Petition for Writ of Certiorari — Dorel Juvenile Group, Inc. v. Kohus

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‘a \ Supreme Count, U.S.

D FILED

011831 JUN 112002

No. 01- OFFICE OF THE CLERK

IN THE

Supreme Court of the United States

DOREL JUVENILE GROUP, INC.,

Petitioner,

LOUIS M. KOHUS,

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

PauL B. Hunt

Counsel of Record

DEBORAH POLLACK-MILGATE

Barnes & THORNBURG

Attorneys for Petitioner

11 South Meridian Street

Indianapolis, IN 46204

(317) 231-7453

174383 ce ¥ O oy

COUNSEL PRESS

(800) 274-3321 * (800) 359-6859

QUESTIONS PRESENTED

What costs are recoverable as “[f]lees for exemplification

and copies of papers” pursuant to 28 U.S.C. § 1920(4)?

Did the Court of Appeals for the Federal Circuit err in

construing 28 U.S.C. § 1920(4) to preclude recovery of costs

for a computer animation that was necessarily obtained for

use in the case?

PARTIES TO THE PROCEEDINGS AND

CORPORATE DISCLOSURE STATEMENT

The parties to the proceedings in the United States

Court of Appeals for the Federal Circuit were Petitioner Dorel

Juvenile Group, Inc., Cosco, Inc., Toys ‘R’ Us, Inc., R&R

Resale, Inc., and Mr. Louis M. Kohus. Toys ‘R’ Us, Inc. and

R&R Resale, Inc., are not being served as Respondents

because they have no interest in the current proceeding.

Effective July 2, 2001, Cosco, Inc. ceased to exist as a

corporate entity. The resulting organization is the Petitioner,

Dorel Juvenile Group, Inc., which is a wholly-owned

subsidiary of Dorel U.S.A., Inc., which is a wholly-owned

subsidiary of Dorel Industries, Inc.

TABLE OF CONTENTS

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Parties to the Proceedings and Corporate Disclosure

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Statement of Jurisdiction ..................25.

Constitutional and Statutory Provisions Involved . .

Statement of the Case .......ccccccccccccccces

Reasons for Granting the Writ .................

1. This Court Should Grant Certiorari to

Resolve the Dispute Among the Circuit

Courts Regarding the Scope of Recoverable

Costs under Section 1920(4). ............

2. This Court Should Grant Certiorari Because

the Federal Circuit Has Decided an Important

Issue of Federal Law in a Way that Conflicts

with the Rulings of this Court. ...........

EN a oh ue eawe we

TABLE OF CITED AUTHORITIES

Page

Cases: ¥

Appliance Investment Co. v. Western Eiectric Co.,

Fe eee is 8. | rewrrerr ry rr eT 4,9, 13

Arcadian Fertilizer, L.P. v. MPW Indus. Servs., Inc.,

249 F.3d 1293 (11th Cir. 2001) ........ 2-3, 7, 11-12

Cefalu v. Village of Elk Grove, 211 F.3d 416

CFG SOE sc dswavedkees adel ueensaeunn doe 2, 7,8

‘Cobb v. Time, Inc., No. 3:94-0836, 1999 U.S. Dist.

LEXIS 22992 (M.D. Tenn. Dec. 10, 1999) ...... 5, 12

Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S.

et GETS cess oa uaekh skeen teen ees passim

Deaton v. Dreis & Krump Mfg. Co., 134 F.R.D. 219

Ean, GN SEED RiWis se dekh aceonanehae eas 12

Denny v. Westfield State Coll., 880 F.2d 1465

C065 GRE. TO obese ncedksanstncei os oe daceness 9

EEOC v. Kenosha Unified Sch. Dist. No. 1,620 F.2d

SR Gee SEE 6 6 80ka0 cs aa dexsedauwes 2

Electro Scientific Indus., Inc. v. Gen. Scanning, Inc.,

247 F.3d 1341 (Fed. Cir. 2001) .............- 15

Farmer vy. Arabian American Oil Co., 379 U.S. 227

CSOD s.vc.vc kw cunbesneseneaneieeneee 10

Cited Authorities

Goodwall Constr. Co. v Beers Constr. Co., 824

F. Supp. 1044 (N.D. Ga. 1992) ..............

Haroco, Inc. v. AM Nat'l Bank & Trust Co., 38 F.3d

BE Cree Gk Be in bs biked cen desdeds cans

In re Air Crash Disaster at John F. Kennedy Int'l

Airport, 687 F.2d 626 (2d Cir. 1982) ..........

Johns-Manville Corp. v. Cement Asbestos Prods. Co.,

Pe Be Oe Rk Le es rrr err ere

Kaiser Indus. Corp. v. McLouth Steel Corp.,

50 F.R.D. 5, 13 (E.D. Mich. 1970) ...........

Maxwell v. Hapag-Lloyd Aktiengesellschaft, 862 F.2d

Per ee SE, 2b kb khd edd es

Mikel v. Kerr, 499 F.2d 1178 (10th Cir. 1974). ....

Mississippi Band of Choctaw Indians v. Holyfield,

ge) ee eee ere

Reinharts, Inc., v. Caterpillar Tractor Co., 99 F.2d

i. Le | re rir Are see

Page

9,10

9, i2 -

Cited Authorities

Page

Romero v. City of Pomona, 883 F.2d 1418 (9th Cir.

SGGDD ccccccescvsnccsgbensencevesusaunean 9,10

Stachon v. Hoxie, 190 F. Supp. 185 (W.D. Mich.

i PPPPOTTTTITTTTTT rT ee 12

Studiengesellschaft Kohle mbH v. Eastman Kodak

Co., 713 F.2d 128 (Sth Cir. 1983) ............ 11

Swan Carburetor Co. v. Chrysler Corp., 149 F.2d

S76 Cota Cae. 89GB) nc eva ccvccteseenctas 4,9, 12, 13

Tilton v. Capital Cities/ABC, Inc., 115 F.3d 1471

(. Ye 3. 7, Pre rre 10, 11

U.S. Indus., Inc. v. Touche Ross & Co., 854 F.2d 1223

(2G Cie, BGGGD 2c cncdncvencsdacbasecennes il

Statutes:

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28 US... § SERGI soins dckdeesensnaneeee l

28 USL. § 1G .0cccucvisivedseweseeduena 1

28 UBL. § 1GRG CIGESe coo cancssskduaneenene passim

vii

Cited Authorities

Page

Rule:

8 Re SF Ferre Perer rer err rs TeerT re 1,6

Miscellaneous Authorities:

Fred Galves, Where the Not-So-Wild Things Are:

Computers in the Courtroom, the Federal Rules

of Evidence, and the Need for Institutional Reform

and More Judicial Acceptance, 13 Harv. J. L.

ep es ree ee 14, 16

Fredric I. Lederer, Trial Advocacy: The Road to the

Virtual Courtroom? A Consideration of Today’

— and Tomorrow’s — High-Technology

Courtrooms, 50 S.C. L. Rev. 799 (1999) ....... 16

Mark D. Robins, Computers and the Discovery of

Ev’ 4ence — A New Dimension to Civil Procedure,

17 J. Marshall J. Computer & Info. L. 411

Dt Sc sicecllsaseeeebenceheedates ant 16

6 James Wm. Moore et al., Moores Federal Practice

ED -chehacdnnbanneeé0e0ce ie 4

Black’s Law Dictionary (7th ed. 1999) .......... 3

Webster’s Dictionary (10th ed. 1993) ........... 2

vill

TABLE OFAPPENDICES

Page

Appendix A — Opinion Of The United States Court

Of Appeals For The Federal Circuit Decided

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Appendix B — Memorandum And Order Of The

United States District Court For The Southern

District Of Ohio, Western Division Dated And

PU SEMEN Sick dccaed (es ee ei sawes 17a

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Petitioner Doral Juvenile Group, Inc. respectfully

petitions for a writ of certiorari to review the judgment of

the United States Court of Appeals for the Federal Circuit in

this case.

