*1 pointed to both the District Court Rather PARTNERS, LLC, substance and the CBT FLINT of economic
the lack Mr. Blum’s reliance on Plaintiff-Appellant, reasonableness to treat these as appeared KPMG and v. issues, collat- of which were both separate See, Blum, e.g., No. erally estopped. PATH, INC., Defendant- RETURN 11-01885-CJC, 2012 8704117at WL SACV Appellee, (“Mr. collaterally estopped is now *6 Blum of whether he litigating the issues from legitimate investment was a believed OPIS he relied on KPMG’s
strategy and whether Systems, LLC, Cisco IronPort effect.”). to that advice Defendant-Appellee. event, Tax we find Court any In regarding conclusions each reached correct No. 2013-1036. why reasons Mr. Blum independent rely Appeals, United States Court reasonable cause to prove
could not purposes avoiding negli- KPMG Federal Circuit. simply
gent underpayment penalty. We Dec. opinion on rea- note that the Tax Court’s faith good appears sonable reliance and
narrowly penalty provision. tailored to this (“[W]e 129801, *16 do not find
2012 WL actually relied on petitioners KPMG good purposes faith for of the reason- good faith defense to accu-
able cause and fact,
racy-related penalties.”). the Tax “certainly that Mr. Blum
Court concluded KPMG, and KPMG’s failures to-
relied on during years and after the
ward its client
at issue are well-documented.” Id. We opinion about the provide
cannot rela-
tionship ap- conclusions have to the these Blum’s
plicable law Mr. civil case. Per- sufficiently
haps these issues are similar to
satisfy es- prerequisites collateral
toppel. Perhaps they are not. But that is
an issue for the Central District Califor-
nia of Appeals or the Ninth Circuit Court question properly
to decide. The is not
before this Court.
IV. Conclusion of the Tax af- judgment Court is
firmed. *4 $49,824.60 at for Return
the clerk taxed $268,311.12 In the Path and for Cisco. CBT, we hold that the present appeal interpretation of district court erred its taxa- statutory provision governing the here, tion of costs 28 U.S.C. in part, vacate part, We reverse remand. Conrad, King Spalding, M. &
Adam Carolina, LLP, Charlotte, argued BACKGROUND North him on the plaintiff-appellant. With 1, 2007, Return August On CBT sued Daryl L. and Karen F. brief were Joseffer infringement Path and Cisco for U.S. Grohman, DC; Washington, and Bruce 6,192,114 6,587,550. After Patent Nos. Baber, H. Moffitt and Russell Natasha W. patent the district court construed the Atlanta, Blythe, E. GA. issue, stipulated at to nonin- claims CBT fringement of the asserted claims of the LLP, Gaudet, Duane Morris Matthew C. patent, granted '114 and the district court GA, Atlanta, all argued defendants- *5 summary judgment of indefiniteness of the him on the brief L. appellees. With were patent. one asserted claim of the '550 See and John R. Gibson for Norwood Jameson Partners, Path, CBT Flint LLC v. Return Sys- IronPort defendant-appellee Cisco (N.D.Ga. Inc., 1376, F.Supp.2d 1377-78 tems, L. LLC. On the brief was Kenneth 2009). Cisco then moved recover its York, Bressler, LLP, Blank Rome of New 1920, including § costs under 28 U.S.C. York, defendant-appellee, New for Return $243,453.02 paid compa in fees it had to a Path, Inc. ny discovery that handled electronic for it. Brown, LLP, Pincus, Mayer Andrew J. fit Id. at 1380. Rather than