# Motorola Solutions, Inc. v. Hytera Communications Corporation Ltd.

> District Court, N.D. Illinois · August 6, 2021

URL: https://www.frixlaw.com/law-library/cases/10145308

## Case

- **Court:** District Court, N.D. Illinois
- **Decided:** August 6, 2021
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10145308

## How later opinions describe it (automated extraction)

- affirming award of costs, including “interactive realtime,” in “lengthy” trade secrets case with a “voluminous record”

## Opinion text

IN THE UNITED STATES DISTRICT
COURT FOR THE NORTHERN DISTRICT
OF ILLINOIS EASTERN DIVISION
MOTOROLA SOLUTIONS, INC., and
MOTOROLA SOLUTIONS MALAYSIA SDN.
BHD.,
Plaintiffs, Case No. 1:17-cv-01973
V. Judge Charles R. Norgle
HYTERA COMMUNICATIONS
CORPORATION LTD., HYTERA AMERICA,
INC., and HYTERA COMMUNICATIONS
AMERICA (WEST), INC.,
Defendants.

ORDER
The Court grants Plaintiffs’ amended bill of costs [1044-8] in full. Plaintiffs’ original bill of costs
[1000] is denied as moot. The Court taxes Hytera Communications Corporation Ltd. for costs in
the amount of $2,674,631.36. This order is without prejudice as to Plaintiffs seeking costs or other
relief from Hytera America, Inc. and Hytera Communications America (West), Inc. at a later date.
MEMORANDUM OPINION
After a nearly four-month trial, a jury found for Plaintiffs Motorola Solutions, Inc. and
Motorola Solutions Malaysia Sdn. Bhd. (“Motorola”) on every issue and awarded the full amount
of damages Motorola requested, approximately $345 million in compensatory damages and $418
million in punitive damages.' The Court entered judgment on the verdict. Dkt. 947; 948. As the
prevailing party, Motorola filed a bill of costs, and a supporting memorandum, arguing that the
Court should tax Defendant Hytera Communications Corporation Ltd.? (“Hytera”) in the amount

! Damages were later reduced to $543.7 million. Dkt. 1099,
2 The other Defendants have filed for Chapter 11 bankruptcy, so Motorola seeks costs only from the non-debtor
defendant at this time. Motorola’s motion is without prejudice to seeking costs or any other relief from Hytera
America, Inc. and Hytera Communications America (West), Inc. at a later date.

of $2,674,631.36. Hytera argues that Motorola is entitled to just $168,792.92. For the following
reasons, the Court grants Motorola’s amended bill of costs in full and awards Motorola taxable
costs from Hytera in the amount of $2,674,631.36.
The Court first notes that Motorola changed the amount it requested when it submitted its
Reply. Dkt. 1044. In its original bill of costs, Motorola requested a total of $2,683,973.68. Dkt.
1000. Then, with its Reply Brief, Motorola attached an amended bill of costs which reduced the
amount of requested costs for trial transcripts and increased the amount requested for interpreter
costs. Dkt. 1044-8 (Bill of Cost (Amended)). Motorola attached a declaration from its counsel
explaining the discrepancy between the two bills of costs. Dkt. 1044-9. Counsel stated that in
Motorola’s original bill of costs, Motorola inadvertently used a higher, actually-billed, per-page
rate for transcript printing rather than the lower, statutory one for certain invoices. Id. at 1. Next,
counsel stated that Motorola made two mistakes regarding interpreter costs in its original bill of
costs. First, it included some entries for written document translation that should not have been
included. Second, it inadvertently and improperly under-calculated the total of the original
interpreter entries. Id. at 2. Accounting for these changes, Motorola’s amended bill of costs
reduced the total amount requested by $9,342.32, to $2,674,631.36. The Court accepts and awards
the resulting reduced total amount.
The Court may tax costs pursuant to 28 U.S.C. § 1920, which provides that:
A judge or clerk of any court of the United States may tax as costs
the following: (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) and
compensation of court appointed experts, compensation of
interpreters, and salaries, fees, expenses, and costs of special
interpretation services under section 1828 of this title. A bill of costs
shall be filed in the case and, upon allowance, included in the

judgment or decree. 28 U.S.C. § 1920; see L.R. 54.1; Fed. R. Civ.
P. (54)(d).
To award a cost, the Court must determine “(1) whether the cost imposed on the losing
party is [statutorily] recoverable and (2) if so, whether the amount assessed for that item was
reasonable.” Hillmann v. City of Chicago, No. 04 C 6671, 2017 WL 3521 098, at *2 (N.D. Ill. Aug.
16, 2017) (citing Majeske v. City of Chi., 218 F.3d 816, 824 (7th Cir. 2000)). “In order to recover
costs, the prevailing party bears the burden to show that the requested costs were necessarily
incurred and reasonable.” Gecker as Tr. for Collins v. Menard, Inc., No. 16 C 50153, 2020 WL
1077695, at *1 (N.D. Ill. Mar. 6, 2020) (quoting Trs. of the Chi. Plastering Inst. Pension Trust v.
Cork Plastering Co., 570 F.3d 890, 906 (7th Cir. 2009)). “[T]here is a presumption that the
prevailing party will recover costs, and the losing party bears the burden of an affirmative showing
that taxed costs are not appropriate.” Hillman, 2017 WL 3521098 at *2 (quoting Beamon v.
Marshall & Ilsley Tr. Co., 411 F.3d 854, 864 (7th Cir. 2005)); see also Massuda v. Panda Express,
Inc., No. 12 CV 9683, 2014 WL 148723, at *2 (N.D. Ill. Jan. 15, 2014) (Prevailing parties “bear
the burden of demonstrating that the costs were necessary and reasonable. . . . If this burden is
satisfied, [the losing party] must then show that the costs are inappropriate.”). “Under Rule 54(d),
‘district courts enjoy wide discretion in determining and awarding reasonable costs.’” Hillman,
2017 WL 3521098 at *2 (quoting Northbrook Excess & Surplus Ins. Co. v. Procter & Gamble Co.,
924 F.2d 633, 642 (7th Cir. 1991)).
The Court will address each pertinent section in 28 U.S.C. § 1920 in turn. Because
Plaintiffs do not request any docket fees under 28 U.S.C. § 1923, the Court will not consider 28
U.S.C. § 1920(5).
I. Fees of the Clerk and Marshal
Plaintiffs request $1,600 in fees of the clerk pursuant to 28 U.S.C. § 1920(1) stemming

from sixteen pro hac vice admission fees paid by Motorola. Dkts. 9, 13, 14, 15, 16, 63, 72, 75,
138, 168, 327, 441, 660, 663, 716 and 727. Dkt. 1000-4 (Appendix A). Those fees are recoverable.
Eagle F. v. Phyllis Schlafly’s Am. Eagles, 498 F. Supp. 3d 1024, 1036 (S.D. Ill. 2020) (citing
United States v. Emergency Med. Assocs. of Illinois, Inc., 436 F.3d 726, 730 (7th Cir. 2006)).
Hytera argues that “(t]he weight of authority in this Circuit . . . indicates that courts normally
decline to award pro hac vice costs.” Oleksy v. Gen. Elec. Co., No. 06-CV-1245, 2016 WL
7217725, at *2 (N.D. Ill. Dec. 12, 2016). But there is also “some authority to support both sides
of the split,” id., and this lengthy and complex case was not normal. Hytera argues that Motorola’s
counsel—Kirkland & Ellis—is a Chicago-based firm, and Motorola could have hired Chicago-
based Kirkland attorneys rather than out-of-state attorneys. However, this ignores the realities of
international law firm practice in litigation like this, and the $1,600 in pro hac vice fees is
reasonable. Thus, the costs here are recoverable.
Motorola also asserts that it should be paid $1,235 in fees of the marshal under 28 U.S.C.
§ 1920(1) for service of (1) the summons and complaint on Hytera and (2) document and
deposition subpoenas to seventeen of Hytera’s dealers and one accounting firm Hytera used. Dkt.
1000-5 (Appendix B). Hytera does not oppose that request, and the Court would grant those costs
regardless as they are recoverable and the requested rate is reasonable. Merix Pharm. Corp. v.
Clinical Supplies Mgmt.. Inc., 106 F. Supp. 3d 927, 946 (N.D. Ill. 2015); Serwatka v. City of
Chicago, No. 08 C 5616, 2011 WL 2038725, at *3 (N.D. Ill. May 24, 2011); see 28 C.F.R. § 0.114;
Schultz v. iGPS Co. LLC, No. 10-cv-00071, Dkt. No. 403, at *4 (N.D. Ill. May 8, 2013).
Il. Fees for Necessary Transcripts
Motorola requests $274,052.50 for “fees for printed or electronically recorded transcripts
necessarily obtained for use in the case.” 28 U.S.C. § 1920(2). That includes $215,703.70 for costs

