Goodard v. Google, Inc.
Goodard v. Google, Inc.
1 ROBERT T. HASLAM (Bar No. 71134) 2 MICHAEL K. PLIMACK (Bar No. 133869) 3 CHRISTINE SAUNDERS HASKETT (Bar No. 188053) 4 SAMUEL F. ERNST (Bar No. 223963) 5 COVINGTON & BURLING LLP 6 San Francisco, CA 94111 7 Facsimile:
Telephone: One Front Street (415) 591-6000 (415) 591-6091 firstname.lastname@example.org email@example.com firstname.lastname@example.org email@example.com
8 ALAN H. BLANKENHEIMER (Bar No. 218713) 9 LAURA E. MUSCHAMP (Bar No. 228717) 10 JO DALE CAROTHERS (Bar No. 228703) 11 COVINGTON & BURLING LLP 12 San Diego, CA 92122-1225 13 Facsimile:
Telephone: (858) 678-1800 (858) 678-1600 firstname.lastname@example.org 9191 Towne Centre Drive, 6th Floor email@example.com firstname.lastname@example.org
14 Attorneys for Defendants and Counterclaimants SAMSUNG ELECTRONICS CO., LTD., 16 AMERICA, INC. 17 18 19 20 ADVANCED MICRO DEVICES, INC., et al., 21 22 v. 23 SAMSUNG ELECTRONICS CO., LTD., et al., 24
Defendants and Counterclaimants. Plaintiffs and Counterdefendants,
15 SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA Case No. 3:08-CV-0986-SI
SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, LLC, AMERICA, LLC, SAMSUNG TECHWIN CO., LTD., and SAMSUNG OPTO-ELECTRONICS
SAMSUNG'S NOTICE OF MOTION AND MOTION FOR LEAVE TO AMEND ITS PRELIMINARY INVALIDITY CONTENTIONS DATE: April 3, 2009 TIME: 9:00 a.m. COURTROOM: 10, 19th Floor JUDGE: The Honorable Susan Illston
25 26 27 28
MOTION FOR LEAVE TO AMEND PRELIMINARY INVALIDITY CONTENTIONS
1 2 3 4 I. 5 II. 6 III. 7 8 9 10 11 12 13 14 IV. 15 16 17 18 19 20 21 22 23 24 25 26 27 28
TABLE OF CONTENTS Page
INTRODUCTION............................................................................................................... 1 STATEMENT OF FACTS.................................................................................................. 3 ARGUMENT ...................................................................................................................... 7 A. Samsung Has Good Cause to Amend Its Preliminary Invalidity Contentions. ............................................................................................................ 7 1. 2. The New Prior Art Is Highly Relevant to the Ultimate Determination of Invalidity......................................................................... 8 Samsung's Motion Is Timely and Not Motivated by Gamesmanship. ......................................................................................... 10 Samsung Has Acted Diligently to Locate Hard-to-Find Prior Art............ 11 AMD Cannot Be Prejudiced by an Amendment at This Stage of the Case. .................................................................................................... 12
CONCLUSION ................................................................................................................. 13
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1 2 3 CASES
TABLE OF AUTHORITIES Page
4 Acco Brands, Inc. v. PC Guardian Anti-Theft Prods., Inc., 5
No. C04-03526 SI, 2008 WL 2168379 (N.D. Cal. May 22, 2008)................................. 7, 8, 12 371 U.S. 178 (1962) .................................................................................................................. 8
6 Foman v. Davis, 7 8
Golden Hour Data Sys., Inc. v. Health Svc. Integration, Inc., No. C06-7477 SI, 2008 WL 2622794 (N.D. Cal. July 1, 2008)....................................... passim 211 F.R.D. 360 (N.D. Cal. 2002) ............................................................................................ 11 O2 Micro Int'l. Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006)............................................................................................... 11 The Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., No. C05-04158 MHP, 2008 WL 624771 (N.D. Cal. March 4, 2008)....................... 7, 8, 11, 12 No. C05-01550 SI, 2007 WL 1454259 (N.D. Cal. May 17, 2007).................................. passim STATUTES
9 LG Electronics Inc. v. Q-Lity Computer, Inc., 10 11 12 13
14 Yodlee, Inc. v. CashEdge, Inc., 15 16
17 35 U.S.C. § 103(a)........................................................................................................................... 8 18 OTHER AUTHORITIES 19 Local Rule 1-4................................................................................................................................. 7 20 Local Rule 3-6(a) .......................................................................................................................... 11 21 Local Rule 3-7................................................................................................................... 1, 2, 7, 11 22 23 24 25 26 27 28
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NOTICE OF MOTION TO PLAINTIFF AND COUNTERDEFENDANTS ADVANCED MICRO DEVICES, INC.
