on point as to whether a Josing party may request these fees as well. The closest the Seventh

Circuit has come to addressing this issue is in Schrott v. Bristol-Myers Squibb Co., 403 F.3d 940,
943 (7th Cir. 2005). In Schrott, the plaintiff filed a state-court action against the defendants, and
eight years of discovery took place before the plaintiff voluntarily withdrew her claims. Id. at
942. Soon thereafter, however, the plaintiff re-filed her state law claims and the defendants
removed the case to federal court. Jd, The district court granted the defendants’ motion for
summary judgment and their request for the deposition fees incurred by their experts in the
federal action. Jd. On appeal, the plaintiff argued that the deposition costs her experts incurred
during the earlier state court action should have been credited against the amount the defendants
were allowed to recover for their expert witness fees. Jd. The Seventh Circuit upheld the district
court’s decision solely on the basis that the costs the plaintiff sought were associated with her
state court action, an entirely independent action from her federal action, and concluded that the
district court had not abused its discretion in imposing the federal costs on plaintiff. Id No
mention was made of the fact that the plaintiff was seeking these costs as a losing party, which
suggests that the plaintiff may have been able to recover her expert witness fees had they arisen
out of the federal action.

Although the Court’s own research has not uncovered a district court case within the
Seventh Circuit where expert witness fees under Rule 26(b)(4)(E) were granted to a losing party
after judgment had been entered against the party, a few district courts have noted that such fees
are not limited to a prevailing party. Nilssen v. Osram Sylvania, Inc., No. 01-3585, 2007 WL
257711, at *7 (N_D. Ill. Jan. 23, 2007) (noting that Rule 26(b)(4)(E) “is silent as to awarding

such fees only to a prevailing party,” and denying award of fees to losing party as manifestly

20


Inre Brand Name Prescription Drugs Antitrust Litig., No. 94-897, 1999 WL 759472, at *7 (N.D.
Il. Sept. 1, 1999) (citations omitted).

Defendants argue that the exemplification was necessary to aid the Court in
understanding the evidence presented in the inequitable conduct hearing held in front of Judge
Anderson. (R. 484, Defs.’ Am. Pet. for Costs at 5.) Plaintiff, however, argues that the
exemplification did just the opposite by creating confusion and requiring briefing by both sides to
clarify the information contained in the exemplification. (R. 488, Pl.’s Objs. at 7.) Indeed, in his
opinion on the inequitable conduct claim, Judge Anderson noted that the exemplification
somewhat mischaracterized some of the facts and evidence in the case. Se-Kure Controls, Inc. v.
Vanguard Prods. Grp., Inc., No. 02-3767, 2010 WL 2266357, at *6 (N.D. Ill. June 4, 2010).
After reviewing the exemplification at issue, the Court notes that almost half of the
exemplification consists of text from testimony and exhibits that was simply blown up. (R. 453-
2, Defs.’ Demonstrative Ex.) The other half consists of figures that were at the center of the
controversy regarding Defendants’ mischaracterization of evidence from the case. (/d.) Thus,
because the exemplification did not aid the Court in deciding relevant issues and merely
illustrated testimony and other evidence that did not require any enhancement or enlargement to
be properly ascertained, the Court concludes that the costs associated with the exemplification
are not recoverable. See Leggett, 149 F. Supp. 2d at 398 (denying exemplification costs where
exhibits aided little in Court’s understanding of the issues and could have easily been presented
through less expensive means). Accordingly, the Court deducts $2,735.00 from Defendants’ bill
of costs.

VII. Expert witness fees

14



balancing the interests implicated by Rule 26. See Royal Maccabees Life Ins. Co., 2001 WL
290308, at *16; McClain, 1996 WL 650524, at *3. The party seeking reimbursement of their
expert witness fees has the burden of demonstrating to the court that the expert’s rate and fee are
reasonable. Royal Maccabees, 2001 WL 290308, at *16. “{I]f the parties provide little evidence
to support their interpretation of a reasonable rate, the court may use its discretion in setting the
reasonable rate.” Id.

Here, Plaintiff does not challenge the hourly rate charged by any of Defendants’ experts
as unreasonable, nor has either party provided any evidence as to the factors mentioned above.
Nonetheless, the Court finds that based on the nature and complexity of this patent infringement
case and the rates charged by Plaintiffs own experts for similar services ($400.00 and $210.00
per hour), the rates sought by each of Defendants’ experts ($150.00, $300.00, and $405.00 per
hour) are reasonable. See Nilssen, 2007 WL 257711, at *5 (allowing reimbursement for expert
fees billed at $400.00 and $450.00 per hour in patent infringement case); Top Tobacco, L.P. v. N.
Atl. Operating Co., No. 06-50, 2007 WL 1149220, at *8-9 (N.D. Ill. Apr. 17, 2007) (allowing
rates of $495.00 and $500.00 per hour in trademark infringement case); but see Liquid Dynamics,
2002 WL 31207212, at *3 (denying rate of $460.00 per hour as unreasonable in patent
infringement action where party offered no information regarding expert’s area of expertise and
awarding instead the rate charged by the opposing party’s own expert, $325.00 per hour);
Abrams v. Van Kampen Funds, Inc., No. 01-7538, 2006 WL 452419, at *2-3 (N.D. Ill. Feb. 21,
2006) (capping allowable rates at $350.00 per hour for experts in securities class action case
where party offered little evidence in support of rate sought); Profile Prods., LLC v. Soil Mgmt.

Techs., Inc., 155 F. Supp. 2d 880, 886-87 (N.D. Ill. 2001) (reducing forensic accountant’s rate

24



within the 30-day time limit imposed by Local Rule 54.1(a). The fact that Defendants added
entirely new costs to their amended petition is of no consequence since Plaintiff has had the
opportunity to properly challenge the new costs on the merits (and in a timely fashion), and the
Court can now, in turn, fully address the merits of each side’s arguments. Rules regarding
procedural time limits exist to prevent one party from getting blind-sided and left unable to
properly address issues raised by the opposing side. No such unfair prejudice to Plaintiff exists
here. Thus, Defendants’ amended petition for costs, which was filed within the 30-day time limit
imposed by Local Rule 54.1(a), is timely. See Shanklin Corp. v. Am. Packaging Mach., Inc., No.
95-1617, 2006 WL 2054382, at *1 n.1 (N.D. Ill. July 18, 2006) (treating original petition for
costs as moot in light of amended petition for costs submitted within the 30-day time period).
Ill. Court Transcripts

Defendants request $782.04 in costs for court transcripts pursuant to 28 U.S.C. § 1920(2).
(R. 484, Defs.’ Am. Pet. for Costs at 4.) A prevailing party may recover costs for court
transcripts “necessarily obtained for use in the case.” 18 U.S.C. § 1920(2). “[T]ranscripts need
not be absolutely indispensable in order to provide the basis of an award of costs; it is enough if
they are ‘reasonably necessary.”” Shanklin Corp., 2006 WL 2054382, at *2 (quoting Barber v.
Ruth, 7 F.3d 636, 645 (7th Cir. 1993)). According to Defendants, they “only ordered the court
transcripts when it was necessary to refer to in writing briefs for the Court.” (R. 484, Defs.’ Am.
Pet, for Costs at 4.) In support, Defendants have included four invoices for costs associated with
transcripts of court hearings for the following dates: August 6, 2002, September 30, 2005,
October 3, 2007, February 27, 2008, and April 3, 2008. (R. 484-1, Defs.’ Ex. C at 2-5.) As an

initial matter, Plaintiff correctly objects that these invoices only add up to $368.04. (R. 488, PL.’s



unjust); E.E.0.C. v. Sears, Roebuck and Co., 138 F.R.D. 523, 526-27 (N.D. Ill. 1991) (awarding

fees following judgment for prevailing party but noting that “Rule 26 applies not only to
prevailing parties” and thus the losing party could recover its own fees if it so requested); see
also Barnett, 1999 WL 138813, at *6 (denying award of expert witness fees to losing party
because award would be unjust, and not because requesting party was the losing party).

