MARCO A. HERNANDEZ, District Judge.
Plaintiff Skedco, Inc. brought this patent infringement action against Defendant Strategic Operations, Inc., alleging that Defendant infringed three claims of United States Patent No. 8,342,652 ("the '852 Patent")
Defendant now seeks an award of attorney's fees, sanctions, and costs. For the reasons explained below, I deny the motion for fees and for sanctions. I award costs in the amount of $20,165.01.
Courts have discretion to award attorney's fees to the prevailing party in "exceptional cases." 35 U.S.C. § 285. In a 2014 case, the Supreme Court abrogated the Federal Circuit's analysis for determining "exceptional cases," finding that analysis "unduly rigid" and "impermissibly encumber[ing] the statutory grant of discretion to district courts."
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But, in 2005, the Federal Circuit decided
In discussing the "overly rigid" "formulation" adopted in
Defendant seeks sanctions under both 28 U.S.C. § 1927 and this Court's inherent authority.
An attorney admitted to practice in a federal court "who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys' fees reasonably incurred because of such conduct." 28 U.S.C. § 1927. "Sanctions pursuant to section 1927 must be supported by a finding of subjective bad faith."
While a finding of subjective bad faith clearly supports a sanctions award under section 1927, Ninth Circuit cases suggest that a finding of recklessness may suffice. In a 2010 case, the court explained that in section 1927,
"`It has long been understood that certain implied powers must necessarily result to our Courts of justice from the nature of their institution, power which cannot be dispensed with in a Court, because they are necessary to the exercise of all others.'"
"Before awarding sanctions pursuant to its inherent power, the court must make an express finding that the sanctioned party's behavior `constituted or was tantamount to bad faith.'"
Defendant argues that this case is "exceptional" under section 285, and thus, it is entitled to $709,905
According to Defendant, Plaintiff knew of Defendant since October 2007 and knew of Defendant's allegedly infringing Blood Pumping System (BPS) since at least January 2011. On September 20, 2012, Plaintiff's General Manager Bud Calkin wrote an email to Paul Mele and Sara Baragona, both of whom appear to be with the U.S. Army, complaining of "another infringement" of Plaintiff's system, this time by Defendant. Eastman Sept. 4, 2015 Decl. Ex. 5 at 3-4; ECF 125-5. Calkin wrote that Plaintiff had "responded to a solicitation" and a "company called Strategic Operations won it with their own system."
Defendant also points to a March 12, 2013 email from Plaintiff's Medical Products Specialist Lynn King, the inventor of the system disclosed in the '852 Patent, noting a contract that appears to have been awarded to Defendant by "PEO STRI" for NATO special forces training in Belgium which replaced a contract previously held by Plaintiff. Eastman Dec. 22, 2015 Decl. Exs. 1, 2, 6.
Based on these documents, Defendant argues that the evidence shows that Plaintiff filed the lawsuit because it was angry that the government had selected Defendant's product to replace Plaintiff's product, and it was angry that Plaintiff's sales were waning. It contends that Plaintiff knew that its product could not compete with Defendant's product, so it took the "easy way out" and sued Defendant. Additionally, Defendant argues Plaintiff's desire to coerce Defendant into paying Plaintiff for sales of Defendant's system is confirmed by the fact that on the day Plaintiff filed suit, June 10, 2013, Plaintiff's counsel contacted Defendant's counsel trying to negotiate a license or royalty fee in exchange for dismissing the suit. Eastman Dec. 22, 2015 Decl. Ex. 3.
The record shows that the parties had been communicating with each other since at least 2007. Calkin Decl. ¶ 3 & Ex. 1. In October 2007, in response to an email from King, Stu Segall, Defendant's President, said that he would "welcome the opportunity to utilize your [system] in our Medical Training package." Calkin Decl. Ex. 1 at 1-2. It appears that arrangements were made for King to visit Defendant's facility in San Diego.
Lavell saw Plaintiff's product at the December 2010 SOMA trade show. Lovett Sept. 4, 2015 Decl. Ex. 11; ECF 129 (Lavell Dep. 80). Defendant first sold its product in late 2011 or 2012.
