Infineon Technologies AG v. Volterra Semiconductor Corporation

Filing 286

REDACTED PUBLIC VERSION OF ORDER 275 by Magistrate Judge Donna M. Ryu filed on July 8, 2013 granting 241 Motion for Leave to Amend and granting in part 244 Motion to Strike. (dmrlc2, COURT STAFF) (Filed on 7/31/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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For the Northern District of California

United States District Court

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INFINEON TECHNOLOGIES AG,

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No. C-11-06239 MMC (DMR)
ORDER GRANTING PLAINTIFF’S
MOTION FOR LEAVE TO AMEND
INFRINGEMENT CONTENTIONS
[DOCKET NO. 241] AND GRANTING IN
PART DEFENDANT’S MOTION TO
STRIKE [DOCKET NO. 244]

Plaintiff(s),
v.

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VOLTERRA SEMICONDUCTOR,

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Defendant(s).
___________________________________/

Public Version

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Plaintiff Infineon Technologies AG filed a motion for leave to amend its infringement

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contentions to add three accused products to its patent infringement case against Defendant Volterra

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Semiconductor. [Docket No. 241.]

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Infringement Contentions (“TAICs”). [Docket No. 244.] For the reasons stated below and during

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the June 27, 2013 hearing, the motion for leave to add the new models is granted and the motion to

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strike the TAICs is granted in part and denied in part.

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Volterra filed a motion to strike Plaintiff’s Third Amended

I. BACKGROUND AND PROCEDURAL HISTORY
This case has already involved several rounds of litigation on the issue of Plaintiff’s
infringement contentions.

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Plaintiff filed suit on January 21, 2010 and amended its complaint on May 18, 2012.

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[Docket Nos. 1, 86.] On June 4, 2012, Plaintiff served its Initial Infringement Contentions (“IICs”).

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Volterra filed a motion to strike the IICs. [Docket No. 96.] The court denied the motion without

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the ’730 patent. The court also held that Plaintiff would be permitted to amend its infringement

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contentions to specifically name other Volterra products beyond the fifteen model numbers in the

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Second Amended Complaint only if Plaintiff could demonstrate that it could not have identified the

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newly named products absent discovery when it served its initial infringement contentions. The

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court ordered Plaintiff to serve Second Amended Infringement Contentions (“SAICs”) by November

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2, 2012, which Plaintiff did.

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However, the SAICs suffered from the same problem: they remained unclear as to which

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structure(s) in the VT1195SFQ product Plaintiff contended met the limitations in Claim 1 of the

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’730 patent. Order on Motion to Strike SAICs [Docket No. 193]. Following a hearing, the court
ordered Plaintiff to serve Volterra with its Third Amended Infringement Contentions (“TAICs”) by

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For the Northern District of California

United States District Court

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February 14, 2013. After Plaintiff served the TAICs, Volterra filed a motion to strike the TAICs on

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the same basis. [Docket No. 209.] Around the same time, Plaintiff sought leave of court to add

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three additional model numbers—the VT1626SFQ, VT1526SFQ, and VT1676SFQ—to its

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infringement contentions.3 [Docket No. 199 at 8.]

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II. Plaintiff’s Motion for Leave to Amend

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At the June 27, 2013 hearing, Volterra opted to withdraw its opposition to Plaintiff’s motion

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for leave to amend. Accordingly, the motion for leave to amend is granted. Plaintiff may amend its

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infringement contentions to include the following three products: the VT1626SFQ, VT1526SFQ,

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and VT1676SFQ.

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III. Defendant’s Motion to Strike the TAICs

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therewith,
a plurality of second metal conductors coupled to the second semiconductor
region, each of the plurality of second metal conductors having at least one bump in
contact therewith, and
a frame formed of high conductivity material, the frame comprising a plurality
of first connection portions for connecting to the at least one bumps of the first metal
conductors and a plurality of second connection portions for connecting to the at least
one bumps of the second metal conductors, the frame providing external connections to
the semiconductor regions of the device.
Second Amended Complaint Ex. A (’730 Patent) at 9.
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The parties engaged in limited discovery relevant to the motion for leave to amend, resulting
in another discovery dispute and order. [Docket No. 232.]

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alternative theory of literal infringement might describe the “plurality of [] metal conductors”

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limitations as being met by the

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Parties are directed to meet and confer to ensure that the

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alternative theories of literal infringement, if there are any, are appropriately specific. Plaintiff is

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also granted leave to amend its DOE arguments, e.g., to restate what was presented as a DOE

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argument in the TAICs as an alternative theory of literal infringement, or to revise the language of

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the DOE arguments so they are consistent with the revised language in the literal infringement

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contention(s). However, Plaintiff may not add new theories of infringement that did not appear

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(either as a literal infringement theory or an argument for infringement under the DOE) in the
TAICs.

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For the Northern District of California

United States District Court

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C. Dependent Claims (Claims 2-8)

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Volterra initially argued that some of Plaintiff’s infringement contentions with respect to the

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dependent claims of the ’730 patent (Claims 2-8) were inadequate and unclear. However in the

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reply brief and at the hearing, Volterra conceded that “Infineon has now offered to make certain

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changes which help to clarify certain minor deficiencies in the TAICs.”9 Reply [Docket No. 257] at

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10. Plaintiff is granted leave to amend its infringement contentions to make these clarifications.

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Volterra’s counsel conceded at the hearing that all but one of its remaining concerns about

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the infringement contentions on Claims 2-8 would be resolved through Plaintiff’s clarification of

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its contentions with respect to Claim 1 as described above. Volterra’s outstanding concern is that

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Plaintiff did not explicitly assert infringement under the DOE on Claims 6-8. Plaintiff has offered

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to amend its infringement contentions to explicitly state that “The Accused Products infringe

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Claims 6-8 under the doctrine of equivalents to the extent that they meet the ‘metal conductor,’

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‘bumps,’ and ‘in contact’ elements of Claims 1 and 5 under the doctrine of equivalents. The

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doctrine of equivalents arguments for these elements are explained in the chart for Claim 1.”

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See supra n. 6.

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Those “minor deficiencies” are described in pages 16-18 of Plaintiff’s Opposition to the
Motion to Strike the TAICs [Docket No. 251]. In one, Plaintiff unintentionally omitted a word, and has
proposed adding it back in. In another, Plaintiff has proposed clarifying that the structures described
in Claim 2 refer to the structures defined in Claim 1.

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product is adequately representative of all of the accused products, and Volterra’s motion to strike

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is denied in this respect.

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IV. CONCLUSION

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For the reasons stated above, Plaintiff’s motion for leave to amend the infringement

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contentions to add three new products is granted, and Volterra’s motion to strike the TAICs is

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granted in part and denied in part. The parties are directed to meet and confer regarding the issues

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raised at the hearing and in this order. Plaintiff is granted leave to amend its infringement

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contentions only to bring them in conformity with this order. Plaintiff must serve its amended

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infringement contentions by August 2, 2013.

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For the Northern District of California

United States District Court

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IT IS SO ORDERED.

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Dated: July 8, 2013
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DONNA M. RYU
United States Magistrate Judge

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