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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 2002
- **Citation:** 537 U.S. 1044

## Text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386010_1341%3A2. Public record. Not legal advice.