Ironburg Inventions Ltd. v. Valve Corporation

Filing 322

MINUTE ORDER: Having reviewed the parties' Joint Status Report, docket no. 321 , the Court ORDERS as follows: JURY TRIAL DATE (4 DAYS): 3/23/2020, Motions in Limine due by 2/13/2020, Agreed Pretrial Order due by 2/28/2020, Trial briefs, propose d voir dire, and proposed jury instructions to be submitted by 2/28/2020, Pretrial Conference set for 3/13/2020 at 11:00 AM. Regardless of whether the parties have previously engaged in mediation, they shall participate in mediation on or before 1/31/2020. Authorized by Judge Thomas S. Zilly. (MW)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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IRONBURG INVENTIONS LTD.,

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Plaintiff,
C17-1182 TSZ
v.
MINUTE ORDER
VALVE CORPORATION,

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Defendant.

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The following Minute Order is made by direction of the Court, the Honorable
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(1)
Having reviewed the parties’ Joint Status Report, docket no. 321, the Court
ORDERS as follows:
(a)
In light of the Court’s prior ruling, see Minute Order at ¶ 1(g)
(docket no. 301), that the accused device does not literally or under the doctrine of
equivalents infringe Claims 13 and 14 of United States Patent No. 9,089,770
(“the ’770 Patent”), which are the only claims that survived inter partes review
before the United States Patent and Trademark Office Patent Trial and Appeal
Board (“PTAB”), defendant’s third counterclaim for declaratory judgment of
invalidity as to the ’770 Patent is DISMISSED as moot. See Nystrom v. TREX
Co., 339 F.3d 1347, 1351 n.* (Fed. Cir. 2003) (observing that “a district court has
discretion to dismiss a counterclaim alleging that a patent is invalid as moot where
it finds no infringement” (citing Phonometrics, Inc. v. N. Telecom Inc., 133 F.3d
1459, 1468 (Fed. Cir. 1998) (citing Nestier Corp. v. Menasha Corp.-Lewisystems
Div., 739 F.2d 1576, 1580-81 (Fed. Cir. 1984) (citing Leesona Corp. v. United
States, 530 F.2d 896, 906 n.9 (Ct. Cl. 1976) (when “non-infringement is clear and
invalidity is not plainly evident,” treating only the infringement issue is
appropriate))))). Defendant’s first affirmative defense of invalidity is STRICKEN

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MINUTE ORDER - 1

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in part as moot with respect to the ’770 Patent; the defense remains in the case as
to all other patents-in-suit. With regard to defendant’s fourth counterclaim for
declaratory judgment of non-infringement as to the ’770 Patent, the Court will
enter judgment in favor of defendant and against plaintiff when this matter is fully
resolved.

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(b)
The issues left for trial are as follows: (i) plaintiff’s first claim of
infringement concerning Claims 2-4, 7-12, 15, and 18 of United States Patent
No. 8,641,525 (“the ’525 Patent), and defendant’s related affirmative defenses;
(ii) plaintiff’s request for enhanced damages pursuant to 35 U.S.C. § 284; and
(iii) defendant’s first and second counterclaims for declaratory judgment of
invalidity and non-infringement, respectively, as to the ’525 Patent.

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(c)

The following dates and deadlines are hereby SET:

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JURY TRIAL DATE (4 days)

March 23, 2020

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Motions in limine filing deadline

February 13, 2020

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Agreed pretrial order 1 DUE

February 28, 2020

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Trial briefs, proposed voir dire questions, and
proposed jury instructions DUE

February 28, 2020

Pretrial conference

March 13, 2020
at 11:00 a.m.

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The Agreed pretrial order shall be filed in CM/ECF and shall also be attached as a Word compatible
file to an Internet e-mail sent to the following e-mail address: [e-mail].
Notwithstanding Local Civil Rule 16.1, the exhibit list shall be prepared in table format with the
following columns: “Exhibit Number,” “Description,” “Admissibility Stipulated,” “Authenticity
Stipulated/Admissibility Disputed,” “Authenticity Disputed,” and “Admitted.” The latter column is
for the Clerk’s convenience and shall remain blank, but the parties shall indicate the status of an
exhibit’s authenticity and admissibility by placing an “X” in the appropriate column. Duplicate
documents shall not be listed twice: once a party has identified an exhibit in the pretrial order, any
party may use it. The original and one copy of the trial exhibits are to be delivered to the courtroom
at a time coordinated with Gail Glass, who can be reached at 206-370-8522, no later than the Friday
before trial. Each set of exhibits shall be submitted in a three-ring binder with appropriately
numbered tabs. Each exhibit shall be clearly marked. Plaintiff’s exhibits shall be numbered
consecutively beginning with 1; defendant’s exhibits shall be numbered consecutively beginning
with the next multiple of 100 after plaintiff’s last exhibit. For example, if plaintiff’s last exhibit is
numbered 159, then defendant’s exhibits shall begin with the number 200.

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MINUTE ORDER - 2

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All other terms and conditions, and all dates and deadlines not inconsistent
herewith, contained in the Minute Order entered January 8, 2018, docket no. 153,
as amended by the Order entered June 7, 2018, docket no. 189, and the Order
entered July 30, 2018, docket no. 224, shall remain in full force and effect.

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(d)
Regardless of whether the parties have previously engaged in
mediation, they shall participate in mediation on or before January 31, 2020, and
they shall immediately advise the Court if they reach a settlement in principle by
contacting Karen Dews at [phone].
(2)
record.

The Clerk is directed to send a copy of this Minute Order to all counsel of

Dated this 4th day of December, 2019.

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William M. McCool
Clerk

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s/Karen Dews
Deputy Clerk

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MINUTE ORDER - 3