Case: 1:16-cv-00651 Document #: 185-1 Filed: 01/16/19 Page 1 of 8 PageID #:6346
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF
`ILLINOIS EASTERN DIVISION
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`HOSPIRA, INC.
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`Plaintiff,
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`v.
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`FRESENIUS KABI USA, LLC,
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`Defendant.
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`C.A. No. 1:16-cv-00651
`C.A. No. 1:17-cv-07903
`(Consolidated)
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`Hon. Rebecca R. Pallmeyer
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`I, Joel M. Wallace, hereby declare as follows:
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`1.
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`I am a partner at the law firm of Schiff Hardin LLP and represent Fresenius Kabi
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`USA, LLC in the above-captioned action. I am a member in good standing of the State Bar of
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`Illinois, and the United States District Court for the Northern District of Illinois.
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`2.
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`Attached as Exhibit 1 to Fresenius Kabi’s Bill of Costs and Disbursements is a
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`true and correct copy of this Court’s Final Judgment in favor of Fresenius Kabi and against
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`Plaintiff Hospira, Inc. with respect to the invalidity of U.S. Patent Nos. 8,648,106 and 9,616,049.
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`(16-651, D.I. 177; 17-7903, D.I. 110.) The Court found all claims asserted by Hospira against
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`Fresenius Kabi at trial invalid as obvious.
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`3.
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`Attached as Exhibit 2 is a true and correct copy of this Court’s signed Consent
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`Judgment and Stipulated Dismissal indicating the dismissal with prejudice of Hospira’s U.S.
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`Patent Nos. 8,242,158; 8,338,470; 8,455,527; and 9,320,712. (16-651, D.I. 184; 17-7903, D.I.
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`116.) All patents asserted by Hospira during this litigation against Fresenius Kabi have been
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`found to be invalid or not infringed by Fresenius Kabi’s ANDA Product.
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`Case: 1:16-cv-00651 Document #: 185-1 Filed: 01/16/19 Page 2 of 8 PageID #:6347
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`4.
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`Attached as Exhibit 3 to Fresenius Kabi’s Bill of Costs are true and correct copies
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`of the docket entries relevant to the fees for the payment of fees for the admission pro hac vice
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`for Ms. Gina Bassi and Mr. Ahmed Riaz. (16-651, D.I. 13, 14, 16.) The applications for Mr. Riaz
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`and Ms. Bassi were necessary to the litigation. Mr. Riaz was essential to the litigation. He took
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`fact and expert witness depositions, conducted critical research and legal strategy throughout the
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`case, and presented at trial. Ms. Bassi oversaw the litigation in its pretrial and early pleading
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`stages until she left the firm, including preparing the original Answer and Counterclaims for
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`Fresenius Kabi. The total cost of clerk fees was $100.00.
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`5.
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`Attached as Exhibit 4 to Fresenius Kabi’s Bill of Costs are true and correct copies
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`of the court reporters’ invoices for transcripts of the trial proceedings held in this litigation on
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`July 16-20, 2018 and other court proceedings, totaling $5,232.13. Daily trial transcripts were
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`necessary due to the technical nature of the witness testimony and the large quantity of exhibits
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`that were admitted into evidence. Daily trial transcripts were used in this case, inter alia, to
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`prepare for witness examination and to ensure that exhibits were properly admitted into
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`evidence. Daily trial transcripts were also referred to during subsequent trial days during witness
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`examinations. The trial transcripts were also cited extensively during post-trial briefing and by
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`the Court in its Opinion. Invoices for transcripts of the pretrial hearing on July 6, 2018, claim
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`construction hearing on December 11, 2017, and discovery hearings on August 10, 2017,
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`February 4, 2016, September 19, 2017, January 25, 2018, October 4, 2018, and November 13,
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`2018 are included in this total. Transcripts of these hearings were used at trial, for trial
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`preparation, for compliance with the Court’s oral rulings on discovery motions, to provide out-
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`of-state counsel with a record of the hearings, and for use in filing and responding to various
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`motions filed in the case. Also included is the invoice for the transcript of the Pretrial Conference
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`Case: 1:16-cv-00651 Document #: 185-1 Filed: 01/16/19 Page 3 of 8 PageID #:6348
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`from the Amneal litigation in Delaware, which was obtained and used for preparation of trial
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`strategy and in the preparation of discovery motions and hearings.
