# Profectus Technology LLC v. Google LLC

> District Court, W.D. Texas · August 15, 2022

URL: https://www.frixlaw.com/law-library/cases/10680907

## Case

- **Court:** District Court, W.D. Texas
- **Decided:** August 15, 2022
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION

PROFECTUS TECHNOLOGY LLC,
Plaintiff,

v. 6:20-cv-00101-ADA

GOOGLE LLC,
Defendant.

MEMORANDUM OPINION & ORDER GRANTING-IN-PART
DEFENDANT’S BILL OF COSTS
Came on for consideration this date is Google LLC’s Bill of Costs, filed June 17, 2022.
ECF No. 222 (the “Bill”). Plaintiff Profectus Technology LLC filed an objection to the Bill on
July 22, 2022, ECF No. 225, to which Defendant Google LLC filed a response in support of its
Bill on July 29, 2022, ECF No. 226. Plaintiff also filed a brief, entitling it as a reply and arguing
that per the local rules, Google did not file a motion and that only Plaintiff’s brief was crafted in
the form of a motion. ECF No. 227. Without addressing the substance of Plaintiff’s arguments as
to form, the Court has taken each of the briefs under review. After careful consideration of the
Bill, the parties’ briefing and oral arguments, and the applicable law, the Court GRANTS-IN-
PART the costs identified in Google LLC’s Bill.
I. BACKGROUND
Profectus Technology LLC (“Profectus”) brought a patent infringement suit against
Google LLC (“Google”) on February 10, 2020, alleging infringement of at least U.S. Patent No.
6,975,308 (the “’308 patent”). ECF No. 1 ¶ 1. The ’308 patent is directed to a digital picture
frame that displays digital images taken by a digital camera. ’308 patent at 3:48–:50. Profectus
alleged that Google makes, uses, sells, offers for sale, and/or imports products directly infringing
the ’308 patent. ECF No. 1 ¶ 41.
This Court conducted a jury trial between September 30 and October 6, 2021, resulting in
a unanimous verdict for Google. ECF No. 196. The jury found no direct infringement of any of
the asserted claims of the ’308 patent, nor induced infringement of the ’308 patent. Id. at 2–3.

Additionally, the jury found that each of the asserted claims of the ’308 Patent were invalid.
Id. at 4. The Court entered judgment on June 3, 2022. ECF No. 220. On June 17, 2022, Google
entered its Bill requesting costs in the amount of $168,465.42. ECF No. 222 at 1.
II. LEGAL STANDARD
The Federal Rules of Civil Procedure state, “[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). Under this rule, there is a strong presumption “that
the prevailing party will be awarded costs.” Schwarz v. Folloder, 767 F.2d 125, 131 (5th Cir.
1985). The Fifth Circuit has held that this presumption intended to create prima facie entitlement
to payment of costs and that the burden of overcoming this presumption shifts to the losing party.
Id. Additionally, a court “may neither deny nor reduce a prevailing party’s request for cost
without first articulating some good reason for doing so.” Pacheco v. Mineta, 448 F.3d 783, 794
(quoting Schwarz, 767 F.2d at 131).
As defined by statute, recoverable “costs” are limited to:
(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 under section 1828 of this title.
28 U.S.C. § 1920. “The Supreme Court has indicated that federal courts may only award those
costs articulated in section 1920 absent explicit statutory or contractual authorization to the
contrary.” U.S. ex rel. Long v. GSDMIdea City, L.L.C., 807 F.3d 125, 130 (5th Cir.
2015) (quoting Gagnon v. United Technisource, Inc., 607 F.3d 1036, 1045 (5th Cir. 2010)).
III. ANALYSIS
As the prevailing party, Google is prima facie entitled to costs under Rule 54(d)(1).
Pacheco, 448 F.3d at 793. Profectus argues that most of Google’s proposed deposition costs and
all requested trial graphics and support costs should be denied. ECF No. 225 at 1. After
considering each argument, the Court finds that Google’s requested costs should be significantly
reduced to comport with the language of the applicable statute.
A. Google’s Entitlement to Transcription Costs
A prevailing party may recover the costs of “printed or electronically recorded transcripts
necessarily obtained for the use in the case.” 28 U.S.C. § 1920(2). Google seeks to recover costs
for printed and electronically recorded trial, pre-trial, and deposition transcripts. ECF No. 223 at
2–5. Profectus disputes the necessity of several of the requested transcript costs. ECF No. 225 at
9–10. Upon review, the Court finds the requested amount should be reduced, but only slightly
more than the amount Google last proposed in its reply.
1. Transcripts of Court Proceedings
Google seeks $12,268.43 in costs related to transcripts of court proceedings. ECF No.
223 at 2. This includes $11,667.78 for daily trial transcripts and $600.65 for pre-trial hearing
transcripts. Id. Profectus does not dispute these claims, see ECF No. 225 at 1 n.2, and the Court
is persuaded that the costs were necessary. Thus, Google is entitled to its trial transcription costs

