Enplas Display Device Corporation et al v. Seoul Semiconductor Company, Ltd.

Filing 244

ORDER RE: SSC'S MOTION TO DISMISS AND ENPLAS' MOTIONS FOR SUMMARY JUDGMENT. Re: Dkt. Nos. 128 130 132 134 138 . Signed by Judge Nathanael Cousins. (lmh, COURT STAFF) (Filed on 12/3/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ENPLAS DISPLAY DEVICE
CORPORATION; ENPLAS TECH
SOLUTIONS, INC.; and ENPLAS
(U.S.A.), INC.,

United States District Court
Northern District of California

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Plaintiffs and counterdefendants,

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v.
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Case No. 13-cv-05038 NC
ORDER RE: SSC’S MOTION TO
DISMISS AND ENPLAS’
MOTIONS FOR SUMMARY
JUDGMENT
Re: Dkt. Nos. 128, 130, 132, 134, 138

SEOUL SEMICONDUCTOR
COMPANY, LTD.,

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Defendant and counterclaimant.

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The Court considers the effect of (1) defendant SSC’s motion to dismiss its patent

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infringement counterclaims against plaintiffs ETS and EUSA, and (2) SSC’s covenant not

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to sue EDD on certain infringement claims. Enplas moved for summary judgment on the

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infringement claims that SSC intended to drop. In response, SSC covenanted not to sue on

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those claims. Now, the Court GRANTS SSC’s motion to dismiss, and finds that SSC’s

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dismissal covers all causes of action against ETS and EUSA. The Court finds that SSC’s

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covenants not to sue do not divest the Court of jurisdiction to rule on EDD’s motions for

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summary judgment because the covenants do not cover the entirety of SSC’s infringement

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claims. Because no genuine dispute of material facts exist as to those claims, the Court

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GRANTS EDD’s motions for summary judgment.

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/
Case No. 13-cv-05038 NC

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I.

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BACKGROUND
Defendant Seoul Semiconductor Co., Ltd. (“SSC”), manufactures light-emitting

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diode (“LED”) products and asserts that it owns more than 10,000 LED patents worldwide,

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including the two patents at issue in this case, U.S. Patents Nos. 6,473,554 (the “’554

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patent”) for “Lighting Apparatus Having Low Profile” and 6,007,209 (the “’209 patent”)

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for “Light Source For Backlighting.” Dkt. No. 11. The ’554 patent relates to a lighting

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apparatus that is useful as a backlight for illuminating a display, such as a liquid crystal

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display (“LCD”). Dkt. No. 70-1. The ’209 patent relates to an apparatus and methods for

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backlighting a display panel. Dkt. No. 70-2.

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SSC asserts that plaintiffs Enplas Display Device Corporation (“EDD”), Enplas

United States District Court
Northern District of California

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Tech Solutions, Inc. (“ETS”), and Enplas (U.S.A.) Inc. (“EUSA”) (collectively, “Enplas”)

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infringe the ’554 and ’209 patents by manufacturing and supplying lenses for use with

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LEDs, including lenses for use in LED backlights for LCD televisions and monitors. Dkt.

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No. 11.

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Enplas filed its complaint on October 29, 2013, seeking a declaratory judgment that

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the ’554 and ’209 patents are not infringed and are invalid. Dkt. No. 1. On January 16,

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2014, Enplas filed a first amended complaint. Dkt. No. 7. On April 21, 2014, SSC filed

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its answer and counterclaims, alleging infringement of the ’554 and ’209 patents against

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EDD, ETS, and EUSA, on all patent claims. Dkt. No. 11. Based on a declaration provided

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by ETS that it has had no relevant involvement with the products accused of infringement,

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the Court dismissed with prejudice SSC’s patent infringement counterclaims against ETS

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as stipulated by the parties. Dkt. No. 62. Now, Enplas moves for summary judgment, and

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SSC moves to dismiss some infringement claims in the case. Dkt. Nos. 128, 130, 132,

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134, 138.

