A Blog About Intellectual Property Litigation and the District of Delaware

Costs are kind of a funny subject. The Local Rules set forth a straightforward list of which items are taxable as costs to the prevailing party, and under what circumstances. For instance, under LR 54.1(b)(2), transcripts of court proceedings are taxable only:

when requested by the Court or prepared pursuant to stipulation. Mere acceptance by the Court does not constitute a request. Copies of transcripts for counsel’s own use are not taxable.

The rules for travel fees, copying, etc., are similarly strict, and so in my (totally unverified) experience, the vast majority of a proposed bill of costs will be denied pretty much every time.

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A party may, of course, move for the Court to review the taxation of costs. D. Del. LR 54.1(d). The Court then has wide discretion to award costs beyond those specifically authorized by the local rule, and there are several DE decisions doing just that. Judge Williams issued one such ruling last Friday in Onyx Therapeutics, Inc. v. CIPLA Limited. C.A. No. 16-988-GBW (D. Del. Feb. 17, 2023).

The opinion is generally a good primer on just how far costs might be stretched beyond the apparent bounds of the local rule. For instance, discussing the local rule on the taxation of court transcripts above, Judge Williams stated:

While LR 54.1(b)(2)provides that "[c]opies of transcripts for counsel's own use are not taxable[,]" Judge Stark, who presided over this case, has found such costs taxable under § 1920(2). Judge Stark explained that "the undersigned Judge regularly resolves discovery disputes during teleconferences, articulating the Court's reasoning on the transcript and often without issuing any formal, written order. In order to effectively litigate a patent case in light of this procedure, it is likely necessary to have a copy of such a transcript." . . . In this case, Judge Stark issued at least one ruling "[f]or the reasons stated during the pretrial conference [on April 30, 2019]." . . . . Since the pretrial transcript was reasonably necessary to effectively litigate this case, and since a trial transcript was reasonably necessary for appeal, the Court finds allowable these $9,300.43 in transcript costs.

Id. at 5 (cleaned up).

You can find similar passages regarding fees for deposition transcripts and exemplification elsewhere in the opinion.

One issue addressed in the opinion that comes up less often, however, is how to split the costs between defendants (the losing parties in this case) who had settled at various points during the litigation and those who stayed through trial.

To resolve the issue, Judge Williams divided the various costs into pretrial and trial costs and apportioned them based on how many defendants were involved at each stage:

The Court considers witness fees ($6,765.63), copying costs for trial ($45,236.16), demonstrative costs for trial ($2,708), and trial and pretrial transcripts ($9,300.43) as trial costs. Since four defendants proceeded to trial, the Court charges Cipla 25% of those costs. The Court considers the remaining costs-production of the patents and file wrappers ($945.00), deposition transcripts ($44,282.03), and document production ($217,846.30)--as pre-trial litigation costs. Since nine Defendants remained involved in the case until the eve of trial, the 100% Court awards 12% of those costs (i.e., 100% / 9 Defendants rounded upward to the nearest whole percentage ). Thus, the Court taxes Cipla a total of $48,146.36 in costs in favor of Onyx.

Id. at 11.

It's a pragmatic way to split costs that is pretty easy for the parties to calculate, and one that I expect to be cited in future motions on the issue.

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