Lam Research Corporation v. Schunk Semiconductor et al

Filing 387

ORDER by Judge Edward M. Chen denying 331 Motion to Bifurcate; denying 346 Motion for Partial Summary Judgment; granting 348 Administrative Motion to File Under Seal (emclc2, COURT STAFF) (Filed on 8/22/2014)

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1 2 3 4 5 UNITED STATES DISTRICT COURT 6 NORTHERN DISTRICT OF CALIFORNIA 7 8 LAM RESEARCH CORPORATION, 9 Plaintiff, ORDER DENYING XYCARB'S MOTION TO BIFURCATE AND LAM'S MOTION FOR SUMMARY JUDGMENT v. 11 For the Northern District of California United States District Court 10 No. C-03-1335 EMC SCHUNK SEMICONDUCTOR, et al., 12 Defendants. ___________________________________/ (Docket Nos. 331, 346) 13 14 INTRODUCTION 15 Pending before the Court are Defendant Xycarb Ceramic’s (“Xycarb”) motion to bifurcate 16 this action into two trials – one for liability and one for damages – and Plaintiff Lam Research 17 Corporation’s (“Lam”) motion for partial summary judgment. The Court finds these motions 18 suitable for disposition without a hearing and therefore VACATES the hearings set for August 28, 19 2014 (Xycarb’s motion to bifurcate) and September 4, 2014 (Lam’s motion for partial summary 20 judgment). For the following reasons, the Court will DENY both motions. 21 22 23 DISCUSSION I. Xycarb’s Motion to Birfucate Trial into Liability and Damages Phases Is Denied Xycarb has moved to bifurcate the trial into separate liability and damage phases. Xycarb 24 contends that bifurcation will prevent juror confusion given the complicated nature of the damages 25 questions in this case. It further contends that because it is overwhelmingly likely to prevail on the 26 question of liability given this Court’s claim construction, bifurcation will likely eliminate the need 27 for a trial on damages and will allow the parties to avoid expense in preparing and presenting 28 evidence on damages. For the foregoing reasons, the motion to bifurcate is DENIED. 1 Federal Rule of Civil Procedure 42(b) provides that a court may “order a separate trial of one R. Civ. P. 42(b). Whether to grant bifurcation is left to the sound discretion of the district court. See 4 Hangarter v. Provident Life & Acc. Ins. Co., 373 F.3d 998, 1021 (9th Cir. 2004); Jinro Am. Inc. v. 5 Secure Investments, Inc., 272 F.3d 1289 (9th Cir. 2001). While patent cases frequently present 6 complicated liability and damages question, bifurcation in patent cases remains the exception rather 7 than the rule. See Mformation Techs., Inc. v. Research in Motion Ltd., C08-04990 JW, 2012 WL 8 1142537, at *1 n.6 (N.D. Cal. Mar. 29, 2012). In determining whether to bifurcate, courts consider a 9 number of factors, including whether bifurcation would promote “efficient judicial administration,” 10 promote convenience, simplify discovery or conserve resources, reduce the risk of juror confusion, 11 For the Northern District of California or more separate issues” for “convenience, to avoid prejudice, or to expedite and economize.” Fed. 3 United States District Court 2 and separability of the issues. See Medtronic Minimed Inc. v. Animas Corp., CV12-04471 RSWL 12 RZX, 2013 WL 3233341, at *1 (C.D. Cal. June 25, 2013); McDermott v. Potter, No. 08-03432 SI, 13 2010 WL 956808, at *1 (N.D. Cal. Mar. 12, 2010). 14 First, the Court finds that questions of liability and damages are not wholly separate 15 questions in this case. Lam has alleged that Xycarb’s infringement of the ‘456 patent was “willful, 16 wanton, deliberate, without license, and with full knowledge and awareness of [Lam’s] patent 17 rights.” Compl. ¶ 9 (Dkt. No. 1). Courts have recognized that questions of liability and damages 18 overlap to an extent where wilful infringement is alleged. For example, in Plew v. Limited Brands, 19 Inc., No. 08 Civ. 3741 (LTS) (MHD), 2012 WL 379933 (S.D.N.Y. Feb. 6, 2012), the court noted 20 that a “wilfulness determination is ‘inextricably bound to the facts underlying the infringement.’” 21 and that this factor weighed against granting bifurcation. Id. at *9 (quoting Computer Assoc. INt’l, 22 Inc. v., Inc., 247 F.R.D. 63, 67-68 (E.D.N.Y. 2007)); see also Trading Techs. Int’l, Inc. 23 v. eSpeed, Inc., 431 F. Supp. 2d 834, 841 (N.D. Ill. 2006) (“The need to consider all of the factors 24 implies that evidence of liability and wilfulness will likely overlap.”). 