Summary: CAFC reversed in part, vacated in part, and remanded a district court order awarding costs following a summary judgment of noninfringement.

Case: CBT Flint Partners, LLC v. Return Path, Inc.No. 2013-1036 (Fed. Cir. Dec. 13, 2013) (precedential). On appeal from the United States District Court for the N. D. Ga. Before Dyk, O’Malley, and Taranto.

Procedural Posture: Appeal from the district court order awarding costs following a summary judgment of noninfringement. CAFC reversed in part, vacated in part, and remanded.

  • Costs to Prevailing Party: Applying 11th Circuit law, the Federal Circuit addressed the question of which specific costs of electronic-document production were properly taxable as costs of “making copies” under 28 U.S.C. § 1920(4). As a general matter, the Federal Circuit held that to the extent that a party is obligated to produce electronic documents in a particular format or with particular characteristics intact, the costs to make duplicates in such a format are recoverable under section 1920(4). The Federal Circuit further held that the costs associated with the initial imaging of source media and the extraction of metadata are fairly considered as costs of making copies. Similarly, the costs of copying responsive documents to production media were held as recoverable under section 1920(4). The costs associated with intermediate activities—indexing, decryption, de-duplication, filtering, analysis, searching, and review to determine responsiveness and privilege—were not “costs of making copies” within the meaning of section 1920(4).

O’Malley, concurring in part and dissenting in part:

  • Costs to Prevailing Party: Dissenting from the portion of the majority opinion that authorizes, as “costs” under section 1920(4), pre-duplication expenses associated with the imaging of source media and the extraction of metadata. These costs are more properly described as those leading up to duplication and not steps involved in the duplication process.