Courts in other jurisdictions have also allowed a losing party to recover expert witness
fees post-judgment pursuant to Rule 26(b)(4)(E). For example, in Louisiana Power & Light Co.,
the prevailing plaintiff won a jury verdict against several defendants and submitted a petition for
costs to the district court that, in addition to attorneys’ fees and other taxable costs, sought to
recover expert witness fees under Rule 26. 50 F.3d at 323. Two of the losing defendants
challenged the plaintiff's request and submitted their own Rule 26 requests. Id. The district
court granted the prevailing plaintiff's Rule 26 request, while denying the same to the losing
defendants. /d, On appeal, the Fifth Circuit reversed and remanded the district court’s denial of
Rule 26(b)(4)(E) costs to the defendants, and applied the losing defendant’s recoverable Rule
26(b)(4)(E) expert witness fees as a credit against the costs recoverable by the prevailing
plaintiff. Id. at 336-37. The Fifth Circuit explained that Rule 26(b)(4)(E) “applies to both
parties, not just to the prevailing party.” Jd. at 333. Thus, the Fifth Circuit reasoned, the district
court erred when it denied the losing defendants’ request to recover their own expert witness fees
under Rule 26(b)(4)(E) as well. Jd. Similarly, the Ninth Circuit in United States v. City of Twin
Falls, Idaho, reasoned that the losing party was entitled to have a district court consider its
request for reimbursement of fees under Rule 26(b)(4)(E) and held that the district court had

erred in refusing to award the losing party its expert witness fees pursuant to Rule 26(b)(4)(E).

21



Plaintiff's objections that Herbst’s and Despres’ fees are not adequately supported by
Defendants’ petition are not without merit. Despres’ invoice consists of a single line item that
describes everything he worked on for the case, beyond just his deposition, totaling 58 hours of
work that was billed to Defendants. (R. 484-2, Defs.’ Ex. E at 26.) Although Despres’ work in
preparing for and attending his deposition is not itemized separately, Defendants have only
requested to be reimbursed for a total of 16 hours for this work (8 hours for preparation time and
8 hours for actual deposition time). (R. 484, Defs.’ Am. Pet. for Costs at 3-4.) Similarly, while
Herbst’s invoice consists simply of a statement charging Defendants 60 hours “[flor professional
services rendered as an ‘expert witness,’” and does not specify the work he performed for the
case, (R. 484-2, Defs.’ Ex. E at 24), Defendants are only requesting reimbursement for 16 hours
of his time. (R. 484, Defs.’ Am. Pet. for Costs at 3-4.)

Despite the lack of detail, Plaintiff does not challenge this breakdown as incorrect, nor
has Plaintiff offered evidence or even suggested that each expert’s deposition lasted for a length
of time different than what Defendants have asserted. In general, “[w]here the parties offer little
evidence to support their positions, the court may use its discretion in determining the
reasonableness of the charged fee.” Liquid Dynamics, 2002 WL 31207212, at *3 (citing
McClain, 1996 WL 650524, at *4). Considering that Plaintiff does not dispute Defendants’
breakdown of their experts’ preparation and deposition times as incorrect, and that 16 hours
requested for each expert’s deposition preparation and attendance falls well within the 3 to 1
ratio established by the Court, the Court finds the amount of time expended by Herbst and
Despres to be reasonable. See Top Tobacco, 2007 WL 1149220, at *8 (approving deposition and

preparation time on a 2 to 1 basis where times were not itemized and length of expert’s

27



Tn

for and attending his deposition, at a rate of $405.00 per hour, for a total of $6,480.00. (/d. at 3.)
| Herbst, Defendants’ technical expert, also spent 16 hours preparing for and attending his
deposition, at a rate of $300.00 per hour, for total of $4,800.00. (/d.) Despres, another technical
expert, also spent 16 hours preparing for and attending his deposition, at a rate of $150.00 per
hour, for a total of $2,400.00. (/d.)
Again, under Rule 26(b)(4)(E), compensating an expert for time spent in responding to

discovery is mandatory. Fed. R. Civ. P. 26(b)(4)(E). Additionally, the rule requires that: (1) the

costs of the expert not be imposed if doing so will result in manifest injustice; and (2) the '
expert’s fees be reasonable. Royal Maccabees Life Ins. Co. v. Malachinski, No. 96-6135, 2001

WL 290308, at *15 (N.D. Ill. Mar. 20, 2001); see also Gwin v. Am. River Transp. Co., 482 F.3d

969, 975 (7th Cir. 2007) (“[BJefore refusing to order a deposing party to pay the other party’s

expert, the district court must explicitly find either manifest injustice or that the fee was

unreasonable.”); City of Twin Falls, Idaho, 806 F.2d at 880 (remanding to district court with

instructions that “absent manifest injustice, the district court should award both the [prevailing

party] and [the losing party] their reasonable expert witness fees incurred as a result of the

opposing party’s discovery depositions”)

In general, courts determine the reasonableness of an expert’s fee by considering the
following factors: (1) the expert’s area of expertise; (2) the education and training required to
provide the expert insight that is sought; (3) the prevailing rates of other comparably respected
available experts; (4) the nature, quality, and complexity of the discovery responses provided; (5)
the fee actually being charged to the party that retained the expert; (6) fees traditionally charged

by the expert on related matters; and (7) any other factor likely to be of assistance to the court in

23


McClain v. Owens-Corning Fiberglass Corp., No. 89-6226, 1996 WL 650524, at *2 (N.D. Ill.
Nov. 7, 1996) (same); Mendenhall v. Barber Greene Co., No. 80-6747, 1991 WL 18189, at *1
(N.D. Ill. Feb. 7, 1991) (same); Cf Native Am. Arts, Inc. v. Indio Products, Inc., No. 06-4690,
2012 WL 729291, at * 2 (N.D. Ill. Mar. 6, 2012) (preliminarily noting that prevailing defendant
improperly included its request for expert witness fees in its request for taxable costs under 18
U.S.C. § 1920 and that “Rule 26(b)(4)(E) allocates expert witness fees to the party seeking
discovery and does not allow a party to recover such fees simply because it prevailed”). The
same is true in other jurisdictions. See, e.g., Trepel v. Roadway Express, Inc., 266 F.3d 418, 427
(6th Cir. 2001) (holding that Rule 54 did not preclude the prevailing party from obtaining post-
judgment reimbursement of its expert witness deposition fees authorized under Rule 26); La.
Power & Light Co. v. Kellstrom, 50 F.3d 319, 332 (5th Cir. 1995) (noting that Rule 26(b)(4)(E)
“provides an independent basis for recovery of expert witness fees as part of discovery”);
Lancaster v. Lord, No. 90-5843, 1993 WL 97258, at *2 n.9 (S.D.N.Y. Mar. 31, 1993) (allowing
post-judgment recovery of expert witness fees pursuant to Rule 26(b)(4)(E)).

A few district courts within the Seventh Circuit, however, have tied a party’s recovery of
its expert witness fees under Rule 26(b)(4)(E) to Rule 54(d). For example, in Fairley v.
Andrews, which Defendants rely upon, the district court interpreted Chambers as holding that
“expert witness fees pursuant [to Rule 26(b)(4)(E)] are recoverable as costs under Rule 54(d).”
2008 WL 961592, at *4 (emphasis added.) Similarly, the district court in Sampson v. Orkin
Exterminating Co., Inc. interpreted Chambers as holding that “an expert witness fee due under
[Rule 26(b)(4)(E)] could be imposed as a cost pursuant to Federal Rule of Civil Procedure

54(d).” 124 F.R.D. 631, 635 (N.D. Ind. 1989) (emphasis added). To the extent these cases

18



Trading Techs. Int'l, Inc. v. eSpeed, Inc., 750 F. Supp. 2d 962, 969 (N.D. Ill. 2010).