that amount DC, for curiae The Washington, amicus specific category, into a section 1920 Cisco Software Alliance. him on the brief With labeled those fees “other costs” on its bill Hughes. was Paul W. of costs. O’MALLEY, DYK, Before 2009, granted In the district court Cis- TARANTO, Judges. Circuit noting opin- co’s motion after “a division of discovery] ion as to whether [electronic by Opinion for the court filed Circuit costs are recoverable under 28 U.S.C. Judge TARANTO. § on a 1920.” Id. at 1381. Based “careful Cisco, invoices to review” of vendor’s Opinion concurring part characterized the services ren- the court dissenting Judge filed Circuit “highly as technical” and “not the dered O’MALLEY. type attorneys parale- of services that or TARANTO, Judge. Circuit gals capable pro- are trained for or are Partners, LLC, viding.” CBT Flint sued Return Id. The court concluded Path, Inc., sought to recover were “the Systems, and Cisco IronPort fees Cisco LLC, Georgia Century equivalent making copies” 21st the Northern District of patent infringement. deciding (although categorized After Cisco had not them such) CBT, against the merits of the case and held them be recoverable. Thus, court not cite although district court ruled that should have Id. did CBT 1920, “costs,” pay any specific provision their which defendants taxation all implicitly category. Path, rested the of Cisco’s “other” For Return $33,858.51; Cisco, electronic-discovery costs on section those fees were they $243,453.02, making which covers “the costs of remained as in 2009. mous burden to exercise restraint amounts, copies.” posing party ation of these costs will In are well known” and that the court said that awarding with the expense huge Cisco the encourage litigants burdening cost of unlimit- der affirming the taxation of the Defen- of electronic the “enor- party’s requested “[t]ax- op- The district court denied CBT’s motion to the motion review the taxation of costs. eration of the Court’s On August “in 2, 2012, effect a motion full the clerk taxed each previous amounts for reconsid- It deemed requested. [2009] Or- discovery.” ed demands for electronic Id. e-discovery dants’ costs” and stated that Court appeal, opportunity “[t]he On this court reversed the declines the Partners, subject.” revisit the summary judgment district court’s of in CBT Flint (N.D.Ga. No. regarding patent, Sept. definiteness the '550 1:07-cv-1822-TWT 2012) (ECF 329). question, construed the claim in and re No. proceedings. manded for further CBT appeals. jurisdiction CBT We have un- Partners, Path,
Flint
LLC v. Return
1295(a)(1).
§
der 28 U.S.C.
Inc.,
(Fed.Cir.2011).
654 F.3d
longer
no
a prevail
Because Cisco was
DISCUSSION
ing party, this court vacated the district
Federal Rule of Civil Procedure
court’s order
costs without address
54(d)(1) authorizes district courts to award
ing its correctness.
Id. at 1361. On
turn,
prevailing party.
costs to the
remand,
granted
the district court
sum
U.S.C.
expenses
“enumerates
*6
mary judgment
noninfringement,
of
CBT
may
a federal court
tax as a cost under the
Partners,
Path,
Flint
LLC v. Return
discretionary authority found in Rule
(N.D.Ga.
Inc.,
1369,
F.Supp.2d
870
1377
54(d).”
Fitting Co. v. J.T. Gib
Crawford
2012)
this court
since sum
has
— which
bons, Inc.,
437, 441-42,
482
107
U.S.
S.Ct.
affirmed,
marily
Fed.Appx.
