United States District Court, E.D. Missouri, Eastern Division
ABT SYSTEMS, LLC, and THE UNIVERSITY OF CENTRAL FLORIDA BOARD OF TRUSTEES, Plaintiffs / Counterclaim Defendants,
EMERSON ELECTRIC CO., Defendant / Counterclaim Plaintiff.
MEMORANDUM AND ORDER
G. FLEISSIG, UNITED STATES DISTRICT JUDGE.
patent infringement case is before the Court on Defendant
Emerson Electric Co.'s (“Emerson”) Bill of
Costs, following remand of the case by the Federal Circuit
Court of Appeals. Plaintiffs (collectively “ABT”)
object, arguing that Emerson's Bill of Costs should be
denied in its entirety because ABT prevailed on the vast
majority of the issues at trial, while Emerson only prevailed
on a single dispositive issue on appeal. Alternatively, ABT
argues that several of the costs Emerson is seeking are
unreasonable and/or not taxable pursuant to 28 U.S.C.
§§ 1821 and 1920. The Court concludes that Emerson
is entitled to $45, 751.43 of the $47, 916.00 it requests.
asserted that thermostats manufactured and/or sold by Emerson
and introduced into the market in 2006 infringed upon two
patents owned by ABT (“the '017 Patent” and
“the '268 Patent”). By way of counterclaim, Emerson
sought a declaratory judgment that none of the thermostats it
sold infringed the ABT patents; that the patents were
invalid; and that the patents were unenforceable because,
among other things, during the patenting process, ABT
withheld information from the United States Patent and
Trademark Office regarding the scope and content of prior
art. In support of a motion for summary judgment, Emerson
argued that the patents were invalid due to obviousness. The
Court denied that motion on January 16, 2013 (Doc. No. 356),
and the case proceeded to a jury trial. The trial started on
Monday, February 11, 2013, and continued through Friday,
February 15, 2013. The trial adjourned for the weekend and
continued on Monday, February 18, 2013. The jury returned a
verdict on Thursday, February 21, 2013.
Rudd, the sole named inventor on the patents, testified as an
expert technical consultant for ABT. ABT's witness Tim
Cromley testified concerning the sales and profits Emerson
allegedly made from the patents. John Vogelzang, Jeffrey
Siegel, Max Sherman, and Richard Bero served as expert
witnesses for Emerson. Don Fugler and Thomas Scavone were
deposed by Emerson, but did not testify at trial.
jury returned its verdict on February 21, 2013, following
eight days of actual trial. ABT was awarded $311, 379 in
damages based on the jury's finding that Emerson was a
willful infringer of the '017 Patent. None of
Emerson's counterclaims was successful at trial. The
Court found, post-trial, that there was no inequitable
conduct relating to ABT's prosecution of the patent in
question and that Emerson's pre-lawsuit infringement was
not willful. The Court awarded costs to Plaintiffs as the
prevailing parties in the amount of $39, 181.34. (Doc. No.
August 19, 2015, the United States Court of Appeals for the
Federal Circuit reversed, finding that ABT's '017
patent was invalid by reason of obviousness. (Doc. No. 570 at
3.) On November 11, 2015, Emerson submitted its Bill of
Costs, the contested items of which will be discussed below.
On November 16, 2015, this Court entered judgment on remand
in favor of Emerson.
to Rule 54(d)(1) of the Federal Rules of Civil Procedure,
“costs-other than attorney's fees-should be allowed
to the prevailing party.” The term “costs,
” as used in Rule 54(d)(1), is defined in 28 U.S.C.
§ 1920, which enumerates the expenses that a federal
court may tax as costs under the discretionary authority
found in Rule 54(d). Crawford Fitting Co. v. J.T. Gibbons,
Inc., 482 U.S. 437, 445 (1987). Within the statutory
framework, the Court has discretion to determine and award
costs as appropriate in a given case. Blakley v.
Schlumberger Tech. Corp., 648 F.3d 921, 930 (8th Cir.
2011); Little Rock Cardiology Clinic PA v. Baptist
Health, 591 F.3d 591, 601 (8th Cir. 2009).
party seeking to recover costs must fully establish the
amount of compensable costs and expenses to which it is
entitled. In re Williams Sec. Litig. WCG Subclass,
558 F.3d 1144, 1148 (10th Cir. 2009). Although the taxation
of costs under Rule 54(d) is permissive, the Eighth Circuit
has long held that there is a strong presumption that the
prevailing party is entitled to an award of costs.
Thompson v. Wal Mart Stores, Inc., 472 F.3d 515, 517
(8th Cir. 2006). Where the losing party raises a general
objection to an award of costs as inequitable, he bears the
burden of demonstrating such inequity. Finan v. Good
Earth Tools, Inc., No. 4:06-CV-878 CAS, 2008 WL 1805639,
at *9 (E.D. Mo. Apr. 21, 2008) (citing Concord Boat Corp.
v. Brunswick Corp., 309 F.3d 494, 498 (8th Cir. 2002)).
argues that Emerson's request for costs should be denied
because “ABT was successful on all of its claims at
trial” and in defending against all of Emerson's
pre-trial motions, while Emerson “lost all of its
defenses and counterclaims at trial, ” and the
“sole issue” that Emerson succeeded on was the
claim that the '017 patent was invalid, on appeal. (Doc.
No. 574 at 2.) Alternatively, ABT argues that
“Emerson's recoverable costs should be limited to
those incurred prior to [Emerson's] motion for summary
judgment” because if this Court “had granted the
motion [for summary judgment], much of Emerson's trial
costs would have been eliminated.” (Doc. No. 574 at 3.)
responds that it is the only prevailing party in this case
because the final judgment alone is determinative of which
party prevailed. Emerson argues that ABT's success on
some pre-trial motions, or even at trial, does not make it
the prevailing party, as the final judgment does not award
ABT any relief.
prevailing party is one “in whose favor a judgment is
rendered.” Firefighters' Inst. for Racial
Equal. ex rel. Anderson v. City of St. Louis, 220 F.3d
898, 905 (8th Cir. 2000) (citation omitted). Here, final
judgment was rendered in favor of Emerson. ABT's
victories at trial were rendered moot by its defeat on
appeal. Emerson is therefore the prevailing party in this
case. Further, ABT's request to limit costs to those