HYNIX SEMICONDUCTOR INC. v. RAMBUS INC.

• Decision Date: 08 March 2010
• Docket Number: No. C-00-20905 RMW.,C-00-20905 RMW.
• Citation: 697 F. Supp.2d 1139
• Court: U.S. District Court — Northern District of California
• Parties: HYNIX SEMICONDUCTOR INC., Hynix Semiconductor America Inc., Hynix Semiconductor U.K. Ltd., and Hynix Semiconductor Deutschland GmbH, Plaintiffs, v. RAMBUS INC., Defendant.

697 F. Supp.2d 1139

HYNIX SEMICONDUCTOR INC., Hynix Semiconductor America Inc., Hynix Semiconductor U.K. Ltd., and Hynix Semiconductor Deutschland GmbH, Plaintiffs, v. RAMBUS INC., Defendant.

No. C-00-20905 RMW.

United States District Court, N.D. California, San Jose Division.

March 8, 2010.

Allen Ruby, Law Offices of Allen Ruby, San Jose, CA, Belinda Martinez Vega, Susan Gregory Van Keulen, O'Melveny & Myers LLP, Los Angeles, CA, Geoffrey Hurndall Yost, Thelen Reid & Priest, LLP, San Francisco, CA, Joseph A. Greco, Julie Jinsook Han, Townsend and Townsend and Crew LLP, Palo Alto, CA, Tomomi Katherine Glover, O'Melveny & Myers LLP, Menlo Park, CA, for Plaintiffs.

Carolyn Hoecker Luedtke, Burton Alexander Gross, Esq., Erin C. Dougherty, Jennifer Lynn Polse, Miriam Kim, Peter A. Detre, Rosemarie Theresa Ring, Esq., Munger, Tolles Olson LLP, San Francisco, CA, Catherine Rajwani, Sidley Austin Brown & Wood LLP, Scott W. Hejny, Thomas N. Tarnay, V. Bryan Medlock, Sidley Austin LLP, Dallas, TX, Gregory P. Stone, Kelly Max Klaus, Munger Tolles & Olson, Michelle B. Goodman, Rollin Andrew Ransom, Sidley Austin LLP, Peter Ivan Ostroff, Sidley Austin Brown & Wood, Sean Eskovitz, Steven McCall Perry, Andrew Winston Song, David C. Yang, Jeffrey Y. Wu, Kathryn Kalb Anderson, Keith Rhoderic Dhu Hamilton, II, Lynn Healey Scaduto, Munger, Tolles & Olson LLP, Los Angeles, CA, Jeannine Yoo Sano, Howrey LLP, East Palo Alto, CA, William Hans Baumgartner, Jr., Sidley Austin LLP, Chicago, IL, Craig N. Tolliver, Pierre J. Hubert, McKool Smith, Austin, TX, for Defendant.

ORDER TAXING COSTS

RONALD M. WHYTE, District Judge.

Presently before the court is Rambus' Bill of Costs and Hynix's objections thereto filed in accordance with the court's Order Regarding Entry of Judgment dated March 10, 2009. In relevant part, the Order provides:

The magnitude of this case, and the alleged size of Rambus's cost bill, counsel against submitting the bill of costs to the clerk's office in the first instance. E.g., Syracuse Broadcasting Corp. v. Newhouse, 32 F.R.D. 29, 29 (N.D.N.Y. 1963) ("The attorneys for both sides seem satisfied to ... bypass the Clerk in the first instance.... In fact, the substantial items challenged are ones peculiarly within the knowledge of the trial judge and would be practically an impossible burden for the Clerk to resolve with any degree of reason and certainty."); Deering, Milliken & Co v. Temp-Resisto Corp., 169 F.Supp. 453, 456 (S.D.N.Y.1959) (explaining why "there is no merit in the defendants' contention that Rule 54(d), F.R.Civ.P., requires that costs must be taxed in the first instance by the clerk and that the Court has no power to tax them").... Rambus shall have 30 days from the entry of judgment to file its bill of costs with the court. Hynix shall have 21 days to file any objections to Rambus's bill of costs, and may seek from the court any necessary extension.

Order Regarding Entry of Judgment dated March 10, 2009 at 2:8-21.

The parties met and conferred after Rambus first filed its Bill of Costs and resolved many of their disputes concerning the recoverability of costs. On May 14, 2009 they filed a Joint Statement of Disputed Costs that includes Exhibit 1 which identifies all of the costs that Rambus seeks as well as any reduction sought by Hynix and Exhibit 2 which identifies only the objected-to costs, arranged in categories and presented in numbered tables (Tables 1 through 20) to which the court refers in this order. Rambus now seeks an award of $790,234.35 in costs; Hynix objects to $224,770.44 of the claimed costs. To the extent that Hynix does not object to a claimed cost, that cost item is hereby taxed and awarded to Rambus.

Procedural Background

This action was brought by Hynix Semiconductor Inc., Hynix Semiconductor America Inc., Hynix Semiconductor U.K. Ltd., and Hynix Semiconductor Deutschland GmbH (hereinafter, collectively "Hynix") against Rambus Inc. ("Rambus"). The case was tried in three phases. The issue in the first phase was whether Rambus's patent infringement claims were barred by the doctrine of unclean hands. The issue was tried to the court, and the court issued its Findings of Fact and Conclusions of Law on Unclean Hands Defense in favor of Rambus on January 5, 2006. Hynix Semiconductor Inc. v. Rambus Inc., 591 F.Supp.2d 1038 (N.D.Cal. 2006).