25 Second, Xycarb argues that it is “likely” that Xycarb will prevail on the question of liability. 26 Some courts have looked to the probability that a defendant would prevail on infringement in 27 determining whether bifurcation is appropriate. See, e.g., Real v. Bunn-O-Matic Corp., 195 F.R.D. 28 618, 622 (N.D. Ill.. 2000). In support of its contention that it will likely prevail, Xycarb points to the 2 asserted patents is the primary issue with respect to liability in this case.” Dkt. No. 272. In light of 3 this Court’s construction of the term “bonding” as excluding connections “maintained solely by 4 mechanical force,” Xycarb argues it is overwhelmingly likely to prevail at the liability phrase. The 5 Court cannot so conclude on this record. Lam contends that Xycarb’s product does not rely solely 6 on mechanical force for bonding, but rather employs a graphite slurry and seal that provides bonding 7 force. Xycarb’s opinion of the strength of its own case notwithstanding, it has not moved for 8 summary judgment on Lam’s theory and, as a result, there is no way for the Court to determine the 9 strength of Lam’s argument. Accordingly, this factor does not favor bifurcation. See Brown v. 10 Toscano, 630 F. Supp. 2d 1342, 1346 (S.D. Fla. 2008) (“Defendants did not proffer any facts or 11 For the Northern District of California fact that Lam, in its claim construction brief, stated that the “meaning of the word ‘bonding’ in the 2 United States District Court 1 explanation supporting their contention that they will likely prevail on the infringement issue . . . . 12 [T]he record now before the Court is simply inadequate for the Court to determine whether a finding 13 of infringement is likely. This factor, therefore, does not weigh in favor of bifurcation.”).1 14 Third, the Court finds that the risk of prejudice does not support bifurcation. Prejudice 15 comes in two forms – the risk of jury confusion on complex issues if bifurcation is denied and the 16 risk of considerable delay if bifurcation is denied. See Briggs & Stratton Corp. V. Chongging RATO 17 Power Co., Ltd., 5:13-CV-316 LEK/ATB, 2013 WL 5963151 (N.D.N.Y. Nov. 7, 2013). Here, the 18 Court finds that there is little risk of juror confusion given the nature of this case. Even granting that 19 there are complicated damage theories implicated (advanced market access, calculation of lost 20 profits where there are multiple potential causes, etc.), this is true in almost every patent case. See, 21 e.g., Real v. Bunn-O-Matic Corp., 195 F.R.D. 618 (N.D. Ill. 2000) (“Although Defendant claims that 22 complex damages calculations may be involved, there is no evidence to suggest that this 23 1 24 25 26 27 28 Conversely, Xycarb contends that bifurcation would be useful even if it were found to infringe Lam’s patents because the finding of infringement would aid settlement, thus obviating the need for the damages trial See General Patent Corp., Int’l v. Hayes Microcomputer Prods., No. SA CV 97-429-GLT, 1997 WL 770874, at *1 (C.D. Cal. Oct. 20, 1997) (“Conversely, if the patents are found valid and enforceable it will likely promote settlement of the action before trial on the infringement and damages issues.”). The Court is unwilling to bifurcate this action on the hope that this case would settle following the liability trial. Such a probability seems extraordinarily remote given that the conduct of the parties to date – for example, their recent failure to even agree on the date and time for a deposition – suggests an unwillingness or inability to work together. 3 1 computation is more unusual complex or complicated than the average patent case.”). For example, 2 in THK America, Inc. v. NSK, Ltd., 141 F.R.D. 463 (N.D. Ill. 1991), the district court denied 3 bifurcation despite the fact that the case raised a similar “accelerated market entry damages” theory. 4 See THK America, Inc. v. NSK, Ltd., 917 F. Supp. 563, 575 (N.D. Ill 1996). 