United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
Jeffrey T. Gilbert, United States Magistrate Judge
Henryk Oleksy ("Oleksy") sued Defendant General
Electric Company ("GE") for patent infringement. On
September 29, 2015, the presiding District Judge ruled that
GE did not infringe on Oleksy's patent and, consequently,
granted summary judgment in its favor. [ECF Nos. 717, 718].
After that, GE filed a bill of costs seeking $153, 700.73.
[ECF No. 728-1]. Oleksy objected to the original bill of
costs, and GE subsequently filed an amended bill of costs
(the "Amended Bill of Costs") that slightly reduced
the sought-after total to $150, 564.09. GE's Amended Bill
of Costs, [ECF No. 754-3]. Oleksy then filed a sur-reply
arguing that GE should recover only $74, 030.71. Plaintiffs
Sur-Reply in Opposition to Defendant's Revised Bill of
Costs ("Oleksy's Sur-Reply"), [ECF No. 766], at
15. After these filings, the District Judge referred GE's
bill of costs to this Magistrate Judge. [ECF No. 767].
reasons stated below, the Court grants in part and denies in
part the Amended Bill of Costs, and awards $94, 813.95 in
Federal Rule of Civil Procedure 54(d), a court may award
costs other than attorney's fees to a prevailing party as
long as no federal statute, Federal Rule of Civil Procedure,
or court order provides otherwise. Fed.R.Civ.P. 54(d)(1). To
be awardable, a cost must satisfy two requirements.
Majeske v. City of Chicago, 218 F.3d 816, 824 (7th
Cir. 2000). It must be taxable under a federal statute.
Republic Tobacco Co. v. N. Atl. Trading Co., 481
F.3d 442, 450 (7th Cir. 2007). 28 U.S.C. § 1920, the
relevant statute for this case, enumerates six categories of
(1) Fees of the clerk and marshal;
(2) Fees for printed or electronically recorded transcripts
necessarily obtained for use in the case;
(3) Fees and disbursements for printing and witnesses;
(4) Fees for exemplification and the costs of making copies
of any materials where the copies are necessarily obtained
for use in the case;
(5) Docket fees under section 1923 of this title;
(6) Compensation of court appointed experts, compensation of
interpreters, and salaries, fees, expenses, and costs of
special interpretation services under section 1828 of this
28 U.S.C. § 1920; see also Massuda v. Panda Express,
Inc., 2014 WL 148723, at *5 (N.D. Ill. Jan. 15, 2014).
also must be "both reasonable and necessary to the
litigation." Little v. Mitsubishi Motors N.
Am., Inc., 514 F.3d 699, 702 (7th Cir. 2008); see
also Majeske, 218 F.3d at 824. The burden of showing
that a cost was necessarily incurred and reasonable falls on
the prevailing party. Trustees of Chicago Plastering
Inst. Pension Trust v. Cork Plastering Co., 570 F.3d
890, 906 (7th Cir. 2009). Although there is a strong
presumption that costs will be awarded, that presumption does
not relieve the prevailing party of this burden. Life
Plans, Inc. v. Sec. Life of Denver Ins. Co., 52
F.Supp.3d 893, 903 (N.D. Ill. 2014). Only after the
prevailing party has satisfied its burden does the
non-prevailing party "then bear the burden to
affirmatively show that the taxed costs are not
appropriate." Bonds v. Fizer, 69 F.Supp.3d 799,
803 (N.D. Ill. 2014). Ultimately, a court has broad
discretion when deciding whether to award costs, and the
Seventh Circuit gives "'virtually complete"
deference" to a court's exercise of this discretion.
In re Dairy Farmers of Am., Inc., 80
F.Supp.3d 838, 854 (N.D. Ill. 2015) (quoting O 'Regan
v. Arbitration Forums, Inc., 246 F.3d 975, 989 (7th Cir.
Amended Bill of Costs, GE breaks the costs that it seeks to
recover into seven categories. The Court will address each in
Fees of the Clerk: $0.00 Awarded of $250.00
Amended Bill of Costs, GE lists $250.00 as fees of the clerk.
Amended Bill of Costs, [ECF No. 754-3], at 2. This amount is
comprised of five payments of $50.00 to the Clerk of Court
for the pro hac vice admission of five GE attorneys.
[ECF No. 728-2]. GE contends that this expense is taxable
under 28 U.S.C. § 1920(1). Oleksy objects to the entire
$250.00 and asserts that § 1920(1) does not encompass
pro hac vice admission fees.
1920(1) does not "specifically" address the issue
presented by the parties' disagreement. Knauff v.
Dorel Juvenile Grp., Inc., 2010 WL 2545424, at *1 (W.D.
Tex. June 21, 2010). Instead, it provides that "fees of
the clerk" are taxable. 28 U.S.C. § 1920(1). A
circuit split has developed over whether this general
language permits the award of pro hac vice fees.
