  United States Court of Appeals
      for the Federal Circuit
                 ______________________

            CBT FLINT PARTNERS, LLC,
                 Plaintiff-Appellant,

                            v.

                 RETURN PATH, INC.,
                  Defendant-Appellee,

                           AND

         CISCO IRONPORT SYSTEMS, LLC,
                 Defendant-Appellee.
               ______________________

                       2013-1036
                 ______________________

   Appeals from the United States District Court for the
Northern District of Georgia in No. 07-CV-1822, Judge
Thomas W. Thrash, Jr.
                ______________________

              Decided: December 13, 2013
                ______________________

    ADAM M. CONRAD, King & Spalding, LLP, of Char-
lotte, North Carolina, argued for plaintiff-appellant. With
him on the brief were DARYL L. JOSEFFER and KAREN F.
GROHMAN, of Washington, DC; and BRUCE W. BABER,
NATASHA H. MOFFITT and RUSSELL E. BLYTHE, of Atlanta,
Georgia.
2              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



   MATTHEW C. GAUDET, Duane Morris LLP, of Atlanta,
Georgia, argued for all defendants-appellees. With him
on the brief were L. NORWOOD JAMESON and JOHN R.
GIBSON for defendant-appellee Cisco Ironport Systems,
LLC. On the brief was KENNETH L. BRESSLER, Blank
Rome LLP, of New York, New York, for defendant-
appellee, Return Path, Inc.

    ANDREW J. PINCUS, Mayer Brown, LLP, of Washing-
ton, DC, for amicus curiae The Software Alliance. With
him on the brief was PAUL W. HUGHES.
                 ______________________

    Before DYK, O’MALLEY, and TARANTO, Circuit Judges.
    Opinion for the court filed by Circuit Judge TARANTO.
     Opinion concurring in part and dissenting in part
            filed by Circuit Judge O’MALLEY.
TARANTO, Circuit Judge.
    CBT Flint Partners, LLC, sued Return Path, Inc., and
Cisco IronPort Systems, LLC, in the Northern District of
Georgia for patent infringement. After deciding the
merits of the case against CBT, the district court ruled
that CBT should have to pay the defendants their “costs,”
which the clerk taxed at $49,824.60 for Return Path and
$268,311.12 for Cisco. In the present appeal by CBT, we
hold that the district court erred in its interpretation of
the statutory provision governing the taxation of costs
here, 28 U.S.C. § 1920(4). We reverse in part, vacate in
part, and remand.
                      BACKGROUND
    On August 1, 2007, CBT sued Return Path and Cisco
for infringement of U.S. Patent Nos. 6,192,114 and
6,587,550. After the district court construed the patent
claims at issue, CBT stipulated to noninfringement of the
asserted claims of the ’114 patent, and the district court
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.             3



granted summary judgment of indefiniteness of the one
asserted claim of the ’550 patent. See CBT Flint Partners,
LLC v. Return Path, Inc., 676 F. Supp. 2d 1376, 1377-78
(N.D. Ga. 2009). Cisco then moved to recover its costs
under 28 U.S.C. § 1920, including $243,453.02 in fees it
had paid to a company that handled electronic discovery
for it. Id. at 1380. Rather than fit that amount into a
specific section 1920 category, Cisco labeled those fees
“other costs” on its bill of costs.
     In 2009, the district court granted Cisco’s motion after
noting “a division of opinion as to whether [electronic
discovery] costs are recoverable under 28 U.S.C. § 1920.”
Id. at 1381. Based on a “careful review” of the vendor’s
invoices to Cisco, the court characterized the services
rendered as “highly technical” and “not the type of ser-
vices that attorneys or paralegals are trained for or are
capable of providing.” Id. The court concluded that the
fees Cisco sought to recover were “the 21st Century
equivalent of making copies” (although Cisco had not
categorized them as such) and held them to be recovera-
ble. Id. Thus, although the court did not cite any specific
provision of section 1920, it implicitly rested the taxation
of Cisco’s electronic-discovery costs on section 1920(4),
which covers “the costs of making copies.” In awarding
Cisco the requested amounts, the court said that the
“enormous burden and expense of electronic discovery are
well known” and that “[t]axation of these costs will en-
courage litigants to exercise restraint in burdening the
opposing party with the huge cost of unlimited demands
for electronic discovery.” Id.
    On appeal, this court reversed the district court’s
summary judgment of indefiniteness regarding the ’550
patent, construed the claim in question, and remanded for
further proceedings. CBT Flint Partners, LLC v. Return
Path, Inc., 654 F.3d 1353, 1355 (Fed. Cir. 2011). Because
Cisco was no longer a prevailing party, this court vacated
the district court’s order on costs without addressing its
4              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



correctness. Id. at 1361. On remand, the district court
granted summary judgment of noninfringement, CBT
Flint Partners, LLC v. Return Path, Inc., 870 F. Supp. 2d
1369, 1377 (N.D. Ga. 2012)—which this court has since
summarily affirmed, 501 F. App’x 980 (Fed. Cir. 2013).
    On July 30, 2012, after granting summary judgment,
the district court entered an amended final judgment and
decided that Return Path and Cisco were entitled to
recover their costs. Each party submitted a bill of costs
identifying the fees to be taxed. Return Path declared
that it had incurred $49,824.60 in total costs, none of
which it identified as costs for copies. Cisco submitted the
same bill of costs as the one it had submitted after the
original judgment, declaring $268,311.12 in total costs, of
which it identified only $4,473.10 as costs for making
copies. In the declared amounts, both defendants includ-
ed the fees they had paid to their electronic-discovery
vendors, listing them in a catchall “other” category. For
Return Path, those fees were $33,858.51; for Cisco, they
remained $243,453.02, as in 2009.
    On August 2, 2012, the clerk taxed each party’s costs
in the full amounts requested. The district court denied
CBT’s motion to review the taxation of costs. It deemed
the motion “in effect a motion for reconsideration of the
Court’s previous [2009] Order affirming the taxation of
the Defendants’ e-discovery costs” and stated that “[t]he
Court declines the opportunity to revisit the subject.”
CBT Flint Partners, No. 1:07-cv-1822-TWT (N.D. Ga.
Sept. 18, 2012) (ECF No. 329).
    CBT appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
                       DISCUSSION
    Federal Rule of Civil Procedure 54(d)(1) authorizes
district courts to award costs to the prevailing party. In
turn, 28 U.S.C. § 1920 “enumerates expenses that a
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.             5



