted).

III. Discussion
PPC seeks a total of $121,020.36, consisting of the following
itemized costs:
Costs/Fees

Amount

Clerk Fees

$350.00

Deposition Transcripts

$42,417.81
4

Pre-Trial Transcripts

$932.52

Trial Transcripts

$4,562.40

Witness Fees

$4,630.00

Copying Costs

$35,379.27

Animation-Courtroom Pixels

$31,978.13

Trial Boards

$770.23

Total

$121,020.36

(Dkt. No. 538; Dkt. No. 538, Attach. 2.)
Corning first objects to PPC’s bill of costs for the global reason that
“the [c]ourt has broad discretion to deny costs to the prevailing party and
order both sides to bear their own costs.” (Dkt. No. 539 at 2 (citing
Manildra Mill Corp. v. Henkel Corp., 76 F.3d 1178, 1183 (Fed. Cir. 1996)).)
The court declines Corning’s invitation. In addition, Corning specifically
objects to certain categories of costs it claims are not taxable under the
statute or are not supported as reasonably necessary to the case. (Id.)
The court will address these arguments in turn.
A.

Fees for Printing Transcripts Necessarily Obtained For Use in
the Case
1.

Deposition Transcripts

5

Corning contends that value-added deposition services including
rough ASCII copies of transcripts, expedited service, realtime streaming
services, and fees for video synchronization and digitization are not
recoverable. (Dkt. No. 539 at 3.) Consequently, Corning claims the court
should disallow $15,884.36. (Id.; Dkt. No. 539, Attach. 1 ¶ 3.) With the
exception of some fine points, see infra p. 7 & n.1, the court agrees.
District courts in this circuit have disallowed “certain associated fees”
from deposition costs including “expedited service, delivery costs,
appearance fees, and rough diskettes and/or ASC II disks.” Farberware
Licensing Co. LLC v. Meyer Mktg. Co., Ltd., No. 09 Civ. 2570, 2009 WL
5173787, at *5 (S.D.N.Y. Dec. 30, 2009); see Cutie v. Sheehan, No. 1:11CV-66, 2016 WL 3661395, at *4 (N.D.N.Y. July 5, 2016) (disallowing costs
for ASCII transcripts and expedited copies of transcripts). Although
expedited service may be taxable if “quick delivery [is] necessary,”
McGuigan v. CAE Link Corp., 155 F.R.D. 31, 35 (N.D.N.Y. 1994), PPC has
not made this showing, see Woodard v. CSX Transp., Inc., No. 1:10-cv753, 2013 WL 6190843, at *3 (N.D.N.Y. Nov. 26, 2013) (“[T]he burden of
establishing the reasonableness of each charge [for costs] rests with the
prevailing party.”). Even assuming without deciding that the associated
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fees for deposition services are recoverable, PPC has likewise failed to
demonstrate their necessity. See id. Therefore, these value-added
services are not taxable,1 and the court will reduce PPC’s costs for
deposition transcripts by $15,675.36. (Dkt. No. 539, Attach. 1 ¶ 3.)
Corning also argues that video depositions of PPC’s own witnesses
are not necessary and should not be taxable. (Dkt. No. 539 at 8.) The
court disagrees. Video depositions are a recoverable cost. See 28 U.S.C.
§ 1920(2); see also In re Ricoh, Ltd. Patent Litig., 661 F.3d 1361, 1370
(Fed Cir. 2011) (finding “the correct interpretation of section 1920” includes
“taxing both the written transcript and the video of the depositions”).
Moreover, a party to a civil case cannot necessarily anticipate a deponent’s
availability for trial, which may be beyond the court’s subpoena power, and
the party should be able to preserve their witness’s testimony through

