Opposition Brief — Dorel Juvenile Group, Inc. v. Kohus

No. 01-1831

IN THE

Supreme Court of the United States

DOREL JUVENILE GROUP, INC.,

Petitioner,

v.

LOUIS M. KOHUS,

Respondent.

On PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES CourRT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF IN OPPOSITION

RAYMOND J. PIKNA

Counsel of Record

GLENN V. WHITAKER

Eric W. RICHARDSON

Vorys, SATER, SEYMOUR

AND PEASE LLP

Attorneys for Respondent

Suite 2100, Atrium Two

221 East Fourth Street

Cincinnati, Ohio 45201

(513) 723-4000

176962 ce

COUNSEL PRESS

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

TABLE OF CONTENTS

Table of Cited Authorities ...................25.

Clarification of Petitioner’s Statement of the Case ...

A.

The record establishes that the animated

video model was not taxable under any

a

1. The animated video was prepared by

Cosco’s expert as part of that expert’s

report as a video “model” of the accused

MN Sk ok 8 ee ao we

2. The animated video model was never

relied upon or referred to by the District

Court, was never presented for taxation

as an “exemplification” by Defendants

on their bill of costs, and was not awarded

as “exemplification fees” by the District

Ras veces aeea PE REAR HAG A ROCESS

The Federal Circuit noted that the animated

video model was not taxable because (1) there

is no basis for construing “fees for

exemplification” so broadly as to include

the computer-animated video models and

(2) even if demonstrative evidence can

be broadly taxed as costs, models are not

sufficiently analogous to the categories of

Ere rer rere eer ror rT Tree

il

Contents

Reasons for Denying the Petition ...............

A. The Federal Circuit ’s decision comports with

Crawford Fitting and 28 U.S.C. § 1920 and

is not a proper case for this Court’s review

because any decision by this Court addressing

the issue presented by Cosco will be dicta in

light of the numerous, alternative bases for

oMTMMANES. «os ii eeekn eee wer eeaes

1. The Federal Circuit’s decision is in

accord with Crawford Fitting and

28 UGA. © We es a a ences

2. This case is not suitable for this Court’s

review because the appellate court

decision must be affirmed on any of

numerous, alternative bases and, thus,

any decision by this Court on the issue

framed by Cosco will be dicta. .......

B. This case does not implicate any split among

the circuits for this Court’s resolution.

Comeiuaiem ...sccanaen eee

12

15

20

lil

TABLE OF CITED AUTHORITIES

Page

Cases:

Appliance Investment Co. v. Western Electric Co.,

be wer le |e Ly | 16

Arcadian Fertilizer, L.P. v. MPW Indus. Services,

Inc., 249 F.3d 1293 (11th Cir. 2001) .......... 15,17

Cefalu v. Village of Elk Grove, 211 F.3d 416 (7th Cir.

eee Gb kg es awed he keedeenasese 17

Copper Liquor, Inc. v. Adolph Coors Co., 684 F.2d

SUED oc va nensssebiuebedusess 14

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

i ree Los 6s ese eee Wb n ke e's passim

Denny v. Westfield State Col., 880 F.2d 1465 (1st Cir.

TES tae PEN heads 4 ek eka ose 6-0 045 4% 17

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

Airport, 687 F.2d 626 (2d Cir. 1982) .......... 16

International Woodworkers of America, AFL-CIO

and its Local No. 5-376 v. Champion Intern. Corp.,

790 F.2d 1174 (Sth Cir. 1986) ............... 14

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

428 F.2d 1381 (Sth Cir. 1970) ......... 15-16, 16, 18

iv

Cited Authorities

Page

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

Fog, 2 En erry re 16

Mikel v. Kerr, 499 F.2d 1178 (10th Cir. 1974) .... 16

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

gg. fe 8 Perr per ere errr 15, 16, 18

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

PES 5 0a aa alee ed Uk kana ee ene 17

Studiengesellschaft Kohle mbH v. Eastman Kodak

Co., TES B.A 126 CO Oe, FSGD) onc cccncdcns 16

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

SE FUMED 6 a2 5000 sence eneneen 7, 11, 15, 18

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

CR FE ss ceed caeaseseeetecs conse 16

Townsend v. Holman Consulting Corp., 929 F.2d

Ee COGN SOE 4A b Ca dwinciev ss bavka ewes 17

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

CE ee NUD Suk asa bhaseannasedens 16

Vv

Cited Authorities

Page

Statutes:

