Realtek Semiconductor Corporation v. LSI Corporation et al

Filing 262

Order by Hon. Ronald M. Whyte denying 252 Motion for Leave to Amend Pleadings and Partially Dismiss Claim Without Prejudice ('867 Patent Only).(rmwlc1S, COURT STAFF) (Filed on 2/7/2014)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

NORTHERN DISTRICT OF CALIFORNIA

10
United States District Court
For the Northern District of California

SAN JOSE DIVISION
11
12

REALTEK SEMICONDUCTOR,
CORPORATION,

13

Case No. C-12-3451-RMW

Plaintiff,

14

v.

15

ORDER DENYING REALTEK’S
MOTION FOR LEAVE TO AMEND
PLEADINGS AND PARTIALLY
DISMISS CLAIM WITHOUT
PREJUDICE (’867 PATENT ONLY)

LSI CORPORATION AND AGERE
SYSTEMS LLC,

16
17

[Re: Dkt. No. 252]
Defendants.

18
19
20
21
22
23
24
25
26
27
28

Plaintiff Realtek Semiconductor Corp. (“Realtek”) moves for leave to amend its complaint
to dismiss without prejudice its claim for a declaration of the reasonable and non-discriminatory
(“RAND”) royalty for U.S. Patent No. 6,707,867 (“the ’867 Patent”). Dkt. No. 252. LSI opposes.
Dkt. No. 259. The court DENIES Realtek leave to amend.
The court issued a scheduling order in this case setting a January 11, 2013 deadline to amend
pleadings. See Dkt. No. 48 (parties’ joint case management statement requesting the January 11,
2013 deadline). Realtek thus seeks to modify the case schedule to permit it to amend its complaint.
Under Federal Rule of Civil Procedure 16(b)(4), “[a] schedule may be modified only for good cause
and with the judge’s consent.” Fed. R. Civ. P. 16(b)(4). “Unlike Rule 15(a)’s liberal amendment
ORDER DENYING LEAVE TO AMEND
Case No. C-12-3451-RMW
RDS

-1-

1

policy which focuses on the bad faith of the party seeking to interpose an amendment and the

2

prejudice to the opposing party, Rule 16(b)’s ‘good cause’ standard primarily considers the

3

diligence of the party seeking the amendment.” In re W. States Wholesale Natural Gas Antitrust

4

Litig., 715 F.3d 716, 737 (9th Cir. 2013) (quoting Johnson v. Mammoth Recreations, Inc., 975 F.2d

5

604, 609 (9th Cir. 1992)). Significantly, “[i]f [the party seeking leave to amend] was not diligent,

6

the inquiry should end.” Id. (quoting Johnson, 975 F.2d at 609).

7

Here, Realtek was not diligent. Realtek should have known of the basis for its motion since

8

November 20, 2013, when the International Trade Commission (“ITC”) extended the target date for

9

the investigation’s completion to February 3, 2014. Given the presidential review period of 60 days

United States District Court
For the Northern District of California

10

and the fact that the ’867 Patent expires on February 23, 2014, Realtek should have known as of

11

November 20, 2013 that no exclusion order could issue for infringement of the ’867 Patent. Rather

12

than move for leave to amend shortly thereafter, Realtek instead filed its motion on February 5,

13

2014, just three business days before trial. Waiting over two months to file a motion literally days

14

before trial is not diligent.

15

Even though the inquiry could end there, the court also finds that LSI would be unduly

16

prejudiced by dismissal of Realtek’s declaratory judgment claim at this late stage. In particular, both

17

parties have presumably put significant resources toward resolving the ’867 Patent RAND issue in

18

the form of deposing witnesses, working with experts, examining the technology, and preparing for

19

the imminent trial. Given the possibility that LSI could bring suit against Realtek for past damages

20

for Realtek’s alleged infringement of the ’867 Patent, it would be an immense waste of resources for

21

that future court, LSI, and Realtek to resolve the issue of a RAND rate for the ’867 Patent. As such,

22

there is not good cause for the court to modify its scheduling order.

23

For the foregoing reasons, the court DENIES Realtek’s Motion for Leave to Amend

24

Pleadings and Partially Dismiss Claim Without Prejudice (’867 Patent Only). Absent any

25

unforeseen circumstances, the trial will proceed as planned on February 10, 2014.

26
27

Dated: February 7, 2014

_________________________________
RONALD M. WHYTE
United States District Judge

28
ORDER DENYING LEAVE TO AMEND
Case No. C-12-3451-RMW
RDS

-2-