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II.

DISCUSSION

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The Court is faced with an unusual procedural posture and will resolve all motions

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regarding SSC’s dropped claims together. After the fact discovery deadline passed in this

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case, Enplas observed that SSC had not presented any factual information on many of its
Case No. 13-cv-05038 NC
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infringement claims. Enplas asked SSC whether it intended to pursue those claims to

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summary judgment and beyond. SSC responded that it did not, and that it would dismiss

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the claims.
At that point, the parties engaged in negotiations to determine the method for

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removing the claims from litigation. Enplas argued that it was entitled to a judgment on

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the claims and requested that SSC agree to a consent judgment. SSC disagreed and

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believed that a covenant not to sue was sufficient to remove the claims from the litigation

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entirely. Without reaching a stipulation, Enplas moved for the Court to grant summary

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judgment on the “dropped” claims, arguing that SSC provided no evidence to support

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those claims. In its oppositions, SSC provided covenants not to sue, and argued that

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United States District Court
Northern District of California

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Enplas’s motions are moot as a result. Then, SSC filed a motion for voluntary dismissal of

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SSC’s infringement counterclaims as to EUSA and ETS. Additionally, SSC covenants not

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to sue on some EDD claims on both the ’554 and ’209 patents, as well as on some lens

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numbers.1 A full list of relevant claims is included in the chart attached to this order.

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EDD moves for summary judgment on the same claims.
The Court considers (A) the appropriate controlling law for each issue; (B) SSC’s

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motion to dismiss; (C) the effect of SSC’s covenants not to sue on Enplas’ claims;

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(D) whether SSC’s covenants moot Enplas’ claims or causes of action; and (E) Enplas’

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summary judgment motions.

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A.

Choice of Law

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Federal Circuit law applies to issues “unique to patent law and regional circuit law

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to issues unrelated to patent law.” Atlas IP, LLC v. Medtronic, Inc., No. 2015-1071, 2015

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WL 6550622, at *4 (Fed. Cir. Oct. 29, 2015). Generally, procedural issues are governed

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by regional circuit law. Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356,

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The relevant claims with respect to EDD are SSC’s (1) infringement allegations
concerning claims 1-19, 21-22 of the ’209 patent; (2) claims 4-5, 7-29, 32, 38-48 of the
’554 patent; (3) all claims of direct infringement under 35 U.S.C. § 271(a); (4) all claims
that EDD lens #9827 infringes patents in suit, and lens #4922 infringes the ’554 patent.;
and (5) infringement under 35 U.S.C. § 271(c).
Case No. 13-cv-05038 NC
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1359 (Fed. Cir. 1999). Here, the parties agree that Ninth Circuit law governs the

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procedural standard for granting a motion to dismiss under Rule 41(a)(2), or a motion for

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summary judgment. However, the effect of a covenant not to sue is governed by Federal

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Circuit law. Id. (noting that the Federal Circuit applies its own law to deciding “whether

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there is a sufficient controversy between the parties to permit the accused infringer to bring

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an action seeking a declaratory judgment of noninfringement or invalidity”).

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B.

Motion to Dismiss

Federal Rule of Civil Procedure 41(b) permits a party to voluntarily dismiss a claim

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by court order, “on terms that the court considers proper.” “A district court should grant a

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motion for voluntary dismissal under Rule 41(a)(2) unless a defendant can show that it will

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United States District Court
Northern District of California

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suffer some plain legal prejudice as a result.” Smith v. Lenches, 263 F.3d 972, 975 (9th

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Cir. 2001). “Plain legal prejudice, however, does not result simply when defendant faces

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the prospect of a second lawsuit or when plaintiff merely gains some tactical advantage.”

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Hamilton v. Firestone Tire & Rubber Co., 679 F.2d 143, 145 (9th Cir. 1982).

