Barnes & Noble, Inc. v. LSI Corp.
849 F. Supp. 2d 925
N.D. Cal.2012Background
- BN and BN.com sued for declaratory non-infringement and invalidity of eleven patents owned by LSI and Agere related to Nook technologies.
- D’s Answer asserted counterclaims for infringement of the patents; BN answered with eight affirmative defenses.
- BN’s affirmative defenses included: non-infringement, invalidity, unenforceability (estoppel, fraud, laches, waiver, implied waiver, unclean hands, patent exhaustion, implied license, and other equitable doctrines), prosecution history estoppel, and judicial estoppel, among others.
- Defendants moved to strike third, fourth, fifth, sixth, and eighth affirmative defenses.
- Court applies Twombly/Iqbal plausibility standards and assesses imputation of predecessor conduct (Lucent) to defendants for unenforceability theories.
- Court grants in part and denies in part: laches and judicial estoppel defenses struck with leave to amend; all other defenses remain.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Enforceability defenses pleaded adequately? | BN alleges Lucent misconduct can render patents unenforceable and that Lucent’s acts imputable to Defendants. | LSI/Agere argue insufficient facts to connect Lucent to Defendants and to render unenforceability. | Third defense (unenforceability) survives as to Lucent-imputation; insufficient for other grounds. |
| Prosecution history/judicial estoppel pleaded with sufficient particularity? | Defendants’ conduct before SSOs and related statements support estoppel theories. | Defendants contend no factual basis pleaded for these defenses. | Judicial estoppel defense struck with leave to amend; prosecution history estoppel denied. |
| Laches defense proper to strike? | Discovery will reveal facts; placeholder defense. | Laches facts should be pled now; delay prejudices Defendants. | Laches defense GRANTED with leave to amend. |
| Waiver/Implied waiver/Unclean Hands/Patent Exhaustion/Implied License/No Injunctive Relief/License defense viability? | Waiver, implied waiver, implied license, FRAND commitments, and licenses through SSO relate to enforceability and relief. | Arguments lack sufficient pleading or direct licenses between parties. | Waiver, implied waiver, unclean hands, patent exhaustion, implied license, no injunctive relief, license defenses all DENIED or not struck at this stage (except laches/judicial estoppel). |
Key Cases Cited
- Aukerman v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (laches/estoppel framework and elements)
- Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547 (Fed. Cir. 1997) (predecessor conduct imputes to successor; laches/inequitable conduct context)
- Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) (pleading inequitable conduct and Rule 9(b) standards in patent context)
- Central Admixture Pharmacy Servs., Inc. v. Adv. Cardiac Solutions, P.C., 482 F.3d 1347 (Fed. Cir. 2007) (Rule 9(b) pleading adequacy in fraud claims; patent context)
- In re BP Lubricants, Co. v. BP America, 637 F.3d 1307 (Fed. Cir. 2011) (pleading standards for fraud in patent cases; application to Exergen)
- Rambus Inc. v. Infineon Technologies AG, 318 F.3d 1081 (Fed. Cir. 2003) (duty to disclose; SSO participation influences disclosure expectations)
- Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004 (Fed. Cir. 2008) (duty to disclose; evidence and factual underpinnings in SSO contexts)
- Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564 (Fed. Cir. 1984) (procedural questions on pleading and notice)