501
980 2494,
(1987);
A from “making copies,” change appears that Congress enacted Judicial Before linguistic no more than the aim of reflect Technical Amendments Administrative and (“exem- using activity-describing phrases 2008, 110-406, § No. Act of Pub.L. plification,” “making copies”) on both sides 1920(4) exempli- for “[f]ees section covered conjunction in of the section necessarily papers fication and of confirms, legislative history The as one in the case.” 28 U.S.C. obtained for use indicated, sponsor language that the new (2007) added). § (emphasis Con- electronically in- produced would “mak[e] changed language as of October gress formation coverable in court costs.” 154 13, 2008, encompass electronically H10270, Cong. (daily Rec. H10271 ed. as as information stored information well 2008) (statement 27, Sept. Rep. of Lof- 1920(4) now covers paper. Section an- gren). But neither that statement nor exemplification for and the costs “[flees of key legislator’s that the other statement any materials where the making copies of keep up amendments as a whole seek “to necessarily obtained for use in copies are changes challenges with the 1920(4) (emphasis the ease.” 28 U.S.C. S9897, century,” Cong. 21st Rec. S9898 added). 2008) (statement (daily Sept. ed. The Eleventh Circuit has not addressed Leahy), help Sen. further provides 1920(4) section since was amended. The apply statutory courts that must lan- preamendment prece- Eleventh Circuit’s They that guage. say do the new dent, however, expressed general prin- all, language significant covers or even a 1920(4) ciple recovery “allows share, of the electronic-document actually the reasonable costs they production. clarify And do not what documents, duplicating not for the cost “making copies.” activities constitute gathering prelude those documents process leading The to the amend- duplication.” Corp., Allen v. U.S. Steel suggest ment of section 1920 tends to (5th 665 F.2d 697 n. 5 Cir. BUnit change was modest rather than dra- 1982).1 interpret scope We amend- matic in its effect on litigants. bottom-line ed section in accordance with that proposed language was recommended *7 principle, making necessary allowances for in Congress 2003 the Judicial Con- the inherent differences paper between ference Committee on Administra- Court and electronic documents. Management, tion and Case which consid-
That principle guide large-scale changes is our because nei- ered the of possibility 1920(4) ther in language proposed only the of section nor its section 1920 but small- instead, legislative history changes scale explaining: a basis for de- supplies parting it. statutory from The new lan- § agreed The Committee that 1920 does guage any “making copies embraces of many not address of the technology ex- materials” that meet requirements. certain penses expended that are now often in But that language leaves for the courts the litigation. federal The Committee was defining concerned, task of “making however, what constitutes charges that the copies” purposes sifting of the activities expenses dramatically new could these statu[t]e, go producing expand that into electronic docu- the the intention of task, taxing ments. For that crucial which was the of in we see no to allow Maxwell, B Fifth Circuit Unit decisions rendered after Eleventh Circuit. United States v. 1, 1981, 1282, (11th Cir.2009). binding precedent October F.3d n. 6 in the 579 1305
1327 Therefore, very way. expenses.”. the dental 132 at limited S.Ct. 2006. Ear- lier, decided to recommend that generally, Supreme Committee and more lim- the Judicial Conference endorse two “presumption” Court stated the statutory ited amendments to 28 U.S.C. meeting discovery costs of requirements amend 1920. The first would subsec- stay litigant with the that incurred them. (2) recognize availability tion Fund, Oppenheimer Sanders, Inc. v. in electronic form. The sec-
transcripts
340, 358,
2380,
U.S.
98 S.Ct.
57 L.Ed.2d
concept
expand
“pa-
ond would
(1978).
a clearer prescription
Without
(4)
pers”
subsection
order to reflect
change
of dramatic
than
can
we
find
decreasing
use of
and the
paper
amendment,
those background princi-
increasing
technology
in ereáting,
use
ples
reading
call for
language
the new
filing,
exchanging
court documents!
only
effect
changes
modest
in the award of
Comm,
Rep. of the Judicial Conference
generally applicable
costs under the
sec-
Manage-
Court Administration and Case
tion 1920(4) leaving larger-scale shifting
—
(March 2003).
ment,
2004,
at 4
Senator
litigation expenses
to be addressed un-
Hatch introduced the recommended lan-
statutory provisions
der other
par-
that set
guage, noting
origin
of the whole bill in ticular
particular
standards for
types of
2396,
the Judicial Conference. See S.
implement context-specific
cases to
poli-
(2d Sess.2003);
Cong. § 118
108th
150 cies.
2004).
S5080,
10,
Cong.
(May
Rec.
S5082
precedent provides
Our own
im-
some
accompanying Section-by-Section
portant guidance in deciding which elec-
Analysis included the observations that the
tronic-document-production tasks fall with-
in-
changes generally
“would
Ricoh,
in section
In In re
corporate
expenses
some of the
associated
acknowledged
F.3d at
we
the appli-
technologies
with new courtroom
into the
cability of section
to electronic doc-
litigation
assessment of
costs” and the
uments.
alsoWe
confirmed several criti-
copying provision
particular
“would also
cal
on the
provision
limitations
reach of the
expand
concept
‘papers’
of'
in order to
(and
paper
even as to
therefore
decreasing
paper
reflect the
use of
and the
documents):
as to electronic
it applies
increasing
technology
creating,
use
produced
requester,
to documents
to a
filing,
exchanging
court documents.”
litigation
those a
creates for
own
its
added).
at
(emphasis
Id.
