AstraZeneca AB, et al v. Mylan Laboratories, et al

Filing 103

OPINION AND ORDER: For the foregoing reasons, the Court GRANTS Mylan/Esteve's application to tax costs against Astra subject to the limitations set forth in this Opinion. The Court has determined that $184,054.52 of Mylan/Esteve's req uested costs are taxable. Mylan/Esteve are directed to submit to the Clerk of Court a revised application to tax costs against Astra reflecting the Court's rulings within thirty (30) days of this Opinion. (Signed by Judge Barbara S. Jones on 11/6/2012) (ae)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
----- - - - - - -- - --- - ---- - - --x
In re OMEPRAZOLE PATENT LITIGATION

USDC SONY

DOCUMENT

ELECTRONICALLY FILED
DOC#
J
DATE FILED:

/1/:07/ iiJ.I1r(15)

M-21-81 (BSJ)
MDL Docket No. 1291

ASTRAZENECA AB, et al.,
Plaintiffs,

00 Civ. 6749 (BSJ)

MYLAN LABORATORIES INC., et al.,
Defendants.
- ---------- - -------- ---------- - -x
ASTRAZENECA AB, et al.,
Plaintiffs,

03 Civ. 6057(BSJ)

LABORATORIOS DR. ESTEVE, S.A., et al.,:
Defendants.

Opinion and Order
-

--x

BARBARA S. JONES
UNITED STATES DISTRICT JUDGE
On July 24, 2008, Defendants Mylan Laboratories Inc., et
al., and Laboratorios Dr. Esteve, S. A., et al.

( "Mylan/Esteve" ) ,

submitted to the Clerk of Court a Bill of Costs, pursuant to 28
U.S.C.

§

1920, Federal Rule of Civil Procedure 54(d) (1), and

Rule 54.1 of the Local Civil Rules of the United States District
Court for the Southern District of New York, against Plaintiffs
Astrazeneca AB, et al.

("Astra"), in the amount of $376,810.79.

Mylan/Esteve subsequently amended their Application to request a
total of $377,180.26

("Amended Bill of Costs").

On August 24,

2012, the Clerk of Court entered judgment in favor of
Mylan/Esteve in the amount of $166,068.43, which is the amount
of requested costs to which Astra did not object.

1

1

For the

reasons stated below, the Court GRANTS the remainder of
Mylan/Esteve's request to tax costs subject to the limitations
set forth in this Opinion.
BACKGROUND

On June 18, 2007, the Court entered judgment in favor of
Mylan/Esteve against Astra.
judgment on July 1, 2008.

The Federal Circuit affirmed the
Mylan/Esteve submitted their request

to tax costs against Astra on July 24, 2008.

Astra submitted

objections to the Application on August 25, 2008, Mylan/Esteve
replied to those objections on September 18, 2008, and Astra
filed a surreply in opposition to Mylan/Esteve's requested costs
on October 3, 2008.
On June 28, 2010, the Court issued an Opinion and Order
("June 2010 Opinion") granting Astra's application to tax costs
against three of the First Wave defendants l

which addressed the

,

proper methodology for determining the appropriate taxable costs
in this litigation.

Specifically, the Court found that "because

'the claims and defenses of each defendant in the litigation
were inextricably intertwined, it is practically
impossible .

. to accurately divide the deposition or trial

testimony into portions attributable to individual defendants.'"

The Court deemed Astra the prevailing party against Andrx Pharmaceuticals,

Inc. ("Andrx"), Cheminor Drugs Ltd., Reddy-Cheminor Inc., and Schein

Pharmaceutical, Inc. ("Cheminor"), and Genpharm Inc. ("Genpharm).
In its

June 2010 Opinion and Order, the Court granted Astra's application as to

Genpharm, subject to the limitations set forth in the Opinion and Order.

1

I

I

2

(June 2010 Opinion, slip op. 7 (quoting Astra Reply in Support
of its Costs Application at 4).)

In addition, the Court held

that Astra/s request for the cost of witness airfare did not
comply with 28 U.S.C.

