Summary
stating that, "[w]hile the Noerr-Pennington doctrine was formulated in the context of antitrust cases, it has been extended to cases involving other types of civil liability, including state law claims of unfair competition"
Summary of this case from Fitbit, Inc. v. Laguna 2, LLCOpinion
No. C 04-2000 CW, (consolidated with No. C 06-2929 CW).
March 15, 2007
COOLEY GODWARD KRONISH LLP, THOMAS J. FRIEL, JR. (80065), MATTHEW J. BRIGHAM (191428), COOLEY GODWARD KRONISH LLP, Palo Alto, CA.
JAMES P. BROGAN (155906), COOLEY GODWARD KRONISH LLP, Broomfield, CO.
BRIAN E. MITCHELL (190095), COOLEY GODWARD KRONISH LLP, San Francisco, CA, Attorneys for Plaintiff and Counter-Defendant Monolithic Power Systems, Inc., Michael Hsing, and Counter-Defendant Advanced Semiconductor Manufacturing Corporation Limited aka Advanced Semiconductor Manufacturing Corporation of Shanghai, Asustek Computer, Inc., and Compal Electronics, Inc.
ROBERT STEINBERG (126407), MARK A. FLAGEL (110635), LATHAM WATKINS, Los Angeles, California.
DEAN G. DUNLAVEY (115530), LATHAM WATKINS, Costa Mesa, California, Attorneys for Plaintiff and Counter-Defendant Monolithic Power Systems, Inc. and Michael Hsing.
ORDER GRANTING IN PART O2 MICRO'S MOTION FOR LEAVE TO FILE MOTION FOR RECONSIDERATION
O2 Micro International Limited requests leave to file a motion for reconsideration of the Court's February 8, 2007 order denying its motion for summary judgment on the issue of offensive collateral estoppel and granting summary judgment in favor of Defendants that O2 Micro had presented no evidence of damages.
Civil Local Rule 7-9(a) states as follows: "No party may notice a motion for reconsideration without first obtaining leave of Court to file the motion." A request for leave to file a motion for reconsideration may only be granted if the moving party shows:
(1) That at the time of the motion for leave, a material difference in fact or law exists from that which was presented to the Court before entry of the interlocutory order for which reconsideration is sought. The party also must show that in the exercise of reasonable diligence the party applying for reconsideration did not know such fact or law at the time of the interlocutory order; or (2) The emergence of new material facts or change of law occurring after the time of such order; or (3) A manifest failure by the Court to consider material facts or dispositive legal arguments which were presented to the Court before such interlocutory order.
Civil L.R. 7-9(b).
O2 Micro contends that reconsideration is proper. It requests that, at a minimum, the Court issue a new order denying its motion for summary judgment based on collateral estoppel, but clarifying that the issue is reserved for trial. O2 Micro argues that there is a genuine issue of material fact as to whether Sumida adequately represented MPS' interests in the Texas law suit and, therefore, it should be allowed to complete its discovery on that issue and to put on its evidence at trial. The Court's order could be read, not merely to deny O2 Micro's motion for summary judgment based on collateral estoppel, but also to find that MPS is not collaterally estopped from litigating the validity of the asserted claims and infringement of those claims. In its opposition, MPS stated that the Court should find that collateral estoppel regarding the `722 patent is inappropriate, but it did not move for summary judgment of no collateral estoppel. The Court grants O2 Micro leave to file its motion for reconsideration of the Court's finding that MPS is not collaterally estopped.
O2 Micro further requests that the Court deny Defendants' motion for summary judgment and reinstate the Bratic report, grant it leave to serve a modified Bratic report, grant it leave to reinstate the Dragun expert report that it previously withdrew or allow it to prove its damages at trial without an expert witness. Defendants moved for summary judgment that O2 Micro had no evidence of damages, arguing that Mr. Bratic's report could not support a damages claim. In response, O2 Micro did not point to the withdrawn Dragun expert or to any modifications that could be made to the Bratic report, nor did it point to any other evidence of damages in the record. Rather, it defended the Bratic report. Because that report was unreliable and inadmissible, O2 Micro did not meet its burden to produce specific evidence showing that a dispute exists. And O2 Micro points to no material facts or dispositive legal arguments concerning its evidence of damages which were presented to the Court and not considered. The Court denies its motion for leave to file a motion for reconsideration concerning damages.