Plaintiff argues that Defendants should not be allowed to recover any of their copying
costs because they have provided insufficient evidence to demonstrate that these costs are
properly recoverable. (R. 488, Pl.’s Objs. at 5.) Defendants, for their part, have submitted
various invoices for photocopying that was outsourced during the course of litigation. (R. 484-2,
Defs.’ Ex. D at 6-22.) While the invoices provide the dates, number of sets created, quantity of
pages copied, and rates charged per copy, none of the invoices describe the nature of the
documents copied, or the purpose of the copies. See Leggett & Platt, Inc. v. Hickory Springs
Mfg. Co., 149 F. Supp. 2d 394, 397 (N.D. Ill. 2001) (denying copying costs due to lack of
information regarding “the purpose of the copies, whether multiple copies were made of the same
document or what documents were copied”). Without more information, it is difficult for the
Court to discern whether Defendants seek reimbursement for copies that were necessarily
incurred for the litigation or made solely for the convenience of counsel. See Brown, 2011 WL
4007333, at *4 (“Simply pointing the Court to an exhibit containing numerous invoices is not
sufficient documentation of costs and does not provide the Court with the information necessary
to determine whether the costs were necessary or were made for the sake of convenience.”).

Defendants attempt to overcome this deficiency by stating that most of the copy costs
they have submitted for reimbursement “occurred during the preparation of the taking and
defending of depositions.” (R. 484, Defs.’ Am. Pet. for Costs at 5.) They also argue that the
total amount they are seeking in copying costs is reasonable for several reasons. First,
Defendants assert that they are only seeking copying costs for photocopies that they outsourced

and not the countless copies Defendants’ counsel made in-house. (Id. at 4-5.) Second,

10


mention “deposition” only add up to 24 hours. (R. 488-1, Pl.’s Ex. A at 4, 7.) Those entries that

mention the term “deposition” are listed below:

Date Description Hours
1/24/2007 Deposition Preparation. 1.0
1/26/2007 Deposition Preparation. 4.0
1/31/2007 Deposition Preparation. 2.0
2/2/2007 Deposition transcript review; document review. 2.0
2/3/2007 Deposition transcript review; document review. 3.0
2/6/2007 Deposition preparation and testimony. 12.0
Total Hours: 24.0

Plaintiff has failed to inform the Court as to the length of time of Leveko’s deposition. In

the absence of this information, the Court, in the exercise of discretion, allows Plaintiff to

recover 7 hours for Levko’s deposition—the same amount of time as the deposition for Plaintiff's

other expert, DiLonardo, and treats the remaining 5 hours from February 6th as preparation time.

Liquid Dynamics, 2002 WL 31207212, at *3. With respect to Levko’s total preparation time,

Plaintiff fails to provide additional insight into the entries from February 2nd and February 3rd,

when Levko spent time reviewing a deposition transcript, which presumably was not his own

deposition transcript considering that his deposition had yet to take place, and reviewing

documents. Accordingly, the Court discounts these 5 hours from the amount of time Levko spent

preparing for his own deposition, which yields a total of 12 hours of preparation time that the

Court will allow, and 7 hours of actual deposition time for a grand total of 19 hours. Applying

the 3 to 1, preparation time to deposition time ratio, the Court finds that the 12 hours of

preparation and 7 hours of deposition time fall within the ratio. Accordingly, the Court allows

30



No. 07-4196, 2010 WL 2610192, at *2 (N.D. Ill. June 24, 2010). Accordingly, the Court allows

Defendants to recover the full $22.00.

Defendants also requested an original of a daily transcript of the September 30, 2005
hearing at a rate of $5.50 per page, for a total of $253.00, and first copies of an expedited
transcript of the October 3, 2007 and February 27, 2008 hearing transcripts at a rate of $.90 per
page, for a total of $1 1.70. (R. 484-1, Defs.’ Ex. C at 3-4.) Between February 28, 2003, and
November 1, 2007, parties could recover $3.30 per page for an ordinary transcript, $4.40 per
page for an expedited transcript, and $0.83 per page for first copies of each, as well as $5.50 per
page for a daily transcript, and $1.10 per page for a first copy of a daily transcript. Fairley v.
Andrews, No. 03-5207, 2008 WL 961592, at *5 (N.D.IIl. Apr. 8, 2008); Angevine v. WaterSaver
Faucet Co., No. 02-8114, 2003 WL 23019165, at *3 (N.D.IIl. Dec. 23, 2003) (citing General
Order, United States District Court, Northern District of Illinois, Feb. 28, 2003); Black and
Decker v. Bosch Tools, No. 04-7955, 2006 WL 3883921, at *2 (N.D.IIl. Nov. 20, 2006). Again,
to recover the added costs of expedited transcripts, a party must “show that it was reasonable and
necessary to order transcripts on an expedited basis.” Neuros Co., Ltd., 2011 WL 3841683, at
*2,. Because Defendants offer no justification for expedited service for either the September 30,
2005 or October 3, 2007 transcripts, they may only recover costs at the ordinary transcript rate,
which was $3.30. See Shanklin Corp., 2006 WL 2054382, at * 3. Thus, Defendants may recover

a total of $151.80 for the September 30, 2005 transcript (46 pages at a rate of $3.30 per page).

? Defendants submitted an invoice for $11.70 for costs associated with both the October
3, 2007 and February 27, 2008 hearing transcripts. Because the invoice is unclear about the
number of pages to allocate to each transcript, the Court treats the entire invoice as a request for
the costs associated with the October 3, 2007 hearing transcript.

7



Objs. at 4-5.) Additionally, under Local Rule 54.1(b),“the costs of the transcript . . . shall not

exceed the regular copy rate as established by the Judicial Conference of the United States and in
effect at the time the transcript or deposition was filed[.]” N.D. Ill. L.R. 54.1(b). The Court
reviews each invoice in turn.

Defendants requested first copies of a daily transcript of the August 6, 2002 hearing
transcript at a rate of $1.10 per page, for a total of $22.00. (R. 484-1, Defs.’ Ex. C at 2.) In
2002, the rate established by the Judicial Conference for an original ordinary transcript was $3.00
and $0.75 for a copy, whereas the rate for an original daily transcript was $5.00 and $1.00 for a
first copy of a daily transcript. Cengr v. Fusibon Piping Sys., Inc., 135 F.3d 445, 455 (7th Cir.
1998); Newsome v. McCabe, No. 96-7680, 2002 WL 1008472, at *12 (N.D.IIl. May 17, 2002)
(citing VI Judicial Conference of the United States, Guide to Judiciary Policies & Procedures,
Court Reporters Manual, ch. 20, pt. 20.3 (1998)). Additionally, “[p]arties cannot recover the
added cost of expedited transcripts unless they can show that it was reasonable and necessary to
order transcripts on an expedited basis.” Neuros Co., Ltd. v. Kturbo, Inc., No. 08-5939, 2011
WL 3841683, at *2 (N.D.IIL. Aug. 25, 2011). Here, Defendants have not provided any
explanation as to why they obtained a copy of a daily transcript, so they may only recover costs at
the ordinary transcript rates. Additionally, although Defendants seek costs for copies of the
August 6, 2002 hearing transcript, rather than for an original transcript, under Local Rule 54.1,
they are nevertheless entitled to recover the full charge of $1.10, because it does not exceed the
highest maximum rate of $3.00 for an original ordinary transcript. See Capeheart v. Hahs, No.
08-1423, 2011 WL 1837817, at *1 (N.D.IIl. May 12, 2011) (citing Fletcher v. Chi. Rail Link,

LLC, No. 06-842, 2007 WL 4557816, at *1 (N.D.IIl. Dec. 20, 2007)); Gallagher v. Gallagher,


suggest that Rule 54(d) in some way limits recovery under Rule 26(b)(4)(E), and thus contradict

the interpretation adopted by a majority of the courts in this District, the Court declines to follow
such an interpretation.