Compare Kalitta Air L.L.C. v. Cent. Texas Airborne Sys.
Inc., 741 F.3d 955, 958 (9th Cir. 2013) with
Craftsmen Limousine, Inc. v. Ford Motor Co., 579 F.3d
894, 898 (8th Cir. 2009).
Seventh Circuit, there is at least some authority to support
both sides of the split. A few district courts, with little
or no analysis, have awarded pro hac vice fees.
See, e.g., Horina v. City of Granite City, Illinois,
2007 WL 489212, at *2 (S.D. Ill. Feb. 9, 2007); Brita
Wasser-Filter-Systeme GmbH v. Recovery Eng'g, Inc.,
1999 WL 446830, at *3 (N.D. Ill. June 24, 1999). In one case,
the court of appeals affirmed without any explanation such an
award. United States v. Emergency Med. Associates of
Illinois, Inc., 436 F.3d 726, 730 (7th Cir. 2006). The
weight of authority in this Circuit, however, indicates that
courts normally decline to award pro hac vice fees.
See, e.g., Endotach LLC v. Cook Med. LLC, 2016 WL
912681, at *2 (S.D. Ind. Mar. 10, 2016); SP Techs., LLC
v. Garmin Ini'l, Inc., 2014 WL 300987, at *1 (N.D.
Ill. Jan. 10, 2014); Local 881 United Food &
Commercial Workers Union v. Food Club of Indiana, 2011
WL 3501721, at *3 (N.D. Ind. Aug. 10, 2011); Nilssen v.
Osram Sylvania, Inc., 2007 WL 257711, at *1 (N.D. Ill.
Jan. 23, 2007), aff'd, 528 F.3d 1352 (Fed. Cir.
2008); Adler v. B.C. Ziegler & Co., 2006 WL
3771825, at *1 (E.D. Wis. Dec. 21, 2006); Abrams v. Van
Kampen Funds, Inc., 2006 WL 452419, at *5 (N.D. Ill.
Feb. 21, 2006); Liquid Dynamics Corp. v. Vaughan
Co., 2002 WL 31207212, at *1 (N.D. Ill. Oct. 2, 2002);
cf. Brown v. Colgate-Palmolive Co., 2006 WL 3197455,
at *2 (S.D. Ind. May 17, 2006). This also is the practice of
"the majority of courts" throughout the country.
Awadv. Ziriax, 2014 WL 1572804, at »1 n.2
(W.D. Okla. Apr. 17, 2014).
with this weight of authority, the Court will not award GE
its .pro hac vice fees. Therefore, the Court will
not award any of the $250.00 that GE lists as fees of the
clerk in the Amended Bill of Costs.
Fees for Service of Summons and Subpoenas: $655.00 Awarded of
$2, 108.00 Requested
Amended Bill of Costs, GE lists $2, 108.00 as fees for
service of summons and subpoenas. Amended Bill of Costs, [ECF
No. 754-3], at 2. The parties address this amount in two
Service of Summons Fees: $375.00 Awarded of $1, 436.00
main portion of the $2, 108.00 is $1, 436.00 that GE paid for
service of summons. Defendant General Electric's Reply in
Support of Its Bill of Costs ("GE's Reply"),
[ECF No. 754], at 3; [ECF No. 728-3], at 3. This expense was
incurred for seventeen attempts, all but one of which appears
to have been successful, to serve various individuals and
corporations. [ECF No. 728-3]. According to GE's summary
list and invoices, GE paid, on a per attempt basis, (1)
$35.00 for six attempts, (2) $85.00 for seven attempts, (3)
$98.00 for two attempts, (4) $175.00 for one attempt, and (5)
$260.00 for one attempt. Id. at 3, 11-17. GE argues
that these fees are taxable under 28 U.S.C. § 1920(1) as
fees of the marshal. Oleksy claims that GE's recovery
should be limited to $440.00 for two reasons.
first argues that GE has not submitted the information
necessary to support its request. Under 28 U.S.C. §
1920(1), fees for private process servers may be taxable when
"their rates do not exceed the cost of service of
process had the U.S. Marshal effectuated service of
process." Thayer v. Chiczewski, 2010 WL
3087447, at *3 (N.D. Ill. Aug. 4, 2010). If a party seeks to
recover private service fees without providing evidence of
what hourly rate the private server charged, how much time he
spent trying to serve process, or other information needed to
determine if his rate exceeded that charged by the Marshal,
then the appropriate practice is to award the lesser of the
amount that the party actually paid and "the minimum
charge of the U.S. Marshals." SP Techs., 2014
WL 300987, at *2; see also Small v. Ford Motor Co.,
2015 WL 203178, at *2 (S.D. Fla. Jan. 14, 2015); Manson
v. City of Chicago, 825 F.Supp.2d 952, 956 (N.D. Ill.