O2 Micro's Motion for Leave to File a Motion for Reconsideration (Docket No. 766) is GRANTED IN PART and DENIED IN PART. O2 Micro may file its proposed motion for reconsideration. Defendants are ordered to file their opposition to O2 Micro's motion for reconsideration of the Court's finding that MPS is not collaterally estopped, within two weeks from the date of this order. O2 Micro may file a reply one week later. The matter will be decided on the papers.
IT IS SO ORDERED.
ORDER GRANTING DEFENDANTS' MOTION FOR LEAVE TO FILE MOTION FOR RECONSIDERATION OF ORDER ON CLAIM CONSTRUCTION
Defendants Monolithic Power Systems, Inc., Advanced Semiconductor Manufacturing Corporation Limited, ASUSTeK Computer, Inc. and Compal Electronics, Inc. move for leave to file a motion for reconsideration of this Court's order on claim construction.
Civil Local Rule 7-9(a) states as follows: "No party may notice a motion for reconsideration without first obtaining leave of Court to file the motion." A request for leave to file a motion for reconsideration may only be granted if the moving party shows:
(1) That at the time of the motion for leave, a material difference in fact or law exists from that which was presented to the Court before entry of the interlocutory order for which reconsideration is sought. The party also must show that in the exercise of reasonable diligence the party applying for reconsideration did not know such fact or law at the time of the interlocutory order; or (2) The emergence of new material facts or change of law occurring after the time of such order; or (3) A manifest failure by the Court to consider material facts or dispositive legal arguments which were presented to the Court before such interlocutory order.
Civil L.R. 7-9(b).
Defendants contend that reconsideration is proper under Civil Local Rule 7-9(b)(2). They note that, following the parties' briefing and the Court's hearing on claim construction, the Patent and Trademark Office rejected as unpatentable all asserted claims of O2 Micro's U.S. Patent No. 6,396,722 containing the "only if" and "first state/second state" limitations. Based on these new facts, Defendants request that the Court reconsider its decision to construe those two terms as they were previously construed by this Court and Judge Ward. They ask the Court to adopt their claim construction instead.
New material facts have emerged and, therefore, the Court GRANTS Defendants' Motion for Leave to File a Motion for Reconsideration of the Order on Claim Construction and for Further Construction in View of the New Intrinsic Evidence Submitted in Pending Reexamination Proceedings (Docket No. 764). Defendants may file their proposed motion for reconsideration. O2 Micro is ordered to file its opposition to Defendants' motion for reconsideration, within one week from the date of this order. Defendants may file a reply three days later. The matter will be decided on the papers.
IT IS SO ORDERED.CIVIL L.R. 7-9(B)(2) MOTION FOR RECONSIDERATION OF CLAIM CONSTRUCTION RULING AND FOR FURTHER CONSTRUCTION IN VIEW OF NEW INTRINSIC EVIDENCE SUBMITTED IN PENDING REEXAMINATION PROCEEDINGS
I. INTRODUCTION
Pursuant to Civil L.R. 7-9(b)(2), Monolithic Power Systems, Inc. ("MPS"), Advanced Semiconductor Manufacturing Corporation Limited ("ASMC"), ASUSTeK Computer, Inc. ("ASUSTeK"), and Compal Electronics, Inc. ("Compal") (collectively "Defendants") request reconsideration of the Court's recent rulings on claim construction and further construction of the claims in light of new facts that have arisen since the matter was submitted to the Court. Specifically, Defendants ask the Court to consider additional intrinsic evidence from the file wrappers of the ongoing reexamination prosecutions of the `615 and `722 patents.The Patent and Trademark Office (PTO) has ordered reexamination of both the O2 Micro International, Ltd. ("O2 Micro") `615 and `722 patents. On December 11, 2006, the PTO rejected as unpatentable all of the asserted claims of both patents. ( See Declaration of Brian E. Mitchell in Support of Defendants' Motion for Leave to File a Motion for Reconsideration ("Mitchell Decl.") Ex. A, `615 Patent Office Action, and Ex. B, `722 Patent Office Action.) On January 18, 2007, O2 Micro conducted an in-person interview before the PTO but was unable to persuade the PTO to withdraw the rejections. The PTO examiner disagreed with each of O2 Micro's proffered arguments. (See Mitchell Decl. Ex. C, `615 Patent Interview Summary, and Ex. D, `722 Patent Interview Summary.) Subsequently, on February 12, 2007, O2 Micro filed its formal responses to the outstanding rejections. (See Mitchell Decl. Ex. E, Response to Office Action Issued in the `722 Patent Reexamination Proceeding.) These rejections, together with the PTO's comments concerning the references cited by the requestor and O2 Micro's responses, demonstrate that:
(1) the "only if" and "first state/second state" limitations set forth in the claims should be construed as proposed by Defendants; and
(2) the asserted claims are properly limited to full-bridge inverters that employ a phase-shift or phase-overlap control methodology — something that O2 Micro's expert, Dr. Rhyne, admits is not employed by the accused products. ( See D.I. 364, Decl. M. Brigham ISO Motion for Summary Judgment, Ex. 12, V. T. Rhyne Depo. dated Aug. 31, 2006, at 17:16-18:23.)
