NOTE: This disposition is nonprecedential.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 ADDY, Steptoe & Johnson LLP, of 

Chicago, Illinois, argued for plaintiff-appellant. With her 
2 INNOVATIVE BIOMETRIC TECHNOLOG v. TOSHIBA AMERICA

on the brief were THOMAS J. FILARSKI, HOUDA MORAD, and 

THOMAS A. RAMMER. 

MEGAN S. WOODWORTH, Dickstein Shapiro LLP, of 

Washington, DC, argued for defendant-appellee. With 

her on the brief were JEFFREY K. SHERWOOD and 

JONATHAN L. FALKLER. 

______________________ 

Before WALLACH, TARANTO, and CHEN, Circuit Judges.

PER CURIAM

As relevant here, the district court awarded attorney’s 

fees under several different sources of legal authorization. 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 excluded 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 withholdings 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 submission 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 information that turns out actually to be useful. The district 

court seems to have awarded the fees at issue as a condition of approving the voluntary dismissal with prejudice 

under Rule 41(a)(2), whether or not other legal authorizations 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