OPINIONS BELOW

The opinion of the United States Court of Appeals for

the Federal Circuit (App. 1a) is reported at 282 F.3d 1355

(Fed. Cir. 2002). The memorandum opinion of the district

court (App. 17a) is unreported.

STATEMENT OF JURISDICTION

The judgment of the United States Court of Appeals

for the Federal Circuit was issued on March 13, 2002.

This Court has jurisdiction over this case pursuant to

28 U.S.C. § 1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

28 U.S.C. § 1920 (1994).

Fed. R. Civ. P. 54.

STATEMENT OF THE CASE

Jurisdiction was proper in the district court pursuant to

28 U.S.C. §§ 1331, 1332, 1338(a), and 1367(a). The present

case concerns the costs that may be obtained by a

prevailing litigant. In almost every federal court action, the

prevailing party is entitled to its costs as a matter of course.

Fed. R. Civ. P. 54(d). Costs may be awarded for the items

enumerated in 28 U.S.C. § 1920 (1994).

This Court has held that a trial court may tax as costs

only those fees explicitly set forth in § 1920. Crawford Fitting

Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441 (1987).

The Crawford Fitting decision did not, however, resolve

the issue of what costs are recoverable under the statute.

Almost every circuit court has considered the issue of what

costs may be taxed, and yet there is virtually no agreement

among the circuit courts concerning the proper scope of

recoverable costs. Specifically, there is no agreement

concerning what fees are recoverable as “exemplification”

under subsection four.

At one end of the spectrum, the Seventh Circuit defines

“exemplification” according to Webster’s Dictionary as

“the act of illustration by example.” Webster’s Dictionary

406 (10th ed. 1993), cited in Cefalu v. Village of Elk Grove,

211 F.3d 416, 427 (7th Cir. 2000). According to the Seventh

Circuit, costs for exemplification include “a wide variety of

exhibits and demonstrative aids,” including “the reasonable

expense of preparing maps, charts, graphs, photographs,

motion pictures, photostats, and kindred materials.”

Cefalu, 211 F.3d at 427 (citing Haroco, Inc. v. AM Nat’l Bank

& Trust Co., 38 F.3d 1429, 1441 (7th Cir. 1994); EEOC vy.

Kenosha Unified Sch. Dist. No. 1, 620 F.2d 1220, 1227

(7th Cir. 1980)). In Cefalu, the Seventh Circuit approved

reimbursement for the cost of a multi-media presentation,

subject to the trial court’s determination that such

was “reasonably necessary” to the presentation of the case.

Id. at 429.

At the other end of the spectrum is the Eleventh Circuit,

which has defined the term “exemplification” as “[a]n official

transcript of a public record, authenticated as a true copy for

use as evidence.” Arcadian Fertilizer, L.P. v. MPW Indus.

Servs., Inc., 249 F.3d 1293, 1297 (11th Cir. 2001).

This definition tracks the definition of the term

“exemplification” found in Black’s Law Dictionary. Black’s

Law Dictionary 593 (7th ed. 1999). In Arcadian Fertilizer,

the court thus concluded that there is no statutory authority

for recovery of any costs for demonstrative exhibits, whether

in the form of charts, maps, computer animation, or videotape

exhibits. Arcadian Fertilizer, 249 F.3d at 1297-98.

The present case began when Mr. Kohus claimed that

the Petitioner had infringed his patent, United States Patent

No. 4,688,280. The trial court granted summary judgment

of non-infringement in favor of the Petitioner. The Court of

Appeals for the Federal Circuit affirmed the finding of

summary judgment.

Petitioner then sought to recover the costs it had incurred.

Among those costs, Petitioner sought to recover $12,950 for

the preparation of computer animation. The animation

demonstrated the structure and function of both the patented

and allegedly infringing products. The trial court awarded

Petitioner the costs incurred in preparing the animation,

concluding “that the exhibit was necessary and that the costs

related to the exhibit, which equal $12,950, should be

awarded.” App. 21a.

Mr. Kohus appealed the trial court’s ruling to the Court

of Appeals for the Federal Circuit. The Federal Circuit, over

the dissent of Judge Dyk, reversed the district court’s ruling.

The court’s analysis was divided into two parts. First, relying

on the restrictive definition of “exemplification” found in

Black’s Law Dictionary, the Federal Circuit concluded that

Petitioner’s computer animation could not qualify as an

exemplification. Jd. at 9a-10a. The court surmised that

Congress would have used the phrase “demonstrative

evidence” if it had intended § 1920 to encompass costs for

the preparation of exhibits. /d. at 10a. Thus, “the district court

had no statutory authority to award costs for the video.” Jd.

In the second part of its analysis, the Court of Appeals

purported to examine the law of the Sixth Circuit, the regional

circuit in which the trial court sits, to determine how the

Sixth Circuit would decide the issue. /d. As a matter of law,

however, the court had already determined that the trial court

had no statutory authority to award costs for the video

animation.

The only Sixth Circuit decision reviewed by the Court

of Appeals was Swan Carburetor Co. v. Chrysler Corp.,

149 F.2d 476 (6th Cir. 1945). The Court of Appeals found

that the Swan decision “indicates that the Sixth Circuit would

not permit an award of costs for the video.” App. 12a.

The Swan decision does not specifically address whether

computer animation constitutes an exemplification. In Swan,

the Sixth Circuit allowed the successful litigant to recover

costs incurred in the preparation of charts and drawings,

but denied costs incurred in preparing a physical model.

Swan, 149 F.2d at 478.

As Judge Dyk correctly notes in his dissent, the Swan

decision relies on the decision in Appliance Investment Co.

v. Western Electric Co., 61 F.2d 752 (2d Cir. 1932).

App. 15a - 16a. In Appliance, the court allowed costs incurred

in providing simplified drawings, reasoning that such an

expense “‘is in the same category with that for motion pictures

and photographs ... and fairly falls within the statute.”

Appliance Investment Co., 61 F.2d at 757. Thus, the Second

Circuit generally follows a broader construction of the statute.

In addition, many lower courts in the Sixth Circuit have

concluded, contrary to the Federal Circuit, that costs for such

exhibits as video montages, photographs, and movies are

recoverable in the Sixth Circuit. See, e.g., Cobb v. Time, Inc.,

No. 3:94-0836, 1999 U.S. Dist. LEXIS 22992, at *5-6

(M.D. Tenn. Dec. 10, 1999) (allowing recovery of costs for

preparation of video montage as “reasonable and necessary

cost”); Kaiser Indus. Corp. v. McLouth Steel Corp., 50 F.R.D.

5, 13 (E.D. Mich. 1970) (allowing recovery of costs for

reproductions of photographs and movies).

Costs are awarded to the prevailing party in almost every

federal court action. Appellate courts, like the Federal Circuit

and the Eleventh Circuit, which rely on antiquated, outdated

definitions, will retard the use and expansion of new

technologies in the courtroom. Litigants should be

encouraged, not discouraged, from developing and using new

technologies in order to make complex issues easier to

understand. The increased use of technology in the courtroom

will ease the time and cost burdens faced by both litigants

and the courts. Costs associated with the use of technology

for preparation of trial exhibits must be recoverable under

subsection four if “exemplification” is to have any force or

effect in this technological age.

REASONS FOR GRANTING THE WRIT

In Crawford Fitting Co. v. J.T. Gibbons, Inc., this Court

held that, in awarding costs to the prevailing party under

Federal Rule of Civil Procedure 54(d), the trial court lacks

discretion to assess costs for items not explicitly listed in

28 U.S.C. § 1920. 482 U.S. 437, 441 (1987). The Court

reasoned: “Title 28 U.S.C. § 1920 now embodies Congress’

considered choice as to the kinds of expenses that a federal

court may tax as costs against the losing party.” Jd. at 440.

Rule 54(d) permits the trial court to decline to award costs

to a prevailing party altogether. Fed. R. Civ. P. 54(d).

However, if the trial court does assess costs in favor of the

prevailing party, the court is restricted to those costs

enumerated in § 1920.