Q. Is that form of control [phase overlap] used within the MPS accused parts?
A. I don't believe that it is.
Q. You don't think it is.
A. And I would not interpret the way in which they control the on and off times of the pairs of transistors in the full-bridge that they have as being a phase shift approach to overlap.
Q. Okay. So there would be no — there would — strike that. So there would be overlap of the pulses in the MPS parts, but not phase overlap of those pulses. Is that correct?
A. I — I personally would not use that term. I mean, there are — a lot of different people will use those terms. It's not like there's a federal standard on what those terms mean. But the way in which the MPS parts achieve varying amounts of overlap is not something that I personally would refer to as phased shift overlap.
(Rhyne Depo. at 18:5-18-23.)
Tellingly, in response to these rejections and examiner comments, O2 Micro did not candidly inform the PTO that O2 Micro contends the "only if" and "first state/second state" claim limitations should be construed more broadly so as to allow the claims of the `722 patent to cover full-bridge inverters, like those produced by Defendants, that shut down when presented with an open-lamp condition or provide pulses of gradually increasing width to strike a CCFL, as evidenced by O2 Micro's infringement contentions and expert reports in this case. Had O2 Micro been forthcoming with the PTO, it then would have had to address additional prior art issues and references including, but not limited to, the 1995 Goodenough article, the Henry `129 patent (U.S. Patent No. 5,923,129) and related provisional application, the Payne `779 patent (U.S. Patent No. 5,420,779), the 1995 Mohan textbook, and its own OZ962 and OZ969 sales prior to the critical date ( see Mitchell Decl. Exs. H, I). Instead, O2 Micro formulated its responses in a manner that tracks the Defendants' proposed claim constructions.
Remarkably, despite its duty of candor and disclosure obligations under 35 U.S.C. § 1.56 and MPEP § 2001.06(c) ( see Mitchell Decl. Exs. F and G), O2 Micro has failed to provide any of its current infringement contentions or related expert reports to the PTO. Nor has O2 Micro provided the PTO with any of Defendants' expert reports or motions addressing the invalidity and unenforceability of its claims. It appears that O2 Micro wants to keep the PTO in the dark in order to give itself maximum latitude to respond to the PTO's rejections of its claims. Such behavior is, of course, the epitome of inequitable conduct.
F. Goodenough, "DC-to-AC Inverter Ups CCFL Lumens Per Watt," Electronic Design (July 10, 1995). The Goodenough article describes the operation of CCFL inverter modules developed and marketed by LinFinity Microelectronics Inc., a company later acquired by Microsemi Corporation. ( See D.I. 364, Decl. of M. Brigham ISO Motion for Summary Judgment, Ex. 13.)
A copy of U.S. Patent 5,923,129 is attached as Ex. 8 to D.I. 365, Declaration of Mark N. Horenstein ISO Defendants' Motion for Summary Judgment.
A copy of the Henry Provisional Application is attached as Ex. 9 to D.I. 365, Declaration of Mark N. Horenstein ISO Defendants' Motion for Summary Judgment.