3 AND ATI TECHNOLOGIES, ULC (COLLECTIVELY "AMD") AND ITS ATTORNEYS OF 4 RECORD: 5
PLEASE TAKE NOTICE THAT Samsung Electronics Co., Ltd., Samsung Semiconductor,
6 Inc., Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung 7 Telecommunications America, LLC, Samsung Techwin Co., Ltd., and Samsung Opto-Electronics 8 America, Inc. (collectively "Samsung") hereby move for leave to amend their Preliminary 9 Invalidity Contentions, pursuant to Local Rule 3-7. Samsung requests that the Court grant it 10 permission to serve on AMD the Second Amended Preliminary Invalidity Contentions attached as 11 Exhibit 1 to the Declaration of Christine Saunders Haskett in Support of Samsung's Motion for 12 Leave to Amend its Preliminary Infringement Contentions ("Haskett Decl."). 13
This motion is based on this Notice of Motion, on the following Memorandum of Points and
14 Authorities, on the Declaration of Christine Saunders Haskett, and on such other materials or oral 15 argument as the Court may permit. 16 17 18 I. 19
MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION AMD has asserted seven patents against Samsung in this case. By the time its Preliminary
20 Invalidity Contentions were due, Samsung had identified 225 invalidating prior art references and 21 had drafted detailed invalidity claim charts. Although Samsung's initial efforts were substantial, 22 and the results robust, on-going investigation and discovery have revealed several additional prior 23 art references that render certain of AMD's asserted patent claims invalid. Specifically, Samsung 24 has identified one new prior art article, one new patent, and testimony from the named inventor that 25 go to the invalidity of U.S. Patent No. 5,545,592 (the "`592 Patent"), one new prior art article 26 relating to the invalidity of U.S. Patent No. 5,248,893 (the "`893 Patent"), and five new U.S. 27 Patents that relate to the invalidity of U.S. Patent No. 5,559,990 (the "`990 Patent"). Including 28
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1 these additional prior art references and associated invalidity claim charts in Samsung's Invalidity 2 Contentions would ensure that this case is decided on a full and fair record. 3
Furthermore, all of the factors this Court evaluates when considering a motion to amend
4 invalidity contentions under Patent Local Rule 3-7 favor granting Samsung's motion. First, all of 5 the proposed amendments are relevant to the issue of invalidity in that each of the proposed pieces 6 of prior art, considered either alone or in combination with others, renders at least one asserted 7 patent claim invalid. 8
Second, because Samsung has moved diligently to find this additional prior art and has
9 sought to make these amendments early in the case, there is no suggestion that it is doing so out of 10 improper gamesmanship. To the contrary, the proposed amendments are the result of ongoing and 11 diligent discovery and investigation efforts. 12
Third, the short delay in finding and analyzing the new prior art is excused by the difficulty
13 Samsung has faced in combing through the vast amount of prior art that exists with respect to 14 AMD's `592, `893, and `990 Patents. And in the case of the `592 inventor testimony, the relevant 15 material only became available when the inventor was deposed, which was several days after the 16 deadline for Preliminary Invalidity Contentions. 17
Finally, because Samsung has acted quickly and because the case is still at a relatively early
18 stage of the proceedings, AMD will not be prejudiced by the proposed amendments. 19
For these reasons, Samsung respectfully requests that the Court grant it leave to serve AMD
20 with the Second Amended Preliminary Invalidity Contentions that are attached as Exhibit 1 to the 21 Haskett Declaration.1 22 23 24
25 Preliminary Invalidity Contentions, including appended charts, shown in redline form to indicate
Exhibit 1 to the Haskett Declaration is Samsung's complete proposed Second Amended
26 accompanying the proposed Second Amended Preliminary Contentions are entirely new, however, 27 the Second Amended Preliminary Invalidity Contentions. References in this brief to Appendices
are to those charts appended to Exhibit 1.
