United States Court of Appeals 

for the Federal Circuit 

__________________________ 

IN RE RICOH COMPANY, LTD. PATENT 

LITIGATION 

__________________________ 

SYNOPSYS, INC., 

Plaintiff-Appellee, 

v. 

RICOH COMPANY, LTD., 

Defendant-Appellant. 

__________________________ 

RICOH COMPANY, LTD., 

Plaintiff-Appellant, 

v. 

AEROFLEX INCORPORATED, AMI 

SEMICONDUCTOR, INC., 

MATROX ELECTRONIC SYSTEMS, LTD., MATROX 

GRAPHICS, INC., 

MATROX INTERNATIONAL, INC., MATROX TECH, 

INC., 

AND AEROFLEX COLORADO SPRINGS, INC., 

Defendants-Appellees. 

__________________________ 

2011-1199 

__________________________ 
SYNOPSYS v. RICOH CO 2

Appeal from the United States District Court for the 

Northern District of California in case no. 03-CV-2289, 

Judge James Ware. 

___________________________ 

Decided: November 23, 2011 

___________________________ 

RICHARD G. FRENKEL, Latham & Watkins, LLP, of 

Menlo Park, California, argued for plaintiff-appellee and 

defendants-appellees. With him on the brief were RON E.

SHULMAN and TERRENCE J.P. KEARNEY . 

KENNETH W. BROTHERS, Dickstein Shapiro, LLP, of 

Washington, DC, argued for defendant-appellant and 

plaintiff-appellant. With him on the brief were GARY M.

HOFFMAN, AMANDA S. PITCHER, and CATHY CHEN. 

__________________________ 

Before LOURIE, BRYSON, and DYK, Circuit Judges. 

DYK, Circuit Judge. 

Ricoh Company, Ltd. (“Ricoh”) appeals the decision of 

the United States District Court for the Northern District 

of California awarding $938,957.72 in costs under 28 

U.S.C. § 1920 to Aeroflex, Inc., et al., and Synopsys, Inc. 

(collectively, “Synopsys”). In re Ricoh Co., Ltd. Patent 

Litig., No. 03-CV-2289, slip op. at 16 (N.D. Cal. Sept. 29, 

2010) (“Taxation Order”). We affirm in part, reverse in 

part, vacate in part, and remand. 

BACKGROUND

A dispute arose between Ricoh, the owner of U.S. Patent No. 4,922,432 (“the ’432 patent”) (directed to systems 

and processes for the design of application-specific integrated circuits) and Synopsys, which was alleged to sell 
3 SYNOPSYS v. RICOH CO

software for an infringing process. In January 2003, 

Ricoh filed a patent infringement action in the District of 

Delaware against seven of Synopsys’s customers, all of 

whom designed and manufactured computer chips using 

Synopsys’s software, asserting that the manufacturing 

process infringed the ’432 patent. In May 2003, Synopsys 

responded by filing a declaratory judgment action against 

Ricoh in the Northern District of California, seeking a 

declaratory judgment of noninfringement, invalidity, and 

unenforceability of the patent. The two actions were 

eventually consolidated in the Northern District of California. After nearly seven years of litigation, the district 

court granted Synopsys’s motion for summary judgment 

of noninfringement on April 15, 2010. We affirmed without opinion. In re Ricoh Co., Ltd. Patent Litig., 412 F. 

App’x 297, 298 (Fed. Cir. 2011).

After judgment was entered against Ricoh, Synopsys 

filed a Bill of Costs seeking approximately $1.375 million 

in costs. Ricoh objected to the Bill of Costs. Synopsys 

filed an amended Bill of Costs seeking $1,208,616.09, to 

which Ricoh again objected. The Clerk disallowed 

$353,508.40 of the costs sought by Synopsys for a final 

taxation of $855,107.69. At the request of both parties, 

the District Court reviewed the Clerk’s taxation of costs 

and increased the allowed costs to $938,957.72. The 

district court stayed Ricoh’s payment of the costs pending 

this court’s decision on the merits. Taxation Order, slip 

op. at 16. 

