Dentsply Sirona Inc. et al v. Edge Endo, LLC
Filing
189
MEMORANDUM OPINION AND ORDER Granting Plaintiffs' Motion to Compel Response to Interrogatory No. 6 by Magistrate Judge Steven C. Yarbrough. Related document(s): 186 Notice (Other). (kfg)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW MEXICO
DENTSPLY SIRONA, INC, et al.,
Plaintiffs,
v.
Civ. No. 17-1041 WJ/SCY
EDGE ENDO, LLC, et al.,
Defendants.
MEMORANDUM OPINION AND ORDER
GRANTING PLAINTIFFS’ MOTION TO COMPEL
RESPONSE TO INTERROGATORY NO. 6
THIS MATTER is before the Court on the parties’ Joint Notice of Renewal, filed
February 21, 2019. Doc. 186. This Notice renews, in part, Plaintiffs’ Motion to Compel
Responses to Plaintiffs’ Interrogatory No. 6 and Document Request Nos. 53-57, Doc. 153.
Plaintiffs’ Motion to Compel was originally denied without prejudice by Chief Judge Johnson in
his Memorandum Opinion and Order Granting Defendants’ Motion to Stay Proceedings Pending
Inter Partes Review. Doc. 177 at 10. Chief Judge Johnson granted Plaintiffs leave to renew the
motion after the stay is lifted. Id. The stay was lifted on January 23, 2019. Doc. 179.
The Joint Notice of Renewal explains that the parties reached partial agreement on the
Motion to Compel. Doc. 186 at 1. Plaintiffs do not renew the portions of the motion directed to
Document Requests 53-57. Id. at 1-2. Therefore, the sole issue remaining for the Court to decide
is the portion of the motion directed to Plaintiffs’ Interrogatory No. 6. Id. at 2. The parties submit
that this issue is ripe for resolution by the Court, and do not request oral argument. Id.
Accordingly, the Court addresses the motion to compel with respect to Interrogatory No. 6 in this
Memorandum Opinion and Order and GRANTS Plaintiffs’ motion with regard to Interrogatory
No. 6.
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BACKGROUND
Plaintiffs and Defendants design and sell endodontic drill files. Plaintiffs filed this patent
infringement case on October 10, 2017, alleging that Defendants infringed upon four published
patents. The parties refer to these patents as the “Patents-in-Suit.” See Doc. 68, Second Amended
Complaint (“Compl.”), ¶ 1.1 In this opinion, the Court refers to them as the “asserted patents.”
The present dispute relates to discovery inquiring about “Marked Patents,” the definition of
which is subject to some controversy.
This term refers to the patent marking statute, 35 U.S.C. § 287. This law allows patentees
to “give notice to the public that [an article] is patented, either by fixing thereon the word
‘patent’ or the abbreviation ‘pat.’, together with the number of the patent . . . or when, from the
character of the article, this can not be done, by fixing to it, or to the package wherein one or
more of them is contained, a label containing a like notice.” Id. § 287(a). The failure to so mark
an article will preclude the patentee from collecting damages prior to notifying an alleged
infringer of the infringement. Id. Filing a lawsuit alleging infringement, however, is itself a
method of notification. Id.
One of Defendants’ defenses in this case is that Plaintiffs failed to mark its own products
with the correct patents. Doc. 162 at 2 (“Dentsply’s failure to mark its ProTaper Next files with
the patents-in-suit demonstrates that its claim of willful infringement . . . lacks merit . . . .”).
Plaintiffs have agreed that they are therefore not entitled to damages prior to their notification to
Defendants of the Patents-in-Suit, i.e., this lawsuit. See Doc. 162-7 at 3 (plaintiffs’ counsel
statement during the June 7, 2018 discovery hearing that “we’re not seeking presuit damages for
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The “Patents-in-Suit” consist of U.S. Patent No. 8,932,056; No. 9,351,803; No. 8,882,504; and
No. 9,801,696. Compl. ¶ 1.
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patent infringement”). Plaintiffs insist, however, that they are entitled to damages for post-suit
infringement as well as enhanced damages for willful infringement. Doc. 174 at 8.
