throbber
Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 1 of 20 PageID #: 20714
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`VLSI TECHNOLOGY LLC,
`Plaintiff,
`
`v.
`
`INTEL CORPORATION,
`Defendant.
`
`
`
`
`
`
`C.A. No. 18-966-CFC
`
`
`
`
`
`OPENING BRIEF IN SUPPORT OF
`PLAINTIFF VLSI TECHNOLOGY LLC'S SECOND MOTION
`TO REINTRODUCE CERTAIN ASSERTED PATENT CLAIMS, OR TO
`SEVER SUCH CLAIMS INTO A SEPARATE ACTION TO BE STAYED
`
`
`
`
`Dated: February 27, 2020
`
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`FARNAN LLP
`919 N. Market St., 12th Floor
`Wilmington, DE 19801
`Telephone : (302) 777-0300
`Fax : (302) 777-0301
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`Morgan Chu (admitted pro hac vice)
`Benjamin Hattenbach (admitted pro hac vice)
`Iian D. Jablon (admitted pro hac vice)
`Christopher Abernethy (admitted pro hac vice)
`Amy E. Proctor (admitted pro hac vice)
`Dominik Slusarczyk (admitted pro hac vice)
`S. Adina Stohl (admitted pro hac vice)
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`
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`
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`
`
`

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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 2 of 20 PageID #: 20715
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`Charlotte J. Wen (admitted pro hac vice)
`Brian M. Weissenberg (admitted pro hac vice)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Telephone: (310) 277-1010
`mchu@irell.com
`bhattenbach@irell.com
`ijablon@irell.com
`cabernethy@irell.com
`aproctor@irell.com
`dslusarczyk@irell.com
`astohl@irell.com
`cwen@irell.com
`bweissenberg@irell.com
`
`Attorneys for Plaintiff VLSI Technology LLC
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 3 of 20 PageID #: 20716
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`TABLE OF CONTENTS
`
`2. 
`
`3. 
`
`Page
`NATURE AND STAGE OF THE PROCEEDINGS ................................... 1 
`I. 
`SUMMARY OF ARGUMENT .................................................................... 2 
`II. 
`III.  FACTUAL BACKGROUND ....................................................................... 4 
`IV.  ARGUMENT ................................................................................................ 6 
`Each Claim VLSI Seeks to Reintroduce Presents Unique Issues of
`A. 
`Validity or Infringement, Implicating VLSI's Due Process Rights ... 6 
`1. 
`The '331 Patent ......................................................................... 6 
`a) 
`Dependent Claim 2 ........................................................ 6 
`The '026 Patent ......................................................................... 8 
`a) 
`Dependent Claim 17 ...................................................... 9 
`The '633 Patent ....................................................................... 10 
`a) 
`Independent Claim 1 and Dependent Claim 13 ........... 11 
`The '552 Patent ....................................................................... 12 
`a) 
`Independent Claim 11 .................................................. 13 
`B.  Granting VLSI's Request Will Not Impact Claim Construction ...... 14 
`C. 
`If Not Reintroduced, The Claims Must Be Severed And Stayed .... 14 
`CONCLUSION ........................................................................................... 15 
`
`4. 
`
`V. 
