Nitride Semiconductors Co., Ltd. v. Rayvio Corporation, No. 5:2017cv02952 - Document 96 (N.D. Cal. 2018)
Court Description: ORDER DENYING 65 DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE. Signed by Judge Edward J. Davila on 5/11/2018. (ejdlc2S, COURT STAFF) (Filed on 5/11/2018)
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 NITRIDE SEMICONDUCTORS CO., LTD., Case No. 5:17-cv-02952-EJD Plaintiff, 9 ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE v. 10 11 RAYVIO CORPORATION, Re: Dkt. No. 65 United States District Court Northern District of California Defendant. 12 13 On February 16, 2018, Plaintiff Nitride Semiconductor Co., Ltd.’s (“Nitride”) filed its 14 15 Opening Claim Construction Brief in the above-captioned case. Defendant RayVio Corporation 16 (“RayVio”) now moves to strike portions of this brief, its supporting expert declaration, and to 17 impose sanctions because it improperly introduced a new construction for a claim term in 18 violation of Patent Local Rules 4-3 and 4-7. For the reasons discussed below, RayVio’s motion is 19 DENIED. 20 21 I. BACKGROUND On August 18, 2017, this Court issued a Patent Scheduling Order setting forth a schedule 22 for the parties to comply with various deadlines for claim construction disclosures and briefing 23 under the Patent Local Rules. Dkt. No. 37. 24 On November 28, 2017, the parties exchanged preliminary proposed constructions 25 pursuant to Patent Local Rule 4-2. Declaration of Daniel Radke (“Radke Decl.”), Exs. B and C, 26 Dkt. Nos. 71-3 and 71-4. Both parties proposed constructions for terms which included the phrase 27 “composition material.” Id. The chart below summarizes the proposals relevant to this motion: 28 Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 1 1 Term “a spatial fluctuation is created in the band gap by variation in the compositional ratio in the second gallium nitride based semiconductor created by the composition material” (claim 1) Nitride’s Proposal “continuous widening and narrowing of the band gap laterally within the second gallium nitride based semiconductor is created by changes in the ratio of the elements in the second gallium nitride based semiconductor created by the composition material” but did not separately propose a construction for “composition material.” 14 “the composition material is one selected from Ga or Al” (claim 2) “the material composed of some of the elements of the first gallium nitride based semiconductor is either Ga or Al” 15 Id. 2 3 4 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 16 RayVio’s Proposal This limitation is indefinite rendering claim 1 invalid. Alternative construction if claim is not indefinite: “a spatial fluctuation is created in the band gap of the second gallium nitride based semiconductor by variation in the ratio of (1) the amount of composition material to (2) the amount of gallium nitride based material within the second gallium nitride based semiconductor caused by discrete areas of only composition material, i.e., discrete (distinct) droplets or microblocks composed of a single element selected from the first gallium nitride based semiconductor and that is not part of another material” “composition material” in all asserted claims means “discrete (distinct) droplets or microblocks composed of a single element selected from the first gallium nitride based semiconductor and that is not part of another material” ... “the composition material is Ga or Al, not both” (claim 2) On December 15, 2017, the parties engaged in a meet and confer pursuant to Patent Local 17 Rule 4-2(c). As part of this discussion, the parties discussed the possibility of construing 18 “composition material” as a separate term. Declaration of Russell Tonkovich (“Tonkovich 19 Decl.”), Dkt. No. 65-1, at ¶ 3; Opposition to Motion to Strike (“Opp.”), Dkt. No. 71, at 3. They 20 agreed that, if a party was going to propose a construction of “composition material,” it would 21 exchange such construction(s) with the other party by December 19, 2017. Tonkovich Decl. ¶ 3. 22 On December 18, 2017, Nitride sent RayVio an email informing it that: 23 Upon further consideration, we do not believe it is necessary to separately construe the term “composition material,” and therefore do not intend to provide a proposed construction for that term. The parties’ respective interpretations of “composition material” in the previously-identified terms are clear from the parties’ proposed constructions, exchanged on November 28, of the claim terms identified in rows 4 and 5 of Exhibit 1 to RayVio’s PLR 4-2 Disclosure. Given that “composition material” is already included in the existing identified terms, we see no reason to create a new Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 2 24 25 26 27 28 1 separate term for it. Tonkovisch Decl., Ex. 1, Dkt. No. 65-2. 