Richtek Technology Corporation et al v. uPI Semiconductor Corporation et al

Filing 522


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1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 11 For the Northern District of California United States District Court 10 RICHTEK TECHNOLOGY CORPORATION, Plaintiff, 12 13 14 15 16 No. C 09-05659 WHA v. ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS AND VACATING HEARING uPI SEMICONDUCTOR CORPORATION, AMANDA DAI, and JACKY LEE, Defendants. / 17 18 19 INTRODUCTION In this patent infringement action, plaintiff seeks to amend its infringement contentions 20 to assert an earlier priority date, to supplement its disclosure of its own products that 21 purportedly practice the asserted claims, and to delete contentions about dismissed defendants. 22 For the reasons stated below, plaintiff’s motion is GRANTED IN PART AND DENIED IN PART. 23 STATEMENT 24 Plaintiff Richtek Technology Corporation owns U.S. Patent No. 7,315,190, which 25 covers technology used in direct-current-to-direct-current (DC-DC) power controllers. Richtek 26 accuses defendant uPI Semiconductor Corporation of developing, marketing, and selling 27 products that practice the ’190 patent. The application for the ’190 patent was filed in June 28 2006, and identified Isaac Chen as the inventor. 1 Richtek commenced this action in December 2009 and filed a complaint before the 2 International Trade Commission, also asserting infringement of the ’190 patent, the same day. 3 This action languished pending conclusion of the ITC investigation. At his deposition in 4 connection with the ITC investigation, Chen testified that he conceived of the invention in April 5 2006. 6 In November 2010, Richtek served its initial disclosure of asserted claims and 7 infringement contentions in this action pursuant to the Patent Local Rules. In that disclosure, 8 Richtek identified June 16, 2006 — the date of the filing of the application of the ’190 patent — 9 as the priority date. Our case further languished pending reexamination of the ’190 patent before the United 11 For the Northern District of California United States District Court 10 States Patent and Trademark Office. There, Richtek disclosed interpretations of various claim 12 limitations, which led uPI to identify several new prior art references. In June 2016 (after the 13 stay in this action had been lifted), an order granted uPI’s request for leave to amend its 14 invalidity contentions to address the new references. The parties have deemed all discovery 15 from the ITC investigation produced in this action (Dkt. No. 473). 16 Fact discovery closes in this action on August 31. On July 14, Richtek sought leave to 17 amend its infringement contentions in three ways: (i) to delete contentions about dismissed 18 defendants, (ii) to assert an earlier priority date for the ’190 patent, and (iii) to supplement it 19 disclosure of its own products that practice the asserted claims. uPI opposes this motion as to 20 the first two proposed amendments. This order follows full briefing. 21 22 ANALYSIS Patent Local Rule 3-6 provides that a party may amend its infringement contentions 23 “upon a timely showing of good cause.” Our patent local rules were adopted “in order to give 24 claim charts more ‘bite.’ The rules are designed to require parties to crystallize their theories of 25 the case early in the litigation and to adhere to those theories once they have been disclosed.” 26 Atmel Corp. v. Info. Storage Devices, Inc., No. 95-1987, 1998 WL 775115, at *2 (N.D. Cal. 27 Nov. 5, 1998) (Judge Fern M. Smith). The increased scrutiny applied to requests to amend 28 infringement contentions as compared to requests to amend other pleadings is to prevent a 2 “straitjacket into which litigants are locked from the moment their contentions are served.” 3 Comcast Cable Communications Corp., LLC v. Finisar Corp., No. 06-04206, 2007 WL 716131, 4 at *2 (N.D. Cal. Mar. 2, 2007). Rather there must be some “balance between the right to 5 develop new information in discovery with the need for certainty as to the legal theories.” O2 6 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). The 7 parties herein agree that good cause under the patent local rules is subject to a two-part inquiry, 8 which considers whether: (i) the moving party has shown diligence in amending its 9 contentions, and (ii) the non-moving party will not suffer undue prejudice. Acer, Inc. v. Tech. 10 Props. Ltd., No. 08-877, 2010 WL 36118687, at *4 (N.D. Cal. Sept. 10, 2010) (Judge Jeremy 11 For the Northern District of California “shifting sands” approach to patent litigation. Ibid. Nevertheless, the rules are not a 2 United States District Court 1 Fogel). 12 This order addresses each of Richtek’s proposed amendments in turn. 13 1. 