2011); Highway Commercial Servs., Inc. v. Midwest Trailer
Repair, Inc., 2011 WL 3159128, at *3 (N.D. Ill. July 26,
2011); Serwatka v. City of Chicago, 2011 WL 2038725,
at *3 (N.D. Ill. May 24, 2011); Perry v. City of
Chicago, 2011 WL 612342, at *3 (N.D. Ill. Feb. 15,
2011); Vardon Golf Co. v. Karsten Mfg. Corp., 2003
WL 1720066, at *8 (N.D. Ill. Mar. 31, 2003).
stated above, the documentation that GE has submitted
reflects only the amount that GE was charged. [ECF No.
728-3], at 11-17. Even after Oleksy noted this deficiency, GE
did not supplement the record. Instead, in its reply brief,
GE defended the position that it was entitled to a minimum of
$55.00 for every attempt that cost more than that. GE's
Reply, [ECF No. 754], at 1-2. Because the Court cannot
determine the rate charged by GE's process servers, GE
cannot recover more than $55, 00 for any attempt at
also argues that GE should not recover any of the fees that
it paid to serve people it did not depose. Oleksy represents
that GE never deposed five people who it successfully served
(one of them after two attempts), and that it did not depose
one person that it successfully served twice in 2010 until
after it served him again in 2013. Oleksy's Sur-Reply,
[ECF No. 766], at 3. The only justification that GE provides
for serving these people is the conclusory assertion that it
needed "to insure the appearance of these witnesses at
depositions and/or to secure the production of
documents." Defendant General Electric's Memorandum
of Law in Support of its Bill of Costs ("GE's
Opening Brief), [ECF No. 728], at 3. Such a generalized
statement does not permit the Court to assess the necessity
and reasonableness of each challenged service and, thus,
cannot support an award of fees. C.f. Moore v. Univ. of
Notre Dame, 22 F.Supp.2d 896, 915 (N.D. Ind. 1998)
("As noted in Section 2 supra, these witnesses
were never deposed. Accordingly, this expense [for service of
process] is not allowable.").
the Court awards (1) $35.00 for the six services costing as
much, (2) $55.00 for the attempt to serve ITC Experts, Inc.
in March 2014 (which cost $175.00), and (3) $55.00 for each
of the two attempts to serve Leon Edelson during 2013 (each
of which cost $98.00). This is a total of
Subpoena Fees: $280.00 Awarded of $627.00 Requested
other portion of the $2, 108.00 is $627.00 that GE paid seven
witnesses-which GE calls "subpoena fees." GE's
Reply, [ECF No. 754], at 3. GE paid these witnesses $96.00
each, $40.00 of which was for a daily appearance fee and the
other $56.00 of which was for mileage costs. Oleksy does not
dispute that GE is entitled to recover daily appearance
costs. Instead, he objects only to the mileage costs.
U.S.C. § 1920(3) provides for the recovery of fees for
witnesses. This includes $40.00 daily appearance fees and
reasonable travel expenses, both of which 28 U.S.C. §
1821(b) requires that witnesses be paid. Bova v.
Harrison, 2013 WL 6169192, at *2 (S.D. Ill. Nov. 25,
2013). When a party does not provide evidence of its
witnesses' travel costs, however, its recovery is limited
to the daily appearance fee. See, e.g., Hall v. St. John
Missionary Baptist Church, 2010 WL 1488120, at *1 (E.D.
Ark. Apr. 13, 2010); Ulatowski v. John Sterling
Corp., 2005 WL 643349, at *4 (N.D. Ill. Mar. 16, 2005);
Haywood v. Evergreen Motor Cars, Inc., 2003 WL
22220121, at * 1 (N.D. Ill. Sept. 25, 2003); Fait v.
Hummel, 2002 WL 31433424, at *3 (N.D. Ill. Oct. 30,
2002); Liquid Dynamics, 2002 WL 31207212, at *3.
case, GE's invoices simply list a flat payment of $96.00,
which is described as a "subpoena fee." [ECF No.
728-3], at 4-10. In its reply brief, GE says that this amount
includes "$56 for [witnesses'] mileage costs ($0.56
per mile x approximately 50 miles in each direction."
GE's Reply, [ECF No. 754], at 3. But GE neither has
provided any evidence of witnesses' travel nor simply
stated how much each witness actually (as opposed to
"approximately") traveled. GE's general
reference to "approximately" 100 miles indicates
that GE may be rounding or averaging the distance traveled by
the witnesses. Regardless of whether that is the case, GE has
not given the Court an adequate basis to conclude that each
witness' mileage costs were necessary and reasonable.
the Court awards $280.00 for its subpoena fees.
total, the Court awards $655.00 of the $2, 108.00 listed in
the Amended Bill of Costs as fees for ...