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Here, SSC seeks dismissal of its infringement causes of action against ETS and

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EUSA with prejudice. “Where, as here, a plaintiff seeks to dismiss its case, with prejudice,

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many courts have held that unless a third party’s rights are affected, a court lacks

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discretion and has little choice but to dismiss.” California Sportfishing Prot. All. v.

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Matheson Tri-Gas, Inc., No. 11-cv-01456 MCE, 2013 WL 687041, at *2 (E.D. Cal. Feb.

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25, 2013) (collecting cases). Enplas does not argue that it would suffer plain legal

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prejudice if the Court dismisses the claims. Therefore, the Court GRANTS SSC’s motion

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to dismiss its causes of action against ETS and EUSA with prejudice.

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C.

Effect of SSC’s Covenants Not To Sue

A party has standing to bring an action under the Declaratory Judgment Act if an

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“actual controversy” exists. 28 U.S.C. § 2201(a). The “actual controversy” requirement is

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the same as the Article III case or controversy requirement. Aetna Life Ins. Co. v.

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Haworth, 300 U.S. 227, 239-41 (1937). In MedImmune, Inc v. Genentech, Inc., 549 U.S.

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118, 127 (2007), the Supreme Court clarified the relevant standard for “actual controversy”
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as it applies to patent cases: “the facts alleged, under all circumstances, show there is a

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substantial controversy, between parties having adverse legal interest, of sufficient

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immediacy and reality to warrant the issuance of a declaratory judgment.” The dispute

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must be “definite and concrete, touching the legal relations of parties having adverse legal

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interests,” such that the dispute is “real and substantial” and “admi[ts] of specific relief

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through a decree of a conclusive character, as distinguished from an opinion advising what

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the law would be upon a hypothetical state of facts.” Id.; accord Arris Group, Inc. v.

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British Telecomm. PLC, 639 F.3d 1368, 1373 (9th Cir. 2011). “[W]here a patentee asserts

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rights under a patent based on certain identified ongoing or planned activity of another
party, and where the party contends that it has the right to engage in the accused activity

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United States District Court
Northern District of California

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without a license, an Article III case or controversy will arise and the party need not risk a

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suit for infringement by engaging in the identified activity before seeking a declaration of

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its legal rights.” SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1381 (Fed.

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Cir. 2007). Here, SSC threatened Enplas with litigation for infringement of the ’554 and

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’209 patents, so Enplas sought declaratory judgment of noninfringement and invalidity of

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the patents. Dkt. No. 1. Subsequently, SSC filed a counterclaim for infringement against

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Enplas. Dkt. No. 11. Thus, at the start of the litigation, a “real and substantial” dispute

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existed between the parties.

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An actual controversy must be present at all times in the litigation. Preiser v.

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Newkirk, 422 U.S. 395, 401 (1975). When a defendant in a patent infringement

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declaratory judgment action covenants not to sue, generally, the defendant removes the

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possibility that the parties have adverse legal interests. As a result, a covenant not to sue

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can divest the Court of jurisdiction to adjudicate the plaintiff’s claims. “In a line of cases

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beginning with Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1059-60

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(Fed. Cir. 1995), we have held that a patentee’s grant of a covenant not to sue a supplier

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for infringement can eliminate the supplier’s standing to bring a declaratory judgment

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action.” Arris Group, 639 F.3d at 1380.

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However, a covenant not to sue does not always divest the trial court of jurisdiction
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over the case. Rather, “[w]hether a covenant not to sue will divest the trial court of

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jurisdiction depends on what is covered by the covenant.” Revolution Eyewear, Inc., 556

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F.3d at 1297. Thus, the Court analyzes SSC’s motion to dismiss and the covenants not to

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sue individually to determine whether they divest the Court of jurisdiction to rule on

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Enplas’ summary judgment motions.

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D.