S5087
use;
applies only
repro-
or other
if “the
The Judicial Conference Committee’s
...
produced
pur-
duced documents were
long
view that section 1920 has
been un-
rules”;
suant to Rule 26 or other
taxing
derstood to “allow the
of costs in a
parties may
binding
and the
enter into
very
way”
Supreme
limited
rests on the
agreements.
cost-allocation
Id. at
explanation
congressional
Court’s
*8
(which
1368. But Ricoh
Ninth
involved
Cir-
policy behind the enactment of section
law)
law,
cuit
not Eleventh Circuit
did not
“rigid
to place
was
controls on cost-
question
otherwise reach the
of which spe-
in
shifting
Crawford,
federal courts.”
produc-
cific costs of electronic-document
Supreme
U.S. at
review secured location. In this cases, documents. why unlike other We do see documents were not makes a format, “image converted to an file” difference that the process such of making a Tagged Image (TIFF), single production copy File Format may involve first because Cisco believed that such creating conver- one duplicate electronic expensive. sion would be too (visible two-part content, “document” me tadata), then creating a production copy of stages We consider these three in turn. part. each The statute surely would cover the costs of using a modem digital photo copier (essentially a scanner combined cases, many rule, In agreement, court printer) with a copying paper a docu order, or requirement other regarding the ment, notwithstanding that such a machine format of produced may may first scan the document to create a taking necessitate the steps several duplicate on an internal hard drive and are all of “making copies,” reasonably then create a paper duplicate, all in mak If understood. documents must be con- ing “one copy.”4 Notably, both the Third (for production verted to a uniform format Circuits, and Fourth in their recent instance, deci TIFF), often must make sions addressing similar issues to those we document, a first copy of a perform the address, have conversion, recognized required format the statute copy then covers steps, the converted costs for which commonly files to media. Similarly, involve an party may reproduction, initial be under an obli- that neces gation produce sarily precede documents with pre-col- pro creation of a final lection metadata intact. copy: such a duction converting situa- electronic files to tion, because the copying formats, mere act of a file non-editable Country Vintner of may destroy metadata, Carolina, certain types of N. v. E. Winery, LLC & J. Gallo mailbox, "De-Dupli- etc.) The Sedona Conference defines tapes, as a different server cation” as follows: .duplicate. De-duplica- considered to be a process selective, comparing The tion depending electronic rec- can be on the ords based on their agreed-upon characteristics and re- criteria. moving marking duplicate or records with- Glossary Sedona at 14. Conference in the data set. methodology deployed ''duplicate digital copier, and definition 4. On the nature of a modern records” i.e., see, Indus., agreed upon, e.g., should be Top-U.S.A. whether an Trintec Inc. v. (such copy exact Corp., (Fed.Cir.2002). from a different location 295 F.3d *10 (4th Cir.2013), event,
Inc., directly requester. and to the In that F.3d Tires, documents, Race scanning paper simpler process the costs of that will 1920(4). 674 F.3d at chargeable be under section Of course, way in that proceeding might, for enough expertise spe- and present, At alike, producer requester signifi- both often are equipment required cialized cantly complicate aspects other needed entrust these tasks to an many parties litigation process, such as document electronic-discovery vendor. Whoever A requester may review. therefore decide them, however, the performs steps de- request production to a in a form that fairly are all included in section scribed copying saving increases costs while other 1920(4) are, fact, they necessary in where not, But if litigation costs. the costs are copies required make of information to duplication limited to the needed for the just and not to make incurred produced in required. the form At the producing for the convenience of the time, producing party might same party. example, For if metadata can be choose, efficiency litiga- for the of its own preserved using imaging without first work, image up- tion source drives and techniques, steps extraction then those the images load to a document database 1920(4). if outside section And a vendor filtering, searching, for faster and review. (ie., chargeable does its work work cov- choice, however, That change would not by the statute if performed ered on a chargeable requester the costs to the document) single large on a volume of making of the costs of copies under culling produce only documents a before subset, copying the awarded costs must be