United States District Court, D. Delaware
Wilmington this 30th day of June, 2017, having reviewed the
parties' letter briefs in connection with final judgment,
and the papers submitted therewith; IT IS ORDERED that, for
the reasons that follow, Cokebusters USA's declaratory
judgment of noninfringement of claim 40 of U.S. Patent No. 7,
543, 874 is hereby bifurcated and stayed pending appeal of
the court's summary judgment decisions to the United
States Court of Appeals for the Federal Circuit.
March 28, 2017, the court issued a memorandum opinion and
order on summary judgment. (D.I. 356; D.I. 357) The court
denied Cokebusters' motions for summary judgment of
invalidity and noninfringement of claim 40 of U.S. Patent No.
7, 542, 874. (D.I. 356 at 43, 47-48; D.I. 357at¶¶1,
6; D.I. 293; D.I. 290)
Invalidity of claim 40.
court stated in its memorandum opinion that it could not
grant summary judgment as to invalidity of claim 40, because
the relevant "testimony is not readily apparent from the
record." (D.I. 356 at 43) The court noted that
"[d]efendants have cited to page 132 [of the DeLorenzo
deposition], but the record submitted to the court is
incomplete and is missing pages 129-136." (D.I. 356 at
43 n.51) Cokebusters provided missing deposition testimony
and requested reconsideration, arguing that the missing
testimony resolved the question of anticipation with respect
to claim 40 and that "Quest's opposition to . . .
summary judgment of the invalidity of claim 40 [, therefore,
] is nullified. Summary judgment should be granted in favor
of Cokebusters on all claims including claim 40." (D.I.
359 at ¶ 7) Based upon the submission of the missing
deposition testimony, on April 7, 2017 the court granted
Cokebusters' motion. (D.I. 364)
March 29, 2017, the parties held a pretrial conference in
which they expressed a preference to not go to trial on the
remaining issues and to instead appeal. For example,
Quest's counsel stated:
Quest believes that it's the most efficient and economic
thing to do to somehow deal with claim 40 in a way that would
do away with the controversy and allow the matter to
go to appeal straight away so that we could carve
out the claim construction issues, if any, and then come back
down, more or less, to the damages phase or the accounting
We have a number of ideas about how to do that, and I'm
not sure how, if at all, the court would like to consider
those, but we're committed to being reasonable and not
going to trial in the interests of saving the parties and the
court time and money.
So, again, specifically, the issue that we are proposing to
do would be to --so, again, the issue is we'd like to
somehow take some action, Quest would like to take some
action with regard to claim 40, to do away with the
(D.I. 372 at 4:20-5:11 (emphasis added)) Cokebusters'
counsel expressed that he was "not averse to entering
into some kind of stipulation to the effect that 40 would
become invalid if we played out the chain and preserving
their right to appeal those arguments to save time and effort
for both parties. I think that does make sense."
(Id. at 7:5-10) Quest suggested a number of options,
including amending its November 2017 filing narrowing the
asserted claims to include claim 40. "Quest could merely
amend that paper to strip out claim 40 for the time being,
which would preserve all of Cokebusters' defenses and
remedies as to that claim should it be brought again"
after an appeal to the Federal Circuit. (Id. at
11:1-5) Based upon the parties representations, on May 15,
2017, the court bifurcated and stayed a number of remaining
claims "pending appeal of the court's summary
judgment decisions." (D.I. 368)
parties sought to resolve the remaining issues for appeal but
were unable to resolve their differences. On June 21, 2017,
Cokebusters submitted the parties' proposals for final
judgment. (D.I. 369, exs. A and B) Cokebusters' proposal
included final judgment "on Quest's claims for
infringement, and on Cokebusters USA's counterclaims for
declaratory judgment of noninfringement, of claims 30 and
40." (D.I. 369, ex. A at ¶ 1) According to
Cokebusters, "Quest disagrees that final judgment should
include that claim 40 is not infringed." (D.I. 369 at 2)
Quest submitted a separate letter arguing that Cokebusters
had requested "'judgment' on the interlocutory
order denying summary judgment of
noninfringement of claim 40." (D.I. 371 at 1 (emphasis
in original)) Quest contends, inter alia, that "the
admitted purpose of Cokebusters' request is to
artificially create an adverse 'judgment' to provide
grounds to cross-appeal." (D.I. 371 at 2) Moreover,
Quest has proposed a final judgment limited solely to
invalidity, which excludes noninfringement of claim 30. Quest
argues that the court cannot issue final judgment as to
noninfringement of claim 30. (Id.)
Noninfringement of claim 40.
limited motion for reconsideration, Cokebusters stated that
"the only issues currently set to be tried by the jury .
. . are the infringement and validity of claim 40."
(D.I. 360 at ¶ 2) The rest of the letter brief relates
to the invalidity of claim 40 and the missing deposition
testimony. (D.I. 360 at ¶¶ 3-7) Cokebusters did not
request reconsideration of the court's denial of summary
judgment of noninfringement of claim 40. Fed.R.Civ.P.