Magistrate Judge Christopher J. Burke recently recommended granting-in-part and denying-in-part a motion to dismiss invalidity and non-infringement counterclaims. Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., C.A. No. 12-1461-LPS-CJB (D. Del. Jan. 19, 2017). Judge Burke recommended denial of the motion to dismiss the invalidity counterclaim based on a theory of estoppel resulting from two IPR proceedings because neither IPR proceeding “resulted in a ‘final written decision’ as to the validity of” the claims at issue. Judge Burke recommended granting the motion to dismiss the non-infringement counterclaim, with leave to amend, finding that the counterclaim contained “no facts of any kind, let alone sufficient facts to make out a plausible claim” under Twombly/Iqbal.
UPDATE: On March 30, 2017, Judge Stark adopted, over objection, Magistrate Judge Burke’s report and recommendation that the motion to dismiss should be denied. Judge Stark agreed that the defendants are not estopped from asserting invalidity of claims that were not the subject of both an instituted IPR and a final written decision.