federal court may tax as a cost under the discretionary
authority found in Rule 54(d).” Crawford Fitting Co. v. J.
T. Gibbons, Inc., 482 U.S. 437, 441-42 (1987); see also
Taniguchi v. Kan Pac. Saipan, Ltd., 132 S. Ct. 1997, 2006
(2012). Thus, section 1920 operates as a limitation on a
court’s discretion to award costs under Rule 54(d)(1).
Crawford, 482 U.S. at 445; Taniguchi, 132 S. Ct. at 2006.
The scope of that limitation—specifically, the meaning of
section 1920(4)—is the subject of CBT’s appeal. We
review the district court’s interpretation of section 1920(4)
de novo, applying the law of the regional circuit (in this
case, the Eleventh Circuit). In re Ricoh Co., Ltd. Patent
Litig., 661 F.3d 1361, 1364 (Fed. Cir. 2011). Subject to a
proper interpretation of section 1920(4), we review the
district court’s award of costs for abuse of discretion. Id.
                              A
    Before Congress enacted the Judicial Administrative
and Technical Amendments Act of 2008, Pub. L. No. 110-
406, § 6(2), section 1920(4) covered “[f]ees for exemplifica-
tion and copies of papers necessarily obtained for use in
the case.” 28 U.S.C. § 1920 (2007) (emphasis added).
Congress changed the language as of October 13, 2008, to
encompass electronically stored information as well as
information on paper. Section 1920(4) now covers “[f]ees
for exemplification and the costs of making copies of any
materials where the copies are necessarily obtained for use
in the case.” 28 U.S.C. § 1920(4) (emphasis added).
    The Eleventh Circuit has not addressed section
1920(4) since it was amended. The Eleventh Circuit’s pre-
amendment precedent, however, expressed the general
principle that section 1920(4) “allows recovery only for the
reasonable costs of actually duplicating documents, not
for the cost of gathering those documents as a prelude to
6              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



duplication.” Allen v. U.S. Steel Corp., 665 F.2d 689, 697
n.5 (5th Cir. Unit B 1982). 1 We interpret the scope of
amended section 1920(4) in accordance with that princi-
ple, making necessary allowances for the inherent differ-
ences between paper and electronic documents.
    That principle is our guide because neither the lan-
guage of section 1920(4) nor its legislative history sup-
plies a basis for departing from it. The new statutory
language embraces “making copies of any materials” that
meet certain requirements. But that language leaves for
the courts the task of defining what constitutes “making
copies” for purposes of sifting the activities that go into
producing electronic documents. For that crucial task, we
see no significance in the change from “copies” to “making
copies,” a change that appears to reflect no more than the
linguistic aim of using activity-describing phrases (“ex-
emplification,” “making copies”) on both sides of the
conjunction in section 1920(4).
    The legislative history confirms, as one sponsor indi-
cated, that the new language would “mak[e] electronically
produced information coverable in court costs.” 154 Cong.
Rec. H10270, H10271 (daily ed. Sept. 27, 2008) (statement
of Rep. Lofgren). But neither that statement nor another
key legislator’s statement that the amendments as a
whole seek “to keep up with the changes and challenges of
the 21st century,” 154 Cong. Rec. S9897, S9898 (daily ed.
Sept. 27, 2008) (statement of Sen. Leahy), provides fur-
ther help for courts that must apply the statutory lan-
guage. They do not say that the new language covers all,
or even a significant share, of the costs of electronic-


    1   Fifth Circuit Unit B decisions rendered after Oc-
tober 1, 1981, are binding precedent in the Eleventh
Circuit. United States v. Maxwell, 579 F.3d 1282, 1305
n.6 (11th Cir. 2009).
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.           7



document production. And they do not clarify what
activities constitute “making copies.”
    The process leading to the 2008 amendment of section
1920 tends to suggest that the change was modest rather
than dramatic in its bottom-line effect on litigants. The
proposed language was recommended to Congress in 2003
by the Judicial Conference Committee on Court Admin-
istration and Case Management, which considered the
possibility of large-scale changes in section 1920 but
proposed only small-scale changes instead, explaining:
   The Committee agreed that § 1920 does not ad-
   dress many of the technology expenses that are
   now often expended in federal litigation. The
   Committee was concerned, however, that the
   charges for these new expenses could dramatically
   expand the intention of the statu[t]e, which was to
   allow the taxing of costs in a very limited way.
   Therefore, the Committee decided to recommend
   that the Judicial Conference endorse two limited
   statutory amendments to 28 U.S.C. § 1920. The
   first would amend subsection (2) to recognize the
   availability of transcripts in electronic form. The
   second would expand the concept of “papers” in
   subsection (4) in order to reflect the decreasing
   use of paper and the increasing use of technology
   in creating, filing, and exchanging court docu-
   ments.
Rep. of the Judicial Conference Comm. on Court Admin-
istration and Case Management, at 4 (March 2003). In
2004, Senator Hatch introduced the recommended lan-
guage, noting the origin of the whole bill in the Judicial
Conference. See S. 2396, 108th Cong. § 118 (2d Sess.
2003); 150 Cong. Rec. S5080, S5082 (May 10, 2004). The
accompanying Section-by-Section Analysis included the
observations that the section 1920 changes generally
“would incorporate some of the expenses associated with
8               CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



