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