ABS Global, Inc. v. Inguran, LLC

Filing 873

ORDER denying #807 Motion for Attorney Fees; granting in part and denying in part #810 Motion for Attorney Fees; granting in part and denying in part #814 Bill of Costs; granting #817 Bill of Costs; granting #847 Motion for Leave to File a reply brief. Attorneys' fees are awarded in favor of plaintiff ABS Global, Inc. and against defendants in the amount of $4,865,324.13, plus post-judgment interest of 1.02% compounded annually, between April 21, 2017, and the date of the payment. Costs are awarded in favor of defendant ST and against plaintiffs in the amount of $21,759.27. Signed by District Judge William M. Conley on 9/27/2018. (jls)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

ABS GLOBAL, INC.,

v.

Plaintiff/Counterclaim Defendant,

OPINION AND ORDER

INGURAN, LLC,

14-cv-503-wmc

Defendant/Counterclaimant/Third-Party Plaintiff,
and
XY, LLC,

Intervening Defendant/Counterclaimant/Third-Party Plaintiff,

v.
GENUS PLC,
Third-Party Defendant.
The court previously entered a final judgment in this action, awarding: (1)
permanent injunctive relief to plaintiff ABS Global, Inc., under Section 16 of the Clayton
Act; and (2) damages and ongoing royalties to defendants Inguran, LLC (“ST”) and XY,
LLC, for trade secret misappropriation and patent infringement, as well as nominal
damages for breach of contract. (Dkt. #790.) Still pending before the court are the parties’
motions for attorneys’ fees and costs. (Dkt. ##807, 810, 814, 817.) For the reasons that
follow, the court will grant in part and deny in part ABS’s petitions, awarding
$4,865,324.13 in attorneys’ fees and $129,392.99 in costs under 15 U.S.C. § 26. As to
ST and XY, the court will deny their petitions for attorneys’ fees, but will grant in part and

deny in part ST’s petition for costs, awarding $151,152.26 as the prevailing party under
Federal Rule of Civil Procedure 54(d).
OPINION 1
I. ABS Fee Request 2
Section 16 of the Clayton Act provides that “when the plaintiff substantially
prevails [in obtaining an antitrust injunction], the court shall award the cost of suit,
including a reasonable attorney’s fee, to such plaintiff.” 15 U.S.C. § 26; see also Blue Cross
& Blue Shield United of Wis. v. Marshfield Clinic, 152 F.3d 588, 595 (7th Cir. 1998) (“[15
U.S.C. § 16] is explicit in allowing an award of attorney’s fees when only injunctive relief
is sought or awarded.”). Because ABS substantially prevailed in obtaining an antitrust
injunction, it has “a prima facie entitlement to an award of some of the attorneys’ fees and
court costs that it incurred.” Marshfield Clinic, 152 F.3d at 595. At the same time, all
parties agree that ABS “is not . . . entitled to fees and costs allocable to claims and theories
that neither succeeded, nor contributed to the limited victory that it has obtained.” Id.; see
also Hensley v. Eckerhart, 461 U.S. 424, 436 (1983) (“If . . . a plaintiff has only achieved
partial or limited success, the product of hours reasonably expended on the litigation as a
whole times a reasonable hourly rate may be an excessive amount.”).

A detailed description of the facts of this case may be found in the court’s summary judgment
order. (Dkt. #572.)
1

ABS sought leave to file a reply brief in support of its motion for fees (dkt. #847), which
defendants opposed. Ordinarily, the court would deny such a request, but given the unique legal
issues pressed in defendant’s opposition to that fee request, the court will grant the motion and has
considered the reply, as well as defendants’ opposition to the motion for leave (dkt. #855), which
reads in many ways as a surreply -- something this court would otherwise have surely denied.
2

2

Determining which fees are reasonable requires the court’s exercise of discretion,
with the movant having the burden to establish the amount of reasonably compensable
fees. See Ohio-Sealy Mattress Mfg. Co. v. Sealy Inc., 776 F.2d 646, 650 (7th Cir. 1985). In
City of Burlington v. Dague, 505 U.S. 557 (1992), the United States Supreme Court directed
that reasonable fees under section 16 of the Clayton Act be determined using the “lodestar”
approach -- “the product of reasonable hours times a reasonable rate.” Id. at 559-62; see
Pickett v. Sheridan Health Care Ctr., 664 F.3d 632, 639 (7th Cir. 2011) (“There is a strong
presumption that the lodestar calculation yields a reasonable attorneys’ fee award.”).
Where appropriate, the lodestar approach also calls for adjusting downward to reflect
limited success achieved in the litigation, with the understanding that “courts may award
compensation for time spent pursuing unsuccessful claims that related to the successful
claims.” Shott v. Rush-Presbyterian-St. Luke’s Med. Ctr., 338 F.3d 736, 739 (7th Cir. 2003)
(citing Hensley, 461 U.S. at 436-37).
Here, ABS asserts that it is entitled to fees in the amount of $5,402,212.87, which
were incurred “only for work directly related or contributing to the success of ABS’s claim
that ST was a monopolist that engaged in anticompetitive contracting practices to preserve
its monopoly.” (Pl.’s Opening Br. (dkt. #811) at 5.) For the most part, ABS has done an
impressive job of limiting its fee request to work related to its successful claim before the
jury -- that defendants used unreasonable, contractual restraints of trade to prevent entry
and maintain its monopoly position in the U.S. market for sexed semen processing services,
which resulted in entry of a permanent injunction. Indeed, ABS excluded whole time
entries and categories of work despite their being portions of both that overlapped with its
3

successful claim. (Decl. of Kevin M. Fee in support of ABS’s Motion for Attorney’s Fees
(dkt. #812) ¶¶ 6-13.) ABS then determined the starting point for its fee request by
multiplying the plainly relevant time entries by the corresponding, discounted attorneys’
billing rates negotiated at the outset of its engagement of lead counsel, Sidley Austin LLP.
(Id.) 3
For its part, defendants do not dispute that ABS is entitled to reasonable fees under
the Clayton Act. Having opted not to disclose the fees paid to their counsel, nor their
hours billed and hourly rate, defendants also do not dispute the reasonableness of hours
spent by Sidley and its local counsel, nor the hourly rates charged. Instead, defendants
argue that ABS’s claimed fees are inflated by: (a) an unrecoverable “bonus” payment to
counsel; (b) fees for unrecoverable clerical work or for work described in impermissibly
vague terms; and (c) a failure to reduce fees to reflect the limited success achieved on its
monopolization claim. Each argument is addressed below.
A. “Bonus” payment to plaintiff’s counsel
Defendants first dispute plaintiffs ABS and Genus’s request for reimbursement of a
lump sum invoice of $535,424.16 payable to Sidley, which was ostensibly triggered by the
results achieved at trial. The basis for this payment is the original engagement letter
between plaintiffs and Sidley, which calls for a 27.75% discount on “Sidley standard rates”
for billing purposes, but allows for “additional bonus amounts” depending on the results

ABS appears to have used the same methodology with respect for work done by contract and local
lawyers. (Fee Decl. (dkt. #812), ¶¶ 19-21.) Since defendants’ do not object to the award of those
fees as requested, the court will not address them further.

