Sonos Inc. v. D&M Holdings Inc. et al

Filing 143

REPORT AND RECOMMENDATIONS re 111 MOTION to Strike Affirmative Defenses under Federal Rule of Civil Procedure 12(f) filed by Sonos Inc. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consist s solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 8/29/2016. Signed by Judge Mary Pat Thynge on 8/10/16. (cak)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SONOS, INC.,
Plaintiff,
v.
D&M HOLDINGS INC.
d/b/a D+M GROUP,
D&M HOLDINGS U.S. INC.,
and DENON ELECTRONICS
(USA), LLC,
Defendants.

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C.A. No. 14-1330-RGA-MPT

REPORT and RECOMMENDATION
I.

INTRODUCTION
On October 21, 2014, Sonos, Inc. (“Sonos”) filed its original complaint for patent

infringement against defendants, D&M Holdings Inc. d/b/a The D+M Group (“D&M
Japan”), D&M Holdings U.S. Inc. (“D&M U.S.”), and Denon Electronics (USA), LLC
(“Denon U.S.”) (collectively, “D&M”).1 Sonos then filed a first amended complaint on
December 17, 2014 and a second amended complaint on March 9, 2015.2
On April 30, 2015, D&M filed its first answer in response to Sonos’s second
amended complaint.3 On November 30, 2015, D&M moved for leave to amend its
answer to Sonos’s second amended complaint to add counterclaims accusing Sonos of
infringing upon one D&M Japanese patent and eight D&M U.S. patents.4 While D&M’s
1

D.I. 1.
D.I. 6; D.I. 31.
3
D.I. 48.
4
D.I. 81.
2

motion for leave was pending, Sonos filed a motion for leave on January 29, 2016 to file
a third amended complaint.5
On March 7, 2016, the court issued an Order that resolved both parties’ pending
motions.6 In that Order, the court granted D&M’s motion for leave to amend its answer
to Sonos’s second amended complaint, and severed D&M’s infringement counterclaims
into a new case (C.A. No. 16-141-RGA). Sonos’s motion for leave to file its third
amended complaint was also granted.
On March 28, 2016, D&M filed its answer to Sonos’s third amended complaint,
which includes eleven affirmative defenses.7 Currently before the court is Sonos’s
motion to strike six of D&M’s affirmative defenses, pursuant to FED. R. CIV. P. 12(f), due
to their alleged facial insufficiency, lack of factual support, and bare bones conclusory
nature.8 The affirmative defenses which Sonos moves to strike are failure to state a
claim (First); limitations on damages and costs (Fourth); unenforceability – estoppel,
acquiescence, and waiver (Fifth); patent exhaustion, patent misuse, and first sale
doctrine (Sixth); personal jurisdiction (Ninth); and prosecution laches (Tenth).9
Specifically, Sonos maintains that these affirmative defenses are insufficient on their
face and should be struck to “clean up the proceedings, streamline litigation, and avoid
unnecessary forays into immaterial matters.”10
5

D.I. 93; D.I. 94.
D.I. 100.
7
D.I. 106.
8
D.I. 112 at 4.
9
D.I. 112 at 2. D&M has since withdrawn its claim of lack of personal jurisdiction.
As a result, this Report & Recommendation will not address the ninth affirmative
defense.
10
D.I. 112 at 2.
6

2

D&M opposes Sonos’s motion, but requests leave to amend its answer under
FED. R. CIV. P. 15(a)(2), should the court strike any of its affirmative defenses.11 Sonos
does not object to D&M’s request to address any possible pleading deficiencies, but
reserves the right to challenge in the future D&M’s amended defenses on similar
grounds.12
II.

