Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc. (Fed. Cir. 2009)(Dyk, J.),
In 2005, the Federal Circuit affirmed a district court ruling in this case supporting the validity of Daiichi’s Levofloxacin’s patent.
Under the Federal Rules of Civil Procedure (R. 54(d)), non-attorney-fee costs are presumptively awarded to the prevailing party. These usually include costs associated with court fees, subpoena fees, transcripts, copying, and translations.
Daiichi calculated its costs as $2.2 million, but the district court reduced those costs to $1.3 million (including $1 million in translation costs). On appeal, the Federal Circuit affirmed these costs.
The one exception to the affirmance involves a parallel case against Teva. Although there was no joint discovery agreement, some depositions were taken jointly by Mylan and Teva for the convenience of Daiichi. Because the Teva case settled, the court in that case did not award any costs. However, Mylan argued that Teva’s portion of the costs was implicit in the settlement payment. The Federal Circuit agreed – holding that Mylan should not be required to pay more than 50% of the costs for the joint depositions.
Here it is apparent that Daiichi has in effect already recovered some amount of costs through its settlement agreement with Teva. Although Teva did not actually pay costs to Daiichi in cash, the taxable costs in the New Jersey action (including deposition costs) were unquestionably taken into account by the parties’ settlement, in which Daiichi agreed not to seek actual payment of costs as consideration for Teva foregoing its appeal. Having recovered the value of those costs in the form of the foregone appeal, Daiichi cannot now recover more than its total entitlement by obtaining those same costs again from Mylan. . . . Because the district court here did not apportion costs between the two actions, we vacate the award of costs in this one respect and remand for further proceedings.
Affirmed in part
Read the Decisions:.08-1600.pdf
I’ve been translating Japanese patent documents into English for several years and it’s well known that the market for Japanese-into-English translation is out of balance compared to most other language pairs. There is enormous demand for it, but around 80% or more of it is done by non-native speakers of English, which is unheard of for other major language pairs such as English-German or English-Spanish. There’s a saying in the translation industry: “Quick, cheap, high quality — pick any two.” But for J-to-E patent translation, it’s often “pick just one.” Paying a high price won’t guarantee you good quality in this market.
Japanese translation costs can be extraordinarily high because a lot of the work is sourced through the in-house staff of the Japanese Attorney. While some of the work is of extremely good quality, quite a lot can be just expensive and of mediocre quality. Japanese firms tend not to shop around that much, so Japanese firms often pay over the odds for translations into English.
Call my accountant STAT
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