Kilopass Tech., Inc. v. Sidense Corp.

• Decision Date: 11 March 2015
• Docket Number: Case No. 10–cv–02066–SI
• Citation: 82 F.Supp.3d 1154
• Parties: Kilopass Technology, Inc., Plaintiff, v. Sidense Corporation, Defendant.
• Court: U.S. District Court — Northern District of California

82 F.Supp.3d 1154

Kilopass Technology, Inc., Plaintiff

v.Sidense Corporation, Defendant.

Case No. 10–cv–02066–SI

United States District Court, N.D. California.

Signed March 11, 2015

Alex Feerst, Daralyn J. Durie, Eugene Novikov, Durie Tangri LLP, San Francisco, CA, Jimmy M. Shin, Rachel A. Repka, Dentons U.S. LLP, Palo Alto, CA, for Plaintiff.

Roger L. Cook, Kevin Joseph O'Brien, Robert D. Tadlock, Sara Brittany Giardina, Kilpatrick Townsend and Stockton LLP, San Francisco, CA, Christina E. Fahmy, Kilpatrick Townsend, Washington, DC, Joshua Hamilton Lee, Kilpatrick Townsend, Atlanta, GA, Rachel A. Repka, Dentons U.S. LLP, Palo Alto, CA, for Defendant.

ORDER RE: ATTORNEYS' FEES CALCULATION

SUSAN ILLSTON, United States District Judge

Currently pending before the Court is Sidense's supplemental motion regarding attorneys' fees calculation. Having considered the arguments of the parties and the papers submitted, and for good cause shown, the Court rules as follows.

BACKGROUND

The Court has provided a detailed factual background of this case in its order from August 12, 2014. Docket No. 427. Therefore, the Court limits its background discussion to the procedural history and a description of the contingency fee agreements at issue.

I. Procedural History

On May 14, 2010, Kilopass filed the present action against Sidense asserting infringement of the '751 patent.¹ Docket No. 1. On June 18, 2010, Kilopass filed a first amended complaint adding allegations of infringement of the '757 and '540 patents. Docket No. 6. On October 14, 2010, Kilopass filed a second amended complaint. Docket No. 38. On December 13, 2010, the Court granted in part and denied in part Sidense's motion to dismiss the second amended complaint, leaving six causes of action in the case: three patent infringement claims asserting infringement of the '751, '757, and '540 patents, one false advertisement and disparagement claim, one intentional interference with prospective economic relations claim, and one unfair competition claim. Docket No. 50; see also Docket No. 234 (Third Amended Complaint).

In its infringement contentions, Kilopass accused Sidense of infringing claims 1, 3, 5, 6, 9, 12, and 14 of the '751 patent, claims 1, 2, 5, 7, 8, 13, and 14 of the '757 patent, and claims 1, 3, 5, and 6 of the '540 patent. Docket No. 420, Durie Decl. Ex. 12 at A6308. Kilopass's infringement contentions included allegations of both literal infringement and infringement under the doctrine of equivalents.Id. at A6307. With respect to the “column bitlines and row wordlines” claim limitation, the contentions asserted that the accused products merely “switch[ ] the terms ‘wordlines' and ‘bitlines' to create an artificial distinction. Columns and rows are a matter of perspective only.” Id. at A6311. With respect to the “first and second doped semiconductor region” claim limitation, the contentions asserted the “channel stop” theory of infringement that was contained in Morrison & Foerster's preliminary analysis. Kilopass asserted that “the STI [Shallow Trench Isolation] is the equivalent of the first doped region. The function of the first doped region is to provide a channel stop. The way it functions is to prevent current from the channel to flow in the area of the STI. The result is that the end of the channel is defined. Sidense's STI performs substantially the same function, functions in substantially the same way, and achieves the [sic ] substantially the same result.” Id. at A6313. Kilopass also asserted that the first doped semiconductor region limitation was literally present in the accused device because the device's STI “is literally a first doped region forming the channel stop.” Id.

The Court held a claim construction hearing on August 1 and 2, 2011. Kilopass originally argued at the claim construction stage that wordlines and bitlines are interchangeable terms. See Docket No. 113 at 6 (“[O]ne of ordinary skill in the art would understand that the current flows can be detected in both the bitline and the wordline, again showing the interchangeability of the two, and with the naming of ‘bitline’ or ‘wordline’ being simply a matter of perspective.”). As interchangeable terms, Kilopass proposed they be defined identically as “a line that connects to one terminal of each memory cell in a memory array.” Id. at 5, 6.

