issue that will be presented nearly all complex commercial cases and patent cases but it bends to final judgment and the briefs present the issues identically and the issue is whether the district court erred in holding that twenty eight u circuit you think later tonight to follow whatever ruling we if our standing in their shoes you'll be standing in the shoes of the fifth circuit but you'll be the first court to issue an opinion specifically dealing with it only presenting this issue when it finds no wrong that's correct that's correct and the issue is why and it will be present in every complex commercial case in every patent case and the parties agree in the briefs on what the issue is and that's whether the statute nine hundred twenty  recovery of costs related to the production of documents in discovery including electronic discovery costs now there are two waters that are under review in this appeal and i think they need to be addressed separately but the first thing to understand is that this appeal is about approximately four hundred forty five thousand dollars in discovery costs and one issue relates to necessity whether these costs were in the words of the statute for copies necessarily obtained for use in the case and preliminary matter it's important to understand that as a factual finding on the question of necessity the district court was utterly silent on all except for ten thousand three hundred thirty eight dollars of the four hundred forty five thousand issues so the district court had no factual findings as to necessity and ninety six percent of the costs an issue setting aside the ten thousand dollars which all come back to whatever standard of review was applied the court is left with error for failure to address any of those other costs in terms of the issue of necessity if there was legal error you know the discovery process that blackboard occurred in this case were incurred because the rules and the district court orders require them to be incurred blackboard was required under the rules and court orders in the eastern district of texas to produce all documents relevant to any claim or defense and in this court that's defined by the local rules as anything that a reasonable with posing counsel wants to see counselor seems to be  courts generally would you agree with that i don't agree with that your honor i think that district courts generally and fifth circuit specifically do embrace the proposition that you can recover costs of producing one copy of documents in discovery and the fifth circuit court of appeals held that in the sterns airport case they said we would never have that producing one copy of documents to the other side is outside the scope of section nine hundred twenty and the blue brief cites cases throughout the fifth circuit district courts in which discovery costs  did it also cites district court cases from the third circuit court of appeals case from the sixth circuit district court cases in the seventh circuit and the ninth circuit and the eleventh circuit cites the ninth circuit court of appeals and it also cites a local rule from the northern district of california which specifically provides that discovery costs for all disclosures are recoverable under a rule fifty four bill of costs if the district court was correct the local rules for the northern district of california are in conflict with the statu and then you go to the next level which is an electronic discovery caught would also be ok if you've got several hurdles to get over right that's great now when you created to file from all of these documents how does the money breakdown between that we did speak in title to that your honor of the sixth circuit has specifically allowed those costs there's no fifth circuit case district court other than this district judge or appellate which says we're not entitle to the o c r costs but we mostly want to emphasize that the o not regard to a specific local rule as long as the general rules of discovery and the rules of civil procedure would obligate parties to make discovery well i think even without a specific local rule the holding of the fifth circuit stern's airport is that the production of one set of discovery documents to the other side is not excluded from section nine hundred twenty paragraph c is not excluded is it necessarily included i mean there's a lot of well language was we have never held that producing one set of discovery documents to the other side is outside section nine hundred twenty so in all candor they didn't say we hope that it is within section nineteen twenty that there is room for the exercise of discretion again not with respect to particular charges but with respect to the question you what constitutes necessity i think under this report i think there is room for discretion in the district court as to what constitutes necessity to question this way do you think it would be permissible for one district court to say that general discovery production is necessary and for another judge sitting in the next courtroom in the same district to say no it isn't and for both  i don't think that kind of discretion is permissible here on what's the level of discretion that you think his promise i think i district court would be able to look at a particular thing that you did in discovery and say well i've heard just a million dollars of these documents and desire scanning a part probably documents is instead of taking a pile of documents to a copy machine and it spits out paper copies you take a copy of documents to what usually is the same machine and it spits out an electronic image which is produced on a di these are all documents the federal is a civil procedure