related to deposition transcript production’ and $58,348.80 for costs related to hearing and trial
transcript production.? The Court discusses both in turn below.
A. Deposition-Related Transcript Costs
Deposition costs like printed or electronic transcripts are recoverable if they were
“reasonably necessary’ to the case at the time they were obtained.” Smith v. Chicago Transit
Auth., No. 12 C 8716, 2015 WL 2149552, at *5 (N.D. Ill. May 6, 2015) (citing Cengr v. Fusibond
Piping Sys., Inc, 135 F.3d 445, 455 (7th Cir. 1998)). “The introduction of a deposition in a
summary judgment motion or at trial is not a prerequisite for finding that it was necessary to take
that deposition.” Id. “[I]n law the word ‘necessary’ often does not live up to the impression it
conveys to lay readers... We have understood § 1920 as requiring no more than that the
transcripts or copies be reasonably and prudently obtained—which depends on how things seemed
when the expenditures were made, without the benefit of hindsight.” Nat’] Org. for Women, Inc.
v. Scheidler, 750 F.3d 696, 698-99 (7th Cir. 2014) (rejecting need for document-specific inquiry).
While “courts may not tax the costs of transcripts... provided merely for the convenience of the
requesting attorney, a transcript need not be absolutely indispensable in order to provide the basis
of an award of costs.” Majeske v. City of Chicago, 218 F.3d 816, 825 (7th Cir. 2000).
Motorola’s requested deposition costs can be classified into five categories: (1) $43,800.20
in transcript costs; (2) $76,013.75 in videotaping costs; (3) $67,757.40 in real-time transcription
costs; (4) $20,452.35 in exhibit scanning costs; and (5) $7,680.00 in cancellation fees. Dkt. 1044-
7 (Appendix J) (listing costs in a chart). The Court will address each.

4 Dkt. 1000-6 (Appendix C).
5 Dkt. 1044-9 at 5-35 (corrected Appendix D). □

|. Transcripts
Motorola’s deposition transcript costs of $43,800.20 were reasonably necessary to
demonstrate the merits of its claims against Hytera. Motorola describes how it deposed over 50
people regarding issues like company history, sales, trade secrets, financial information,
knowledge of material theft, attempts at developing products, document storage, and refutation of
defenses. Motorola supports its claim through documentation in the form of a chart and
voluminous invoices. Dkt. 1000-6.
Hytera argues that deposition-related transcript costs should be reduced to $36,179.45.
Dkt. 1036 at 11. It argues that many of the depositions themselves were not reasonably necessary.
Specifically, it points to three depositions “and others” that had to be rescheduled because
Motorola failed to adequately prepare the witnesses regarding trade secret testimony. Dkt. 1036 at
7, But Hytera cites only to its own motion to compel, Dkt. 506, and that motion was withdrawn.
Dkt. 523. Hytera next argues that certain Motorola depositions used in this case were actually
taken in other matters—a U.S. International Trade Commission matter and a patent case in the
Northern District of Ohio—and therefore those costs should not be recoverable here. However,
the parties stipulated that those depositions taken in other matters could be used in this case. Dkt.
681-1; Dkt. 681-2. The argument is therefore rejected.
Motorola seeks the prescribed ordinary transcript rate of $3.65 per page for original
transcripts and $0.90 per page for copies established by the Judicial Conferences of the United
States, which is proper.® Hacker v. United Airlines, Inc., No. 16 C 9708, 2019 WL 2287807, at
*3 (N.D. Ill. May 29, 2019). The transcripts were reasonably necessary and the transcript rates and
costs were reasonable.

UNITED STATES DISTRICT COURT - NORTHERN DISTRICT OF ILLINOIS, “Maximum Transcript Rates — All Parties,”
August 4, 2021, available at https://www ilnd,uscourts.gov/Pages.aspx ?rsp2kxYIAI6Z3skPOPESA+g3bXKkfRyo.

2. Videotaping
Motorola asks for the cost of videotaping the depositions, $76,013.75. Hytera agrees that
videotaping costs may be taxed. Little v. Mitsubishi Motors N. Am., Inc., 514 F.3d 699, 702 (7th
Cir. 2008). But Hytera denies that it should be taxed for those costs because Motorola does not
explain why Motorola’s video deposition costs were both reasonable and necessary. The Court
disagrees and finds that the costs were reasonable and necessary. First, Motorola does not seek
videotaping costs for depositions of its own witnesses or Hytera’s experts. Motorola only requests
videotaping costs for individuals who resided outside of this Court’s subpoena power for trial,
reasoning that videotaping was necessary in those instances due to the uncertainty regarding
whether those individuals would appear at trial. Hytera is correct when it argues that videotaping
costs are not automatically taxable simply because the witnesses are located outside a Court’s
subpoena power. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 750 F. Supp. 2d 962, 976-77 (N.D. Ill.
2010). But Hytera also included all the relevant witnesses on its list for trial, making those costs
recoverable. Dkt. 690-4; Trading Techs., 750 F. Supp. 2d at 976-77 (allowing videotaping costs
for those living abroad who were disclosed as potential witnesses for trial), And while videotaping
costs sometimes “are not recoverable . . . because they are regarded as costs incurred for counsel’s
convenience,” here, given the uncertainty surrounding whether those individuals—many of whom
reside in China’—could or would testify at trial, videotaping the depositions was reasonably
necessary. Engate, Inc. v. Esquire Deposition Servs. LLC, No. 01 C 6204, 2006 WL 695650, at
*2 (N.D. Ill. Mar. 13, 2006) (awarding costs for both transcripts and videotapes of depositions of
two witnesses “[b]ecause [they] appear to reside in England and were therefore outside the court’s
subpoena power” but rejecting other videotaped deposition costs).

7 Motorola identifies at least twenty witnesses who lived 9 China. Dkt. 1000 at 5.

Hytera also argues that most of the video depositions were not actually played at trial, and
many were merely read at trial. But it was unclear to Motorola what witnesses would be available
or whether video would be necessary at trial, and “[n]ecessity is determined in light of the facts
known at the time of the deposition.” Trading Techs. Int’l Inc. v. eSpeed, Inc., 750 F. Supp. 2d
962, 975 (N.D. Ill. 2010). Finally, the complex nature of the case also makes the videotape costs
reasonably necessary, as evidenced by the fact that Hytera itself videotaped all the depositions it
took. The videotaping costs are therefore recoverable, and the costs documented by Motorola were
reasonable given the number of depositions needed in this case. Dkt. 1000-6 (Appendix C).
3. Real-Time Transcription
Motorola requests $67,757.40 in real-time transcription costs.’ These costs are recoverable
when necessary and reasonable. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 750 F. Supp. 2d 962,
975 (N.D. Ili. 2010) (discussing page rates “for real time transcripts”); Id. (Local Rule 54.1(b)
limits recovery of costs like real-time transcription to copy rate established by the Judicial
Conference of the United States at the time the deposition was taken); Kinzenbaw v. Case LLC,
No. 05-1483, 2006 WL 1096683, at *6 (Fed. Cir. Apr. 26, 2006) (affirming award of “realtime
services” when district court concluded them necessary, but not when the district court did not
specifically find them necessary). Motorola argues that the technical complexity of witness
testimony required real-time transcription, especially for those witnesses that testified in Mandarin
Chinese with an interpreter. Abt Sys.. LLC v. Emerson Elec. Co., No. 4:11CV00374 AGF, 2016
WL 5470198, at *3 (E.D. Mo. Sept. 29, 2016) (“Given the complicated and technical nature of
this lawsuit, the Court finds that the costs for the RealTime transcripts at issue are recoverable.”’).

§ “Real-time transcription is the electronic data flow from the court reporter to the computer of each person or party
ordering and receiving the real-time transcription as the proceeding occurs.” Press Ganey Assocs.., Inc. v. Dye, No.
3:12-CV-437-CAN, 2014 WL 1874897, at *4 (N.D. Ind. May 8, 2014). It allows an attorney to review the deponent’s
testimony as it unfolds and to analyze testimony during vs in order to identify issues.