§

1920(c) (1) because, inter alia, Astra's

documentation was insufficient, as it listed airfare prices at
the time of submission rather than the actual costs at the time
of travel.

(June 2010 Opinion, slip op. 8.)

Finally, the Court

also limited recovery of witness subsistence costs to the
maximum per diem allowance prescribed by the General Services
Administration.

(June 2010 Opinion, slip op. 9.)

On September 4, 2010, the Court issued an Order granting
the prevailing First Wave defendants,2 motion to vacate and amend
the Judgment Clerk's initial denial of KUDCo's application to
tax costs against Astra ("September 2010 Opinion") .

In that

opinion, the Court decided how to reconcile the different
categories of taxable costs laid out in 28 U.S.C.

§

1920 and

Local Civil Rule 54.1, concluding that "the Court will tax all
costs enumerated in 28 U.S.C.

§

1920 except that, to the extent

that Local Civil Rule 54.1 speaks to a specific cost, its
provisions govern."

(September 2010 Opinion, slip op. 6.)

In

The Court found that Kremers Urban Development Co. and Schwarz Pharma, Inc.
(collectively, "KUDCo") were prevailing parties against Astra in the first
wave of litigation.
In its September 2010 Opinion, the Court granted KUDCo's
motion to vacate and amend the Judgment Clerk's denial of KUDCo's application
to tax costs, subject to the limitations set forth in the Opinion.
Subsequently, the Court granted KUDCo's revised application to tax costs,
which comported with the september 2010 Opinion.

2

3

addition, the Court responded to Astra's objections to a variety
of KUDCo's requested costs, including photocopy costs, exhibit
copy costs, scanning and coding costs, copy costs for file
histories, prior art and other references, hearing and
deposition transcript costs, daily trial transcript costs,
LiveNote costs, interpreting and translating costs, trial
presentation costs, and witness subsistence and travel costs.
On February 22, 2011, Mylan/Esteve moved to amend their
Bill of Costs in light of the September 2010 Opinion and the
subsequent October 22, 2010, Order granting KUDCo's revised
application to tax costs, which followed the September 2010
Opinion.

On August 21, 2012, the Court so ordered a stipulation

between the parties to award partial judgment in favor of
Mylan/Esteve for all costs to which Astra did not object,
totaling $166,068.43.

The Clerk entered judgment accordingly on

August 24, 2012.
Where applicable, the June 2010 and September 2010 Opinions
will govern the Court's determination of Mylan/Esteve's taxable
costs.
DISCUSSION
I. Legal Standard

Costs other than attorneys' fees generally are awarded to
the prevailing party under Federal Rule of Civil Procedure

4

54 (d) (1).

See Dattner v. Conagra Foods, Inc., 458 F.3d 98, 100

(2d Cir. 2006).

Rule 54 (d) (1) states in relevant part:

Unless a federal statute, these rules, or a court
order provides otherwise, costs-other than attorney's
fees-should be allowed to the prevailing
party . .
The clerk may tax costs on 14 days'
notice. On motion served within the next 7 days, the
court may review the clerk's action.
However, the term "costs" as used in Rule 54 "includes only
the specific items enumerated in 28 U.S.C.

§

1920 (1994)."

Whitfield v. Scully, 241 F.3d 264, 269 (2d Cir. 2001)
omitted).

(citations

That statute lists six categories of expenses that

may be taxed as costs:

(1) fees of the clerk and marshal;

(2)

fees for transcripts necessarily obtained for use in the case;
(3) fees for printing and witnesses'

(4) fees for

exemplification and copies where necessarily obtained for use in
the casej

(5) docket fees under 28 U.S.C. § 1923j and (6)

compensation of experts and interpreters.

See 28 U.S.C. § 1920.

"After the prevailing party demonstrates the amount of its
costs and that they fall within an allowable category of taxable
costs, that party enjoys a presumption that its costs will be
awarded."