5 Further, any complicated issues in the calculation fo damages is mitigated substantially by 6 the fact that this case involves allegations that a single defendant infringed a single patent in a single 7 product. These facts make this case quite different from cases where a significant risk of juror 8 confusion warranted bifurcation of damages and liability. Compare Real, 195 F.R.D. at 622 9 (rejecting bifurcation, in part, because “[t]his case involves only one patent and one allegedly infringing product” and involved “types of computations regularly performed in patent litigation”); 11 For the Northern District of California United States District Court 10 and Depomed Inc. v. Purdue Pharama L.P., CIV.A. 13-571 JAP, 2013 WL 6190380, *8 (D.N.J. 12 Nov. 26, 2013) (“In fact, unlike other patent cases which have been bifurcated, this case involves 13 only one defendant, Purdue, and a single infringing product.”); with British Telecomm’cn PLC v 14 Google Inc., CV 11-1249-LPS, 2013 WL 3814329 (D. Del. July 22, 2013) (“Bifurcation will reduce 15 the risk of juror confusion. This is a complicated case, involving multiple patents, a variety of 16 asserted claims, differing theories of infringement, and a wide range of accused products.”). 17 Finally, the Court finds that bifurcation would not aid judicial economy or convenience of 18 the parties. This infringement action has been proceeding in one form or another (and before one 19 forum and another) for over eleven years. Granting bifurcation at this late date would require this 20 court to calendar a second jury trial in what is already an impacted trial schedule – thus guaranteeing 21 yet more delay. See Toscano, 630 F. Supp. 2d at 1347 (“The Court finds that bifurcation of the 22 infringement issue and the proposed stay of all other discovery would only add unnecessary delay to 23 a case that has already been pending for more than two years.”). It is not in the interests of the Court 24 or the parties for the final resolution of this matter to be delayed any further. 25 The Court acknowledges the inherent complexities in the damages case the parties will need 26 to present to the jury. “In this case, as in most patent cases, there are good arguments on both sides 27 of the issue. On the bottom line, the court sees no compelling reason to deviate from the usual 28 practice and declines to bifurcate the trial.” Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., No. 4 1 IP96-1718-C-H/G, 2001 WL 699856, at *2 (S.D. Ind. May 31, 2001). Xycarb’s motion to bifurcate 2 is DENIED.2 3 II. 4 Lam Research's Motion for Partial Summary Judgment Is Denied In its motion for partial summary judgment, Lam argues that it is entitled to a judgment that 5 Claims 33 and 36 of US Reissue Patent 41,266 “both disclose and claim a shrink fit method of 6 bonding.” Dkt. No. 346, at 4. This motion is based entirely on the premise that the question of 7 whether Claims 33 and 36 disclose shrink fit as a bonding method is “undisputed” in light of 8 invalidity contentions propounded by Xycarb. Lam’s motion DENIED. 9 A. On December 10, 2010 – while this case was still before Judge Charles Breyer – counsel for 11 For the Northern District of California United States District Court 10 Background Xycarb propounded invalidity contentions to Lam. Dkt. No. 347-1. The actual contentions were 12 preceded by “General Reservations.” The General Reservations began: 13 Xycarb’s invalidity contentions are based on information obtained and considered by Xycarb to date. Xycarb’s discovery and investigation in connection with this lawsuit is continuing. Xycarb’s invalidity contentions are also based in part on its present understanding of the positions of plaintiff concerning the scope and implied construction of the claims of U.S. Reissue Patent No. RE 41,266 . . . . 14 15 16 17 Xycarb’s potential reliance on plaintiff’s contentions should not be seen as adoptions or admissions regarding the accuracy or scope of its infringement contentions, or the claim constructions they may suggest. 18 19 20 Id. at 3. Further, under the heading “Invalidity Under 35 U.S.C. § 112 (Patent L.R. 3-3(d))” Xycarb 21 stated: 22 The following contentions are subject to revision and amendment to the extent appropriate in light of further investigation and discovery . . . , the Court's construction of the claims at issue, and/or the review and analysis of expert witnesses. To the extent that the following contentions reflect constructions of claim limitations consistent with or implicit in plaintiff's Infringement Contentions, no inference is intended nor should any be drawn that Xycarb agrees with plaintiff's claim constructions, and Xycarb expressly reserves the right to contest such claim constructions. Xycarb offers such contentions in 23 24 25 26 27 2 28 Lam’s administrative motion to file the Declaration of Stuart Clark (Dkt. No. 348) under seal is GRANTED. 