United States District Court, D. Delaware
INTELLECTUAL VENTURES I LLC and INTELLECTUAL VENTURES II LLC, Plaintiffs,
SYMANTEC CORPORATION et al., Defendants.
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT COURT.
December 2010, Plaintiffs Intellectual Ventures I LLC and
Intellectual Ventures II LLC (collectively, "IV")
filed this patent infringement action against Symantec
Corporation ("Symantec") and against Check Point
Software Technologies Ltd., Check Point Software Technologies
Inc., McAffee, Inc., Trend Micro Incorporated, and Trend
Micro, Inc. (collectively, "Defendants"). (D.I. 1)
As against Symantec, IV asserted United States Patent Nos. 5,
987, 610 ("the '610 patent"), 6, 073, 142
("the '142 patent"), and 6, 460, 050 ("the
'050 patent") ("the patents-in-suit").
(Id.) A jury found Symantec infringed claims of the
'610 and '142 patents and did not infringe any
asserted claim of the '050 patent. (D.I. 676) The Court
then granted Symantec's post-trial motion for judgment as
a matter of law that the asserted claims of the '142 and
'050 patents were invalid as being directed to
nonpatentable subject matter and denied Symantec's
similar motion as to the asserted claims of the '610
patent. (D.I. 726, 727) On appeal, the Federal Circuit found
the asserted claims of all three patents-in-suit to be
invalid. See Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307 (Fed. Cir. 2016).
on February 2, 2017, Symantec filed with the Clerk of Court a
Bill of Costs, supported by a Declaration of Dean G.
Dunlavey. (D.I. 778, 779, 780) IV objected to the Bill of
Costs on March 1, 2017. (D.I. 783) The Clerk entered its
Taxation of Costs in the amount of $29, 696.50 on June 7,
2018. (D.I. 786) Now pending before the Court is
Symantec's Motion for Review of Clerk's Taxation of
Costs. (D.I. 787)
reviewed the record, and for the reasons stated below,
IT IS HEREBY ORDERED THAT Symantec's
motion (D.I. 787) is GRANTED and IV is
ordered to pay Symantec's costs in the amount of
Symantec aptly states: "Resolving IV's claims took
over six years, hundreds of thousands of pages of production,
dozens of depositions and hearings before this Court, two
weeks of trial before a jury, and multiple opinions by this
Court and the Federal Circuit. . . . Ultimately, Symantec
prevailed on every single claim." (D.I. 787 at 1) In
this context, and fully consistent with the legal authority
discussed below, it is unsurprising that Symantec incurred
the amount of recoverable costs it requests. Accordingly, in
the Court's view, it would be improper not to award
Symantec the full amount of costs it reasonably incurred and
"Federal Rule of Civil Procedure 54(d) gives courts the
discretion to award costs to prevailing parties."
Taniguchi v. Kan.Pac. Saipan, Ltd., 566 U.S. 560,
565 (2012). In particular, Rule 54(d)(1) provides:
"Unless 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). As the Third Circuit has observed, Rule 54(d)(1)
"uses the word 'costs' as a term of art, rather
than to refer to all expenses a prevailing party may incur in
a given action." In re Paoli R.R. YardPCB
Litig., 221 F.3d 449, 458 (3d Cir. 2000).
categories of costs that are taxable are set out in 28 U.S.C.
§ 1920, a statute to which the Supreme Court "has
accorded a narrow reading." Race Tires Am., Inc. v.
Hoosier Racing Tire Corp., 674 F.3d 158, 171
(3d Cir. 2012) (citing Crawford Fitting Co. v. J.T.
Gibbons Inc., 482 U.S. 437, 442 (1987)). Section 1920
states, in full:
or clerk of any court of the United States may tax as costs
(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 ...