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 4 of 20 PageID #: 20717
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Katz Interactive Call Processing Patent Litig., Inc.,
`639 F.3d 1303 (Fed. Cir. 2011) ...................................................................passim
`Leeds & Catlin Co. v. Victor Talking Mach. Co.,
`213 U.S. 301 (1909) .............................................................................................. 2
`LML Patent Corp. v. JPMorgan Chase & Co.,
`2010 WL 5140823 (E.D. Tex. Oct. 12, 2010) .................................................... 15
`Nuance Commc'ns, Inc. v. ABBYY USA Software House, Inc.,
`813 F.3d 1368 (Fed. Cir. 2016) ............................................................................ 4
`Stamps.com Inc. v. Endicia, Inc.,
`437 F. App'x 897 (Fed. Cir. 2011) ........................................................................ 4
`TQ Delta, LLC v. 2Wire Inc.,
`Case No. 13-cv-1835 (D. Del.), D.I. 269 ............................................................ 15
`Constitutional Provisions
`U.S. Const., Amend. V .............................................................................................. 3
`Statutes
`35 U.S.C. § 271 .......................................................................................................... 2
`35 U.S.C. § 271(d) ..................................................................................................... 3
`35 U.S.C. § 281 .......................................................................................................... 2
`35 U.S.C. § 282 .......................................................................................................... 2
`
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 5 of 20 PageID #: 20718
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`
`
`I.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`On April 22, 2019, at Intel's request and over VLSI's objection, the Court issued
`
`a Memorandum Order requiring that VLSI narrow the number of patent claims
`
`asserted in this litigation in two phases: first, narrow to 25 asserted claims (across five
`
`patents) by April 26, 2019; and second, further narrow to 18 asserted claims after
`
`issuance of the Court's Claim Construction Order. D.I. 136 at 1. But the Court
`
`appropriately recognized that required case narrowing may sometimes implicate a
`
`party's due process rights. The Court's Order thus provided that "Plaintiff may seek to
`
`add at a later date asserted claims … upon a showing of good cause that includes a
`
`demonstration that the addition … is necessary to vindicate [VLSI's] due process
`
`rights." Id. at 2 n.1.
`
`Pursuant to the Court's Order, VLSI provided Intel a first identification of 25
`
`asserted claims on April 26, 2019, while again objecting to removal of the non-elected
`
`claims. Ex. 1 at 1-3. However, particularly given the positions Intel had taken, it
`
`became clear that certain non-elected claims raise unique issues of validity or
`
`infringement, implicating VLSI's due process rights. Accordingly, on September 20,
`
`2019, VLSI filed a Motion To Reintroduce Certain Asserted Patent Claims, Or To
`
`Sever Such Claims Into A Separate Action To Be Stayed (hereinafter "First Motion").
`
`See D.I. 276. In that First Motion, VLSI moved to reintroduce (1) Claims 5 and 8-10
`
`of the '331 Patent, (2) Claims 3, 5-6, 8, 14-16, and 18-19 of the '026 Patent, (3) Claims
`
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 6 of 20 PageID #: 20719
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`
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`2, 7, 9, and 11 of the '027 Patent, (4) Claims 3, 5, 12, 14, 16, 18, 29, 34, and 36 of the
`
`'633 Patent, and (5) Claims 1, 5, 16, and 17 of the '552 Patent. VLSI's First Motion
`
`has been fully briefed and is currently pending before this Court. See D.I. 276;
`
`D.I. 277; D.I. 278; D.I. 297; D.I. 318.
`
`Pursuant to the Court's Order, VLSI thereafter provided Intel a second
`
`identification of 18 asserted claims on January 3, 2020. Ex. 2 at 1-3. But again, it is
`
`clear that certain non-elected claims raise unique issues of validity or infringement,
`
`implicating VLSI's due process rights. VLSI therefore respectfully moves in the
`
`present Motion to reintroduce (1) Claim 2 of the '331 Patent, (2) Claim 17 of the '026
`
`Patent, (3) Claims 1 and 13 of the '633 Patent, and (4) Claim 11 of the '552 Patent.
`
`II.
`
`SUMMARY OF ARGUMENT
`The Patent Act provides a patent owner the right to exclude or be compensated
`
`for use of each of its patent claims through civil action for infringement. 35 U.S.C.
`
`§§ 271, 281. A patentee's rights are unique to each patent claim, see Leeds & Catlin
`
`Co. v. Victor Talking Mach. Co., 213 U.S. 301, 319 (1909) ("Claims are independent
`
`inventions."); 35 U.S.C. § 282 ("Each claim of a patent … shall be presumed valid
`
`independently"), and as such cannot be denied without due process. See In re Katz
`
`Interactive Call Processing Patent Litig., Inc., 639 F.3d 1303, 1312 (Fed. Cir. 2011).
