Case 1:18-cv-00966-CFC-CJB Document 636 Filed 08/03/20 Page 1 of 5 PageID #: 21430
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
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`VLSI TECHNOLOGY LLC,
`
`Plaintiff,
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`V.
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`Civil Action No. 18-0966-CFC
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`INTEL CORPORATION,
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`Defendant.
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`MEMORANDUM ORDER
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`Plaintiff VLSI Technology LLC has sued Defendant Intel Corporation for
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`patent infringement. D.I. 1. Before me are two motions filed by VLSI to
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`reintroduce into the case certain claims of the asserted patents. D.I. 276; D.I. 580.
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`VLSI asserted in its January 2019 infringement contentions that Intel
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`infringes 82 claims across five patents. D.I. 278, Ex. 2. On April 3, 2019, I held a
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`conference with the parties to "discuss narrowing the number of claims and prior
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`art combinations in the case." D.I. 40 ,r 3(e). VLSI proposed at the conference
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`that it narrow the number of asserted claims "down to 56 within the next few
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`weeks, 25 after the claim construction order and 18 at the close [ ofJ expert
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`discovery." Tr. 25:9-11. VLSI argued that because the 56 claims it sought to keep
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`in the case until claim construction each recited different limitations and those
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`unique limitations formed the basis for Intel's noninfringement positions, the
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
`
`VLSI TECHNOLOGY LLC,
`
`Plaintiff,
`
`V.
`
`Civil Action No. 18-0966-CFC
`
`INTEL CORPORATION,
`
`Defendant.
`
`MEMORANDUM ORDER
`
`Plaintiff VLSI Technology LLC has sued Defendant Intel Corporation for
`
`patent infringement. D.I. 1. Before me are two motions filed by VLSI to
`
`reintroduce into the case certain claims of the asserted patents. D.I. 276; D.I. 580.
`
`VLSI asserted in its January 2019 infringement contentions that Intel
`
`infringes 82 claims across five patents. D.I. 278, Ex. 2. On April 3, 2019, I held a
`
`conference with the parties to "discuss narrowing the number of claims and prior
`
`art combinations in the case." D.I. 40 ,r 3(e). VLSI proposed at the conference
`
`that it narrow the number of asserted claims "down to 56 within the next few
`
`weeks, 25 after the claim construction order and 18 at the close [ ofJ expert
`
`discovery." Tr. 25:9-11. VLSI argued that because the 56 claims it sought to keep
`
`in the case until claim construction each recited different limitations and those
`
`unique limitations formed the basis for Intel's noninfringement positions, the
`
`
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`Case 1:18-cv-00966-CFC-CJB Document 636 Filed 08/03/20 Page 2 of 5 PageID #: 21431
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`"claims each raise unique issues of infringement, and under the due process
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`guidelines set forth in [In re Katz Interactive Call Processing Patent Litigation,
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`639 F.3d 1303 (Fed. Cir. 2011)] and its progeny [those claims] shouldn't be tossed
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`out of the case through a claim narrowing process." Tr. 9:9-12:6. I rejected this
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`argument, noting that I could not believe Katz stands for the proposition that due
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`process demands that "a simple assertion of noninfringement ... to a [claim]
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`limitation creates a unique issue that requires" keeping the claim in the case. Tr.
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`13:1-17, 60:16-19.
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`Shortly after the conference, I issued a claims narrowing order that required
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`VLSI to reduce the number of asserted claims to 25 by April 26, 2019 and to
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`further narrow the number of asserted claims to 18 after claim construction. D.I.
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`136 at 1. But I also ruled that "[VLSI] may seek to add at a later date asserted
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`claims ... upon a showing of good cause that includes a demonstration that the
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`addition of the proposed new claims ... is necessary to vindicate [VLSI's] due
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`process rights." D.I. 136 at 2 n.l.
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`Consistent with my claims narrowing order, VLSI dropped 57 claims by
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`April 26, 2019. D.I. 581, Ex. 1 at 1. In September 2019, VLSI filed its first
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`motion to reintroduce claims. D.I. 276. It seeks by that motion to reintroduce 30
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`of the dropped claims. D.I. 276 at 1.
