Opinion
Case Number C 03-05709 JF (HRL), [Docket Nos. 28 and 30].
September 20, 2004
Plaintiff Renesas Technology Corp. is the assignee of U.S. Patent Nos. 5,493,572 ("the '572 patent") and 5,566,185 ("the '185 patent"). Plaintiff alleges that Defendants Nanya Technology Corp. and Nanya Technology Corporation, USA, have infringed these patents. Defendants move for summary judgment of invalidity with respect to the '572 and '185 patents. Defendants also move to strike Plaintiff's First Amended Disclosure of Asserted Claims and Preliminary Infringement Contentions ("First Amended Disclosure"). Plaintiff opposes both motions. The Court has read the papers submitted by the parties and has considered the oral arguments of counsel presented on September 17, 2004. For the reasons set forth below, the motion for summary judgment will be denied without prejudice, and the motion to strike will be referred to the magistrate judge assigned to this case.
I. MOTION FOR SUMMARY JUDGMENT
Defendants move for summary judgment on the ground that the '572 and '185 patents are invalid for failure to meet the written description requirement of 35 U.S.C. § 112 based on the priority date of April 17, 1981, asserted in Plaintiff's First Amended Disclosure. 35 U.S.C. § 112 requires that the specification of a patent contain a "written description of the invention." A patent is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112. In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). Defendants argue that language in the specifications of the '572 and '185 patents themselves proves beyond dispute that the written descriptions in the earlier patents on which the asserted priority date is based cannot support the claims of the '572 and '185 patents. Defendants also claim that, because the '572 and '185 patents originally were filed as continuations-in-part of the '985 patent, by definition they include new matter that was not disclosed in the prior application. Finally, Defendants analyze individual claims of the '572 and '185 patents, purporting to show that the inventions claimed in them were not described in the '985 patent or the '143 JP application.
The '572 patent was filed with the United States Patent and Trademark Office ("PTO") on April 16, 1992. The '185 patent was filed with the PTO on January 12, 1995. The '572 and '185 patents claim domestic priority to several U.S. patents, the earliest being U.S. Patent No. 4,482,985 ("the '985 patent"), filed on April 14, 1982. The '572 and '185 patents also claim foreign priority to several foreign applications, the earliest being Japanese Patent Application 56-57143 ("the '143 JP application"), filed on April 17, 1981. In its First Amended Disclosure, Plaintiff states that each asserted claim of the '572 and '185 patents is entitled to the priority date of April 17, 1981.
For example, Defendants quote the following language from the specification of the '572 patent: "The aforementioned voltage converter in Japanese Patent Application No. 56-57143 functions to feed the predetermined voltage. Therefore, the circuit fed with the supply voltage by the voltage converter cannot be subjected to the aging test. In order to solve this problem, an invention disclosed in U.S. Pat. No. 4,482,985 has previously been made, but it has had difficulty in the performance for actual integrated circuits. . . . This has led to the disadvantage that the breakdown voltage margins of small geometry devices in an ordinary operation become small. . . . An object of the present invention is to further advance the invention disclosed in U.S. Pat. No. 4,482,985 referred to above, and to provide a voltage converter which can widen the margins of the breakdown voltages of small geometry devices in an ordinary operation and which affords sufficient voltages in an aging test." '572 Patent, Col. 1:63 — Col. 2:21. The '185 patent contains virtually identical language. See '185 Patent, Col. 1:59 — Col. 2:18.
Having considered the matter carefully, the Court concludes that, without having first construed the claims at issue, it is unable to determine the proper priority dates of the '572 and '185 patents or determine the merits of Defendants' motion for summary judgment. A claim construction hearing has not yet been held, and indeed the parties have ongoing discovery disputes bearing on claim construction. Accordingly, the Court will deny the motion for summary judgment without prejudice.
II. MOTION TO STRIKE
In addition to moving for summary judgment, Defendants have filed a motion to strike Plaintiff's First Amended Disclosure of Asserted Claims and Preliminary Infringement Contentions. The basis for the motion is Plaintiff's alleged failure to comply with its disclosure obligations pursuant to Patent Local Rules 3-1 and 3-2 and the procedure for amending Preliminary Infringement Contentions required by Patent Local Rule 3-7. Because the primary relief Defendants seek is an order compelling Plaintiff to provide adequate disclosures, this motion should have been directed to the assigned magistrate judge.
Defendants also request that specified products accused of infringement without leave of the Court in violation of Patent Local Rule 3-7 be dismissed from the litigation. The Court will consider this request after the magistrate judge has issued his order with respect to the motion to strike.
III. ORDER
Good cause therefore appearing, IT IS HEREBY ORDERED that Defendants' motion for summary judgment is DENIED without prejudice and that Defendants' motion to strike Plaintiff's First Amended Disclosure of Asserted Claims and Preliminary Infringement Contentions is REFERRED to the assigned magistrate judge.