Taranto, Gary R., United States Circuit Judge
This ongoing discovery dispute stems from an order from the Court of Appeals for the Federal Circuit that reversed and remanded a district court order for summary judgment, which in turn vacated an award of costs under 28 U.S.C. §1920(4) that included $243,453 for eDiscovery.
On remand, however, the district court granted summary judgment for non-infringement, and awarded costs that included over $277,000 in eDiscovery costs. When the plaintiff moved to review the taxation award, the district court denied the motion, deeming it a reconsideration of the Court’s previous "order affirming the taxation of the Defendant’s e-discovery costs.” Plaintiff appealed again.
Reviewing the district court’s interpretation of §1920(4) de novo, the Federal Circuit concluded that the district court's reading was far too broad and significantly reduced the costs awarded to the defendants. After reviewing the legislative record for the 2008 amendments to §1920, the Federal Circuit concluded that “[t]o the extent a party is obligated to produce . . . electronic documents in a particular format with particular characteristics intact (such as metadata …), the costs to make duplicates in such a format are recoverable.” Under this standard, the court found imaging documents and metadata from source media, creating load files, and copying responsive documents to production media recoverable. But the court excluded “a number of preparatory or ancillary costs” incurred before, during or after duplicating the documents, such as keyword searching, de-duplication, and training document review software. Thus, the Federal Circuit reversed the district court’s fee award in part, vacated it in part, and remanded the case to fully apply the approach articulated by the Federal Circuit.
v.
RETURN PATH, INC., Defendant–Appellee,
and
Cisco IronPort Systems, LLC, Defendant–Appellee
Counsel
Adam M. Conrad, King & Spalding, LLP, of Charlotte, North Carolina, argued for plaintiff-appellant. With him on the brief were Daryl L. Joseffer and Karen F. Grohman, of Washington, DC; and Bruce W. Baber, Natasha H. Moffitt and Russell E. Blythe, of Atlanta, GA.Matthew C. Gaudet, Duane Morris LLP, of Atlanta, GA, argued for all defendants-appellees. With him on the brief were L. Norwood Jameson and John R. Gibson for defendant-appellee Cisco IronPort Systems, LLC. On the brief was Kenneth L. Bressler, Blank Rome LLP, of New York, New York, for defendant-appellee, Return Path, Inc.
Andrew J. Pincus, Mayer Brown, LLP, of Washington, DC, for amicus curiae The Software Alliance. With him on the brief was Paul W. Hughes.
Opinion
The Committee agreed that § 1920 does not address many of the technology expenses that are now often expended in federal litigation. The Committee was concerned, however, that the charges for these new expenses could dramatically expand the intention of the statu[t]e, which was to allow the taxing of costs in *1327 a very limited way. Therefore, the Committee decided to recommend that the Judicial Conference endorse two limited statutory amendments to 28 U.S.C. § 1920. The first would amend subsection (2) to recognize the availability of transcripts in electronic form. The second would expand the concept of “papers” in subsection (4) in order to reflect the decreasing use of paper and the increasing use of technology in creating, filing, and exchanging court documents.
A file that relates to a set of scanned images or electronically processed files, and indicates where individual pages or files belong together as documents, to include attachments, and where each document begins and ends. A load file may also contain data relevant to the individual documents, such as selected metadata, coded data, and extracted text. Load files should be obtained and provided in prearranged or standardized formats to ensure transfer of accurate and usable images and data.