Lightforce USA, Inc. et al v. Leupold & Stevens, Inc.

Filing 114

Opinion and Order: Leupold's Bill of Costs (ECF No. 103 ) is GRANTED in part and DENIED in part. Under 29 U.S.C. § 1920, Plaintiffs are entitled to costs in the amount of $7,125.21, their original request being reduced by $300.00 and $862.25, for a total reduction of $1,162.25. DATED this 29th day of January, 2021 by United States Magistrate Judge John V. Acosta. (pjg)

Case 3:17-cv-01153-AC

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UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION

LIGHTFORCE USA, INC. d/b/a/
NIGHTFORCE OPTICS and NIGHTFORCE
USA; and HVRT CORP.,

Case No. 3: 17-cv-0 1153-AC
OPINION AND ORDER

Plaintiffs,
V.

LEUPOLD & STEVENS, INC.,
Defendant.

ACOSTA, Magistrate Judge:
Introduction

Currently before the court is the Bill of Costs filed by defendant Leupold & Stevens, Inc.
("Leupold") seeking $8,287.46 1 in costs. Plaintiffs HVRT ("HVRT") and Lightforce USA, Inc.,

1

In their Bill of Costs, Leupold seeks total costs in the amount of $8,287.46. However, Jason A.
Wrubleski ("Wrubleski") represents in his initial declaration that Leupold "seeks in total $9,632.41
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d/b/a Nightforce Optics and Nightforce USA ("Lightforce") (collectively "Plaintiffs") oppose the
amount requested for copying costs and pro hac vice fees. The court grants in part and denies in
party Leupold's cost bill and awards Leupold $7,125.21 in total costs. 2

Background
Plaintiffs filed this patent infringement suit against Leupold alleging Leupold is infringing
on various patents owned by HVRT and licensed by Lightforce. In an Opinion and Order dated
May 15, 2019, the court construed various terms in all but one of the patents at issue. Ligh(/orce

USA, Inc. v. Leupold & Stevens, Inc., Case No. 17-cv-01153, 2019 WL 2146245 (D. Or. May 15,
2019). Thereafter, Plaintiffs joined with Leupold in filing a motion for consent judgment and on
August 26, 2019, the court entered the proffered consent judgment in which Plaintiffs' conceded
that based on the comi's recent construction of the terms at issue, the alleged accusing products
do not infringe on any of the asse1ied claims of three of the four patents at issue but with leave to
appeal construction of the terms once Plaintiffs' claims based on the final patent were resolved.
In a second Opinion and Order dated September 24, 2020, the comi granted Leupold's
motion for summary judgment on the final patent, finding the alleged accused products do not
infringe on the final patent under the prior claim construction ruling or that the final patent is
invalid as anticipated by prior mi. Ligh(fcJrce USA, Inc. v. Leupold & Stevens, Inc., Case No. 17cv-01153, 2020 WL 5733173 (D. Or. Sept. 24, 2020).

The comi, finding the matter fully

for the following taxable costs." (Wrubleski Deel. dated October 12, 2020, ECF No. 104 ("First
Wrubleski Dec."), ,r 26.) In his second declaration, Wrubleski concedes the $9,632.41 figure "was
a clerical error and should have recited $8,287.46 instead of $9,632.41. (Wrubleski Deel. dated
October 30, 2020, ECF No. 110 ("Second Wrubleski Deel."), ,r 2.)
2
The paiiies have consented to jurisdiction by magistrate judge in accordance with 28 U.S.C.
§ 636(c)(l).
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adjudicated in favor of Leupold, entered a judgment dismissing the case with prejudice on
September 30, 2020. Leupold filed the Bill of Costs on October 12, 2020.
Legal Standard