This does not end the matter, however, as Plaintiff is seeking to recover expert witness
fees for two of its experts who were deposed in 2007 pursuant to Rule 26 despite the fact that it
is not a prevailing party. Under Rule 26(b)(4), parties may depose an opposing party’s expert
witnesses under certain circumstances. Fed. R. Civ. P. 26(b)(4)(A), (D). And, pursuant to Rule
26(b)(4)(E), a “court must require that the party seeking discovery pay the expert a reasonable fee
for time spent in responding to discovery[,]” unless “manifest injustice” will result. Fed. R. Civ.
P. 26(b)(4)(E). The purpose of the rule “is to avoid the unfairness of requiring one party to
provide expensive discovery for another party’s benefit without reimbursement.” See United
States v. City of Twin Falls, Idaho, 806 F.2d 862, 879 (9th Cir. 1986), overruled on other
grounds as recognized by Ass'n of Flight Attendants v. Horizon Air Indus., Inc., 976 F.2d 541
(9th Cir. 1992), (citing 4 J. Moore, J. Lucas, & G. Grotheer, Jr., Moore’s Federal Practice,
26.66[5] (2d ed. 1984)); see also 8A Charles Alan Wright, et al., Federal Practice & Procedure §
2034 (3d ed. 2010). The language of the rule is mandatory, and neither the rule nor the Advisory
Committee Notes distinguish between a prevailing party and a losing party. Thus, the plain
language of the rule suggests that both prevailing and losing parties are entitled to recover their
expert witness fees under Rule 26(b)(4)(E), unless the Court concludes that manifest injustice
would result.

While the plain language of Rule 26(b)(4)(E) supports this conclusion, the Court has not

found any Seventh Circuit authority, nor has Plaintiff provided any additional authority, directly

19



2-4.) Plaintiff also submitted a detailed chart demonstrating that Defendants should only recover
$16,355.30 in deposition transcript costs. (R. 483, Pl.’s Objs. at 2-4; R. 483-1, Pl.’s Ex. A at 2.)
In their amended petition for costs, Defendants adopted this amount, (R. 484, Defs.’ Am. Pet. for
Costs at 4), and Plaintiff did not submit additional objections. (R. 488, Pl.’s Objs.) Upon
review, the Court finds that the costs submitted, as revised by Plaintiff and adopted by
Defendants, are recoverable and awards Defendants $16,355.30 in deposition transcript costs.
Vv. Copying Costs

Defendants also seek $5,501.43 in copying costs pursuant to 28 U.S.C. § 1920(4).
(Defs.’ Am. Pet. for Costs at 4-5.) A prevailing party may recover costs for copies of materials
that were “necessarily obtained for use in the case.” 28 U.S.C. § 1920(4). This includes costs for
copies related to discovery and copies of pleadings, motions, and memoranda submitted to the
court, but it does not include copies made solely for the convenience of counsel. Mcllveen v.
Stone Container Corp., 910 F.2d 1581, 1584 (7th Cir. 1990); Swan Lake Holdings, LLC v.
Yamaha Golf Car Co., No. 09-228, 2011 WL 1869389, at *3 (N.D. Ind. May 13, 2011). A
prevailing party is “not required to submit a bill of costs containing a description so detailed as to
make it impossible economically to recover photocopying costs.” Northbrook Excess and
Surplus Ins., Inc. v. Procter & Gamble Co., 924 F.2d 633, 643 (7th Cir. 1991). Instead, a
prevailing party need only “provide the best breakdown obtainable from retained records.” Id.
Where a party fails to substantiate all of the costs it claims were necessary and reasonable, the

Court will “reduce the costs to the level supported by [the party’s] proof—even if that is zero.”

3 Although Defendants state that they seek $5,495.00 in costs, the invoices they have
submitted in support total $5,501.43. The Court relies on the latter amount in calculating the
amount Defendants may be awarded.



from $475.00 to $250.00 per hour as more reasonable in breach of contract case); McClain, 1996
WL 650524, at *4 (reducing rate from $400.00 to $250.00 per hour for expert in asbestos
personal injury and wrongful death case). Thus, the Court will award fees to the Defendants
based on Kuyk’s rate of $405.00 per hour, Herbst’s rate of $300.00 per hour, and Despres’ rate of
$150.00 per hour.

Although Plaintiff did not contest the hourly rates charged by Defendants’ experts,
Plaintiff does contest the amount of time Herbst and Despres spent in preparing for and attending
their depositions. (R. 488, Pl.’s Objs. at 3.) Specifically, Plaintiff argues that their fees should
not be recoverable because their billing statements do not provide an adequate breakdown of the
time they actually spent preparing for and attending their depositions. (/d.) Defendants admit
that Herbst’s and Despres’ billing statements are not as detailed as Kuyk’s, but contend that the
amount of time Defendants are seeking to be reimbursed for their experts’ services is “very
reasonable and conservative.” (R. 484 Defs.’ Am. Pet. for Costs at 4.)

In general, courts in this District have concluded that, under Rule 26(b)(4)(E), it is
reasonable for a party to recover expert witness fees from the opposing party for the time an
expert spent both preparing for and attending a deposition conducted by the opposing party.” See
LG Elecs. USA, Inc. v. Whirlpool Corp., No. 08-0242, 2011 WL 5008425, at *4 (N.D. Ill. Oct.
20, 2011); Waters, 526 F. Supp. 2d at 900; Collins v. Vill. of Woodridge, 197 F.R.D. 354, 357

(N.D. Ill. 1999) (reviewing the mixed authority and deciding that a better reading of Rule

7 Plaintiff briefly mentions in a footnote that there is mixed authority on this issue, but
ultimately acknowledges that Waters v. City of Chicago, 526 F.Supp.2d 899 (N. .D.Ill. 2007),
recognizes that the majority view tends towards including expert preparation. (R. 488, Pl.’s
Objs. at 3 n.1.)

25



UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
SE-KURE CONTROLS, INC., )
Plaintiff, }

v. } No. 02 C 3767
VANGUARD PRODUCTS GROUP, } Judge Ruben Castillo
INC., and TELEFONIX, INC., )

Defendants. }

MEMORANDUM OPINION AND ORDER

On December 3, 2010, after multiple proceedings before now-retired Judge Anderson,
this Court entered judgment in favor of Vanguard Products Group, Inc., and Telefonix, Inc.,
(“Defendants”) and against Se-Kure Controls, Inc., (“Plaintiff”) on Plaintiff's claims and
Defendants’ counterclaims in a patent infringement action and dismissed the case with prejudice.
(R. 481, Entry J.) This judgment was affirmed by the Federal Circuit on November 21, 2011.
Se-Kure Controls, Inc. v. Vanguard Prods. Grp., Inc., 438 Fed.Appx. 902, 903 (Fed. Cir. 2011).
Presently before the Court is Defendants’ petition for costs. (R. 484, Defs.’ Am. Pet. for Costs.)
Defendants seek $38,693.77! in costs and expert witness fees pursuant to Federal Rules of Civil
Procedure 54(d) and 26(b)(4)(E). (/d.) Plaintiff filed objections to Defendants’ costs and

included a request for its own expert witness fees pursuant to Rule 26(b)(4)(E). (R. 488, Pl.’s

' Although Defendants state that they seek $38,667.34 in costs, (R. 484, Defs.’ Am. Pet.
for Costs at 2), Defendants have actually identified a total of $38,693.77 in costs in their
amended petition for costs ($13,680.00 in expert witness fees, $16,355.30 in deposition transcript
costs, $782.04 in court transcript costs, $5,501.43 in copying costs (as calculated by the invoices
actually provided), and $2,375.00 in exemplification costs).

