United States District Court, N.D. California
ORDER DENYING DEFENDANT'S MOTION FOR LEAVE TO
SUPPLEMENT INVALIDITY CONTENTIONS Re: Dkt. No. 50
ILLSTON United States District Judge.
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
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
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.
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 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
'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.
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 ...