new courtroom technologies into the assessment of litiga-
tion costs” and the copying provision in particular “would
also expand the concept of ‘papers’ in order to reflect the
decreasing use of paper and the increasing use of technol-
ogy in creating, filing, and exchanging court documents.”
Id. at S5087 (emphasis added).
    The Judicial Conference Committee’s view that sec-
tion 1920 has long been understood to “allow the taxing of
costs in a very limited way” rests on the Supreme Court’s
explanation that the congressional policy behind the
enactment of section 1920 was to place “rigid controls on
cost-shifting in federal courts.” Crawford, 482 U.S. at
444. The Supreme Court reiterated that understanding
in Taniguchi, which, in discussing another provision of
section 1920 after the 2008 amendment, reiterated “the
narrow scope of taxable costs,” their “modest” scope, their
limitation “to relatively minor, incidental expenses.” 132
S. Ct. at 2006. Earlier, and more generally, the Supreme
Court stated the “presumption” that the costs of meeting
discovery requirements stay with the litigant that in-
curred them. Oppenheimer Fund, Inc. v. Sanders, 437
U.S. 340, 358 (1978). Without a clearer prescription of
dramatic change than we can find in the 2008 amend-
ment, those background principles call for reading the
new language to effect only modest changes in the award
of costs under the generally applicable section 1920(4)—
leaving larger-scale shifting of litigation expenses to be
addressed under other statutory provisions that set
particular standards for particular types of cases to
implement context-specific policies.
     Our own precedent provides some important guidance
in deciding which electronic-document-production tasks
fall within section 1920(4). In In re Ricoh, 661 F.3d at
1367, we acknowledged the applicability of section 1920(4)
to electronic documents. We also confirmed several
critical limitations on the reach of the provision even as to
paper documents (and therefore as to electronic docu-
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.              9



ments): it applies only to documents produced to a re-
quester, not those a party creates for its own litigation or
other use; it applies only if “the reproduced documents
were produced . . . pursuant to Rule 26 or other discovery
rules”; and the parties may enter into binding cost-
allocation agreements.    Id. at 1367, 1368. But Ricoh
(which involved Ninth Circuit law, not Eleventh Circuit
law) did not otherwise reach the question of which specific
costs of electronic-document production were properly
taxable as costs of “making copies,” because the parties
had an agreement to share costs. Id. at 1364-67.
     In accord with the Eleventh Circuit’s pre-amendment
principle, the caution favoring modesty in section
1920(4)’s real-world effect, and Ricoh’s explanation that
its scope is tied to what is required to fulfill a request, we
conclude that recoverable costs under section 1920(4) are
those costs necessary to duplicate an electronic document
in as faithful and complete a manner as required by rule,
by court order, by agreement of the parties, or otherwise.
To the extent that a party is obligated to produce (or
obligated to accept) electronic documents in a particular
format or with particular characteristics intact (such as
metadata, 2 color, motion, or manipulability), the costs to


    2    The term “metadata” may encompass different
types of data associated with a particular document. In a
glossary that is relied on extensively in Race Tires Ameri-
ca, Inc. v. Hoosier Racing Tire Corp., 674 F.3d 158 (3d Cir.
2012), the Sedona Conference defines metadata generally
as follows:
    Data typically stored electronically that describes
    characteristics of ESI [electronically stored infor-
    mation], found in different places in different
    forms. Can be supplied by applications, users or
    the file system. Metadata can describe how, when,
10              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



make duplicates in such a format or with such character-
istics preserved are recoverable as “the costs of making
copies . . . necessarily obtained for use in the case.” 28
U.S.C. § 1920(4). But only the costs of creating the pro-
duced duplicates are included, not a number of preparato-
ry or ancillary costs commonly incurred leading up to, in
conjunction with, or after duplication.
                             B
     In this case, some of the costs taxed against CBT
clearly come within section 1920(4), while others clearly
fall outside it. To indicate why, and to try to guide the
necessary work of locating particular expenses on one side
of the line or the other, we review the document produc-
tion process used in this case. There was a basic agree-



     and by whom ESI was collected, created, accessed,
     modified, and how it is formatted. Can be altered
     intentionally or inadvertently. Certain metadata
     can be extracted when native files are processed
     for litigation. Some metadata, such as file dates
     and sizes, can easily be seen by users; other
     metadata can be hidden or embedded and una-
     vailable to computer users who are not technically
     adept. Metadata is generally not reproduced in
     full form when a document is printed to paper or
     electronic image.
The Sedona Conference, The Sedona Conference Glossary:
E-Discovery & Digital Information Management 34 (Sher-
ry B. Harris et al. eds., 3rd ed. 2010). The Sedona Con-
ference provides additional definitions for specific types of
metadata, including Application Metadata, Document
Metadata, Email Metadata, Embedded Metadata, File
System Metadata, User-Added Metadata, and Vendor-
Added Metadata.
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.                11



ment at oral argument that the process followed here can,
for our purposes, be broken down into three stages.
     At stage one, an electronic-discovery vendor copied (or
“imaged”) computer hard drives or other “source media”
that contain the requested documents, replicating each
source as a whole in its existing state. See Sedona Con-
ference Glossary at 23 (A “forensic copy” is “[a]n exact copy
of an entire physical storage media (hard drive, CD-ROM,
DVD-ROM, tape, etc.), including all active and residual
data and unallocated or slack space on the media. Foren-
sic copies are often called ‘images’ or ‘imaged copies.’ ” ); id.
at 27 (first definition of “image”: “(1) To image a hard
drive is to make an identical copy of the hard drive,
including empty sectors. Also known as creating a ‘mirror
image’ or ‘mirroring’ the drive.”). The vendor then pro-
cessed the whole-source images to extract individual
documents, leaving the documents’ original properties
intact.
    At stage two, the extracted documents were organized
into a database. They were then indexed, decrypted, and
de-duplicated, 3 and filtered, analyzed, searched, and