In September 2012, Calkin emailed Lavell requesting information about Defendant's BPS to determine if it was in conflict with the system Plaintiff had licensed from the U.S. Army. Calkin Decl. ¶ 6. Calkin and Lavell spoke on the phone about Plaintiff's concerns with Defendant's BPS product.
During late 2012 or early 2013, Calkin studied Defendant's videos, website descriptions, and brochure descriptions of the BPS, as well as catalogs and articles about the BPS. Calkin Decl. ¶ 5. Calkin concluded that the BPS had a collapsible reservoir, a pump connected to the reservoir, several valves, conduit lines connecting the reservoir, the pump, and the valves for fluid to flow between them, an electronic controller, a key fob remote controller, wound sites, and a backpack container containing these components.
Calkin recalls discussing this description with King in late December 2012.
Calkin observed BPS "up close" at the December 2012 SOMA trade show. Calkin Decl. ¶ 4. At that time, Calkin looked at the product and picked up a brochure. Calkin Decl. Ex. 2 at 36. Calkin also spoke to Defendant's representative who explained the key functions and components of the BPS, including the bladder and the pump. Calkin Decl. ¶ 4.
During late 2012 and into the spring of 2013, Calkin and King attempted to locate a BPS they could deconstruct and inspect. Calkin Decl. ¶ 7. In February 2013, Defendant tried to purchase one through a company called ADS.
Next, Plaintiff, through King and Calkin, attempted to obtain a BPS through a contact with the Mammoth, California Fire Department who was willing to help Plaintiff purchase the product.
On May 16, 2013, still before the lawsuit was filed, Calkin emailed Lavell as a follow-up to a phone conversation that day. Calkin Decl. ¶ 9 & Ex. 6 (copy of email exchange). Calkin states he was attempting to "spur action on reaching a pre-litigation resolution without litigation via a license."
Counsel for both parties began communicating in the fall of 2012. Ferris Decl. ¶ 4 & Ex. A (copies of email correspondence October-December 2012, referring to September 26, 2012 phone call between counsel). Kassim Ferris, one of Plaintiff's attorney's, spoke with Gary Eastman, Defendant's attorney, on September 26, 2012 to discuss Plaintiff's infringement concerns. Ferris Decl. ¶ 4. During the call, Ferris requested details of the BPS.
Finally, on Sunday, January 6, 2013, Eastman emailed Ferris indicating he had received the claims, Defendant's products, Plaintiff's products, and asked to schedule a phone call. Ferris Decl. ¶ 6 & Ex. C at 1. The next morning, Ferris responded that he was available that day. Ferris. Decl., Ex. C at 6. Because Eastman never responded, Ferris sent another email that evening, setting out times during the week when he was available to talk.
On January 7, 2013, when Ferris was still trying to talk to Eastman, Ferris forwarded a summary of Plaintiff's then-current basis for believing that Defendant was violating the '852 Patent, to the U.S. Army. Ferris Decl. ¶ 5 & Ex. B; Eastman Reply Decl. Ex. 11. The Army gave its consent to seek a negotiated solution or to pursue infringement litigation if Plaintiff believed it appropriate. Ferris Decl. ¶ 5 & Ex. B.
Ferris states that during the March 19, 2013 call with Eastman, Eastman "acknowledged that claim 18 of the patent-in-suit appeared to cover the BPS and was not easy for [Defendant] to design around in a manner that would not infringe the '852 patent."
Ferris, who is a mechanical engineer, states that before this lawsuit was filed, he analyzed the '852 Patent, interpreted its claims and claim terms, and studied the prosecution history of the patent and the prior art it cited. Ferris Decl. ¶ 3. He did the same analysis of the '330 Patent.