5 1 response to plaintiff's Infringement Contentions and without prejudice to any position Xycarb may ultimately take as to any claim construction issues. 2 3 Plaintiff asserts that the '266 reissue patent teaches "shrink fit" as a form of attachment . . . . 4 5 Id. at 15. In the contentions that followed, Xycarb made statements to the effect that Claims 33 and 6 36 of the patent disclosed “shrink fit.” For example, regarding Claim 33, the contentions state 7 “Although Claim 33 does not use the term 'shrink fit,' the description of Claim 33 matches the prior 8 clear disclosure of Refs. A and C.” Id. at 56. Similarly, for Claim 36, the contentions state, in 9 relevant part, “Claim 36 seeks to cover a 'shrink fit' bonding . . . of an electrode to its support ring.” Id. at 62. 11 For the Northern District of California United States District Court 10 Lam made no mention of these invalidity contentions (again, contentions which were 12 propounded in 2010) until after this Court's April 2014 claim construction order. On April 28, 2014, 13 Lam filed a motion for leave to file a motion for reconsideration of this Court's claim construction 14 ruling. Dkt. No. 310. In its reply brief in support of this motion, Lam argued that the above 15 “compelling admissions” by Xycarb in its invalidity contentions were “inconsistent with the 16 construction of bonding by the Court” and, therefore, had a “direct bearing on the Court's 17 construction.” Dkt. No. 313, at 4. In denying Lam leave to file a motion for reconsideration, the 18 Court rejected Lam's argument based on the invalidity contentions, stating: 19 20 21 22 23 24 Finally, the Court declines to consider the evidence Lam attaches to its reply to Xycarb's response to the Motion. Docket No. 313. The evidence contains statements made by Xycarb in its invalidity contentions. But there is no basis to consider this "evidence" presented for the first time in Lam's motion for reconsideration. Lam states that reconsideration is warranted under Local Rule 7-9(b)(1) due to a change in counsel and the multitude of documents. This does not meet the standard of Local Rule 7-9(b)(1) “that in the exercise of reasonable diligence the party applying for reconsideration did not know such fact . . . at the time of the interlocutory order.” Civ. L.R. 79(b)(1). Lam has long known of this contention. 25 Lam Research Corp. v. Schunk Semiconductor, C-03-1335 EMC, 2014 WL 1995799, at *2 (N.D. 26 Cal. May 15, 2014). 27 28 Unhappy with this denial, Lam has now filed a motion for summary judgment that takes the opinion that Xycarb's “admissions” not only have a “direct bearing” on claim construction in this 6 1 matter, but, in fact, entitle Lam to summary judgment on the question of whether Claims 33 and 36 2 of the '266 patent disclose and claim a "shrink fit" connection. Dkt. No. 346-1 (Lam's proposed 3 order concluding by stating "IT IS ORDERED THAT Lam's motion is GRANTED, and that partial 4 summary judgment is entered in favor of Lam that Claims 33 and 36 disclose and claim a connection 5 between the support ring and the electrode plate that comprises a shrink fit connection"). 6 B. 7 To begin, Lam's motion – while characterized as a “motion for partial summary judgment” – Discussion 8 is properly construed as either (1) a second motion for reconsideration of this Court’s claim 9 construction order or, perhaps, (2) a motion for reconsideration of the Court’s denial of the first motion for reconsideration. Either way, Civil Local Rule 7-9 articulates the standard for motions for 11 For the Northern District of California United States District Court 10 reconsideration – a standard the Court has previously found was not met by Lam’s recent discovery 12 of three-and-half year old invalidity contentions. Further, Local Rule 7-9(c) expressly prohibits 13 repetitive arguments from being raised in a motion for reconsideration. N.D. Cal. Local R. 7-9(c). 14 Lam seeks to escape this provision by stating: 15 16 17 18 Contrary to Xycarb’s argument, Civil L. R. 7-9(c) does not preclude Lam from making the argument that it has made in support of its summary judgment motion. As a careful reading of that rule makes apparent, it precludes only the inclusion in a motion for reconsideration of “argument made by the applying party in support or in opposition to the interlocutory order which the party seeks to have reconsidered.” Lam’s motion is for summary judgment, not reconsideration, and the local rule has no application. 