yi Tih come Bs wewwwerrrrr re ree 9

28 U.S.C. § 1SZ1QD) once cect esescwsnsenens 9, 13

y FOR Som BL Pppwewrerrrrr rrr res ssc passim

yy: Hie Rom By? «) wwererras veer ry 8,9

28 U.S.C. § 1920(4) 20... cece ssccncccccees passim

Rule:

Fed. R. Civ. F. SOGQ) occ cccnscnssctavscnuanes 9

Other Authority:

Black’s Law Dictionary 593 (7th ed. 1999) ....... 10

|

CLARIFICATION OF PETITIONER’S

STATEMENT OF THE CASE

Petitioner Dorel Juvenile Group, Inc. (formerly “Cosco,

Inc.” in the lower courts and hereinafter referred to as “Cosco”’)

cloaks its dissatisfaction with an adverse appellate decision

— in a costs dispute involving a total of $12,950 — by

manufacturing an issue for this Court’s review. This Court has

already held that the costs permissible to be taxed by a prevailing

party are those specifically enumerated in 28 U.S.C. § 1920

and has directed that the lower courts interpret and apply those

categories in accordance with the explicit statutory language.

See Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437,

445 (1987).

Reaching for an issue with which to capture this

Court’s attention, Cosco asserts that this Court ought to

provide a comprehensive definition of the term “fees for

exemplification” for imposition upon the various federal circuits.

Cosco obscures the fact, however, that it never sought to tax its

animated video — and the District Court did not award costs

for the video — as a “fee[] for exemplification.”

Further, Cosco ignores the fact that both it and its expert

witness (who presented the animation as part of his expert report)

characterized the animation as a “video model” of the allegedly

infringing device — even though the federal circuits have

consistently held that the cost of models is not taxable under

28 U.S.C. § 1920 (or is not taxable without pretrial

authorization). Additionally, the animated video was prepared

and presented solely as ar exhibit to its expert’s report. Once

again, both this Court and the circuit courts have held that a

prevailing party may not tax the costs of an expert’s report or

time except to the extent expressly permitted by statute.

See Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437,

445 (1987).

2

Faced with a record supporting the appellate court’s

denial of costs on a multitude of bases, Cosco is left to coax

a single issue into the appearance of a critical point and to

persuade this Court to ignore the overwhelming number of

other bases on which the appellate court’s decision is

justified. Moreover, even the basis offered by Cosco is

without merit. The so-called schism identified by Cosco

applies to a narrow issue considered by a single Eleventh

Circuit case and a single Seventh Circuit case. All of the

other cases referenced by Cosco in its brief were decided

before this Court’s decisions in Crawford Fitting, and still

adhered to the now-discredited belief that a district court, in

exercise of its general equitable powers, could award costs

beyond those specifically enumerated by statute. Accordingly,

the allegedly broad “split among the circuits” asserted by

Cosco simply does not exist.

Further, the disagreement between the cited Eleventh and

Seventh circuit cases is not whether demonstrative evidence

can be taxed at all, but simply how comparable that evidence

must be to the enumerated categories in section 1920 to be

taxed. This rather narrow issue has not been addressed by

the other circuit courts in the fifteen years since Crawford

Fitting, thus demonstrating the less-than-critical importance

of the issue to litigants and the lower courts.

In short, there is no issue of general import for this

Court’s consideration, no “split among the circuits” for this

Court’s resolution and no reversible error for this Court’s

correction. Respondent Louis M. Kohus respectfully submits

that the petition should be denied.

3

A. The record establishes that the animated video model

was not taxable under any circumstances.

1. The animated video was prepared by Cosco’s

expert as part of that expert’s report as a video

“model” of the accused device.

