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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

ENGATE, INC., )

)

Plaintiff, )

)

vs. ) Case No. 01 C 6204

)

ESQUIRE DEPOSITION SVCS. LLC )

and ATKINSON-BAKER, INC., )

)

Defendants. )

MEMORANDUM OPINION AND ORDER

MATTHEW F. KENNELLY, District Judge:

Engate, Inc. sued Esquire Deposition Services, LLC and Atkinson-Baker, Inc. for the

infringement of patents covering technologies related to real-time transcription services. In a

series of rulings, the Court found against Engate on its claims of direct and indirect infringement. 

After a bench trial, the Court also concluded that a number of the claims in Engate’s patents

were invalid. Pursuant to Rule 54(d) of the Federal Rules of Civil Procedure, Esquire and

Atkinson-Baker have petitioned the Court for costs requesting $29,169.04 and $31,761.19

respectively. For the reasons discussed below, the Court grants defendants’ petitions but limits

Esquire’s award to $14,765.59 and Atkinson-Baker’s to $12,447.57.
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Discussion

“[C]osts other than attorneys’ fees shall be allowed as of course to the prevailing party

unless the court otherwise directs.” Fed. R. Civ. P. 54(d)(1). Under 28 U.S.C. § 1920, a court

may tax “(1) [f]ees of the clerk and marshal; (2) [f]ees of the court reporter for all or any part of

the stenographic transcript necessarily obtained for use in the case; (3) [f]ees and disbursements

for printing and witnesses; (4) [f]ees for exemplification and copies of papers necessarily

obtained for use in the case,” among other costs. The Court presumes that the prevailing party is

entitled to costs, and “the losing party bears the burden of an affirmative showing that taxed

costs are not appropriate.” Beamon v. Marshall & Ilsley Trust Co., 411 F.3d 854, 864 (7th Cir.

2005). 

1. Fees for service of summons and subpoenas

Esquire and Atkinson-Baker each request $267.50 for service of subpoenas. Engate does

not dispute this figure. The Court therefore grants defendants’ requests in this regard.

2. Court reporters’ fees

Court reporters’ fees may be recovered under § 1920. In their initial bills of costs,

Esquire and Atkinson-Baker requested $11,420.09 and $16,026.15, respectively, for these fees. 

In their joint reply brief, however, both defendants have reduced their requests. Specifically,

defendants have withdrawn their requests to recover the fees for condensed transcripts, transcript

delivery costs, and real time costs, and they have lowered their cost submissions for several

transcripts. Esquire now requests $10,255.39, and Atkinson-Baker requests $15,257.71. Engate

objects to several aspects of the defendants’ requests. 
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a. Costs for ASCII diskettes and videotapes of depositions

Engate argues that the costs of ASCII diskettes and videotapes of depositions are not

recoverable. Generally, prevailing parties cannot recover these costs because they are regarded

as costs incurred for counsel’s convenience. This is particularly true where the parties also

obtained stenographic transcripts of depositions for which ASCII diskettes or videotapes were

produced. See, e.g., Fait v. Hummel, No. 01 C 2771, 2002 WL 31433424, at *2 (N.D. Ill. Oct.

30, 2002); EEOC v. Yellow Freight Sys., Inc., No. 98 C 2725, 1999 WL 965854, at *3 (N.D. Ill.

Oct. 14, 1999); see also, Barber v. Ruth, 7 F.3d 636, 645 (7th Cir. 1993). 

Defendants respond that the ASCII diskettes were necessary because this was “a massive,

paper intensive case, involving a plethora of minutely detailed issues.” Defs. Joint Reply at 2. 

The volume of the submissions in a case, however, does not by itself justify the recovery of such

costs. Cf. Pruitt v. City of Chicago, No. 03 C 2877, at *2 (N.D. Ill. Oct. 5, 2005) (awarding costs

for producing ASCII diskettes only because of the short schedule imposed by judge). 

Defendants next contend that videotaping certain depositions – in addition to

stenographic transcription – was necessary. Courts may tax the costs of a transcript and a

videotape of the same deposition only if both are necessary and reasonable in the context of the

particular case. See Cherry v. Champion Int’l Corp., 186 F.3d 442, 448-49 (4th Cir. 1999);

Tilton v. Capital Cities/ABC Inc., 115 F.3d 1471, 1478 (10th Cir. 1997); Rogers v. City of

Chicago, No. 04 C 5569, 2002 WL 423723, at *3 (N.D. Ill. Mar. 15, 2002). Defendants

videotaped the depositions of five witnesses: Charles Christian, Rhett Dennerline, Anthony

Dowell, Merilyn Sanchez, and Richard Wolfson. Because witnesses Christian and Wolfson

appear to reside in England and were therefore outside the court’s subpoena power, we award the
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 Dennerline and Dowell are patent attorneys who were hired by Engate to examine

several forms of real-time transcription software and determine whether they infringed on

Engate’s patents. Sanchez is a court reporter who is knowledgeable about the availability of

certain legal transcription technologies before Engate obtained its patents. All of these witnesses

appear to reside in the United States, and there is no contention that they were believed to be

unavailable for trial.

