Case 2:13-cv-00259-RSP Document 133 Filed 09/28/15 Page 1 of 6 PageID #: 4740
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`MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC,
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`Plaintiff,
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`Case No. 2:13-cv-259-RSP
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
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`MEMORANDUM ORDER
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`v.
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`SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC,
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`Defendant.
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`The Court, after a four-day jury trial, entered judgment for Defendant Samsung
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`Telecommunications America, LLC, holding that Samsung did not infringe two patents owned
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`by Plaintiff Mobile Telecommunications Technologies, LLC (“MTel”). (Doc. No. 106.) Pending
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`before the Court is Samsung’s Motion and Memorandum in Support of its Bill of Costs. (Doc.
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`No. 126.) Three disputes on costs remain (1) whether Samsung is the “prevailing party” under
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`Rule 54(d); (2) whether Samsung can recover costs for its claim construction presentation and
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`technical tutorial; and (3) whether Samsung can recover certain document production costs.
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`I.
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`Prevailing party
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`MTel contends that Samsung is not the “prevailing party.” According to MTel, each party
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`“prevailed” on some of claims since MTel “obtained a jury finding that its patents were not
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`invalid, and [Samsung] obtained a jury verdict of no infringement.” (Doc. No. 125, at 1, 2.)
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`Samsung responds that “[t]he binding case law is clear: because [Samsung] obtained a verdict of
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`non-infringement, [Samsung] is the prevailing party.” (Doc. No. 127, at 2.)
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`Rule 54(d) states that costs “should be allowed to the prevailing party.” Fed. R. Civ. P.
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`54(d). The Federal Circuit has held that in a patent case, “[t]o be a ‘prevailing party,’ … the
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`Case 2:13-cv-00259-RSP Document 133 Filed 09/28/15 Page 2 of 6 PageID #: 4741
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`party [must] have received at least some relief on the merits.” Shum v. Intel Corp., 629 F.3d
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`1360, 1367 (Fed. Cir. 2010). “That relief must materially alter the legal relationship between the
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`parties by modifying one party’s behavior in a way that ‘directly benefits’ the opposing party.”
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`Id. at 1367 (quoting Farrar v. Hobby, 506 U.S. 103, 111–13 (1992)).
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` “Rule 54(d) has no special rule or exception for mixed judgment cases, where both
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`parties have some claims decided in their favor.” Shum, 629 F.3d at 1367. “Thus, even in mixed
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`judgment cases, punting is not an option; Rule 54 does not allow every party that won on some
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`claims to be deemed a ‘prevailing party.’” Id. “For the purposes of costs and fees, there can be
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`only one winner.” Id. “A court must choose one, and only one, “prevailing party” to receive any
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`costs award.” Id.
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`The Court finds that Samsung is the one “prevailing party.” Samsung won a judgment of
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`non-infringement which materially altered the legal relationship between MTel and Samsung.
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`See Shum, 629 F.3d at 1367. Samsung will benefit from the altered legal relationship because it
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`will not owe MTel any monetary damages and the judgment in Samsung’s favor will have res
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`judicata effect in any future action. See id at 1368.
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`In contrast, MTel cannot be the “prevailing party” even though it preserved the validity
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`of its patents. “[I]t is not enough that the issue [of validity] was contested, actually litigated, and
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`ultimately decided in [MTel’s] favor.” Id. at 1369. The finding of validity “also had to confer
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`some material benefit on [MTel],” with respect to Samsung, for MTel to be considered the one
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`“prevailing party.” See id. at 1369. MTel cannot seriously contend that it obtained any benefit
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`from Samsung with a finding of validity but non-infringement. See In re Ricoh Co., Ltd. Patent
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`Litig., 661 F.3d 1361, 1363–64 (Fed. Cir. 2011) (stating “Synopsys is clearly the prevailing
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`Case 2:13-cv-00259-RSP Document 133 Filed 09/28/15 Page 3 of 6 PageID #: 4742
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`party” after “the district court granted Synopsys’s motion for summary judgment of
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`noninfringement on April 15, 2010”).1
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`II.
