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`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 1 of 11
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`CLEMENT SETH ROBERTS (SBN 209203)
`croberts@orrick.com
`BAS DE BLANK (SBN 191487)
`basdeblank@orrick.com
`ALYSSA CARIDIS (SBN 260103)
`acaridis@orrick.com
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`The Orrick Building
`405 Howard Street
`San Francisco, CA 94105-2669
`Telephone:
`+1 415 773 5700
`Facsimile:
`+1 415 773 5759
`
`SEAN M. SULLIVAN (pro hac vice)
`sullivan@ls3ip.com
`DAN SMITH (pro hac vice)
`smith@ ls3ip.com
`MICHAEL P. BOYEA (pro hac vice)
`boyea@ ls3ip.com
`COLE B. RICHTER (pro hac vice)
`richter@ls3ip.com
`LEE SULLIVAN SHEA & SMITH LLP
`656 W Randolph St., Floor 5W
`Chicago, IL 60661
`Telephone:
`+1 312 754 0002
`Facsimile:
`+1 312 754 0003
`
`Attorneys for Plaintiff and Counter-Defendant Sonos, Inc.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`SONOS, INC.,
`
`Plaintiff and Counter-defendant,
`
`v.
`
`GOOGLE LLC,
`
`Defendant and Counter-claimant.
`
`Case No. 3:20-cv-06754-WHA
`
`Consolidated with
`Case No. 3:21-cv-07559-WHA
`
`
`SONOS, INC.’S OBJECTIONS TO
`GOOGLE LLC’S BILL OF COSTS
`
`
`
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
`
`

`

`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 2 of 11
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`
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`Pursuant to Civil Local Rule 54-2, Sonos objects to Google’s Bill of Costs (Dkt. 876) for
`
`the reasons stated below. In accordance with Civil Local Rule 54-2(b), Sonos met and conferred
`
`with Google to try to resolve Sonos’s objections, but the parties were unable to reach agreement.
`
`Declaration of Geoffrey Moss in Support of Sonos, Inc.’s Objections to Google LLC’s Bill of
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`Costs (“Moss Decl.”) ¶ 14. Sonos does not object to the remaining costs Google seeks to tax,
`
`subject to Sonos’s pending appeal.
`
`INTRODUCTION
`
`Through its Bill of Costs, Google seeks to recover thousands of dollars in costs that the
`
`Local Rules do not authorize. The Court should deny Google’s request for the costs of transcripts
`
`that Google has not shown were necessarily obtained for appeal; deny Google’s request for the
`
`costs it incurred for its intellectual efforts in preparing document productions; deny Google’s
`
`request for costs unrelated to service of process; and deny Google’s request for fees paid to the
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`Federal Circuit for Google’s mandamus petition. In total, Sonos objects to $38,515.70 in
`
`Google’s costs, as explained below. Under the Local Rules, Google was obligated to “support by
`
`an affidavit” that its costs “are allowable by law,” Civil L.R. 54-1(a), and to provide enough
`
`justification for the Court to assess that its costs are recoverable. See Johnson v. Hewlett-Packard
`
`Co., No. cv-09-03596 CRB, 2014 WL 3703993, at *6 (N.D. Cal. July 24, 2014). Google has
`
`failed to meet these requirements for the costs outlined below.
`
`ARGUMENT
`
`I. THE COURT SHOULD DENY GOOGLE’S REQUEST FOR $7,958.70 IN COSTS
`OF TRANSCRIPTS UNNECESSARY FOR ANY APPEAL.
`
`Google seeks to tax $16,858.20 in costs for transcripts of trial and various hearings
`
`throughout the case pursuant to Civil Local Rule 54-3(b)(1). Bill of Costs (Dkt. 876), at 1. Sonos
`
`objects to $7,958.70 of these costs because they represent costs for erroneously taxed costs,
`
`hearings for which transcript costs are not recoverable, expedited transcripts, extra transcript
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`copies.
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
`
`