Mootness of Enplas’ Claims

SSC argues that Enplas’ motions for summary judgment are necessarily mooted by
SSC’s covenants not to sue on the same infringement claims.
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ETS and EUSA

As to ETS and EUSA, the Court granted SSC’s request to dismiss all of its causes

United States District Court
Northern District of California

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of action with prejudice. The Court notes that it previously dismissed with prejudice

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SSC’s causes of action against ETS. Dkt. No. 62. Now, the Court finds that SSC’s

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dismissal covers all infringement claims it asserted against ETS and EUSA, so there is no

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controversy remaining. No issues remain that implicate plaintiffs’ legal rights. Therefore,

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ETS and EUSA’s claims against SSC are moot.

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However, all parties acknowledge that SSC’s dismissal of its causes of action

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against ETS and EUSA does not cover future infringement. The parties agree that the

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Court should dismiss ETS and EUSA causes of action without prejudice. The Court

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agrees and DISMISSES ETS and EUSA’s claims of noninfringement and invalidity of the

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’554 and ’209 patents without prejudice.

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2.

EDD

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As to EDD, Enplas argues that SSC’s covenant not to sue on some, but not all,

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infringement claims is insufficient to divest this Court of jurisdiction. The Court has

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reviewed the case law cited by the parties and finds that no case directly addressing this

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issue of a partial covenant not to sue.

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The most comprehensive Federal Circuit case on the effect of a covenant not to sue

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is Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 556 F.3d 1294 (Fed. Cir. 2009). In

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that case, defendant Revolution covenanted not to sue plaintiff Aspex for past and current
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infringement, but the covenant was silent on future infringement. Id. at 1296. The Federal

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Circuit noted that, “Revolution’s covenant does not protect Aspex from suit should Aspex

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embark on future marketing of its bottom-mounted eyewear products.” Id. Because

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Aspex specifically sought declaratory judgment on future infringement, the Federal Circuit

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held that the covenant did not divest the trial court of jurisdiction to declare

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noninfringement and invalidity. Id.

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The Federal Circuit reasoned, “[t]he issue ‘touch[es] the legal relations of parties
having adverse legal interest,’ for it affects whether Aspex can return to this market

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without risking treble damages should the challenge eventually fail, and the dispute is

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amendable to ‘specific relief through a decree of a conclusive character’ because the

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United States District Court
Northern District of California

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resolution of the counterclaims for validity and enforceability of the ’913 patent will

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conclusively determine the issue. The case thus satisfies the requirements stated in

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MedImmune.” Revolution Eyewear, 556 F.3d at 1299 (quoting MedImmune, 549 U.S. at

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127). Thus, the relevant inquiry is whether the covenant not to sue relieves plaintiff of the

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possibility of suit, such that no legal interests are implicated.

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The law is not, as SSC suggests, that a covenant not to sue automatically moots a

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plaintiff’s claims. Instead, a factual inquiry is required, and the Court should consider the

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entirety of the circumstances in evaluating whether a controversy remains. Revolution

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Eyewear, 556 F.3d at 1299. For example, in Crossbow Tech., Inc. v. YH Tech., 531 F.

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Supp. 2d 1117, 1121 (N.D. Cal. 2007), Judge Illston dismissed plaintiff’s declaratory

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judgment case because “the covenant in this case is exhaustive of all potentially infringing

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products that Crossbow may sue for.” In contrast, Judge Whyte determined that a silent

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withdrawal, without a covenant not to sue, did not moot declaratory judgment claims.

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Radware, Ltd. v. A10 Networks, Inc., No 13-cv-02021 RMW, 2014 WL 2738538 (N.D.

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Cal. June 11, 2014).

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In Microchip Tech. Inc. v. Chamberlain Group, Inc., 441 F.3d 936, 943 (Fed. Cir.