3

4

actually obtained in the litigation. Because this “sliding scale discount arrangement” was
negotiated upfront and at arms-length, plaintiffs argue that any bonus payment was
essentially “baked into” their presumptively reasonable, market-rate legal fees for purposes
of calculating the lodestar in this case. See Pressley v. Haeger, 977 F.2d 295, 299 (7th Cir.
1992) (fee awards should “determine what the lawyer would receive if he were selling his
services in the market”).
In contrast, defendants ST and XY characterize this additional sum as the
contingent payment of a “fee enhancement bonus,” which the Supreme Court’s 1992
decision in Dague expressly prohibits in an award to a prevailing plaintiff under Section 16
of the Clayton Act. See Barrow v. Falck, 977 F.2d 1100, 1105 (7th Cir. 1992) (citing Dague
for the proposition that hourly rate “enhancements” in the form of contingent fee
“bonus[es] for winning” are prohibited under fee-shifting statutes).

As support for

enforcing this prohibition, defendants quote the actual terms of plaintiff’s engagement
letter with Sidley, which provide for the possibility of: (1) a “Client satisfaction bonus” to
be determined “in the sole discretion of Genus plc” at an unspecified “amount” not to
exceed 10% of the total invoice at the end of the engagement (after adjusting to 85% of
Sidley standard rates, rather than the 72.25% of the standard rate initially paid); and (2)
a “success bonus” based on counsel obtaining “either a settlement or judgment that allows
ABS to operate on the IP front on a sustainable basis (such as through payment of a
reasonable royalty and avoidance of excessive contract penalties),” preset at 20% “[i]f ABS
can first begin operations in 2014 or 2015,” reduced to 15% for operation in 2016, and
10% in 2017. (Fee Decl., Ex. C (dkt. #812-6) 3.)
5

Defendants point out that ABS’s opening brief in support of its fee request does not
identify whether the bonus payment sought is based on a wholly-discretionary, “client
satisfaction” bonus or a bench-marked, “success” bonus of 10% based on ABS beginning
operations in 2017, or both, stating only that “the actual results at trial warranted a
reduced discount.” (Pl.’s Opening Br. (dkt. #811) 8.) Defendants argue that this failure
alone should result in a finding that plaintiff failed to meet its burden of proving the
reasonableness of this “bonus” fee request. The court disagrees. Even defendants readily
deduced that the payment is likely a “success bonus,” which ABS confirms in its reply,
since it not only matches the fixed, ten percent of overall fees sought for obtaining
injunctive relief after proving antitrust liability, but also matches the percentage called for
in the letter if ABS is able to begin operations in 2017 under an established royalty rate. 4
Defendants next argue that permitting counsel to recover the payment under the
success bonus would award them fees for claims on which they lost at trial, since “ST
proved its patents were valid and infringed, and they elected to receive an ongoing royalty
instead of seeking a permanent injunction.” (Defs.’ Opp’n Br. (dkt. #841) 5.) In other
words, defendants argue, the litigation resulted in ABS being permitted to launch its sexed
semen sorting operation despite being on the wrong end of ST’s patent infringement

The court agrees with defendants that ABS should have spelled out in its initial fee request the
specific, contractual basis for the invoiced bonus. Having said that, the invoice itself states the charge
is for “success bonus per March 19, 2014, engagement letter,” eliminating any arguable ambiguity,
as does the actual calculation of the 10% bonus that follows. (Dkt. #812-7.) Were the record not
so clear, so that some or all of the bonus paid was at “the sole discretion of Genus,” the court agrees
that ABS’s claim for a fee enhancement would be more problematic, since it would effectively
amount to plaintiff’s agreeing to an award of an additional bonus for its counsel purely at
defendants’ expense.
4

6

counterclaims, rather than because of its monopolization claim. Again, the court disagrees.
Defendants define the success ABS achieved by obtaining an injunction far too narrowly.
Although ABS did not prove that it was entitled to all of the relief it sought, it was able to
launch its competing technology before the termination of the 2012 Agreement by virtue
of showing that ST was maintaining its monopoly position in the market for sexed semen
processing services in the United States by effectively blocking new competitors through
the use of exclusive (or effectively exclusive) long-term supply contracts with the very
customers that ABS needed to sell their new processing services. Contrary to defendants’
assertion, therefore, ABS’s ability to launch its services is directly related “to ABS obtaining
an injunction under the Clayton Act” that voided some of these contractual provisions.
(Defs.’ Opp’n Br. (dkt. #841) 5.) Moreover, since ABS is only seeking reimbursement at
an enhanced hourly rate on hours actually spent working on its successful antitrust claim,
defendants offer no basis to conclude that the fees sought are for work on ABS’s
unsuccessful patent or other claims.
The nature of the invoice presents a different problem for ABS, however, since
Sidley’s success did not trigger an automatic bonus on all work performed in this case as
called for by the express terms of the engagement letter. Rather, the invoiced “bonus” only
applied an enhanced hourly rate to the hours that would be reimbursed by defendants.
Had the invoice been for all work done as called for by the engagement letter, and ABS
were now seeking the portion attributable to hours spent on its successful antitrust claim,
it would have a stronger argument that the heightened hourly rate was in fact “baked in”
to the original fee agreement between ABS and Sidley. Instead, ABS has failed to prove
7

this bonus payment, even framed as a smaller hourly fee discount “based upon the results
achieved” (rather than a bonus for prevailing in the lawsuit), is compensable under the
lodestar approach required by Dague. On the contrary, other than that it was negotiated
at the outset of suit, ABS offers no reason to depart from the general principle that a
traditional lodestar approach provides the presumptively reasonable fee amount. Indeed,
regardless of how it is framed, the bonus payment amounts to an enhancement “above the
‘lodestar’ amount” rejected by the Supreme Court in Dague.

505 U.S. at 559.

Cf.

Checkpoint Sys., Inc. v. All-Tag Sec. S.A., Civil Action No. 01-CV-2223, 2011 WL 5237573,
at *5 (Nov. 2, 2011), vacated on other grounds, 572 F. App’x 988 (Fed. Cir. 2014) (finding
that a “litigation success bonus” was unreasonable, since it “represent[ed] a form of
duplication of the amounts allegedly paid to compensate Pepper Hamilton counsel for
work performed in defending the lawsuit”).
While ABS makes a persuasive case distinguishing itself from the facts in Barrow v.
Falck, 977 F.2d 1100 (7th Cir. 1992), on which defendants principally rely in opposing
this fee enhancement, ABS’s reply underscores the problem with its claim for a “success
bonus.” The Seventh Circuit rejected an ultimate $135 per hour rate for a lawyer who had
charged his client between $88 and $110 per hour, based simply on an “affidavit from a
member of the local bar” that the “market rate for attorneys possessing the ‘experience,
qualifications, reputation and ability’ of plaintiff’s lawyer is $135 per hour.” Id. at 110405. As the Seventh Circuit emphasized in rejecting the higher hourly rate, the lodestar
approach requires that the court “stick to the market rate for the attorneys’ time,” and the
amount actually paid to “this attorney at a market rate of $110 or less.” Id. at 1105
8

(emphasis in original). The difference here, according to ABS, is that it has agreed to make
the additional $535,424.16 payment, thereby establishing the actual “market rate” for
Sidley attorneys in this case. (Pl.’s Reply Br. (dkt. #847-1) at 2.)
While this distinguishes Barrow on its facts, it does not solve ABS’s Dague problem.
That ABS negotiated with Sidley for a market rate to include a contingent component is not
enough. The same could be said of the contingent fee agreed to in Dague, which a majority
of United States Supreme Court found was not a proper consideration in the lodestar
analysis.

