* the Seventh Circuit has held that video depositions are allowable costs so long as they
are necessary to the litigation. See Held v. Held, 137 F.3d 998, 1002 (7th Cir. 1998),
Given Allen’s position -- the owner of the plaintiff company and the inventor of the
patent-in-suit -- his deposition was necessary to the litigation. Vardon protests that
Allen’s deposition was irrelevant to the collateral estoppel issue that decided this case.
While this may be true, it misses the point. In determining whether to award costs to
Karsten as the prevailing party, our concern is not what issue ultimately decided the
case. Rather, the statute compels us to decide whether certain costs were necessary to
the litigation and are therefore recoverable. In this case, the examination of the owner
of the patent-in-suit was necessary to Karsten’s intervening rights defense, which
Karsten reasonably raised and which Vardon did not challenge when Karsten asked for
discovery on it. The cost of the deposition is therefore recoverable, as are the other
deposition-related costs that Karsten desires.

Likewise, costs associated with copies of the patent file and general photocopies

are taxable. Despite Vardon’s objections, these documents were necessary for use in
the case Vardon initiated against Karsten. Vardon claims that some of the requests are
duplicative. The two receipts to which Vardon points are not plainly duplicative,
however, especially in light of Vardon’s concession that the Patent Office’s files were
incomplete. In light of these difficulties, the copying costs appear neither duplicative

nor excessive.


the Seventh Circuit has held that video depositions are allowable costs so long as they
are necessary to the litigation. See Held v. Held, 137 F.3d 998, 1002 (7th Cir. 1998).
Given Allen’s position -- the owner of the plaintiff company and the inventor of the
patent-in-suit -- his deposition was necessary to the litigation. Vardon protests that
Allen’s deposition was irrelevant to the collateral estoppel issue that decided this case.
While this may be true, it misses the point. In determining whether to award costs to
Karsten as the prevailing party, our concern is not what issue ultimately decided the
case. Rather, the statute compels us to decide whether certain costs were necessary to
the litigation and are therefore recoverable. In this case, the examination of the owner
of the patent-in-suit was necessary to Karsten’s intervening rights defense, which
Karsten reasonably raised and which Vardon did not challenge when Karsten asked for
discovery on it. The cost of the deposition is therefore recoverable, as are the other
deposition-related costs that Karsten desires.

Likewise, costs associated with copies of the patent file and general photocopies
are taxable. Despite Vardon’s objections, these documents were necessary for use in
the case Vardon initiated against Karsten. Vardon claims that some of the requests are
duplicative. The two receipts to which Vardon points are not plainly duplicative,
however, especially in light of Vardon’s concession that the Patent Office’s files were
incomplete. In light of these difficulties, the copying costs appear neither duplicative

nor excessive.



UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

VARDON GOLF COMPANY INC., )

Plaintiff,

vs. 00 C 7221

KARSTEN MANUFACTURING }
CORPORATION, )

Defendant. }

MEMORANDUM OPINION

CHARLES P. KOCORAS, District Judge:

Before the Court are Karsten Manufacturing Company’s motions to recover
costs and attorney’s fees. For the following reasons, we grant the motion to recover
costs and deny the motion for attorney’s fees.

BACKGROUND

The instant matter is but one in a series of litigations between Plaintiff Vardon
Golf Company (“Vardon”) and Defendant Karsten Manufacturing Corporation
(“Karsten”). In September 2000, our sister court granted Karsten summary judgment
of noninfringement of U.S. Patent No. 5,301,941 (“the ‘941 patent”) because the face
wall of Karsten’s accused golf clubs did not have a “substantially uniform thickness,”

a limitation required by all of the claims asserted in that case. Soon thereafter, Vardon


"2. Attorney’s Fees

Karsten also seeks to recover attorney’s fees pursuant to Rule 54(d)(2)(E) as a
sanction for what Karsten terms Vardon’s “bad faith conduct.” The record before the
Court does not bear out a claim of bad faith. Vardon first revealed its awareness of the
defect in claim 22 in its reply brief of April 26, 2001 to the motion to amend the
complaint. During a status hearing of May 9, 2001, Vardon’s counsel repeated the
discovery in open court. Although Karsten flings accusations in its briefs about
Vardon filing suit on a patent claim it knew was defective, Karsten offers no
substantiation of this accusation. Nowhere does Karsten point to evidence probative
of Vardon’s awareness of the defect at some point prior to the April 26 revelation.
Absent any such substantiation, an accusation of bad faith simply cannot stand, and the
motion for attorney’s fees must be denied.

CONCLUSION

For the foregoing reasons, we grant Karsten’s motion to recover costs and deny the

motion for attorney’s fees.

