1

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

PROFECTUS TECHNOLOGY LLC,

 Plaintiff,

v. 

GOOGLE LLC,

 Defendant.

6:20-cv-00101-ADA

MEMORANDUM OPINION & ORDER GRANTING-IN-PART

DEFENDANT’S BILL OF COSTS

Came on for consideration this date is Google LLC’s Bill of Costs, filed June 17, 2022. 

ECF No. 222 (the “Bill”). Plaintiff Profectus Technology LLC filed an objection to the Bill on 

July 22, 2022, ECF No. 225, to which Defendant Google LLC filed a response in support of its 

Bill on July 29, 2022, ECF No. 226. Plaintiff also filed a brief, entitling it as a reply and arguing 

that per the local rules, Google did not file a motion and that only Plaintiff’s brief was crafted in 

the form of a motion. ECF No. 227. Without addressing the substance of Plaintiff’s arguments as 

to form, the Court has taken each of the briefs under review. After careful consideration of the 

Bill, the parties’ briefing and oral arguments, and the applicable law, the Court GRANTS-INPART the costs identified in Google LLC’s Bill.

I. BACKGROUND

Profectus Technology LLC (“Profectus”) brought a patent infringement suit against 

Google LLC (“Google”) on February 10, 2020, alleging infringement of at least U.S. Patent No. 

6,975,308 (the “’308 patent”). ECF No. 1 ¶ 1. The ’308 patent is directed to a digital picture 

frame that displays digital images taken by a digital camera. ’308 patent at 3:48–:50. Profectus

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alleged that Google makes, uses, sells, offers for sale, and/or imports products directly infringing

the ’308 patent. ECF No. 1 ¶ 41.

This Court conducted a jury trial between September 30 and October 6, 2021, resulting in 

a unanimous verdict for Google. ECF No. 196. The jury found no direct infringement of any of 

the asserted claims of the ’308 patent, nor induced infringement of the ’308 patent. Id. at 2–3.

Additionally, the jury found that each of the asserted claims of the ’308 Patent were invalid. 

Id. at 4. The Court entered judgment on June 3, 2022. ECF No. 220. On June 17, 2022, Google

entered its Bill requesting costs in the amount of $168,465.42. ECF No. 222 at 1.

II. LEGAL STANDARD

The Federal Rules of Civil Procedure state, “[u]nless a federal statute, these rules, or a 

court order provides otherwise, costs—other than attorney’s fees—should be allowed to the 

prevailing party.” Fed. R. Civ. P. 54(d)(1). Under this rule, there is a strong presumption “that 

the prevailing party will be awarded costs.” Schwarz v. Folloder, 767 F.2d 125, 131 (5th Cir. 

1985). The Fifth Circuit has held that this presumption intended to create prima facie entitlement 

to payment of costs and that the burden of overcoming this presumption shifts to the losing party. 

Id. Additionally, a court “may neither deny nor reduce a prevailing party’s request for cost 

without first articulating some good reason for doing so.” Pacheco v. Mineta, 448 F.3d 783, 794 

(quoting Schwarz, 767 F.2d at 131).

As defined by statute, recoverable “costs” are limited to:

(1) Fees of the clerk and marshal;

(2) Fees for printed or electronically recorded transcripts 

necessarily obtained for use in the case;

(3) Fees and disbursements for printing and witnesses;

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(4) Fees for exemplification and the costs of making copies of any 

materials where the copies are necessarily obtained for use in the 

case;

(5) Docket fees under section 1923 of this title;

(6) Compensation of court appointed experts, compensation of 

interpreters, and salaries, fees, expenses, and costs of special 

interpretation services under section 1828 of this title.

28 U.S.C. § 1920. “The Supreme Court has indicated that federal courts may only award those 

costs articulated in section 1920 absent explicit statutory or contractual authorization to the 

contrary.” U.S. ex rel. Long v. GSDMIdea City, L.L.C., 807 F.3d 125, 130 (5th Cir. 