The Court agrees that under these circumstances, where long gaps could have existed between
questions and answers involving complex issues, real-time services were necessary. See BDT
Prod., Inc. v. Lexmark Int’l. Inc., 405 F.3d 415, 419-20 (6th Cir. 2005) (affirming award of costs,
including “interactive realtime,” in “lengthy” trade secrets case with a “voluminous
record”), abrogated on other grounds by Taniguchi v. Kan Pac. Saipan, Ltd., 566 U.S. 560, 132 S.
Ct. 1997, 182 L. Ed. 2d 903 (2012).
Hytera counters that real-time services in this case were a mere convenience and should
not be awarded. DeKalb Genetics Corp. v. Pioneer Hi-Bred Int’l.. Inc., No. 96 C 501 13, 2002 WL
1969666, at *3 (N.D. Ill. Aug. 26, 2002) (deducting all charges for real-time services as not
necessarily obtained, while rejecting Pioneer’s argument that the services were “necessary to avoid
duplicate questions”). Hytera argues that this Court has rejected the argument that the complex
nature of a case justifies awarding real-time costs, citing Cascades Computer Innovation, LLC v.
Samsung Elecs. Co., No. 11 C 4574, 2016 WL 612792, at *4 (N.D. Ill. Feb. 16, 2016) (“the mere
fact that the subject matter at issue was complicated is not sufficient to justify” awarding real-time
costs). However, unlike in DeKalb, the asserted necessity here does not derive from the need to
avoid duplicate questions, but from the complicated nature of the case coupled with the need for
frequent, lengthy interpretation services. Neither did Cascades deal with such a combination.
Hytera responds that Motorola did not need real-time services to operate perfectly well with
interpretation services, as the interpretation was rendered in English. The Court disagrees, and
finds the real-time costs here reasonably necessary.
In addition, the real-time costs documented by Motorola were reasonable, especially
because Motorola did not use real-time transcription for every deposition. Dkt. 1000-6 (Appendix
C); Press Ganey Assocs... Inc. v. Dye, No. 3:12-CV-437-CAN, 2014 WL 1874897, at *4 (N.D.
Ind. May 8, 2014) ([C]ounsel notably did not use real-time transcription for all of the depositions.

From that, the Court infers that strategy decisions were made about the value of particular
deponents to their case, which implies that real-time transcription was a necessity with the
deponents for which it was used.”); Endotach LLC v. Cook Med. LLC, No.
113CV01135LJMDKL, 2016 WL 912681, at *3 (S.D. Ind. Mar. 10, 2016).
4, Exhibit Scanning
Motorola requests $20,452.35 in deposition exhibit scanning costs. Hytera admits that
these costs are recoverable. GC2 Inc. v. Int’] Game Tech., No. 16 C 8794, 2019 WL 3410223, at
*5 (N.D. Ill. July 29, 2019) (exhibit-stamping is necessary because “litigants need to use the
exhibit-stamped version of a document in order to benefit from a witness’s deposition testimony
about the document”). Hytera argues, though, that the scanning costs here were “not helpful or
necessary” and so should be denied. Crabtree v. Experian Info. Sols., Inc., No. 16 CV 10706, 2018
WL 10127090, at *2 (N.D. Ill. Oct. 15, 2018).? Hytera argues that through the course of discovery,
Motorola continually reduced the number of trade secrets it was asserting, so that “hundreds of
deposition exhibits relating to more than one hundred previously asserted trade secrets became
irrelevant in the lead-up to trial.” Dkt. 1036 at 10. Because those exhibits were abandoned before
trial, says Hytera, those exhibits were not helpful or necessary. Therefore, Hytera reasons that
Motorola should recover at most one-fourth of their exhibit costs—$5,113.09.
The Court disagrees. Hytera cites no case for the proposition that an exhibit’s use at trial
is the proper metric for recoverability. Motorola states it used the exhibits—most of which did not
relate to trade secrets—in filings before trial. See e.g., Dkt. 217 4 11. As such, the Court finds that
the exhibits were helpful and necessary. Having reviewed the documented exhibit scanning costs,

° While Hytera cites Crabtree to argue that the exhibit scanning was not helpful or necessary, the Crabtree court
awarded exhibit costs because Plaintiff failed “to show that the exhibits were not helpful or necessary” and stated that
“exhibits can be essential to understanding the content 2018 WL 10127090 at *2.

the Court finds that they were reasonable and will not reduce the requested amount. Dkt. 1000-6.
5. Cancellation Fees
Finally, regarding deposition costs, Motorola requests $7,680 in cancellation fees relating
to depositions that Hytera unilaterally cancelled. “A litigant may recover a court reporter's
cancellation fee.” Herrera v. Grand Sports Arena, LLC, No. 17-CV-0452, 2018 WL 6511155, at
*6 (N.D. Ill. Dec. 11, 2018) (denying cancellation fees because plaintiff provided no
documentation to support them); Chapman v. Wagener Equities, Inc., No. 09-CV-07299, 2017
WL 2973420, at *3 (N.D. Ill. July 12, 2017) (“the party responsible for a last-minute cancellation
should be the one to pay the cost of any cancellation fee” and finding that the cancellation was
plaintiff's fault). Motorola lists four depositions that Hytera cancelled within either 24 or 48 hours
of their occurrence in Hong Kong and provides emails and invoices that document the
cancellations. Dkt. 1000-2; Dkt. 1000-3; Dkt. 1000-6.
Hytera argues that Motorola should recover none of those costs. With regard to three! of
the four pertinent depositions, Hytera emphasizes that the magistrate judge already denied
Motorola’s previous motion to recover those cancellation costs. Dkt. 467. But Motorola correctly
states that the previous order denying costs, which included no explanation for the denial, has no
bearing now that Motorola has prevailed in the case. That denial might have been relevant if the
magistrate judge had found that the cancellations were in fact Motorola’s fault. But the order was
silent on that point. The magistrate judge might have denied the motion for any of several reasons
other than any fault of Motorola.!' Importantly, Hytera offers no rebuttal to Motorola’s assertion
and documentation that those three cancellations were Hytera’s fault.

'© Xiaohua Zheng, Jianwu Yang, and Junping Luo. See Dkt. 1000-3.
Motorola offers one such explanation: that just before the judge denied the request for costs, Motorola’s counsel
had emphasized that Motorola was more concerned about getting the witness deposed than about receiving costs. Dkt.
1044 at 6 n.3.
11

Regarding the fourth deposition,'? Hytera seems to argue that the cancellation was not
Hytera’s fault. Hytera argues that the witness had visa issues, that Motorola was offered an
alternative witness to depose at that time, and that Motorola was eventually able to take the
deposition. But this does not rebut Hytera’s responsibility for cancelling the deposition unliterally
with less than 24 hours notice. No fault at all lies with Motorola. See Cascades Computer
Innovation, LLC v. Samsung Elecs. Co., No. 11 C 4574, 2016 WL 612792, at *8 (N.D. Ill. Feb.
16, 2016) (“There is [] no reason Samsung should be required to shoulder any portion of the
cancellation fee one interpreter charged when Cascades rescheduled the Kim deposition.”).
Ultimately, these four cancellations were the fault of Hytera, as documented by Motorola. The
cancellation costs were necessary and reasonable, and are awarded to Motorola in full.
B. Court-Related Transcript Costs
In its amended bill of costs, Motorola requests $50,108.40 in hearing and trial transcripts,
including $41,868 for final transcripts and $8,240.40 for daily, expedited rough transcripts. Dkt.
1044-9 at 6 (amended Appendix D); Dkt. 1044-7. Hytera argues that these fees should be reduced
to just $41,868. Dkt. 1066 at 11.'3 The Court will therefore discuss only the expedited transcript
costs, concluding that they should be awarded.
Court transcripts are recoverable under 28 U.S.C. § 1920(2), including “trial transcripts
and transcripts from other court proceedings necessarily obtained for use in the case.” Majeske v.
City of Chicago, 218 F.3d 816, 825 (7" Cir. 2000) (whether a party obtained a transcript out of
convenience or necessity for use in the case is a question of fact). Daily trial transcripts may not

'2 Huang Ni. See Dkt. 1000-2.
In its Response, Hytera actually asserts that there were $8,240.40 for “real-time expenses during trial.” Dkt. 1036
at 11. Motorola counters that “these are not real-time expenses . . . real time services were not provided during trial.
Rather, one of the court reporters referred to rough daily transcripts as ‘Real Time.’ Barath Decl. { 5; Corrected
Appendix D (removing reference to Real Time).” Dkt. 1044 at 6 n.5. The Court has no reason to doubt Motorola’s
correction. The Court will therefore focus only on the issue of daily rough transcripts, which Hytera briefed.
12