BACKGROUND
Sonos, Inc. is a Delaware corporation with its principal place of business in

Santa Barbara, California,13 and represents itself to be an “innovator and industry leader
in the field of wireless audio technology.”14 Sonos has been manufacturing, distributing,
and selling wireless home audio products for roughly ten years and is acknowledged by
multiple media sources for its innovations in this area.15 This matter focuses on Sonos’s
“PLAY:5" speakers, “PLAY:3" speakers, “PLAY:1" speakers, and the “CONNECT” preamplifier home audio system, which are controlled by a Sonos programmed application
and allegedly covered by the patents-at-issue.16
D&M Holdings Inc. d/b/a The D+M Group is a Japanese corporation with its
principal place of business in Kanagawa, Japan.17 It offers a similar line of wireless
home audio equipment, specifically the “HEOS 7" speaker, “HEOS 3" speaker, “HEOS
1" speaker, “HEOS LINK” pre-amplifier, “HEOS AMP” amplifier, “HEOS DRIVE” multi-

11

D.I. 119 at 14.
D.I. 124 at 10.
13
D.I. 102 at 1.
14
Id. at 3.
15
Id.
16
Id.
17
Id. at 1.
12

3

room amplifier, and the “HEOS HomeCinema” television sound system, all of which are
controlled by a D&M programmed application.18 D&M Holdings U.S. Inc. is a Delaware
corporation with its principal place of business in Mahwah, New Jersey.19 Denon
Electronics (USA), LLC is a wholly-owned subsidiary of D&M Holdings U.S. Inc. and has
its principal place of business in Mahwah, New Jersey.20
Sonos alleges that D&M’s marketing of the HEOS system directly competes with
Sonos’s wireless audio system by copying Sonos’s system, and infringing on its
patents.21 Sonos also contends D&M markets its products using substantially similar
naming conventions as used by Sonos to market its line of home audio equipment.22
III.

GOVERNING LAW
FED. R. CIV. P. 12(f) states in relevant part that “the court may strike from a

pleading an insufficient defense or any redundant, immaterial, impertinent, or
scandalous matter.”23 “Motions to strike serve to clean up the pleadings, streamline
litigation, and avoid unnecessary forays into immaterial matters.”24 An immaterial matter
is “that which has no essential important relationship to the claim for relief or the
defenses being pleaded,”25 while an impertinent matter “consists of statements that do

18

D.I. 102 at 4.
Id. at 2.
20
Id.
21
Id. at
22
D.I. 102 at 5.
23
FED. R. CIV. P. 12(f).
24
Sun Microsystems, Inc. v. Versata Enterprises, Inc., 630 F. Supp. 2d 395, 402
(D. Del. 2009).
25
Delaware Health Care, Inc. v. MCD Holding Co., 893 F. Supp. 1279, 1292 (D.
Del. 1995).
19

4

not pertain, and are not necessary, to the issues in question.”26 “Motions to strike are
generally disfavored and ordinarily denied unless the allegations have no possible
relation to the controversy and may cause prejudice to one of the parties.”27 Motions to
strike under Rule 12(f) “should not be granted unless the presence of the surplusage
will prejudice the adverse party.”28 When deciding a motion to strike, “the court must
construe all facts in favor of the nonmoving party and deny the motion if the defense is
sufficient under law.”29 A court “should not strike a defense unless insufficiency is
clearly apparent.”30 However, a “[c]ourt is not required to accept affirmative defenses
that are mere “bare-bones conclusory allegations,” and may strike such inadequately
pleaded defenses.”31 “‘A motion to strike will not be granted where the sufficiency of the
defense depends on disputed issues of facts or where it is used to determine disputed
and substantial questions of law.’”32
An examination of FED. R. CIV. P. 8 is useful to determine the requirements of
pleading affirmative defenses. An affirmative defense is “a pleading subject to
Rule 8(a), and therefore must include a short and plain statement of the defense.”33 A
26

Id.
Sun Microsystems, Inc., 630 F. Supp. 2d at 402.
28
Symbol Techs., Inc., 609 F. Supp. 2d 353, 359 (D. Del. 2009).
29
Procter & Gamble Co. v. Nabisco Brands, Inc., 697 F. Supp. 1361, 1362 (D.
Del. 1988).
30
Fesnak & Assocs., LLP v. U.S. Bank Nat. Ass’n, 722 F. Supp. 2d 496, 502(D.
Del. 2010).
31
Sun Microsystems, Inc., 630 F. Supp. 2d at 408.
32
Gross v. Weinstein, Weinburg & Fox, LLC, 123 F. Supp. 3d 575, 580 (D. Del.
2015)(quoting Cadence Pharm., Inc. v. Paddock Labs, Inc., 2012 WL 4565013, at *1 (D.
Del. Oct. 1, 2012)).
33
See, e.g., Do It Best Corp. v. Heinen Hardware, LLC, No. 13-69, 2013 WL
3421924, at *3 (N.D. Ind. July 8, 2013). See also 8(b) which requires when “responding
to a pleading, a party must state in short and plain terms its defenses to each claim
27

