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Warner Chilcott Laboratories Ireland Limited, et al v. Impax Laboratories

April 18, 2013



This matter comes before the Clerk on the motion of Defendant Impax Laboratories, Inc. ("Impax," "Defendant") for the taxation of costs pursuant to Federal Rule of Civil Procedure 54(d) and Local Civil Rule 54.1. Plaintiffs Warner Chilcott Company, LLC, Warner Chilcott Plaintiffs, v. (US), LLC, and Mayne Pharma International Pty. Ltd. (collectively, "Warner Chilcott," "Plaintiffs") oppose this motion.

Impax was named as a defendant in two of these three consolidated actions, Civ. A. Nos. 08-6304 and 09-1233, by Warner Chilcott for alleged infringement of its United States Patent No. 6,958,161 ("the '161 patent"). The '161 patent relates to Plaintiffs' modified release preparations of doxycycline hyclate, marketed as "Doryx." In numerous complaints filed by Warner Chilcott, it alleged that Impax and other defendants, including Mylan Pharmaceuticals Inc. and Mylan Inc. (collectively, "Mylan"), infringed its '161 patent by filing Abbreviated New Drug Applications with the United States Food and Drug Administration for generic delayed- release tablets containing a doxycycline hyclate base before the expiration of the '161 patent.

The claims against the various defendants were dismissed except for those against ImpaX and Mylan in these three consolidated actions, which proceeded to trial. A seven-day bench trial was held on February 1-9, 2012, and on April 30, 2012, the Court entered Final Judgment in favor of Warner Chilcott on the issue of validity and in favor of Impax and Mylan on the issue of infringement. [Dkt. Entry 302].*fn1

All parties appealed this Court's judgment to the United States Court of Appeals for the Federal Circuit [Dkt. Entries 303, 316, 318] and on September 7, 2012, that judgment was affirmed. [Dkt. Entry 339].

While the appeals were pending, Mylan filed a motion to tax costs on May 29, 2012 [Dkt. Entry 317] and Impax's motion, under consideration here, followed on May 30, 2012 [Dkt. Entry 319]. The Clerk has issued a separate opinion [Dkt. Entry 374] and order [Dkt. Entry 375] addressing Mylan's motion and setting forth the factual and procedural histories in greater detail. Many of the costs sought here by Impax are of the same type as those requested by Mylan. Accordingly, the Clerk incorporates herein the opinion on Mylan's motion, which also sets forth the relevant law.

Impax requests the taxation of costs pursuant to Fed. R. Civ. P. 54(d) (1), which provides that "[u]nless a federal statute, these rules, or a court order provides otherwise, costs-other than attorney's fees -- should be allowed to the prevailing party." As set forth in its bill of costs [Dkt. Entry 319-2], Impax seeks the fees of: pro hac vice admission ($1,500.00); transcripts of hearings and depositions ($63,043.28); witnesses ($14,028.56); exemplification and copies ($135,036.21); postage and messenger services ($2,190.96); and computer-assisted legal research ($7,506.40); for a total of $223,305.41.*fn2 Plaintiffs contest all categories of costs except the fees of pro hac vice and the transcripts of hearings.*fn3 Impax is the "prevailing party" in this patent litigation in which it was exonerated from Warner Chilcott's claims of infringement. The judicial determination of non-infringement materially altered the legal relationship between the parties in a way that benefits Impax. Manildra Milling Corp. v. Ogilvie Mills, Inc., 76 F.3d 1178, 1181-82 (Fed. Cir. 1996); United Access Technologies, LLC v. Earthlink, Inc., Civil Action No. 02-272-MPT, 2012 WL 2175786, at *4 (D. Del. June 14, 2012).

While there is a strong presumption within the Third Circuit in favor of granting a prevailing party's costs, Reger v. Nemours Found., Inc., 599 F.3d 285, 288 (3d Cir. 2010), reimbursable costs are limited to those set forth in 28 U.S.C. § 1920, Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441 (1987), and that party must provide sufficient information to show that the costs sought fall within the purview of § 1920, Romero v. CSX Transp., Inc. 270 F.R.D. 199, 201-202 (D.N.J. 2010).

Items taxable as costs, pursuant to § 1920, 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 salaries, fees, expenses, and costs of special interpretation services under section 1828 of this title.

