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MLC Intellectual Property, LLC v. Micron Technology, Inc.

United States District Court, N.D. California

July 6, 2016

MLC INTELLECTUAL PROPERTY, LLC, Plaintiff,
v.
MICRON TECHNOLOGY, INC., Defendant.

          ORDER DENYING DEFENDANT'S MOTION FOR LEAVE TO SUPPLEMENT INVALIDITY CONTENTIONS Re: Dkt. No. 50

          SUSAN ILLSTON United States District Judge.

         Defendant Micron Technology Inc.'s motion for leave to amend its invalidity contentions is scheduled for a hearing on July 8, 2016. Pursuant to Civil Local Rule 7-1(b), the Court finds the matter appropriate for disposition without oral argument. For the reasons set forth below, the Court DENIES defendant's motion.[1]

         BACKGROUND

         On August 12, 2014, plaintiff MLC brought suit against defendant Micron, alleging infringement of United States Patent No. 5, 764, 571 ("the '571 patent" or "the asserted patent"). Dkt. No. 1. On October 15, 2014, Micron answered and asserted several affirmative defenses, including double patenting, as well as a counterclaim for declaratory judgment of non-infringement and invalidity for double-patenting. Dkt. No. 13. On January 20, 2015 Micron served its invalidity contentions. In the invalidity contentions, Micron again alleged that the claims of the '571 patent are invalid due to double patenting in view of U.S. Pat. Nos. 5, 394, 362 and/or 5, 218, 569 and pursuant to the judicially-created doctrine of obviousness-type double patenting.

         On December 24, 2014, approximately one month before filing its invalidity contentions, Micron filed a petition for inter partes review ("IPR") at the U.S. Patent and Trademark Office ("PTO"), challenging the patentability of at least each asserted claim. Dkt. No. 31. On February 3, 2015, the Court granted Micron's motion to stay this case pending IPR of the '571 patent. Id. On July 20, 2015 the PTAB denied Micron's petition to institute the IPR, and on August 19, 2015 Micron filed a request for rehearing of that determination. Dkt. No. 48. The stay in this case continued by agreement, until MLC moved to lift the stay on February 24, 2016. Id. On March 29, 2016, the Court granted MLC's motion to lift the stay. Dkt. No. 43. On March 31, 2016, the PTO denied Micron's rehearing request. Dkt. No. 48.

         On May 13, 2016, Micron notified MLC that it intended to supplement its invalidity contentions to include (1) two publications made of record during the IPR proceedings[2] and (2) two MLC patents as references based on double patenting, U.S. Patent No. 7, 911, 851 ("the '851 patent") and U.S. Patent No. 8, 570, 814 ("the '814 patent"). Micron then filed the instant motion for leave to amend its invalidity contentions.

         The '571 patent was filed on February 27, 1995, issued on June 9, 1998, and expired on June 9, 2015. Both '851 and '814 patents were filed and issued later than the ‘571 patent, but claimed priority to the '571 patent and contained claims directed to the same alleged invention as the '571 patent. Because the applications for these patents were filed after June 8, 1995, when changes to U.S. patent law imposed a 20-year patent term measured from the earliest effective filing date, both later-filed patents expired on February 27, 2015, just over three months before the earlier-filed '571 patent expired.

         LEGAL STANDARD

Patent Local Rule 3-6 provides,
Amendment of the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include:
(a) A claim construction by the Court different from that proposed by the party seeking amendment;
(b) Recent discovery of material, prior art despite earlier diligent search; and
(c) Recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service ...

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