`
`In particular, as canonized by Congress, a patentee may not be stripped of its
`
`patent rights by virtue of its assertion of infringement:
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 7 of 20 PageID #: 20720
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`
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`No patent owner otherwise entitled to relief for infringement or
`contributory infringement of a patent shall be denied relief … by
`reason of his having done one or more of the following: …
`(3) sought to enforce his patent rights against infringement or
`contributory infringement …
`
`35 U.S.C. § 271(d). Thus, as a general principle, the assertion of infringement of one
`
`patent claim cannot deprive a patentee of its right to assert other patent claims. Forced
`
`claim narrowing—i.e. forced relinquishment of rights in the non-elected claims—is
`
`incompatible with Congress's mandate, and as such it is subject to the prescript of
`
`procedural due process. See U.S. Const. Amend. V.
`
`The Federal Circuit, acknowledging both the need for docket control and the
`
`need to preserve a patentee's due process rights, set forth a standard to determine
`
`whether a court's mandate for claim narrowing impinges upon a patentee's
`
`constitutional rights: a non-elected claim may not be subject to collateral estoppel, and
`
`the patentee's rights therein must be preserved, if the claim presents "unique issues"
`
`on matters such as infringement, validity, or damages. Katz, 639 F.3d at 1312. Where
`
`this showing is made,1 due process mandates their reintroduction into, or severance
`
`and stay from, the case. Id.
`
`
`1 The Federal Circuit did not address which party should bear the burden of
`showing uniqueness or duplicativeness. It found only that the district court "acted
`reasonably in concluding that it would be more efficient to require Katz to point out
`those unselected claims that raised separate issues of infringement and invalidity[.]"
`Id.
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 8 of 20 PageID #: 20721
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`
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`Further, although due process may in theory be waived, VLSI has not waived
`
`its rights here. See id. (noting failure of patentee to argue uniqueness); Nuance
`
`Commc'ns, Inc. v. ABBYY USA Software House, Inc., 813 F.3d 1368, 1376 (Fed. Cir.
`
`2016) (patentee agreed to narrowing process); Stamps.com Inc. v. Endicia, Inc., 437
`
`F. App'x 897, 902-03 (Fed. Cir. 2011) (patentee "did not even attempt to make a good
`
`cause showing"). VLSI repeatedly objected to the ordered narrowing, and below VLSI
`
`sets forth a showing of good cause for each claim at issue under the Katz standard.
`
`III. FACTUAL BACKGROUND
`In its preliminary contentions, VLSI alleged infringement of (1) Claims 1-10
`
`of the '331 Patent, (2) Claims 1-10 and 13-20 of the '026 Patent, (3) Claims 1-3, 5-12,
`
`and 18-20 of the '027 Patent, (4) Claims 1-3, 5, 12-16, 18, 24-30, and 34-36 of the
`
`'633 Patent, and (5) Claims 1-20 of the '552 Patent by Intel's products. Ex. 3 (January
`
`23, 2019 Paragraph 4(c) Disclosure) at internal exhibits 1-5. Intel requested—and the
`
`Court granted—an Order requiring that VLSI engage in multiple rounds of case
`
`narrowing, including a first stage requiring narrowing the number of claims (across
`
`all five patents) to 25 asserted claims and a second stage requiring further narrowing
`
`the number of claims (also across all five patents) to 18 asserted claims. D.I. 136.
