United States District Court, W.D. Washington
B. LEIGHTON UNITED STATES DISTRICT JUDGE
MATTER is before the Court on the Following Motions:
Defendant Adaptics' Motion to Dismiss [Dkt. #110];
Adaptics' Motion to Compel Rule 120 Disclosures [Dkt.
#114]; and Adaptics' (second) Motion to Compel [Dkt. #s
150 and 152 (sealed version)]. Adaptics' Motion to Seal
its second Motion to Compel [Dkt. #148] is GRANTED.
seeks dismissal of Perfect Co.'s patent infringement
claims against it under Fed.R.Civ.P. 12(c) and 35 U.S.C.
§ 101, claiming that the ‘365 patent is invalid
because asserts only un-patentable, non-inventive
“abstractions.” Citing Alice Corp. Pty. Ltd.
v. CLS Bank Int'l, 134 S.Ct. 2347 (2014).
Co. denies that its patent claims only abstractions, and
emphasizes that Adaptics asked the USPTO to re-examine the
‘365 patent less than a year ago, and the patent's
validity was confirmed (indeed, some additional claims were
allowed). It also points to Adaptics' heavy “clear
and convincing evidence” burden of proof for
has not met this standard. The Motion to Dismiss based on
patent invalidity is DENIED.
first Motion to Compel seeks additional Rule 120 disclosures.
Adaptics claims Perfect has refused or at least failed to
provide required information about its contentions and its
efforts to monetize its invention. It specifically asks
Perfect Co. to describe the “real time filling feature,
” and seeks an “element by element” mapping
of each claim element to each of Perfect Co.'s products.
It also claims that Perfect Co.'s responses to other
discovery is insufficient.
Co. claims that the former request properly awaits the
(now-completed) claims construction process, and that the
latter is not relevant, and is out of proportion to the needs
of the case. It also points out that such mapping was done in
re-examination. It also argues that Adaptics' claim that
Perfect Co.'s infringement contentions were not
sufficient comes 17 months into the case. Finally, and most
contentiously, Perfect Co. argues that it needs access to
Adaptics' source code before it can supplement or amend
its Rule 120 Contentions, and blames Adaptics' counsel
for the delay in doing so.
claims Perfect Co.'s attorney improperly seeks to share
that code with outside counsel, and that the delay is Perfect
Court is not inclined to get to the bottom of this secondary
discovery dispute, and it is not necessary to do so to
resolve the motion. If it has not yet done so, Adaptics will
provide its source code in a manner that is useable to
Perfect Co. Perfect Co. shall inspect Adaptics' source
code in a manner consistent with the Stipulated Protective
Order, and shall then amend its Rule 120 Contentions. This
process should be completed within 30 days. To this extent,
Adaptics' first Motion to Compel is GRANTED. Adaptics
Motion to compel contentions regarding “real
time” and an element by element mapping is DENIED.
also seeks Perfect Co.'s licensing information. Perfect
Co. claims (and has demonstrated) that the information is
sensitive and subject to the Protective Order and an
“attorneys' eyes only designation.” The
material will be produced AEO, as Mr. Rylander describes his
offer in Perfect Co.'s Response. [Dkt. # 126 at 9-10].
Adaptics Motion to compel such licensing information is, to
this limited extent, GRANTED.
Co.'s Motion to “Strike, Seal, and Admonish”
(in its Response) is DENIED without prejudice to renew, if
the allegedly “cavalier” treatment of
confidential information continues.
second Motion to Compel seeks a whole new list of documents
and information. Perfect Co. argues that most of the
information has been produced and that which has not is not
discoverable or relevant. Adaptics specifically seeks
information that “corroborates” Perfect Co.'s
claims. Perfect Co. argues (and demonstrates) that because
the date of its invention is not at issue, corroboration
evidence is not relevant. The Motion to produce such
corroboration evidence is DENIED. The Motion to produce
documents and other evidence related to inventor
contributions and intervening prior art is DENIED.
Motion to compel market studies supporting Perfect Co.'s
claims (on re-examination) that it has 7000 outlets and
Adaptics has less than 400 is DENIED. Similarly DENIED is the
request for additional production of documents relating to
Brookstone's marketing of Perfect Co.'s products. If
and to the extent Perfect Co. has not yet produced documents
responsive to RFPs 21 and 22 (financials), it shall do so
within ten days. The Motion to Compel is to that extent
Co.'s Motion to Strike Improper Public Filing of
Confidential Information (contained in its Response, Dkt.
#171) is DENIED, without prejudice to raise it if continued
improper disclosures require another motion. In that ...