Based on his investigations and discussions, Ferris believed that the BPS included a collapsible reservoir of the Camelbak type, a pump connected to the reservoir, a plurality of valves, conduits between the reservoir and the pump and between the pump and the valves for fluid communication between them, an electronic controller connected to the pump and at least one valve, a remote activation controller (fob), a plurality of detachable wound sites in fluid communication withe the valves, and a backpack container housing the reservoir, the pump, and at least one valve. Ferris Decl. ¶ 12. After interpreting the patent claims and comparing them to the information available regarding the BPS, Ferris concluded that the elements of Claims 18-20 of the '852 Patent "matched up with the structure and operation of the BPS[.]"
Based on my review of the entire record and my knowledge of the case, I reject Defendant's arguments that Plaintiff brought this lawsuit in bad faith and that its pre-filing investigation was inadequate or unreasonable. I agree with Defendant that Calkin's September 20, 2012 email expresses frustration over lost sales to Defendant and losing out to Defendant on a "solicitation." But, at the end of that email Calkin asks "what do you think we should do?" This statement undermines the assertion that at that time, Calkin formed an immediate, knee-jerk response of marching to the federal courthouse with a patent suit in hand. Additionally, in the email, Calkin refers to what he believes to be infringement by Defendant. Regardless of whether he was right or wrong, his belief at that time also belies that the lawsuit was motivated solely by anger over lost sales and not by a legitimate concern over patent rights protection. And, by this time, Calkin had already shared the instruction manual for Plaintiff's product with Defendant, allowing Calkin to infer that Defendant, with knowledge of Plaintiff's product, was providing the market with a substantially similar product. Moreover, Calkin and patent counsel both continued to reach out to Defendant or Defendant's counsel to obtain information and negotiate a solution short of litigation. Simply because Calkin was frustrated with lost sales does not by itself establish a bad faith motive for bringing suit. At best, the record suggests that the lost solicitation and sales catalyzed Calkin into researching Defendant's product and assessing whether it infringed the claims that soon issued as the '852 Patent.
Defendant's argument that Plaintiff's bad faith motive is supported by the letter Plaintiff sent to Defendant on the day it filed suit offering to dismiss the suit if the parties could negotiate a license or royalty fee, is disingenuous in the face of the parties' communication history. Defendant takes the June 10, 2013 letter out of context and implies that Plaintiff's license-fordismissal offer came out of the blue. In fact, the record shows that the parties had been discussing a possible license agreement for the previous couple of months, and continued to discuss it after the case was filed. Moreover, it is not uncommon in any civil litigation for the party initiating the lawsuit to offer, simultaneous with filing, to negotiate a speedy resolution resulting in dismissal. Notably, Ferris's statement that Defendant's counsel himself expressed concern over his client's possible infringement of Claim 18 of the '852 Patent in March 2013 is unrebutted. Thus, Plaintiff reasonably believed at the time it filed suit that Defendant's own assessment was one of possible exposure. With that, it was not unreasonable to continue to offer a license or royalty arrangement in lieu of continued litigation. Neither the fact that Calkin was angry or frustrated about lost sales nor the June 10, 2013 letter establishes any ill or bad-faith motive in filing suit.
As to the pre-filing investigation, Defendant is correct that neither Calkin nor King appears to have personally examined the internal components of the BPS before the lawsuit was filed. But, that was not for lack of trying. Defendant does not dispute that before the lawsuit was filed, it thwarted Plaintiff's effort to obtain its own BPS so Plaintiff could examine it thoroughly. As a result, Plaintiff relied on written descriptions in brochures and on Defendant's website, photographs, Calkin's observation of the product at the SOMA, and his ten-minute discussion of the product with Defendant's representative at the SOMA, to formulate its opinion that it had an infringement claim. Plaintiff's counsel had also discussed the BPS with Defendant's counsel. Further, Plaintiff knew that Defendant's own counsel agreed that the BPS could be violating Claim 18 of the '852 Patent.
Defendant argues that Plaintiff could not have reasonably concluded that the BPS valves are connected to, and controlled by, a controller independent of the pump. Def.'s Reply at 5-7. Defendant's argument appears to be premised on hindsight and this Court's December 8, 2015 summary judgment opinion. That is not the proper lens, however, by which to determine whether Plaintiff's pre-filing investigation was reasonable.
