Opinion
2:01-CV-004-DF
January 15, 2002
MEMORANDUM ORDER
The instant case is brought by Plaintiff Texas Instruments ("TI") against Defendant Linear Technologies Corp. ("LTC") for infringement of a patented process. TI accuses LTC of infringing three of its patents, U.S. Patent Nos. 4,884,674 ("674 Patent"), 5,216,613 ("613 Patent") and 6,039,168 ("168 Patent")(collectively, "the Subject Patents"). On March 2, 2001, LTC filed Third-Party Complaints against Applied Materials, Inc. ("Applied"), Tokyo Electron Ltd ("Tokyo"), and Novellus Systems, Inc. ("Novellus"), joining then as Third-Party Defendants. TI and Novellus moved to sever the Third-Party Defendants (Dkt. Nos. 21 and 28, respectively). Tokyo moved to dismiss certain third party claims and sever other third-party claims, or in the alternate to sever all claims (Dkt. No. 68), and Applied moved to dismiss the third-party complaint (Dkt. No. 25). For the following reasons, the Court finds the Defendants' motions to sever well taken, and orders the Third-Party defendants severed from the instant action.
I BACKGROUND
The patents TI has accused LTC of infringing are process patents. Both the `674 and `613 Patents are entitled "Segmented Asynchronous Operation of an Automated Assembly Line." These two patents arose out of the same parent patent application filed on April 16, 1971, and they have identical specifications. Each is directed to methods of automating and controlling operations and transfer of workpieces between work stations during a manufacturing process. In general terms, these two patents teach that the manufacturing line is segmented into its basic units, i.e. the individual work stations, and the operation of the work station and the transfer between work stations is asynchronously performed under computer control, In that connection., the claims of the `674 and `613 Patents are directed to controlling transfer of workpieces between two or more work stations in such an asynchronous operation.
The `168 Patent issued on March 21, 2000, from an application that originated from the same chain of applications as did the `674 and `613 Patents. Claude Head, III, is the named inventor of all of the Subject Patents.
LTC designs, manufactures, markets and sells analog integrated circuit products. LTC currently has four wafer fabrication facilities ("fabs"), three in Milpitas, California and the fourth in Camas, Washington. The equipment LTC has installed in its fabs comes from various venders, including Third-Party Defendants. Third-Party Defendant Applied Materials supplies equipment used in the semiconductor manufacturing industry. Third-Patty Defendant Novellus's principal business is the sale of manufacturing equipment used to make semiconductors. Third-Party Defendant Tokyo manufactures and sells semiconductor production equipment.
LTC seeks indemnification and recovery under claims including breach of contract, breach of implied warranty of non-infringement under the California Commercial Code, and fraudulent concealment and violation of California's Unfair Practices Act. Additionally, LTC alleges that Third-Party Defendant Tokyo violated Article 42 of the United Nations Convention on Contracts for the International Sale of Goods.
II STANDARD
Federal Rule of Civil Procedure 21 provides that "[a]ny claim against a party may be severed and proceeded with separately." Fed.R.Civ.P. 21. "Any party may move to strike [a] third-party claim, or for its severance or separate trial." Fed.R.Civ.P. 14(a). Where the parties should be tried separately in the interest of justice, or the claims are distinct and separable, they can be severed. American Fidelity Fire Ins. Co. v. Construction Werl., Inc., 407 F. Supp. 164, 189-90 (D.V.I. 1975).
Rule 21 authorizes a district court to sever any action if severance would prevent delay or prejudice. Applewhite v. Reichold Chemicals. Inc., 67 F.3d 571, 574 (5th Cir. 1995) ("Under Rules 20 and 21, the district court has the discretion to sever an action if it is misjoined or might otherwise cause delay or prejudice."). "As long as there is a discrete and separate claim, the district court may exercise its discretion and sever it." Rice v. Sun rise Express, Inc., 209 F.3d 1008, 1016 (7th Cir. 2000).
III DISCUSSION
In the instant case, TI has brought a claim for patent infringement against LTC. LTC responded by joining Third Party Defendants, insisting that it is the Third-Party Defendants who have infringed the Subject Patents. TI has specifically avowed that it has no interest in bringing suit against the Third-Party Defendants for infringement of the Subject Patents. TI contends that it is bringing suit against LTC for infringement of TI's patented manufacturing processes, whereas the Third-Party Defendants "do not manufacture semicondactor products at all; they only manufacture equipment and machinery." (TI Motion to Sever at 2-3).
LTC maintains that Third-Party Defendants have sold it equipment that may infringe the Subject Patents, and that therefore any infringement of the Subject Patents is the fault of ThirdParty Defendants. LTC argues that:
The patents-in-suit relate to how the wafer manufacturing equipment sold to LTC by the third-party defendants move wafers from place to place. Those wafer moving operations are designed, built and determined entirely be the third-party defendants, not LTC. The patents-in-suit have nothing to do with the processing of the wafers done by LTC to make its semiconductor products." (LTC Opp. to TI's' Mot. to Sever at 1.)
LTC argues that its third party claims should be tried separate1y, before TI's claims are tried, pursuant to Rule 42(b).
The Court is not persuaded by this argument. LTC brings 16 new, non-patent causes of action before the Court. None of these causes of action relate to the question before the Court in the instant case, which is whether the Subject Patents are infringed by LTC's processes. Assuming for LTC's benefit that there exists some indemnification between itself and Third-Party Defendants, even assuming that Third-Party Defendants have themselves independently infringed the Subject Patents, such assumptions cannot change the course of the current inquiry, which concerns itself solely with LTC's processes. TI, as master of its claim, has clearly indicated that it perceives LTC alone as infringing its patented processes. The interests of justice and judicial efficiency mandate that TI be permitted to focus the Court's attention on this stated claim.
Naturally, there is nothing in this Order that prevents LTC from bringing suit separately against the Third-Party Defendants on those counts articulated in LTC's Third-Party Complaints and explored in additional briefings.
IV CONCLUSION
For the foregoing reasons, it is hereby
ORDERED that TI's motion to sever the Third-Party Defendants (Dkt. No. 21) from the current action is GRANTED. Such decision terms Third-Party Defendants' motions to sever and dismiss (Dkt. Nos. 25, 28, and 68) as moot.