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`Claim construction presentation and technical tutorial costs
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`Samsung asserts that it can “recover the costs associated with the audio and video
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`professional services used in creating [Samsung’s] Markman presentation and technical tutorial.”
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`(Doc. No. 122, at 3.) Samsung contends that its “audio and visual services costs were incurred in
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`connection with preparing both the Court-ordered technical tutorial and [Samsung’s] Markman
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`presentation, which were reasonably necessary to assist the Court in understanding the issues
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`and, in the case of the tutorial, ordered by the Court.” (Doc. No. 112, at 4.)
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`MTel responds that “[Samsung’s] cited Eastern District of Texas cases do not stand for
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`the proposition that costs associated with any graphics used in a case are recoverable.” (Doc. No.
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`125, at 4.) MTel argues that Samsung is “request[ing] recovery for Graphic Design and Design
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`Consultant costs incurred in January, February and March of 2014” which was months before the
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`trial. (Doc. No. 125, at 4.) MTel asserts that Samsung has cited authority that “is explicit in only
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`awarding costs for ‘the use of technology support during trial.’” (Doc. No. 125, at 4.)
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`In a patent case, regional circuit law controls on the issue of whether certain costs should
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`be awarded to the “prevailing party” under § 1920. See Ricoh, 661 F.3d at 1364 (“We apply
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`regional circuit law … in interpreting section 1920.”). The Fifth Circuit has held that “federal
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`courts may only award those costs articulated in section 1920 absent explicit statutory or
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`contractual authorization to the contrary.” Gagnon v. United Technisource, Inc., 607 F.3d 1036,
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`1045 (5th Cir. 2010) (quoting Cook Children’s Med. Ctr. v. The New Eng. PPO Plan of Gen.
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`Consol. Mgmt. Inc., 491 F.3d 266, 274 (5th Cir. 2007)).
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`1 To the extent MTel that is requesting a discretionary reduction of costs, the Court finds that
`MTel has not shown any reason for costs to be reduced.
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`Case 2:13-cv-00259-RSP Document 133 Filed 09/28/15 Page 4 of 6 PageID #: 4743
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`A court may tax the following as costs: (1) Fees of the clerk and marshal; (2) Fees for
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`printed or electronically recorded transcripts necessarily obtained for use in the case; (3) Fees
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`and disbursements for printing and witnesses; (4) Fees for exemplification and the costs of
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`making copies of any materials where the copies are necessarily obtained for use in the case; (5)
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`Docket fees under section 1923 of this title; (6) Compensation of court appointed experts,
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`compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation
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`services under section 1828 of this title. 28 U.S.C. § 1920.
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`The Court finds that costs for Samsung’s claim construction presentation and technical
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`tutorial cannot be recovered under § 1920. (Doc. No. 122, at 3.)2, 3 Black’s Law Dictionary
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`defines “exemplification” as “[a]n official transcript of a public record, authenticated as a true
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`copy for use as evidence.” Black’s Law Dictionary 653 (9th ed. 2009); see 28 U.S.C. § 1920(4)
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`(permitting recovery of a “fee” for “exemplification” but a “cost” for “making copies”).
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`Samsung has not shown that its claim construction presentation and technical tutorial are
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`“official transcripts of a public record.”
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`This narrow interpretation of “exemplification” finds substantial support in Circuit Court
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`authority. For example, in Coats, the Fifth Circuit affirmed a district court’s denial of costs for
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`exhibits such as “blow-ups” used at trial and video technician fees. Coats v. Penrod Drilling
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`Corp., 5 F.3d 877, 891 (5th Cir. 1993). Similarly, in Summit Technology, the Federal Circuit
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`2 Despite the parties’ apparent agreement on this issue the parties’ technical tutorials were not
`“Court-ordered.” The Docket Control Order states that the parties shall “Submit Technical
`Tutorials (if any).” (Doc. No. 63, at 3 (2:12-cv-00832-RSP) (emphasis added).) The phrase “if
`any” is permissive and does not order the parties to provide technical tutorials. (Cf. Doc. No.