1

The court rejects Corning’s argument on one ground. (Dkt. No. 539, Attach. 1 ¶ 3.)
Corning contends that the transcript from the “Judge’s Ruling” during Noah Montena’s
deposition should be excluded from costs. (Id.; Dkt. No. 538, Attach. 3 at 18.) It is clear from
the record that counsel called Magistrate Judge Peebles during Montena’s deposition to rule
on an objection. (Minute Entry of May 21, 2013.) It is apparent that Judge Peebles’ ruling was
memorialized in Montena’s deposition transcript and is, thus, taxable. (Dkt. No. 538, Attach. 3
at 18.) In the same entry, Corning lists “Exhibits” as a non-taxable value-added service. (Dkt.
No. 539, Attach. 1 ¶ 3.) This appears to be an oversight as the invoice clearly indicates that
the exhibits were used at Montena’s deposition and are thus taxable. See Internet Law
Library, Inc. v. Southridge Capital Mgmt., Nos. 01 Civ. 6600, 01 Civ. 0877, 02 Civ. 0138, 2010
WL 3290965, at *8 (S.D.N.Y. Aug. 11, 2010). Accordingly, $209.00 is excluded. (Dkt.
No. 539, Attach. 1 ¶ 3.)

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video for trial. See Fed. R. Civ. P. 45(c)(1); see also McGuigan, 155
F.R.D. at 35. Accordingly, PPC’s costs for the video depositions of their
own witnesses are taxable.
2.

Pre-Trial & Trial Transcripts

Corning argues that PPC has not shown that expedited delivery of
pre-trial transcripts were necessary and suggests that PPC should recover
only the costs for the one pre-trial transcript it ordered at the ordinary
delivery rate. (Dkt. No. 539 at 5.)
As with deposition transcripts, there may be a reason for expedited
service of pre-trial transcripts, but the party seeking costs must
demonstrate that necessity. See McGuigan, 155 F.R.D. at 35. Indeed
PPC has established that pre-trial transcripts were necessary to oppose
Corning’s partial summary judgment motion and for trial preparation,
however, it has not shown that “quick delivery [was] necessary.” Id. The
court rejects Corning’s contention that PPC should recover only for the pretrial transcript ordered at the ordinary rate and instead includes as taxable
all pre-trial transcripts at the ordinary delivery rate determined by this
district. See N.D.N.Y. General Order 3 (setting the transcript rate for
ordinary delivery at $3.65 per page). Therefore, the court includes $784.75
8

as taxable costs.2

Corning also objects to PPC’s request for daily trial transcript costs
because they were only for counsel’s convenience. (Dkt. No. 539 at 5-6.)
PPC explained that, among other things, the transcripts “were utilized to
prepare for future trial work.” (Dkt. No. 538, Attach. 1 at 7.)
“Trial transcripts are undoubtedly useful in preparing for crossexamination, evidentiary disputes, summation, and the jury charge.”
Cohen v. Bank of N.Y. Mellon Corp., No. 11 Civ. 0456, 2014 WL 1652229,
at *2 (S.D.N.Y. Apr. 24, 2014). To award the “premium cost of daily
transcripts” courts must find a necessity “beyond the mere convenience of
counsel.” Galella v. Onassis, 487 F.2d 986, 999 (2d Cir. 1973). That said,
“[t]he question of whether the expense of a daily transcript is to be taxed . .
. is a matter resting largely in the discretion of the trial court.” Syracuse
Broad. Corp. v. Newhouse, 319 F.2d 683 (2d Cir. 1963). Where courts
have taxed costs for expedited transcript delivery, they have evaluated
factors such as “the amount of representation, the length of the trial, and

2

This amount is the product of the $3.65 page rate for ordinary delivery and the
number of pages in the pre-trial transcripts found in PPC’s submitted invoices. (Dkt. No. 538,
Attach. 4 at 2-7.)

