Last week Magistrate Judge Burke ruled on a core technical documents dispute in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 21-1592 (D. Del.). The defendants sought to avoid production of core technical documents for a product that was accused but that could not infringe. Judge Burke rejected that position:
Defendant shall produce core technical documents for the Logitech-based system. . . . [I]f the Court did not allow discovery of properly-accused products every time a defendant said that its product did not infringe the patent-in-suit, there would be little to no discovery permitted in the patent cases in this Court.
He suggested that the infringement allegation here was not completely baseless, and that whether the product meets the claims depends on claim construction:
The real dispute here appears to be about whether a product can infringe the relevant patent if it contains a two-dimensional and three-dimensional sensor that are implemented in one piece of hardware. . . . It strikes the Court that that issue may get resolved via claim construction, or, if not, then pursuant to a later dispute (perhaps at summary judgment) regarding infringement. But those steps in the case are still to come.
He also rejected the good old stand-by argument of "if we infringe, then their claims are invalid"—but suggested that there may be other remedies for frivolous accusations of infringement:
Defendant also suggests that if Plaintiff's infringement read is correct then the claim will be covered by "most of the prior art." (D.I. 54 at 3 (emphasis omitted)) If that is so, that will be good news for Defendant, but again, that is an issue that will be litigated later in the case. And of course, if it turns out that Plaintiff's infringement read is baseless/frivolous, Defendant can always seek to address that problem via various types of motions in the future.
Judge Burke did, however, leave open that a completely baseless infringement allegation might not be enough:
In the end, at present Plaintiff has: (1) accused the Logitech-based system of infringement; (2) survived the pleading stage; and (3) articulated an understandable basis as to how that system could infringe claim 9. Nothing more is required for it to get core technical document discovery.
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