Motorola Sols. v. Hytera Communications Corp.

• Decision Date: 06 August 2021
• Docket Number: 1:17-cv-01973
• Parties: MOTOROLA SOLUTIONS, INC., and MOTOROLA SOLUTIONS MALAYSIA SDN BHD., Plaintiffs, v. HYTERA COMMUNICATIONS CORPORATION LTD., HYTERA AMERICA, INC., and HYTERA COMMUNICATIONS AMERICA WEST, INC., Defendants.
• Court: U.S. District Court — Northern District of Illinois

MOTOROLA SOLUTIONS, INC., and MOTOROLA SOLUTIONS MALAYSIA SDN BHD., Plaintiffs, v. HYTERA COMMUNICATIONS CORPORATION LTD., HYTERA AMERICA, INC., and HYTERA COMMUNICATIONS AMERICA WEST, INC., Defendants.

No. 1:17-cv-01973

United States District Court, N.D. Illinois, Eastern Division

August 6, 2021

ORDER

Charles R. Norgle, United States District Court Judge

The Court grants Plaintiffs' amended bill of costs [1044-8] in full. Plaintiffs' original bill of costs [1000] is denied as moot. The Court taxes Hytera Communications Corporation Ltd. for costs in the amount of $2, 674, 631.36. This order is without prejudice as to Plaintiffs seeking costs or other relief from Hytera America, Inc. and Hytera Communications America (West), Inc. at a later date.

MEMORANDUM OPINION

After a nearly four-month trial, a jury found for Plaintiffs Motorola Solutions, Inc. and Motorola Solutions Malaysia Sdn. Bhd ("Motorola") on every issue and awarded the full amount of damages Motorola requested, approximately $345 million in compensatory damages and $418 million in punitive damages.^[1] The Court entered judgment on the verdict. Dkt. 947; 948. As the prevailing party, Motorola filed a bill of costs, and a supporting memorandum, arguing that the Court should tax Defendant Hytera Communications Corporation Ltd.^[2] ("Hytera") in the amount of $2, 674, 631.36. Hytera argues that Motorola is entitled to just $168, 792.92. For the following reasons, the Court grants Motorola's amended bill of costs in full and awards Motorola taxable costs from Hytera in the amount of $2, 674, 631.36.

The Court first notes that Motorola changed the amount it requested when it submitted its Reply. Dkt. 1044. In its original bill of costs, Motorola requested a total of $2 683, 973.68. Dkt. 1000. Then, with its Reply Brief, Motorola attached an amended bill of costs which reduced the amount of requested costs for trial transcripts and increased the amount requested for interpreter costs. Dkt. 1044-8 (Bill of Cost (Amended)). Motorola attached a declaration from its counsel explaining the discrepancy between the two bills of costs. Dkt. 1044-9. Counsel stated that in Motorola's original bill of costs. Motorola inadvertently used a higher actually-billed, per-page rate for transcript printing rather than the lower, statutory one for certain invoices. Id. at 1. Next, counsel stated that Motorola made two mistakes regarding interpreter costs in its original bill of costs. First, it included some entries for written document translation that should not have been included. Second, it inadvertently and improperly under-calculated the total of the original interpreter entries. Id. at 2. Accounting for these changes, Motorola's amended bill of costs reduced the total amount requested by $9, 342.32, to $2, 674, 631.36. The Court accepts and awards the resulting reduced total amount.

The Court may tax costs pursuant to 28 U.S.C. § 1920, which provides that:

A judge or clerk of any court of the United States may tax as costs the following: (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) and compensation of court appointed experts, compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation services under section 1828 of this title. A bill of costs shall be filed in the case and, upon allowance, included in the judgment or decree. 28 U.S.C. § 1920; see L.R. 54.1; Fed.R.Civ.P. (54)(d).

To award a cost, the Court must determine "(1) whether the cost imposed on the losing party is [statutorily] recoverable and (2) if so, whether the amount assessed for that item was reasonable." Hillmann v. City of Chicago, No. 04 C 6671, 2017 WL 3521098, at *2 (N.D. Ill. Aug. 16, 2017) (citing Maieske v. Citv of Chi., 218 F.3d 816, 824 (7th Cir. 2000)). "In order to recover costs, the prevailing party bears the burden to show that the requested costs were necessarily incurred and reasonable." Gecker as Tr. for Collins v. Menard. Inc., No. 16 C 50153, 2020 WL 1077695, at *1 (N.D. Ill. Mar. 6, 2020) (quoting Trs. of the Chi. Plastering Inst. Pension Trust v. Cork Plastering Co., 570 F.3d 890, 906 (7th Cir. 2009)). "[T]here is a presumption that the prevailing party will recover costs, and the losing party bears the burden of an affirmative showing that taxed costs are not appropriate." Hillman, 2017 WL 3521098 at *2 (quoting Beamon v. Marshall & Ilsley Tr. Co., 411 F.3d 854, 864 (7th Cir. 2005)); see also Massuda v. Panda Express, Inc., No. 12 CV 9683, 2014 WL 148723, at *2 (N.D. Ill. Jan. 15, 2014) (Prevailing parties "bear the burden of demonstrating that the costs were necessary and reasonable. ... If this burden is satisfied, [the losing party] must then show that the costs are inappropriate."). "Under Rule 54(d), 'district courts enjoy wide discretion in determining and awarding reasonable costs.'" Hillman. 2017 WL 3521098 at *2 (quoting Northbrook Excess & Surplus Ins. Co. v. Procter & Gamble Co., 924 F.2d 633, 642 (7th Cir. 1991)).

