Free Bill of Costs - Obj/Ans/Resp - District Court of Arizona - Arizona

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15

Peter C. Warner (Ariz. State Bar #009338) [email protected] 1723 W. 4th Street Tempe, AZ 85281-2404 Tel.: (480) 894-6500 Fax: (602) 798-8279 Attorney for Plaintiff IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA Koepnick Medical & Education Research Foundation, L.L.C., Plaintiff, vs. Alcon Laboratories, Inc., et al., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) No. CIV 03-0029-PHX-JAT PLAINTIFF'S OBJECTION TO ALCON DEFENDANTS' MEMORANDUM OF TAXABLE COSTS

Plaintiff Koepnick Medical & Education Research Foundation, L.L.C.
16

objects to the Alcon Defendants' Memorandum of Taxable Costs filed March 1,
17

2006. First, the Alcon Defendants are not prevailing parties. Second, even if
18

prevailing parties, the Alcon Defendants seek taxation of various costs that are
19

not assessable under 28 U.S.C. § 1920, Rule 54, Fed. R. Civ. P., or LRCiv. 54.1.
20 21 22 23 24 25 26 27 28

I.

The Alcon Defendants Are Not Prevailing Parties Under Rule 54(d) Defendants and Counterclaimants Alcon Laboratories, Inc., Alcon

RefractiveHorizons, Inc., and Southwestern Eye Center, Ltd. (collectively, the "Alcon Defendants") are not prevailing parties under Rule 54(d). True, as asserted by the Alcon Defendants (Alcon Memo, p. 3), on December 30, 2004, this Court entered a Consent Judgment of non-infringement of U.S. Patent No. 5,658,303 in favor of all Defendants and against Plaintiff. Dkt.

1

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 1 of 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

#125. The Consent Judgment was entered based the Court's construction of certain terms of the patent. Id.; Dkt. #119. However, this action also involved a counterclaim by the Alcon Defendants against Plaintiff for violation of Section 2 of the Sherman Antitrust Act. Dkt. #30. After extensive briefing (Dkt. ##34, 36, 40) and oral argument (Dkt. # 41), the Court initially dismissed the antitrust counterclaim without prejudice and denied without prejudice the Alcon's request to amend the antitrust counterclaim. Dkt. #42. After further extensive briefing (Dkt. ##53, 57, 61) and further oral argument (Dkt. #74), the Court denied the Alcon Defendants' subsequent motion to amend the antitrust counterclaim, this time with prejudice. Dkt. #80. Therefore, this case was effectively a draw. The Alcon Defendants are not prevailing parties. Amarel v. Connell, 102 F.3d 1494, 1523 (9th Cir. 1996) ("In the event of a mixed judgment, however, it is within the discretion of a district court to require each party to bear its own costs. Testa v. Village of Mundelein, 89 F.3d 443 (7th Cir.1996) (requiring each party to bear its own costs where plaintiff prevailed on one claim and defendant prevailed on federal claim (citations omitted). In the event that plaintiffs prevail on their Section 1 claim on remand, the resultant mixed judgment may warrant that each party bear its own costs."); Ruiz v. A.B. Chance Co., 234 F.3d 654, 670 (Fed. Cir. 2000) ("In this case, [asserted infringers] prevailed on the patent invalidity issue, but [patentee] prevailed on all of the other issues, including the non-patent issues. The district court did not err in refusing to award costs, for neither party prevailed sufficiently to require an award of costs and make a decision not to do so an abuse of discretion."); and Kalkowski v. Ronco, Inc., 424 F. Supp. 343, 354 (N.D.

2

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 2 of 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Ill. 1976). Therefore, this Court should deny in its entirety the Alcon Defendants' request that this Court docket and include costs in the judgment.1 II. Various costs sought by the Alcon Defendants are not assessable under Rule 54, LRCiv. 54.1 or 28 U.S.C. § 1920. Even if the Alcon Defendants were prevailing parties (and they are not), the Alcon Defendants overreach in their grab for costs. LRCiv. 54.1(e)(3) provides in relevant part that: . . . The reporter's charge for the original deposition and copy is taxable whether or not the same be actually received into evidence, or whether or not it is taken solely for discovery. The cost of obtaining a copy of a deposition by parties in the case other than the one taking the deposition is also taxable. The reasonable expenses of the deposition reporter and a notary presiding at the taking of the depositions are taxable, including travel and subsistence. LRCiv. 54.1(e)(5) provides in relevant part: The reasonable cost of copies of papers necessarily obtained from third-party records custodians is taxable. All other copy costs are not taxable except by prior order of the Court. Various costs associated with depositions and photocopying sought by the Alcon Defendants are not assessable under Rule 54, LRCiv. 54.1 or 28 U.S.C. § 1920. Namely: · Costs for ASCII disks of transcripts that are duplicative of paper copies of transcripts are not recoverable. Harkins v. Riverboat Services, Inc., 286 F. Supp.2d 976, 980 (N.D. Ill. 2003) ("Because each of the ASCII disks purchased by [prevailing party] is duplicative of paper copies of certain transcripts, this Court finds that the ASCII disks are for [prevailing party's] convenience. The costs associated with those disks, therefore, are not recoverable.").