505 U.S. at 563-64.

And unless and until that Court or Congress decide

otherwise, there would appear no basis to award a contingent or quasi-contingent payment
where a lodestar analysis is required. 5
This is not to hold that ABS could not have made a case for a higher hourly rate
than the discounted rate negotiated at the outset of its engagement using the lodestar
approach. If anything, the fact that Sidley had negotiated a substantial discount from its

Of course, the approach adopted in Dague has been criticized, and its strict interpretation rejected
under other federal and state statutes. See, e.g., Polselli v. Nationwide Mut. Fire Ins. Co., 126 F.3d
524, 535 (3d Cir. 1997) (“The Dague majority found no justification for recognizing a common
law enhancement for contingent risk; a statutory provision requiring consideration of enhancement
would have been quite another matter.”); Clinchfield Coal Co. v. Harris, 149 F.3d 307, 309–10 (4th
Cir. 1998) (“All the parties to this consolidated appeal agree that [Dague is] inapposite to this case,
which involves an interpretation of different statutory language—the word “thereafter” rather than
“reasonable.”); Florin v. Nationsbank of Georgia, N.A., 34 F.3d 560, 564 (7th Cir. 1994) (“Dague, by
its terms, applies only to statutory fee-shifting cases, and its reasoning is largely based on the
statutory language of fee-shifting provisions.”); In re Washington Pub. Power Supply Sys. Sec. Litig., 19
F.3d 1291, 1301 (9th Cir. 1994) (“[T]he concerns expressed in Dague about unduly burdening
losing parties in statutory fee cases are not present in common fund cases where fees are paid out
of the settlement fund.”); Joyce v. Federated Nat'l Ins. Co., 228 So. 3d 1122, 1132 (Fla. 2017)
(“[W]ith all due deference to the United States Supreme Court, we do not accept
the Dague majority's rationale for rejecting contingency fee multipliers.”); Schefke v. Reliable Collection
Agency, Ltd., 96 Haw. 408, 450, 32 P.3d 52, 94 (2001), as amended (Oct. 11, 2001) (“We conclude
that Dague 's . . . dissenting opinion[] . . . [is] better reasoned than Dague's majority opinion.”).
5

9

so-called “Standard Rates,” suggests that the lawyers working on this matter may have been
regularly charging higher rates for similar work.

If so, that fact could overcome the

presumption of the negotiated hourly rate being the best evidence of the true market rate,
particularly bolstered by the enhancement ABS was willing to pay. Unfortunately for ABS
and its counsel, no affidavits or other evidence from counsel or third-party attorneys
support this court finding that the “Sidley Standard Rate” (or the lower discounted rate
reflected in the 10% bonus) is a better indication of the reasonable market rate for these
lawyers’ services. See Dague, 505 U.S. at 565-67 (recognizing that “the lodestar model
often (perhaps generally) results in a larger fee award than the contingent fee model”).
Aside from these other evidentiary failings in ABS’s submissions, there is also the fact that
plaintiff merely provides an invoice for remittance, rather than proof of payment like the
other, regular invoices, reinforcing the likelihood that this “bonus,” rather than
representing a reasonable market rate, will only be paid if defendants are ordered to do so.
Indeed, in light of ABS’s apparent unwillingness to honor the higher hourly rate in the
“success bonus,” except on hours that defendants’ would have to pay, the deeper
discounted rates would appear to be the market rate negotiated at arm’s length.
Finally, in light of the results that plaintiffs achieved at trial, which fell well short of
total victory, awarding a sizeable, additional payment -- a ten percent chunk of
compensable fees -- required ABS to come forward with stronger proof that this higher
hourly rate was reasonable in the market place, particularly when it appears inconsistent
with the principle that the lodestar should not be adjusted upward or downward due to a
contingent fee arrangement. See Pickett, 664 F.3d 632, 644-45 (7th Cir. 2011). Having
10

failed to demonstrate that this enhancement should be included under the lodestar
approach required by Dague, plaintiffs will not be awarded the $535,424.16 success bonus.
B. Particular time entries
Defendants also object to certain time entries for which ABS seeks fees. Specifically,
defendants argue that plaintiff is not entitled to recover fees for approximately 430 hours
of “clerical work,” including “assembling binders, counting document pages, and updating
indices of documents,” which defendants contrast with “substantive tasks” that parties can
recover at paralegal rates, such as “reading exhibits, drafting and filing pleadings, and
preparing discovery requests.” (Defs.’ Opp’n Br. (dkt. #841) 6 (citing Reynolds v. EOS
CCA, No. 1:14-cv-01868-JMS-DML, 2016 U.S. Dist. Lexis 161706, at *16 (S.D. Ind. Nov.
22, 2016).) Defendants also argue that ABS seeks to recover fees for over 300 hours of
time for what is described as impermissibly “vague” entries. (Id. at 7.)
1. Clerical work
As for defendants’ objection to so-called clerical work, the Supreme Court
recognized in Missouri v. Jenkins, 491 U.S. 274 (1989), a gray area between legal work that
paralegals are capable of performing as well as attorneys and “non-legal work” that can be
accomplished by non-lawyers. Id. at 288 (citing Johnson v. Ga. Highway Express, 488 F.2d
714, 717 (5th Cir. 1974)); see also Montanez v. Simon, 755 F.3d 547, 555 (7th Cir. 2014)
(district court did not abuse discretion by excluding time billed for clerical work, including
scanning and faxing performed by a partner). A review of the time entries that defendants
argue fall into the non-legal or clerical reveals several, general categories of work that at
worst fall into this gray area: (1) updating folders; (2) preparing binders for various
11

purposes, including for contract attorneys, training, witnesses and exhibits; (3) drafting
and updating lists and indices, including for document production and deposition exhibits;
(4) determining the number of document pages produced; (5) keeping track of documents
to be used by expert witnesses; and (6) updating billing time entries.
Because each of these tasks may well include “legal” (or at least professional)
judgment as to what to include, in what order and why, the court disagrees with defendants
that they are per se non-compensable. At the very least, most of these tasks as described
fall in the gray area of legal work that can be shared between attorneys and paralegals. The
obvious exceptions are for time spent counting pages, “tracking documents sent to [an]
expert,” researching prices for court reporting vendors, and loading deposition videos onto
a shared drive. With these entries excluded at the applicable hourly rate for the individual
who performed them, plaintiff’s reasonable fees are reduced by $1,467.58. To the extent
some other entries might arguably be excluded, a further reduction strikes this court as
inappropriate in light of ABS’s overall, good faith efforts to include only compensable time
and loss of any upgrade from what appear on their face to be discounted hourly rates. Plus,
defendants refused to produce their own counsel’s billing records, making it impossible to
determine if the same work was deemed compensable legal work. Given this decision, ABS
is entitled to the benefit of the doubt.
2. Vague entries
Defendants’ alternative criticism is that a number of time entries describe “vague
tasks.” This argument fares little better. Certainly, the court has the discretion to reduce
fee awards when the requesting party fails to adequately document what work time is being
12