Charles P. Kocoras
United States District Judge

Dated: __ september 20, 2001


DISCUSSION
I. Taxable Costs

Rule 54 of the Federal Rules of Civil Procedure provides that costs “shall be
allowed as of course to the prevailing party unless the court otherwise directs.” Fed.
R. Civ. P. 54(d)(1). Those recoverable costs include: (1) fees of the clerk, (2) fees for
transcripts, (3) fees fo printing and witnesses, (4) fees for copies of papers necessarily
obtained for use in the case, (5) docket fees, and (6) compensation of court-appointed
experts and interpreters. See 28 U.S.C. § 1920. As the Seventh Circuit has observed,
Rule 54 creates a presumption in favor of the award of costs. See M.T. Bonk Co, v.
Milton Bradley Co. , 945 F.2d 1404, 1409 (7th Cir. 1991). The presumption is
“difficult to overcome,” and our discretion is “narrowly confined -- the court must
award costs unless it states good reasons for denying them.” Weeks v. Samsung Heavy
Indus. Co., 126 F.3d 926, 945 (7th Cir. 1997).

In the case at bar, Karsten seeks to recover costs from Vardon for deposition
transcripts, copies of patents and patent prosecution file histories, and general
photocopying. With respect to deposition transcripts, Karsten asks for $4,131.35 for
(1) the deposition of Vardon owner and inventor Dillis Allen, (2) Allen’s video
deposition, and (3) copies of transcripts of Karsten’s Rule 30(b)(6) depositions of L.
Beacom and M. Trueblood. Vardon contends that section 1920 does not permit

recovery of costs associated with video depositions. This position is without merit, as

-3-


_ —_—
Minute Order Form (0697)
United States District Court, Northern District of Illinois
Name of Assigned Judge Sitting Judge if Other
or Magistrate Judge Charles P. Kocoras than Assigned Judge
CASE NUMBER 00 C 7221 DATE 9/20/2001
CASE Vardon Golf Co v. Karsten Manufacturing Corp
TITLE
[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: ‘of the motion being presented.}
DOCKET ENTRY:
(1) ao Filed motion of [ use listing in “Motion” box above.]
(2) Oo Brief in support of motion due
(3) o Answer brief to motion due . Reply to answer brief due. :
(4) im} Ruling/Hearing on set for at
(5) ia Status hearing[held/continued to] {set for/re-set for] on set for at
(6) im} Pretrial conference[held/continued to] [set for/re-set for] on __ set for at :
(7) Oo Trial{set for/re-set for] on at
(8) im [Bench/Jury trial] [Hearing] held/continued to at
(9) im This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
COFRCP4(m) General Rule 21 OOFRCP41(a)(1) OO FRCP41(a)(2).
qo) if {Other docket entry] Ruling held. ENTER MEMORANDUM. OPINION: We grant Karsten’s
request to recover costs and deny the motion (Doc 46-1) for attorney’s fees. All other pending motions
are moot.
al) @f [For further detail see order attached to the original minute order.]
No notices required, advised in open court.
No notices required. umber of potces
Notices mailed by judge’s staff.
, SEP 21 2001
Notified counsel by telephone, “tea ueted
| Docketing to mail notices.
Mail AO 450 form. docketing AM iitils
Copy to judge/magistrate judge.
courtroom date mailed notice i
scT deputy’s
initials
Date/time received in
central Clerk’s Office ‘mailing deputy initials



cet ONT ie one ce ey tt

2. Attorney’s Fees

Karsten also seeks to recover attorney’s fees pursuant to Rule 54(d)(2)(E) asa
sanction for what Karsten terms Vardon’s “bad faith conduct.” The record before the
Court does not bear out a claim of bad faith. Vardon first revealed its awareness of the
defect in claim 22 in its reply brief of April 26, 2001 to the motion to amend the
complaint. During a status hearing of May 9, 2001, Vardon’s counsel repeated the
discovery in open court. Although Karsten flings accusations in its briefs about
Vardon filing suit on a patent claim it knew was defective, Karsten offers no
substantiation of this accusation. Nowhere does Karsten point to evidence probative
of Vardon’s awareness of the defect at some point prior to the April 26 revelation.
Absent any such substantiation, an accusation of bad faith simply cannot stand, and the
motion for attorney’s fees must be denied.

CONCLUSION

For the foregoing reasons, we grant Karsten’s motion to recover costs and deny the

motion for attorney’s fees.

Chew. a. fp —a oon cde

Charles P. Kocoras
United States District Judge

Dated: __ september 20, 2001


obtained a reissued patent (“the ‘950 patent”), but by doing so Vardon extinguished the
opportunity to appeal our sister court’s opinion.