actually to the produced, confined subset analysis applies How this full to the e.g., by using document-specific if charges specific bills of requires costs this case they by using are available or a reasonable an inquiry that the district court should allocation method prorating. such as On perform in the first instance. The court line, the other side of the incurred should determine requirements gov- what preparing to copy are not recoverable. erning the format or other characteristics Though Cisco and apparently its vendor produced imposed documents were put considerable time deciding plan case, on the At defendants. least this securely code, copying its source items looking years back to ago, events some on the vendor invoices such as “source may court have to resort to a determina- discussion,” code planning,” “source code well-grounded tion of expectations about “plans acquisition code,” of source requirements default in the absence of meeting “coordination for source code pro- rules, contrary agreements, or orders. (and cessing,” and “source code briefing” future, default standards should be- others) perhaps are not recoverable. clearer, come and pre-copying court orders or parties’ agreements should determine scenarios, In contrast to the above affirmatively more definitively what if from whom documents are copying required form of in a particular is sought subject particular require no case. governing ments the format or other char documents, produced acteristics of the might suffice for the producing party to
copy requested directly Return Path and Cisco seek to re from the source media to the production cover under section the costs of a media and deliver the production media host of their vendors’ services that fall *11 stage obligations what we have called Ex- pursue under two. by relief other —must they that amples means, are activities characterize such seeking as court orders to project management, keyword as search- discovery limit problems when the reimbursement, ing, previews,” “auditing “statistical and seeking arise or of costs or logging of files ensuring compliance payment fees or penalties of afterwards Rules,” with Federal and “extraction of 1920(4). under authority other than section data,” proprietary among others. The Applying- section to vari
costs of those activities are not the
of
ous other stage-two tasks
in
involved
elec
Rather,
making copies.
they are
part
production
tronic-document
calls for some
large body
discovery obligations,
judgments
common-sense
guided by a
mostly related to the document-review
comparison
paper-document
with the
ana
process,
Congress
that
has not included in
Thus,
logue.
decryption of a document
1920(4).
section
in encrypted
stored
form on an electronic
Similarly, the
in
costs incurred
may
source medium
necessary
be
to make
acquiring, installing, and configuring a new
production
a final
copy that is
by
viewable
data-hosting server at the offices of Cisco’s
see,
requester,
e.g., Fed.R.Civ.P.
clearly
counsel were
incurred for the con
34(b)(2)(E)(ii)
(requiring production of
venience of
and its counsel
Cisco
and are
electronically stored information “in a rea
not recoverable.
Neither should a
sonably
form”);
usable
id.
Rule
be
litigation-
able
recover the costs of
34(a)(1)(A) (requiring
if
“translation”
nec
support tasks such
training
as
the use of
form),
essary into such
but we conclude
software,
the document-review
deposition
that
decrypt
the cost to
is not recoverable.
support,
privilege-log
or
original
After the
creators or users of an
creation.
Costs
other activities listed on
electronic document have viewed it
here,
the vendor’s invoices
such as meet
form, may
put
readable
have been
into
calls,
ings, conference
and other communi
encrypted
so,
an
safekeeping.
form for
If
cations, also are not
“making cop
costs of
process
decryption
to restore it to
ies,” even
they
copying
when
relate to the
the form which its creators and users
process.
saw it
something
that is best understood
Although
argues
Cisco
preceding
as
copying,
copy
keyword
much of the
searching and data
ing. By analogy, if a party chooses to
analysis performed by the vendor in this
paper
store
way—
a secure
case
at
request,
plainly
was
CBT’s
that is
say,
place
them in a safe in remote
bring
activity
insufficient to
within sec
party’s expense
removing
Tuva—the
1920(4).
provision
tion
covers
them
security,
getting
from such
them
“making copies.” Although
reques
machine,
duplication
would not natu
number,
ter’s demands can define the
rally
“making copies.”
constitute
Decryp
form, and other
characteristics of
tion of electronic documents is similar
chargeable under section
the re
enough' that
it too should not constitute
quester’s demands for
than
activities other
making copies.
making copies
bring
does not
non-
those
copying
provision.