compensated. See Ohio-Sealy, 776 F.2d at 658 (district court did not abuse discretion for
reducing fee award for vagueness). Here, defendants argue that the plaintiffs’ descriptions
for over 300 hours of work neglect to provide “information linking them to this litigation,
and [any] information of the subjects involved or the topics discussed.” (Defs.’ Opp’n Br.
(dkt. #841) at 7.) In particular, many of the time entries that defendants identify as overly
vague concern time spent preparing for and participating in meetings and phone calls with
the client and other attorneys, most of which fail to specify which issues or claims the work
concerned.
Obviously, the inclusion of some of this general time is in tension with plaintiff’s
assertions that: (1) “ABS has excluded from its Petition attorney time entries that did not
directly relate or contribute to the success of the monopolization claim”; and (2) “ABS
further reduced the fees it seeks by excising portions of attorney time entries that
referenced work both related and unrelated to the successful claim, but did not specify the
amount of time focused on compensable work.” (Pl.’s Opening Br. (dkt. #811) at 5-6.)
However, plaintiff also identifies several different categories of work that it did not include
in its fee request despite being related at least in part to its successful antitrust claim. (Pl.’s
Opening Br. (dkt. #811) at 6.) Moreover, the monopolization claim did not depend on a
discrete set of legal theories and evidence, making it “difficult to divide the hours expended
on a claim-by-claim basis.” Hensley, 461 U.S. at 435. For this reason, it is difficult to fault
plaintiff for spending approximately 300 hours on matters related to strategy in what was
a relatively complex, antitrust claim, which both sides litigated vigorously for well over two
years. Finally, again, defendants refused to disclose comparable billing records for its
13

counsel, making it more likely than not that its own bills reflect similar or more time spent
on the antitrust claims here. Accordingly, the court again exercises its discretion in refusing
to discount plaintiff’s requested fee award further on the basis that certain descriptions in
time entries could have been more specific.
C. Degree of Success
Finally, defendants insist that a global reduction of half of plaintiff’s fee request is
appropriate to account for its limited success in this case. (Def.’s Opp’n Br. (dkt. #841)
8-13.) Obviously, “[n]o algorithm [exists] . . . for adjusting a lodestar to reflect partial or
limited success.” Montanez, 755 F.3d at 557 (citing Richardson v. City of Chi., 740 F.3d
1099, 1103 (7th Cir. 2014)). “When the judge cannot easily separate the successful and
unsuccessful work,” therefore, “there is nothing to do but make an across-the-board
reduction that seems appropriate in light of the ratio between winning and losing claims.”
Id.
Even with the reductions described above, plaintiff is still seeking a fee award that
approaches $5 million. Defendants argue that such an award would be unreasonable in
light of the marked limitations on plaintiff’s success: (1) plaintiff did not achieve the full
scope of its desired permanent injunction; (2) plaintiff failed to show any antitrust injury
entitling it to monetary damages; (3) defendants were awarded sizable damages on their
patent infringement and trade secret misappropriation claims; and (4) the jury found in
favor of ST on its breach of contract claim. At the same time, in addition to obtaining
injunctive relief permitting it to launch technology to compete immediately for the
business of bull studs, plaintiff ABS did prevail on some contract-related issues, including
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that: (1) the research and development of its competing technology was permitted under
the 2012 Agreement; (2) the liquidated damages provision in the 2012 Agreement was
unenforceable under Texas law; and (3) the non-competition provisions in the 2012
Agreement were unenforceable under Texas law as written. Still, defendants would further
discount ABS’s request for fees regarding the antitrust relief, pointing out that the majority
of work identified as pertaining specifically to the injunction did not take place until after
the jury rendered an adverse verdict on plaintiff’s claimed antitrust injury.
In considering a global reduction to the lodestar, the court is guided by Seventh
Circuit precedent that restricts district courts from reducing a fee request “by an arbitrary
percentage because it seem[s] excessive to the court,” and even if a global reduction is
appropriate, courts must not “engage in double-counting.” Spellan v. Bd. of Ed. for Dist.
111, 59 F.3d 642, 647 (7th Cir. 1995) (quoting Tomazzoli v. Sheedy, 804 F.2d 93, 97 (7th
Cir. 1986)). Here, plaintiff took pains to limit its requested fee award to the aspects of its
monopolization claim on which it actually prevailed, including reductions in requested fees
for time spent reviewing documents by 45%, based on its analysis of the proportion of a
random sample of documents that were related specifically to the antitrust claim.
Ultimately, those efforts resulted in a request of approximately 39% of the fees that Sidley
billed to ABS for its work on this case (a percentage that has been further reduced based
on the court’s rulings above). And this is on top of a seemingly sizable discount off of
“Sidley Standard Rates,” whatever those may actually be.
Taking into consideration the outcome of the litigation as a whole, accounting for
the complexity of this case and accepting as credible the sizeable good faith exclusions
15

made from plaintiff’s fee request already, the court finds that no further, across-the-board
reduction in the fees is necessary to render the award reasonable, particularly where
defendants have declined to disclose their own legal fees incurred in this matter.
Accordingly, the court’s fee deductions and final fee award to ABS is summarized
as follows:
Initial Request
Total Fees

Deductions

$5,402,212.87

Subtraction for Additional
Charge Based on Result
Subtraction for Clerical Cooper 2015 -- $1,354.69
Work
(6.25 hours)

$535,421.16
$

1,467.58

Buettner 2016 -- $112.89
(1.25 hours)
Final Award: $4,865,324.13

II. Defendants Fee Request
Defendant XY also moves for an award of fees under the Wisconsin Uniform Trade
Secrets Act (“WUTSA”) for prevailing on its misappropriation claim, while defendant ST
moves for fees under Texas law for prevailing on its breach of contract claim. 6 Plaintiffs
ABS and Genus oppose both requests. First, plaintiff argues that XY cannot show ABS’s
misappropriation of trade secrets meets the knowledge standard for obtaining fees; and
second, plaintiff contends that ST failed to demand a specific amount for the claimed

Defendants acknowledge that recovering fees for both claims may result in an impermissible
double recovery, which they suggest could be addressed by allowing them to elect the most favorable
award. Since that issue is moot for the reasons explained below, the court need not address it
further.
6

