Judge strikes portion of report in patent lawsuit between MLC Intellectual Property, Micro Technology

By Scott Holland | May 7, 2019

SAN FRANCISCO – A federal judge has weighed in on a five-year-old technology infringement lawsuit.

On April 19, Judge Susan Illston of the U.S. District Court for the Northern District of California conducted a hearing on Micron Technology’s motion to strike portions of expert testimony from Jack Lee on behalf of MLC Intellectual Property. She issued an opinion April 25 in which she partially granted Micron’s request.

MLC’s infringement contentions go back to Dec. 5, 2014, but on Feb. 1, the company filed its first motion to amend those contentions, intending to add evidence instead of theories by introducing previously unavailable technical evidentiary detail as well as additional Micron products. Micron opposed that plan, saying the amendments introduced new theories of infringement.

On Feb. 28, the court allowed the inclusion of extra products but denied the rest of the motion. That finding showed MLC didn't demonstrate “diligence in seeking to amend to add technical detail to the infringement contentions,” and the court did not analyze if the amendments did in fact include new theories, the ruling states.

MLC filed its amendment March 4. On March 20, Micron moved to strike portions of the Jan. 28 report of Jack Lee on behalf of MLC, saying he repeatedly violated local patent rules and that his report contains the same new infringement theories it contested in MLC’s proposed amendment.

In her opinion, Illston reviewed her judicial district’s patent rules requiring a party claiming infringement to serve a disclosure of asserted claims and infringement contentions and limiting the availability of expert testimony to introduce theories not disclosed in those declarations.

“The court finds that while Micron makes some persuasive arguments about the lack of specificity in the infringement contentions,” Illston wrote, “Micron never challenged those contentions as inadequate for failure to identify structures for the means-plus-function claims. In addition, MLC did identify structures in the claim construction briefing.”

On those grounds, Illston said it would be improper to strike portions of Lee’s report. But she noted the report also said Micron’s device for comparing voltages of multi-level memory cells with a reference voltage “includes the memory cell,” which Micron said is a new theory as MLC never “disclosed or even suggested that the comparator included the memory cell or that the comparator is the memory cell.”

Instead, she continued, MLC “consistently treated the memory cell and the comparator as separate.” Illston said at best MLC implied it planned to use this theory, but the law requires explicit disclosure rather than implicit. As such, she struck all parts of Lee’s report describing the comparator as including the memory cell.

She further rejected MLC and Lee’s use of a theory about a limitation on how many voltages a circuit can select, but granted leave to file one motion for summary judgment on this topic.

Illston also rejected MLC’s argument it only committed a typographical error in citing an incorrect patent claim element in its filings, but said the "onus is not on Micron" to discern what MLC intended. She said she might have had "more sympathy" for MLC’s position specific to one evidence chart had it not repeatedly cited the same chart for numerous other claim elements, which she said made it that much more difficult for Micron lawyers to discern MLC’s stated intent.

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