5

defense may be deemed meritless because it is simply a conclusory allegation which
fails to provide an appropriate statement of facts or to allege the necessary elements of
the claims.34 “The purpose of requiring the defendant to plead available affirmative
defenses in his answer is to avoid surprise and undue prejudice by providing the plaintiff
with notice and the opportunity to demonstrate why the affirmative defenses should not
succeed.”35 “In responding to a pleading, a party must affirmatively state any avoidance
or affirmative defense . . . .”36
IV.

DISCUSSION
A.

Application of LR 7.1.1/Timeliness of Sonos’s Objections

Before considering Sonos’s motion to strike, the issues regarding LR 7.1.1, the
statement required to be filed with nondispositive motions, and dispositive motions need
to be addressed. D&M relies on LR 72.1 which is directed to the authority and duties of
Magistrate Judges. It provides that a “Magistrate Judge is authorized to perform all
judicial duties assigned by the Court . . . which include, but are not limited to, the
following described civil duties . . . .” D&M latches onto to LR 72.1(a)(3) as presumptive
definition of dispositive motions, despite case law to the contrary in this jurisdiction
before and after the issuance our Local Rules, and conflates that with 7.1.1. A motion
to strike under Rule 12(f) is dispositive since it dismisses or strikes from a pleading the

asserted.”
34
Heller Fin., Inc. v. Midwhey Powder Co., Inc., 883 F.2d 1286, 1294 (7th Cir.
1989).
35
In re Sterten, 546 F.3d 278, 285(3d. Cir. 2008).
36
FED. R. CIV. P. 8(c)(1).
6

challenged defense.37 Therefore, contrary to D&M’s argument, a motion to strike is
dispositive, and LR 7.1.1, which concerns nondispositive motions, is not applicable.
Regarding whether Sonos’s objections are untimely, D&M represents the
challenged defenses were initially raised on April 30,2015 in response to the second
amended complaint.38 Between then and the filing of the third amended complaint,
Sonos failed to challenge any affirmative defense.39 Sonos also never objected to these
defenses in response to D&M’s motion for leave to file an amended answer and
counterclaims.40 D&M further notes that no interrogatory was propounded by Sonos on
the affirmative defenses until after the filing of this motion to strike.41 D&M maintains
since no timely objections were filed, they, rather than Sonos, are prejudiced since the
deadline to amend pleadings has passed.42
Sonos counters that its objections are timely relying on Fed. R. Civ. P. 12(f)
which allows a motion to strike “within 21 days after being served with the pleading.”
Since D&M’s answer was filed on March 28, 2016 and the present motion to strike was

37

See StairMaster Sports/Med. Products, Inc. v. Groupe Procycle, Inc., 182
F.R.D.117, 120 (D. Del. 1998) (confirming that a motion to strike affirmative defenses is
issue dispositive, and regarding plaintiff’s motion to strike stated “ . . . the Court is hard
pressed to devise a more issue dispositive motion . . . .”). See also, Chase Bank USA
N.A. v. Hess, C.A. No. 08-121-LPS, 2013 WL 5314706, at *1 (D. Del. Sept. 20, 2013)
(noting that a motion to strike defendant’s answer presents a case dispositive issue);
United States v. Parcel of Land in Town of Middletown, New Castle Cty., 32 F. Supp.
718, 721 (D. Del. 1940) (commenting that a motion to strike is “equivalent to a motion to
dismiss.”).
38
D.I. 119 at 4. D&M claims the only affirmative defense not previously asserted
was prosecution laches.
39
Id.
40
Id.
41
Id.
42
Id.
7

