United States District Court, D. New Mexico
MEMORANDUM OPINION AND ORDER GRANTING PLAINTIFFS'
MOTION TO COMPEL RESPONSE TO INTERROGATORY NO. 6
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.
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
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.”), ¶
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.
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.
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.
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.
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.
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
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 ...