the new material proposed to be added to the pleading and to the existing charts. Five of the charts and thus are not shown in redline form. These charts are Appendices A9, C6, D15, D16 and D17 to
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1 II. 2 3
STATEMENT OF FACTS Procedural Background. This lawsuit was initiated by AMD on February 19, 2008. After the Initial Case
4 Management Conference, held on May 30, 2008, the case was stayed for several months so that the 5 parties could pursue mediation. Those mediation efforts were unsuccessful, and the stay was lifted 6 on August 31, 2008. 7
On November 14, 2008, approximately three months before the filing of this motion,
8 Samsung served its Preliminary Invalidity Contentions, which consisted of lists of 255 prior art 9 references and 29 invalidity claim charts. At AMD's request, on December 10, 2008, Samsung 10 served Amended Preliminary Invalidity Contentions to correct a typographical error and an 11 omission in the cover pleading. See Haskett Decl., Ex. 2 (Letter from Lesli Rawles dated 12 December 10, 2008). On November 24, 2008, AMD complained that Samsung's Preliminary 13 Invalidity Contentions were insufficient in part because they did not include specific identifications 14 of the motivation to combine certain references. See Haskett Decl., Ex. 3 (Letter from William 15 Manning dated November 24, 2008). Samsung attempted to accommodate AMD's concern by 16 offering a stipulation whereby Samsung would amend its motivation-to-combine contentions and, 17 in return, AMD would not object to Samsung including some additional prior art references as part 18 of the amendment. See Haskett Decl., Ex. 4 (Letter from Sam Ernst, dated December 8, 2008). 19 AMD refused Samsung's offer, necessitating this motion. See Haskett Decl., Ex. 5 (Letter from 20 Samuel Walling dated December 12, 2008). 21 22
`592 Patent Supplemental Prior Art References. The first group of references Samsung seeks to add pertain to the invalidity of U.S. Patent
23 No. 5,545,592 (the "`592 Patent"). The `592 Patent--the asserted claims of which are directed 24 towards forming an electrical contact on a semiconductor--implicates an enormous body of prior 25 art, dating back as far as 1986. Indeed, Samsung's Preliminary Invalidity Contentions for the `592 26 Patent, which were necessarily compiled before Samsung had the benefit of any significant 27 discovery of AMD, cited no fewer than 54 prior art references. Given the volume of relevant prior 28
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1 art, it has taken significant time and effort to analyze that art, and it is an effort that Samsung has 2 continued to pursue in several respects after filing its Preliminary Invalidity Contentions. 3
For example, in preparing for the recent deposition of named inventor John Iacoponi, which
4 was scheduled by mutual agreement for November 18, 2008, four days after the deadline for 5 Preliminary Invalidity Contentions, Samsung discovered that Mr. Iacoponi had been a regular 6 attendee in the 1990's at the annual VMIC conference, which was a prominent conference for those 7 involved in the field to which the `592 patent relates. Although the VMIC conference and the 8 papers presented there are highly relevant to the subject matter of the `592 Patent, AMD did not 9 disclose any VMIC materials to the U.S. PTO during the prosecution of the `592 Patent. AMD's 10 failure to disclose the VMIC conferences or any of the papers presented means that that prior art 11 does not appear anywhere on the face of the `592 Patent. Instead, Samsung had to search out the 12 relevant materials, which did not happen until shortly before the deadline for Preliminary Invalidity 13 Contentions. Even once the VMIC materials were located, consisting of six large volumes each 14 containing over a hundred technical papers, there was substantial work involved in reviewing and 15 analyzing the materials. And the inventor, John Iacoponi, obviously could not be questioned about 16 the materials until his deposition, which took place after the deadline for Preliminary Invalidity 17 Contentions. One of the articles presented at the 1992 VMIC conference, authored by Kazuyoshi 18 Kamoshida and entitled "Self-Aligned TiN Formation by N2 Plasma Bias Treatment of TiSix", is 19 particularly relevant to the asserted claims of the `592 Patent and, combined with certain art already 20 disclosed by Samsung in its Preliminary Invalidity Contentions, renders those claims invalid. See 21 Haskett Decl., Ex. 6 (Kamoshida Reference). Attached to Samsung's proposed Second Amended 22 Preliminary Invalidity Contentions as Appendices A1-A9 are nine invalidity claim charts that 23 incorporate the Kamoshida reference into Samsung's Preliminary Invalidity Contentions.2 See 24 Haskett Decl., Ex. 1. 25
Appendices A1-A8 are charts that were appended to Samsung's Preliminary Invalidity Contentions, redlined to show the new material proposed to be added by this motion. Appendix A9 26 is a new chart that Samsung proposes to add by this motion. Only Appendices A4 and A9 reference the Kamoshida article explicitly; the other charts incorporate the article by reference as included in 27 the group designated in Appendix A4 as "Nitrogen Plasma Treatment of Metal Silicide References."
