Powertech Technology Inc v. Tessera Inc

Filing 71

ORDER by Judge Claudia Wilken DENYING 64 Motion to Alter Judgment (cwlc2, COURT STAFF) (Filed on 8/3/2010)

Powertech Technology Inc v. Tessera Inc

Doc. 71

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 On June 1, 2010, the Court granted Defendant Tessera, Inc.'s, motion to dismiss, concluding that Plaintiff Powertech Technology Inc.'s (PTI) declaratory judgment action did not raise a justiciable controversy. Pursuant to Federal Rule of Civil v. TESSERA, INC., Defendant. / IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA POWERTECH TECHNOLOGY INC., Plaintiff, No. 10-00945 CW ORDER DENYING PLAINTIFF'S MOTION TO ALTER OR AMEND THE COURT'S JUNE 1, 2010 ORDER (Docket No. 64)

Procedure 59(e), PTI now asks the Court to vacate its Order of June 1 and enter an order denying Tessera's motion to dismiss. opposes PTI's motion. papers. Tessera

The motion was taken under submission on the

Having considered the papers submitted by the parties, the

Court DENIES PTI's motion. BACKGROUND Because PTI's allegations are described in sufficient detail in the Court's Order of June 1, they will not be repeated here. In

sum, PTI sought declarations that its "wBGA packaging services have not and do not infringe" Tessera's United States Patent No.

Dockets.Justia.com

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

5,663,106 ('106 patent) and that the patent is invalid. ¶¶ 16 and 17.

Compl.

As noted above, Tessera moved to dismiss PTI's action for lack of subject matter jurisdiction. Tessera maintained that its

disclaimer, made in a complaint filed with the International Trade Commission (ITC),1 precluded a justiciable controversy. disclaimer provided, To the extent that any Accused Product is found to be properly licensed (through the Limited Tape Licenses or otherwise) under Tessera's patents, Tessera does not intend to bring -- nor should Tessera be construed to have brought -- any such Accused Product(s) within the scope of the present Investigation. Weatherwax Decl. in Support of Tessera's Mot. to Dismiss, Ex. 4 ¶ 9. In open court during the hearing on the motion to dismiss, The

Tessera's counsel made a similar disclaimer: We are not accusing any product made by PTI under the license agreement for infringement of the '106 patent or any other patent that we have licensed to PTI on any of the products that are licensed in the agreement. Tr. of May 13, 2010 Hrg. at 5:22-25. Thus, Tessera argued, because

PTI produced its products pursuant to such a license, they fell within the scope of the disclaimer, no controversy existed and subject matter jurisdiction did not lie. Notwithstanding Tessera's disclaimer, PTI asserted that its products were at issue in Tessera's action before the ITC and the patent infringement lawsuit filed in the United States District

The ITC investigation is captioned, In re Certain Semiconductor Chips With Minimized Package Size and Products Containing Same, Inv. No. 337-TA-630. 2

1

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

Court for the Eastern District of Texas,2 both of which were brought against some of PTI's customers. Although PTI did not

offer any direct evidence that its products were at issue, it pointed to Tessera's allegations against one of its customers, Elpida. PTI argued that, because it was the sole supplier of BGA

products to Elpida and BGA products were at issue in the ITC proceeding, one could reasonably infer that Tessera had in fact accused some of PTI's products. After considering all the circumstances, the Court concluded that PTI's declaratory judgment action did not pose a justiciable controversy. The Court agreed with Tessera that its disclaimer The Court also rejected PTI's

precluded a justiciable controversy.

assertion that, under the parties' licensing agreement, its obligation to pay royalties to Tessera turned on whether its products were covered by the '106 patent. Even if an actual

controversy existed, the Court concluded, it would exercise its discretion to decline jurisdiction because judicial efficiency favored hearing PTI's declaratory judgment action along with Tessera's lawsuit. LEGAL STANDARD Rule 59(e) provides that a "motion to alter or amend a judgment must be filed no later than 28 days after the entry of the judgment." Fed. R. Civ. P. 59(e). Rule 59(e) motions are

interpreted as motions for reconsideration, and are appropriate if the district court "(1) is presented with newly discovered The district court action is Tessera, Inc. v. A-DATA Tech. Co., No. 2:07-cv-534 (E.D. Tex.). 3
2

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

evidence, (2) committed clear error or the initial decision was manifestly unjust, or (3) if there is an intervening change in controlling law." Sch. Dist. No. 1J, Multnomah County, Oregon v.

AcandS, Inc., 5 F.3d 1255, 1263 (9th Cir. 1993), cert. denied, 512 U.S. 1236 (1994). A motion for reconsideration shall not "repeat any oral or written argument made by the applying party in support of or in opposition to the . . . order which the party now seeks to have reconsidered." Civil L.R. 7-9(c). DISCUSSION PTI asserts that documents Tessera filed in its appeal to the Federal Circuit of the ITC's disposition constitute newly discovered evidence that justifies vacating the Court's earlier order. In particular, PTI points to Tessera's redacted opening

appellate brief, which contains citations to technical information on PTI technology and references to PTI royalty reports in a section on the failure by Elpida's suppliers to pay royalties. also cites "a list of exhibits" Tessera "sought to designate as part of the Joint Appendix on Appeal," which reflected "87 exhibits or documents containing either `PTI' or `Powertech' in the title." Mot. at 5-6. These documents, according to PTI, "conclusively show PTI

that both PTI's BGA and wBGA products were at issue in the ITC investigation." Id.

Although PTI arguably presents new material,3 it still does PTI's lead counsel represented Elpida in the ITC proceeding and is apparently continuing to do so on appeal. Thus, he should have known at the time PTI opposed Tessera's motion that documents containing the terms "PTI" and "Powertech" were lodged in that 4
3

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

not satisfy its burden to demonstrate an actual controversy.

That

Tessera's infringement expert cited technical information about PTI's products does not establish that those products were accused in the ITC proceeding. Tessera maintains that the information was

cited "for broad, generic points about the technology at issue." Opp'n at 9. There is no reason to believe that Tessera is

misrepresenting the nature of its brief. PTI also points to Tessera's short discussion in its opening appellate brief about Elpida's failure to prove that its suppliers provided licensed products. action here justiciable. This discussion does not render the

Tessera represented to this Court that

PTI, an Elpida supplier, failed to pay "royalties on 40 percent of the products during" the period relevant to the ITC proceeding. Tr. of May 13, 2010 Hrg. at 21:24-25. But this assertion does not

establish that any of the products accused in the ITC proceeding originated from PTI. PTI failed to pay royalties on some of its

products; it does not follow that the products at issue before the ITC were a part of this set.4 Finally, PTI claims that the Court committed clear error. However, its argument largely restates what it argued in opposition to Tessera's motion to dismiss.

tribunal's record and could be designated for the record on appeal. As PTI's argument suggests, Elpida has a shared interest in this declaratory judgment action going forward. Thus, if Elpida is in fact facing litigation because of PTI's products, it is reasonable to expect that PTI, who shares counsel with Elpida, would offer more concrete evidence to establish declaratory judgment jurisdiction, instead of merely referring to redacted briefs from which inferences are to be made. 5
4

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

CONCLUSION For the foregoing reasons, the Court DENIES PTI's motion to alter or amend the Order of June 1. IT IS SO ORDERED. Dated: August 3, 2010 CLAUDIA WILKEN United States District Judge (Docket No. 64.)

6