Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 1 of 12 PageID #:6538
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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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`FRESENIUS KABI USA, LLC,
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`Plaintiff,
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`Defendant.
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`v.
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`Civil Action Nos. 1:16-cv-00651
` 1:17-cv-07903
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`Hon. Judge Rebecca R. Pallmeyer
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`HOSPIRA’S OBJECTIONS TO FRESENIUS KABI’S BILL OF COSTS
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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 2 of 12 PageID #:6539
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`TABLE OF CONTENTS
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`I.
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`II.
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`III.
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`IV.
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`Fees of the Clerk Should Not Be Included ..........................................................................1
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`Fees for Transcripts Should be Reduced from $36,807.51 to $21,578.82 ...........................2
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`A.
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`B.
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`C.
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`D.
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`Fees for Realtime Transcripts Should Not Be Included ..........................................2
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`Fees for Videotaping Certain Depositions Should Not Be Included .......................2
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`Fees for Exhibit Copies Should Not Be Included ....................................................2
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`Certain Fees for Expedited Transcripts Should Not Be Included ............................3
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`Fees for Witness Disbursements Should Be Reduced from $35,826.08 to
`$25,526.08............................................................................................................................4
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`Fees for Exemplification and Printing Should Be Reduced from $65,373.15 to
`Zero ......................................................................................................................................4
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`A.
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`B.
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`Fresenius Kabi’s Fees for Duplication Should Not Be Included .............................4
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`Fresenius Kabi’s Fees for Exemplification Should Not Be Included ......................5
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`CONCLUSION ................................................................................................................................7
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`i
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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 3 of 12 PageID #:6540
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`Fresenius Kabi requests $138,106.74 in costs. For the reasons discussed below,
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`Fresenius Kabi is entitled to only $49,690.72, and the Court should reduce Fresenius Kabi’s
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`request to this amount.
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`Costs that may be taxed for the prevailing party are limited to: (1) select clerk fees; (2)
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`certain fees for transcripts necessarily obtained for use in the case; (3) fees and disbursements for
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`printing and witnesses; (4) fees for exemplification and copying concerning materials necessarily
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`obtained for use in the case; (5) docket fees; and (6) compensation of court appointed experts and
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`for interpretation services. 28 U.S.C. § 1920 (2012). Costs beyond these specified categories
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`may not be awarded. See Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 445 (1987)
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`(superseded by statute on other grounds). “The prevailing party bears the burden of
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`demonstrating the amount of its recoverable costs because the prevailing party knows, for
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`example, how much it paid for copying and for what purpose the copies were used.” First
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`Midwest Bank v. City of Chicago, 337 F. Supp. 3d 749, 782 (N.D. Ill. 2018). As discussed
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`below, some of Fresenius Kabi’s requests fail to meet this standard.
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`I.
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`Fees of the Clerk Should Not Be Included
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`Fresenius Kabi requests $100.00 for the pro hac vice applications for two of its counsel.
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`(Dkt. 185 at 2.) This fee is not recoverable. SP Techs., LLC v. Garmin Int'l, Inc., No. 08 CV
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`3248, 2014 WL 300987, at *1 (N.D. Ill. Jan. 10, 2014) (Pallmeyer, J.). Fresenius Kabi relies on
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`dicta from United States v. Emergency Med. Assocs. of Illinois, Inc., 436 F.3d 726, 730 (7th Cir.
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`2006) for its request, but that dicta has not changed the settled law in this District.. (Dkt. 185 at
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`2.) See e.g., Garmin Int'l, Inc., 2014 WL 300987; Oleksy v. Gen. Elec. Co., No. 06-CV-1245,
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`2016 WL 7217725, at *2 (N.D. Ill. Dec. 12, 2016); Abrams v. Van Kampen Funds, Inc., No. 01
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`C 7538, 2006 WL 452419, at *5 (N.D. Ill. Feb. 21, 2006).
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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 4 of 12 PageID #:6541
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`II.
