Kroy IP Holdings, LLC v. Safeway, Inc.,

Filing 243

MEMORANDUM OPINION AND ORDER. Signed by Judge William C. Bryson on 9/8/2015. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

KROY IP HOLDINGS, LLC,
Plaintiff,
v.
SAFEWAY, INC.,
Defendant.

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CIVIL ACTION NO.
2:12-cv-00800-WCB

MEMORANDUM OPINION AND ORDER
The Court previously granted in part and denied in part the motion by defendant
Safeway, Inc., for entry of a bill of costs. Dkt. No. 238. Among other things, the Court denied
Safeway’s request for copying costs but allowed Safeway to make a further submission within 10
days of the previous order demonstrating its entitlement to copying costs. Safeway timely
submitted a supplemental filing regarding copying costs, accompanied by an attorney
declaration, which referred to materials previously submitted with Safeway’s original motion.
Dkt. No. 239. Plaintiff Kroy IP Holdings, LLC, filed a response to Safeway’s supplemental
submission, again objecting to Safeway’s request for copying costs. Dkt. No. 242. For the
reasons stated below, the Court grants some of Safeway’s requested costs but denies others.
The costs statute provides that a court may award costs for making copies of materials
“necessarily obtained for use in the case.” 28 U.S.C. § 1920(4). While the party seeking an
award of costs need not identify “every xerox copy made for use in the course of legal
proceedings,” it must show that the reproduction costs “necessarily result from that litigation.”
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Fogleman v. ARAMCO (Arabian Am. Oil Co.), 920 F.2d 278, 286 (5th Cir. 1991). A losing
party “should be taxed for the cost of reproducing relevant documents and exhibits for use in the
case, but should not be held responsible for multiple copies of documents, attorney
correspondence, or any of the other multitude of papers that may pass through a law firm’s xerox
machines.” Id.; see also Halliburton Energy Servs., Inc. v. M-I, LLC, 244 F.R.D. 369, 371-72
(E.D. Tex. 2007). Importantly, the burden is on the prevailing party to establish the amount of
compensable costs and expenses to which it is entitled; the prevailing party necessarily assumes
the risks inherent in a failure to meet that burden. In re Ricoh Co., Ltd. Patent Litigation, 661
F.3d 1361, 1367 (Fed. Cir. 2011).
1. Copying Costs Relating to Claim Construction Briefs and Hearing Preparation
Safeway seeks to recover the costs of copying materials in connection with the claim
construction proceedings. Specifically, Safeway requests an award of costs for photocopying the
following items: (1) Kroy’s opening and reply briefs on claim construction and the
accompanying exhibits, which totaled nearly 950 pages; (2) various patents, copied for purposes
of review and analysis as prior art; (3) the U.S. and European patent prosecution histories of the
patent in suit, totaling nearly 1,500 pages; and (4) Safeway’s responsive claim construction brief
and exhibits, which totaled 975 pages. Safeway’s request also includes $1,126.89 for outside
vendor charges for ten binders containing Safeway’s technical tutorial.
The parties’ claim construction briefs and corresponding exhibits, the complete patent
prosecution histories of the patent in suit, as well as the various prior art patents—although
voluminous—are all documents directly pertinent to important issues in the case, and the Court
finds that the cost of producing copies of those documents was “reasonably necessary to the

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maintenance of the action.” Summit Tech., Inc. v. Nidek Co., 435 F.3d 1371, 1378 (Fed. Cir.
2006); Rundus v. City of Dallas, Tex., 634 F.3d 309, 316 (5th Cir. 2011) (copying costs
recoverable if the party making copies “has a reasonable belief that the documents will be used
during trial or for trial preparation”). Thus, the Court concludes that Safeway is entitled to
recover the costs of reproducing one copy of each of those items as copies “necessarily obtained
for use in the case.” However, the charges for producing ten binders containing Safeway’s
technical tutorial are not recoverable, as the Court has already found that a technical tutorial was
not necessary in this case. Dkt. No. 238, at 3.
2. Copying Costs Relating to Preparation for the Depositions of Safeway’s
Witnesses
Safeway requests $2441.82 in copying costs for documents relating to the deposition
preparation of its own witnesses Travis Killion, Michael Langlois, Wendy Halton, and Colleen
Wortham. Dkt. No. 230-7, at 4-5; Dkt. No. 230-9, at 9-10. Safeway claims that it produced
more than 7,300 pages of documents and made available more than 44,000 documents
(consisting of more than 200,000 pages) for review prior to the Killion and Langlois depositions,
and that it produced nearly 20,000 pages of documents and made available 44,000 documents for
review prior to the Halton and Wortham depositions. According to Safeway, the $2441.82 in
claimed copying costs were for photocopies of “certain of these documents” for use during
deposition preparation sessions with the witnesses.
Based on Safeway’s barebones description of the copied documents, the Court cannot
ascertain whether those reproduced documents satisfy the statutory requirement that they were
“necessarily obtained for use in the case.”