be awarded “unless [the prevailing party] can show that it was reasonable and necessary to order
transcripts on an expedited basis.” Se-Kure Controls, Inc. v. Vanguard Prod. Grp., Inc., 873 F.
Supp. 2d 939, 945 (N.D. Ill. 2012). The Court agrees with Motorola that daily transcripts were
necessary and reasonable in this case, and therefore Motorola is entitled to the full hearing and
trial transcript costs it seeks—$50,108.40.
Courts consider several factors when determining whether to award costs for daily trial
transcripts. Shanklin Corp. v. Am. Packaging Mach. Inc., No. 95 C 1617, 2006 WL 2054382, at
*1 (N.D. Ill. July 18, 2006). These factors include: “(1) the length of the trial and the complexity
of the issues, (2) whether a daily transcript was necessary to minimize disagreement over the
testimony of witnesses, (3) whether proposed findings of fact were required, (4) whether the case
involved expert witnesses whose cross-examination required knowledge of the exact wording of
their previous testimony or that of any other witness, (5) the size of the claim, ([6]) and the
importance of witness credibility.” Id. at *2 (quoting Ernst v. Anderson, 2006 WL 163024, at *2
(N.D. Ill. Jan. 18, 2006)). As Motorola argues, all factors weigh in Motorola’s favor. The trial
was nearly four months long, and involved complex technical issues as well as 5,200 trial exhibits
and 30 witnesses. Hytera’s four expert witnesses were cross examined, which was central to
demonstrating the scope and extent of Hytera’s theft, and Hytera cross examined three Motorola
expert witnesses at length. See, eg., Trial Tr. 2474:24-2476:15 (Sun being impeached by prior
deposition). Exact wording of testimony and witness credibility were therefore central issues.
Hytera submitted findings of fact and Motorola responded. Dkt. 965; Dkt. 969. And the size of
the claim was abnormally large, at $765 million. See Poulter v. Cottrell, Inc., No. 12-CV-1071,
2017 WL 2445129, at *6 (N.D. Ill. June 6, 2017) (“[D]aily transcripts are more likely to be
considered reasonable in a longer, more complex trial.”). Applying the factors, the Court awards
Motorola its requested costs for final and expedited trial and hearing transcripts.
13

Hytera ignores the factors discussed by Motorola, instead asserting only that costs for daily
transcripts should not be awarded because they were an unnecessary convenience. Se-Kure
Controls, Inc. v. Vanguard Prod. Grp., Inc., 873 F. Supp. 2d 939, 945 (N.D. Ill. 2012) (denying
increased transcript rate because Defendants gave no explanation why they obtained a daily
transcript). But even if the Court were to ignore the above factors, Hytera’s own cited cases are
distinguishable from the present one. Hytera focuses on two cases which declined to award daily
transcript costs: Lewis v. City of Chicago, No. 04 C 6050, 2012 WL 672041 1, at *8 (N.D. II. Dec.
21, 2012), and Perry v. U.S. Dep’t of Energy, No. 05 C 3634, 2008 WL 161679, at *3 (N.D. Ill.
Jan. 14, 2008). In Lewis, the Court noted that “[t]he trial in this case was straightforward and was
neither complex nor relatively long,” reasoning that notes, rather than daily transcripts, would have
allowed counsel to prepare “just as well” as daily transcripts. 2012 WL 6720411 at *8. In Perry,
the Court reasoned that the daily transcript was purely for convenience in part because “the trial
time of this case was less than three full days” and “counsel for both sides could have relied on
their notetaking and memories” for closing arguments. 2008 WL 161679 at *3. The present case
was vastly different, involving complex, technical testimony over the course of nearly four
months. Motorola’s witness examinations involved repeated impeachments, questions about
specific source code, and dozens of documents per day. Notes, therefore, would not suffice for
those examinations. The Court finds that daily trial transcripts were necessary and the costs
reasonable,

4 The other cases cited by Hytera are out of this Court’s circuit and are not persuasive. They held, without detailed
reasoning, that daily transcripts were not necessary. AIG Glob. Sec. Lending Corp. v. Banc of Am. Sec. LLC, No. 01
CIV 11448 JGK, 2011 WL 102715, at *2 (S.D.N.Y. Jan. 6, 2011) (rejecting realtime transcripts because certain
plaintiffs failed to establish that the costs were necessary); Sun Studs, Inc. v. ATA Equip. Leasing, Inc., No. CIV. 78-
714-RE, 1990 WL 293887, at *1 (D. Or. Dec. 12, 1990) (concluding that daily transcript was provided for the □□□□□□□□
convenience, after parties agreed to split the cost of the transcript).

Ill. Fees for Witnesses
Next, Motorola requests $10,367.00 in witness fees and reasonable expenses for its
witnesses who testified at depositions, trial, or both. Dkt. 1000-8 (Appendix E). These
reimbursement costs, including reasonable travel and lodging expenses, are authorized by 28
U.S.C. §§ 1821 and 1920(3). Majeske v. City of Chicago, 218 F.3d 816, 825 (7" Cir. 2000)
(affirming taxation of reasonable witness travel and lodging expenses); Shanklin Corp. v. Am.
Packaging Mach., Inc., No. 95 C 1617, 2006 WL 2054382, at *5 (N.D. Ill. July 18, 2006)
(“Lodging fees are generally recoverable[.]”).
Specifically, Motorola’s requested costs include a $40 daily fee for each witness for days
that the witnesses were deposed or attended trial. See 28 U.S.C. § 1821(a)(1) (“[A] witness in
attendance at any court of the United States .. . shall be paid the fees and allowances provided by
this section.”); 28 U.S.C. § 1821(b) (“A witness shall be paid an attendance fee of $40 per day for
each day’s attendance.”). Motorola does not ask for witness costs for days that witnesses spent
preparing for deposition or trial or were merely waiting to testify. Dkt. 1000-1 at 8; Dkt. 1000-8.
Motorola also requests subsistence—lodging and meals—for witnesses for the days they attended
trial. Dkt. 1000-8; see 28 U.S.C, § 1821(d)(1) (“A subsistence allowance shall be paid to a witness
when an overnight stay is required” and the witness cannot return home each day). Motorola
calculates these costs using the rates “prescribed by the Administrator of General Services,
pursuant to section 5702(a) of title 5,” as permitted by Section 1821(d)(1)."°
Hytera makes two arguments why witness costs should be denied. First, Hytera argues that
Motorola should not be able to recover witness costs for its own employees, which comprise

'S Per the General Services Administration, Motorola seeks $79 for meals and expenses, as well as $299 per night for
lodging in November 2019 and $125 per night for lodging in December 2019 to February 2020 for days witnesses
attended trial. U.S. GENERAL SERVICES ADMINISTRATION, “Per Diem Rates,” available at
https://www.gsa.gov/travel/plan-book/per-diem-rates/per-diem-rates-
lookup/?action=perdiems report&state=IL& fiscal en □□□ OSA. BREE ciny—Chicade.

$6,432 of the roughly $10,000 requested. True, the “district court may not tax witness fees for
party witnesses under 28 U.S.C. § 1920(3).” Haraco, Inc. v. Am. Nat. Bank & Tr. Co. of Chicago,
38 F.3d 1429, 1442 (7" Cir. 1994) (noting that witness was a party to the suit when he appeared
at his own deposition); Fait v. Hummel, No. 01 C 2771, 2002 WL 3 1433424, at *3 (N.D. III. Oct.
30, 2002) (“as parties to the case, [certain witnesses] may not collect witness fees or travel and
subsistence expenses”). However, as Motorola points out, none of its employee witnesses here
were parties. “The expenses of a director or officer of a corporation who is not personally involved
in the litigation may be taxable, however, even if that individual is testifying on behalf of the
organization and the latter is a party to the suit.” Envirocorp Well Servs., Inc. v. Camp Dresses &
McKee, Inc., No. IP 99-1575-C-T/G, 2001 WL 1112114, at #4 (S.D. Ind. Aug. 6, 2001); Id. at *4
n.9 (noting that Haroco does not apply); WH Smith Hotel Servs., Inc. v. Wendy’s Int’l, Inc., 25
F.3d 422, 429 (7" Cir. 1994).
Second, Hytera argues that Motorola has not provided sufficient documentation of its
witness costs to recover them. Without invoices or documentation for lodging and meals, says
Hytera, those costs are not recoverable. Fox v. Will Cty., No. 04 C 7309, 2009 WL 723385, at *4
(N.D. Ill. Mar. 11, 2009) (“Plaintiff has not submitted documentation for. . . airfare, meals or
incidentals and, thus, those costs will not be taxed.”). Motorola responds that the Court in Fox
granted costs for the lodging rate set by the Administrator of General Services even without
receipts. In addition, Hytera submits that Motorola’s claimed hotel expenses are duplicative of a
daily subsistence allowance, Reed-Union Corp. v. Turtle Wax, Inc., No. 91 C 5625, 1995 WL
138986, at *3 (N.D. Ill. Mar. 24, 1995), but that is irrelevant here because Motorola seeks the
separate, statutory per diem lodging and meal allowances. Dkt. 1000-8. Ultimately, having
reviewed the record, the Court finds that Motorola’s witness costs are recoverable, necessary, and
reasonable under the statutory per diem rates.
16

IV. Fees for Exemplification and Necessary Copies of Materials
Motorola requests a total of $2,244,372.48 in “fees for exemplification and the costs of
making copies of any materials where the copies are necessarily obtained for use in the case.” 28
U.S.C. § 1920(4). It categorizes these costs as demonstrative creation ($436,146.80);!6
demonstrative printing ($6,845.99);'’ trial exhibit printing, or photocopying ($12,672.45);!8
certified copies of copyright registrations ($2,493.00);'° and converting and processing electronic
files for production ($1,786,214,24).?° Dkt. 1044-7 (Appendix J). The process of converting and
processing electronic files can be further divided into (1) TIFFing”! ($893,107.12); branding
($446,553.56); and (2) OCRing® ($446,553.56). The Court will address each in turn.
A. Creating and Printing Demonstratives
The Seventh Circuit construes “exemplification” broadly.
In the narrowest legal sense, “exemplification” refers to “[a]n
official transcript of a public record, authenticated as a true copy for
use as evidence.” BLACK’S Law DICTIONARY 593 (7th ed.1999).
More commonly, it signifies the act of illustration by example,
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 406 (10th
ed.1993), a connotation broad enough to include a wide variety of
exhibits and demonstrative aids. Our own cases embrace the more
expansive definition of “exemplification.”