On November 12, 2010, the district court entered a 

judgment, awarding costs in the amount of $938,957.72 

plus applicable post-judgment interest. Ricoh timely 

appealed. We have jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(1). 
SYNOPSYS v. RICOH CO 4

DISCUSSION

The Federal Rules of Civil Procedure provide that 

“[u]nless a federal statute, these rules, or a court order 

provides otherwise, costs . . . should be allowed to the 

prevailing party.” Fed. R. Civ. P. 54(d)(1). Synopsys is 

clearly the prevailing party. Section 1920, however, 

“control[s] a federal court’s power to hold a losing party 

responsible for the opponent’s . . . fees” by limiting what 

costs can be awarded. Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 444 (1987). In pertinent part, 

section 1920 grants the district court the authority to tax 

as costs 

(2) Fees for printed or electronically recorded 

transcripts necessarily obtained for use in the 

case; . . . 

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

are necessarily obtained for use in the case; 

[and] . . . 

(6) Compensation of court appointed experts, 

compensation of interpreters, and salaries, 

fees, expenses, and costs of special interpretation services under section 1828 of this title. 

28 U.S.C. § 1920. There are disputes as to three categories of costs taxed against Ricoh: the costs of an electronic 

document database under subsection 4 ($234,702.43), 

exemplification fees and copy costs under subsection 4 

($322,515.71), and deposition and interpreter costs under 

subsections 2 and 6 ($131,247.28). The total amount in 

dispute is $688,465.42.

We apply regional circuit law, in this case Ninth Circuit law, in interpreting section 1920. See Summit Tech., 

Inc. v. Nidek Co., 435 F.3d 1371, 1374 (Fed. Cir. 2006). 
5 SYNOPSYS v. RICOH CO

The burden is on the losing party to demonstrate why the 

costs should not be awarded. Stanley v. Univ. of S. Cal., 

178 F.3d 1069, 1079 (9th Cir. 1999). A district court’s 

award of costs is reviewed for abuse of discretion. Summit Tech., 435 F.3d at 1374; Miles v. California, 320 F.3d 

986, 988 (9th Cir. 2003). However, whether a particular 

expense falls within the purview of section 1920, and thus 

may be taxed in the first place, is an issue of statutory 

construction, subject to de novo review. Summit Tech., 

435 F.3d at 1374. 

I 

Ricoh contends that the district court erred in awarding $234,702.43 to Synopsys for Stratify, a third-party 

electronic database service, representing the portion of 

the database costs paid by Synopsys. A brief history of 

the Stratify database is necessary. Ricoh sought the 

production of e-mails and other internal documents from 

Synopsys’s customers who used its software to design and 

manufacture integrated circuits. The parties were unable 

to agree on the form of production. Synopsys proposed 

three alternatives—providing a hard copy production of 

the e-mails, converting them to TIFF format and producing them as such, or loading them onto a local terminal at 

its offices and allowing Ricoh’s counsel to review them on 

site only. Ricoh objected to these forms of production, 

demanding that the e-mails be produced in native format, 

in their ordinary course of business. Ricoh suggested 

doing so using Stratify, an electronic discovery company 

that provides secure document processing, review, production and hosting services, and that the costs be divided 

between the parties. As described below, Synopsys agreed 

to the use of Stratify and to the division of costs. 

Synopsys contends that, because Stratify was used as 

the exclusive means for producing e-mails, the full cost of 
SYNOPSYS v. RICOH CO 6

Stratify is taxable as “fees for exemplification and the 

costs of making copies of any materials where the copies 

are necessarily obtained for use in the case” under section 

1920(4). Ricoh in turn argues that Stratify does not fall 

under section 1920(4) because it was a “document review 

database” (as opposed to a form of document production) 

for the convenience of counsel and not necessary for use in 

the case. 

Under section 1920(4), exemplification and copying 

costs for producing documents in discovery are recoverable. This is reflected in Northern District of California 

Civil Local Rule 54-3(d)(2), which permits taxing “[t]he 

cost of reproducing disclosure or formal discovery documents when used for any purpose in the case.” N.D. Cal. 

