United States District Court, N.D. California
ORDER RE PLAINTIFF'S BILL OF COSTS DOCKET NO.
M. CHEN UNITED STATES DISTRICT JUDGE
Opticurrent, LLC (“Opticurrent”) seeks costs
totaling $23, 077.38. See Docket No. 293. Defendant
Power Integrations, Inc. (“PI”) urges the Court
to deny Opticurrent's request for costs in its entirety
or, in the alternative, to disallow certain costs.
See Docket No. 310.
Award of Costs
Rule of Civil Procedure 54(d) provides that
“costs-other than attorney's fees- should be
allowed to the prevailing party.” Here, Opticurrent
prevailed in showing that PI infringed claim 1 of U.S. Patent
No. 6, 958, 623 (the “'623 patent”) literally
and under the doctrine of equivalents, and is entitled to
costs determined according to the law of the regional
circuit. See Manildra Mill. Corp. v. Ogilvie Mills,
Inc., 76 F.3d 1178, 1183 (Fed. Cir. 1996). The Ninth
Circuit recognizes a presumption that the prevailing party is
entitled to costs but allows the district court discretion
not to award them. See Escriba v. Foster Poultry Farms,
Inc., 743 F.3d 1236, 1247 (9th Cir. 2014). The following
can be grounds for denying costs: “(1) the issues in
the case were close and difficult; (2) the prevailing
party's recovery was nominal or partial; (3) the losing
party litigated in good faith; and, perhaps, (4) the case
presented a landmark issue of national importance.”
Champion Produce, Inc. v. Ruby Robinson Co., 342
F.3d 1016, 1023 (9th Cir. 2003).
argues that the first three considerations listed in
Champion Produce weigh against awarding Opticurrent
costs in this case. According to PI, this was a close case,
as reflected in the jury's finding that PI directly
infringed the '623 patent but did not induce
infringement; Opticurrent's recovery was partial; and PI
litigated in good faith whereas Opticurrent engaged in
misconduct. Docket No. 310 at 1-3. However, PI has failed to
overcome the presumption that Opticurrent is entitled to
costs. First, the jury's conclusion that PI did not
induce infringement does not make this a “close and
difficult” case on the question of direct infringement.
Cf. TransPerfect Glob., Inc. v. MotionPoint Corp.,
No. C-10-02590 CW (DMR), 2014 WL 1364792, at *3 (N.D. Cal.
Apr. 4, 2014) (ruling that a verdict of direct infringement
“is a clear loss for [defendant], ” even if jury
found no contributory or induced infringement). PI was found
to have infringed the sole patent at issue both literally and
under the doctrine of equivalents. Although there were
vigorous arguments on the merits regarding the connection or
not to a power supply, the issue was not particularly
difficult, and the jury reached its unanimous verdict fairly
quickly. See, e.g., Beckway v. DeShong, No.
C07-5072 TEH, 2012 WL 1380217, at *2 (N.D. Cal. Apr. 20,
2012) (considering length of jury deliberations in
determining whether case was close and difficult). Second,
Opticurrent's recovery, while partial, was nevertheless
substantial-over $1 million in past damages. Third, while
this case has been fiercely litigated, neither party has
engaged in actions that rise to the level of misconduct, as
the Court has previously explained. See Docket No.
336 at 43.
as the prevailing party, is entitled to recover its costs.
Amount of Costs
disputes two specific categories of costs billed by
Opticurrent. The first is the costs associated with the
deposition of Kenneth Mackillop. Mr. Mackillop's
deposition was made necessary by Opticurrent's oversight,
which led Judge Orrick to allocate costs thereof. In 2018,
the parties engaged in summary judgment briefing before Judge
Orrick concerning the date of conception of the '623
patent. Mr. Mackillop was a relevant fact witness who was
able to corroborate the date of conception asserted by
Opticurrent, but Opticurrent did not submit his affidavit
until after the Court had issued its summary judgment ruling.
See Docket No. 132 at 2-3. While Judge Orrick
accepted the late filing on a motion for reconsideration, he
observed that “Opticurrent should have produced the
Mackillop affidavit with the original motion papers”
and allowed PI to depose Mr. Mackillop's to mitigate any
prejudice to PI. Id. at 5. However, Judge Orrick
ordered that “[t]he cost of the transcript, court
reporter's fee, travel (if required) and two hours of the
PI's lawyer's time who is taking the deposition shall
be paid by Opticurrent.” Id. PI is thus
correct that Opticurrent, not PI, must bear the $1, 278.35 in
costs associated with Mr. Mackillop's deposition.
second disputed category is the costs associated with
videotaping depositions. PI argues, citing Frlekin v.
Apple Inc., No. 1303775WHA, 2016 WL 354862, at *2 (N.D.
Cal. Jan. 25, 2016), that “costs associated with video
should not be allowed where the witnesses are available at
trial and where the video was not actually ever used.”
Docket No. 310 at 3. However, as Opticurrent points out,
statutory authority, this district's local rules, and
“the weight of recent authority . . . hold that fees
for both the videotaped and stenographic versions of the same
transcript are taxable.” Fowler v. California
Highway Patrol, No. 13-CV-01026-TEH, 2014 WL 3965027, at
*5 (N.D. Cal. Aug. 13, 2014); see 28 U.S.C. §
1920(2) (authorizing taxation of “[f]ees for printed
or electronically recorded transcripts necessarily
obtained for use in the case”) (emphasis added); N.D.
Cal. Civ. L.R. 54-3(c)(1) (“The cost of an original and
one copy of any deposition (including videotaped depositions)
taken for any purpose in connection with the case is
allowable.”). PI fails to show Opticurrent's
decision to videotape the deposition was unreasonable.
Accordingly, Opticurrent may recover the costs of videotaping
foregoing reasons, Opticurrent is entitled to costs totaling
$21, 799.03 ...