Defendant does not dispute that Plaintiff reasonably concluded based on its investigation that the BPS had a collapsible reservoir, a pump connected to the reservoir, several valves, conduit lines connecting the reservoir, the pump, and the valves for fluid to flow between them, a remote activation controller, wound sites which were in fluid communication with the valves, and a backpack container housing these components. Defendant targets Plaintiff's conclusion that the BPS had a valve or valves, other than the obvious external adjustable valves, physically connected to or controlled by, a controller. Defendant contends it was unreasonable for Plaintiff to conclude based on a description that the BPS allowed for each line to be controlled by an operator to simulate both venous and arterial bleeds, that the BPS necessarily relied on a pump and independently controlled valves to simulate the pulsing of arterial bleeding or the continuous flow of venous bleeding separately on individual output lines. Defendant argues that images and descriptions showing only adjustable valves at the end of each line and a remote fob along with knowledge that each line can be controlled by the operator, do not address the connection between the valves and fob or the control of the valves by the fob. Without more, Defendant contends, Plaintiff's pre-filing investigation was incomplete.
But, at the time it filed the suit, the concept of "connection" was not yet defined. In fact, as discussed more thoroughly below, some key terms were not defined until the December 8, 2015 Summary Judgment Opinion. My conclusion at the end of the case that the connection between the valve and the controller must be physical, does not mean that Plaintiff's pre-litigation interpretation of the '852 Patent as including a non-physical connection, and Plaintiff's pre-filing determination (in the absence of actual physical inspection), that the BPS relied on a connector to regulate the valves in some fashion, were unreasonable.
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Defendant next argues that the case is "exceptional" for purposes of section 285 because Plaintiff's claims were meritless. Approximately six months after the lawsuit was filed, Defendant provided an exemplar BPS to Plaintiff. Eastman Dec. 22, 2015 Decl. ¶ 8 (stating that Defendant produced the BPS in January 2014). According to Eastman, the pump included in that exemplar BPS was a "fuel pump from a vehicle."
Defendant argues that based on an examination of the BPS, in conjunction with the specifications, claim language, and drawings of the '852 Patent, Plaintiff knew or should have known that the BPS could not satisfy every limitation in Claim 18, either literally or under the doctrine of equivalents. This is true, suggests Defendant, whether one considers the manually adjustable valves or the internal valves of the pumps used in the BPS. Defendant argues that the plain language of Claim 18 required a pump and a valve connected to a controller while the BPS did not have a valve connected to a controller.
In support of its position, Defendant cites overwhelmingly to this Court's December 8, 2015 Summary Judgment Opinion. Def.'s Mot. at 14-17. Although that Opinion ended the case in Defendant's favor, it does not establish that Plaintiff's position in the litigation was objectively baseless. In fact, the earlier Claim Construction Opinion rejected Defendant's proposed construction of "connected to" as requiring an electrical relationship. Sept. 3, 2014 Op. at 19; ECF 49. While the claim required "a physical connection for the fluid to travel between the reservoir and wound site, with connections to the pump and the valve in between . . . there is nothing in Claim 18 to show that the patentee intended to limit `connected to' to an electrical connection just because the `in fluid communication with' relationship describes a physical connection."
That the terms were still capable of encompassing an indirect connection is demonstrated by my questions at the beginning of oral argument on the summary judgment motions. There, I asked the parties:
Transcript of Nov. 10, 2015 Mot. Hearing; ECF 151 at 6. Finally, I note that in the Summary Judgment Opinion, I implied that my conclusion that the valves had to be physically connected to and controlled by the controller may represent a change in my earlier claim construction. Dec. 8, 2015 Op. at 14 n.6.
The December 8, 2015 Opinion made clear that Plaintiff's infringement contentions lacked merit. But, until the claim language was discussed and defined in the Summary Judgment Opinion, Plaintiff's infringement claims were not baseless.