specifically treats electronically stored information as a doctor and in a generally cheaper i'm asking maybe you don't know maybe you do but i think gerri cheaper meant think you don't have toner cartridge you don't have paper or you know got memory by memory cheap so isn't it generally a cheaper way to do discovery it is cheaper your honor vendors typically charge between seven or ten cents for a test and some vendors will actually charge as much as twenty five cents for a paper copy it's also cheaper to case those were produced as to if you can imagine what that would have looked like if it had been produced in hard copy lab or didn't want to do that desire to learn and serve discovery requests that require blackboard under the local rules to produce all documents that dealt with black first desire to learn has said blackmore does not entitle to any costs in this case should be remanded for proceedings consistent with that decision they didn't file across appeal the law is clear that if you don't file across appeal you cannot enlarge your rights on  sensible resolution of the cross appeal rules to say as long as you know ask for more than you got then you don't have to prosecute i think if they were to change what they're asking for that would be correct your honor and then you have to reach the merits of the two  o'reilly versus morse i was not able to find in there anywhere the language of the statute that they were talking about that made it there it referred to act of congress so i don't think there's there's a basis looking at o'reilly versus morse to say that was a predecessor statute or know how that statute is they they cite other eighteen hundred cases that came after a rally versus morse and those do have statutory language and it appears that the statute is not actually predecessor to statute to eighty eight it's a statute to it's a predecessor to twenty eight statutes in perry material we would have to look at the fact that o'reilly versus morse doesn't identify what statute it's talking about and it's from a different regime whereas in this regime we have the bradford case where we have this court considering the identical fact scenario where two claims were found invalid and to claim that that's true your honor but it can still be considered by this court as the court considered seagate non presidential opinions and said in that opinion that this argument borders on the two very different reasons one is the statute both of them are statutory the first is the section two eighty eight we're just talking about that statute prohibits the district court from giving blackboard any amount of money is certainly prevents the district court from giving blackboards the money it was seeking the additional amount well you could stand here and rely upon o'reilly and you did does it make any darn sense to you i realize that sometimes i'm bound to do things that to me thing nonsensical because the higher authority in this case the supreme court or congress legislated it i'm bound to do it but i mean and the patent attorney get to that make any sense to you it made a lot of doesn't make any sense to you because i read her already and then i read it again and i told my law partner clearly missing something and he read it several more times no one's ever read the case more than our chambers and yet we can make no sense of it from a policy standpoint how how how can you tell a patentee that they had to disclaim something they had no reason to believe was invalid given that it was issued by the patent office it survived several levels of scrutiny all the way up to the supreme court and then tell them if they don't disclaim that they don't get the other stuff that they were before the trial started indeed indeed there have been previous litigation mentioned in that in the opinion where that had been upheld nevertheless the trial judge says as a condition for relief court was created there was a alan archery case in the ninth circuit there going through some of the some of the history and in that case as well there was a situation where although the had to disclaim some claims had disclaimed others and at  the o'riley person more a language to eat which i realize is not the exact language that would necessarily confronted by o'reilly and that supreme court at the time because to eat within the next and after and what we can't even be entirely positive what statute they were referring to thing case where it claimed a patent is invalid it necessarily has to eliminate the possibility of cause so when i read to eighty eight i mean i've got the language here in front of me in a vacuum i have trouble getting to the position you want me to get to i think it's only o'reilly to get you there to tell me if i'm missing something in the language of two eighty eight which gets me there independent of o'reil which may be valid well how can you have a claim that invalid definitively invalid and then an action may be maintained or one that could be valid it necessarily implies to me and order of our knowledge and a claim invalidated that doesn't a stop you from getting caught when you later seek to assert other claims other than the invalidated one in a separate later action it seems to me that the sentence upside or downside for the patentee the upside is even if you have a claim best invalid you can maintain you can carry on with your litigation that's a departure from a view earlier on that  defending it hit the nail but i don't understand how or because i thought it got from you some legitimate reason why someone from a policy standpoint why would congress enact statute the way you want me to interpret it because i look at the law i look at to eighty eight i