'6 See Dkt. 1000-13 (Wozniak Declaration).
'7 See Dkt. 1000-9 (Appendix F).
'8 See Dkt. 1000-10 (Appendix G).
'9 See Dkt. 1000-11 (Appendix H).
0 See Dkt. 1000-14 (Bayer Declaration).
2! TIFF stands for “Tagged Image File Format,” and is a file format used to store scanned images. TIFFs or TIFF files
are standardized, and can be opened on any computer. “TIFFing” refers to the process of converting files into TIFF
format.
22 Branding refers to labeling documents, including applying Bates numbers and confidentiality stamps. Dkt. 1044 at
1.
23 “OCR” stands for “optical character recognition.” “OCR is a technology process that translates and converts printed
matter on an image into a format that a computer can manipulate and therefore renders that matter text searchable.”
Race Tires Am., Inc. v. Hoosier Racing Tire Corp., 674 F.3d 158, 162 n.6 (3d Cir. 2012); Windy City Innovations,
LLC v. Am. Online, Inc., No. 04 C 4240, 2006 WL 2224057, at *3 (N.D. Ill. July 31, 2006).
17

Cefalu v. Vill. of Elk Grove, 211 F.3d 416, 427 (7th Cir. 2000) (noting that the Seventh Circuit
ordinarily construes the term to permit an award of the reasonable expense of preparing maps,
charts, graphs, photographs, motion pictures, photostats, and kindred materials and, “more
recently” . . . “the expense of graphics services employed in preparing exhibits”). The Cefalu
court found exemplification costs potentially recoverable “[s]o long as the means of presentation
furthers the illustrative purpose of an exhibit[.]” Id. at 428 (discussing how the cost of enlarging
an exhibit, or renting a projector to display a transparency, could be necessary and recoverable
despite being only involved in the presentation, rather than the production, of an exhibit). The
Cefalu court also found “no limits inherent in the term ‘exemplification’ that would permit a court
to award costs for the more familiar means of illustration—models, charts, graphs, and the like—
but preclude it from compensating a party for an animated reconstruction of an accident, for
example, or other types of computer-based, multimedia displays.” Id. at 428; see Nilssen v. Osram
Sylvania, Inc., No. 01 C 3585, 2007 WL 257711, at *5 (N.D. III. Jan. 23, 2007).
Courts in the Seventh Circuit have since applied that view of exemplification. See Springer
v. Ethicon, Inc., No. 17 C 3930, 2018 WL 1453553, at *17 (N.D. Ill. Mar. 23, 2018) (awarding
costs for computerized exhibit production and multimedia presentation); Bell v. Keating, No. 09-
CV-754, 2011 WL 2182117, at *4 (N.D. Ill. June 2, 2011) (‘The Seventh Circuit adopts an
expansive view of exemplification, defining such expenses as encompassing not only graphs and
charts, but also sophisticated multi-media presentations.”); LG Elecs. U.S.A., Inc. v. Whirlpool
Corp., No. 08 C 0242, 2011 WL 5008425, at *7 (N.D. Ill. Oct. 20, 2011) (awarding costs for digital
presentations and computer graphics); Vardon Golf Co. v. Karsten Mfg. Corp., No. 99 C 2785,
2003 WL 1720066, at *11 (N.D. Ill. Mar. 31, 2003) (taxing costs of enlarged demonstrative
exhibits which aided the jury’s understanding of the central issues, made the issue clearer to the
jury, and were of assistance to the Court).
18

Still, exemplification costs must be “necessarily obtained for use in the case.” 28 U.S.C. §
1920(4); Cefalu v. Vill. Of Elk Grove, 211 F.3d 416, 428 (7th Cir. 2000). The statute does not
“obligate the losing party to pay for the victor’s *glitz’” or the prevailing party’s “effort to wow
[the judge or jury].” Id. The question is whether “the nature and context of the information being
presented genuinely called for the means of illustration that the party employed. In other words,
was the exemplification vital to the presentation of the information, or was it merely a convenience
or, worse, an extravagance?” Id. at 248-49.
Against this background, Motorola seeks $442,992.79 for its use of demonstratives at trial,
including creation and printing. Motorola argues that the complex nature of the technology in this
case and the facts of the case required the use of graphics that assisted the jury in understanding
the nature of Motorola’s trade secrets, the evidence of Hytera’s copying and distribution of
Motorola’s confidential documents, the damages that Motorola was seeking, and the admissions
made by Hytera’s fact and expert witnesses.
In support of its request for demonstrative costs, Motorola provides two documents: (1)
Appendix F, Dkt. 1000-9, which details, with invoices, $6,845.99 in trial printing costs from
graphics vendor Precision Core Graphics, and (2) the Declaration of Wesley Wozniak, Dkt. 1000-
13, who is a Senior Producer and Media Artist at Fulcrum Legal Graphics, Inc. (“Fulcrum”). In
his declaration, Wozniak includes numerous, detailed invoices from Fulcrum listing $436,146.80
in visual aids charges. Wozniak attests that in his 12 years at Fulcrum he has worked on more than
20 trials, and in this matter worked with Motorola’s counsel to prepare approximately 1,000 slides
to present to the jury. He states that these slides included graphics or animations visually
illustrating the concepts to be elicited or explaining the technology in the dispute.
Hytera argues that these demonstrative exhibit costs were neither necessary nor reasonable.
Hytera alleges that these costs are largely consulting fees from Fulcrum and a far cry from the
19

“relatively minor, incidental expenses” contemplated by 28 U.S.C. § 1920. Taniguchi v. Kan Pac.
Saipan, Ltd., 566 U.S. 560, 573, 132 S. Ct. 1997, 2006, 182 L. Ed. 2d 903 (2012) (“Taxable costs
are limited to relatively minor, incidental expenses[.]”). Hytera characterizes Motorola’s exhibits
and multi-media services as the kind of “glitz” that is not recoverable, alleging that the vast
majority of Motorola’s slides were blow-ups of pre-existing exhibits and therefore not vital to the
presentation of information but mere convenience and extravagance. Cefalu, 211 F.3d at 428; see
Glenayre Elecs., Inc. v. Jackson, No. 02 C 0256, 2003 WL 21947112, at *5 (N_D. III. Aug. 11,
2003) (awarding costs for an animation but denying costs for (1) a tutorial that did not require such
an expensive means of illustration and (2) a design consultation and computer design which were
“undefined and unexplained”). Hytera argues that taxing Fulcrum’s significant hourly rates for
strategy conference calls and hundreds of hours of on-site trial support is inappropriate. See Dkt.
1000-13 at 8, 11-14, 32-39. In addition, Hytera argues that Motorola’s own extensive use of a
document camera, paper notes, and a highlighter evince that the demonstratives were not
necessary. See Jo Ann Howard & Assocs., P.C. v. Cassity, 146 F. Supp. 3d 1071, 1087 (E.D. Mo.
2015) (denying costs for third-party litigation support specialist who manipulated, highlighted,
and enlarged exhibits throughout the course of the trial because a “cheaper, feasible alternative”
existed and the specialist assistance was “glitz”).
After reviewing these documents and presiding over the trial where Motorola introduced
the exhibits, the Court concludes that this is not the case where a party’s demonstratives and mullti-
media presentation were merely “glitz,” as Hytera argues. The declaration of Mr. Wozniak and the
included invoices “give the Court readily identifiable information to determine whether these costs
are reasonable, recoverable, and if the exemplification costs were necessarily obtained for use in
the case.” LG Elecs. U.S.A., Inc. v. Whirlpool Corp., No. 08 C 0242, 2011 WL 5008425, at *7
(N.D. Ill. Oct. 20, 2011). As in LG Elecs., the demonstratives here were “an efficient, time-saving
20

