Trend Micro Incorporated v. Fortinet, Inc.

Filing 57

ORDER re 56 Order of referral deeming cases not related. Signed by Judge Ronald M. Whyte on 2/18/2009. (rmwlc1, COURT STAFF) (Filed on 2/18/2009)

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1 2 3 4 5 6 7 8 9 10 FORTINET, INC., Plaintiff, v. TREND MICRO INC., Defendant. TREND MICRO INC., Plaintiff, v. FORTINET, INC.,. Defendant. No. C-04-01785 RMW [Re Docket No. 56] No. C-08-05371 MMC ORDER NOT RELATING CASES [Re Docket No. 12] IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION E-filed: 2/18/2009 United States District Court 11 For the Northern District of California 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Pursuant to Civil Local Rule 3-12(c), the court in C-08-05371 entered a sua sponte judicial referral to determine whether that action is related to C-04-01785. The prior case involved allegations by Trend Micro that Fortinet infringed U.S. Patent No. 5,623,600. See Docket No. 1 (May 5, 2004). The case proceeded to claim construction with the filing of the parties' joint claim construction statement but got no further. The parties continued the hearing on claim construction and eventually stipulated to dismiss the case. Docket No. 53 (Feb. 13, ORDER NOT RELATING CASES C-08-05371 MMC & C-04-01785 RMW TSF 1 2 3 4 5 6 7 8 9 10 2006). The stipulation of dismissal is very terse, and it contains no language about the court retaining jurisdiction to enforce a settlement agreement. See id. The peace does not appear to have lasted. In the 08-05371 case, Fortinet seeks a declaratory judgment that it does not owe royalties to Trend Micro because of the '600 patent's invalidity and/or unenforceability. Docket No. 11 46-50 (Feb. 3, 2009). Fortinet seeks similar declaratory relief as to a second patent, U.S. Patent No. 5,889,943, which was not involved in the prior litigation. Id. 51-55. Fortinet further alleges a monopolization claim against Trend Micro based on its procurement of the '600 patent and accuses Trend Micro of unfair competition. See id. 56-83. Civil Local Rule 3-12(a) defines a "related case" as one that concerns "substantially the same parties, property, transaction or event" and "[i]t appears likely that there will be an unduly burdensome duplication of labor and expense or conflicting results if the cases are conducted before different Judges." Though the second action adds a patent, the court is satisfied that the bulk of the second action turns on the '600 patent, which was also the subject of the first action. The first prong of Rule 3-12(a) is met. But the second prong is not. There is no risk of conflicting results because nothing happened in the first action. See Docket No. 11 27 ("The Prior Fortinet Northern District Action was stayed during the [ITC] Investigation."). Nor will there be a burdensome duplication of labor, as the court did not even hold a claim construction hearing before the parties settled the first action. Compare with Hynix Semiconductor, Inc. v. Rambus Inc., 2008 WL 3916304 (N.D. Cal. Aug. 24, 2008) (denying motion to relate). For the foregoing reasons, the court has determined that the two cases are not related under the local rules and that no reassignments shall occur. United States District Court 11 For the Northern District of California 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DATED: 2/18/2009 RONALD M. WHYTE United States District Judge ORDER NOT RELATING CASES C-08-05371 MMC & C-04-01785 RMW TSF 2 1 2 3 4 5 6 7 8 9 10 Notice of this document has been electronically sent to counsel in: C-04-01785: Michael A. Berta Terrence J.P. Kearney Kenneth S. Korea Michael Brett Levin Keaton Parekh Christopher R. Parry Sarah Elizabeth Piepmeier Stefani Elise Shanberg Jimmy Minjae Shin Ron Eleazer Shulman Kenneth Brian Wilson C-08-05371: Robin Lynn Brewer Robert D. Fram Michael A. Ladra Michael Myles Markman Stefani Elise Shanberg rbrewer@wsgr.com rfram@cov.com mladra@wsgr.com mmarkman@cov.com sshanberg@wsgr.com mberta@wsgr.com tkearney@wsgr.com ken.korea@dechert.com mlevin@wsgr.com kparekh@mwe.com cparry@wsgr.com spiepmeier@gibsondunn.com sshanberg@wsgr.com jshin@mwe.com rshulman@wsgr.com kwilson@carrferrell.com United States District Court 11 For the Northern District of California 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Counsel are responsible for distributing copies of this document to co-counsel that have not registered for e-filing under the court's CM/ECF program in each action. Dated: 2/18/2009 TSF Chambers of Judge Whyte ORDER NOT RELATING CASES C-08-05371 MMC & C-04-01785 RMW TSF 3

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