Brigham and Women's Hospital, Inc. v. Perrigo Company
395 F. Supp. 3d 168
| D. Mass. | 2019Background
- Plaintiffs (Brigham & Women's Hospital and Investors Bio‑Tech) originally won a jury verdict at an eight‑day trial on patent validity and willful infringement, but the court entered judgment for defendants (Perrigo) after granting JMOL under Rule 50(b); the Federal Circuit later affirmed.
- Defendants filed a Bill of Costs seeking $90,637.02; plaintiffs objected to all but $2,357 and raised an offset claim for expert fees.
- The District Court applies Rule 54(d) and 28 U.S.C. § 1920 for taxable costs, with district courts retaining discretion to shape an award.
- The contested cost categories included: pro hac vice fees; marshal fees; deposition, pretrial and trial transcript and video fees; copying and demonstrative design charges; and witness fees (attendance, travel, subsistence).
- The court disallowed pro hac vice fees and graphic designer fees for demonstratives; allowed agreed marshal fees, portions of transcript costs, printing costs, and limited witness travel/subsistence; and denied late attempts to recover expert deposition fees under Rule 26(b)(4)(E).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who is the prevailing party for costs | Case produced mixed results; costs should follow who "carried the day" at each stage | Defendants won final judgment and appeal; thus entitled to costs under Rule 54(d) | Defendants are prevailing party; entitled to costs (not a mixed‑results case) |
| Recoverability of pro hac vice admission fees | Pro hac vice expenses are not the plaintiffs' responsibility | Such fees are part of litigation costs and should be taxable | Denied; pro hac vice fees are not recoverable |
| Deposition, pretrial and trial transcript & video fees | Many transcript and video costs were necessary for trial and post‑trial briefing | Transcripts used at trial or for impeachment/post‑trial briefing are taxable; realtime/video not necessarily taxable | Allowed limited deposition transcripts (those introduced or used for impeachment) and pretrial/trial transcripts; denied realtime and videographer fees |
| Copies and demonstratives (graphic design) | Demonstrative design was necessary for trial presentation | Design charges are costs incurred in preparing trial exhibits | Denied expensive graphic designer fees for demonstratives; allowed actual printing costs with invoice support |
| Witness fees (attendance, travel, subsistence) | Witness travel and per diem are recoverable under §1821 | Award reasonable attendance, travel, subsistence in line with GSA per diem and receipts requirement | Allowed attendance and travel (based on invoices); limited subsistence to reasonable per diem with supporting documentation; reduced award due to lack of receipts |
| Expert deposition fees under Rule 26(b)(4)(E) | Plaintiffs argued offset for expert deposition fees owed by defendants | Defendants sought recovery of expert deposition fees now | Denied as untimely; request raised years after discovery closed |
Key Cases Cited
- In re Two Appeals Arising Out of San Juan Dupont Plaza Hotel Fire Litig., 994 F.2d 956 (1st Cir. 1993) (district court has discretion to decline taxing items listed in §1920 if rationale provided)
- Ira Green, Inc. v. Military Sales & Serv. Co., 775 F.3d 12 (1st Cir. 2014) (discusses "mixed results" concept for allocating costs)
- Templeman v. Chris Craft Corp., 770 F.2d 245 (1st Cir. 1985) (discusses circumstances under which deposition transcript costs may be taxable)
- Ellis v. United Airlines, Inc., 73 F.3d 999 (10th Cir. 1996) (denial of untimely motion to compel fee shifting under Rule 26(b)(4)(E) affirmed)