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.

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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.

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Judge Conlon entered an award of plaintiff Lucasfilm’s attorney’s fees and costs in this trademark dispute. The Court previously entered a default judgment and permanent injunction against defendant Skywalker Outdoor. Skywalker objected to Lucasfilm’s 21 hours spent drafting its complaint. The Court, however, held that 21 hours was not unreasonable to fashion a complaint, nor was having three attorneys prepare or revise the complaint unreasonable.

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OFA Royalties LLC v. Apne, No. 10 C 4237, Slip Op. (N.D. Ill. Jun. 17, 2011) (Dow, J.).
Judge Dow awarded plaintiffs (collectively “Quizno’s”) their attorney’s fees of approximately $28k in this franchise and trademark case involving Quizno’s restaurants. The Court held that the parties’ franchise agreement required that a defaulting party pay the attorney’s fees of the other party. Because Quizno’s won its preliminary injunction motion and later won a final judgment against defendants, the agreement required that defendants pay Quizno’s attorney’s fees. And the Court awarded Quizno’s its full fees request because defendants did not contest Quizno’s motion for fees or its specific fees.

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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.

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Lucasfilm Ltd. v. Skywalker Outdoor, Inc., No. 10 C 733, Slip Op. (N.D. Ill. Mar. 11, 2011) (Conlon, J.).
Judge Conlon denied defendant Skywalker Outdoor’s motion to modify or vacate the default judgment entered in favor of plaintiff Lucasfilm in this Lanham Act dispute. Skywalker Outdoor did not answer Lucasfilm’s complaint and then did not attend the hearing on Lucasfilm’s default motion. The Court entered default judgment after that hearing. First, Skywalker Outdoor received sufficient notice of the hearing – more than the required ten days pursuant to Fed. R. Civ. P. 55(b)(2). Furthermore, Skywalker Outdoor’s claim that it believed its counsel would attend the hearing was irrelevant. Counsel’s inattentiveness is not excusable neglect pursuant to Fed. R. Civ. P. 60(b)(1).

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Affymax, Inc. v. Johnson & Johnson, No. 04 C 6216, Slip Op. (N.D. Ill. Mar. 21, 2011) (Kennelly, J.).
Judge Kennelly granted in part plaintiff Affymax’s motion to vacate the arbitration award between the parties, remand the case to the arbitration panel for further determination of the inventorships of foreign patents. The parties previously undertook two years of discovery before a three-member AAA panel. That panel held that Affymax and defendants (collectively “Johnson & Johnson”) were joint inventors on several U.S. Patents and that Johnson & Johnson was the sole inventor as to one patent, and therefore, its foreign counterparts. Noting that it could not vacate the arbitration decision even for “gross” misapplication of the law, the Court considered Affymax’s arguments to vacate the award as to the patents held to be solely owned by Johnson & Johnson:
The evidence suggested that the panel did conduct the claim-by-claim analysis required by the Agreement as to the US patents and claims. It did not matter that they did not detail the analysis for each US claim.
The arbitrator’s decision clearly and thoroughly stated the law of joint inventorship. Affymax’s disagreement with the application of the law is not grounds for vacating an arbitration award.
The arbitrator had the relevant evidence before them. The trail of documents connecting Affymax to the documents was not relevant because the arbitrators disagreed with Affymax regarding the conclusions drawn from the documents.
The arbitrators manifestly disregarded the law by finding that the foreign patents had the same ownership interests as their U.S. counterparts without performing the required claim-by-claim inventorship analysis. The Court, therefore, vacated the award regarding the foreign patents and rewarded the arbitration panel for determination of inventorship of the foreign patents.

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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.

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Hyperquest, Inc. v. N’Site Solutions, Inc., No. 08 C 483, 2008 WL 3978310 (N.D. Ill. Aug. 22, 2008) (Shadur, Sen. J.)
Judge Shadur continued defendants’ motion for fees as a prevailing party in this copyright case pursuant to 17 U.S.C. §505, after previously requiring additional briefing as to the reasonableness of defendants’ requested fees – click here to read about that opinion in the Blog’s archives. Defendants collectively requested approximately $260K in fees. The Court dismissed plaintiff’s argument that defendants did not offer proof that defendants had paid their counsels’ fees. But the Court set a hearing to discuss an appropriate award, noting that plaintiff’s counsel’s fees, approximately $110K, were a more appropriate sum, with some adjustment for the fact that there were two defendants.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Jul. 24, 2008) (Moran, Sen. J.).*
Judge Moran granted defendants’ (collectively “eSpeed”) motion to stay judgment pending appeal without requiring a supersedeas bond for the full amount of the judgment, pursuant to Fed. R. Civ. P. 62(d). Plaintiff Trading Technologies (“TT”) argued that the volatility and instability of the financial industry warranted a bond. But the Court held that the evidence proved that eSpeed was currently financially sound and had more than sufficient funds available to make payment, such that the cost of a bond would be a waste of money. The Court noted that eSpeed (which recently merged with an affiliate, BCG Partners) had $340M in first quarter revenues, $150M in shareholder equity and $200M in cash or cash-equivalents on hand. The Court did, however, note that TT could monitor eSpeed’s financial situation and return to the Court if eSpeed later looks like it might become unable to pay.
* Click here for much more on this case in the Blog’s archives.

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