14 Richtek seeks to amend its disclosure of the priority date of the ’190 patent to claim a 15 priority date of April 2006 (without specifying which date in April). It contends this priority 16 date only became relevant after uPI successfully moved to amend its invalidity contentions to 17 address prior art from June 2006, but it offers no explanation of why it failed to assert this 18 earlier date at the outset of this action. Richtek simply argues that uPI cannot be prejudiced by 19 this belated disclosure because it knew that Chen testified to a conception date of April 2006 20 based on his deposition testimony in the ITC investigation. 21 ASSERTING EARLIER PRIORITY DATE. Although this order does not accept Richtek’s assertion that defendants would not be 22 prejudiced by this belated shift in the sands of the litigation, Richtek’s attempt to show the 23 absence of such prejudice only highlights its lack of diligence. If uPI can be charged with 24 knowledge that Richtek would claim an April 2006 priority date in this action based on Chen’s 25 testimony in the ITC investigation, a fortiori, Richtek could have formalized that assertion in its 26 very first infringement contentions. 27 Richtek’s argument that the earlier conception date only became relevant when uPI was 28 given leave to amend its invalidity contentions to assert prior art from June 2006 is unavailing. 3 1 The patent local rules contemplate a specific sequence of disclosures — the patent owner must 2 produce or make available all documents evidencing a conception date prior to the date of the 3 application for the patent, and the accused infringer then discloses its invalidity theories. 4 Compare Patent L.R. 3-2(b) with Patent L.R. 3-3. Of course, some flexibility is necessary when 5 supported by good cause, but Richtek’s failure to disclose its April 2006 priority date at the 6 outset is simply the result of a complete dearth of diligence, not good cause. Thus, Richtek’s 7 motion is DENIED as to the priority date. 8 2. 9 Patent Local Rule 3-1(g) requires a party asserting patent infringement to disclose its 11 For the Northern District of California United States District Court 10 12 13 14 15 IDENTIFYING ADDITIONAL RICHTEK PRODUCTS. own products that it contends practice the products at issue as follows: If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act or other instrumentality that incorporates or reflects that particular claim. Richtek seeks to amend its infringement contentions to identify five additional products 16 that Richtek itself manufactured and sold and that it contends practiced the asserted patents. 17 Richtek’s motion offers no description of the products, fails to identify their release date, and 18 does not even pay lip service to the requirement to seek this amendment diligently. Richtek 19 merely asserts that it is “obliged to supplement its disclosures,” although the Patent Local Rule 20 3-1(g) does not require identification of all products that practice the patent. Rather, it requires 21 disclosure only if the patent owner “wishes to preserve the right to rely” on the assertion that 22 the product practices the patent. 23 Richtek also offers no explanation of what purpose this additional disclosure would 24 serve or how it intends to rely on these products in this case. Instead, Richtek merely asserts 25 that the patent local rules do not require it to identify the purpose of the disclosure. Richtek’s 26 argument ignores, however, the fact that it must show good cause to support its request for leave 27 to amend its disclosure. This is especially so in light of its utter lack of diligence in seeking this 28 amendment just more than a month before the close of discovery. Thus, Richtek’s motion to 4 1 belatedly amend its infringement contentions to identify more of its own products that 2 purportedly practice the patent is DENIED. REMOVING CONTENTIONS ABOUT DISMISSED DEFENDANTS. 3 3. 4 Defendants do not oppose Richtek’s request to delete infringement contentions 5 pertaining to defendants that have been dismissed following a settlement conference. There can 6 be no prejudice to either side inasmuch as this amendment would simplify Richtek’s 7 infringement contentions such that they address only those issues actually in contention in this 8 action. Richtek acted diligently by bringing his motion less than one month after the last of the 9 settling defendants was dismissed from the action. Thus, Richtek’s motion to remove contentions pertaining to dismissed defendants is GRANTED. 11 For the Northern District of California United States District Court 10 12 CONCLUSION For the reasons stated above, Richtek’s motion is GRANTED as to its request to delete 13 infringement contentions related to dismissed defendants but otherwise DENIED. The hearing 14 scheduled for AUGUST 18 is hereby VACATED. 15 16 IT IS SO ORDERED. 17 18 Dated: August 15, 2016. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 19 20 21 22 23 24 25 26 27 28 5

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