Co-defendants Bausch &Lomb Incorporated and Swagel-Wooton Eye Center, Ltd. did not file any antitrust counterclaims. Arguably, they would be prevailing parties. However, they have not elected to seek taxation of costs against Plaintiff.
1

3

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 3 of 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

·

Costs for minuscripts that are duplicative of paper copies are not recoverable. Id., at 980-81 ("A `minuscript' is not recoverable as a second copy. . . . [citations omitted] . . . Each invoice that includes a fee for a `minuscript' also includes a fee for a certified copy of a transcript. Therefore, the `minuscripts' in this case are second copies and are not recoverable as such.").

·

Costs for video copies of depositions that are duplicative of paper copies of transcripts are not recoverable. Robinson v. Burlington Northern R. Co., 963 F. Supp. 691, 693 (N.D. Ill. 1997) (prevailing party's costs of videotaping deposition would not be allowed, where costs of transcribing deposition had already been allowed, and prevailing party did not indicate that subject matter of transcribed deposition was different from that of videotaped deposition); Pan American Grain Mfg. Co. v. Puerto Rico Ports Authority, 193 F.R.D. 26, 38-39 (D.P.R. 2000) ("When a party recovers its costs for the transcript of a deposition, that party can not also recover costs for videotaping the deposition."). Charges for expedited processing of a deposition are not recoverable. Id., 193 F.R.D. at 40 ("The allowable cost of the transcript is only $229.50, not the $994.50 that [the prevailing party] claims. This is because [the prevailing party] shall recover only for the standard cost of a transcript, not for the premium that [the prevailing party] paid for an expedited transcript."); Butera v. District of Columbia, 83 F. Supp. 2d 25, 40 (D.D.C. 1999) ("videotaped depositions and the court reporters' expedited rate for transcripts are not recoverable (LCvR 54.1(d)(6) allows for recovery of the original and one copy of a transcript at the reporters standard rate)").

·

4

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 4 of 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

·

Shipping and handling fees associated with transcript costs are not recoverable. Harkins, 286 F. Supp. 2d at 981 ("Costs associated with delivering, shipping, or handling transcripts are ordinary business expenses and are not recoverable.").

The Alcon Defendants seek to have costs in the amount of $426.80 assessed for the 6/10/04 Deposition Transcript of Perry Binder. Alcon Memo, p. 2. However, the itemized court reporter's statement at Alcon Memo, Exhibit 3, p. 20 only supports the transcript cost of $245.00. Assessment of the cost of the ASCII disk ($100.00), exhibits ($51.80),2 and shipping and handling ($30.00) are not provided for by the applicable rules and statutes as discussed above. The Alcon Defendants seek to have costs in the amount of $516.75 assessed for the 6/10/04 Deposition Transcript of Lee Nordan. Alcon Memo, p. 2. However, the itemized court reporter's statement at Alcon Memo, Exhibit 3, p. 22 only supports the transcript cost of $308.70. Assessment of the cost of the ASCII disk ($114.00), exhibits ($64.05),3 and shipping and handling ($30.00) are not provided for by the applicable rules and statutes as discussed above. Furthermore, the Alcon Defendants did not use Nordan's deposition transcript in this matter. Indeed, the Alcon Defendants had Nordan testify at hearing before the Court, for which the Alcon Defendants are seeking a hearing appearance fee of $40. Alcon Memo, p. 2. Therefore, the cost of the Nordan transcript should be disallowed altogether. The Alcon Defendants seek to have costs in the amount of $367.57 assessed for the 6/22/04 Deposition Transcript of Stephen G. Slade. Alcon Memo, p. 2. However, the itemized court reporter's statement at Alcon Memo, Exhibit 3, p. 33 only supports the transcript cost of $334.15. The difference of

Plaintiff provided the Alcon Defendants with a courtesy copy of the exhibits free of charge at the deposition. 3 Plaintiff provided the Alcon Defendants with a courtesy copy of the exhibits free of charge at the deposition.
2

5

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 5 of 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

