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Dentsply Sirona Inc. v. Edge Endo, LLC

United States District Court, D. New Mexico

April 8, 2019

DENTSPLY SIRONA, INC, et al., Plaintiffs,
EDGE ENDO, LLC, et al., Defendants.


         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.


         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 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 ...

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