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

Filing 984

ORDER OPPORTUNITY TO SHOW CAUSE WHY A COURT-APPOINTED EXPERT SHOULD NOT BE APPOINTED. Signed by Judge Claudia Wilken on 3/26/2012. (ndr, COURT STAFF) (Filed on 3/26/2012)

1

IN THE UNITED STATES DISTRICT COURT

2

FOR THE NORTHERN DISTRICT OF CALIFORNIA

3
4

TESSERA, INC.,
Plaintiff,

5
6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24

v.
ADVANCED MICRO DEVICES, INC., a
Delaware corporation; SPANSION,
LLC, a Delaware limited liability
corporation; SPANSION, INC., a
Delaware corporation; SPANSION
TECHNOLOGY, INC., a Delaware
corporation; ADVANCED
SEMICONDUCTOR ENGINEERING, INC.,
a Republic of China corporation;
ASE (U.S.), INC., a California
corporation; CHIPMOS
TECHNOLOGIES, INC., a Republic of
China corporation; CHIPMOS
U.S.A., INC., a California
corporation; SILICONWARE
PRECISION INDUSTRIES CO., LTD., a
Republic of China corporation;
SILICONWARE USA, INC., a
California corporation;
STMICROELECTRONICS N.V., a
Netherlands corporation;
STMICROELECTRONICS, INC., a
Delaware corporation; STATS
CHIPPAC, INC., a Delaware
corporation; STATS CHIPPAC (BVI),
INC., a British Virgin Islands
company; STATS CHIPPAC, LTD., a
Singapore company,

27
28

OPPORTUNITY TO
SHOW CAUSE WHY A
COURT-APPOINTED
EXPERT SHOULD NOT
BE APPOINTED

Defendants.
________________________________/
SILICONWARE PRECISION INDUSTRIES
CO, LTD; SILICONWARE U.S.A.,
INC.,
Plaintiffs,

25
26

No. C 05-4063 CW

v.
TESSERA, INC.,
Defendant.
________________________________/

No. C 08-3667 CW

1
2

CHIPMOS TECHNOLOGIES, INC.;
CHIPMOS U.S.A., INC.; CHIPMOS
TECHNOLOGIES (BERMUDA), LTD.,

3
4

Plaintiffs,
v.

5

TESSERA, INC.,

6

Defendant.
________________________________/

7
8
9

ADVANCED SEMICONDUCTOR
ENGINEERING, INC.; ASE TEST
LIMITED; ASE (U.S.), INC.,

11
12

No. C 08-3726 CW

Plaintiffs,

10
United States District Court
For the Northern District of California

No. C 08-3827 CW

v.
TESSERA, INC.,

13

Defendant.
________________________________/

14

SPANSION, INC.,

15
16

et al.,

No. C 10-4954 CW

Plaintiffs,
v.

17

TESSERA, INC.,

18

Claimant.
________________________________/

19
20

POWERTECH TECHNOLOGY INC.,
Plaintiff,

21
22
23
24
25

No. C 10-945 CW

v.
TESSERA, INC.,
Defendant.
________________________________/

26
27
28
2

1

POWERTECH TECHNOLOGY INC.,

2
3
4

No. C 11-6121 CW

Plaintiff,
v.
TESSERA, INC.,

5

Defendant.

6

________________________________/

7

TESSERA, INC.,

8
9

United States District Court
For the Northern District of California

10
11
12

No. C 12-692 CW

Plaintiff,
v.
QUALCOMM, INC.; FREESCALE
SEMICONDUCTOR, INC.; ATI
TECHNOLOGIES, ULC,
Defendants.

13

________________________________/

14

AND ALL RELATED COUNTERCLAIMS
/

15
16

The Court provides certain parties in the above-captioned
17
cases with an opportunity to show cause why an expert witness
18
should not be appointed by the Court to testify to the jury.
19
On October 7, 2005, Tessera, Inc. filed a complaint against
20
various Defendants in Tessera, Inc. v. Advanced Micro Devices,
21
Inc., Case No. 05-4063 (AMD).

