By Memorandum Opinion entered by The Honorable Sue L. Robinson in Acceleron, LLC v. Hewlett-Packard Co. and Intel Corp., C.A. No. 10-128-SLR (D.Del., December 16, 2010), the Court denied the motion of plaintiff Acceleron, LLC (“Acceleron”) seeking to complete discovery pursuant to Federal Rule of Civil Procedure 56(f). Id. at 7. In denying the motion, the Court concluded that additional discovery pursuant to Rule 56(f) was not justified “because Acceleron failed to diligently pursue the discovery necessary to prove the elements of the claims asserted in its complaint during the fact discovery period.” Id. at 5.

A complete copy of the Memorandum Opinion is attached.

By way of background, Acceleron initially filed the action in the United States District Court for the Eastern District of Texas claiming infringement of U.S. Patent No. 6,948,021 (“the ‘021 patent”) against Hewlett-Packard and Intel. Hewlett Packard and Intel’s answers and counterclaims to Acceleron’s complaint included defenses and counterclaims of non-infringement and invalidity. Id. at 1. Discovery began in the case in March 2009 when a discovery order was entered by the Eastern District of Texas and, in July 2009, defendants produced a substantial amount of discovery in response to Acceleron’s discovery requests. Id. In February 2010, after the case was transferred to the District of Delaware, Acceleron served additional discovery requests on defendants, including requests for information regarding sales, customer communications and other customer data. By early April 2010, defendants objected to those discovery requests served by Acceleron on grounds that the requests related to damages and were irrelevant during the liability phase of the bifurcated proceeding. Id. at 1-2.

On April 23, 2010, the Court held a discovery conference to determine how to narrow the scope of Acceleron’s additional discovery requests. Following the discovery conference, Acceleron narrowed those discovery requests. Id. at 3. During a follow-up hearing on May 3, 2010, counsel for Acceleron informed the Court that all but one outstanding discovery issue with defendants (which was unrelated to the dispute at issue in this opinion) had been resolved. Id.

On the last of fact discovery, Hewlett-Packard produced seven Excel documents containing raw configuration data from its configuration to order system showing the system configurations purchased by customers. Thereafter, in October 2010, defendants submitted their expert reports, which considered the configuration data of the accused products and concluded that not all of the accused systems were sold with components required by Acceleron’s claim construction. Id. Subsequently, defendants filed their motions for summary judgment of non-infringement. Id.

In response to defendants’ motions for summary judgment of non-infringement, Acceleron moved to complete Rule 56(f) discovery and to compel additional discovery concerning customer data, contending that defendants prevented Acceleron from obtaining discovery regarding customer configurations of the accused products. Id. Under Rule 56(f), if a party opposing a motion for summary judgment “shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may: (1) defer considering the motion or deny it; (2) order a continuance to enable affidavits to be obtained, depositions to be taken, or other discovery to be undertaken; or (3) issue any other just order.” Fed. R. Civ. P. 56(f).

In response to Acceleron’s motion, defendants contended that Acceleron was not entitled to Rule 56(f) discovery because, among other things, (1) Acceleron failed to seek the requested information during the fact discovery period, (2) a significant number of marketing and sales documents were produced to Acceleron during discovery and defendants believed that all discovery objections had been resolved, (3) most of the information sought by Acceleron through its Rule 56(f) discovery request was possessed by third party customers and distributors, and (4) the information sought by Acceleron was irrelevant to, at least, Hewlett-Packard’s non-infringement claims because they do not rely on customer data. Id. at 5.

In analyzing Acceleron’s motion and concluding that additional discovery under Rule 56(f) was not justified, the Court noted that Acceleron’s complaint set forth claims for inducement of infringement and contributory infringement. The Court emphasized that, as the patent owner, Acceleron, bore the burden of proving infringement by a preponderance of the evidence. Id. at 5-6. The Court found that, it is well established, that “inducement of infringement requires proof ‘that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.’” The Court also found that contributory infringement requires “proof of defendant’s knowledge that the combination for which the components were especially made was both patented and infringing, and that defendant’s components have no substantial non-infringing uses.” Id. at 6.

Ultimately, the Court was not persuaded that Acceleron was unaware of its burden to prove infringing customer configurations until defendants filed their motions for summary judgment on non-infringement and, thus, concluded that Acceleron failed to diligently pursue the discovery necessary to prove the elements of its claim during the discovery period. Id. at 5-7. Accordingly, the Court refused to reopen fact discovery.