DSS Technology Management Inc. v. Taiwan Semiconductor Manufacturing Company, Ltd. et al

Filing 231

MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 10/12/2016. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
DSS TECHNOLOGY MANAGEMENT
INC.,

Plaintiff,
v.
TAIWAN SEMICONDUCTOR
MANUFACTURING COMPANY, LTD.,
TSMC NORTH AMERICA, TSMC
DEVELOPMENT, INC., SAMSUNG
ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC.,
SAMSUNG TELECOMMUNICATIONS
AMERICA L.L.C., SAMSUNG
SEMICONDUCTOR, INC., SAMSUNG
AUSTIN SEMICONDUCTOR LLC, NEC
CORPORATION OF AMERICA,

Defendants.

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Case No. 2:14-CV-00199-RSP
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MEMORANDUM OPINION AND ORDER
This matter comes to the Court upon the parties joint request (Dkt. No. 222) to lift the
stay in this case to resolve Samsung’s pending Motion for Attorneys’ Fees under 35 U.S.C.
§ 285 (Dkt. No. 192) and Samsung’s Motion for Entry of Bill of Costs pursuant to 29 U.S.C.
§ 1920 (Dkt. No. 196). With the appeal that justified the Court’s stay now resolved, the Court
hereby LIFTS the stay to resolve the parties’ remaining disputes. Having reviewed the parties’
written submissions on Samsung’s pending Motions, the Court will DENY Samsung’s Motion
for Attorneys’ Fees and will GRANT-IN-PART and DENY-IN-PART Samsung’s Motion for
Entry of Bill of Costs.

I. SAMSUNG’S MOTION FOR ATTORNEYS’ FEES
Samsung requests over $2 million in attorneys’ fees because DSS advanced an allegedlymeritless claim construction position. After careful consideration, the Court finds that DSS’s
position does not justify attorneys’ fees.
A. BACKGROUND
In March 2014, DSS filed suit against Samsung and a number of other Defendants,
accusing the Defendants of infringing U.S. Patent No. 5,652,084 (“the ’084 Patent”). Dkt. 1
¶¶ 31, 33. The ’084 Patent relates to a double-patterning lithography process for manufacturing
semiconductors. See, e.g., ’084 Patent, Fig. 1. Independent Claim 1 recites the following method:
1. A lithography method for semiconductor fabrication using a
semiconductor wafer, comprising the steps of:
(a) forming a first imaging layer over the semiconductor wafer;
(b) patterning the first imaging layer in accordance with a first
pattern to form a first patterned layer having a first feature;
(c) stabilizing the first patterned layer;
(d) forming a second imaging layer over the first pattern layer; and
(e) patterning the second imaging layer in accordance with a
second pattern to form a second patterned layer having a second
feature distinct from the first feature, wherein the second patterned
layer and the first patterned layer form a single patterned layer, and
wherein the first and second features which are formed relatively
closer to one another than is possible through a single exposure to
radiation.
The bolded claim language forms the basis for Samsung’s request for attorneys’ fees. The
parties agreed during claim construction that “patterning” refers to a process in which the
imaging layer is exposed to radiation and then developed to form “patterned portions and spaces
of the imaging layer.” See Dkt. No. 168 at 6. While agreeing on the patterning step, the parties
disputed the meaning of “patterned layer.” Id. at 7. Samsung insisted that the patterned layer
included only imaging layer material that remained after the patterning step. Id. DSS argued that
the patterned layer did not have to include only what was left of the imaging layer but rather
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could include a sub-layer below the imaging layer that was etched into a pattern after the claimed
patterning step. Id.
The Court agreed with Samsung and concluded that the patterned layer included imaging
layer material left behind from the patterning step. Id. at 8-9. In light of this construction, the
parties stipulated to a judgment of noninfringement. Dkt. 179 ¶ 5. DSS thereafter appealed to the
Federal Circuit, and this Court stayed the case pending the outcome of that appeal. Dkt. No. 207.
After hearing oral argument, the Federal Circuit unanimously affirmed this Court’s
judgment in an unpublished opinion released March 22, 2016. DSS Tech. Mgmt., Inc. v. Taiwan
Semiconductor Mfg. Co., 642 F. App’x 1006, 1009 (Fed. Cir. 2016). Shortly after the Federal
Circuit’s mandate issued, the parties filed a Joint Status Report requesting that the Court’s stay
be lifted to address Samsung’s pending Motion for Attorneys’ Fees and its Motion for Entry of
Bill of Costs.
B. DISCUSSION
Section 285 provides that “[t]he court in exceptional cases may award reasonable
attorney fees to the prevailing party.” 35 U.S.C. § 285. An exceptional case is “simply one that
stands out from others with respect to the substantive strength of a party's litigating position
(concerning both the governing law and the facts of the case) or the unreasonable manner in
which the case was litigated.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct.
1749, 1756 (2014). District courts “may determine whether a case is ‘exceptional’ in the case-bycase exercise of their discretion, considering the totality of the circumstances.” Id. at 1757; see
also Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 1748 (2014). “After
determining that a case is exceptional, the district court must determine whether attorney fees are
appropriate,” which is within the Court's discretion. Cybor Corp. v. FAS Techs., Inc., 138 F.3d