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costs for both the transcripts and the videotapes of these depositions. See Nat’l Diamond

Syndicate, Inc. v. Flanders Diamond USA, Inc., No. 00 C 6402, 2004 WL 1557765, at * 2 (N.D.

Ill. Jul. 8, 2004). 

The Court rejects defendants’ request with regard to the depositions of Dennerline,

Dowell, and Sanchez.1

 Defendants argue that they anticipated challenging the credibility of

these witnesses using their videotaped depositions. Defendants’ desire to use videotaped

depositions for impeachment, however, does not make them necessary to the extent required to

make the expenses recoverable as costs. Rockett v. Marten Transp., Ltd., No. 99 C 3957, 2002

WL 54545, at *1 (N.D. Ill. Jan. 15, 2002) (“If defendants want that impeachment “edge,”

however, they must pay for it themselves.”)

b. Rate of reimbursement for deposition transcripts

Engate contends that the defendants cannot properly recover their claimed deposition

transcript costs because they exceed the recoverable rate per page. Generally, the costs taxed for

depositions transcripts cannot exceed the regular-copy rate established by the Judicial

Conference of the United States. See Cengr v. Fusibond Piping Sys., Inc., 135 F.3d 445, 455

(7th Cir. 1998); N.D. Ill. LR 54.1(b). The reimbursement rates for ordinary transcripts (which

are the majority of the transcripts at issue here) are $3.30 per page for an original and $0.83 per

page for the first copy to each party. See U.S. District Court for the Northern District of Illinois,
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 From the briefs and invoices submitted by Esquire and Atkinson-Baker, we have

surmised that the depositions for the following were arranged by Engate: Sandstrom, Thorn,

Vaglica, Thieme, Hanson, Jorpeland, Wendawski, Middlebrooks, Jakus, Ward, Tolliver, Marut,

Hughes, Bennett, Gore, Henderson, Stirewait, Christian, and Wolfson.

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Maximum Transcript Rates - All Parties (Per Page), available at

http://10.205.15.104/CLERKS_OFFICE/CrtReporter/trnscrpt.htm (last modified Feb. 28, 2003). 

Both defendants stand by their cost submissions for copies of transcripts of depositions

arranged by Engate. Defendants argue that they had no control over the prices charged by

Engate’s court reporters, and that for this reason, the Court should tax the full costs paid for the

copies of these transcripts. See Haroco, Inc. v. Am. Nat. Bank & Trust, 38 F.3d 1429, 1441 (7th

Cir. 1994) (using actual prices rather than maximum fees set by Judicial Conference where

losing party arranged thirty-five of thirty-six depositions). We agree, and therefore, for those

depositions arranged by Engate, the Court will allow defendants to recover the full costs of

obtaining transcript copies.2

We do, however, limit Atkinson-Baker’s recovery for several transcripts. AtkinsonBaker asks for $1,160 for all of the expenses related to the deposition of William Greenley (e.g.,

exhibits, rough ASCII, copy of ASCII diskette, and stenographic transcript). This is

approximately $7.77 per page, over twice the cost for even an original of a transcript. We

therefore limit Atkinson-Baker’s recovery for a copy of this transcript to $124.50 (150 pages at

$0.83 per page for a regular transcript copy).

We also limit Atkinson-Baker’s recovery regarding the depositions of witnesses Gore,

Stirewait, Sandstrom, and Middlebrooks. Atkinson-Baker ordered expedited transcripts of each
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but, provides the Court with no reason why this was reasonable or necessary. For this reason,

the Court limits Atkinson-Baker’s recovery for copies of these transcripts. It appears that these

depositions were arranged by Engate, and based on other invoices from the same court reporters,

we have been able to determine their rates for copies of ordinary transcripts, and we have taxed

Engate according to those rates. See Haroco, 38 F.3d at 1441.

c. Appearance costs for court reporters

Engate argues that court reporter attendance fees cannot be taxed as costs. The Court

agrees and therefore denies defendants’ requests for court reporters’ costs. See, e.g., Higbee v.