2 The parties filed their Joint Claim Construction Statement (“JCCS”) on December 21, 3 2017 and two subsequent amendments on December 22, 2017 and February 7, 2018. Dkt. Nos. 4 5 6 7 8 54, 55, 58. In all of these statements, RayVio proposed a construction for “composition material,” which it listed as a part of its proposed construction for the “spatial fluctuation” term of claims 1. Id. It did not list “composition material” as its own separate term, nor did it repeat its construction of “composition material” in other disputed terms which contained “composition material.” Id. Nitride did not disclose a separate construction for “composition material” in any of its proposed 9 constructions. Id. 10 The parties exchanged expert declarations on January 12, 2018. Nitride’s expert, Dr. 11 United States District Court Northern District of California Bretschneider, stated in his declaration: 12 13 14 15 16 17 The “composition material” is, according to the plain language of the claim, one of the materials of which the first gallium nitride based semiconductor is composed: “a composition material of the first gallium nitride based semiconductor.” Ex. 3, ’270 Patent at cl. 1. As the ’270 patent discloses and claims, where the first gallium nitride based semiconductor is AlGaN, the composition material can be, for example, Al or Ga. Ex. 3, ’270 Patent at 4:1-4 (identifying Al and Ga as “composition materials of the AlGaN”); cls. 2 and 9. Since the term “composition material” is effectively defined earlier in claim 1, I see no reason to define it further. 18 Declaration of Eric Bretschneider (“Bretschneider Decl.”), Dkt. No. 63, at ¶ 125. Dr. 19 Bretschneider also argued against RayVio’s proposed construction for “composition material,” 20 explaining why he considered RayVio’s “discrete area(s)” and “single element” qualifiers 21 unnecessary. Id. ¶¶ 128-31. 22 RayVio deposed Nitride’s expert, Dr. Bretschneider, on February 7, 2018. At his 23 deposition, Dr. Bretschneider testified that Nitride had not offered a construction of “composition 24 material” nor had it asked him to opine on this term: 25 26 27 28 Q. Has nitride offered a construction of composition material in this case? A. Competition or composition? Q.· Composition material. THE WITNESS:· No. Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 3 Q. …Were you asked to give an opinion on the proper construction of composition material? A. No, and I didn’t see that it would be necessary reading the patent. I think a person of ordinary skill would understand it. 1 2 3 Tonkovich Decl., Ex. 2, Dkt. No. 65-3, at 145:4-19 (objections excluded). 4 Eight days later, on February 16, 2018, Nitride filed its Opening Claim Construction Brief. 5 Dkt. No. 61. In its section on the “spatial fluctuation” term from claim 1, Nitride included a three- 6 page subsection discussing “composition material.” Id. at 17-19. In this section, Nitride opened 7 with a paragraph explaining why “composition material” needed no separate construction and 8 then, in the four remaining paragraphs, explained why RayVio’s proposal to limit “composition 9 material” to “discrete area(s)” and a “single element” was wrong. See id. Nitride also included a 10 footnote which stated: If the Court prefers to state the meaning of “composition material” in other words, [Nitride] submits that “material composed of some, but not all, of the elements of the first gallium nitride based semiconductor” would be the proper construction. United States District Court Northern District of California 11 12 13 Dkt. No. 61, at 17 n.9. Nitride never contacted RayVio before it filed its Opening Claim 14 Construction Brief to express that it intended to offer a construction of “composition material.” 15 Ten days later, on February 26, 2018, RayVio filed the instant motion. Motion to Strike 16 (“Mot.”), Dkt. No. 65. RayVio also filed a motion for leave to file excess pages in its Responsive 17 Claim Construction Brief, which the Court denied. Dkt. Nos. 64, 70. 18 19 II. LEGAL STANDARD This District’s Patent Local Rules set forth a detailed schedule under which the parties 20 must provide early identification of their respective claim construction positions. See Patent L.R. 21 4-1, 4-2, 4-3. Patent L.R. 4-7 requires that the parties participate in this process in good faith, and 22 provides that “[a] failure to make a good faith effort to narrow the instances of disputed terms or 23 otherwise participate in the meet and confer process of any of the provisions of section 4 may 24 expose counsel to sanctions, including under 28 U.S.C. § 1927.” 25 As has been recognized by many courts, the purpose of disclosures under the Patent Local 26 Rules is to “require parties to crystallize their theories of the case early in the litigation.” O2 27 28 Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 4 1 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (quoting 2 Atmel Corp. v. Info. Storage Devices, Inc., No. C 95-1987 FMS, 1998 WL 775115, at *2 (N.D. 3 Cal. 1998)). A district court has wide discretion in enforcing the Patent Local Rules. Id. at 1365- 4 66; SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1292 (Fed. Cir. 2005). 