A copy of U.S. Patent No. 5,420,779 is attached as Ex. 7 to D.I. 364, Declaration of Matthew Brigham ISO Motion for Summary Judgment.
Mohan et al., Power Electronics: Converters, Applications, and Design, Second Edition, 1995, pp. 342-43 (noting that soft-start and over-voltage protection features can be added to a full-bridge inverter by connecting "simple" external circuits to various pins of a UC1524A full-bridge controller IC). ( See D.I. 364, Decl. of M. Brigham ISO Motion for Summary Judgment, Ex. 11.)
The OZ962 and OZ969 were half-bridge inverter controllers. Both provided open-lamp protection and soft-start features. Since it is a trivial matter to add such features to a full-bridge controller, if such features are protected by the `722 Patent, O2 Micro's duty of candor to the PTO mandates that it disclose this information in the ongoing reexaminations.
For these reasons, Defendants request that the Court reconsider its claim construction ruling and, pursuant to that effort, consider the December 11, 2006 Office Actions, January 18, 2007 Interview Summaries, and February 12, 2007 responses filed by O2 Micro that bear on the proper construction of the claims of the `722 patent.
II. THE PTO'S INTERPRETATIONS OF THE "ONLY IF" AND "FIRST STATE/SECOND STATE" LIMITATIONS SUPPORT DEFENDANTS' PROPOSED CONSTRUCTIONS
The PTO's December 11, 2006 Office Actions support Defendants' proposed constructions of the "only if" and "first state/second state" limitations of the asserted claims. ( C.f. D.I. 363, Motion for Summary Judgment, Opposition to Summary Judgment, and Claim Construction Brief, at 12-14.) In rejecting numerous claims in the `615 and `722 patents as being anticipated by the Ahrens prior art reference, published more than twenty years before the filing date of any of the patents-in-suit, the PTO implicitly interpreted the "only if" and "first state/second state" limitations of the `615 and `722 patent claims as covering products that use two forms of control — feedback-based control during normal operation, and some other form of control ( not feedback-based) to provide minimum power delivery during another mode of operation (e.g., when a signal exceeds a threshold value due to a short circuit condition). ( See, e.g., Mitchell Decl., Ex. A `615 Patent Office Action dated 12/11/06, at 4-5, 7-8, 13 and Ex. B, `722 Patent Office Action dated 12/11/06, at 9.)
A. Ahrens and G. Cardwell, "Arc Discharge Supply Component Protection Circuitry, " IEEE Power Electronics Specialists Conference proceedings, June 1976. ( See Ex. 4 to D.I. 365, Declaration of Mark N. Horenstein ISO Defendants' Motion for Summary Judgment.)
For example, in rejecting claim 1 of the `722 patent as anticipated by the Ahrens reference, the PTO examiner stated (with bracketing and underlining as shown below):
As per claim 1, Ahrens discloses a DC to AC inverter circuit [figures 1-5, Ahrens discloses a "bridge inverter", pg. 327, col. 1, last para., line 3], comprising:
* * *
a pulse generator circuit [figure 5, lower left, the "reference side driver and one-shot" circuit] generating a first pulse signal for driving one of the corner switches of said full bridge configuration [as the name implied, the reference side driver and one-shot circuit generates the first pulse signal];
a feedback control loop circuit [see figure 4, lower circuit, or figure 5, upper right] receiving a feedback signal indicative of power being supplied to the load [at page 332, col. 1, last para., Ahrens discloses "One of the critical times in the operation of this circuit is when the main feedback loop attempts to take over control of the circuit. An exclusive OR gate consisting of Q9, 10 and 11, is used to ensure that the takeover by the main feedback loop is smooth.", at page 331, col. 1, last para., Ahrens discloses "The output current of the high speed current transformer T2 is full wave rectified and i[s] terminated in resistor R2 (see figure 4). The voltage across resistor R2 is proportional to the current in the primary of the power transformer. This voltage is compared to the voltage of the reference diode VR1 by the comparator AR1. During normal operation, when load current are at safe value, the voltage across R2 is less than the reference voltage across VR1; as a result the output voltage of AR1 is high"] and