2015) (quoting Gagnon v. United Technisource, Inc., 607 F.3d 1036, 1045 (5th Cir. 2010)).

III. ANALYSIS

As the prevailing party, Google is prima facie entitled to costs under Rule 54(d)(1).

Pacheco, 448 F.3d at 793. Profectus argues that most of Google’s proposed deposition costs and 

all requested trial graphics and support costs should be denied. ECF No. 225 at 1. After 

considering each argument, the Court finds that Google’s requested costs should be significantly 

reduced to comport with the language of the applicable statute.

A. Google’s Entitlement to Transcription Costs

A prevailing party may recover the costs of “printed or electronically recorded transcripts 

necessarily obtained for the use in the case.” 28 U.S.C. § 1920(2). Google seeks to recover costs 

for printed and electronically recorded trial, pre-trial, and deposition transcripts. ECF No. 223 at 

2–5. Profectus disputes the necessity of several of the requested transcript costs. ECF No. 225 at 

9–10. Upon review, the Court finds the requested amount should be reduced, but only slightly 

more than the amount Google last proposed in its reply.

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1. Transcripts of Court Proceedings

Google seeks $12,268.43 in costs related to transcripts of court proceedings. ECF No. 

223 at 2. This includes $11,667.78 for daily trial transcripts and $600.65 for pre-trial hearing

transcripts. Id. Profectus does not dispute these claims, see ECF No. 225 at 1 n.2, and the Court 

is persuaded that the costs were necessary. Thus, Google is entitled to its trial transcription costs

in the amount of $12,268.43.

2. Depositions

In its initial Memorandum In Support of its Bill of Costs, Google sought $34,860.33 for 

costs related to depositions of Google and Profectus fact and expert witnesses. ECF No. 223 at 2. 

Google provided the following chart in support of its requested costs.

Deponent Reasons Why Transcripts Were Necessarily 

Obtained for Use in This Case

Frank Bitetto Inventor of the patents-in-suit and testifying 

witness at trial

James Bitetto Inventor of the patents-in-suit and testifying 

witness at trial

Justin Block Profectus’s expert on damages, provided an expert 

report and testified at trial

Willy Cheung Google’s employee deposed by Profectus

Erick Low Google’s employee deposed by Profectus

James Maccoun Google’s employee deposed by Profectus and 

testifying witness at trial

Michael Maigret Google’s employee deposed by Profectus

Andrew Fergus Simpson Google’s employee deposed by Profectus and 

testifying witness at trial

Mitchell Thornton Profectus’s technical expert, provided an expert 

report and testified at trial

Ashton Udall Google’s employee deposed by Profectus and 

testifying witness at trial

Susan West Sony’s corporate witness and testifying witness at 

trial who provided testimony on a key prior art 

device relied upon by Google at trial

Id. at 3. Google further seeks the incidental costs associated with the depositions of Erick Low, 

Andrew Fergus Simpson, and Ashton Udall. Id. at 3–4. Google reasons that the expedited 

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delivery charges were necessary given the proximity of the depositions to the opening expert 

report deadline. Id. at 4. The depositions were conducted between four and eight days before the 

reports were due, necessitating expedited return charges as the testimony of the witnesses were 

thought to impact the expert reports. Id. at 4.

Profectus disputes most of Google’s claimed deposition costs as outside the statutory 

language permitting recovery of “[f]ees for printed or electronically recorded transcripts 

necessarily obtained for use in the case.” 28 U.S.C. § 1920(2). Specifically, Profectus disputes 

the costs found in line items such as “Attendance – Per Session,” “Realtime Services – Remote,” 

“Veritex Virtual Primary Participants,” “Realtime Services – Remote Connection,” “Litigation 

Package – Secure File Suite,” “Witness Read and Sign Services,” “Concierge Tech Support,” 

“Veritext Exhibit Package (ACE),” “Exhibit Share,” and “Electronic Delivery and Handling.” 

