Summit Technology, Inc. v. Nidek Co., Ltd

United States Court of Appeals for the Federal Circuit

05-1292

SUMMIT TECHNOLOGY, INC.,

Plaintiff-Appellant,

v.

NIDEK CO., LTD., NIDEK, INC., and NIDEK TECHNOLOGIES, INC.,

Defendants-Appellees.

Russell E. Levine, P.C., Kirkland & Ellis LLP, of Chicago, Illinois, argued for
plaintiff-appellant. With him on the brief was Christopher R. Liro.

Neil B. Siegel, Sughrue Mion, PLLC, of Washington, DC, argued for defendants-
appellees. With him on the brief were Paul J. Wilson and Robert M. Masters. Of
counsel on the brief was David S. Godkin, Birnbaum & Godkin LLP, of Boston,
Massachusetts.

Appealed from: United States District Court for the District of Massachusetts

Senior Judge Edward F. Harrington
 United States Court of Appeals for the Federal Circuit

05-1292

SUMMIT TECHNOLOGY, INC.,

Plaintiff-Appellant,

v.

NIDEK CO., LTD., NIDEK, INC., and NIDEK TECHNOLOGIES, INC.,

Defendants-Appellees.

___________________________

DECIDED: January 26, 2006
___________________________

Before RADER, BRYSON, and GAJARSA, Circuit Judges.

BRYSON, Circuit Judge.

For the second time, we are asked to review the district court’s award of costs in

this case. Because certain portions of the award were unsupported by evidence or

were beyond the scope of statutorily allowed costs, we vacate certain portions of the

award and direct that the award be reduced from $388,230.83 to $173,434.82.

I

After prevailing on the merits of the underlying patent infringement suit, Nidek

submitted its bill of costs for $465,875.63. Summit challenged various components of

that bill of costs. In response to that challenge, Nidek agreed that $13,434.06 of the

claimed costs were improper and submitted a revised bill requesting $452,441.57. The

district court, without explanation, awarded Nidek $257,660.13. Summit Tech., Inc. v.
Nidek Co., No. 98-12611-EFH (D. Mass. June 16, 2004). Summit appealed that award,

and Nidek cross-appealed. A panel of this court vacated the award and remanded for

further proceedings, including a specification of findings. Summit Tech., Inc. v. Nidek

Co., 117 Fed. Appx. 107, 108 (Fed. Cir. 2004). On remand, the district court held an

evidentiary hearing, which consisted entirely of direct and cross-examination testimony

by Neil B. Siegel, an attorney with the law firm of Sughrue Mion, PLLC. Mr. Siegel was

lead trial counsel in the underlying suit, and he signed Nidek’s bill of costs. At that

hearing, Nidek conceded that certain expenses claimed in its original bill of costs were

either beyond the scope of 28 U.S.C. § 1920, which lists the expenses that may be

taxed as costs under Federal Rule of Civil Procedure 54(d)(1), or were not related to the

present litigation. Based on that concession, the district court reduced the award to

$388,230.83, which was approximately $130,000 more than the court’s original award.1

In its order, the district court stated that it found Mr. Siegel’s testimony to be “most

credible and fully supported by the documentary evidence.” Summit appealed,

challenging certain portions of the award pertaining to the preparation of trial exhibits,

photocopy expenses, and deposition transcript expenses.

In response to Summit’s opening brief on appeal to this court, Nidek again

conceded error, this time admitting that $15,635.25 of its photocopy expenses were for

database development by an outside vendor, a cost that is clearly beyond the scope of

section 1920. In addition to database development being non-taxable under section

1
Our computation of the sum of the cost totals in the spreadsheet offered in
support of the reduced request results in a total of $388,190.83, not $388,230.83.
Because neither party has challenged the accuracy of the latter sum, we assume there
may be some explanation for the disparity, and we treat that number as correct.

05-1292 2
1920, the line item for that expense was apparently double counted in Nidek’s original

bill of costs. One of those line items was removed before this appeal, so the item is

included—although still improperly—only once in the award presently before this court.