Civ. R. 54-3(d)(2). Here, the district court did not abuse 

its discretion in concluding that, absent a contrary 

agreement such as we conclude existed in this case, costs 

associated with Stratify were taxable because “the Stratify database was used as a means of document production 

in this case.” Taxation Order, slip op. at 13. 

The act of producing documents is not so narrowly 

construed as to cover only printing and Bates-labeling a 

document. See Black’s Law Dictionary 1328 (9th ed. 

2009) (defining “produce” as “[t]o provide (a document, 

witness, etc.) in response to subpoena or discovery request”). In the era of electronic discovery, courts have 

held that electronic production of documents can constitute “exemplification” or “making copies” under section 

1920(4). See, e.g., BDT Prods., Inc. v. Lexmark Int’l, Inc., 

405 F.3d 415, 420 (6th Cir. 2005) (“[E]lectronic scanning 

and imaging could be interpreted as ‘exemplification and 

copies of papers.’”). Notably, in 2008, Congress amended 

section 1920(4) by replacing the phrase “copies of papers” 

with “making copies of any materials,” Judicial Administration and Technical Amendments Act of 2008, Pub. L. 
7 SYNOPSYS v. RICOH CO

No. 110-406, § 6, 122 Stat. 4291, 4292 (emphasis added), 

to reflect the idea that “electronically produced information [is] [re]coverable in court costs,” 154 Cong. Rec. 

H10270, H10271 (daily ed. Sept. 27, 2008) (statement of 

Rep. Zoe Lofgren). Thus, the costs of producing a document electronically can be recoverable under section 1920(4). 

Here, it was Ricoh that initially suggested using 

Stratify because it “addresses all of [Synopsys’s] integrity 

and security concerns, while allowing you to easily comply 

with the requirements for producing the email documents 

in native format.” J.A. 3070. The district court did not 

err in concluding that Synopsys’s act of making available 

all of the requested e-mail to Ricoh through Stratify 

constituted electronic production of the e-mail. We do not 

consider any of the Stratify database costs to fall into the 

unrecoverable category of “intellectual efforts.” See

Romero v. City of Pomona, 883 F.2d 1418, 1428 (9th Cir. 

1989), overruled in part on other grounds by Townsend v. 

Holman Consulting Corp., 929 F.2d 1358, 1363 (9th Cir. 

1991). “Since the documents were produced in their 

native form via the database,” Taxation Order, slip op. at 

13, we hold that the basic Stratify costs would be recoverable under section 1920(4), absent an agreement to the 

contrary. In light of our decision, we need not decide if 

the additional challenged items related to the database 

were improperly allowed. 

However, Ricoh argues in the alternative that the 

parties agreed by contract to share the cost of Stratify, 

and that this agreement precludes cost-shifting. There is 

no question that parties may agree to share costs that 

would otherwise be taxable. In Crawford, the Supreme 

Court held “that absent explicit statutory or contractual 

authorization for the taxation of the expenses of a litigant’s witness as costs, federal courts are bound by the 
SYNOPSYS v. RICOH CO 8

limitations set out in 28 U.S.C. § 1821 and § 1920.” 482 

U.S. at 445 (emphasis added). In Monsanto Co. v. David, 

516 F.3d 1009, 1012 (Fed. Cir. 2008), the parties had 

entered into a technology agreement that provided that 

certain costs, not otherwise allowable under section 1920, 

would be paid to the party licensing the technology if it 

had to enforce the agreement. We affirmed the district 

court’s full award of costs to the prevailing party according to the agreement because, under Crawford, section 

1920 “does not set maximum costs around which private 

parties may not contract.” Id. at 1017. If parties can 

exceed the allowable costs under section 1920 by contract, 

we see no reason why in light of Crawford they cannot 

likewise limit the allowable costs under section 1920 by 

contract. 