Rule 54 of the Federal Rules of Civil Procedure ("Rule 54") provides costs "should be
allowed to the prevailing paiiy." FED. R. CIV. P. 54(d)(l) (2019). The specific items a prevailing paiiy may recover as costs are listed in 28 U.S.C. § 1920 ("Section 1920"), and include:
(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 comi appointed experts, compensation of interpreters, and
salaries, fees, expenses, and costs of special interpretation services under section
1828 of this title.
Rule 54 creates a presumption in favor of awarding costs to the prevailing pmiy; if a district
court depaiis from that presumption, it must provide an explanation so that the appellate comi can
determine whether the district court abused its discretion. See, e.g. Ass 'n o(]vlexican- A1nerh~an
Educators v. California, 231 F.3d 572, 592-93 (9th Cir. 2000) (en bane) (if disallowing costs, the

district court should "explain why a case is not 'ordinary' and why, in the circumstances, it would
be inappropriate or inequitable to award costs."). See also Save Our Vallev v. Sound Transit, 335
F.3d 932, 945 (9th Cir. 2003) (district court "need only find that the reasons for denying costs are
not sufficiently persuasive to overcome the presumption in favor of an award."). Courts, however,

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are free to construe the meaning and scope of the items enumerated as taxable costs in Section
1920 (Taniguchi v. Kan Pacific Saipan, Ltd., 633 F.3d 1218, 1221 (9th Cir. 2011): Aflex Corp. v.
UndenFriters Lab., Inc., 914 F.2d 175, 177 (9th Cir. 1990')(per curiam)), and even if a party

satisfies the definition of prevailing party, the district court retains broad discretion to decide how
much to award, if anything. Farrar v. l-Jobbv, 506 U.S. 103, 115-16 (1992). See also Arboireau
v. Adidas Salomon AG, No. 01-105-ST, 2002 WL 31466564, at *4 (D. Or. June 14, 2002) (trial

judge has wide discretion in awarding costs under Rule 54). In exercising this discretion, the court
may consider the amount of costs involved; a plaintiffs ability to pay the costs, including the
possibility that the award may leave the plaintiff indigent; and the potential chilling effect on any
future civil rights litigants if the costs were imposed. Stanlev v. Univ. o[S. California, 178 F.3d
1069, 1079 (9th Cir. 1999). Additionally, a finding that the issues in the case were close and
complex may provide further justification for the denial of costs. 1'1exica11- A1nerican Educators,
231 F.3d at 593. Ultimately, it is "incumbent upon the losing party to demonstrate why the costs
should not be awarded." Id.
Local Rule of Civil Procedure ("Local Rule") 54-l(a)(l) requires the prevailing party to
"file an affidavit or declaration and appropriate documentation" in support of a bill of costs. Local
Rule 54-l(a)(2) further requires, by reference to 28 U.S.C. § 1924, an affidavit verifying that the
items claimed in the cost bill are "con·ect[, have] been necessarily incurred in the case and that the
services for which fees have been charged were actually and necessarily performed." 28 U.S.C. §
1924. A bill of costs unaccompanied by the required affidavits and documentation is insufficient.
See Primerica Life Ins. Co. v. Ross, No. CV 06-763-PK, 2006 WL 317044, at *3 n.2 (D. Or. Nov.

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1, 2006) (affidavits stating only amounts of fees and costs do not allow the court to determine the
reasonableness of such expenses).