At summary judgment, Defendant argued that the '852 Patent was unenforceable because of what it considered to be inequitable conduct. Specifically, Defendant contended that Plaintiff failed to disclose three material prior art references in the prosecution of the '852 Patent. Def.'s Mot. for Partial Summ. J. at 37-43; ECF 101. In that context, Defendant was required to show, by clear and convincing evidence, that the "patentee acted with the specific intent to deceive the PTO."
At the time
The Federal Circuit does not appear to have addressed the question of the post-
The parties here primarily rely on the summary judgment briefing to support and oppose the inequitable conduct argument without discussing whether the
Defendant relies on timing. On August 13, 2010, the PTO issued a "Final Office Action" regarding the prosecution of Application No. 11/759,891 ("the 891 Application") which was a continuation-in-part of a prior patent application, Application No. 11/729,064 filed on April 23, 2007, which eventually issued as the '330 Patent on February 15, 2011. This Final Office Action rejected several claims of the '891 Application, finding them anticipated under 35 U.S.C. § 102(e) by Bardsley, one of the three prior art references at issue here. Although the two other prior art references at issue, which are the two Niiranen Patents, are not mentioned in the "Detailed Action" portion of the Final Office Action, the patent examiner noted, in the Conclusion section, that the two Niiranen Patents and other prior art all disclose mannequin forms having a pump, reservoir, conduit, controller, and sleeve simulating skin located in a common housing. Eastman Aug. 21, 2015 Decl. Ex. 45; ECF 113-5.
The '852 Patent began with a nonprovisional application on January 19, 2011, Application No. 13/009,665. There appears to be no dispute that during the prosecution of the '665 Application, the three prior art references (Bardsley and the two Niiranen patents) were not disclosed to the patent examiner.
Given that the '330 Patent, the '852 Patent, and the '891 Application (which was abandoned in December 2011), are in the same family of patent applications, with King as the inventor, Defendant argues that the timing of the '665 Application coming just a few months after the examiner rejected the '891 Application based on anticipating prior art, eliminates any reasonable explanation to justify withholding of that prior art from the patent examiner and thus, the only possible motive is deceit.
Whether evaluated under a preponderance of the evidence or clear and convincing standard, an intent to deceive is still the relevant touchstone for determining if Plaintiff's failure to cite to the prior art is wrongful deception. As the Federal Circuit has made clear: "[k]nowledge of the reference and knowledge of materiality alone are insufficient after
Here, as Plaintiff notes, the undisclosed prior art references were first cited in a related application on a different, non-identical claim. Thus, there is a question as to whether the prior art was material. Assuming it was material, the fact that the three prior art references were omitted in the prosecution of the '852 Patent is not enough, by itself, to establish specific intent to deceive. While the facts allow for an inference that King or patent prosecution counsel George Metzenthin had some incentive to deliberately omit the references in the prosecution of the '852 Patent, that is by no means the only inference. Metzenthin, in opposing the summary judgment motion, submitted a declaration stating that he had responsibility for the prosecution of several patent applications owned by the Army, including the '891 Application for an IV Training System, and the '665 Application which became the '852 Patent. Metzenthin Decl. ¶ 2; ECF 128. He reviewed the records of the application file history for the '665 Application and the '891 Application and recalls being involved in the prosecutions of both applications.
Because this case does not "stand out" from other patent cases, it is not exceptional. I deny the motion for attorney's fees and non-taxable costs under section 285.
Defendant seeks an award of attorney's fees and non-taxable costs against Plaintiff's counsel under section 1927.
In addition to fees and non-taxable expenses, Defendant also seeks $115,361.16 in expert fees as a sanction under this Court's inherent powers. A bad faith finding is required to support an award of sanctions under a court's inherent authority. For the reasons previously explained, the facts do not establish bad faith.
Under Federal Rule of Civil Procedure 54, costs "should be allowed to the prevailing party." Fed. R. Civ. P. 54(d)(1). Rule 54 creates a presumption in favor of awarding costs to the prevailing party.