19 Dkt. No. 373, at 10 (emphasis in original). Lam’s argument is unavailing. The Court will not exalt 20 form over substance and permit a party to circumvent the applicability of Local Rule 7-9 merely by 21 avoiding the “motion for reconsideration” label. Courts routinely look to the substance of the 22 motion rather than how it is styled in determining the standard to apply. See, e.g., Semiconductor 23 Energy Laboratory Co., Ltd. v. Chi Mei Optoelectronics Corp., No. C04-04675 MHP , 2006 WL 24 2130866 (N.D. Cal. July 27, 2006) (recognizing that party’s “motion for clarification” of a claim 25 construction order was “in substance, a motion for reconsideration” and could “be denied on that 26 27 28 7 1 basis alone”). Lam’s “summary judgment” motion raises identical arguments as those raised in the 2 original motion for reconsideration and is, therefore, clearly a motion for reconsideration itself.3 3 Nonetheless, the Court will consider the merits of Lam’s motion and deny it substantively. 4 First, the Court finds that the alleged “judicial admissions” – put in context – are not judicial 5 admissions at all. Judicial admissions are “‘formal admissions in the pleadings which have the 6 effect of withdrawing a fact from issue and dispensing wholly with the need for proof of the fact.’” 7 Am. Title Ins. Co. v. Lacelaw Corp., 861 F.2d 224, 226 (9th Cir. 1988) (quoting In re Fordson 8 Engineering Corp., 25 B.R. 506, 509 (Bankr. E.D. Mich. 1982) (emphases added)). “A judicial 9 admission must be deliberate, clear, and unambiguous.” Grandoe Corp. v. Gander Mountain Co., 11 For the Northern District of California United States District Court 10 — F.3d — , 2014 WL 3765572, at *5 (8th Cir. Aug. 1, 2014). To begin, the Court questions whether such statements are properly considered statements of 12 fact as opposed to statements of law or legal argument (which fall outside the concept of judicial 13 admissions). See, e.g., McNamara v. Picken, 950 F. Supp. 2d 125 (D.D.C. 2013) (“[I]t is well 14 established that judicial admissions on questions of law have no legal effect.” (citation omitted)). As 15 discussed more below, the scope and meaning of claim terms in a patent is a question of law. See 16 Interpols Network Inc. v. Aura Interactive, Inc., No. SACV 12-832 JVS (JPRx), 2014 WL 1246081 17 (C.D. Cal. Jan. 6, 2014) ("[T]he court must determine the scope and meaning of the patent claims 18 asserted – a question of law.”); see also Lighting Ballast Control LLC v. Philips Electronics N. Am. 19 Corp., 744 F.3d 1272, 1284 (Fed. Cir. 2014) (en banc) (“Claim construction is a legal statement of 20 the scope of the patent right . . . .”). As such, “construction of a patent, including terms of art within 21 its claim, is exclusively within the province of the court.” Markman v. Westview Instruments, Inc., 22 517 U.S. 370, 372 (1996). To claim that an alleged infringer’s unilateral statements in invalidity 23 contentions as to the scope of claim language constitutes a statement of fact is in tension with these 24 basic principles. At most, such statements appear to be no more than factual statements as to what 25 26 27 28 3 Lam’s reply appears to state that just as Xycarb moved for reconsideration of Judge Breyer’s claim construction ruling, so too, was Lam entitled to move for reconsideration of this Court’s claim construction. Lam is, of course, correct. What Lam is not permitted to do, however, is – after the Court has denied its motion for reconsideration – effectively move again for reconsideration on one of the grounds already rejected by the Court. 8 1 the alleged infringer believes the patent discloses or claims – not a statement of what the patent 2 actually discloses or claims. The Court notes that Lam has not cited any case in which a court 3 deemed statements of claim construction by a potential infringer (either in a claim construction brief 4 or in invalidity contentions) to be a “judicial admission.” 