AntennaSys, Inc. v. AQYR Technologies, Inc. and Windmill International, Inc.

2019 DNH 002

• Court: District Court, D. New Hampshire
• Decided: January 3, 2019
• Docket: 17-cv-105-PB
• Status: Published

Opinion

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.” Fed.

R. Civ. P. 37(c)(1). 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.