Tessera, Inc. v. Advanced Micro Devices, Inc. et al

Filing 1278

ORDER by Judge Claudia Wilken DENYING ( (290) in case 4:12-cv-00692-CW; (1223),(1226), (1227) in case 4:05-cv-04063-CW) MOTIONS FOR SEPARATE TRIAL AND/OR BIFURCATION (ndr, COURT STAFF) (Filed on 11/13/2013)

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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 TESSERA, INC., 5 6 7 8 Plaintiff, v. ADVANCED MICRO DEVICES, INC., et al., Defendants. 9 United States District Court For the Northern District of California 10 11 ________________________________/ TESSERA, INC., 12 13 14 No. C 12-692 CW Plaintiff, v. QUALCOMM, INC., 15 16 No. C 05-04063-CW Defendant. ________________________________/ 17 ORDER DENYING MOTIONS FOR SEPARATE TRIAL AND/OR BIFURCATION (-4063, Docket Nos. 1223, 1226, 1227) (-692, Docket No. 290) 18 19 20 21 Four sets of Defendants remain in these related cases: (1) STMicroelectronics N.V. (ST-NV) and ST Microelectronics, Inc. (ST-Inc.)(collectively ST); (2) Advanced Semiconductor 22 23 24 Engineering, Inc. and ASE (U.S.) Inc. (collectively ASE); (3) ChipMOS Technologies, Inc. and ChipMOS U.S.A., Inc. 25 (collectively 26 trial plan and moves for a separate trial. 27 1223. 28 ChipMos), and (4) Qualcomm, Inc. ST presents its -4063, Docket No. ASE moves for a separate trial and, in the event its motion 1 is denied, requests bifurcation of damages. -4063, Docket No. 2 1227. 3 consolidated with ASE, but not with ST or one another. 4 Docket No. 290; -4063, Docket No. 1226. 5 request that the Court bifurcate issues of liability from any 6 7 Qualcomm and ChipMos request a trial on liability trial on damages. -692, Qualcomm and ChipMos also After reviewing the submitted papers, the Court DENIES without prejudice all motions for separate trials and 8 9 United States District Court For the Northern District of California 10 bifurcation of damages. Defendants may renew their motions at a later date. 11 BACKGROUND 12 Tessera first filed its complaint in October 2005 against 13 Advanced Micro and Spansion, two defendants that are no longer 14 parties to this case. 15 -4063, Docket No. 1. In January 2006 Tessera moved to amend its complaint to add a number of other 16 17 18 Defendants, including ASE, ChipMOS, and ST. -4063, Docket No. 20. In April 2007, Tessera filed an action in the Eastern District of 19 Texas (the -692 action); among its defendants was Qualcomm. 20 May 2007, the United States International Trade Commission (ITC) 21 initiated an investigation designated Certain Semiconductor Chips 22 with Minimized Chip Package Size and Products Containing Same (the 23 24 -605 investigation). investigation. In ASE and ChipMos were not parties to the -605 The eventual transfer of the -692 action from the 25 26 27 28 Texas court to this district brought in three additional Defendants, including Qualcomm. Two of those Defendants subsequently settled with Tessera, leaving only Qualcomm. 2 Thus, 1 2 four sets of Defendants remain: ASE, ChipMOS, and ST from the -4063 action, and Qualcomm from the -692 action. 3 Tessera asserts four claims of U.S. Patent No. 5,852,326 (the 4 ‘326 patent) against all Defendants, and asserts one claim of U.S. 5 Patent No. 5,679,977 (the ‘977 patent) against ASE, ChipMOS, and 6 7 STMicro. The ‘326 and ‘977 patents share the same specification. In addition to the infringement claims, Tessera also asserts a 8 9 breach of license claim against ASE and ST and a breach of United States District Court For the Northern District of California 10 confidentiality claim against ST arising out of the licensing 11 relationship. 12 In February 2013 Special Master Legge recommended that “the 13 issue of severance . . . be given consideration substantially in 14 advance of the trial date.” 15 -4063, Docket No. 1164 at 2-3. the time, the trial was set for April 2014. At In March 2013 the 16 17 18 19 20 21 22 23 24 Court postponed the trial to August 2014. filed its trial plan. In July 2013 Tessera Defendants each filed motions for separate trials and/or bifurcation of damages thereafter. LEGAL STANDARD Federal Rule of Civil Procedure 20(b) provides that a court may order separate trials to protect a party against prejudice. In addition, the Court has “considerable discretion” to consolidate separate actions for trial so long as the actions 25 26 “involve a common question of law or fact.” In re EMC Corp., 677 27 F.3d 1351, 1360 (Fed. Cir. 2012). As a practical matter, in 28 addressing such motions, “the same concerns are considered by the 3 1 Court, namely, convenience of the parties, avoiding prejudice, and 2 promoting expedition and economy.” 3 Landes, 1988 WL 56710, at *3 (S.D.N.Y.). 