Natural Organics, Inc. v. Nutraceutical Corp., No. 01

Civ. 0384 (GBD) (RLE) , 2009 WL 2424188, at *2
2009)

(S.D.N.Y. Aug. 6,

(quotation marks and citations omitted).

However, the

court has authority to review, adjust, or deny an award of
costs, and that decision "is committed to the sound discretion

5

of the district court."

Cosgrove v. Sears, Roebuck, & Co., 191

F.3d 98, 102 (2d Cir. 1999)
omitted).

(quotation marks and citation

The Supreme Court has cautioned that "the discretion

given district judges [by Rule 54(d)] to tax costs should be
sparingly exercised with reference to expenses not specifically
allowed by statute."

Farmer v. Arabian Am. Oil Co., 379 U.S.

227, 235 (1964).
II.

Costs

As the Court ruled previously, the Court will tax all costs
enumerated in

§

1920 except that, to the extent that Local Civil

Rule 54.1 speaks to a specific cost, its provisions govern.
(September 2010 Opinion, slip op. 6.)
Before the Court is Mylan/Esteve's request to tax remaining
costs totaling $204,370.42.

Astra objects to the entire amount.

With regard to its objections, Astra argues generally that
Mylan/Esteve should not be permitted to tax costs for trial and
deposition transcripts concerning claims and defenses that are
unrelated to Mylan/Esteve.

(Astra Objections at 5.)

In its

June 2010 Opinion, the Court held that "because the claims and
defenses of each defendant in the litigation were inextricably
intertwined, it is practically impossible .

to accurately

divide the deposition or trial testimony into portions
attributable to individual defendants."
slip op. 7 (citation omitted).)

(June 2010 Opinion,

The Court is of the same

6

opinion with respect to the Second Wave cases and therefore sees
no reason to depart from its previous ruling concerning the
First Wave defendants.

Accordingly, the Court will award all

properly taxable costs requested by Mylan/Esteve, regardless of
whether the testimony related to claims or defenses concerning
Mylan/Esteve.
The Court now turns to the various categories of costs.
A. Transcript Fees
1. Daily Trial Transcripts

Section 1920 provides for taxation of costs related to
printed or electronic transcripts.

28 U.S.C.

§

1920(2).

Local

Civil Rule 54.1(c) (1) provides in relevant part that "[t]he cost
of any part of the original trial transcript that was
necessarily obtained for use in this Court or on appeal is
taxable.

Convenience of counsel is not sufficient."

Mylan/Esteve initially requested $45,861.86 in costs for
necessarily obtained trial transcripts.

In their Amended Bill

of Costs, Mylan/Esteve reduced that amount by $35,615.61, which
they assert covers "taxation of the costs of Real Time trial
transcripts and additional deposition transcript services[.]"
(Amended Bill of Costs at 3.)
Astra objects first to a portion of these charges because
it argues they cover costs of unnecessarily obtaining
transcripts that "do not address issues relating to

7

Mylan/Esteve's affirmative case at trial.
8.)

1I

(Astra Objections at

The Court has already determined that it will not endeavor

to separate portions of trial testimony as related to one
defendant or another.

Mylan/Esteve should recover all of its

taxable costs, which include daily trial transcripts.
Astra also objected to Mylan/Esteve's requested charges for
minuscripts, diskettes, and Real Time translations of the daily
trial transcripts, which it argues were not necessarily obtained
for use in the case.

(Astra Objections at 7-8.)

In the Amended

Bill of Costs, Mylan/Esteve conceded that charges for Real Time
translations were not taxable.

(Amended Bill of Costs at 3.)
~additional

Because it is unclear to the Court which
transcript services

ll

deposition

Mylan/Esteve cut from their original

request, the Court will address Astra's objections to charges
for minuscripts and diskettes.
Mylan/Esteve argue that minuscripts and diskettes were
~used

in reviewing and correcting the trial transcript on a

daily basis.1I

(Mylan/Esteve Reply at 5.)