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2006), the Federal Circuit advised, “A useful question to ask in determining whether an

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actual controversy exists is what, if any, cause of action the declaratory judgment
Case No. 13-cv-05038 NC

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defendant may have against the declaratory judgment plaintiff.” The Court continued,

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quoting Benitec Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1344 (Fed. Cir. 2007):

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“The concepts of ‘adverse legal rights’ and ‘legal risk,’ used in
[prior] cases to describe the standard for jurisdiction require
that there be an underlying legal cause of action that the
declaratory defendant could have brought or threatened to
bring, if not for the fact that the declaratory plaintiff has
preempted it. Without an underlying legal cause of action, any
adverse economic interest that the declaratory plaintiff may
have against the declaratory defendant is not a legally
cognizable interest sufficient to confer declaratory judgment
jurisdiction.”

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Id.
Further, the Court has not found, and the parties have not cited, any case that

United States District Court
Northern District of California

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considers the effect of a defendant’s covenant not to sue on some infringement claims,

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rather than entire causes of action. Here, the parties agree that SSC’s covenants do not

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cover SSC’s entire infringement claims on either the ’554 or ’209 patents. The Court

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disagrees with EDD’s argument that Revolution Eyewear and Arris Group hold that a

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covenant not to sue for partial claims is ineffective. As noted above, Revolution Eyewear

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reflects the Federal Circuit’s concern for a fact-intensive inquiry. 556 F.3d at 1299. Arris

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Group is factually distinguishable because the defendant did not covenant not to sue. 639

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F.3d at 1380.

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In this case, SSC covenants not to sue on a list of infringement claims under both

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patents, as well as certain of Enplas’ lenses. However, SSC still pursues its overall causes

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of action that Enplas infringes SSC’s patents. Given the continued litigation, Enplas has

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an immediate legal interest in protecting its right to continue producing its lenses without a

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license. The parties remain adverse as to whether Enplas is infringing the ’554 and ’209

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patents. Additionally, Enplas has a legal interest in resolving whether SSC’s patents are

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valid. The Court finds that the above cases speak to causes of action, and not patent

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claims. The test in MedImmune asks whether the dispute is real and concrete. The

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Supreme Court has stated, “If . . . a party has actually been charged with infringement of

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the patent, there is, necessarily, a case or controversy adequate to support jurisdiction” at
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that time. Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 96 (1993) (emphasis in

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original); accord Nucleonics, 495 F.3d at 1344. Here, SSC maintains its counterclaims

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that EDD has and continues to infringe the ’554 and ’209 patents. Thus, the Court finds

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that the covenants not to sue do not moot EDD’s claims for declaratory relief of

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noninfringement and invalidity.

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E.

Summary Judgment Motions

Enplas moves for summary judgment on: (1) noninfringement as to ETS;

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(2) noninfringement as to EUSA; and (3) certain SSC counterclaims against EDD. EDD

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moves for summary judgment on the following SSC counterclaims against EDD:
(A) infringement allegations concerning claims 1-19, 21-22 of the ’209 patent; (B) claims

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United States District Court
Northern District of California

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4-5, 7-29, 32, 38-48 of the ’554 patent; (C) all claims of direct infringement under 35

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U.S.C. § 271(a); (D) all claims that EDD lens #9827 infringes patents in suit and lens

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#4922 infringes the ’554 patent; and (E) infringement under 35 U.S.C. § 271(c).

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Summary judgment may be granted only when, drawing all inferences and

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resolving all doubts in favor of the nonmoving party, there is no genuine dispute as to any

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material fact. Fed. R. Civ. P. 56(a); Tolan v. Cotton, 134 S. Ct. 1861, 1863 (2014);

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Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The moving party bears the burden of

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identifying those portions of the pleadings, discovery, and affidavits that demonstrate the

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absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. Once the moving

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party meets its initial burden, the nonmoving party must go beyond the pleadings, and, by

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its own affidavits or discovery, set forth specific facts showing that a genuine issue of fact

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exists for trial. Fed. R. Civ. P. 56(c); Barthelemy v. Air Lines Pilots Ass’n, 897 F.2d 999,

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1004 (9th Cir. 1990) (citing Steckl v. Motorola, Inc., 703 F.2d 392, 393 (9th Cir. 1983)).