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`Fees for Transcripts Should be Reduced from $36,807.51 to $21,578.82
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`Hospira does not object to the majority of Fresenius Kabi’s costs in this category.
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`However, Fresenius Kabi’s request concerning transcripts includes the following non-taxable
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`costs: costs for (a) realtime transcripts; (b) unnecessary video depositions; (c) deposition exhibit
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`copies; and (d) unnecessary expedited transcripts. These costs should not be awarded.
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`A.
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`Fees for Realtime Transcripts Should Not Be Included
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`Realtime services are obtained for the convenience of the attorneys and are not taxable.
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`Cascades Computer Innovation, LLC v. Samsung Elects. Co., No. 11-CV-4574, 2016 WL
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`612792, at *4 (N.D. Ill. Feb. 16, 2016). Fresenius Kabi concedes as much but still included this
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`cost in its request, presumably by error. (See Dkt. 185 at 3; Dkt. 185, Ex. 4.) The cost for
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`realtime services, which should be excluded from Fresenius Kabi’s award, is $1,780.80. (See
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`Ex. 1.)
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`B.
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`Fees for Videotaping Certain Depositions Should Not Be Included
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`“Generally, [c]ourts in this circuit will not award costs for videotaping depositions where
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`a transcript was also purchased.” Garmin Int'l, Inc., 2014 WL 300987, at *5 (internal quotes
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`omitted). Only costs for video depositions actually played at trial as affirmative testimony will
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`be taxed. Chamberlain Group, Inc. v. Techtronic Industries Co., Ltd., 315 F.Supp.3d 977, 1023
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`(N.D. Ill. 2018). But Fresenius Kabi’s request includes the videotape costs for twelve
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`depositions—including three of its own witnesses (James Kipp, Shweta Mowli and Abby
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`Hickman)—that were never played at trial. The videotape costs for these twelve depositions are
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`not recoverable. Fresenius Kabi’s costs should be reduced by $7,500.00. (See Ex. 2.)
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`C.
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`Fees for Exhibit Copies Should Not Be Included
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`The requesting party must demonstrate that copies of deposition exhibits for which it
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`seeks costs were reasonable and necessary, and not merely made for attorney convenience.
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`2
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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 5 of 12 PageID #:6542
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`Garmin Int'l, Inc., 2014 WL 300987, at *6; Nilssen, 2007 WL 257711 at *3. In Nilssen, the
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`requesting party used 837 pages of exhibits for a two-day deposition. Nilssen, 2007 WL 257711
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`at *3. The court held the associated cost non-recoverable because the party failed to demonstrate
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`that the exhibits were reasonable and necessary. Here, by way of example, Fresenius Kabi’s
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`request is even more excessive—it seeks costs for 953 pages of exhibits printed for a single 5.5
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`hour deposition. (See, e.g., Dkt. 185-6 at 2.) Fresenius Kabi, like the party in Nilssen, “has not
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`demonstrated that copies of the exhibits were reasonable and necessary for the depositions,
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`especially in light of the number of exhibits copied by the court reporter services.” Id. Fresenius
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`Kabi’s costs should be reduced by $3,963.57. See e.g., Garmin Int'l, Inc., 2014 WL 300987, at
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`*6. (See Ex. 3.)
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`D.
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`Certain Fees for Expedited Transcripts Should Not Be Included
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`Courts generally decline to award costs for expedited transcripts unless the party
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`“articulates some specific necessity.” First Midwest Bank, 2018 WL 4126570, at *20. Fresenius
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`Kabi fails to do so. Instead, it provides only a blanket assertion that the 5-day expedited
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`transcripts were necessary to prepare for trial. (Dkt. 185 at 6.) But each of the depositions for
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`which it ordered expedited transcripts took place many weeks before trial. If that is not enough,
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`many of these expedited transcripts were not relevant to subsequent depositions. For example,
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`Fresenius Kabi seeks to be reimbursed for expediting the transcript of the June 13, 2018,
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`deposition of Hospira’s licensing expert (Dkt. 185-6 at 1), which took place after the deposition
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`of Fresenius Kabi’s licensing expert on June 7, 2018 (Dkt. 185-7 at 1) and more than a month
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`before trial began.
