United States District Court, D. Delaware
REPORT AND RECOMMENDATION
CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE
before the Court in this patent infringement action is
Plaintiff Princeton Digital Image Corp.'s
("Plaintiff or "PDI") motion for partial
summary judgment that Defendant Ubisoft Inc.
("Defendant" or "Ubisoft") is estopped by
35 U.S.C. § 315(e)(2) ("Motion"). (D.I. 252)
For the reasons that follow, the Court recommends that
PDI's Motion be DENIED.
Court has previously set out much of the relevant factual
background in prior opinions in this case and/or a related
case, Civil Action No. 12-1461-LPS-CJB ("the 1461
Action," and collectively with the instant action,
"the District Court litigations" or the
"related cases"). The Court assumes familiarity
with that background, and will simply summarize the relevant
filed the 1461 Action against Defendants Konami Digital
Entertainment Inc. ("Konami"), Harmonix Music
Systems, Inc. ("Harmonix") and Electronic Arts,
Inc. ("EA") in November 2012, and it filed the
instant action against Ubisoft and then-Defendant Ubisoft
Entertainment SA ("Ubisoft SA") in February 2013.
(Civil Action No. 12-1461-LPS-CJB, D.I. 188 at 2) In both
cases, PDI alleged infringement of the sole patent-in-suit,
United States Patent No. 5, 513, 129 (the '"129
patent"), which has 23 claims. (D.I. 1, ex. 1 at cols.
29:1-30:65) The 1461 Action has since been closed, and in the
instant case, PDI now asserts only claims 14, 19 and 20 of
the '129 patent against only Ubisoft.
both of the related cases were filed, certain of the
Defendants in the two related cases filed a total of three
different petitions for inter partes review
("IPR") of certain claims of the '129 patent.
(Civil Action No. 12-1461-LPS-CJB, D.I. 188 at 2-4) The
United States Patent and Trademark Office's Patent Trial
and Appeal Board ("PTAB") instituted review on
certain claims of the '129 patent as to two of the three
petitions (i.e., as to a petition filed by Harmonix
("the Harmonix IPR") and a petition filed by Ubisoft
SA ("the Ubisoft SA IPR")). (Id.) As to the
third petition, filed by Harmonix and Konami, review was
denied on procedural grounds. (Id. at 3-4) In none
of those proceedings did the PTAB institute review of claims
14, 19 or 20. (Id. at 2-4) The Harmonix IPR and the
Ubisoft SA IPR eventually resolved with the PTAB issuing
Final Written Decisions; the net effect of those decisions
was that every claim of the patent-in-suit was found invalid
with the exception of claims 14, 19 and 20. (Id. at
the IPR proceedings concluded, this litigation and the 1461
Action resumed. In both, PDI contended that the respective
Defendants infringed claims 14, 19 and 20. (See,
e.g., D.I. 92 at 1) When Harmonix and EA thereafter
filed counterclaims for a declaratory judgment of, inter
alia, invalidity as to the patent-in-suit in the 1461
Action, PDI moved to dismiss those counterclaims on the
grounds of estoppel pursuant to 35 U.S.C. § 315(e)(2)
("Section 315(e)(2)"). (Civil Action No.
12-1461-LPS-CJB, D.I. 101; see also Civil Action No.
12-1461-LPS-CJB, D.I. 102) The Court ultimately recommended
denial of PDFs motion to dismiss in a Report and
Recommendation issued on January 19, 2017. (Civil Action No.
12-1461-LPS-CJB, D.I. 188) The Court ruled that, in light of
the text of Section 315(e)(2) and relevant Federal Circuit
caselaw, because the PTAB had never instituted review of
claims 14, 19 or 20 (and thus never issued a Final Written
Decision as to those claims), Harmonix and EA could not be
estopped from asserting that those claims were invalid in the
1461 Action on any ground. (Id. at 8-10) On March
30, 2017, the District Court affirmed the Court's
decision as to the motion to dismiss. (Civil Action No.
12-1461-LPS-CJB, D.I. 191 at 2-5; see also Civil
Action No. 12-1461-LPS-CJB, D.I. 206)
filed the instant case on February 27, 2013. (D.I. 1) On July
17, 2013, Chief Judge Leonard P. Stark referred this case to
the Court to hear and resolve all pre-trial matters, up to
and including the resolution of case-dispositive motions.
on the instant Motion was completed on October 26, 2018.
(D.I. 315) A 5-day trial is set to begin on April 8, 2019.
(D.I. 141; see also D.I. 15 at 11)
Court hereby incorporates by reference its discussion of the
legal standard for resolving summary judgment motions like
this one, which is found in the Court's November 7, 2018
Report and Recommendation. (D.I. 337 at 2)