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`On December 19, 2019, I issued the second of two claim construction
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`2
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`Case 1:18-cv-00966-CFC-CJB Document 636 Filed 08/03/20 Page 3 of 5 PageID #: 21432
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`orders. D.I. 483; see also D.I. 406. On January 3, 2020, VLSI further reduced the
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`number of asserted claims to 18. D.I. 582, Ex. 2 at 1. In February 2020, VLSI
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`filed its second motion, seeking to reintroduce an additional five claims. D.I. 580.
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`District courts have inherent authority "to control the dispositions of the
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`causes on its docket with economy of time and effort for itself, for counsel, and for
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`litigants." Landis v. N Am. Co., 299 U.S. 248, 254 (1936). District courts thus
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`have discretionary authority to reasonably limit the number of patent claims
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`asserted in a patent case. Stamps.com Inc. v. Endicia, Inc., 437 F. App'x 897, 902
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`(Fed. Cir. 2011).
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`Because VLSI has failed to establish good cause to reintroduce the 3 5 claims
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`in question, I will deny its motions. As an initial matter, VLSI has pointed to no
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`changed circumstances since my claims narrowing order-such as an adverse
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`claim construction ruling or discovery of source code or other new evidence-that
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`would justify the reintroduction of the claims in question. I also find that VLSI's
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`contention that due process requires that it be allowed to assert 53 claims after
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`claim construction rings hollow. Having asked me last April to limit the number of
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`asserted claims after claim construction to 25-i.e., only seven more claims than
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`permitted by my claims narrowing order-for VLSI to say now that due process
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`"mandates" that it be permitted to assert more than double that number strains
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`credulity.
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`3
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`Case 1:18-cv-00966-CFC-CJB Document 636 Filed 08/03/20 Page 4 of 5 PageID #: 21433
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`Finally, the thrust ofVLSI's argument remains that "each claim it seeks to
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`reintroduce presents 'unique questions of validity or infringement,"' D.I. 277 at 3;
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`D.I. 581 at 6, and that, under Katz, "if the claim presents 'unique issues' on matters
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`such as infringement, validity, or damages .... due process mandates their
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`reintroduction into, or severance and stay from, the case," D.I. 277 at 2; D.I. 581 at
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`3. But if due process required courts to allow plaintiffs to assert a claim merely
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`because the claim presented a unique issue of infringement and/or validity, this
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`District Court-in which plaintiffs routinely assert in hundreds of patent cases each
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`year dozens of patents with dozens of claims-could not function. Each claim of a
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`patent defines a separate invention. Jones v. Hardy, 727 F.2d 1524, 1528 (Fed.
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`Cir. 1984); Robert L. Harmon, Cynthia A. Homan & Laura A. Lydigsen, Patents
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`and the Federal Circuit, §6.2(a)(i), at 419 (13th ed. 2017). Accordingly, absent a
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`defendant's agreement not to dispute the infringement or validity of the limitations
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`of a claim that are not shared by other claims, each claim of an asserted patent
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`necessarily presents a unique issue of infringement or invalidity. Thus, as a
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`practical matter, under VLSI' s reading of Katz, district courts could never limit the
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`number of claims asserted by a plaintiff, and this Court's docket would grind to a
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`halt.
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`WHEREFORE, at Wilmington this Third day of August in 2020:
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`IT IS HEREBY ORDERED that Plaintiff VLSI Technology LLC's Motion
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`4
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`Case 1:18-cv-00966-CFC-CJB Document 636 Filed 08/03/20 Page 5 of 5 PageID #: 21434
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`to Reintroduce Certain Asserted Patent Claims, or to Sever Such Claims Into a
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`Separate Action to be Stayed (D.I. 276) and Plaintiff VLSI Technology LLC's
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`Second Motion to Reintroduce Certain Asserted Patent Claims, or to Sever Such
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`Claims Into a Separate Action to be Stayed (D.I. 580) are DENIED.
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`5
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