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The second additional reference Samsung proposes to add to its Preliminary Invalidity
2 Contentions regarding the `592 Patent is U.S. Patent No. 5,175,126 to Huei-Min Ho and Yi Ching 3 Lin (the "Ho `126 Patent"). See Haskett Decl., Ex. 7 (Ho `126 Patent). The Ho `126 Patent is 4 incorporated into Exhibit 1 at Appendices A1-A8 to this motion.3 The Ho `126 Patent is another 5 reference that is part of the immense body of prior art relevant to the `592 Patent that has taken 6 Samsung substantial time to review and analyze. 7
Finally, Samsung proposes to amend its `592 Patent invalidity contentions by adding a
8 number of references to the deposition testimony of Mr. Iacoponi himself. In his deposition, which 9 took place several days after Samsung's Preliminary Invalidity Contentions were due, Mr. Iacoponi 10 provided testimony regarding the state of the prior art at the time of the inventions of the `592 11 Patent, as well as testimony on the motivation to combine the various prior art references identified 12 by Samsung, all of which supports Samsung's contention that the asserted claims of the `592 Patent 13 are invalid. Exhibit 1 at Appendices A1-A9 to this motion includes the references to the testimony 14 of John Iacoponi that Samsung seeks to add by this motion. 15 16
`990 Patent Supplemental Prior Art References. Like the `592 Patent, the breadth and subject matter of U.S. Patent No. 5,559,990 (the "`990
17 Patent")pertaining to the organization of and access to computer memoryimplicates a vast 18 body of potentially invalidating prior art. Identifying the most relevant references is painstaking 19 work. Because there are relatively few standard terms or ways of describing the manner in which 20 memories are arranged or accessed, keyword searching of prior art references is of limited value, 21 and instead, searching requires a detailed examination of the structures shown in a large number of 22 patents. 23
In its Preliminary Invalidity Contentions, Samsung identified 32 references that invalidate
24 the asserted claims of the `990 Patent and drafted 14 invalidity claim charts detailing those 25 contentions. Continued searching in the field has yielded additional results. In particular, Samsung 26
Only Exhibit 1 at Appendix A4 references the Ho `126 Patent explicitly; the other charts incorporate the patent by reference as included in the group designated in Appendix A4 as 27 "Nitrogen Plasma Treatment of Metal Silicide References."