Subsection four of § 1920 allows for the taxation of

“(flees for exemplification and copies of papers necessarily

obtained for use in the case.” 28 U.S.C. § 1920 (1994).

The circuits have varied widely in their interpretation of this

provision. Specifically, there is no agreement as to the

meaning of the word “exemplification” — some circuits have

adopted a broad definition of the word, others have adopted

a restrictive definition of the word, and most circuits have

adopted a definition that falls somewhere in the middle.

The Federal Circuit has decided this issue in a manner

that conflicts with Crawford Fitting. The Federal Circuit

correctly noted that Crawford Fitting requires that an award

of costs be limited to those specified in § 1920. App. 8a - 9a.

The court then concluded that Congress could not have

intended that costs for production of such exhibits and

demonstratives as charts, drawings, or models would be

recoverable because the statute does not provide for costs

for “demonstrative evidence.” Jd. at 9a - 10a. Contrary to its

own statutory reading, the Federal Circuit then determined

that costs are properly allowed under Sixth Circuit law for

charts and drawings, but not for models. /d.The Federal

Circuit reasoned that Petitioner’s computer animation was

more akin to a model than a drawing or chart, and concluded

the trial court abused its discretion in awarding costs to

Petitioner for that item. Jd. at 1la. In so doing, the Federal

Circuit has generated even greater uncertainty on this issue

— it first decided this issue as a matter of statutory analysis

and then contradicted its own analysis and purported to decide

the issue under Sixth Circuit law.

The question of what costs are recoverable by the

prevailing party under § 1920 is an important issue of federal

law. It is an issue that affects the pocketbook of almost every

litigant in every federal court across the country. Yet, given

the widely diverging opinions on the issue, there is no

certainty concerning what will or will not qualify as a

recoverable cost for “exemplification” under the statute.

In an age in which litigants are increasingly turning to the

latest technology as a means for clarifying complex issues

to courts and juries, Petitioner respectfully submits that the

parameters of subsection four should be defined.

1. This Court Should Grant Certiorari to Resolve the

Dispute Among the Circuit Courts Regarding the

Scope of Recoverable Costs under Section 1920(4).

Both before and after Crawford Fitting, there has been

conflict among the circuits regarding the scope of recoverable

costs under subsection four of § 1920. The Seventh Circuit

has construed this provision broadly to focus on the

illustrative purpose for which costs are incurred, and has not

per se prohibited recovery for any costs associated with the

production or presentation of a trial exhibit. See, e.g., Cefalu,

211 F.3d at 428. In contrast, the Eleventh Circuit has

concluded that exemplification is a synonym for “official

transcript.” See, e.g., Arcadian Fertilizer, 249 F.3d at 1297.

All of the other circuits have addressed the various items for

which compensation is sought and determined on an

item-by-item basis whether compensation is proper under

the statute. See discussion infra.

g r

The Seventh Circuit, in a post-Crawford Fitting decision,

has affirmed its position that the word “exemplification”

should be construed according to Webster’s dictionary, which

defines exemplification broadly as the act of illustration by

example. Cefalu, 211 F.3d at 427. In Cefalu, the court

approved the taxation of the cost of a multimedia display,

concluding that there was no basis to distinguish between

“the physical preparation of a trial exhibit” and “the means

chosen to present that exhibit to the jury.” /d. at 428. Instead,

courts should assess the cost of illustrative materials with an

eye toward the general illustrative purpose for which it was

incurred, and refrain from adopting a “highly formalistic”

definition of exemplification. Jd. To do otherwise draws an

arbitrary line between what is and is not permitted under the

statute. Jd. Thus, the real focus of the trial court should be,

according to the Seventh Circuit, not what the materials were

in a definitional sense, but whether the materials were

“necessarily obtained for use in the case.” Jd. at 428-29.

The court stated:

[W]e find 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.

The Second Circuit has also construed § 1920(4)

to provide for the taxation of a wide variety of costs,

including, among others, “ ‘the reasonable expense of

preparing maps, charts, graphs, photographs, motion pictures,

photostats and kindred materials.’ ” Jn re Air Crash Disaster

at John F. Kennedy Int'l Airport, 687 F.2d 626, 631 (2d Cir.

1982) (quoting 6 James Wm. Moore et al., Moore's Federal

Practice 4 54.776[6], at 1739 (2d ed.)). In re Air Crash

Disaster relied on the earlier Second Circuit decision of

Appliance Investment Co., 61 F.2d at 752. The Appliance

Investment decision is cited in the Sixth Circuit decision of

Swan Carburetor, (see Swan Carburetor, 149 F.2d at 477),

the decision reviewed by the Federal Circuit in the present

case. The Appliance Investment court awarded costs for

~ drawings of patents, finding that, “[t]his expense is in the

same category with that for motion pictures and

photographs.” Appliance Inv. Co., 61 F.2d at 756-57.

The Second Circuit has also distinguished between the

preparation of trial exhibits and genera! intellectual

preparation for trial. See Denny v. Westfield State Col.,

880 F.2d 1465, 1472 (1st Cir. 1989) (citing approvingly this

distinction).

Historically, the Ninth Circuit has distinguished between

costs for charts, which are recoverable, and physical models,

for which no costs are recoverable. Reinharts, Inc. v.

Caterpillar Tractor Co., 99 F.2d 648, 649-50 (9th Cir. 1938).

Post Crawford Fitting, the Ninth Circuit has concluded

that costs for photographic materials, along with costs for

production of photographic evidence, graphic aids and

other types of demonstrative evidence, are recoverable.

Maxwell v. Hapag-Lloyd Aktiengesellschaft, 862 F.2d 767,

770 (9th Cir. 1988) (relying on cases from various other

jurisdictions, including the Second, Sixth, and Tenth

Circuits). In Romero v. City of Pomona, the Ninth Circuit

held that costs were not recoverable to reimburse a party for

its expert witness fees. The Ninth Circuit stated, “While we

have never considered the issue, some other circuits have

limited recovery under § 1920(4) to the actual costs of

physically producing the exhibits.” Romero v. City of

Pomona, 883 F.2d 1418, 1427 (9th Cir. 1989). The Ninth

Circuit then discussed the varying positions of the circuit

courts. Jd. The Ninth Circuit expressly rejected the position

adopted by the Second Circuit in Jn re Air Crash Disaster:

“We must part company with our sister circuit on this

issue because we believe it has read § 1920 too broadly.”

Romero, 883 F.2d at 1428. The Ninth Circuit concluded,

“Section 1920(4) speaks narrowly of ‘[flees for

exemplification and copies of papers,’ suggesting that fees

are permitted only for the physical preparation and

duplication of documents, not the intellectual effort involved

in their production.” Jd. Although the Romero court denied

the recovery of costs for the intellectual efforts of expert

witnesses, it endorsed the view that costs may be taxed for

the “preparation” of documents. Jd.

The Tenth Circuit has historically emphasized the trial

court’s discretion in determining whether an exhibit

is “necessarily obtained for use in the case” rather than sought

to analyze the physical nature of the particular item for

which recovery is sought. See Mikel v. Kerr, 499 F.2d 1178,

1182-83 (10th Cir. 1974). The Tenth Circuit has continued

to follow this approach even after Crawford Fitting.

See Tilton v. Capital Cities/ABC, Inc., 115 F.3d 1471, 1476

(10th Cir. 1997). In Tilton, the Tenth Circuit failed even to

acknowledge the existence of this Court’s Crawford Fitting

decision. Instead, the Tenth Circuit relied on Farmer v.

Arabian American Oil Co., 379 U.S. 227 (1964). Rather than

follow the restrictive teachings of Crawford Fitting, the Tenth

Circuit held, “in accordance with Farmer, we reject a bright-

line rule and instead examine whether the circumstances in

a particular case justify an award of costs for trial exhibits.”