`
`Accordingly, on April 26, 2019, VLSI identified a narrowed set of 25 claims pursuant
`
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 9 of 20 PageID #: 20722
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`
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`to the first stage (Ex. 1), and on January 3, 2020, VLSI identified a further narrowed
`
`set of 18 claims pursuant to the second stage (Ex. 2).2
`
`At each juncture in this process, VLSI reasserted its right to due process, raising
`
`particular ways in which its asserted claims (prior to narrowing) each raised unique
`
`issues of infringement and/or validity. See, e.g., Ex. 4 (April 3, 2019 Hearing Tr.) at
`
`9:9-11:4; D.I. 119-1 (VLSI's April 3, 2019 Status Conference Demonstratives) at 2-
`
`16; D.I. 127 (April 10, 2019 VLSI Letter to the Court); D.I. 131 (April 10, 2019 Intel
`
`Letter to the Court); D.I. 133 (April 12, 2019 VLSI Letter to the Court); Ex. 1 (April
`
`26, 2019 Identification of Narrowed Claims) at 1-2; D.I 411 at 2 (Stipulation
`
`Extending Fact Discovery Deadline) at 2; Ex. 2 (January 3, 2020 Identification of
`
`Narrowed Claims) at 1-2. Despite the forced narrowing, VLSI has continuously
`
`maintained that all originally asserted claims are infringed. VLSI maintains all of its
`
`objections and reserves the right to appeal any and all matters decided by the Court,
`
`including matters that pertain to claims or patents eliminated through the Court's
`
`ordered narrowing requirements.
`
`
`2 The second round of narrowing was originally due "[o]n or before 30 days
`after the Court's issuance of a Claim Construction Order," D.I. 136 at 1, but that due
`date was subsequently delayed to 15 days after entry of an amended order reflecting
`construction a claim term not settled at the original November 5, 2019 Markman
`hearing. See D.I. 406 at 3; D.I. 411 at 2; Dec. 17, 2019 Hearing Tr. at 204:6-18.
`The Court entered the amended claim construction order on December 19, 2019
`(D.I. 483), thereby causing the second narrowing deadline to be January 3, 2020.
`
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 10 of 20 PageID #: 20723
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`
`
`A.
`
`IV. ARGUMENT
`Each Claim VLSI Seeks to Reintroduce Presents Unique Issues of
`Validity or Infringement, Implicating VLSI's Due Process Rights
`In this section, VLSI will demonstrate that each claim it seeks to reintroduce
`
`presents "unique questions of validity or infringement." Katz, 639 F.3d at 1313. For
`
`both invalidity and non-infringement defenses, VLSI will provide examples showing
`
`that a "defense raised by [Intel] to a currently asserted claim does not apply in
`
`substantially the same manner to a [reintroduced] claim." Id. This showing will
`
`establish that there is "good cause" to reintroduce the claims at issue and that doing so
`
`"is necessary to vindicate [VLSI's] due process rights." D.I. 136, Order at 2 n.1.
`
`1.
`The '331 Patent
`VLSI originally asserted Claims 1-10 of the '331 Patent. Per the Court's Order
`
`(D.I. 136), VLSI reduced its assertion to Claims 1, 2, 4, 6, and 7 on April 26, 2019, in
`
`the first round of required narrowing (Ex. 1), and then VLSI further reduced its
`
`assertion to Claims 1, 4, 6, and 7 on January 3, 2020 in the second required narrowing
`
`round (Ex. 2). Having previously moved to reintroduce Claims 5 and 8-10 (D.I. 276),
`
`VLSI now moves to reintroduce Claim 2.
`
`a)
`
`Dependent Claim 2
`Dependent Claim 2 depends upon and incorporates independent Claim 1.
`
`Claim 2 adds further limitations, such as "the cache memory is switchable to a locked
`
`state." Ex. 5 at 6:9-10 (all emphases in this brief are added unless otherwise stated).
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 11 of 20 PageID #: 20724
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`
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`Claim 2 presents unique questions of validity. For example, while Intel has
`
`challenged the validity of independent Claim 7 in an IPR, Intel did not file an IPR
`
`challenging independent Claim 1 or dependent Claim 2. See Ex. 6 at 1, 5. Moreover,
`
`in this litigation, Intel alleges in its invalidity contentions that Claim 1 is purportedly
`
`anticipated by the Irie reference and, separately, by the Irie '277 reference. See Ex. 7
`
`at 88. But Intel does not contend that either of Irie or Irie '277 anticipates dependent
`
`Claim 2. Id. To the contrary, Intel's invalidity contentions cite references other than
`
`Irie or Irie '277 for the limitations added by dependent Claim 2. See Ex. 7 at 132-33
`
`& 188-89. Dependent Claim 2 accordingly presents unique questions of validity,
`
`because while Intel has asserted anticipation defenses against Claim 1 based on Irie
`
`and Irie '277, "the same defense[s] do[] not affect [Claim 2] in substantially the same
`
`way." Katz, 639 F.3d at 1313. Claim 2 further presents unique questions of validity
`
`because no other asserted claim recites the "locked state" limitation of Claim 2.