Tessera asserts claims for

22
infringement of five related patents, U.S. Patent Nos.
23
5,679,977, 5,852,326, 6,133,627, 6,433,419, and 6,465,893,
24
pertaining to semiconductor chip assemblies, and for breach of
25
license agreements by certain Defendants.

Several Defendants have

26
asserted counterclaims for declaratory judgment of
27
non-infringement and invalidity of the patents.
28
3

1

On March 13, 2007, pursuant to Federal Rule of Evidence 706,

2

the Court ordered the parties in Tessera, Inc. v. Advanced Micro

3

Devices, Inc., Case No. 05-4063 (AMD), to show cause why an expert

4

witness should not be appointed by the Court to show testify to

5

the jury in the case.

See AMD, Docket No. 402.

6

On April 12, 2007, after having considered the parties’

7

submission, the Court determined that it would appoint an expert,

8

who would testify on the background of the technology at issue as

9

well as the substantive issues in dispute, such as infringement

United States District Court
For the Northern District of California

10

and validity, but would not testify as to damages.

11

Docket No. 439.

See AMD,

12

Shortly thereafter, the AMD case was stayed pending the

13

resolution of several investigations initiated by the United

14

States International Trade Commission (ITC).

15

24, 2007, the parties stipulated to, and this Court ordered, a

16

stay of the AMD case in its entirety pending the final

17

determination of the ITC in Investigation No. 337-TA-605, which

18

involved two of the patents in the AMD case.

19

466.

20

No. 337-TA-649, regarding infringement of multiple patents,

21

including three of the patents at issue in the AMD case.

22

August 5, 2008, the Court extended the stay in the AMD case

23

pending final determination of the 649 Investigation.

Specifically, on May

See AMD, Docket No.

A year later, in May 2008, the ITC initiated Investigation

On

24

While the AMD case was stayed, a number of later filed

25

actions were related to it, many of which were also subsequently

26

stayed.

27
28

On September 11, 2008, this Court issued an order relating to
the AMD action three cases: Siliconware Precision Industries Co.,
4

1

Ltd. et al. v. Tessera, Inc., Case No. 08-03667 (the Siliconware

2

case); Advanced Semiconductor Engineering Inc. et al. v. Tessera,

3

Inc., Case No. 08-03726; and ChipMos Technologies Inc. et al. v.

4

Tessera, Inc., Case No. 08-03827.

5

are either defendants in the AMD case or affiliated with

6

defendants in the AMD case, and they seek declaratory judgments of

7

non-infringement and invalidity of the 5,663,106 patent (the ’106

8

patent), another patent at issue in the later 649 Investigation.

9

On December 19, 2008, the parties stipulated to, and the Court

The plaintiffs in these cases

United States District Court
For the Northern District of California

10

ordered, a stay of these cases in light of the 649 Investigation.

11

The 649 Investigation was terminated on August 7, 2009.

12

parties to the three later cases

13

in these cases pending resolution of the 605 Investigation to

14

The

allow the related cases to proceed together.

15

stipulated to continue the stay

On March 22, 2010, the Court issued an order relating

16

Powertech Technology, Inc. v. Tessera, Inc. (PTI I), Case No. 10-

17

945, to the Siliconware case.

18

Tessera, also sought declarations of non-infringement and

19

invalidity of the ’106 patent.

20

the action for lack of subject matter jurisdiction, finding no

21

Article III case or controversy between the parties.

22

Technology, Inc. v. Tessera, Inc., 2010 U.S. Dist. Lexis 53621, at

23

*7-8 (N.D. Cal.).

24

In that case, PTI, a licensee of

In June 2010, this Court dismissed

Powertech

On November 10, 2010, this Court issued an order relating to

25

the AMD case Spansion Inc. v. Tessera Inc., Case No. 10-4954, a

26

bankruptcy dispute involving Tessera and several Defendants in the

27

AMD action.

28
5

1

On September 30, 2011, the Federal Circuit reversed this

2

Court’s dismissal in PTI I, finding that a controversy did exist

3

between the parties, and remanded the case to this Court for

4

further proceedings.