On May 23, 2018, Plaintiffs served their Second Set Of Interrogatories (Nos. 4-7) To
Defendants. Doc. 162-2. In it, Plaintiffs defined “Marked Patents” as follows:
Marked Patent means any U.S. or non-U.S. patent with which Plaintiffs’ ProTaper
Next® file system was marked at any time on or after January 1, 2013, including,
but not limited to, U.S. 5,658,145, 5,746,597, 6,942,484, 7,955,078, 7,648,599,
and the Patents-in-Suit.
Id. at 4.2
Interrogatory No. 6 requests, in full:
State whether Defendants had knowledge of and/or evaluated any Marked Patents
prior to the filing of this litigation. To the extent that Defendants did so, describe
in detail the steps Defendants performed, or had performed, in evaluating each
Marked Patent. For each Marked Patent evaluated, state the patent number, the
date upon which that patent was analyzed, the conclusions reached regarding
infringement, validity, and enforceability with respect to that patent, whether
Defendants requested an opinion of counsel for that patent, and the date upon
which that opinion of counsel was communicated to Defendants.
Id. at 3.
Defendants served objections and responses on June 22, 2018. Doc. 162-3. Defendants
objected to the definition of “Marked Patents” and separately answered Interrogatory No. 6 as
follows:
Defendants object to the definition of “Marked Patent” as overbroad, unduly
burdensome, and seeking information that is neither relevant to any party’s claims
or defenses nor proportional to the needs of the case to the extent it includes
patents not asserted against Defendants.
....
In addition to its general objections, Defendants object to this Interrogatory on the
grounds that it seeks information protected by the attorney-client privilege and the
work product doctrine. Subject to and without waiving its general or specific
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Throughout this opinion, the Court uses the document page numbers in the headers
automatically generated by the CM-ECF system.
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objections, or any applicable privilege or protection from disclosure, Defendants
respond as follows:
Defendants had no knowledge of the Patents-in-Suit prior to the filing of this
litigation.
Doc. 162-3 at 4-5.
Defendants contend that Plaintiffs seek “information regarding five patents that have not
been asserted in this litigation and that Dentsply itself acknowledges do not cover Defendants’
accused EdgeTaper Encore endodontic files.” Doc. 162 at 5. Plaintiffs do not dispute that
Interrogatory No. 6, in relevant part, requests information about patents that Plaintiffs have not
asserted against Defendants in this lawsuit. Therefore, the Court does not use the somewhat
ambiguous term “Marked Patents” as defined in Plaintiffs’ Interrogatories, which includes both
asserted and unasserted patents. Defendants fully answered the Interrogatory as it pertains to
asserted patents. Doc. 162-3 at 5. Instead, because the present dispute concerns the Interrogatory
only insofar as it calls for information on “unasserted patents,” the Court will use that term in its
discussion.
LEGAL STANDARD
Federal Rule of Civil Procedure 26 provides that “[p]arties may obtain discovery
regarding any nonprivileged matter that is relevant to any party’s claim or defense . . . .
Information within this scope of discovery need not be admissible in evidence to be
discoverable.” Fed. R. Civ. P. 26(b)(1). The discovery standard in patent cases is “guided by
regional circuit law.” Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1297 (Fed. Cir. 2016). In
addition to Tenth Circuit cases, the Court also looks to Federal Circuit law to the extent it is
relevant to patent issues.
“[T]he scope of discovery under the federal rules is broad,” and “‘discovery is not limited
to issues raised by the pleadings, for discovery itself is designed to help define and clarify the
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issues.’” Gomez v. Martin Marietta Corp., 50 F.3d 1511, 1520 (10th Cir. 1995) (quoting
Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)). “[W]hen a party objects that
discovery goes beyond that relevant to the claims or defenses, ‘the court would become involved
to determine whether the discovery is relevant to the claims or defenses and, if not, whether good
cause exists for authorizing it so long as it is relevant to the subject matter of the action.’” In re
Cooper Tire & Rubber Co., 568 F.3d 1180, 1188-89 (10th Cir. 2009) (quoting Fed. R. Civ. P. 26
advisory committee’s note on 2000 amendments). “This good-cause standard is intended to be
flexible.” Id. “When the district court does intervene in discovery, it has discretion in
determining what the scope of discovery should be.” Id.
