United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
WILLIAM C. BRYSON UNITED STATES CIRCUIT JUDGE.
Erfindergemeinschaft UroPep GbR (“UroPep”) has
moved for entry of a bill of costs in this case. Dkt. No.
377. Defendant Eli Lilly and Company opposes in part. Dkt.
No. 384. The motion is GRANTED IN PART and DENIED IN PART.
parties have agreed on the bulk of the issues pertaining to
costs, and they have settled on an award in the amount of
$100, 485.08 for the unopposed costs in this case. Seeing no
reason to question the terms of the agreement of the parties
on that portion of the award of costs, the Court will order
Lilly to pay UroPep that amount.
items remain in dispute. The first is the expense of the
technology tutorial prepared by UroPep in connection with the
claim construction proceedings. The second is the expense
associated with the use of graphics and demonstratives at
trial. The total amount that UroPep claims for those two
items is $106, 831.63.
argues that it is entitled to an award of its expenses in
connection with those two items under 28 U.S.C. §
1920(4), which provides for costs to be taxed for “fees
for exemplification and copies of papers necessarily obtained
for use in the case.” In particular, UroPep contends
that its expenses fall within the meaning of the term
“exemplification, ” as used in section 1920.
Circuit law governs the issue of costs in a patent case.
See CBT Flint Partners, LLC v. Return Path, Inc.,
737 F.3d 1320, 1325 (Fed. Cir. 2013); In re Ricoh Co.,
Ltd. Patent Litig., 661 F.3d 1361, 1364 (Fed. Cir.
2011). Both the Supreme Court and the Fifth Circuit have
emphasized that section 1920 is to be strictly construed, and
that costs that do not fall within the literal terms of the
statute are not to be awarded.
Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S.
437 (1987), the Supreme Court held that section 1920 strictly
limits the types of costs that may be awarded to a prevailing
party. Id. at 440-41. Citing an earlier case that
referred to the predecessor of section 1920, the Court wrote
that the “comprehensive scope of the [prior] Act and
the particularity with which it was drafted demonstrated that
Congress meant to impose rigid controls on cost-shifting in
federal courts.” Id. at 444. See also
Taniguchi v. Kan.Pac. Saipan, Ltd., 132 S.Ct. 1997, 2006
(2012) (referring to “the narrow scope of taxable
costs” allowed by section 1920: “[t]axable costs
are limited to relatively minor, incidental expenses”;
“[b]ecause taxable costs are limited by statute and are
modest in scope, we see no compelling reason to stretch the
ordinary meaning of the cost items Congress authorized in
Fifth Circuit has followed the Supreme Court's lead,
noting that “[t]he Supreme Court has indicated that
federal courts may only award those costs articulated in
section 1920 absent explicit statutory or contractual
authorization to the contrary, ” and that the Supreme
Court has admonished “that we strictly construe this
provision.” Mota v. Univ. of Tex. Houston Health
Sci. Ctr., 261 F.3d 512, 529-30 (5th Cir. 2001). See
also Coats v. Penrod Drilling Corp., 5 F.3d 877, 891
(5th Cir. 1993) (“28 U.S.C. § 1920 defines
recoverable costs, and a district court may decline to award
the costs listed in the statute but may not award costs
omitted from the list.”).
with the “strict construction” given to section
1920 by the Supreme Court and the Fifth Circuit, the Federal
Circuit has construed the term “exemplification”
narrowly to be limited to “an official transcript of a
public record, authenticated as a true copy for use as
evidence.” Summit Tech., Inc. v. Nidek Co.,
435 F.3d 1371, 1374-78 (Fed. Cir. 2006) (denying an award of
costs for the fee of a consultant who assisted counsel in
preparing trial exhibits, including computer animations,
videos, powerpoint presentations and graphic illustrations);
Kohus v. Toys ‘R' Us, Inc., 282 F.3d 1355.
