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District Court Sanctions Plaintiff for Failing to Meet and Confer on Defendants’ Motion to Dismiss Counterclaims

In a recent development in patent litigation, the district court has granted a motion to dismiss counterclaims in a case involving U.S. Patent No. 10,519,668 (“the ‘668 Patent”). The decision sheds light on the importance of adhering to meet and confer obligations, as well as the consequences of non-compliance.


The defendants in this case had asserted counterclaims, including declaratory judgments of invalidity and non-infringement of the ‘668 Patent, breach of contract, fraud, unjust enrichment, and constructive trust.  On October 31, 2023, the district court granted the defendants’ Motion for Summary Judgment of non-infringement of the ‘668 Patent, marking a significant milestone change in the proceedings.

Subsequent Events:

Following the district court’s decision, the defendants’ counsel sought to engage in a meet and confer with the plaintiff, Upstream, regarding the possible dismissal of the counterclaims without prejudice. Despite making multiple attempts to contact Upstream’s counsel between March 19 and 27th, no response was received. Consequently, the defendants proceeded to file a motion to dismiss their counterclaims on March 29, 2024.

The District Court’s Decision:

In a surprising turn of events, despite Upstream’s failure to engage in the meet and confer process, they indicated in their reply that they “do not object” to the defendants’ Motion. Consequently, the district court granted the Motion to dismiss the counterclaims, without prejudice.

Sanctions Imposed:

Nonetheless, the district court did not overlook Upstream’s disregard for the meet and confer obligations. Citing Local Rule 7-3, which mandates thorough discussions between opposing counsels prior to filing motions, the district court criticized Upstream’s counsel for their failure to respond to numerous meet and confer requests. This violation, coupled with Upstream’s delay in filing a non-opposition to the Motion, prompted the district court to impose sanctions.

Upstream Holdings, LLC v. Brekunitch, et al., Case No. 2:22-cv-03513-MCS (RAOx) (C.D. Cal. April 22, 2024)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or