ECF No. 225 at 10. Profectus characterizes the costs as “unexplained” and “incurred for the 

convenience of Google and its counsel.” Id. Last, Profectus objects to the costs for videos of the 

depositions, pointing to this Court’s recent opinion in MV3 Partners LLC v. Roku, Inc. ̧ No. 

6:18-cv-00308-ADA, 2022 WL 1913619, at *4 (W.D. Tex. June 3, 2022). Id. In that opinion, 

this Court reduced the requested deposition costs by entitling the prevailing party to recover 

costs for video depositions only for witnesses who did not testify at trial. MV3 Partners, 2022 

WL 1913619 at *4. Per Profectus, every witness listed in the above table testified at trial except 

for Willy Cheung, Erick Low, and Michael Maigret. But the invoices for those witnesses only 

list line items of “Electronic Access” and “Digitizing,” neither of which Profectus claims are 

recoverable under 28 U.S.C. § 1920(2). ECF No. 225 at 10. After parsing through the invoices, 

Profectus calculates the recoverable cost total to be $10,814.25—the costs of obtaining copies of 

the transcripts of the depositions. Id. at 9.

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In reply, Google notes that Profectus does not dispute the costs for a copy of each 

deposition transcript ($10,814.25), nor does it explicitly contest the request for expedited 

transcripts for Erick Low, Andrew Fergus Simpson, or Ashton Udall (totaling $1,509.06). ECF 

No. 226 at 5–6. Google also provides additional clarity regarding the line items in the invoices, 

arguing the necessity of certain line items as follows:

Cost Necessity

“Attendance – Per Session” and “Attendance (Full 

Day)”

This court reporter appearance fee is necessary for 

any deposition.

“Exhibits” This fee is necessary to obtain copies of the 

exhibits used at a deposition.

“Litigation Package – Secure File Suite” and 

“Electronic Delivery and Handling”

These fees for sending final sets of transcripts and

exhibits are required to actually obtain the 

transcripts.

“Surcharge – Extended Hours” This fee is charged if the court reporter is required 

to work extended hours to cover a given 

deposition.

“Witness Read and Sign Services” This fee is for attaching a witness errata sheet to 

the transcript.

Id. at 6. Google withdraws all other deposition costs tied to line items other than those listed 

above. Id. Google also withdraws the costs for the videos of the witnesses who testified at trial. 

Id. at 7. Finally, Google clarifies that the costs for Willy Cheung, Erick Low, and Michael 

Maigret, the three witnesses that were deposed but did not testify at trial, were indeed the costs 

incurred for obtaining the videos of the depositions. Id. And while the line items “Electronic 

Access” and “Digitizing” are not explicitly listed in § 1920, they are indeed the costs for 

obtaining the video deposition. The invoices themselves clarify that, as they are the only line 

items associated with creating the videos. After reducing its requested costs, Google seeks a final 

total amount of $20,543.31 for deposition transcript and video costs (a reduction of $14,317.02).1

1 The Court reached out to counsel requesting an updated Exhibit C (ECF No. 223-3) that highlighted only the 

pertinent and remaining charges Google sought to collect.

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The underlying question for the requested costs is not necessarily the text of the line item 

on the invoice, but the necessity of the fee as dictated by § 1920. See Bernardy v. Shriners 

Hospital for Children, Inc., No. 3:20-cv-165, 2022 WL 1694184, at *2 (S.D. Tex. May 25, 

2022); see also U.S. ex rel. Long v. GSDMIdea City, L.L.C., 807 F.3d 125, 133 (5th Cir. 2015). 

Google’s withdrawal of numerous line-item costs is well-received by the Court. The Court finds 

that the requested costs of “Certified Transcript,” “Attendance – Per Session,” “Attendance (Full 

Day),” “Exhibits,” “Litigation Package – Secure File Suite,” “Electronic Delivery and 

Handling,” “Surcharge – Extended Hours,” and “Witness Read and Sign Services” are necessary 

costs for obtaining deposition transcripts under § 1920(2) for the reasons provided in the updated 

table in the reply brief. For such costs, the necessity is not necessarily derived from the text of 

the line item on the invoice, but from what the approved line items accomplish—as approved by 

§ 1920.