There is scant authority from other circuits as to 

whether a cost-sharing agreement between parties to 

litigation is controlling as to the ultimate taxation of 

costs. The primary circuit authority, Thomas v. Duralite 

Co., held that it was “proper” to exclude from costs 

awarded certain charges because “[t]he parties had 

agreed to share the expense for [that] service.” 524 F.2d 

577, 590 (3d Cir. 1975).1

 1 The other circuit authority concerning cost sharing agreements, Saunders v. Washington Metropolitan 

Area Transit Authority, is not relevant here. 505 F.2d 331 

(D.C. Cir. 1974). Saunders involved a challenge to a 

taxation of costs in favor of the prevailing party for printing the joint appendix in light of an agreement to share 

those costs. Id. at 333. In this context, the agreement to 

share costs was simply implementing the initial costsharing provisions of Federal Rule of Appellate Procedure 

30(b): “Unless the parties otherwise agree, the cost of 

producing the appendix shall initially be paid by the 

appellant . . . .” Id. at 333–34 n.14 (emphasis added) 

(citing Fed. R. App. P. 30(b)). 
9 SYNOPSYS v. RICOH CO

Here, there is no dispute that Synopsys agreed to 

share the cost of the Stratify database with Ricoh. Synopsys originally proposed that Ricoh “agree to pay half of 

the costs associated with producing [Synopsys’s] e-mails.” 

J.A. 3062. When Ricoh later suggested using Stratify to 

produce the e-mails, it agreed that “[t]he cost would be 

divided between the parties.” J.A. 3069. The parties then 

implemented this arrangement by entering into a 14-page 

agreement with Stratify in which they jointly retained 

Stratify to perform electronic discovery services. The 

parties characterized this agreement as a cost-sharing 

agreement, but never indicated that the cost-sharing was 

only temporary. Communications between the parties 

after the agreement with Stratify was executed continued 

to reflect the cost-sharing agreement. See, e.g., J.A. 3396 

(“Accordingly, we . . . will split the cost, pursuant to the 

contract, of the additional databases.”). There is no 

indication in any of the extensive communications between the parties that they intended this cost-sharing 

agreement to be anything other than a final settlement of 

the cost of the Stratify database. If the cost-sharing 

agreement were designed to be only an interim agreement, it seems likely that there would have been some 

indication to that effect in either the communications 

between counsel or the agreement with Stratify. Under 

these circumstances, the parties’ agreement is best interpreted as agreeing to a final, not an interim, sharing of 

costs. 

The parties’ agreement to share the cost of the Stratify database is controlling, and we reverse the district 

court’s award of $234,702.43 for Synopsys’s share of the 

database. 
SYNOPSYS v. RICOH CO 10

II 

Ricoh next challenges $322,515.71 of document copying costs under section 1920(4). The parties do not dispute that Synopsys is entitled to recover from Ricoh the 

copying and exemplification costs directly associated with 

discovery material tendered to Ricoh. In fact, Ricoh is not 

challenging $146,584.83 of Synopsys’s copying costs 

because they were clearly incurred in copying Synopsys’s 

discovery production for Ricoh. The focus of the dispute 

here is on whether the other $322,515.71 in copying costs 

claimed by Synopsys are in fact associated with documents tendered to Ricoh and copied for Ricoh. We note at 

the outset that both parties’ briefs were not as helpful as 

they should have been in assisting us to resolve this 

dispute. 

Under section 1920, the “costs of making copies of any 

materials” are recoverable “where the copies are necessarily obtained for use in the case.” 28 U.S.C. § 1920(4). 

This does not require, however, that the copies actually be 

used in the case or made part of the record. Haagen-Dazs 

Co. v. Double Rainbow Gourmet Ice Creams, Inc., 920 F.2d 

587, 588 (9th Cir. 1990). The Local Rules further provide 

that under section 1920(4), although “[t]he cost of reproducing copies of motions, pleadings, notices, and other 

routine case papers is not allowable,” N.D. Cal. Civ. L.R. 

54-3(d)(3), “[t]he cost of reproducing disclosure or formal 

discovery documents when used for any purpose in the 

case is allowable,” id. at 54-3(d)(2). Thus, the prevailing 

party can recover, as costs for reproduction and exemplification under section 1920(4), the costs incurred in preparing a single copy of the original documents produced for 

the opposing party where that copy is supplied to the 

opposing party. See Stearns Airport Equip. Co. v. FMC 

Corp., 170 F.3d 518, 536 (5th Cir. 1999). 
11 SYNOPSYS v. RICOH CO

“[T]he burden is on the prevailing [party] to establish 

the amount of compensable costs and expenses to which 

they are entitled. Prevailing parties necessarily assume 

the risks inherent in a failure to meet that burden.” 