Likewise,
activities within the
A
deduplication is not fair
litigant
ly
faced with what it views as over-
Deduplica
covered
discovery requests
broad
or
culling
vexatious dis
tion is the
of a set of documents to
covery
unduly
tactics —or even
fruitless or
duplicate copies
eliminate
of the same doc
negotiations
ument,
burdensome
over
creating
produc-
a smaller set for
pre-
post-
request
they
pro-
This is either
or
understood as a
tion or review.
*12
activity (depending
way
on when the
duced in a
copying
separates them to
done),
making
the
not itself
indicate where one ends and another be-
culling is
may
gins.
counterpart
well be valuable
The “load file”
copies.
process
This
is the
making post-copying
start-stop
in
re-
information.
to both sides
Sometimes load
efficient,
parties
and the
can files also contain
view more
additional
information
the cost. But it is not
agree
effectively part
requested
on who incurs
is
of the
“making copies.”
a
produced
cost of
documents. Whether such
by
information is covered
section
contrast,
conclude that
we
text,
such as metadata or extracted
should
creation of “load files” is covered to the
depend on whether that information is re-
files contain information
extent that those
quired
in
produced,
to be
which case it is
requested production.
required
part of the
of “making copies.”
cost
The Sedona Conference defines
“load
particular stage-two
Other
activities call
file” as follows:
analysis. Judgment
for a similar
calls in
A file that relates to
set of scanned
line-drawing
required.
the nature of
files,
electronically
images
processed
or
involved,
imprecision
Whatever
it
is
pages
and indicates where individual
or
reiterating
resulting judg-
worth
that the
documents,
belong together
files
as
ments establish
default
Rela-
rules.
attachments,
include
and where each
in
clarity
tive
such default rules should
begins
document
and ends. A load file
requesting parties
make
easier for
may
data
also contain
relevant
to the
define their
requests with the conse-
documents,
individual
such as selected
quences known
advance and for both
metadata,
data,
coded
and extracted
parties to
any
know what is at stake in
text. Load files should
obtained
attempt
agree
on a different allocation
provided
prearranged or standardized
of costs.
formats to ensure transfer of accurate
images
and usable
and data.
Glossary
Sedona
at 31. Some
Conference
three,
stage
As to
there is no dis
the basic information
load files is
pute among
parties
that the costs of
(blue
comparable
slip
to the
sheets
sheets
copying responsive
produc
documents to
paper, say)
separate
used to
distinct
tion media are recoverable under section
paper
in a
production.
Al
1920(4).
agree.
We
though district courts are
divided
slip
whether the costs of
sheets are recov
they
These costs as
relate to
erable, see, e.g., Warner Chilcott Labs. Ire
production
source code
this case
Labs., Inc.,
land Ltd. v. Impax
Case No. warrant separate
legiti
mention. Where
WJM,
(D.N.J.
08-6304
parts
parts
immediately
not
C
parts
when both
are requested.
pre-
More
cisely,
think
we
that
this is the better
above,
general approach
The
outlined
application
principle
of the
that
in
governs
applications
and most of the
we have set
Circuit, suitably adjusted
the Eleventh
for
out,
analysis
are consistent with the
1920(4).
the 2008 amendment of section
interpreted
other circuits that have
however,
emphasize,
We
that a default rule
1920(4)
recovery
to allow for
limited
can
by agreement
parties.
be altered
of the
produc-
of the costs of electronic-document
See,
Vintner,
e.g., Country
tion.
718 F.3d
D
(allowing
converting
at 260
costs of
elec-
CBT also contests the district
tronic files to non-editable formats and
court’s award of
in fees to Return
Tires,
$1887.00
discs);
burning the files onto
Race
prior-art
Path for
searches. Return Path
(allowing
scanning
O’MALLEY,
documents,
Judge, concurring
actually
costs of
duplicating
Circuit
dissenting
part.
the cost
gathering
those docu
”
a prelude
duplication.’ Op.
ments as
agree
majority’s
I
with much of the
added)
(emphasis
(quoting
v.
