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United States Court of Appeals for the Federal Circuit
February 23, 1990, Decided
Nos. 89-1460, 89-1528
[***1968] [*1360] BENNETT, Senior Circuit Judge.
These consolidated appeals are from the May 8, 1989 order of the District Court for the Eastern District of Michigan, Southern Division, awarding the defendants (collectively "Hyde") $ 100,000 as sanctions against the plaintiff (Badalamenti) and his attorney, Ernie L. Brooks (Brooks), for a discovery violation. In the [**2] same order, the district court also denied Hyde's motion for attorney fees pursuant to the exceptional case statute, 35 U.S.C. § 285 (1982). Badalamenti has appealed the award of sanctions, and Hyde has appealed the denial of its motion for attorney fees. We reverse the award of sanctions, vacate the denial of the motion for attorney fees, and remand.
A. The Procedural History
Badalamenti sued Hyde for infringement of Badalamenti's U.S. Patent No. 4,335,529, for a traction device for shoes. The district court granted summary judgment for the defendants in February 1986, holding that there was no literal infringement and that the doctrine of prosecution history estoppel prevented a finding of infringement under the doctrine of equivalents. Badalamenti v. Dunham's, Inc., 230 U.S.P.Q. (BNA) 74 (E.D.Mich. 1986). This court vacated and remanded in an unpublished opinion. Badalamenti v. Dunham's, Inc., 809 F.2d 789 (Fed.Cir. 1986) (Table).
In conducting discovery after the remand, Hyde determined that Badalamenti had withheld certain documents during previous discovery. Hyde moved under Fed.R.Civ.P. 37(d) [**3] for sanctions, including dismissal with prejudice and attorney fees and costs. In a Memorandum Opinion of December 17, 1987, the district court held that a discovery violation had occurred and that sanctions should be imposed. Badalamenti v. Dunham's, Inc., 118 F.R.D. 437, 6 U.S.P.Q.2D (BNA) 1633 (E.D.Mich. 1987). The court denied the motion to dismiss and took the amount of monetary sanctions under consideration.
Subsequently, a jury trial on the merits took place. Hyde moved for a directed verdict on the issue of patent validity. The district court granted the motion, holding that the patent was invalid for obviousness [***1969] under 35 U.S.C. § 103. Badalamenti v. Dunham's, Inc., 680 F. Supp. 256, 6 U.S.P.Q.2D (BNA) 1626 (E.D.Mich. 1988). The court relied in part on certain prior art documents included in the material Badalamenti had withheld from earlier discovery. This court affirmed the obviousness determination in an opinion designated as unpublished. Badalamenti v. Dunham's, [*1361] Inc., 862 F.2d 322, 12 USPQ2d 1222 (Fed.Cir. 1988), cert. denied, 490 U.S. 1047, 109 S. Ct. 1955, 104 L. Ed. 2d 425 (1989). [**4]
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896 F.2d 1359 *; 1990 U.S. App. LEXIS 2504 **; 13 U.S.P.Q.2D (BNA) 1967 ***
MICHAEL J. BADALAMENTI, Plaintiff-Appellant, v. DUNHAM'S INC., KINNEY SHOE CORPORATION, and HYDE ATHLETIC INDUSTRIES, INC., Defendants/Cross-Appellants
Subsequent History: [**1] Rehearing Denied April 20, 1990, Reported at 1990 U.S. App. LEXIS 6257; Rehearing In Banc Declined May 2, 1990, Reported at 1990 U.S. App. LEXIS 7145.
Prior History: Appealed from: United States District Court for the Eastern District of Michigan, Judge Feikens.
district court, documents, sanctions, discovery, attorney's fees, confidential, protective order, patent, objected, discovery violation, exceptional case, requests, award of sanctions, infringement, withheld, evasive
Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Discovery & Disclosure, Discovery, Misconduct During Discovery, Clearly Erroneous Review, Governments, Courts, Judicial Precedent, Patent Law, Jurisdiction & Review, General Overview, Methods of Discovery, Inspection & Production Requests, Depositions, Oral Depositions, Protective Orders, Attorney Fees & Expenses, Basis of Recovery, Statutory Awards, Damages, Collateral Assessments, Attorney Fees, Remedies, Costs & Attorney Fees, Evidence, Burdens of Proof, Clear & Convincing Proof, Defenses, Inequitable Conduct, Burdens of Proof