United States District Court, W.D. Washington, Seattle
ORDER DENYING DEFENDANTS' MOTION TO PARTIALLY
STRIKE PLAINTIFF'S INFRINGEMENT CONTENTIONS
RICARDO S. MARTINEZ CHIEF UNITED STATES DISTRICT JUDGE.
patent infringement action, Defendants Nintendo Co., Ltd. and
Nintendo of America, Inc. (“Nintendo”) move to
partially strike the “Initial Disclosure of Asserted
Claims and Preliminary Infringement Contentions”
(“PICs”) served by Plaintiff Genuine Enabling
Technology (“GET”). Dkt. #71. Specifically,
Nintendo seeks to strike GET's preliminary infringement
contentions with respect to the Wii U GamePad, Nunchuk,
Joy-Con and Nintendo Switch Pro Controller. GET opposes
Nintendo's Motion in entirety. Dkt. #74. The Court finds
oral argument not necessary to resolving the issues.
reasons stated below, the Court DENIES Nintendo's Motion
alleges infringement of U.S. Patent No. 6, 219, 730
(“the ‘730 patent”), entitled “Method
and Apparatus for Producing a Combined Data Stream and
Recovering Therefrom the Respective User Input Stream and at
Least One Additional Input Signal.” See Dkt.
#1-1. GET describes the patent as claiming methods and
systems for user input devices and console systems, such as
those found in video game products manufactured by Nintendo.
Dkt. #1 at ¶4.
case was originally filed in the U.S. District Court for the
District of Delaware on February 8, 2017. Dkt. #1. On March
11, 2019, the case was transferred to the Western District of
Washington. Dkt. #47. Between case initiation and transfer to
this District, Nintendo filed two petitions for inter partes
review in the U.S. Patent and Trademark Office seeking
invalidation of certain claims of the ‘730 Patent. The
U.S. Patent and Trademark Office denied both of
Nintendo's petitions on the basis that Nintendo failed to
establish reasonable likelihood that it would prevail in
establishing unpatentability of any of the challenged claims.
Dkts. #75-1 at 28; #75-2 at 25.
complaint, GET contends that certain Nintendo products,
including “consoles, console systems, accessories,
controllers and components of those products” infringe
on one or more claims of the ‘730 patent. Dkt. #1 at
¶4. As examples of Nintendo's infringing products,
GET lists “the Nintendo Wii console system, the
Nintendo Wii Remote, and the Nintendo Wii Remote Plus
(collectively, ‘the Nintendo Products').”
Id. GET describes the Nintendo Products as
“[n]on-limiting examples of these user input
devices and console systems” sold by Nintendo in the
Western District of Washington. Id. at ¶11
3, 2019, parties submitted a joint status report pursuant to
Fed.R.Civ.P. 26(f) outlining the timing and sequence of
discovery. Dkt. #66. The report lists the following
“accused products”: the Nintendo Wii Console
System, the Nintendo Wii Remote, and the Nintendo Wii Remote
Plus. Id. at 1. Based on the information in this
report, parties developed a discovery plan including relevant
disclosure deadlines. However, on May 20, 2019-immediately
before parties' status conference with the Court-GET
served its first set of discovery requests on Nintendo. Dkt.
#72-1 at 1. In addition to listing the Wii Console, Wii
Remote, and Wii Remote Plus as “accused products,
” GET also sought discovery on four additional
products: the Wii U GamePad, Nunchuk, Joy-Con, and Nintendo
Switch Pro Controller. Dkt. #72-2 at 2. Nintendo contends
that these discovery requests were “the first
time” since inception of the case that GET alleged
infringement for products besides the Wii Console, Wii Remote
and Wii Remote Plus. Dkt. #71 at 5.
28, 2019, pursuant to Local Patent Rule 120, GET served its
preliminary infringement contentions (“PICs”)
setting out the claims of the patent it contends each of
Nintendo's products infringes, and generally identifying
the aspects of Nintendo's systems that it believes give
rise to the infringement. See Dkt. #72-4. In
accordance with its May 20, 2019 discovery requests,
GET's PICs listed the Wii console, Wii Remote, Wii Remote
Plus, Wii U GamePad, Nunchuk, Joy-Con, and Nintendo Switch
Pro Controller as “accused products.”
Id. at 3. On June 13, 2019, before serving its
non-infringement and invalidity contentions under Local
Patent Rule 121 due on June 26, Nintendo filed this Motion to
Partially Strike GET's infringement contentions with
respect to the Wii U GamePad, Nunchuk, Joy-Con and Nintendo
Switch Pro Controller. Dkt. #71.
requests that the Court strike GET's PICs on the basis
that GET “sought to quintuple the size of the
case” by adding four products not specifically listed
in its original complaint or the status report. Dkt. #71 at
5. Specifically, GET included the Wii U GamePad, Nunchuk,
Joy-Con, and Nintendo Switch Pro Controller to the list of
“Accused Products, ” whereas the complaint and
status report only listed the Nintendo Wii Console System,
the Nintendo Wii Remote, and the Nintendo Wii Remote Plus.
Id. Nintendo explains that because it was not aware
of GET's intent to expand the scope of the case so
drastically, neither Nintendo nor the Court was aware of the
scope of the case going forward before the Court issued its
scheduling order on May 20, 2019. Id. at 6. However,
Nintendo was aware of the expanded scope by May 24, 2019, at
which point parties stipulated to moving up the deadlines set
by the Court for preliminary infringement contentions and
preliminary non-infringement and invalidity contentions.
See Dkt. #69 (Parties' Stipulation and Proposed
Order to Amend Court's Scheduling Order).
now moves to strike, without leave to amend, GET's PICs
with respect to the Wii U GamePad, Nunchuk, Joy-Con, and
Nintendo Switch Pro Controller on the basis that (a)
GET's delayed disclosure prejudiced Nintendo; and (b)
GET's infringement contentions violate disclosure
requirements under the Local Patent Rules, thereby magnifying
the prejudice to Nintendo. Dkt. #71 at 9-12.
Prejudice to Nintendo through GET's ...