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Court Stays Discovery Request for Pre-Litigation Filing Investigation as Premature until Case Concludes

The amended complaint filed by Gene Neal and Kennieth Neal alleged claims for patent infringement and violations of California state law for unfair competition and false advertising. The Defendants, pursuant to Rule 26(d), Federal Rules of Civil Procedure sought “an Order regarding the handling of discovery concerning Plaintiffs’ pre-filing investigation of Defendants’ products which Plaintiffs allege the asserted patents (see, e.g., Doc. No. 34 ¶ 17). The parties were unable to reach an agreement concerning the handling of discovery concerning Plaintiffs’ pre-filing investigation after numerous meet and confers and exchange of correspondence. Instead of rushing to the Court to file a motion to compel, Defendants’ proposal strikes the right balance between discovery of this relevant information and avoidance of unnecessary litigation costs and therefore Defendants believe that the Court should enter ” an appropriate order.

The Defendants argued that this discovery was necessary for a determination of whether the case exceptional “and/or whether sanctions under Fed. R. Civ. P. 11 based on, inter alia, a faulty pre-filing investigation and unwarranted claim construction positions is warranted.”

The next day the Defendants filed a motion for judgment on the pleadings. In response to the motion, Plaintiffs asserted: “Before discovery has closed, before a patent claims construction hearing has been held, before summary judgment motions have been filed, and before a trial on the merits, Defendants are asking the Court to set a post-judgment discovery and briefing schedule on a Rule 11 or 35 U.S.C. § 285 “exceptional case” motion for attorneys’ fees and sanctions. Because the requested order is unprecedented, unnecessary, and unsupportable, the Motion should be denied.”

The district court agreed with the plaintiffs that such discovery was premature. “The Court concludes discovery regarding pre-filing investigation and claim construction as it may relate to possible Rule 11 sanctions or an award of attorney fees is premature until the underlying matter is resolved on the merits.”

Accordingly, the district court stayed the discovery until the conclusion of the case.

Neal v. Au, Innovative Performance Research, Case No. CV-13-00406-PHX-MEA (D. Az. July 2, 2014)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or