1



together total $3,330.75. (See R. 484-2, Defs.’ Ex. D at 7-12, 17-15.) The remaining five

invoices are clearly marked as relating to the SeKure v. Vanguard matter, and total $2,170.68.
(Id. at 13-16, 22.)

Based on the information Defendants have proffered, however, the Court cannot verify
with absolute certainty that these remaining costs were necessary for the litigation and not simply
for the convenience of counsel. Yet, more certainty has inhered by deducting some of the
invoices that Plaintiff has validly objected to. The Court remains mindful of Defendants’
assertions in support of its costs regarding the difficulty of keeping track of all copying costs in a
case of this size, Northbrook, 924 F.2d at 643, and recognizes that Defendants “inevitably
incurred compensable copying costs as a result of this document-intensive litigation.” Trading
Techs., 750 F. Supp. 2d at 980; see also Carpenter v. Ford Motor Co., No. 90-5822, 1993 WL
34831, at *3 (N.D. Ill. Feb. 11, 1993) (“Although we find Ford’s request to be lacking in
specificity, we recognize that within Ford’s request there undoubtedly exist charges for copies
that were necessarily for use in the case.”). Although the Seventh Circuit has previously affirmed
a district court’s award for copying costs in full that lacked much substantiation, courts in this
district faced with this very dilemma, have more typically either reduced copying costs by a
percentage or denied copying costs altogether. See Northbrook, 924 F.2d at 643 (affirming
$50,930.45 in copying costs based on documentation that only established the copies were made
for the case in general); Trading Techs., 750 F. Supp. 2d at 980 (75 percent reduction); Brown,
2011 WL 4007333, at *4 (50 percent reduction); Leggett, 149 F. Supp. 2d at 397 (denied in full);
Telular, 2006 WL 1722375, at *5 (same). In light of the roughly 60% reduction already imposed

on Defendants’ requested copying costs based on Plaintiff's objections, Defendants’ assertions as

12



Defendants assert that it would have been “nearly impossible” to properly identify and attribute
all of the photocopying they produced in light of what Defendants claim were the more than
100,000 pages of documents produced by the parties, over 30 depositions taken, and more than
500 deposition exhibits marked and used. (Jd. at 5.) Finally, Defendants reason that these costs
are reasonable in general because of the size and length of this case, which lasted almost eight
years. (Id.)

Plaintiff argues that Defendants’ assertions are still not enough to allow recovery for
these costs. Specifically, Plaintiff argues that Defendants’ claim that “most” of the copying costs
were related to depositions is highly suspect since some dates on Defendants’ invoices do not
entirely line up with dates of the depositions in this case, as documented by Plaintiff. (R. 488,
Pl.’s Objs. at 5-6.) For instance, Plaintiff points out that the last deposition Defendants
conducted occurred on February 22, 2007, yet many of the invoices Defendants submitted are
dated after that date. (/d. at 6; R. 488-1, Pl.’s Ex. C. at 16.) According to Plaintiff, considering
that it conducted the remaining depositions, it is unclear why Defendants would need to make
copies for depositions Plaintiff was taking. (R. 488, Pl.’s Objs. at 6.) Moreover, Plaintiff points
out that in light of the related litigation involving Plaintiff that was simultaneously being handled
by Defendants’ counsel in a separate case, it is “impossible” to discern whether invoices that are
simply marked “Se-Kure” relate to the instant case or the related case. (/d.)

Plaintiff's objections have merit. In light of these objections and the supporting evidence,
Plaintiff has met its burden of affirmatively showing that Defendants are not entitled to all of the
costs they seek. MT. Bonk, 945 F.2d at 1409. Accordingly, the Court will deduct from

Defendants’ costs the 10 invoices dated after the last deposition Defendants conducted, which

11



CONCLUSION

For the foregoing reasons, the Court grants in part and denies in part Defendants’
amended petition for costs (R. 484). Defendants’ bill of costs, requesting $38,693.77, is reduced
by $20,263.44 ($515.20 (court transcripts) + $3,330.75 (copying costs) + $2,375
(exemplification) + $14,042.49 (expert witness fees credited to Plaintiff). Defendants are
awarded costs taxable to Plaintiff in the amount of $18,430.33 ($38,693.77 (total costs requested)
- $20,263.44 (total deductions)).

It is this Court’s hope that this order will bring this long-pending litigation, which has

been handled by multiple judicial officers, to an end.
ENTERED: MEW Z ee

Ruben Castillo
United States District Judge

Date: July 5, 2012

32



Plaintiff to recover $7,600.00 in fees for Levko (19 hours at $400.00 per hour).

Lastly, the Court finds that there would be no manifest injustice in allowing Plaintiff to
recover these fees against Defendants. While Defendants’ counterclaims against Plaintiff in this
case included a charge of inequitable conduct for pursuing this patent infringement suit against
Defendants, unlike the court’s finding in Nilssen, 2007 WL 257711, at *7-10, Judge Anderson
did not make a finding of inequitable conduct by Plaintiff in this case. Se-Kure, 2010 WL
2266357, at *1. In addition, allowing Plaintiff to recover these fees fulfills the purposes of Rule
26(b)(4)(E), which is to ensure that a party seeking discovery in the form of a deposition and
taking advantage of all of the benefits that flow therefrom does not obtain for free what the other
party has paid for. See 8A Charles Alan Wright, et al., Federal Practice & Procedure § 2034 (3d
ed. 2010); Fed. R. Civ. P. 26(b)(4)(E) advisory committee’s note (noting that the information
obtained from an expert retained in anticipation of litigation or trial preparation but who is not
expected to testify “is of direct value to the discovering party’s preparation of his case.”).

The fact that Plaintiff is not the prevailing party in this case is, again, irrelevant with
respect to the issue of expert witness fees. Thus, finding no manifest injustice against
Defendants, Plaintiff shall be awarded a total of $14,042.49 in expert witness fees pursuant to

Rule 26(b)(4)(E).

31



Additionally, although Defendants seek costs for copies of the October 3, 2007 hearing

transcript, rather than for an original transcript, under Local Rule 54.1, they may nevertheless
recover up to the full charge of $0.90, because it does not exceed the highest maximum rate
established by the Judicial Conference for an original ordinary transcript. Capeheart, 2011 WL
1837817, at *1. Accordingly, the Court allows Defendants to recover $11.70 for the October 3,
2007 hearing transcript (13 pages at a rate of $0.90 per page).

Finally, Defendants also requested first copies of an ordinary transcript of the April 3,
2008 hearing transcript at a rate of $0.83 per page, for a total of $81.34. (R. 484-1, Defs.’ Ex. C
at 5.) After November 1, 2007, parties could recover up to $3.65 per page for ordinary
transcripts and $0.90 per page for a first copy. Brown v. Cnty. of Cook, No. 06-617, 2011 WL
4007333, at *2 (N.D.III. Sep. 8, 2011); Nat'l Prod. Workers Union Ins. Trust v. Life Ins. Co. of
N. Am., No. 05-5415, 2010 WL 2900325, at *3 (N.D. Ill. July 21, 2010). Accordingly, the Court
grants Defendants the full $81.34 requested (98 pages at a rate of $0.83 per page).

