AntennaSys, Inc. v. AQYR Technologies, Inc.

Filing 49

MEMORANDUM OF DECISION RE: Order denying 34 Motion to Strike. So Ordered by Judge Paul J. Barbadoro.(js)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW HAMPSHIRE

AntennaSys, Inc.
v.

Case No. 17-cv-105-PB
Opinion No. 2019 DNH 002

AQYR Technologies, Inc. and
Windmill International, Inc.

MEMORANDUM OF DECISION
I previously denied AntennaSys’ motion to strike AQYR’s
amended answer in a margin order.

In this memorandum, I further

explain my reasoning.
The amended answer asserts a new affirmative defense in
which AQYR claims that the ‘868 patent is invalid.

Although the

amended answer was timely filed, it was not preceded by the
disclosure of preliminary invalidity contentions, which is
required by SPR 5.1(c). 1

AntennaSys cites this failure as one of

two arguments in support of its motion to strike.
I am not persuaded that AQYR’s failure to comply with SPR
5.1(c) bars it from presenting its invalidity defense.

Our

local rules do not specify the sanction that follows from a
failure to comply with SPR 5.1(c).

Nor do the rules expressly

identify the test that should be used to evaluate a claim that a

1

AQYR filed its amended answer without first seeking either the
consent of AntennaSys or the approval of the court as is
required by Fed. R. Civ. P. 15(a)(2).

failure to comply with SPR 5.1(c) should be excused. 2

In the

absence of a specified standard against which to judge a failure
to make a required initial disclosure under the Special Patent
Rules, I look to the rule of civil procedure that addresses a
failure to make initial disclosures required by Fed. R. Civ. P.
26(a) for a useful analogy.

That rule provides that a failure

to make a required initial disclosure will not bar the use of
the undisclosed information if the failure to disclose the
information “was substantially justified or is harmless.”
R. Civ. P. 37(c)(1).

Fed.

I apply the same standard in determining

whether AQYR’s failure to make invalidity disclosures should bar
it from asserting an invalidity defense.
In the present case, I am satisfied that AQYR’s late
disclosure of its invalidity contentions should not bar it from
proceeding with its affirmative defense because its
noncompliance with SPR 5.1(c) was harmless.

Although AQYR did

not timely disclose its preliminary invalidity contentions, it
did notify AntennaSys of its contention that the ‘868 patent was
invalid when it made its preliminary claim construction

2

The Special Patent Rules contemplate that a party may need to
supplement initial invalidity disclosures in its final
disclosures after the court issues its claim construction order.
See SPR 7.1(b). The rules expressly require such additional
disclosures to be justified by “good cause” but only “[t]o the
extent that the final invalidity contentions identify additional
prior art . . . .”

2

disclosures on April 26, 2017.

Doc. No. 38-2.

AntennaSys has

not presented a persuasive argument that it was unfairly
prejudiced by AQYR’s late disclosure.

Nor does it present any

evidence to suggest that AQYR deliberately delayed its
disclosure in an effort to obtain a tactical advantage.
Accordingly, I do not find that AQYR should be barred from
proceeding with its invalidity claim based on its failure to
comply with SPR 5.1(c).
In a more substantive effort to prevent AQYR from claiming
that the ‘868 patent is invalid, AntennaSys also invokes the
assignor estoppel doctrine.

This equitable doctrine prevents

the assignor of a patent and someone in privity with the
assignor from claiming that the assigned patent is invalid.

See

generally, MAG Aerospace Indus., Inc. v. B/E Aerospace, Inc.,
816 F.3d 1374, 1379-80 (Fed. Cir. 2016).

Whether assignor

estoppel applies in this case is a complex legal and factual
question that has not been adequately briefed.

Accordingly, I

decline to address the issue now without prejudice to
AntennaSys’ right to raise the issue at a later date in a
properly supported motion for summary judgment.
AntennaSys’ motion to strike is denied.

3

SO ORDERED.
/s/ Paul Barbadoro
Paul Barbadoro
United States District Judge
January 3, 2019
cc:

Kathleen M. Mahan, Esq.
Steven J. Grossman, Esq.
Arnold Rosenblatt, Esq.
David K. Pinsonneault, Esq.
Eric G. J. Kaviar, Esq.
Laura L. Carroll, Esq.

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