At oral argument on appeal, Nidek further conceded that at least one deposition

transcript expense (in the amount of $803.51) was double counted in the district court’s

second award. Based on those errors, Nidek ultimately conceded that it was entitled to

no more than $371,792.07.

II

Although a district court’s award of costs under Federal Rule of Civil Procedure

54(d)(1) is reviewed for abuse of discretion, the court’s discretion is limited to awarding

costs that are within the scope of 28 U.S.C. § 1920. Crawford Fitting Co. v. J.T.

Gibbons, Inc., 482 U.S. 437, 445 (1987). Section 1920 provides, in pertinent part, that

the following costs may be taxed: “(2) Fees of the court reporter for all or any part of the

stenographic transcript necessarily obtained for use in the case; . . . [and] (4) Fees for

exemplification and copies of papers necessarily obtained for use in the case . . . .”

Whether a particular expense may be recovered under section 1920 is an issue of

statutory construction, subject to de novo review. See, e.g., Kohus v. Toys ‘R’ Us, Inc.,

282 F.3d 1355, 1357 (Fed. Cir. 2002); Whitfield v. Scully, 241 F.3d 264, 269 (2d Cir.

2001); Russian River Watershed Prot. Comm. v. City of Santa Rosa, 142 F.3d 1136,

1144 (9th Cir. 1998). Our interpretation of section 1920 in this case is governed by First

Circuit law because this issue is one on which we defer to regional circuit law and

because this case comes to us from a district court within the First Circuit. See Kohus,

282 F.3d at 1357.

05-1292 3
 A

Summit first argues that the district court erred by awarding Nidek $98,786.79 for

fees paid to FTI Consulting, Inc. FTI assisted Nidek’s counsel in preparing trial exhibits,

including computer animations, videos, Powerpoint presentations, and graphic

illustrations.2 Nidek argues that First Circuit law allows a district court to award costs

related to preparing such trial exhibits if the court finds that the exhibits provided “real

assistance to the court.” Summit, on the other hand, contends that such exhibits are

neither “exemplification[s] [nor] copies of papers necessarily obtained for use in the

case,” 28 U.S.C. § 1920(4), and that the costs associated with preparing the exhibits

are therefore not taxable as costs under Rule 54(d)(1). We agree with Summit.

In Kohus v. Toys ‘R’ Us, Inc., 282 F.3d 1355 (Fed. Cir. 2002), this court rejected

the broad interpretation of the term “exemplification” that Nidek offers here. The court

looked instead to Black’s Law Dictionary, which defines “exemplification” as “[a]n official

transcript of a public record, authenticated as a true copy for use as evidence.” Id. at

1359 (quoting Black’s Law Dictionary 593 (7th ed. 1999)). Under that definition, we held

that a video animation is not an “exemplification.”

2
In its brief submitted to the district court, Nidek referred to FTI’s services as
“computer animation services.” At the hearing in the district court, Mr. Siegel said that
FTI assisted with “the totality of the trial exhibits that were used at trial.” At the hearing
on costs, however, each of the trial exhibits he pointed to as exemplary of FTI’s work
were animations, computer graphics, or Powerpoint slides. Moreover, FTI’s invoices
show that FTI’s services were for animations, videos, and computer graphics: $6,930.00
was for project planning; $80,152.50 was for animation services; $2,675.00 was for
video services; $3,521.25 was for Photoshop and Powerpoint services; $4,989.60 was
for physical models; and $518.44 was for overhead expenses. There is no suggestion
that the physical models were submitted as trial exhibits.

05-1292 4
 The issue in Kohus was governed by Sixth Circuit law, and because the Sixth

Circuit had never addressed the question whether video animations were within section

1920, our holding was framed in terms of “determin[ing] how that circuit would likely

resolve the issue.” Id. at 1358 n.4 (quotation marks and citation omitted). We held that

the Sixth Circuit’s reasoning in Swan Carburetor Co. v. Chrysler Corp., 149 F.2d 476

(6th Cir. 1945), supported a narrow interpretation of the statute with respect to trial

exhibits, and so determined that the Sixth Circuit would likely follow the definition in

Black’s Law Dictionary and exclude video animations from the scope of section 1920(4).