In addition to Fed. R. Civ. P. 54(d) (1) and 28 U.S.C. § 1920, the Clerk is guided by Local Civil Rule 54.1, which "establishes the general procedures to be followed in those cases where a party is entitled to recover costs" under § 1920. Lite, N.J. Federal Practice Rules,

Comment 2 to Rule 54.1 (Gann 2013 ed.) at 234.

Impax has complied with the procedural requirements of L. Civ. R. 54.1 and 28 U.S.C. § 1924 by timely filing and serving a verified Bill of Costs with copies of invoices attached [Dkt. Entries 317, 331]. The Clerk therefore turns to the specific costs of which Impax seeks taxation, as set forth in the Affidavit of Adrienne G. Johnson, Esq. ("Johnson Aff.") [Dkt. Entry 319-3].

I.Pro Hac Vice Fees, § 1920 (1)

Impax seeks reimbursement of the $1,500.00 of fees paid to the Clerk for ten pro hac vice applications. Defendant asserts that such fees are taxable as fees of the Clerk, pursuant to § 1920 (1), and cites the case of Church & Dwight Co., Inc. v. Abbott Labs., Civ. A. No. 05- 2142, 2009 U.S. Dist. LEXIS 58067, at *20-21 (D.N.J. July 8, 2009). Def.'s Br. at 2. Section 1920 (1) allows the taxation of the "[f]ees of the clerk" but does not explicitly include pro hac vice fees as costs. The Third Circuit has not addressed whether these fees are taxable costs and other federal circuits are divided on this issue. The Eighth Circuit has held that pro hac vice fees are recoverable under § 1920 (1), Craftsmen Limousine, Inc. v. Ford Motor Co., 579 F.3d 894, 898 (8th Cir. 2009), and the Eleventh Circuit has ruled to the contrary, Beck v. Prupis, 162 F.3d 1090, 1100 (11th Cir. 1998), aff'd on other grounds, 529 U.S. 494 (2000) (finding district court did not abuse its discretion in disallowing the taxation of pro hac vice fees).

Defendant relies upon the case of Church & Dwight Co., Inc., in which this Court summarily taxed pro hac vice fees without discussion of case law or its rationale. 2009 U.S. Dist. LEXIS 58067, at *20-21. Nevertheless, particularly in light of the Supreme Court's recent reminder in Taniguchi to apply § 1920 restrictively, 132 S. Ct. 1997 (2012), the Clerk adopts the reasoning of those courts within this Circuit which have declined to extend § 1920 (1) to cover such fees. In Sheffer v. Experian Info. Solutions, Inc., 290 F.Supp.2d 538, 552 (E.D. Pa. 2003) (quoting Romero v. United States, 865 F. Supp. 585, 594 (E.D. Mo. 1994)), the court explained that pro hac vice fees are "an 'expense of counsel for the privilege of practicing law in this Court' and, as such, are 'not normally charged to a fee-paying client . . . and are not recoverable' under § 1920." See also Montgomery County v. Microvote Corp., Civ. A. No. 97-6331, 2004 WL 1087196 , at *3 (E.D. Pa. May 13, 2004). Other courts have similarly held. See, e.g., Moss v. Spartanburg County School Dist., C.A. No. 7:09-1586-HMH, 2011 WL 1870280, at *1 (D.S.C. May 17, 2011); Lofton v. McNeil Consumer & Specialty Pharm., Civ. A. No. 3:05-CV-1531-L, 2011 WL 206165, at *1 (N.D. Tex. Jan 4, 2011), report and recommendation adopted, 2011 WL 208391 (N.D. Tex. Jan. 21, 2011); Knauff v. Dorel Juvenile Group, Inc., Civ. A. No. SA-08-CV-336-XR, 2010 WL 2545424, at *2 (W.D. Tex. June 21, 2010).

The Clerk determines that Warner Chilcott should not be required to pay these fees simply because Impax chose to be represented by counsel who are not admitted to practice in this district. Therefore, the Clerk denies the taxation of Impax's pro hac vice fees.

II.Fees for Transcripts, § 1920 (2)

A. Hearing and Trial Transcripts

Impax wishes to recover the costs of the transcripts of several hearings ($829.55) and of the trial transcripts ($4,806.90), or a total of $5,636.45. Fees for recorded transcripts are taxable under § 1920 (2) if the transcripts were necessarily obtained for use in the case.

Defendant explains the necessity of these transcripts as follow:

The trial transcript was necessary to completing the post-trial brief and findings of fact as required by this Court. The Markman hearing transcript was required to understand the Court's claim construction -- and notably, questions of claim construction persisted all the way into trial. Impax also seeks the costs for a number of pre-trial conferences and case management conferences, all of which were necessary for understanding and complying with the court's requirements moving forward in trial. Finally, Impax seeks costs for two hearings on motions to strike, the final rules and arguments of which were necessary for Impax to craft its final case presentation for trial.

