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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: 54(d)

Expert Fees Awarded to Prevailing and Losing Parties

Posted in Trial

Se-Kure Controls, Inc. v. Vanguard Prods. Group, Inc., No. 02 C 3767, Slip Op. (N.D. Ill. Jul. 5, 2012) (Castillo, J.).

Judge Castillo awarded costs as to each party in this patent infringement action after the Federal Circuit affirmed Judge Anderson’s entry of judgment in favor of defendants.  The Court awarded defendants costs and expert fees of approximately $32,000 pursuant to Fed. R. Civ. P. 54(d) and 26(b)(4)(E), and awarded plaintiff Se-Kure approximately $14,000 in expert fees pursuant to Fed. R. Civ. P. 26(b)(4)(E) to be credited against defendants’ costs.  Of particular interest, the Court ruled as follows:

  • Because the Court held Se-Kure’s patent invalid, defendants were prevailing parties.
  • Defendant’s amended petition was not untimely.  It added costs, but it was filed within thirty days of the Court’s judgment as required by Local Rule 54.1(a).
  • The Court awarded hearing transcript costs up to the relevant Federal Judicial Center allowed cost.  The Court did not award expedited costs because defendants did not provide a justification for the extra cost of the expedited service.
  • The Court awarded the agreed amounts for deposition transcripts.
  • The Court reduced defendants’ copying costs by approximately $3,300 for copy costs after depositions on that were not clearly tied to the case.
  • The Court denied costs for a demonstrative because half of it was blown up portions of text from testimony and exhibits.  The other half was figures at the center of a controversy regarding Defendant’s mischaracterization of evidence.
  • Although the Court had not identified a case within the Seventh Circuit awarding expert fees for depositions to a losing party, the Court held that the language of Fed. R. Civ. P. 26(b)(4)(E) did not limit the award of expert fees to a prevailing party.  So, the Court awarded all parties their expert fees for deposition time, including both reasonable preparation and deposition time.

Prevailing Party Awarded Half of E-Discovery Costs

Posted in Trial

LG Electronics U.S.A., Inc. v. Whirlpool Corp., No. 08 C 0242, Slip Op. (N.D. Ill. Oct. 20, 2011) (St. Eve, J.).

Judge St. Eve denied plaintiff LG’s fee petition because it was not the prevailing party and granted defendant Whirlpool $411,000 in costs and fees as the prevailing party pursuant to Fed. R. Civ. P. 54(d)(1) in this Lanham Act false advertising case involving steam dryer advertising. The jury returned a verdict "largely in favor" of Whirlpool. The jury only found for LG on an Illinois Uniform Deceptive Trade Practices Act claim which only allowed for injunctive relief, which the Court later denied. Whirlpool was, therefore, the prevailing party. The Court awarded the following fees:

  • Service fees at the prevailing rate of $55/hour.
  • Fees for both stenographic and video depositions. The video depositions were reasonable as excerpts were played at trial or LG had refused to guaranty that the witnesses would be brought to trial.
  • Trial and hearing transcripts.
  • Lay witness fees at $40 day and travel expenses, including half fares for business class flights.
  • Expert fees pursuant to Fed. R. Civ. P. 26(b)(4(E), readdressed the ratio of three hours of preparation for every hour of testimony. The experts spent reviewing their own transcripts was not deducted.
  • Exemplification costs including photocopying, creation of digital preservation and technical support. The Court held that Whirlpool’s digital presentation were important at trial, not just "glitzy."
  • Half of Whirlpool’s electronic discovery costs. The Court awarded half because there was "scant" authority in the Seventh Circuit for awarding electronics discovery costs although they were undisputedly allowed pursuant to § 1920(4).
  • Oral interpreters costs, but not for written translations.

Bill of Costs Support Need Only be Reasonable

Posted in Trial

Bobak Sausage Co. v. A & J Seven Bridges, Inc., No. 07 C 4718 Slip Op. (N.D. Ill. May 31, 2011) (Dow, J.).

After entering judgment for defendants, the Court granted defendants’ unopposed bill of costs in this trademark case. The opinion is fairly vanilla, but it answers one question I get frequently: How much do you have to break down costs to support your bill of costs? Creating too much detail from summary bills can quickly eclipse the value of the average bill of costs. The Court answered that question as follows, with useful case cites:

Under Section 1920(4), the prevailing party is "not required to submit a bill of costs containing a description so detailed as to make it impossible economically to recover photocopying costs." Northbrook Excess & Surplus Ins. Co. v. Proctor & Gamble, 924 F.2d 633, 643 (7th Cir. 1991). Instead, the prevailing party need only provide the best breakdown obtainable from the records. See id.

Trading Technologies: Court Awards Rule 37 Discovery Sanctions

Posted in Discovery

Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc., No. 95 C 4088, Slip Op. (N.D. Ill. Jun. 29, 2010) (Kim, Mag. J.).

Judge Kim granted declaratory judgment defendant Trading Technologies ("TT") approximately $290,000 of $375,000 requested in fees and costs pursuant to Fed. R. Civ. P. 37(b)(2) in this patent case.* On March 14, 2007, the Court held that declaratory judgment plaintiff Rosenthal Collins Group’s ("RCG") summary judgment motion was "misleading," "disingenuous" and "prematurely filed" – click here to read more about the opinion in the Blog’s archives. The Court, therefore, found RCG’s conduct sanctionable, struck the motion without prejudice, struck the supporting Buist declaration, and ordered RCG to pay costs for TT’s software consultants, and attorney’s fees and costs related to the sanction motion.

