United States District Court, N.D. California
June 15, 2004.
IXYS CORPORATION, Plaintiff,
ADVANCED POWER TECHNOLOGY, INC., Defendant. AND RELATED COUNTERCLAIMS.
The opinion of the court was delivered by: MARILYN PATEL, Chief Judge, District
MEMORANDUM AND ORDER RE: DEFENDANT'S MOTION TO AMEND FINAL
INVALIDITY CONTENTIONS AND PLAINTIFF'S MOTION TO PRECLUDE UNTIMELY
Plaintiff IXYS Corporation ("IXYS") filed this action against
defendant Advanced Power Technology, Inc. ("APT"), alleging
infringement of two U.S. patents, numbered 5,486,715 (the "`715
patent") and 5,801,419 (the "`419 patent"), that it holds on an
improved design for power MOSFET devices. Now before the court
are APT's motion to amend its final invalidity contentions and
IXYS's motion to preclude APT from introducing or employing
untimely produced documents. After having considered the parties'
arguments and submissions, and for the reasons set forth below,
the court rules as follows.
I. APT's Motion to Amend Final Invalidity Contentions
APT has come before this court seeking leave to amend its final
invalidity contentions to add materials produced by its expert,
John Neilson (the "GE/Harris documents") and corresponding claim
charts, as well as claim charts organizing the technical
references relied upon by APT's expert, Dr. Shenai, in his
opening report. The court construed disputed claim terms in this
case on January 22, 2004, and the deadline in this case for the filing of Final
Invalidity Contentions was March 1, 2004. However, on March 8,
2004, at oral argument, the court notified the parties of a
typographical error in the original claim construction order and
announced that a correction would be forthcoming; the court's
written order of March 18, 2004, contained this correction.
According to APT, sometime after the March 8, 2004, hearing Mr.
Neilson became aware of the court's modification of its claim
construction order and realized that certain documents in his
possession had become relevant. On March 15, 2004, Mr. Neilson
faxed nineteen pages of GE/Harris documents to APT's counsel; the
documents were promptly forwarded to IXYS by facsimile the
following day. Johnson Dec. ¶ 9. At some subsequent point Mr.
Neilson forwarded another 90 pages of documents to APT's counsel.
Id. ¶ 10. APT's attorney photocopied these documents and
delivered copies of them to IXYS on March 31, 2004. Rebuttal
expert reports in this case were due on April 6, 2004.
Under Patent Local Rule 3-6(b), APT has the right to amend its
final invalidity contentions in light of the adjustment made to
this court's claim construction. However, as in all cases of
amendment, that right is subject to the court's (and APT's)
countervailing duty to avoid prejudicing IXYS through
eleventh-hour alterations. Cf. Eminence Capital, LLC v.
Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003) ("Prejudice is
the touchstone of the inquiry" when considering a motion for
leave to amend a complaint.). IXYS's expert was able to
incorporate the first nineteen pages of GE/Harris material
(delivered March 16, 2004) into his rebuttal report. See
Barclay Dec., Exh. 7, ¶¶ 10-11. The same cannot be said for the
remaining ninety pages, which IXYS received only six days before
Dr. Blanchard's rebuttal report was due. See id. ¶ 5g. The
court is further puzzled as to why APT only delivered to IXYS the
claim charts accompanying Dr. Shenai's report on March 26, 2004,
when that report was due on March 1, 2004. Nevertheless, there
seems little to be gained from striking these claim charts while
the underlying technical references remain part of the case.
Accordingly, APT's motion is DENIED with respect to the ninety
pages of GE/Harris documents provided to IXYS on March 31, 2004,
and GRANTED in all other respects. II. IXYS's Motion to Preclude
On March 31, 2003, APT served its Preliminary Invalidity
Contentions ("PIC") on IXYS as required under the set schedule.
APT's PIC specifically referenced several of APT's devices,
including the 208, 208x, and 526 as prior art devices, and APT
delivered mask layers corresponding to those devices to IXYS on
April 17, 2003. See Barclay Dec., Exh. 3. The PICs also
mentioned APT's 108 device as relevant prior art, and a paper by
Douglas Pike presumably the inventor of the 108 was attached
as a reference to the PIC. See id. at 1, 4 ("If the 208x is
found to not be a `high frequency' device, claim 23 would be
obvious based on APT's high-frequency 108 product. . . . The 108
product of Reference 9 actually uses an Al-on-polysilicon gate to
operate at 10 MHz.").*fn1 APT did not produce any mask layer
documents for the 108, or for its 206 and 207 devices, at this
On March 1, 2004, pursuant to the schedule set several months
earlier, APT served its Final Invalidity Contentions ("FIC") upon
IXYS. This document again referred to the APT 108, as well as the
APT 206 and 207, and provided the same Pike paper as a reference.