5 III. United States District Court Northern District of California 6 DISCUSSION In the instant motion, RayVio requests that the Court strike: (1) Nitride’s new construction 7 of “composition material” as “material composed of some, but not all, of the elements of the first 8 gallium nitride based semiconductor” (stated in footnote 9 of its Opening Claim Construction Brief); 9 (2) all supporting arguments for this construction in Nitride’s Opening Claim Construction Brief, 10 including Section IV.D.3; and (3) all portions of Dr. Bretschneider’s Declaration which Nitride relies 11 on to support this construction, including paragraphs 125, 128-130. Mot. 11. RayVio also requests 12 sanctions and that Nitride be required to make Dr. Bretschneider available for deposition and pay 13 RayVio’s fees and costs incurred from that additional deposition. Id. 14 RayVio argues that it is entitled to this relief because Nitride’s construction of “composition 15 material” as “material composed of some, but not all, of the elements of the first gallium nitride based 16 semiconductor” (stated in footnote 9 of its Opening Claim Construction Brief) is a new construction 17 which it did not timely disclose, violating Patent L.R. 4-3 and 4-7. Mot. 6-9. RayVio argues that 18 Nitride’s failure to disclose this construction was intentional and, as such, demonstrates extreme 19 gamesmanship and a lack of good faith. Id. RayVio argues that it has suffered real prejudice as a 20 result of Nitride’s failures, including that: (1) it prepared its positions and arguments with the explicit 21 understanding that Nitride was not offering a construction for “composition material;” (2) it did not 22 have the opportunity to study Nitride’s new construction or have its expert, Dr. Ponce, opine on it; and 23 (3) it did not have the opportunity to depose Nitride’s expert, Dr. Bretschneider, on Nitride’s new 24 construction. Id. 9-10. 25 Nitride responds that the “construction” of “composition material” in footnote 9 is not new, as 26 it repeats substantially the same language that Nitride has used with reference to “composition 27 material” throughout its claim construction disclosures. Opp. 6-7. Nitride also argues that RayVio has 28 Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 5 1 not been prejudiced because it has had the opportunity to respond to Nitride’s Opening Claim 2 Construction Brief, and none of the positions that Nitride has taken with respect to “composition 3 material” are surprising or new. Id. at 7-10. Nitride also argues that RayVio’s request to strike whole 4 portions of Nitride’s briefing, as well as requests for sanctions and an additional depositions, are 5 overreaching and unwarranted. Id. at 10-13. United States District Court Northern District of California 6 After carefully considering the parties’ arguments, the Court finds that RayVio is not entitled 7 to the relief it seeks. Although it would have been preferable for Nitride to include a statement similar 8 to footnote 9 in the JCCS, nothing about footnote 9, the related sections of Nitride’s Opening Claim 9 Construction Brief (Section IV.D.3), or the related sections of Dr. Bretschneider’s declaration should 10 have been new or surprising to RayVio. As Nitride correctly points out, the language of footnote 9 is 11 substantially similar to the language which Nitride used to describe “composition material” in its 12 Patent Local Rule 4-2 disclosures. Specifically, in those disclosures, Nitride proposed construing 13 “the composition material is one selected from Ga or Al” from claim 2 as “the material composed 14 of some of the elements of the first gallium nitride based semiconductor is either Ga or Al.” Radke 15 Decl., Ex. B at 6. The language which Nitride used for “composition material” in this proposal 16 (“material composed of some of the elements of the first gallium nitride based semiconductor”) is 17 largely the same as the language which Nitride proposed in footnote 9 (“material composed of 18 some, but not all, of the elements of the first gallium nitride based semiconductor”). The only 19 difference is the addition of “but not all.” To be sure, this shifts the meaning of this phrase; however, 20 it is slight enough that the overall meaning remains substantially similar. Accordingly, footnote 9 21 simply restates the position that Nitride has taken with respect to “composition material” and cannot be 22 considered a new construction. 23 Section IV.D.3—the subsection covering “composition material”— of Nitride’s Opening 24 Claim Construction Brief also does not contain new or surprising material. In the first paragraph of 25 this section, Nitride repeats the same position on “composition material” that it has maintained all 26 along: that “[t]here is no reason to use different words to explain the meaning of the ‘composition 27 material’ because claim 1 itself defines ‘composition material’ . . . .” Dkt. No. 61 at 17. This is 28 Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 6 1 consistent with the position that it took during claim construction discovery, where it also did not 2 separately propose a construction for “composition material.” See Radke Decl., Ex. B; Dkt. Nos. 54, 3 55, 58. In the remainder of this