With respect to the expedited rates, Google argues that the expedited transcripts were 

necessary because the depositions were taken between four and eight days before the opening 

expert reports were due. ECF No. 223 at 4. Google states that the “testimony of these witnesses 

was reasonably anticipated to be germane to the parties’ opening expert requests.” Id. Here, 

absent an expedited rate, the parties would have been deprived of the transcripts in preparing 

expert reports, necessities in patent litigation. Thus, the Court finds that the last-minute

depositions of Google’s witnesses, scheduled by Plaintiff, were sufficiently necessary for use in 

the case. See Jacked Up, LLC v. Sara Lee Corporation, No. 3:11-cv-3296-L, 2015 WL 

10607574, at *3 (N.D. Tex. Sept. 2, 2015) (finding the costs for expedited deposition transcripts 

were necessary when “Plaintiff noticed the depositions shortly before the summary judgment 

deadline”); see also MV3 Partners v. Roku, 2022 WL 1913619, at *3.

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Finally, the Court finds that the “Electronic Access” and “Digitizing” costs associated 

with the video depositions of Willy Cheung, Erick Low, and Michael Maigret were necessarily 

incurred to obtain videos of the depositions. Google should recover such costs. See id. at *4 

(“[Defendant] is entitled to recover only for video depositions of witnesses who did not testify at 

trial.”) (emphasis in original); see also Jacked Up v. Sara Lee, 2015 WL 10607574, at *2 

(“Section 1920(2) authorizes recovery of the costs for both the paper transcript and the video 

recording of a deposition so long as, at the time that a transcript and a video recording were 

made, each could reasonably be expected to be used during trial or for trial preparation, rather 

than for the mere convenience of counsel or merely for discovery.”).

The Court approves the undisputed costs for the transcripts ($10,814.25),2other 

necessary costs to acquire the transcripts as describe above ($4,286.20), expedited costs for the 

transcripts of three witnesses ($1,509.06), and costs for the video depositions of Willy Cheung, 

Erick Low, and Michael Maigret ($2,575.00). In sum, the Court approves $19,184.51 for 

necessary deposition costs.3

B. Google’s Entitlement to Fees for Witnesses

Google seeks to recover $3,626.55 in witness fees for witnesses called during trial. ECF

No. 223 at 5. The statutory costs associated with witness attendance at trial are set forth by 28 

U.S.C. § 1821. Google’s costs for each witness are taxed through an attendance fee for each day 

at trial as provided for in § 1821(b), required travel expenses as provided for in § 1821(c), and 

required overnight lodging as provided for in § 1821(d). The parties do not dispute these costs. 

2 This amount comprises all line items in the invoices entitled “Original with 1 Certified Transcript” or “Certified 

Transcript.” The $10,814.25 amount is a baseline undisputed amount that also reduces the $8.30 per page charge to 

$4.35 per page on Justin Ray Blok and Mitchell Aaron Thornton, Ph.D.’s invoices (##5173577 and 5171419, 

respectively).

3 Google’s proposal for $20,543.31 is approved by the Court with one minor adjustment—the Court reduces the 

price per page for Dr. Thornton’s deposition transcript to $4.35 per page.

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The Court finds Google is entitled to full reimbursement for witness fees in the amount of 

$3,626.55.

C. Google’s Entitlement to Exemplification & Copying Costs

A prevailing party may recover the costs of “exemplification and the costs of making 

copies of any materials where the copies are necessarily obtained for use in the case.” 28 U.S.C. 

§ 1920(4). Google seeks to recover costs for producing trial graphics, obtaining demonstratives,

and retaining a trial technician. ECF No. 223 at 5–7. Google does not request any costs for 

copying. See generally id. This Court finds the total recovery for exemplification costs should be

significantly reduced.

