Intellectual Property Law

Joseph J. Farnan: No Fees for Successful Discovery Motion

By Karen E. Keller, Andrew A. Lundgren et al.

Despite granting the relief sought in a discovery motion, district judge Joseph J. Farnan Jr. has issued a decision declining to award the movant its fees and costs. In the underlying motion, WebXchange sought to compel 30(b)(6) testimony from FedEx about the company's shipping practices. According to FedEx, the topic - an infringement contention - had been untimely disclosed. Observing the absence of prejudice, the Court refused to limit the deposition, and allowed the testimony. Notably, however, the Court rejected a corresponding request for fees and costs:

"The Court concludes that an award of damages and costs is not justified in this situation. Although Plaintiff was successful in its [motion], Defendants were substantially justified in taking the position of opposition based upon the legitimate dispute on whether 'Shipping' has been listed as an infringement contention."

In this case, the "legitimate" discovery dispute precluded the otherwise available Rule 37 sanctions.

WebXchange Inc. v. FedEx Corp., C.A. No. 08-133-JJF (D. Del. Jan. 20, 2010) (Farnan, J.).

Full post as published by Delaware IP Law Blog on January 27, 2010 (boomark / email).