Monolithic Power Systems, Inc. v. O2Micro International Limited

Filing 407

ORDER by Judge Claudia Wilken GRANTING 385 O2 Micro's Motion to Dismiss Claims; GRANTING 397 O2 Micro's Motion to Vacate Trial Date and All Related Dates (cwlc2, COURT STAFF) (Filed on 6/23/2010)

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendant and Counterclaimant O2 Micro International Limited asks the Court to dismiss with prejudice all claims and counterclaims between the parties concerning its United States Patent No. 7,417,382 ('382 patent). vacate all trial-related dates. In addition, O2 Micro moves to v. MONOLITHIC POWER SYSTEMS, INC.; ASUSTEK COMPUTER INC.; ASUSTEK COMPUTER INTERNATIONAL AMERICA; BENQ CORPORATION; and BENQ AMERICA CORP., Counterclaim-Defendants. / O2 MICRO INTERNATIONAL LIMITED, Counterclaimant, v. O2 MICRO INTERNATIONAL LIMITED, Defendant. / MONOLITHIC POWER SYSTEMS, INC., Plaintiff, No. C 08-04567 CW ORDER GRANTING O2 MICRO'S MOTION TO DISMISS CLAIMS AND ADMINISTRATIVE MOTION TO VACATE TRIAL DATE AND ALL RELATED DATES (Docket Nos. 385 and 397) IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

Plaintiff and Counterclaim-

Defendant Monolithic Power Systems, Inc., and CounterclaimDefendants ASUSTeK Computer Inc. and ASUS Computer International (collectively, ASUS) do not oppose O2 Micro's motions. They

object, however, to any dismissal of their invalidity and unenforceability claims with prejudice "to their ability to assert

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such claims in the future where such an assertion is warranted under the circumstances." MPS and ASUS's Response at 1.

O2 Micro seeks dismissal of the claims and counterclaims in this action based on its covenant not to sue MPS or ASUS for patent infringement concerning any and all claims of the '382 patent. covenant, included with O2 Micro's motion to dismiss, provides: In the course of discovery, this is a complete list of MPS's CCFL inverter controller and driver products of which O2 Micro was informed and is aware: MP1007, MP1008, MP1009, MP1010, MP1010A, MP1010B, MP1011, MP1011A, MP1012, MP1013, MP1015, MP1016, MP1017, MP1018, MP1018C, MP1021, MP1022, MP1022A, MP1023, MP1024, MP1025, MP1025A, MP1026, MP1027, MP1028, MP1029, MP1030, MP1031, MP1032, MP1033, MP1035, MP1037, MP1038, MP1039, MP1041, MP1046, MP1048, MP1052, MP1060, MP1061, MP1070, MP1080, MP1088, MP1251, MP1872, MP1900, MP10091, VN800, VN801, VN830, and VN831; By its signature to this motion as of the date of its signature, O2 Micro covenants not to assert the '382 Patent against MPS or MPS's direct or indirect customers, including ASUSTeK, for past or future infringement by (i) any and all current and past MPS CCFL inverter controllers or drivers, including the following: MP1007, MP1008, MP1009, MP1010, MP1010A, MP1010B, MP1011, MP1011A, MP1012, MP1013, MP1015, MP1016, MP1017, MP1018, MP1018C, MP1021, MP1022, MP1022A, MP1023, MP1024, MP1025, MP1025A, MP1026, MP1027, MP1028, MP1029, MP1030, MP1031, MP1032, MP1033, MP1035, MP1037, MP1038, MP1039, MP1041, MP1046, MP1048, MP1052, MP1060, MP1061, MP1070, MP1080, MP1088, MP1251, MP1872, MP1900, MP10091, VN800, VN801, VN830, and VN831; (ii) any MPS CCFL inverter controller or driver products incorporating only insubstantial changes to the design and relevant operation of the products listed in (i); and (iii) any MPS CCFL inverter modules and end-user devices including any ASUSTeK devices incorporating such MPS CCFL inverter controller or driver products described in (i) and (ii) above. O2 Micro further covenants that any assignment or exclusive license to the '382 patent will be subject to this covenant. O2 Micro's Mot. to Dismiss at 5-6. As O2 Micro correctly notes, The

this covenant renders this action non-justiciable for lack of an actual case or controversy, which divests the Court of subject 2

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matter jurisdiction.

See Benitec Australia, Ltd. v. Nucleonics,

Inc., 495 F.3d 1340, 1347-49 (Fed. Cir. 2007); Crossbow Tech., Inc. v. YH Tech., 531 F. Supp. 2d 1117 (N.D. Cal. 2007). Accordingly, the Court GRANTS O2 Micro's motion to dismiss (Docket No. 385) and motion to vacate all trial-related dates (Docket No. 397). All claims and counterclaims are dismissed with To be clear,

prejudice for lack of subject matter jurisdiction.

this dismissal does not preclude MPS and ASUS from, in the future, claiming invalidity and unenforceability of the '382 patent if circumstances differ materially from those here or otherwise warrant such an assertion. Because this Order disposes of all

claims and counterclaims in this action, the Clerk shall enter judgment. All trial-related dates are vacated.

MPS and ASUS state that they intend to move for attorneys' fees and non-taxable costs. Unless the parties stipulate to the

contrary, any such motion must be filed within fourteen days of the entry of judgment. Civil L.R. 54-5(a).

IT IS SO ORDERED.

Dated: June 23, 2010

CLAUDIA WILKEN United States District Judge

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