`

`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 3 of 11
`
`
`
`Erroneous Costs
`
`Google has included certain inappropriate transcript costs that appear to be included in
`
`error:
`
`
`
`Hearing Date
`
`Apr. 27, 2021
`
`Amount of
`Objection
`$ 91.00
`
`Jul. 13, 2022
`
`$ 676.00
`
`Total
`
`$ 767.00
`
`Basis of Objection
`
`Based on the invoice, this cost relates to a different case,
`Google v. Sonos, Inc., No. 20-3845, pending before Judge
`Chen in the Northern District. See Cooper Decl., Ex. B-1
`(Dkt. 876-4) at 26.
`
`Google submits two invoices for the summary judgment
`hearing: one for $676.00 dated July 18, 2022 (Id. at 15) and
`one for $741.00 dated July 21, 2022 (Id. at 16). The later of
`these invoices applies the earlier $676.00 as a deposit to the
`revised total.
`
`
`
`The Court should not tax these amounts as costs under L.R. 54-3(b)(1).
`
`Miscellaneous Hearings
`
`Civil Local Rule 54-3(b) provides that the costs of “transcripts necessarily obtained for an
`
`appeal” and “transcript[s] of a statement by a Judge from the bench which is to be reduced to a
`
`formal order prepared by counsel” are allowable. Civ. L.R. 54-3(b)(1), (2). By contrast, “[t]he
`
`cost of other transcripts is not normally allowable unless, before it is incurred, it is approved by a
`
`Judge or stipulated to be recoverable by counsel.” Civ. L.R. 54-3(b)(3). In practice, courts in the
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`Northern District treat as taxable certain transcript costs for trial and important hearings such as
`
`summary judgement and claim construction. Apple Inc. v. Samsung Elecs. Co., Ltd., No. 11-
`
`1846, 2014 WL 4745933, at *7 (N.D. Cal., Sept. 19, 2014) (awarding costs of one original
`
`transcript for trial and hearings on summary judgment and claim construction, but not other
`
`miscellaneous hearings); TransPerfect Global, Inc. v. MotionPoint Corp., No. 10-2590, 2014 WL
`
`1364792, at *4 (N.D. Cal. Apr. 4, 2014). By contrast, courts in the Northern District do not
`
`typically treat the transcript costs for other miscellaneous hearings (e.g., discovery motions, status
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`- 2 -
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
`
`

`

`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 4 of 11
`
`
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`conferences) as taxable. Google has provided no basis to tax the transcript costs for the following
`
`miscellaneous hearings:
`
`Hearing Date
`
`Nov. 19, 2020
`Oct. 7, 2021
`Jan. 6, 2022
`Jan. 13, 2022
`Feb. 24, 2022
`Mar. 24, 2022
`May 18, 2022
`
`Jun. 1, 2022
`Dec. 8, 2022
`Feb. 23, 2023
`
`Total
`
`Amount of
`Objection
`$ 175.50
`$ 130.00
`$ 162.50
`$ 158.05
`$ 149.50
`$ 123.50
`$ 10.80
`
`$ 23.40
`$ 195.50
`$110.50
`
`$ 1,239.25
`
`Nature of Hearing
`
`Motion to Dismiss/Transfer. Moss Decl. ¶ 4.
`Status Conference. Id. ¶ 5.
`Discovery Dispute. Id. ¶ 6.
`Motion to Amend Complaint. Id. ¶ 7.
`Motion to Dismiss. Id. ¶ 8.
`Discovery Dispute. Id. ¶ 9.
`Telephonic Conference Regarding Judge Alsup’s Clerk.
`Id. ¶ 10.
`Motion to File Third Amended Complaint. Id. ¶ 11.
`Motion to Amend Invalidity Contentions. Id. ¶ 12.
`Discovery Dispute. Id. ¶ 13.
`
`
`
`Expedited Transcripts and Extra Copies of Transcripts
`
`Google also seeks to tax transcript costs for expedited return of transcripts and multiple
`
`copies of transcripts. “Courts in the Northern District generally allow for recovery of costs for
`
`one copy of the trial transcript.” Apple, 2014 WL 4745933, at *7 (awarding costs of one original
`
`transcript for trial and certain hearings) (citing TransPerfect, 2014 WL 1364792, at *3). In
`
`addition, courts in the Northern District generally do not tax costs for expediting transcripts.
`
`Affymetrix, Inc. v. Multilyte Ltd., No. 03-3779-WHA, 2005 WL 2072113, at *2 (N.D. Cal. Aug.
`
`26, 2005); see also, Apple, 2014 WL 4745933, at *7. This includes not taxing costs for “rough”
`
`transcripts. See, e.g., Vectren Communications Services v. City of Alameda, No. 08-3137, 2014
`
`WL 3612754, at *3 (N.D. Cal. Jul. 22, 2014).
`
`Here, most of the transcripts for which Google seeks costs were ordered on an expedited
`
`basis—delivered on either a 3-day or another expedited timeframe. See Cooper Decl., Ex. B-1
`
`(Dkt. 876-4) at 4, 5, 12-16, 18-27. If a particular transcript is taxable, Google should only recover
`
`the cost of ordinary delivery of the original transcript, not expedited or 3-day delivery. Based on
`
`review of Google’s invoices, the per-page cost of ordinary delivery of transcripts is $3.65/page.
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
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`

