White Knuckle IP v. Electronic Arts

Filing 164

MEMORANDUM DECISION AND ORDER granting 161 Motion to Dismiss - White Knuckle's claim for patent infringement is dismissed with prejudice and EAs claims for declaratory judgment on patent non-infringement and invalidity are dismissed without prejudice; finding as moot 55 Motion for Judgment on the Pleadings. Signed by Judge David Nuffer on 11/17/17 (alt)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
WHITE KNUCKLE IP, LLC, a Utah limited
liability company,
Plaintiff,
v.
ELECTRONIC ARTS INC., a Delaware
corporation,
Defendant.

MEMORANDUM DECISION AND
ORDER GRANTING [161] PLAINTIFF’S
MOTION TO DISMISS AND
FINDING [55] DEFENDANT’S MOTION
FOR JUDGMENT ON THE PLEADINGS
MOOT
Case No. 1:15-cv-00036-DN-BCW
District Judge David Nuffer

Plaintiff White Knuckle IP, LLC (“White Knuckle”) filed a Motion to Dismiss for
Mootness (the “Motion to Dismiss”) 1 seeking to voluntarily dismiss its claim against defendant
Electronic Arts Inc. (“EA”) for infringement of U.S. Patent No. 8,529,350 (the “’350 Patent”)
and to dismiss EA’s counterclaims for declaratory judgment on patent non-infringement and
invalidity. EA responded to the Motion to Dismiss (“EA’s Response”), 2 in which EA objected to
how attorneys’ fees and costs were resolved in White Knuckle’s proposed order but did not
otherwise oppose the Motion to Dismiss. Based on the Motion to Dismiss, EA’s Response, and
for good cause appearing, the court finds:
1.

According to its title, the ‘350 Patent concerns a “Method and System for

Increased Realism in Video Games.” 3
2.

White Knuckle sued EA for patent infringement of the ‘350 Patent. 4

1

Docket no. 161, filed October 30, 2017.

2

Response to Motion to Dismiss, docket no. 162, filed November 1, 2017.

3

Amended Complaint, Exhibit A, docket no. 14-1, filed March 16, 2015.

4

Amended Complaint, docket no. 14, filed March 16, 2015.

3.

EA asserted two claims for declaratory judgment as to non-infringement and

invalidity of the ‘350 Patent. 5
4.

EA filed a Motion for Judgment on the Pleadings arguing that the ‘350 Patent is

not patentable. 6
5.

The case was stayed pending an appeal to the U.S. Court of Appeals for the

Federal Circuit and an Inter Partes Review by the Patent Trial and Appeal Board on the ‘350
Patent, 7 following the conclusion of which the stay was lifted. 8
6.

White Knuckle seeks to cease litigation against EA on the ‘350 Patent. 9

Accordingly, White Knuckle executed a Unilateral Covenant Not to Sue (the “Unilateral
Covenant”). 10
7.

The Unilateral Covenant includes a broad promise not to assert patent

infringement against EA on the ‘350 Patent:
[White Knuckle] unconditionally and irrevocably covenants not to assert patent
infringement (including direct infringement, contributory infringement, and
inducing infringement) against EA and its predecessors, successors, assigns,
parents, subsidiaries, affiliated and related companies (collectively the “EA
Entities”) under the ‘350 Patent based upon their making, using, manufacturing,
development, design, marketing, licensing, distributing, importing, offering for
sale, or selling of any of their products and services as they exist today or have
existed in the past or may exist in the future. 11

5

Electronic Arts Inc.’s First Amended Answer and Counterclaims, docket no. 54, filed July 27, 2015.

6

Electronic Arts Inc.’s Motion for Judgment on the Pleadings Based on Unpatentability Under 35 U.S.C. § 101,
docket no. 55, filed August 6, 2015.

7

Memorandum Decision and Order Granting Motion to Stay, docket no. 133, filed July 20, 2016.

8

Docket Text Order Granting Motion to Lift Stay, docket no. 151, filed August 24, 2017.

9

Motion to Dismiss.

10

Unilateral Covenant, Exhibit A to Hansen Declaration in Support of Motion to Dismiss, docket no. 161-2.

11

Id. at 2.1.

2

8.

Based on the Unilateral Covenant, White Knuckle cannot assert patent

infringement against EA under the ‘350 Patent now or in the future. 12
9.

This action no longer presents a “Case” or “Controversy” for purposes of Article

III because “the issues presented are no longer ‘live’ or the parties lack a legally cognizable
interest in the outcome.” 13
10.

EA does not oppose dismissal. 14 However, EA asserts a right to attorneys’ fees

and costs under 35 U.S.C. § 285 and sanctions under Rule 11 of the Federal Rules of Civil
Procedure. 15 EA has filed a Motion for Rule 11 Sanctions. 16
11.

The Motion for Rule 11 Sanctions and any claims for attorneys’ fees and costs

under 35 U.S.C. § 285 may be addressed after the action is no longer pending. 17
12.

Based on the Unilateral Covenant and the Motion to Dismiss, White Knuckle’s

claim can be dismissed with prejudice.
13.

Because EA’s claims seek declaratory relief as to the same ‘350 Patent, EA’s

counterclaims can be dismissed without prejudice. 18
ORDER
THEREFORE, IT IS HEREBY ORDERED that White Knuckle’s Motion to Dismiss 19 is
GRANTED. White Knuckle’s claim for patent infringement is DISMISSED WITH

12

Id.

13

Already, LLC v. Nike, Inc., 568 U.S. 85, 91 (2013) (quoting Murphy v. Hunt, 455 U.S. 478, 481 (1982)).

14

EA’s Response at 1.

15

Id.

16

Docket no. 152, filed August 24, 2017.

17

Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 395–96 (1990).

18

Already, 568 U.S. at (affirming dismissal without prejudice of counterclaims in light of a unilateral covenant not
to sue).

19

Docket no. 161.

3

PREJUDICE. EA’s claims for declaratory judgment on patent non-infringement and invalidity
are DISMISSED WITHOUT PREJUDICE. This Order does not resolve EA’s pending Motion
for Rule 11 Sanctions 20 or EA’s claim for attorneys’ fees and costs under 35 U.S.C. § 285.
IT IS FURTHER ORDERED that EA’s Motion for Judgment on the Pleadings is MOOT
and therefore terminated.
Dated November 17, 2017.
BY THE COURT:
____________________________
David Nuffer
United States District Judge

20

Docket no. 152.

4