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Carnegie Mellon v. Marvell: After a $1 Billion Damage Award, Marvell Loses Motion to Compel Documents for Its Laches Defense Because It Waited Too Long to File and the Court Would Not Entertain Such “Wild Goose Chases” at This Late Juncture

Carnegie Mellon University (“CMU”) filed a patent infringement action against Marvell asserting that Marvell had infringed two of its patents. Two months after the jury returned a verdict in excess of $1 Billion, Marvell filed a motion to compel certain documents based on entries on CMU’s privilege log that it wanted to use in its laches defense. CMU objected that there was no good cause for the untimely discovery of privileged materials.

As explained by the district court, “Marvell requested that laches be presented to the jury on an advisory basis, and given the parties’ argument on same during the pretrial conference, the Court ordered further briefing on the issues in their trial briefs on November 20, 2012. (Docket Nos. 637, 645, at 54-56; 648 at 192, 230-31). On November 28, 2012, the Court held that as Marvell had not proffered specific evidence to demonstrate when CMU first became aware of Marvell’s infringement or what evidentiary or economic prejudice Marvell had allegedly sustained due to CMU’s alleged delays tot hat point, the issue was not appropriately ‘teed up’ for a decision by an advisory jury and would be decided by the Court in a subsequent proceeding.”

The district court subsequently entered a scheduling order for the post-trial motions. As part of the joint status report, Marvell stated it planned to bring a motion for judgment based on laches, but it did not request an evidentiary hearing on laches or further discovery.

The district court then noted that, “Motions to Compel filed after the discovery deadline are untimely and prohibited, absent good cause.”

The district court found that Marvell could not make a showing of good cause because it had waited too long to bring the motion to compel. “In denying this Motion, it is clear to the Court, as it should have been to Marvell, that any discovery on its laches defenses should have been completed well over 2 years ago. Marvell first presented its defense of laches in its first Answer on June 1, 2009. (Docket No. 13). Since that time, Marvell had over two years of discovery to compel these documents, as fact discovery on this case did not close until January 27, 2011.”

Indeed, the district court found that “[t]he defense of laches was not unbeknownst to Marvell or its counsel, as it first raised the defense in its Answer on June 1, 2009 and again in its amended Answer April 29, 2010. (Docket Nos. 13, 166). Now, nearly 4 years later, two years after the close of discovery, two months after trial, and in the middle of the post-trial briefing, Marvell requests to open up the legal files of CMU to find “possibly dispositive” laches evidence. (Docket No. 801). As of November 20, 2012, Marvell claimed to be prepared to submit the issue of laches to the jury, and there was no mention of additional discovery needed.”

Finally, the district court determined that the untimely request would delay the final adjudication and that would not be appropriate at this late juncture. “This untimely request would necessarily delay the Court’s final adjudication of this case. The Court has ordered a hearing on all arguments regarding post-trial motions on May 2, 2013, and it will not entertain such ‘wild goose chases’ at this late juncture.”

Carnegie Mellon University v. Marvell Technology Group, Ltd., Case No. 09-290 (W.D. Penn. Feb 28, 2013)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or