Defendant Wipes Out After Getting Caught in the Riptide and Is Sanctioned for Ill-Conceived Motion to Compel in Surf Tech Litigation

Mar 17, 2017

Reading Time : 2 min

The plaintiff, FlowRider, acquired an exclusive right to the asserted patent and a portion of the inventor’s business, Wave Loch. Prior to the instant litigation, FlowRider and Wave Loch were engaged in arbitration unrelated to the patent issues before the court. The arbitration lasted almost a year and involved the production of more than 40,000 pages of documents and the exchange of nearly 80 pleadings.

In the subsequent patent litigation, defendant Pacific Surf requested the production of “whatever documents, pleadings, etc., were exchanged or provided” in the arbitration. FlowRider objected on various grounds, but eventually produced the demand for arbitration, the arbitration settlement agreement, and a contribution agreement. FlowRider also produced nearly 79,000 other documents through the course of discovery. Not satisfied, Pacific Surf moved to compel FlowRider to produce “all pleadings and documents exchanged in the arbitration.”

Pacific Surf argued that the arbitration documents were relevant to standing, damages and the credibility of the inventor. FlowRider countered that a separate, non-arbitrated agreement gave it standing, that it had already produced documents relating to damages, and that the confidential documents exchanged in the arbitration were directed to an irrelevant contract dispute. On this last point, FlowRider submitted a declaration from arbitration counsel that explained that the arbitration related to contractual pricing obligations and manufacture and sales rights, and that “[n]one of the issues in the arbitration related to Wave Loch’s development or ownership of patents or other intellectual property.”

Although the court found the motion untimely, it went on to rule on the merits. The court agreed with FlowRider that the arbitration involved an irrelevant breach of contract claim, and held that “even if the documents were relevant, [Pacific Surf’s] request for all ‘documents, pleadings, etc. . . . exchanged or provided’ in the [a]rbitration is grossly disproportionate to the needs of the case and seeks confidential information.” The court also found that the request sought “cumulative information” because the 79,000 documents that FlowRider had already produced contained sufficient information to support damages and challenge the inventor’s credibility. Thus, the court found that the request was overboard, sought irrelevant information and was not proportional to the needs of the case. The court also found that Pacific Surf had ignored FlowRider’s representation that it had already produced any relevant documents that were exchanged in the arbitration, and instead filed an “untimely motion to compel irrelevant, duplicative and confidential documents, which are not proportional to the needs of this case.”

The court denied the motion and sanctioned the defendant for filing a motion that was not substantially justified.

FlowRider Surf, Ltd., et al., v. Pacific Surf Designs, Inc., No. 15-cv-1879 BEN (BLM) (S.D. Cal. March 9, 2017)

Share This Insight

Previous Entries

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

IP Newsflash

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

IP Newsflash

May 13, 2025

The Federal Circuit recently affirmed a district court’s holding that patent term extension (PTE) for a reissued patent was properly based on the issue date of the original patent and not that of the reissued patent. The Federal Circuit concluded that, where both the original and reissued patents claimed a drug product under regulatory review, using the issue date of the original patent to calculate PTE comports with both the purpose of the Hatch-Waxman Act and the related statutory context.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.