do not focuses and picks the particular claim that only that the accused infringer infringes and is can and is more convinces more certain and chooses to sue only on the it was a change in practice as federico points out there have been all that disclaimer practice for one hundred years have been very complex which included whether the disclaimer was timely enough filed and whether it was whether you disclaimed all the right kind of claims and to get to simplify that process to mediate comes into play it had been carried forward caught if you only threw on claims that were valid to hate pick just one and you know don't read the other well what's the purpose of the disclaimer you can't disclaim until after it's been held in valerie that's the only reason for a disclaimer every life technically you can disclaim claim you can pick and choose whichever one you want but that's not perfect you pertains to the statute pertain disclaiming the invalid claim to not a claim is not in quote a patentee who secures a favorable judgement on some claims of the patent cannot recover costs of a claim of the patent is found invalid not had been previously term and to be invalid is found in battle that's what happened in a writing that's also what happened in sessions that's what happened in the allen archery case in the ninth circuit that this court in its own archery case  to be saying necessary was going to be construed more broadly that it is in some instances some instances i think in my experience at least necessary previously used to be construed to mean only that which you handed over to the court and to the  but is it not the case that stern's stands for the proposition that necessary may include materials that are produced in discovery even though they never come within one hundred miles of the courthouse be read that way to in the district court has discretion to to decide whether it's necessary or not the district court said on page one twenty of the of the appendix that blackboard is filled to show that he left trying to conversion apart documents were not unlike the bt case where the burden was on the objective party in that circuit evidently in the fifth circuit and in this court the burden is on blackboard if there's an objection the burdens on blackboard to justify its costs it's got to show  what what what blackboard asserted on page three seventeen of the appendix in there in their paper or in their submission for cost under section  arc within the scope of one nine hundred twenty paragraph four in the p d t case that they rely on that decision did not rest on one nine hundred twenty paragraph or rather the circuit court there said those costs could come within reads section two eighty eight i think there's a simple answer that mr killen provided in his argument he said to radiate was a change in practice so and i think that's right to mediate is different and it's a change in practice from how things were before o'reilly versus morse is not controlling on how this court reads section two eighty eight so the court should look to bradford and look to the practice which is many cases have patents where one claim is ruled invalid and another know valid ultimately to be declared invalid and valid claims and you're taking a chance on not getting a cost award if you went on part of the case if you exercise a little more care at the front in assuming you have the foresight to see what may be in the cards you may get cost if you down you were the number of claims your city doesn't seem crazy as a matter of policy and then he does it to you it does not and that would be an easy thing for congress to do but i would suggest that congress could say a lot more simply they could say if you sue on a patent and some claims are invalid you know costs but they haven't done that here i think it makes more sense to read what they actually did do as saying ok blackboard you've got planes going through thirty five they've been invalidated by the district court let's say we lose the cross appeal those claims are invalid for good if we're going to go and sue somebody again and we don't just claim then we don't get costs well then you wouldn't have need you would survive  so yes yes let me redirect the court again one more time to join appendix one twenty one twenty is what i wrote down mr quinn read the sentence and i think it's important to read  carefully analyzing what the district court did it says while blackboard argues that electronic conversion was necessary to answer the two l's request for discovery blackboard has failed to show that electronic conversion of hard documents were not merely for convenience of the part so there the court district court is talking about one specific thing which is the scanning of hard documents and that is not most of the cost that we're talking about here that is the ten thousand dollars worth of costs that i was referring to earlier which is broken out in the  of these costs what we're talking about when we talk about to creation is you've got an e mail or you've got a microsoft word document or an excel file and that needs to be changed from computer language into a form that's usable to the other side and it's produced just hit and that's what we're talking about here and has to do those costs the district court made no findings will fifty four says that these costs shall be awarded and if the district court is going to make no findings about the vast majority of the costs necessity under whatever standard of think the district court would sort this out correctly if it were simply instructed by this court that in the fifth circuit discovery costs including electronic discovery costs are recoverable thank you thank you