in the amount of $12,268.43.
2. Depositions
In its initial Memorandum In Support of its Bill of Costs, Google sought $34,860.33 for
costs related to depositions of Google and Profectus fact and expert witnesses. ECF No. 223 at 2.
Google provided the following chart in support of its requested costs.
Reasons Why Transcripts Were Necessarily
Deponent
Obtained for Use in This Case
Frank Bitetto Inventor of the patents-in-suit and testifying
witness at trial
James Bitetto Inventor of the patents-in-suit and testifying
witness at trial
Justin Block Profectus’s expert on damages, provided an expert
report and testified at trial
Willy Cheung Google’s employee deposed by Profectus
Erick Low Google’s employee deposed by Profectus
James Maccoun Google’s employee deposed by Profectus and
testifying witness at trial
Michael Maigret Google’s employee deposed by Profectus
Andrew Fergus Simpson Google’s employee deposed by Profectus and
testifying witness at trial
Mitchell Thornton Profectus’s technical expert, provided an expert
report and testified at trial
Ashton Udall Google’s employee deposed by Profectus and
testifying witness at trial
Susan West Sony’s corporate witness and testifying witness at
trial who provided testimony on a key prior art
device relied upon by Google at trial

Id. at 3. Google further seeks the incidental costs associated with the depositions of Erick Low,
Andrew Fergus Simpson, and Ashton Udall. Id. at 3–4. Google reasons that the expedited
delivery charges were necessary given the proximity of the depositions to the opening expert
report deadline. Id. at 4. The depositions were conducted between four and eight days before the
reports were due, necessitating expedited return charges as the testimony of the witnesses were
thought to impact the expert reports. Id. at 4.
Profectus disputes most of Google’s claimed deposition costs as outside the statutory

language permitting recovery of “[f]ees for printed or electronically recorded transcripts
necessarily obtained for use in the case.” 28 U.S.C. § 1920(2). Specifically, Profectus disputes
the costs found in line items such as “Attendance – Per Session,” “Realtime Services – Remote,”
“Veritex Virtual Primary Participants,” “Realtime Services – Remote Connection,” “Litigation
Package – Secure File Suite,” “Witness Read and Sign Services,” “Concierge Tech Support,”
“Veritext Exhibit Package (ACE),” “Exhibit Share,” and “Electronic Delivery and Handling.”
ECF No. 225 at 10. Profectus characterizes the costs as “unexplained” and “incurred for the
convenience of Google and its counsel.” Id. Last, Profectus objects to the costs for videos of the
depositions, pointing to this Court’s recent opinion in MV3 Partners LLC v. Roku, Inc.¸ No.

6:18-cv-00308-ADA, 2022 WL 1913619, at *4 (W.D. Tex. June 3, 2022). Id. In that opinion,
this Court reduced the requested deposition costs by entitling the prevailing party to recover
costs for video depositions only for witnesses who did not testify at trial. MV3 Partners, 2022
WL 1913619 at *4. Per Profectus, every witness listed in the above table testified at trial except
for Willy Cheung, Erick Low, and Michael Maigret. But the invoices for those witnesses only
list line items of “Electronic Access” and “Digitizing,” neither of which Profectus claims are
recoverable under 28 U.S.C. § 1920(2). ECF No. 225 at 10. After parsing through the invoices,
Profectus calculates the recoverable cost total to be $10,814.25—the costs of obtaining copies of
the transcripts of the depositions. Id. at 9.
In reply, Google notes that Profectus does not dispute the costs for a copy of each
deposition transcript ($10,814.25), nor does it explicitly contest the request for expedited
transcripts for Erick Low, Andrew Fergus Simpson, or Ashton Udall (totaling $1,509.06). ECF
No. 226 at 5–6. Google also provides additional clarity regarding the line items in the invoices,
arguing the necessity of certain line items as follows:

Cost Necessity
“Attendance – Per Session” and “Attendance (Full This court reporter appearance fee is necessary for
Day)” any deposition.
“Exhibits” This fee is necessary to obtain copies of the
exhibits used at a deposition.
“Litigation Package – Secure File Suite” and These fees for sending final sets of transcripts and
“Electronic Delivery and Handling” exhibits are required to actually obtain the
transcripts.
“Surcharge – Extended Hours” This fee is charged if the court reporter is required
to work extended hours to cover a given
deposition.
“Witness Read and Sign Services” This fee is for attaching a witness errata sheet to
the transcript.

Id. at 6. Google withdraws all other deposition costs tied to line items other than those listed
above. Id. Google also withdraws the costs for the videos of the witnesses who testified at trial.
Id. at 7. Finally, Google clarifies that the costs for Willy Cheung, Erick Low, and Michael
Maigret, the three witnesses that were deposed but did not testify at trial, were indeed the costs
incurred for obtaining the videos of the depositions. Id. And while the line items “Electronic
Access” and “Digitizing” are not explicitly listed in § 1920, they are indeed the costs for
obtaining the video deposition. The invoices themselves clarify that, as they are the only line
items associated with creating the videos. After reducing its requested costs, Google seeks a final
total amount of $20,543.31 for deposition transcript and video costs (a reduction of $14,317.02).1

1 The Court reached out to counsel requesting an updated Exhibit C (ECF No. 223-3) that highlighted only the
pertinent and remaining charges Google sought to collect.
The underlying question for the requested costs is not necessarily the text of the line item
on the invoice, but the necessity of the fee as dictated by § 1920. See Bernardy v. Shriners
Hospital for Children, Inc., No. 3:20-cv-165, 2022 WL 1694184, at *2 (S.D. Tex. May 25,
2022); see also U.S. ex rel. Long v. GSDMIdea City, L.L.C., 807 F.3d 125, 133 (5th Cir. 2015).
Google’s withdrawal of numerous line-item costs is well-received by the Court. The Court finds

that the requested costs of “Certified Transcript,” “Attendance – Per Session,” “Attendance (Full
Day),” “Exhibits,” “Litigation Package – Secure File Suite,” “Electronic Delivery and
Handling,” “Surcharge – Extended Hours,” and “Witness Read and Sign Services” are necessary
costs for obtaining deposition transcripts under § 1920(2) for the reasons provided in the updated
table in the reply brief. For such costs, the necessity is not necessarily derived from the text of
the line item on the invoice, but from what the approved line items accomplish—as approved by
§ 1920.
With respect to the expedited rates, Google argues that the expedited transcripts were
necessary because the depositions were taken between four and eight days before the opening

expert reports were due. ECF No. 223 at 4. Google states that the “testimony of these witnesses
was reasonably anticipated to be germane to the parties’ opening expert requests.” Id. Here,
absent an expedited rate, the parties would have been deprived of the transcripts in preparing
expert reports, necessities in patent litigation. Thus, the Court finds that the last-minute
depositions of Google’s witnesses, scheduled by Plaintiff, were sufficiently necessary for use in
the case. See Jacked Up, LLC v. Sara Lee Corporation, No. 3:11-cv-3296-L, 2015 WL
10607574, at *3 (N.D. Tex. Sept. 2, 2015) (finding the costs for expedited deposition transcripts
were necessary when “Plaintiff noticed the depositions shortly before the summary judgment
deadline”); see also MV3 Partners v. Roku, 2022 WL 1913619, at *3.
Finally, the Court finds that the “Electronic Access” and “Digitizing” costs associated
with the video depositions of Willy Cheung, Erick Low, and Michael Maigret were necessarily
incurred to obtain videos of the depositions. Google should recover such costs. See id. at *4
(“[Defendant] is entitled to recover only for video depositions of witnesses who did not testify at
trial.”) (emphasis in original); see also Jacked Up v. Sara Lee, 2015 WL 10607574, at *2

(“Section 1920(2) authorizes recovery of the costs for both the paper transcript and the video
recording of a deposition so long as, at the time that a transcript and a video recording were
made, each could reasonably be expected to be used during trial or for trial preparation, rather
than for the mere convenience of counsel or merely for discovery.”).
The Court approves the undisputed costs for the transcripts ($10,814.25),2 other
necessary costs to acquire the transcripts as describe above ($4,286.20), expedited costs for the
transcripts of three witnesses ($1,509.06), and costs for the video depositions of Willy Cheung,
Erick Low, and Michael Maigret ($2,575.00). In sum, the Court approves $19,184.51 for
necessary deposition costs.3

