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Princeton Digital Image Corp. v. Ubisoft Entertainment SA

United States District Court, D. Delaware

February 1, 2019

PRINCETON DIGITAL IMAGE CORP., Plaintiff,
v.
UBISOFT ENTERTAINMENT SA and UBISOFT, INC., Defendants.

          REPORT AND RECOMMENDATION

          CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE

         Presently 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.

         I. BACKGROUND

         A. Factual Background

         The 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 portions here.

         PDI 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.

         After 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")[1] and a petition filed by Ubisoft SA ("the Ubisoft SA IPR")).[2] (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 4)

         After 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)

         B. Procedural Background

         PDI 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. (D.I. 10)

         Briefing 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)

         II. LEGAL STANDARD

         The 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)

         III. ...


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