    3   The Sedona Conference defines “De-Duplication”
as follows:
    The process of comparing electronic records based
    on their characteristics and removing or marking
    duplicate records within the data set. The meth-
    odology deployed and definition of “duplicate rec-
    ords” should be agreed upon, i.e., whether an
    exact copy from a different location (such as a dif-
    ferent mailbox, server tapes, etc.) is considered to
    be a duplicate. De-duplication can be selective,
    depending on the agreed-upon criteria.
Sedona Conference Glossary at 14.
12              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



reviewed to determine which were responsive to discovery
requests and which contained privileged information.
These processes resulted in identification of a subset of
documents for production.
    At stage three, the documents selected for production
were copied onto memory media, such as hard drives or
DVDs, or, in the case of source code, onto a secured com-
puter. Such “production media” were then delivered to
the requester CBT or, in the case of source code, made
available for review in a secured location. In this case,
unlike other cases, the documents were not converted to
an “image file” format, such as Tagged Image File Format
(TIFF), because Cisco believed that such conversion would
be too expensive.
     We consider these three stages in turn.
                             1
     In many cases, an agreement, rule, court order, or
other requirement regarding the format of the copies to be
produced may necessitate the taking of several steps that
are all part of “making copies,” reasonably understood. If
documents must be converted to a uniform production
format (for instance, TIFF), a party often must make a
first copy of a document, perform the required format
conversion, and then copy the converted files to produc-
tion media. Similarly, a party may be under an obligation
to produce documents with pre-collection metadata intact.
In such a situation, because the mere act of copying a file
may destroy certain types of metadata, see, e.g., Sedona
Conference Glossary at 3 (definition of “Application
Metadata,” noting that “copying may alter application
metadata”), it is often necessary—in order to produce a
single production copy of the document’s visible content
and of the metadata (where both are requested)—to
create an image of the original source first and then to
apply special techniques to extract documents while
preserving all associated metadata.
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.           13



    Those steps are fairly considered costs of making cop-
ies of the requested documents. We do not see why it
makes a difference that the process of making a single
production copy may involve first creating one electronic
duplicate of the two-part “document” (visible content,
metadata), then creating a production copy of each part.
The statute would surely cover the costs of using a mod-
ern digital photocopier (essentially a scanner combined
with a printer) for copying a paper document, notwith-
standing that such a machine may first scan the docu-
ment to create a duplicate on an internal hard drive and
then create a paper duplicate, all in making “one copy.” 4
Notably, both the Third and Fourth Circuits, in their
recent decisions addressing issues similar to those we
address, have recognized that the statute covers costs for
steps, which commonly involve an initial reproduction,
that necessarily precede the creation of a final production
copy: converting electronic files to non-editable formats,
Country Vintner of N. Carolina, LLC v. E. & J. Gallo
Winery, Inc., 718 F.3d 249, 260 (4th Cir. 2013), and scan-
ning paper documents, Race Tires, 674 F.3d at 171.
    At present, enough expertise and specialized equip-
ment often are required that many parties entrust these
tasks to an electronic-discovery vendor. Whoever per-
forms them, however, the steps described are all fairly
included in section 1920(4) where they are, in fact, neces-
sary to make copies of information required to be pro-
duced and not incurred just to make copies for the
convenience of the producing party. For example, if
metadata can be preserved without first using imaging
and extraction techniques, then those steps are outside



   4    On the nature of a modern digital copier, see, e.g.,
Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292,
1296 (Fed. Cir. 2002).
14              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



section 1920(4). And if a vendor does its chargeable work
(i.e., work covered by the statute if performed on a single
document) on a large volume of documents before culling
to produce only a subset, the awarded copying costs must
be confined to the subset actually produced, e.g., by using
document-specific charges if they are available or by using
a reasonable allocation method such as prorating. On the
other side of the line, costs incurred in preparing to copy
are not recoverable. Though Cisco and its vendor appar-
ently put in considerable time deciding on a plan for
securely copying its source code, items on the vendor
invoices such as “source code planning,” “source code
discussion,” “plans for acquisition of source code,” “coordi-
nation meeting for source code processing,” and “source
code briefing” (and perhaps others) are not recoverable.
     In contrast to the above scenarios, if a party from
whom documents are sought is subject to no particular
requirements governing the format or other characteris-
tics of the produced documents, it might suffice for the
producing party to copy the requested documents directly
from the source media to the production media and deliv-
er the production media directly to the requester. In that
event, only the costs of that simpler process will be
chargeable under section 1920(4). Of course, proceeding
in that way might, for both producer and requester alike,
significantly complicate other needed aspects of the
litigation process, such as document review. A requester
may therefore decide to request a production in a form
that increases copying costs while saving other litigation
costs. But if not, the costs are limited to the duplication
needed for the production in the form required. At the
same time, the producing party might choose, for the
efficiency of its own litigation work, to image source
drives and upload the images to a document database for
faster filtering, searching, and review. That choice,
however, would not change the costs chargeable to the
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.              15



requester as part of the costs of making copies under
section 1920(4).
     How this analysis applies in full to the specific bills of
costs in this case requires an inquiry that the district
court should perform in the first instance. The court
should determine what requirements governing the
format or other characteristics of the produced documents
were imposed on the defendants. At least in this case,
looking back to events some years ago, the court may have
to resort to a determination of well-grounded expectations
about default requirements in the absence of contrary
agreements, rules, or orders. In the future, default
standards should become clearer, and pre-copying court
orders or parties’ agreements should determine more
affirmatively and definitively what form of copying is
required in a particular case.
                               2
     Return Path and Cisco seek to recover under section
1920(4) the costs of a host of their vendors’ services that
fall under what we have called stage two. Examples are
activities that they characterize as project management,
keyword searching, “statistical previews,” “auditing and
logging of files and ensuring compliance with Federal
Rules,” and “extraction of proprietary data,” among oth-
ers. The costs of those activities are not the costs of
making copies. Rather, they are part of the large body of
discovery obligations, mostly related to the document-
review process, that Congress has not included in section
1920(4).
    Similarly, the costs incurred in acquiring, installing,
and configuring a new data-hosting server at the offices of
Cisco’s counsel were clearly incurred for the convenience
of Cisco and its counsel and are not recoverable. Neither
should a party be able to recover the costs of litigation-
support tasks such as training in the use of the document-
review software, deposition support, or production- and
16              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