Sentry Ins. Co., 97 C 1349, 2004 WL 1323633, at *2 (N.D. Ill. Jun. 11, 2004); Rogers, 2002 WL

423723 at *3. 

d. Costs for transcripts of court proceedings

Engate contends that neither Esquire nor Atkinson-Baker should be allowed to recover

the expense of obtaining the transcript of the bench trial the Court held on the validity issue,

because they have failed to establish that these costs were necessary for the case. The Court

agrees. Both defendants have submitted affidavits from attorneys who work on the case, but

both merely state in conclusory fashion, without explanation, that the trial transcripts were

“necessarily obtained for use in the case.” See Esquire’s Bill of Costs, Nissen Aff. ¶ 11;

Atkinson-Baker’s Bill of Costs, Lipton Aff. ¶ 5. In their reply, defendants try to make up for the

deficiencies in these affidavits, but they fail in this regard as well. Esquire alone attempts to give

a reason for obtaining several transcripts, stating that it needed the transcripts “to prepare for

argument on a motion,” but it fails to explain why the transcripts were necessary for the

particular motion. Defs. Joint Reply at 6. For this reason, the Court denies recovery of the trial
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transcript expense.

Even were the Court to conclude that defendants had met the threshhold requirement for

recovery of the cost of the transcript, we would still decline recovery, due to their failure to

provide certain basic information. Esquire failed to include the number of pages in the transcript

in a number of instances, and Atkinson-Baker did the same once. See Esquire’s Bill of Costs,

Ex. G at 1-15; Atkinson-Baker’s Bill of Costs, Ex. C. The length of a transcript, however, is

essential to determining whether the requested costs conform with the Judicial Conference’s

maximum rates for transcripts. See Cengr, 135 F.3d at 455. In addition, in three instances,

Atkinson-Baker requested expedited transcripts but provided no reason why the transcripts were

needed so quickly. See Atkinson-Baker’s Bill of Costs, Ex. C. Because defendants have failed

to provide the Court with the basic information needed to calculate what (if any) portion of the

defendants’ transcripts were necessary, the Court disallows these claimed costs.

Esquire’s Allowed Court Reporting Expenses

Proceeding Recoverable Amount Basis

Anthony Dowell

Deposition 

$128.80 Original transcript (112 pages at $1.15 per

page) (allowing recovery at half the cost of

original transcript because both defendants

ordered original)

Rhett Dennerline

Deposition

$485.30 Original transcript (422 pages at $1.15 per

page) (allowing recovery at half the cost of

original transcript because both defendants

ordered original)

Merilyn Sanchez $118.45 Original transcript (103 pages at $1.15 per

page) (allowing recovery at half the cost of

original transcript because both defendants

ordered original)
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Brett Sandstrom

Deposition

$268.45 Transcript copy (91 pages at $2.95 per page

because Engate arranged deposition) 

Kenneth Thorn

Deposition

$299.75 Transcript copy (109 pages at $2.75 per

page because Engate arranged deposition)

Anthony Vaglica

Deposition

$115.50 Transcript copy (42 pages at $2.75 per page

because Engate arranged deposition)

Don Thieme

Deposition

$163.70 Transcript copy (58 pages at $2.75 per page

because Engate arranged deposition) plus

copy of exhibits ($4.20)

Gerald Hanson

Deposition

$62.65 Transcript copy (29 pages at $2.10 per page

because Engate arranged deposition) plus

copy of exhibits ($1.75)

Marshall Jorpeland

Deposition

$48.40 Transcript copy (22 pages at $2.20 per page

because Engate arranged deposition) 

John Wenclawski

Deposition

$35.20 Transcript copy (16 pages at $2.20 per page

because Engate arranged deposition) 

Fred Middlebrooks

Deposition

$87.50 Transcript copy (28 pages at $2.20 per page

because Engate arranged deposition) plus

copy of exhibits ($25.90)

Melanie Jakus, Lorene

Ward, and William

Tolliver Depositions

$448.25 Transcript copy (163 pages at $2.75 per

page because Engate arranged deposition)

Corinne Marut

Deposition

$178.75 Transcript copy (65 pages at $2.75 per page

because Engate arranged deposition)

Carole Hughes

Deposition, Mar. 19,

2003

$103.30 Transcript copy (pages not provided, but

whole cost taxed because Engate arranged

deposition)

James Bennett

Deposition

$1014.00 Transcript copy (390 pages at $2.60 per

page because Engate arranged deposition)

TOTAL $3,558.00
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Atkinson-Baker’s Allowed Court Reporting Expenses