`
`Claim 2 also presents unique questions of infringement. As noted, Claim 2
`
`depends upon independent Claim 1. Independent Claims 5, 6, and 7 all differ because
`
`they recite limitations not included in independent Claim 1 or in dependent Claim 2.
`
`For example, apparatus Claim 5 requires that "address comparison circuits of the
`
`cache memory are deactivated in the low power operating mode" (Ex. 5 at 6:65-67),
`
`while apparatus Claim 6 requires that "excess storage capacity of the cache memory
`
`is deactivated in the low power operating mode" (Ex. 5 at 7:36-38). Meanwhile,
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 12 of 20 PageID #: 20725
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`
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`method Claim 7 requires "loading the interrupt program into the cache memory
`
`from the main memory." Ex. 5 at 8:21-22. Intel asserts non-infringement defenses to
`
`Claims 5, 6, and 7 based on the foregoing limitations. See Ex. 8 at 13, 16-17, 18-19,
`
`283-291 & 340-360. But independent Claim 1 and dependent Claim 2 do not include
`
`those limitations, so the same arguments are inapplicable to those claims. See Ex. 5 at
`
`5:36-6:15. Claim 2 thus presents unique questions of infringement, because at least
`
`the foregoing "noninfringement defense[s] raised by [Intel] to [Claims 5, 6, and 7]
`
`do[] not apply in substantially the same manner to [Claim 2]." Katz, 639 F.3d at 1313.
`
`Finally, for the reasons already briefed, Claim 2 presents unique questions of
`
`infringement and validity relative to Claims 5 and 8-10, which VLSI moved to
`
`reintroduce in its First Motion that remains pending. See D.I. 277, VLSI Br. at 4-6;
`
`D.I. 318, VLSI Reply at 1-5.
`
`2.
`The '026 Patent
`VLSI originally asserted Claims 1-10 and 13-20 of the '026 Patent. Per the
`
`Court's Order (D.I. 136), VLSI reduced its assertion to Claims 1, 2, 4, 7, 13, 17, and
`
`20 in the first narrowing round (Ex. 1), and then VLSI further reduced its assertion to
`
`Claims 1, 2, 4, 7, 13, and 20 on January 3, 2020 in the second required narrowing
`
`round (Ex. 2). Having previously moved to reintroduce Claims 3, 5-6, 8, 14-16, and
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`18-19, VLSI now moves to reintroduce Claim 17.
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 13 of 20 PageID #: 20726
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`
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`a)
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`Dependent Claim 17
`Dependent Claim 17 depends upon and incorporates Claim 14, which in turn
`
`depends upon independent Claim 13. Claim 17 adds a further limitation of "selecting
`
`the leakage reduction value out of a group of leakage reduction values based on a
`
`temperature of the integrated circuit and on the leakage indicator." Ex. 9 at 18:5-8.
`
`Claim 17 presents unique questions of validity. For example, Intel alleges in its
`
`invalidity contentions that Claims 13-14 are anticipated by Kim. See Ex. 10 at 88. But
`
`Intel does not contend that Kim anticipates dependent Claim 17. Id. To the contrary,
`
`Intel's invalidity contentions allege that the limitations added by dependent Claim 17
`
`are rendered "obvious based on Kim in view [of] Lee." Ex. 10 at 395-97. Dependent
`
`Claim 17 accordingly presents unique questions of validity, because at least Intel's
`
`anticipation defense for Claims 13-14 based on Kim "does not affect [Claim 17] in
`
`substantially the same way." Katz, 639 F.3d at 1313.