Defendant seeks $27,765.01 in its Bill of Costs. ECF 157. Plaintiff does not object to $175 in copying costs incurred for obtaining certified copies of seven patents related to the litigation. Bill of Costs Ex. 3; ECF 157-3. This is an allowable cost under section 1920(4).
Defendant seeks $1,633.50 in fees for service of the summons and subpoenas.
Plaintiff objects to certain of these costs. The record shows that Defendant incurred service-related fees as follows: (1) service of subpoena for records on the Department of the Army at Fort Detrick, Maryland; (2) service of pleadings on opposing counsel; (3) service of deposition subpoena on Calkin; (4) service of deposition subpoena on King; (5) service of deposition subpoena on Simulaids; (6) service of subpoena on the Office of the Staff Judge Advocate at Fort Sam Houston; (7) service of subpoena on the Office of the Staff Judge Advocate at Fort Polk; (8) service of subpoena on the Department of the Army; (9) service of subpoena on the Naval Air Warfare Center; (10) service of subpoena on the Office of the Staff Judge Advocate at Fort Carson; and (11) service of subpoena on the General Counsel of the Navy. Bill of Costs Ex. 1; ECF 157-1.
Plaintiff objects to the cost for service of a deposition subpoena on Calkin because, Plaintiff argues, service of such a subpoena on a party is unnecessary. A simple notice of deposition would have sufficed. Although Calkin was not a party, he was Plaintiff's General Manager. Plaintiff argues that service of a subpoena on the party's employee was not necessary.
The "Federal Rules of Civil Procedure distinguish between parties and non-parties in establishing available discovery devices."
While the law supports awarding the $90 cost to Defendant, I decline to do so.
Next, Plaintiff objects to the multiple requested costs for service of subpoenas on various military entities. Plaintiff argues that this was a "discovery fishing expedition," Pl.'s Objs. to Bill of Costs at 4, which sought the same records from six different military addresses. In support, Plaintiff relies on Lovett's Declaration who states that the subpoenas were for the production of "essentially" the same documents and the costs could have been avoided "through a more strategic and tailored discovery strategy." Lovett Jan. 8, 2016 Decl. ¶ 3. Plaintiff does not object to the most expensive of these costs which was $200 for service of subpoenas on the Office of the Staff Judge Advocate at Fort Polk.
According to Defendant, the prior art, the invention, and King the inventor, had ties to several departments and branches in the military. For example, King conceived of the invention while an instructor at the Fort Carson 91W School and had demonstrated the invention at Fort Sam Houston. The Army facilitated the license of the invention to Plaintiff. A potentially invalidating prior art device was used by the Department of the Navy and was mentioned in an Army pamphlet. Defendant notes it did not send multiple document requests to the same department or military branch but sent the subpoenas to distinct departments or branches, each of which operate independently and are at separate physical locations.
Defendant offers a sufficient explanation for an award for all of these service-related costs. The record supports Defendant's position that several different branches of the military potentially had relevant information. Given that an award of costs to the prevailing party is presumed and because Plaintiff fails to explain what a "more strategic and tailored discovery strategy" should have looked like, I award costs associated with the service of these document subpoenas sought by Defendant.
Defendant seeks $25,956.51 for deposition expenses. 28 U.S.C. § 1920(2) (allowing fees for "printed or electronically recorded transcripts necessarily obtained for use in the case"). Plaintiff objects to the costs of videorecording several depositions. Plaintiff argues that the video-related costs are duplicative of stenographic court reporting and thus, the video-related costs are unnecessary and should not be awarded under section 1920.
Generally, a deposition "may be recorded by audio, audio-visual, or stenographic means." Fed. R. Civ. P. 30(b)(3)(A). The use of the disjunctive in listing the methods of recording suggests that only one method of actually recording the deposition is contemplated. This is further underscored by Rule 30(b)(3)(B) which provides that with prior notice to the deponent and other parties, any party may designate another method to record the deponent's testimony in addition to the method specified by the person taking the deposition. Fed. R. Civ. P. 30(b)(3)(B) (further providing that the party designating "another method" "bears the expense of the additional record or transcript unless the court orders otherwise").
