Case 1:04-cv-01436-LPS Document 354 Filed 07/28/09 Page 1 of 7 PageID #: 7117
`Case 1:O4—cv—O1436—LPS Document 354 Filed 07/28/09 Page 1 of 7 Page|D #: 7117
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ST. CLAIR INTELLECTUAL PROPERTY
`
`CONSULTANTS,
`
`INC.,
`
`Plaintiff,
`
`V.
`
`MATSUSHITA ELECTRONIC INDUSTRIAL
`
`CO., LTD., et al.,
`
`Defendants.
`
`: Civil Action No. 04-1436-
`JJF—LPS
`
`George H. Seitz, III, Esquire and Patricia Pyles McGonigle,
`Esquire, of SEITZ, VAN OGTROP & GREEN, P.A., Wilmington,
`Delaware.
`
`Attorneys for Plaintiff.
`
`Jack B. Blumenfeld, Esquire and Julia Heaney, Esquire, of
`MORRIS, NICHOLS, ARSHT & TUNNELL, Wilmington, Delaware.
`
`Attorneys for Defendants Nokia Corporation and Nokia,
`
`Inc.
`
`MEMORANDUM OPINION
`
`July 955, 2009
`Wilmington, Delaware
`
`
`Case 1:O4—cv—O1436—LPS Document 354 Filed 07/28/09 Page 1 of 7 Page|D #: 7117
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ST. CLAIR INTELLECTUAL PROPERTY
`
`CONSULTANTS,
`
`INC.,
`
`Plaintiff,
`
`V.
`
`MATSUSHITA ELECTRONIC INDUSTRIAL
`
`CO., LTD., et al.,
`
`Defendants.
`
`: Civil Action No. 04-1436-
`JJF—LPS
`
`George H. Seitz, III, Esquire and Patricia Pyles McGonigle,
`Esquire, of SEITZ, VAN OGTROP & GREEN, P.A., Wilmington,
`Delaware.
`
`Attorneys for Plaintiff.
`
`Jack B. Blumenfeld, Esquire and Julia Heaney, Esquire, of
`MORRIS, NICHOLS, ARSHT & TUNNELL, Wilmington, Delaware.
`
`Attorneys for Defendants Nokia Corporation and Nokia,
`
`Inc.
`
`MEMORANDUM OPINION
`
`July 955, 2009
`Wilmington, Delaware
`
`
`
`Case 1:04-cv-01436-LPS Document 354 Filed 07/28/09 Page 2 of 7 PageID #: 7118
`Case l:O4—cv—O1436—LPS Document 354 Filed 07/28/09 Page 2 of 7 Page|D #: 7118
`
`Farna
`
`Dis ri
`
`Judge.
`
`fiqlzfidfifivdz
`
`Pending before the Court are Objections Pursuant
`
`to Fed. R.
`
`Civ. P. 72(a)
`
`to Magistrate Judge Stark’s Memorandum Opinion
`
`Regarding Motion for Leave to File a Second Amended Complaint
`(D.I. 323) filed by Oefendants Nokia Corporation and Nokia,
`Inc.
`
`(collectively “Nokia").
`
`For the reasons discussed below,
`
`the
`
`Court will overrule these Objections.
`
`I .
`
`BACKGROUND
`
`On April 6, 2009, Plaintiff St. Clair Intellectual Property
`
`Consultants,
`
`Inc.
`
`(“St. Clair”) filed a Motion for Leave to File
`
`a Second Amended Complaint
`
`(D.I. 243)
`
`in order to,
`
`inter alia,
`
`add allegations of willful infringement against Nokia. Nokia
`
`timely filed an Opposition (D.I. 263)
`
`to St. Clair’s Motion.
`
`Magistrate Judge Stark considered the parties’ arguments, and on
`
`June 10, 2009, he issued a Memorandum Opinion (D.I. 305) and
`
`Order
`
`(D.I. 306) granting St. Clair’s Motion for Leave to File a
`
`Second Amended Complaint. Nokia objects to Judge Stark’s
`
`decision and seeks the Court's review.