5 In addition, even if Xycarb’s statemetns were deemed to be “statements of fact,” the 6 contentions in question were preceded by substantial reservations (detailed above). These included 7 statements that Xycarb’s contentions were based, in part, on its understanding of Lam’s 8 construction. Further, the reservations indicated that the contentions were (1) not admissions that 9 Lam’s constructions of the claims/terms were correct, (2) subject to change based on further discovery and investigation; and (3) made without prejudice to Xycarb’s ultimate claim construction 11 For the Northern District of California United States District Court 10 arguments. Additionally, the invalidity contentions were made in 2010 – when the controlling claim 12 construction at the time by Judge Breyer did, in fact, hold that the ‘266 patent described and 13 disclosed shrink fit. Xycarb’s utilization of the Court’s prior claim construction and Lam’s own 14 construction positions in its invalidity contentions is hardly a deliberate, clear, or unambiguous 15 “judicial admission,” particularly in light of the unambiguous reservations preceding the 16 contentions. 17 Second, and more significant, even if the Court were to accept Lam’s position: (1) that 18 Xycarb’s invalidity contentions are “judicial admissions” and (2) as a result of those admissions it 19 was/is “undisputed” between the parties that Claims 33 and 36 disclose a “shrink fit” method of 20 bonding, Lam would not be entitled to summary judgment, let alone reconsideration. The 21 construction and scope of a claim term is a question of law to be determined by the Court. See, e.g., 22 Interspiro USA, Inc. v. Figgie Int’l, Inc., 815 F. Supp. 1488, 1503 (D. Del. 1993) (“The construction 23 of the claims and their scope are questions of law.”); see also Markman v. Westview Instruments, 24 Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (“[T]he interpretation and construction of claims, which 25 define the scope of the patentee’s rights under the patent, is a matter exclusively for the court.”). In 26 exercising its claim construction duty, the Court has “an independent obligation to determine the 27 meaning of the claims, notwithstanding the views asserted by the adversary parties.” Exxon 28 Chemical Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995) (emphasis added). 9 1 In light of this, courts have recognized that in determining the scope and construction of a 2 given claim, “the Court is not required to adopt a construction of a term, even if the parties have 3 stipulated to it.” Boston Scientific Corp. v. Micrus Corp., 556 F. Supp. 2d 1045, 1051 (N.D. Cal. 4 2008) (emphasis added); see also Procter & Gamble Co. v. CAO Group, Inc., No. 1:13-cv-337, 2014 5 WL 2117047, at *2 (S.D. Ohio May 21, 2014) (same); Core Optical Techs., LLC v. Ciena Corp., 6 No. SACV 12-1872 AG (JPRx), 2013 WL 8719137, at *5 (C.D. Cal. Oct. 25, 2013) (“District courts 7 are not bound by claim construction stipulations.”); Cross Atlantic Capital Ptnrs, Inc. v. Facebook, 8 Inc., No. 07-2768, 2011 WL 941870, at *9 (E.D. Pa. Mar. 17, 2011) (“In exercising this obligation, 9 district courts are not bound by the stipulation of parties concerning claim terms.”); Ideal Instruments, Inc. v. Rivard Instruments, Inc., 498 F. Supp. 2d 1131, 1184 (N.D. Iowa 2007) (stating 11 For the Northern District of California United States District Court 10 that “[t]he court believes . . . that its independent obligation to construe patent claim terms includes 12 construction of terms for which the parties have agreed on a construction” and refusing to accept 13 some of the parties agreed constructions); Ultadent Prods., Inc. v. Hayman, No. CV-00-13402 MRP 14 (CTx), 2002 WL 34477127 (C.D. Cal. Jan. 11, 2002) (“Both parties suggest that the neutralization 15 must result from the addition of a base. However, because claim construction is exclusively a 16 question of law, this court is not required to accept such shared aspects of the parties’ 17 interpretations.” (citation omitted)). 18 Directly contradicting the above case law, Lam asserts that Xycarb’s invalidity contentions 19 rendered Claims 33 and 36 “not amenable to construction by the court” and that a “court will not 20 construe claims that are undisputed.” Dkt. No. 373, at 12. However, the two Federal Circuit cases 21 cited by Lam do not support this conclusion.. First, Lam cites Phillips v. AWH Corp., 415 F.3d 1303 22 (Fed. Cir.2005) for the proposition that where a term is undisputed “the court will accept that 23 stipulation and apply that meaning.” Dkt. No. 373, at 11. However, all that case indicates is that the 24 parties in that case had stipulated to a dictionary definition of a part of a term – it does not suggest, 25 imply, or support a holding that a Court is required to accept a stipulated meaning of a term. 26 Second, Lam cites United Food Systems, Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341 (Fed. Cir. 2004), 27 28 10 1 rev’d 546 U.S. 394 (2006),4 where the court stated “We doubt . . . that a district court is obliged to 2 construe undisputed claim terms prior to issuing a summary judgment of invalidity.” Id. at 1350. 