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Judge Pollak Finds 45 Days Is Not Untimely for Supplemental Infringement Contentions

On June 7, 2018, United States Magistrate Judge Cheryl L. Pollak (E.D.N.Y.) denied a motion by defendants—Quest USA Corp. (“Quest”) and Isaac Srour—to strike supplemental infringement contentions submitted by plaintiff PopSockets LLC (“PopSockets”).

PopSockets manufactures “grips and clip accessories” for handheld electronic devices including smartphones.  It initiated this action on June 16, 2017 and filed an amended complaint on September 1, 2017, alleging, among other things, that Quest’s “SpinPop” and “SpinClip” infringed U.S. Patent No. 8,560,031 (the “‘031 Patent”).

On December 8, 2017, PopSockets filed its initial infringement contentions, asserting that Quest had infringed Claims 9-11, 16, and 17 of the ‘031 Patent.  Quest then filed a petition with the Patent Trial and Appeal Board seeking inter partes review (“IPR”) to invalidate the claims asserted in PopSockets’ initial infringement contentions.  On January 31, 2018, PopSockets filed supplemental infringement contentions, asserting that Quest’s products also infringed Claims 1-3 and 6 of the ‘031 Patent.

On February 28, 2018, Defendants moved to strike PopSockets’ Supplemental Infringement Contentions, arguing that PopSockets was not diligent in filing them and failed to get the court’s permission first, and that Defendants would be unfairly prejudiced because they had already filed their IPR petition.  The court rejected Defendants’ arguments, first noting that its scheduling order did not address (or set a deadline for) supplemental infringement contentions, and that Federal Rule of Civil Procedure 26(e) only requires that a party supplement its initial disclosures “in a timely manner.”   The court found that 45 days between PopSockets’ submissions was timely in this case.  Further, the court noted that Defendants had a year from when the action was initiated to file a second IPR seeking review of the claims addressed by the supplemental infringement contentions, so Defendants had suffered no prejudice.

Case:  PopSockets LLC v. Quest USA Corp., 17-CV-3653 (FB) (CLP), Dkt. No. 77 (E.D.N.Y. June 7, 2018).