The Court will address each pertinent section in 28 U.S.C. § 1920 in turn. Because Plaintiffs do not request any docket fees under 28 U.S.C. § 1923, the Court will not consider 28 U.S.C. § 1920(5).

I. Fees of the Clerk and Marshal

Plaintiffs request $1, 600 in fees of the clerk pursuant to 28 U.S.C. § 1920(1) stemming from sixteenmo hac vice admission fees paid by Motorola. Dkts. 9, 13, 14, 15, 16, 63, 72, 75, 138, 168, 327, 441, 660, 663, 716 and 727. Dkt. 1000-4 (Appendix A). Those fees are recoverable. Eagle F. v. Phyllis Schlafly's Am. Eagles, 498 F.Supp.3d 1024, 1036 (S.D. Ill. 2020) (citing United States v. Emergency Med. Assocs. of Illinois, Inc., 436 F.3d 726, 730 (7th Cir. 2006)). Hytera argues that "[t]he weight of authority in this Circuit . . . indicates that courts normally decline to award pro hac vice costs." Oleksy v. Gen. Elec. Co., No. 06-CV-1245, 2016 WL 7217725, at *2 (N.D. Ill.Dec. 12, 2016). But there is also "some authority to support both sides of the split," id., and this lengthy and complex case was not normal. Hytera argues that Motorola's counsel-Kirkland & Ellis-is a Chicago-based firm, and Motorola could have hired Chicago-based Kirkland attorneys rather than out-of-state attorneys. However, this ignores the realities of international law firm practice in litigation like this, and the $1, 600 in pro hac vice fees is reasonable. Thus, the costs here are recoverable.

Motorola also asserts that it should be paid $1, 235 in fees of the marshal under 28 U.S.C. § 1920(1) for service of (1) the summons and complaint on Hytera and (2) document and deposition subpoenas to seventeen of Hytera's dealers and one accounting firm Hytera used. Dkt. 1000-5 (Appendix B). Hytera does not oppose that request, and the Court would grant those costs regardless as they are recoverable and the requested rate is reasonable. Merix Pharm. Corp. v. Clinical Supplies Mgmt., Inc., 106 F.Supp.3d 927, 946 (N.D. Ill. 2015); Serwatka v. City of Chicago, No. 08 C 5616, 2011 WL 2038725, at *3 (N.D. Ill. May 24, 2011); see 28 C.F.R. § 0.114; Schultz v. iGPS Co. LLC, No. 10-cv-00071, Dkt. No. 403, at *4 (N.D. Ill. May 8, 2013).

II. Fees for Necessary Transcripts

Motorola requests $274, 052.50 for "fees for printed or electronically recorded transcripts necessarily obtained for use in the case." 28 U.S.C. § 1920(2). That includes $215, 703.70 for costs related to deposition transcript production^[3] and $58, 348.80 for costs related to hearing and trial transcript production.^[4] The Court discusses both in turn below.

A. Deposition-Related Transcript Costs

Deposition costs like printed or electronic transcripts are recoverable if they were '"reasonably necessary' to the case at the time they were obtained." Smith v. Chicago Transit Auth., No. 12 C 8716, 2015 WL 2149552, at *5 (N.D. Ill. May 6, 2015) (citing Cengr v. Fusibond Piping, Sys., Inc., 135 F.3d 445, 455 (7th Cir. 1998)). "The introduction of a deposition in a summary judgment motion or at trial is not a prerequisite for finding that it was necessary to take that deposition." Id. "[I]n law the word 'necessary' often does not live up to the impression it conveys to lay readers ... We have understood § 1920 as requiring no more than that the transcripts or copies be reasonably and prudently obtained-which depends on how things seemed when the expenditures were made, without the benefit of hindsight." Nat'l Org, for Women, Inc. v. Scheidler, 750 F.3d 696, 698-99 (7th Cir. 2014) (rejecting need for document-specific inquiry). While "courts may not tax the costs of transcripts ... provided merely for the convenience of the requesting attorney, a transcript need not be absolutely indispensable in order to provide the basis of an award of costs." Majeske v. City of Chicago, 218 F.3d 816, 825 (7th Cir. 2000).

Motorola's requested deposition costs can be classified into five categories: (1) $43, 800.20 in transcript costs; (2) $76, 013.75 in videotaping costs; (3) $67, 757.40 in real-time transcription costs; (4) $20, 452.35 in exhibit scanning costs; and (5) $7, 680.00 in cancellation fees. Dkt. 1044-7 (Appendix J) (listing costs in a chart). The Court will address each.

1. Transcripts

Motorola's deposition transcript costs of $43, 800.20 were reasonably necessary to demonstrate the merits of its claims against Hytera. Motorola describes how it deposed over 50 people regarding issues like company history, sales, trade secrets financial information,...