In the patent infringement case Apeldyn Corp. v. Sony Corp., et. al., Consolidated Case Nos. 11-440 and 11-581 (D. Delaware, July 28, 2016), Defendants prevailed on summary judgment and submitted a proposed eDiscovery cost award as the prevailing party pursuant to FRCP 54(d), consistent with the costs listed under 28 USC § 1920. The parties disputed which costs should be taxable and in which amount, including costs for eDiscovery.
In resolving the dispute, the court looked to 28 USC § 1920(4), which provides for taxation of costs for exemplification and the costs of making copies “where the copies are necessarily obtained for use in the case.” The court noted that in the Third Circuit, costs of eDiscovery are recoverable, but they are limited to the costs associated with processes that are functionally equivalent to making copies, such as scanning and file format conversion. Here, the clerk disallowed certain eDiscovery costs, including conversion of electronic documents and Bates stamping electronic documents.
The court disagreed with the clerk and followed the holdings of multiple courts by holding that Bates stamping costs are recoverable. With respect to the formatting, the court recognized that the parties had agreed to produce files as searchable TIFFs with OCR and metadata. Defendants asserted over $85,000 in costs for formatting. The court found that the invoices were inconsistent with their other documents; it also pointed out that Defendants opposed an early resolution and chose to litigate. Therefore, the court awarded Defendants 25 percent of their eDiscovery costs rather than the entire amount.