Monolithic Power Systems, Inc. v. 02 Micro International Ltd.

726 F.3d 1359, 107 U.S.P.Q. 2d (BNA) 1972, 2013 WL 4055141, 2013 U.S. App. LEXIS 16691
CourtCourt of Appeals for the Federal Circuit
DecidedAugust 13, 2013
DocketNo. 2012-1221
StatusPublished
Cited by43 cases

This text of 726 F.3d 1359 (Monolithic Power Systems, Inc. v. 02 Micro International Ltd.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Monolithic Power Systems, Inc. v. 02 Micro International Ltd., 726 F.3d 1359, 107 U.S.P.Q. 2d (BNA) 1972, 2013 WL 4055141, 2013 U.S. App. LEXIS 16691 (Fed. Cir. 2013).

Opinion

PROST, Circuit Judge.

02 Micro International Ltd. (“02 Micro”) appeals from the decision of the United States District Court for the Northern District of California finding this case exceptional under 35 U.S.C. § 285 and awarding attorney fees and costs to Monolithic Power Systems, Inc. (“MPS”), and ASUSTeK Computer, Inc. and ASUSTeK Computer International (collectively, “ASUSTeK”). See Monolithic Power Sys., Inc. v. 02 Micro Int’l Ltd., No. 08-4567, 2011 U.S. Dist. LEXIS 154454 (N.D.Cal. Mar. 3, 2011) (“Exceptional Case Order ”); Monolithic Power Sys., Inc. v. 02 Micro Int’l Ltd., No. 08-4567, 2012 U.S. Dist. LEXIS 5109 (N.D.Cal. Jan. 17, 2012) (“Fees and Costs Order”). We affirm both the exceptional ease finding and the attorney fees award.

Background

MPS and 02 Micro are competitors in the market for integrated circuit products that control LCD and LED lighting. Both parties own many patents, a small subset of which is at issue. ASUSTeK, an international hardware and electronics manufacturer, is an MPS customer.

A. Previous Litigation

For more than a decade, MPS and 02 Micro have been embroiled in litigation. Not counting the suits filed against MPS customers in other district courts, there have been five lawsuits in which 02 Micro [1362]*1362asserted patent infringement claims against MPS in the Northern District of California. This case was the fifth.

In October 2001, 02 Micro filed suit against MPS, alleging infringement of U.S. Patent No. 6,259,615. The district court granted summary judgment of noninfringement in favor of MPS. This decision was affirmed on appeal. 02 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed.Cir.2006).

In January 2003, 02 Micro filed an infringement suit against an MPS customer in the Eastern District of Texas, prompting MPS to file suit against 02 Micro in May 2004. MPS sought declarations of noninfringement and invalidity of 02 Micro’s U.S. Patent No. 6,396,722 (“'722 patent”). 02 Micro counterclaimed for infringement. Despite 02 Micro’s efforts to overcome prior art by attempting to establish an earlier date of conception,1 a jury found the '722 patent invalid based on obviousness and the on-sale bar. The verdict was affirmed on appeal. Monolithic Power Sys., Inc. v. 02 Micro Int’l Ltd., 558 F.3d 1341 (Fed.Cir.2009).

In October 2004, 02 Micro filed a lawsuit against two other MPS customers in the Eastern District of Texas, accusing them of infringing U.S. Patent No. 6,804,-129 (“'129 patent”). The case was subsequently transferred to the Northern District of California, and consolidated with MPS’s suit filed in May 2004, discussed above. After the transfer, 02 Micro withdrew from the case, covenanting not to sue MPS and its two customers for infringement of the '129 patent.

In July 2005, 02 Micro asserted the '129 patent again in the Eastern District of Texas against a third MPS customer, prompting MPS to file another declaratory judgment action against 02 Micro in May 2007. 02 Micro fought the suit with two motions to dismiss for lack of subject matter jurisdiction, but they were denied. 02 Micro then covenanted not to sue MPS and its customers for infringement of the '129 patent, and stipulated to the dismissal of the suit.