Nidek argues that First Circuit law envisions a broader definition of

“exemplification.” In support of that contention, Nidek primarily relies on Emerson v.

National Cylinder Gas Co., 147 F. Supp. 543 (D. Mass. 1957), aff’d, 251 F.2d 152 (1st

Cir. 1958). In considering whether to grant costs for preparing charts used as trial

exhibits, the district court in Emerson stated that “[t]he test of whether a chart expense

should be taxable as costs under [section 1920] is the extent to which it was reasonable

to go to furnish ‘real assistance’ to the court.” Emerson, 147 F. Supp. at 545. That

statement, however, cannot be viewed as representing the law of the First Circuit.

First, when the Emerson case was appealed, the party against whom the cost

award had been entered did not challenge the propriety of allowing costs for trial

exhibits. See Emerson, 251 F.2d at 153, 158. The First Circuit therefore did not

address that question. Second, Emerson predated Crawford Fitting Co. v. J.T.

Gibbons, Inc., 482 U.S. 437 (1987), in which the Supreme Court held that a district

court’s discretion under section 1920 is limited to the kinds of costs permitted under the

statute. That is, the court may exercise discretion as to the cost items listed under

05-1292 5
section 1920, but may not award costs for items that are not listed in section 1920. Id.

at 445. Prior to Crawford Fitting, many courts interpreted Rule 54(d) as a broad grant of

discretion with respect to costs, an interpretation that stemmed from the “practice

formerly followed in equity, where courts possessed the power to award costs not

expressly provided by statute.” Id. at 447 (Marshall, J., dissenting). Indeed, one of the

cases cited by the district court in Emerson to support its expansive interpretation of

section 1920, Barber-Coleman Co. v. Withnell, 28 F.2d 543, 544 (D. Mass. 1928),

expressly relied on that equity principle to hold that certain costs “ought in justice to be

taxable.” In light of the inconsistency between the approach employed by the Emerson

court and the approach dictated by the Supreme Court in Crawford Fitting, we do not

view Emerson as representing the current law of the First Circuit.3

In fact, to the extent that the First Circuit’s law is shaped by decisions of district

courts within that circuit, we note that the only recent such case took a narrow view of

section 1920, holding that the cost of preparing enlargements for use as trial exhibits

was beyond the scope of section 1920. Shared Med. Sys. v. Ashford Presbyterian

Cmty. Hosp., 212 F.R.D. 50, 55-56 (D.P.R. 2002). And in one of the few First Circuit

opinions addressing section 1920, that court also took a narrow view of section 1920,

although not in the context of trial exhibits. See In re Two Appeals Arising out of the

San Juan Dupont Plaza Hotel Fire Litig., 994 F.2d 956 (1st Cir. 1993). In that case, the

3
Only one other reported case from a district court within that circuit has
followed the broad rule announced by the district court in Emerson. See H.C. Baxter &
Bro. v. Great Atl. & Pac. Tea Co., 44 F.R.D. 49, 52 (D. Me. 1968) (allowing recovery of
expenses for preparing color photographs and slides). That case, however, also
predated Crawford Fitting and appears inconsistent with Crawford’s restrictive approach
to costs.

05-1292 6
court rejected the contention that overhead expenses for centralized litigation services

were taxable under section 1920. In doing so, the court noted the “stunted reach of

Rule 54(d),” and recognized that “Rule 54(d) cannot be stretched beyond the

parameters defined in section 1920.” Id. at 964.