Simply describing the copied items as

“certain . . . documents” among the hundreds of thousands pages of documents produced prior to
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the depositions tells the Court very little about the nature of the documents or whether the
production of copies was necessary for use in the case. Thus, Safeway has not met its burden to
demonstrate the necessity of making these copies. To the extent Safeway photocopied any actual
deposition exhibits in preparation for the Killion, Langlois, Halton, and Wortham depositions, it
may recover the costs of making one copy of each of those exhibits. Beyond that, however,
Safeway is not entitled to recover any other copying costs relating to the depositions of its own
witnesses. To the extent that Safeway’s records do not enable it to identify what portion of the
requested $2441.82 for this category is attributable to making one copy of each of the deposition
exhibits, the requested amount will be denied in its entirety.
3. Copying Costs Relating to Preparation for the Eggleston Deposition
Safeway claims copying costs relating to preparation for the deposition of York
Eggleston, one of the inventors of the patent in suit. Specifically, Safeway seeks to recover the
costs of making copies of “certain” of the approximately 40,000 pages of documents that Kroy
produced prior to the Eggleston deposition. In addition, it claims the costs of making three
copies of the approximately 2,750 pages of documents that were marked as exhibits at Mr.
Eggleston’s deposition.
Safeway cannot recover the cost of photocopying “certain” of the 40,000 pages of
produced documents for the same reason as stated above: It has failed to identify those
documents with any specificity and thus has failed to prove the necessity of copying them.
However, because deposition exhibits may fairly be said to be used in the case, the Court will
permit Safeway to recover the cost of producing one copy of each of the deposition exhibits, but

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not the cost of producing any additional copies. See Fogleman, 920 F.2d at 286 (a losing party
should not be held responsible for multiple copies of documents).
4. Copying Costs Relating to Expert Reports and Expert Depositions
Safeway next seeks an award of costs for making full or partial copies of Kroy’s expert
witness reports, totaling about 335 pages; its own expert witness reports, totaling more than 700
pages; and the materials relied upon by each expert, which, according to Safeway, amount to
“tens of thousands of pages of documents.” Safeway asserts that it made those copies in
preparation for the depositions of Kroy’s experts and its own experts. Safeway acknowledges
that it made multiple copies of certain of those documents for use as deposition exhibits.
Safeway is entitled to recover the costs of making one copy of each of the expert reports
and one copy of the deposition exhibits used at each of the expert depositions. Safeway is not
entitled to recover, however, the copying costs for “materials relied upon” by the experts,
because it has not demonstrated the necessity of photocopying those documents. The Court
cannot determine the necessity of copying “tens of thousands of pages of documents” based on
the generic description that they are “materials relied upon” by the experts. Further, Safeway is
not entitled to recover the costs of making duplicative copies of the deposition exhibits used at
the expert depositions.
5. Copying Costs Relating to Motions for Summary Judgment, Daubert Motions,
and Motions in Limine
Safeway claims the cost of photocopying the parties’ respective summary judgment
briefs and exhibits, their respective Daubert motion briefs and exhibits, and the briefs and
exhibits relating to their motions in limine. The cost of reproducing one copy of each of those
filings in the case is recoverable.
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6. Copying Costs Relating to the November 14, 2014, Hearing
The Court held a hearing on November 14, 2014, on Safeway’s summary judgment
motions and the parties’ Daubert motions. Safeway made full or partial copies of the briefs and
exhibits in support of the summary judgment and Daubert motions for purposes of that hearing.
Having allowed Safeway to recover the cost of making one complete copy of each of those briefs
and exhibits, the Court perceives no reason to make a further award of costs for the reproduction
of additional copies of those materials simply for the purpose of preparing for the hearing.
Safeway has failed to show that it is entitled to recover the copying costs relating to the
November 14, 2014, hearing.
7. Copying Costs Relating to Pretrial Filings and Preparation
Safeway also claims the costs of photocopying the following items in connection with its
pretrial filings and preparation: (1) copies of the reports and deposition testimony of the experts
who were the subjects of the Daubert motions; (2) the parties’ respective pretrial filings; (3)
documents produced for review as trial exhibits; (4) documents marked as exhibits at depositions
for review as potential trial exhibits; and (5) deposition transcripts for review as possible
deposition designations or counter-designations.
With respect to the first item, the Court has allowed Safeway to recover the costs for
making one copy of each side’s expert reports and has previously allowed Safeway to recover
the printed transcript fees for the expert depositions. See Dkt. No. 238, at 8. Safeway fails to
establish the necessity of making additional copies of the same documents for purposes of
pretrial preparation.