1. Physical Trial Demonstratives

In Google’s Memorandum in Support of its Bill of Costs, Google sought costs in the 

amount of $1,380.11, $1,070.58 of which was attributed to six of Google’s allegedly infringing 

products. Profectus questioned why it was “necessary for Google to purchase its own products 

for the case.” ECF No. 225 at 7. In turn, Google has withdrawn the request for the costs of those 

six units, but maintains its request for other physical trial demonstratives, including the prior art 

devices. Each of the remaining physical trial demonstratives4fit within the common definition of 

“exemplification.” See Exemplification Definition, MERRIAM-WEBSTER.COM, 

https://www.merriam-webster.com/dictionary/exemplification (last visited Aug. 10, 2022) 

(defining it as an example and listing synonyms such as “prototype,” “representative,” and 

“sample”); ECF No. 223-5 at 1.5 Given the demonstratives’ utility in the trial and that the 

4 The Kodak Smart Picture Frame Storybook Digital, the Sony PHD-A55 5-in Digital Photo Frame, the Original 

Sony 128 MB Memory Stick, the Sony MSAC-US1 Memory Stick Reader/Writer w/ USB cord were each used at 

trial.

5 The Court does not find that the foam travel case fits within the definition, nor that it was necessarily obtained for 

use in the case, particularly given that the products could have been transported in their original packaging. 

Moreover, the foam case cost more than the products themselves.

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physical products, or examples, were necessarily obtained for use in this case, e.g., to prepare 

defenses, for expert opinions, and for presentation to the jury at trial, the Court finds that such 

costs should be granted. Accordingly, the Court awards costs in the amount of $135.74 for 

physical trial demonstratives.

2. Graphics & Trial Equipment 

The main dispute centers on whether Google is entitled to an additional $116,330.00 for 

courtroom equipment, graphics, and trial technician fees. Google asserts that these costs are 

taxable “provided that the prevailing party obtained court approval before incurring the 

expense.” ECF No. 223 at 5 (quoting Two-Way Media, LLC v. AT&T Servs., Inc., 2013 U.S. 

Dist. LEXIS 202556, at *22 (W.D. Tex. Nov. 22, 2013)). Profectus argues that these costs are 

not allowed under § 1920(4) because the statute only expressly allows for fees relating to the 

“exemplification” of necessary materials, and the Fifth Circuit’s understanding of the term 

“exemplification” leaves no room for any of the costs Google is seeking. ECF No. 225 at 4. In 

support, Profectus points to Summit Technology, Inc. v. Nidek Co., Ltd., 435 F.3d 1371, 1375–78 

(Fed. Cir. 2006) where the Federal Circuit interprets First Circuit jurisprudence as disallowing 

costs for consulting fees associated with preparing trial graphics. The Federal Circuit in Summit 

Technology notably describes the First Circuit as taking the same “narrow[] legal definition of 

the term ‘exemplification’ endorsed by the Fifth Circuit.” Id. at 1377. 

Google contends that such costs are recoverable under § 1920(4) as recent cases,

including this Court’s MV3 Partners opinion, recently granted costs for trial exhibits, graphics, 

and demonstratives in an exercise of discretion. ECF No. 226 at 2. Google further argues that 

these costs were necessary in order for Google to defend itself. Id. at 2–4. Google further 

disputes that the invoices are insufficiently detailed, pointing to invoices used in other cases that 

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supported an award of costs. Id. Last, Google argues that it had implicit preauthorization for trial 

exhibits, graphics, and demonstratives. Id. at 4–5.

The Court recently addressed similar arguments in MV3 Partners, where the dispute 

centered on whether such costs were expressly authorized and contained sufficient details to 

prove they were necessarily incurred. With the benefit of additional briefing, and having the 

issue squarely presented, the Court finds that Google’s requested fees for trail exhibits, graphics, 

and demonstratives do not fall within the language of § 1920 as “fees for exemplification.” 

Recognizing that this is a fairly sudden about face from the MV3 Partners opinion, the Court 

provides the following reasoning.

a) “Exemplification” should be narrowly construed.