adapted to generate a second pulse signal for controlling the conduction state of a switch on the opposite corner of said switch being controlled by said first pulse signal [figure 5, the second pulse signal is generated through the feedback control loop circuit and the transistors Q8, Q12. The second pulse signal is output by transistor Q8 shown in the lower middle of figure 5. The recited operation is clearly shown in figure 2 as discussed above], said second pulse signal having a first state which overlaps said first pulse signal to deliver an amount of power to said load determined by said feedback signal, and a second state which overlaps the first signal with a predetermined minimum overlap to deliver a predetermined minimum power to the load [Ahrens discloses that switching of the modulated pair of transistors can be slid in phase relative to the reference pair to produce any output between zero and 100 percent. "The switching of the modulated pair of transistors can be slid in phase relative to the reference pair to produce any output between zero and 100 percent.", page 328, col. 1, para 2, lines 8-11. In other words, the first and second states of the second pulse signal overlap with the first pulse signal. Ahrens further discloses a "predetermined minimum overlap" between the drive signals controlling switches on opposite corners of a full-bridge inverter when, for example, a short is encountered by the system. "The on time pulse width of the inverter must be at a minimum when driving a direct short.", page 328, col. 2, para. 3. Ahrens also states that "[t]he bridge, once turned on, must be on for a minimum finite period." And that "[t]he total minimum bridge on time is approximately 3 s." Page 329, col. 1, para. 3].
( See Mitchell Decl. Ex. B, `722 Patent Office Action, at 4-5 (underlining and brackets in original, bold and italic emphasis added, paragraphing altered).)
As can be seen from the Examiner's comments, the PTO found that the "first state/second state" limitation in the claim was present in the Ahrens circuitry that enables feedback control and corresponding phase-overlap adjustment during one mode of operation (i.e., normal operation) and that provides a different form of control during a second mode of operation (i.e., a short circuit condition) resulting in fixed, minimum phase overlap and minimum power delivery. This is precisely how Defendants contend that the "first state/second state" limitations should be construed in this action.
When O2 Micro responded to the above-quoted rejection, it did not inform the PTO that it should construe the claim limitation more broadly to cover any situation in which a small pulse of allegedly predetermined but not fixed width is used to initiate a CCFL striking sequence, as O2 Micro asserts in its infringement contentions and expert reports. Instead, it focused upon the very same features and functionalities emphasized here by Defendants — O2 Micro argued that the circuitry described in the Ahrens reference does not (a) "deliver an amount of power to said load determined by said feedback signal" during one state of operation and (b) "deliver a predetermined minimum amount of power to the load" during a second state of operation. (See, e.g., Mitchell Decl. Ex. E, Response to Office Action Regarding the `722 Patent, pp. 5-6, emphasis provided in O2 Micro's Response.)
See D.I. 316, Decl. of V. T. Rhyne ISO Plaintiff O2 Micro's Motion for Summary Judgment, Ex. 1., at 16 ("At start-up the first overlapping pulse of the transformer has the minimum pulse width and, hence, will supply the smallest amount of power to the CCFL that will ever be supplied. The duration of that first pulse corresponds to the required `second state.'").
O2 Micro deprived the PTO of information concerning its assertions in this lawsuit to avoid having to address the evidence establishing that soft-start circuits providing the very same functionality that O2 Micro contends infringes its patent were known and on sale for years before O2 Micro's alleged invention. This is evidenced, for example, by the functionality of O2 Micro's own early OZ962 and OZ969 parts and the teaching of the Mohan textbook published in 1995. Thus, O2 Micro's recently filed response regarding the `722 patent fully supports Defendants' proposed constructions of the "first state/second state" limitations presented in the claims.
See Mitchell Decl. Exs. H, I.
See Ex. 11 to D.I. 364, Declaration of Matthew Brigham ISO Motion for Summary Judgment.
The PTO analyzed claim 12 of the `722 patent, which includes the "only if" limitation, in the same manner. The PTO examiner made virtually identical comments concerning the operation of the circuitry in the Ahrens reference, noting that feedback is used to control phase-overlap during one mode of operation (i.e., during normal operation) and another signal is used to control the switches of the inverter during a second mode of operation (i.e., when a specified voltage signal measured across R2 exceeds a threshold value, indicating a short-circuit condition). ( See Mitchell Decl. Ex. B, `722 Patent Office Action, at 8-9.) Stated slightly differently, the PTO asserted that feedback controls phase-overlap in the Ahrens circuit "only if" the voltage across resistor R2 remains below a predetermined threshold.