English v. Colo. Dep’t of Corr., 248 F.3d 1002, 1013 (10th 

Cir. 2001) (alteration in original) (internal quotation 

marks omitted). Accordingly, the Local Rules require 

“[a]ppropriate documentation to support each item 

claimed.” N.D. Cal. Civ. R. 54-1(a). In addressing the 

prevailing party’s burden to establish and support the 

amount to which it is entitled, other circuits have held 

that a list of costs and expenses must be adequately 

detailed, identifying the purpose of each expenditure, 

English, 248 F.3d at 1013, and not “filled with generic 

references such as ‘transcripts,’ ‘publication,’ and ‘document production,’” Fabi Constr. Co. v. Sec’y of Labor, 541 

F.3d 407, 414 (D.C. Cir. 2008). Section 1920 allows the 

recovery of costs for a prevailing party who establishes 

that the copied documents were produced by it pursuant 

to Rule 26 or other discovery rules and that the copies 

were requested by, and supplied to, the opposing party. 

The district court held that the disputed copying costs 

were recoverable because they “were primarily incurred in 

connection with the parties’ document productions” and 

“Synopsys provided invoices with sufficient detail as 

required by the Local Rules.” Taxation Order, slip op. at 

11. We disagree and conclude that Synopsys did not meet 

its burden under section 1920 to establish the amount of 

costs to which it is entitled. After reviewing the documentation filed by Synopsys with respect to these disputed 

reproduction and exemplification costs, we find that the 

invoices and itemized spreadsheet accompanying Exhibit 

E were not specific enough to permit the taxation of those 

costs. In considering the invoices in Exhibits E through G 

of Synopsys’s Revised Bill of Costs, we are unable in many 
SYNOPSYS v. RICOH CO 12

instances to determine what documents were being reproduced and to which side the copies were ultimately provided. For example, Item 74 of Exhibit E, a $789.75 

invoice for 6,344 copies, only states, “Medium Handling 

Litigation Copies. 3 Box originals copy x 1.” J.A. 1969. 

The entry for Item 74 in the spreadsheet itemizing the 

invoices simply states “Document production.” J.A. 1790. 

In fact, many of the invoices and entries in the itemized 

spreadsheet accompanying Exhibit E simply state the 

copies were for “Document production.” 

The phrase “document production” on an invoice does 

not automatically signify that the copies were produced to 

opposing counsel. “Document production” and other 

similarly generic statements on the invoices are unhelpful 

in determining whether those costs are taxable. See Fabi 

Constr. Co., 541 F.3d at 414. Many firms make copies of 

all documents they produce to the other side for their own 

records. Furthermore, many of the invoices at issue here 

indicate Howrey LLP, counsel for Synopsys, as the party 

to which the copied documents were shipped, thus raising 

the question whether those documents were tendered to 

Ricoh’s counsel. When the prevailing party seeks to 

recover copying costs related to its own document production, to meet the documentation requirements, the prevailing party must establish, in connection with its 

proposed Bill of Costs, that the reproduced documents 

were produced by it pursuant to Rule 26 or other discovery rules; that they were copied at the prevailing party’s 

expense and at the request of the opposing party; and that 

the copies were tendered to the opposing party. To be 

sure, “in complex patent litigation involving hundreds of 

thousands of 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.” 

Summit Tech., 435 F.3d at 1378. But, “a bill of costs must 
13 SYNOPSYS v. RICOH CO

represent a calculation that is reasonably accurate under 

the circumstances.” Id. at 1380. 