filed on April 21, 2016, its motion is timely.43 It points out that D&M’s most recent
answer included the two new defenses of prosecution laches and prosecution history
estoppel.44 Sonos further notes that discovery is in its early stages.45
The effect of the allowance by the court of the motion to amend for the third
amended complaint means that the complaint is the operative document on which the
Sonos’s action is based. It raises infringement claims for seven additional patents.
Although certain of D&M’s defenses were raised in prior answers, these defenses and
their two new defenses now relate to these additional patents and the facts related
thereto. D&M’s concern to challenge Sonos’s third amended complaint is addressed by
their request for leave to amend their pleadings which is granted.
Turning to the motion to dismiss, Sonos asserts that D&M’s affirmative defenses
are insufficiently pled and should be struck,46 because they are conclusory and fail to
provide sufficient notice of the bases for these defenses, thereby subjecting Sonos to
surprise and undue prejudice.47 Sonos further contends that D&M has no factual basis
for its 35 U.S.C. § 288 defense.48
B.

Motion to Strike Affirmative Defenses
i.

Failure to State a Claim

43

D.I. 124 at 2.
Id.
45
Id. at 3.
46
D.I. 112 at 2.
47
Id. The prejudice alleged includes modification by D&M of its defense theories
without having to request leave of the court or provide timely notice; obtaining the
details regarding the nature and bases of the defenses via discovery; and potentially
subjecting Sonos to unnecessary discovery and/or motion practice of non-viable
defenses. See D.I. 124 at 4.
48
Id.
44

8

Sonos moves to strike D&M’s first affirmative defense, failure to state a claim
upon which relief may be granted, because D&M has provided “no notice whatsoever of
the nature or basis for [this] defense.”49 D&M counters that FED. R. CIV. P. 12(h)(2)
allows this defense to be raised in any pleading, by later motion, or at trial.50 To survive
a Rule 12(f) motion to strike, the affirmative defense must be pled in accordance with
FED. R. CIV. P. 8(c).51 D&M has met Rule 8(c) by affirmatively stating this defense in its
answer in response to Sonos’s third amended complaint.52 Sonos has not
demonstrated any prejudice.53 Therefore, Sonos’s motion to strike D&M’s first
affirmative defense under FED. R. CIV. P. 12(f) is denied.
ii.

35 U.S.C. § 288

Sonos avers that D&M has not pled any factual basis for their 35 U.S.C. § 288
affirmative defense, which should be struck pursuant to Rule 12(f).54 Specifically, Sonos
emphasizes that none of the “asserted patents has ever been found invalid.”55 Sonos
concludes that, consistent with the language of § 288, there is “no possible factual basis
for D&M’s § 288 defense,”56 and the mere possibility of one of the patents being
determined invalid is purely hypothetical, without any factual support.57
35 U.S.C. § 288 provides:
49

D.I. 124 at 9.
D.I. 119 at 12; see also FED. R. CIV. P. 12(h)(2).
51
FED. R. CIV. P. 8(c).
52
D.I. 106 at 16.
53
D.I. 112 at 9-10.
54
Id. at 10.
55
D.I. 124 at 9. Sonos does not challenge D&M’s claim that Sonos’s recovery is
limited by 35 U.S.C. §§ 286 and 287.
56
D.I. 124 at 9.
57
Id.
50

9

Whenever a claim of a patent is invalid, an action may be maintained for
the infringement of a claim of the patent which may be valid. The patentee
shall recover no costs unless a disclaimer of the invalid claim has been
entered at the Patent and Trademark Office before the commencement of
the suit.58
D&M counters that “[a] motion to strike is not the appropriate vehicle to resolve
this disputed question of law.”59 However, D&M ignores the plain language of the
statute and has not shown that any asserted Sonos patent has been found invalid
before the commencement of the present action. Rather, D&M surmises that one or
more of Sonos’s patents will be found invalid. Lastly, D&M argues that the cases relied
on by Sonos are non-precedential and mere dicta.60 This court held in Cordance Corp.
v. Amazon.com, Inc., that § 288 precludes recovering costs where a claim is found
invalid before commencement of the action.61 Under 35 U.S.C. § 282, an issued patent
is presumed valid.62 Since no determination has occurred regarding validity of any
asserted claim and D&M’s answer merely alleges the possibility of invalidity, D&M’s
Fourth affirmative defense is struck.
iii.

