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

Filing 1478

ORDER by Judge Claudia Wilken GRANTING DEFENDANTS 1473 MOTION TO FILE SUPPLEMENTAL BRIEF AND PERMITTING PLAINTIFF TO FILE RESPONSE. (ndr, COURT STAFF) (Filed on 6/30/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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TESSERA, INC.,
Plaintiff,

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United States District Court
For the Northern District of California

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No. C 05-4063 CW

v.
ADVANCED MICRO DEVICES, INC., et.
al.,
Defendant.
________________________________/

ORDER GRANTING
DEFENDANTS’ MOTION
TO FILE
SUPPLEMENTAL BRIEF
AND PERMITTING
PLAINTIFF TO FILE
RESPONSE
(Docket No. 1473)

AND ALL RELATED COUNTERCLAIMS
/

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On June 16, 2014, Defendants STMicroelectronics, Inc. and
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STMicroelectronics N.V. filed a motion to submit a ten page
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supplemental brief addressing the Supreme Court’s June 2, 2014
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decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
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2120 (2014).

In Nautilus, the Supreme Court reversed the Federal

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Circuit’s decision and articulated a new standard on
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indefiniteness.

Plaintiff Tessera, Inc. opposes the motion or, in

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the alternative, requests that it be afforded the opportunity to
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respond to the newly-asserted arguments.
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By Defendants’ own description, presently before the Court
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are: the parties’ competing proposals for claim construction,
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Tessera’s motion for summary judgment on indefiniteness, and
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Defendants’ motion for summary judgment of non-infringement.

The

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Supreme Court’s new standard on indefiniteness impacts Tessera’s
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motion for summary judgment on indefiniteness and Defendants’
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response to that motion.
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is warranted.
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Thus, supplemental briefing on the issue

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However, Defendants’ proposed supplemental brief not only

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rebuts Tessera’s summary judgment motion, but also urges the Court

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to “grant summary judgment that the asserted claims of Tessera’s

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patents are invalid as indefinite,” which the Court construes as

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an affirmative summary judgment motion of indefiniteness raised

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for the first time.

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to make an additional summary judgment motion after briefing has

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concluded, they generally must show good cause for the argument’s

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late inclusion.

Docket No. 1473-1 at 8.

If Defendants wish

Tessera opposes the motion on much the same

United States District Court
For the Northern District of California

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grounds, arguing that ST never raised an indefiniteness defense

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during fact or expert discovery and such a defense should be

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barred under Rule 37.

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v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001)).

Docket No. 1476 (citing Yeti By Molly Ltd.

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Although ST should have made explicit its intention to bring

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an affirmative summary judgment motion and shown good cause, ST’s

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justification for not bringing this motion sooner is readily

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apparent.

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indefiniteness findings on Tessera’s patents reached by this Court

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and others.

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completed summary judgment briefing, and Defendants sought leave

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to address the issue shortly thereafter, Defendants were justified

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in not disclosing this defense earlier.

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F.3d at 1106 (citing Fed. R. Civ. P. 37(c)(1)) (“The information

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may be introduced if the parties' failure to disclose the required

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information is substantially justified or harmless.”).

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Defendants’ new indefiniteness argument will be substantially

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harmless because Tessera themselves brought a motion on

The new indefiniteness standard might alter the

Because the new law emerged only after the parties

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Yeti by Molly, Ltd., 259

Allowing

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indefiniteness, and so both experts should already have examined

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the issue.

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Id.

Even though ST’s motion for leave to file is not strictly

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proper procedurally, in the interest of efficiency, the Court

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admits Defendants’ supplemental brief.

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page supplemental brief in response no later than ten days after

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entry of this order.

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Tessera may file a ten

No replies will be permitted.

IT IS SO ORDERED.

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United States District Court
For the Northern District of California

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Dated: 6/30/2014
CLAUDIA WILKEN
United States District Judge

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