In its February 12, 2007 responses, O2 Micro did not dispute the PTO's analysis as to how the Ahrens circuitry operated. Rather, O2 Micro argued that the Ahrens circuitry delivers the "predetermined minimum amount of power to the load" when the voltage across R2 is below a predetermined threshold, whereas the claims of the `722 patent specify that the "predetermined minimum amount of power" be delivered to the load "only if" the feedback signal is above a predetermined threshold. (See, e.g., Mitchell Decl. Ex. E, Response to Office Action Regarding the `722 Patent, at 14-15.) Once again, O2 Micro's responses to the pending rejections fully support Defendants' proposed construction of the "only if limitations provided in the claims. Here, O2 Micro also failed to candidly inform the PTO that it alleges in this lawsuit that claim 12 covers a full-bridge inverter that merely shuts down when an open-lamp condition is detected. Had O2 Micro made such a disclosure to the PTO, it then would have needed to address additional validity issues raised, for example, by the Goodenough article, the Henry `129 patent (and related provisional application), the Payne `779 patent, and its own early OZ962 and OZ969 product sales (Mitchell Decl. Exs. H, I).
See D.I. 316, Decl. of V. T. Rhyne ISO Plaintiff O2 Micro's Motion for Summary Judgment, Ex. 1, at 19 ("If an open lamp condition occurs, the inverter circuit will reduce to minimum power or shut down thereby stopping any adjustment of power delivered to the CCFL.").
Thus, the new evidence from the reexaminations (including statements from both the PTO and O2 Micro) favors construing the "only if" and "first state/second state" limitations of the `722 patent as requiring feedback control during normal operation and some other form of control (e.g., fixed minimum control) during other periods of operation.
Defendants respectfully request that this Court follow the guidance of the PTO and construe the "only if" and "first state/second state" limitations within the asserted claims as requiring feedback control during normal operation and some other form of control during other periods of operation. That is the feature that O2 originally highlighted in distinguishing its claims from the prior art, that is the feature that O2 continues to highlight before the PTO, and that is the construction that should be applied to the claims.
III. THE OFFICE ACTIONS SHOW THAT THE CLAIMS OF THE `722 PATENT LITERALLY COVER ONLY PHASE-SHIFT-CONTROLLED FULL-BRIDGE INVERTERS
The December 11, 2006 Office Actions also demonstrate the PTO's determination that the asserted claims of the `722 patent cannot be read to cover inverters that do not utilize a phase-shift or phase-overlap control methodology. In particular, the PTO stated that the Goodenough article does not anticipate the asserted claims of the `615 and `722 patents because it does not teach "(i) a pulse generator circuit for generating a first pulse signal, [and] (ii) a feedback circuit for generating a second pulse signal having a phase which overlaps the first pulse signal." (Mitchell Decl. Ex. A, `615 Patent Office Action, at 15, and Ex. B, `722 Patent Office Action, at 16.) This statement conveys the PTO's understanding that the claims of the `615 and `722 patents cover only phase-shift-controlled inverters and do not cover pulse-width-modulation ("PWM") controlled inverters. This is because PWM-controlled inverters lack the combination of a "pulse generator" for generating a first pulse signal, or reference signal, and circuitry for "generating a second pulse signal having a phase which overlaps the first pulse signal."
The PTO's conclusion means that Defendants' accused inverter products — which are all PWM-controlled products — cannot infringe the asserted claims of the `722 patent. ( See D.I. 364, Decl. M. Brigham ISO Motion for Summary Judgment, Ex. 12, V. T. Rhyne Depo. dated Aug. 31, 2006, at 17:16-18:23.) Stated differently, to the extent that the claimed phase-overlap control circuitry is not present in the Goodenough reference, it cannot be found in Defendants' accused inverters. The devices described in the Goodenough article, the devices described in the prior art Henry `129 patent and related provisional application, and Defendants' accused products all employ PWM control, something that is fundamentally different from the phase-shift or phase-overlap control circuitry found in O2 Micro's products and described in its patents.
