Case Law

Court Finds Data Storage, Processing, Review and Production Costs as Non-Taxable in Post-Trial Motion


Wis. Alumni Research Found. v. Apple, Inc., 2017 U.S. Dist. LEXIS 86418 (W.D. Wis. June 6, 2017) In this complex patent case, the court addressed several post-trial motions made by both parties. Previously, a jury trial entered a verdict for the plaintiff in the amount of $234 million in damages. The defendant challenged both the jury’s verdict and decisions made both before and during trial, and the plaintiff motioned for an award for costs to the prevailing party under the FRCP 54(d)(1). Specifically, the plaintiff sought reimbursement of costs related to ESI discovery, among printing, photocopying, witness travel, service of summons and other similar fees. First, the plaintiff requested $115,475 for data storage costs for the plaintiff’s ediscovery database. Rejecting this cost as taxable, the court adopted the majority opinion in Split Pivot, Inc. v. Trek Bicycle Corp., 154 F. Supp. 3d 769, 780 (W.D. Wis. Dec. 31, 2015), which interpreted the term “making copies” narrowly under 28 U.S.C. § 1920(4) and only allowed for costs associated with copying of electronic data not storing electronic data. Also, the plaintiff sought $147,757 for ediscovery work done by its outside counsel’s litigation and database support department, including converting documents into PDF format, OCR’ing, uploading data to the database, preparing documents for production and batching documents for review. The court held that most of these costs were not taxable, and decided to reduce the cost by 50% because it was hard to determine which costs were and were not taxable. In the end upon analyzing all taxation requests, the court awarded a total amount of $841,587 in costs to the plaintiff.

Keywords: 28 U.S.C. § 1920(4), cost-shifting, taxation of costs, damages, post-trial motions, patent infringement