In sum, the Court reduces Defendants’ request by $515.20 and allows Defendants to
recover a total of $266.84 in transcript costs.
IV. Deposition Transcripts

Defendants’ original petition for costs requested $31,240.53 in costs for deposition
transcripts pursuant to 28 U.S.C. § 1920(2). (R. 482, Defs.’ Pet. for Costs at 2.) In response,
Plaintiff raised several objections to Defendants’ claimed costs, including objections to charges
that are not recoverable such as “condensed” and ASCII transcripts, rates that exceeded the
maximum rates established by the Judicial Conference and the allowable limit under Local Rule

54.1(b), and a deposition that was not “reasonably necessary” to the case. (R. 483, Pl.’s Objs. at



806 F.2d at 879. Finally, in Lancaster v. Lord, the district court for the Southern District of New
York allowed the plaintiff to recover expert witness fees pursuant to Rule 26(b)(4)(E) after a jury
verdict had been entered against her. 1993 WL 97258, at *2. The fact that the plaintiff did not
prevail on her claim did not impact the court’s decision. These decisions clearly support the
Court’s conclusion that recovery of expert witness fees under Rule 26(b)(4)(E), even after
judgment has been issued, is not limited to prevailing parties.> Accordingly, the Court considers
both Defendants’ and Plaintiff’s Rule 26(b)(4)(E) requests.

B. Defendants’ request for expert witness fees®

Defendants seek a total of $13,680.00 in fees submitted by three of their expert witnesses
in connection with their depositions: Charles Kuyk, Walter Herbst, and Mark Despres. (R. 484,

Defs.’ Am. Pet. for Costs at 3-4.) Kuyk, Defendants’ damages expert, spent 16 spent preparing

5 Plaintiff appears to raise an argument as to the timeliness of Defendants’ request, but
fails to develop the point. (R. 488, Pl.’s Objs. at 4.) The Court declines to make a finding as to
the timelines a party must adhere to when requesting expert witness fees pursuant to Rule
26(b)(4)(E) as both parties in the instant case, like the prevailing party in Chambers, have
requested these costs soon after final judgment was entered and in connection with or in response
to a petition for costs. 858 F.2d at 354, 361 (request was not untimely where the request for fees
was included in the prevailing plaintiff's bill of costs filed within 30 days of the district court’s
entry of judgment); cf La. Power, 50 F.3d at 336 (finding timely Rule 26(b)(4)(E) costs added
nine months after party filed original bill of costs but limiting to the specific circumstances of the
case); see also Ellis v. United Airlines, Inc., 73 F.3d 999, 1011 (10th Cir. 1996), overruled on
other grounds as recognized by Pippin v. Burlington Resources Oil and Gas Co., 440 F.3d 1186
(10th Cir. 2006) (affirming denial of losing party’s request for expert witness fees where request
was filed four and one-half months after the district court had entered final judgment).

® Ina footnote, and without citing to any case law, Plaintiff suggests that in order to
recover costs under Rule 26(b)(4)(E), the parties were obligated to meet and confer on the issue
beforehand pursuant to Rule 37. (R. 488, Pl.’s Objs. at 4 n.2.) Nothing in the text of either rule
supports this conclusion, and none of the cases relied upon by the Court that discuss Rule 26
mentions this as a possible bar to recovering expert witness fees under Rule 26(b)(4)(E).
Accordingly, the Court declines to deny Defendants’ request for expert witness fees on this basis.

22



deposition was undisputed). Accordingly, the Court awards Defendants $4,800.00 in fees for

Herbst and $2,400.00 in fees for Despres.

Lastly, Plaintiff does not argue that any manifest injustice will result in reimbursing
Defendants for these fees, and the Court finds no manifest injustice in allowing Defendants to
recover these fees. A finding of manifest injustice is rare and is granted only in extreme
circumstances. See, e.g., Nilssen, 2007 WL 257711, at *7 (denying as manifestly unjust the
reimbursement of expert witness fees to party that was found to have engaged in inequitable
conduct in the prosecution of a patent infringement suit); Jn re Raymond Prof’! Grp., Inc., 420
B.R. 448, 470 (N.D. Ill. 2009) (denying as manifestly unjust the reimbursement of expert’s fee to
requesting party where deposition was required to clear up confusion caused by requesting
party’s counsel’s misrepresentations of expert’s opinions to deposing party); Barnett, 1999 WL
138813, at *6 (denying as manifestly unjust losing party’s request for expert witness fees in light
of the fact that prevailing party withdrew their request for expert witness fees). As Defendants
explain in their amended petition for fees, Defendants retained their experts solely to counter
Plaintiff’s experts in the case. (R. 484, Defs.’ Am. Pet. for Costs at 3.) The Court thus finds no
basis for barring recovery of these fees on the grounds of manifest injustice and awards
Defendants a total of $13,680.00 in expert witness fees.

c. Plaintiff’s request for expert witness fees

Applying the same standards laid out above, the Court next addresses Plaintiff's request
to recover expert witness fees pursuant to Rule 26(b)(4)(E). Plaintiff requests a total of
$19,282.49 in fees submitted by two of its experts: Aron Levko and Robert DiLonardo. (R. 488,

Pi.’s Objs. at 4.) Levko’s fees total $12,000.00 for 30 hours of deposition and preparation time,

28



judgment allowing costs.” N.D. Ill. L.R. 54.1(a). Judgment was entered in favor of Defendants

on December 3, 2010. (R. 480, Min. Entry.) Defendants filed their original petition for costs
eleven days thereafter, on December 14, 2010, seeking a total of $39,892.57 in costs. (R. 482,
Defs.’ Pet. for Costs at 1; R. 480, Min. Entry.) Plaintiff filed objections to the original petition
for costs, (R. 483, Pl.’s Initial Objs.), and shortly thereafter, on December 31, 2010, Defendants
filed the amended petition for costs presently before the Court. (R. 484, Defs.’ Am. Pet. for
Costs at 1.) Plaintiff concedes that this amended petition is “technically within the 30-day period
allowed by the Local Rules,” but nevertheless argues that it should be considered untimely
because the Defendants have added entirely new costs—namely, expert witness fees—that were
not included in the original petition for costs. (R. 488, Pl.’s Objs. at 2.)

The Court disagrees. Plaintiff has not provided, and the Court has not found, any case
law to support Plaintiff's theory that an amended petition for costs should be dismissed as
untimely because it includes new costs not found in the prevailing party’s original petition for
costs, even though the amended petition was filed within 30 days of entry of judgment. In
general, it is within the discretion of the Court to allow revisions to a petition for costs, timely or
otherwise. See O’Regan y. Arbitration Forums, Inc., 246 F.3d 975, 989 (7th Cir. 2001) (district
court did not abuse its discretion in granting prevailing party’s amended bill of costs that was
filed after the deadline); Finchum v. Ford Motor Co., 57 F.3d 526, 533-34 (7th Cir. 1995)
(district court did not abuse its discretion by allowing prevailing party “to revise their request
downward and add supporting material”); see also M.T. Bonk Co., 945 F.2d at 1409-10 (district
court did not err in allowing prevailing party to supplement its bill of costs). Here, there is no

issue of timeliness: both Defendants’ original petition and amended petition for costs were filed



A. Recovery of expert witness fees under Rule 26(b)(4)(E)

Defendants’ amended petition for costs also seeks reimbursement for costs associated
with the depositions of three of their expert witnesses. (R. 484, Defs.’ Am. Pet. for Costs at 3-4.)
Defendants argue that these costs, which were incurred pursuant to Rule 26(b)(4)(E), are a
recoverable cost under Rule 54(d).4 (Id.) Rule 26(b)(4) authorizes the deposition of experts, and
Rule 26(b)(4)(E) specifically instructs that “[uJnless manifest injustice would result, the court
must require that the party seeking discovery pay the expert a reasonable fee for time spent in
responding to discovery,” including time spent sitting for a deposition conducted by the party
seeking discovery. Fed. R. Civ. P. 26(b)(4)(E)(i) (emphasis added). Plaintiff, on the other hand,
contests Defendants’ request for expert witness fees and counters that the recovery of expert
witness fees is not limited to prevailing parties in an action because Rule 26(b)(4)(E) functions
independently of Rule 54(d). (R. 488, P1.’s Objs. at 3-4.) Thus, Plaintiff argues, it should be
entitled to a credit for its own expert witness fees that are recoverable under Rule 26(b)(4)(E) to
offset the costs Defendants are seeking. (Jd. at 4.)