`
`In its Opposition to St. Clair’s Motion, Nokia presented
`
`three arguments to Judge Stark in support of its position:
`
`(1)
`
`St. Clair’s proposed amendment would be futile since certain
`
`facts not in dispute preclude the possibility of Nokia’s willful
`
`infringement,
`
`(2) St. Clair unduly delayed in filing its Motion
`
`
`
`Case 1:04-cv-01436-LPS Document 354 Filed 07/28/09 Page 3 of 7 PageID #: 7119
`Case l:O4—cv—O1436—LPS Document 354 Filed 07/28/09 Page 3 of 7 Page|D #: 7119
`
`and/or filed it in bad faith, and (3) allowing the amendment
`
`would prejudice Nokia.
`
`(D I. 263 at 3-4.)
`
`With respect to Nokia’s first argument on futility, Judge
`
`Stark noted that it was “primarily grounded in the proposition
`
`that the granting of reexamination [of the patents—in—suit] by
`
`the PTO defeats a claim of willful infringement as a matter of
`
`law.”
`
`(D.I. 305 at 3.)
`
`He distinguished the circumstances of
`
`the present action from those in the case Nokia chiefly relied on
`
`for this proposition, Lucent Techs. V. Gateway, Inc., No. O7—CV—
`
`2000—H (CAB), 2007 U.S. Dist LEXIS 95934 (S.D. Cal. Oct. 30,
`
`2007).
`
`Judge Stark first pointed out that the decision in Lucent
`
`“was rendered in the context of summary judgment,” not
`
`in the
`
`present context of a motion for leave to amend.
`
`(D.I. 305 at 4.)
`
`Second, he observed that the court
`
`in Lucent “emphasized that
`
`reexamination was one factor, among a totality of the
`
`circumstances,
`
`to consider in examining whether a party can meet
`
`the requirements of Seagate.”
`
`(lgi)
`
`Judge Stark rejected the other grounds for Nokia’s futility
`
`argument, as well as Nokia’s bad faith argument. First, he noted
`
`that reexamination certificates were issued “for each of the
`
`patents—in—suit without amendment to any of the claims.”
`
`(lgg)
`
`Relying on Ultratech Int’l,
`
`Inc. V. Agua—Leisure Indus.,
`
`Inc. V.
`
`Swimways Corp., No. 3:05—cv—l34—J—25MCR (M.D. Fla. Mar. 3, 2009),
`
`Judge Stark concluded that the issuance of reexamination
`
`
`
`Case 1:04-cv-01436-LPS Document 354 Filed 07/28/09 Page 4 of 7 PageID #: 7120
`
`certificates under the circumstances did not preclude the
`
`possibility that Nokia’s use of St. Clair's patents could be
`
`reasonably considered objectively reckless, pending further
`
`Judge Stark concluded that although the Patent and Trademark
`
`Office (“PTO”) “arguably rendered a different claim construction
`
`during reexamination than that which was rendered by the Court
`
`, St. Clair has not waived its infringement arguments under
`
`the PTO's claim construction, and the Court is not bound by that
`
`construction."
`
`(ldj) Third, relying on District Court decision
`
`from the Third and Seventh Circuits, Judge Stark rejected the
`
`notion that St. Clair's failure to seek a preliminary injunction
`
`necessarily precludes a claim for willful infringement.
`
`(id; at
`
`5.) Given these facts,
`
`together with “the PTO's ultimate
`
`granting of reexamination certificates without amendment,
`
`
`
`
`
`
`
`
`
`
`Second,
`(ldg)
`relying on Federal Circuit precedent,
`discovery.
`
`previous jury verdicts in favor of St. Clair, and the licenses o
`
`the patents—in—suit
`
`taken by numerous parties," Judge Stark
`
`rejected Nokia’s futility and bad faith arguments.
`
`(;d;)
`
`Judge Stark rejected Nokia’s remaining arguments as well.
`
`He concluded that because St. Clair's Motion came within the time
`
`frame he set for amending the pleadings in the Scheduling Order,
`
`the Motion was not untimely.
`
`(id; at 3.)
`
`Judge Stark also
`
`concluded that Nokia would not suffer undue prejudice as a result
`
`of St. Clair's proposed amendment, “even if my ruling leads Nokia
`
`
`
`
`
`Case 1:04-cv-01436-LPS Document 354 Filed 07/28/09 Page 5 of 7 PageID #: 7121
`Case l:O4—cv—O1436—LPS Document 354 Filed 07/28/09 Page 5 of 7 Page|D #: 7121
`
`to conclude it must file a motion for summary judgment on
`
`futility grounds."