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1 recently identified U.S. Patent Nos. 5,222,047 ("the `047 Reference"), 4,788,667 ("the `667 2 Reference"), 5,276,649 ("the `649 Reference"), 5,210,723 ("the `723 Reference") and 5,287,324 3 ("the `324 Reference"). See Haskett Decl., Exs. 8-12. The `047, `667 and `649 References are 4 particularly relevant to claim 8 of the `990 patent. That claim includes a limitation for "selectively 5 enabling said sense amplifier circuits . . ." The Examiner emphasized the importance of that 6 limitation in allowing the `990 patent.4 But the `047, `667 and `649 References plainly teach this 7 limitation and thus show that claim 8 should not have been allowed. 8
The `723 and `324 References relate to accessing memory locations in different rows. The
9 examiner relied on this limitation too as a reason for allowance: she explained that the cited prior 10 art could "only access one row at a time" whereas the claimed invention involves "accessing at 11 least two locations in different rows." See Haskett Decl., Ex. 13 (excerpts of Notice of 12 Allowability, p. 7). The `723 and `324 References explicitly teach accessing memory locations in 13 multiple rows and thus contradict this basis for allowance. 14 15
`893 Patent Supplemental Prior Art References. Samsung also proposes to add one additional reference, and an accompanying invalidity
16 claim chart, pertaining to U.S. Patent No. 5,248,893 (the "`893 Patent"). The reference--"Grooved 17 Gate MOSFET," authored by Nishimatsu, et. al. and appearing in Proceedings of the 8th 18 Conference (1976 International) on Solid State Devices, Japanese Journal of Applied Physics, Vol. 19 16 (1977) Supplement 16-1--discloses each element of claims 1-7 and claim 11 of the `893 Patent. 20 See Haskett Decl., Ex. 14. 21
As with the other references Samsung proposes to add, the Nishimatsu article was part of an
22 immense body of prior art. The relevant field of the Nishimatsu reference and the `893 Patent, 23 namely the design of integrated circuit devices, stretches back decades. Indeed, the Nishimatsu 24 article was published in 1977, over 15 years prior to the filing date of the `893 Patent. The 25
For example, the Patent Examiner explained, in her Notice of Allowability, that "Claims 7 and 16 [issued claims 8 and 19] include the features of selectively enabling and disabling sense 27 amplifier circuits which is taught by neither Pinkham, Rao or Young, et. al." See Haskett Decl., Ex. 13 (excerpts of Notice of Allowability, p. 7).
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1 accumulation of prior art in the crowded field of semiconductor design during this time period 2 necessarily made finding and analyzing the relevant material a time consuming process; one that 3 Samsung, even with diligent effort, was not able to complete before its Preliminary Invalidity 4 Contentions were due. 5 III. 6 7
ARGUMENT A. Samsung Has Good Cause to Amend Its Preliminary Invalidity Contentions.
Because AMD filed this case before the current Patent Local Rules became effective, this
8 motion is governed by the former Local Rule 3-7, which provides that "[a]mendment or 9 modification of...the Preliminary or Final Invalidity Contentions...may be made only by order of 10 the Court, which shall be entered only upon a showing of good cause." Patent L.R. 3-7.5 To 11 determine whether there is good cause for amendment, this Court has, in the past, looked at four 12 factors: 13 14 15 16
1) Relevance of the newly-discovered prior art 2) Whether the request to amend is motivated by gamesmanship 3) The difficulty of locating the prior art 4) Risk of prejudice to the opposing party
17 Acco Brands, Inc. v. PC Guardian Anti-Theft Prods., Inc., No. C04-03526 SI, 2008 WL 2168379, 18 *1 (N.D. Cal. May 22, 2008) (citing Yodlee, Inc. v. CashEdge, Inc., No. C05-01550 SI, 2007 WL 19 1454259, *2-3 (N.D. Cal. May 17, 2007)); see also The Board of Trustees of the Leland Stanford 20 Junior Univ. v. Roche Molecular Sys., Inc., No. C05-04158 MHP, 2008 WL 624771 (N.D. Cal. 21 March 4, 2008) (focusing inquiry on moving parties' diligence and potential for prejudice to 22 resisting party). 23 24 25
The new Patent Local Rules state that they apply only to patent cases filed on or after March 1, 2008. "For actions pending prior to March 1, 2008, the provisions of the Patent Local 27 Rules that were in effect on February 29, 2008, shall apply." Patent L.R. 1-4. AMD filed this action on February 19, 2008.
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Here, in large part because this case is still in its relatively early stages, all four factors favor
2 granting Samsung leave to make its modest proposed amendments to its Preliminary Invalidity 3 Contentions. 4 5