Mylan/Esteve further

assert that minuscripts and diskettes were useful because the
case was particularly complex and because it involves testimony
by many non-English speakers.

(Mylan/Esteve Reply at 5 6.)

The

Court agrees that these services were helpful to the parties;
however, the Court is not persuaded that they were essential to
the production of daily errata sheets.

8

Accordingly, the Court

limits Mylan/Esteve's requested trial transcript costs to the
original transcript charges only, which totals $17,047.36.
2. Deposition Transcripts

Local Civil Rule 54.1 provides in relevant part that
"[u)nless otherwise ordered by the Court, the original
transcript of a deposition, plus one copy, is taxable if the
deposition was used or received in evidence at the
trial .

. Costs for depositions taken solely for discovery

are not taxable."

Mylan/Esteve request deposition transcript

costs in the amount of $164,907.28. 3
Astra objects that Local Civil Rule 54.1(c) (2) precludes
recovery by Mylan/Esteve of costs related to depositions that
were not used or received in evidence in relation to Astra's
case against Mylan/Esteve and were not used by the Court in
ruling on a dispositive motion concerning Mylan/Esteve.
Objections at 12.)

(Astra

Astra concedes that "[d)esignations in this

case were made in a consolidated manner," and, therefore, all
designated depositions were introduced and received into
(Astra Objections at 12.)

evidence against all defendants.

Astra does not dispute that all of the depositions for which
Mylan/Esteve seek reimbursement were designated and introduced
and received into evidence.

In keeping with the Court's

Mylan/Esteve originally requested $164,909.00, but concedes that $2.71 was
erroneously included in that amount.
(Mylan/Esteve Reply at 6 n.4.)

3

9

previous decisions, the Court will tax costs against Astra for
one original transcript and one copy of all depositions
introduced and received into evidence in relation to any party
during the trial.
Astra also objects to charges for additional deposition
transcript costs

l

which "include charges for ASCII fees

l

Rough

ASCII fees, Compressed transcripts, Court Reporter fees,
Livenote and Real Time fees, Livenote License fees, Audio
Headsets, CD Conversions, Video fees, Delivery fees, Early
Pages, Night Pages

l

Exhibit Fees, and Taxes on the whole sum."

(Astra Objections at 11.)
Of these categories of fees,

the Court finds that only

exhibit fees are taxable costs, as exhibits are a necessary part
of an original deposition transcript.
Inc. v. Southridge Capital Mgmt. LLC

I

See Internet Law Library,
Nos. 01 Civ. 6600 (JSR)

I

01

Civ. 0877 (JSR) , 02 Civ. 0138 (JSR) , 2010 WL 3290965, at *8
(S.D.N.Y. Aug. III 2010).
Video fees have been deemed taxable where "there was an
expectation among the parties that the video of the testimony
might be presented at trial[.]"
Equitable Life Ins. CO'

I

No. 09 CV 8685 (HB) , 2011 WL 2848644, at

*3-4 (S.D.N.Y. July 18, 2011)
Tupungato

l

Settlement Funding, LLC v. AXA

(quoting Ferrostaal

l

Inc. v. M/V

No. 03 Civ. 4885 (MGC) , 2008 WL 2796644

1

at *3

(S.D.N.Y. July 16, 2008}).

Mylan/Esteve do not seek

10

reimbursement for video fees related to every deposition;
however, they have made no effort to establish with any
specificity that the parties reasonably believed that video
testimony would be used at trial for the depositions for which
they charge video fees.
The Court has previously rejected requests to tax costs for
LiveNote services,

(September 2010 Opinion, slip op. 12), and

the same reasoning applies to Real Time costs.

In addition,

courts in this District have determined that court reporter
appearance fees, delivery fees, ASCII and rough ASCII fees are
not taxable.

