Volterra Semiconductor Corp. v. Primarion, Inc.

• Citation: 796 F.Supp.2d 1025
• Decision Date: 04 May 2011
• Docket Number: Case No. C–08–05129 JCS.
• Parties: VOLTERRA SEMICONDUCTOR CORPORATION, Plaintiff, v. PRIMARION, INC., et al., Defendants.
• Court: U.S. District Court — Northern District of California

796 F.Supp.2d 1025

VOLTERRA SEMICONDUCTOR CORPORATION, Plaintiff,

v.PRIMARION, INC., et al., Defendants.

Case No. C–08–05129 JCS.

United States District Court, N.D. California.

May 4, 2011.

Brian Joseph Keating, James W. Morando, Jeffrey M. Fisher, John L. Cooper, Racheal Turner, Farella Braun & Martel LLP, San Francisco, CA, for Plaintiff.

ORDER RE SUMMARY JUDGMENT MOTIONS [Docket Nos. 906–914, 916, 924–925]

REDACTED VERSION

JOSEPH C. SPERO, United States Magistrate Judge.I. INTRODUCTION

On November 12, 2008, Plaintiff Volterra Semiconductor Corporation (“Volterra”) filed a complaint alleging infringement and contributory infringement by Defendants (“Primarion”) of the following patents: 1) U.S. Patent No. 6,278,264 (the “'264 patent”); 2) U.S. Patent No. 6,462,522 (the “'522 patent”); 3) U.S. Patent No. 6,713,823 (the “'823 patent”); 4) U.S. Patent No. 6,020,729 (the “'729 patent”); and 5) U.S. Patent No. 6,225,795 (the “'795 patent”). Twelve summary judgment motions (“the Motions”) are presently before the Court, which address the following issues relating to the '264 and '522 patents (“the Burstein Patents”):

1) whether the accused products infringe claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent; ¹

2) whether claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent are anticipated by U.S. Patent No. 5,945,730 (“Sicard” or “the Sicard Patent”), or rendered obvious by Sicard, either by itself or in combination with other prior art; ²

3) whether claims 9, 11 and 16–19 of the '522 patent are anticipated by a 1994 article by Anthony Stratakos entitled “A Low–Voltage CMOS DC–DC Converter for a Portable Battery–Operated System” (“Stratakos 1994 Article”), or rendered obvious by the Stratakos 1994 Article, either by itself or in combination with other prior art;” ³

4) whether certain references cited by Defendants in connection with their anticipation and obviousness defenses qualify as prior art; ⁴

5) whether Defendants should be precluded from relying on certain prior art references and on-sale bar theories that Volterra alleges were not timely disclosed; ⁵

6) whether claims 26 and 34 of the '264 patent and claims 9, 11, 16–19 and 22 and 24 of the '522 patent are invalid for lack of a written description or lack of enablement because the Burstein Patents do not adequately disclose: a) voltage regulators in which the output voltage can be adjusted while in operation; b) voltage regulators that use LDMOS transistors; and c) certain electrical connections that are not illustrated in the specification; ⁶

7) whether the asserted claims are invalid because the claim term “power switch” is indefinite; ⁷

8) whether Plaintiff engaged in inequitable conduct in connection with prosecution of the '264 or '522 patents or during the reexamination proceedings; ⁸

9) whether any of the asserted claims of the '264 or '522 patents are invalid due to public use of the claimed invention more than a year before filing for the Burstein Patents, in violation of the on-sale bar under 35 U.S.C. § 102(b); ⁹

10) whether Volterra has standing to assert infringement of the Burstein Patents.¹⁰

The parties have consented to the jurisdiction of the undersigned United States magistrate judge pursuant to 28 U.S.C. § 636(c). Hearings on the Motions were held on December 10, 2010 and January 21, 2011.

II. SUMMARY JUDGMENT STANDARD

Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). Summary judgment must be supported by “facts as would be admissible in evidence.” Fed.R.Civ.P. 56(e). In order to prevail, a party moving for summary judgment must show the absence of a genuine issue of material fact with respect to an essential element of the non-moving party's claim, or to a defense on which the non-moving party will bear the burden of persuasion at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Further, “ Celotex requires that for issues on which the movant would bear the burden of proof at trial, that party must show affirmatively the absence of a genuine issue of material fact,” that is, “that, on all the essential elements of its case on which it bears the burden of proof at trial, no reasonable jury could find for the non-moving party.” Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1116 (11th Cir.1993). Once the movant has made this showing, the burden then shifts to the party opposing summary judgment to designate “specific facts showing there is a genuine issue for trial.” Celotex, 477 U.S. at 323, 106 S.Ct. 2548. On summary judgment, the court draws all reasonable factual inferences in favor of the non-movant. Anderson v. Liberty Lobby Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

III. EVIDENTIARY OBJECTIONS

As the Court may consider only admissible evidence in ruling on the summary judgment motions, it turns first to the parties' evidentiary objections.

