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