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`Fresenius Kabi should not be awarded costs for the expedited transcripts of the following
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`witnesses that were not relevant to subsequent depositions: Christopher Seaton, Eric Sheinin,
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`3
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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 6 of 12 PageID #:6543
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`Michael Maile, Ivan Hofmann, and James Kipp. Fresenius Kabi’s cost should be reduced by
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`$1,984.32. (See Ex. 4.)
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`III.
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`Fees for Witness Disbursements Should Be Reduced from $35,826.08 to $25,526.08
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`Fresenius Kabi includes expert fees for time spent preparing for deposition. (Dkt. 185 at
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`13.) However, “[i]n the absence of a sufficiently detailed explanation of the appropriateness of
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`the time spent on deposition preparation, the costs of the experts’ purported preparation time will
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`be denied.” Garmin Int'l, Inc., 2014 WL 300987, at *8. Fresenius Kabi’s invoices indicate that
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`certain time was spent on deposition preparation but fails to provide any detail to evaluate the
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`appropriateness of the time spent on preparation. Id. (See, e.g., Dkt. 185-10 at 6, listing 13
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`hours for Dr. Maile for “Document Review/ Deposition Preparation.”) As such, no costs should
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`be awarded for “preparation” time billed by Fresenius Kabi’s experts and its cost should be
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`reduced by $10,300.00. (See Ex. 5.)
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`IV.
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`Fees for Exemplification and Printing Should Be Reduced from $65,373.15 to Zero
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`Fresenius Kabi also seeks a number of costs associated with copying and exemplification.
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`While exemplifications and copying costs can be recoverable in certain instances, the costs
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`sought by Fresenius Kabi here either lack sufficient description to justify the costs or are plainly
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`not recoverable under 28 U.S.C. § 1920.
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`A.
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`Fresenius Kabi’s Fees for Duplication Should Not Be Included
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`A party is only entitled to the cost of documents printed and provided to the court or to
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`other parties in the case. Cascades Computer Innovation, 2016 WL 612792, at *6. “A
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`prevailing party may not simply make unsubstantiated claims that such documents were
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`necessary, since the prevailing party alone knows for what purpose the copies were made.”
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`Interclaim Holdings Ltd. v. Ness, Motley, Loadholt, Richardson & Poole, No. 00 C 7620, 2004
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`WL 557388, at *2 (N.D. Ill. Mar. 22, 2004) (Pallmeyer, J.) (internal quotes omitted). There is no
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`4
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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 7 of 12 PageID #:6544
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`need for a party to provide a document-by-document breakdown of its copying costs but “where
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`the court is unable to determine whether photocopies were reasonable or necessary for use in a
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`case, that claim for costs should be denied.” Id.; see also Davis v. Budz, No. 99 C 3009, 2011
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`WL 1303435, at *2 (Pallmeyer, J.) (N.D. Ill. Mar. 31, 2011).
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`Here, Fresenius Kabi claims $16,060.63 of costs associated with copies made for trial and
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`depositions. (Dkt. 18 at 15-20.) But Fresenius Kabi provides no explanation as to why these
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`costs were reasonable or necessary such that they are recoverable. For example, Fresenius Kabi
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`claims $6,263.82 for copies of (1) “Expert Report Set for Trial”; (2) “War Room Set of
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`Documents”; (3) “DTX Set for Courthouse”; and (4) “PTX and JTX Set for Courthouse,” (Dkt.
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`185 at 15), but failed to indicate whether any of these copies were actually used at trial or were
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`otherwise necessary. Given today’s technology, it seems more reasonable to print copies for the
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`courthouse or a war room, as needed, rather than print numerous copies of voluminous exhibit
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`sets. Fresenius Kabi’s unsubstantiated claims that all of its copying costs were “necessary
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`photocopying costs” should be rejected.
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`B.
