United States District Court, D. New Jersey
CLERK'S OPINION GRANTING IN PART AND DENYING IN
PART PLAINTIFF'S MOTION TO TAX COSTS
matter has come before the Clerk on the motion [Dkt. Entry
368] of Plaintiff Supernus Pharmaceuticals, Inc.
(“Plaintiff, ” “Supernus”) to tax
costs against Defendants TWi Pharmaceuticals, Inc. and TWi
International LLC (together, “TWi, ”
“Defendants”) pursuant to Federal Rule of Civil
Procedure 54(d) and Local Civil Rule 54.1, and to tax expert
witness fees pursuant to Fed.R.Civ.P. 26(b)(4)(E).
Hatch-Waxman case, filed on January 16, 2015 [Dkt. Entry 1],
concerned the alleged infringement of patents held by
Plaintiff for anti-epileptic, extended-release tablets
containing 150, 300 and 600 mg of oxcarbazepine, marketed as
Oxtellar XR®: United States Patent Nos. 7,
722, 898 (“the '898 patent”); 7, 910, 131
(“the '131 patent”); 8, 617, 600 (“the
'600 patent”); and 8, 821, 930 (“the '930
patent”). Supernus alleged that Defendants' filing
of an Abbreviated New Drug Application (“ANDA”)
for approval by the United States Food & Drug
Administration (“FDA”) to market its generic
version of the Oxtellar XR® tablets prior to
the expiration of Supernus' patents constituted
infringement of those patents. Defendants answered with
counterclaims of non-infringement and invalidity. [Dkt. Entry
case proceeded to a Markman hearing [Dkt. Entries 81, 85],
through fact and expert discovery, including depositions in
Taiwan, and in limine motions [Dkt. Entries 224-27], which
were denied [Dkt. Entry 242].
trial, the parties stipulated to limiting the litigation to
the ‘898, ‘131 and ‘930 patents, setting
aside Plaintiff's third count of infringement of the
‘600 patent. [Dkt. Entry 198]. A four-day bench trial
was held on April 3-6, 2017. [Dkt. Entries 249, 253-55]. The
trial was followed by counsel's post-trial briefing,
hyperlinked pursuant to the Court's directive. [Dkt.
August 15, 2017, the Court issued its bench opinion [Dkt.
Entries 329, 352], finding that all of the asserted claims of
the patents-in-suit were not invalid and had been infringed.
Accordingly, on August 28, 2017, final judgment was entered
in favor of Plaintiff [Dkt. Entry 339], thereby setting the
effective date of FDA approval of TWi's ANDA no earlier
than the expiration date of the patents-in-suit and enjoining
Defendants' commercial activity involving their ANDA
product until such time. Also, Plaintiff's third count,
claiming infringement of the ‘600 patent, was dismissed
filed their notice of appeal to the United States Court of
Appeals for the Federal Circuit on August 31, 2017 [Dkt.
Entry 345] and that appeal remains pending.
September 7, 2017, Supernus filed a motion for attorney's
fees. [Dkt. Entry 348]. The Court denied Defendants'
motion to stay Supernus' fee application. [Dkt. Entry
358]. It did, however, order bifurcation of the briefing of
the motion, allowing Plaintiff to brief just entitlement to
such fees, and not the requested amount, until after a
determination of liability has been made. [Dkt. Entry 366].
That motion too remains pending. [Dkt. Entries 385, 395-97].
timely filed the motion to tax costs now before the Clerk on
September 27, 2017. [Dkt. Entry 368]. Plaintiff later revised
its bill of costs after deducting an erroneous $166.25 in
copying charges. In its amended AO 133 form [Dkt. Entry
375-3], it seeks the costs of: filing ($400.00); service of
summons and complaint ($353.60); printed and videotaped
transcripts ($36, 977.27); witnesses ($7, 389.25);
exemplification and copies ($70, 041.31); and interpreters
($1, 920.00). These costs are requested pursuant to Rule
54(d) and the allowable categories of 28 U.S.C. § 1920,
discussed below. Supernus also lists on its amended AO 133
form as “Other costs” expert fees in the amount
of $37, 775.00, which it seeks pursuant to Fed.R.Civ.P.
