The opinion of the court was delivered by: Irma E. Gonzalez, Chief Judge United States District Court
Order on ATC's Motion to Re-Tax Costs [Doc. 405]
Defendant American Technical Ceramics Corp. ("ATC") moves the Court to re-tax costs pursuant to Fed. R. Civ. P. 54 and Civ. L.R. 54.1. The Court previously found the motion appropriate for submission on the papers and without oral argument, and the hearing date was vacated. For the reasons explained herein, ATC's motion is GRANTED IN PART AND DENIED IN PART.
By order filed April 30, 2009, the Court found in favor of ATC on its counterclaim against Presidio under 35 U.S.C. § 292 for falsely marking the BB capacitors with the '356 patent after October 24, 2008. [Doc. No. 165, pp. 10-11.] The Court declined to determine the precise amount of the fine for which Presidio was liable under § 292 until the time of trial. [Id., p. 13.] In its August 5, 2010 order on the parties' post-trial motions, the Court set the amount of civil fine for which Presidio is liable based upon ATC's false marking counterclaim. [Doc. No. 348, p. 62.] In the same order, the Court concluded Presidio was a "successful plaintiff" entitled to costs pursuant to 35 U.S.C. § 284 with regard to its claims against ATC. [Id., p. 58.]
Following additional post-trial motions, the Clerk entered final judgment on October 26, 2010. Both parties thereafter submitted a Bill of Costs. By order filed December 17, 2010, the Clerk taxed costs in favor of Presidio in the total amount of $50,745.51. [Doc. No. 404, p. 7.] The Clerk denied ATC's request for costs. [Id., p. 2.] ATC now moves the court to re-tax costs.
Presidio first argues ATC's motion is untimely. The Clerk's order taxing costs was filed on December 17, 2010. Pursuant to Fed. R. Civ. P. 54, "on motion served within the next 7 days, the court may review the clerk's action" taxing costs. The seventh day for filing a motion to re-tax costs fell on Friday, December 24, 2010, a legal holiday in this Court. Therefore, ATC's time to file its motion to re-tax costs extended "until the end of the next day that is not a Saturday, Sunday, or legal holiday." Fed. R. Civ. P. 6(a)(1)(C). ATC's motion, filed on Monday, December 27, 2010, was timely.
1. Is ATC Entitled to Costs on its False Marking Claim?
ATC first challenges the Clerk's failure to tax costs against Presidio based upon ATC's false marking claim. Pursuant to 28 U.S.C. § 1918(a), "[c]osts shall be included in any judgment, order, or decree rendered against any person for the violation of an Act of Congress in which a civil fine or forfeiture of property is provided for." The Court found in favor of ATC, and against Presidio, on ATC's false marking claim under 35 U.S.C. § 292, a qui tam provision which is penal in nature. United States Gypsum Co. v. Pacific Award Metals, Inc., 438 F. Supp. 2d 1101, 1105 (N.D. Cal. 2006); Pequignot v. Solo Cup Co., 640 F. Supp. 2d 714, 724 (E.D. Va. 2009). That section provides for a fine of "not more than $500 for every such offense."
Notwithstanding the language of 28 U.S.C. § 1918(a), Presidio argues ATC is not entitled to costs on its false marking claim because ATC is not a "prevailing party" within the meaning of Fed. R. Civ. P. 54(d)(1). Presidio cites a number of cases discussing the determination of "prevailing party" status where parties are each awarded damages in connection with their respective claims and counterclaims. However, none of these cases cited by Presidio involve claims or counterclaims "in which a civil fine ... is provided for" pursuant to 28 U.S.C. § 1918. Upon review, the Court concludes ATC is entitled to costs under § 1918 because it obtained a judgment against Presidio on its false marking claim under § 292.
ATC sought $26,077.35 in costs, representing $505.06 for service of process, $24,691.69 for deposition and trial transcripts, and $880.61 for witness fees. [Doc. No. 392.] The Court will address the availability of each of these categories of costs.
Presidio objects that ATC requests fees for expedited service of process but did not obtain a Court order for expedited service pursuant to Civ. L.R. 54.1(b)(1) ("Fees for expedited service are allowable only if the Court ordered service to be effected on an expedited basis."). [Doc. No. 394, p. 3.] Presidio also objects that the subpoenas ...