1. The New Prior Art Is Highly Relevant to the Ultimate Determination of Invalidity.
This Court has expressed a preference for deciding cases, and, more particularly, invalidity
6 disputes, "on the merits." See Acco Brands, 2008 WL 2168379 at *2. Allowing Samsung to 7 introduce its newly-discovered prior art references, all of which are material to the invalidity of 8 AMD's asserted claims, will achieve the just result of helping ensure that Samsung's defenses have 9 a full and fair hearing. See Golden Hour Data Sys., Inc. v. Health Svc. Integration, Inc., No. C0610 7477 SI, 2008 WL 2622794 at *4 (N.D. Cal. July 1, 2008) (when prior art is relevant to the merits, 11 "it would be unjust for such information `to be avoided on the basis of...mere technicalities'" 12 (quoting Foman v. Davis, 371 U.S. 178, 181-182 (1962)). 13 a. `592 Patent Invalidity References. 14
As reflected in Samsung's proposed amended invalidity charts, all of the prior art references
15 Samsung seeks to add regarding the '592 Patent bear directly on the invalidity of the asserted 16 claims. The Kamoshida reference (the only new `592 reference for which Samsung seeks to add an 17 entirely new chart) discloses the fundamental first two steps of the method of claim 1, namely 18 forming a metal silicide layer and then converting a portion of that layer to a metal nitride by 19 exposing it to a nitrogen plasma. See Haskett Decl., Ex. 1 (Appendix A9 at 1). And when 20 combined with either of two other references previously identified by Samsung, Kamosihda renders 21 both claim 1 and the dependent claim 4 invalid as obvious. See Haskett Decl., Ex. 1 (Appendix A9 22 at 1). Although Samsung has already identified other combinations of prior art that invalidate the 23 claims under 35 U.S.C. § 103(a), the Kamoshida reference is the foundation of an additional, strong 24 obviousness argument and should, in fairness to Samsung, be considered. 25
The Ho `126 Patent, which Samsung seeks to add to the previously-served invalidity chart
26 attached as Appendix A4 to Exhibit 1, also discloses the key step of using a plasma to form a metal 27 nitride from a metal silicide layer as claimed by the `592 Patent. 28
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Finally, deposition testimony from a named inventor of the at-issue patent is highly relevant
2 to an invalidity analysis of the patent. Indeed, Mr. Iacoponi's own testimony regarding both the 3 state of the relevant prior art and the motivation to combine aspects of that art shows that his patent 4 is, in fact, invalid. Allowing Samsung leave to amend its invalidity contentions to include that 5 relevant testimony is the fair result. See Golden Hour Data, 2008 WL 2622794 at *4. 6 7
b. `990 Patent Invalidity References.
Three of Samsung's new prior art references for the `990 patent teach a key limitation of
8 independent claim 8 upon which the examiner relied in allowing the claim. Namely, they show 9 that it was known in the art to selectively enable and disable sense amplifiers in a computer 10 memory, in order to conserve power and speed up operation. The examiner concluded that this 11 limitation was not shown in the prior art of record: "Claims 7 and 16 [issued claims 8 and 19] 12 include the features of selectively enabling and disabling sense amplifier circuits which is taught by 13 neither Pinkham, Rao or Young, et. al." See Haskett Decl., Ex. 13 (Notice of Allowability, p. 7). 14
In reality, the `047 Reference--which was filed three and a half years before the `990
15 patent--clearly does teach the selective enabling of sense amplifiers in a computer memory: 16 specifically, the `047 Reference discloses "timing for activating the sense amplifiers ... so that the 17 number of sense amplifiers which are activated at one time is reduced ...." See Haskett Decl, Ex. 1 18 (Appendix D16 at 10, 23, 26, 30). 19
The `667 and `649 References also teach selectively enabling the sense amplifier circuits.
20 For example, the Abstract of the `667 patent teaches a switching circuit for "switching between 21 sense amplifiers belonging to the first cell block and sense amplifiers belonging to the second cell 22 block." See Haskett Decl., Ex. 9 (`667 Reference, Abstract). Similarly, the `649 patent Abstract 23 teaches "a control circuit (20) for activating the sense amplifiers for the first column group and the 24 sense amplifiers for the second column group at different timings." See Haskett Decl., Ex. 10 (`649 25 Reference, Abstract). The `667 and `649 References both teach the selective enabling limitation 26 relied on by the examiner in allowing the claims. 27
The `723 and `324 References relate to the second aspect of the invention identified by the
28 examiner in her Notice of Allowance--accessing at least two locations in different rows. See
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1 Haskett Decl., Ex. 11 (`723 Reference); Ex. 12 (`324 Reference). Samsung identified in its 2 preliminary invalidity contentions prior art that taught this key limitation. However, the `723 and 3 `324 References disclose an additional prior art technique for accessing memory locations in 4 different rows. 5
The `047, `667, `649, `723 and `324 References are highly relevant. They squarely address
6 limitations upon which the examiner relied in allowing the `990 patent. Because they are prior art, 7 they show the patent is invalid. Fairness requires that Samsung be able to allowed to use them, and 8 at this early stage of the litigation there is no countervailing unfair prejudice to AMD. 9 10
c. `893 Patent Invalidity Reference.