26(b)(4)(E). Entries on the amended bill of costs total $154,
does not object to taxing the costs of filing, service,
equipment rental or interpretation, but does contest the
remaining costs and asserts that only $20, 062.86 should be
granted. [Dkt. Entry 373].
motion is brought, for the most part, pursuant to
Fed.R.Civ.P. 54(d)(1), which allows costs to the
“prevailing party, ” absent a federal statute,
rule or court order providing otherwise.
patent litigation, the definition of a “prevailing
party” is governed by Federal Circuit law. Manildra
Milling Corp. v. Ogilvie Mills, Inc., 76 F.3d 1178,
1181-82 (Fed. Cir. 1996). To be a prevailing party, a party
must obtain relief on the merits of its claim that materially
alters the legal relationship between the parties by
modifying its opponent's behavior in a way that directly
benefits that party. Id. at 1182 (citing Farrar
v. Hobby, 506 U.S. 103, 111-113 (1992)). While the
threshold issue of deciding prevailing party status is a
matter of Federal Circuit law, the second inquiry, that of
whether and how much to award, is a matter of regional
circuit law. Id. at 1183. Therefore, the decision of
whether to award costs to the prevailing party and the amount
are matters of Third Circuit law here.
Circuit, there is a strong presumption in favor of awarding
costs to the prevailing party, Reger v. Nemours Found.,
Inc., 599 F.3d 285, 288 (3d Cir. 2010), but even so,
absent express statutory authorization, the Clerk may
reimburse only those costs enumerated in 28 U.S.C. §
(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
Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S.
437, 441 (1987). Therefore, the Clerk does not grant costs
falling outside the above parameters, even if uncontested.
Supreme Court reinforced its Crawford Fitting holding in
Taniguchi v. Kan.Pacific Saipan, Ltd., 566 U.S. 560
(2012), wherein it limited the provision in §1920 (6)
for the “compensation of interpreters” to the
cost of oral translation. In denying the cost of document
translation, the Court stated that its decision was “in
keeping with the narrow bounds of taxable costs, ”
which are “limited to relatively minor, incidental
expenses.” Id. at 573.
the prevailing party enjoys a presumption in its favor, in
this district, it still bears the burden of showing that the
costs sought fall within the limits of § 1920.
Romero v. CSX Transp., Inc., 270 F.R.D. 199, 201-02
(D.N.J. 2010). And, the procedural aspects of a taxation
motion are governed in this district by our above-cited local
rule, L. Civ. R. 54.1. Lite, N.J. Federal Practice Rules
(Gann 2018 ed.).
Plaintiff is the prevailing party within the meaning of
Fed.R.Civ.P. 54(d) and TWi does not contest that fact. As a
result of the Court's final judgment, Defendants were
enjoined from marketing their generic oxcarbazepine tablets
through the expiration date of the patents-in-suit.
Defendants' behavior was clearly modified in a way that
directly benefits Supernus.
Sunovion has satisfied the requirements in L. Civ. R. 54.1
and 28 U.S.C. § 1924 of timeliness, verification and
invoice submittal: this motion was filed within 30 days of
the entry of judgment and includes a notice of motion with
return date [Dkt. Entry 368] and bill of costs, AO form 133
[Dkt. Entry 368-3]; Plaintiffs' counsel has verified that
the costs are correct, the services were actually and
necessarily performed, and the disbursements were necessarily
incurred in this action, Declaration of Jonathan A. Herstoff,
Esq. (“Herstoff Decl.”) [Dkt. Entry 368-2], and
attached invoices thereto, id., Exs. 1-51. The Clerk has also
considered Plaintiff's brief [Dkt. Entry 368-1] and reply
brief [Dkt. Entry 375-1], along with the Declaration of
William C. Baton, Esq. (“Baton Decl.”) [Dkt.
Entry 375-2] and amended AO 133 form [Dkt. Entry 375-3], as
well as Defendants' brief in opposition [Dkt. Entry 373],
sur-reply [Dkt. Entry 379] and Declaration of Dustin L.
Taylor, Esq. (“Taylor Decl.”) [Dkt. Entry 379-1].
turning to the matter of costs, the Clerk first addresses
Supernus' application for $37, 775.00 in expert fees.
Expert Fees Pursuant to Fed.R.Civ.P. 26(b)(4)(E)
$37, 775.00 in expert fees sought by Supernus is described by
its counsel as the cost of “preparing for and
testifying at [these] depositions, for Dr. Steven Little, Dr.
David Bugay, and Dr. Leonard Chyall.” Herstoff Decl.
¶10. For their professional services, these experts
charged between $500 and $850 per hour. Id. at Exs.
above-cited Crawford Fitting case, the Supreme Court held
that unless expert witnesses are court-appointed, as provided
in § 1920 (6), their fees are taxable only to the extent
allowed in 28 U.S.C. § 1821. 482 U.S. at 445. That is,
their attendance may be taxed at $40 per day and their
reasonable travel and subsistence costs allowed, but not
their charges for professional services. No. doubt aware of
this limitation, Plaintiff's counsel argues that expert
fees should be awarded in this case under Rule 26(b)(4)(E).