Proceeding Recoverable Amount Basis

William Greenley

Deposition

$124.50 Transcript copy (150 pages at $0.83 per

page)

Sheila AtkinsonBaker Deposition$586.65 Original transcript (303 pages at $1.94 per

page)

Corinne Marut

Deposition

$178.75 Transcript copy (65 pages at $2.75 per page

because Engate arranged deposition)

Gerald Hanson

Deposition

$62.65 Transcript copy (29 pages at $2.10 per page

because Engate arranged deposition) plus

copy of exhibits ($1.75)

William Gore

Deposition

$96.25 Transcript copy (35 pages at $2.75 per page

because Engate arranged deposition)

James Henderson

Deposition

$580.65 Transcript copy (208 pages at $2.55 per

page because Engate arranged deposition)

and copy of exhibits ($50.25)

Don Thieme

Deposition

$163.70 Transcript copy (58 pages at $2.75 per page

because Engate arranged deposition) plus

copy of exhibits ($4.20)

John Wenclawski

Deposition

$252.00 Transcript copy (90 pages at $2.75 per page

because Engate arranged deposition)plus

copy of exhibits ($4.50)

Richard Stirewait

Deposition

$119.60 Transcript copy (37 pages at $2.75 per page

because Engate arranged deposition) plus

copy of exhibits ($17.85)

Merilyn Sanchez $118.45 Original transcript (103 pages at $1.15 per

page) (allowing recovery at half the cost of

original transcript because both defendants

ordered original)

Brett Sandstrom

Deposition

$268.45 Transcript copy (91 pages at $2.95 per page

because Engate arranged deposition) 
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Charles Christian and

Richard Wolfson

Depositions

$485.05 Transcript copy (107 pages at $2.55 per

page because Engate arranged deposition);

copy of exhibits ($32.20); and videotape

because witnesses were out of the country

($180.00)

Anthony Dowell

Deposition 

$128.80 Original transcript (112 pages at $1.15 per

page) (allowing recovery at half the cost of

original transcript because both defendants

ordered original)

Rhett Dennerline

Deposition

$485.30 Original transcript (422 pages at $1.15 per

page) (allowing recovery at half the cost of

original transcript because both defendants

ordered original)

Fred Middlebrooks

Deposition

$123.20 Transcript copy (56 pages at $2.20 per page

because Engate arranged deposition)

TOTAL $3,774.00

3. Printing costs

For printing costs, Esquire has petitioned for $323.30 and Atkinson-Baker has requested

$1,355.66. Engate objects that defendants have not demonstrated that these expenses were

necessary, and that even if they were, they can only recover printing costs for those documents

provided to the court or other parties. See, e.g. Zenith Elecs. Corp. v. WH-TV Broad. Corp.,

2004 WL 1631676, at *5 (N.D. Ill. July 19, 2004); Weiland v. Linear Constr., Ltd., 2004 WL

1631676, at *2 (N.D. Ill. Jan. 8, 2004). The Court agrees. The majority of defendants’ requested

costs are for “extras” such as binding, tabbing, and custom filing documents which are not

“necessary” as required by § 1920. 

Furthermore, Atkinson-Baker alone seeks reimbursement for the costs of actual printing,

and it has submitted an affidavit that these expenses were incurred to print court filings and

discovery materials. Neither the affidavit of Atkinson-Baker’s counsel nor counsel’s invoices,
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 The Court treated the expenses for photocopying and the Pitney Bowes Management

Services as printing expenses. See Atkinson-Baker’s Bill of Costs, Ex. C.

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however, show that these expenses are for copies produced for the Court and the other parties. 

See Haywood v. Evergreen Motor Cars, Inc., No. 02 C 6408, 2003 WL 22220121, at *2 (N.D.

Ill. Sep. 25, 2003); Atkinson-Baker Bill of Costs, Lipton Aff. ¶ 6. The Court nonetheless

recognizes that this was a paper-intensive case and that prevailing parties cannot be required to

provide a detailed explanation of every expense they incurred. See Northbrook Excess &

Surplus Ins. Co. v. Procter & Gamble Co., 924 F.2d 633, 643 (7th Cir. 1991) (expressing

concerns about requiring parties to enumerate detailed reasons for photocopying). We therefore

award Atkinson-Baker half of its printing costs, which we have calculated to be $254.36.3

4. Witness costs

For witness fees, Esquire requests $1,382.35, and Atkinson-Baker petitions for

$1,382.33. Engate raises no objections. The Court therefore taxes these costs to Engate.

