Prevailing Party for bill of costs -- Look at the overall objective of the litigation

I've previously written about the Voter Verified v. Premier Election Solutions, Inc.  First, Judge Fawsett determined that you can't infringe a surrendered patent.   Later, she determined that one of the claims at issue was invalid for obviousness.

Since then, the parties briefed additional summary judgment issues regarding infringement.  The Court agreed with defendants that a finding of non-infringement of certain claims was appropriate at the summary judgment stage.  The Court also later dismissed one of the defendant's invalidity counterclaims, without prejudice.  The result was that final judgment was entered against the plaintiff finding there was no infringement concerning two of the patents at issue.  Final judgment was also entered against one of the defendants relating to its invalidity counterclaim.  Defendants next filed a Proposed Bill of Costs.

Fed. R. Civ. P. 54(d)(1) provides that a "prevailing party" shall recover its costs.  Allowable costs, per the statute, are:

(1) Fees of the clerk and marshal;
(2) Fees for printed or electronically recorded transcripts necessarily obtained for use in the case;
(3) Fees and disbursements for printing and witnesses;
(4) Fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case;
(5) Docket fees under section 1923 of this title;
(6) Compensation of court appointed experts, compensation of interpreters, and salareis, fees, expenses, and costs of special interpretation services under section 1828 of this title.

Defendants sought costs relating to depositions.  Plaintiff objected, arguing that: (1) Defendants weren't "prevailing parties;" and (2) Defendants hadn't filed the depositions in the Court record, and thus they were not recoverable.  The Court was not persuaded.

Prevailing Party

Determining who is the prevailing party is not a calculation of which side won more of its claims than the other.  Rather, the Court must look at the "relation of the litigation result to the overall objective of the litigation."  The Court dispensed with this step quickly:

The overall objective of the present litigation was for [Plaintiff] to obtain a finding that the Defendants infringed the asserted patents.  While Defendants raised a number of different defenses to [Plaintiff's] allegations and several of those defenses failed, [Plaintiff] did not meet its objective.  In the end, Defendants were found not to have infringed any of the 149 patent claims asserted by [Plaintiff].  Accordingly, Defendants are "prevailing parties" within the meaning of Rule 54(d).

Depositions Need Not Be Filed With The Court To Be Recoverable Costs


A prevailing party need not file a deposition transcript with the Court in order to recover its costs.  Rather, the test is the test defined in the statute -- if the deposition transcript was "necessarily obtained for use in the case," it's recoverable.

Generally, deposition costs of a losing party's witnesses are recoverable.  To avoid the general rule, the losing party must demonstrate that the deposition was not related to an issue in the case at the time of the deposition:

When challenging whether costs are properly taxable, the burden lies with the losing party, unless the knowledge regarding the proposed cost is a matter within the exclusive knowledge of the prevailing party.

Plaintiff didn't carry that burden here, so the costs were recoverable.

Plaintiff's objections to Defendant's bill of costs Overruled.

Voter Verified, Inc. v. Premier Election Solutions, Inc., Case No. 6:09-cv-1968 (M.D. Fla. Oct. 24, 2011) (J. Fawsett)