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

United States District Court, N.D. California

August 9, 2016



          SUSAN ILLSTON United States District Judge

         Defendant’s motion for summary judgment is scheduled for a hearing on August 12, 2016. Pursuant to Civil Local Rule 7-1(b), the Court determines that this matter is appropriate for resolution without oral argument, and hereby VACATES the hearing. For the reasons discussed below, the Court hereby DENIES the motion.


         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, ” invented by Banks). Dkt. No. 1. The ’571 patent is entitled “Electrically Alterable Non-Volatile Memory with N-bits Per Cell.” 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.[1] 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. On February 3, 2015, the Court granted Micron’s motion to stay this case pending IPR of the '571 patent. Dkt. No. 31. On July 20, 2015, the PTO denied Micron’s petition to institute the IPR, and on August 19, 2015, Micron filed a request for rehearing of that determination. The stay in this case continued by agreement, until MLC moved to lift the stay on February 24, 2016. 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 27, 2016, Micron moved to amend its invalidity contentions and add U.S. Patent No. 7, 911, 851 (“the ‘851 patent, ” also invented by Banks) as a reference for its obviousness-type double patenting theory.[2] The ‘851 patent is entitled “Memory Apparatus Including Programmable Non-Volatile Multi-Bit Memory Cell, and Apparatus and Method for Demarcating Memory States of the Cell.” In an order filed July 6, 2016, the Court denied Micron’s motion to amend invalidity contentions for lack of good cause under Patent Local Rule 3-6. Dkt. No. 61.

         The asserted '571 patent was filed on February 27, 1995, issued on June 9, 1998, and expired on June 9, 2015. The ‘851 reference patent was filed and issued later than the ‘571 patent, but claimed priority to the February, 1995 filing date of the ‘571 patent. Because the application for the ‘851 patent was filed after June 8, 1995, when changes to U.S. patent law imposed a 20-year patent term measured from the earliest effective priority date, [3] the ‘851 patent expired on February 27, 2015, just over three months before the earlier-filed ‘571 patent expired.

         Now before the Court is Micron’s motion for summary judgment of invalidity. Micron seeks summary judgment that claims 1, 9, 12, 30, 42, and 45 (“the asserted claims”) of the ‘571 patent are invalid under the judicially-created doctrine of obviousness-type double patenting in view of the ‘851 patent.


         Obviousness-type double patenting is a judicially created doctrine that “prohibit[s] a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 (Fed. Cir. 2001). The Federal Circuit has identified two steps in an obviousness-type double patenting analysis. “First, ‘a court construes the claim[s] in the earlier patent and the claim[s] in the later patent and determines the differences.’” Pfizer, Inc. v. Teva Pharm., 518 F.3d 1353, 1363 (Fed. Cir. 2008) (quoting Eli Lilly, 251 F.3d at 968). “Second, it determines whether those differences render the claims patentably distinct.” Id. “A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim.” Eli Lilly, 251 F.3d at 968. Double patenting is a question of law. Pfizer, Inc., 518 F.3d at 1363.


         I. Notice

         MLC contends that Micron’s motion should be denied because Micron did not previously disclose the specific invalidity theory on which its motion is based in its answer to MLC’s complaint or its counterclaim for a declaration of invalidity. MLC also notes that Micron attempted to obtain leave to supplement its Patent L.R. 3-3 invalidity contentions to assert the ‘851 reference, but that the Court denied Micron’s request for leave to supplement. MLC argues that Micron should not be permitted to raise on summary judgment an invalidity theory based on the ‘851 patent that was not disclosed in its answer, counterclaim, or invalidity contentions.

         Micron argues that it provided adequate notice by alleging the judicially-created, obviousness-type double patenting defense in its answer, counterclaim and invalidity contentions. Micron argues that MLC does not cite any authority for the proposition that Micron was required to specifically identify the ‘851 patent, and that neither the Federal Rules nor the Local Patent Rules require such a disclosure. Micron also argues that it would have been unreasonable to require such a disclosure in this case where there are more than 30 members of the ‘571 patent family and MLC’s complaint did not identify which claims of the ‘571 patent were at issue. Micron argues, “[u]ntil MLC identified the claims that it would assert, Micron was handicapped in its ability to identify which of the ...

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