`122, at 3 (“[C]osts were incurred in connection with preparing … the Court-ordered technical
`tutorial.” (citing Doc. No. 63, at 3 (2:12-cv-00832-RSP)).)
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` Samsung only asserts that “[t]his Court has permitted the recovery of such costs associated with
`audio and visual services as ‘exemplification’ costs under § 1920(4).” (Doc. No. 122, at 3.)
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`Case 2:13-cv-00259-RSP Document 133 Filed 09/28/15 Page 5 of 6 PageID #: 4744
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`applying First Circuit law, held that fees paid to a company that “prepar[ed] trial exhibits,
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`including computer animations, videos, Powerpoint presentations, and graphic illustrations” were
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`not exemplification costs recoverable under § 1920. Summit Tech., Inc. v. Nidek Co., Ltd., 435
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`F.3d 1371, 1375 (Fed. Cir. 2006); see also Kohus v. Toys “R” Us, Inc., 282 F.3d 1355, 1359
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`(Fed. Cir. 2002) (“A video obviously is not a copy. Nor is it an exemplification when that term is
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`given its legal definition of ‘[a]n official transcript of a public record, authenticated as a true
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`copy for use as evidence.’”) (quoting Black’s Law Dictionary 593 (7th ed. 1999)); Taniguchi v.
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`Kan Pac. Saipan Ltd., 132 S. Ct. 1997, 2006 (2012) (“Our decision is in keeping with the narrow
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`scope of taxable costs.”).
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`III. Document production costs
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`Samsung asserts that it can recover “OCR costs incurred as part of [Samsung’s]
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`document production to MTel.” (Doc. No. 122, at 5.) MTel responds that the Court’s standing
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`order prevents Samsung from recovering these costs. (Doc. No. 125, at 5.) Section 1920 allows
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`the “prevailing party” to recover only the “costs of making copies of any materials where the
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`copies are necessarily obtained for use in the case.” 28 U.S.C. § 1920.
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`Although Fifth Circuit law controls, the Federal Circuit, interpreting Eleventh Circuit
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`law, has provided guidance on when electronic production costs are recoverable as a cost of
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`“making copies.” In CBT Flint, the Federal Circuit held that “making copies” includes only the
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`electronic document production steps that “are, in fact, necessary to make copies of information
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`required to be produced and not incurred just to make copies for the convenience of the
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`producing party.” CBT Flint, 737 F.3d at 1330.
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`The Court finds that Samsung cannot recover its OCR costs because it has not shown that
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`this step was necessary for making copies. Furthermore, neither party has cited Fifth Circuit
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`Case 2:13-cv-00259-RSP Document 133 Filed 09/28/15 Page 6 of 6 PageID #: 4745
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`authority holding that the Court may award OCR costs under § 1920. This is consistent with the
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`Court’s standing order which states: “Electronic discovery costs are generally not allowed,
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`including costs for document collection, document processing, and document hosting.” Standing
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`Order at 4.
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`CONCLUSION
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`Samsung’s Motion and Memorandum in Support of its Bill of Costs (Doc. No. 126) is
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`GRANTED-IN-PART and DENIED-IN-PART. The Court finds that Samsung is the
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`prevailing party and pursuant to § 1920 may recover $146,558.61 in costs from MTel. (Doc. No.
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`122-4, at 2.) The Court further finds that Samsung may not recover $36,989.19 in costs for
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`graphics services and the OCR of documents. (Doc. No. 122-6, at 1.) MTel is ORDERED to
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`comply with this ruling within twenty-one (21) days of this Order’s issuance.
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