First, whether the requested costs fall under “exemplification” in § 1920(4) is a threshold 

and determinative issue. Profectus relies on a narrow interpretation of “exemplification,” 

defining it as “[a]n official transcript of a document from public records, made in form to be used 

as evidence, and authenticated as a true copy.” BLACKS LAW DICTIONARY (4th ed. 1951). Google 

argues that this Court need not change course from its prior approach and that of other Courts in 

awarding such costs. But to continually err for the sake of consistency is still error. Moreover, 

the underlying question in MV3 Partners was not precisely whether such costs were 

“exemplification” costs, but instead whether the prevailing defendant “receive[d] prior express 

authorization from the Court.” MV3 Partners LLC v. Roku, Inc., No. 6:18-CV-00308-ADA, 2022 

WL 1913619, at *4 (W.D. Tex. June 3, 2022). The Court ultimately found that “express

authorization by the court is not necessary.” Id. (emphasis in original). Because the parties 

squabbled over secondary questions instead of the threshold question, this Court did not 

eliminate the requested costs. However, after a further assessment of the law and the restrictive 

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language of the statute, the Court is of the opinion that awarding such costs is beyond the 

purview of the Court.

Google cites to several cases where costs for a trial technician and equipment were 

awarded.6In reviewing each of these cases, determination of whether the requested costs fell 

under the language of the statute was more an assumption than an analytical challenge. By no 

means does the Court discredit Google or prior courts for requesting and awarding these costs 

under the guise of “exemplification.” But after a deep review of the invoices and briefing, the 

requested costs are not exemplification costs. As noted in United Biologics, L.L.C. v. Allergy and 

Asthma Network/Mothers of Asthmatics, Inc., “no plausible reading of [§ 1920(4)’s] provision 

for fees for exemplification permits recovery for expenses resulting from the time an A/V 

technician spends in trial.” No. 5:14-cv-35, 2021 WL 1968294, at *11 (W.D. Tex. May 17, 

2021) (internal quotation marks omitted). 

United Biologics provides a very narrow definition of “exemplification,” relying only on 

the restrictive definition provided in Black’s Law Dictionary. 2021 WL 1968294, at *15. This 

Court believes that a less restrictive definition, as provided by lay dictionaries, covers more than 

solely documentary transcripts and indeed encapsulates physical products. See, e.g., 

Exemplification Definition, MERRIAM-WEBSTER.COM, https://www.merriam6 See ECF No. 223 at 6; Two-Way Media, LLC & AT&T Servs., Inc., No. SA-09-CA-00476, 2013 WL 12090356, at 

*5–6 (W.D. Tex. Nov. 22, 2013) (Awarding $60,659.56 for graphic and visual consultation and equipment used in 

trial and stating: “In the Fifth Circuit, expenses for the production of various types of non-testimonial evidence—

such as photographs, maps, charts, graphs, and other demonstrative aids—are taxable as costs provided the 

prevailing party obtained court approval before incurring the expense.”); Versata Software, Inc. v. SAP Am. Inc., No. 

2:07-CV-153, 2011 WL 4436283, at *2 (E.D. Tex. Sept. 23, 2011) (awarding $90,090.00 for audio and visual 

professional services and stating: “The use of technology support during trial, particularly in complicated cases such 

as this case, is an anticipated, useful, and necessary tool to assist in the efficient presentation of cases.”); MV3 

Partners LLC v. Roku, Inc., No. 6:18-CV-00308-ADA, 2022 WL 1913619, at *4 (W.D. Tex. June 3, 2022) 

(awarding costs for graphics and trial equipment and stating: “But express authorization by the court is not 

necessary. Requests or invitations to submit tutorials or demonstratives for the Markman hearing and during trial is 

tantamount to pretrial approval.”) (internal citations and quotation marks omitted).

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webster.com/dictionary/exemplification (last visited Aug. 10, 2022) (defining it as an example 

and listing synonyms such as “prototype,” “representative,” and “sample”); Exemplification 

Definition, DICTIONARY.COM, https://www.dictionary.com/browse/exemplification (last visited 

August 10, 2022) (defining it as “something that exemplifies; an illustration or example” or “an 

attested copy of a document, under official seal”). 