privilege-log creation. Costs of other activities listed on
the vendor’s invoices here, such as meetings, conference
calls, and other communications, also are not costs of
“making copies,” even when they relate to the copying
process.
    Although Cisco argues that much of the keyword
searching and data analysis performed by the vendor in
this case was at CBT’s request, that is plainly insufficient
to bring an activity within section 1920(4). The provision
covers only “making copies.” Although the requester’s
demands can define the number, form, and other charac-
teristics of copies chargeable under section 1920(4), the
requester’s demands for activities other than making
copies does not bring those non-copying activities within
the provision. A litigant faced with what it views as
overbroad discovery requests or vexatious discovery
tactics—or even unduly fruitless or burdensome negotia-
tions over discovery obligations—must pursue relief by
other means, such as seeking court orders to limit the
discovery when the problems arise or seeking reimburse-
ment of costs or fees or payment of penalties afterwards
under authority other than section 1920(4).
    Applying section 1920(4) to various other stage-two
tasks involved in electronic-document production calls for
some common-sense judgments guided by a comparison
with the paper-document analogue. Thus, decryption of a
document stored in encrypted form on an electronic source
medium may be necessary to make a final production copy
that is viewable by the requester, see, e.g., Fed. R. Civ. P.
34(b)(2)(E)(ii) (requiring production of electronically
stored information “in a reasonably usable form”); id.
Rule 34(a)(1)(A) (requiring “translation” if necessary into
such form), but we conclude that the cost to decrypt is not
recoverable. After the original creators or users of an
electronic document have viewed it in readable form, it
may have been put into an encrypted form for safekeep-
ing. If so, the process of decryption to restore it to the
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.           17



form in which its creators and users saw it is something
that is best understood as preceding copying, not as part
of copying. By analogy, if a party chooses to store paper
documents in a secure way—say, to place them in a safe
in remote Tuva—the party’s expense in removing them
from such security, and getting them to the duplication
machine, would not naturally constitute “making copies.”
Decryption of electronic documents is similar enough that
it too should not constitute making copies.
    Likewise, deduplication is not fairly covered by sec-
tion 1920(4). Deduplication is the culling of a set of
documents to eliminate duplicate copies of the same
document, creating a smaller set for production or review.
This is either pre- or post-copying activity (depending on
when the culling is done), not itself the making of copies.
This process may well be valuable to both sides in making
post-copying review more efficient, and the parties can
agree on who incurs the cost. But it is not a cost of “mak-
ing copies.”
     In contrast, we conclude that the creation of “load
files” is covered to the extent that those files contain
information required by the requested production. The
Sedona Conference defines a “load file” as follows:
   A file that relates to a set of scanned images or
   electronically processed files, and indicates where
   individual pages or files belong together as docu-
   ments, to include attachments, and where each
   document begins and ends. A load file may also
   contain data relevant to the individual documents,
   such as selected metadata, coded data, and ex-
   tracted text. Load files should be obtained and
   provided in prearranged or standardized formats
   to ensure transfer of accurate and usable images
   and data.
Sedona Conference Glossary at 31. Some of the basic
information in load files is comparable to the slip sheets
18             CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



(blue sheets of paper, say) used to separate distinct docu-
ments in a paper production. Although district courts are
divided on whether the costs of slip sheets are recovera-
ble, see, e.g., Warner Chilcott Labs. Ireland Ltd. v. Impax
Labs., Inc., Case No. 08-6304 WJM, 2013 WL 1876441
(D.N.J. Apr. 18, 2013) (fees for items such as slip sheets
not recoverable); eBay Inc. v. Kelora Sys., LLC, Case No.
10-4947 CW (LB), 2013 WL 1402736 (N.D. Cal. Apr. 5,
2013) (slip sheet and load file preparation recoverable),
we think that the better view, as a default matter, is that
they are recoverable: unless something to the contrary is
said, a request for documents is properly understood as a
request that they be produced in a way that separates
them to indicate where one ends and another begins. The
“load file” counterpart is the start-stop information.
Sometimes load files also contain additional information
that is effectively part of the requested and produced
documents. Whether such information is covered by
section 1920(4), such as metadata or extracted text,
should depend on whether that information is required to
be produced, in which case it is part of the cost of “making
copies.”
    Other particular stage-two activities call for a similar
analysis. Judgment calls in the nature of line-drawing
are required. Whatever imprecision is involved, it is
worth reiterating that the resulting judgments establish
only default rules. Relative clarity in such default rules
should make it easier for requesting parties to define
their requests with the consequences known in advance
and for both parties to know what is at stake in any
attempt to agree on a different allocation of costs.
                             3
    As to stage three, there is no dispute among the par-
ties that the costs of copying responsive documents to
production media are recoverable under section 1920(4).
We agree.
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.           19



     These costs as they relate to the production of source
code in this case warrant separate mention. Where
legitimate trade-secret concerns entitle a producing party
to use a special form of production media (such as making
production copies available for review on a secured com-
puter, rather than allowing the requester to take posses-
sion of the production copies), the costs of such production
media are recoverable under section 1920(4). Covered
costs include the costs incurred in providing a secured
computer for the time the requester is entitled to access to
it, installing on the secured computer whatever review
software the requester requires, and copying the source
code files to the secured computer. As noted above, costs
incurred in planning, preparation, coordination, and
communications associated with those tasks are not
recoverable.
                              C
     The general approach outlined above, and most of the
applications we have set out, are consistent with the
analysis of other circuits that have interpreted section
1920(4) to allow for only limited recovery of the costs of
electronic-document production. See, e.g., Country Vint-
ner, 718 F.3d at 260 (allowing costs of converting electron-
ic files to non-editable formats and burning the files onto
discs); Race Tires, 674 F.3d at 171 (allowing costs of
scanning hard-copy documents, converting file format to
production format, and transferring of VHS tapes to
DVD); Hecker v. Deere & Co., 556 F.3d 575, 591 (7th Cir.
2009) (allowing costs of converting computer data into a
readable format); BDT Prods., Inc. v. Lexmark Int’l, Inc.,
405 F.3d 415 (6th Cir. 2005) (allowing costs of electronic
scanning and imaging).
    Our application of section 1920(4) apparently differs
from two circuits in one way—regarding the stage-one
costs of imaging source media and extracting documents
in a way that preserves metadata. In Race Tires, the
20              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