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1448, 1460 (Fed. Cir. 1998) (citations omitted). A party must prove entitlement to attorney fees
by a preponderance of the evidence. Octane Fitness, 134 S. Ct. at 1758.
The Federal Circuit acknowledged that Octane Fitness affords district courts wide
discretion to evaluate attorney fee awards under § 285. See Site Update Sols., LLC v. CBS Corp.,
639 F. App’x 634 (Fed. Cir. 2016). Affirming a district court’s denial of attorneys’ fees, the
Federal Circuit recognized that “the district court ruled from a position of great familiarity with
the case and the conduct of the parties, and it determined that [the party’s] tactical blunders and
mistakes do not warrant fees under 35 U.S.C. § 285.” Id. at 637. The Appeals Court
characterized Octane Fitness discretion as follows:
The new Octane Fitness standard for an exceptional case applies
both ways: discretion is entitled to a district court’s findings that
§ 285 attorney’s fees are not applicable, as much as discretion is
owed to findings that they are applicable. As the Supreme Court
explained, matters of attorney’s fees, and the effective contours
illuminating this area, are committed to the sound discretion of the
trial court.
Id.
With these principles in mind, the Court questions, as a preliminary matter, whether a
party’s position taken during claim construction—a practice characterized by the Supreme Court
as “mongrel,” Markman v. Westview Instruments, Inc., 517 U.S. 370, 378, 388 (1996)—can ever
by itself make a case exceptional under § 285. That question is for another day, however,
because the Court finds that DSS’s claim construction position does not come near the
exceptionality threshold.
Samsung contends otherwise because DSS’s position regarding the claimed “patterned
layer” element (1) ignored the intrinsic evidence; (2) ignored testimony from DSS’s own expert;
and (3) was inconsistent with a claim construction position DSS took during parallel inter partes
review proceedings. In its Supplemental Brief, Samsung makes the additional argument that the
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Federal Circuit’s unanimous affirmance of the Court’s judgment weighs in favor of awarding
attorneys’ fees. The Court addresses each argument in turn.
1. The Intrinsic Evidence
Samsung is correct that Claim 1 of the ’084 Patent suggests that the patterned layer
results from the patterning step. The parties agreed that “patterning” means “exposing an
imaging layer to radiation in accordance with a specific pattern and developing the imaging layer
so that portions of the imaging layer laying outside of the pattern are dissolved in the developer,
thereby forming patterned portions and spaces of the imaging layer.” Dkt. No. 168 at 6. In light
of the parties’ stipulation, it is reasonable to assume that the patterned layer includes material left
behind from the imaging layer because the imaging layer is the layer that is radiated and
developed during the patterning step. As the Federal Circuit acknowledged on appeal, this claim
language “points strongly” toward the construction adopted by this Court. DSS Tech. Mgmt., 642
F. App’x at 1009.
The Federal Circuit also acknowledged that “[t]he specification’s description of the
patterning process supports [this Court’s] understanding that the patterned layer is formed out of
the same material as the imaging layer.” Id. at 1010. The specification explains that the imaging
layer is made of material sensitive to radiation. ’084 Patent at 3:34-42. Once a patterned mask is
placed over the imaging layer, the masked imaging layer is exposed to radiation. Id. at 3:65-66.
The patterned mask blocks radiation such that only unmasked portions of the imaging layer are
exposed. Id. at 3:54-64. The radiated imaging layer is then developed with solvent. Id. at 4:5-6.
Developing solvent dissolves either exposed or masked portions of the imaging layer, depending
on whether the imaging layer is positive- or negative-tone. Id. at 4:9-12; 6:56-59; 4:24-29. The