Within that context, our task is to determine how the First Circuit would likely

decide the question presented in this case. With no First Circuit case law directly

addressing that question, it is instructive to look to the law of other circuits. Several

circuits follow the same narrow definition of “exemplification” that this court articulated in

Kohus and exclude from section 1920(4) the expense of preparing trial exhibits,

especially video animations. See Arcadian Fertilizer, L.P. v. MPW Indus. Servs., Inc.,

249 F.3d 1293, 1296-97 (11th Cir. 2001) (“Because the videotape exhibits and the

computer animation are neither copies of paper nor exemplifications within the meaning

of § 1920(4), . . . taxing these costs was error.”); Coats v. Penrod Drilling Corp., 5 F.3d

877, 891 (5th Cir. 1993) (reviewing a request for recovery of travel expenses and

enlargements related to trial exhibits and holding that “[t]hese expenses are not

included in § 1920 and therefore are not recoverable”); see also Am. Trim, L.L.C. v.

Oracle Corp., 230 F. Supp. 2d 803, 806-07 (N.D. Ohio 2002). The Seventh Circuit, by

contrast, has adopted a broader definition of exemplification, taken from standard

English language dictionaries.4 See Cefalu v. Vill. of Elk Grove, 211 F.3d 416, 427 (7th

4
It is worth noting, however, that in addition to the common-usage definition,
American Heritage Dictionary 621 (4th ed. 2000) (defining “exemplification” as “[t]he act
of exemplifying”), standard English language dictionaries also cite the special legal
definition of the term, which is considerably narrower, see id. (“Law An officially certified
copy of a document.”). See also Random House Webster’s Unabridged Dictionary 677
(2d ed. 2001) (“Law. an attested copy of a document, under official seal.”); Webster’s

05-1292 7
Cir. 2000) (interpreting “exemplification” to “signif[y] the act of illustration by example, a

connotation broad enough to include a wide variety of exhibits and demonstrative aids”

(citation omitted)); see also Schering Corp. v. Amgen, Inc., 198 F.R.D. 422, 428 (D. Del.

2001) (holding that, in considering whether a video exhibit is taxable under section

1920(4), “[t]he standard the court will apply to direct its discretion is whether the video

materially aided [the judge’s] understanding of the technological issues in the case”).

Local rules in a few district courts even explicitly contemplate the award of costs

associated with preparing trial exhibits, including videos and animations. See, e.g.,

S.D.N.Y. Local Civ. R. 54.1(c)(6) (“Costs of maps, charts, and models, including

computer generated models, are not taxable except by order of court.”); N.D. Cal. Civ.

Local R. 54-3(d)(5) (“The cost of preparing charts, diagrams, videotapes and other

visual aids to be used as exhibits is allowable if such exhibits are reasonably necessary

to assist the jury or the Court in understanding the issues at the trial.”). No district court

in the First Circuit, however, has adopted a local rule addressing these types of

expenses.

This court in Kohus noted that “Congress did not use the broad phrase

‘demonstrative evidence’ in section 1920.” Kohus, 282 F.3d at 1359. And even the

Seventh Circuit has acknowledged that Congress did not contemplate including costs

such as those for computer animations under section 1920. See Cefalu, 211 F.3d at

428 (“Given the costs associated with some of these presentations, this is an area that

Congress may wish to revisit and supply further guidance.”). In light of the First Circuit’s

Third New International Dictionary 795 (2002) (“law: an exemplified copy,” i.e., “an
attested copy or transcript of (a document) under seal”).

05-1292 8
recognition of the “stunted reach of Rule 54(d),” we are persuaded that the First Circuit

would adopt the narrow, legal definition of the term “exemplification” endorsed by the

Fifth Circuit, the Eleventh Circuit, and this court applying Sixth Circuit law.

As Moore’s Federal Practice notes, “a video exhibit or a physical model may not

qualify as an ‘exemplification’ if it is essentially explanatory and argumentative, serving

merely as an aid to the argument of counsel and the explanations of expert witnesses.”