Equitable Defenses

Sonos submits that its motion to strike D&M’s Fifth affirmative defense,
Unenforceability - Estoppel; Acquiescence; Waiver; and Unclean Hands, should be
granted because this defense is insufficiently pled and does not meet FED. R. CIV. P.

58

35 U.S.C. § 288 (emphasis added).
D.I. 119 at 13 (quoting Cadence Pharm., Inc. v. Paddock Labs., Inc., C.A. No.
11-733-LPS, 2012 WL 4565013, at *3 (D. Del. Oct. 1, 2012)).
60
D.I. 119 at 13.
61
Cordance Corp. v. Amazon.com, Inc., 631 F. Supp 2d 484, 503 (D. Del. 2009).
(emphasis added).
62
35 U.S.C. § 282.
59

10

9(a) pleading standards of fair notice and particularity for equitable defenses.63 D&M
asserts that numerous courts have ruled these affirmative defenses, similarly pled, were
sufficient to withstand a motion to strike.64 D&M further argues that “[Sonos] is on fair
notice of the nature of these defenses” and “[t]he discovery process, and not endless
pleading, is the appropriate forum for [Sonos] to seek additional information concerning
these defenses.”65
D&M has pled insufficient facts in support of their estoppel defense. Estoppel, an
equitable defense, requires the showing of three elements:
(1) The patentee, through misleading conduct, leads the alleged infringer
to reasonably infer that the patentee does not intend to enforce its patent
against the alleged infringer . . .
(2) The alleged infringer relies on that conduct.
(3) Due to its reliance, the alleged infringer will be materially prejudiced if
the patentee is allowed to proceed with its claim.66
An element of estoppel is fraud or misrepresentation, which requires the defense
to be pled with particularity under FED. R. CIV. P. 9(b).67 D&M has not pled any of the
circumstances giving rise to the alleged wrongful conduct with particularity.68 Here,
D&M alleges only that “Sonos is barred in part or whole by the doctrine of equitable
estoppel . . . .”69 Considering the answer and this affirmative defense in their entirety,

63

D.I. 112 at 5-6.
D.I. 119 at 7.
65
Id.
66
Phillips Electronics North America Corp. v. Contec Corp., 312 F. Supp. 2d 639,
641 (D. Del. 2004) (citing A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960
F.2d 1020, 1041 (Fed. Cir.1992)).
67
FED. R. CIV. P. 9(b).
68
See D.I. 106 at 17; D.I. 119 at 11-13.
69
D.I. 106 at 17.
64

11

D&M’s conclusory allegation provides no basis for any misleading conduct.70 This
defense, as presently pled, should be struck.71
D&M has pled insufficient facts in support of its unclean hands defense. Unclean
hands is an equitable defense requiring the showing of five elements:
(1) the party seeking affirmative relief (2) is guilty of conduct involving
fraud, deceit, unconscionability, or bad faith (3) directly related to matter in
issue (4) that injures other party (5) and affects balance of equities
between litigants.72
Because an element of unclean hands is based in fraud, the defense must be
pled with particularity under FED. R. CIV. P. 9(b).73 Unlike Sun Microsystems, Inc., D&M
has not pled any facts to suggest misconduct by Sonos.74 Therefore, Sonos’s motion to
strike is granted.
Similarly, D&M has not pled adequate information tending to show the elements
of the equitable defense of waiver: (1) an existing right; (2) knowledge of the right; (3)
and an actual intention to relinquish the right.75 No allegations suggest Sonos’s actual
intent to relinquish its patent rights.76 Sonos’s motion to strike should be granted.
Finally, with respect to its acquiescence defense, D&M maintains it applies “in
circumstances where a patentee asserts claim scope or validity during litigation over

