Microchip Technology Incorporated v. Nuvoton Technology Corporation America
- Susan Illston
- 3:19-cv-01690
- U.S. District Court · Northern District of California
- 6
In Microchip v. Nuvoton, Judge Illston ordered Microchip to reduce its asserted patent claims in stages during discovery.
Microchip must reduce its asserted patent claims on the schedule set by the court, and Nuvoton must limit its identified prior-art references after the second reduction.
What happened
Microchip Technology Incorporated v. Nuvoton Technology Corporation America is a patent-infringement case involving six patents and 109 asserted claims. The parties disagreed about when and how much Microchip should reduce its claims.
Microchip wanted to wait until Nuvoton disclosed more about its invalidity positions and sales data, and proposed reducing the claims first to 60 and then to 45. Nuvoton proposed an earlier reduction to 40 claims, followed by further reductions.
Judge Illston ordered Microchip to identify no more than 40 claims by October 13, 2019, and no more than 20 claims by the court’s claim-construction order. The order also limited Nuvoton to 20 prior-art references after Microchip’s second reduction and allowed Microchip to seek permission to add claims for good cause.
The detailed version
- Microchip Technology Incorporated v. Nuvoton Technology Corporation America · No. 3:19-cv-01690
- Susan Illston
- Oct. 3, 2019
Background
Microchip filed a patent-infringement case against Nuvoton Technology Corporation America and Nuvoton Technology Corporation. Microchip’s operative complaint alleged infringement of six patents. On July 26, 2019, Microchip served infringement contentions asserting infringement of 109 claims. Nuvoton later served its invalidity contentions.
The parties jointly presented a discovery dispute about reducing the number of asserted claims. They agreed that a reduction was necessary but disagreed about its timing and size. Microchip proposed making its first reduction after Nuvoton disclosed its invalidity strategy, including whether it would seek inter partes review, and fully disclosed sales data. Microchip proposed an initial reduction to 60 claims and a later reduction to 45 claims. Nuvoton proposed that Microchip reduce its claims to 40 by October 13, 2019, with a later reduction to 10 claims in no more than three patents.
Court’s Analysis
The court rejected Microchip’s proposed timing. It found no legal basis for requiring Nuvoton to disclose its invalidity strategy or sales data before Microchip made an initial reduction. The court also noted that claim limitations are commonly required before claim construction, particularly when the defendant has already served invalidity contentions.
The court found Nuvoton’s proposed number of claims reasonable and appropriate for managing the case. It relied on other patent cases in which courts had required comparable reductions. The court made one change to Nuvoton’s proposal: it would not require Microchip to drop entire patents instead of individual claims.
Order
Judge Illston ordered Microchip to identify no more than 40 asserted claims total by October 13, 2019. By the court’s claim-construction order, Microchip must identify no more than 20 asserted claims total. Before the expiration of the stated 14-day period, Microchip may ask to bring back unselected claims by showing good cause that they present unique issues of validity or infringement, or may ask to increase the presumptive total above 20 claims.
Within 14 days after Microchip identifies no more than 20 claims, Nuvoton must identify no more than 20 prior-art references. Within 14 days after the claim-construction order, the parties must contact the court to arrange a conference about the remaining schedule, including trial. They must be prepared to discuss whether further reductions in asserted claims or prior-art references are appropriate.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.