1

UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

ECOFACTOR, INC.,

Plaintiff,

v.

GOOGLE LLC,

Defendant.

Civil Action No. 6:20-cv-00075 (ADA)

PLAINTIFF ECOFACTOR, INC.’S MEMORANDUM 

IN SUPPORT OF ITS BILL OF COSTS

As the prevailing party in this litigation, Plaintiff EcoFactor, Inc. (“EcoFactor”) hereby 

respectfully requests an award of costs in the amount of $276,412.85 to be taxed against 

Defendant Google LLC (“Google”). Following the jury’s verdict of infringement in favor of 

EcoFactor (Dkt. No. 215), the Court entered Final Judgment on May 26, 2022 (Dkt. No. 244). 

The Court’s Final Judgment expressly awards costs to EcoFactor. See Dkt. No. 244.

The following categories of costs are permitted under 28 U.S.C. § 1920:

(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;

(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.

EcoFactor’s § 1920 costs are enumerated in its [Proposed] Bill of Costs (Dkt. No. 247), 

which is also attached hereto as Exhibit A.

Case 6:20-cv-00075-ADA Document 248 Filed 06/09/22 Page 1 of 8
I. § 1920(2) – “Fees for printed or electronically recorded transcripts necessarily 

obtained for use in this case”

EcoFactor seeks to recover $87,757.60 in costs for printed and electronically recorded 

trial, pre-trial, and deposition transcripts. Section 1920(2) permits EcoFactor, as the prevailing 

party, to recover these costs.

With respect to court proceedings, EcoFactor seeks taxation of costs in the amount of 

$18,000.00 for obtaining daily trial transcripts. These transcripts were necessarily obtained for 

use during trial. The invoice for these transcripts is attached as Exhibit B.

With respect to depositions, EcoFactor seeks taxation of costs in the amount of $69,757.60 

in connection with the depositions of EcoFactor and Google fact and expert witnesses. Costs 

related to depositions are permitted under § 1920(2) if the depositions “were necessarily obtained 

for use in the case.” 28 U.S.C. § 1920(2); Stearns Airport Equip. Co., Inc. v. FMC Corp., 170 

F.3d 518, 536 (5th Cir. 1999). The Fifth Circuit has held that “a deposition need not be introduced 

into evidence at trial in order to be ‘necessarily obtained for use in the case.’” Fogleman v. 

ARAMCO, 920 F.2d 278, 285 (5th Cir. 1991). “If, at the time it was taken, a deposition could 

reasonably be expected to be used for trial preparation, rather than merely for discovery, it may 

be included in the costs of the prevailing party.” Id. Moreover, § 1920(2) also permits taxing costs 

for video recordings of depositions. Nilesh Enters. v. Layers Title Ins. Corp., 2010 U.S. Dist. 

LEXIS 66146, at *8 (W.D. Tex. Jul. 1, 2010) (“Videotape deposition costs and deposition 

transcripts are both recoverable costs”); SynQor, Inv. v. Artesyn Techs., Inc., No. 2:07-cv-497-

TJW-CE, 2011 U.S. Dist. LEXIS 112493, at *9-10 (E.D. Tex. Sep. 30, 2011) (explaining that the 

2008 amendment to § 1920 permits recovery of both deposition transcripts and electronic video 

recordings necessarily obtained for use in the case).

Case 6:20-cv-00075-ADA Document 248 Filed 06/09/22 Page 2 of 8
EcoFactor incurred $69,757.60 in costs for deposition transcripts ($65,004.60) and videos 

($4,753.00) associated with the below-identified witnesses. These transcripts and videos were 

necessarily obtained for use in the case (as summarized in the table below, in chronological order), 

including for the preparation of expert reports, drafting of motions, and preparation for trial. 

EcoFactor is not seeking incidental costs associated with its depositions, such as expedited 

delivery charges or real-time transcription costs. See, e.g., Garzez v. Lopez, No. SA-02-CA-1131-

H, 2008 WL 11461796, at *3 (W.D. Tex. Dec. 31, 2008). In addition, EcoFactor is only seeking 

video costs for the six witnesses who testified by deposition video at trial. See MV3 Partners LLC 

v. Roku, Inc., No. 6:18-cv-00308-ADA, Dkt. No. 433 at 6-7 (W.D. Tex. June 3, 2022).