method of presenting complex evidence under the circumstances[.]” Id. Wozniak asserts under
penalty of perjury that Motorola requests costs only for “time spent preparing the demonstratives,
exhibits, or other visual aids—as opposed to time spent meeting with Motorola’s counsel or
traveling.” Dkt. 1000-13, ] 9. This case is therefore not like Jo Ann Howard, where the third-party
support specialist assisted in presenting the materials at trial. 146 F. Supp. 3d at 1087. Mr. Wozniak
also explained, and the Court observed, that Motorola’s demonstrative slides “were not simply
enlarged copies of exhibits already entered into evidence” but “included graphics or animations
visually illustrating the concepts to be elicited during the witnesses’ testimony or explaining the
technology in dispute.” Dkt. 1000-13, | 7; see Vardon, 2003 WL 1720066 at *11 (awarding such
costs); Springer v. Ethicon, Inc., No. 17 C 3930, 2018 WL 1453553, at *17 (N_D. II. Mar. 23,
2018) (awarding costs for computerized exhibit production and multimedia presentation “given
the complex nature of the case” and rejecting argument that these materials were not essential to
understanding the issues in the case). The demonstratives enhanced the jury and Court’s
understanding of the evidence, were vital to the presentation of the information, and reasonable
under the circumstances. Intercontinental Great Brands LLC v. Kellogg N. Am. Co., No. 13 C
321, 2016 WL 316865, at *5 (N.D. III. Jan. 26, 2016).
The Court rejects Hytera’s argument regarding Motorola’s use of other presentation
techniques. The marking-up of exhibits with a document camera and highlighter does not
undermine the need or reasonableness of Motorola’s technical demonstratives; recreating those
demonstratives by hand would have significantly prolonged this nearly four-month trial. Hytera
presents no cheaper, feasible alternative method of presenting the complicated material in this
case. The Court finds that Motorola’s demonstratives were necessary, and that the costs were
reasonable given the complexity and length of this trial. Dkt. 1000-13.
Hytera also argues that Motorola should not recover demonstrative printing costs, Dkt.
2]

1000-9, because while Motorola seeks costs for the printing of approximately twenty boards, it
used only a handful of boards at trial. And after all, says Hytera, the jury had individual screens in
front of them and did not need to consult additional printed boards. For Hytera, then, such boards
were mere convenience. Motorola points out that Hytera cites no authority for the proposition that
the boards need have been used for the costs to be recoverable. The proper inquiry, rather, is
whether the evidence was reasonably necessary to the case “at the time it was [obtained], not
whether it was used ... in court.” Brown v. City of Chicago, No. 16 C 4229, 2019 WL 1923386,
at *3 (N.D. Ill. Apr. 30, 2019) (quoting Cengr v. Fusibond Piping Sys.. Inc., 135 F.3d 445, 455
(7th Cir. 1998)).
The Court finds that the boards were reasonably necessary at the time they were obtained.
Given the nature and progression of this case, Motorola could not have perfectly predicted the
strategy it would use or the decisions it would make come trial regarding which boards would be
effective and which boards would be unnecessary. And while Hytera is correct that jurors had
individual screens to consult, “costs may be taxed for enlarging a crucial document to avoid ‘the
jurors and the judge poring over individual, unenlarged copies of the document[.]’” Clearlamp,
LLC v. LKQ Corp., No. 12 C 2533, 2016 WL 7013478, at *6 (N.D. Ill. Nov. 30, 2016). Hytera
itself even used similar boards. Trial Tr. 4292:17-22. These costs were therefore reasonable.
B. Photocopying Costs
Motorola requests costs for photocopying a single set of the parties’ trial exhibits for use
at trial, amounting to $12,672.45. Dkt. 1000-10 (including vendor invoice). Hytera asserts that
these costs should be denied because the set of printed trial exhibits was made for Motorola’s own
convenience and not even used in court. Merix Pharm. Corp. v. Clinical Supplies Mgmt., Inc., 106
F. Supp. 3d 927, 944 (N.D. Il. 2015) (“A prevailing party may recover photocopying costs for
documents provided to the court or the other parties, but not for those made for its own
22

convenience.”). However, the Court finds that having a single set of trial exhibits printed was
reasonable and necessary under the circumstances, where there was a “lack of wireless internet”
and the attorneys at Motorola’s table could not “view documents on their laptops without the jury
sitting directly behind them” being able to see the exhibits. Dkt. 1044 at 12.
C. Certified Copies of Copyright Registrations
Hytera does not oppose Motorola’s request for recovery of $2,493.00 for obtaining copies
of two registered copyright certificates and certified deposit materials. Dkt. 1000-11. Those costs
are awarded to Motorola.
D. Converting and Processing Electronic Files for Production
Motorola seeks $1,786,213.24 in costs relating to converting documents into TIFF image
format, branding documents, and making documents readable and searchable through optical
character recognition (“OCR”) for production. The Court will address the recoverability of each
of these costs before turning to the sufficiency of Motorola’s costs documentation and the
reasonableness of the costs requests.
The Seventh Circuit has not comprehensively addressed the extent to which e-discovery
costs may be taxed against a non-prevailing party under 28 U.S.C. § 1920(4). Intercontinental
Great Brands LLC v. Kellogg N. Am. Co., No. 13 C 321, 2016 WL 316865, at *6 (N.D. Ill. Jan.
26, 2016) (citing cases). The Seventh Circuit has said, however, that the costs of “converting
computer data into a readable format in response to [the non-prevailing party’s] discovery
requests” are recoverable under the statute. Hecker v. Deere & Co., 556 F.3d 575, 591 (7th Cir.
2009). TIFF conversion, therefore, is recoverable in this Circuit. See, eg., Ariel Invs., LLC v. Ariel
Cap. Advisors LLC, No. 15 C 3717, 2017 WL 3023746, at *3 (N.D. Ill. July 17, 2017) (costs of
conversion to readable format is recoverable); Intercontinental Great Brands, 2016 WL 316865 at
*6 (awarding TIFF and PDF conversion costs); Massuda v. Panda Express, Inc., No. 12 CV 9683,
23

2014 WL 148723, at *6 (N.D. Ill. Jan. 15, 2014) (“converting native files to TIFF (if agreed upon
by the parties to be the production format), [is] compensable under § 1920(4).”).
In addressing other e-discovery costs besides file conversion to readable formats, some
courts in this circuit have followed the Third Circuit’s reasoning in Race Tires of America, Inc. v.
Hoosier Racing Tire Corp., 674 F.3d 158 (3d Cir. 2012). In Race Tires, the Third Circuit concluded
that “only scanning and file format conversion can be considered to be “making copies’” [under
28 U.S.C. § 1920(4)] and that “gathering, preserving, processing, searching, culling, and extracting
ESI** simply do not amount to ‘making copies.’” 674 F.3d at 160, 171. The Third Circuit therefore
taxed only the costs for scanning of hard copy documents, the conversion of native files to TIFF,
and the transfer of VHS tapes to DVD. Id.
Some courts in this Circuit have applied the Race Tires logic to limit recovery of e-
discovery costs like OCR. For example, in Intercontinental, IGB did not contest the costs for TIFF
conversion but did contest OCR costs. 2016 WL 316865 at *6. Kellogg, the prevailing party,
argued that OCR was “necessary to make files fully readable and searchable.” Id. The Court held
that “what matters is the extent to which these processes were fundamental to ensuring that the
documents were readable.” Id. at *6. The Court then awarded TIFF and PDF conversion as
fundamental to the readability of the documents, but denied OCR costs.”°
However, as the Intercontinental Court noted, some “courts in this district have permitted
prevailing parties to recover costs associated with processes other than TIFF conversion.” 2016

“EST” means “Electronically Stored Information.” See Fed. R. Civ. P. 34.
25 See also Ariel Invs., LLC v. Ariel Cap. Advisors LLC, No. 15 C 3717, 2017 WL 3023746, at *3 (N.D. III. July 17,
2017) (while conversion to readable format is recoverable, “processing costs” are not recoverable “because services
leading up to the actual production do not constitute ‘making copies’”); Massuda v. Panda Express, Inc., No. 12 CV
9683, 2014 WL 148723, at *6 (N.D. Ill. Jan. 15, 2014) (“ESI discovery costs associated with the conversion of ESI
into a readable format . . . are compensable under § 1920(4). But costs related to the gathering, preserving, processing,
searching, culling and extracting of ESI simply do not amount to ‘making copies’” and thus are non-taxable.”) (internal
quotations omitted).
24