Respondent Kohus sued Cosco, Inc., Toys R Us, Inc.

and R&R Resale, Inc. (“Defendants”) for infringement of

United States Patent No. 4,688,280 (“the ’280 Patent”) for

making, importing, and selling certain lines of children’s

playpens (“playyards”). See JA at A49 and A106-A107.

Pursuant to the District Court’s Calendar Order, the

parties served their expert reports on February 9, 1999.

See JA at A21, A184, A241, A387, A404. On February 10,

1999, Defendants filed the report of their engineering expert,

Dr. Alan McDonald. See JA at A404. Dr. McDonald’s report

consisted of a twenty-two page report with three exhibits

prepared by the expert, including an animated “video model”

depicting the folding and unfolding of the accused playyard.

See JA at A406, A428A.

On May 4, 1999, Defendants moved for summary

judgment of non-infringement. See JA at A430-A504.

In support of their motion, Defendants attached the expert

report of Dr. McDonald and the animated video model that

was submitted as part of that report. See JA at A430-A433,

A514-A540. ;

On June 22, 1999, Kohus opposed the motion for

summary judgment. See JA at A661, A668-A674. In addition

to noting numerous inaccuracies in the video model, Kohus

provided the District Court with, among other things,

4

drawings of the patented and accused playyards and actual

samples of the $79 playyards at issue. See JA at A792-A801,

A673, A673 n.3, A701 and A701 n.16.

2. The animated video model was never relied upon

or referred to by the District Court, was never

presented for taxation as an “exemplification” by

Defendants on their bill of costs, and was not

awarded as “exemplification fees” by the District

Court.

On August 17, 1999, the District Court adopted a narrow

interpretation of the ’280 Patent’s claim language and, based

on the parties’ uncontested descriptions of the accused

device, granted summary judgment in favor of Defendants.

See JA at A3314 and A3314 n.1. In its opinion, the District

Court never once cited to or relied on the animated video

model, the sample playyards offered by Kohus for the District

Court’s consideration or any other evidence presented for

the Court’s review. See JA at A3303-A3315. On September

14, 1999, Kohus appealed the District Court’s grant of

summary judgment and, on June 15, 2000, the Federal Circuit

affirmed. See JA at A3329.

On June 29, 2000, Defendants presented a bill of costs.

Specifically, Defendants submitted various costs for taxation

as “fees for exemplification and copies of paper” and

separately requested the taxation of their expert’s animated

video model and exhibits as “other costs.” See JA at A3384.

On February 7, 2001, the District Court Clerk of Courts

denied Defendants’ request for taxation of the animated video

model, noting that Defendants had not shown that any of the

“exhibit” costs (including the animated video model) or the

requested exemplification charges were necessary for the

preparation of this case. JA at A3382-A3383.

>

On April 12, 2001, the District Court affirmed the Clerk’s

denial of Defendants’ requested exemplification charges.

JA at A4-AS. The District Court, however, then reversed the

Clerk’s denial of costs for the $12,950 video model prepared

by Defendants’ expert, even though the District Court had

never considered the video model in resolving this case and

even though samples of the playyards at issue had been

offered for the District Court’s consideration. See JA at AS.

The District Court cited no precedent or authority for the

award of costs. See id.

On May 10, 2001, Kohus appealed the District Court’s

award of costs for the video model. Defendants did not appeal

the District Court’s denial of those costs which Defendants

had designated on their bill of costs as “exemplification

charges.”

B. The Federal Circuit noted that the animated video

model was not taxable because (1) there is no basis

for construing “fees for exemplification” so broadly

as to include the computer-animated video models ©

and (2) even if demonstrative evidence can be broadly

taxed as costs, models are not sufficiently analogous

to the categories of taxable costs.

On appeal, Kohus argued that the district court abused

its discretion in awarding costs for the animated video model.

Relying on Crawford Fitting Co. v. J.7. Gibbons, Inc., 482

U.S. 437 (1987), the Federal Circuit noted that the District

Court could not award costs beyond those specified by section

1920 and concluded that there was no statutory basis for the

taxation of the animated video model:

In accordance with Crawford Fitting, the district

court in this case was limited to awarding those

6

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 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.

