United States District Court, D. Delaware
ROCHE DIAGNOSTICS OPERATIONS, INC. and CORANGE INTERNATIONAL LIMITED, Plaintiffs,
ABBOTT DIABETES CARE, INC.; ABBOTT DIABETES CARE SALES CORPORATION; BAYER HEALTHCARE, LLC; DIAGNOSTICS SERVICES, INC.; LIFESCAN, INCORPORATED, and NOVA BIOMEDICAL CORPORATION, Defendants.
before the Court is Plaintiffs' (collectively,
"Roche") motion for review of the Clerk's
taxation of costs. (D.I. 1103). The issues are fully briefed.
(D.I. 1104, 1107, 1108). For the reasons stated herein,
Roche's motion is DENIED.
sued Nova for patent infringement on November 21, 2007. (D.I.
1). On January 11, 2008, Nova filed patent and non-patent
counterclaims. (D.I. 47 at 7-13). At a pretrial hearing on
January 21, 2010, Judge Farnan indicated that he would
resolve Roche's patent claims with a Rule 54(b) judgment
in Nova's favor and proceed with a separate trial on
Nova's non-patent counterclaims. (D.I. 859 at 5:24-6:6,
6:17-8:1). Following the trial of Nova's counterclaims, a
jury returned a verdict in Roche's favor on February 2,
2010. (D.I. 807). The Court subsequently denied Nova's
post-trial motions. (D.I. 847, 848). On July 27, 2010, the
Court entered judgment in Roche's favor on Nova's
counterclaims and entered judgment in Nova's favor on
Roche's patent claims. (D.I. 850, 851). Both parties
appealed. (D.I. 852, 863). On appeal, the Federal Circuit
consolidated Roche's patent claims and Nova's
counterclaims, affirming the district court's judgment on
Nova's counterclaims but vacating the judgment of
non-infringement and remanding for further proceedings on
claim construction for the term "electrode." (D.I.
948-1 at 2-3). The Federal Circuit's Mandate was filed in
the district court on March 5, 2012. (D.I. 948). Roche timely
filed a Bill of Costs, which Nova opposed, and which the
Clerk denied as premature. (D.I. 949, 954, 997).
more than two years addressing the claim construction for
"electrode, " the Court entered a final judgment of
non-infringement in Nova's favor on January 16, 2015.
(D.I. 1032). Roche again appealed. (D.I. 1035). On appeal,
the Federal Circuit affirmed the district court's
judgment of non-infringement. (D.I. 1041-1 at 3). The Federal
Circuit's Mandate was filed in the district court on
October 31, 2016. (D.I. 1041).
parties filed timely motions for attorneys' fees, which I
referred to Judge Thynge. (D.I. 1049, 1050). On October 3,
2017, Judge Thynge issued a Report and Recommendation
("R & R"), in which she recommended that I deny
both parties' motions. (D.I. 1091). The R & R also
found that the district court had treated Roche's patent
claims as though they had been raised in a separate lawsuit
from Nova's non-patent counterclaims, and that Roche was
the prevailing party with regard to Nova's non-patent
counterclaims. (D.I. 1091 at 35). Both parties filed
objections to the R & R, and each responded to the
other's objections to the R & R. (D.I. 1092, 1093,
1097, 1098). Nova's objections did not include any
objection to the R & R's finding that Roche's
patent claims and Nova's non-patent counterclaims were
separate and distinct, or to the finding that Roche was a
prevailing party with respect to Nova's non-patent
counterclaims. (See D.I. 1092). But Nova did raise
these objections in its response to Roche's objections to
the R & R. (D.I. 1097, p. 1 n.3). In resolving the
parties' motions for attorneys' fees, I adopted the
findings of fact and conclusions of law in the R & R.
(D.I. 1110 at 1).
also filed a timely renewed bill of costs for its successful
defense of Nova's counterclaims (D.I. 1042), to which
Nova objected (D.I. 1047). Citing Local Rule 54.1(c), on
February 2, 2018, the Clerk denied Roche's renewed bill
of costs on the basis that the determination of the
prevailing party was a matter "within the discretion of
the Court." (D.I. 1102 at 3-4). Roche then filed a
motion for review of the Clerk's taxation of costs. (D.I.