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`6.
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`Attached as Exhibit 5 to Fresenius Kabi’s Bill of Costs are true and correct copies
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`of invoices for the recording and transcribing of the depositions of Hospira’s expert witnesses,
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`Christopher Seaton, Dr. Robert Linhardt, Dr. Stephan Ogenstad, Dr. Eric Sheinin, James White,
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`Andrew Carter, and Dr. Michael Ramsay totaling $17,199.57. The depositions transcripts for
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`these witnesses were necessarily obtained for use in this case, including in preparation for and
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`during examination of these witnesses at trial. Expedited delivery fees have been included
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`because of the truncated schedule and timing of the depositions. Most depositions were taken in
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`June 2018, and trial was scheduled for July 2018. Given the need to prepare the Pretrial Order
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`and to prepare trial examinations, waiting for normal delivery of the transcripts was not possible.
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`Fees associated with the video transcription have been included. At the time the depositions were
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`taken, Fresenius Kabi did not know if each expert would be available to testify at trial. In fact,
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`the deposition video of Dr. Sheinin was played at trial because of his unavailability.
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`Additionally, each expert witness was included on the parties’ “may call” or “will call” lists in
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`the Final Pretrial Order. (D.I. 114-6 at 2-3; 114-7 at 2-3.) Realtime fees, rough draft fees,
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`shipping and handling fees, DVD media costs, and fees for litigation packages were excluded
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`from the Bill of Costs.
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`7.
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`Attached as Exhibit 6 to Fresenius Kabi’s Bill of Costs are true and correct copies
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`of invoices for the recording and transcribing of the depositions of Fresenius Kabi’s expert
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`witnesses, Peter Lankau, Dr. James Kipp, Dr. Michael Maile, and Ivan Hofmann, totaling
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`$5,912.65. The depositions transcripts for these witnesses were necessarily obtained for use in
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`this case, including in preparation for and during examination of these witnesses at trial. Fees for
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`3
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`expedited delivery of the transcripts were necessary because of the truncated schedule and timing
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`of the depositions. Most depositions were taken in June 2018, and trial was scheduled for July
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`2018. Given the need for witnesses to review the final transcripts and prepare errata, and for
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`attorneys to prepare the Pretrial Order and trial examinations, waiting for normal delivery of the
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`transcripts was not possible. Fees associated with the video transcription of Dr. Kipp have been
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`included. Fresenius Kabi did not obtain the videos of Dr. Maile, Mr. Lankau, or Mr. Hofmann,
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`so their cost is not requested. Realtime fees, rough draft fees, shipping and handling fees, and
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`fees for litigation packages were excluded from the Bill of Costs.
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`8.
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`Attached as Exhibit 7 to Fresenius Kabi’s Bill of Costs are true and correct copies
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`of invoices for the recording and transcribing of the depositions of the fact witnesses in this case,
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`Dr. Robert Cedergren, Dr. Rao Tata-Venkata, Dr. Priyanka Roychowdhury, Mr. Dave Engels,
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`Ms. Shweta Mowli, Dr. Basma Ibrahim, and Ms. Abby Hickman, totaling $8,463.15. The
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`depositions transcripts for these witnesses were necessarily obtained for use in this case,
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`including in providing to expert witnesses for consideration in forming opinions regarding the
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`on-sale bar, obviousness, and secondary considerations, and preparation for and during
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`examination of these witnesses at trial. The fact witnesses were identified on the parties’ “may
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`call” or “will call” lists and deposition designations were identified in the Pretrial Order. (16-cv-
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`651, D.I. 114-6, 114-7, 114-8, 114-9.) At the time the fact depositions were taken, in November
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`2016, it was unknown if each witness would be available to appear live at trial. Moreover, the
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`parties continued to negotiate which witnesses would appear live or by video designation until
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`the eve of trial. Portions of video depositions of Dr. Tata-Venkata and Dr. Ibrahim were played
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`at trial. Realtime fees, rough draft fees, shipping and handling fees, and fees for litigation
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`packages were excluded from the Bill of Costs.