4 5 6 7 Sutton Hill Associates v. Federal Rule of Civil Procedure 42(b) states, “For convenience, to avoid prejudice, or to expedite and economize, the court may order a separate trial of one or more separate issues, claims, crossclaims, counterclaims, or third-party claims.” Fed. 8 9 R. Civ. P. 42(b). Factors to be considered when ruling on a Rule United States District Court For the Northern District of California 10 42(b) motion include complexity of issues, factual proof, risk of 11 jury confusion, difference between the separated issues, the 12 chance that separation will lead to economy in discovery, and the 13 possibility that the first trial may be dispositive of the case. 14 Calmar, Inc. v. Emson Research, Inc., 850 F. Supp. 861, 866 (C.D. 15 Cal. 1994). A party seeking to bifurcate under Rule 42 has the 16 17 18 burden of showing that bifurcation is justified. See Spectra- Physics Lasers, Inc. v. Uniphase Corp., 144 F.R.D. 99, 101 (N.D. 19 Cal. 1992) ("the party seeking bifurcation . . . has the burden of 20 proving that bifurcation is justified given the facts"). 21 22 23 24 DISCUSSION I. Separate Trials This Court has been of the view that a single trial of the claims against all remaining Defendants will be most efficient. 25 26 The claims against these four sets of Defendants involve similar 27 accused packages and allege infringement of the same two patents. 28 Allowing these claims to proceed in four separate trials would 4 1 result in duplicative proceedings and burden the parties, the 2 Court and potential jurors in this district. 3 premature. 4 summary judgment hearing. 5 the court-appointed expert, have not been received. 6 7 These motions are The Court has not yet held a claim construction and The expert reports, including that of Once the expert reports are received and the claim construction and summary judgment motions decided, the scope of the trial will be more 8 9 United States District Court For the Northern District of California 10 clear. Additional settlements may be reached in the meantime. ASE is concerned that evidence of the result of the ITC 11 investigation would be admitted at a joint trial and would 12 prejudice ASE, which did not participate in the ITC proceeding. 13 ChipMos makes a similar argument. 14 curative instruction could prevent potential prejudice. 15 Tessera responds that a At this stage in the litigation, the Court does not decide whether the 16 17 18 19 result of the -605 investigation will be admitted at trial and, if it is, whether it will prejudice the jury. The Court notes that the parties allude to multiple experts. 20 The Court’s uniform practice is to allow only one expert per 21 subject matter per side. 22 experts on the same subject with differing opinions, an exception 23 24 If jointly tried Defendants proffer may be made to allow them. II. Bifurcation of Damages 25 26 ASE, Qualcomm, and Chipmos request bifurcation of liability 27 and damages. These Defendants contend that issues of liability 28 involve facts separate and distinct from those relating to issues 5 1 of damages. In addition, they argue that damages calculations are 2 complex and burdensome, requiring that the jury comprehend, among 3 other things, commercial complexities of the semiconductor market; 4 methodology regarding the calculation of damages; and legal 5 principles regarding royalty rates and patent license 6 7 negotiations. Tessera responds that the bulk of the testimony of its damages expert will be the same as to each Defendant, 8 9 describing the methodology of his analysis and the basis for the United States District Court For the Northern District of California 10 reasonable royalty rate. 11 trial, the Court finds that, at this stage in the litigation, 12 judicial economy weighs in favor of denying without prejudice ASE, 13 Qualcomm, and Chipmos’s motions to bifurcate. 14 15 16 17 18 19 20 21 22 23 24 25 26 As with the motions for a separate // // // // // // // // // // // // // // // // // // // // // // 27 28 6 CONCLUSION 1 2 For the reasons stated above, the Court DENIES without 3 prejudice Defendants’ motions for a separate trial and, in the 4 alternative, to bifurcate. 5 motions after the Court issues its order following the Markman and 6 7 summary judgment hearing. Defendants may renew all of these The Court also advises the following: 1. Each side is limited to one expert per subject matter. 8 9 2. To the extent that experts are used in the claim United States District Court For the Northern District of California 10 construction and summary judgment briefs, any Daubert 11 motions shall be included within the parties’ joint briefs 12 on those issues. 13 IT IS SO ORDERED. 14 15 16 Dated: 11/13/2013 CLAUDIA WILKEN United States District Judge 17 18 19 20 21 22 23 24 25 26 27 28 7

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