United States District Court, D. Massachusetts
BRIGHAM AND WOMEN'S HOSPITAL, INC. and INVESTORS BIO-TECH, L.P.
PERRIGO COMPANY and L. PERFUGO COMPANY
ZOBEL SENIOR UNITED STATES DISTRICT JUDGE
Company and L. Perrigo Company ("defendants") filed
a Bill of Costs seeking $90, 637.02 from Brigham and
Women's Hospital, Inc. and Investors Bio-Tech, LLP
("plaintiffs"). Plaintiffs object to all but $2,
357 of these costs, which they say is nonetheless offset by
expert witness fees owed to them by defendants.
Federal Rule of Civil Procedure 54(d), the court may award
"costs" to a prevailing party. Those costs are
identified in 28 U.S.C. § 1920 and include:
(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;....
also 28 U.S.C. § 1821 (further defining witness
expenses taxable under 28 U.S.C. § 1920(3)).
these statutory boundaries, the court retains broad
discretion to "shape the contours" of a
prevailing party's award. Great N. Ins. Co. v. E.
Propane Gas. Inc.. No. 15-12955-JGD, 2017 WL 2434776, at
*1 (D. Mass. June 5, 2017) (quoting Conwav v.
Licata. 144 F.Supp.3d 212, 217 (D. Mass. 2015)): see
also In re Two Appeals Arising Out of San Juan Dupont Plaza
Hotel Fire Litia.. 994 F.2d 956, 962-63 (1st Cir. 1993)
(a district court may decline to tax items in 28 U.S.C.
§ 1920 if it provides some rationale).
Defendants' Bill of Costs
an eight-day trial in December 2016 in this patent
infringement action, a jury returned a verdict for
plaintiffs. It found that the asserted claims of the patent
were valid, that defendants' product infringed each
asserted claim, and that such infringement was willful.
However, on defendants' motion under Federal Rule of
Civil Procedure 50(b), I determined that plaintiffs had
failed to present sufficient evidence of direct infringement
and that, accordingly, "no reasonable jury could have
returned a verdict" in their favor. Brigham &
Women's Hosp.. Inc. v. Perrigo Co.. 280 F.Supp.3d
192, 197 (D. Mass. 2017). Judgment was therefore entered for
defendants on all claims. Plaintiffs appealed and the Federal
Circuit conducted a de novo review and affirmed.
Brigham & Women's Hosp.. Inc. v. Perrigo
Co.. 761 Fed.Appx. 995 (Fed. Cir. 2019).
nonetheless argue that this case should be treated as one of
"mixed results" and that costs should be awarded to
the party who "carried the day" at each stage of
the case. Ira Green. Inc. v. Military Sales & Serv.
Co.. 775 F.3d 12, 28-29 (1st Cir. 2014). But a case of
"mixed results" is one in which each party
prevailed on some claims or counterclaims. Here, defendants
categorically won and are therefore the party entitled to
costs under Rule 54(d).
first request $900 for pro hac vice motion fees.
Courts in this district generally do not allow parties to
recover these costs, 600 LB Gorillas. Inc. v. Fieldbrook
Foods Corp.. No. 15-CV-13991-ADB, 2018 WL 6332494, at *5
(D. Mass. Dec. 4, 2018) (collecting cases), and I am not
persuaded that defendants' choice of out-of-state counsel
is "fairly chargeable to plaintiff." Keuria.
Inc. v. JBR, Inc.. No. 11-CV-11941-FDS, 2014 WL 2155083,
at *2 (D. Mass. May 21, 2014). Defendants' pro hac
vice application costs are denied.
originally sought $1, 979 in fees for service of summonses
and subpoenas, but both parties have since agreed that only a
portion of that sum is recoverable under 28 U.S.C. §
1920(1). Accordingly, defendants' request for Fees of the
Marshal is allowed in the agreed amount of $780.