Samsung's new prior art reference for the `893 Patent (the Nishimatsu reference) is likewise
11 potentially dispositive of the issue of invalidity and thus highly relevant to this lawsuit. Insulated 12 gate field effect devices, such as MOSFET devices, are building blocks of integrated circuits, and 13 increased miniaturization of integrated circuits demands increased density of the devices on a chip. 14 Both the '893 Patent and the Nishimatsu Reference attempt to increase device density by achieving 15 a longer effective channel length in a MOSFET without increasing the occupying area for the 16 semiconductor device. See Haskett Decl., Ex. 15 (`893 Patent at 1:18-22); Ex. 1 (Appendix C6 at 17 6-8, 13-18). And both the '893 patent and the Nishimatsu Reference propose the same solution to 18 achieve this longer channel length: creating a concavity on the ordinarily flat semiconductor 19 substrate. See Haskett Decl., Ex. 15 (`893 Patent at 3:46-49); Ex. 1 (Appendix C6 at 6-8, 13-18). 20 21
2. Samsung's Motion Is Timely and Not Motivated by Gamesmanship. Reflecting on the `gamesmanship' factor, this Court has observed that one purpose of this
22 Local Rule is to "prevent the parties from shifting their theories in reaction to adverse substantive 23 rulings,...or late in discovery, leaving the opposing party with little time to conduct discovery on a 24 new theory...." Yodlee, 2007 WL 1454259, *2 (citing LG Electronics Inc. v. Q-Lity Computer, 25 Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002) and O2 Micro Int'l. Ltd. v. Monolithic Power Sys., Inc., 26 467 F.3d 1355, 1366 n. 12 (Fed. Cir. 2006)). There are no indications that any such gamesmanship 27 is present here. 28
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First, there have been no substantive rulings by the Court between the time Samsung's
2 original Preliminary Invalidity Contentions were served and the time Samsung notified AMD of its 3 intention to supplement (and then filed this motion). So Samsung's proposed amendments plainly 4 are not an attempt to respond to an adverse ruling by shifting its theory of the case. Accordingly, 5 the Local Rules' policy of preventing "shifting sands" litigation is not imperiled. See id. 6
Second, because discovery in this case is not scheduled to close for another nine months,
7 there is no concern that Samsung's proposed amendments will serve to sandbag AMD. See id. 8 (where there is "ample time" left for discovery, "concern with parties sandbagging opponents late 9 in discovery period is...not an issue"). Indeed, although the Rule requires leave of the Court no 10 matter when in the proceedings a party seeks to make an amendment,6 it appears that this Court 11 contemplates that, once the parties have taken some discovery, they will routinely need to amend 12 their preliminary contentions. See Golden Hour, 2008 WL 2622794, *2; Stanford v. Roche, 2008 13 WL 624771, *4-5. Patent Local Rule 3-7 is not designed to thwart the purpose of discovery, which 14 is to learn information vital to developing one's case. Rather, the Rules merely "seek to balance the 15 right to develop new information in discovery with the need for certainty as to the legal theories." 16 See Golden Hour, 2008 WL 2622794, *2 (quoting O2 Micro, 467 F.3d at 1366). And far from 17 cutting off a party's right to refine its case, Patent Local Rule 3-7 merely circumscribes it by 18 requiring that parties "proceed with diligence in amending [their] contentions when new 19 information comes to light in the course of discovery." Id. (emphasis added). The parties are now 20 in the thick of discovery--including depositions of the various patents' inventors--and it is neither 21 surprising nor inappropriate for Samsung to incorporate the product of that discovery into its 22 invalidity contentions. 23 24
3. Samsung Has Acted Diligently to Locate Hard-to-Find Prior Art. When it has been difficult for a defendant to find the prior art it seeks to add to its invalidity
25 contentions, the Court generally takes a sympathetic view and permits amendment. See Acco 26 Brands, 2008 WL 2168379, *2; Yodlee, 2007 WL 1454259. 27 28
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Excepting the circumstances provided for in Patent L.R. 3-6(a).