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`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 5 of 11
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`
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`See, e.g., id. at 9, 27. Therefore Sonos objects to total costs to expedite each transcript (calculated
`
`as the number of pages multiplied by the difference between per-page rates of expedited and
`
`ordinary delivery). Google also seeks multiple copies of certain transcripts. Sonos objects to the
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`costs for additional copies of transcripts beyond the original copy. A summary of Sonos
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`objections to expedited transcripts and copies of transcripts follows.
`
`Hearing Date
`
`Jul. 13, 2022
`
`Amount of
`Objection
`$324.90
`
`Mar. 30, 2023
`
`$313.50
`
`May 3, 8, 2023
`
`$630.00
`
`May 9-12, 16-
`19, 2023
`
`$4,278.60
`
`May 24, 2023
`
`$171.60
`
`May 26, 2023
`
`$89.85
`
`
`
`
`
`
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`Basis for Objection
`
`Sonos objects to expedited transcript costs: 114 pages ×
`($5.45/page - $3.65/page) = $205.20
`
`Sonos objects to costs for copies beyond original: $119.70
`
`See id. at 15, 16.
`
`Sonos objects to expedited transcript costs: 110 pages ×
`($5.45/page - $3.65/page) = $198.00
`
`Sonos objects to costs for copies beyond original: $115.50
`
`See id. at 12.
`
`Sonos objects to costs for copies beyond original: $630.00
`(300 pages × $1.20/page and 300 pages × $0.90 / page)
`
`See id. at 9.
`
`Sonos objects to costs for copies beyond original: $4,278.60
`(891 pages × $1.20/page and 1783 pages × $1.80 / page)
`
`See id. at 8.
`
`Sonos objects to costs for copies beyond original: $171.60
`(86 pages × $1.20/page and 76 pages × $0.90 / page)
`
`See id. at 5.
`
`Sonos objects to costs for copies beyond original: $25.20
`(42 pages × $0.60/page)
`
`Sonos objects to the cost of rough drafts of the transcript:
`$64.65.
`
`See id. at 4.
`
`- 4 -
`
`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
`
`

`

`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 6 of 11
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`
`
`Hearing Date
`
`Amount of
`Objection
`
`Basis for Objection
`
`Aug. 10, 2023
`
`$144.00
`
`
`Total
`
`
`$ 5,952.45
`
`
`Google does not explain how many pages are in the
`transcript or the rates paid, only that it would be available
`within 3 days of payment. This is insufficient information to
`determine which costs, if any, are taxable.
`
`See id. at 3.
`
`
`
`
`To the extent the Court taxes transcript costs for miscellaneous hearings, despite Sonos’s
`
`objection above, the Court should reduce those costs to exclude expedited transcript and extra
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`copies as follows.
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`
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`Hearing Date
`
`Nov. 19, 2020
`
`Amount of
`Objection
`$76.95
`
`Apr. 27, 2021
`
`$39.90
`
`Oct. 07, 2021
`
`$57.00
`
`Jan. 06, 2022
`
`$71.25
`
`Basis for Objection
`
`Sonos objects to expedited transcript costs: 27 pages ×
`($5.45/page - $3.65/page) = $48.60
`
`Sonos objects to costs for copies beyond original: $28.35
`
`See Cooper Decl., Ex. B-1 (Dkt. 876-4) at 27.
`
`Sonos objects to expedited transcript costs: 14 pages ×
`($5.45/page - $3.65/page) = $25.20
`
`Sonos objects to costs for copies beyond original: $28.35
`
`See id. at 26.
`
`Sonos objects to expedited transcript costs: 20 pages ×
`($5.45/page - $3.65/page) = $36.00
`
`Sonos objects to costs for copies beyond original: $21.00
`
`See id. at 25.
`
`Sonos objects to expedited transcript costs: 25 pages ×
`($5.45/page - $3.65/page) = $45.00
`
`
`- 5 -
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
`
`