Tilton, 115 F.3d at 1476. Similarly, in another post-Crawford

Fitting decision, the Tenth Circuit held that the trial court

“could have used its discretion” to award costs if the issues

in the case were complex. U.S. Indus., Inc. v. Touche Ross &

Co., 854 F.2d 1223, 1248 (10th Cir. 1998). Thus, the Tenth

Circuit has simply ignored this Court’s decision in Crawford

Fitting and continues to give trial courts discretion to tax

costs for expenses not specifically enumerated in § 1920.

Like the Tenth Circuit, the Fifth Circuit has historically

focused largely on whether or not a cost was necessarily

incurred. See Studiengesellschaft Kohle mbH v. Eastman

Kodak Co., 713 F.2d 128, 132-33 (Sth Cir. 1983). The Fifth

Circuit has also adopted the unique rule that costs for such

items as charts, models, and photographs — because these

items are not, according to the Fifth Circuit, statutorily

authorized — must be applied for and approved by the trial

court in advance of trial. Jd. (citing Johns-Manville Corp. v.

Cement Asbestos Prods. Co., 428 F.2d 1381, 1385 (5th Cir.

1970)). One district court in the Fifth Circuit has surmised

that, post Crawford Fitting, no costs may be recovered for

the preparation of demonstrative evidence, regardless

of whether or not prior permission of the court is sought.

Id. at 1063. Instead, costs are recoverable under subsection

four only for “copies of exemplification and documentary

evidence necessary for use in the case.” Goodwall Constr.

Co. v. Beers Constr. Co., 824 F. Supp. 1044, 1064-65

(N.D. Ga. 1992).

Finally, the Eleventh Circuit has adopted the Black’s Law

Dictionary definition of “exemplification,” concluding that

no costs may be awarded for physical exhibits, models, or

charts, and certainly not for computer animation. Arcadian

Fertilizer, 249 F.3d at 1297. “[W]e conclude that the term

‘exemplification’ imports the legal meaning of ‘[a]n official

transcript of a public record, authenticated as a true copy for

use as evidence.’ ” Jd.

Crawford Fitting has had, for the most part, little effect

on the rulings of the various circuits on the issue of costs

under § 1920(4). The Seventh Circuit, Second Circuit, and

Ninth Circuit have all adopted expansive definitions of the

term “exemplification.” The Eleventh Circuit and, in the

present case, the Federal Circuit, have adopted antiquated,

overly restrictive definitions of the term. The Tenth Circuit,

ignoring Crawford Fitting altogether, continues to give trial

courts substantial discretion in determining which items may

be taxed as costs.

Cases from the Sixth Circuit demonstrate that the Sixth

Circuit has followed neither the most permissive nor the most

restrictive rule regarding costs under subsection four.

The Sixth Circuit, in Swan Carburetor Co. v. Chrysler Corp.,

distinguished between charts and drawings, on the one hand,

and models on the other. 149 F.2d 476, 478 (6th Cir. 1945).

In Swan, the Sixth Circuit allowed for the taxation of costs

incurred in preparing charts and drawings, but denied

recovery of costs for the production of a physical model. Jd.

The Sixth Circuit reasoned that although models provide

assistance to the court, they are “essentially explanatory and

argumentative.” Jd. Trial courts within the Sixth Circuit have

not drawn this distinction. Those courts have allowed costs

for a range of items, from video montages and movies, to

diagrams, photographs, and maps. See Cobb, No. 3:94-0836,

1999 U.S. Dist. LEXIS 22992, at *5-6; Deaton v. Dreis &

Krump Mfg. Co., 134 F.R.D. 219, 224 (N.D. Ohio 1991);

Kaiser Indus. Corp., 50 F.R.D. at 13; Stachon v. Hoxie,

190 F. Supp. 185, 188 (W.D. Mich. 1960).

Thus, the Sixth Circuit, far from following the restrictive

definition adopted by the Federal Circuit, has, in line with

the majority of circuits, allowed costs to be recovered for a

variety of items. As noted in the dissent by Judge Dyk, the

Federal Circuit completely ignored the cases upon which the

Swan Carburetor decision was based. App. 14a (Dyk, J.,

dissenting). Among those decisions, Appliance Investment

specifically allowed for the recovery of costs incurred in

producing motion pictures. Jd. at 15a - 16a (Dyk, J.,

dissenting). In disposing of Swan, the Federal Circuit simply

notes that “the video exhibit is no different than the physical

models at issue in Swan.” Jd. at lla. The Federal Circuit

also fails to reconcile its own interpretation of the term

“exemplification” with the holding in Swan Carburetor, first

concluding as a matier of law that no costs are recoverable

for anything but official transcripts and copies, and then

abandoning that definition for one that arbitrarily

distinguishes between charts and graphs and models.

2. This Court Should Grant Certiorari Because the

Federal Circuit Has Decided an Important Issue of

Federal Law in a Way that Conflicts with the Rulings

of this Court.

The Federal Circuit has decided an important rule of

federa! law that should be addressed by this Court. In this

case, the Federal Circuit adopted the view that

“exemplification” means nothing more than an official

transcript, and that Congress could not have intended for costs

to be recoverable for “documentary evidence.” App. 9a - 10a.

The Federal Circuit thus adopted the most restrictive

definition available to it, and one unsupported by the vast

majority of the other circuit courts. The court then concluded,

however, relying on Sixth Circuit law, that costs are

nevertheless permissible under the statute for charts and

drawings, but not for video animation. /d. at 11a - 12a.

The Federal Circuit’s decision is contrary to Crawford

Fitting. Crawford Fitting establishes the principle that only

the costs enumerated in § 1920 are recoverable under the

statute. To apply § 1920 according to the Crawford Fitting

principle, it is therefore necessary to understand the meaning

of “exemplification.” However, the Federal Circuit defined

exemplification narrowly, and then went beyond the scope

of its definition. This decision is contrary to this Court’s

ruling in Crawford Fitting.'

The ambiguity of the language in § 1920 has resulted

in varied application of the statute This variance is contrary

to the congressional intent to standardize the assessment

of costs in federal courts. Marek v. Chesny, 473 U.S. 1, 14,

16-17 (1985) (“Congress has consistently ‘sought to

standardize the treatment of costs in federal courts, to make

them uniform — make the law explicit and definite.’ ”);

see also Mississippi Band of Choctaw Indians v. Holyfield,

490 U.S. 30, 43 (1989) (“[FJederal statutes are generally

1. Petitioner submits that this definition is also contrary to

Sixth Circuit precedent, for the reasons cited in the dissent in Kohus,

App. 14a - 16a (Dyk, C.J., dissenting), and for the reason that, as

discussed supra, many lower courts in the Sixth Circuit have

uniformly understood the Sixth Circuit to construe the statute more

broadly, to encompass such items as video montages and movies. In

addition, it should be noted that computer animation is literally

composed of drawings, for which, according to the Sixth Circuit,

costs may be recovered. See also Galves, infra at 180 (“Animations

are simply computer-generated drawings assembled frame by frame

which, when viewed sequentially, produce the image of motion.”).

intended to have uniform nationwide application.”).

The assessment of costs will not be standard in federal courts,

and there will be no uniform federal law on this issue, until

this Court provides guidance on what is encompassed within

the term “exemplification” under § 1920.

The widespread conflict among the circuits is further

exacerbated by the fact that circuit courts are often required

to apply the law of other circuit courts. In patent cases, like

the present case, all appeals are taken to the Court of Appeals

for the Federal Circuit. In such cases, the Federal Circuit is

bound to apply the law of the regional circuit court in

reviewing procedural issues not pertaining to patent law.

Electro Scientific Indus., Inc. v. Gen. Scanning, Inc., 247 F.3d

1341, 1349 (Fed. Cir. 2001). However, in the present case,

the Federal Circuit has held that it is error for a trial court to

award costs for exhibits that do not meet the strict definition

of the term “exemplification.” App. 8a - 9a.