Pl.'s Br. at 12-14.
Plaintiff's filing of this application, the Clerk
reviewed it and advised counsel that the allowance of expert
fees pursuant to Rule 26(b)(4)(E) is not properly before the
Clerk. [Dkt. Entry 377]. That rule provides that “the
court” must require the payment of reasonable expert
fees under certain circumstances. Unlike Rule 54(d)(1), which
empowers the Clerk to rule on motions for taxation in the
first instance, Rule 26 does not grant “the
clerk” the power to require the payment of expert fees.
In advising counsel to take this matter to the district
judge, the Clerk makes no comment on the merits of
Plaintiff's request or Defendants' arguments against
awarding such fees.
Clerk turns then to the taxation of the remaining requested
fees in the order in which they appear in § 1920.
Fees of the Clerk and Marshal, § 1920 (1)
sought by Supernus as § 1920 (1) “fees of the
clerk and marshal” are the $400.00 fee for filing its
complaint and a private process server's charges totaling
$353.60 to serve the summons and complaint on the two
defendants. Herstoff Decl. ¶ 3, Ex. 1. Both are
unopposed by TWi.
fee consists of the $350.00 fee set forth in 28 U.S.C. §
1914(a) for the filing of a civil action, and the $50.00
administrative fee established in the Judicial
Conference's “District Court Miscellaneous Fee
Schedule.” Subsection (b) of § 1914 allows the
clerk to collect fees in addition to the $350.00 fee of
subsection (a), as prescribed by the Judicial Conference.
Therefore, the entire $400.00 amount constitutes “fees
of the clerk” and will be granted.
Subpoena Service, Inc.'s charges of $176.75 and $176.85
to serve TWi are fees of the marshal within the meaning of
§ 1920 (1). Subsection (1) explicitly authorizes
taxation of the costs of just the “clerk and marshal,
” but this Court has held that the fees of private
process servers are taxable under the combined reading of
§ 1920 and § 1921, which allows the court to tax as
costs the fees for serving a subpoena on a witness. Ricoh
Corp. v. Pitney Bowes Inc., Civ. No. 02-5639, 2007 WL
1852553, at *3 (D.N.J. June 26, 2007); Hurley v. Atlantic
City Police Dep't, Civ. Nos. 93-260, 94-1122, 1996
WL 549298, at *8 (D.N.J. Sept. 17, 1996).
the Clerk taxes this uncontested cost as well, granting a
total of $753.60 pursuant to § 1920 (1).
Fees for Printed or Electronically Recorded Transcripts,
§ 1920 (2)
the § 1920 (2) category of “fees for printed or
electronically recorded transcripts, ” Plaintiff seeks
the $10, 154.27 cost of printed hearing and trial
transcripts, and the $26, 823.00 cost of printed and
videotaped deposition transcripts. Herstoff Decl.
¶¶ 4, 5, Exs. 2-27. Defendants maintain that
transcripts should be taxed in the reduced amount of $14,
411.20, not $36, 977.27. Defs.' Br. at 3.
requested $10, 154.27 item consists of the $1, 905.72 cost of
thirteen transcripts of telephonic and in person conferences
and hearings, and the $8, 248.55 cost of the trial
transcript. Pl.'s Br. at 6-7. The costliest hearing
transcripts cover the Markman hearing ($660.54) and an appeal
of the Magistrate Judge's decision ($330.33).
§ 1920 (2) standard of “necessarily obtained for
use in the case” applies to hearing and deposition
transcripts alike. The Clerk usually grants the cost of the
transcript of the Markman hearing because it is a crucial
proceeding in patent litigation, establishing claim
construction. It was particularly necessary for counsel to
obtain the transcript in this case [Dkt. Entry 85] because
the Court did not immediately issue an opinion containing its
reasoning. In its October 9, 2015 order [Dkt. Entry 84], the
Court referenced the hearing and stated that the Court would
set forth the bases for its construction in an opinion to be
issued at a later date. The Clerk is unable to locate such an
opinion on the docket and indeed, it is this transcript that
the Court cited in its bench opinion after the trial. [Dkt.
Entry 352 at 17].
Judge Bumb's order [Dkt. Entry 159] denying
Defendants' appeal of the Magistrate Judge's decision
ordering Defendants to produce clawed back documents [Dkt.