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`Fresenius Kabi’s Fees for Exemplification Should Not Be Included
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`Exemplification costs must actually be necessary, not just a convenience or extravagance.
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`Oleksy, 2016 WL 7217725, at *11. A court will not “merely accept a party’s generalized and
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`conclusory assertion that its demonstrative exhibit was necessary.” Id. Where a party fails to
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`support its claimed exemplification costs, the court can reduce the amount of those costs or deny
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`them outright. Cascades Computer Innovation, 2016 WL 612792, at *7 (reducing costs by
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`75%); Higbee v. Sentry Insurance Co., No. 97-CV-1349, 2004 WL 1323633, at *5 (N.D. Ill.
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`June 11, 2004) (denying all exemplification costs).
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`Fresenius Kabi seeks $5,103.75 for services performed by Blueprint Trial Consulting and
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`$36,900.00 from Innovative Trial Services for the preparation and presentation of demonstratives
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`5
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`

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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 8 of 12 PageID #:6545
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`during the trial. Fresenius Kabi fails to provide any documentation on which, if any,
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`demonstratives were presented at trial. Its “generalized and conclusory assertion” that all of
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`these charges were for graphics “necessarily and reasonably obtained” for the case (Dkt. 185-1 at
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`8) is insufficient. Oleksy, 2016 WL 7217725, at *11. Therefore these costs should be denied in
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`their entirety.
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`Alternatively, if the Court deems some of these costs reasonably necessary, the Court
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`should still deduct the following costs:
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`• Blueprint Trial Consulting. Fresenius Kabi’s invoices indicate that $2,812.50 was
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`billed for “graphic consulting.” (See Ex. 6.) This cost is not taxable. “[T]he
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`cases draw the line ‘between the costs of conducting the research and analysis
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`eventually reflected in the exhibit, and the cost of actually preparing the exhibit
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`itself. The latter is deemed compensable while the former is not.” The Medicines
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`Co. v. Mylan Inc., No. 11-CV-1285, 2017 WL 4882379, at *12 (N.D. Ill. Oct. 30,
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`2017) (internal quotes omitted).
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`•
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`Innovative Trial Services (“ITS”). Fresenius Kabi’s invoices indicate that
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`$32,100.00 was billed for “Marking Exhibits,” “Demonstratives,” “Trial Prep.”
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`(Dkt. 185-14 at 5.) None of these vague entries appear to be associated with “in-
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`court trial technician duties” and therefore do not constitute taxable costs. (See
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`Ex. 6.) Courts have declined to award costs for services that are typically
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`characterized as “‘legal support’ – work that is usually performed by counsel,
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`paralegals, or law firm staff.” Artunduaga v. Univ. of Chicago Med. Ctr., No. 12
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`C 8733, 2017 WL 1355873, at *4 (N.D. Ill. Apr. 13, 2017); see also The
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`6
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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 9 of 12 PageID #:6546
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`Medicines Co., 2017 WL 4882379, at *12 (only awarding trial technician time for
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`the “hours of in-court trial technician duties” (emphasis added)).
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`Separately, Fresenius Kabi seeks $4,722.95 from Strut Legal for creating electronic post-
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`trial briefs. Fresenius Kabi failed to provide evidence in support of this charge—i.e., an invoice
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`from Strut Legal—so the cost should be denied for this reason alone. Druckzentrum Harry Jung
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`GmbH & Co. KG v. Motorola, Inc., No. 09-CV-7231, 2013 WL 147014, at *5 (N.D. Ill. Jan. 11,
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`2013) (“[T]he prevailing party must prove with evidence and not merely with ipse dixit
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`statements—that the costs were actually incurred, were reasonable in amount, and were
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`necessary” (internal quotes omitted)). Further, Fresenius Kabi provides no explanation why (1)
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`this cost constitutes a fee for exemplification and (2) why this cost is necessary. See Cefalu v.