The question thus becomes whether the Federal Circuit

will apply the law of the regional circuit from which the

appeal comes, and it is admittedly bound to do, or disregard

its own ruling that “exemplification” means “official

transcript.” In this case, the Federal Circuit disregarded both

its own definition of exemplification as well as the Sixth

Circuit’s interpretation of the statute. Petitioner submits that

patent litigants from the Seventh Circuit, for example, which

has adopted an expansive definition of “exemplification,”

have reason to doubt that the Federal Circuit will faithfully

apply Seventh Circuit law. After all, the Federal Circuit

concluded, as a matter of law, that it was “bound not to exceed

the limits of th[e] statute.” App. 10a. As an afterthought, it

sought to reconcile its conclusion with the precedent from

the Sixth Circuit.

This issue is made more pressing by the increased

prevalence of technology in the courtroom. The use of

technology — in the form of animation, computers, jury

monitors, etc. — is routine. The increased use of technology

in the courtroom has led to much speculation regarding the

future challenges to litigants, courts, and jurors. For example,

litigants are increasingly confronted with computer evidence,

which often does not come in the tangible form contemplated

by the discovery rules, and of which, technically speaking,

no paper copies may be made. See Mark D. Robins,

Computers and the Discovery of Evidence — A New

Dimension to Civil Procedure, 17 J. Marshall J. Computer

& Info. L. 411 (1999). Others have speculated that eventually

the trial itself will be conducted “virtually.” See Fredric I.

Lederer, Trial Advocacy: The Road to the Virtual Courtroom?

A Consideration of Today's — and Tomorrow’ — High-

Technology Courtrooms, 50 S.C. L. Rev. 799 (1999). In the

event that trials become “paperless,” reading

“exempu: ication” as an official transcript — which is a paper

copy — will render the statute wholly inapplicable in the

modern courtroom. The use of technology already presents

unique challenges to the interpretation of the Federal Rules

of Evidence. See Fred Galves, Where the Not-So-Wild Things

Are: Computers in the Courtroom, the Federal Rules of

Evidence, and the Need for Institutional Reform and More

Judicial Acceptance, 13 Harv. J. L. & Tech. 161 (2000)

(promoting the benefits of computer-generated exhibits).

As one author has noted, the benefit of this technology

often flows directly to the juror, who must understand the

factual issues of the case and then attempt to resolve the

factual disputes. Jd. at 168-69 (opining that computer-

generated exhibits “are not solely being introduced to add

‘sparkle’ to cases or ‘entertain’ or even ‘dazzle’ easily-bored

jurors, as much as they are simply necessary to explain the

complexities of the case”). In the context of the patent case,

the complexity of the issues that jurors must confront

necessitates the use of such exhibits as the one Petitioner

created. There was no embodiment of the claimed invention,

and, thus, no coherent method of comparing the alleged

infringing device with the patent claim. In addition, patent

cases frequently involve issues of new and developing

technologies, and litigants must utilize these technologies to

explain these increasingly complex issues. At the very least,

litigants in patent cases need to have an understanding of

what technologies they may use, and recover as costs, and

know that the statute will be enforced uniformly by the

Federal Circuit. Obviously, litigants in non-patent cases

would also benefit greatly from advice from this Court’s

determination of the meaning of the language of the statute.

Petitioner respectfully submits that § 1920 should be

construed to allow recovery for trial exhibits, in whatever

form, if such exhibits are necessarily obtained for use at trial

for purposes of “exemplification.” As technology turns away

from the use of “papers” by litigants, the statute should be

construed in a manner consistent with the broad intent of the

statute, which is to allow recovery by prevailing parties for

costs necessarily incurred in litigating a comprehensible and

convincing case. See Lynch v. Overholser, 369 U.S. 705,

710 (1962) (“The decisions of this Court have repeatedly

warned against the dangers of an approach to statutory

construction which confines itself to the bare words of a

statute ... for ‘literalness may strangle meaning.’ ”’”). At some

point, if the rule is understood to allow costs only for official

transcripts and paper copies, the exceptions to the statute

will swallow the rule. There will be no paper copies and,

thus, there will be no recovery for various items that are still

“necessarily obtained for use in the case,” albeit in different

forms.

CONCLUSION

There is no agreement among the circuits concerning

what is recoverable under 28 U.S.C. § 1920 under the rubric

of “fees for exemplification.” The confusion on this issue is

intensified by the Federal Circuit’s opinion, which concludes

that, as a matter of law, there is no authority in the statute for

allowing recovery of costs for animation. This decision is

contrary to the law of the Sixth Circuit and an anachronism

in this technological age. Certiorari should be granted to

resolve the split among the circuits and this important

question of law. The trial court should be affirmed.

Respectfully submitted,

PAuL B. HuNT

Counsel of Record

DEBORAH POLLACK-MILGATE

BARNES & THORNBURG

Attorneys for Petitioner

11 South Meridian Street

Indianapolis, IN 46204

(317) 231-7453

APPENDIX

APPENDIX A — OPINION OF THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL

CIRCUIT DECIDED MARCH 13, 2002

01-1358

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

LOUIS M. KOHUS,

Plaintiff-Appellant,

COSCO, INC.,

TOYS “R” US, INC. (doing business as Toys “R” Us and

Babies “R” Us), R&R RESALE, INC. (doing business as

Once Upon a Child), and THE WILLIAM

CARTER COMPANY,

Defendants-Appellees.

DECIDED: March 13, 2002

Before MAYER, Chief Judge, DYK and PROST, Circuit

Judges.

Opinion for the court filed by Circuit Judge PROST.

Dissenting opinion filed by Circuit Judge DYK.

Appendix A

PROST, Circuit Judge.

Louis M. Kohus (“Kohus”) sued Cosco, Inc., Toys “R”

Us, Inc. and R&R Resale, Inc. (collectively “defendants’”’)

in the Southern District of Ohio for patent infringement and

unjust enrichment.' After the district court granted summary

judgment of noninfringement and we affirmed without

opinion, see Kohus v. Cosco, Inc., 250 F.3d 758 (Fed. Cir.

2000) (per curiam), the defendants sought to recover their

costs from Kohus. The district court awarded defendants

$975.90 for costs related to two depositions and $12,950.00

for a video exhibit. Kohus appeals the award of costs for the

video exhibit. Because the district court erred by making this

award, we reverse.

BACKGROUND

Kohus is the owner and named inventor of U.S. Patent

No. 4,688,280 (“the ’280 patent”) entitled “Foldable Playpen

Assembly With Ease of Portability.” The patent generally

concerns a portable playpen with a foldable frame. On

October 28, 1997, Kohus sued Cosco, Inc. for patent

infringement and unjust enrichment, adding Toys “R” Us,

Inc. and R&R Resale, Inc. as defendants on June 24, 1998.

Kohus alleged that defendant Cosco, Inc. manufactured and

sold a line of infant “Zip ‘N Go” playyards that infringed the

°280 patent. The other defendants sold these playyards.

1. Cosco, Inc. ceased to exist as of July 2, 2001, when it

combined with another company to form Dorel Juvenile Group, Inc.

Kohus also sued The William Carter Company and fifty John Doe

defendants who are not parties to this appeal.

Appendix A

On May 4, 1999, the defendants filed a motion for

summary judgment of noninfringement. The motion relied

on the report of an engineering expert which referred to and

included a “video model comprising the structure, function

and operation of the device disclosed in the ’280 patent and

the Cosco Zip ‘N Go.” Defendants characterize this exhibit

as an “animated video demonstrating the various features

and limitation [sic] of the patent in suit as compared with

the accused devices,” created out of necessity because Kohus

never reduced to practice an embodiment of the ’280 patent.

Kohus filed an opposition to the motion for summary

judgment on June 22, 1999, disputing the accuracy of the

video’s depiction of the ’280 playpen and the accused

playyards.

