Princeton Digital Image Corporation v. Office Depot Inc.

Filing 236

MEMORANDUM ORDER re (222 in 1:13-cv-00331-LPS, 220 in 1:13-cv-00330-LPS, 220 in 1:13-cv-00326-LPS, 223 in 1:13-cv-00239-LPS, 221 in 1:13-cv-00404-LPS, 222 in 1:13-cv-00289-LPS, 223 in 1:13-cv-00287-LPS, 237 in 1:13-cv-00408-LPS, 223 in 1:13-cv-00288-LPS) MOTION for Reargument filed by Princeton Digital Image Corporation is GRANTED in part and DENIED in part. Signed by Judge Leonard P. Stark on 8/9/17. Associated Cases: 1:13-cv-00239-LPS et al. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,
v.

C.A. No. 13-239-LPS

OFFICE DEPOT INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,
C.A. No. 13-287-LPS

v.
J.C. PENNEY COMPANY, INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

C.A. No. 13-288-LPS

v.
QVC INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

C.A. No. 13-289-LPS

V ..

SEARS HOLDINGS COMPANY,
Defendant.

PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,
C.A. No. 13-326-LPS

v.
LIMITED BRANDS, INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

C.A. No. 13-330-LPS

v.
GAP INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

C.A. No. 13-331-LPS

v.
WILLIAMS-SONOMA INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

C.A. No. 13-404-LPS

v.
COSTCO WHOLESALE CORP.,
Defendant.

PRINCETON DIGITAL IMAGE
CORPORATION,
· Plaintiff,

v.

C.A. No. 13-408-LPS

NORDSTROM.COM LLC,
NORDSTROM.COM INC., and NORDSTROM
INC.
Defendants.
MEMORANDUM ORDER

At Wilmington this 9th day of August, 2017, having reviewed the parties' briefs on
PDIC's motion for reargument (D.I. 223) ahd Adobe's response (D.I. 231), 1
IT IS HEREBY ORDERED that PDIC's motion (D.I. 223) is GRANTED IN PART and
DENIED IN PART.
1.

The Court is not persuaded that there is a "need to correct a clear error of law or

fact or to prevent manifest injustice" with respect PDIC's waiver of privilege, Max's Seafood
Cafe by Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999), as the Court finds that the

documents discussed by PDIC are privileged communications or work product disclosed by
PDIC to support its claim that it was acting in good faith in bringing the infringement suits. Nor ·
does the Court's conclusion - in a separate dispute between the parties - that Adobe did not
waive privilege persuade the Court that it made a legal or factual error here. Hence, the motion is
DENIED except to the limited extent stated below.

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District ofDelaware Local Rule 7.l.5(a) does not allow for reply briefs in support of
reargument motions. Accordingly, PDIC's reply brief (D.I. 232) is STRICKEN. However, even
if considered, the reply brief would not alter the outcome announced here.

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2.

However, given the parties' disputes about the scope of the Court's previous

order, the approaching trial date, and the fact that infringement actions involving the '056 patent
remain pending, the motion is GRANTED IN PART in that the Court HEREBY CLARIFIES the
relief granted, as follows: (i) PDIC shall supplement its document production and interrogatory
responses for Interrogatory No. 8 and Request for Production Nos. 2-5, 8-9, 12-15, 17-23, 25-27,
and 48 to the extent that PDIC withheld any discovery concerning these topics on privilege
grounds, by producing documents identified as PDIC_Privilegel through PDIC_Privilegel 8 on
PDIC's privilege log (D.I. 125 Ex. 5) and supplementing its interrogatory response, and (ii) this
Order is limited to discovery with respect to the present cases (i.e., C.A. No. 13-239-LPS; C.A.
No. 13-287-LPS; C.A. No. 13-288-LPS; C.A. No. 13-289-LPS; C.A. No. 13-326-LPS; C.A. No.
13-330-LPS; C.A. No. 13-331-LPS; C.A. No. 13-404-LPS; C.A. No. 13-408-LPS).
3.

Notwithstanding the Court's holding above, if either party continues to wish the

Court to consider granting the alternative relief sought by Adobe, either party may make such a
request at the pretrial conference tomorrow.
4.

IT IS FURTHER ORDERED that, contrary to the position stated by Adobe in the

August 3rd joint status report (D.I. 222 at 7), the Court's August 1 memorandum opinion did
resolve the issue that Adobe must satisfy the bad-faith or obvious breach standard to recover
attorney fees as damages. (See D.I. 220 at 12-13)

HON. L ONARD P. STARK
UNITED STATES DISTRICT JUDGE

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