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`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 7 of 11
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`
`
`Hearing Date
`
`Amount of
`Objection
`
`Basis for Objection
`
`Jan. 13, 2022
`
`$52.20
`
`Feb. 24, 2022
`
`$65.55
`
`Mar. 24, 2022
`
`$54.15
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`Dec. 08, 2022
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`$71.40
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`Feb. 23, 2023
`
`$48.45
`
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`Total
`
`
`$ 536.85
`
`Sonos objects to costs for copies beyond original: $26.25
`
`See id. at 23, 24.
`
`Sonos objects to expedited transcript costs: 29 pages ×
`($5.45/page - $3.65/page) = $52.20
`
`See id. at 21, 22.
`
`Sonos objects to expedited transcript costs: 23 pages ×
`($5.45/page - $3.65/page) = $41.40
`
`Sonos objects to costs for copies beyond original: $24.15
`
`See id. at 20.
`
`Sonos objects to expedited transcript costs: 19 pages ×
`($5.45/page - $3.65/page) = $34.20
`
`Sonos objects to costs for copies beyond original: $19.95
`
`See id. at 19.
`
`Sonos objects to expedited transcript costs: 34 pages ×
`($4.85/page - $3.65/page) = $205.20
`
`Sonos objects to costs for copies beyond original: $30.60
`
`See id. at 14.
`
`Sonos objects to expedited transcript costs: 17 pages ×
`($5.45/page - $3.65/page) = $30.60
`
`Sonos objects to costs for copies beyond original: $17.85
`
`See id. at 13.
`
`
`
`
`* * *
`
`In total, Sonos objects to $7,958.70 in hearing transcript costs that Google seeks to tax under
`
`Local Rule 54-3(b).
`
`
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`- 6 -
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
`
`

`

`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 8 of 11
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`II. THE COURT SHOULD DENY GOOGLE’S REQUEST TO RECOVER $8,475.75
`IN COSTS FOR NON-SUMMONS DOCUMENTS.
`
`Google seeks to recover “costs for service of motion-related papers and delivery of
`
`chamber’s copies to the Court in the amount of $8,475.75.” See Cooper Decl. (Dkt. 876-1) ¶ 5.
`
`Google invokes Civil Local Rule 54-3(a)(2), which allows “[f]ees for service of process.” As this
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`Court has explained, the Local Rules by their terms allow recovering “fees for service of
`
`process,” not just service of any old documents. Carbon Crest, LLC v. Tencue Productions, LLC,
`
`Case No. 19-8179, 2022 WL 1914065, at *2 (N.D. Cal. June 3, 2022) (emphasis in original).
`
`This Court has thus rejected parties’ efforts to recover costs for service of non-summons
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`documents, such as service of document subpoenas. See id. None of the costs Google seeks are
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`for service of process. See generally Cooper Decl., Ex. A-2 (Dkt. 876-3). Consistent with the
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`Court’s reasoning in Carbon Crest, the Court should reject Google’s request for $8,475.75 in
`
`costs for service of motion-related papers and delivery of chamber’s copies.
`
`III. THE COURT SHOULD DENY GOOGLE’S REQUEST TO RECOVER $21,581.25
`IN E-DISCOVERY COSTS THAT CONSTITUTE INTELLECTUAL EFFORTS.
`
`Google next invokes Civil Local Rule 54-3(d)(2) to recover $21,581.25 for “e-discovery
`
`costs associated with the production and/or reproduction of formal discovery documents by
`
`Quinn Emanuel Urquhart and Sullivan LLP’s in-house Litigation Technology and Support
`
`Team.” Cooper Decl. (Dkt. 876-1) ¶ 9. Although that rule provides that “[t]he cost of
`
`reproducing disclosure or formal discovery documents when used for any purpose in the case” is
`
`allowable, this Court has noted that “fees for exemplification and copying are permitted only for
`
`the physical preparation and duplication of documents, not the intellectual effort involved in their
`
`production.” Oracle America, Inc. v. Google Inc., Case No. 10-03561, 2012 WL 3822129, at *3
`
`(N.D. Cal., Sept. 4, 2012) (quoting Zuill v. Shanahan, 80 F.3d 1366, 1371 (9th Cir.1996)). That
`
`is because the Ninth Circuit has “held that the research, analysis, and distillation of data incurred
`
`in the preparation of documents (as opposed to the costs of physically preparing the documents)
`
`[are] not taxable costs.” Id. (citing Romero v. City of Pomona, 883 F.2d 1418, 1427 (9th Cir.
`
`1989)). This Court has thus previously rejected requests for costs supported by description that
`
`
`
`
`
`
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`- 7 -
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
`
`