B. Google’s Entitlement to Fees for Witnesses
Google seeks to recover $3,626.55 in witness fees for witnesses called during trial. ECF
No. 223 at 5. The statutory costs associated with witness attendance at trial are set forth by 28
U.S.C. § 1821. Google’s costs for each witness are taxed through an attendance fee for each day
at trial as provided for in § 1821(b), required travel expenses as provided for in § 1821(c), and
required overnight lodging as provided for in § 1821(d). The parties do not dispute these costs.

2 This amount comprises all line items in the invoices entitled “Original with 1 Certified Transcript” or “Certified
Transcript.” The $10,814.25 amount is a baseline undisputed amount that also reduces the $8.30 per page charge to
$4.35 per page on Justin Ray Blok and Mitchell Aaron Thornton, Ph.D.’s invoices (##5173577 and 5171419,
respectively).
3 Google’s proposal for $20,543.31 is approved by the Court with one minor adjustment—the Court reduces the
price per page for Dr. Thornton’s deposition transcript to $4.35 per page.
The Court finds Google is entitled to full reimbursement for witness fees in the amount of
$3,626.55.
C. Google’s Entitlement to Exemplification & Copying Costs
A prevailing party may recover the costs of “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). Google seeks to recover costs for producing trial graphics, obtaining demonstratives,
and retaining a trial technician. ECF No. 223 at 5–7. Google does not request any costs for
copying. See generally id. This Court finds the total recovery for exemplification costs should be
significantly reduced.
1. Physical Trial Demonstratives
In Google’s Memorandum in Support of its Bill of Costs, Google sought costs in the
amount of $1,380.11, $1,070.58 of which was attributed to six of Google’s allegedly infringing
products. Profectus questioned why it was “necessary for Google to purchase its own products
for the case.” ECF No. 225 at 7. In turn, Google has withdrawn the request for the costs of those
six units, but maintains its request for other physical trial demonstratives, including the prior art
devices. Each of the remaining physical trial demonstratives4 fit within the common definition of

“exemplification.” See Exemplification Definition, MERRIAM-WEBSTER.COM,
https://www.merriam-webster.com/dictionary/exemplification (last visited Aug. 10, 2022)
(defining it as an example and listing synonyms such as “prototype,” “representative,” and
“sample”); ECF No. 223-5 at 1.5 Given the demonstratives’ utility in the trial and that the

4 The Kodak Smart Picture Frame Storybook Digital, the Sony PHD-A55 5-in Digital Photo Frame, the Original
Sony 128 MB Memory Stick, the Sony MSAC-US1 Memory Stick Reader/Writer w/ USB cord were each used at
trial.
5 The Court does not find that the foam travel case fits within the definition, nor that it was necessarily obtained for
use in the case, particularly given that the products could have been transported in their original packaging.
Moreover, the foam case cost more than the products themselves.
physical products, or examples, were necessarily obtained for use in this case, e.g., to prepare
defenses, for expert opinions, and for presentation to the jury at trial, the Court finds that such
costs should be granted. Accordingly, the Court awards costs in the amount of $135.74 for
physical trial demonstratives.
2. Graphics & Trial Equipment

The main dispute centers on whether Google is entitled to an additional $116,330.00 for
courtroom equipment, graphics, and trial technician fees. Google asserts that these costs are
taxable “provided that the prevailing party obtained court approval before incurring the
expense.” ECF No. 223 at 5 (quoting Two-Way Media, LLC v. AT&T Servs., Inc., 2013 U.S.
Dist. LEXIS 202556, at *22 (W.D. Tex. Nov. 22, 2013)). Profectus argues that these costs are
not allowed under § 1920(4) because the statute only expressly allows for fees relating to the
“exemplification” of necessary materials, and the Fifth Circuit’s understanding of the term
“exemplification” leaves no room for any of the costs Google is seeking. ECF No. 225 at 4. In
support, Profectus points to Summit Technology, Inc. v. Nidek Co., Ltd., 435 F.3d 1371, 1375–78
(Fed. Cir. 2006) where the Federal Circuit interprets First Circuit jurisprudence as disallowing