Def.'s Br. at 3.

As with the Mylan motion, Plaintiffs here do not contest taxation of this cost.

Furthermore, the Clerk is satisfied with Impax's explanation of the necessity of these transcripts in this complex case. The bulk of this cost arises out of the trial transcripts, and, as noted in the Clerk's opinion in the companion Mylan motion, trial transcripts are taxable when necessary to prepare findings of fact and conclusions of law which include annotations to the trial transcripts, as required by the Final Pre-Trial Order in this case. [Dkt. Entry 252-2 at 294].

Accordingly, the Clerk taxes this entire $5,636.45 cost.

B.Deposition Transcripts

Impax also requests the $57,406.83 cost of the written transcripts of 21 depositions and the videotaped version of some of those depositions, pursuant to § 1920 (2). Warner Chilcott objects to all costs of eight of the depositions, totaling $12,630.30 and asserts that overall, the transcript costs are over-inclusive as to services and should be reduced by an additional sum of $32,693.61.

Defendant justifies these costs by explaining that all of the transcripts of the following deponents were used during or in preparation for hearings or trial: Drs. Sodhi, Sommer and Kibbe were Impax expert witnesses; Drs. Davies and McGinity were Plaintiffs' expert witnesses; Messrs. Lepore, Lukas, Quinn and Hayes were named inventors of the patent in suit; and Messrs. Ting, Thomas, Shaw and Liu were Impax fact witnesses deposed by Plaintiffs. Def.'s Br. at 4. Defendant has omitted a final deponent, Tina DeVries from this list, but the Clerk has ascertained that she was listed in the Final Pre-Trial Order as a potential adverse witness for Impax. [Dkt. Entry 252-2 at 272].

Plaintiffs object to all costs of the deposition transcripts of Kenneth Liu and Mark Shaw, two depositions of James McGinity, and the October 27, 2011 deposition of Dr. Martyn Davies, asserting, "[n]one of the depositions of these witnesses were used at trial for impeachment purposes, and they were not entered into evidence, or even designated for trial. Impax did not attempt to explain how the depositions of these witnesses were used during the litigation, and thus has not shown how costs associated with these depositions are taxable." Pls.' Br. at 6-7. Mylan too had objected to the same costs of the McGinity depositions of April 15, 2010 and November 11, 2011, as well as the Davies deposition of October 27, 2011. As stated in the Clerk's opinion on the Mylan motion [Dkt. Entry 374 at 9], these transcripts were necessarily obtained for use in the case because the Final Pre-Trial Order lists James McGinity as an expert witness for Plaintiffs and the contested Davies deposition was also included therein. Therefore, these depositions of expert witnesses would have "appear[ed] reasonably necessary to the parties in light of a particular situation existing at the times they were taken.'" Thabault v. Chait, Civ. A. No. 85-2441, 2009 WL 69332, at *7 (D.N.J. Jan. 7, 2009). Expressed differently by this Court in another patent infringement suit, Pharm. Resources, Inc. v. Roxane Labs., Inc., "[i]t is reasonable to conclude that the depositions of the expert witnesses were necessarily obtained for use in the case because issues such as infringement, obviousness, anticipation, and indefiniteness would likely be resolved on the basis of their testimony, which would have to be studied and analyzed." Civ. A. No. 03-3357, 2008 WL 2951173, at *3 (D.N.J. July 25, 2008).

Regarding Mark Shaw and Kenneth Liu, Defendant states that like Messrs. Ting and Thomas, they were Impax fact witnesses deposed by Plaintiffs and that "Messrs. Shaw and Liu's testimony was necessary for Impax to acquire because of the likelihood that Plaintiffs would similarly designate their testimony" for use at trial. Pls.' Br. at 4. Mark Shaw is shown in the Final Pre-Trial Order as a fact witness of Impax [Dkt. Entry 252-2 at 271]. The Clerk cannot find that these transcripts were obtained by Defendant merely for investigatory purposes but rather, agrees with Impax that they would have been necessary for defense counsel to prepare for trial. In sum, all eight contested depositions will be taxed. However, their taxation will be subject to the deductions discussed below.