_________ , Farberware Licensing Co. LLC v. Meyer

Mktg. Co., Ltd., No. 09 Civ. 2570 (HB) , 2009 WL 5173787, at *5-6
(S.D.N.Y. Dec. 30, 2009)

(finding that fees for expedited

service, delivery costs, appearance fees, and rough diskettes
and/or ASCII disks are not taxable), aff'd, No. 10 Civ. 0384,
2011 WL 2618722 (2d Cir. July OS, 2011))

i

Yin v. Japan Soc.,

Inc., No. 99 Civ. 4806(HB), 2000 WL 827671, at * 2 (S.D.N.Y.
June 27, 2000).

Finally, the Court is not persuaded that audio

headsets, CD conversions, early pages, and night pages were
essential to obtaining the original transcript and one copy
thereof, which are the only deposition costs taxable under Local
Civil Rule 54.1 (c) (2) .
Accordingly, the Court will only tax costs against Astra
for the original transcript, one copy thereof, and exhibit fees.

11

The Court will award to MylanjEsteve deposition transcript costs
in the amount of $109,482.71.
B. Expenses Incurred Traveling to Depositions Overseas

Under Local Civil Rule 54.1(c) (2),

~[c]ounsel's

fees and

expenses in attending the taking of a deposition are not taxable
except as provided by statute, rule (including Local Civil Rule
30.1), or order of the Court."

MylanjEsteve request $20,359.36

in airfare and travel expenses incurred by counsel for attending
court-ordered depositions in foreign countries.

Astra objects

to the entire amount, arguing that no statute, rule, or court
order authorizes taxing these costs.

(Astra Objections at 14.)

MylanjEsteve argue that because the Court ordered the
depositions, the Court should now order that the travel costs
for those depositions are taxable.
The Court disagrees.

(MylanjEsteve Reply at 12.)

There is no reason to view counsel's

travel expenses for these depositions as anything other than
attorneys' fees, which are not taxable under Local Civil Rule
54.1(c) (7)

See e.g., Sylvester v. City of New York, No. 03

Civ. 8760(FM), 2006 WL 3230152, at *15 (S.D.N.Y. Nov. 8, 2006)
(citation omitted).

The Court therefore denies these costs.

c. Trial Witness Fees, Mileage, and Subsistence
Section 1920 provides for taxation of fees for witnesses.
28 U.S.C. § 1920(3).
~[w]itness

Under Local Civil Rule 54.1(c) (3),

fees and travel expenses authorized by 28 U.S.C.

12

§

1821 are taxable if the witness testifies 4 •

Subsistence pursuant

to 28 U.S.C. § 1821 is taxable if the witness testifies and it
is not practical for the witness to return to his or her
residence from day to day.

/I

Under 28 U. S. C. § 1821 (c) (1),

\\ [a]

witness who travels by common carrier shall be paid for the
actual expenses of travel" and \\[s]uch witness shall utilize a
common carrier at the most economical rate reasonably available.
A receipt or other evidence of actual cost shall be furnished./I
Mylan/Esteve have requested trial witness fees in the
amount of $3,292.60.

Astra objects to $289.00 of that amountS

because, it argues, Mylan/Esteve seek reimbursement for
appearance fees for two days for one witness (Dr. Lopez) who
appeared only on one day, and returned home the next day.
(Astra Surreply at 7 8 (citing Trial Tr. 2251:22 25).)
Mylan/Esteve point out that at the end of the first day of Dr.
Lopez's testimony, it was agreed to by the parties and the Court
that Dr. Lopez should return the next day to clear up any
disputes about the translation of his testimony, and that on the
next day the Court excused Dr. Lopez because no such disputes
arose between the parties.

(Mylan/Esteve Reply at 13 (citing

Trial Tr. 2245:24-2248:5, 2251:1 2252:2).)

The Court finds that

The Court has determined that a witness "testifies ff for the purposes of
Local civil Rule 54.1(c) (2) when he or she testifies at trial.
(See
September 2010 Opinion, slip op. 13.)
5 Astra initially objected to more of the trial deposition costs, but was
satisfied with Mylan/Esteve's supplemental evidence regarding all but $289.00
of the charges.
(Astra Surreply at 7.)