16

breach of contract, as required by Texas law to recover fees, and failed to recover actual
damages on that claim. The court addresses these requests separately below.
A. Trade secret misappropriation
The parties’ primary dispute concerns a fee award based on ABS’s trade secret
misappropriation claim, which turns on whether defendant XY has proven, or could prove,
the required state of mind under the Wisconsin Uniform Trade Secrets Act (“WUTSA”).
See Wis. Stat. § 134.90(4)(c) (court may award reasonable fees to the prevailing party when
trade secret misappropriation was “willful and deliberate”). In particular, XY argues that
because the Wisconsin legislature specifically rejected adopting the Uniform Trade Secret
Act (“UTSA”) standard for awarding fees for “willful and malicious” misappropriation, a
showing of malice is not required under WUTSA. See Racine Unified Sch. Dist. v. Labor &
Indus. Review Comm’n, 164 Wis. 2d 567, 567 n.6, 476 N.W.2d 707 (Ct. App. 1991)
(“Where . . . the legislature has ‘borrowed’ from analogous federal legislation, differences
in the language of [the statutes] must be presumed the result of deliberate choice exercised
by the legislature.”). Because the terms “willful” and “deliberate” are neither defined by
WUTSA nor by the Wisconsin courts, XY further contends that Black’s Law Dictionary
supplies the appropriate definition of willful, meaning “voluntary and intentional, but not
necessarily malicious,” as well as deliberate, meaning “intentional” or “pre-meditated.”
(Defs.’ Opening Br. (dkt. #808) 3.)
According to XY, the evidence supporting its trade secret misappropriation claim -namely, that Kathy Mean intentionally took XY’s trade secrets and used them for ABS’s
benefit despite knowing that those actions were prohibited -- was more than enough to
17

meet this definition of “willful and deliberate.” XY adds that ABS’s conduct related to the
trade secret misappropriation claim supports an award of fees, because: (1) it did not
investigate Mean’s use of XY’s information timely and thoroughly; and (2) it contested
liability all the way up to the eve of trial and only then stipulated to Mean’s
misappropriation for the purpose of attempting to keep this evidence from the jury.
In line with a familiar theme throughout this litigation, plaintiff ABS initially argues
that XY abandoned any claim for willful and deliberate misappropriation by failing to
present it to the jury, ignoring that ABS stipulated to liability based on its employee Mean’s
use of XY’s trade secrets to avoid consideration of that issue. Leaving this argument aside,
ABS further disputes defendants’ insistence that the WUTSA’s “willful and deliberate”
standard requires merely “misappropriation that is intentional and not accidental.” (Defs.’
Opening Br. (dkt. #808) 3.) Pointing to the legislative history of WUTSA, as well as to
various cases, ABS instead proposes five guiding principles to discern the required state of
mind:

(1) willful misappropriation requires more than “garden-variety” intentional

conduct; (2) Wisconsin courts would look to other courts applying a high bar to show
willfulness under the UTSA; (3) Wisconsin courts would look to law governing the
enhancement of patent damages for willfulness; (4) proof must be by clear and convincing
evidence; and (5) proof that ABS authorized or ratified the misappropriation would likely
be required. (Pls.’ Opp’n Br. (dkt. #840) 5-7.)
Without engaging in an unnecessary, detailed analysis regarding each of these
principles, particularly in light of the discretion afforded by WUTSA in determining
whether fees should be awarded, the court agrees with plaintiff ABS that the weight of the
18

authority suggests a showing of entitlement to fees under the willful and deliberate
misappropriation standard requires establishing some elevated degree of intentional
wrongdoing on the part of ABS, even if the misappropriation need not be malicious. See
Micro Data Base Sys., Inc. v. Dharma Sys., Inc., 148 F.3d 649, 654 (7th Cir. 1998)
(describing “willfulness or malice” required to obtain punitive damages under UTSA as
“vague terms but obviously implying some element of aggravation”); cf. Wis. Stat. §
134.90(4)(b) (permitting the court to award punitive damages when misappropriation is
“willful and malicious”) (emphasis added). 7
Notwithstanding that XY neglected to request a jury finding on this issue, the facts
of this case generally belie any egregious wrongful conduct, especially on ABS’s part.
Instead, the facts of record establish that Kathy Mean took and used information
developed while an employee of XY without authorization to assist her in carrying out
similar job duties at ABS. The evidence is also that Mean acted unbeknownst to ABS, and
that ABS fired Mean upon discovery of her misdeeds. Further, ABS discarded her tainted
work and hired another individual to re-do it. Even crediting XY’s assertion that ABS
should have policed Mean better given her background, this would still support a finding
of mere negligence (or at the outside, gross negligence), rather than willful or deliberate
misconduct. Finally, the court does not view ABS’s litigation conduct to weigh in favor of
awarding fees, especially considering that ABS disputed in good faith whether XY’s stolen

The court acknowledges some support for XY’s interpretation of what is required to show “willful
and deliberate” misappropriation, including that WUTSA “does not require actual knowledge or
intent” to prove misappropriation, Air Eng’g, Inc. v. Indus. Air Power, LLC, 2013 WI App 18, ¶ 25,
346 Wis. 2d 9, 828 N.W.2d 565, but finds that XY’s proof does not meet even this minimum
threshold for an award of fees for the reasons explained in the next paragraph above.
7

19

information qualified as trade secrets, an issue that remained unresolved until summary
judgment. Accordingly, the court declines to award XY fees for ultimately prevailing on its
trade secret misappropriation claim.
B. Breach of contract
This leaves defendant ST’s claim to an attorneys’ fee award under Texas law, which
provides for recovery of fees by a party who prevails on a breach of contract claim. Tex.
Civ. Prac. & Rem. Code § 38.001(8). As plaintiff points out, however, two prerequisites
for obtaining fees are that the prevailing party (1) “must present the claim to the opposing
party,” Tex. Civ. Prac. & Rem. Code § 38.002(2), and (2) must recover damages, Coffel v.
Stryker Corp., 284 F.3d 625, 640 (5th Cir. 2002). Plaintiffs argue that ST’s fee request on
its breach of contract claim fails to satisfy either of these requirements.
With respect to the presentment requirement, it need not be accomplished in any
particular form, whether oral or written, but it must be done “at least thirty days before
trial to provide the defendant with any opportunity to pay the claim without incurring
attorney’s fees.” 8 Belew v. Rector, 202 S.W.3d 849, 856-57 (Tex. App. 2006). In addition,
neither filing suit nor including a demand in the pleadings alone can constitute
presentment. BCL-Equip. Leasing, LLC v. Davis, Case No. 2:15-CV-195-WCB, 2016 WL
1403989, at *4 (D. Tex. Apr. 11, 2016) (citing Llanes v. Davila, 133 S.W.3d 635, 641

Plaintiffs correctly point out that courts applying Texas law appear to disagree over whether
presentment must take place before trial, see Genender v. USA Store Fixtures, LLC, 451 S.W.3d 916,
924 n.13 (Tex. App. 2014), but the court need not resolve that split in authority, since defendants
failed to prove this requirement occurred before, during or after trial as explained below.
8

20

(Tex. App. 2003)). Finally, the party seeking fees has the burden to prove presentment.
Id. (citing Canine, Inc. v. Golla, 380 S.W.3d 189, 193 (Tex. App. 2012)).
ST insists that it presented ABS with its breach of contract claim “repeatedly,”
identifying three specific instances:

(1) “when Maurice Rosenstein raised his

confidentiality concerns in 2012”; (2) “when ST served the expert report of John Nolan
setting out the facts of ABS’s liability in October 2015”; and (3) “when ST served the
expert report of Todd Schoettelkotte in March 2016, claiming $1,000,000 in damages for
ABS’s improper use of XY’s protocols.” (Defs.’ Opening Br. (dkt. #808) 12.) As plaintiff
correctly points out, however, each of these instances do not qualify as presentment
because, among other reasons, they all fail to include a demand for payment or
performance. See, e.g., Gibson v. Cuellar, 440 S.W.3d 150, 157 (Tex. App. 2013) (“The
term ‘presentment,’ as applied in section 38.002, is not defined in the Code; however, our
supreme court has construed the word to mean simply a demand or request for payment
or performance, whether written or oral.”); Jim Howe Homes, Inc. v. Rogers, 818 S.W.3d 901,
904 n.3 (Tex. App. 1991) (“In all events, the elements of presentment in § 38.002 must
include at minimum a demand or request for payment, irrespective of what else it might
include.”) (citing Jones v. Kelley, 614 S.W.2d 95, 100 (Tex. 1981)).

Even with the

inconsistencies in Texas law regarding what suffices as presentment, therefore, ST has
failed to meet the bare minimum burden of proof with respect to that requirement using
any of these three examples.
In any event, ST concedes that “nominal damages alone are not sufficient to sustain
an award of attorneys’ fees for breach of contract” under Texas law. (Defs.’ Opening Br.
21

(dkt. #808) 12.) Nevertheless, ST acknowledges that the jury was not even asked to decide
what damages it incurred because of ABS’s breach of contract, arguing instead that its
damages were more than nominal because the jury awarded XY $750,000 for its trade
secret misappropriation claim.

Having failed to cite any authority that this court is

permitted to award a party fees for breach of contract under Texas law, despite being
awarded no damages on that claim, ST once again fails to demonstrate entitlement to fees
under Texas law. For all these reasons, defendants’ fee requests are denied.
III. Costs
This just leaves the parties’ requests for costs. As an initial matter, there is no
dispute that ABS is entitled to recover $129,392.99 in costs incurred in obtaining
permanent injunctive relief on its monopolization claim under 15 U.S.C. § 26. Even so,
ST seeks to treat that amount as an offset to the $279,445.06 in costs it seeks under
Federal Rule of Civil Procedure 54(d)(1) as a prevailing party on certain of its
counterclaims. In response, plaintiff argues that ABS is the only prevailing party, having
“proved that ST had engaged in unlawful monopolization under § 2 of the Sherman Act,
and . . . obtained broad injunctive relief that will open the U.S. sexed bovine semen
processing market to free and fair competition,” as well as rendered “ST’s request for an
injunction a non-starter” by virtue of the jury’s monopolization finding. (Pls.’ Opp’n Br.
(dkt. #833) 1.) As described by the Seventh Circuit, “[a] party prevails for purposes of
Rule 54(d) when a final judgment awards it substantial relief.” Smart v. Local 702 Int’l Bhd.
of Elec. Workers, 573 F.3d 523, 525 (7th Cir. 2009). Rule 54(d) expressly gives the court
discretion whether to award costs, and that discretion is “especially broad . . . in mixed
22

result cases[.]” Gavoni v. Dobbs House, Inc., 164 F.3d 1071, 1075 (7th Cir. 1999) (citing
Testa v. Vill. of Mundelein, Ill., 89 F.3d 443, 447 (7th Cir. 1996)).
Here, ST achieved no more than mixed results. Certainly, ST avoided having to
pay antitrust damages; it was awarded substantial damages on its own claims; and ST
partially defended its patents and certain provisions in the 2012 Agreement against ABS’s
challenge. However, the jury also found ST had a monopoly in the U.S. sexed bovine
semen processing market, and the court entered permanent injunctive relief in ABS’s favor
as a result of that finding. This is far from inconsequential relief.
Given the totality of what was at stake in this litigation, therefore, ST managed a
victory, albeit a narrow one, since ST’s patents at the center of the parties’ disputes were
upheld and found infringed, but ST was found to have unlawfully abused its market
position to prevent congestion. Hence, ST is a, if not the, prevailing party. Given the
“strong presumption that the prevailing party will recover costs,” Weeks v. Samsung Heavy
Indus. Co., 126 F.3d 926, 945 (7th Cir. 1997), the court, therefore, turns to ABS’s specific
objections to ST’s requested costs in the categories of transcripts, witnesses and
exemplification.
A. Transcripts
First, plaintiffs object to ST’s request of $15,131.65 for real-time transcription
services and of $13,188.70 for expedited rough transcripts, ostensibly because they were
only incurred for the “convenience” of counsel. The court may award costs for expedited
deposition transcripts under 28 U.S.C. § 1920(2), but only if they were “necessarily
obtained for use in the case.” See Little v. Mitsubishi Motors N. Am., Inc. 514 F.3d 699, 702
23

(7th Cir. 2008). Costs for video recording a deposition can also be recoverable, so long as
they were necessary. See Split Pivot, Inc. v. Trek Bicycle Corp., 154 F. Supp. 3d 769, 774
(W.D. Wis. 2015) (citing Little, 514 F.3d at 701-02). This “determination of necessity
must be made in light of facts known at the time of the deposition, and the introduction
of a deposition at trial is not a prerequisite for finding that it was necessary to take the
deposition.” M.T. Bonk Co. v. Milton Bradley Co., 945 F.2d 1404, 1410 (7th Cir. 1991).
In response to plaintiff’s objections, ST withdraws its request for real-time
deposition transcript costs of $15,131.65, despite continuing to contend that they are
taxable. ST maintains, however, that the rough transcripts it obtained were necessary to
prepare for imminent depositions of other witnesses, as well as court deadlines.

As

examples, ST points to rough transcripts ordered during Juan Moreno’s multiple-day
deposition, so that counsel could prepare for the following day, and to an expedited
transcript for expert witness Kevin Murphy’s deposition, which took place three weeks
before the dispositive motions deadline. In reply, plaintiffs dispute the necessity of these
transcripts, arguing that rough transcripts obtained in the course of a multiple-day
deposition are essentially the same as real-time transcripts for the convenience of counsel
and that the final transcript for Murphy’s deposition was available nearly two weeks before
summary judgment motions were due. Plaintiffs also argue that another example of a rough
transcript -- that of the deposition of their damages expert, Kirit Lezotte -- was not
necessary because that expert was not even mentioned during the deposition of ST’s damages
expert, Barry Harris.

24

Based on the examples provided, the court nevertheless agrees with ST that the
expedited rough transcripts that it ordered had the realistic potential to assist in preparing
for upcoming depositions and the summary judgment deadline.

