Cypress Semiconductor Corporation v. GSI Technology, Inc.

Filing 25

ORDER re 23 Joint Case Management Statement filed by Cypress Semiconductor Corporation. Tutorial set for 4/15/2014 at 1:30 PM in Courtroom 9, 19th Floor, San Francisco. Claims Construction Hearing set for 4/29/2014 at 9:30 AM. Signed by Judge Jon S. Tigar on August 20, 2013. (wsn, COURT STAFF) (Filed on 8/20/2013)

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FRANK E. SCHERKENBACH
(Bar No. 142549 / [e-mail])
FISH & RICHARDSON P.C.
1 Marina Park Drive
Boston, MA 02210
Telephone: [phone]
Facsimile: [phone]
THOMAS L. HALKOWSKI
(admitted pro hac vice / [e-mail])
FISH & RICHARDSON P.C.
222 Delaware Avenue, 17th Floor
Post Office Box 1114
Wilmington, DE 19899-1114
Telephone: [phone]
Facsimile: [phone]

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ERIN C. JONES
(Bar No. 252947 / [e-mail])
FISH & RICHARDSON P.C.
500 Arguello Street, Suite 500
Redwood City, California 94070-1526
Telephone: [phone]
Facsimile: [phone]

MARK FOWLER (Bar No. 124235)
[e-mail]
GERALD T. SEKIMURA (Bar No. 096165)
[e-mail]
ANDREW P. VALENTINE (Bar No. 162094)
[e-mail]
ALAN LIMBACH (Bar No. 173059)
[e-mail]
TIMOTHY LOHSE (Bar No. 177230)
[e-mail]
MICHAEL G. SCHWARTZ (Bar No. 197010)
[e-mail]
BRENT YAMASHITA (Bar No. 206890)
[e-mail]
SAORI KAJI (Bar No. 260392)
[e-mail]
DLA PIPER LLP (US)
2000 University Avenue
East Palo Alto, CA 94303-2214
Tel: [phone]
Fax: [phone]

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BRYAN A. BLUMENKOPF
(Bar No. 286266 / [e-mail])
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, California 92130
Telephone: [phone]
Facsimile: [phone]

Attorneys for Defendant
GSI TECHNOLOGY, INC.

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Attorneys for Plaintiff
CYPRESS SEMICONDUCTOR
CORPORATION

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN FRANCISCO DIVISION
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CYPRESS SEMICONDUCTOR
CORPORATION,

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Plaintiff,
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v.
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GSI TECHNOLOGY, INC.,

Case No. 3:13-cv-02013-JST
AMENDED JOINT CASE
MANAGEMENT STATEMENT AND
[PROPOSED] ORDER, RULE 26(f)
REPORT, and STIPULATION RE
CONSOLIDATION WITH MINNESOTA
LAWSUIT

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Defendant.
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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

Pursuant to Federal Rule of Civil Procedure (“Fed. R. Civ. P.”) 26(f), Civil Local Rule 16-

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9(a), Patent Local Rule 2-1(a), ADR Local Rule 3-5, Standing Order for All Judges of the Northern

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District of California, the Guidelines Relating to the Discovery of Electronically Stored Information

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(“ESI Guidelines”), Standing Order for All Civil Cases Before District Judge Jon S. Tigar, this

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Court‟s May 1, 2013 Clerk‟s Notice of Setting Case Management Conference, and rulings made

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during the July 31, 2013, Case Management Conference for this matter, Plaintiff Cypress

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Semiconductor Corp. (“Cypress”) and Defendant GSI Technology, Inc. (“GSI”) have conferred

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through their respective legal counsel and jointly submit this Case Management Statement and

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proposed Order under Civil Local Rule 16-9(a).

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I.

JURISDICTION AND SERVICE

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This court has subject matter jurisdiction over Cypress‟s claims under 28 U.S.C. §§ 1331

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and 1338(a) because this case involves a dispute over patent infringement under 35 U.S.C. § 271.