4

13

Dr. Lopez was properly called to testify for a second day, and
that his appearance fee is therefore taxable, even though he
ultimately did not testify on the second day.
Accordingly, the Court will therefore award Mylan/Esteve
trial witness costs in the amount of $3,292.60.
D. Deposition Witness Fees, Mileage, and Subsistence

Pursuant to Local civil Rule 54.1(c) (2), "[f]ees, mileage,
and subsistence for the witness at the deposition are taxable at
the same rates as for attendance at trial if the deposition
taken was used or received in evidence at the trial."
Mylan/Esteve seek $8,406.95 in deposition witness travel
expenses and attendance fees.

Astra objects to $1,849.70 of

this amount because, it argues, three depositions for which
Mylan/Esteve seek reimbursement were not used or received in
evidence at trial.

(Astra Objections at 13.)

Mylan/Esteve

assert correctly that the three depositions were all part of the
depositions designated by the parties.
13-14.)

(Mylan/Esteve Reply at

Because all depositions designated by the parties were

introduced into evidence at trial, the Court is satisfied that
Mylan/Esteve have demonstrated that the costs associated with
the three depositions in question are taxable.
Astra objects also to a small portion of Mylan/Esteve's
requested deposition witness costs because the Amtrak ticket
purchased for one of Mylan/Esteve's witnesses was a business

14

class ticket, which is not the most economical rate of travel.
(Astra Objections at 16.)

The Court rejects MylanjEsteve's

argument that the mode of transportation used was "reasonable
and economical compared to other means of travel by common
carrier..

[and] thus the amount is properly taxable./I

(MylanjEsteve Reply at 14.)

The Court will not tax against

Astra the cost of the business class train ticket because it is
not the most economical rate of travel reasonably available.
See 28 U.S.C.

§

1821(c) (1).

Accordingly, the Court will grant MylanjEsteve deposition
witness costs in the amount of $8,116.95.
E. Interpreter Fees for Witnesses Whose Fees are Taxable

Section 1920 provides for recovery of costs for
compensation of interpreters.

28 U.S.C.

§

1920(6).

"The

reasonable fee of a competent interpreter is taxable if the fee
of the witness involved is taxable./I

Local Civ. R. 54.1{c) (4).

MylanjEsteve request $3,933.85 for interpreting fees.
Astra objects only to $650.00 of that amount which represents
the interpreter fee for Dr. Lopez's second day of trial.

The

Court has already found that the appearance fee for Dr. Lopez's
second day of trial is taxable.

The appearance fee for the

interpreter who appeared at trial in case Dr. Lopez took the
stand is therefore also taxable.

The Court will therefore grant

MylanjEsteve interpreting fees in the amount of $3,933.85.

15

F. Translation Fees for Documents Used or Received in Evidence

"The reasonable fee of a translator is also taxable if the
document translated is used or received in evidence."
Civ. R. 54.I(c) (4).

Local

Mylan/Esteve have requested compensation

for translation fees in the amount of $12,593.30 6 , and Astra
objects to a portion of these costs. 7
The costs to which Astra objects relate to the translation
of nine documents in French and Spanish, which Astra concedes
were used or received in evidence.

(Astra Surreply at 9.)

Astra takes issue with the vagueness of Mylan/Esteve's
documentation regarding whether the amount invoiced relates only
to the nine translated documents that were used at trial.
Mylan/Esteve have submitted an attorney declaration that stated
that the invoices they submitted "relate to translation fees for
documents that were used on Mylan/Esteve's trial exhibit list
and documents that were received in evidence at trial."
(Pacella Decl.

~

9.)

The Court cannot determine from

Mylan/Esteve's submissions that all of the documents for which
they seek translation costs were used or received in evidence at
trial, as required under Local Civil Rule 54.1(c) (4).

The Court

will therefore deny that portion of the translation costs.

Mylan/Esteve erroneously listed this number as $12,128.90 in their original
Bill of Costs.

7 Astra initially objected to the entire amount requested for translating

costs, but withdrew its objection to a portion of the requested costs and now

objects only to $5,114.10.