9

the complexity of the issues in the case.” Hogan v. Novartis Pharm. Corp.,
No. 06-260, 2012 WL 5898473, at *2 (E.D.N.Y. Nov. 20, 2012) (internal
quotation marks and citation omitted), aff’d 546 F. App’x 672 (2013); see,
e.g., Perks v. Town of Huntington, 331 F. App’x 769 (2d Cir. 2009)
(upholding costs of daily transcripts where parties relied on transcripts
during trial to impeach a crucial witness, determine admission of
documentary evidence, resolve disputes over a party’s legal theory and
prepare the jury charge); Forest Labs., Inc. v. Abbott Labs., No. 96-CV159S, 2006 WL 7077571, at *1 (W.D.N.Y. May 17, 2006) (taxing costs for
daily transcripts in lengthy and complex patent infringement trial).
While PPC’s explanation for the necessity of daily transcripts could
have been more detailed, the circumstances of this case warrant taxing
these costs. The issues presented were undoubtedly complex and
involved an explanation of multiple patents, technical components of
coaxial cable connectors, and past litigation between the parties. (See
generally Dkt. Nos. 359-62, 513-14.) The trial schedule further
accentuated the complexity of the case. The trial was conducted in two
parts — a jury trial on patent infringement and a bench trial on equitable
defenses — and the evidence presented was largely relevant to both trials.
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Furthermore, daily transcripts were used by both parties to prepare and
impeach witnesses and in their respective summations. That said, the
court recognizes that “[u]se of the transcript during trial does not per se
establish that they were necessary.” Hogan, 2012 WL 5898473, at *2
(internal quotation marks and citation omitted). Nevertheless, the court
finds based on the totality of the circumstances that fees for daily
transcripts were necessary.
In light of the foregoing, the court taxes $32,089.60 for printing
transcripts necessarily obtained for use in the case, which reflects a
reduction of $15,675.36 for value-added deposition transcript services and
$147.77 for expedited pre-trial transcript delivery. (Dkt. No. 538, Attach. 3;
Dkt. No. 538, Attach. 4 at 2-7; Dkt. No. 539, Attach. 1 ¶ 3.)
B.

Fees for Exemplification and the Costs of Making Copies where
the Copies are Necessarily Obtained For Use in the Case
PPC has requested $68,127.63, reflecting a fifty percent reduction

from vendor invoices for the copying and exemplification costs. (Dkt. No.
538; Dkt. No. 538, Attach. 1 ¶ 18; Dkt. No. 538, Attach 2 at 4-6; Dkt. No.
538, Attachs. 9-10.) Regarding copying costs, PPC explains that while
they “relate almost entirely to trial exhibits . . . admittedly, a small

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percentage of the copies were made for convenience of counsel, and it
would be onerous effort to delineate this amount.” (Dkt. No. 538, Attach. 1
¶ 18.) As for exemplification costs, PPC opted to reduce its costs because
the animations were used to further illustrate the evidence and explain the
technology at issue. (Id.)
In response, Corning argues that PPC includes non-recoverable or
unsupported costs in each category that a blanket fifty percent reduction
will not cure. (Dkt. No. 539 at 6.) Specifically, Corning first objects to the
significant number of copies that were never used as trial exhibits,
unsupported charges for color copies, non-recoverable charges for
binders, tabs, Bates labeling, and “technical time,” and a duplicative
invoice. (Id. at 6-8.)
Costs for copying materials necessarily obtained for use in the case
are recoverable. See 28 U.S.C. § 1920(4). Courts have the discretion to
determine the award amount for authorized costs. See United States ex
rel. Evergreen Pipeline Constr. Co., Inc. v. Merritt Meridian Constr. Corp.,
95 F.3d 153, 171 (2d Cir. 1996). “[S]ection 1920(4) does not demand
page-by-page precision,[however,] a bill of costs must represent a
calculation that is reasonably accurate under the circumstances.” Summit
12

