Chief Judge Stark Orders that Voluntary Dismissal Be with Prejudice
April 3, 2018
Publication| Intellectual Property
In Wi-Lan Inc. v. Sharp Electronics Corp., No. 15-379-LPS (D. Del. Sept. 22, 2017, unsealed Feb. 15, 2018), Chief Judge Stark denied the plaintiff’s request that its voluntary dismissal under Fed. R. Civ. P. 41(a)(2) of one of the asserted patents be without prejudice and that each party bear its own fees and costs.
The plaintiff moved for dismissal approximately a year-and-a-half after initiating the litigation, in the course of which the plaintiff had acknowledged during a discovery dispute that it lacked information from third parties that would be needed for its infringement contentions regarding the patent that it here sought to dismiss. When the Court ordered the plaintiff to supplement its infringement contentions and asked the parties to propose an amended schedule, the plaintiff informed the Court that it intended to dismiss its claims of infringement of the patent at issue with prejudice to avoid disrupting the schedule.
Chief Judge Stark found that the patent should be dismissed with prejudice because of the plaintiff’s failure to timely obtain the information it needed to pursue its own patent infringement claim, full and fair opportunity to litigate in the lawsuit, and representation to the Court that it would seek dismissal with prejudice. The Court further denied the plaintiff’s request that the dismissal preclude the defendant from seeking a designation of exceptional case.
Key Point: Although voluntary dismissals without prejudice should be granted liberally, as the Court recognized, the decision is discretionary. Beyond a certain point in the litigation a plaintiff risks a dismissal with prejudice.