Practically speaking, a broader definition than that accepted in United Biologics causes 

an insubstantial difference in taxable costs. While it may allow for and capture the costs beyond 

mere documents, such as physical product samples, this Court’s accepted definition likewise 

excludes expenses incurred for graphics and trial technician services for trial. Trial graphics, trial 

consultant or technician fees, and a vague trial equipment charge from the same third-party trial 

graphics team are not examples, illustrations, prototypes, samples, or the like. Such costs simply 

do not fall within the language of the statute. See Taniguchi v. Kan Pacific Saipan, Ltd., 566 U.S. 

560, 573 (2012) (“Because taxable costs are limited by statute and are modest in scope, we see 

no compelling reason to stretch the ordinary meaning of the cost items Congress authorized in § 

1920.”).

For support, the Court turns to Summit Technology, Inc. v. Nidek Co., Ltd., wherein the 

Federal Circuit outlined its basis for rejecting requested costs in preparing trial exhibits, 

computer animations, videos, PowerPoint presentations, and graphic illustrations and finding that

they were not “exemplifications.” 435 F.3d at 1374–78. The Federal Circuit reviewed the case 

under a First Circuit interpretation, but notably was persuaded “that the First Circuit would adopt 

the narrow, legal definition of the term ‘exemplification’ endorsed by the Fifth Circuit, the 

Eleventh Circuit, and [the Federal Circuit] applying Sixth Circuit law.” Id. at 1377.

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Ultimately, Google’s case support represents a view of § 1920 that the Fifth Circuit 

appears to have abandoned. Compare ECF No. 223 at 5 (citing Fifth Circuit cases from the 

1980s and 1990s), with ECF No. 225 at 5–6 (citing Federal Circuit, Fifth Circuit and District 

Court cases from the 2000s, 2010s, and 2020s). Consequently, the Court agrees with the Federal 

Circuit’s appraisal of the Fifth Circuit’s current approach to the term “exemplification” as 

narrow in scope. See, e.g., U.S. ex rel. Long v. GSDMIdea City, L.L.C., 807 F.3d 125, 133 (5th 

Cir. 2015) (denying costs for “shipping, binding, and tabbing of depositions” as non-taxable 

under § 1920 because “these types of costs are nowhere enumerated in the statute”); Zastrow v. 

Houston Auto M. Imports Greenway, Ltd., 695 F. App’x. 774, 780 (5th Cir. 2017) (denying costs 

for “video setup and playback at trial” because “nothing in the statute authorizes” these costs). 

This interpretation, confirmed by other divisions in this District, avoids “transform[ing] § 

1920(4) from a tool to recover ‘relatively minor, incidental expenses’ into a roving warrant to 

recover potentially millions of dollars expended on graphics and demonstratives.” United 

Biologics, 2021 WL 1968294, at *11. Because nothing in § 1920(4) authorizes taxing costs for 

trial graphics, trial technicians, trial equipment, or equipment for remote trial testimony, either 

explicitly or implicitly, the Court declines to hold Profectus responsible for reimbursing Google 

for these costs.

b) Costs for items outside the statutory provision cannot be curatively 

taxed with pre-authorization.

Because the Court finds that Google’s requested costs are not “exemplative,” no further 

analysis should be required. However, as cited by Google, some courts have historically 

expanded the definition of “exemplification” to incorporate a wide variety of exhibits and 

demonstrative aids. Much of the support for such exemplification costs stems from language 

cited in Two-Way Media which endorses expenses for various types of non-testimonial evidence 

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“provided the prevailing party obtained court approval before incurring the expense.” Two-Way 

Media, 2013 WL 12090356, at *5 (emphasis added). 

