DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. June 20, 2013) (Coleman, J.).

Judge Coleman awarded defendants (collectively “3D Systems”) approximately $140K in fees and costs as the prevailing party.  Of particular note, the Court held as follows:

  • The Court awarded witness fees for days testifying, but

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.

Continue Reading Prevailing Party Awarded Half of E-Discovery Costs

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.

Continue Reading Both Parties Awarded Expert Witness Fees

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.

Continue Reading Court Awards Costs to Prevailing Party

Hyundai Construc. Equip. U.S.A., Inc. v. Chris Johnson Equip., Inc., No. 06 C 3238, Slip Op. (N.D. Ill. Oct 21, 2008) (Leinenweber, Sen. J.).
Judge Leinenweber, having previously granted plaintiff summary judgment of Lanham Act unfair competition and deceptive trade practices,* enjoined defendant’s continued sale of gray market goods and use of plaintiffs’ trademarks and awarded plaintiffs damages and costs. The Court awarded plaintiffs defendant’s profits from sales of gray market construction equipment (equipment made abroad for sale abroad that was imported to the United States without authority for resale), but the Court held that awarding plaintiffs a multiple of defendant’s actual damages would be inappropriately punitive. Additionally, the Court gave defendant an opportunity to prove its costs before entering a final damages amount.
The Court also entered a permanent injunction. The Court, however, denied plaintiffs’ request that defendant have to provide plaintiffs and the Court a report proving defendants’ compliance with the injunction. Such a requirement was unduly burdensome.
Finally, the Court awarded plaintiffs their costs, but held attorney’s fees were not appropriate because the case was not exceptional. Among other reasons the case was not exceptional, the Court noted evidence that defendants “apparent pains” to warn customers that defendants’ products lacked a warranty and came from overseas. And the Court held that no actual confusion had yet been proven.
* Click here for the prior decision in the Blog’s archives.

Continue Reading Court Awards Injunction, Actual Damages and Costs, Not Attorney’s Fees

Vito & Nick’s, Inc. v. Barraco., No. 05 C 2764, Slip Op. (N.D. Ill. Oct. 10, 2008) (Nolan, Mag. J.)
Judge Nolan granted defendants’ motion for litigation costs, but denied defendants’ motion for attorney’s fees. Plaintiff sued defendants alleging trademark infringement, Lanham Act unfair competition, Illinois Deceptive Trade Practices and related state law claims based upon a dispute over sibling’s competing use of the name of a family business. After initiation of the suit, the parties engaged in extensive settlement negotiations resulting in a framework for settlement. But plaintiff was unable to come up with funds necessary for the settlement and then lost its counsel. Because plaintiff was unable to find replacement counsel, and because corporations cannot appear pro se, plaintiff’s case was eventually dismissed for want of prosecution.
The Court held that plaintiff’s conduct resulting in dismissal did not constitute bad faith warranting an award for attorney’s fees. Plaintiff actively participated in the case and settlement negotiations, until it was unable to come up with the funds required, and lost its counsel. Furthermore, the Court had not had occasion to review the viability of plaintiff’s claim and, therefore, a bad faith finding could not be based upon the viability of the claims.
The Court did, however, award defendants their costs as prevailing parties pursuant to Fed. R. Civ. P. 54(d)(1), as follows:
Costs of serving the summons and subpoenas;
Court reporter, videographer, and transcript fees (transcripts were limited to $3.30 per page and did include indexes, minuscripts or other attorney convenience features);
Witness fees; and
Copy costs (limited to $.10 – $.20 per page).

Continue Reading Dismissal For Failure To Prosecute: Costs Awarded Not Attorney’s Fees

Illinois Tool Works, Inc. v. Chester Bros. Mach. Prods., Inc., No. 05 C 5002, 2007 WL 2278448 (N.D. Ill. Aug. 6, 2007) (Guzman, J.).
Judge Guzman granted in part plaintiff’s Fed. R. Civ. P. 41(a)(2) motion to dismiss, dismissing the case with prejudice but awarding defendant’s costs. The Court also denied defendant’s motion for attorneys fees. After sending several cease and desist letters, plaintiff Illinois Tool Works (“ITW”) filed suit against Chester Brothers Machined Products (“Chester”) alleging that Chester infringed plaintiff’s trademark in the color orange used with pneumatic nailers and staplers. ITW amended its complaint after Chester served ITW with a Fed. R. Civ. P. 11 motion explaining that Chester did not sell pneumatic nailers. Chester answered the amended complaint and the case proceeded. But during discovery one of ITW’s customers began selling orange pneumatic nailers. As a result, ITW amended its trademark registration to exclude pneumatic nailers and filed the instant motion. The Court agreed to dismiss the claims with prejudice, but held that costs were justified because Chester had not engaged in litigation misconduct. The Court, however, denied defendant’s motion for attorneys fees because Chester never explicitly told ITW that it did not manufacture pneumatic nailers and because ITW’s claims survived Chester’s motion to dismiss.

Continue Reading Rule 41(a)(2) Dismissal With Prejudice Warrants Costs But Not Fees

Judge Darrah, after finding each of the eleven patents-in-suit unenforceable for inequitable conduct, held that the suit was exceptional based upon the inequitable conduct, the filing of several frivolous claims which were previously dismissed and misconduct at trial, providing the Court the discretion to award attorney’s fees.  The court also did a detailed analysis