An itemization of EcoFactor’s taxable deposition costs and supporting invoices are

contained in Exhibit C.

Deponent Name Reasons Why Transcripts Were Necessarily 

Obtained for Use in This Case

James Maccoun 

Google licensing witness, corporate representative, and 30(b)(6) 

witness; testified live at trial

Scott Hublou

Inventor of the asserted patents; testified by deposition video at 

trial

Ruchi Desai 

Google product manager and 30(b)(6) witness; testified live at 

trial

Scott McGaraghan Google executive and 30(b)(6) witness; testified live at trial

Eric Burger 

Google software engineer and 30(b)(6) witness; testified live at 

trial

Dia Kharrat Google software engineer and 30(b)(6) witness

Glen Okita

EcoFactor vice president of engineering and 30(b)(6) witness; 

testified live at trial

Marco Bonvini

Google software engineer and 30(b)(6) witness; testified by 

deposition video at trial

Michael Maigret Google financial executive and 30(b)(6) witness

Tim Clark 

Third-party Bidgely corporate representative; testified by 

deposition video at trial

Adam Grant Third-party Nevada Energy corporate representative

Case 6:20-cv-00075-ADA Document 248 Filed 06/09/22 Page 3 of 8
Deponent Name Reasons Why Transcripts Were Necessarily 

Obtained for Use in This Case

Michael Brown 

Third-party Nevada Energy corporate representative; testified by 

deposition video at trial

Shayan Habib 

EcoFactor CEO, corporate representative, and 30(b)(6) witness; 

testified live at trial

Jeff Gleeson

Google product manager and 30(b)(6) witness; testified by 

deposition video at trial

Ramya Bhagavatula Google software engineer and 30(b)(6) witness

Josh Buffum 

Google software engineer and 30(b)(6) witness; testified live at 

trial

William Yu 

Third-party Trane corporate representative; testified by 

deposition video at trial

Sylvia Hall-Ellis 

Google expert; submitted an expert report on prior art ultimately 

not used at trial

W. Todd Schoettelkotte 

Google damages expert; submitted an expert report; testified live 

at trial

Erik de la Iglesia 

EcoFactor infringement expert; submitted an expert report; 

testified live at trial

David Kennedy 

EcoFactor damages expert; submitted an expert report; testified 

live at trial

David Williams 

Google invalidity expert; submitted an expert report; testified live 

at trial

Don Turnbull

Google non-infringement expert; submitted an expert report; 

testified live at trial

John Palmer 

EcoFactor validity expert; submitted an expert report; testified 

live at trial

Gianna Orozco EcoFactor consultant; deposed by Google

II. § 1920(3) – “Fees and disbursements for printing and witnesses”

EcoFactor seeks to recover $6,656.00 in witness fees for witnesses called during trial. The

statutory costs associated with witness attendance at trial are set forth by 28 U.S.C. § 1821. In

particular, EcoFactor’s costs for each witnesses is 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). An itemization of EcoFactor’s taxable 

Case 6:20-cv-00075-ADA Document 248 Filed 06/09/22 Page 4 of 8
witness costs is contained in Exhibit D, which includes applicable per diem allowances in Waco, 

Texas as prescribed by the Administrator of General Services.

III. § 1920(4) – “Fees for exemplification and the costs of making any materials where

the copies are necessarily obtained for use in the case”

EcoFactor seeks to recover $181,599.25 in costs for printing, copying, and making 

documents for trial necessarily obtained for use in this case. 28 U.S.C. § 1920(4) (2020). 

EcoFactor necessarily incurred $132,823.75 in costs related to the preparation of its trial 

exhibits, graphics, and demonstrative aids. “[C]ourts have considered that in highly technical 

cases, [such as patent cases], trial technology is not only reasonable but necessary.” Two-Way 

Media, LLC v. AT&T Servs., Inc., 2013 U.S. Dist. LEXIS 202556, at *23 (W.D. Tex. Nov. 22,

2013) The use of technology at trial “may be taxed as a cost as long as it is anticipated, useful, 

and a necessary tool to assist in the efficient presentation of cases.” Id. (citing Versata Software, 

Inc. v. SAP Am., Inc., No. 2:07-CV-153, 2011 WL 4436F83, at *2 (E.D. Tex. Sep. 23, 2011)).