1359 (Fed. Cir. 2002) (denying an award of costs for a video
animation used at trial). Although in those cases the Federal
Circuit was applying the law of the First and Sixth Circuits,
respectively, the Fifth Circuit employs the same restrictive
approach. Thus, in Coats v. Penrod Drilling
Corp., 5 F.3d at 891, the Fifth Circuit held that the
expenses for certain “blow-ups” used at trial
were “not included in § 1920 and therefore are not
recoverable.” And in Johns-Manville Corp. v. Cement
Asbestos Prods. Co., 428 F.2d 1381, 1385 (5th Cir.
1970), the court held that, absent prior approval from the
court, the expenses of producing certain models and charts
used at trial could not be assessed as costs. See also
Gagnon v. United Technisource, Inc., 607 F.3d 1036, 1045
(5th Cir. 2010) (“federal courts may only award those
costs articulated in section 1920 absent explicit statutory
or contractual authorization to the contrary”);
Louisiana Power & Light Co. v. Kellstrom, 50
F.3d 319, 335 (5th Cir. 1995) (absent pretrial approval from
the court, production costs for exhibits may not be assessed
as costs); Webster v. M/V Moolchand, Sethia Liners,
Ltd., 730 F.2d 1035, 1040 (5th Cir. 1984) (the language
of section 1920 “seems to preclude its extension beyond
the payment of the actual cost of exemplification and
reproduction of copies”); Mobile Telecomms. Techs.,
LLC v. Samsung Telecomms. Am., LLC, No. 2:13-cv-259,
2015 WL 5719123, at *2-3 (E.D. Tex. Sept. 28, 2015)
(construing “exemplification” narrowly,
consistent with Fifth Circuit precedents); Kellogg Brown
& Root Int'l v. Altanmia Commercial Mktg. Co.,
Civil Action No. H-07-2684, 2009 WL 1457632, at *4 (S.D. Tex.
May 26, 2009) (Rosenthal, J.) (Fifth Circuit “follows
the narrow approach” in defining
“exemplification”). Those principles require the
Court to hold that neither of UroPep's two disputed cost
items constitute “exemplifications” within the
meaning of section 1920(4).
The Technology Tutorial
first asserts that it is entitled to an award of its expenses
for the technology tutorial it prepared in connection with
the claim construction proceedings. That claim is meritless.
to find support from a line of Fifth Circuit cases that have
allowed certain expenses to be chargeable as costs if they
were approved in advance by the district court, UroPep
asserts that the Court “solicited” (Dkt. No. 377,
at 5) and “invited” (id. at 6 n.6;
see also Dkt. No. 386, at 5) technology tutorials.
That is simply not true. The only support UroPep cites for
those assertions is the Court's sequence of docket
control orders, which provided, in pertinent part, for a
deadline to “Submit Technical Tutorials (if
any).” Dkt. No. 71, at 3; Dkt. No. 96, at 3; Dkt. No.
104, at 3. That is not an “invitation” or a
“solicitation” for technology tutorials; it is a
provision that allows the parties to file tutorials if they
wish, and gives them a deadline for filing them if they
choose to do so.
there were any doubt on that score, it should have been clear
from Judge Payne's opinion in DSS Technology
Management Inc. v. Taiwan Semiconductor Manufacturing
Co., No. 2:14-cv-199, 2016 WL 5942316 (E.D. Tex. Oct.
13, 2016). In that case, Judge Payne denied a motion to
include the expenses of a technology tutorial in the
prevailing party's award of costs. The court discussed
the language of the docket control order in that case, which
is identical to the language of the docket control order in
the present case. He explained that, contrary to the
defendant's argument, the docket control order,
“which permitted the parties to ‘Submit Technical
Tutorials (if any)'” by a particular date
“simply extended the deadline to submit any tutorials
that that the parties wished to submit. . . . The Court did
not require a tutorial.” Id. at *7. The same
is plainly true here.
of the “prior approval” contention, UroPep's
argument collapses. Under no plausible interpretation does a
video technology tutorial qualify as an
“exemplification” within the meaning of section
1920(4). See Mobile Telecomms. Techs., LLC, 2015 WL
5719123, at *2-3. And there is no other subsection of section
1920 that is remotely applicable to the technology tutorial.
UroPep chose to offer the technology tutorial for its own
purposes, seeking to improve its position in the claim