U.S. Ethernet Innovations, LLC v. Acer, Inc. et al

Filing 1110

ORDER by Judge Claudia WilkenSUMMARIZING RULINGS ON (docket nos. 947, and 951 in case 4:10-cv-03724-CW and docket no. 481 in case 4:10-cv-05254-CW) MOTION TO LIMIT ASSERTED CLAIMS AND (484 in case 4:10-cv-05254-CW) MOTION TO ENJOIN. (ndr, COURT STAFF) (Filed on 5/20/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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U.S. ETHERNET INNOVATIONS, LLC,

No. C 10-3724 CW

Plaintiff,

ORDER SUMMARIZING
RULINGS ON MOTION
TO LIMIT ASSERTED
CLAIMS AND MOTION
TO ENJOIN (Docket
Nos. 947, 951)

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v.
ACER, INC., et al.,
Defendants,

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ATHEROS COMMUNICATIONS, INC., et
al.,

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United States District Court
For the Northern District of California

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Intervenors.

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________________________________/

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U.S. ETHERNET INNOVATIONS, LLC,

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Plaintiff,

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v.

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AT&T MOBILITY, LLC, et al.,

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Defendants,
________________________________/

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No. C 10-5254 CW
ORDER SUMMARIZING
RULINGS ON MOTION
TO LIMIT ASSERTED
CLAIMS, MOTION TO
ENJOIN, AND MOTION
TO STRIKE (Docket
Nos. 481, 484)

In these patent infringement suits, on February 27, 2014, the

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Court held a case management conference and ruled on several

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motions brought by several Intervenors1 and Defendants2 in these

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cases.

The rulings are summarized below.

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Intel Corporation, Marvell Semiconductor Inc., Atheros
Communications Inc., and Sigma Designs, Inc.
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Acer Inc., Acer America Corporation, Apple, Inc., ASUS
Computer International, Asustek Computer Inc., AT&T Services,
Inc., Dell Inc., Fujitsu Ltd., Fujitsu America, Inc., Gateway
Inc., Hewlett Packard Co., Sony Corporation, Sony Corporation of
America, Sony Electronics Inc., Toshiba Corporation, Toshiba
America, Inc., and Toshiba America Information Systems, Inc.

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In both Case No. 10-3724 (the Acer case) and Case No. 10-5254
(the AT&T case), Defendants and Intervenors move to limit the

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number of asserted claims asserted by Plaintiff U.S. Ethernet

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Innovations, LLC (USEI).

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limitation is appropriate.

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close of fact discovery, USEI shall make an Initial Election of

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Asserted Claims limited to sixteen claims per chip supplier

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implicated in USEI’s infringement contentions in these cases,3

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including those who are parties to the suit (Intervenors Intel,

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United States District Court
For the Northern District of California

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Marvell, Atheros, and Sigma) and those who are not (Oracle, SiS,

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and National Semiconductor).

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exceed thirty claims total.

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The Court finds that a two-tiered
Accordingly, seven days after the

USEI’s initial election shall not

Ten days after USEI has made its Initial Election of Asserted

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Claims, Defendants shall make a Prior Art References Election of

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no more than twenty-five prior art references total.

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Fourteen days after all dispositive orders have issued, USEI

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will further narrow its case to no more than twelve claims per

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chip supplier, whether present or not, for a total of no more than

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twenty claims against all parties.

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The limits set by the Court are not immutable.

Claims may be

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reintroduced upon a good cause showing by USEI that those claims

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raise distinct issues of infringement and invalidity.

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Next, Intervenor Intel and non-party Lenovo move to enjoin

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USEI from pursuing duplicative claims in the Eastern District of

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Texas against Lenovo (Lenovo case).

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stayed at the parties’ request, subject to either party reopening

The Lenovo case is currently

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See Acer case, Docket No. 1009, Ex. A.
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the case.4

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liability to USEI in the Lenovo case would depend wholly on

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Lenovo’s use of Intel’s chip, and thus agreed to be bound by the

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infringement and invalidity findings in the Northern District of

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California litigation.

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to enjoin USEI from seeking to reopen the Lenovo case without

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first seeking this Court’s approval.

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transfer the Lenovo case to this district, however, they may do

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so.

United States District Court
For the Northern District of California

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At the hearing, Lenovo asserted that its potential

Therefore, the Court finds it appropriate

If the parties agree to

Lastly, Sigma moves to strike as untimely USEI’s infringement

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contentions served on January 13, 2014.

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infringement contentions exceed the bounds of Sigma’s counterclaim

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for declaratory judgment of non-infringement and USEI has not

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shown good cause for amending its infringement theories.

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Accordingly, the Court grants Sigma’s motion to strike.

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USEI’s January 13, 2014

IT IS SO ORDERED.

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Dated: 5/20/2014

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CLAUDIA WILKEN
United States District Judge

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U.S. Ethernet Innovations, LLC v. Lenovo (United States)
Inc., Case No. 6:13-cv-00612-JDL (E.D. Tex. 2013), Docket Nos. 63,
64. The Texas court stayed the Lenovo case because the Northern
District of California litigation before the undersigned “involves
the same patents-in-suit and . . . is likely to moot . . . or, at
a minimum, streamline the issues presented” in the Lenovo case.
Id., Docket No. 64 at 1.
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