`
`(Id. at 5.)
`
`II. DECISION
`
`Pursuant to 28 U.S.C.
`
`§ 636(b)(l)(A) and Rule 72(a) of the
`
`Federal Rules of Civil Procedure, rulings made by the Magistrate
`
`Judge on referred matters are reviewed under the clearly
`
`erroneous or contrary to law standard of review. Applying this
`
`standard here,
`
`the Court finds no error in Judge Stark’s
`
`Memorandum Opinion and Order in response to St. Clair's Motion
`
`for Leave to File a Second Amended Complaint.
`
`Nokia relies heavily on Lucent Techs. v. Gateway,
`
`Inc.
`
`for
`
`its key argument that the PTO’s reexamination of the patents—in—
`
`suit, as well as the resulting claim constructions it issued that
`
`differ from this Court's claim constructions,
`
`foreclose the
`
`possibility of a finding that Nokia was objectively reckless
`
`under the standard articulated in In re Seagate Tech., LLC, 497
`
`F.3d 1360 (Fed. Cir. 2007). However, Lucent does not stand for
`
`this proposition, or at least, it does not elevate this
`
`proposition to the level of a per sg rule, as Nokia attempts to
`
`style it.
`
`In pertinent part, Lucent states:
`
`The Court does not assume that a reexamination order will
`
`always prevent a plaintiff from meeting their burden on
`summary judgment regarding willful infringement, but it does
`consider this as one factor among the totality of the
`circumstances.
`It does appear that a reexamination order
`may be taken as dispositive with respect to post—filing
`conduct.
`The Seagate court observed that
`‘[a] substantial
`question about invalidity or infringement is likely
`
`
`
`Case 1:04-cv-01436-LPS Document 354 Filed 07/28/09 Page 6 of 7 PageID #: 7122
`Case l:O4—cv—O1436—LPS Document 354 Filed 07/28/09 Page 6 of 7 Page|D #: 7122
`
`sufficient not only to avoid a preliminary injunction, but
`also a charge of willfulness based on post—filing conduct.’”
`
`Lucent Techs., 2007 U.S. Dist LEXIS 95934 at *l8—*l9 (emphasis
`
`added)
`
`(quoting In re Seagate, 497 F.3d at 1374). Both the
`
`Lucent court and the Seagate court clearly refrained from
`
`creating a per ge rule that a reexamination order precludes the
`
`possibility of proving willful infringement on summary judgment.
`
`Judge Stark correctly rejected Nokia’s reading of Lucent as
`
`support for its argument that a reexamination order must make
`
`futile any attempt to amend a complaint to include a count for
`
`willful infringement. As Judge Stark stated,
`
`this is so even
`
`where the PTO and a District Court do not agree on claim
`
`construction because “the Court is not bound by [the PTO’s]
`
`construction.”
`
`(D.I. 305 at 4
`
`(citing SRAM Corp. v. AD—II Eng’g,
`
`InC., 465 F.3d 1351, 1359 (Fed. Cir. 2006)).)
`
`The Court also finds no error in Judge Stark’s rejection of
`
`Nokia’s undue delay and prejudice arguments, given that, as Judge
`
`Stark noted, St. Clair’s motion was filed within the time frame
`
`set by the Scheduling Order: “[a]ll motions to amend or
`
`supplement the pleadings shall be filed on or before April 6,
`
`2009."
`
`(D.I. 166 at 5.)
`
`III. CONCLUSION
`
`For the foregoing reasons,
`
`the Court concludes that Nokia’s
`
`Objections Pursuant to Fed. R. Civ. P. 72(a)
`
`to Magistrate Judge
`
`
`
`Case 1:04-cv-01436-LPS Document 354 Filed 07/28/09 Page 7 of 7 PageID #: 7123
`Case l:O4—cv—O1436—LPS Document 354 Filed 07/28/09 Page 7 of 7 Page|D #: 7123
`
`Stark's Memorandum Opinion Regarding Motion for Leave to File a
`
`Second Amended Complaint should be overruled.
`
`An appropriate Order will be entered.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
