Lam Research Corp. v. Schunk Semiconductor
65 F. Supp. 3d 863
N.D. Cal.2014Background
- Lam Research sued Xycarb for infringement of reissue patent RE 41,266, alleging willful infringement and seeking damages.
- Xycarb moved to bifurcate the trial into separate liability and damages phases, arguing complexity of damages and a high likelihood it would prevail on liability after claim construction.
- Lam moved for partial summary judgment (styled) seeking a ruling that Claims 33 and 36 disclose a "shrink fit" bonding method, relying on Xycarb’s 2010 invalidity contentions as purported admissions.
- Xycarb’s 2010 invalidity contentions described Claims 33 and 36 as related to "shrink fit," but included extensive reservations that the contentions were based on then-current understandings and subject to change.
- The court had previously issued a claim construction ruling finding Claim 33 does not disclose shrink fit; Lam sought reconsideration and was denied. Lam then relied on Xycarb’s prior contentions in the summary-judgment–styled filing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether trial should be bifurcated into liability and damages phases | Bifurcation unnecessary to deny; Lam opposed bifurcation | Bifurcation would avoid juror confusion, save expense, and possibly eliminate a damages trial because Xycarb likely would prevail on liability post-claim construction | Denied — issues overlap (wilfulness), low risk of juror confusion, late-stage bifurcation would delay and not promote judicial economy |
| Whether Claims 33 and 36 undisputedly disclose a "shrink fit" bonding method based on Xycarb’s invalidity contentions (motion styled as partial summary judgment) | Xycarb’s invalidity contentions are judicial admissions making disclosure of shrink fit undisputed; thus Lam is entitled to summary judgment | The contentions are legal argument/positions, contain reservations, and are not deliberate, clear, unambiguous admissions; claim construction is a court’s legal task | Denied — the statements are not judicial admissions controlling claim construction; claim construction remains the court’s independent legal determination |
| Whether Lam may relitigate claim construction by recasting a reconsideration argument as summary judgment | Lam contends the filing is summary judgment and not bound by reconsideration limits | Xycarb contends substance controls; Lam is seeking reconsideration of an already-rejected argument | Denied — court treats the filing as a repetitive motion for reconsideration and refuses to permit circumvention of Local Rule 7-9; merits also rejected |
| Whether Xycarb’s prior contentions bind the court on claim meaning | Lam: prior contentions render the term undisputed and foreclose construction contrary to those contentions | Xycarb: prior contentions are tied to earlier claim constructions and reserved; court not bound by parties’ constructions | Denied — court retains independent claim construction authority and declines to adopt alleged admissions as controlling |
Key Cases Cited
- Hangarter v. Provident Life & Acc. Ins. Co., 373 F.3d 998 (9th Cir. 2004) (district court has discretion on bifurcation)
- Jinro Am., Inc. v. Secure Investments, Inc., 272 F.3d 1289 (9th Cir. 2001) (same)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (U.S. 1996) (claim construction is a question of law for the court)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (role of intrinsic evidence in claim construction)
- Am. Title Ins. Co. v. Lacelaw Corp., 861 F.2d 224 (9th Cir. 1988) (definition and effect of judicial admissions)
- Vederi, LLC v. Google, Inc., 744 F.3d 1376 (Fed. Cir. 2014) (use of intrinsic evidence in claim construction)
- Trading Techs. Int’l, Inc. v. eSpeed, Inc., 431 F. Supp. 2d 834 (N.D. Ill. 2006) (overlap of liability and willfulness evidence)