WL 316865 at *6. For example, branding has also been awarded by courts in this Circuit, and the
Court finds that branding is recoverable in this case. Chicago Bd. Options Exch., Inc. v. Int’l Sec.
Exch., LLC, No. 07 CV 623, 2014 WL 125937, at *9 (N.D. Ill. Jan. 14, 2014) (costs “for bates
stamping are recoverable”); DSM Desotech, Inc. v. 3d Sys. Corp., No 08 C 1531, 2013 WL
3168730, at *2 (N.D. Ill. June 20, 2013) (allowing costs for Bates labelling as ‘making copies’
under the statute, but denying costs for confidentiality branding “because those tasks are the kind
of work conventionally performed by attorneys or paralegals”); Nilssen v. Osram Sylvania, Inc.,
No. 01 C 3585, 2007 WL 257711, at *6 (N.D. Ill. Jan. 23, 2007) (“In light of the extensive number
of documents, $0.05 per page is also awarded for bates stamping of the discovery-production
documents.”); but see McCraven v. City of Chicago, No. 97 C 8845, 2001 WL 62573, at *2 (N.D.
Ill, Jan. 25, 2001) (costs of Bates stamping discovery materials for the party’s own use is not
recoverable because it is only for the convenience of the parties).
Further, as Motorola states, some courts have awarded OCR costs. See Rose v. Franciscan
All. Inc., No. 116CV03212TWPMJD, 2019 WL 688720, at *2 (S.D. Ind. Feb. 19, 2019); The
Medicines Co. v. Mylan Inc., No. 11-CV-1285, 2017 WL 4882379, at *10 (N.D. Ill. Oct. 30, 2017)
(awarding “in full the costs of OCR” as the “process is fundamental to ensuring that the digital
documents were readable and searchable”); Chicago Bd. Options Exch., Inc. v. Int’] Sec. Exch.,
LLC, No. 07 CV 623, 2014 WL 125937, at *9 (N.D. Ill. Jan. 14, 2014) (prevailing party “may
recover all of its conversion costs and associated costs” including “making files readable through
optical character recognition, scanning, creating CD-Roms, and associated activities”); Johnson
v. Allstate Ins. Co., No. 07-cv-0781-SCW, 2012 WL 4936598, at *4 (S.D. Ill. Oct. 16, 2012)
(following “Hecker v. Deere & Co. for the proposition that the costs of converting data into
readable format are compensable” and awarding OCR, but finding non-compensable costs
including “collecting and preserving ESI, processing and indexing AESI, and keyword searching
25

of ESI for responsive and privileged documents.”); Comrie v. IPSCO Inc., No. 08 CV 3060, 2010
WL 5014380, at *4 (N.D. III. Dec. 1, 2010) (allowing recovery of OCR costs because “TcJosts for
OCRing have been allowed where the documents are OCR’d in lieu of production of hard
copies.””).
Other courts, though, have declined to award OCR costs. Mortera v. Target Corp, No. 17
C 3485, 2019 WL 1532960, at *3 (N.D. Ill. Apr. 9, 2019) (quoting Allen v. City of Chicago, No.
09 C 243, 2013 WL 1966363, at *5 (N.D. II. May 10, 2013) for the proposition that “OCR [] is
not recoverable . . . because OCR goes beyond ‘merely converting a paper version into an
electronic document’ and substitutes for work attorneys or support staff would otherwise have to
perform”); Sullivan v. F.E. Moran, Inc., No. 16 CV 5660, 2018 WL 4515999, at *5 (N.D. Ill. June
25, 2018) (OCR costs are typically not recoverable because they only make a document
searchable, as opposed to readable); Intercontinental Great Brands LLC v. Kellogg N. Am. Co.,
No. 13 C 321, 2016 WL 316865, at *6 (N.D. Ill. Jan. 26, 2016) (reasoning that “making a document
searchable is the equivalent of work counsel would perform in the absence of OCR”) (internal
quotations omitted); Life Plans, Inc. v. Sec. Life of Denver Ins. Co., 52 F. Supp. 3d 893, 903 (N.D.
Ill. 2014) (finding that prevailing party did not show “why OCR was necessary to the production
of documents in this case” and noting that because invoices in the record showed that the outside
vendor billed separately for the distinct tasks of “Tiff Conversion” and “OCR”... “the court is
able to award costs for converting ESI into a readable format, which is the equivalent of ‘making
copies’ under § 1920(4), while denying costs for making that document searchable, which is the
equivalent of work counsel would perform in the absence of OCR”); Windy City Innovations,
LLC v. Am. Online, Inc., No. 04 C 4240, 2006 WL 2224057, at *3 (N.D. Ill. July 31, 2006)
(denying OCR costs while reasoning that these costs were for services typically performed by
attorneys or other legal personnel).

Hytera attacks Motorola’s request for OCR costs, arguing that they are not recoverable as
a matter of law. Hytera argues that Mortera and Sullivan—cases from 2019 and 2018,
respectively—supersede the cases originally cited by Motorola, Chicago Bd. and Comrie, which
were decided in 2014 and 2010, respectively. But Motorola replies by citing Rose and Mylan—
cases from 2019 and 2017. Motorola also urges that this case involved voluminous document
productions, and therefore the OCR “process [wa]s fundamental to ensuring that the digital
documents were readable and searchable.” The Medicines Co., 2017 WL 4882379 at *10.
The Court agrees with Motorola. OCR costs should be recoverable in this case, where
millions of documents including complex source code had to be produced and scoured. See
Johnson v. Allstate Ins. Co., No. 07-CV-0781-SCW, 2012 WL 4936598, at *6 (S.D. Ill. Oct. 16,
2012) (finding that the “rendering of ESI into a word searchable format is compensable within the
ambit of Hecker and Race Tires” and reasoning that Race Tires cited with approval a district court
case*® that awarded OCR conversion costs). Readable, searchable copies of materials were
necessarily obtained in this case, and OCR was a fundamental and necessary aspect of that
production, so OCR costs are recoverable.
Considering all of the above, the Court finds that Motorola’s TIFF conversion, branding
costs, and OCR costs are recoverable. Hytera, however, attacks Motorola’s documentation of these
costs as inadequate and argues that the costs are unreasonable. The Court disagrees with both
points.
Motorola supports its request for TIFFing, OCRing, and branding by submitting the
Declaration of Andrew Bayer. Dkt. 1000-14. In his declaration, under penalty of perjury, Bayer
states that he is a Certified E-Discovery Specialist and Managing Shareholder of Inventus, the