EcoFactor incurred substantial expenses in preparing exhibits for use during trial, and its trial 

technician ran EcoFactor’s audio-visual courtroom equipment to ensure that its case was 

efficiently presented to the jury. Because several witnesses testified by remote videoconference, 

the use of electronic exhibits, slides, and videos were especially important in this case. 

EcoFactor’s expenses in this regard are detailed in Exhibit G. Notably, EcoFactor has already 

reduced the amount of its request by over $88,000 by excluding the costs associated with its trial 

technician, which are therefore not highlighted in the invoices of Exhibit G. EcoFactor’s trial 

technician was present and active throughout the entire trial and devoted dozens of hours outside 

of court to preparing exhibits and demonstratives for efficient use during the trial. To be clear, 

EcoFactor maintains that its trial technician costs are properly taxable and has excluded them only 

to further demonstrate the reasonableness of EcoFactor’s request. See, e.g., MV3 Partners LLC v. 

Case 6:20-cv-00075-ADA Document 248 Filed 06/09/22 Page 5 of 8
Roku, Inc., No. 6:18-cv-00308-ADA, Dkt. No. 433 at 10 (W.D. Tex. June 3, 2022) (awarding 

$133,998.89 in graphics costs, which is higher than the amount sought by EcoFactor here).

In addition, EcoFactor seeks to recover $48,775.50 in document reproduction costs that 

necessarily resulted from this litigation. As this Court has recognized, there is a “generally 

accepted rule in the Western District that a prevailing party should be entitled to 50% of its 

document reproduction costs throughout the entire case.” MV3 Partners LLC v. Roku, Inc., No. 

6:18-cv-00308-ADA, Dkt. No. 433 at 10 (W.D. Tex. June 3, 2022); Ushijima v. Samsung Elecs. 

Co., 2015 U.S. Dist. LEXIS 109031, at *12 (W.D. Tex. Jul. 30, 2015) (“Allocating approximately 

50% of the prevailing party’s copying costs is an acceptable, if ‘somewhat crude,’ method of 

accounting for necessary versus unnecessary copies.” (quoting Summit Tech., Inc. v. Nidek, Co., 

435 F.3d 1371, 1378-79 (Fed. Cir. 2006))). An itemization of EcoFactor’s total document 

reproduction costs and supporting invoices are contained in Exhibit F. Because these costs total 

$97,551.00, application of the 50% general rule indicates that EcoFactor is entitled to recover 

$48,775.50 in document reproduction costs.

IV. § 1920(5) – “Docket fees under section 1923 of this title”

EcoFactor seeks to recover $400.00 in costs to compensate for its fee paid to file the 

Complaint in this action (Dkt. No. 1). An itemization of this cost is included in Exhibit E.

V. CONCLUSION

As the prevailing party in this litigation, EcoFactor requests an award of costs in the total 

amount of $276,412.85, as reflected in its [Proposed] Bill of Costs (Dkt. No. 247).

Case 6:20-cv-00075-ADA Document 248 Filed 06/09/22 Page 6 of 8
Date: June 9, 2022 Respectfully submitted,

/s/ Reza Mirzaie

Reza Mirzaie

Marc A. Fenster

Adam S. Hoffman

Paul A. Kroeger

Kristopher R. Davis

James N. Pickens

Minna Chan

Jason Wietholter

RUSS AUGUST & KABAT

12424 Wilshire Boulevard 12th Floor

Los Angeles, California 90025

Tel: 310-826-7474

Fax: 310-826-6991

rmirzaie@raklaw.com

mfenster@raklaw.com

ahoffman@raklaw.com

pkroeger@raklaw.com

kdavis@raklaw.com

jpickens@raklaw.com

mchan@raklaw.com

jwietholter@raklaw.com

Attorneys for Plaintiff EcoFactor, Inc.

Case 6:20-cv-00075-ADA Document 248 Filed 06/09/22 Page 7 of 8
CERTIFICATE OF SERVICE 

I certify that this document is being served upon counsel of record for Defendant on June 

9, 2022 via electronic service.

/s/ Reza Mirzaie

Case 6:20-cv-00075-ADA Document 248 Filed 06/09/22 Page 8 of 8