Allen
thoughtful
scope
of costs
discussion
Corp.,
U.S. Steel
665 F.2d
697 n. 5
§
under 28 U.S.C.
recoverable
(5th
1982)).
B
majority
Cir. Unit
also
that the bulk of the costs awarded
acknowledges that “only the costs of creat
district court in this case are not recovera-
included,
ing
produced duplicates
Clearly,
many
ble thereunder.
preparatory
not a number of
ancillary
or
majority
varied vendor
cate-
services
to,
commonly
leading
incurred
up
gorizes
falling
“stage
into
two” of its
with,
conjunction
or
duplication.”
after
analysis cannot be characterized as “costs”
added). And,
Op.
(emphasis
it ex
charges
under
Nor can the
plains
Supreme
that the
Court’s most re
prior-art
searches conducted on behalf
*14
pronouncement
cent
scope
on the
of
agree, accordingly,
of Return Path. I
that
§ 1920 included an admonition to read it
judgment deeming
the
those items recov-
narrowly.
Taniguchi
See
v. Kan Pac. Sai
erable as “costs” must be reversed.
I do
—Ltd.,
pan,
U.S. -,
1997,
132 S.Ct.
majority
not
sufficiently
believe the
(2012) (“Our
2006,
I.
(4th
249,
Cir.2013)
718 F.3d
(finding
majority correctly
that,
explains
un-
the Third Circuit’s reasoning persuasive 1920(4)
law,
der Eleventh Circuit
section
not
imaging
include
or metadata extraction
“
costs).
recovery only
‘allows
for the reasonable
Particularly
light
of the Su-
question
imaging
I do not
directly
that the cost of
imaged
provid-
if it were
source media would fall under
opposing party
ed to the
discovery.
as
(“Hard
taxable.”);
may
recent admonition
Tani-
ered
id.
drives
preme Court’s
I
Eleventh
would
guchi,
imaged....
believe the
Circuit
need to
But that
does not
well, avoiding
split
ruling
a circuit
and a
mean that the
leading up
services
to the
making
essentially
taxes the costs
'making
actual
constitute
cop-
single “pro-
duplicates,
two
”);
Vintner,
Country
ies.’
When elec- Inc., 244, (D.Del.2012); F.Supp.2d 855 250 production, tronic document the initial im- Def., see also Mann v. Heckler & Koch aging step “gathering is akin to and col- Inc., JCC, No. 2011 1:08CV611 WL lecting” paper for production. documents (E.D.Va. 2011) 1599580, 28, Apr. at *9 steps While several are essential to the (denying metadata extraction as taxable process, only making produced the final Tires); Erase, Memory before Race Fast 1920(4). copies are covered under section Inc., Spansion, LLC v. No. 3-10-CV- such, party process As even if a must and 0481-M-BD, 5093945, at *4-7 2010 WL extract a production metadata to make (N.D.Tex. 10, 2010), report Nov. rec and copy, those activities do not constitute adopted, ommendation No. 3-10-CV0481- 1920(4). “making copies” under section As (N.D.Tex. M-BD, 2010 5093944 Dee. WL above, agree. noted other circuits 2010) 13, Memory sub nom. Fast aff'd Erase, Corp., Fed.Appx. LLC v. Intel 423
The Third and Fourth Circuits have re-
(Fed.Cir.2011) (denying collecting
991
and
cently found that
in-
expenditures
those
Tires).
processing ESI costs before Race
imaging step
curred for the initial
and
courts,
Like all of these other
I do not
extraction of metadata are not taxable as
1920(4)
Tires,
§
believe
covers the cost of the
§
“costs” under
See Race
(“None
imaging step
initial
or the
Section
single copy produced
creating
a
creating
“copy”
costs of
a
review before
subset
party.
prevailing party
Indeed,
“[T]he
other
produce
opposing party.
to the
recover,
reproduction
can
as costs
is
precisely what Cisco
Return
1920(4),
exemplification under
By adopting
Path did here.