At most, plaintiffs’

objections to the Murphy and Lezotte transcripts are based on hindsight that the court
cannot take into account in determining whether rough transcripts were necessary at the
time ordered. Moreover, as already alluded to, the complexity of this case, combined with
this court’s typically demanding schedule, made rough transcripts necessary here, or at
least ST’s counsel could have reasonably concluded at the time. Having provided no other
persuasive reason for the court to parse through specific rough transcripts that ST ordered,
plaintiffs’ objections as to those costs fall short.
B. Video recordings
Plaintiffs also object to ST’s request to recover $4,220.50 in costs for video
recordings of its own witnesses’ depositions, as well as $4,830 in costs for videos of
depositions of ABS’s experts. None of these videos were necessary, plaintiffs argue, because
ST was able to bring its own witnesses to trial and because “[i]f ABS’s experts were going
to testify at trial at all, they would testify live.” (Pls.’ Objs. (dkt. #833) at 8.) Plaintiffs
add that ST only used transcripts, not videos, to impeach witnesses at trial. ST, on the
other hand, contends that it contemplated introducing deposition testimony of some
witnesses at trial, although at the time each deposition was taken, ST had not yet
determined which witnesses would testify live and which by video deposition.
Still, ST provides no persuasive reason why videotaping the depositions of its own
witnesses was reasonable or necessary. See Little, 514 F.3d at 702 (“[I]n addition to being
25

authorized by statute, a cost must be both reasonable and necessary to the litigation for
the prevailing party to recover it.”). ST cites a case from this district for the proposition
that videotaping a deposition is reasonable when “there is even a slight chance that the
witness may not be present at trial,” but none of the witnesses whose depositions were
videotaped in that case were controlled by the prevailing party. Z Trim Holdings, Inc. v.
Fiberstar, Inc., No. 07-cv-161-bbc, 2008 U.S. Dist. LEXIS 61514, at *3 (W.D. Wis. Aug.
12, 2008). Further, ST identifies no reason to think that any of its own witnesses would
be unable or unwilling to be present at trial, other than caused by its own indecision. Id.
Therefore, while ST may have had a sound reason for videotaping with respect to some
witnesses, it has presented an insufficient basis for the court to find that costs for
videotaping depositions of its own witnesses were necessarily incurred, and so its request
for costs will be deducted by $4,220.50. 9
The necessity of ST’s video recording of the deposition testimony of ABS’s expert
witnesses presents a closer question. As ST points out, not using the videos to impeach
those experts at trial is not dispositive, since the necessary inquiry is made at the time of
the deposition itself. Furthermore, given that the videotaped depositions were for ABS’s
experts, who were likely to present testimony critical to the case one way or the other,
plaintiffs’ invitations for the court to scrutinize ST’s decision to tape that testimony further
is unpersuasive.

This is not intended as a blanket rule. Rather, absent some articulated concern or justification, a
party is not entitled to the costs of a decision to video record all of its own witnesses as a matter of
course.
9

26

C. Witnesses
Next, plaintiffs object to more than $12,000 in costs that ST requests for witness
fees under 28 U.S.C. § 1920(3). As an initial matter, ST withdraws its requests for costs
related to certain invoices, rental car expenses, shipping expenses and first class plane
tickets, amounting to a total reduction of $4,773.94. This leaves the parties’ disputes
surrounding costs for (1) meals and lodging for witnesses in excess of the maximum per
diem allowance under 28 U.S.C. § 1821(d)(2) and (2) the travel costs for a deposition
incurred by ST’s expert, Cynthia Ludwig.
1.

Subsistence allowances

As to the first of these disputes, plaintiffs point out that the maximum daily
allowance for Madison, Wisconsin, in August of 2016 under the government (GSA) rate
was $164 per day. 10 Assuming that the number of nights for which ST seeks costs for
witness fees is reasonable, this would result in a maximum allowance of $3,608. In support
of their argument that this per diem rate should set a ceiling on a witness’s daily lodging
and meal expenses, plaintiffs cite several cases, including Commercial Credit Equipment Corp
v. Stamps, 920 F.2d 1361, 1368 n.10 (7th Cir. 1990), for the proposition that “Rule 54(d)
cannot overcome a specific limitation such as the 28 U.S.C. 1821 per diem witness fee.”
(Pl.’s Objs. (dkt. #833) 8; Defs.’ Reply (dkt. #849) 4.) On the other hand, ST cites a
single district court case in which a party recovered lodging costs in excess of the per diem
rate. See e2Interactive, Inc. v. Blackhawk Network, Inc., No. 09-cv-629-slc, 2015 WL 751728
(W.D. Wis. Feb. 23, 2015).

10

The per diem rate for fiscal year 2016 is available at https://www.gsa.gov/portal/category/ 100120.

27

Based on the weight of the authority, as well as ST’s failure to demonstrate the
reasonableness of the expenses for its witnesses’ lodging and meals beyond the per diem
allowance, the court will reduce ST’s award of costs to that allowance. See, e.g., United
Teacher Assocs. Ins. Co. v. Union Labor Life Ins. Co., 414 F.3d 558, 575 (5th Cir. 2005) (“This
court has held that an award of costs must be vacated when the costs exceed the maximum
per diem amount permitted by statute.”); 10 Charles Alan Wright, Arthur R. Miller &
Mary Kay Kane, Federal Practice and Procedure § 2678 (3d ed.) (“The statutory amounts
[for subsistence allowances in § 1821] usually will be awarded regardless of whether the
witness spends the per diem allotment. If the witness is paid more by the prevailing party,
however, nothing over the amount prescribed in the statute will be recoverable.”). The
same reduction is appropriate for $54.97 in “incidentals during trial” incurred by ST’s
witness Juan Moreno. (Pl.’s Objs. (dkt. #833) 10.) Accordingly, ST’s award of costs for
witness subsistence allowances is further reduced to $3608. 11
2. Travel for Cynthia Ludwig
Plaintiff argues that it should not have to foot the bill for $2,181.14 in expenses
that ST’s expert witness, Cynthia Ludwig, incurred in traveling for her deposition from St.
Louis, where she lives, to Houston, where the ST attorney who defended her deposition
works. According to plaintiffs, Ludwig’s travel was only for ST’s convenience, since “ABS’s
counsel would have been willing to take her deposition in St. Louis.” (Id. at 10.)