Pet. at 9a-10a.

Continuing, the Federal Circuit noted that the Sixth

Circuit had not yet ruled on the issue of whether a video

model or computer animation could be taxed as costs.

Pet. at 10a. Nonetheless, the Federal Circuit noted that, even

if demonstrative evidence could be broadly taxed as

“exemplifications,” the animated videotape was not taxable

because it was — by Defendants’ own admission — a video

“model” of the accused device and, under Sixth Circuit law,

7

models are not taxable as costs. See Pet. at 10a-13a (citing

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

Cir. 1945)). Specifically, the Sixth Circuit has long held that

physical models are often used in patent cases as an aid to

the explanations of expert witnesses or the argument of

counsel, but that such models are not analogous to the

categories of costs allowed by statute and, thus, ought not be

taxed to the losing party. See Pet. at 10a-13a (citing Swan

Carburetor, 149 F.2d at 478). Noting that the video model

in this matter was comparable to the physical model at issue

in Swan Carburetor, the Federal Circuit observed that the

video model was not taxable for this additional reason.

See Pet. at 1la-13a.

Further, the dissenting opinion by Judge Dyk agreed with

the majority that the animated video model was not taxable

under Crawford Fitting or 28 U.S.C. § 1920. See Pet. at 14a-

15a. Nevertheless, Judge Dvk dissented because he believed

the Sixth Circuit’s Swan Curburetor decision would have

allowed the taxation of the video model. See Pet. at 14a-16a.

—_S si ell eS eer, snWm'___ vee SS ee Saf” -- __ -_' i e-__ ~~ —_—_-

8

REASONS FOR DENYING THE PETITION

Cosco’s petition should be denied because the Federal

Circuit’s decision comports with Crawford Fitting and

28 U.S.C. § 1920 and is supportable on any of numerous

alternative bases. Additionally, this case implicates no split

among the circuits for this Court’s resolution.

A. The Federal Circuit ’s decision comports with

Crawford Fitting and 28 U.S.C. § 1920 and is not a

proper case for this Court’s review because any

decision by this Court addressing the issue presented

by Cosco will be dicta in light of the numerous,

alternative bases for affirmance.

1. The Federal Circuit’s decision is in accord with

Crawford Fitting and 28 U.S.C. § 1920.

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

437, 445 (1987), this Court held that, absent explicit statutory

or contractual authorization, federal courts are bound by the

limitations set out in 28 U.S.C. § 1920 and possess no

discretion to award other categories of costs. See id. “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,” see id. at 440, and, “absent

explicit statutory or contractual authorization for the taxation

of the expenses. . . federal courts are bound by the limitations

set out in 28 U.S.C. § 1821 [regarding witness fees] and

§ 1920.” 482 U.S. at 445.

In Crawford Fitting, this 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

9

by 28 U.S.C. § 1821(b). The Court concluded that while Rule

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

to award expert witness fees, section 1821 limited the amount

that could be awarded. Jd. at 441. “[W]hen Congress meant

to set a limit on fees, it knew how to do so. . . . 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.”

Id. at 442. Noting that the district judge does not have

discretion to award costs not specifically authorized by

statute, the Court found that the trial judge did not have

the discretion to award expert witness fees, such as the

expert’s hourly rate, beyond those specified by section 1821.

Id. at 445.

In the present case, the Federal Circuit examined the

language of 28 U.S.C. § 1920 and this Court’s Crawford

Fitting decision and concluded that the District Court did

not have authority to award costs for the animated video

model. See Pet. at 8a-10a. The Federal Circuit noted that no

provision of 28 U.S.C. § 1920 expressly provided for the

taxation of such animated videos or demonstrative evidence,

nor had Cosco pointed to any provision authorizing the

taxation. Jd. Indeed, the Federal Circuit noted that Cosco

had presented certain copying costs on its bill of costs for

taxation as “exemplification charges” and separately

presented its animated video as miscellaneous “other” costs.

See id. at lla and llan.8.