Discussion
I. Fees of the Clerk and Marshal (28 U.S.C. § 1920(1))
A prevailing party may recover for "fees of the clerk and marshal[.]" 28 U.S.C. § 1920(1).
Costs related to service are allowed under 28 U.S.C. § 1920(1). Tucker v. Cascade General, Inc.,
No. 3:09-cv-1491-AC, 2015 WL 2092849, at *2 (D. Or. May 5, 2015). Leupold seeks $1,464.85
in costs relating to the service of summons and subpoenas. These costs are supported by detailed
itemization and appropriate documentation. Leupold is entitled to $1,464.85 in service costs.
Leupold also seeks to recover $300.00 in fees incurred in filing its motion for leave to allow
Brian C. Park to appear pro hac vice. Plaintiffs object to this cost asserting these fees are not
allowed in the Ninth Circuit. In its reply brief, Leupold expressly withdrew its for pro hac vice
filing fees based on the authority cited by Plaintiffs. Consequently, the court denies this cost, thus
reducing by $300.00 Leupold's total requested costs.
II. Fees for Printed or Electronically Recorded Transcripts Necessarily Obtained for Use in the
Case 28 U.S.C. § 1920(2))
A prevailing party may recover for "[f]ees for printed or electronically recorded transcripts
necessarily obtained for use in the case[.]" 28 U.S.C. § 1920(2). Leupold seeks $528.15 for
transcripts of the claim construction hearing held on December 11, 2018. The issues addressed at
the December 11, 2018 hearing were relevant and necessary to subsequent proceedings in this
lawsuit, the transcripts were ordered by both paiiies, and the transcript costs were shared.

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Additionally, these costs are supported by detailed itemization and appropriate documentation.
Leupold is entitled to $528.15 for the transcript.
III. Fees and Disbursements for Printing and Witnesses (28 U.S.C. § 1920(3))
A prevailing party may recover for "[flees and disbursements for printing and witnesses[.]"
28 U.S.C. § 1920(3). "A witness shall be paid an attendance fee of $40 per day for each day's
attendance." 28 U.S.C. § 182 l(b) (2019). Mileage is permitted in addition to per diem. 28 U.S.C.
§ 1821(c)(2). "To be taxable as costs, the witness's testimony must be material to an issue tried
and reasonably necessary to its disposition." Williams, 2019 WL 8440513, at *5 (citing United
California Bank v. THC Financial Corp., 557 F.2d 135L 1361 (D. Haw. 1977)). "The trial judge

is in the best position to determine whether the testimony meets this standard." Id. (citing United
California Bank, 557 F.2d at 1351).

Leupold seeks $168.86 in attendance fees and mileage for two witnesses.

Leupold

provided the requisite detailed itemization and documentation, and Plaintiffs do not contest the
materiality of the witness's testimony. Leupold is entitled to $168.86 in attendance and mileage
costs.
IV. Fees for Exemplification and the Costs of Making Copies of Any Materials Where the Copies
are Necessarily Obtained for Use in the Case 28 U.S.C. § 1920( 4)
A prevailing party may recover for "the costs of making copies of any materials where the
copies are necessarily obtained for use in the case[.]" 28 U.S.C. § 1920( 4). Leupold seeks to
recover $4,963.35 in electronic discove1y costs, specifically document uploading and production.
These costs are supported by detailed itemization and appropriate documentation, and Plaintiffs
do not contest them. Leupold is entitled to $4,963.35 in electronic discovery costs.

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Leupold also seeks $862.25 for "other reproduction and exemplification" costs. Plaintiffs
object to these costs, asserting Leupold fails to meet the requirement for appropriate
documentation. Plaintiffs note the evidence supporting the copying costs is limited to a one-page
schedule revealing copy dates, a brief description of the copied documents, page rates for blackand-white and color copies, and the amount claimed. Additionally, the supp01iing declaration
merely represents that the "Court and [Plaintiffs] have received the hard copies of documents
resulting in these costs to Leupold, and Leupold will on request submit copies of its invoices
containing these costs." (First Wrubleski Deel. at

,r 25.)

Plaintiffs contend "suggesting the onus

is on Plaintiffs to request these invoice hardcopies does not satisfy Leupold's burden to provide
appropriate documentation." (Pls.' Obj. to Def.s' Bill of Costs, ECF No. 107 ("Pls.' Obj.") at 2.)
Additionally, Plaintiffs assert Leupold's request for "$0.75 per page for 'color' copies of
documents in which most of the pages include no content in color" is inappropriate, because the
"burden is on neither Plaintiffs nor the Comito count Leupold's 'color" pages when it failed to
properly do so at the outset." (Pls.' Obj. at 2.)
Leupold contends Plaintiffs' first argument in moot because Leupold has now submitted
the invoices at issue. (Second Wrubelski Deel. Ex. A.) Leupold also asse1is the requested amount
reflects the actual costs incurred by Leupold for copies necessarily obtained for use in the case and
explains "when copies of a document containing color pages are needed, Leupold's counsel's
practice is to simply print the document in color, rather than attempt to separate out color pages
for a separate process and then reassemble the document after printing." (Def.'s Resp. to Pls.'
Obj., ECF No. 109 ("Def.'s Resp.''), at 2.) Specifically, Leupold contends that "Plaintiffs cite no