On August 17, 1999, the district court granted

defendants’ motion for summary judgment of non-

infringement. Kohus v. Cosco, Inc., No. C-1-97-968

(S.D. Ohio Aug. 17, 1999). In its Memorandum and Order,

the district court construed the claim term “frame member”

in accordance with defendants’ proposed construction and,

based on the parties’ undisputed description of the accused

playyards, the court concluded that the playyards could not

satisfy that element of claim 1, either literally or under the

doctrine of equivalents. Kohus appealed the district court’s

summary judgment of noninfringement, which a panel of this

court affirmed on June 15, 2000. Kohus v. Cosco, Inc., 250

F.3d 758 (Fed. Cir. 2000) (per curiam).

Defendants then filed a bill of costs on June 29, 2000,

seeking $7,194.59 in court reporter fees for deposition

transcripts; $2,781.25 for exemplification and copies of

Appendix A

papers; and $14,155.78 for exhibits.*? On February 7, 2001,

the Clerk of the Court issued a Clerk’s Memorandum On

Costs, awarding defendants $6,479.44 for court reporter fees

but disallowing the remaining costs because she could not

determine whether they were necessary to the disposition of

the case. Both Kohus and defendants moved for review of

the Clerk’s Memorandum.’

On April 12, 2001, the district court issued a

Memorandum and Order reducing the award for deposition

costs to $975.90 and awarding $12,950.00 for the video

exhibit. Kohus v. Cosco, Inc., No. C-1-97-968 (S.D. Ohio

Apr. 12, 2001). As an initial matter, the district court rejected

Kohus’ argument that fees were inappropriate because the

case was close and difficult, explaining that “[t]he Court

granted Defendants’ motion for summary judgment on the

first basis asserted by Defendants, the construction of the

claim language. The Court was not required to examine the

evidence. ... The disposition was easily achieved by the

Court, [sic] Defendants are entitled to recover costs to the

extent they are otherwise appropriate.” /d. at p. 3.

With respect to the award of $12,950.00, the court noted

that “necessity is the essential criterion” for determining

whether defendants are entitled to their costs for copying

2. According to an affidavit executed by defendants’ counsel,

defendants’ request for $14,155.78 was comprised of $12,950.00 for

the video exhibit, $553.70 for drawings, $88.23 for photographs,

and $563.85 for photocopies of exhibits.

3. Defendants’ motion did not seek review of the Clerk’s denial

of costs for the drawings, photographs and photocopies of exhibits.

Lee Po MS AI ARES (EEE EONS

Appendix A

and exhibits, and that defendants “have attempted to

demonstrate necessity only with respect to a video exhibit

depicting the accused device.” /d. at p. 5. The court then

stated:

Defendants relied upon that exhibit in making

their motion for summary judgment, and the Court

would have considered it in ruling on the motion

for summary judgment had it not disposed of this

action on the basis of claim language construction.

The Court concludes that the exhibit was

necessary and that the costs related to the exhibit,

which equal $12,950.00, should be awarded.

Id. Kohus appeals the award of $12,950.00 for the

video exhibit. We have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(1).

DISCUSSION

We apply the law of the regional circuit in reviewing

purely procedural issues not pertaining to patent law.

See, e.g., Electro Scientific Indus., Inc. v. Gen. Scanning Inc.,

247 F.3d 1341, 1349, 58 USPQ2d 1498, 1503 (Fed. Cir.

2001). Pursuant to Sixth Circuit precedent, we review a costs

award for an abuse of discretion. White & White v. Am. Hosp.

Supply Corp., 786 F.2d 728, 730 (6th Cir. 1985); Manildra

Milling Corp. v. Ogilvie Mills, Inc., 76 F.3d 1178, 1184,

37 USPQ2d 1707, 1712 (Fed. Cir. 1996). We review de novo

issues of statutory interpretation. Walker v. Bain, 257 F.3d

660, 666 (6th Cir. 2001).

Appendix A

A district court’s authority to award costs derives from

Federal Rule of Civil Procedure 54(d), which states: “Except

when express provision therefor is made either in a statute

of the United States or in these rules, costs other than

attorneys’ fees shall be allowed as of course to the prevailing

party unless the court otherwise directs... .” Rule 54(d)

creates “a presumption in favor of awarding costs, but allows

denial of costs at the discretion of the trial court.” White &

White, 786 F.2d at 729.

“Costs” are defined by statute as follows:

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 of the court reporter

for all or any part of the stenographic transcript

necessarily obtained for use in the case; (3) Fees

and disbursements for printing and witnesses;

(4) Fees for exemplification and copies of papers

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 (1994). Section 1920 does not explicitly

authorize an award of costs for an animated video exhibit.

However, subsection (4) above allows a district court to

award costs for exemplification and copies of papers

necessarily obtained for use in the case. The parties dispute

VATE ALR SAG

ee.

Appendix A

whether a video animation is encompassed by subsection (4),

an issue that the Sixth Circuit has not yet addressed.*

Kohus argues that absent any authority for awarding costs

for the video, the district court abused its discretion by

making the award. Relying on Crawford Fitting Co. v. J.T.

Gibbons, Inc., 482 U.S. 437 (1987), Kohus contends that a

district court cannot award costs beyond those specified by

section 1920. Kohus urges us to follow the Eleventh Circuit’s

| decision in Arcadian Fertilizer, L.P. v. MPW Industrial

Services, Inc., denying cosis for a computer animation based

on the Crawford Fitting case and the Black’s Law Dictionary

definition of exemplification as “an official transcript of a

public record, authenticated as a true copy for use as

evidence.” 249 F.3d 1293 (11th Cir. 2001); Black's Law

Dictionary 593 (7th ed. 1999). Kohus also relies on Swan

Carburetor Co. v. Chrysler Corp., wherein the Sixth Circuit

awarded costs for charts and drawings, but not for physical

models. 149 F.2d 476 (6th Cir. 1945). Kohus equates the

physical models in Swan to the video exhibit in this case,

characterizing the exhibit as a video model. Finally, Kohus

contends that even if costs could be awarded for video

models, the video in this case was not “necessarily obtained

for use in the case” because the same information could have

been conveyed through the patent’s figures, samples of the

accused playyards, and expert testimony.

4. When a circuit has not addressed an issue, we must

“determine how that circuit would likely resolve the issue;

the precedent of other circuits is instructive in that consideration.”

In re Indep. Serv. Orgs. Antitrust Litig., 203 F.3d 1322, 1328,

53 USPQ2d 1852, 1857 (Fed. Cir. 2000).

Appendix A

In response, the defendants argue that exemplification

should be broadly construed to effectively include all

kinds of demonstrative evidence, in accordance with the

Seventh Circuit’s expansive application of section 1920.

See, e.g., EEOC v. Kenosha Unified Sch. Dist. No. 1, 620

F.2d 1220, 1227 (7th Cir. 1980) (awarding costs for a

Statistical analysis); Cefalu v. Vill. of Elk Grove, 211 F.3d

416, 427 (7th Cir. 2000) (awarding costs for audio-visual

equipment used to display evidence to the jury, based in part

on the Webster’s Dictionary definition of exemplification as

the act of illustration by example). Defendants also argue

that absent any authority prohibiting an award of costs, the

district court could not have abused its discretion. Finally,

defendants contend that the video was necessary to the case

because it was the only way to explain the operation of the

playpen described by the ’280 patent, given that Kohus never

built an embodiment described by the patent.°

Section 1920 “embodies Congress’ considered choice as

to the kinds of expenses that a federal court may tax as costs

against the losing party.” Crawford Fitting, 482 U.S. at 440.

5. We do not need to reach the issue of necessity in this case.

However, we note the statement in Radol v. Thomas that the district

court “disallows costs for anything under this category [section

1920(4)] except for documents which were used and admitied into

evidence.” 113 F.R.D. 172, 175 (S.D. Ohio 1986) (emphasis added).

The Seventh Circuit cases relied on by defendants dealt with a

statistical analysis and equipment actually used at trial — unlike the

video in this case, which was not considered by the court in reaching

summary judgment.