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`Vill. of Elk Grove, 211 F.3d 416, 428 (7th Cir. 2000) (“even when a particular item qualifies as
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`exemplification, a court must still determine whether it was necessarily obtained for use in the
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`case” (internal quotes omitted)). Indeed, Fresenius Kabi’s decision to prepare e-briefs “was
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`merely a convenience” and was not “vital to the presentation of information.” Id. at 428-429.
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`Tellingly, Fresenius Kabi’s cites only Medicines Co. v. Mylan Inc. (Dkt. 185 at 20) in support of
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`its contention that this cost is not taxable, but that case says nothing about e-briefs. Fresenius
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`Kabi’s e-brief fees of $4,722.95 should not be included. (See Ex. 6.)
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`CONCLUSION
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`For the foregoing reasons, and as summarized in the table below, Hospira requests that
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`this Court reduce Fresenius Kabi’s cost request by $88,416.02, and award no more than
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`$49,690.72.
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`7
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`

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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 10 of 12 PageID #:6547
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`Category
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`I. Fees of the clerk
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`II.A Trial & hearing
`transcripts
`II.B.1. Dep. transcripts –
`Hsp experts (See Ex. 7.)
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`II.B.2. Dep. transcripts –
`FK experts (See Ex. 7.)
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`II.B.3. Dep. transcripts –
`fact witnesses (See Ex. 7.)
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`III.B. Expert discovery
`costs
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`IV.B. Copying at trial
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`IV.C. Copying for deps
`and prep
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`IV.D. Exemplification
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`TOTAL
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`
`
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`Brief Explanation
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`FK’s
`Requested
`Amount
`$100.00
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`$5,232.13
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`$17,199.57
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`$5,912.65
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`$2,904.65
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`$8,463.15
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`$2,634.30
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`
`Hospira’s
`Proposed
`Reduction
`$100.00 Fees for pro hac vice application not
`recoverable
`$1,780.80 Fees for realtime transcripts not
`recoverable
`$7,908.94 Not properly documented and
`includes charges for video
`depositions, exhibit copies, and
`expedited transcripts which are not
`recoverable
`Not properly documented and
`includes charges for video
`depositions, exhibit copies, and
`expedited transcripts which are not
`recoverable
`Not properly documented and
`includes charges for video
`depositions and exhibit copies which
`are not recoverable
`$26,882.50 $10,300.00 Not properly documented and
`includes charges for deposition
`preparation which are not
`recoverable
`$11.215.05 $11.215.05 Not properly documented and
`includes charges for copies made for
`attorney convenience which are not
`recoverable
`$4,845.58 Not properly documented and
`includes charges for copies made for
`attorney convenience which are not
`recoverable
`$46,726.70 $46,726.70 Not properly documented and
`includes charges for consulting, legal
`support, and e-briefs which are not
`recoverable
`
`
`$4,845.58
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`$138,106.74 $88,416.02
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`8
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`

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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 11 of 12 PageID #:6548
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`Dated: January 31, 2019
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`Respectfully submitted,
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`/s/ Sara T. Horton
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`Bradford P. Lyerla
`Sara T. Horton
`Aaron A. Barlow
`Yusuf Esat
`Ren-How H. Harn
`JENNER & BLOCK LLP
`353 N. Clark Street
`Chicago, IL 60654-3456
`(312) 222-9350
`blyerla@jenner.com
`shorton@jenner.com
`abarlow@jenner.com
`yesat@jenner.com
`rharn@jenner.com
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`Attorneys for Plaintiff Hospira, Inc.
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`9
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`Case: 1:16-cv-00651 Document #: 188 Filed: 01/31/19 Page 12 of 12 PageID #:6549
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`CERTIFICATE OF SERVICE
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`I, Ren-How Harn, an attorney at the law firm of Jenner & Block LLP, certify that on
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`January 31, 2019 the foregoing Hospira’s Objections to Fresenius Kabi’s Bill of Costs was
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`electronically served on counsel of record via the Court’s CM/ECF system.
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`/s/ Ren-How Harn______
`Ren-How Harn
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`10
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