Defendant Not "Entitled" to Discovery on Claim For Section 285 Fees

In a case where the underlying claims of infringement were dismissed voluntarily under Rule 41, Judge Jones recently ordered that a defendant was not entitled to take discovery in order to support a theory that the case was "exceptional" under 35 USC Section 285.

From Judge Jones' order:

G-J appears to concede that it cannot substantiate its § 285 attorney fee request
without additional discovery. G-J will apparently base its § 285 request solely on its
allegations of inequitable conduct. See Dkt. # 46 at 7 (stating that G-J “is willing to
forego, without prejudice, its declaratory judgment claims of noninfringement and
invalidity, and to focus discovery and proceedings on the inequitable conduct claim”);
Dkt. # 55 at 7 (“G-J has already agreed to shorten and simplify this case by focusing
discovery on its inequitable conduct claim.”). G-J complains, however, that it “has not
been given the chance to substantiate its claims,” and that the court should permit it to
take discovery for that purpose. Dkt. # 46 at 9.


The court finds no merit in G-J’s contention that the mere fact that it has
counterclaims pending entitles it to discovery. The court has broad discretion to control
the scope of discovery. See Childress v. Darby Lumber, Inc., 357 F.3d 1000, 1009 (9th
Cir. 2004); see also Fed. R. Civ. P. 26(b)(1). The court’s April 23 order established that
the scope of the declaratory judgment counterclaims was no more extensive than the
scope of G-J’s request for § 285 attorney fees. The court will limit discovery in
accordance with the scope of the counterclaims.

***


[T]he court noted that it could have dismissed G-J’s counterclaims, retaining jurisdiction solely “to enter declaratory relief as appropriate in resolving G-J’s request under § 285.” Id. at 12 n.5.


judgejonesorderon285.pdf

Dispute Over Privilege Log Resolved By Joint CR 37(a)(2)(B) Submission

Recently, I posted about this case brought by Wacom Technology Corporation against Hanvon Corporation in a dispute involving electronic pen and tablet technology. Judge Bryan recently resolved a discovery dispute between the parties over the sufficiency of Wacom's privilege log. The decision is interesting for at least two reasons. First, it is an excellent example of how parties can resolve their discovery disputes amicably and without resort to expensive motions practice. In 2002, this district enacted revisions to Local Rule 37, including the addition of language to Rule 37(a)(2)(B) permitting a joint submission from the parties and expedited handling of the dispute. The text of that rule can be found by following this link. In this case, Wacom and Hanvon made their joint submission, and the next day, they had a decision from Judge Bryan. The whole process takes about week. The second reason this order is interesting is because it provides some background for those practicing in Judge Bryan's court as to how he may resolve a similar dispute in the future. I'm often frustrated at the lack of available case law covering discovery matters, especially cases from particular courts and particular Judges.
WacomOrderonRule37Submission.pdf