Case Law: CBT Flint Partners, LLC v. Return Path, Inc.

Federal Circuit Court of Appeals Vacates Taxation of Costs Decision

CBT Flint Partners, LLC v. Return Path, Inc., 2011 WL 3487023 (C.A.Fed. (Ga.)). Previously in this patent infringement litigation, the Northern District of Georgia court granted summary judgment of invalidity regarding the patent dispute. In addition, the district court determined $268,311.22 in costs related to ediscovery were properly taxable. See CBT Flint Partners, LLC v. Return Path, Inc., 2009 WL 5159761 (N.D. Ga. Dec. 30, 2009). On appeal, the Court of Appeals overturned the root issue in the underlying patent litigation, vacated the ruling regarding costs as the defendant was no longer the prevailing party and remanded to the district court for further proceedings.

Commentary

Although the 2009 opinion regarding taxation of costs was vacated, it is important to remember that the court’s ruling was a result of the Court of Appeals determining the District Court erred in its analysis of the underlying patent dispute – not the Court of Appeals determining that costs were not properly taxable. Indeed, the entire discussion regarding the cost order was brief:

In light of our disposition, Cisco was not a prevailing party and we therefore vacate the district court's rulings on costs and we deny the cross-appeal. We remand to the district court for further proceedings consistent with this opinion.

Despite this ruling and others on the topic, parties still face the difficult issue of containing costs while navigating ediscovery effectively. How can this seemingly impossible task be achieved? The best advice is for parties to cooperate early on in pretrial conferences. Further, parties must navigate thediscovery process with an eye toward efficiency. Courts that are addressing the issue of costs are largely expressing frustration not only with the lack of cooperation, but the failure to limit discovery so as to keep costs reasonable. The discoverability standard remains extremely broad, and the costs of discovery will vary widely depending upon the facts of the case, but litigants should always do their best to ensure that discovery is at least reasonably scoped to avoid unnecessary expense. Parties should also make use of solutions such as Early Data Assessment and Intelligent Review Technology to conduct a proper, thorough and fast analysis and review of the data potentially at issue.