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Venue is proper in this court under 28 U.S.C. §§ 1391 and 1400(b). No party remains to be served.

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II.

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FACTS
Plaintiff Cypress is a corporation organized and existing under the laws of the State of

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Delaware, with its principal place of business located at 198 Champion Court, San Jose, California.

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Cypress filed this action in the United States District Court for the Northern District of California

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on May 1, 2013. Cypress‟s Complaint alleges that GSI infringes United States Patents Nos.

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6,069,839 (“the „839 patent”), 6,292,403 (“the „403 patent”), 6,385,128 (“the „128 patent”),

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6,445,645 (“the „645 patent”), and 6,967,861 (“the „861 patent”) (collectively, the “Asserted

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Patents”). Cypress seeks, inter alia, an injunction, damages, fees, and costs.

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Defendant GSI is a corporation organized and existing under the laws of the State of

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Delaware and having its principal place of business at 1213 Elko Drive, Sunnyvale, California. GSI

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seeks an entry of judgment in its favor and against Cypress on Cypress‟s claims against GSI for

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patent infringement; a finding that GSI does not infringe any asserted claims of any of the Asserted

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Patents; a finding that the asserted claims of the Asserted Patents are invalid; a finding that this case

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is exceptional and entry of an Order directing Cypress to pay GSI its costs and attorneys‟ fees; and

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such other relief as the Court deems just and proper under the circumstances.
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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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III.

PRINCIPAL FACTUAL AND LEGAL ISSUES IN DISPUTE

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The parties have identified the following principal disputed issues:

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(a)

The proper construction of disputed claim terms in the Asserted Patents;

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(b)

Whether GSI infringes any claims of the Asserted Patents;

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(c)

Whether any asserted claim of the Asserted Patents is invalid for any reason

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including under 35 U.S.C. §§ 101, 102, 103 and/or 112;

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(d)

Whether Cypress is barred from obtaining relief under the doctrine of prosecution

history estoppel; and

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(e)

Appropriate forms of relief due to either party, including declaratory, injunctive and

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monetary relief.

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IV.

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MOTIONS
There are no pending motions at this time. The parties anticipate that summary judgment

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motions will be filed that may address issues of patent infringement and/or non-infringement,

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validity and/or invalidity, enforceability and/or unenforceability, and/or remedies.

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V.

AMENDMENT OF PLEADINGS

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The parties may seek to add additional claims, counterclaims and affirmative defenses as

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discovery proceeds. The parties propose April 4, 2014, as the deadline for amending pleadings.

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VI.

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EVIDENCE PRESERVATION
The parties have reviewed the ESI Guidelines and the parties have met and conferred

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pursuant to Fed. R. Civ. P 26(f) regarding reasonable and proportionate steps taken to preserve

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evidence relevant to the issues reasonably evident in this action. Such reasonable and proportionate

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steps shall include issuing document preservation instructions to the key individuals likely to have

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such documents, directing such individuals to take affirmative steps to preserve such documents,

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whether in hardcopy or electronic form, and to suspend applicable document destruction/deletion

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procedures.

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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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VII.

DISCLOSURES
The parties have made their initial disclosures pursuant to Fed. R. Civ. P. 26(a)(1) on July

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31, 2013. Each party reserves its right to amend such disclosures as discovery progresses.

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VIII. DISCOVERY

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(i)

Discovery Taken to Date: Initial sets of written discovery have been served.

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(ii)

Anticipated Scope of Discovery: The parties anticipate discovery on the claims

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for patent infringement, affirmative defenses thereto, claim construction, and prayers

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for relief.

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(iii)

Limits on Discovery: The parties agree to the following limits on discovery:

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(a) Fact Depositions: The parties agree to a total presumptive limit of 114 hours of

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deposition per side and a presumptive limit of seven (7) hours per individual

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deposition. Multiple days of deposition of a single witness will count as multiple

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depositions.