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All justifiable inferences, however, must be drawn in the light most favorable to the

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nonmoving party. Tolan, 134 S. Ct. at 1863 (citing Liberty Lobby, 477 U.S. at 255).

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As discussed above, some of Enplas’ motions are necessarily mooted by SSC’s

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covenants not to sue. The summary judgment motions as to ETS and EUSA are DENIED

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AS MOOT.
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However, the Court concluded above that SSC’s covenants as to EDD do not moot

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EDD’s claims. Thus, the Court has jurisdiction to rule on EDD’s summary judgment

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motions. In the motions, EDD argued that there is no dispute of material fact and that SSC

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cannot sustain infringement claims because no facts exist to support the claims. In

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response, SSC provided covenants not to sue on those infringement claims. SSC did not

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provide specific facts showing that a genuine dispute of fact exists for trial.
Therefore, the Court finds that there is no genuine dispute of material fact as to

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these claims, and the claims fail as a matter of law. The Court GRANTS EDD’s motions

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for summary judgment, docket numbers 128 and 134, on SSC’s counterclaims:
(A) infringement allegations concerning claims 1-19, 21-22 of the ’209 patent; (B) claims

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United States District Court
Northern District of California

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4-5, 7-29, 32, 38-48 of the ’554 patent; (C) all claims of direct infringement under 35

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U.S.C. § 271(a); (D) all claims that EDD lens #9827 infringes patents in suit and lens

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#4922 infringes the ’554 patent; and (E) infringement under 35 U.S.C. § 271(c).

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III. CONCLUSION

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The Court rules as follows:

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1. SSC’s motion to dismiss, docket number 138, is GRANTED.

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2. ETS and EUSA are DISMISSED from the case, as their causes of action are
MOOT.

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3. Thus, EUSA’s motion for summary judgment, docket number 130, is DENIED

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AS MOOT.

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4. ETS’s motion for summary judgment, docket number 132, is DENIED AS

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MOOT.

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5. EDD’s motion for summary judgment of noninfringement of withdrawn or

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abandoned claims, docket number 128, is GRANTED.

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6. EDD’s motion for summary judgment of noninfringement under 35 U.S.C. §

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271(c), docket number 134, is GRANTED.

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//

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Case No. 13-cv-05038 NC

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The parties briefed additional summary judgment and Daubert motions, which the

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Court will hear on December 9, 2015, at 2:00 p.m. in the San Jose Courthouse. The Court

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has attached a claim summary chart, summarizing the rulings made in this order. The

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parties should carefully review the chart and propose any corrections in writing by

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December 8, 2015, at noon. This chart will be used to prepare the final judgment in the

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case.

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IT IS SO ORDERED.
Dated: December 3, 2015

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_____________________________________
NATHANAEL M. COUSINS
United States Magistrate Judge

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United States District Court
Northern District of California

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Case No. 13-cv-05038 NC

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Enplas Display Device Corp., et al. v. Seoul Semiconductor Co., Ltd.
Case No. 13-cv-5038

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The Asserted Patents and Claims Chart

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PLAINTIFF: Enplas (U.S.A.), Inc. – PARTY DISMISSED 12/3/15
PATENT: ’209 and ’554 Patents
No.

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Party
Asserting
Claim

Claim or Theory

Claim
Asserted
Against

Court
Ruling

(1)

EUSA

DJ of non-infringement of all claims of the ’209 and
’554 Patents and defense of noninfringement as to all
SSC infringement claims

SSC

Dismissed as
moot
without
prejudice

(2)

EUSA

DJ of invalidity of all claims of the ’209 and ’554
Patents and defense of invalidity to SSC infringement
claims

SSC

Dismissed as
moot
without
prejudice

(3)

SSC

Infringement of all claims of the ’209 and ’554 Patents

EUSA

Dismissal
with
prejudice
GRANTED

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United States District Court
Northern District of California

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PLAINTIFF: Enplas Tech Solutions, Inc. – PARTY DISMISSED 12/3/15
PATENT: ’209 and ’554 Patents

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No.