costs for consulting fees associated with preparing trial graphics. The Federal Circuit in Summit
Technology notably describes the First Circuit as taking the same “narrow[] legal definition of
the term ‘exemplification’ endorsed by the Fifth Circuit.” Id. at 1377.
Google contends that such costs are recoverable under § 1920(4) as recent cases,
including this Court’s MV3 Partners opinion, recently granted costs for trial exhibits, graphics,
and demonstratives in an exercise of discretion. ECF No. 226 at 2. Google further argues that
these costs were necessary in order for Google to defend itself. Id. at 2–4. Google further
disputes that the invoices are insufficiently detailed, pointing to invoices used in other cases that
supported an award of costs. Id. Last, Google argues that it had implicit preauthorization for trial
exhibits, graphics, and demonstratives. Id. at 4–5.
The Court recently addressed similar arguments in MV3 Partners, where the dispute
centered on whether such costs were expressly authorized and contained sufficient details to
prove they were necessarily incurred. With the benefit of additional briefing, and having the

issue squarely presented, the Court finds that Google’s requested fees for trail exhibits, graphics,
and demonstratives do not fall within the language of § 1920 as “fees for exemplification.”
Recognizing that this is a fairly sudden about face from the MV3 Partners opinion, the Court
provides the following reasoning.
a) “Exemplification” should be narrowly construed.
First, whether the requested costs fall under “exemplification” in § 1920(4) is a threshold
and determinative issue. Profectus relies on a narrow interpretation of “exemplification,”
defining it as “[a]n official transcript of a document from public records, made in form to be used
as evidence, and authenticated as a true copy.” BLACKS LAW DICTIONARY (4th ed. 1951). Google
argues that this Court need not change course from its prior approach and that of other Courts in

awarding such costs. But to continually err for the sake of consistency is still error. Moreover,
the underlying question in MV3 Partners was not precisely whether such costs were
“exemplification” costs, but instead whether the prevailing defendant “receive[d] prior express
authorization from the Court.” MV3 Partners LLC v. Roku, Inc., No. 6:18-CV-00308-ADA, 2022
WL 1913619, at *4 (W.D. Tex. June 3, 2022). The Court ultimately found that “express
authorization by the court is not necessary.” Id. (emphasis in original). Because the parties
squabbled over secondary questions instead of the threshold question, this Court did not
eliminate the requested costs. However, after a further assessment of the law and the restrictive
language of the statute, the Court is of the opinion that awarding such costs is beyond the
purview of the Court.
Google cites to several cases where costs for a trial technician and equipment were
awarded.6 In reviewing each of these cases, determination of whether the requested costs fell
under the language of the statute was more an assumption than an analytical challenge. By no

means does the Court discredit Google or prior courts for requesting and awarding these costs
under the guise of “exemplification.” But after a deep review of the invoices and briefing, the
requested costs are not exemplification costs. As noted in United Biologics, L.L.C. v. Allergy and
Asthma Network/Mothers of Asthmatics, Inc., “no plausible reading of [§ 1920(4)’s] provision
for fees for exemplification permits recovery for expenses resulting from the time an A/V
technician spends in trial.” No. 5:14-cv-35, 2021 WL 1968294, at *11 (W.D. Tex. May 17,
2021) (internal quotation marks omitted).
United Biologics provides a very narrow definition of “exemplification,” relying only on
the restrictive definition provided in Black’s Law Dictionary. 2021 WL 1968294, at *15. This

Court believes that a less restrictive definition, as provided by lay dictionaries, covers more than
solely documentary transcripts and indeed encapsulates physical products. See, e.g.,
Exemplification Definition, MERRIAM-WEBSTER.COM, https://www.merriam-

