Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

MLC Intellectual Property LLC v. Micron Technology Inc.

United States District Court, N.D. California

April 26, 2017

MLC INTELLECTUAL PROPERTY, LLC, Plaintiff,
v.
MICRON TECHNOLOGY, INC., et al., Defendants.

          ORDER RE: SUMMARY JUDGMENT MOTIONS RE: DKT. NOS. 97, 103

          SUSAN ILLSTON United States District Judge.

         On March 17, 2017, the Court held a hearing on the parties' summary judgment motions. For the reasons set forth below, the Court DENIES plaintiff's summary judgment motion that the 35 U.S.C. § 121 safe harbor provision applies to U.S. Patent No. 5, 764, 571 (“the '571 patent”), and the Court DENIES defendant's summary judgment motion that the '571 patent is invalid because of obviousness-type double patenting (“OTDP”) in view of U.S. Patent No. 7, 911, 851 (“the '851 patent”) or U.S. Patent No. 8570, 814 (“the '814 patent”).

         BACKGROUND

         Plaintiff MLC Intellectual Property, LLC, alleges that defendant Micron Technology, Inc., infringes the '571 patent, titled “Electrically Alterable Non-Volatile Memory with n-bits Per Cell” by making, using, offering to sell, selling, and importing over 150 different products. The '571 patent discloses non-volatile memory devices and methods of programming and/or verifying the programming of multi-level non-volatile memory devices. Non-volatile memory is capable of retaining the data with which it is programmed after the device is powered off. See '571 Patent 1:19-18; Dkt. No. 72-2 at ¶ 16. The memory device, made up of multiple semiconductor cells, has Kn predetermined memory states, where K is a base of a predetermined number system (such as 2 in the binary system of “1” or “0”), n is the number of bits that can be stored in each cell, and Kn > 2. '571 Patent at abstract.

         Conventional memory cell devices allowed only two memory storage states in each cell based on the one bit of information the cell was capable of storing. Id. at 1:24-26. Memory storage devices that were enhanced to allow multiple bits of storage per cell were either non-alterable read-only memory systems or volatile memory devices not capable of permanent storage. Id. at 1:31-35. The '571 patent attempts to solve this drawback by creating a “multi-level electrically alterable non-volatile memory (EANVM) device, wherein some or all of the storage locations have more than two states.” Id. at 2:50-54.

         The '571 patent traces its lineage to a U.S. Patent Application No. 07/652, 878, filed on February 8, 1991. Following this application, plaintiff filed U.S. Patent Application No. 08/071, 816 (“the '816 application”), which was a continuation of U.S. Patent Application No. 07/652, 878. During prosecution of the '816 application, the examiner issued a restriction requirement, requiring plaintiff to elect one of three independent and distinct inventions for prosecution.[1] Plaintiff elected the memory system, and the restricted '816 application issued as U.S. Patent No. 5, 394, 362 (“the '362 patent”).

         The day before the '362 patent issued, plaintiff filed U.S. Application No. 08/410, 200 (“the '200 application”) as a continuation-in-part (“CIP”) of the '816 application. During prosecution, the '200 application was amended to remove any new matter and convert the application into a division of the '816 application. The '200 application issued as the '571 patent, a division of the '816 application.

         Plaintiff filed U.S. Application No. 08/975, 919 (“the '919 application”) as a CIP of the '200 application. Plaintiff subsequently filed U.S. Application No. 09/411, 315 (“the '315 application”) as a division of the '919 application. On January 28, 2000, plaintiff filed U.S. Application No. 09/493, 139 (“the '139 application”) as a division of the '315 application. After one intervening continuation application and five intervening divisional applications, plaintiff filed U.S. Patent Application No. 11/876, 683 (“the '683 application”), which issued as the '851 patent. Plaintiff filed U.S. Application No. 13/041, 340 as a division of the '683 application, which issued as the '814 patent.

         The '851/'814 patents share a common title, “Memory Apparatus Including Programmable Non-Volatile Multi-Bit Memory Cell, and Apparatus and Method for Demarcating Memory States of the Cell.” Both patents relate generally to non-volatile memory devices, and more specifically to apparatus and methods involving memory-state demarcation and programming reference signal generation in multi-level non-volatile memory devices. '851 Patent 1:33-37; '814 Patent 1:35-39. The '851/'814 patents purport to improve upon predecessor EANVM applications by having the read reference signals and programming reference signals track changes in operating and ambient conditions, thereby increasing accuracy. '851 Patent 3:39-46, 13:65-67, 14:1-40; '814 Patent 3:42-49, 14:4-44.

         LEGAL STANDARD

         Summary judgment is proper if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The moving party, however, has no burden to produce evidence showing the absence of a genuine issue of material fact. Id. at 325. Rather, the burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence to support the nonmoving party's case. Id.

         Once the moving party has met its burden, the burden shifts to the non-moving party to “designate ‘specific facts showing that there is a genuine issue for trial.'” Id. at 324 (quoting then Fed.R.Civ.P. 56(e)). To carry this burden, the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). “The mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party].” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).

         In deciding a summary judgment motion, the evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor. Id. at 255. “Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge . . . ruling on a motion for summary judgment . . . .” Id. However, conclusory, speculative testimony in affidavits and moving papers is insufficient to raise genuine issues of fact and defeat summary judgment. Thornhill Publ'g Co., Inc. v. Gen. Tel. & Elec. Corp., 594 F.2d 730, 738 (9th Cir. 1979). The evidence the parties present must be admissible. Fed.R.Civ.P. 56(c)(4). Finally, because a patent is presumed valid, invalidity must be established by clear and convincing evidence. See Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed. Cir. 2007); Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1339 (Fed. Cir. 2003).

         DISCUSSION

         I. Plaintiff's motion for summary judgment

         Plaintiff seeks summary judgment that the '571 patent is not invalid because of obviousness-type double patenting in view of the '851 or '814 patents because the 35 U.S.C. § 121 safe harbor applies. The § 121 safe harbor protects certain patents and patent applications from double patenting rejections/invalidations when the United States Patent and Trademark Office (“PTO”) has issued a restriction requirement. A party invoking the safe harbor must demonstrate that (1) the “as a result of” requirement is met and (2) “consonance” is maintained.

         Plaintiff argues that the “as a result of” requirement of the safe harbor is satisfied because (i) the ancestral '816 application was subject to a formal restriction requirement; (ii) in response to that restriction requirement, plaintiff filed the divisional '139 application; (iii) both the challenged '571 patent and the reference '851/'814 patents share a common lineage to the '816 application; and (iv) but for the restriction requirement, plaintiff could have pursued all of the '571/'851/'814 patents' claims in the '200 application. Plaintiff also argues that the consonance requirement of the safe harbor is met because the '571 and '851/'814 patents are directed toward different inventions identified in the '816 application's restriction requirement.

         A. Restriction practice and the § 121 safe harbor

         If a patent application claims two or more independent and distinct inventions, the PTO may issue a restriction requirement, requiring the applicant to elect one of the inventions for prosecution. See 35 U.S.C. ยง 121 (2015). The applicant is then free to file one or possibly more divisional applications ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.