Entry 117] referenced the hearing and indicated that an
opinion would be issued at some later date. Like the Markman
hearing transcript, this transcript [Dkt. Entry 308] provided
guidance to counsel in the absence of a written opinion. The
Clerk finds them both necessary.
remaining $900 or so in hearing transcripts covered various
proceedings, such as the Initial Scheduling Conference,
discovery conferences, the Final Pretrial Conference and
telephone conferences with both Magistrate Judge Schneider
and Judge Bumb. The Clerk does not usually grant the cost of
transcripts of pretrial conferences absence a showing of
need, particularly if note-taking by counsel would have
sufficed as a substitute.
instance, Supernus argues that it fulfilled a need for the
pretrial hearing transcripts, i.e., submission on appeal, as
outlined in our local rule, L. Civ. R. 54.1(g) (6):
The cost of a reporter's transcript is allowable only (A)
when specifically requested by the Judge, master, or
examiner, or (B) when it is of a statement by the Judge to be
reduced to a formal order, or (C) if required for the record
on appeal. Mere acceptance by the Court of a submitted
transcript does not constitute a request. Copies of
transcripts for an attorney's own use are not taxable in
the absence of a prior order of the Court. All other
transcripts of hearings, pretrials and trials will be
considered by the Clerk to be for the convenience of the
attorney and not taxable as costs.
Supernus' reply brief is the Declaration of William C.
Baton, Esq., to which counsel attaches the joint Appendix
Designations for Defendants' appeal of the final judgment
in Plaintiff's favor. [Dkt. Entry 375-2, Ex. 52]. Every
transcript which Supernus asks the Clerk to tax is contained
within that joint appendix.
TWi responds that “[n]either does TWi agree that the
court transcripts of the pretrial hearings are required for
the record on appeal. TWi did not place these transcripts on
the joint Table of Appendix Designations and disputes that
they are required.” Defs.' Sur-Reply at 3 n.2.
Clerk understands the situation, to support its appeal to the
Federal Circuit, TWi designated portions of the record before
this Court and Supernus then supplemented TWi's
designations with the transcripts of the various pre-trial
hearings. Pursuant to Fed. R. App. P. 30 (b)(1), TWi was
obligated to include in the appendix the additional parts
designated by Supernus, whether it deemed them necessary or
contrary to Supernus' assertion, Pl.'s Reply at 3,
the fact that these transcripts were included in the joint
appendix is not an admission by TWi that they were in fact
necessary for the appeal. Indeed, TWi continues to assert
that the transcripts were not required and frankly, the Clerk
does not appreciate the significance of them, several of
which have been described by Supernus merely as
“Transcript of Teleconference, ” without even any
indication of the topic of the teleconference. Pl's Br.
does not assert that during the teleconferences or other
hearings, Magistrate Judge Schneider or Judge Bumb issued
oral rulings, instructions or the like which made it
necessary for Plaintiff to obtain the transcripts to
effectively prepare for trial or to draft proposed orders for
submission to the Court. In contrast, in the case of
Prometheus Labs., Inc. v. Roxane Labs., Inc., the
Court granted the cost of the transcripts of ten pre-trial
hearings containing the Magistrate Judge's opinions on
matters such as “motions to seal, motions for
reconsideration and appeals, motions regarding invalidity
contentions, discovery motions, a motion for sanctions, and
Daubert motions.” Civ. Nos. 11-230, 11-1241, 2016 WL
1559144, at *6 (D.N.J. Apr. 18, 2016).
docket contains references to these transcripts. Some are
sealed [Dkt. Entries 150, 188, 204] and unavailable to the
Clerk, and others reviewed by the Clerk contain scant
substance that could have been captured by note-taking. [Dkt.
Entries 41, 115, 127, 199, 264]. Failing its burden of
showing the necessity of these pre-trial hearing transcripts,
Plaintiff is allowed just the costs of the transcripts of the
Markman hearing ($660.54) and the hearing on the appeal of
the Magistrate Judge's decision ($330.33), or a total of
requested $8, 248.55 cost of the 995-page transcript of the
four-day trial includes charges for an original ($3, 621.80),
a first copy ($1, 194.00) and a second copy ($1, 343.25), all
at the hourly rates, and a Realtime charge of $2, 089.50.
Relying upon the earlier-cited L. Civ. R. 54.1(g)(6), TWi
concedes that the original was necessary for the appeal and
agrees to allowing just $3, 621.80. Defs.' Br. at 7-8.
response to Defendants' objection that Realtime services
were not necessary, Plaintiff cites the decision of this
Court in another patent case, Otsuka Pharm. Co., Ltd v.
Sandoz, Inc., which stands in contrast to the
Clerk's usual allowance of the costs of just an original
and one copy of the transcript. Civ. No. 07-1000, 2015 WL
5921049 (D.N.J. Oct. 9, 2015). The Court there taxed the
costs of Realtime and ASCII, finding them