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The parties further agree that depositions taken pursuant to Fed. R. Civ. P.

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30(b)(6), expert depositions, and non-party depositions will not count toward

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these limits.

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For depositions taken pursuant to Fed. R. Civ. P. 30(b)(6), the parties agree to a

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limit of twenty-one (21) hours of deposition testimony per party, irrespective of

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the number of topics or witnesses designated.

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The parties reserve the right to revisit the issue of the number and length of

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depositions as discovery progresses. If any party seeks to exceed the above

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limits, the parties agree to meet and confer in good faith to attempt to resolve the

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issue without intervention by the Court. Each party reserves the right to seek

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leave of Court in order to take additional depositions.

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(b) Expert Depositions: The parties agree that each side may take up to seven (7)

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hours of deposition testimony of each expert identified by an adverse party for

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each report provided. Notwithstanding the foregoing, if any party identifies a

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single expert to provide a report related to both infringement and validity, the
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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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seven (7) hour limit shall be expanded to fourteen (14) hours.

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(c) Interrogatories: The parties agree to the presumptive limits set forth in the

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Federal Rules of Civil Procedure regarding interrogatories.

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(d) Requests for Admission: The parties agree that each side may serve a

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maximum of fifty (50) requests for admission.
(iv)

Discovery Plan: The parties intend to pursue discovery by taking depositions and

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by serving document requests, interrogatories, and requests for admission, subject

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to the limits in the previous section.

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(a) Protective Order: The parties agree that a protective order will be necessary, in

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light of the sensitive and proprietary information that will be exchanged during

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discovery. The parties intend to meet and confer on and submit a proposed

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Stipulated Protective Order to the Court.

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(b) Privilege Logs: The parties agree that privileged communications and

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documents covered by work product protection and dated after the filing of this

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lawsuit need not be included in any privilege log. In addition, the parties agree

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that privileged communications and documents covered by work product

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protection relating to the ITC Investigation (discussed below), the Minnesota

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Action, and the Antitrust Lawsuit (discussed below) need not be included in any

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privilege log.

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(c) Expert Reports: In addition to the provisions of the Federal Rules of Civil

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Procedure, the parties agree that document discovery concerning testifying

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experts shall be limited to the final versions of the testifying experts‟ reports and

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any materials relied upon by the testifying expert in forming his or her opinion(s)

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in this case. Testifying experts‟ draft reports, notes, and conversations or

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communications with counsel will not be subject to discovery and do not need to

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be logged in a privilege log unless such materials are relied upon by a testifying

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expert in forming his or her final report, trial or deposition testimony, or any

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opinion in this case. If an expert indicates in deposition that he or she relied
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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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upon a document or source not otherwise specified in the final report, that

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document or source also is discoverable.

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(d) Method of Service: The parties agree that service by electronic mail by 11:59

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P.M. Pacific Time on a given day will be treated as service by personal delivery.

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(e) Electronic Discovery: Pursuant to the ESI Guidelines, the parties agree to

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cooperate to develop protocols to lessen the burden of producing electronic

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discovery. The parties are continuing to meet and confer to reach an agreed upon

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plan for electronic discovery and will submit an agreed electronic discovery plan

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or a joint submission highlighting any remaining disputed issues.

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IX.

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CLASS ACTIONS
This is not a class action.

X.

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RELATED CASES
The parties are aware of the following pending litigation between the same parties: Cypress

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Semiconductor Corp. v. GSI Technology, Inc., Case No. 11-cv-00789-PJS (D. Minn.), filed March

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30, 2011 (the “Minnesota Lawsuit”), and GSI Technology, Inc. v. Cypress Semiconductor Corp.,

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Case No. 11-cv-03613-EJD (N.D. Cal.) (the “Antitrust Lawsuit”). The Antitrust Lawsuit was found

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by Judge Davila not to be related to the above-captioned matter. See D.I. 9. The Minnesota

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Lawsuit was transferred to this District on August 8, 2013.