Nonetheless, the Federal Circuit considered Cosco’s

belated suggestion that its video model was taxable under

section 1920(4) regarding “exemplification and copies

of papers.” Jd. at lla. The Federal Circuit noted that a

“video obviously is not a copy of paper ... [nJor is it an

exemplification when that term is given its legal definition

10

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

as a true copy for use as evidence.’” See id. at 9a-10a (quoting

Black’s Law Dictionary 593 (7th ed. 1999)). Both the

majority and dissenting opinions concurred on this point.

See Pet. at 9a-10a and 14a (Dyk, J., dissenting) (“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.”).

Further, the Federal Circuit concluded that section 1920

could not be read so broadly as to include every permutation

of demonstrative evidence, including the computer-animated

video model. Citing Crawford Fitting, the Federal Circuit

noted that Congress could have provided in section 1920 for

the taxation of “demonstrative evidence” generally, but had

chosen not to do so. See Pet. at 10a (“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.”) (citing Crawford Fitting, 482 U.S. at 445).

In accordance with Crawford Fitting, the Federal Circuit thus

concluded that the district court lacked discretion to broaden

the scope of recoverable costs and reversed the District

Court’s decision. See Pet. at 9a-10a.

Lastly, the Federal Circuit noted yet an additional basis for

its decision. Even if the costs of preparing demonstrative

evidence could be broadly awarded as “fees for exemplification”

in accordance with Crawford Fitting, the Federal Circuit noted

that the Sixth Circuit (the circuit whose law was applicable to

this appeal) had expressly disapproved the taxation of models

— such as the Defendants’ video model — in patent cases since

1945. See Pet. at 10a-12a.

11

Contrary to Cosco’s assertions (see Pet. at 13-14), the

Federal Circuit did not define “exemplification” fees on the

one hand and then go “beyond the scope of its definition”

on the other. See Pet. at 14. In fact, the Federal Circuit

first held that “fees for exemplification” did not include the

animated video model in this case and noted that Congress

had declined to use the broad phrase “demonstrative

evidence” in identifying categories of recoverable costs.

See Pet. at 10a-12a (citing Swan Carburetor, 149 F.2d at 477-

78). The majority then noted that, even if demenstrative

evidence were broadly taxable as “exemplification[s],” the

Sixth Circuit’s opinion in the 1945 case of Swan Carburetor

made it clear that the Sixth Circuit did not consider model

costs sufficiently analogous to the statutory language

awarding fees for “exemplifications.” See id. at lla

(“[T]o 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 [non-

taxable] physical models at issue in Swan.”) (emphasis

added).'

1. The dissenting opinion by Judge Dyk rests on a fundamental

error. The majority opinion concludes (correctly and consistently)

that the animated video model is taxable neither under 28 U.S.C.

§ 1920 and Crawford Fitting, nor under the Sixth Circuit’s decision

in Swan Carburetor. See Pet. at 14a (Dyk, J., dissenting).

Judge Dyk, however, concludes that the video model is not

taxable under 28 U.S.C. § 1920 or Crawford Fitting, but then asserts

that the video model is somehow rendered taxable by the

Sixth Circuit’s 1945 decision in Swan Carburetor. See Pet. at 15a-

16 (Dyk, J., dissenting). Obviously, if the animated video model is

not taxable under 28 U.S.C. § 1920 (the only statutory basis for its

taxation), the Sixth Circuit’s decision in Swan Carburetor cannot

broaden the scope of recoverable costs to include the animated video

(Cont'd)

12

The Federal Circuit followed this Court’s analysis in

Crawford Fitting, examined the statutory language and

properly concluded that the District Court lacked authority

to tax the costs of the animated video model to Kohus.

As the Federal Circuit concluded, and this Court directed in

Crawford Fitting, it is the province of Congress — and not

the courts — to establish the scope of costs which may be

taxed against a losing party. Where Congress has declined to

make certain costs taxable, those limitations must be

respected and adhered to by the district courts.

2. This case is not suitable for this Court’s review

because the appellate court decision must be

affirmed on any of numerous, alternative bases

and, thus, any decision by this Court on the issue

framed by Cosco will be dicta.