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`4
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`9.
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`Attached as Exhibit 8 to Fresenius Kabi’s Bill of Costs are true and correct copies
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`of invoices for the travel expenses for testimony of Fresenius Kabi’s witnesses. All of the
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`necessary travel expenses of these witnesses in Part III(A) were paid by Fresenius Kabi, totaling
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`$3,539.08. For depositions, travel expenses were incurred only by Mr. Lankau, Dr. Maile, and
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`Mr. Hofmann. For trial, travel expenses were incurred by Mr. Lankau and Dr. Maile. Fresenius
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`Kabi’s fact witnesses and Dr. Kipp all reside in this judicial district, so no travel fees were
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`necessary. Expert depositions took place in this judicial district to avoid the need for issuance of
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`subpoenas. Fresenius Kabi paid for the lodging for the deposition of Mr. Lankau, Dr. Maile, and
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`Mr. Hofmann. The actual cost of lodging exceeded the GSA rate, so Fresenius Kabi requests the
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`GSA amount. Fresenius Kabi paid lodging for Ms. Mowli, Mr. Lankau, Dr. Maile, and Dr. Kipp.
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`Ms. Mowli required lodging for one night because she came to the courthouse expecting to be
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`called on Wednesday, July 18, 2018. However, Hospira did not call her that day, but instead
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`called her on Thursday, July 19, 2018. Ms. Mowli lives in a far north suburb and had her infant
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`with her because she was breastfeeding at that time. It was infeasible for Ms. Mowli to return
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`home after trial then return the next morning. For that reason, Ms. Mowli was provided lodging
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`for the night of July 18, 2018. Dr. Kipp lives in the district, but in a distant suburb. In order for
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`Dr. Kipp to be available to attend trial and to consult with counsel both before and after trial
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`days, it was infeasible for him to return home each evening. For this reason, Fresenius Kabi
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`provided lodging for Dr. Kipp in Chicago for the duration of trial. Fresenius Kabi provided
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`lodging to Mr. Lankau for the first three nights of trial. Portions of expert fee summaries not
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`related to taxable costs have been obscured as irrelevant and implicating protected work product.
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`10.
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`Attached as Exhibit 9 to Fresenius Kabi’s Bill of Costs are true and correct copies
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`of invoices for the fees of Fresenius Kabi’s experts Mr. Lankau, Dr. Kipp, Dr. Maile, and Mr.
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`5
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`Hofmann for the time taken during deposition and preparing for depositions requested by
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`Hospira, totaling $26,882.50. The fees were incurred by Fresenius Kabi’s experts in response to
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`Hospira’s request for expert discovery by deposition. These fees were billed at each expert’s
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`normal rates for deposition and preparation. The amount of preparation fees only includes time
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`spent by each expert reviewing documents for the deposition the day before the deposition and
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`does not include time spent in conversation with counsel. Portions of expert fee summaries not
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`related to taxable costs have been obscured as irrelevant and implicating protected work product.
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`11.
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`Attached as Exhibit 10 to Fresenius Kabi’s Bill of Costs are true and correct
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`copies of invoices for costs incurred in the conversion of native files to TIFF format and OCR
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`conversion to produce documents requested by Hospira, totaling $2,585.82. These costs were
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`necessarily incurred by Fresenius Kabi in this litigation for production of documents to Hospira
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`in response to its request for the production of documents and things. The rate charged is
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`reasonable and consistent with industry-wide practice. The production of documents in TIFF
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`format was agreed by the parties. Where only some fees have been included in Fresenius Kabi’s
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`Bill of Costs from a particular invoice, the non-relevant fees have not been included.
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`12.
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`Attached as Exhibit 11 are true and correct copies of invoices incurred for
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`photocopying at trial. The total requested cost is $11,215.05. The invoices reflect necessary and
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`reasonable expenses for deposition transcripts, exhibits, and materials for witness binders
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`submitted to the (1) Court, (2) witness, (3) court reporter, and (4) opposing counsel during trial.
