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DOLBY LABORATORIES, INC. v. LUCENT TECHNOLOGIES INC.

United States District Court, N.D. California, San Jose Division


September 6, 2005.

DOLBY LABORATORIES, INC., et al., Plaintiffs,
v.
LUCENT TECHNOLOGIES INC., Defendant. AND RELATED COUNTERCLAIMS.

The opinion of the court was delivered by: JEREMY FOGEL, District Judge

ORDER*fn1 GRANTING LUCENT'S MOTION TO DISMISS WITHOUT PREJUDICE DOLBY'S AFFIRMATIVE DEFENSES AND DECLARATORY JUDGMENT CLAIMS OF INVALIDITY
On January 28, 2005, the parties filed seven motions for summary judgment related to the two patents at issue in this case: United States Patent No. 5,341,457 ("the '457 patent") and United States Patent No. 5,627,938 ("the '938 patent"). See Docket Nos. 496, 503, 511, 512, 520, 523, 529. Specifically, Plaintiffs/Counter-Defendants Dolby Laboratories, Inc., and Dolby Laboratories Licensing Corporation (collectively "Dolby") moved for summary judgment of (1) non-infringement of the '457 patent, (2) non-infringement of the '938 patent, (3) non-infringement of the '457 and '938 patents regarding Dolby's cinema technology, (4) no inducement of infringement and no contributory infringement of the '457 and '938 patents, (5) laches and estoppel, as asserted in its affirmative defenses, and (6) invalidity of the '457 and '938 patents. Defendant/Counterclaimant Lucent Technologies Inc. and Counterclaimant Lucent Technologies Guardian I LLC (collectively "Lucent") moved for summary judgment as to a number of Dolby's affirmative defenses. On the same day, Dolby also filed a motion in limine to preclude Lucent from offering any expert report or testimony. See Docket No. 497. On April 22, 2005, the Court granted Dolby's motions for summary judgment of non-infringement, of no inducement of infringement, and of no contributory infringement of the '457 and '938 patents.*fn2 See Docket Nos. 680-81.

Lucent now moves to dismiss Dolby's affirmative defenses and Dolby's claims for declaratory judgment that the '457 and '938 patents are invalid, which would render the pending summary judgment motions moot.*fn3 Should the Court grant Lucent's motion, Dolby requests a ruling on its motion to preclude Lucent from offering any expert report or testimony so that the ruling may be reviewed on appeal simultaneously with the Federal Circuit's review of the judgment of non-infringement.*fn4 Both Lucent's motion to dismiss and Dolby's request for a ruling on its motion in limine are opposed.

  I. DISCUSSION

  A. Motion to Dismiss Dolby's Affirmative Defenses

  Dolby's affirmative defenses were raised solely as defenses to Lucent's counterclaims of infringement of the '457 and '938 patents. Because the Court has ruled in favor of Dolby on these counterclaims, Lucent argues that Dolby's affirmative defenses are moot and should be dismissed. Dolby agrees that "its affirmative defenses relating to infringement issues . . . should be dismissed without prejudice pending resolution in the Federal Circuit." Opp'n at 8. However, it then asserts that dismissal is not appropriate with respect to its "affirmative defenses relating to the still pending reissue application for the '938 patent . . . (Affirmative Defense Nos. 7-9)," id., despite the fact that these affirmative defenses also are defenses to Lucent's counterclaims of infringement. Although Dolby correctly observes that, until the '938 patent is reissued, there is no absolute certainty that the claims — and thus the infringement analysis — will remain the same, Lucent has represented that the reissue application contains no new claims, and it points out that, in any event, there are no live claims of infringement in this case. The Court concludes that, in light of its ruling of non-infringement, Dolby's affirmative defenses are moot and should be dismissed without prejudice. See, e.g., Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 92 F. Supp. 2d 483, 498-99 (E.D. Va. 2000).

  B. Motion to Dismiss Dolby's Invalidity Claims

  Lucent also argues that the Court need not decide Dolby's claims that the '457 and '938 patents are invalid and that the Court may exercise its discretion to dismiss those claims in light of its ruling that Dolby has not infringed the '457 and '938 patents. The Federal Circuit has held that a district court has discretion "to dismiss a counterclaim alleging that a patent is invalid as moot where it finds no infringement." Phonometrics, Inc. v. N. Telecom Inc., 133 F.3d 1459, 1468 (Fed. Cir. 1998); see also Nystrom v. TREX Co., 339 F.3d 1347, 1351 (Fed. Cir. 2003) (stating that district court could have dismissed counterclaim alleging invalidity — either with or without a finding that the counterclaim was moot — following grant of summary judgment of non-infringement). Although both Phonometrics and Nystrom involved the dismissal of counterclaims alleging invalidity following a finding of non-infringement, the Court finds no reason that the reasoning should not apply to the scenario presented by the instant case, in which Dolby brought affirmative claims of invalidity as the plaintiff in a declaratory judgment action.*fn5 Even though the parties already have briefed fully Dolby's motion for summary judgment that the '457 and '938 patents are invalid and have filed motions in limine should the invalidity claims go to trial, the Court, having considered both parties' arguments on this issue, determines that it is appropriate and in the interest of judicial economy to dismiss Dolby's invalidity claims without prejudice at this time.*fn6 The cases cited by Dolby do not persuade the Court otherwise, and Dolby will not be prejudiced by the dismissal.

  C. Motion in Limine to Preclude Lucent from Offering Expert Report or Testimony

  Dolby's motion to preclude Lucent from offering any expert report or testimony was filed as a motion in limine in connection with a scheduled jury trial. Because the Court intends to grant Lucent's motion to dismiss both Dolby's affirmative defenses and Dolby's claims for declaratory judgment that the '457 and '938 patents are invalid, there will be no trial unless the Court's determination with respect to Dolby's infringement claims is reversed by the Federal Circuit. Accordingly, Dolby's motion in limine is not ripe for decision. However, to the extent that it is relevant to Lucent's anticipated appeal of the judgment of non-infringement, the Court confirms, consistent with its comments at the hearing on March 29, 2005, that, were a trial to be held (and were Dolby's motion thus ripe for decision), it would be inclined to grant the motion for the reasons stated on the record at that hearing.

  II. ORDER

  Good cause therefore appearing, IT IS HEREBY ORDERED that Lucent's motion to dismiss without prejudice Dolby's affirmative defenses and Dolby's claims for declaratory judgment that the '457 and '938 patents are invalid is GRANTED. All pending motions are TERMINATED. See Docket Nos. 497, 503, 520, 523, 634-42, 644-47, 649-54.

20050906

© 1992-2005 VersusLaw Inc.



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