750 F. Supp. 2d 962
N.D. Ill.2010Background
- TT sued eSpeed for patent infringement related to TT's '304 and '132 patents.
- A jury found infringement and TT was awarded damages; a permanent injunction was entered against eSpeed.
- TT filed a bill of costs seeking $3,321,775.58, later reduced to $2,887,117.56, with various objections by eSpeed.
- The court held TT is the prevailing party and awarded $381,831.04 in costs after reductions.
- Judge Moran had previously stayed costs pending appeal; this order lifts the stay and finalizes the cost award.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether TT is the prevailing party eligible for costs | TT is prevailing due to damages award and injunction. | TT not prevailing because some issues favored eSpeed (noninfringing products, no willful finding). | TT is the prevailing party. |
| Whether the court should stay consideration of costs pending appeal | No stay should be continued after appellate resolution. | Costs should be stayed pending appeal. | No stay; proceed with costs. |
| What is the appropriate amount of TT's costs | TT seeks substantial costs reflecting extensive discovery and trial work. | Many costs are unrecoverable or inadequately documented; limit to reasonable, necessary amounts. | TT awarded $381,831.04 in costs after category-by-category reductions. |
| Whether costs related to particular categories (e.g., copying, video, translation) should be awarded | Categories are recoverable where reasonably necessary and properly documented. | Many sub-categories are not recoverable or not properly documented. | Substantial reductions; copying reduced to 25% of original; video and translation largely denied; some categories fully denied or partially allowed as detailed in the opinion. |
Key Cases Cited
- Farrar v. Hobby, 506 U.S. 103 (1992) (prevailing party status based on relief on the merits)
- Manildra Milling Corp. v. Ogilvie Mills, Inc., 76 F.3d 1178 (Fed.Cir. 1996) (control of prevailing party status in patent cases)
- Weeks v. Samsung Heavy Indus. Co., 126 F.3d 926 (7th Cir. 1997) (strong presumption in favor of costs to prevailing party)
- Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V., 464 F.3d 1339 (Fed.Cir. 2006) (partial success on some claims may still yield prevailing party status)
- Barber v. Ruth, 7 F.3d 636 (7th Cir. 1993) (court discretion to award costs and limits on misuse of costs)
- Young v. City of Chicago, 202 F.3d 1000 (7th Cir. 2000) (injunctions as indicia of prevailing party status)