Third Circuit put hard-drive imaging and metadata
extraction in the same category as unrecoverable prepara-
tory activities such as searching, reviewing for respon-
siveness, and screening for privilege. Race Tires, 674 F.3d
at 169-70; see also Country Vintner, 718 F.3d at 260
(adopting Fourth Circuit’s reasoning in Race Tires). As
between “making copies” and “attorney and paralegal
review,” Race Tires, 674 F.3d at 170, we think that the
former better describes imaging a source drive and ex-
tracting requested data where the extracted data are
included in the discovery request. It seems to us that
there is no good reason, as a default matter, to distinguish
copying one part of an electronic document (i.e., the part
that is visible when printed) from copying other parts (i.e.,
parts not immediately visible) when both parts are re-
quested. More precisely, we think that this is the better
application of the principle that governs in the Eleventh
Circuit, suitably adjusted for the 2008 amendment of
section 1920(4). We emphasize, however, that a default
rule can be altered by agreement of the parties.
                             D
     CBT also contests the district court’s award of
$1887.00 in fees to Return Path for prior-art searches.
Return Path does not meaningfully defend the award, and
for good reason. The record does not in any way indicate
that these fees were for copying of prior-art documents;
the cost is identified simply as “Prior Art Searches.”
Nothing in Section 1920 covers research costs, and the
Eleventh Circuit has confirmed that fees for computerized
legal research, an analogous expense, are not recoverable.
Duckworth v. Whisenant, 97 F.3d 1393, 1399 (11th Cir.
1996). Accordingly, we reverse the district court’s award
of fees for prior-art searches.
                       CONCLUSION
   Because the district court erred in interpreting 28
U.S.C. § 1920, the district court’s fee award is reversed in
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.           21



part and vacated in part, and the case is remanded for the
district court fully to apply the approach and conclusions
of this opinion to the particular cost requests submitted in
this case.
  REVERSED IN PART, VACATED IN PART, AND
                REMANDED
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

            CBT FLINT PARTNERS, LLC,
                 Plaintiff-Appellant,

                            v.

                 RETURN PATH, INC.,
                  Defendant-Appellee,

                           AND

         CISCO IRONPORT SYSTEMS, LLC,
                 Defendant-Appellee.
               ______________________

                       2013-1036
                 ______________________

   Appeal from the United States District Court for the
Northern District of Georgia in No. 07-CV-1822, Judge
Thomas W. Thrash, Jr.
                ______________________

O’MALLEY, Circuit Judge, concurring in part and dissent-
ing in part.
    I agree with much of the majority’s thoughtful discus-
sion of the scope of costs recoverable under 28 U.S.C.
§ 1920(4) and that the bulk of the costs awarded by the
district court in this case are not recoverable thereunder.
Clearly, the many and varied vendor services the majority
categorizes as falling into “stage two” of its analysis
cannot be characterized as “costs” under § 1920(4). Nor
2               CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



can the charges for the prior-art searches conducted on
behalf of Return Path. I agree, accordingly, that the
judgment deeming those items recoverable as “costs”
must be reversed. I do not believe the majority is suffi-
ciently mindful of the limits imposed on courts by
§ 1920(4), however. I, thus, respectfully dissent from the
portion of the majority opinion that authorizes, as “costs,”
an award of the pre-duplication expenses the majority
describes as stage one costs.
     While I appreciate the policy goals driving the majori-
ty’s desire to shift the costs incurred under stage one to
the party requesting discovery, I believe the majority
improperly expands § 1920(4) to achieve those goals.
And, I do not believe the Eleventh Circuit would follow
the path the majority forges, because doing so both cre-
ates an unnecessary circuit split and is inconsistent with
the narrow approach the Eleventh Circuit has to date
taken with respect to § 1920(4). There are many vehicles
to assure proper and fair cost shifting relating to electron-
ic discovery, § 1920(4) is simply not one of them.
                             I.
    The majority correctly explains that, under Eleventh
Circuit law, section 1920(4) “‘allows recovery only for the
reasonable costs of actually duplicating documents, not for
the cost of gathering those documents as a prelude to
duplication.’” Slip Op. 5-6 (emphasis added) (quoting
Allen v. U.S. Steel Corp., 665 F.2d 689, 697 n.5 (5th Cir.
Unit B 1982)). The majority also acknowledges that “only
the costs of creating the produced duplicates are included,
not a number of preparatory or ancillary costs commonly
incurred leading up to, in conjunction with, or after dupli-
cation.” Slip Op. 10 (emphasis added). And, it explains
that the Supreme Court’s most recent pronouncement on
the scope of § 1920 included an admonition to read it
narrowly. See Taniguchi v. Kan Pac. Saipan, Ltd., 132 S.
Ct. 1997, 2006 (2012) (“Our decision is in keeping with the
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.            3



narrow scope of taxable costs.”). Despite faithfully recit-
ing these general principles, the majority then seems to
ignore them when it finds that the costs incurred during
the initial imaging of source media and the extraction of
metadata are steps involved in the duplication process,
and not those leading up to duplication. 1 I disagree and
believe that these steps instead fall, in the words of the
Eleventh Circuit’s own formulation, within the “prelude to
duplication” and are not taxable costs. Both the Third
and Fourth Circuits have reached the same conclusion.
See Race Tires Am., Inc. v. Hoosier Racing Tire Corp., 674
F.3d 158, 169 (3d Cir. 2012), cert. denied, 133 S. Ct. 233
(2012) (“Section 1920(4) does not state that all steps that
lead up to the production of copies of materials are taxa-
ble.”); Country Vintner of N.C., LLC v. E. & J. Gallo
Winery, Inc., 718 F.3d 249, 260 (4th Cir. 2013) (finding
the Third Circuit’s reasoning persuasive to not include
imaging or metadata extraction costs). Particularly in
light of the Supreme Court’s recent admonition in
Taniguchi, I believe the Eleventh Circuit would as well,
avoiding a circuit split and a ruling that essentially taxes
the costs of making two duplicates, not only the single
“produced duplicate.”
    Similar to the majority’s comparison of stage two to
the paper-document analogue, I analogize stage one to the
traditional process of getting ready to produce paper
documents in discovery. Generally, a complex paper
production requires a party to locate potentially relevant
paper documents, gather and collect those documents
from various locations (including often creating copies of
these original documents), perform a centralized review of