The present case is not suitable for this Court’s review

because of the numerous alternative bases upon which the

Federal Circuit’s decision must be affirmed. Even if this

Court accepted the case for review on the broad issues framed

by Cosco — (1) “[w]hat costs are recoverable as ‘[flees for

exemplification and copies of paper’” and (2) whether the

Federal Circuit erred in construing 28 U.S.C. § 1920(4) to

exclude computer-animated models — any decision by this

Court would be dicta because the Federal Circuit’s opinion

must be affirmed on any of numerous, alternative bases.

(Cont’d)

model. See Crawford Fitting, 482 U.S. at 445 (“[A]bsent explicit

statutory or contractual authorization for the taxation of the expenses

... federal courts are bound by the limitations set out in 28 U.S.C.

§ 1821 [regarding witness fees] and § 1920.”).

13

First, the petition should be denied because any decision

regarding the meaning of exemplification fees is dicta in this

matter; specifically, the Defendants never presented their

video model for taxation as an “exemplification” fee on their

bill of costs. See JA at A3384. Rather, as the Federal Circuit

correctly noted, Defendants presented a request for taxation

of certain costs as “exemplification” charges and separately

requested taxation of the video model as “other costs.”

See id. Further, the District Court itself did not award costs

for the animated video model as an “exemplification.”

See JA at AS.

Second, the petition should be denied because the Federal

Circuit’s decision must be affirmed on the alternative ground

that the animated video model was prepared and submitted

as part of Defendants’ expert report. In Crawford Fitting

Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 445 (1987), this

Court held that, absent explicit statutory or contractual

authorization, federal courts may not award expert fees

beyond the daily attendance fee and allowable travel and

subsistence expenses specified in 28 U.S.C. § 1821(b).

Because a district court may not tax the costs of preparing a

party’s expert report, or the exhibits to that report, the District

Court lacked authority to tax the costs of the Defendants’

animated video and the Federal Circuit correctly reversed

the award of costs. See id.

Third, the petition should be denied because the Federal

Circuit’s decision must also be affirmed on the basis that the

animated video model in this case was not necessarily

obtained for use in the case. As Kohus noted for the Federal

Circuit, the District Court’s award of $12,950 in costs for an

animated video depicting the folding and unfolding of the

$79 accused playyard — 164 times the cost of the actual

os

playyard which was also offered for the Court’s consideration

— was an abuse of discretion. See, e.g., Pet. at 8a n.5

(questioning whether Defendants could demonstrate necessity

in the present case); see also Copper Liquor, Inc. v.

Adolph Coors Co., 684 F.2d 1087, 1101 (Sth Cir. 1982)

(“[E]xpenses incurred extravagantly or unnecessarily should be

disallowed. .. .”), overruled on other grounds, International

Woodworkers of America, AFL-CIO and its Local No. 5-376 v.

Champion Intern. Corp., 790 F.2d 1174 (Sth Cir. 1986). Cosco’s

questions presented assume — improperly — that a showing of

necessity for the video model can be made.

Fourth, the petition should be denied because the position

urged by Cosco for this Court’s adoption has no application

to the present case. Specifically, Cosco asserts in its petition

that section 1920 “should be construed to allow recovery for

trial exhibits, in whatever form, if such exhibits are

necessarily obtained for use at trial.” See Pet. at 17. Cosco

omits to mention that the animated video model was never

prepared for, or used at, trial; rather, the animated video

model was prepared solely as an exhibit to Cosco’s expert

report, was never introduced into evidence and was never

cited to or relied upon by the District Court. See JA at A404,

A428A, and AS. In short, the position urged by Cosco has

no bearing on the present case or the circumstances in which

the video model was created. Accordingly, this Court’s

decision on Cosco’s questions presented will have no

application to the present case.

Because any decision that this Court might render as to

the issues presented would be irrelevant to this case’s ultimate

disposition, Kohus respectfully submits that this matter is

not appropriate for this Court’s review.

15

B. This case does not implicate any split among the

circuits for this Court’s resolution.

