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3:09-cv-05659
N.D. Cal.
Aug 16, 2016
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Background

  • Richtek owns U.S. Patent No. 7,315,190 (DC-DC power controller technology); application filed June 2006, inventor Isaac Chen.
  • Richtek sued uPI in Dec. 2009 and also filed an ITC complaint the same day; ITC discovery and USPTO reexamination/stays delayed district litigation.
  • In November 2010 Richtek served infringement contentions asserting a June 16, 2006 priority date. Chen testified in the ITC that conception occurred in April 2006.
  • After USPTO reexamination, uPI obtained leave (in June 2016) to amend its invalidity contentions to add June 2006 prior art; parties treated ITC discovery as produced here.
  • On July 14, 2016 (shortly before fact discovery closed), Richtek moved to amend its infringement contentions to: (1) assert an earlier (April 2006) priority date, (2) identify five additional Richtek products that practice the patent, and (3) delete contentions as to defendants already dismissed by settlement.
  • uPI opposed the first two amendments; the court evaluated the motion under Patent Local Rule 3-6 (good cause/diligence and undue prejudice standard).

Issues

Issue Plaintiff's Argument Defendant's Argument Held
Assert earlier priority date (April 2006) April 2006 conception was revealed by Chen's ITC deposition; uPI cannot be prejudiced and the earlier date became relevant after uPI amended invalidity contentions Believed amendment is untimely and prejudicial; Richtek should have disclosed earlier date in initial contentions Denied — Richtek lacked diligence; should have asserted April 2006 earlier; no good cause shown
Identify additional Richtek products Obliged to supplement disclosures to identify five more Richtek products that practice the claims Opposed as untimely and lacking specificity; no explanation of purpose or diligence Denied — motion lacked diligence, failed to describe products, and failed to show good cause
Remove contentions about dismissed defendants N/A (move to delete contentions after those defendants settled/dismissed) No opposition Granted — amendment simplifies issues and was timely (filed promptly after dismissals)

Key Cases Cited

  • O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006) (establishes the Patent Local Rules good-cause inquiry balancing diligence and prejudice)
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Case Details

Case Name: Richtek Technology Corporation v. uPI Semiconductor Corporation
Court Name: District Court, N.D. California
Date Published: Aug 16, 2016
Citation: 3:09-cv-05659
Docket Number: 3:09-cv-05659
Court Abbreviation: N.D. Cal.
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    Richtek Technology Corporation v. uPI Semiconductor Corporation, 3:09-cv-05659