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Party
Asserting
Claim

Claim or Theory

Claim
Asserted
Against

Court
Ruling

(4)

ETS

DJ of noninfringement of all claims of the ’209 and ’554
Patents and defense of noninfringement as to all SSC
infringement claims

SSC

Dismissed as
moot
without
prejudice

(5)

ETS

DJ of invalidity of all claims of the ’209 and ’554
Patents and defense of invalidity to SSC infringement
claims

SSC

Dismissed as
moot
without
prejudice

(6)

SSC

Infringement of all claims of the ’209 and ’554 Patents

ETS

Dismissal
with
prejudice
GRANTED

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Case No. 13-cv-05038 NC

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PLAINTIFF: Enplas Display Device Corp.
PATENT: ’209 Patent

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No.

Party
Asserting
Claim

Claim
Asserted
Against

Court
Ruling

(7)

EDD

DJ of non-infringement of ’209 Patent and defense of
noninfringement as to all SSC infringement claims

SSC

Not Moot,
Claim
Proceeds

(8)

EDD

DJ of invalidity of all claims of ’209 patent and defense of
invalidity as to all SSC infringement claims

SSC

Not Moot,
Claim
Proceeds

SSC

Contested in
EDD MSJ
(Dkt. No.
166)

SSC

Moot if
EDD MSJ
(Dkt. No.
166)
granted.

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Claim or Theory

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(8a)

EDD

(8b)

EDD

(8c)

EDD

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Invalidity of claim 20 as anticipated under §102 by the
’354 Patent (“Gleckman”)

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United States District Court
Northern District of California

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16
17

Invalidity of claim 20 as obvious under §103 over:
(a) Gleckman alone or in combination with one or
more of Osawa, or Takeichi;
(b) Yoshida alone or in combination with one or
more of Osawa, Takeichi, Gleckman, Suzuki, or
Borchardt;
(c) Takeichi alone or in combination with one or
more of Yoshida, Gleckman, Suzuki, or
Borchardt; and/or
(d) Osawa alone or in combination with one or more
of Gleckman, Yoshida, Suzuki, or Borchardt.

Moot if
EDD MSJ
(Dkt. No.
166)
granted.

Invalidity of claims 1, 5, 6, 15, 20 and 22 under §112.

18
19
20

(9)

EDD

Defense of unenforceability of the ’209 Patent (inequitable
conduct)

SSC

Contested in
SSC MSJ
(Dkt. No.
161)

(10)

SSC

Infringement under 35 U.S.C. § 271(a), (b), and (c) of all
claims of the ’209 Patent

EDD

Not Moot,
Claim
Proceeds

(10a)

SSC

Infringement under 35 U.S.C. § 271(a) and (c) of all
asserted claims of the ’209 Patent

EDD

EDD MSJ
GRANTED
(12/3/15)

(10b)

SSC

Infringement under 35 U.S.C. § 271(b) of claims 1-19
and 21-22 of the ’209 Patent

EDD

EDD MSJ
GRANTED
(12/3/15)

21
22
23
24
25
26
27
28

Case No. 13-cv-05038 NC

13

1
2

No.

Party
Asserting
Claim

Claim or Theory

Claim
Asserted
Against

Court
Ruling

(10c)

SSC

Infringement under 35 U.S.C. § 271(b) of claim 20 of
the ’209 Patent

EDD

No pending
motion,
claim
proceeds

(10d)

SSC

Infringement of all claims of the ’209 Patent by lenses
#9827 of the ’209 Patent

EDD

EDD MSJ
GRANTED
(12/3/15)

Claim
Asserted
Against

Court
Ruling

3
4
5
6
7
8

PLAINTIFF: Enplas Display Device Corp.
PATENT: ’554 Patent

9
10

United States District Court
Northern District of California

11

No.

