Case 1:12-cv-00256-RMB-JS Document 313 Filed 01/10/14 Page 1 of 6 PageID #: 29317

[D.I. 306] IN THE UNITED STATES DISTRICT COURT DISTRICT OF DELAWARE BAYER CROPSCIENCE AG, et al., Plaintiffs, Civil No. 12-256 (RMB/JS) v. DOW AGROSCIENCES LLC, Defendant.

O R D E R This Order addresses an issue the Court raised with the parties sua sponte via its Letter Order dated November 22, 2013. [D.I. 306]. Namely, whether the oral argument and decision on

Dows Motion for Attorneys Fees [D.I. 279] should be stayed until after the Federal Circuit rules on Bayers appeal and/or until the Supreme Court decides the appeals in Highmark, Inc. v. Allcare Health Management Systems, Inc., 687 F.3d 1300(Fed. Cir. 2012) and Icon Health & Fitness, Inc. v. Octane Fitness, LLC, 496 Fed. Appx. 57 (Fed. Cir. 2012). The Court received the parties letter briefs [D.I. 308, 310, 312], and held oral argument via telephone on December 3, 2013. discussed, the (Transcript available at D.I. 311). ruling results in the As will be without

Courts

DENIAL

prejudice of Dows Motion for Attorneys Fees.

In addition, Dows

requests for targeted discovery and that the Court decide a moot privilege issue are DENIED. The parties are obviously familiar with the fact and

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procedural history of the case.

On October 7, 2013, the Honorable

Rene Marie Bumb granted Dows motion for summary judgment. [D.I. 269]. Bayers appeal of the decision is presently pending before the Federal Circuit. On October 31, 2013, Dow filed its Motion for The

Attorneys Fees and Costs and Motion for Targeted Discovery. motion has been referred to this Court for a decision.

As noted in Walker Digital, LLC v. Expedia, Inc., 2013 WL 5662145, at *2 (D. Del. Oct. 16, 2013)(citation omitted), if an appeal on the merits of a case is pending, a court can rule on a motion for fees, defer its ruling, or deny the motion without prejudice, directing a new period to file the motion after the appeal has been resolved. Insofar as Bayers appeal to the Federal Circuit is concerned, the Court rules that Dows motion should not be stayed pending the Federal Circuits decision. The Court is not confident that anyone can give a reasonably accurate prediction of when the Federal Circuit will decide the appeal. This being the

case, the Court is concerned that if it waits too long to decide Dows motion the record will get stale. Further, an open-ended

extension to decide Dows motion could lead to the loss of relevant evidence and faulty memories. For example, the insights of present counsel will be helpful when the Court decides Dows motion. These counsel have firsthand knowledge of the numerous discovery and procedural disputes the Court addressed, many of which are at the crux of Dows motion. If these counsel leave their present firms

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while Bayers appeal is pending, the Court could lose the benefit of their firsthand knowledge. The Court sees no benefit to

indefinitely delaying a ruling on Dows motion. See New York v. Hill, 528 U.S. 110, 117 (2000)(Delay can lead to a less accurate outcome as witnesses become unavailable and memories fade.); Golden Quality Ice Cream Co., Inc. v. Deerfield Specialty Papers, Inc., 87 F.R.D. 53, 56 (E.D.Pa. 1980)(Any plaintiff in the federal courts enjoys the right to pursue his case and to vindicate his claim expeditiously.); In re Health Mgmt., Inc., 1999 WL 33594132, at *5 (E.D.N.Y. Sept. 15, 199)(citation and quotation omitted)(The ability of courts to avoid undue delay is essential to assur[e] that justice for all litigants be neither delayed nor impaired.).1 While the Court finds that an open-ended delay is not

appropriate, it also rules that Dows motion will not be decided before the Supreme Court decides the Octane appeal.2 The Court

expects that the Supreme Courts Octane decision will define and clarify the standard the Court must use to decide whether this is an exceptional case pursuant to 35 U.S.C. 285. Unlike Dow, the

Court declines to speculate as to how the Supreme Court will rule. There is no guarantee, as Dow argues, that the Supreme Court will