subsection, Nitride simply argues why RayVio’s proposal to limit 4 “composition material” to “discrete area(s)” and a “single element” is wrong. Even if a party does 5 not propose a construction for a particular term, it is certainly entitled to refute an opposing party’s 6 proposal. The remainder of Section IV.D.3 of Nitride’s Opening Claim Construction Brief does 7 precisely this. Thus, nothing about Section IV.D.3 should have been new or surprising to RayVio, 8 and the Court will not strike it on the grounds that it is a new construction. United States District Court Northern District of California 9 These same can be said of Dr. Bretschneider’s declaration. All of the paragraphs that RayVio 10 identifies in its motion—paragraphs 125 and 128-30—either discuss why “composition material” 11 needs no separate construction or specifically refute the “discrete area(s)” and a “single element” 12 limitations that RayVio proposes. The first is consistent with Nitride’s positions and the second is 13 proper rebuttal argument. As such, none of this material should have been new or surprising to 14 RayVio, and the Court will not strike it on the grounds that it is a new construction. 15 Moreover, even if footnote 9, Nitride’s Opening Claim Construction Brief, or Dr. 16 Bretschneider’s declaration could be interpreted as improperly introducing a new construction, the 17 Court finds that this has not prejudiced RayVio. As an initial matter, this is not a case where RayVio 18 has been ambushed with material to which it cannot respond. Instead, RayVio had the opportunity to 19 respond to Nitride’s treatment of “composition material” in its Responsive Brief, which was due a full 20 month after Nitride filed its opening brief. As such, this case is distinguishable from the situation 21 called out in the Court’s Standing Orders, which discourages parties from “proposing new 22 constructions for the first time in reply briefs or other filings which do not afford the opposing party an 23 opportunity to respond.” Judge Davila Standing Order for Patent Cases at § IV.E., available at 24 http://www.cand.uscourts.gov/ejdorders. 25 In addition, none of the theories of prejudice specifically identified by RayVio are 26 convincing. First, RayVio argues that it was prejudiced because it prepared its positions and 27 arguments with the explicit understanding that Nitride was not offering a construction for 28 Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 7 United States District Court Northern District of California 1 “composition material.” This is disingenuous. Because, as discussed above, nothing about footnote 2 9 should have been new or surprising to RayVio, RayVio should have already prepared its 3 positions and arguments with this substance in mind. Second, RayVio argues that it was 4 prejudiced because it did not have the opportunity to study Nitride’s new construction or have its 5 expert, Dr. Ponce, opine on it. This is unpersuasive for the same reason discussed above—nothing 6 about the substance of footnote 9 should have been new or surprising to RayVio; thus, even without 7 footnote 9, it had ample opportunity to study this material and allow Dr. Ponce to respond. Further, to 8 the extent that footnote 9 sharpened RayVio’s focus on this specific material, RayVio had a full month 9 to study footnote 9 and could have sought to submit a supplemental declaration from Dr. Ponce. 10 RayVio did not do that. Third and finally, RayVio argues that it was prejudiced because it did not 11 have the opportunity to depose Nitride’s expert, Dr. Bretschneider, on Nitride’s new construction . 12 This also fails for the same reason discussed with respect to RayVio’s first two theories—the 13 substance of footnote 9 should not have been new or surprising to RayVio; thus, RayVio entered 14 Dr. Bretschneider’s deposition with full awareness of Nitride’s position on “composition material” and 15 had the opportunity to depose Dr. Bretschneider accordingly. Indeed, RayVio appeared to have no 16 problems asking Dr. B questions about “composition material” during his deposition. See Radke 17 Decl., Ex. D, at 146:1-149:9. Accordingly, none of the arguments that RayVio makes regarding 18 prejudice is persuasive. In sum, the Court finds that Nitride has not offered a new construction of “composition 19 20 material” and, regardless, RayVio has not been prejudiced. Because of this, the Court will not strike 21 any of the material identified by RayVio. In addition, for this same reason, the Court finds sanctions 22 unwarranted and will not grant this request from RayVio either. As such, the entirety of RayVio’s 23 motion is DENIED. 24 IV. 25 ORDER RayVio’s motion is DENIED. 26 27 28 Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 8 1 2 3 4 IT IS SO ORDERED. Dated: May 11, 2018 ______________________________________ EDWARD J. DAVILA United States District Judge 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case No.: 5:17-cv-02952-EJD ORDER DENYING DEFENDANT RAYVIO CORPORATION'S MOTION TO STRIKE 9
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