70

See Sun Microsystems, Inc. v. Versata Enterprises, Inc., 630 F. Supp. 2d 395,
409 (D. Del. 2009)
71
Unlike the defendant in Symbol Technologies, Inc. v. Aruba Networks, Inc.,
609 F. Supp 2d 353, 356 (D. Del. 2009), D&M has alleged no bases for equitable
estoppel.
72
Id. at 410 (citing Castle v. Cohen, 676 F. Supp 620, 627 (E.D. Pa. 1987)).
73
FED. R. CIV. P. 9(b).
74
Compare D.I. 106 at 17 with Sun Microsystems, Inc., 630 F. Supp. 2d at 410.
75
Sun Microsystems, Inc., 630 F. Supp. 2d at 409.
76
D.I. 106 at 7; see Sun Microsystems, Inc., 630 F. Supp. 2d at 410.
12

matters which were acquiesced during the prosecution of the patents.”77 Sonos rebuts
that this defense is no different from a prosecution history estoppel defense, which D&M
has pled separately as its eleventh affirmative defense.78 A party is deemed to have
acquiesced when it:
has full knowledge of his rights and the material facts and (1) remains
inactive for a considerable time; or (2) freely does what amounts to
recognition of the complained of act; or (3) acts in a manner inconsistent
with the subsequent repudiation, which leads the other party to believe the
act has been approved.79
For this defense to apply, the narrow question is whether Sonos’s conduct
amounted to recognition and acceptance.80 D&M has not pled sufficient facts to
demonstrate either. As a result, D&M’s acquiescence defense should be struck.
iv.

Unenforceability Defenses

Sonos also moves to strike D&M’s sixth affirmative defense, patent exhaustion,
patent misuse, and first sale doctrine, because it is conclusory, provides no notice of the
nature or the basis of these defenses and subjects Sonos to the risk of surprise and
undue prejudice.81 Sonos further alleges that D&M fails to adequately provide notice as
to the alleged actions that form the basis of its patent misuse defense.82 In its
answering brief, D&M maintains that Sonos has engaged in per se patent misuse by
tying “the narrow patented features of its products to the unpatented staple features . . .
in an attempt to monopolize an entire section of the market using its collection of
77

D.I. 119 at 8.
D.I. 124 at 6.
79
Klassen v. Allegro Development Corp., 106 A3d. 1035, 1047 (Del. 2014).
80
Id.
81
D.I. 112 at 7.
82
D.I. 112 at 8.
78

13

patents on narrow technologies.”83
Patent misuse is:
an affirmative defense to an accusation of patent infringement, . . . which
requires that the alleged infringer show that the patentee has
impermissibly broadened the physical or temporal scope of the patent
grant with anticompetitive effect.84
Since a successful claim of patent misuse requires the infringer to show that the
patentee has impermissibly broadened the scope of the patent, resulting in an
anticompetitive effect, D&M is required to assert a basis showing an anticompetitive
effect in its pleadings; delegating this in its answering brief is not sufficient.85 Therefore,
Sonos’s motion to strike should be granted.
D&M’s defense of patent exhaustion and first sale doctrine survive the motion to
strike. Patent exhaustion “provides that the initial authorized sale of a patented item
terminates all patent rights to that item”86 which the asserting party must prove at trial.87
Unlike the equitable defenses, neither patent exhaustion nor first sale doctrine require
the element of fraud, misconduct or misrepresentation. Despite Sonos’s argument that
patent exhaustion and first sale doctrine are the same defense, the first sale doctrine is
just one way patent rights may be exhausted. Although related, they are not the same
defense. D&M alleges Sonos has exhausted its patent rights by the first sale doctrine,

83

D.I. 119 at 9-10.
Intellectual Ventures I LLC v. Symantec Corp., C.A. No. 13-1440-LPS, 2014
WL 4773954 (D. Del. Sept. 24, 2014) (citing VA Panel Corp. v. MAC Panel Co., 133
F.3d 860, 868 (Fed.Cir.1997)).
85
Id.
86
Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 625 (2008).
87
Intel Corp. v. Broadcom Corp., 173 F. Supp. 2d 201, 206 (D. Del. 2001).
84