On August 31, 2011, the Court issued a claim construction order construing disputed terms from the '751, '757, and '540 patents. Docket No. 147. The Court did not adopt Kilopass's proposed construction for the terms “bitline” and “wordline,” but largely found in its favor. The Court noted that wordlines and bitlines always appeared orthogonal to one another in a memory array, and thus the Court declined to “define two different terms to mean precisely the same thing when they are not identical.” Id. at 9. However, the Court limited the differences between bitlines and wordlines to their positions in relation to one another: the Court defined the term “bitline/column bitline” as “a line orthogonal to the row wordline that connects to a terminal of each memory cell in a memory array,” and the term “wordline/row wordline” as “a line orthogonal to the column bitline that connects to a terminal of each memory cell in a memory array.” Id.

Concurrent with this litigation, on December 7, 2010, Sidense filed with the United States Patent & Trademark Office (“PTO”) requests for inter partes reexamination of Kilopass's patents-in-suit. Sidense argued to the PTO that Kilopass's '751 patent was anticipated by an earlier patent, Tanaka et al. (U.S. Patent No. 5,331,181) (“Tanaka”). In Tanaka, unlike Kilopass's '751 patent but like Sidense's memory cell, the doped semiconductor region is connected to a bitline. The patent examiner in the PTO proceeding issued an Action Closing Prosecution and ruled that Kilopass overcame Tanaka because “it is well known to one of ordinary skill in the art at the time of the invention that the bitlines and wordlines have a distinct functional effect on the operation of memory devices and thus are not interchangeable.” See Docket No. 207–5, Khaliq Decl., Ex. 4 at 6 (Feb. 18, 2011 USPTO Office Action). After Sidense appealed that decision to the PTO's Board of Patent Appeals and Interferences (the “BPAI”), Kilopass filed a brief explicitly agreeing with the Patent Examiner's finding:

With respect to claims 5 and 11, the Patent Owner agrees with the Examiner that Tanaka does not show a gate formed from a column bit line. As can been seen [sic ] in Figure 2(b) of Tanaka, the gates of the transistors are coupled to row wordlines. Therefore claims 5 and 11 are not anticipated by Tanaka.

Docket No. 192–3, Hutchins Decl. Ex. 7 at 8 (Kilopass's Jan. 6, 2012 BPAI Brief).

The position Kilopass took before the BPAI was clearly irreconcilable with its “interchangeability” position that it took before this Court. In a May 1, 2012 Order, the Court found that by taking the contrary position it did before the BPAI, Kilopass clearly and unmistakably disavowed claim scope where the gates of the transistors are connected to row wordlines.² See Docket No. 224 at 8–11 (citing Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed.Cir.2008) (noting that a patentee can disavow claim scope “by clearly characterizing the invention in a way to try to overcome rejections based on prior art”); Spectrum Intern., Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed.Cir.1998) (“Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers.”)). On May 15, 2012, Kilopass filed a motion for leave to file a motion for reconsideration of the Court's order finding disavowal of claim scope. Docket No. 228. Kilopass sought reconsideration based on a supplemental statement it filed with the PTO on May 2, 2012 stating that it made an error in its statement agreeing with the PTO Examiner and that the terms bitline and wordline are interchangeable. Id. at 5–11. On May 24, 2012, the Court denied Kilopass's motion for leave to file a motion for reconsideration. Docket No. 235. In denying the motion, the Court stated:

The Court finds that [Local Rule 7–9(b)(2) ] does not apply where the “new material fact” is merely a party's attempt to undo a strategic position for which it has been penalized. It was in Kilopass's interest to argue that wordlines are different from bitlines in its BPAI brief; however, after that position damaged its case in this Court, Kilopass sought to reverse its position before the BPAI. Moreover, Kilopass vigorously opposed Sidense's motion for estoppel and claim disavowal that brought Kilopass's incongruous position to the attention of the Court. Nowhere in its opposition did Kilopass suggest that it made a mistake in the BPAI brief. See Kilopass's Opp. to Sidense's Mot. for Recon., Dkt. 207. Instead, Kilopass argued that its “position at the PTO was fully consistent with its earlier position” and that it “did not persuade the Court to adopt a claim construction position that would create a risk of inconsistent judicial rulings.” Id. at 6–9. Only after the Court found that Kilopass adopted inconsistent positions and disavowed claim scope, did Kilopass re-characterize its BPAI position as error and file a submission with the USPTO to “correct an error made without deceptive intent.” See dkt. 228–7. This type of gamesmanship is not the purpose for which Civil Local Rule 7–9 allows for reconsideration.

Id. at 5–6.

On August 16, 2012, the Court granted Sidense's motion for summary judgment of non-infringement of the patents-in-suit. Docket No. 272. In the order, the Court found that there was no genuine issue of material fact that Sidense's technology does not satisfy (1) the “row wordlines” connected to the “second doped semiconductor region” claim limitation; (2) the “first doped semiconductor region” claim limitation; and (3) the “spaced apart relationship” claim limitation. See id. at 7–17. With...