   1    I do not question that the cost of imaging source
media would fall under section 1920(4) if it were directly
imaged and provided to the opposing party as part of
discovery.
4              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



the gathered documents, determine which documents to
produce, and ultimately, make copies of a smaller subset
of relevant documents. The smaller subset is then pro-
duced to the other party. The expenses incurred in the
activities that precede the step of making the final pro-
duced copies have not been considered taxable, however.
    When comparing this process to an electronic docu-
ment production, the initial imaging step is akin to “gath-
ering and collecting” paper documents for production.
While several steps are essential to the process, only
making the final produced copies are covered under
section 1920(4). As such, even if a party must process and
extract metadata to make a production copy, those activi-
ties do not constitute “making copies” under section
1920(4). As noted above, other circuits agree.
    The Third and Fourth Circuits have recently found
that those expenditures incurred for the initial imaging
step and extraction of metadata are not taxable as “costs”
under § 1920(4). See Race Tires, 674 F.3d at 169 (“None
of the steps that preceded the actual act of making copies
in the pre-digital era would have been considered taxa-
ble.”); id. (“Hard drives may need to be imaged . . . . But
that does not mean that the services leading up to the
actual production constitute ‘making copies.’”); Country
Vintner, 718 F.3d at 260-61 (“We find the Third Circuit’s
reasoning persuasive. . . . All of these considerations
support the conclusion that, in this case, subsection (4)
limits taxable costs to those identified by the district
court: converting electronic files to non-editable formats,
and burning the files onto discs.”). And, since the Third
Circuit’s decision in Race Tires, the majority of district
courts have agreed with the Third and Fourth Circuits.
See, e.g., Phillips v. WellPoint Inc., No. 3:10-CV-00357-
JPG, 2013 WL 2147560, at *6 (S.D. Ill. May 16, 2013);
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No.
1:10CV910 LMB/TRJ, 2013 WL 1192947, at *8 (E.D. Va.
Mar. 21, 2013); Eolas Techs. Inc. v. Adobe Sys., Inc., 891
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.            5



F. Supp. 2d 803, 806 (E.D. Tex. 2012); Plantronics, Inc. v.
Aliph, Inc., No. C 09-01714 WHA LB, 2012 WL 6761576
(N.D. Cal. Oct. 23, 2012); Cordance Corp. v. Amazon.com,
Inc., 855 F. Supp. 2d 244, 250 (D. Del. 2012); see also
Mann v. Heckler & Koch Def., Inc., No. 1:08CV611 JCC,
2011 WL 1599580, at *9 (E.D. Va. Apr. 28, 2011) (denying
metadata extraction as taxable before Race Tires); Fast
Memory Erase, LLC v. Spansion, Inc., No. 3-10-CV-0481-
M-BD, 2010 WL 5093945, at *4-7 (N.D. Tex. Nov. 10,
2010), report and recommendation adopted, No. 3-10-CV-
0481-M-BD, 2010 WL 5093944 (N.D. Tex. Dec. 13, 2010)
aff’d sub nom. Fast Memory Erase, LLC v. Intel Corp., 423
F. App’x 991 (Fed. Cir. 2011) (denying collecting and
processing ESI costs before Race Tires). Like all of these
other courts, I do not believe § 1920(4) covers the cost of
the initial imaging step or the extraction of metadata as it
is a part of the “prelude to duplication” of the produced
copy.
    Section 1920(4) also only covers the costs of creating a
single copy produced to the other party. “[T]he prevailing
party can recover, as costs for reproduction and exemplifi-
cation under section 1920(4), the costs incurred in prepar-
ing a single copy of the original documents produced for
the opposing party where that copy is supplied to the
opposing party.” In re Ricoh Co., Ltd. Patent Litig., 661
F.3d 1361, 1367 (Fed. Cir. 2011) (emphases added) (cita-
tion omitted).
     The majority’s decision to include as costs a pro-rated
portion of expenses incurred in initially imaging a source
media compared to the subset produced, however, ac-
counts for more than the costs of producing a single copy
to another party. In reaching its conclusion that the costs
of initial imaging are covered, the majority appears to
confuse the costs for making a single copy produced to
another party with those of making any copies of electron-
ically produced documents in discovery, even those not
produced. Without question, an electronic document that
6               CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



is first imaged, and then later produced, is copied twice:
first, when the document is initially imaged as part of the
original source media, and again, when another copy is
made for production to the other party. The first copy,
however, is often created for the producing party’s own
efficiency and convenience by allowing the party to upload
the documents to a central database to process and review
before creating a subset “copy” to produce to the opposing
party. Indeed, that is precisely what Cisco and Return
Path did here. By adopting a rule that includes the costs
of the initial imaging under section 1920(4), the majority
effectively allows a party to tax the costs of making two
copies, even though the initial imaged copy is not pro-
duced. But that is not what the statute authorizes. 2
    The majority rewrites § 1920(4) to address the in-
creasing cost of electronic discovery. That is not our role,
however. Harris v. Garner, 216 F.3d 970, 976 (11th Cir.
2000) (“[T]he role of the judicial branch is to apply statu-
tory language, not to rewrite it.”) (citations omitted);
Korman v. HBC Fla., Inc., 182 F.3d 1291, 1296 (11th Cir.
1999) (“It is not the business of courts to rewrite stat-
utes.”). We are not authorized to stretch a statute to
cover costs the Court believes should be covered in light of



    2    The majority equates the initial imaging and ex-
traction of metadata with the process of scanning docu-
ments so that electronic copies can be made, which the
Third and Fourth Circuits do categorize as recoverable
costs. Scanning is a necessary incident to the making of a
final digital duplicate and, thus, is “the modern-day
equivalent of ‘. . . copies of papers.’” Race Tires, 674 F.3d
at 167 (quoting Brown v. McGraw-Hill Cos., 526 F. Supp.
2d 950, 959 (N.D. Iowa 2007)). The fact that scanning
falls within the narrow confines of the “incidental expens-
es” authorized under § 1920(4) does not open the door to
all activities that pre-date that exercise, however.
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.             7



changes in technology; only Congress can rewrite
§ 1920(4). 3 See Race Tires, 674 F.3d at 170 (“Nor may the
courts invoke equitable concerns . . . to justify an award of
costs for services that Congress has not made taxable.”).
    Indeed, Congress drafted § 1920(4) narrowly so that
the back-end assessment of costs would be no more than a
clerical exercise. See Taniguchi, 132 S. Ct. at 2006 (“[T]he
assessment of costs most often is merely a clerical matter
that can be done by the court clerk.”) (quoting Hairline
Creations, Inc. v. Kefalas, 664 F.2d 652, 656 (7th Cir.
1981)). The Supreme Court has made clear that taxable
costs are “modest in scope” and “limited to relatively
minor, incidental expenses.” Id. They were meant to be
so narrow and straightforward that the clerk of the court
generally could handle their taxation, without resort to
judicial officers. See 28 U.S.C. § 1920 (“A judge or clerk of
any court of the United States may tax as costs . . . .”)
(emphasis added); Taniguchi, 132 S. Ct. at 2006 (“the
assessment of costs most often is merely a clerical matter
that can be done by the court clerk.”) (quoting Hairline
Creations, 664 F.2d at 656). Shirking this principle, the
majority’s ruling creates a complicated taxation process
that requires judicial officers or the clerk of the court to
determine: (1) if the parties came to any agreement




