Apple Inc. v. WI-LAN Inc., et al

Filing 86

ORDER Requesting Supplemental Briefing. The Court requests supplemental briefing from the parties on whether Apple's claim for a declaratory judgment of unenforceability based on unclean hands is legally cognizable in the first instance. The parties may submit supplemental briefs on this issue, of no more than five (5) pages, on or before December 5, 2014. Signed by Judge Dana M. Sabraw on 11/26/2014.(All non-registered users served via U.S. Mail Service)(aef)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

SOUTHERN DISTRICT OF CALIFORNIA

10

APPLE INC.,

11
12
13
14
15

vs.
WI-LAN, INC.,

CASE NO. 14cv2235 DMS (BLM)
Plaintiff,

ORDER REQUESTING
SUPPLEMENTAL BRIEFING

Defendant.
Defendant’s motion to dismiss portions of Plaintiff’s Second Amended

16 Complaint is currently pending before the Court. After further review of the parties’
17 briefs and the legal authority cited therein, the Court requests supplemental briefing on
18 the following issue: It appears unclean hands is generally asserted as an affirmative
19 defense to a claim of patent infringement. That was the case in Reid-Ashman
20 Manufacturing, Inc. v. Swanson Semiconductor Service, L.L.C., No. C-06-4693 JCS,
21 2007 WL 1394427 (N.D. Cal. May 10, 2007), and Multimedia Patent Trust v. Apple
22 Inc., No. 10-CV-2618-H (KSC), 2012 WL 6863471 (S.D. Cal. Nov. 9, 2012). If a party
23 prevails on an unclean hands affirmative defense, the remedy appears to be dismissal
24 of the patent infringement claim or judgment in that defendant’s favor, not a finding
25 that the patent is unenforceable. In their briefing on the present motion, the parties rely
26 on Reid-Ashman and Multimedia Patent Trust, which set out different standards for this
27 affirmative defense, but they fail to cite any case law that supports Apple’s claim that
28 the Court may declare the Patents in Suit unenforceable based on unclean hands, and
-1-

14cv2235

1 more specifically, that the Court may declare the Patent in Suit unenforceable based on
2 the kind of conduct alleged in this case. Absent any such authority, Apple’s claim
3 would be legally invalid, and thus subject to dismissal on that basis. Therefore, the
4 Court requests supplemental briefing from the parties on whether Apple’s claim for a
5 declaratory judgment of unenforceability based on unclean hands is legally cognizable
6 in the first instance. The parties may submit supplemental briefs on this issue, of no
7 more than five (5) pages, on or before December 5, 2014.
8

IT IS SO ORDERED.

9 DATED: November 26, 2014
10
11
12

HON. DANA M. SABRAW
United States District Judge

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-2-

14cv2235