`
`Claim 17 also presents unique questions of infringement. For example, Intel
`
`alleges non-infringement of asserted dependent Claim 20 based on its added limitation
`
`of "selecting the retention value out of a group of retention values based on a
`
`temperature of the integrated circuit and on the leakage indicator." See Ex. 9 at 18:16-
`
`19; Ex. 11 at 39 & 445-46. But Claim 17 does not include that limitation, so Intel's
`
`foregoing non-infringement defense does not apply to Claim 17.
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 14 of 20 PageID #: 20727
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`
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`Claim 17 also presents unique questions of both infringement and validity
`
`relative to dependent Claim 4, as dependent Claims 4 and 17 respectively incorporate
`
`different limitations from independent Claims 1 and 13. For example, Claim 1 recites
`
`a "mode indicator generator," a "leakage indicator generator," and a "control
`
`circuit, connected to the mode indicator generator and the leakage indicator
`
`generator." Ex. 9 at 15:23-33. Intel alleges non-infringement of independent Claim 1
`
`and dependent Claim 4 based on these limitations (Ex. 11 at 22-24, 376-87 & 394-
`
`97), but those defenses are inapplicable to independent Claim 13 and dependent Claim
`
`17, which omit those limitations. Intel's invalidity defenses for independent Claims 1
`
`and 13 also differ. For example, Intel alleges that Claim 13 is anticipated by Kim, but
`
`does not allege that Kim anticipates Claim 1. See Ex. 10 at 88. To the contrary, Intel's
`
`invalidity contentions cite references other than Kim for at least the foregoing
`
`limitations of Claim 1. See Ex. 10 at 305-09 & 350-52.
`
`Finally, for the reasons already briefed, Claim 17 presents unique questions of
`
`infringement and validity relative to Claims 3, 5-6, 8, 14-16, and 18-19, which VLSI
`
`moved to reintroduce in its First Motion that remains pending. See D.I. 277, VLSI Br.
`
`at 6-11; D.I. 318, VLSI Reply at 1-5.
`
`3.
`The '633 Patent
`VLSI originally asserted Claims 1-3, 5, 12-16, 18, 24-30, and 34-36 of the '633
`
`Patent. Per the Court's Order (D.I. 136), VLSI narrowed its assertion to Claims 1 and
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 15 of 20 PageID #: 20728
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`
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`13 in the first narrowing round (Ex. 1), and then VLSI further reduced its assertion to
`
`no asserted claims of the '633 Patent on January 3, 2020 in the second required
`
`narrowing round (Ex. 2). Having previously moved to reintroduce Claims 3, 5, 12, 14,
`
`16, 18, 29, 34, and 36, VLSI now moves to reintroduce Claims 1 and 13.
`
`a)
`
`Independent Claim 1 and Dependent Claim 13
`As noted above, when VLSI declined to elect Claims 1 and 13 in the second
`
`narrowing round per the Court's Order, it left VLSI with no remaining claims of the
`
`'633 Patent in this litigation. Claims 1 and 13 thus clearly present "unique issues" on
`
`matters such as infringement, validity, and damages that implicate VLSI's due process
`
`rights, because the '633 Patent and its claims are wholly unrelated to all of the other
`
`asserted patents in this litigation. Katz, 639 F.3d at 1312. Without reintroducing these
`
`claims, VLSI would be denied of its due process rights in the '633 Patent entirely.
`
`Claims 1 and 13 also present unique questions of both infringement and validity
`
`relative to each other. For example, independent Claim 1 presents unique questions of
`
`infringement relative to dependent Claim 13, as Claim 13 recites an added limitation
`
`requiring that "the first node is a trusted node and the second node is a directed
`
`node." Ex. 12 at 23:36-38. Intel contends that the accused products do not infringe
`
`dependent Claim 13 based on that claim limitation. Ex. 13 at 52. But independent
`
`Claim 1 does not recite that limitation, so the same non-infringement argument does
`
`not apply to it. Claim 1 thus presents unique questions of infringement, because at
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`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 16 of 20 PageID #: 20729
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`
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`least the foregoing "noninfringement defense raised by [Intel] to [Claim 13] does not
`
`apply in substantially the same manner to [Claim 1]." Katz, 639 F.3d at 1313.
