UltimatePointer v. Nintendo, 6:11cv496/571 (12/3/13)
Judge: Leonard Davis
Holding: Defendants’ Motion to Strike Plaintiff’s P.R. 3-1 Infringement Contentions & Motion to Compel a Complete Response to Individual Interrogatory No. 1 GRANTED IN PART
After the Court construed the claims in this case, UltimatePointer filed a third set of amended infringement contentions. Defendants subsequently filed a motion to strike three of those contentions. Additionally, during the course of discovery, Nintendo served Interrogatory No. 1 on UltimatePointer, who objected to and refused to fully answer that interrogatory, triggering a motion to compel.
Defendants’ Motion to Strike Plaintiff’s P.R. 3-1 Infringement Contentions
Purpose is disclosure, must be specific, can’t be vague, court can permit amendment, yada, yada. Standards are all there. After which Judge Davis decided that as to the first contention addressed the contention wasn’t sufficient, confirmed that the second complaint was moot, and confirmed that plaintiff would provide code to address the third complaint, all as addressed at the recent hearing.
Motion to Compel a Complete Response to Individual Interrogatory No. 1
This rog asked the plaintiff to provide the dates it first learned of and acquired each accused product. After setting forth the standards on work product and relevance, Judge Davis accepted a compromise position where the plaintiff answered Interrogatory No. 1 without specifying which accused product each set of dates is associated with, finding that it “conceals the relative significance of particular products and the order in which UltimatePointer analyzed particular infringement issues.” If presented in this manner, the Court concluded, these dates are not protected attorney work product.
But was it relevant? The plaintiff argued that the dates were not yet relevant to Nintendo’s claim that this was an exceptional case under 35 U.S.C. § 285. According to the plaintiff, discovery of its pre-suit investigation was premature until a Rule 11 motion is filed, citing TQP Development, LLC v. 1-800-Flowers.com, Inc., No. 2:11-cv-248, Docket No. 290 (E.D. Tex. 2013). But Nintendo had already raised a § 285 claim and needed to take discovery for this claim, Judge Davis noted. See TQP, No. 2:11-cv-248, Docket No. 290 (A challenge justifying discovery of a plaintiff’s pre-suit investigation “would occur if a Rule 11 motion is filed and heard, a claim is made under § 285, or the like.”) (emphasis added by Judge Davis). Therefore he held that the dates UltimatePointer first learned of and acquired each accused product were currently relevant to Nintendo’s claim that this is an exceptional case under 35 U.S.C. § 285.