Sterisil Inc. v. Proedge Dental Products Inc.

          ORDER CONCERNING EXPERT WITNESS FEES AND AWARD OF COSTS

          ROBERT E. BLACKBURN UNITED STATES DISTRICT JUDGE

         This matter is before me on the following: (1) Plaintiff's Motion To Compel Payment of Deposition Fees of Plaintiff's Experts Deposed by Defendants [#127]^[1] filed May 25, 2018; and (2) Plaintiff's Motion for Review of Clerk's Award of Costs [#150] filed July 26, 2018. The defendants filed responses [#140, #151], and the plaintiff filed replies [#142, #152]. I grant the motion to compel payment of expert witness fees in part and deny it in part. Similarly, I grant the motion for review of costs in part and deny it in part.

         I. JURISDICTION

         I have jurisdiction over the parties and subject matter of this case. My jurisdiction arises under 28 U.S.C. § 1331 (federal question) and 28 U.S.C. § 1338(a) (patent infringement).

         II. STANDARD OF REVIEW

         A. Deposition Fees of Experts

         A party seeking discovery from an expert “must pay the expert a reasonable fee for time spent in responding to discovery, ” unless manifest injustice would result. Fed.R.Civ.P. 26(b)(4)(E)(i). What constitutes a reasonable fee for purposes of this rule lies within the discretion of the court. Fiber Optic Designs, Inc. v. New Eng. Pottery, LLC, 262 F.R.D. 586, 589 (D. Colo. 2009). Several factors may be relevant in determining a reasonable fee, including: (1) the area of expertise of the expert; (2) the education and training required to provide the expert insight that is sought; (3) the prevailing rates of other comparably respected available experts; (4) the nature, quality and complexity of the discovery responses provided; (5) the fee actually being charged to the party who retained the expert; (6) fees traditionally charged by the expert on related matters; and (7) any other factor likely to be of assistance to the court in balancing the interests implicated by Rule 26. Id.

         B. Costs

         Allowable costs are delineated in 28 U.S.C. § 1920. The burden is on the prevailing party to establish that the expenses it seeks to have taxed as costs are authorized by § 1920. English v. Colorado Department of Corrections, 248 F.3d 1002, 1013 (10^th Cir. 2001); Griffith v. Mt. Carmel Medical Center, 157 F.R.D. 499, 502 (D. Kan. 1994). Expenses not specifically authorized by the statute are not recoverable as costs. Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441-42 (1987); Bee v. Greaves, 910 F.2d 686, 690 (10^th Cir. 1990). Moreover, even when costs are allowed by statute, the prevailing party still must demonstrate that the amount requested is reasonable. See U.S. Industries, Inc. v. Touche Ross & Co., 854 F.2d 1223, 1245 (10^th Cir. 1988), overruled on other grounds as recognized by Anixter v. Home-Stake Products Co., 77 F.3d 1215, 1231 (10^th Cir. 1996).

         Within the limits of § 1920, costs may be awarded for items and services necessarily obtained for use in the case. “(A)ll § 1920 requires is that the generation of taxable materials be reasonably necessary for use in the case at the time the expenses were incurred.” In re Williams Securities Litigation-WCG Subclass, 558 F.3d 1144, 1149 (10th Cir. 2009) (internal quotation and citation omitted). “The most direct evidence of ‘necessity' is the actual use of materials obtained by counsel or by the court.” U.S. Industries, Inc., 854 F.2d at 1246. On the other hand, actual use in a motion presented to the court does not define the absolute outer limit of necessary costs, either. See Mitchell v. City of Moore, Oklahoma, 218 F.3d 1190, 1205 (10^th Cir. 2000) (“[I]t would be inequitable to essentially penalize a party who happens to prevail on a dispositive motion by not awarding costs associated with that portion of discovery which had no bearing on the dispositive motion, but which appeared otherwise necessary at the time it was taken for proper preparation of the case.”) (quoting Callicrate v. Farmland Industries, Inc., 139 F.3d 1336, 1341 (10^th Cir. 1998)). Similarly, actual use at trial is not required to show that a cost may be awarded under § 1920.

         III. ANALYSIS

         A. DEPOSITION FEES OF EXPERTS

         In this patent infringement case, the defendants, ProEdge Dental Products, Inc. and Mark A. Frampton, deposed two expert witnesses endorsed by the plaintiff, Sterisil, Inc. The expert witnesses are Dr. Karl Linden and Armando Chavez. ProEdge^[2], agrees that it must pay the reasonable costs of its depositions of Mr. Chavez and Dr. ...