The Federal Circuit has held that the district court abuses its discretion when it orders
production without a showing from the proponent that the discovery sought is related to either “a
charge of infringement” or that it has some other “evidence of relevance or need.” Drone Techs.,
838 F.3d at 1300. “[D]iscovery may not be had unless it is relevant to the subject matter of the
pending action.” Id. at 1299. It “should not [be] granted based solely on . . . suspicion.” Id. at
1300.
ANALYSIS
The question before the Court is whether Plaintiff is entitled to information as to
Defendants’ knowledge or investigation of unasserted patents. Plaintiffs argue that information
on unasserted patents is relevant to the “subjective willfulness inquiry, i.e., whether Defendants’
risk of infringing the Patents-in-Suit was either known or so obvious that it should have been
known to Defendants.” Doc. 153-1 at 1-2. The law governing willful infringement thus
determines what is relevant in this action.
Section 284 of the Patent Act provides:
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Upon finding for the claimant the court shall award the claimant damages
adequate to compensate for the infringement, but in no event less than a
reasonable royalty for the use made of the invention by the infringer, together
with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall assess them. In either
event the court may increase the damages up to three times the amount found or
assessed.
35 U.S.C. § 284.
In Halo Electronics, Inc. v. Pulse Electronics, Inc., the Supreme Court overturned
previous Federal Circuit case law holding that the analysis under § 284 included an objective
inquiry. 136 S. Ct. 1923, 1932 (2016). Halo held that the sole focus of the inquiry is on “[t]he
subjective willfulness of a patent infringer, intentional or knowing.” Id. at 1933. “[S]uch
damages are generally reserved for egregious cases of culpable behavior.” Id. at 1932. Enhanced
damages “are not to be meted out in a typical infringement case.” Id. at 1932. “The sort of
conduct warranting enhanced damages has been variously described in our cases as willful,
wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—
characteristic of a pirate.” Id.
This “culpability is generally measured against the knowledge of the actor at the time of
the challenged conduct.” Id. at 1933. Therefore, “[k]nowledge of the patent alleged to be
willfully infringed continues to be a prerequisite to enhanced damages.” WBIP, LLC v. Kohler
Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016). The Federal Circuit has indicated that, “under Halo,
the district court no longer determines as a threshold matter whether the accused infringer’s
defenses are objectively reasonable. Rather, the entire willfulness determination is to be decided
by the jury.” Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prod. Grp., LLC, 879 F.3d 1332,
1353 (Fed. Cir. 2018). Accordingly, any and all “evidence relevant to [the accused infringer’s]
state of mind at the time of the accused infringement” must go to the jury, unless there is no
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genuine issue of material fact. Id. And in WCM Industries v. IPS Corp., a recent but unpublished
case, the Federal Circuit emphasized that there is no “per se rule” under which district courts
evaluate willfulness contentions; rather, the factfinder must look to the “‘totality of the
circumstances presented in the case.’” 721 F. App’x 959, 970 (Fed. Cir. 2018) (quoting Shiley,
Inc. v. Bentley Labs., Inc., 794 F.2d 1561, 1568 (Fed. Cir. 1986)).
WCM Industries upheld a district court decision denying a defense motion for judgment
as a matter of law on the plaintiff’s willful infringement claim and, further, found that sufficient
evidence supported the jury’s verdict of willfulness. Id. at 969-70. The evidence at trial included
testimony that, when the accused infringer acquired the assets of the alleged copier, the accused
infringer knew that the alleged copier “did not employ engineers or fulltime product developers
to create the” accused product. Id. at 970-71. Nonetheless, the alleged infringer did not
investigate how the company it acquired managed to develop the accused product without the
use of engineers. Id. An employee of the accused infringer testified that “he had monitored
WCM’s products for decades and possessed catalogs and other literature indicating that WCM’s
products were marked with ‘patent pending,’” and another testified that the accused infringer had
a “culture of copying.” Id. at 971.
Recently, a case from the District of Massachusetts analyzed a similar issue and
concluded that WCM Industries “cast[s] significant doubt” on the line of cases holding that
“neither general knowledge of a patent portfolio nor actual knowledge of a patent application or
of related patents, without more, is sufficient even to plausibly allege knowledge of a particular
asserted patent.” SiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 609 (D.