In light of the inadequate documentation, the district 

court abused its discretion in awarding $322,515.71 for 

reproduction and exemplification disputed by Ricoh.2 At 

the same time it is far from clear that the $146,584.83 

conceded by Ricoh represents the full costs of copying the 

documents produced for Ricoh. Under the circumstances 

we think the best course is to vacate the district court’s 

award in this respect and to remand to the district court 

for further consideration.3 

On the remand, we do not foreclose the district court 

from awarding additional copying costs based on further 

documentation and/or affidavits from the parties that 

demonstrate that the copies were produced pursuant to 

Rule 26 or other discovery rules and that the copies were 

ultimately provided to Ricoh.4 The district court may 

 2 We recognize that the district court “reduced the 

taxable amount for exemplification by $32,742.61, which 

is the amount associated with extra copies and CD/DVDs 

that do not appear to be reasonably necessary.” Taxation 

Order, slip op. at 11 n.20. But this reduction was addressed to a different problem. 

3 Ricoh also challenges an award of costs for shipping fees and document assembly fees for tabs and folders. The district court would not abuse its discretion in 

awarding such costs if they related to categories of documents as to which the recovery of reproduction costs 

under section 1920(4) is appropriate. 

4 We note an additional dispute as to whether Synopsys should be able to recover costs for blowback copies 

of documents produced in electronic form for Ricoh. Ricoh 

represented at oral argument that no such blowback 

copies were requested. Oral Arg. at 37:04–37:31, available at http://www.cafc.uscourts.gov/oral-argumentrecordings/search/audio.html (search “Appeal Number” 

for “2011-1199”) (“Ricoh never requested blowbacks. 
SYNOPSYS v. RICOH CO 14

choose to make a reasonable estimate of recoverable 

copying costs based on an estimate of the total number of 

pages of discovery that Ricoh requested be copied multiplied by a reasonable price per page. 

III 

Last, Ricoh challenges the award of $102,070.67 in 

costs for transcriptions of depositions that it believes were 

not reasonably necessary, as well as $29,176.61 in interpreter fees incurred during those depositions. Ricoh first 

argues that only six depositions were used in connection 

with the successful summary judgment motion, and thus 

Synopsys can recover only those costs related to the six 

depositions. Synopsys contends that the district court 

properly exercised its discretion to award these costs 

because at the time the depositions were taken, it was 

reasonable to expect that they would be used for trial 

preparation. 

Section 1920(2) permits the taxation of “[f]ees for 

printed or electronically recorded transcripts necessarily 

obtained for use in the case.” Thus, because the award of 

costs for deposition transcripts is within the scope of 

section 1920, the district court’s decision to tax the cost of 

all depositions, not just those used in the motion for 

summary judgment, is reviewed for abuse of discretion. 

See Miles, 320 F.3d at 988. Ninth Circuit precedent is 

clear that a document need not be offered as evidence to 

have been necessarily obtained for use in the case. Haagen-Dazs, 920 F.2d at 588; see also Crockett v. Shields, 8 

 

These were documents produced in electronic form to 

Ricoh and what Synopsys chose to do and whether it 

wanted to make hard copies for its own convenience was 

its decision.”). If the district court determines that Ricoh’s representation is accurate, the blowback copy costs 

should not be allowed. 
15 SYNOPSYS v. RICOH CO

F. App’x 604, 606 (9th Cir. 2001) (“The depositions need 

not have been used at trial to be ‘necessarily obtained for 

use in the case.’”). However, depositions “merely useful 

for discovery” are not taxable “and their expense should 

have been borne by the party taking them, as incidental 

to normal preparation for trial.” Indep. Iron Works, Inc. v. 

U.S. Steel Corp., 322 F.2d 656, 678 (9th Cir. 1963); see 

also 10 Charles Alan Wright, Arthur R. Miller & Mary 

Kay Kane, Federal Practice and Procedure § 2676 (3d ed. 

1998) (“When a deposition is not actually used at trial or 

as evidence on some successful preliminary motion, 

whether its cost may be taxed generally is determined by 

deciding if the deposition reasonably seemed necessary at 

the time it was taken.”). 