10 James Wm. Moore et al., Moore’s Federal Practice § 54.103[3][d] (3d ed. 2005).

That is precisely the nature of the materials prepared by FTI, as the evidence showed

that expert witnesses used those materials simply to explain the case to the jury and the

court.5 In light of the nature of the materials at issue and our conclusion that the First

Circuit would adopt a narrow definition of “exemplification” for purposes of section 1920,

we hold that FTI’s fees are not taxable as costs.

5
Even if the First Circuit were to adopt a broad definition of “exemplification,”
we believe it would exclude at least a substantial portion of FTI’s consulting fees from
the cost award. Section 1920(4) “speaks narrowly of ‘[f]ees for exemplification and
copies of papers,’ suggesting that fees are permitted only for the physical preparation
and duplication of documents, not the intellectual effort involved in their production.”
Romero v. City of Pomona, 883 F.2d 1418, 1428 (9th Cir. 1989), overruled in non-
pertinent part by Townsend v. Holman Consulting Corp., 914 F.2d 1136, 1141 (9th Cir.
1990) (en banc). Interpreted otherwise, “it could well swallow up other statutory
provisions of the Code and rules, such as the prohibition against the award of attorney’s
fees or expert witness fees in the normal case.” Id. The bulk of FTI’s invoices show
hourly consulting fees, with tasks ranging from “animation” to “client planning meetings.”
Mr. Siegel acknowledged that he and Nidek’s experts worked closely with FTI in
developing the exhibits. That sort of work amounts to trial preparation and strategizing,
and is not akin to the cost of photocopying a piece of paper, a cost that section 1920
explicitly contemplates. See 10 James Wm. Moore et al., Moore’s Federal Practice
§ 54.103[3][d] (“If the demonstrative evidence at issue requires the input of experts or
lawyers, the expenses of those professionals in producing the evidence should not be
included in any award of costs under § 1920(4).”).

05-1292 9
 B

Summit next argues that the district court erred in awarding Nidek $200,187.50 in

photocopying costs. Summit argues that Nidek’s supporting documentation for those

expenses was insufficient because various components of the award were based on

unsupported estimates or failed to identify whether the documents were “necessarily

obtained for use in the case,” as is required by section 1920(4). With respect to certain

components of the photocopy award, we agree.

Under First Circuit law, photocopy expenses are taxable only “if the costs were

reasonably necessary to the maintenance of the action.” Rodriguez-Garcia v. Davila,

904 F.2d 90, 100 (1st Cir. 1990). With respect to two categories of photocopy expenses

(Sughrue’s internal copy expenses and all outside vendor copy expenses), Nidek’s bill

of costs was based on the actual number of pages that were photocopied for the

litigation. In the case of vendor copy expenses, Nidek submitted the vendors’ invoices.

In those invoices, the vendors charged a variable per-page rate, ranging from 13 to 17

cents, averaging approximately 15 cents per page (the rate Nidek and Summit agreed

to before litigation). The total vendor copy expense accounted for every page copied by

the vendors as part of this litigation. To account for the fact that some fraction of those

copies either were not necessary to the maintenance of the action or were duplicative of

other photocopy expenses, Nidek reduced the total vendor invoice charge by 50

percent, which resulted in a charge of $96,311.85 for all outside vendor copying. We

agree with Nidek that, in complex patent litigation involving hundreds of thousands of

documents and copies, parties cannot be expected to track the identity of each

photocopied page along with a record of its relevance to the litigation. Thus, although a

05-1292 10
simple 50 percent reduction is a somewhat crude method of accounting for non-

necessary copies, we believe the district court acted within its discretion in awarding the

vendor costs based on that estimate, particularly in light of the supporting testimony

from Mr. Siegel, who explained that his testimony was based on his 35 years of

experience and his day-to-day responsibility, as lead counsel, for the litigation in this

case. However, we modify the award of outside vendor copy costs to account for the

inclusion of $15,635.25 for database development, an error that Nidek conceded in its

brief to this court.