Mass. 2018). Although not cited in SiOnyx, the case Defendants rely on here—Vasudevan
Software, Inc. v. Tibco Software, Inc.—falls within the category of cases the SiOnyx court called
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into doubt. No. 11-06638, 2012 WL 1831543 (N.D. Cal. May 17, 2012) (cited in Doc. 162 at
12-13).
In Vasudevan, the alleged infringer was on notice of a parent patent and a pending patent
application that would be a continuation of the parent. 2012 WL 1831543, at *1. Such notice, the
court held, failed to state a claim for willful infringement. Id. at *3. In reaching this decision, the
court concluded that awareness of a parent patent and of a patent application is not the equivalent
of awareness of a patent. Id. (“Like principles apply to [plaintiff]’s suggestion that knowledge of
that patent in suit may be inferred from [defendant]’s alleged awareness of the [parent] patent,
or, more generally, [plaintiff]’s ‘patent portfolio,’ whatever it may include. The requisite
knowledge of the patent allegedly infringed simply cannot be inferred from mere knowledge of
other patents, even if somewhat similar.”). This decision, however, came before the Supreme
Court issued its decision in Halo.
Cases such as SiOnyx and WCM Industries, which were decided with the benefit of
Halo’s guidance, are more persuasive than Vasudevan. Thus, this Court agrees with the SiOnyx
court’s conclusion that, “there is no bright-line rule as to what level of knowledge is sufficient”
and, “[l]ike any question of intent, it must be inferred from all the evidence and circumstantial
evidence can suffice.” SiOnyx, 330 F. Supp. 3d at 610. Under this reasoning, the universe of
evidence that is relevant to the question of willful infringement is expansive. In SiOnyx, for
example, the court relied on a wide variety of evidence in denying summary judgment on the
issue of willfulness. The evidence included reports summarizing a competitor’s work, including
citations to “two pending patent applications that name [the plaintiffs’ individual founders] as
inventors and that are great-grandparent and great-great-grandparent applications of the asserted
’467 patent”; an email among employees of the alleged infringers “forwarding a news report”
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about the plaintiff’s “failure to patent certain aspects of its technology”; and evidence that the
alleged infringer had actually referenced, in its own family of patents, the “patents and patent
applications in the same family as the ’467 patent.” Id.
Similarly, the Court agrees with Plaintiffs that the discovery sought could be relevant to
Defendants’ state of mind at the time Defendants allegedly copied Plaintiffs’ product.
Information bearing on Defendants’ knowledge of unasserted patents that are similar or related
to asserted patents could be relevant circumstantial evidence of Defendants’ subjective intent to
infringe the asserted patents. Plaintiffs argue that they “intend to show that Defendants took
deliberate action to avoid learning of the Patents-in-Suit,” and “[t]he date that Defendants
learned of the Marked Patents, which might have triggered a reasonable individual to search for
any additional, related patents, is relevant to this inquiry.” Doc. 153-1 at 13. “And, to the extent
non-privileged information exists, any evaluation of—or instruction not to evaluate—these
patents is highly relevant.” Id. In other words, either Defendants investigated the patents marked
on Plaintiffs’ product, or they did not. The results of that investigation—or a refusal to
investigate—may be relevant to whether related patents were willfully infringed. Although the
Court reaches no conclusions as to whether any such evidence would in fact demonstrate willful
infringement, the Court agrees that Plaintiffs have made a plausible showing of relevance.3
Plaintiffs’ Motion to Compel, as it relates to Interrogatory No. 6, is GRANTED.
Defendants shall supplement their Response and answer Interrogatory No. 6 in full within 21
days of this Order. Because no controlling precedent clearly governs the legal issues discussed
3
Because the discovery request seeks information relevant to the willful infringement test under
Halo, the Court does not reach the parties’ arguments as to whether the doctrine of “willful
blindness” is applicable in willful infringement cases. Cf. Doc. 162 at 11; Doc. 174 at 9.
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in this Order and because this Order addresses only a portion of Plaintiffs’ motion to compel, the
Court declines to shift costs related to this motion—each party must bear its own costs.
IT IS SO ORDERED.
___________________________________
UNITED STATES MAGISTRATE JUDGE
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