Opticurrent, LLC v. Power Integrations, Inc. et al

Filing 420

ORDER by Judge Edward M. Chen Denying 407 Plaintiff's Motion to Compel Production. Motion Hearing set for 6/9/2022 1:30 PM is VACATED. (emcsec, COURT STAFF) (Filed on 5/19/2022)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OPTICURRENT, LLC,

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Plaintiff,

United States District Court
Northern District of California

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Case No. 17-cv-03597-EMC
ORDER DENYING PLAINTIFF’S
MOTION TO COMPEL PRODUCTION

v.

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POWER INTEGRATIONS, INC., et al.,

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Defendants.

Docket No. 407

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I.

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INTRODUCTION

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Following the Federal Circuit’s affirmance of the Court’s denial of Power Integrations’

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Rule 60 motion, Opticurrent moved to lift the stay of execution on the Court’s final judgment.

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Docket No. 407 (“Mot.”). Additionally, Opticurrent sought an order from the Court compelling

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Power Integrations to produce information related to its worldwide sales on an ongoing basis, for

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the purposes of calculating Opticurrent’s entitlement to royalties. Id. After the Federal Circuit

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issued its mandate, the Court lifted the stay of execution on judgment. Docket No. 419. Thus, the

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portion of the motion still pending before the Court is Opticurrent’s request for an order

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compelling production of worldwide sales data by Power Integrations.

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For the following reasons, the Court DENIES Opticurrent’s request.
II.

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RELEVANT BACKGROUND

Of relevance to the currently pending issue is a portion of the Court’s final judgment in
this matter:
It is ORDERED and ADJUDGED that Defendant shall pay Plaintiff,
on a quarterly basis, an ongoing royalty of 3.5% of revenues for
ongoing sales made by Defendant directly into the United States of

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the infringing products listed above.
Docket No. 346 (“Final Judgment”) at 2.
III.

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Opticurrent argues that “Defendant must produce sales figures sufficient to show revenues

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of worldwide sales of infringing product consistent with the final judgment.” Mot. at 5.

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Opticurrent asserts:

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United States District Court
Northern District of California

DISCUSSION

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[T]he Final Judgment was fashioned on the evidence presented at
trial. In particular, Defendant itself relied (successfully) on the
evidence that Defendant made six percent of global sales of its
infringing products in the United States. See Tr. at 767:19-21;
779:6-9 (testimony of Defendant’s corporate representative, Mr.
Sutherland, which formed the basis for Defendant’s post-trial
motion to establish the royalty base as six percent of global sales).
In other words, the royalty base from evidence presented at trial
is six percent of worldwide revenues of the infringing products.
The Court therefore ordered Defendant to compensate for its past
infringement in an amount no less than a reasonable royalty of 3%
applied to that royalty base. The Final Judgment provided a
calculation of that amount up through March 31, 2018. The Final
Judgment also set forth an ongoing royalty of 3.5% to be
applied to future sales of infringing products and required
Defendant to pay on a quarterly basis. . . Defendant must produce
sales information in the same fashion and format used to construct
the Final Judgment, e.g., global sales for the percentage multiplier as
attested by Mr. Sutherland and relied upon by this Court.

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Id. at 5-6 (emphasis added). But Opticurrent already made this exact argument on two separate

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occasions. See e.g., Docket Nos. 341 at 2; 341-1; 341-3; 387 at 7-8; 394 at 6-7; 395 at 1-4. The

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Court declined to adopt Opticurrent’s position at each juncture. See Final Judgment at 2; Docket

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No. 397 (order granting stay of execution of judgment without altering the terms of the judgment

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and declining to compel PI to produce worldwide sales data).

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Specifically, the Court entered a final judgment which rejected Opticurrent’s proposals to

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calculate the royalty percentage based on worldwide sales and did not require Power Integrations

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to produce worldwide sales data. Final Judgment at 2 (“Defendant shall pay Plaintiff, on a

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quarterly basis, an ongoing royalty of 3.5% of revenues for ongoing sales made by Defendant

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directly into the United States of the infringing products listed above.”). At bottom, Power

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Integrations’ worldwide sales figures are irrelevant if Power Integrations provides data as to its

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sales directly into the United States. Opticurrent does not identify any deficiencies in the data
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Power Integrations has already provided with regards to its sales directly in the United States.

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Indeed, Opticurrent does not dispute PI’s representation that PI has “previously provided

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Opticurrent with data for ‘ongoing sales made by Defendants directly into the United States’” and

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Opticurrent did not challenge PI’s statement that PI is “preparing a final, detailed production of

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sales information. . . in the same detailed transaction-level format in which PI produces its sales

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information during discovery.” Opp. at 4. Accordingly, Opticurrent has failed to show why it

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needs Power Integrations’ worldwide sales data at this juncture. Thus, Opticurrent does not

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provide a basis for the Court to reconsider this issue.
IV.

United States District Court
Northern District of California

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CONCLUSION

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Opticurrent’s motion to compel PI to produce worldwide sales data is DENIED.

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This order disposes of Docket No. 407.

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IT IS SO ORDERED.

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Dated: May 19, 2022

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______________________________________
EDWARD M. CHEN
United States District Judge

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