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Federal Circuit explained that “[t]his description of the process is naturally read to be treating the
‘patterned layer’ as what remains of the imaging layer.” DSS Tech. Mgmt., 642 F. App’x at 1010.
Although DSS’s position to the contrary was ultimately the losing one, the position was
not so substantively weak or advanced in an unreasonable manner to justify classifying this case
as “exceptional.” See Octane Fitness, 134 S. Ct. at 1756. First, the claim language by itself
supports DSS’s position. Claim 1 recites “patterning [an] . . . imaging layer . . . to form
a . . . patterned layer.” This language does not unambiguously require that the patterned layer
include only material remaining from the imaging layer. The claim does not, for example, define
the “patterned layer” as “consisting of” imaging layer material. See Norian Corp. v. Stryker
Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) (“‘Consisting of’ is a term of patent convention
meaning that the claimed invention contains only what is expressly set forth in the claim.”). In
addition, the “patterned layer” element is not modified by the term “imaging,” e.g., the claim
does not recite a “patterned imaging layer.” This implies that the patterned and imaging layers
are not necessarily “one and the same.” See Engle Indus., Inc. v. Lockformer Co., 96 F.3d 1398,
1404-05 (Fed. Cir. 1996).
Second, DSS’s position was supported by the doctrine of claim differentiation. Claim 1
recites a “patterned layer” formed after patterning the imaging layer, yet the claim does not
unambiguously define the patterned layer as including only residual material from the imaging
layer. Claims 4 and 5, by contrast, specify that the “patterning step” includes “developing
the . . . imaging layer such that the exposed portion dissolves to form the . . . patterned layer.”
The specificity recited in Claims 4 and 5—compared with Claim 1’s more general description—
suggests that the “patterned layer” of Claim 1 does not necessarily consist exclusively of residual
imaging layer material. See InterDigital Commc’ns, LLC v. ITC, 690 F.3d 1318, 1324-25 (Fed.

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Cir. 2012). Although the intrinsic record as a whole led this Court to conclude otherwise,1 DSS’s
position was far from exceptional.
2. DSS’s Expert Testimony
Samsung contends that DSS’s position was unreasonable because DSS’s expert, Dr.
Chris Mack, testified that the claimed “patterned layer” results from patterning the imaging layer
and thus includes residual imaging layer material. Dkt. No. 192 at 6. Samsung highlights the
relevant deposition testimony:
Q. And by “pattern,” do you mean you may have a -- a layer, the
imaging layer, and you’re taking pieces out of it and you end up
with a patterned layer?
A. Pattern and [sic Patterning an] imaging layer will mean,
generally, the way you would interpret that on its face would be to
remove some portions of the imaging layer, leaving some portions
behind, and the pattern would be the combination of the -- the full
pattern would be the combination of the pieces remaining and
what's removed to form a pattern.
Within that pattern you’ll have features, and those features could
be a piece of photoresist or it could be a portion of the photoresist
that has been removed.
Id. at 6 (citing Dkt. No. 192-8 at 137:9-138:2).
Contrary to Samsung’s assertion, however, Dr. Mack’s testimony does not foreclose
DSS’s claim construction position. Dr. Mack was never asked to render an opinion about the
meaning of the term “patterned layer.” Indeed, Dr. Mack made clear that he did not “have an
opinion [on the issue] from a claim-construction perspective.” Dkt. No. 192-8 at 137:1-2. The
testimony Samsung highlights, while consistent with the specification’s particular embodiments