Appendix A

In Crawford Fitting, the Court addressed the particular issue

of whether a district court could award expert witness fees

under 28 U.S.C.:§ 1920(3) in excess of those specified by

28 U.S.C. § 1821(b).° The Court concluded that

while Rule 54(d) and section 1920(3) gave the district court

disctetion to award expert witness fees, section 1821 limited

the amount that could be awarded. /d. at 441 “[W]hen

Congress meant to set a limit on fees, it knew how to do

.. The discretion granted by Rule 54(d) is not a power

to evade this specific congressional command. Rather, it is

solely a power to decline to tax, as costs, the items

enumerated in § 1920.” Jd. at 442. The Court held that “absent

explicit statutory or contractual authorization for the taxation

of the expenses of a litigant’s witness as costs, federal courts

are bound by the limitations set out in 28 U.S.C. § 1821 and

§ 1920.” Id. at 445. Thus, the Court found that the trial judge

did not have the discretion to award expert witness fees,

such as the expert’s waited rate, beyond those specified by

section 1821. :

In accordance with Crawford Fitting, the district court

in this case was limited to awarding those costs specified by

28 U.S.C. § 1920. The only provision of section 1920 that

could arguably apply to defendants’ video exhibit is

subsection (4) regarding “exemplification and copies of

papers.” A video obviously is not a copy of paper. Nor is it

an exemplification when that term is given its legal definition

of “[a]n official transcript of a public record, authenticated

as a true copy for use as evidence.” Black's Law Dictionary

6. Section 1821 currently permits a $40 per day witness fee for

attendance at trial, plus certain travel and subsistence fees.

10a

Appendix A

593 (7th ed. 1999). We reject defendants’ contention that

“exemplification” should be construed broadly to encompass

the video exhibit in this case. No Sixth Circuit precedent

supports such an expansive interpretation of the term. In

addition, Congress did not use the broad phrase

“demonstrative evidence” in section 1920, and we are clearly

bound not to exceed the limits of this statute. See Crawford

Fitting, 482 U.S. at 445. Thus, because the video exhibit in

this case is not an exemplification, the district court had no

statutory authority to award costs for the video. The district

court erred by taxing the cost of the video to Kohus.

While the Sixth Circuit has not had occasion to consider

whether a video model or animation constitutes an

exemplification under section 1920, that court has considered

drawings, charts and physical models, all of which share the

common purpose of being demonstrative evidence. See Swan

Carburetor Co. v. Chrysler Corp., 149 F.2d 476 (6th Cir.

1945).

In Swan, the district court awarded costs for drawings,

charts and physical models. The Sixth Circuit affirmed the

award with respect to drawings and charts because “[c]osts

have been allowed in patent cases for the preparation of

drawings and charts . . . upon the theory that these costs are

analogous to those covered by the statute.” Jd. at 477.’

7. In this case, the court is referring to 28 U.S.C. § 830, not

section 1920. Section 830, a predecessor to section 1920, provided

for “lawful fees for exemplifications and copies of papers necessarily

obtained for use on trials in cases where by law costs are recoverable

in favor of the prevailing party.” Swan, 149 F.2d at 477.

PEPE SSRENG DEIR II ESET DEOMI YW AMI aon

ae CR oe og a Laat a oad

lla

Appendix A

Relying on cases from the Second and Ninth Circuits, the

Sixth Circuit held “that the allowance of the cost of the charts

and drawings was not improper.” Jd. With respect to the

models, the district court reasoned that these should not be

treated any differently than the charts and drawings. The Sixth

Circuit disagreed, however, stating that it was error “to allow

costs to be taxed for the expense of manufacturing models

and machines. These costs are not authorized by statute, and

are not permitted in any adjudicated case.” Jd. at 478.

Kohus argues that the video exhibit is a video model

that should be treated like the physical models in the Swan

case, whereas defendants argue that the video is an animation

that should be treated like the drawings and charts.* Notably,

Swan was decided before the Crawford Fitting case, so the

Sixth Circuit did not have the benefit of the Supreme Court’s

guidance that costs are restricted to only those specified by

statute. Nevertheless, to the extent Swan is precedential

authority, it provides an additional basis for reversing the

district court’s award because the video exhibit is no different

than the physical models at issue in Swan.

The defendants in Swan manufactured models of prior

art manifolds for the purpose of showing how the accused

manifolds were merely practicing the prior art. The Sixth

8. Defendants initially requested costs for the video model as

well as for drawings and photographs, all of which were denied by

the Clerk. Defendants then abandoned their request for costs for the

drawings and photographs while pursuing costs for the video. In

addition, defendants’ form bill of costs listed the video in an “other

costs” category — not in the category of “exemplification and copies

of papers necessarily obtained for use in the case.”

12a

Appendix A

Circuit noted that “in most patent controversies involving

mechanical structures, physical models are of great assistance

to the court, but after all, they are ‘essentially explanatory

and argumentative and in that respect merely aids to the

argument of counsel and the explanations of expert

witnesses.’ ” Swan, 149 F.2d at 478. The video exhibit in

this case serves this same purpose. Defendants relied on the

video “to clearly focus the court’s attention on what Cosco

viewed as the critical distinctions between the language of

the claims and the accused playyards.” According to

defendants, the video exhibit was created because the ’280

playpen was never reduced to practice and “(u]sing animation

permitted Cosco to produce that [playpen] without having

to create a physical model.” Notably, defendants’ own expert

repeatedly calls the exhibit a “video model” in the report

submitted to the court with defendants’ motion for summary

judgment. Thus, because the video is a substitute for a

physical model and was created as an aid to the argument of

counsel and the explanations of defendants’ expert witness,

Swan indicates that the Sixth Circuit would not permit an

award of costs for the video.

While we are not bound in this case by the rulings of

circuit courts other than the Sixth Circuit, we note that our

conclusion is consistent with the Eleventh Circuit’s reasoned

decision that a computer animation is not an exemplification.

See Arcadian Fertilizer, 249 F.3d at 1297. The Eleventh

Circuit, like the Sixth Circuit in Swan, distinguished between

paper exhibits and models by awarding costs for color

photographs and oversized documents, while denying costs

for the computer animation. The Eleventh Circuit interpreted

“*copies of paper’ to mean reproductions involving paper

13a

Appendix A

in its various forms, and conclude[d] that because oversize

documents and color photographs are capable of this

characterization, taxation of these costs was not error.”

Id. at 1296.

CONCLUSION

For the foregoing reasons, the decision of the district

court awarding defendants costs of $12,950.00 for the video

exhibit is REVERSED.

l4a

Appendix A

DYK, Circuit Judge, dissenting.

I quite agree with the majority that the statutory provision

allowing “[f]jees for exemplification and copies of papers

necessarily obtained for use in the case,” 28 U.S.C. § 1920(4)

(2000), should not be construed to allow recovery of the costs

of documents that do not fall within the traditional definition

of exemplification, that is, “[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). I disagree,

however, that a “video obviously is not a copy of paper.”

If we were dealing with the costs of copying or securing

official authentication of a video, I think those costs would

be within the statute. There must be some room to construe

language carried over from an 1853 statute to include after-

invented technology.

This case, however, does not involve copying or

authentication costs, but the costs of preparing the original

video. Those costs do not, I think, fall within the statute.

My problem is that we are obligated to follow Sixth Circuit

authority, and it is clear to me that existing Sixth Circuit

authority would allow the costs of preparing this video.

The sole authority in the Sixth Circuit is Swan

Carburetor Co. v. Chrysler Corp., 149 F.2d 476 (6th Cir.

1945). As the majority recognizes, that case allowed the costs

of “charts and drawings,” while holding that the costs of a

physical model were not authorized by the statute and could

not be recovered under the equity rule of Sprague v. Ticonic

15a

Appendix A

National Bank, 307 U.S. 161 (1939). The majority here finds

that the video is like a model “because the video is a substitute

for a physical model and was created as an aid to the argument

of counsel and the explanations of defendants’ expert witness,

{and therefore] Swan indicates that the Sixth Circuit would

not permit an award of costs for the video.” Ante at 11.