With respect to Sughrue’s internal copy expenses, Nidek calculated the cost

differently. As in the case of vendor copy expenses, Nidek submitted invoices showing

the total charges for Sughrue’s internal copies. However, the invoice charges were

calculated at a rate of 25 cents per page. The total charges from those invoices were

reduced by 50 percent—just as in the case of outside vendor copy expenses—but most

of that reduction was to account for the fact that Nidek and Summit had agreed to a rate

of 15 cents per page. The resulting expense on the bill of costs is $25,321.96.

No explanation was provided for the use of a different methodology in the case of

Sughrue’s internal copies. In particular, there was no testimony or evidence suggesting

that a higher percentage of Sughrue’s internal copies was necessary than was true of

the vendors’ copies. In the absence of any support for the methodology used to

calculate the costs for Sughrue’s internal copies, that portion of the award was

improper. Just as was done for vendor copy expenses, Sughrue’s internal copy

expenses should be adjusted to the agreed-upon rate of 15 cents per page, and then

reduced by 50 percent to account for non-necessary copies. That calculation results in

05-1292 11
an award of $15,193.18 for Sughrue’s internal copy costs. Thus, we amend the

component of the district court’s award corresponding to Sughrue’s internal copy costs

($25,321.96), reducing it by $10,128.78.

A third category of copy costs is $78,553.69 in internal copy expenses incurred

by the law firm of Testa, Hurwitz & Thibeault, LLP, Sughrue’s co-counsel in this case.

Those submitted costs are unsupported by any evidence of record. Testa did not

specifically track photocopy expenses related to its work on this case. Instead, Testa

billed Nidek a seven percent overhead fee on top of all of its legal fees for the case.

According to Testa’s invoices and Mr. Siegel’s testimony, that overhead fee included

photocopies, telephone, postage, telecopy, local transportation, overtime, Westlaw fees,

and all other miscellaneous expenses. Nidek submitted half of that total overhead

disbursement as its cost for Testa’s internal photocopies necessarily obtained for use in

this case.

As the sole support for that estimate, Mr. Siegel testified that:

I could not tell with precision [what Testa’s internal photocopy charges
were] but I knew how that figure was derived invoice by invoice. And I had
a sense roughly as to what the approximate photocopy charges were
among these disbursements . . . . [My assumption was] that photocopy
expenses in these situations would be approximately about fifty percent of
the [seven percent overhead] charge. It would vary from month to month
because in some months there would be very little photocopying. And in
other months there would be a lot.

Although the district court found Mr. Siegel credible, that testimony is insufficient on its

face to support an award of nearly $80,000 in photocopy expenses. Not only is Nidek’s

estimate of the portion of the overhead attributable to copying “rough,” there was not

even an attempt to account for the portion of the photocopies that were not necessary to

the maintenance of the action. In the absence of accurate photocopy tracking, Nidek

05-1292 12
might have pursued some other means of demonstrating Testa’s chargeable

photocopying expenses. Although section 1920(4) does not demand page-by-page

precision, a bill of costs must represent a calculation that is reasonably accurate under

the circumstances. See, e.g., Billings v. Cape Cod Child Dev. Program, Inc., 270 F.

Supp. 2d 175, 178 n.3 (D. Mass. 2003) (denying request for copying expenses because

“defendants have failed to in any way itemize their copying costs”); Pan Am. Grain Mfg.

Co. v. P.R. Ports Auth., 193 F.R.D. 26, 37-38 (D.P.R. 2000) (denying expenses

“supported only by invoices and checks that set forth lump sums paid for copies”).

With respect to this item, Nidek made no serious effort at precision but instead

asked the district court to award $78,553.69 in costs that “approximately about”

represented Testa’s internal copies. Even assuming Nidek’s estimate accurately

represented the total cost of Testa’s internal copying, only a portion of the total copying

expenses could be necessary to the maintenance of the action and therefore taxable

under section 1920(4). However, we need not determine what portion might have been

necessary, because we hold that awarding any costs in the absence of reasonable

proof supporting Testa’s internal copy expenses was an abuse of discretion. Thus, we

vacate the award of $78,553.69, corresponding to Testa’s internal photocopy expenses.