6

16

Accordingly, Mylan/Esteve are entitled to recover translation
costs in the amount of $7,479.20.
G. Exemplifications and Copies of Exhibits Used or Received in
Evidence

Section 1920(4) provides for taxation of "[f]ees for
exemplification and the costs of making copies of any materials
where the copies are necessarily obtained for use in the case,"
Local Civil Rule 54.1 addresses specifically costs of copying
exhibits: "A copy of an exhibit is taxable if the original was
not available and the copy was used or received in evidence.
The cost of copies used for the convenience of counselor the
Court are not taxable."

Local Civ. R. 54,l(c) (5),

Mylan/Esteve originally requested costs for
exemplifications and copies of all exhibits on their exhibit
list in the amount of $3,630.00, and Astra objected to the
majority of those charges because not every exhibit listed on
the exhibit list was used or received at trial.
Objections at 18.)

(Astra

Instead, Astra asserts that Mylan/Esteve are

entitled to copying costs only for exhibits that were entered
into trial, which totals $230.00.
Mylan/Esteve argue that the Court's February 2, 2006,
pretrial order instructed Mylan/Esteve to provide Astra with
copies of all exhibits on their exhibit list, and that the
associated copying costs are reasonable and should be taxable.

17

(Mylan/Esteve Reply at 16.)

The Court rejects Mylan/Esteve's

request to recover photocopying costs for exhibits not used or
received at trial.

See Natural

----------~~----~

2009 WL 2424188

1

at *7

("[W]ith regard to copying costs, the requesting party must at
least specify what portion, if anYI of the copying costs were
incurred in creating exhibits that were used at trial or
received in evidence.")

(internal quotation marks and citation

omitted and alteration added).

Accordingly, the Court will

award only $230.00 in exhibit copying costs.
After the Court's September 2010 Opinion, Mylan/Esteve
broadened the scope of copying costs for which it seeks
reimbursement beyond trial exhibits.
3 4.)

(Amended Bill of Costs at

Mylan/Esteve now seek to recover an additional $28,874.20

in photocopying costs for one set of the 288,742 pages of
documents they produced to Astra in discovery.

(Amended Bill of

Costs at 3 4 (quoting September 2010 Opinion, slip op. 7).)
Local Civil Rule 54.1 does not address specifically copying
costs for non-exhibit documents.

The Court must therefore look

to the broader category under 28 U.S.C.

§

1920(4), which

provides for taxation of "the costs of making copies of any
materials where the copies are necessarily obtained for use in
the case."
The Second Circuit has held that photocopying costs may be
taxable even if the underlying document was not admitted at

18

trial.

U.S. for Use and Benefit of Evergreen Pipeline Constr.

Co., Inc. v. Merritt Meridian Constr. Corp., 95 F.3d 153,
173

(2d Cir. 1996)

(citing M.T. Bonk Co. v. Milton Bradley Co.,

945 F.2d 1404, 1410 (7th Cir. 1991)
are reasonably incurred».

(photocopying costs which

Such costs may be taxed where the

prevailing party provides documentation of what documents were
copied, the number of copies made, the cost per page of copying,
and an explanation of why the copies were necessary.
City of New York, No. 06 Civ. 4290
at *13

(S.D.N.Y. Jan. 28, 2010)

Tatum v.

(PGG) (GWG) , 2010 WL 334975,

(citations omitted)

i

Lucky Brand

Dungarees, Inc. v. Ally Apparel Res., LLC, No. 05 Civ.
6757 (LTS) (MHD) , 2009 WL 466136, at *25 (S.D.N.Y. Feb. 20, 2009).
Astra concedes that the copy rate of $.10 per page, which
Mylan/Esteve have used to calculate this additional set of
documents is reasonable.

(Astra Objections at 18.)

Mylan/Esteve have submitted an attorney declaration identifying
the underlying documents by bates number range, including a list
of documents within those ranges, which were omitted from the
production to Astra,

(Pacella Second Supp. Decl.