`
`Likewise, dependent Claim 13 presents unique questions of validity relative to
`
`Claim 1. For example, as noted above, Claim 13 recites "the first node is a trusted
`
`node and the second node is a directed node." Ex. 12 at 23:36-38. No other claim
`
`recites that limitation or inherits it by way of dependence (since Claim 13 has no
`
`dependent claims). Intel's arguments with respect to whether the prior art discloses or
`
`renders obvious this element together with the rest of Claim 13 are especially weak,
`
`and VLSI contends that the prior art does not provide the disclosure or teaching of this
`
`element that is required to show invalidity. Ex. 14 at 303. Claim 13 thus presents
`
`unique questions of validity that do not apply to Claim 1 or to any other claim in the
`
`'633 Patent.
`
`Finally, for the reasons already briefed, Claims 1 and 13 present unique
`
`questions of infringement and validity relative to Claims 3, 5, 12, 14, 16, 18, 29, 34,
`
`and 36, which VLSI moved to reintroduce in its First Motion that remains pending.
`
`See D.I. 277, VLSI Br. at 13-17; D.I. 318, VLSI Reply at 1-5.
`
`4.
`The '552 Patent
`VLSI originally asserted Claims 1-20 of the '552 Patent. Per the Court's Order
`
`(D.I. 136), VLSI narrowed its assertion to Claims 2, 11, and 20 in the first narrowing
`
`round (Ex. 1), and VLSI further reduced its assertion to Claims 2 and 20 on January
`
`
`
`
`
`- 12 -
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`

`

`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 17 of 20 PageID #: 20730
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`
`
`3, 2020 in the second required narrowing round (Ex. 2). Having previously moved to
`
`reintroduce Claims 1, 5, 16, and 17, VLSI now moves to reintroduce Claim 11.
`
`a)
`
`Independent Claim 11
`Independent Claim 11 presents unique questions of infringement. For example,
`
`asserted Claims 2 and 20 require, among other things, "a conductive ball on the bond
`
`pad" (Claim 2) and "modifying the layout . . . to achieve a metal density of at least
`
`forty percent" (Claim 20). Ex. 15 at 7:66-67, 10:14-18. Intel asserts non-infringement
`
`defenses for Claims 2 and 20 based on each of the foregoing limitations. Ex. 16 at 67,
`
`83, 529 & 543-44. But independent Claim 11 does not include either of those
`
`limitations, so the foregoing non-infringement defenses do not apply to it. Claim 11
`
`accordingly presents unique questions of infringement, because at least the foregoing
`
`"noninfringement defense[s] raised by [Intel] to [Claims 2 and 20] do[] not apply in
`
`substantially the same manner to [Claim 11]." Katz, 639 F.3d at 1313.
`
`Finally, for the reasons already briefed, Claim 11 presents unique questions of
`
`infringement and validity relative to Claims 1, 5, 16, and 17, which VLSI moved to
`
`reintroduce in its First Motion that remains pending. See D.I. 277, VLSI Br. at 17-19;
`
`D.I. 318, VLSI Reply at 1-5.
`
`*
`
`*
`
`*
`
`In sum, at least Intel's invalidity and non-infringement defenses discussed
`
`above do "not apply in substantially the same manner" to each of (1) Claim 2 of the
`
`
`
`
`
`- 13 -
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`
`

`

`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 18 of 20 PageID #: 20731
`
`
`
`'331 Patent, (2) Claim 17 of the '026 Patent, (3) Claims 1 and 13 of the '633 Patent,
`
`and (4) Claim 11 of the '552 Patent. Katz, 639 F.3d at 1313. Those claims thus all
`
`present "unique questions of validity or infringement." Id. There is accordingly "good
`
`cause" to reintroduce each of them, and doing so "is necessary to vindicate [VLSI's]
`
`due process rights." D.I. 136 at 2 n.1.