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authority suggesting that the inefficient, time-consuming, and ultimately more expensive practice
they propose should be required." (Def.'s Resp. at 2.)
"Copying costs for documents produced to opposing parties in discovery, submitted to the
comi for consideration of motions, and used as exhibits at trial are recoverable." Hunt v. Citv of'
Portland, No. CV 08-802-AC, 2011 WL 3555772, at* 11 (D. Or. Aug. I 1, 2011) (citing Teicher
v. Regence Health and Li(e Ins. Co., No. 06-1821-BR, 2008 WL 5071679, at *11 (D. Or. Nov.

24, 2008); Arboireau v. Adidas Salomon AG, No. CV-01-105-ST, 2002 WL 31466564, at *6 (D.
Or. June 14, 2002)). Recoverable copying costs do not include extra copies of filed papers,
co1Tespondence, copies of cases, or in-house photocopying. Id. (citing Arboireau, 2002 WL
31466564 at* 6; Frederick v. City of Portland, 162 F.R.D. 139, 144 (D. Or. 1995)). A prevailing
party must explain the nature of the photocopying so that the comi may determine which costs, if
any, are properly awardable. Id ( citing Kev Bank Nat '1 Ass 'n v. Van Nov, 598 F.Supp.2d 1160,
1168 (D. Or. 2009); Robins v. Scholastic Book Fairs, 928 F.Supp. 1027, 1035 (D. Or. 1996)). "A
party's conclusory asse1iion that all copies were reasonably necessaiy to its case is, by itself,
insufficient." Id. (citing Krafi v. Arden, No. 07-487-PK, 2009 WL 73869, at *9 (D. Or. Jan. 8,
2009)).
When Leupold submitted its Bill of Costs, it did not provide appropriate documentation to
supp01i $862.25 in copying costs. The invoices submitted seeking to correct this error do not
remedy the omission, because the figures and dates contained in Schedule D-2 of the Bill of Costs
do not align with the figures and dates contained in the invoices submitted. For example, in
Schedule D-2, Leupold asse1is $327 .00 in costs for copies for "Corrected Claim Construction Brief
and supp01iing Declarations" on September 17, 2018, but there is no corresponding date or figure

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in the newly submitted invoices. This is true for every cost described in Schedule D-2. The
invoices are heavily redacted and contain little more than the totals for copies, invoice numbers,
and dates. This information would potentially suffice if it in some way reflected the information
in the Bill of Costs or Schedule D-2. It might also suffice if it was clear how Leupold reached
$862.25 using the numbers in these invoices; instead, the court is left with conflicting arithmetic.
Leupold did not provide appropriate or detailed documentation of its copying costs. Nor
did it appropriately explain the nature of photocopying so that the comi could determine which
costs, if any, are properly awardable.

Therefore, Leupold's requested costs are reduced by

$862.25. Because Leupold does not provide appropriate documentation, the comi need not, and
does not, reach the issue whether Leupold's counsel's copying practices supp01i recoverable
copying costs.
Conclusion

Leupold's Bill of Costs (ECF No. 103) is GRANTED in pati and DENIED in part. Under
29 U.S.C. § 1920, Plaintiffs are entitled to costs the amount of $7,125.21, their original request
being reduced by $300.00 and $862.25, for a total reduction of $1,162.25.
DATED this 29 th day of January, 2021.

UnitedSY1-tes Magistrate Judge

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