De Blank Dec., Exh. L. Again, APT did not provide any mask layer
data to IXYS as accompaniment to its FIC.
On March 29, 2004, APT's counsel stated in a letter to IXYS's
attorney that "APT has already produced all of the technical
information on which its contentions of non-infringement are
based."*fn2 Barclay Dec., Exh. 15. Later that day, however,
APT filed a motion for summary judgment of non-infringement that
referenced the APT 108 via declarations by several of APT's
experts and officers. See Def. Mot., at 20-22. The next day,
APT provided to IXYS a compact disc Bates-numbered APT 024649
that contained mask layer data for a large number of APT devices,
including the APT 108. On April 16, 2004, APT filed the
aforementioned motion to amend its FIC. The amended documents
made no further reference to the 108, 206 or 207 devices.
Patent Local Rule 3-3(a) states that a party's PIC (and, by
extension, its FIC) must reveal "[t]he identity of each item of
prior art that allegedly anticipates each asserted claim." In
addition, the PIC must contain "[a] chart identifying where
specifically in each alleged item of prior art each element of
each asserted claim is found. . . ." Patent L.R. 3-3(c). Finally,
Patent Local Rule 3-4(b) requires the party asserting invalidity
to produce "[a] copy of each item of prior art identified
pursuant to Patent L.R. 3-3(a) which does not appear in the file
history of the patent(s) at issue." APT alleges that Rules 3-3(a) and 3-4(b) require only what they
literally describe disclosures of the "identity" and a "copy"
of the prior art not other "ancillary" documents such as the
mask layer data provided on the 024649 compact disc. APT also
alleges that it provided "representational" claim charts for the
108, 206, and 207 devices along with its FIC, while IXYS argues
that the only claim charts provided for devices APT alleges as
prior art are the 208 and 208x. See De Blank Dec., Exh. L.
APT's reading of the Patent Local Rules is untenable at best,
and insultingly tendentious at worst. The Local Rules exist to
further the goal of full, timely discovery and provide all
parties with adequate notice and information with which to
litigate their cases, not to create supposed loopholes through
which parties may practice litigation by ambush. Rule 3-4(b)
quite obviously requires APT to produce more than the "identity"
of the prior art upon which it seeks to rely if APT believes
that a mask layer photograph or drawing is relevant to this
action, then Rule 3-4(b) requires APT to serve upon IXYS a copy
of that same document.*fn3
Moreover, IXYS's requests for production of documents targeted
precisely these types of prior art documents. See Barclay Dec.,
Exh. 1, at 9-11. APT's decision to deliver the documents upon
which its motion for summary judgment relies to IXYS only after
it has already filed that motion is simply unconscionable; unlike
the materials that APT received from Dr. Neilson (referenced
above) there is every indication that APT has held these
documents in its possession, ready for use, since the beginning
of this litigation. Their deployment against APT at this late
stage in the proceedings will obviously cause IXYS a great deal
of needless prejudice. APT is hereby precluded from introducing
into evidence any prior art documents produced on the compact
disc bates numbered APT 024649, and the court strikes all
references to those documents in APT's motion papers.
The documents produced on this compact disc that do not
constitute prior art are a different matter. Patent Local
Rule 3-4(a) requires that APT turn over to IXYS any and all documents
describing the operation or structures of APT's accused devices,
but does not mention other devices that have not been accused. Similarly, IXYS's requests for
production of documents specifically referenced the accused
devices, not APT's complete line of products. See Barclay Dec.,
Exh. 1, at 5-6. IXYS has accused the following APT devices of
infringement: "(a) any and all Power MOS 7® products or Power MOS
V® (Generation 5) products with dual-layer metallization
manufactured, used, sold, or offered for sale by APT on or after
August 15, 1996, and (b) any and all products manufactured, used,
sold, or offered for sale by APT on or after August 15, 1996 that
are designed in substantially the same way, or function in
substantially the same way, as APT 5018BLL [a Power MOS 7TM
MOSFET]." Pl. Disclosure of Asserted Claims and Preliminary
Infringement Contentions. By consequence, it is documents
describing those devices that APT was obligated to produce;
APT's failure to produce documents relating to products that IXYS
has never accused is not in error. Accordingly, APT is hereby
precluded from introducing into evidence any documents produced
on the compact disc bates numbered APT 024649 that reference or
describe any of the products IXYS has already accused of
infringing its patents. APT's 546, 846, and 1046 devices are
deemed representative of all APT devices that IXYS has heretofore
accused of infringement.
IT IS SO ORDERED.