1103). Nova now opposes Roche's motion. (D.I. 1107).
Rule of Civil Procedure 54(d)(1) governs costs awards. It
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." Fed.R.Civ.P. 54(d)(1). In patent cases, Federal
Circuit law controls the prevailing party inquiry.
Manildra Milling Corp. v. Ogilvie Mills, Inc., 76
F.3d 1178, 1182 (Fed. Cir. 1996). To qualify as a prevailing
party, a party must "have received at least some relief
on the merits. That relief must materially alter the legal
relationship between the parties by modifying one party's
behavior in a way that 'directly benefits' the
opposing party." Shum v. Intel Corp., 629 F.3d
1360, 1367 (Fed. Cir. 2010) (quoting Farrar v.
Hobby, 506 U.S. 103, 111-13(1992)).
degree of plaintiff s overall success goes not towards
whether the plaintiff prevailed, but rather towards the
reasonableness of the fee award." Manildra, 76
F.3d at 1182. The amount of a costs award to a prevailing
party is governed by regional circuit law, because it
"implicates considerations not unique to patent law,
such as the litigants' behavior at trial."
Id. at 1183. "[E]ven if a party satisfies the
definition of prevailing party, the district court judge
retains broad discretion as to how much to award, if
asserts that it is the prevailing party and argues that it
"should be awarded its costs in connection with its
successful defense of Nova's claims against Roche: $131,
697.86." (D.I. 1104, p. 1). Nova submits that it would
be appropriate for me to find that there is no prevailing
party in this case under Local Rule 54.1(c). (D.I. 1107, p.
determining the prevailing party is whether Roche's
patent claims should be treated as a separate case from
Nova's non-patent counterclaims.
to Roche, the patent claims and non-patent counterclaims
should be considered separate cases because the district
court treated them that way. (D.I. 1104, pp. 2-3). Judge
Farnan entered a Rule 54(b) judgment on Roche's patent
claims, tried Nova's non-patent counterclaims separately,
and set separate discovery procedures for the patent and
non-patent claims. (Id.). Judge Thynge's R &
R regarding the motions for attorneys' fees (D.I. 1049,
1050) found that Roche's patent claims and Nova's
non-patent counterclaims "are distinctly different
claims for relief that are based on different facts and legal
theories and the court has treated those unrelated claims as
if they had been raised in separate lawsuits." (D.I.
1091 at 35). The R & R also concluded that Roche was the
prevailing party for purposes of Nova's counterclaims.
(Id.). Nova waited until its responses to
Roche's objections to the R & R to object to Judge
Thynge's findings that Roche's patent claims are
separate from Nova's counterclaims and that Roche is the
prevailing party with respect to Nova's counterclaims.
(See D.I. 1092 (failing to raise objections to
separateness of claims or to determination that Roche is a
prevailing party); D.I. 1097, p. 1 n.3 (objecting to finding
that Roche is a prevailing party in reply to Roche's
objections to the R & R)). Therefore, Roche argues, Nova
has waived any argument that Roche's patent claims were
not treated as a separate case from Nova's counterclaims
or that Roche is the prevailing party with respect to
Nova's counterclaims. (D.I. 1104, p. l;D.I. 1108, pp.
counters that "the only reason that Roche's patent
claims and Nova's counterclaims were not tried together
to the jury is because the Court granted Nova's summary
judgment motion at the pretrial conference, and a judgment of
non-infringement was granted in Nova's favor." (D.I.
1107, p. 5). According to Nova, "separate allowances for
discovery" on the non-patent counterclaims existed
merely because "certain discovery related only to
Nova's counterclaims and were not relevant to the other
defendants." (Id.). Nova notes, and Roche
acknowledges, that the Federal Circuit consolidated
Roche's appeal of claim construction issues on the patent
claims and Nova's appeal on the ...