    3   In National Boiler Marketing Association v. Unit-
ed States, the Supreme Court quoted Justice Harlan’s
proposition that a statute “is not an empty vessel into
which this Court is free to pour a vintage that we think
better suits present-day tastes.” Nat’l Broiler Mktg. Ass’n
v. U. S., 436 U.S. 816 (1978) (quoting United States v.
Sisson, 399 U.S. 267, 297 (1970)). The Court then noted
that “[c]onsiderations of this kind are for the Congress,
not the courts.” Id.
8              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



regarding electronic discovery production, 4 (2) if that
agreement included the exchange of metadata, (3) wheth-
er that metadata could have been “preserved without
initial imaging and extraction techniques,” 5 (4) what
constitutes a pro-rated amount of the initial imaged
source media, and (5) how to pro-rate the initial imaging
expenses to the subset produced. Congress did not envi-
sion that complicated calculations would be involved in
the determination of costs under § 1920(4). But the
majority requires precisely that on remand, in contraven-
tion of Congressional intent. 6
    Not only is it beyond our authority to rewrite
§ 1920(4), it is not even necessary to address the concern
the majority pinpoints—the propriety of shifting costs to
the requesting party when a Court rule or agreement
between the parties requires production in a particular
electronic format. Slip Op. 12-13. Myriad options exist
for a party to shift the costs of such discovery without
upending Congressional intent. Indeed, Appellees had



    4    The parties concede there was no formal agree-
ment in this case—either written or oral—to shift the
costs of extracting metadata. Apparently, the majority
would find a tacit agreement to shift such costs whenever
a request for metadata occurs, and a producing party
acquiesces to such a request.
     5   This process can include a highly intensive case-
by-case scenario that requires a determination of the type
of metadata requested and the type of electronically
stored information gathered in discovery.
     6   The majority also does not provide clear guidance
on remand for the district court to determine the extent to
which costs are taxable when the producing party could
have copied the requested documents directly from the
source media, but chose to image source drives for its own
efficiency.
CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.             9



these options available, but failed to take advantage of
them early in the litigation. For example, the Northern
District of Georgia Local Rules as well as Rule 26 of the
Federal Rules of Civil Procedure provide avenues for early
discussions among the parties regarding the scope of
relevant discovery and how to allocate cost sharing.
    Northern District of Georgia Local Rule 16.2 requires
parties to submit a Joint Preliminary Report and Discov-
ery Plan. N.D. Ga. Civ. R. 16.2. Local Rule 16.2 requires
the parties to, among other things, discuss limitations on
electronic discovery, sources, define the scope of discovery,
and strike agreements regarding the format of and pro-
duction of electronic documents. Id. App. B. As such, the
parties should have discussed cost-shifting and burden-
some discovery at that time, and could have reached
agreements to either limit discovery or shift certain costs
relating thereto. As we have noted, agreements to allo-
cate costs are permissible and enforceable. See In re
Ricoh, 661 F.3d at 1366-67.
    Rule 26 of the Federal Rules of Civil Procedure also
provides numerous possibilities to limit or manage the
costs of discovery. Rule 26(b)(2)(B) limits discovery on
electronically stored information from sources not “rea-
sonably accessible,” and provides the court discretion to
order discovery and specify cost-shifting to obtain that
discovery. Rule 26(b)(2)(C) also requires a court to limit
the frequency or extent of discovery otherwise allowed if
“the burden or expense of the proposed discovery out-
weighs its likely benefit, considering the needs of the case,
the amount in controversy, the parties’ resources, the
importance of the issues at stake in the action, and the
importance of the discovery in resolving the issues.”
Finally, Rule 26(c) allows a party from whom discovery is
sought to move for a protective order limiting discovery or
specifying discovery under certain terms.
10              CBT FLINT PARTNERS, LLC   v. RETURN PATH, INC.



    Despite the district court’s authority to limit discovery
or shift costs in this case, virtually no discussion occurred
in this case until later in discovery. Indeed, Cisco finally
took advantage of some of these existing avenues for relief
in a late request for fee shifting regarding a specific group
of documents. In a June 11, 2008 Order, the district court
found that Cisco had established that certain documents
were not reasonably accessible because of undue burden
or cost, and ordered Cisco “to produce those documents on
the condition that [CBT] pay Cisco $300,000.00 as the cost
of conducting a privilege review.” JA149-50. CBT then
chose not to pursue discovery of those documents. While
Cisco argues that only a small window for discovery
existed, it could have turned to the above-mentioned
options and to the court when CBT made their initial
requests, which Cisco characterized as asking for “in
effect, every document in the company.” Appellee Br. 3.
Simply put, Cisco and Return Path could have and should
have come to an agreement with CBT regarding the costs
of discovery or asked for assistance from the court earlier.
Having never sought to shift or avoid these costs sooner,
they should not now be permitted to push a square peg
into a round hole by attempting to squeeze their electron-
ic discovery costs into section 1920(4), and the majority
should not condone their effort to do so.
                             II.
    Accordingly, I respectfully dissent from the majority’s
conclusion to expand the narrow confines of costs taxable
under Section 1920(4). In this case, only the costs of
creating the final single copy produced to the requesting
party are covered by § 1920(4), including scanning to the
extent necessary, converting documents to a uniform
production format, copying the converted files to produc-
tion media, the creation and copying of load files, and the
cost of the production media itself.