6 See ECF No. 223 at 6; Two-Way Media, LLC & AT&T Servs., Inc., No. SA-09-CA-00476, 2013 WL 12090356, at
*5–6 (W.D. Tex. Nov. 22, 2013) (Awarding $60,659.56 for graphic and visual consultation and equipment used in
trial and stating: “In the Fifth Circuit, expenses for the production of various types of non-testimonial evidence—
such as photographs, maps, charts, graphs, and other demonstrative aids—are taxable as costs provided the
prevailing party obtained court approval before incurring the expense.”); Versata Software, Inc. v. SAP Am. Inc., No.
2:07-CV-153, 2011 WL 4436283, at *2 (E.D. Tex. Sept. 23, 2011) (awarding $90,090.00 for audio and visual
professional services and stating: “The use of technology support during trial, particularly in complicated cases such
as this case, is an anticipated, useful, and necessary tool to assist in the efficient presentation of cases.”); MV3
Partners LLC v. Roku, Inc., No. 6:18-CV-00308-ADA, 2022 WL 1913619, at *4 (W.D. Tex. June 3, 2022)
(awarding costs for graphics and trial equipment and stating: “But express authorization by the court is not
necessary. Requests or invitations to submit tutorials or demonstratives for the Markman hearing and during trial is
tantamount to pretrial approval.”) (internal citations and quotation marks omitted).
webster.com/dictionary/exemplification (last visited Aug. 10, 2022) (defining it as an example
and listing synonyms such as “prototype,” “representative,” and “sample”); Exemplification
Definition, DICTIONARY.COM, https://www.dictionary.com/browse/exemplification (last visited
August 10, 2022) (defining it as “something that exemplifies; an illustration or example” or “an
attested copy of a document, under official seal”).

Practically speaking, a broader definition than that accepted in United Biologics causes
an insubstantial difference in taxable costs. While it may allow for and capture the costs beyond
mere documents, such as physical product samples, this Court’s accepted definition likewise
excludes expenses incurred for graphics and trial technician services for trial. Trial graphics, trial
consultant or technician fees, and a vague trial equipment charge from the same third-party trial
graphics team are not examples, illustrations, prototypes, samples, or the like. Such costs simply
do not fall within the language of the statute. See Taniguchi v. Kan Pacific Saipan, Ltd., 566 U.S.
560, 573 (2012) (“Because taxable costs are limited by statute and are modest in scope, we see
no compelling reason to stretch the ordinary meaning of the cost items Congress authorized in §

1920.”).
For support, the Court turns to Summit Technology, Inc. v. Nidek Co., Ltd., wherein the
Federal Circuit outlined its basis for rejecting requested costs in preparing trial exhibits,
computer animations, videos, PowerPoint presentations, and graphic illustrations and finding that
they were not “exemplifications.” 435 F.3d at 1374–78. The Federal Circuit reviewed the case
under a First Circuit interpretation, but notably was persuaded “that the First Circuit would adopt
the narrow, legal definition of the term ‘exemplification’ endorsed by the Fifth Circuit, the
Eleventh Circuit, and [the Federal Circuit] applying Sixth Circuit law.” Id. at 1377.
Ultimately, Google’s case support represents a view of § 1920 that the Fifth Circuit
appears to have abandoned. Compare ECF No. 223 at 5 (citing Fifth Circuit cases from the
1980s and 1990s), with ECF No. 225 at 5–6 (citing Federal Circuit, Fifth Circuit and District
Court cases from the 2000s, 2010s, and 2020s). Consequently, the Court agrees with the Federal
Circuit’s appraisal of the Fifth Circuit’s current approach to the term “exemplification” as

narrow in scope. See, e.g., U.S. ex rel. Long v. GSDMIdea City, L.L.C., 807 F.3d 125, 133 (5th
Cir. 2015) (denying costs for “shipping, binding, and tabbing of depositions” as non-taxable
under § 1920 because “these types of costs are nowhere enumerated in the statute”); Zastrow v.
Houston Auto M. Imports Greenway, Ltd., 695 F. App’x. 774, 780 (5th Cir. 2017) (denying costs
for “video setup and playback at trial” because “nothing in the statute authorizes” these costs).
This interpretation, confirmed by other divisions in this District, avoids “transform[ing] §
1920(4) from a tool to recover ‘relatively minor, incidental expenses’ into a roving warrant to
recover potentially millions of dollars expended on graphics and demonstratives.” United
Biologics, 2021 WL 1968294, at *11. Because nothing in § 1920(4) authorizes taxing costs for

trial graphics, trial technicians, trial equipment, or equipment for remote trial testimony, either
explicitly or implicitly, the Court declines to hold Profectus responsible for reimbursing Google
for these costs.
b) Costs for items outside the statutory provision cannot be curatively
taxed with pre-authorization.
Because the Court finds that Google’s requested costs are not “exemplative,” no further
analysis should be required. However, as cited by Google, some courts have historically
expanded the definition of “exemplification” to incorporate a wide variety of exhibits and
demonstrative aids. Much of the support for such exemplification costs stems from language
cited in Two-Way Media which endorses expenses for various types of non-testimonial evidence
“provided the prevailing party obtained court approval before incurring the expense.” Two-Way
Media, 2013 WL 12090356, at *5 (emphasis added).
Two-Way Media cites to Kellstrom to support this notion. Importantly, the Fifth Circuit’s
language in Kellstrom indicates that “costs should always be given careful scrutiny.” Kellstrom,
50 F.3d at 335. Two-Way Media also relies on Studiengesellschaft Kohle mbH v. Eastman Kodak