The second phase concerned Rambus's allegations that Hynix infringed certain claims of U.S. Patents 5,915,105, 6,034,918, 6,324,120, 6,378,020, 6,426,916, and 6,452,863. The issues in the second phase were tried to a jury which rendered its verdict in favor of Rambus on April 24, 2006.

In the third phase, Hynix's affirmative claims of monopolization, fraud and unfair competition and defenses of estoppel, waiver and unenforceability were tried in a coordinated proceeding in which the same issues from other pending litigation between Rambus and Micron, Nanya, Samsung and Hynix were joined. Shortly before the jury trial in the third phase commenced, the trial of the joined issues between Rambus and Samsung were bifurcated. On March 26, 2008, a jury returned a verdict in favor of Rambus and against Hynix, Micron and Nanya on their monopolization and fraud claims. On March 3, 2009, the court rejected the equitable claims and defenses tried in the third phase and issued its Findings of Fact and Conclusions of Law on those claims and defenses. Collectively, this third phase has referred to as the "Conduct Trial" or "Conduct Proceedings." The issues between Rambus and Samsung which were originally coordinated with the Hynix, Micron and Nanya issues, were tried in September 2008. On or about February 4, 2010 all disputes between Rambus and Samsung were settled and all claims between them were dismissed.

The Conduct Trial disposed of all remaining issues between Rambus and Hynix raised in this case so judgment was entered against Hynix and in favor of Rambus on March 10, 2009 in an amount in excess of $396 million for patent infringement and included prejudgment interest. With final judgment entered in favor of Rambus and against Hynix, Rambus, as the prevailing party, is entitled to its costs and has submitted its Bill of Costs. Hynix asserts that Rambus is not entitled to certain of the costs

The Conduct Trial, however, did not resolve all the issues in Rambus' actions involving Nanya and Micron and its other litigation involving Hynix. Those actions which involve patent infringement issues have been stayed pending resolution of Hynix's appeal to the United States Court of Appeal for the Federal Circuit. Therefore, although Rambus did prevail on the issues tried in the Conduct Trial, it may or may not ultimately be the prevailing party in the pending stayed cases. Therefore, at this time, an award of costs can only be made against Hynix in this case.

Standard for Award of Costs

Under Federal Rule of Civil Procedure 54(d), costs should be allowed to the prevailing party unless a federal statute or court provides otherwise. Fed.R.Civ.P. 54(d). The rule creates a presumption in favor of awarding costs to a prevailing party, but vests in the district court discretion to refuse to award costs. Association of Mexican-American Educators v. California, 231 F.3d 572, 591 (9th Cir.2000), citing National Info. Servs. Inc. v. TRW, Inc., 51 F.3d 1470, 1471 (9th Cir.1995). The court's discretion in awarding costs under Rule 54(d) is limited to awarding costs that are within the scope of 28 U.S.C. § 1920. Summit Technology, Inc. v. Nidek Co., Ltd., 435 F.3d 1371, 1374 (Fed.Cir. 2006). Section 1920 "enumerates expenses that a federal court may tax as a cost under the discretionary authority found in Rule 54(d)." Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441-42, 107 S.Ct. 2494, 96 L.Ed.2d 385 (1987). Civil Local Rule 54-3 itemizes the costs that are allowed under Section 1920. Intermedics, Inc. v. Ventritex, Inc., 1993 WL 515879 (N.D.Cal.1993).

Analysis

As noted above, Rambus has withdrawn its claim for certain cost items, and Hynix has withdrawn its objection to certain other claimed costs. The table below sets forth the amount of costs Rambus now seeks in various categories and the amount of reduction Hynix requests.

                                                Claimed        Requested
                  Category                       Total         Reduction
                  Schedule A—filing fees       $     223.27
                  Schedule B—transcripts       $ 290,845.06   $ 116,856.77
                  Schedule C—witness fees
                  and expenses                 $   7,327.92   $   4,513.65
                  Schedule D—exemplification
                  and copies                   $ 293,708.28   $  46,706.12
                  Schedule E—interpreters
                  and translators              $  64,742.82   $  40,929.50
                  Schedule F—trial
                  equipment                    $  24,819.21   $   8,764.46
                  Schedule G—special
                  master fees                  $ 108,567.79   $   6,999.94
                  ________________________________________________________
                                       Total   $ 790,234.35   $ 224,770.44
                  ________________________________________________________
                

See Joint Statement of Disputed Costs Ex.'s 1 and 2.

Hynix's objections apply generally to Rambus's entitlement to all costs it incurred as the prevailing party as well as to particular categories of claimed costs. The general objections will be addressed first, followed by the objections to specific categories.

A. Should the Costs Associated with the Conduct Trial Be Apportioned among All Manufacturers, Such That Only One-Third of Such Costs Are Taxed?

Hynix asserts that Rambus' discovery, pretrial and trial costs incurred in the Conduct Proceedings involving the antitrust and unfair competition claims of Hynix, Micron and Nanya¹ should be allocated equally among those three manufacturers. Hynix argues that when cases are coordinated or consolidated, a court may divide costs among the parties. Hynix relies on Marmo v. Tyson Fresh Meats, Inc., 457 F.3d 748, 764 (8th Cir. 2006), an Eighth Circuit decision that...