14

licensing the manufacture and/or use of their products, or a combination of both.88 For
example, if sale of a patented item by Sonos was unconditional, its patent rights would
be exhausted via the first sale doctrine. Similarly, if any licensing agreements
authorized D&M to produce the accused products, Sonos’s patent rights would also be
exhausted. At this stage, D&M notes they have insufficient information.89 Such
information would likely be within the control of Sonos. Discovery for both sides, rather
than a motion to strike, is the more appropriate route to learn further information on
these affirmative defenses.
On the affirmative defenses of patent exhaustion and first sale doctrine, Sonos’s
motion to strike should be denied.
v.

Prosecution Laches

Prosecution laches is an “equitable defense to a charge of patent infringement.”90
An unreasonable and inexcusable delay is required to successfully assert a defense of
prosecution laches.91 D&M avers, based on information and belief, that Sonos’s claims
are barred in whole or in part by the doctrine of prosecution laches.92 Sonos asks the
court to strike this affirmative defense because it is “insufficient [and] unduly
prejudicial.”93 Additionally, Sonos contends D&M has not identified or alleged any facts
supporting the elements of a prosecution laches defense: prejudice, intervening rights,
88

D.I. 119 at 10-11.
Id.
90
Cancer Research Tech. Ltd. v. Barr Labs., Inc., 625 F.3d 724, 729 (Fed.
Cir.2010).
91
Id.; Cordance Corp. v. Amazon.com, Inc., 631 F. Supp. 2d 484, 489 (D. Del.
Jun. 30, 2009).
92
D.I. 106 at 18.
93
D.I. 112 at 9; D.I. 124 at 8.
89

15

or unreasonable and unexpected delay.94 D&M responds that Sonos has 25 issued
patents, of which 23 include the word “clock” in its claims.95 D&M argues Sonos
attempted to “cover the concept of using a clock in a wireless audio device” with 24
patents and 640 claims, thereby illustrating a pattern of unduly and repetitive filings
which creates an overall delay in the issuance of claims.96
D&M’s assertion of prosecution latches is limited to a one sentence conclusory
statement,97 containing no information to support the elements of unreasonable and
inexcusable delay.98 They attempt to supplement this single comment by detailing
certain facts in their answering brief, which is insufficient to plead the affirmative
defense of prosecution laches.99 Therefore, Sonos’s motion to strike D&M’s defense of
prosecution laches is granted.
As granted previously in this Report and Recommendation, the court will allow
D&M’s request for leave to amend its pleading to remedy the deficiencies noted.
V.

CONCLUSION

For the foregoing reasons, it is recommended that:
(1) Sonos’s motion to strike (D.I. 111) be GRANTED as to D&M’s Fourth, Fifth,
Tenth, and Patent Misuse (Sixth) defenses and DENIED as to D&M’s First affirmative

94

Id. at 9. See Cancer Research Tech. 625 F.3d at 729.
D.I. 119 at 11-12.
96
Id.
97
D.I. 106 at 18. See Symbol Techs., Inc. v. Aruba Networks, Inc., 609 F. Supp.
2d 353, 359 (D. Del. 2009).
98
D.I. 106 at 18 (“Based on information and belief, Sonos is barred in whole or in
part by the doctrine of prosecution laches from enforcing the Patents-in-Suit against
Defendants.”).
99
D.I. 119 at 16-17.
95

16

defense and Patent Exhaustion/ First Sale Doctrine (Sixth) defenses;
(2) D&M’s request for leave to amend their answer be GRANTED. D&M’s
amended answer shall be due on or before September 7, 2016.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B),
FED. R. CIV. P. 72(b)(1), and D. DEL. LR 72.1. The parties may serve and file specific
written objections within ten (10) days after being served with a copy of this Report and
Recommendation.
The parties are directed to the Court’s Standing Order in Non-Pro Se matters for
Objections Filed under FED. R. CIV. P. 72, dated October 9, 2013, a copy of which is
available on the Court’s website, www.ded.uscourts.gov.

Date: Aug. 10, 2016

/s/ Mary Pat Thynge
Chief United States Magistrate Judge

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