`
`B.
`
`Granting VLSI's Request Will Not Impact Claim Construction
`Granting VLSI's request will not require additional claim construction, as all
`
`disputed terms have already been construed by the Court. Specifically, the Court
`
`issued its Amended Claim Construction Order on December 19, 2019. See D.I. 483.
`
`It was only thereafter that VLSI provided its second identification of 18 asserted
`
`claims on January 3, 2020, per the Court's Order (D.I. 136). See Ex. 2 at 1-3.
`
`Accordingly, all of the claims that VLSI seeks to reintroduce in the present Motion
`
`remained asserted in this litigation throughout the entire claim construction process,
`
`and the Court has already construed all disputed terms for those claims.
`
`C.
`
`If Not Reintroduced, The Claims Must Be Severed And Stayed
`A plaintiff cannot be forced to relinquish its rights in any claim without an
`
`opportunity to present such claim where, as here, the plaintiff has "demonstrate[d] that
`
`some of its unselected claims presented unique issues as to liability or damages." Katz,
`
`639 F.3d at 1312. However, as an alternative to reintroducing the non-elected claims,
`
`
`
`
`
`- 14 -
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`

`

`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 19 of 20 PageID #: 20732
`
`
`
`a court may instead sever and stay the non-elected claims for future adjudication, such
`
`that they fall outside the case's preclusive effect.
`
`Courts have handled this in multiple ways with the same effect as severing and
`
`staying. E.g., Ex. 17 (TQ Delta, LLC v. 2Wire Inc., Case No. 13-cv-1835 (D. Del.),
`
`D.I. 269) at 44:8-10 (Judge Andrews noting option "to sever it into bits and pieces");
`
`LML Patent Corp. v. JPMorgan Chase & Co., 2010 WL 5140823, at *1 (E.D. Tex.
`
`Oct. 12, 2010) (noting court's "usual practice is that non-elected claims can be severed
`
`and asserted in a later action, if necessary"). If the Court declines to reintroduce the
`
`asserted claims at issue, they should at a minimum be severed and stayed.
`
`V. CONCLUSION
`VLSI respectfully requests that the Court grant its motion to reintroduce the
`
`asserted claims discussed above, or sever such claims into a separate action to be
`
`stayed pending resolution of this case.
`
`
`
`Dated: February 27, 2020
`
`Respectfully submitted,
`
`FARNAN LLP
`
`
`/s/ Brian E. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 N. Market St., 12th Floor
`Wilmington, DE 19801
`Telephone : (302) 777-0300
`Fax : (302) 777-0301
`bfarnan@farnanlaw.com
`
`
`
`
`
`
`
`- 15 -
`
`
`
`

`

`Case 1:18-cv-00966-CFC-CJB Document 600 Filed 03/26/20 Page 20 of 20 PageID #: 20733
`
`
`
`
`
`
`
`
`
`mfarnan@farnanlaw.com
`
`Morgan Chu (admitted pro hac vice)
`Benjamin Hattenbach (admitted pro hac vice)
`Iian D. Jablon (admitted pro hac vice)
`Christopher Abernethy (admitted pro hac vice)
`Amy E. Proctor (admitted pro hac vice)
`Dominik Slusarczyk (admitted pro hac vice)
`S. Adina Stohl (admitted pro hac vice)
`Charlotte J. Wen (admitted pro hac vice)
`Brian M. Weissenberg (admitted pro hac vice)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Telephone: (310) 277-1010
`mchu@irell.com
`bhattenbach@irell.com
`ijablon@irell.com
`cabernethy@irell.com
`aproctor@irell.com
`dslusarczyk@irell.com
`astohl@irell.com
`cwen@irell.com
`bweissenberg@irell.com
`
`Attorneys for Plaintiff VLSI Technology LLC
`
`- 16 -
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`
`
`

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