In Oracle America v. Google, No C 10-03561 (N.D.C.A. September 4, 2012), a California district court recently considered defendant Google’s request to shift costs related to its ediscovery vendor. In the case, Oracle alleged 132 patent infringement claims on seven separate patents, but lost each one. Oracle only prevailed on two minor copyright claims and did not receive any amount of damages, despite having sought six billion dollars.
Google moved for fee shifting pursuant to Fed. R. Civ. P. 54(d) which provides that “unless a federal statute, these rules, or a court order provides otherwise, costs—other than attorney’s fees—should be allowed to the prevailing party.” However, in cases of mixed decisions such as this one, the court must decide which party prevailed for taxation of costs purposes. Citing Shum v. Intel Corp., 629 F.3d 1360, 1366-67 (Fed. Cir. 2010). In this case, defendant Google was determined to be the prevailing party for purposes of taxing costs.
With respect to taxation of costs, although the Court held that Oracle failed to overcome the presumption that it should pay costs, the court ultimately denied Google’s request to shift the cost of its electronic discovery. The court considered its local rules and case law when reviewing Section 1920, providing for “fees for exemplification and the costs of making copies…” The district court looked to a 9th Circuit case which held that “fees for exemplification and copying are permitted only for the physical preparation and duplication of documents, not the intellectual effort in their production.” Zuill v. Shanaha, 80 F.3d 1366, 1371 (9th Cir. 1996). (Notably although the district court cited this older 9th Circuit decision, it is along the same line of reasoning as the recent Race Car Tires II decision from the 3rd Circuit, discussed in a previous blog.)
The line-item bill submitted by Google included organizing, searching and analyzing the discovery document and data. Most egregregious, according to the Court, were Google’s attempts to bill costs for “conferencing,” “prepare for and participate in kickoff call,” and communications with co-workers, other vendors and clients. The district court held that such costs were non-taxable intellectual efforts and denied its requests for fees incurred by its e-discovery vendor.