With respect to the prior art references Samsung seeks to add, the difficulty in finding the
2 relevant information has been due to the sheer volume of prior art Samsung has had to sift through 3 and analyze. All three of the AMD patents that are the subject of this motion (the `592, the `990, 4 and the `893) come from extremely crowded fields of technology and invention. The large number 5 of prior art reference that Samsung did identify and chart for each of those patents in its original 6 Preliminary Invalidity Contentions provides a rough gauge of the mountains of prior art available to 7 review. Although Samsung has been working on its invalidity defenses diligently since the 8 beginning of this case, the amount of time and effort required to identify and analyze the prior art 9 relevant to these patents has made it a virtual certainty that at least some amendment to Samsung's 10 invalidity contentions would be required. 11 12
4. AMD Cannot Be Prejudiced by an Amendment at This Stage of the Case.
Finally, and for many of the reasons discussed above in connection with the
13 `gamesmanship' factor, there is no risk that AMD will be prejudiced by Samsung's proposed 14 amendments. In a number of decisions on motions to amend invalidity or infringement contentions, 15 this Court has focused on whether there is sufficient time left for the other side to take discovery on 16 the new contentions. See Yodlee, 2007 WL 1454259, *3 ("ample time" left for discovery); Golden 17 Hour, 2008 WL 2622794, *4 (three months remaining for fact discovery; expert discovery not yet 18 started); Stanford v. Roche, 2008 WL 624771, *4-5 (allowing amendment of final infringement 19 contentions and indicating that discovery could be reopened regarding the new contention). Here, 20 there is no question that ample time remains for AMD to explore Samsung's new contentions in 21 discovery. Fact discovery is not set to close for nine months. And as in the Golden Hour case, 22 expert discovery has not even begun; indeed, opening expert reports are not due until the very end 23 of 2009. Golden Hour, 2008 WL 2622794, *4. 24 Nor is there any danger that AMD's litigation strategy will be harmed in a prejudicial way 25 by the amendments. As discussed above, there have been no substantive rulings that would be 26 affected by Samsung's amendments. Furthermore, AMD does not have any substantive motions 27 pending that could be impacted by the proposed amendments. See Yodlee, 2007 WL 1454259, *3 28 (finding no prejudice when opposing party had ample discovery time and no pending motions).
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1 Indeed, the only significant motion practice on the near horizon is with respect to claim 2 construction, which, as of the time this motion is filed, is set to begin in approximately one month 3 with the filing of the parties' opening claim construction briefs. And because Samsung and AMD 4 have not included any terms from the `592 Patent in their joint claim construction statement, AMD 5 cannot argue that granting Samsung leave to amend its prior art references and charts related to this 6 particular patent would cause any prejudice in claim construction. To the extent AMD needs to 7 consider Samsung's new, supplemental prior art references as it formulates its Markman arguments 8 for the `990 and `893 Patents, it has ample time to do so. 9
In short, this "most important" factor in the analysis strongly favors granting leave to
10 Samsung to make its proposed modest amendments to the Preliminary Invalidity Contentions. 11 Yodlee, 2007 WL 1454259, *3. 12 IV. 13
CONCLUSION For all of the foregoing reasons, Samsung respectfully requests that the Court grant
14 Samsung's Motion for Leave to Amend its Preliminary Invalidity Contentions. 15 16 17 DATED: February 19, 2009 18 19 20 21 22 23 24 25 26 27 28
- 13 MOTION FOR LEAVE TO AMEND PRELIMINARY INVALIDITY CONTENTIONS CV-08-0986-SI
COVINGTON & BURLING LLP
By: /s/ Christine Saunders Haskett CHRISTINE SAUNDERS HASKETT Attorneys for Defendants and Counterclaimants SAMSUNG ELECTRONICS CO., LTD., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, LLC, SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, SAMSUNG TECHWIN CO., LTD., and SAMSUNG OPTO-ELECTRONICS AMERICA, INC.
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