Co., 713 F.2d 128, 132–33 (5th Cir. 1983), for the proposition that a court can award costs for
charts, models and photographs and justify taxation of costs outside the statutory provision if
pretrial authorization existed. In Kodak, the Fifth Circuit reversed an award of $1,067.97 for
charts, models, and photographs, finding the record did not show any prior approval. Id. But
even this analysis hinged on the Court’s opinion in Johns-Manville Corp. v. Cement Asbestos
Products Co., 428 F.2d 1381, 1385 (5th Cir. 1970), wherein the Fifth Circuit allegedly endorsed
taxation of costs outside the statutory provision if prior authorization was given.
After a deep review of the caselaw, the Court is convinced this proposition has since been
abrogated with a restrictive focus on the language of the statute. See United Biologics, 2021 WL

1968294, at *14 (detailing the Fifth Circuit’s admission that no statutory provision supported
taxation of charts and exhibits as costs in applying a “pretrial approval” rule and providing
detailed analysis of subsequent opinions abrogating such a rule); see also Arcadian Fertilizer,
L.P. v. MPW Indus. Servs., Inc., 249 F.3d 1293, 1297 (11th Cir. 2001) (“More recently we have
revisited the holding of Johns–Manville and its conclusion that no statutory provision exists for
the taxation of these kinds of exhibits, and concluded that the Supreme Court’s determination
in Crawford Fitting that statutory authorization is an essential prerequisite to an award of costs
necessarily abrogates that portion of the Johns–Manville decision that condoned taxation if prior
authorization had been obtained.”).
The Court agrees with and adopts the analysis of Judge Lamberth in the United Biologics
opinion, reasoning that an “atextual tax-whatever-the-court-preapproved approach” has been
abrogated. 2021 WL 1968294, at *15. Additionally,
Taxable costs are limited to relatively minor, incidental expenses
as is evident from § 1920, which lists such items as clerk fees,
court reporter fees, expenses for printing and witnesses, expenses
for exemplification and copies, docket fees, and compensation of
court-appointed experts. Indeed, “the assessment of costs most
often is merely a clerical matter that can be done by the court
clerk.” Hairline Creations, Inc. v. Kefalas, 664 F.2d 652, 656
(C.A.7 1981). Taxable costs are a fraction of the nontaxable
expenses borne by litigants for attorneys, experts, consultants, and
investigators. It comes as little surprise, therefore, that “costs
almost always amount to less than the successful litigant's total
expenses in connection with a lawsuit.” 10 Wright & Miller §
2666, at 203. Because taxable costs are limited by statute and are
modest in scope, we see no compelling reason to stretch the
ordinary meaning of the cost items Congress authorized in § 1920.

Taniguchi v. Kan Pac. Saipan, Ltd., 566 U.S. 560, 573 (2012). Here, a request for $114,380.00 is
a staggering amount well beyond “minor, incidental expenses” as outlined in § 1920. Hence, the
Court reduces Google’s requested costs to only those allowed by the statute and disapproves of
skirting § 1920(4)’s plain meaning on the basis of pre-authorization.
IV. CONCLUSION
It is therefore ORDERED that Defendant’s Bill of Costs, ECF No. 222, is GRANTED-
IN-PART. Google is entitled to the following costs:
• Trial transcription costs in the amount of $12,268.43;
• Deposition transcription costs in the amount of $19,184.51;
• Witness fees in the amount of $3,626.55; and
• Physical trial demonstratives in the amount of $135.74.
IT IS THEREFORE ORDERED that Plaintiff Profectus Technology LLC pay
$35,215.23 in costs pursuant to § 1920.
SIGNED this 15th day of August, 2022.
(Vn \ Ay
ALAN D ALB T
UNITED STATES DISTRICT JUDGE

17

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10680907. Public record. Not legal advice.