3 These cases do not aid Lam – that a district court is not obligated to construe an undisputed 4 claim term does not mean a court may not construe the term if it deems, pursuant to its independent 5 obligation, that construction is required. See TransAmerica Life Ins. Co. v. Lincoln Nat’l Life Ins. 6 Co., 550 F. Supp. 2d 865, 904-05 (N.D. Iowa 2008) (“In performing that independent obligation, 7 this court has not hesitated to reject agreed constructions that the court found included inapposite, 8 inaccurate, or confusing language, and to accept only constructions that were well-supported by the 9 intrinsic evidence.”). In fact, in Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364 (Fed. Cir. 2005), the Federal Circuit stated that the appellant had “not identified any legal doctrines that would 11 For the Northern District of California United States District Court 10 compel us to adopt the stipulated construction” and then concluded that the “stipulation [did] not 12 define the scope of the invention” claimed in that case. Id. at 1376. 13 In this case, the Court – in keeping with its independent obligation to construe the patent 14 claim terms at issue in this case – concluded that “Claim 33 does not disclose shrink fit, because the 15 compressive force it discloses is pre-stress, which entails bonding material to bond the support ring 16 to the electrode plate, not shrink fitting.” Lam Research Corp. v. Schunk Semiconductor, No. 03- 17 1335 EMC, 2014 WL 1364980, at *16 (N.D. Cal. Apr. 7, 2014).5 The Court’s determination was 18 based on prosecution history, the specification, and other claims – all intrinsic evidence properly 19 relied on during claim construction. See Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. 20 Cir. 2014). Even if the Court had been provided with Xycarb’s invalidity contentions during claim 21 construction, this extrinsic “evidence” would not have altered the Court’s claim construction 22 decision. See Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 717 (Fed. Cir. 1998) (“What is 23 4 24 25 26 27 28 The Court begins by noting that this decision was reversed by the United States Supreme Court – a fact that Lam failed to note in any way when it cited the case. 5 Confusingly, Lam’s motion and reply contend that “the Court’s claim construction did not construe Claim 33 or Claim 36.” This is false. Not only did the Court clearly construe Claim 33, as the quote above demonstrates, it was construed in a way that expressly found it does not disclose shrink fitting. See also id. at 14 (heading, in bold, providing that “Claims 32 and 33 Require a Bonding Layer”). Claim 36, in turn, is a dependent claim that entirely incorporates the relevant portions of Claim 33. Claim 36 provides, in full: “An electrode assembly formed by the method of claim 33.” 11 1 disapproved of is an attempt to use extrinsic evidence to arrive at a claim construction that is clearly 2 at odds with the claim construction mandated by the claims themselves, the written description, and 3 the prosecution history, in other words, with the written record of the patent.”). 4 Accordingly, even addressing the merits of Lam’s second motion for reconsideration, the 5 Court concludes that Xycarb’s invalidity contentions have no impact on this Court’s claim 6 construction in this matter. For the reasons stated above, the motion, styled as a “motion for partial 7 summary judgment,” is DENIED. Xycarb's motion for attorneys' fees is DENIED. 8 CONCLUSION 9 For the foregoing reasons, the Court finds that neither bifurcation nor partial summary judgment is appropriate. Accordingly, Xycarb’s and Lam Research’s respective motions are 11 For the Northern District of California United States District Court 10 DENIED. 12 This order disposes of docket numbers 331, 346, and 348. 13 14 IT IS SO ORDERED 15 16 Dated: August 22, 2014 17 _________________________ EDWARD M. CHEN United States District Judge 18 19 20 21 22 23 24 25 26 27 28 12

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