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`The invoices also include other ordinary copying expenses reasonably incurred in the trial. The
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`rates charged for copying are consistent with rates approved in this district—$0.08 per page for
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`black and white and $0.50 per page for color copies. Fresenius Kabi has requested half its costs
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`for witness demonstratives and binders to exclude copies made for its counsels’ convenience.
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`6
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`The invoices also include costs for providing a complete set of admitted exhibits and
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`demonstratives to the Court at the conclusion of trial. For purposes of witness examination, there
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`was no single set of exhibit binders for reference, rather, each individual witness binder would
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`contain new copies of any exhibits that may have been used previously with another witness,
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`consistent with typical practice in patent litigations.
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`13.
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`Attached as Exhibit 12 are true and correct copies of invoices incurred for
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`necessary photocopying for depositions taken in this case, totaling $9,691.15. The requested
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`amount is half this total, or $4,845.58. The invoices include photocopying of potential exhibits
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`and materials needed for the preparation for, taking, and defending of fact and expert witness
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`depositions in this litigation. The rates charged for copying are consistent with rates approved in
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`this district, i.e. $0.08 per page for black and white and $0.50 per page for color copies by
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`outside vendors. Schiff Hardin’s in-house copying rate of $0.15 per page for black and white and
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`$0.65 per page for color copies is also reasonable and consistent with fees awards in this district.
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`Fresenius Kabi reduced its costs by creating a single set of exhibits for the depositions of
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`Hospira’s fact witnesses taking place in Chicago. During the fact deposition period, the parties
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`agreed to coordinate discovery with the Amneal litigation taking place in Delaware, further
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`reducing the overall cost of copying for the fact depositions. Hospira identified Ms. Zboril as a
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`30(b)(6) witness to testify on behalf of Hospira in response to Fresenius Kabi’s deposition
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`request related to agreements at issue in the litigation. A time had been set, but the deposition
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`was not taken because Hospira later stated that she had no corporate knowledge related to the
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`topics. Hospira stated that it “may call” Ms. Zboril live at trial in drafts and the final version of
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`the Pretrial Order. (D.I. 114-6, at 2.) Fresenius Kabi requested a deposition of Ms. Zboril and a
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`time had been set. At the last moment, the deposition was postponed, and Hospira continued to
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`equivocate as to whether she would be called at trial until July 5, 2018. At the time Fresenius
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`Kabi incurred the costs, they were reasonable believed to be necessary for trial because Ms.
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`Zboril’s deposition had been scheduled, and Hospira indicated she may be called at trial.
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`Portions of expert fee summaries not related to taxable costs have been obscured as irrelevant
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`and implicating protected work product.
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`14.
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`Attached as Exhibit 13 are true and correct copies of invoices of charges for
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`exemplification necessarily for the presentation of exhibits and demonstratives at trial, totaling
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`$46,726.70. These costs were incurred for the preparation and presentation of demonstratives
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`that were necessarily and reasonably obtained in this case. The demonstratives were provided to
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`aid the Court in its review of the numerous technical exhibits and concepts discussed in the
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`litigation. The invoices also include time for trial consultant Ted Haw, who presented exhibits to
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`the Court to increase the efficiency of the trial presentation. The charges for Mr. Haw’s lodging,
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`travel, and subsistence have been excluded from the requested costs. The invoice from Strut
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`Legal was for the creation of the hyperlinked post-trial briefs submitted to the Court. The
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`hyperlinked briefs were submitted to provide a more efficient and time-saving method for the
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`Court to evaluate the complex evidence and extensive record.
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`15.
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`I have reviewed Fresenius Kabi’s Bill of Costs and all of its exhibits. Each item
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`stated therein is true and correct, and was necessarily incurred in this case and the services for
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`which fees have been charged were actually and necessarily performed.
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`16.
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`I declare under penalty of perjury under the laws of the United States of America
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`that the foregoing is true and correct.
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`Executed on January 16, 2019
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`__/s/ Joel M. Wallace___________
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`Joel M. Wallace
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`8
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