The Court recognizes that its ruling does not square with the Order issued in Walker Digital, LLC, supra. This is not surprising since the decision as to when to decide Dows motion is dependent upon the exercise of the Courts discretion in light of the particular facts before it. The Court agrees that the Highmark decision should not directly impact Dows motion. 3
2

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only decide to lower the bar to recovering fees under 35 U.S.C. 285. December 2, 2013 Letter Brief at 1.3 Since the Supreme Court

is expected to rule by the end of June, 2014, Dow will not have to wait an inordinate or indefinite time for its motion to be decided. Dow will not be prejudiced by the Courts ruling, especially in view of the benefit to be derived from the hoped for

clarification of the applicable case law. Unlike what will occur if the Court waits for the Federal Circuit to rule on Bayers appeal, the Supreme Courts Octane decision will be decided in the reasonable near future. Octane is decided, the If the Court rules on Dows motion before losing party will inevitably ask for

reconsideration based on its reading of the new Supreme Court precedent. There is no need for duplicative motion practice in

view of the fact that the Supreme Courts Octane decision will likely be issued in the near future. The minimal delay will not,

in the Courts view, run the risk that memories will fade or that relevant evidence will become stale. Dows request that the Court decide the privilege issues raised in the parties letter briefs [D.I. 113, 138, 147, 158, 159, 165, 201] are denied. The Court deems this effort to be a needless waste of time and resources. The Court declines Dows invitation

to decide anew complex privilege issues in a case that Dow won on

Dows argument that the Court should determine if Dows motion is a close call and then decide whether to stay its decision (id.) is a non-starter. 4

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summary judgment.

The resolution of the privilege issues is not

dispositive one way or the other as to Dows request for fees. Dows request for Ms. Keatings deposition is also denied. Dows request to forage into clearly privileged work-product is inappropriate and unnecessary. Core work-product encompassing the

mental impressions, conclusions, opinions or legal theories of an attorney are afforded near absolute protection from discovery. In re Cendant Corp. Sec. Litig., 343 F.3d 658, 664 (3d Cir. 2003). The minimal questions and answers Dow cites to does not support its argument that Ms. Keating or Dow waived their right to assert a privilege objection. Even if there was a waiver no further Ms.

discovery on the requested subject area is appropriate.

Keating did not selectively waive a privilege for her advantage. Thus, Dow has not been treated unfairly. See In re Teleglobe

Communications Corp., 493 F.3d 345, 361 (3d Cir. 2007)(courts do not imply a waiver broader than what is necessary to ensure that all parties are treated fairly). The Federal Circuits recent decision in Kilopass Technology, Inc. v. Sidense Corp., F.3d , 2013 WL 6800885 (Fed. Cir. Dec.

26, 2013), is instructive.

First, the opinion evidences that the

lower court did not stay its decision on the defendants motion for attorney fees pending the appeal to the Federal Circuit. *1. Id. at

Further, the opinion buttresses the Courts view that the

Supreme Courts impending clarification of the standard for determining what is an exceptional case will be immensely helpful

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when deciding Dows motion for attorneys fees.

It is evident the

Federal Circuit and lower courts are struggling with the standard to determine what is an exceptional case. Accordingly, for all the foregoing reasons, it is hereby ORDERED this 10th day of January, 2014, that Dows Motion for Attorneys Fees and Costs and Motion for Targeted Discovery [D.I. 306] is DENIED in part and DENIED in part without prejudice; and it is further ORDERED that Dows requests for targeted discovery and that the Court decide a moot privilege issue are DENIED; and it is further ORDERED that the Courts decision on Dows motion will not be stayed pending the decision on Dows appeal of Judge Bumbs October 7, 2013 Order; and it is further ORDERED that Dows Motion for Attorneys Fees is DENIED without prejudice. No later than twenty (20) days after the

Supreme Court issues its decision in the Octane appeal, Dow shall re-file its motion. After all relevant motion papers are filed,

oral argument will be scheduled.

s/Joel Schneider JOEL SCHNEIDER United States Magistrate Judge