Neutral Tandem, Inc. v. Peerless Network, Inc., No. 08 C 3902, Slip Op. (N.D. Ill.) (Darrah, J.).

Judge Danah awarded defendants (collectively "Peerless") certain of its costs after holding that Peerless was the prevailing party in this patent infringement case.  While Peerless lost its inequitable conduct claim as well as its state law claims, Peerless was the prevailing party because it won summary judgment of noninfringement and invalidity. Furthermore, the Court would not apportion the costs because Peerless only won on two of its nine claims. Pursuant to Fed. R. Civ. P. 54(d), the Court awarded Peerless the following costs:

• Fees for service at the U.S. Marshall’s rate of $55/hour.
• Fees for transcripts at the expedited rates. The Court held Peerless was justified in expediting the transcripts in light of tight summary judgment deadlines and the preliminary injunction hearing in the case.
• Printing and copying fees in light of the preliminary injunction proceedings and voluminous discovery.

The Court also awarded discovery-related fees and costs pursuant to Fed. R. Civ. P. 26(b)(4)(E):

• Both sides’ expert witness fees based upon a formula to account for reasonable deposition preparation time of three times the length of the deposition. Peerless received its expert fees related to noninfringement and invalidity. Plaintiff Neural Tandem was awarded its expert fees related to its inequitable conduct defense.

The Court also held that Local Rule 54.1 and its thirty day deadline for seeking costs did not apply to Rule 26(b)(4)(E) fee motions.