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)

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Jeffer Mangels Butler & Mitchell LLP | Attorney Advertising

Written by:


Jeffer Mangels Butler & Mitchell LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.