The Court agrees with Plaintiff's reasoning. Both Plaintiff and Defendants rely on
Chambers v. Ingram, 858 F.2d 351, 360-61 (7th Cir. 1988), in support of their requests for

recovery of expert witness fees. In Chambers, the prevailing plaintiff in a Section 1983 suit

4 Both Plaintiff and Defendants have cited to Rule 26(b)(4)(C) in their briefs to support
their requests for expert witness fees. On December 1, 2010, the Federal Rules Advisory
Committee issued amendments that included changes to Rule 26 as a whole. These changes
resulted in a renumbering of Rule 26(b)(4)(C) to Rule 26(b)(4)(E); however, no substantive
changes to the language contained in former Rule 26(b)(4)(C) were made. See Fed. R. Civ. P.
26, advisory committee’s notes to 2010 Amendments. Similarly, a stylistic change was made to
former Rule 26(b)(4)(C) in amendments issued on December 1, 2007; the change—editing “shall
require” to “must require”—should have no substantive effect on the way courts have interpreted
former Rule 26(b)(4)(C) up until now.

15


petition for the same Rule 26(b)(4)(E) costs that the prevailing party was seeking in Chambers.
Nevertheless, the fact that the Seventh Circuit in Chambers analyzed the recoverability of the
prevailing party’s expert witness fees under the rubric of Rule 26(b)(4)(E) and not under Rule
54(d) strongly suggests that the recovery of a party’s own expert witnesses’ fees under Rule
26(b)(4)(E) is independent of any limitations set forth in Rule 54(d), including the condition that
a party seeking reimbursement for costs be the prevailing party in a case. See id. at 360-61
(citing Fed. R. Civ. P. 26(b)(4)(E) advisory committee’s notes to 1970 Amendments; Nichols v.
Laymon, 506 F. Supp. 267, 274 (N.D. Ill. 1980) (granting plaintiffs motion to recover expert
witness fees under Rule 26(b)(4)(E) where district court ordered that expert’s deposition be
taken); 8 Wright & Miller, Federal Practice and Procedure § 2034 (1970 & Supp. 1987)
(discussing Rule 26(b)(4)(E) expert witness fees)).

An ample number of district court cases within the Seventh Circuit also support the
conclusion that a party’s recovery of its own expert witness fees under Rule 26(b)(4)(E) is
independent of Rule 54(d). See, e.g., Barnett v. City of Chi., No. 92-1683, 1999 WL 138813, at
*10 (N.D. Ill. Mar. 5, 1999) (allowing award of fees to prevailing party pursuant to Rule
26(b)(4)(E) for time spent by its expert attending depositions, and in excess of the $40 per day
limit set by 28 U.S.C. § 1821(b) and recoverable under Rule 54(d)); Halasa, 2012 WL 639520, at
*2 (same); Askew v. City of Chi., No. 04-3863, 2006 WL 1005167, at *4 (N.D. Ill. Apr. 12,
2006) (same); Ulatowski v. John Sterling Corp., No. 03-8847, 2005 WL 643349, at *3 (N.D. Ill.
Mar. 16, 2005) (same); Fait v. Hummel, No. 01-2771, 2002 WL 31433424, at *3 (N.D. Ill. Oct.
30, 2002) (same); Great Lakes, 2000 WL 1898533, at *3 (same); Liquid Dynamics Corp. v.

Vaughan Co., Inc., No. 01-6934, 2002 WL 31207212, at *3 (N.D. Ill. Oct. 2, 2002) (same);

17



is recoverable and (2) if so, whether the amount assessed for that item was reasonable.” Majeske
v. City of Chi., 218 F.3d 816, 824 (7th Cir. 2000). Although there is a strong presumption that
the prevailing party will recover costs, Park v. City of Chi., 297 F.3d 606, 617 (7th Cir. 2002),
the “party seeking an award of costs carries the burden of showing that the requested costs were
necessarily incurred and reasonable.” Trs. of the Chi. Plastering Inst. Pension Trust v. Cork
Plastering Co., 570 F.3d 890, 906 (7th Cir. 2009); Telular Corp. v. Mentor Graphics Corp., No.
01-431, 2006 WL 1722375, at *1 (N.D. Ill. June 16, 2006) (“The prevailing party bears the
burden of demonstrating the amount of its recoverable costs because the prevailing party knows,
for example, how much it paid for copying and for what purpose the copies were used.”). Once
the prevailing party demonstrates that the particular items of costs should be allowed, the losing
party then bears the burden of affirmatively showing that the taxed costs are not appropriate.
Beamon vy. Marshall & Ilsley Trust Co., 411 F.3d 854, 864 (7th Cir. 2005). Ultimately, the
decision whether to award costs rests within the discretion of the Court. MT. Bonk Co. v. Milton
Bradley Co., 945 F.2d 1404, 1409 (7th Cir. 1991).

On December 3, 2010, the Court entered judgment in favor of Defendants after finding
United States Patent No. Re 37,590, which Defendants were accused of infringing, invalid. (R.
480, Min. Entry.) Therefore, Defendants are the prevailing party and are entitled to recover all
allowable costs pursuant to Rule 54(d).
I. Untimeliness

At the outset, Plaintiff argues that Defendants’ amended petition for costs should be
dismissed in its entirety as untimely. (R. 488, Pl.’s Objs. at 1-3.) Under Local Rule 54.1(a), a

prevailing party must file a bill of costs with the Court “[w]ithin 30 days of the entry of a



26(b)(4)(E) allows for recovery of preparation time). To determine whether the expert’s

preparation time was reasonable, courts in this District “look to the preparation time in relation to
the deposition time,” and the nature or complexity of a case, to establish a reasonable ratio of
preparation time to actual deposition time for the case. See, e.g., LG Elecs., 2011 WL 5008425,
at *5 (holding that in a complex litigation case involving a claim of false advertising under the
Lanham Act, 15 U.S.C. § 1125(a), a ratio of 3 to 1, preparation to deposition time, is reasonable);
Nilssen, 2007 WL 257711, at *5 (using a 3 to 1 ratio in a patent infringement case); Collins, 197
F.R_D. at 358 (using a 1.5 to | ratio in a gender discrimination case). After reviewing the record
in this case, the Court finds that the instant patent infringement action, like the suit in Nilssen,
involved very complex and technical issues. Thus, applying a ratio of up to 3 to 1 for preparation
to deposition time is reasonable in these circumstances.

Defendants have included in their amended petition for costs a very detailed billing
statement for Kuyk’s fees that supports the 16 hours of his services that they seek to be
reimbursed for. The relevant entries in Kuyk’s billing statement show that he spent at least 7
hours preparing for his deposition during the two days prior to his deposition, and on the day of
his deposition he spent 9 hours both preparing for and attending his deposition. (R. 484-2, Defs.’
Ex. E at 34-35.) This aligns with Defendants’ assertion that each expert spent roughly one day (8
hours) preparing for and one day (8 hours) participating in each of their depositions, for a total of
16 hours in fees per expert. (R. 484, Defs.’ Am. Pet. for Costs at 3-4.) Because this falls well
within the 3 to 1 preparation to deposition time ratio that the Court has held to be reasonable in
this case, and Plaintiff has not disputed Kuyk’s fees, the Court awards Defendants the entirety of

Kuyk’s fees, or $6,480.00.

