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)

Summary Judgment granted where plaintiff did not rebut defendant's expert's opinion on obviousness

Judge Fawsett previously held in the Voter Verified v. Election Systems dispute that you can not infringe a surrendered patent. She's now had a chance to address defendant's further summary judgment motion, asking the Court to find one of the claims of the patent invalid for being obvious in view of the prior art.

First, plaintiff objected to the prior art defendant relied on. The court considered some of the art prior art, but found that other references did not qualify because they were not reasonably accessible to the public interested in the art. The reference that didn't make it was purportedly presented at the Fifth International Computer Virus and Security Conference. Defendant asked the court to find this article prior art on the basis that: (1) defendant's expert stated that the paper was presented at the conference; (2) the paper had a legend in the bottom corner of each page stating the conference name. But this wasn't enough. Specifically, there was no evidence in the record concerning the manner in which the paper was published, and how it was made available to persons of interest in the art. Thus, it didn't qualify as prior art for purposes of summary judgment consideration.

That small win, though, didn't carry the day for plaintiff, because the defendant had other art that was considered prior art. The summary judgment dispute turned on whether the claimed invention was obvious in light of the prior art. To resolve this, the court went through the Graham factors and found the subject claim obvious. Defendant's expert opined on each of the factors ((1) the scope and content of the prior art; (2) differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations such as commercial success and satisfaction of a long felt need). Plaintiff disagreed with the expert's conclusions, but does not have appeared to offer any evidence to the contrary. As such, summary judgment was appropriate.

Summary judgment granted. Claim held invalid for being obvious.

Voter Verified v. Election Systems & Software, Inc., Case No. 6:09-CV-01969 (M.D. Fla. Jan. 25, 2011) (J. Fawsett)