5. Costs of exemplification and copies

Esquire requests $14,965.02 for the costs of copies and exemplification, and AtkinsonBaker petitions for $12,729.55 for the same purpose. Engate objects, arguing that defendants

have provided an inadequate explanation as to why the documents in question were copied and

that they have not provided sufficient information for the Court to determine the number of

pages copied and the rate per page. We approach this issue recognizing that “[defendants were]

not required to submit a bill of costs containing a description so detailed as to make it impossible

economically to recover photocopying costs. Rather, [they were] required to provide the best

breakdown obtainable from retained records.” See Northbrook Excess, 924 F.2d at 643. 
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Both defendants submit affidavits in which counsel state that after examining the records

in question, they have determined that only twenty percent of their respective photocopying

expenses were incurred for their convenience. See Esquire’s Bill of Costs, Nissen Aff. ¶ 6;

Atkinson-Baker’s Bill of Costs, Lipton Aff. ¶ 8. Atkinson-Baker states that it made 68,723

copies at the rate of $0.15 per page and 24,211 copies at the rate of $0.10 per page. In its bill of

costs, Atkinson-Baker requests its full copying expenses of $12,729.55, but in his affidavit,

counsel Alan Lipton states that only eighty percent of these expenses ($10,183.64) were

necessary and therefore recoverable. See Atkinson-Baker’s Bill of Costs, Lipton Aff. ¶ 8. 

Atkinson-Baker’s invoices, however, provide no information about what documents were

photocopied or how many copies were made, both of which are needed to permit the Court to

ascertain for itself whether the costs were necessary or were, for example, extra copies made for

the sake of convenience. See Atkinson-Baker’s Bill of Costs, Ex. E. 

Esquire states that it made 22,994 copies at $0.10 per page, 11,744 copies at $0.15 per

page, and incurred $14,645.27 in copying costs from outside vendors; again, it states that eighty

percent of these costs were necessary and therefore recoverable ($14,965.02), but it provides

virtually no accounting for this figure. Similarly, it provides no information about what

documents were copied or how many copies of the document were made. And unlike AtkinsonBaker’s invoices, Esquire’s invoices provide no indication of how many photocopies were made

for each photocopying charge. See Esquire’s Bill of Costs, Nissen Aff. ¶ 6, Exs. A & B. 

We are mindful of the Seventh Circuit’s admonition that the parties need not provide

detailed explanations of their photocopying expenses, and we also recognize the Federal

Circuit’s recent statement that “in complex patent litigation involving hundreds of thousands of
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documents and copies, parties cannot be expected to track the identity of each photocopied page

along with a record of its relevance to the litigation.” See Summit Tech. v. Nidek Co., Ltd., 435

F.3d 1371, 1378-79 (Fed. Cir. 2006) (finding district court’s taxation of fifty percent of total

photocopying costs as an approximate calculation of “necessary” photocopying was not an abuse

of discretion). The Court is also aware that this was a paper-intensive case that involved

extensive paper discovery and voluminous court submissions. For these reasons, the Court is not

inclined to deny the requested costs entirely. Rather, we will award a sum equal to one-half of

the total copying costs, which the Court believes appropriately takes account of the factors we

have noted. We therefore award Esquire $9,353.14 and Atkinson-Baker $6,364.78. 

The Court will award the entire expense of copying the videotapes showing the use of

various transcription technologies in Judge Strand’s courtroom in Arizona. See AtkinsonBaker’s Bill of Costs, Ex. C. Atkinson-Baker incurred the expense of duplication because it

intended to use the videotapes at trial, and as a result, it provided copies to the Court and to the

parties. Because this involved copying evidentiary material that was necessary to the litigation,

the Court awards Atkinson-Baker the full expense, $200. 

Finally, Esquire and Atkinson-Baker seek to recover the costs of depositions that were

not depositions in the traditional sense, but instead were demonstrations of older transcription

technologies. They claim that these depositions are taxable as exemplifications. A court can

award the reasonable expenses of exemplifications, which are defined as illustrative aids used to

enable the trier of fact to better understand the evidence at trial. Cefalu v. Village of Elk Grove,

211 F.3d 416, 427-28 (7th Cir. 2000). The depositions at issue involved demonstrations of older

technologies, and court reporter Sanchez conducted similar demonstrations at trial. We therefore
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treat them as exemplification expenses and award each of the defendants an additional $204.60. 

Conclusion

For the reasons state above, the Court grants defendants’ petitions for costs but limits the

defendants’ awards to $14,765.59 (Esquire) and to $12,447.57 (Atkinson-Baker) respectively. 

____________________________________

MATTHEW F. KENNELLY

 United States District Judge

Date: March 13, 2006