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“[C]laim differentiation is ‘not a hard and fast rule and will be overcome by a contrary
construction dictated by the written description or prosecution history.’” Marine Polymer Techs.,
Inc. v. HemCon, Inc., 672 F.3d 1350, 1359 (Fed. Cir. 2012) (quoting Seachange Int’l, Inc. v. C–
COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005)).
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describing the “patterning” step, does not necessarily imply that Claim 1’s “patterned layer”
includes only residual imaging layer material.
More important, Samsung’s counsel surprised Dr. Mack with the deposition question it
now uses to justify a fee award. Before Dr. Mack’s deposition, the parties agreed in writing to
limit the deposition to the definiteness of an unrelated claim limitation. See Dkt. No. 200-6 at
2; see also Dkt. No. 192 at 136:21-25. Samsung’s counsel nevertheless surprised Dr. Mack
with questioning about the “patterned layer” limitation. Such tactics cannot justify fee
shifting, no matter how successful.
3. DSS’s Position Before the Patent Trial and Appeal Board
According to Samsung, DSS’s claim construction position is inconsistent with the
position it took in parallel proceedings before the Board during inter partes review proceedings.
Dkt. No. 192 at 11-12. Samsung contends that “DSS proposed to the PTAB that ‘patterning’ in
claim 1 means radiating and developing an imaging layer—such as photoresist—which ‘thereby
form[s] a patterned layer.’” Id. (quoting Patent Owner’s Preliminary Response, Dkt. No. 192-5 at
11). Even accepting Samsung’s characterization as true, however, DSS’s proposed construction
before the Board merely tracks Claim 1’s language and does not necessarily imply that the
“patterned layer” includes only residual imaging layer material.
4. The Federal Circuit’s Affirmance
The balance of the parties’ arguments relate to how the Federal Circuit treated DSS’s
appeal. Samsung contends that because the Federal Circuit unanimously affirmed the parties’
stipulated judgment of non-infringement based on this Court’s claim construction and explained
how the Court’s construction is consistent with the intrinsic record, a fees award is justified. Dkt.
No. 224 at 2-3. DSS contends, on the other hand, that the Federal Circuit chose not to affirm the

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Court’s judgment without opinion as it could have done under Federal Circuit Rule 36 for a
decision that would have no precedential value. Dkt. No. 230 at 1. The Court does not find the
Federal Circuit’s disposition indicative of whether DSS’s position renders the case exceptional.
The Appeals Court decided to issue a written opinion explaining its findings. Though unanimous
and unpublished, the disposition is not relevant to whether a fees award under § 285 is justified.
The Court therefore finds that Samsung has not met its burden of showing this case to be
exceptional.
II. SAMSUNG’S MOTION FOR ENTRY OF BILL OF COSTS
In its Motion for Entry of Bill of Costs, Samsung requests that the Court tax DSS for
certain opposed and unopposed costs pursuant to 28 U.S.C. § 1920. The Court finds that the
unopposed costs identified by Samsung are taxable, whereas the opposed costs are not.
A. BACKGROUND
The Court’s Final Judgment entered following the parties’ stipulation of noninfringement
specified that “Defendants are the prevailing party for purposes of recovering costs.” Dkt. No.
183 at 2. On May 23, 2015, Samsung sent its proposed Bill of Costs to DSS’s counsel pursuant
to Local Rule CV-54(b)(1). After meeting and conferring, the parties agreed that $23,077.57
should be taxed against DSS. Dkt. No. 196 at 4. The agreed costs include fees for printed and
electronically recorded transcripts, fees for exemplification and copying costs, and compensation
of the Court’s Technical Advisor. Id. at 4-5.
The parties could not agree on Samsung’s request for an additional $12,841.08. Id. at 5-6.
This additional sum includes translation costs, Samsung’s contribution to the parties’ joint
technology tutorial, and Samsung’s costs of adding digital Bates numbering to documents
produced during discovery. Id. Unable to reach agreement, the parties submitted over 30 pages