Two-Way Media cites to Kellstrom to support this notion. Importantly, the Fifth Circuit’s 

language in Kellstrom indicates that “costs should always be given careful scrutiny.” Kellstrom, 

50 F.3d at 335. Two-Way Media also relies on Studiengesellschaft Kohle mbH v. Eastman Kodak 

Co., 713 F.2d 128, 132–33 (5th Cir. 1983), for the proposition that a court can award costs for 

charts, models and photographs and justify taxation of costs outside the statutory provision if 

pretrial authorization existed. In Kodak, the Fifth Circuit reversed an award of $1,067.97 for 

charts, models, and photographs, finding the record did not show any prior approval. Id. But 

even this analysis hinged on the Court’s opinion in Johns-Manville Corp. v. Cement Asbestos 

Products Co., 428 F.2d 1381, 1385 (5th Cir. 1970), wherein the Fifth Circuit allegedly endorsed 

taxation of costs outside the statutory provision if prior authorization was given. 

After a deep review of the caselaw, the Court is convinced this proposition has since been 

abrogated with a restrictive focus on the language of the statute. See United Biologics, 2021 WL 

1968294, at *14 (detailing the Fifth Circuit’s admission that no statutory provision supported 

taxation of charts and exhibits as costs in applying a “pretrial approval” rule and providing 

detailed analysis of subsequent opinions abrogating such a rule); see also Arcadian Fertilizer, 

L.P. v. MPW Indus. Servs., Inc., 249 F.3d 1293, 1297 (11th Cir. 2001) (“More recently we have 

revisited the holding of Johns–Manville and its conclusion that no statutory provision exists for 

the taxation of these kinds of exhibits, and concluded that the Supreme Court’s determination 

in Crawford Fitting that statutory authorization is an essential prerequisite to an award of costs 

necessarily abrogates that portion of the Johns–Manville decision that condoned taxation if prior 

authorization had been obtained.”). 

Case 6:20-cv-00101-ADA Document 229 Filed 08/15/22 Page 15 of 17
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The Court agrees with and adopts the analysis of Judge Lamberth in the United Biologics

opinion, reasoning that an “atextual tax-whatever-the-court-preapproved approach” has been 

abrogated. 2021 WL 1968294, at *15. Additionally, 

Taxable costs are limited to relatively minor, incidental expenses 

as is evident from § 1920, which lists such items as clerk fees, 

court reporter fees, expenses for printing and witnesses, expenses 

for exemplification and copies, docket fees, and compensation of 

court-appointed experts. Indeed, “the assessment of costs most 

often is merely a clerical matter that can be done by the court 

clerk.” Hairline Creations, Inc. v. Kefalas, 664 F.2d 652, 656 

(C.A.7 1981). Taxable costs are a fraction of the nontaxable 

expenses borne by litigants for attorneys, experts, consultants, and 

investigators. It comes as little surprise, therefore, that “costs 

almost always amount to less than the successful litigant's total 

expenses in connection with a lawsuit.” 10 Wright & Miller § 

2666, at 203. Because taxable costs are limited by statute and are 

modest in scope, we see no compelling reason to stretch the 

ordinary meaning of the cost items Congress authorized in § 1920.

Taniguchi v. Kan Pac. Saipan, Ltd., 566 U.S. 560, 573 (2012). Here, a request for $114,380.00 is 

a staggering amount well beyond “minor, incidental expenses” as outlined in § 1920. Hence, the 

Court reduces Google’s requested costs to only those allowed by the statute and disapproves of 

skirting § 1920(4)’s plain meaning on the basis of pre-authorization.

IV. CONCLUSION

It is therefore ORDERED that Defendant’s Bill of Costs, ECF No. 222, is GRANTEDIN-PART. Google is entitled to the following costs:

• Trial transcription costs in the amount of $12,268.43;

• Deposition transcription costs in the amount of $19,184.51;

• Witness fees in the amount of $3,626.55; and

• Physical trial demonstratives in the amount of $135.74.

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IT IS THEREFORE ORDERED that Plaintiff Profectus Technology LLC pay 

$35,215.23 in costs pursuant to § 1920.

SIGNED this 15th day of August, 2022.

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

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