C

Finally, Summit challenges certain components of the costs awarded for

deposition transcripts, arguing that Nidek failed to support those costs with any

evidence, and that certain costs are double counted in the bill of costs. The total award

for deposition costs was $38,095.44. With respect to certain deposition expenses, we

agree with Summit.

05-1292 13
 In our review of the joint appendix we discovered at least two deposition charges

that were double counted. In its bill of costs and supporting invoices, Nidek included an

invoice for $803.51 (invoice number 34996 from the Manhattan Reporting Corporation),

and also included the 90-day past due notice for that same invoice. At oral argument

Nidek’s counsel agreed that $803.51 needed to be subtracted from its deposition costs.

In addition, it is clear to us that another invoice, for $414.03, was also double counted,

given the invoice date and the amount of the fee. Consequently, an additional $414.03

must be subtracted from Nidek’s submitted deposition costs.

With respect to other deposition costs, Summit argues that Nidek’s supporting

invoices and testimony fail to show who was deposed, and therefore fail to show that

the deposition transcripts were “necessarily obtained for use in the case,” as required

under section 1920(2). With respect to certain invoices, we agree.

Under First Circuit law, “if depositions are either introduced in evidence or used

at trial, their costs should be taxable to the losing party.” Templeman v. Chris Craft

Corp., 770 F.2d 245, 249 (1st Cir. 1985). At a minimum, in order to recover costs for a

particular deposition, that standard requires the submitting party to show who was

deposed. For several invoices, Nidek failed to do so. Furthermore, several of the

invoices do not even indicate what services are included in the invoice charge. That

information is critical because the expense of various convenience services, such as

expedited transcripts and video services, is not within the scope of section 1920(2).

See, e.g., Paul N. Howard Co. v. P.R. Aqueduct & Sewer Auth., 110 F.R.D. 78, 81

(D.P.R. 1986) (citing cases from various circuit and district courts). Without knowing

who was deposed or what services were provided, the district court could not have

05-1292 14
determined whether the expenses at issue were “necessarily obtained for use in the

case,” and so could not have determined whether those expenses were taxable under

section 1920(2).

In particular, for $10,473.96 of the claimed deposition costs, Nidek submitted the

invoices it received from Sughrue, rather than the invoices issued by the court reporting

service. Sughrue’s invoices merely list a dollar amount along with the name of a court

reporting service, presumably the service that took some deposition. Along with the risk

of double counting—which has been shown to be a real danger in this case—the district

court could not have determined that any of those particular deposition expenses were

taxable costs under section 1920(2). Thus, we vacate that component of the district

court’s award, along with an additional $1,217.54 to correct for the double counting we

have identified. With those corrections made, Nidek is entitled to recover $26,403.94

for deposition transcripts.

*****

Ultimately, Nidek and the district court seem to have relied heavily on the

proposition that the overall cost award in this case was not disproportionate to the

stakes or the complexity of the underlying patent infringement suit. While that may be

true, the fact that a case is particularly complex does not give the prevailing party an

unchecked right to collect nearly $400,000 in costs. Cost awards are bound by the

constraints of section 1920, and, when challenged, a prevailing party must offer some

reliable documentation or other proof that its bill of costs represents the allowable costs

that it actually and necessarily incurred during the litigation. In several instances Nidek

05-1292 15
has failed to offer such documentation or proof, and so is not entitled to recover those

costs, no matter whether the total amount of the billed costs may seem reasonable.

For the foregoing reasons, we modify the district court’s award of costs. We

vacate the award of costs for FTI’s fees in the amount of $98,786.79, we reduce the

award of photocopy costs by $104,317.72, and we reduce the award of deposition

transcript costs by $11,691.50. We uphold the remainder of the award of costs, in the

amount of $173,434.82, and we direct the entry of an award in that amount.

AFFIRMED IN PART, REVERSED IN PART, and REMANDED.

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