~

2), as well

as a memorandum explaining the reason for making copies of the
documents in question (Am. Bill of Costs at 3 4).

The Court is

satisfied that these discovery documents were necessarily
obtained for use in the case and that Mylan/Esteve have provided

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sufficient documentation and identification of the documents to
warrant taxation of these costs.
Accordingly, the Court grants Mylan/Esteve $29,104.20 in
photocopying costs, which covers the costs of photocopying
exhibits used or received in evidence at trial and one set of
documents produced to Astra in response to discovery requests.
H. Miscellaneous Fees

Mylan/Esteve have requested $33,697.65 to cover two
categories of "miscellaneous" costs:

(1) costs of computers and

other graphical presentation equipment; and (2) costs for the
preparation of court ordered electronic post-trial briefing.
Astra objects to the entire amount.
Mylan/Esteve argue that the $5,597.65 they request for
computers and graphical presentation equipment are taxable
either as miscellaneous costs under Local Rule 54.1(c) (10) or
costs related to the preparation of trial demonstratives under
Local Civil Rule 54.1(c) (6).

(Mylan/Esteve Reply at 17.)

Astra

objects first that all of the parties agreed to share the cost
of rental equipment and therefore Mylan/Esteve should not be
allowed to tax their share of those costs.
20.)

(Astra Objections at

Astra has provided no authority for this assertion, and

the Court rejects it.
Astra also argues that Local Civil Rule 54.1(c) (6)
prohibits recovery of costs associated with courtroom equipment.

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(Astra Surreply at 11.)

Astra acknowledges, however, that a

trial court has discretion to allow certain costs related to
trial demonstratives.
54.1{c) (6)

(Id. )

Indeed, Local Civil Rule

"simply requires that the Court assess any such

costs, rather than the Clerk, who otherwise determines what fees
should be assessed."
*1.

Settlement Funding, 2011 WL 2848644, at

Courts in this District have applied this discretion to tax

such costs where "the cost is reasonable and the devices aid in
the efficient and effective presentation of evidence[.]11
DiBella v. Hopkins, 407 F. Supp. 2d 537, 540 (S.D.N.Y. 2005)
see also Altvater Gessler-J.A. Baczewski Int'l

i

Inc. v.

Sobieski Destylarnia S.A., No. 06 Civ. 6510 (HB) , 2011 WL
2893087, at *7 (S.D.N.Y. July 14, 2011)

(taxing portion of

requested costs related to preparation of trial demonstratives
where "the visual aids presented at trial were helpful to the
jury and the court by focusing attention on the salient
documents and concepts"); Farberware Licensing Co., 2009 WL
5173787, at *8 (allowing partial recovery of expenses for trial
consultants who prepared the bulk of the trial graphics
presented at trial, where the visual aids were helpful to the
bench and jury) .
During the bench trial in this case, the demonstratives
used by Mylan/Esteve were helpful to the Court and the costs
spent on computers and graphical presentation equipment they

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seek are very reasonable.

The Court will grant these requested

costs to Mylan/Esteve.
With regard to the requested costs related to production of
the hyperlinked post-trial findings of fact and conclusions of
law, those costs fall squarely within the category of attorneys'
fees, which are not taxable.

Local Civ. R. 54.1(c) (7).

Accordingly, the Court will tax against Astra costs
related to computers and graphical presentation equipment,
totaling $5,597.65.
CONCLUSION
For the foregoing reasons, the Court GRANTS Mylan/Esteve's
application to tax costs against Astra subject to the
limitations set forth in this Opinion.

The Court has determined

that $184,054.52 of Mylan/Esteve's requested costs are taxable.
Mylan/Esteve are directed to submit to the Clerk of Court a
revised application to tax costs against Astra reflecting the
Court's rulings within thirty (30) days of this Opinion.

SO ORDERED:

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ARBARA S. JONES
UNITED STATES DISTRICT JUDGE
Dated:

New York, New York
November 6, 2012

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