Judge Alsup Declines to Impose Sanctions for Alleged Discovery Misconduct

Jan 6, 2017

Reading Time : 1 min

The case began when Sentegra filed an infringement action against Asus Computer International (ACI) in the Southern District of New York. ACI moved to dismiss for improper venue or to transfer to the Northern District of California. Presiding Judge Woods declined to grant a stay of discovery while the motion was pending, but counsel for the parties did agree to an adjournment of all discovery-related deadlines by a letter agreement dated October 2015.

The controversy at the heart of the present order started in March 2016 when Sentegra’s counsel requested an extension of the fact discovery cutoff. ACI neither joined nor opposed the motion, and it added language to the request to the same effect.  Judge Woods granted Sentegra’s motion to extend the cutoff, and immediately afterwards, Sentegra served 58 requests for production and five interrogatories upon ACI. After Judge Woods granted the motion to transfer the case to the Northern District of California, Sentegra voluntarily dismissed the suit. ACI’s counsel then alleged that Sentegra's conduct violated their agreement and sought sanctions. 

Judge Alsup noted that, “[i]f ACI had wanted to nail down a firm agreement to postpone discovery, it should have expressly insisted on a clear-cut agreement instead of trying to keep its options open and have it both ways. . . . It is now too slick by half for [ACI’s counsel] to re-characterize this record as an agreement when, in fact, he himself studiously avoided committing to any such agreement.” And, although ACI also sought sanctions on alternate grounds–that Sentegra brought a baseless lawsuit and did so in an inconvenient venue–the court similarly found nothing in Sentegra’s counsel’s conduct that warranted sanctions.

Sentegra, LLC v. Asus Computer International, 3-16-cv-03136 (N.D. Cal. December 29, 2016).

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

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.