Thus, Safeway is not entitled to recover the copying costs for these

additional copies of the expert reports and deposition testimony.

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For similar reasons, Safeway cannot recover the cost of photocopying the produced
documents, deposition exhibits, and deposition transcripts simply to ascertain whether some of
those documents should be used as trial exhibits. The Court has allowed Safeway to recover the
cost of reproducing one copy of the deposition exhibits and the cost of the deposition transcripts.
Safeway’s decision to produce additional copies of the same documents for pretrial review was a
matter of convenience rather than necessity. However, to the extent that any of the copied items
were actually proposed to be trial exhibits, or that any portions of the deposition transcripts were
designated by either party for use at trial, Safeway may recover the cost of making one copy of
those selected materials. While some of the proposed trial exhibits and designated deposition
transcripts overlap with items already allowed under section 1920 (e.g., one complete copy of the
deposition transcripts), those materials serve the separate purpose of being intended for
presentation to the jury at trial. Thus, the availability of a copy of the trial exhibits and the
designated and counter-designated deposition transcripts is necessary for use in the case.
Finally, Safeway may recover the cost of making one copy of any documents filed or
served by either party in the pretrial proceedings.
8. Copying Costs Relating to Trial Preparation
Safeway also claims copying costs relating to trial preparation.

For this purpose,

Safeway made yet another copy of the same items that it had reproduced for pretrial preparation,
including “thousands of pages of the parties’ trial exhibits, deposition transcripts, and pleadings.”
Safeway fails to establish the necessity of making multiple copies of the same items for pretrial
and trial purposes, respectively. Thus, the Court finds that Safeway is not entitled to recover
these repetitive copying costs relating to trial preparation.

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9. Other Copying Costs
In its previous order, the Court found that Safeway had not established the necessity of
producing color exhibits. Dkt. No. 238, at 7. In its supplemental submission, Safeway again
requests $2,408.57 for color copies, without explaining why color copies, as opposed to blackand-white copies, were necessary for use in the case. Thus, the Court denies Safeway’s request
to recover the costs of making color copies.
The invoices Safeway submitted to support its request for copying costs also include
charges unrelated to copying, such as charges for binding, scanning, delivery, and OCR
conversion. See, e.g., Dkt. No. 230-9, at 5, 11. Those costs are not recoverable under section
1920(4), and Safeway has not sought their recovery under any other statutory provision. Thus,
the Court denies Safeway’s request to recover the non-copying related costs.
10. Summary
In summary, Safeway is allowed to recover the costs of making one copy of the following
items: (1) the parties’ claim construction briefs and corresponding exhibits, the complete patent
prosecution histories of the patent in suit, and the various prior art patents; (2) the deposition
exhibits used at the Killion, Langlois, Halton, and Wortham depositions; (3) the deposition
exhibits used at the Eggleston deposition; (4) each party’s expert reports and the deposition
exhibits used at each of the expert depositions; (5) the parties’ respective summary judgment
briefs and exhibits, Daubert motion briefs and exhibits, and briefs and exhibits relating to
motions in limine; (6) materials served or filed by the parties in the pretrial proceeding; and (7)
the parties’ proposed trial exhibits and the designated and counter-designated deposition
transcripts, if any.

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With the guidance set forth above, the Court expects that the parties will be able to
calculate the dollar amount of the copying costs award without the need for further intervention
by the Court.
IT IS SO ORDERED.
SIGNED this 8th day of September, 2015.

_____________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE

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