26 In re Fast Memory Erase, 2010 WL 5093945, at *4 Tex. Nov. 10, 2010).

third-party vendor used by Motorola to conduct the above e-discovery tasks. Id. at 1. Bayer
declares that he is familiar with market trends relating to rates in the eDiscovery space. Id. at 2.
He includes in his declaration a table listing all productions Motorola made using Inventus’
services, which includes invoice numbers and image counts. Id. at 4-11.
Bayer explains in his declaration how Motorola’s costs for the e-discovery tasks were
calculated. First, he explains that Motorola’s requested costs for the above services are “not readily
apparent from Inventus’ invoices for several reasons.” Id. at 2. Unlike the separate billing for
distinct tasks that occurred in Life Plans, 52 F, Supp. 3d at 903, Inventus here: (1) “billed Motorola
for multiple [ongoing] matters [between the parties] in a single invoice” and (2) included line items
in certain invoices that, while labeled “Tiff Production,” included charges for multiple services
including “TIFFing, OCRing, and branding” and also “work relating to other services—including
slipsheeting . . . preparing native files for production, and creating loadfiles with metadata . . . for
which . . . Motorola is not seeking to recover its costs.” Dkt. 1000-14 at 2. Therefore, while
Inventus charged Motorola on a per-gigabyte basis for all Tiff Production work, Inventus did not
include specific line items for TIFFing, OCRing, and branding in its invoices to Motorola. Id.
Therefore, says Bayer, Motorola’s requested costs for these services were calculated by
“estimat[ing] the costs for TIFFing, OCRing, and branding by applying industry standard rates to
the productions Motorola made in this litigation.” Dkt. 1000-14 at 2. Inventus applied a $0.02 per
page rate for TIFFing and a $0.01 per page rate for OCR and branding based on extensive market
experience. Id, Bayer’s attached Exhibit | is a table listing all the productions Motorola made
using Inventus’ services in this litigation, and it concludes that the total number of pages produced
by Motorola was 44,655,356 pages. Id. at 2-3. Applying the above rates to that number of pages,
Inventus determined—via estimation—that Motorola’s costs for TIFFing, OCRing, and branding
totaled $1,786,214.24. Id. at 3. Motorola states that it “conservatively” seeks these costs despite
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that many other documents were used in this case. Dkt. 1044 at 12.
Hytera argues that the conversion and file-processing costs, including TIF Fing, branding,
and OCRing, should be denied outright. First, Hytera implores the Court to strike the Bayer
Declaration altogether. According to Hytera, the declaration is not grounded in the actual e-
discovery charges incurred. Rather, it is “entirely divorced from [Motorola’s] actual expenses.”
Dkt. 1036 at 2 n.2 (describing Bayer’s “invented methodology” as flawed because Bayer used a
per-page rate despite that the actual invoices applied a per-gigabyte rate). In addition, says Hytera,
Motorola cites no authority supporting the method used by Bayer to estimate and determine
Motorola’s costs.
Hytera also argues that Motorola’s documentation is inadequate because the actual
invoices are not attached. Robinson v. City of Harvey, No. 99 C 3696, 2004 WL 2033714, at *9
(N.D. Ill. Aug. 13, 2004) (“many of the requests are unsupported by invoices or other
documentation”); see Ariel, 2017 WL 3023746 at *3 (granting costs when vendor invoices were
available). Hytera submits that because “the costs are not readily apparent from [the] invoices,” as
Motorola admits, Motorola has failed to corroborate its e-discovery costs request. Dkt. 1000-14 at
2. Because the Court cannot “assess whether the costs Motorola has sought are in any way
legitimate,” says Hytera, the costs should be denied. Dkt. 1036 at 3.
The Court rejects Hytera’s arguments on those points. First, the Court accepts the Bayer
Declaration, which Bayer submits under oath as an e-discovery specialist. The case Hytera cites
makes clear that requested costs can be supported by invoices “or other documentation.” Robinson,
2004 WL 2033714 at *9. “Other documentation” can include declarations. Lloyd v. Credit Servs.
Int’l, Inc., No. 18 C 4267, 2019 WL 5311843, at *4 (N.D. Hl. Oct. 21, 2019) (noting that Defendant
had not submitted “‘an invoice or declaration” supporting the per-page rate it paid); Stollings v.
Ryobi Techs., Inc., No. 08 C 4006, 2015 WL 4100479, at *5 (N_D. Ill. July 6, 2015) (while “the
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invoices, standing alone, do not provide sufficient detail to support an award of costs . . . [the
prevailing party also] submitted an attorney declaration explaining the charges”).
While the Court has found no case specifically affirming Bayer’s methodology of
estimating Motorola’s costs, Hytera cites no legal basis for striking the Declaration and the Court
finds Bayer’s methodology and results to be reasonable.2’ Contrary to Hytera’s argument,
Motorola need only provide “the best breakdown obtainable from retained records.” Sterling Nat’l
Bank v. Block, No. 16 C 9009, 2019 WL 5085715, at *9 (N.D. Ill. Oct. 10, 2019) (quoting
Northbrook Excess & Surplus Ins. Co. v. Procter & Gamble Co., 924 F.2d 633, 643 (7th Cir.
1991)). As Bayer explained in his Declaration, the invoices, while charging per-gigabyte for
various services, imperfectly captured the delineated costs of TIFFing, OCRing, and branding.
That does not doom Motorola’s costs request, because Motorola “cannot reasonably be expected
to require their ESI vendors to provide invoices that perfectly track the language of § 1920(4),”
nor is Motorola “required to submit a bill of costs containing a description so detailed as to make
it impossible economically to recover copying costs.” Id. (internal quotations omitted); Merix
Pharm. Corp. v. Clinical Supplies Mgmt., Inc., 106 F. Supp. 3d 927, 944 (N.D. Ill. 2015). Here,
Bayer’s Declaration was “the best breakdown obtainable from retained records.” Sterling, 2019
WL 5085715 at *9. His estimation of costs based on applying the “industry standard rates” to the
number of pages produced was reasonable; it was designed to limit Motorola’s costs request to the
recoverable costs associated with documents produced in this litigation. Dkt. 1000-14 at 2.
Bayer’s calculation reflects his best determination based on his “extensive market experience,”
and the Court finds that the cost breakdown is reasonable. Id.

27 In fact, Motorola attached the complete set of e-discovery invoices to its Reply, which documents $11,706,317.65
in total charges. Dkt. 1045-3 (sealed Exhibit 7). The fact that Bayer’s final cost determination for TIFFing, OCRing,
and branding is roughly 15% of the actual billed charges from the invoices bolsters the Court’s finding that the total
is reasonable.
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The Court awards Motorola its full request for costs for TIFF ing, OCRing, and branding,
which totals $1,786,213.24 in e-discovery costs.
V. Compensation of Interpreters and Special Interpretation Services
In its amended bill of costs, Motorola requests $143,004.38 in costs for the “compensation
of . . interpreters, and salaries, fees, expenses, and costs of special interpretation services under
section 1828 of this title.” 28 U.S.C. § 1920(6). Motorola documents these costs in its corrected
Appendix I. Dkt. 1044-9 at 39-41. Motorola asserts that Hytera should be taxed for the oral
interpretation of Mandarin Chinese required for the depositions and trial testimony of Hytera’s
witnesses Baolan, Chen, Chia, Huang, Jun, G.S. Kok, Y.T. Kok, Liang, Liwei, Luo, Sun, Xu, Yan,
Yu, Yuan, YunHua, Minjie Zhang, Yingzhe Zhang, Zheng, and Zhu.
Motorola’s interpreter costs request also includes cancellation fees, which are taxable.
Cascades Computer Innovation, LLC v. Samsung Elecs. Co., No. 11 C 4574, 2016 WL 612792,
at *8 (N.D. Ill. Feb. 16, 2016) (“There is [] no reason Samsung should be required to shoulder any
portion of the cancellation fee one interpreter charged when Cascades rescheduled the []
deposition.”). In addition to the interpretation costs associated with the cancelled depositions
discussed above in section II.A.5, Motorola seeks cancellation fees for the check interpreter’? it
had scheduled for use during Hytera Chairman Chen’s anticipated testimony at trial. Motorola
requests this cancellation fee because Hytera, after having left open the possibility that it would
call Mr. Chen at trial during the week of January 13, 2020, finally notified Motorola at the last
minute—January 12, 2020—that it would not be calling Mr. Chen or any Chinese-speaking
witnesses that week.
Hytera argues that Motorola’s interpreter costs should be reduced to $75,113.30. Dkt. 1036

28 A check interpreter is a second interpreter hired to verify that another party’s interpreter is correctly interpreting the
testimony of a witness.

at 15. Specifically, it argues that Motorola does not justify $61,100 in expenses for check
interpretation and that costs for check interpretation are a convenience, not a necessity. See Apple
Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2014 WL 4745933, at *13 (N.D. Cal. Sept.
19, 2014) (disallowing “costs for the check interpreter in their entirety” because Apple did not
meet its burden of providing appropriate documentation to support that the check interpreter was
necessary, rather than “purely for counsel’s own benefit”); Ortho-McNeil Pharm., Inc. v. Mylan
Lab'ys Inc., No. CIV.A. 1:02CV32, 2008 WL 7384877, at *10 (N.D. W. Va. Aug. 18, 2008)
(“although [check] interpreters were helpful to counsel, they were in no way necessary for
litigation”); Whirlpool Corp. v. LG Elecs., Inc., No. 104-CV-100, 2007 WL 2462659, at *4 (W.D.
Mich. Aug. 26, 2007) (“Defendants’ desire to confirm that translations were correct does not
amount to necessity.”).
Motorola counters that in contrast to Hytera’s out-of-circuit cases, courts in this circuit
have held that check interpretation costs are recoverable. Cascades, 2016 WL 612792 at *8 (The
Court was not persuaded that prevailing party “should have simply taken Cascades’s word that its
interpreters were translating deposition testimony correctly”); Trading Techs. Int’l, Inc. v. eSpeed,
Inc., 750 F. Supp. 2d 962, 983 (N.D. Ill. 2010) (evidence that a disagreement with respect to
competing interpretations occurred during trial was a sufficient explanation for procuring check
interpreters, and “meets the standard for recovery set by Section 1920(6)”). Motorola argues that
disagreements over the translation of witness answers were raised in depositions in this case, see,
e.g., Dkt. 1045-4 at 10:11-11:23 (sealed Exhibit 8), which justified the use of check interpreters.
See Trading Techs., 750 F. Supp. 2d at 983 (“any disagreement with respect to an interpretation
is sufficient to alert a party to the need for hiring its own interpreter”).
The Court agrees with Motorola. This case involved voluminous testimony and cross
examination, both in depositions and at trial, that necessitated interpretation services. Hundreds of
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millions of dollars was at stake, and the record is clear that disagreements over translation
occurred, It is clear to the Court that check interpretation was necessary and reasonable under these
circumstances. Motorola is awarded its costs request for compensation of interpreters and special
interpretation services in full.
VI. Conclusion
For the foregoing reasons, Motorola’s amended bill of costs is awarded in full. The Court
taxes Hytera Communications Corporation Ltd. for costs in the amount of $2,674,631.36.

IT IS SO ORDERED.

CHARLES RONALD GLEf/Judge
United States District Cou
DATE: August 6, 2021

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10145308. Public record. Not legal advice.