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XI.

RELIEF

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Cypress seeks judgment that GSI has infringed and continues to infringe the Asserted

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Patents. Cypress seeks a permanent injunction, damages under 35 U.S.C. § 284, attorney fees under

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35 U.S.C. § 285, and such relief at law and in equity as the Court may deem just and proper.

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GSI seeks an entry of judgment in its favor and against Cypress on Cypress‟s claims

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against GSI for patent infringement; a finding that GSI does not infringe any asserted claims of any

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of the Asserted Patents; a finding that the asserted claims of the Asserted Patents are invalid; a

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finding that this case is exceptional and entry of an Order directing Cypress to pay GSI its costs and

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attorneys‟ fees; and such other relief as the Court deems just and proper under the circumstances.

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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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XII.

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SETTLEMENT AND ADR
The parties are willing to engage in settlement discussions following a ruling on claim

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construction issues. The parties have met and conferred regarding ADR pursuant to Civil Local

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Rule 16-18 and ADR Local Rule 3-5, have reviewed the ADR procedures in ADR Local Rule 3-5,

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and have stipulated to a settlement conference with a Magistrate Judge following a ruling on claim

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construction issues. The parties do not believe any motions are necessary to facilitate settlement.

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XIII. CONSENT TO MAGISTRATE JUDGE FOR ALL PURPOSES

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The parties do not consent to have this case proceed before a Magistrate Judge.
XIV. OTHER REFERENCES

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The parties do not believe that this case is suitable for reference to a binding arbitration or to

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a Special Master. This case is also not appropriate for reference to the Judicial Panel on

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Multidistrict Litigation.

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XV.

NARROWING OF ISSUES

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The parties are not aware of issues that can be narrowed by agreement or by motion at this

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time and do not have suggestions to expedite the presentation of evidence at this time. The parties

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anticipate that as discovery proceeds, the issues will be narrowed for trial.

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XVI. EXPEDITED SCHEDULE

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Because of the nature and complexity of the claims and defenses in this action, the parties

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submit that this is not the type of case that can be handled on an expedited basis or with short-

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circuited procedures.

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XVII. SCHEDULING

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Pursuant to consultation amongst the parties and rulings made by the Court during the July

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31, 2013, Case Management Conference, the parties propose following dates for scheduling in this

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case consistent with the Patent Local Rules, with certain minor modifications:

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Dates
July 31, 2013

Event/Authority
Initial Case Management Conference

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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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Dates
July 31, 2013

Event/Authority
Last day for parties to make initial disclosures
[Fed. R. Civ. P. 26(a)(1)]

Sept. 13, 2013

Plaintiff‟s Disclosure of Asserted Claims &
Preliminary Infringement Contentions & accompanying
document production
[Patent L.R. 3-1 & 3-2]
Defendants‟ Invalidity Contentions &
accompanying document production
[Patent L.R. 3-3 & 3-4]

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Nov. 27, 2013
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Dec. 11, 2013

Parties to exchange Proposed Terms & Claim Elements for
Construction
[Patent L.R. 4-1(a)]

Jan. 6, 2014

Parties to exchange Preliminary Claim Constructions
[Patent L.R. 4-2(a)]

Jan. 27, 2014

Parties to file Joint Claim Construction & Prehearing
Statement; parties to exchange expert declarations or other
disclosures on claim construction for any experts who will
submit declarations or testify regarding claim
construction at the Claim Construction Hearing.
[Patent L.R. 4-3]

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See entry under
section XX.C.

