Silicon Laboratories, Inc. v. Cresta Technology Corporation

Filing 157

ORDER DENYING MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS by Magistrate Judge Paul Singh Grewal denying 117 (psglc2, COURT STAFF) (Filed on 12/21/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SILICON LABORATORIES, INC.,
Plaintiff,

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v.

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CRESTA TECHNOLOGY
CORPORATION,

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Case No. 14-cv-03227-PSG
ORDER DENYING MOTION FOR
LEAVE TO FILE AMENDED
INVALIDITY CONTENTIONS
(Re: Docket No. 117)

United States District Court
Northern District of California

Defendant.
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Months after the court issued its claim construction order,1 Defendant Cresta Technology

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Corporation moves for leave to amend its invalidity contentions.2 The new contentions raise

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additional arguments about indefiniteness and double patenting.3 Plaintiff Silicon Laboratories,

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Inc. objects that there is no good cause for the amendments under Pat. L.R. 3-6 and that allowing

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them would unduly prejudice Silicon Labs.4 For the reasons set forth below, CrestaTech’s motion

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is DENIED.
To establish good cause for the amendments, CrestaTech cites the court’s claim

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construction ruling. Although an adverse claim construction can give rise to good cause,5 it does

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See Docket No. 113.

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See Docket No. 117.

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See Docket No. 117-1.

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See Docket No. 124; Docket No. 135.

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See Pat. L.R. 3-6(a).

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Case No. 14-cv-03227-PSG
ORDER DENYING MOTION FOR LEAVE TO FILE AMENDED INVALIDITY
CONTENTIONS

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so “not because the construction happens to be different but because that difference is material to a

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party’s theory of [invalidity.]”6 A party cannot show good cause merely by pointing to the court’s

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decision to reject a construction the party would have preferred. When “a theory of [invalidity]

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falls within the party’s proffered construction and also falls within the court’s construction, the

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difference is not material and does not provide good cause to amend the contentions” to add the

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new theory.7 Furthermore, “‘good cause’ requires a showing of diligence.”8
The proposed amendments do not meet these standards. Only one of CrestaTech’s new

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indefiniteness contentions relates to a claim limitation presented to the court for construction.9

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But the court’s decision with respect to that term—to “reserve[] decision” whether the term is
indefinite10—does not in itself create good cause for amendment. The argument is even weaker

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United States District Court
Northern District of California

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for the terms that the court never construed. As for the double patenting contentions, CrestaTech

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does not explain, other than in the most general terms, why the defense was unavailable before the

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court adopted Silicon Labs’ proposed construction for the limitations at issue.11 CrestaTech also

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fails to explain its delay in filing this motion. CrestaTech first included these defenses in the

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expert report it served on October 1, nearly a month after the court issued its claim construction

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rulings. CrestaTech provided amended contentions to Silicon Labs only on October 21, and it

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Apple Inc. v. Samsung Elecs. Co. Ltd., Case No. 12-cv-00630, 2013 WL 3246094, at *5 (N.D.
Cal. June 26, 2013); see also Genentech, Inc. v. Univ. of Penn., Case No. 10-cv-02037, 2011 WL
3204579, at *2 (N.D. Cal. July 27, 2011).
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Apple, 2013 WL 3246094, at *5.

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O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006)
(interpreting the local patent rules of this district).
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See Docket No. 113 at 2 (declining to construe the claim term “relatively linear circuit
behavior”); Docket No. 117-2 at 10-11 (contending that the limitation “relatively linear circuit
behavior” in several claims is indefinite).
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Docket No. 113 at 2.

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See Docket No. 130 at 3-4.

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Case No. 14-cv-03227-PSG
ORDER DENYING MOTION FOR LEAVE TO FILE AMENDED INVALIDITY
CONTENTIONS

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then waited until November 2 to seek the court’s leave for the amendments. CrestaTech has not

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shown the required diligence.
The “undue prejudice to the non-moving party”12 provides an independent ground for

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denying CrestaTech’s motion. Expert discovery has long since closed, the parties already have

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submitted their motions for summary judgment13 and trial is only months away. At this late stage,

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the prejudice to Silicon Labs would be substantial.

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SO ORDERED.

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Dated: December 21, 2015
_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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United States District Court
Northern District of California

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Pat. L.R. 3-6.

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See Docket Nos. 140-3, 144-3, 146-20.

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Case No. 14-cv-03227-PSG
ORDER DENYING MOTION FOR LEAVE TO FILE AMENDED INVALIDITY
CONTENTIONS