Cbt Flint Partners, LLC v. Return Path, Inc.

737 F.3d 1320, 108 U.S.P.Q. 2d (BNA) 1969, 2013 WL 6510953, 2013 U.S. App. LEXIS 24759
Court of Appeals for the Federal Circuit·Decided December 13, 2013·No. 19-2082·Published·Cited by 39 cases

Opinions

Opinion for the court filed by Circuit Judge TARANTO.

Opinion concurring in part and dissenting in part filed by Circuit Judge O’MALLEY.

TARANTO, Circuit Judge.

CBT Flint Partners, LLC, sued Return Path, Inc., and Cisco IronPort Systems, LLC, in the Northern District of Georgia for patent infringement. After deciding the merits of the case against CBT, the district court ruled that CBT should have to pay the defendants their “costs,” which the clerk taxed at $49,824.60 for Return Path and $268,311.12 for Cisco. In the present appeal by CBT, we hold that the district court erred in its interpretation of the statutory provision governing the taxation of costs here, 28 U.S.C. § 1920(4). We reverse in part, vacate in part, and remand.

BACKGROUND

On August 1, 2007, CBT sued Return Path and Cisco for infringement of U.S. Patent Nos. 6,192,114 and 6,587,550. After the district court construed the patent claims at issue, CBT stipulated to nonin-fringement of the asserted claims of the '114 patent, and the district court granted summary judgment of indefiniteness of the one asserted claim of the '550 patent. See CBT Flint Partners, LLC v. Return Path, Inc., 676 F.Supp.2d 1376, 1377-78 (N.D.Ga.2009). Cisco then moved to recover its costs under 28 U.S.C. § 1920, including $243,453.02 in fees it had paid to a company that handled electronic discovery for it. Id. at 1380. Rather than fit that amount into a specific section 1920 category, Cisco labeled those fees “other costs” on its bill of costs.

In 2009, the district court granted Cisco’s motion after noting “a division of opinion as to whether [electronic discovery] costs are recoverable under 28 U.S.C. § 1920.” Id. at 1381. Based on a “careful review” of the vendor’s invoices to Cisco, the court characterized the services rendered as “highly technical” and “not the type of services that attorneys or paralegals are trained for or are capable of providing.” Id. The court concluded that the fees Cisco sought to recover were “the 21st Century equivalent of making copies” (although Cisco had not categorized them as such) and held them to be recoverable. Id. Thus, although the court did not cite any specific provision of section 1920, it [1325] implicitly rested the taxation of Cisco’s electronic-discovery costs on section 1920(4), which covers “the costs of making copies.” In awarding Cisco the requested amounts, the court said that the “enormous burden and expense of electronic discovery are well known” and that “[t]ax-ation of these costs will encourage litigants to exercise restraint in burdening the opposing party with the huge cost of unlimited demands for electronic discovery.” Id.

On appeal, this court reversed the district court’s summary judgment of indefiniteness regarding the '550 patent, construed the claim in question, and remanded for further proceedings. CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1355 (Fed.Cir.2011). Because Cisco was no longer a prevailing party, this court vacated the district court’s order on costs without addressing its correctness. Id. at 1361. On remand, the district court granted summary judgment of noninfringement, CBT Flint Partners, LLC v. Return Path, Inc., 870 F.Supp.2d 1369, 1377 (N.D.Ga.2012)—which this court has since summarily affirmed, 501 Fed.Appx. 980 (Fed.Cir.2013).

On July 30, 2012, after granting summary judgment, the district court entered an amended final judgment and decided that Return Path and Cisco were entitled to recover their costs. Each party submitted a bill of costs identifying the fees to be taxed. Return Path declared that it had incurred $49,824.60 in total costs, none of which it identified as costs for copies. Cisco submitted the same bill of costs as the one it had submitted after the original judgment, declaring $268,311.12 in total costs, of which it identified only $4,473.10 as costs for making copies. In the declared amounts, both defendants included the fees they had paid to their electronic-discovery vendors, listing them in a catchall “other” category. For Return Path, those fees were $33,858.51; for Cisco, they remained $243,453.02, as in 2009.

On August 2, 2012, the clerk taxed each party’s costs in the full amounts requested. The district court denied CBT’s motion to review the taxation of costs. It deemed the motion “in effect a motion for reconsideration of the Court’s previous [2009] Order affirming the taxation of the Defendants’ e-discovery costs” and stated that “[t]he Court declines the opportunity to revisit the subject.” CBT Flint Partners, No. 1:07-cv-1822-TWT (N.D.Ga. Sept. 18, 2012) (ECF No. 329).

CBT appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

Federal Rule of Civil Procedure 54(d)(1) authorizes district courts to award costs to the prevailing party. In turn, 28 U.S.C. § 1920 “enumerates expenses that a federal court may tax as a cost under the discretionary authority found in Rule 54(d).” Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441-42, 107 S.Ct. 2494, 96 L.Ed.2d 385 (1987); see also Taniguchi v. Kan Pac. Saipan, Ltd., — U.S. -, 132 S.Ct. 1997, 2006, 182 L.Ed.2d 903 (2012). Thus, section 1920 operates as a limitation on a court’s discretion to award costs under Rule 54(d)(1). Crawford, 482 U.S. at 445, 107 S.Ct. 2494; Taniguchi, 132 S.Ct. at 2006. The scope of that limitation — specifically, the meaning of section 1920(4) — is the subject of CBT’s appeal. We review the district court’s interpretation of section 1920(4) de novo, applying the law of the regional circuit (in this case, the Eleventh Circuit). In re Ricoh Co., Ltd. Patent Litig., 661 F.3d 1361, 1364 (Fed.Cir.2011). Subject to a proper interpretation of section 1920(4), we review the district court’s award of costs for abuse of discretion. Id.

[1326] A

Free access — add to your briefcase to read the full text and ask questions with AI

Cbt Flint Partners, LLC v. Return Path, Inc., 737 F.3d 1320, 108 U.S.P.Q. 2d (BNA) 1969, 2013 WL 6510953, 2013 U.S. App. LEXIS 24759 (Fed. Cir. 2013).

737 F.3d 1320 (Cbt Flint Partners, LLC v. Return Path, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

Related