In order to understand Swan, we must look to the Second

and Ninth Circuit cases on which it relies. See generally

Oregon v. Kennedy, 456 U.S. 667, 671 (1982) (examining

the cases cited in the Court of Appeals’ opinion in order to

understand the basis for its decision). In the Ninth Circuit

case, Reinharts, Inc. v. Caterpillar Tractor Co., 99 F.2d 648,

649 (9th Cir. 1938), the court allowed costs for “elaborate

illustrative charts” relying on the same Second Circuit case

on which Swan itself relied, Appliance Investment Co. v.

Western Electric Co., 61 F.2d 752 (2d Cir. 1932).

In Appliance, the Second Circuit held:

In the bill of costs allowed, an item of $1,080.23

was included for expense incurred in providing

simplified drawings for use in making more clear

at the trial the drawings of patents having a bearing

on the issues.... This expense is in the same

category with that for motion pictures and

photographs of small cutting tools allowed in

Victor Talking Machine Co. v. Starr Piano Co.,

(C.C.A.) 281 F. 60, 66 [2d Cir. 1922], and fairly

l6a

Appendix A

falls within the statute under fees for ‘copies of

papers necessarily obtained for use on [sic] trials.”°

Id. at 756-57 (emphases added). The video here is

indistinguishable from the costs allowed in Appliance:

(1) it was designed to “mak[e] more clear at the trial the

drawings of [the] patents;” (2) it was “in the same category

with ... motion pictures and photographs;” and (3) it was

not a physical model. I think it unlikely that the Sixth Circuit

would distinguish between motion pictures and videos.

Thus, the Sixth Circuit’s decision in Swan would allow the

costs of the video, and so should we.

9. Former provisions of the statute, codified at 28 U.S.C. § 830

(1926), required that the exemplifications and copies of paper were

“necessarily obtained for use on [sic] trials” instead of the present

language which requires that they were “necessarily obtained for use

in the case.” 28 U.S.C. § 1920(4) (2000).

17a

APPENDIX B — MEMORANDUM AND ORDER OF

THE UNITED STATES DISTRICT COURT FOR

THE SOUTHERN DISTRICT OF OHIO, WESTERN

DIVISION DATED AND FILED APRIL 12, 2001

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION

Case No. C-1-97-968

Louis M. Kohus, ~

Plaintiff,

VS.

Cosco, Inc., et al.,

Defendants.

Memorandum and Order

On August 17, 1999, this Court granted Defendants’

motion for summary judgment in this patent infringement

action and entered judgment for Defendants. The Court ruled

on the basis of the construction of the language of the claims

in issue and did not resort to a review of the evidence

submitted by the parties, although Defendants had also sought

summary judgment on the basis of the evidence. After the

United States Court of Appeals for the Federal Circuit

affirmed this Court’s judgment, Defendants submitted a bill

18a

Appendix B

of costs (Doc. 132). They sought $6,479.44! in court reporter

costs for deposition transcripts; $2,781,25 for copies of court

filings and related materials; and $14,155.78 for exhibits.

Plaintiff objected to Defendants’ bill of costs on various

grounds. First, Plaintiff argued that an award of costs is

inappropriate in this case because the case was “close and

difficult.” He also argued that costs for deposition transcripts,

multiple copies of materials filed with the Court, and exhibits

ought not be awarded because Defendants had not sought

prior court approval for the filing of those materiais and they

were not necessary for appeal. He argued that deposition

transcript costs ought not be awarded because Defendants

had not filed the deposition transcripts with the Court and

the deposition testimony was not necessary to the disposition

of the action.

On February 7, 2001, the Clerk issued a memorandum

on costs (Doc. 136). She awarded Defendants $6,479.44 for

court reporter expenses and disallowed the remaining costs

sought by Defendants on the sole ground that she could not

determine whether the copies and exhibits that generated

those costs were necessary to the disposition of the action.

Both Plaintiff and Defendants timely moved for review of

the Clerk’s memorandum.

Plaintiff contends that the Clerk should not have awarded

Defendants costs related to court reporter services because

the case was “close and difficult” and because Defendants

1. Defendants originally requested $7,194.59 in court reporter

costs. After Plaintiff objected to that amount, Defendants agreed that

the proper amount was $6,479.44.

19a

Appendix B

did not file the deposition transcripts with the Court and the

depositions were not necessary to the disposition of the

action. Defendants contend that the Clerk should not have

disallowed the costs for copies and exhibits because those

costs were reasonably incurred in the successful defense of

the action.

Plaintiff’s motion for review (Doc. 138) is not well-

taken. Plaintiff correctly argues that the Court is not required

to award costs when an action is “close and difficult.” White

& White, Inc. v. American Hospital Supply Corp., 786 F.2d

728, 730 (6" Cir. 1986). In any event, the award of costs to

the prevailing party is within the discretion of the Court.

See id.

The Court is not persuaded that this action was “close

and difficult.” The Court granted Defendants’ motion for

summary judgment on the first basis asserted by Defendants,

the construction of the claim language. The Court was not

required to examine the evidence. The Court concluded that

the claim language was ambiguous, a conclusion concerning

which reasonable minds could not differ. The ambiguity was

resolved in Defendants’ favor as a matter of law.

The disposition was easily achieved by the Court, Defendants

are entitled to recover costs to the extent that they are

otherwise appropriate.

Plaintiff’s contention that the Court should not permit

Defendants to recover court reporter costs because they did

not file the deposition transcripts with the Court is fallacious.

The transcripts were filed by one party or another. The Court

20a

Appendix B

does not require a party to file a transcript that has already

been filed by another party before the first party may recover

the costs associated with the transcript.

Plaintiff’s contention that the Court should deny court

reporter costs because it did not rely on the transcripts in

awarding judgment to Defendants is also unfounded. The

Court was not obliged to consider the evidence submitted by

the parties because the action was resolved on the basis of

the construction of the claim language. Defendants relied on

two of the transcripts in bringing their motion for summary

judgment, however, and the Court would have considered

that evidence had the Court not resolved the issue of claim

language construction in Defendants’ favor. Defendants were

required to assert all possible bases for summary judgment

at one time because the Court’s scheduling orders do not

permit successive motions for summary judgment.

Accordingly, the Court concludes that Defendants are entitled

to recover the court reporter costs that were reasonably

incurred and necessary to the defense of this action. Plaintiff’s

motion for review (Doc. 138) is, therefore, DENIED, in part.

As the Court has observed, however, Defendants relied

on only two of the deposition transcripts, those for witnesses

Patrick G Burns and Alan T. McDonald, in making their

motion for summary judgment. While those two transcripts

were necessary to the motion and the costs associated

therewith are included in a proper award of costs, Defendants

have not demonstrated that the other transcripts were

necessary to the filing of the motion for summary judgment.

The Court cannot determine whether they would have been

necessary to the defense at trial. Accordingly, Defendants

2la

Appendix B

have not persuaded the Court that they are entitled to recover

their costs related to those deposition transcripts.

Accordingly, Plaintiff’s motion for review (Doc. 138) is

GRANTED, in part, and the award of costs for court reporter

services is reduced to the $975.90 generated by the Burns

and McDonald depositions.

Defendants contend that the Clerk should have awarded

them their costs related to copies of filings made with the

Court and exhibits. As the parties have observed, the

Guidelines applicable to costs in this District provide, with

respect to copies and exhibits, that necessity is the essential

criterion. While Defendants recognize that standard, they

have attempted to demonstrate necessity only with respect

to a video exhibit depicting the accused device. Defendants

relied upon that exhibit in making their motion for summary

judgment, and the Court would have considered it in ruling

on the motion for summary judgment had it not disposed of

this action on the basis of claim language construction.

The Court concludes that the exhibit was necessary and that

the costs related to the exhibit, which equal $12,950.00,

should be awarded. For that reason, Defendants’ motion for

review (Doc. 137) is GRANTED, in part, and DENIED, in

part. Plaintiff must pay Defendants costs in the total amount

of $13,925.90.

IT IS SO ORDERED.

s/ Sandra S. Beckwith

Sandra S. Beckwith

United States District Judge

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.