`

`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 9 of 11
`
`
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`appeared to be “‘intellectual effort’ such as organizing, searching, and analyzing the discovery
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`documents.” Id. But that intellectual effort is precisely what Google again seeks to recover for
`
`here. Google’s time entries include:
`
` “Capture and process websites into proper format for attorneys in preparation for
`
`prior art document production.” Cooper Decl. Ex. D-2 (Dkt. 876-7) at 3.
`
` “Manage document production with image endorsements and designations.”
`
`Cooper Decl. Ex. D-2 (Dkt. 876-7) at 4.
`
` Make documents in “[s]earchable PDF format for attorney.” Cooper Decl. Ex. D-
`
`2 (Dkt. 876-7) at 4.
`
` “Perform[] an off-process production.” Cooper Decl. Ex. D-2 (Dkt. 876-7) at 8.
`
`Google’s costs in “managing” document productions or preparing documents for attorney
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`review are best characterized as the “intellectual effort” in organizing and analyzing discovery
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`documents, which are not allowable. Google’s costs in “perform[ing] an off-process
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`production”—which covers more than half of the entries in this category of costs (see Dkt. 876-7
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`at 8-24)—do not appear limited to physical preparation of documents for production. Instead,
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`these entries appear to cover tasks that would normally be performed by a “Google Discovery
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`Team,” and instead needed to be performed by Quinn Emmanuel in order to meet unspecified
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`deadlines. Sonos has no way of knowing what tasks the “Google Discovery Team” is charged
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`with, and Google’s declaration in support of its bill of costs does not explain. See Cooper Decl.
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`(Dkt. 876-1), ¶ 9.
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`It is Google’s burden to justify its costs. See Hewlett-Packard Co., 2014 WL 3703993, at
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`*6 (explaining that it is the prevailing party’s burden to “itemize its costs with enough detail to
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`establish they are taxable” and denying costs when the records were “too vague for the Court to
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`determine” that they were for allowable costs) (citation omitted). To the extent there is some
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`taxable amount hidden in these entries, it is impossible for Sonos or the Court to disambiguate
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`them. This Court should not permit Google to unload its burden onto Sonos or the Clerk to figure
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`out which taxable costs, if any, Google could be entitled to based on ambiguous time entries.
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`- 8 -
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
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`

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`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 10 of 11
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`Because Google’s time entries reflect “intellectual effort” and not physical preparation and
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`duplication of documents, Google’s effort to recover these discovery costs should be rejected.
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`IV. THE COURT SHOULD DENY GOOGLE’S REQUEST TO RECOVER THE $500
`MANDAMUS FEE GOOGLE PAID TO THE FEDERAL CIRCUIT.
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`The Local Rules do not permit Google to recover the $500 mandamus filing fee it paid to
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`the Federal Circuit in September 2021. Google seeks to recover the mandamus filing fee under
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`Civil Local Rule 54-3(a)(1). See Cooper Decl. (Dkt. 876-1) ¶ 4, Ex. A-1 (Dkt. 876-2) at 2. But
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`Local Rule 54-3(a)(1) contemplates recovering costs only for “[t]he Clerk’s filing fee if paid by
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`the claimant,” Civil L.R. 54-3(a)(1) (emphasis added), and the Local Rules define “Clerk” as “the
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`Clerk or a Deputy Clerk of the [Northern District of California].” See Civil L.R. 1-5(a); see also
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`Civil L.R 1-5(b) (explaining that the word “Court,” with exceptions not relevant here, “refers to
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`the United States District Court for the Northern District of California”). The $500 that Google
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`seeks to recover for its filing fee to the Federal Circuit thus falls outside the costs that Local Rule
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`54-3(a)(1) allows Google to recover.
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`Nor can Google recover those costs by falling back on Civil Local Rule 54-3(g), which
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`provides for costs authorized under Federal Rule of Appellate Procedure 39. Rule 39 applies only
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`when “an appeal is dismissed,” “a judgment is affirmed,” “a judgment is reversed,” or “a
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`judgment is affirmed in part, reversed in part, modified, or vacated.” Fed. R. App. P. 39(a).
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`Google’s mandamus action did not result in a dismissal or in affirmance or reversal of a
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`judgment. Google therefore cannot recover its filing fee for the mandamus action via Civil Local
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`Rule 54-3(g). The Court should deny Google recovery of the $500 mandamus filing fee.
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
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`Case 3:20-cv-06754-WHA Document 884 Filed 12/01/23 Page 11 of 11
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`Dated: December 1, 2023
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`By: /s/ Clement S. Roberts
`Clement S. Roberts
`Bas de Blank
`Alyssa Caridis
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`ORRICK, HERRINGTON & SUTCLIFFE LLP
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`Sean M. Sullivan
`Cole Richter
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`LEE SULLIVAN SHEA & SMITH LLP
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`Attorneys for Plaintiff and
`Counter-defendant Sonos, Inc.
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`- 10 -
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`SONOS’S OBJECTIONS TO BILL OF COSTS
`3:20-CV-06754-WHA
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