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Feb. 26, 2014

Claim Construction Discovery CutOff
[Patent L.R. 4-4]
Plaintiff to file Opening Brief on Claim Construction
[Patent L.R. 4-5(a)]

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Mar. 19, 2014

Defendant to file Responsive Brief on Claim Construction
[Patent L.R. 4-5(b)] (14 days)

Mar. 31, 2014

Plaintiff to file Reply Brief on Claim Construction
[Patent L.R. 4-5 (c)] (7 days)

April 4, 2014
Apr. 15, 2014
at 1:30 p.m.
Apr. 29, 2014
at 9:30 a.m.
50 days after
Markman Ruling

Last day to amend pleadings
Court conducts Claim Construction tutorial

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Claim Construction (Markman) Hearing
Last day to disclose advice of counsel
[Pat. L.R. 3-7]

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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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XVIII. TRIAL

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A jury demand has been made. The parties estimate that the expected total length of trial is

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nine days, with trial time to be split equally between the two sides.

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XIX. DISCLOSURE OF NON-PARTY INTERESTED ENTITIES OR PERSONS

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The parties have filed their respective Certifications of Interested Entities or Persons with

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the Court. There are no other non-party interested entities or persons.

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XX.

OTHER MATTERS

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A. Consolidation of This Action With the Minnesota Lawsuit

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The parties hereby stipulate, subject to the Court‟s approval, that this Action be consolidated

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for all purposes including trial, with the Minnesota Lawsuit (Cypress Semiconductor Corp. v. GSI

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Technology, Inc., Case No. 11-cv-00789-PJS (D. Minn.)) which was transferred to this District on

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August 8, 2013.

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B. Privilege log:

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The parties will exchange initial privilege logs, whose format will be agreed to in advance,

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prior to the close of fact discovery. For any documents produced after the exchange of privilege

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logs, and before the close of fact discovery, the parties will provide supplemental privilege logs by

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the earlier of ten (10) days after the production of the documents or before any deposition for which

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any such privilege log entries may be relevant.

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C. Scope and Timing of Claim Construction Discovery:

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The parties may use expert witness reports or declarations in support of one or more of their

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claim construction positions. The parties will provide any expert declaration in support of one or

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more of their claim construction positions with their respective claim constructive briefs and will

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make their respective experts available for deposition within a reasonable time after their respective

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claim construction briefs and, in the case of Cypress‟s opening and GSI‟s opposition brief, before

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the responsive briefing is due, and, in the case of Cypress‟s reply brief, before the claim

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construction tutorial.

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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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D. Format of Claim Construction Hearing and Technology Tutorial:

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The parties do not anticipate live testimony at the claim construction hearing. The parties

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anticipate that five (5) hours will be required for argument at the claim construction hearing, split

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evenly between the sides. Unless the Court prefers a different format, the parties will separately

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argue each disputed term.

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Dated: August 14, 2013

Respectfully Submitted,

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FISH & RICHARDSON, P.C.
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By: /s/ Thomas L. Halkowski
Thomas L. Halkowski

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Attorneys for Plaintiff
CYPRESS SEMICONDUCTOR CORP.

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DLA PIPER LLP
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By: /s/ Michael G. Schwartz, by permission
Michael G. Schwartz

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Attorneys for Defendant
GSI TECHNOLOGY, INC.

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CASE MANAGEMENT ORDER
The above AMENDED JOINT CASE MANAGEMENT STATEMENT & [PROPOSED]

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ORDER is approved as the Case Management Order for this case and all parties shall comply with

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its provisions.

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IT IS SO ORDERED.

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Dated: August 20, 2013
Hon. Jon S. Tigar
United States District Court Judge

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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST

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SIGNATURE ATTESTATION

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Pursuant to Civil Local Rule 5-1, I attest that concurrence in the filing of this document has
been obtained from the signatory listed above.

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Dated: August 14, 2013

FISH & RICHARDSON P.C.

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By:
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/s/ Thomas L. Halkowski
Thomas L. Halkowski

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Amended Joint Case Management Statement
and Proposed Order and Rule 26(f) Report
Case No. 3:13-cv-02013-JST