Contrary to Cosco’s assertions, this case implicates no

broad split among the circuits. Because there is no split for

this Court’s resolution, the present case is inappropriate for

resolution by this Court.

As an initial matter, the only case (other than the present

one) which deals with the taxability of computer animation

is the Eleventh Circuit’s decision in Arcadian Fertilizer, L.P.

v. MPW Indus. Services, Inc., 249 F.3d 1293, 1297 (11th Cir.

2001). In Arcadian Fertilizer, the Eleventh Circuit held —

just as the Federal Circuit did in this case — that computer

animation is not taxable under 28 U.S.C. § 1920(4) as a “fee

for exemplification or copies of paper.” See id. at 1296-97.

Similarly, Cosco identifies no other cases (let alone a

split in authority) as to whether an animated video — that

was prepared solely as an exhibit to an expert report; that

was never used at trial; that was never admitted into evidence;

and that was never cited to or relied upon by the district court

— can be taxed as fee for exemplification. See Pet. at 7-13.

Further, Cosco cites no split among the circuit courts as

to the taxation of costs for models. Specifically, the only

decisions cited by Cosco that deal with the taxation of models

uniformly hold that such models are not taxable without some

prior order or approval of the district court. See Swan

Carburetor Co. v. Chrysler Corp., 149 F.2d 476, 478 (6th

Cir. 1945) (physical models used in explaining a party’s

patent infringement position were not taxable as costs);

Reinharts, Inc. v. Caterpillar Tractor Co., 99 F.2d 648, 649-

50 (9th Cir. 1938) (models are not taxable); Johns-Manville

16

Corp. v. Cement Asbestos Prods. Co., 428 F.2d 1381, 1385

(Sth Cir. 1970) (models are not taxable without prior order

of the district court).

Additionally, Cosco fails to present a split among the

circuits after Crawford Fitting as to the scope of recoverable

costs under section 1920(4). Specifically, the Second, Fifth,

Ninth, and Tenth circuit decisions cited by Cosco in its

petition were either decided prior to this Court’s 1987

decision in Crawford Fitting — or fail to address the impact

of Crawford Fitting — and, thus, rely on the now-discredited

assumption that a district court possesses inherent authority

to award costs in addition to those specifically enumerated

by statute. See In re Air Crash Disaster at John F Kennedy

Int'l Airport, 687 F.2d 626, 631 (2d Cir. 1982); Appliance

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

1932); Studiengesellschaft Kohle mbH v. Eastman Kodak Co.,

713 F.2d 128, 132-33 (Sth Cir. 1983); Johns-Manville Corp.

v. Cement Asbestos Prods. Co., 428 F.2d 1381, 1385 (Sth

Cir. 1970); Reinharts, Inc. v. Caterpillar Tractor Co., 99 F.2d

648, 649-50 (9th Cir. 1938); Maxwell v. Hapag-Lloyd

Aktiengesellschaft, 862 F.2d 767, 770 (9th Cir. 1988)

(although decided after Crawford Fitting, the Ninth Circuit

paradoxically relies on decisions decided before Crawford

Fitting to define the scope of taxable costs); Mikel v. Kerr,

499 F.2d 1178, 1182-83 (10th Cir. 1974); Tilton v. Capital

Cities/ABC, Inc., 115 F.3d 1471, 1476 (10th Cir. 1997)

(decided after Crawford Fitting, but makes no mention of

Crawford Fitting); U.S. Indus., Inc. v. Touche Ross & Co.,

854 F.2d 1223, 1248 (10th Cir. 1998) (decided after Crawford

Fitting, but makes no mention of Crawford Fitting).

Similarly, many of the decisions cited by Cosco have

nothing whatsoever to do with section 1920(4), the taxation

17

of video models or the general taxation of demonstrative

evidence. See Denny v. Westfield State Col., 880 F.2d 1465, 1472

(1st Cir. 1989) (cited at page 9 of Cosco’s petition for the

unremarkable proposition that there is a distinction between

the preparation of trial exhibits and general intellectual

preparation for trial); Romero v. City of Pomona, 883 F.2d 1418,

1427-28 (9th Cir. 1989) (addressing the taxability of expert

witness fees), abrogation recognized by Townsend v. Holman

Consulting Corp., 929 F.2d 1358 (9th Cir. 1990).