Here, the district court taxed Ricoh for all depositions 

taken in the case because they “were taken in connection 

with several relevant aspects of the case, from validity to 

damage issues. As such, at the time the depositions were 

taken, it was reasonable to expect that they were for the 

purpose of trial preparation.” Taxation Order, slip op. at 

15 (citation omitted). This finding was within the discretion of the district court. Because translation was necessary in connection with a number of these depositions, 

those costs are taxable under section 1920 as well. See

Taniguchi v. Kan Pac. Saipan, Ltd., 633 F.3d 1218, 1221–

22 (9th Cir. 2011). 

Ricoh argues in the alternative that the taxation 

should be reduced by $43,217.85 because the district court 

taxed it for costs associated with both a written transcript 

and the video. Section 1920(2) provides that costs associated with “[f]ees for printed or electronically recorded 

transcripts necessarily obtained for use in the case” are 

taxable. 28 U.S.C. § 1920(2) (emphasis added). Local Rule 

54-3(c)(1) further states that “[t]he cost of an original and 

one copy of any deposition (including videotaped deposi-
SYNOPSYS v. RICOH CO 16

tions) taken for any purpose in connection with the case is 

allowable.” N.D. Cal. Civ. R. 54-3(c)(1). 

The district court concluded that “[a]llowing recovery 

for both of these fees is more in accord with the language 

of the Local Rules, along with commonplace practice in 

patent litigation of videotaping deponents.” Taxation 

Order, slip op. at 10. Although the Ninth Circuit has not 

addressed this issue, the district court’s decision that such 

costs are allowable comports with other circuit decisions 

interpreting section 1920(2). See Tilton v. Capital Cities/ABC, Inc., 115 F.3d 1471, 1478 (10th Cir. 1997) 

(“[T]he district court did not abuse its discretion in taxing 

the costs of both the preparation and transcription of the 

seven videotaped depositions.”); BDT Prods., 405 F.3d at 

420. The Courts of Appeals decisions in Tilton and BDT

predated the 2008 amendment to section 1920(2) that 

specifically provided for an award of fees “for printed or 

electronically recorded transcripts,” Pub. L. No. 110-406, 

§ 6, 122 Stat. 4291, 4292, but there is no indication in the 

text or history of that amendment that Congress intended 

to overrule those decisions. Consistent with the Sixth and 

Tenth Circuits, we think that the correct interpretation of 

section 1920 is that the costs constitute taxable costs.5 

 5 We note that district courts in the Northern District of California have reached divergent results interpreting Local Rule 54-3(c)(1) on whether the court can tax 

both the written transcript and the video of a deposition. 

Compare Hynix Semiconductor v. Rambus Inc., 697 F. 

Supp. 2d 1139, 1150 (N.D. Cal. 2010) (“The cost of . . . a 

copy of the videotape and written transcript are taxable 

costs.”), with Pierson v. Ford Motor Co., No. C 06-6503, 

2010 WL 431883, at *4 (N.D. Cal. Feb. 2, 2010) (“[T]he 

cost of only one method of recording the deposition is 

allowable.”). Although “[d]istrict courts have broad discretion in interpreting and applying their local rules,” 

Miranda v. S. Pac. Transp. Co., 710 F.2d 516, 521 (9th 

Cir. 1983), local rules cannot render disallowable costs 
17 SYNOPSYS v. RICOH CO

Therefore, the district court did not exceed its authority 

under section 1920 in taxing both the written transcription and the video of the depositions. 

* * * 

We therefore affirm the award of costs related to the 

depositions, reverse the award of costs on the Stratify 

discovery database, vacate the award of copying costs, and 

remand for further proceedings consistent with this 

opinion. 

AFFIRMED-IN-PART, REVERSED-IN-PART, 

VACATED-IN-PART and REMANDED 

COSTS

No costs. 

 

otherwise allowable under section 1920. Fed. R. Civ. P. 

83(a) (“A local rule must be consistent with . . . federal 

statutes . . . .”); In re Baby Food Antitrust Litig., 166 F.3d 

112, 139 (3d Cir. 1999) (“[T]o the extent that it conflicts 

with Section 1920, [the local rule] must give way.”); see 

also Hajek v. Burlington N. R.R. Co., 186 F.3d 1105, 1110 

(9th Cir. 1999).