Tellingly, in its February 12, 2007 responses, O2 Micro said nothing about the PTO's statements concerning the Goodenough article. If O2 Micro contends that the `722 patent claims can be construed to cover a PWM-controlled full-bridge inverter, as its infringement contentions indicate in this litigation, then it should have made that fact known to the PTO and identified and addressed the Goodenough article and other prior art references (such as the Henry `129 patent and its related provisional application) that disclose just such inverters. Since O2 Micro has not done so, the intrinsic record simply will not support the claims that O2 Micro makes in this action.
Accordingly, Defendants request that the Court limit the scope of the asserted claims to inverters that employ phase-shift or phase-overlap control.
IV. CONCLUSION
Defendants respectfully request that the Court reconsider its recent claim construction order and consider the newly presented evidence from the ongoing reexaminations. That evidence demonstrates what Defendants have been contending all along, namely that the asserted claims of the `722 patent are properly limited to inverters that utilize feedback to control power delivery during one state (or mode) of operation, and a different form of control to provide, for example, predetermined minimum power delivery during another state (or mode) of operation.
DECLARATION OF BRIAN E. MITCHELL IN SUPPORT OF MONOLITHIC POWER SYSTEMS, ASMC, ASUSTEK, AND COMPAL'S MOTION FOR LEAVE TO FILE A MOTION FOR RECONSIDERATION OF ORDER ON CLAIM CONSTRUCTION AND CROSS-MOTIONS FOR SUMMARY JUDGMENT (DKT. NO. 741)I, Brian E. Mitchell, hereby declare as follows:
1. I am an attorney duly licensed to practice law in the State of California and a partner in the law firm of Cooley Godward Kronish LLP, counsel for Defendants Monolithic Power Systems, Inc., ASMC, ASUSTeK, and Compal Electronics. I have personal knowledge of the facts contained in this declaration.
2. Attached to this declaration are various materials issued by, or submitted to, the United States Patent and Trademark Office as part of reexamination proceedings for U.S. Patent No. 6,259,615 (the `615 Patent Reexamination) and U.S. Patent No. 6,396,722 (the `722 Patent Reexamination). Also attached are copies of 35 U.S.C. § 1.56 and Manual of Patent Examination Procedure (MPEP) § 2001.06(c), which address an applicant's disclosure obligations to the United States Patent Trademark Office, as well as copies of data sheets for O2 Micro's early OZ962 and OZ963 inverter controllers, and a description of O2 Micro's early Yosemite Chip Set, which included O2 Micro's OZ969 inverter controller. Affidavits issued by the Internet Archive regarding the above-referenced O2 Micro products are attached to the OZ962 and OZ963 data sheets and Yosemite Chip Set description, respectively.
3. Attached as Exhibit A is a true and correct copy of a `615 Patent Reexamination Office Action, dated December 11, 2006.
4. Attached as Exhibit B is a true and correct copy of a `722 Patent Reexamination Office Action, dated December 11, 2006.
5. Attached as Exhibit C is a true and correct copy of a `615 Patent Reexamination Ex Parte Communication, dated January 18, 2007.
6. Attached as Exhibit D is a true and correct copy of a `722 Patent Reexamination Ex Parte Communication, dated January 18, 2007.
7. Attached as Exhibit E is a true and correct copy of O2 Micro's Response to the `722 Patent Reexamination Office Action, submitted February 12, 2007.
8. Attached as Exhibit F is a true and correct copy of 35 U.S.C. § 1.56.
9. Attached as Exhibit G is a true and correct copy of MPEP § 2001.06(c).
10. Attached as Exhibit H is a true and correct copy of an affidavit from The Internet Archive and attached OZ962 and OZ963 datasheets.
11. Attached as Exhibit I is a true and correct copy of an affidavit from The Internet Archive and attached description of O2 Micro's Yosemite Chip Set, which included O2 Micro's OZ969 inverter controller.
I declare under penalty of perjury under the laws of the State of California that the foregoing is true and correct and that this declaration was executed on March 15, 2007 in San Francisco, California.