`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`CASE NO. 14cv2235 DMS (BLM)
`ORDER REQUESTING
`SUPPLEMENTAL BRIEFING
`
`Plaintiff,
`
`APPLE INC.,
`
`vs.
`WI-LAN, INC.,
`
`Defendant.
`
`Defendant’s motion to dismiss portions of Plaintiff’s Second Amended
`Complaint is currently pending before the Court. After further review of the parties’
`briefs and the legal authority cited therein, the Court requests supplemental briefing on
`the following issue: It appears unclean hands is generally asserted as an affirmative
`defense to a claim of patent infringement. That was the case in Reid-Ashman
`Manufacturing, Inc. v. Swanson Semiconductor Service, L.L.C., No. C-06-4693 JCS,
`2007 WL 1394427 (N.D. Cal. May 10, 2007), and Multimedia Patent Trust v. Apple
`Inc., No. 10-CV-2618-H (KSC), 2012 WL 6863471 (S.D. Cal. Nov. 9, 2012). If a party
`prevails on an unclean hands affirmative defense, the remedy appears to be dismissal
`of the patent infringement claim or judgment in that defendant’s favor, not a finding
`that the patent is unenforceable. In their briefing on the present motion, the parties rely
`on Reid-Ashman and Multimedia Patent Trust, which set out different standards for this
`affirmative defense, but they fail to cite any case law that supports Apple’s claim that
`the Court may declare the Patents in Suit unenforceable based on unclean hands, and
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`Case 3:14-cv-02235-DMS-BLM Document 86 Filed 11/26/14 Page 2 of 2
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`more specifically, that the Court may declare the Patent in Suit unenforceable based on
`the kind of conduct alleged in this case. Absent any such authority, Apple’s claim
`would be legally invalid, and thus subject to dismissal on that basis. Therefore, the
`Court requests supplemental briefing from the parties on whether Apple’s claim for a
`declaratory judgment of unenforceability based on unclean hands is legally cognizable
`in the first instance. The parties may submit supplemental briefs on this issue, of no
`more than five (5) pages, on or before December 5, 2014.
`IT IS SO ORDERED.
`DATED: November 26, 2014
`
`HON. DANA M. SABRAW
`United States District Judge
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