$33.38 is a late fee charged by the court reporter for the Alcon Defendants' failure to timely pay the bill. Plaintiff is not responsible for the Alcon Defendants' delinquency. The Alcon Defendants seek to have costs in the amount of $1,981.78 assessed for the 6/29/04 Deposition Transcript of Donald J. Lenkszus. Alcon Memo, p. 2. However, the court reporter's itemized statement at Alcon Memo, Exhibit 3, p. 25, only supports a transcript cost of $671.25 and reporter attendance fee of $280.00, or a total of $951.25. Assessment of the cost for expedited handling ($335.63), exhibits ($280.50), binding and handling ($10.00), condensed/word index ($20.00), e-transcript disk ($10.00), draft of transcript ($286.40) and delivery of original and copy ($88.00) are not provided for by the applicable rules and statutes as discussed above. The Alcon Defendants seek to have costs in the amount of $1,389.50 assessed for the 7/1/04 Deposition Transcript of Russell G. Koepnick. Alcon Memo, p. 2. However, the court reporter's itemized statement at Alcon Memo, Exhibit 3, p. 27, only supports a transcript cost of $608.00 and reporter attendance fee of $300.00, or a total of $908.00. (The transcript was 128 pages. Id. This works out to the excessive amount of $7.09/page.) Assessment of the cost for expedited handling ($304.00), exhibits ($137.50), binding and handling ($10.00), condensed/word index ($20.00), and e-transcript disk ($10.00) are not provided for by the applicable rules and statutes as discussed above. The Alcon Defendants seek to have costs in the amount of $1,377.88 assessed for the 7/2/04 Deposition Transcript of Russell G. Koepnick. Alcon Memo, p. 2. However, the court reporter's itemized statement at Alcon Memo, Exhibit 3, p. 30, only supports a transcript cost of $641.25 and reporter attendance fee of $300.00, or a total of $941.25. (The transcript was 135 pages. Id. This works out to the excessive amount of $6.97/page.) Assessment of the cost for expedited handling ($320.00), binding and handling ($10.00),

6

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 6 of 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

condensed/word index ($20.00), e-transcript disk ($10.00) and delivery of original and copy ($76.00) are not provided for by the applicable rules and statutes as discussed above. The Alcon Defendants seek to have costs in the amount of $2,377.50 assessed for video of the same 7/1-2/04 deposition of Russell G. Koepnick for which it is also seeking inflated transcript costs as discussed above. Alcon Memo, p. 2. The Alcon Defendants never submitted any of the video to the Court. Assessment of costs for the video are not provided for by the applicable rules and statutes as discussed above. Finally, the Alcon Defendants seek to have costs in the amount of $79.60 assessed for the third-party document production from Harry Geggel for 796 copies at $0.10/page and $272.80 for the third-party document production from Thomas Watkins for 2,728 copies at $0.10/page. The Alcon Defendants, not surprisingly, provide no document support for these charges. They do not, because they cannot. Plaintiff provided the Alcon Defendants with a copy of those documents free of charge!4 III. Conclusion For the foregoing reasons, Plaintiff requests that the Alcon Defendants request to include taxable costs in the judgment be denied in its entirety because the Alcon Defendants are not prevailing parties in this action. Should the Court determine for some reason that the Alcon Defendants are the prevailing parties, Plaintiff requests that their request for taxable costs be reduced as follows:

See Exhibit 1 attached hereto. The Court will note that the document production from Dr. Geggel and Mr. Watkins totals 3,524 pages (Alcon Memo, pp. 2-3) ­ the same amount of pages as reflected on Exhibit 1, an invoice paid by Plaintiff. Plaintiff's records do not reflect receiving any payment for these copies from any of the Defendants.
4

7

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 7 of 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Reduction from Binder deposition transcript: Elimination of Nordan deposition transcript: Reduction from Slade deposition transcript: Reduction from Lenkszus deposition transcript: Reduction from Koepnick deposition transcript 1: Reduction from Koepnick deposition transcript 2: Elimination of video deposition of Koepnick: Elimination of Geggel copy costs: Elimination of Watkins copy costs: Total Reduction of at least Leaving Balance of no more than Respectfully submitted this 10th day of March, 2006. PETER C. WARNER, P.C. at least5 at least5

$181.80 $516.75 $ 33.38 $1,030.53 $481.50 $436.00 $2,377.50 $ 79.60 $272.80 $5,409.86 $4,051.90

By: Peter C. Warner Attorney for Plaintiff/Counterclaim-Defendant Copy of the foregoing served via the Court's ECF system this 10th day of March, 2006, to: Timothy J. Burke Fennemore Craig PC 3003 N. Central Ave., Ste. 2600 Phoenix, AZ 85012-2913 Mark Deatherage Gallagher & Kennedy, P.A. 2575 E. Camelback Rd. Phoenix, Arizona 85016

5

As discussed above, Plaintiff believes the effective per page cost of potentially assessable costs for this deposition transcript to be excessive. If the Court is inclined to tax costs for this deposition, Plaintiff requests that the Court assess an appropriate amount based on its experience of such costs.
8

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 8 of 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Copy of the foregoing mailed this 10th day of March, 2006, to: Joseph R. Re Knobbe Martens Olson & Bear LLP 2040 Main St., 14th Floor Irvine, CA 92614 David Shukan Kirkland & Ellis 777 S. Figueroa St., 34th Floor Los Angeles, CA 90017-3140

9

Case 2:03-cv-00029-JAT

Document 131

Filed 03/10/2006

Page 9 of 9