As to the remaining depositions, Warner Chilcott maintains that the only fees taxable under § 1920 (2) and L. Civ. R. 54.1(g) (7) are the costs of the preparation of the transcript and the reporter. Pls.' Br. at 8-12. Other costs of videotapes, DVD Sync, shipping/delivery, expedited transcripts, and litigation support services such as condensed transcript, Realtime and rough ASCII, are, in their view, for the convenience of counsel and accordingly, non-taxable. Id. Excluded from this list of objectionable costs is the cost of exhibits charged in the deposition invoices.

On the issue of videotapes, Defendant responds to Plaintiffs' convenience argument by stating that "[a]t the time the depositions were taken, the parties had not come to any agreement regarding the manner in which depositions would be presented to the Court" and therefore, Impax believed it was reasonably necessary to acquire the video depositions. Impax further notes that Plaintiffs noticed several of the depositions to be videotaped and Impax wanted access to all evidence available to Warner Chilcott. [Dkt. Entry 332]; Def.'s Reply Br. at 5.

The Clerk agrees with Plaintiffs that the videotapes were not necessarily obtained for use in the case. The written transcripts of these depositions were necessary, but Defendant offers no cogent reason for having this same testimony in the alternative, videotaped format. In the case of Nobel Biocare USA, LLC v. Technique D'Usinage Sinlab, Inc., the prevailing party linked the need of the videotapes to the uncertainty of which witnesses would be available for trial, an argument not even proffered here. No. 1:12cv730, 2013 WL 819911 (E.D. Va. Mar. 4, 2013).

The court denied the cost of the videotapes, stating, "the concept of necessity for use in the case connotes something more than convenience or duplication to ensure alternative methods for presenting material at trial." Id. at *3.

As indicated in the Clerk's Mylan opinion, Defendant bears the burden of showing that the transcripts and videotapes were independently necessary. Necessity does arise out of counsel's desire to be on an equal footing with his or her adversary and speculation regarding a potential future need should not be equated with necessity. Defendant could have ordered the videotapes noticed by Plaintiffs if and when their necessity became evident. Nor does necessity turn on how the deposition was noticed. Even in cases where the court deemed it appropriate to award the cost of conducting the deposition in the manner noticed, it still required that the prevailing party explain why it was necessary to obtain both regular transcripts and videotaped copies. Morrison v. Reichhold Chemicals, Inc., 97 F.3d 460, 463-65 (11th Cir. 1996) (analyzing the taxability of videotaped depositions prior to the amendment of § 1920 (2) in 2008); Woods v. DeAngelo Marine Exhaust, Inc., No. 08-81579-Civ., 2010 WL 4116571, at *4-5 (S.D. Fl. Sept. 27, 2010), report and recommendation adopted, 2010 WL 4102939 (S.D. Fl. Oct. 18, 2010). See also Tilton v. Capital Cities/ABC, Inc., 115 F.3d 1471, 1478 (10th Cir. 1997) (explaining, "[w]e respectfully disagree with Morrison to the extent that the recording method contained in the deposition notice controls whether a court may tax the costs associated with the recording method," and concluding that "the appropriate inquiry is [instead] whether the recording method has been 'necessarily obtained for use in the case' as mandated by section 1920(2).")

Impax has failed its burden of demonstrating the independent necessity of the videotapes.

Therefore, based upon the foregoing, the Clerk denies all videotaping costs.

The Clerk also agrees with Plaintiffs that deductions must be made for expedited and litigation support services, which were fees incurred for the convenience of counsel, outside of the ambit of § 1920. Consistent with the case law set forth in the Clerk's Mylan opinion, only the costs of the non-expedited copies of transcripts and the reporter appearance are taxable. Accordingly, expedited transcripts charged at the rate of $8.50 and $9.50 per page will be taxed at the rate of $5.25 per page for the "Original 1 . . . Certified Deposition." [Dkt. Entry 332-1];

Reply Declaration of Adrienne G. Johnson, Esq. ("Johnson Reply Decl.") at ¶ 4.*fn4 The non- expedited transcripts will be taxed at the rates charged in the supporting invoices. Additionally, the Clerk taxes the costs of exhibits, to which Plaintiffs have not objected. In light of the above, the Clerk taxes the following transcript costs, in the order in which they appear in Exhibit C to the Johnson Aff. [Dkt. Entry 319-6]*fn5 Deponent Taxed Amount

Martyn Davies, 7/8/11

Orig. 1 Cert'd Deposition, 258 pp. at $5.25/p. $1,354.50 Reporter's ...

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