N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________
INNOVATIVE BIOMETRIC TECHNOLOGY, LLC, Plaintiff

- Appellant,

AND

JAMES BEAUREGARD PAR KER, SCOTT C. HARRIS, AND NIRO HALLER & NIRO, Movants

- Appellants,

v.

TOSHIBA AMERICA INFO RMATION 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 1 5 , 2014

______________________

M EREDITH M ARTIN A DDY , Steptoe & Johnson LLP, of Chicago, Illinois, argued for plaintiff

- appellant. With h erINNOVATIVE BIOMETRIC TECHNOLOG v. TOSHIBA AMERICA 2

on the brief were T HOMAS J. F ILARSKI , H OUDA M ORAD , and T HOMAS A. R AMMER

.

M EGAN S. W OODWORTH , Dickstein Shapiro LLP, of Washington, DC, argued for defendant

- appellee. With her on the brief were J EFFREY K. S HERW OOD and J ONATHAN L. F ALKLER

.

______________________

Before W ALLACH , T ARANTO , and C HEN , Circuit Judges.

P ER C URIAM As relevant here, the district court awarded attorney’s fees under several different sources of legal authoriz ation. We affirm the award, be cause 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 e xcluded from consid eration 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 con sider whether Rule 37(c)(1) should have been held inapplicable to the wit hholdings 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 chall enge 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 su bmission 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.”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 info rmation that turns out actually to be useful. The district court seems to have awarded the fees at issue as a cond ition of approving the voluntary dismissal with prejudice under Rule 41(a)(2), whether or not other legal authoriz ations 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 a ward independently stands under 35 U.S.C. § 285.

AFFIRMED