The parties do not provide a detailed breakdown of what portion of ST’s initial request for
$19,532.27 in witness costs was allocated to lodging and meals for its witnesses, so the court will
simply reduce ST’s total request for $4,928 in lodging expenses for its witnesses by $1,320 to reach
a total subsistence allowance of $3,608.
11

28

The court agrees with plaintiff. ST’s only arguments in response to plaintiffs’
objection is that “Ms. Ludwig reasonably and necessarily traveled to Houston for the
deposition that ABS’s counsel took, and her travel reduced overall costs in the litigation
for both parties.” (Def.’s Opp’n Br. (dkt. #846) 9-10.) Neither argument, however,
disputes ABS’s assertion that deposing Ludwig in Houston was not its call, and ST does
not otherwise explain why it was reasonable to rack up over $1,300 in lodging for that
deposition. 12 Accordingly, ST’s fee award will also be reduced by $2,181.14.
D. Exemplification
Finally, plaintiffs object to certain categories of exemplification costs, which are
recoverable under § 1920(4) as “costs of making copies of any materials . . . necessarily
obtained for use in the case.” In response to plaintiffs’ objections, and in light of the
consensus approach regarding recovery for ESI costs after the Third Circuit’s decision in
Race Tires America, Inc. v. Hoosier Racing Tire Corp., 674 F.3d 158 (3d Cir. 2012), ST reduces
its request for ESI costs (beyond those for conversion of native files to TIFF formats) by
$63,159.89. As a result, the parties’ remaining disputes regarding exemplification costs
only concern: (1) ST’s costs for renting two photocopiers for trial; and (2) “trial
technology” costs for “the services of [ST’s] internal graphics and trial technology team to

Walters, which ST cites for the proposition that “this District has awarded such costs before”
(Defs.’ Opp’n Br. (dkt. #846) 10) is inapposite. As the court noted explicitly in that case, the
FMLA permits recovery of “‘reasonable out-of-pocket expenses,’ including ‘costs beyond those
normally allowed under Fed. R. Civ. P. 54(d).’” 91 F. Supp. 3d at 1085 (quoting Smith v. Diffee
Ford-Lincoln-Mercury, Inc., 298 F.3d 955, 968-69 (10th Cir. 2002)). Regardless, it was incumbent
on ST to give good reasons for this travel (e.g., it was cheaper overall to have the witness come to
ST’s counsel), and ST failed to meet this burden.

12

29

provide graphics and technological support, and prepare demonstratives throughout trial.”
(Defs.’ Opening Br. (dkt. #816) 20.)
1.

Photocopier rentals

The dispute over costs for photocopier rentals turns on whether the costs can be
described as necessary or merely for counsel’s convenience in avoiding the use of a local
vendor to make copies. In support of their positions, the parties cite various, out-of-circuit
district court cases answering this question differently.

Compare Balance Point Divorce

Funding, LLC v. Scrantom, 305 F.R.D. 67, 76 (S.D.N.Y. 2015) (“rental costs for . . . leasing
photocopying equipment are not taxable as ‘making copies’”), with Abbott Point of Care, Inc.
v. Epocal, Inc., Civil Action No. CV-08-S-543-NE, 2012 WL 7810970, at *5 (N.D. Ala.
Nov. 5, 2012) (“Abbott has presented no convincing argument or authority that expenses
for the rental of photocopiers during trial should not be allowed as part of copying costs
under 28 U.S.C. § 1920(4).”). In light of this conflicting authority, as well as ST’s failure
to otherwise demonstrate how the costs of renting two photocopiers for trial were
reasonable and necessary, the court will decline to award those costs, thus reducing ST’s
recovery of costs further by $8,337.16. 13
2.

Trial technology costs

The parties’ dispute regarding ST’s trial technology costs has a similar tenor, with
ABS pointing to Taniguchi v. Kan Pacific Sapian, Ltd., 566 U.S. 560 (2012), and several

Again, this is not to render a blanket prohibition on the award of such costs. Rather, ST has
failed in its burden of proof to show the anticipated volume of copies made renting copiers cost
effective over outsourcing copiers, relying on electronic copies or obtaining a space with copiers
available.

13

30

district court cases decided after that decision.

In Taniguchi, the Supreme Court

emphasized that “taxable costs are limited by statute and are modest in scope,” ultimately
holding that “the category ‘compensation of interpreters’ in § 1920(6) does not include
costs for document translation.” Id. at 2006-07. District courts have cited Taniguchi in
deciding whether the prevailing party should receive costs for in-courtroom technology
assistance. See Broadspring, Inc. v. Congoo, LLC, No. 13-cv-1866 (RJS), 2016 WL 817449,
at *5-6 (S.D.N.Y. Feb. 24, 2016), vacated in part on other grounds sub nom., Broadspring, Inc.
v. Nashed, 683 F. App’x 13 (2d Cir. 2017) (rejecting taxation of costs for “assistance with
trial graphics and demonstrative services at trial”); Fowler v. Cal. Highway Patrol, Case No.
13-cv-01026-TEH, 2014 WL 3965027, at *4 (N.D. Cal. Aug. 13, 2014) (same for “incourt technical support and equipment rental fees”).
ST would disagree, pointing to the Seventh Circuit’s decision in Cefalu v. Village of
Elk Grove, 211 F.3d 416 (7th Cir. 2000), which held that costs were taxable under Taniguchi
for “a computerized, multi-media system [the defendants] employed to present their
exhibits to the jury.” Id. at 427. In support, ST cites district court cases from this circuit
that post-date Taniguchi and still tax costs related to demonstrative exhibits. Consistent
with Cefalu, however, those cases permitted exemplification costs for the preparation of
multimedia demonstrative exhibits, not for presenting those exhibits at trial. See, e.g.,
Artunduaga v. Univ. of Chi. Med. Ctr., Case No. 12 C 8733, 2017 WL 1355873, at *4 (N.D.
Ill. Apr. 13, 2017) (reducing request for $12,460 in costs for a third party’s “trial
technology” services to $510 for six hours of video editing, excluding costs for “assist[ing]
counsel with presenting evidence at trial”); Johnson v. Allstate Ins. Co., No. 07-cv-078131

SCW, 2012 WL 4936598, at *8 (S.D. Ill. Oct. 16, 2012) (taxing “service costs in hiring a
third party . . . to prepare graphics”). On this issue, therefore, the weight of the authority
is clearly in plaintiff’s favor, and the court will further reduce ST’s trial technology costs
by $112,234.
The court’s costs reductions and award for ST are summarized as follows:
Category

Initial Request

Voluntary
Reduction

Court
Reduction

Total
Reduction

Total Costs

$362,510.54

Transcripts

$118,307.95

$15,131.65

$4,220.50

$19,352.15

Witnesses

$19,532.27

$4,773.94

$3501.14

$8,275.08

Exemplification

$222,392.43

$63,159.89

$120,571.16

$183,731.05

Costs owed ABS

$129,392.99

n/a

n/a

($129,392.99)
Final Award:
$ 21,759.27

ORDER
IT IS ORDERED that:
1) Defendant Inguran, LLC (“ST”) and defendant XY LLC’s motion for attorneys’
fees (dkt. #807) is DENIED.
2) Plaintiff’s motion for attorneys’ fees (dkt. #810) is GRANTED IN PART and
DENIED IN PART as set forth above.
3) Defendants’ bill of costs (dkt. #814) is GRANTED IN PART and DENIED IN
PART as set forth above.
4) Plaintiff’s bill of costs (dkt. #817) is GRANTED.
5) Plaintiff’s motion for leave to file a reply brief (dkt. #847) is GRANTED.
32

6) Attorneys’ fees are awarded in favor of plaintiff ABS Global, Inc. and against
defendants in the amount of $4,865,324.13, plus post-judgment interest of
1.02%, compounded annually, between April 21, 2017, and the date of
payment.
7) Costs are awarded in favor of defendant ST and against plaintiffs in the amount
of $21,759.27 in costs.
Entered this 27th day of September, 2018.

BY THE COURT:

/s/
__________________________________
WILLIAM M. CONLEY
District Judge

33