Innovative Biometric Technology, LLC v. Toshiba America Information Systems, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INNOVATIVE BIOMETRIC TECHNOLOGY, LLC,
Plaintiff-Appellant,
AND
JAMES BEAUREGARD PARKER,
SCOTT C. HARRIS, AND NIRO HALLER & NIRO,
Movants-Appellants,
v.
TOSHIBA AMERICA INFORMATION SYSTEMS,
INC.,
Defendant-Appellee.
______________________
2013-1288, -1289, -1290, -1291
______________________
Appeals from the United States District Court for the
Southern District of Florida in No. 09-CV-81046, Senior
Judge Kenneth L. Ryskamp.
______________________
Decided: May 15, 2014
______________________
MEREDITH MARTIN A DDY , Steptoe & Johnson LLP, of
Chicago, Illinois, argued for plaintiff-appellant. With her

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INNOVATIVE BIOMETRIC TECHNOLOG v. TOSHIBA AMERICA 2
on the brief were T HOMAS J. F ILARSKI, HOUDA M ORAD, and
T HOMAS A. RAMMER .
MEGAN S. WOODWORTH , Dickstein Shapiro LLP, of
Washington, DC, argued for defendant-appellee. With
her on the brief were J EFFREY K. S HERWOOD and
J ONATHAN L. F ALKLER .
______________________
Before WALLACH , T ARANTO, and CHEN, Circuit Judges.
P ER CURIAM
As relevant here, the district court awarded attorney’s
fees under several different sources of legal authoriza-
tion. We affirm the award, because we find no abuse of
discretion to undermine the bottom-line result. In so
ruling, however, we think it worthwhile briefly to mention
a few of the issues that we do not decide.
Citing Fed. R. Civ. P. 37(c)(1), the district court ex-
cluded from consideration on the fees motion evidence the
patentee submitted about its pre-suit investigation that it
had earlier withheld in response to various discovery
requests at the merits stage of the litigation. In declining
to disturb that exclusion, we do not consider whether Rule
37(c)(1) should have been held inapplicable to the with-
holdings of evidence here on the ground that they did not
involve the obligations stated in “Rule 26(a) and (e),” to
which Rule 37(c)(1) refers. The patentee did not present a
challenge on that basis. We also do not decide that an
undisputedly legitimate invocation of privilege covering
pre-suit investigations made at the merits stage (as
Toshiba agrees occurred here) should bar later, full sub-
mission of withheld materials on the subject once merits
litigation is concluded and fees are being litigated. We
need not address that question, because the district court
found the materials submitted at the fees stage had been
“cherry-picked.”

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INNOVATIVE BIOMETRIC TECHNOLOG v. TOSHIBA AMERICA 3
In addition, the district court’s opinion might be read
as suggesting that the impropriety of a request for further
discovery under Rule 56(d) can be shown simply by the
fact that the requester later did not use the information
received from the request—a proposition that Toshiba
defends. We do not approve any such broad proposition: a
discovery request can be legitimate yet uncover no infor-
mation that turns out actually to be useful. The district
court seems to have awarded the fees at issue as a condi-
tion of approving the voluntary dismissal with prejudice
under Rule 41(a)(2), whether or not other legal authoriza-
tions supported the fee award. Using Rule 41(a)(2) in
that way raises questions we need not answer. We need
not reach either the Rule 56(d) or Rule 41(a)(2) matters
because the full fee award independently stands under 35
U.S.C. § 285.
AFFIRMED

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