Presently, while the Ninth Circuit does not appear to have ruled on the issue, several Judges in this Court have denied a request for both stenographic and videographic deposition costs.
Defendant argues that several of the deponents of videorecorded depositions in this case "possess a unique set of personal knowledge relevant to the parties' claims and defenses in this case" and that a video copy of the deposition is a legitimate, independent form of the witness's testimony. Def.'s Reply to Pl.'s Objs. to Bill of Costs at 1-2. Defendant suggests first that there is always the risk a deponent will be unavailable to testify at trial. Second, Defendant contends the video form still "serves a unique purpose" because "[c]ommon sense teaches that video excerpts, as opposed to reading from a written transcript, have a better chance of capturing the jury's attention" and thus "creating a more powerful and memorable effect."
These reasons are insufficient because they are not tied to why a video deposition was required in addition to a stenographically transcribed deposition in this case and for these witnesses. Defendant's justifications are present in every case and provide no basis for distinguishing the video costs in this case from any other case.
Plaintiff states that the video-related costs amount to $4,871. Pl.'s Objs. to Bill of Costs at 2 (highlighting the following costs for videography: (1) $1,205 for King and Calkin; (2) $1,172.50 for Kingsland, King, and Calkin; (3) $543.50 for Guentzler; (4) $1,950 for Stevick). But, Plaintiff appears to have overlooked video-related costs for the deposition of John McNeff on November 20, 2014. Bill of Costs Ex. 2 at 6-7. Confusingly, Defendant submits two invoices of differing amounts for the videotaped deposition of John McNeff.
Next, Plaintiff objects to two items related to the cancelled deposition of Plaintiff's expert Dr. Glen Stevick. Both costs were incurred because Stevick's deposition was cancelled late.
Defendant argues that Plaintiff's actions in cancelling the deposition were unreasonable. I disagree. While Defendant states now that it would not have asked Dr. Stevick questions about anything in Dr. Guentzler's supplemental reports, Plaintiff was entitled to have its expert review the supplemental reports to fully comprehend Dr. Guenztler's comprehensive opinion before being deposed at all. Defendant's late submission of the supplemental reports caused the problem and Plaintiff should not bear the cost for that. Thus, I deduct $570 for the costs associated with the July 14, 2015 cancelled deposition of Dr. Stevick ($225 appearance fee; $345 videography fee).
Finally, Plaintiff objects to the requested cost of fifty-percent of the transcript for the summary judgment oral argument. Plaintiff argues that because Defendant won at summary judgment, obtaining the transcript was not used in the case. I agree with Defendant that the appropriate inquiry is whether the transcript was reasonably necessary for Defendant at the time it ordered it. The summary judgment oral argument was November 10, 2015. Under the controlling Jury Trial Management Order, as amended by a later Order dated March 23, 2015, the first wave of pretrial documents was due four weeks before the February 8, 2016 pretrial conference, or January 11, 2016. ECF 31, 32, 66. Given that the parties did not know when the summary judgment decision would be filed or, obviously, what it would be, it was reasonable for Defendant to assume that it would have very little time between the decision and the preparation of its pretrial submissions. Thus, it was not unreasonable to order the hearing transcript at the time of the argument rather than waiting for the summary judgment decision to be filed. Thus, I do not deduct the $461.80 (representing Defendant's fifty-percent share) from the amount sought.
As to the deposition and transcript costs, I deduct a total of $7,510.
In summary on the Bill of Costs, I deduct the following from the $27,765.01 requested amount: (1) $90 for the deposition subpoena to Calkin; (2) $6,940 for duplicative videography of depositions; and (3) $570 for the cancelled Dr. Stevick deposition. Defendant is awarded $20,165.01 in costs.
Defendant's motion for attorney's fees, non-taxable costs, and expert fees [158] is denied. Defendant's Bill of Costs [157] is granted in part and denied in part. Defendant is awarded $20,165.01 in costs.
IT IS SO ORDERED.