On July 17, 2008, the Court denied RCG’s motion to vacate the sanction order and again ordered RCG to pay: 1) TT’s consultant; 2) TT’s deposition of the Buists; and 3) TT’s prosecution of the sanctions motions. The Court also ordered the parties to comply with Local Rule 54.3 by trying to come to agreement on the issues.

Initially, the Court observed that "contentiousness and obvious material distrust" demonstrated by both sides had "leached" into the parties briefing. The Court awarded TT the full amount of its expert fees and costs because those fees and costs were specifically awarded by Judge Moran and because TT showed that all of the expert’s work was impacted by or resulted from the misconduct. Those fees were approximately $52,000.

The Court also awarded TT’s attorney’s fees and costs of approximately $157,000 related to the depositions of the experts at issue. The only reduction was for a series of identical, cryptic time entries for "preparation of Buist witness kit". The court could not determine whether the fees were justified. The Court awarded TT its actual costs, instead of limiting the costs to the Fed. R. Civ. P. 54(d) limits because this sanction award was pursuant to Fed. R. Civ. P. 37 and, therefore, was not limited by Rule 54(d). The Court finally awarded $86,000 in fees and costs related to TT’s sanctions motion. The Court generally found TT’s fees and expenses reasonable, with limited exceptions. The Court limited fees for writing a "simple" two-page motion to two hours. The Court also deleted approximately $11,000 in apparently duplicative time entries.

Court Awards Costs to Prevailing Party

Posted in Trial

AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Jun. 9, 2010) (Darrah, J.).

Judge Darrah granted in part defendants’ bill of costs after defendants prevailed in a trademark infringement trial – click here for much more on the case in the Blog’s archives. The Court awarded deposition transcript fees, but only up to the then applicable Northern District costs – $3.30 per page for an original transcript and $.83 per page for a copy. Because defendants did not show they were reasonably necessary, the Court did not award costs for condensed transcripts, word indexes, or delivery charges. 

The Court awarded costs for daily trial transcripts because they were necessary for direct and cross-examinations during trial and post-trial findings of fact. The Court awarded photocopying costs at $.10 per page only to the extent defendants showed the purposes of the copying. Finally, the Court awarded the costs of making the defendants’ trial exhibits, excluding shipping costs. 

Attorney’s Fees Petition Must be Tailored to Resolved Claims

Posted in Federal Rules

Nova Design Build, Inc. v. Grace Hotels, LLC, No. 08 C 2855, Slip Op. (N.D. Ill. Jun. 8, 2010) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted defendant Grace Hotel’s motion for costs and denied without prejudice Grace Hotel’s motion for attorney’s fees. As an initial matter, the Court held that Grace Hotels was a prevailing party pursuant to both Fed. R. Civ. P. 54(d) (costs) and 17 U.S.C. § 505 (attorney’s fees). While the standards were different, Grace Hotels met both standards. Grace Hotels was granted summary judgment on plaintiff’s copyright infringement claim because plaintiffs did not have a valid copyright registration – click here for more on this opinion in the Blog’s archives. While the decision was jurisdictional and not substantive, Grace Hotel was a prevailing party because the Court’s ruling "effectively foreclosed" Plaintiff’s copyright claims. In other words, "Grace [Hotels] obtained more than just a moral victory on a minor jurisdictional point." Because Grace Hotels was a prevailing party, the Court awarded the reasonable costs Grace Hotels requested for court reporter fees pursuant to Fed. R. Civ. P. 54(d) – $2,534.70. 

While Grace Hotels was also a prevailing party for purposes of § 505, the Court denied Grace Hotels attorney’s fees motion without prejudice. The fees did not appear reasonable. They were not limited to fees associated with defending the copyright claim. Grace Hotels was not entitled to fees for defending related state law claims which the Court declined to exercise supplemental jurisdiction over after resolving the federal copyright claim. Grace Hotels also sought fees for a separate case between the parties. The Court allowed Grace Hotels to file a renewal motion for attorney’s fees tailored to the recoverable fees.

Plaintiff Can be “Prevailing Party” if Jury Awards Even 10% of Plaintiff’s Demand

Posted in Trial

Telewizja Polska USA, Inc. v. Echostar Satellite Corp., No. 04 C 3293, Slip Op. (N.D. Ill. Oct. 30, 2007) (Guzman, J.). 

Judge Guzman adopted Magistrate Judge Keys’s Report and Recommendation in its entirety, awarding plaintiff all of the approximately $800,000 in attorney’s fees and costs plaintiff sought pursuant to the fee-shifting provision in the parties’ agreement and Fed. R. Civ. P. 54(d). At trial, plaintiff sought approximately $2.8M for its breach of contract claim and approximately $5.8M for its unjust enrichment claim – the claims were plead in the alternative. The jury awarded plaintiff approximately $1.4M on the breach of contract claim. The jury also awarded defendant $1 in compensatory damages and approximately $18,000 in punitive damages on defendant’s defamation counterclaim. Defendant argued that plaintiff was not the prevailing party, as required by Rule 54(d) and, therefore, should not be awarded its fees and costs or, at least, should be awarded a reduced amount.

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