B. Current Litigation

This brings us to the current litigation. In October 2008, MPS filed a declaratory judgment action against 02 Micro, seeking declarations of noninfringement and invalidity with respect to four related 02 Micro patents: U.S. Patent Nos. 6,856,519, 6,809,938, 6,900,993, and 7,120,035 (“'519 patent family”). Before MPS served the complaint, but after 02 Micro had learned of the lawsuit, 02 Micro had filed a complaint in the International Trade Commission (“ITC”), under § 337 of the Tariff Act of 1930, against MPS and its customers, including ASUSTeK. The § 337 complaint alleged that MPS’s and ASUSTeK’s imports infringed three of the four patents in the '519 patent family, as well as U.S. Patent No. 7,417,382 (“'382 patent”).2

[1363]*1363Soon thereafter, MPS amended the complaint to include the '382 patent and served 02 Micro. The next day, the ITC notified the parties that it will be instituting an investigation.

In the underlying district court action, 02 Micro counterclaimed for infringement and added additional MPS customers, including ASUSTeK, as counterclaim-defendants. 02 Micro also filed a motion to stay the district court proceedings pending resolution of the ITC investigation. In March 2009, the district court denied the motion in favor of both proceedings moving forward in parallel. To avoid duplication and a waste of resources, the district court ordered that all discovery in the ITC proceeding would apply in the district court action. Exceptional Case Order, at *8. All parties assented to this procedure.

Several months later, 02 Micro dismissed an MPS customer from the district court suit and withdrew its assertion of the '519 patent family from both the district court and ITC proceedings. In addition, 02 Micro covenanted not to sue MPS or its customers for infringement of the '519 patent family. This left only the '382 patent in the suit from July 2009 forward.

It bears mentioning that throughout both the ITC investigation and the district court proceeding, 02 Micro insisted that the '382 patent is entitled to a February 18, 1998 conception date, as corroborated by the computer-generated date on Dr. Lin’s schematics printout. As noted above, as in the May 2004 litigation involving the '722 patent, here the schematics printout was 02 Micro’s best hope for overcoming MPS’s invalidating art. Thus, 02 Micro filed multiple verified interrogatories attesting to the same. Dr. Lin, the inventor, testified in deposition and at trial in the ITC that he conceived the invention claimed in the '382 patent by February 1998, as reflected by the computer-generated date stamp on the schematics.

However, 02 Micro’s story surrounding the schematics unraveled when MPS served the report of its hired schematics expert, Marc Herniter, proving, inter alia, that the date stamp on the schematics had been manually entered. Thereafter, 02 Micro “dissembled” and “sought to mask its proffer of false testimony.” Exceptional Case Order, at *20. It supplemented its interrogatory responses; it moved to strike Dr. Herniter’s report; and it moved for summary adjudication to establish February 18, 1998 as the date of conception of the subject matter claimed by the '382 patent — all in an attempt to put the controversy surrounding the “Feb., 18, 1998” schematics to rest.

In February 2010, the district court ruled on the parties’ summary adjudication motions. 02 Micro’s motions for summary adjudication concerning the authenticity of schematics and the invention date of the '382 patent were denied. MPS and ASUS-TeK’s motion for summary adjudication that the earliest invention date for the '382 patent was July 22, 1999 was granted, as was their motion for summary adjudication of lack of willfulness. Finally, MPS and ASUSTeK’s motions for summary judgment of invalidity and noninfringement were denied. Monolithic Power Sys. v. 02 Micro Int'l Ltd., No.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
726 F.3d 1359, 107 U.S.P.Q. 2d (BNA) 1972, 2013 WL 4055141, 2013 U.S. App. LEXIS 16691, Counsel Stack Legal Research, https://law.counselstack.com/opinion/monolithic-power-systems-inc-v-02-micro-international-ltd-cafc-2013.