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of briefing and 16 exhibits to address this $12,000 dispute. See Dkt. No. 196 (Motion); Dkt. No.
204 (Response); Dkt. No. 210 (Reply); Dkt. No. 225 (Sur-Reply).
B. DISCUSSION
Federal Rule of Civil Procedure 54(d) affords courts discretion to award costs to
prevailing parties. Kouichi Taniguchi v. Kan Pac. Saipan, Ltd., 132 S. Ct. 1997, 2002 (2012).
This discretion is bridled by 28 U.S.C. § 1920, which limits the types of costs a court can tax
against an unsuccessful party. Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441-42
(1987). Section 1920 permits only the following 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, compensation of
interpreters, and salaries, fees, expenses, and costs of special
interpretation services under section 1828 of this title.
A district court may decline to award costs listed in the statute, but may not award costs
omitted from the statute. Crawford, 482 U.S. at 441–42, 107 S.Ct. 2494. “Although the
prevailing party is entitled to its costs, the prevailing party must still demonstrate that its costs
are recoverable under Fifth Circuit precedent, and the prevailing party should not burden the
Court with costs that are clearly not recoverable under the law.” Eolas Techs. Inc. v. Adobe Sys.,
Inc., 891 F. Supp. 2d 803, 804 (E.D. Tex. 2012).
1. Agreed Costs
Samsung itemizes a number of costs that the parties agree should be included in the Bill
of Costs. Dkt. No. 196 at 4-6. Having reviewed these expenses, the Court finds that these costs
taxable under § 1920.
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2. Disputed Costs
a) Translation Costs
Samsung argues that it is entitled to recover the costs of translating two Japanese patents
(the Oto and Yoshimura Patents) that are prior art to the patents-in-suit. Dkt. No. 196 at 6.
Though DSS agrees that translation costs may be taxable—highlighting that it did not dispute
translation costs for a Japanese patent that Samsung charted in its Invalidity Contentions—DSS
contends that the Oto and Yoshimura translation costs are not taxable because Samsung never
used these patents during the litigation for any purpose. Dkt. No. 204 at 5-6.
Although there is no specific statutory provision allowing for costs of translations, the
Fifth Circuit has held that translation costs may be properly taxed under § 1920(4).
Studiengesellschaft Kohle mbH v. Eastman Kodak Co., 713 F.2d 128, 133 (5th Cir. 1983). This
provision allows for costs of exemplification papers “necessarily” obtained for use in trial. Id.
“The proper standard for the award of translation costs should also be whether they were
necessarily incurred.” Id. The Court cannot

grant translation costs “carte blanche” because

a party “should not have to bear the cost of translating every . . . document irrespective of its
value to the litigation.” Id. “The court may, for example, choose to assess the cost of
translating only titles and subtitles of . . . documents plus the cost of translations of
those documents which, based upon their titles, appear to be relevant to the litigation.” Id.
With this guidance in mind, the Court finds that Samsung has not sufficiently met its
burden of demonstrating that the Oto and Yoshimura translation costs were necessarily incurred.
While Samsung listed the Oto and Yoshimura Patents in its Invalidity Contentions as relevant to
both the state of the art and whether the claimed invention would have been obvious, see Dkt.
204-8 at 13-14, the Court can discern nothing more about the contents of the patents. The fact

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that Samsung never charted the patents in its Invalidity Contentions or otherwise used the patents
during litigation is not dispositive. But Samsung failed to submit any other information about the
Oto and Yoshimura Patents—such as their titles or information contained in their abstracts—that
would assist the Court in determining whether the patents “appear to be relevant to the
litigation.” See Studiengesellschaft, 713 F.2d at 133. The Court cannot simply take Samsung’s
word that the Oto and Yoshimura Patents are relevant because they were listed alongside 125
other references in Samsung’s Invalidity Contentions. The Court therefore finds that DSS should
not be taxed for the cost of translating the Oto and Yoshimura Patents.
b) Technology Tutorial Costs
Samsung argues that DSS should be taxed for Samsung’s share of the cost of preparing a
technology tutorial to assist the Court with claim construction. Dkt. No. 196 at 8. DSS contends,
on the other hand, that Samsung has not sufficiently demonstrated that the technology tutorial
costs were “necessarily obtained for use in the case.” Dkt. No. 204 (quoting § 1920(4)).
In the Fifth Circuit, expenses for the production of non-testimonial evidence, such as
photographs, maps, charts, graphs, and other demonstrative aids, may be taxable if the expenses
were necessarily incurred. See Louisiana Power & Light Co. v. Kellstrom, 50 F.3d 319, 335 (5th
Cir.), cert. denied, 516 U.S. 862, 116 S.Ct. 173, 133 L.Ed.2d 113 (1995); Studiengesellschaft,
713 F.2d at 133.
According to Samsung, when the Court granted the parties’ agreed motion to modify the
Docket Control Order, see Dkt. No. 115 at 1, the Court ordered the parties to submit a
technology tutorial, and thus Samsung’s tutorial expenses were necessarily incurred. Dkt. No.
196 at 8. The Court, however, made no such Order. Consistent with the Court’s original Docket
Control Order, which permitted the parties to “Submit Technical Tutorials (if any),” Dkt. No. 72