Vardon turned to this forum for relief, filing in November 2000 a complaint
alleging that Karsten infringed claim 22 of the ‘950 patent. Claim 22, according to the
complaint, did not contain the “substantially uniform thickness” language our sister
court had already construed. Several months later, after the parties had completed
discovery on Karsten’s intervening rights defense, Vardon moved to amend its
pleadings to include assertions of claims 12-21 of the ‘950 patent. All of those claims
contained the “substantially uniform thickness” language. Karsten opposed the
amendment on the ground of issue preclusion, and this Court agreed. When we
delivered that ruling in open Court, Vardon’s counsel apprised the Court that claim 22
should have contained the “substantially uniform thickness” language but did not due
to a printing error by the Patent Office. Because claim 22 should have included the
language, it fell within the ambit of our ruling and Vardon was estopped from
relitigating it in our forum. Vardon later sought an order deeming this ruling final,
which we provided.

Karsten now seeks to recover taxable costs from Vardon. It also desires an
award of attorney fees. For the following reasons we grant the first request but deny

the second.


DISCUSSION

1. Taxable Costs

Rule 54 of the Federal Rules of Civil Procedure provides that costs “shall be
allowed as of course to the prevailing party unless the court otherwise directs.” Fed.
R. Civ. P. 54(d)(1). Those recoverable costs include: (1) fees of the clerk, (2) fees for
transcripts, (3) fees fo printing and witnesses, (4) fees for copies of papers necessarily
obtained for use in the case, (5) docket fees, and (6) compensation of court-appointed
experts and interpreters. See 28 U.S.C. § 1920. As the Seventh Circuit has observed,
Rule 54 creates a presumption in favor of the award of costs. See M.T. Bonk Co. v.
Milton Bradley Co. , 945 F.2d 1404, 1409 (7th Cir. 1991). The presumption is
“difficult to overcome,” and our discretion is “narrowly confined -- the court must
award costs unless it states good reasons for denying them.” Weeks v. Samsung Heavy
Indus. Co., 126 F.3d 926, 945 (7th Cir. 1997).

In the case at bar, Karsten seeks to recover costs from Vardon for deposition
transcripts, copies of patents and patent prosecution file histories, and general
photocopying. With respect to deposition transcripts, Karsten asks for $4,131.35 for
(1) the deposition of Vardon owner and inventor Dillis Allen, (2) Allen’s video
deposition, and (3) copies of transcripts of Karsten’s Rule 30(b)(6) depositions of L.
Beacom and M. Trueblood. Vardon contends that section 1920 does not permit

recovery of costs associated with video depositions. This position is without merit, as

-3-


” obtained areissued patent (“the ‘950 patent”), but by doing so Vardon extinguished the
opportunity to appeal our sister court’s opinion.

Vardon turned to this forum for relief, filing in November 2000 a complaint
alleging that Karsten infringed claim 22 of the ‘950 patent. Claim 22, according to the
complaint, did not contain the “substantially uniform thickness” language our sister
court had already construed. Several months later, after the parties had completed
discovery on Karsten’s intervening rights defense, Vardon moved to amend its
pleadings to include assertions of claims 12-21 of the ‘950 patent. All of those claims
contained the “substantially uniform thickness” language. Karsten opposed the
amendment on the ground of issue preclusion, and this Court agreed. When we
delivered that ruling in open Court, Vardon’s counsel apprised the Court that claim 22
should have contained the “substantially uniform thickness” language but did not due
to a printing error by the Patent Office. Because claim 22 should have included the
language, it fell within the ambit of our ruling and Vardon was estopped from
relitigating it in our forum. Vardon later sought an order deeming this ruling final,
which we provided.

Karsten now seeks to recover taxable costs from Vardon. It also desires an
award of attorney fees. For the following reasons we grant the first request but deny

the second.


UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
VARDON GOLF COMPANY INC., )
)
Plaintiff, )
)
vs. ) 00 C7221
)
KARSTEN MANUFACTURING )
CORPORATION, ) ;
)
Defendant. ) DOCKETE
SEP 21 2001
MEMORANDUM OPINION

CHARLES P. KOCORAS, District Judge:
Before the Court are Karsten Manufacturing Company’s motions to recover
costs and attorney’s fees. For the following reasons, we grant the motion to recover

costs and deny the motion for attorney’s fees.

BACKGROUND

The instant matter is but one in a series of litigations between Plaintiff Vardon
Golf Company (“Vardon”) and Defendant Karsten Manufacturing Corporation
(“Karsten”). In September 2000, our sister court granted Karsten summary judgment
of noninfringement of U.S. Patent No. 5,301,941 (“the ‘941 patent”) because the face
wall of Karsten’s accused golf clubs did not have a “substantially uniform thickness,”

a limitation required by all of the claims asserted in that case. Soon thereafter, Vardon

‘)