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Via Email and Harzd—Delivery
The Honorable Vincent J. Poppiti
Blank Rome LLP
1201 Market Street, Suite 800
Wilmington, DE 19801
Re: LG.Phil1ps LCD Co., Ltd. v. ViewSonic et al., USDC, D. Del., No. 04-343-JJF
ViewSonic’s Statement Re Prima Facie Hearing For Attorneys’ Fee Motion
Dear Special Master Poppiti:
The defendant is not required to first make a prima facie showing that the case is
"exceptional" in order to obtain additional discovery or an evidentiary hearing in support of its
motion for a1:torneys’ fees under 35 U.S.C. § 285. Rather, it is within the Court’s discretion
whether to allow the additional discovery or an evidentiary hearing. See Campbell v. Spectrum
Automation C0., 601 F. 2d 246, 252 (6th Cir. 1979) (acknowledging that "disposition of a request
for § 285 attorneys’ fees where there has been less than a full trial may require the taking of
additional evidence, including an adversary hearing.") Under the circumstances of this case,
where LPL undermined ViewSonic’s efforts to obtain Court-ordered discovery, further discovery
or an evidentiary hearing would be warranted if and when requested by ViewSonic without any
prima facie showing.
LPL relies upon the 1976 decision of WL. Gore and Assoc. v. Oak Materials Group, 424
F. Supp. 700, 702 (D. Del. 1976) to argue that no further discovery or evidentiary hearings
should be ordered unless ViewSonic can first make a prima facie showing that the case is
exceptional based on the evidence it currently has. ln Gore, the court was reluctant to require the
parties to undergo a lengthy evidentiary hearing on issues that would have been brought out at
trial if the case had not been dismissed. Id. at 702. Instead, the court reviewed the papers and
the pa1ties’ evidence to determine if the defendant could first make a prima facie showing that
the case was exceptional. Id.1
More recent decisions from the Federal Circuit and other jurisdictions have not adopted —
Gore ’s rigid approach. For example, in Reactive Metals and Alloys Corp. v. ESM Inc., 769 F.
2d 1578 (Fed. Cir. 1985) (overruled on other grounds by Kingsdown Med Consultants v.
Hollister Inc., 863 F. 2d 867, 876 (Fed. Cir. 1988)), the parties stipulated to an order of dismissal
after discovery revealed that the plaintiff had offered the patented subject matter for sale more
than one year prior to seeking patent protection. Thereafter, the defendant brought a motion for
attorneys’ fees pursuant to 35 U.S.C. § 285 and requested additional discovery of the plaintiffs
I Notably, when making its determination the court explained that even if the defendant could have obtained and
presented the necessary evidence, it still would not support an award of attomeys’ fees. Id at 708.
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Case 1:04—cv—00343-JJF Document 816 Filed 10/23/2007 Page 2 of 3
V CONNOLLY Bova LODGE at Hurz LLP
A ATTORNEYS AT LAW
The Honorable Vincent J. Poppiti
October 23, 2007
Page 2
sales records to establish the "exceptional circumstances†of plaintiffs bad faith conduct.
Reactive Metals, 769 F.2d at 1581. The trial court found that the defendant’s evidence “did not
support a prima facie case of fraud on the Patent Office during prosecution" Id. However, the
court believed it was appropriate to grant the defendant’s request for additional discovery. The
court reasoned that "proof of sales might establish the ‘exceptional circumstances’ required by §
285 for an award of attorneys fees." Id Relying on the sales documents the defendant
discovered, the Court subsequently granted the fee motion. Id While the Federal Circuit
disagreed that the case was exceptional, it found no error in the trial court’s decision to allow
additional discovery despite the trial court’s finding that defendant had not first made a prima
facie showing that the case was exceptional. Id.2
More recently, in Highway Equip. Co. Inc. v. FECO Ltd., 469 F.3d 1027 (Fed. Cir. 2006),
the trial court ruled it had jurisdiction to hear the defendant’s section 285 motion after the
underlying patent infringement action was voluntarily dismissed. Upon dismissal, the court
promptly ordered and conducted a four day evidentiary hearing on the section 285 motion.
There was no indication that the court required a prima facie showing that the case was
exceptional. The Federal Circuit affirmed, holding that the trial court properly asserted
jurisdiction to rule on the motion.
While courts do not want to discourage voluntary dismissals by imposing attorneys’ fees,
courts must also balance a competing aim, i.e., to prevent a "party that deserves to bear the
burden of attorneys’ fees incurred by his adversary to escape that consequence by the simple
device of unilaterally mooting the controversy." Chris—Cra]7 Indus., Inc. v. Monsanto Co., 59
F.R.D. 282, 284 (C.D. Cal. 1971). Thus, a court has discretion to grant or deny a defendant’s
request for additional discovery or evidentiary hearing in support of an attorneys’ fee motion
without the defendant first making a prima facie showing that the case is exceptional. Exercising
that discretion is particularly warranted in this case because any argument that ViewSonic lacks
the evidence sufficient to make a prima facie showing would be a direct result of LPL’s repeated
violation of this Court’s discovery orders. Specifically, LPL failed to present a prepared witness
for its Court—ordered deposition on September 19th. The witness presented at that deposition was
not even prepared to authenticate documents LPL produced in discovery. Even worse, LPL
admitted in its October 3, 2007 motion for a tprotective order that it again would not present a
prepared witness for deposition on October 10 , in blatant disregard of this Court’s order.
LPL should not be allowed to violate Court orders, evade discovery, and then argue that
ViewSonic lacks sufficient evidence to warrant further discovery. Instead, the parties should be
allowed to brief the section 285 motion, and if during that process either party believes further
discovery, an evidentiary hearing, or even evidentiary sanctions are warranted, the issue can be
presented to the Court for determination.
ViewSonic files herewith its proposed schedule as requested by the Special Master.
2Reactive Metals acknowledged the holding of WL. Gore, supra, but found that the trial court’s decision to allow
additional discovery was nevertheless proper. Reactive Metals, 769 F.2d at 1582, n.5.
Case 1 :04-cv-00343-JJF Document 816 Filed 10/23/2007 Page 3 of 3
y CONNOLLY BOVE LODGE at Hurz LLP
é ATTORNEYS AT LAW
The Honorable Vincent J. Poppiti
October 23, 2007
Page 3
Respectfully submitted,
/s/ James D. Heisman
James D. Heisman
Enclosure
cc: All Counsel of Record (vv! enclosure via email only)
571736/70104*4
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