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at 3, the Court’s modified Docket Control Order simply extended the deadline to submit any
tutorials that the parties wished to submit, see Dkt. No. 115 at 1. The Court did not require a
tutorial.
This case is therefore distinguishable from authority highlighted by Samsung in which a
court in the Northern District of Texas taxed technical tutorial costs in light of the court’s Docket
Control Order, which stated, “Technology tutorials shall be due from both sides seven days prior
to the Markman hearing.” See Fast Memory Erase, LLC v. Spansion, Inc., No. 3-10-CV-0481-MBD, 2010 WL 5093945, at *6 (N.D. Tex. Nov. 10, 2010) (citing Fast Memory Erase, LLC v.
Spansion, Inc., No. 3–08–CV–0977–M, Dkt. No. 169 (Docket Control Order) at 4). This specific
request, according to the district court, was “tantamount to [the] pretrial approval” required by
the Fifth Circuit before taxing costs associated with non-testimonial evidence. Id. This Court’s
Docket Control Order does not contain such a mandatory request.
In addition, while Fast Memory Erase was perhaps rightly-decided at the time, it is less
persuasive after Taniguchi, in which the Supreme Court took a more restrictive view of § 1920,
explaining that “[t]axable costs are limited to relatively minor, incidental expenses as is evident
from § 1920, which lists such items as clerk fees, court reporter fees, expenses for printing and
witnesses, expenses for exemplification and copies, docket fees, and compensation of courtappointed experts.” 132 S. Ct. at 2006. The expenses Congress listed in § 1920—characterized
by the Supreme Court as “relatively minor, incidental expenses”—are far from the expenses
associated with Samsung’s elaborate (and optional) tutorial that included complex animations
and voice-over. The Court therefore finds that DSS should not be required to bear the cost of
Samsung’s share of the technology tutorial.

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c) Bates Numbering
Finally, Samsung contends that DSS should be taxed for costs associated with stamping
discovery documents with Bates numbers. Dkt. No. 196 at 8-9. According to Samsung, such
costs are considered “costs of making copies” under § 1920(4) if the E-Discovery Order requires
the parties to affix unique production numbers to documents. Id. (citing MacroSolve, Inc. v.
Antenna Software, Inc. et al., No. 6:11-cv-00287, Dkt. No. 572 at 5 (E.D. Tex. Oct. 16, 2014)).
Thus, because the E-Discovery Order entered by the Court in this case requires that documents
include unique numbering, see Dkt. No. 74 at 2, Samsung argues that Bates numbering costs are
taxable.
The Court disagrees. Authority from this district persuades the Court that “[c]harges
associated with electronic Bates labeling are not included in a Bill of Costs.” Juxtacomm-Texas
Software LLC v. Axway, Inc., No. 6:10-cv-11-LED, Dkt. No. 1118 at 4 (E.D. Tex. Mar. 21,
2014) (citing Eolas Techs. Inc. v. Adobe Sys., Inc., 891 F. Supp. 2d 803, 806 n.2 (E.D. Tex.
2012)). While “costs of making copies” under § 1920(4) may include the cost of converting a
document to a format (such as TIFF or PDF) required by an E-Discovery Order, as a court in this
district found in MacroSolve, see No. 6:11-cv-00287, Dkt. No. 572 at 5, stamping documents
with unique numbering cannot be considered “making copies,” regardless of the E-Discovery
Order requirements. The Court does not understand MacroSolve to hold otherwise by allowing
costs associated with converting documents to TIFF or PDF format. To the extent MacroSolve
does hold otherwise, the Court disagrees that Bates numbering costs are allowable under
§ 1920(4). The Court therefore finds that Samsung’s Bates numbering costs are not taxable.

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III. CONCLUSION
Samsung has not shown this case to be exceptional, and therefore Samsung’s Motion for
Attorneys’ Fees under § 285 (Dkt. No. 192) is DENIED. Samsung’s additional Motion for Entry
of Bill of Costs (Dkt. No. 196) is GRANTED-IN-PART and DENIED-IN-PART. Samsung’s
unopposed costs are taxable, but Samsung cannot recover any of the costs disputed by the
parties. Samsung is therefore ORDERED to remove the disputed costs and resubmit to the clerk
within seven days of this Order a Bill of Costs reflecting only the unopposed costs in the amount
of $23,077.57.
SIGNED this 3rd day of January, 2012.
SIGNED this 12th day of October, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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