Party
Asserting
Claim

(11)

EDD

DJ of noninfringement of all claims of the ’554 Patent and
defense of noninfringement as to all SSC infringement
claims

SSC

Not Moot,
Claim
Proceeds

(12)

EDD

DJ of invalidity of all claims of the ’554 Patent and defense
of invalidity as to all SSC infringement claims

SSC

Not Moot,
Claim
Proceeds

(12a)

EDD

Invalidity of 1-4, 6, 30-31, 33-39, 41-43, and 45-48 as
anticipated under §102 by Johnson

SSC

Contested in
EDD MSJ
(Dkt. No.
166)

(12b)

EDD

Invalidity of 1-4, 6, 30-31, 33-39, 41-43, and 45-48 as
anticipated under §102 by Stanley

SSC

Contested in
EDD MSJ
(Dkt. No.
166)

(12c)

EDD

Invalidity of claims 1-4, 6, 30-31, 33-39, 41-43, and 45-48
as anticipated under §102 by:
(a) Koito;
(b) Sharp;
(c) Althaus;
(d) JP ’161;
(e) Hayashi; and
(f) Parkyn

SSC

Contested in
EDD MSJ
(Dkt. No.
166)

(12d)

EDD

Invalidity of claims 1-4, 6, 30-31, 33-39, 41-43, and 45-48
as obvious under §103 over:

SSC

Contested in
EDD MSJ
(Dkt. No.
166)

12
13

Claim or Theory

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

(a) Johnson alone or in combination with one or more
of Hayashi, Koito, Stanley and Althaus;
(b) Koito alone or in combination with one or more of
Hayashi, Sharp, Stanley, Johnson, Althaus,
Popovich and Parkyn;
(c) Sharp alone or in combination with one or more of
Koito, Hayashi, Johnson, Parkyn, Popovich and

Case No. 13-cv-05038 NC

14

1

No.

2

Party
Asserting
Claim

Claim or Theory

Claim
Asserted
Against

Court
Ruling

Rohm;
(d) Althaus alone or in combination with one or more
of Koito, Sharp, Stanley, Hayashi, Johnson,
Parkyn, Popovich and Lyons;
(e) JP ’161 alone or in combination with one or more
of Hayashi, Koito, Parkyn, Johnson and Rohm;
(f) Stanley alone or in combination with one or more
of Koito, Hayashi, Rohm, Johnson, Parkyn and
Popovich;
(g) Hayashi alone or in combination with one or more
of Johnson, Parkyn and Popovich; and
(h) Parkyn

3
4
5
6
7
8
9

(12e)

EDD

Invalidity of claim 2 under §112, ¶4

SSC

Contested in
EDD MSJ
(Dkt. No.
164)

(12f)

EDD

Invalidity of claims 1-27, 30-48 under §112

SSC

Partial
covenant not
to sue

SSC

Infringement under 35 U.S.C. §271(a), (b), and (c) of all
claims of the ’554 Patent

EDD

Not Moot,
Claim
Proceeds

(13a)

SSC

Infringement under 35 U.S.C. § 271(a) and (c) of all claims
of the ’554 Patent

EDD

EDD MSJ
GRANTED
(12/3/15)

(13b)

SSC

Infringement of claims 4-5, 7-29, 32, and 38-48 of the ’554
Patent

EDD

EDD MSJ
GRANTED
(12/3/15)

(13c)

SSC

Infringement under 35 U.S.C. § 271(b) of claims 1, 2, 6,
30-31, 33-37 of the ’554 Patent

EDD

Contested in
EDD MSJ
(Dkt. No.
166)

(13d)

SSC

Infringement of all claims of the ’554 Patent by lenses
#9827 and #4922

EDD

EDD MSJ
GRANTED
(12/3/15)

10

United States District Court
Northern District of California

11
12
13

(13)

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

Case No. 13-cv-05038 NC

15