26



Objs.) For the reasons set forth below, the Court awards costs and expert witness fees to

Defendants, but reduces Defendants’ requested costs by $6,220.95. The Court also grants
Plaintiff's request for expert witness fees pursuant to Rule 26(b)(4)(E) and awards Plaintiff
$14,042.49 in expert witness fees, to be credited against Defendants’ total costs. Defendants are
therefore awarded a total of $18,430.33.
ANALYSIS
I. Federal Rule of Civil Procedure 54(d)

Under the Federal Rules of Civil Procedure, “costs—other than attorney’s fees—should
be allowed to the prevailing party.” Fed. R. Civ. P. 54(d)(1). A “district court may not tax costs
under Rule 54(d)[, however,] unless a federal statute authorizes an award of those costs.”
Republic Tobacco Co. v. N. Atl. Trading Co., Inc., 481 F.3d 442, 447 (7th Cir. 2007) (citing
Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441-43 (1987)). The list of recoverable
costs authorized under 28 U.S.C. § 1920 include:

(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 . . . ; [and]

(6) Compensation of court appointed experts, compensation of interpreters, and

salaries, fees, expenses, and costs of special interpretation services . . ..

28 U.S.C. § 1920. Even if authorized by statute, however, “a cost must be both reasonable and
necessary to the litigation for a prevailing party to recover it.” Little v. Mitsubishi Motors N.

Am., 514 F.3d 699, 702 (7th Cir. 2008). In short, the determination of whether to tax costs

against the losing party requires two inquiries: “(1) whether the cost imposed on the losing party



billed at $400.00 per hour. (/d.) DiLonardo’s fees total $7,282.49 and consist of $6,720.00 for
32 hours of deposition and preparation time, billed at $210.00 per hour, plus $562.49 in
documented travel expenses for attending the deposition. (Id.)

Although Plaintiff, like Defendants, did not submit any additional documentation to
support the hourly rates its experts charged, both Levko’s and DiLonardo’s rates ($400.00 and
$210.00 per hour, respectively) are substantially similar to Defendants’ experts’ rates (ranging
from $150.00 and $405.00 per hour). Thus, for the same reasons the Court held Defendants’
experts’ rates to be reasonable, supra, the Court, in the exercise of its discretion, finds that
Plaintiff's experts’ rates are also reasonable. Royal Maccabees, 2001 WL 290308, at *16,

Plaintiff has included detailed billing statements from its experts in support of its
requests. With respect to DiLonardo, Plaintiff seeks reimbursement for 32 hours that he billed,
as well as travel expenses. (R. 488, Pl.’s Objs. at 4.) Specifically, DiLonardo spent 7 hours
attending his deposition and 25 hours preparing for his deposition. (R. 488-1, Pl.’s Ex. B at 11.)
This ratio of preparation to deposition time, approximately 4.6 to 1, exceeds the 3 to | ratio the
Court has determined to be reasonable for this case. Thus, the Court allows Plaintiff to only
recover for 21 hours of preparation time for DiLonardo, for a total of 28 hours (21 hours for
preparation, plus 7 hours for the deposition). Applying DiLonardo’s rate of $210.00 per hour to
the 28 hours results in $5,880.00 in fees. In addition, DiLonardo incurred $562.49 in travel
expenses for attending his deposition, which are recoverable. Nilssen, 2007 WL 257711, at *4.
Thus, the Court awards Plaintiff $6,442.49 in fees and expenses for DiLonardo’s deposition.

With respect to Levko, Plaintiff seeks reimbursement for 30 hours of his time. (R. 488,

Pl.’s Objs. at 4.) As an initial matter, upon the Court’s review, Levko’s billing entries that

29



to the use of the copies in this case, and the fraction of the total copying costs requested
compared to other similar cases in this district, the Court, in the exercise of its discretion, grants
Defendants the remaining $2,170.68 in copying costs in full. See Great Lakes Dredge & Dock
Co. v. Commercial Union Assurance Co., No. 94-2579, 2000 WL 1898533, at *2 (N.D. Ill. Sept.
18, 2000) (granting over $60,000 in copying costs as reasonable despite the lack of detailed
descriptions and considering the six years of document-driven litigation); Movitz v. First Nat’l
Bank of Chi., 982 F. Supp. 571, 577 (N.D. Ill. 1997) (granting over $55,000 in copying costs as
reasonable based on counsel’s verification that the costs requested only included copies
necessary for the case); Halasa v. ITT Educ. Servs., Inc., No. 10-437, 2012 WL 639520, at 4
(S.D. Ind. Feb. 27, 2012) (granting request for over $5,000 in copying costs based on affidavit as
to best records available with minimal identifying information for charges that did not strike the
court as extraordinary given the nature of the case).
VI. Exemplifications

Defendants also request $2,375.00 in costs for a single exemplification they acquired to
use in a hearing pertaining to their inequitable conduct counterclaim against Plaintiff. (R. 484,
Defs.’ Am. Pet. for Costs at 5.) In order to recover this cost, Defendants must demonstrate that
the exemplification was “necessarily obtained for use in the case.” 28 U.S.C. § 1920(4); Cefalu
v. Vill. of Elk Grove, 211 F.3d 416, 428 (7th Cir. 2000). This requires that an exemplification be
“an essential aid to understanding an issue in the case.” Glenayre Elecs., Inc. v. Jackson, No. 02-
256, 2003 WL 21947112, at *4 (N.D. Ill. Aug. 11, 2003) (quoting Rogers v. City of Chi., No. 00-
2227, 2002 WL 423723, at *3 (N.D. Ill. Mar. 15, 2002)). That said, “demonstrative materials

that merely illustrate expert testimony, other evidence or argumentative matters are not taxable.”

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petitioned the district court for, among other taxable costs, $3,000 in expert witness fees. Id. at

354. The district court granted those costs and the defendant appealed. Jd. at 360. On appeal,
the plaintiff conceded that he could not obtain reimbursement for his expert witness fees under
Rule 54(d). Jd. (citing Crawford, 482 U.S. at 445 (a prevailing party seeking reimbursement
under Rule 54(d) for fees paid to its own expert witnesses may not seek fees in excess of the
limit set by 28 U.S.C. § 1821, “absent contract or explicit statutory authority to the contrary”)).
But, the plaintiff argued, he should nevertheless be allowed to recover some of the fees under
Rule 26(b)(4)(E). Id. The defendant responded that it was too late to recover any of those fees at
that time, post-judgment, because the plaintiff had failed to request such costs at the time the
expert’s deposition was taken. Jd. The Seventh Circuit rejected the defendant’s argument and
ruled that the timing of the plaintiff's request did not bar him from recovering expert witness fees
pursuant to Rule 26(b)(4)(E). Id. at 361; see also Fed. R. Civ. P. 26(b)(4)(E) advisory
committee’s notes to 1970 Amendments (“The court may issue [an order to pay fees] as a
condition of discovery, or it may delay the order until after discovery is completed.”).

Unlike the losing party in Chambers, however, Plaintiff, the losing party in the instant
case, does not challenge the prevailing Defendants’ request for its expert witness fees as
untimely; rather, Plaintiff argues that it, too, is entitled to recover its own expert witness fees
irrespective of the fact that it is not the prevailing party in this case. Although Chambers does
not provide direct authority for this proposition, the Seventh Circuit did not explicitly state that
only a prevailing party may recover expert witness fees post-judgment under Rule 26(b)(4)(E).
Because the Seventh Circuit only had before it a petition for such costs from the prevailing party

and not from the losing party, it had no occasion to rule on whether a losing party can also

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