a rule that
single copy
a
preparing
costs incurred in
imaging
includes the
of the initial
costs
produced for
original
documents
majority
under section
effec-
opposing party
copy supplied
where that
is
tively
a
to tax the
party
allows
costs of
Co.,
In
opposing party.”
to the
re Ricoh
making
though
two
even
copies,
the initial
1361,
Litig.,
Ltd. Patent
F.3d
produced.
imaged copy is not
But that is
(Fed.Cir.2011)
added) (citation
(emphases
not what the statute authorizes.2
omitted).
majority
§
The
rewrites
to ad
majority’s
decision to include as
increasing
dress the
cost of electronic dis
portion
a
pro-rated
expenses
in-
role,
covery.
not our
That
is
however.
initially imaging
curred
a source media
Garner,
(11th
Harris v.
216 F.3d
compared
produced,
to the subset
howev- Cir.2000) (“[T]he
judicial
role of the
branch
er, accounts for more than the costs of
apply statutory language,
is to
not to re
producing
single copy
party.
another
it.”) (citations omitted);
write
Korman v.
reaching
its conclusion that the costs of
Fla., Inc.,
(11th
HBC
F.3d
covered,
imaging
majority
initial
Cir.1999) (“It
is not
business of courts
appears
making
to confuse
costs for
statutes.”).
to rewrite
We are not author
single copy produced
another
with
ized to stretch a statute to cover costs the
any
making
those of
of electronical-
Court
light
believes should
covered in
ly
produced
discovery,
even
changes
technology;
only Congress
produced.
question,
those not
Without
1920(4).3
Tires,
can rewrite
See Race
electronic
is
imaged,
document
first
(“Nor may
Rule 26 of Rules of Civil agreement should have come to an with provides possi- regarding Procedure also numerous CBT discovery the costs of or manage limit or asked bilities to the costs of for assistance from the court earlier. 26(b)(2)(B) Having never discovery. sought Rule limits discov- to shift or avoid sooner, ery electronically they these costs stored information should not now be accessible,” permitted push a “reasonably square peg from sources not into a by attempting round hole provides squeeze and the court discretion their to order discovery electronic discovery costs into section specify cost-shifting to ob- 1920(4), 26(b)(2)(C) majority and the should not con- discovery. tain that Rule also done their effort to do so. requires frequency a court to limit the or discovery extent otherwise allowed if II. expense “the burden or proposed the discovery benefit, Accordingly, I outweighs likely respectfully its con- dissent from case, majority’s sidering the needs of the conclusion expand the amount narrow confines controversy, parties’ resources, of costs taxable under case, Section importance of the issues at this stake action, creating costs of single the final importance copy pro- and the discovery duced to the requesting party resolving the issues.” covered Finally, Rule 26(c) by § including scanning to from discovery allows whom necessary, extent converting documents to sought protective to move for a order a uniform production format, copying the limiting discovery specifying or discovery media, converted production files to under certain terms. copying files, creation and of load and the Despite the authority district court’s cost of the media itself. discovery case, limit or shift costs in this virtually no discussion occurred in this Indeed, discovery.
case until later in Cis-
co finally advantage took of some these
existing avenues for in a request relief late for fee shifting regarding specific group ASSOCIATES, (doing AMS INC. Order, of documents. In a June Shapiro Packaging), business as the district court found Cisco had Plaintiff-Appellee, established that certain documents were not reasonably accessible because of undue v. cost, burden or pro- and ordered Cisco “to STATES, Defendant, UNITED duce those documents on the condition $300,000.00 pay [CBT] Cisco as the Laminated Committee, Woven
cost of Sacks conducting a privilege review.” Coating International, Excellence JA149-50. then chose pursue CBT not to LLC, Polytex Corporation, Fibers of those documents. While Cis- *18 Defendants-Appellants. argues co a small window for existed, it could have turned to No. 2013-1208. options above-mentioned and to the United States Court of Appeals, court when CBT made their initial re- Federal Circuit. quests, which Cisco characterized as ask- ing Decided effect, for “in Dec. every document company.” Appellee Simply Br. 3. put,
Cisco and Return Path could have and