Defendants have filed objections to evidence cited by Plaintiff in support of: 1) Plaintiff's summary judgment motions (Docket No. 1085); and 2) Plaintiff's briefs in Opposition to Defendants' summary judgment motions (Docket No. 1124).¹¹ Plaintiff, in turn, has filed objections to evidence cited by Defendants in support of: 1) Defendants' summary judgment motions (Docket No. 1181); 2) Defendants' briefs in Opposition to Plaintiff's summary judgment motions (Docket No. 1154); and 3) Defendants' Reply briefs (Docket No. 1177).

The Court rules on these objections below.

A. Defendants' Objections

1. Objections to Evidence Offered in Support of Plaintiff's Summary Judgment Motions (Docket No. 1085)

Defendants object to Volterra's reliance on dictionary definitions of the words “layer” and “bump” in Dr. Szepesi's July 14, 2010 invalidity report, arguing that this extrinsic evidence was not timely disclosed under Patent Local Rule 4–3. See Defendants' Objections to Certain Information Offered in Support of Volterra's Motions for Summary Judgment (Docket No. 1085) (“Defendants' Objections (Volterra SJ Motions)”) at 1–2 (citing Rebuttal Expert Report of Dr. Thomas Szepesi Regarding Validity of U.S. Patent Nos. 6,278,264 and 6,462,522 (“Szepesi 7/14/10 Rebuttal Report on Invalidity”), ¶¶ 94–95). In addition, Defendants object to Volterra's reliance on expert reports by Dr. Szepesi that they assert were not properly sworn. Id. at 2–3.

Volterra responds that the reliance of its expert on dictionary definitions that were not included in its Rule 4–3 disclosures does not violate that rule, which governs evidence cited to support a party's claim construction position, because the definitions are offered by Dr. Szepesi to support an argument relating to validity. See Volterra Semiconductor Corporation's Opposition to Defendants' Objections to Certain Information Offered in Support of Volterra's Motion for Summary Judgment (Docket No. 1178) (“Volterra's Response to Defendants' Objections (Volterra SJ Motions)”) at 1. As to Defendants' objection that Dr. Szepesi's reports were not properly sworn, Volterra argues that all of Dr. Szepesi's reports were properly sworn and that in any event, the argument is moot because Volterra has filed a supplemental declaration by Dr. Szepesi that is sworn under penalty of perjury and has all of his expert reports attached. Id. at 1–3.

The Court overrules both objections.

a. Dictionary Definitions of “Layer” and “Bump”

Under Patent Local Rule 4–3, parties are required to disclose any dictionary definitions upon which they intend to rely in support of their proposed claim constructions not later than 60 days after service of the Invalidity Contentions. As Dr. Szepesi relies on the dictionary definitions to which Defendants object in support of his opinions on invalidity, rather than claim construction, this evidence is outside the ambit of Patent Local Rule 4–3. Further, as discussed below, to the extent that Dr. Szepesi's opinions concerning the meaning of the word “layer” as applied to Sicard may have implications as to infringement, the Court does not find that the dictionary definitions offered by Dr. Szepesi on this question constitute an improper attempt to amend the Court's claim construction. Rather, the Court concludes that Dr. Szepesi is merely addressing what the Court's claim construction means as to the word “layer”—a term that, prior to summary judgment, did not appear to be a subject of controversy. The Court overrules Defendants' objection.

b. Szepesi Reports

Defendants assert that the Court should not consider the expert reports of Dr. Szepesi because they are not admissible evidence, citing the rule that “[u]nsworn expert reports prepared in compliance with Rule 26(a)(2) do not qualify as affidavits or otherwise admissible evidence for purpose of Rule 56, and may be disregarded by the court when ruling on a motion for summary judgment.” Defendants' Objections (Volterra SJ Motions) at 3 (quoting Smith v. City of Oakland, 2007 WL 2288328, at *3–4, 2007 U.S. Dist. Lexis 59941, at *9–10 (N.D.Cal. Aug. 9, 2007)). Defendants also cite King Tuna, Inc. v. Anova Food, Inc., 2009 WL 650732, at *1–2, 2009 U.S. Dist. LEXIS 22901, at *3–4 (C.D.Cal. Mar. 10, 2009) for the same rule. Id. Defendants' objection fails for two reasons.

First, both Smith and King Tuna are distinguishable from the facts here in that the reports in those cases were not, in fact, sworn. Here, in contrast, all of the challenged reports end with the statement, “I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.” Nor does either of these cases require that expert reports must be sworn in a separate declaration by the expert, as Defendants appear to suggest.

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