Tech., Inc. v. Nidek Co., Ltd., 435 F.3d 1371, 1380 (Fed. Cir. 2006). A
prevailing party may recover reasonable costs for photocopying even
where the document was not admitted at trial. See Evergreen, 95 F.3d at
173. In Summit Tech., the prevailing party in a complex patent litigation
submitted a bill of costs for fifty percent of its total copying costs to account
for copies that were either unnecessary or duplicative. See 435 F.3d at
1378. The court upheld this calculation method while acknowledging it to
be “somewhat crude,” but nevertheless permissible, “in complex patent
litigation involving hundreds of thousands of documents and copies.” Id.
The court reasoned that under the circumstances of the case “parties
cannot be expected to track the identity of each photocopied page along
with a record of its relevance to the litigation.” Id.
The same reasoning applies here where the number of copies
reached over one hundred thousand and, as discussed above, the case
was complex. (Dkt. No. 539, Attach. 1 ¶ 5); see supra Part.III.A.2.
Accordingly, the court finds that PPC’s proposed reduction reasonably
estimates its necessary photocopying costs and addresses most of
Corning’s objections.
The court, however, disallows costs for items identified by Corning as
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office supplies or extra services, which amount to general overhead costs.
(Dkt. No. 539, Attach. 1 ¶ 7); see, e.g., Yong Fang Lin v. Tsuru of
Bernards, LLC, No. 10-2400, 2011 WL 2680577, at *4 (D.N.J. July 8,
2011). At the same time, the court recognizes that bates-stamping is
necessary to identify documents and may be taxable in a future case. See
Split Pivot, Inc. v. Trek Bicycle Corp., 154 F. Supp. 3d 769, 781 n.10 (W.D.
Wisc. 2015) (taxing costs for bates-stamping because it “has often been a
part of paper copying costs to insure an orderly and controlled production
of documents”). Nonetheless, the bates-stamping costs here have not
been separated from other disallowed billings and the court will not
endeavor to do this on its own. Additionally, while the court recognizes
that PPC has not had an opportunity to respond to Corning’s objections
and correct any oversights in billing, it also disallows costs for a duplicate
invoice in the amount of $11,050.64. (Dkt. No. 538, Attach. 9 at 7-8; Dkt.
No. 539 at 6-7.)
In addition, Corning objects to PPC’s exemplification costs for
animations as unnecessary and to certain billings from Courtroom Pixels, a
company that creates trial graphics. (Dkt. No. 539 at 9-10.)
Section 1920(4) allows for recovery of “exemplification . . .
14

necessarily obtained for use in the case.” District courts in this circuit have
found that demonstrative aids are recoverable under this subsection. See,
e.g., Romag Fastners, Inc. v. Fossil, Inc., No. 3:10cv1827, 2015 WL
5787019, at *13 (D. Conn. Sept. 30, 2015); DiBella v. Hopkins, 407 F.
Supp. 2d 537, 540 (S.D.N.Y. 2005). Courts have taxed costs for
demonstratives found to aid the fact finder which “efficient[ly] and
effective[ly]” present the evidence. In re Omeprazole Patent Litig., Nos. M21-81, 00 Civ. 4541, 03 Civ. 8719, 2012 WL 5427791, at *7 (S.D.N.Y. Nov.
7, 2012); see Settlement Funding, LLC v. AXA Equitable Life Ins. Co., No.
09 CV 8685, 2011 WL 2848644, at *1 (S.D.N.Y. July 18, 2011).
PPC requests half of the costs from its vendor invoices for
exemplification. (Dkt. No. 538, Attach. 1 ¶ 18.) The court finds that PPC’s
animation and other visual aids were helpful to both the jury and the court
to explain the coaxial cable technology and to present and highlight the
evidence at trial. Included in these costs is time spent by Courtroom Pixels
graphic designers to consult with the lawyers in the case, which the court
finds was necessary to create the demonstratives. See Romag Fastners,
Inc., 2015 WL 5787019, at *13 (taxing IT specialist fees to develop visual
exhibits). Consequently, the court taxes PPC’s requested costs as a
15

reasonable estimate of exemplification costs necessary for use at trial.
The court, however, disallows any airfare expenses not already excluded
by PPC in the amount of $1,250.00. (Dkt. No. 539 at 10 n.1; Dkt. No. 538,
Attach. 10 at 12-13.)
In sum, the court taxes $53,671.95 for copying and exemplification
costs, which reflects a reduction of $1,384.81 for general overhead costs,
$11,050.64 for a duplicate copying invoice, and $1,250.00 for unaccounted
for airfare expenses. (Dkt. No. 538, Attach. 9 at 7-8; Dkt. No. 538, Attach,
10 at 12-13; Dkt. No. 539, Attach. 1 ¶¶ 7,8.)
IV. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that PPC is awarded costs in the amount of $90,741.55,
which represents $350 as fees of the Clerk; $32,089.60 as fees for printed
or electronically recorded transcripts necessarily obtained for use in the
case; $4,630.00 as fees for witnesses; $53,671.95 as fees for
exemplification and the costs of making copies of any materials where the
copies are necessarily obtained for use in the case; and it is further
ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
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IT IS SO ORDERED.
February 3, 2017
Albany, New York

17