Lastly, the only post-Crawford Fitting conflict which Cosco

can identify is the disagreement between the Eleventh

Circuit and the Seventh Circuit as to how broadly the term

“exemplification” can be interpreted. See Pet. at 7-8 (citing

Cefalu v. Village of Elk Grove, 211 F.3d 416, 427 (7th Cir. 2000))

and Pet. at 11-12 (citing Arcadian Fertilizer, L.P. v. MPW

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

Importantly, the issue considered by these courts is not —

as framed by Cosco (see, e.g., Pet. at 17-18) — whether

demonstrative evidence can ever be taxed under section 1920(4).

Rather, the issue considered by the Eleventh and Seventh

Circuits is, simply, how comparable the demonstrative evidence

must be to the specifically enumerated categories under section

1920 to be taxed. See, e.g., Arcadian Fertilizer, L.P. v. MPW

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

(denying costs for computer animation because computer

animation was not analogous to the “exemplifications and copies

of paper’ noted in section 1920(4), but approving award of costs

for other demonstrative evidence — such as oversized

documents and photographs — which were capable of such a

characterization). Tellingly, Cosco can identify only these two

circuit decisions in the fifteen years since Crawford Fitting

which have had occasion to address this issue.

18

Indeed, Cosco strains even to tie this narrow

disagreement to the present case. Specifically, because the

Federal Circuit provided two different bases for its decision,

the resolution of the alleged split identified by Cosco has

little or no impact upon the present case. Specifically, the

Federal Circuit held that the District Court’s award of costs

for the animated video model must be reversed because (1) a

video model is not taxable as an exemplification because

the word “exemplification” cannot be read so broadly as to

include all forms of demonstrative evidence and (2) even if

demonstrative evidence ought to be broadly taxed as

“exemplification[s],” models — such as the video model in

the present case — are still not sufficiently analogous to the

enumerated categories of awardable costs. See Pet. at 10a-

13a.

Thus, even if this Court decides that the word

“exemplification” in section 1920(4) can be read broadly to

include varieties of demonstrative evidence, all of the cases

cited by Cosco demonstrate that models — due to their cost

and their primary purpose as an aid to the arguments of

counsel and expert witnesses — ought nonetheless be

excluded from recoverable costs. See, e.g., Swan Carburetor

Co. v. Chrysler Corp., 149 F.2d 476, 478 (6th Cir. 1945)

(physical models used in explaining a party’s patent

infringement position were not taxable as costs because such

costly models are primarily an aid to the arguments of counsel

or the explanations of expert witnesses); Reinharts, Inc. v.

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

(models are not taxable as costs); Johns-Manville Corp. v.

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

1970) (models are not taxable as costs without prior order of

the district court).

19

Further, Kohus respectfully submits that the

issue presented by Cosco — the scope of the word

“exemplification” as used in section 1920(4) — is not

appropriate for this Court’s review because none of the other

circuit courts have had the opportunity to address the issue

since Crawford Fitting. Unless this Court wishes to provide

a comprehensive definition of each and every permutation

of “fees for exemplification and copies of paper” for use by

all federal courts — without the benefit of the other circuits’

reflection on and consideration of the issue — Kohus submits

that the issue is overly broad and premature for this Court’s

consideration.

In short, Cosco has identified no split among the circuit

courts that is relevant to the issues in the present case, that

would mandate a reversal of the present case or that merits

this Court’s resolution. Kohus respectfully submits that the

petition should be denied.

20

CONCLUSION

For all the foregoing reasons, the petition should be

denied.

Respectfully submitted,

RAYMOND J. PIKNA

Counsel of Record

GLENN V. WHITAKER

Eric W. RICHARDSON

Vorys, SATER, SEYMOUR

AND Pease LLP

Attorneys for Respondent

Suite 2100, Atrium Two

221 East Fourth Street

Cincinnati, Ohio 45201

(513) 723-4000