FRCP 54 provides that the prevailing party is entitled to recover its costs, not including attorneys fees.
In practice, though, that's easier said than done. Recovery of costs is limited both by statute and local rule. Beyond that, plaintiffs may not have a lot of assets, and it may take serious collection effort to get anything out of them. As you can imagine, parties sometimes decide that the likely cost in attorneys fees outweighs what they are likely to actually recover.
But not always! Today, Judge Andrews issued a memorandum order reviewing a bill of costs that sought over $1.2 million in total costs. All told, he awarded over half a million dollars in costs, and suggested more will be warranted—a relatively large number as far as cost rewards in D. Del. tend to go. In doing so, he included a few holdings that could be useful to others who want to recover more than the local rules will typically allow.
He explained the interplay between the statute governing costs and the local rule, including that the local rule gives guidelines for the clerk to decide the initial bill of costs, but that a party can recover more than what is in the local rule (if the Court exercises its discretion and resolves any legal disputes):
Essentially, there are two authorities for granting costs. One is a statute, 28 U.S.C. § 1920. The other is Local Rule 54.1. The statute is fairly succinct. . . . The Local Rule is not so succinct. . . .
The Supreme Court, discussing § 1920, stated, "Taxable costs are limited to relatively minor, incidental expenses." Taniguchi v. Kan Pac. Saipan, Ltd., 566 U.S. 560, 573 (2012). "[T]he assessment of [taxable] costs most often is merely a clerical matter that can be done by the court clerk." Id. The statement is consistent with the understanding that taxable costs have a "narrow scope." Id. The Local Rules (prior similar versions of which predate Taniguchi) and their detail are, I expect, an attempt to provide a set of easy-to-follow rules for a non-lawyer clerk to implement. . . . It is undisputed that § 1920 is broader than the Local Rule. . . . Thus, since the Clerk does not exercise discretion or resolve legal disputes, for about 97% of the requested $1.2 million, I am not really reviewing (even de novo) a determination by the Clerk.
Amgen Inc. v. Sanofi, Aventisub LLC, C.A. No. 14-1317-RGA, at 1-4 (D. Del. Feb. 28, 2025).
The Court divided the bill of costs into five categories:
Trial Transcripts. The statute says that these are only recoverable if "necessarily obtained for use in the case." Here, Court suggested that these are always recoverable in patent cases:
I think the four sets of transcripts were all necessarily obtained for use in the case. Testimony in patent cases is sufficiently complex so that no one can be sure what was said without a transcript. The transcripts are necessary to prepare during the course of the trial or the injunction hearing. . . .
Id. at 4-5. The Court permitted recovery of almost $22k in transcript costs for two trials and two permanent injunction hearings.
Other Court Transcripts. Interestingly, Judge Andrews denied recovery of the cost of discovery dispute hearing transcripts where the ruling was "very straightforward," but permitted recovery for others:
Plaintiffs say the discovery disputes did not need to be transcribed to be understood and complied with. Defendants cite the rulings it said justified the transcripts. I have looked at the rulings. I thought two were very straightforward. . . . I thought the others were more complex or required portions other than the ruling to be fully understood. Thus, I will tax $2,720.21 of the requested costs, and I will reject $1205.35 of them.
Id. at 5.
Deposition Transcripts. Judge Andrews noted that he is reversing his prior position on awarding costs for deposition transcripts, and awarded costs for all 114 deposition transcripts in the case. He suggested that transcript costs should be awarded in every patent case:
A number of other judges of this Court have awarded what appear to be essentially costs for all depositions. [Footnote: In 2018, I didn't award deposition costs in Sanofi v. Glenmark Pharms., Inc., 2018 WL 6427870, *2 (D. Del. Dec. 7, 2018). That decision predated the three cited cases, and, of course, was based on a different presentation by counsel. I am now convinced the cited cases take the better approach.] Whether all 114 were "necessarily obtained for use in the case" seems to me to stretch the statutory rule beyond the Supreme Court's description of "minor incidental" expenses. Without evaluating each of the 114 one-by-one, which would be a time-consuming effort, and inconsistent with the idea that taxation of costs is an essentially clerical function, I think I can reach a result here that is consistent with the statute. That is, all 114 are "necessarily obtained for use in the case." Any judge with experience in complex high-stakes patent cases knows that both sides get transcripts of every deposition, put the transcripts into databases, analyze them, use them, and refer to them as warranted. It would put a party at a significant disadvantage not to have transcripts of every deposition.
Id. at 6-7.
The Court held that it would not permit recovery of the "bells and whistles," though, including the cost of video, word indexing, interpreters, rough transcripts, real time transcripts, and expedited transcripts—but suggested "attendance fees" were recoverable.
Document Production Costs. The Court ordered that the core document production costs were recoverable in full:
The Document Production Protocol required tiffing and it required Bates numbering. . . . Thus, the costs that are identified as "Full Tiff Production," "OCR," and "Production Services" (which equals the sum of "Bates Stamp" and "Tiffing [Production] per page") are all taxable in full.
Id. at 8. That alone was more than half a million dollars. As the Court noted, the case ran for about ten years, through two trials and two permanent injunction hearings, and involved 2.5 million documents.
The Court rejected the idea that it should preclude recovery for non-responsive documents:
Absent any other information, the fact that Defendants produced the documents pursuant to discovery requests is sufficient evidence that the copying of all 2.5 million documents was necessarily for use in the case.
Id. Finally, the Court awarded $74.4k in costs for duplication of materials for trial—largely for witness binders and exhibits for the two trials.
All told, the Court suggested the defendant is entitled to well over $500k in costs, and sent the parties back to negotiate on some remaining items. The total recovery could be closer to $750k in the end. And I doubt they'll have an issue with collection, given that the opposing party is a pharmaceutical company. Looks like this one was worth the effort!
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