Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Genuine Enabling Technology LLC v. Nintendo Co. Ltd.

United States District Court, W.D. Washington, Seattle

August 12, 2019

GENUINE ENABLING TECHNOLOGY LLC., Plaintiff,
v.
NINTENDO CO., LTD. and NINTENDO OF AMERICA INC., Defendants.

          ORDER DENYING DEFENDANTS' MOTION TO PARTIALLY STRIKE PLAINTIFF'S INFRINGEMENT CONTENTIONS

          RICARDO S. MARTINEZ CHIEF UNITED STATES DISTRICT JUDGE.

         I. INTRODUCTION

         In this 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.

         For the reasons stated below, the Court DENIES Nintendo's Motion to Strike.

         II. BACKGROUND

         GET 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.

         This 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.

         In its 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 (emphasis added).

         On May 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.

         On May 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.

         III. DISCUSSION

         Nintendo 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).

         Nintendo 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.

         A. Prejudice to Nintendo through GET's ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.