5

660 F.3d 1301 (Fed. Cir. 2011).

6

2012.

7

Powertech Technology, Inc. v. Tessera, Inc.,
The mandate issued on January 19,

Meanwhile, on November 28, 2011, the 605 Investigation

8

reached a final resolution when the Supreme Court denied the

9

respondents’ petition for a writ of certiorari.

United States District Court
For the Northern District of California

10

On December 6, 2011, PTI filed a second action against

11

Tessera, Powertech Technology, Inc. v. Tessera, Inc. (PTI II),

12

Case No. 11-6121, alleging that Tessera had breached the license

13

agreement between the parties by bringing ITC Investigation No.

14

337-TA-630 against certain of PTI’s customers.

15

2011, upon motion by PTI, the Court issued an order relating PTI

16

II to PTI I.

17

On December 15,

On January 4, 2012, the Court held a case management

18

conference in all of the related cases.

19

as to those cases that had been stayed and directed the parties to

20

meet and confer regarding the identity of a court-appointed

21

expert.

22

joined parties with a formal opportunity pursuant to Federal Rule

23

of Evidence 706 to show cause why an expert should not be

24

appointed.

25

The Court lifted the stay

However, the Court at that time did not provide the newly

Thus, the Court does so now.

On February 29, 2012, this Court issued an order relating to

26

the AMD case Tessera, Inc. v. Motorola, Inc., Case No. 12-692, a

27

case that had been recently transferred from the Eastern District

28

of Texas, which involved invalidity and infringement contentions
6

1

regarding two of the patents in the AMD case and which had also

2

been previously stayed pending resolution of the 605

3

Investigation.

4

to this district to be related to the AMD case.

5

Tessera and two of three Defendants in this case were present at

6

the January 4, 2012 case management conference.

7

as well are given the opportunity to show cause why an expert

8

should not be appointed.

9

The parties had stipulated to transfer the action
Counsel for

These Defendants

Having presided over matters involving the same and related

United States District Court
For the Northern District of California

10

patents and technology, the Court believes that the complexity of

11

the technology at issue in this case will be particularly

12

difficult and confusing for the jury to understand.

13

given the stark conflicts in the parties’ extensive litigation

14

before the ITC, the Court reasonably anticipates that expert

15

advice will be necessary to assist in resolving differences

16

between the parties’ experts.

Further,

17

For these reasons, the Court is inclined to appoint the

18

expert selected to serve in the AMD case to serve in all the

19

related cases.

The expert will advise the Court on claim

20

construction.

He will also advise the Court and ultimately

21

testify to the jury on the background of the technology at issue

22

as well as the substantive issues in dispute, such as infringement

23

and validity, although not on damages.

24

consider it prudent to delay in appointing an expert on these

25

issues, as one party has suggested.

26

litigation and the number of parties and claims involved, the

27

Court believes it necessary to allow a substantial amount of time

28

for the expert to prepare a report and for the parties to depose
7

The Court does not

Given the complexity of this

the expert.

2

parties’ expert reports are submitted to the Court would lead to

3

substantial delay in the future.

4

an opportunity prior to trial to move to disallow the introduction

5

of the appointed expert’s testimony to the jury on the ultimate

6

issues of infringement and invalidity, should it become apparent

7

that the parties’ experts have not provided confusing and

8

conflicting evidence and the expert’s testimony is not needed.

9

Accordingly, the Court will allow the parties in the

10
United States District Court
For the Northern District of California

1

above-captioned cases other than the AMD case, who are not also

11

party to the AMD action, an opportunity to show cause why the

12

Court should not appoint its expert in all of the above-captioned

13

actions as well as in the AMD case.

14

within five days of the date of this Order.

15

limited to five pages or less and shall not include any argument

16

addressing the identity or selection of the expert.

17

Waiting to appoint an expert until after the

The Court will give the parties

These parties may respond
Submissions are

IT IS SO ORDERED.

18
19
20

Dated: 3/26/2012

CLAUDIA WILKEN
United States District Judge

21
22
23
24
25
26
27
28
8