VLSI Technology LLC v. Intel Corporation
- Beth Freeman
- 5:17-cv-05671
- U.S. District Court · Northern District of California
- 6
In VLSI v. Intel, Judge Cousins granted in part and denied in part VLSI’s request to amend patent-infringement contentions.
VLSI Technology LLC may amend its infringement contentions concerning the ’836 patent, while Intel Corporation does not have to address the remaining proposed amendments at this stage.
What happened
VLSI Technology LLC asked to amend its patent-infringement contentions against Intel Corporation for a third time. The request involved amendments concerning one patent, new allegedly infringing products, the doctrine of equivalents, and a previously dismissed claim.
The court allowed the stipulated amendments concerning the ’836 patent, including amendments based on recently produced source code. It denied the remaining requests because VLSI did not adequately explain the new information it found or show diligence, and Intel would be prejudiced so close to the end of fact discovery.
In VLSI Technology LLC v. Intel Corporation, Magistrate Judge Nathanael M. Cousins granted in part and denied in part VLSI’s request to amend its infringement contentions.
The detailed version
- VLSI Technology LLC v. Intel Corporation · No. 5:17-cv-05671
- Beth Freeman
- Mar. 6, 2023
Background
VLSI sued Intel over alleged infringement of VLSI’s patented semiconductor and microprocessor technology. VLSI served its initial infringement contentions in January 2018 and later amended them twice. After a stay related to inter partes reviews by the Patent Trial and Appeal Board, the stay was lifted on September 1, 2021. VLSI served its second amended infringement contentions on October 27, 2021.
VLSI served Intel with third amended infringement contentions on September 6, 2022, but did not ask the court for permission to amend until February 10, 2023. The proposed amendments addressed four categories: amendments involving the ’836 patent, new products that allegedly used infringing technology, language concerning infringement under the doctrine of equivalents, and the addition of previously dismissed claim 1 of the ’672 patent.
Legal standard
Patent Local Rule 3-6 allows infringement contentions to be amended only by court order upon a timely showing of good cause. The party seeking amendment must show diligence both in discovering the basis for the amendment and in seeking permission to amend. The court also considers whether the amendment would prejudice the opposing party.
Court’s analysis
The parties stipulated to amendments concerning the ’836 patent. The court granted VLSI’s request as to those amendments, including amendments based on recently produced source code.
The court found that VLSI had not shown diligence concerning the remaining amendments. VLSI referred to Intel’s source-code productions and Intel’s June 17, 2022 non-infringement statement, but did not adequately describe the new information, explain how it supported the proposed amendments, or account for the delay in seeking permission to amend. The court noted that VLSI had waited about ten months after the March 2022 source-code production before filing its third amended contentions.
The court also found that Intel would be prejudiced by the remaining amendments. VLSI sought the amendment about two weeks before the close of fact discovery, and Intel had relied on VLSI’s October 2021 contentions when developing its written discovery and deposition strategy. Allowing the remaining amendments would require additional discovery and additional work on Intel’s defenses.
Disposition
The court granted in part and denied in part VLSI’s request to amend its second amended infringement contentions. It granted the request concerning the ’836 patent and denied the remaining requests. The order addressed amendment of litigation contentions and did not decide whether Intel infringed VLSI’s patents.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.