Citations
- 796 F. Supp. 2d 1025
Full opinion text
ORDER RE SUMMARY JUDGMENT MOTIONS [Docket Nos. 906-914, 916, 924-925]
REDACTED VERSION
JOSEPH C. SPERO, United States Magistrate Judge.
I. INTRODUCTION
On November 12, 2008, Plaintiff Volterra Semiconductor Corporation (“Volterra”) filed a complaint alleging infringement and contributory infringement by Defendants (“Primarion”) of the following patents: 1) U.S. Patent No. 6,278,264 (the “'264 patent”); 2) U.S. Patent No. 6,462,522 (the “'522 patent”); 3) U.S. Patent No. 6,713,-823 (the “'823 patent”); 4) U.S. Patent No. 6,020,729 (the “'729 patent”); and 5) U.S. Patent No. 6,225,795 (the “'795 patent”). Twelve summary judgment motions (“the Motions”) are presently before the Court, which address the following issues relating to the '264 and '522 patents (“the Burstein Patents”):
1) whether the accused products infringe claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent;
2) whether claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent are anticipated by U.S. Patent No. 5,945,730 (“Sicard” or “the Sicard Patent”), or rendered obvious by Sicard, either by itself or in combination with other prior art;
3) whether claims 9, 11 and 16-19 of the '522 patent are anticipated by a 1994 article by Anthony Stratakos entitled “A Low-Voltage CMOS DC-DC Converter for a Portable Battery-Operated System” (“Stratakos 1994 Article”), or rendered obvious by the Stratakos 1994 Article, either by itself or in combination with other pri- or art;”
4) whether certain references cited by Defendants in connection with their anticipation and obviousness defenses qualify as prior art;
5) whether Defendants should be precluded from relying on certain prior art references and on-sale bar theories that Volterra alleges were not timely disclosed;
6) whether claims 26 and 34 of the '264 patent and claims 9, 11, 16-19 and 22 and 24 of the '522 patent are invalid for lack of a written description or lack of enablement because the Bur-stein Patents do not adequately disclose: a) voltage regulators in which the output voltage can be adjusted while in operation; b) voltage regulators that use LDMOS transistors; and c) certain electrical connections that are not illustrated in the specification;
7) whether the asserted claims are invalid because the claim term “power switch” is indefinite;
8) whether Plaintiff engaged in inequitable conduct in connection with prosecution of the '264 or '522 patents or during the reexamination proceedings;
9) whether any of the asserted claims of the '264 or '522 patents are invalid due to public use of the claimed invention more than a year before filing for the Burstein Patents, in violation of the on-sale bar under 35 U.S.C. § 102(b);
10) whether Volterra has standing to assert infringement of the Burstein Patents.
The parties have consented to the jurisdiction of the undersigned United States magistrate judge pursuant to 28 U.S.C. § 636(c). Hearings on the Motions were held on December 10, 2010 and January 21, 2011.
II. SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). Summary judgment must be supported by “facts as would be admissible in evidence.” Fed.R.Civ.P. 56(e). In order to prevail, a party moving for summary judgment must show the absence of a genuine issue of material fact with respect to an essential element of the non-moving party’s claim, or to a defense on which the non-moving party will bear the burden of persuasion at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Further, “Celotex requires that for issues on which the movant would bear the burden of proof at trial, that party must show affirmatively the absence of a genuine issue of material fact,” that is, “that, on all the essential elements of its case on which it bears the burden of proof at trial, no reasonable jury could find for the non-moving party.” Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1116 (11th Cir.1993). Once the movant has made this showing, the burden then shifts to the party opposing summary judgment to designate “specific facts showing there is a genuine issue for trial.” Celotex, 477 U.S. at 323, 106 S.Ct. 2548. On summary judgment, the court draws all reasonable factual inferences in favor of the non-movant. Anderson v. Liberty Lobby Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
III. EVIDENTIARY OBJECTIONS
As the Court may consider only admissible evidence in ruling on the summary judgment motions, it turns first to the parties’ evidentiary objections.
Defendants have filed objections to evidence cited by Plaintiff in support of: 1) Plaintiffs summary judgment motions (Docket No. 1085); and 2) Plaintiffs briefs in Opposition to Defendants’ summary judgment motions (Docket No. 1124). Plaintiff, in turn, has filed objections to evidence cited by Defendants in support of: 1) Defendants’ summary judgment motions (Docket No. 1181); 2) Defendants’ briefs in Opposition to Plaintiffs summary judgment motions (Docket No. 1154); and 3) Defendants’ Reply briefs (Docket No. 1177).
The Court rules on these objections below.
A. Defendants’ Objections 1. Objections to Evidence Offered in Support of Plaintiffs Summary Judgment Motions (Docket No. 1085)
Defendants object to Volterra’s reliance on dictionary definitions of the words “layer” and “bump” in Dr. Szepesi’s July 14, 2010 invalidity report, arguing that this extrinsic evidence was not timely disclosed under Patent Local Rule 4-3. See Defendants’ Objections to Certain Information Offered in Support of Volterra’s Motions for Summary Judgment (Docket No. 1085) (“Defendants’ Objections (Volterra SJ Motions)”) at 1-2 (citing Rebuttal Expert Report of Dr. Thomas Szepesi Regarding Validity of U.S. Patent Nos. 6,278,264 and 6,462,522 (“Szepesi 7/14/10 Rebuttal Report on Invalidity”), ¶¶ 94-95). In addition, Defendants object to Volterra’s reliance on expert reports by Dr. Szepesi that they assert were not properly sworn. Id. at 2-3.
Volterra responds that the reliance of its expert on dictionary definitions that were not included in its Rule 4-3 disclosures does not violate that rule, which governs evidence cited to support a party’s claim construction position, because the definitions are offered by Dr. Szepesi to support an argument relating to validity. See Volterra Semiconductor Corporation’s Opposition to Defendants’ Objections to Certain Information Offered in Support of Volterra’s Motion for Summary Judgment (Docket No. 1178) (“Volterra’s Response to Defendants’ Objections (Volterra SJ Motions)”) at 1. As to Defendants’ objection that Dr. Szepesi’s reports were not properly sworn, Volterra argues that all of Dr. Szepesi’s reports were properly sworn and that in any event, the argument is moot because Volterra has filed a supplemental declaration by Dr. Szepesi that is sworn under penalty of perjury and has all of his expert reports attached. Id. at 1-3.
The Court overrules both objections,
a. Dictionary Definitions of “Layer” and “Bump”
Under Patent Local Rule 4-3, parties are required to disclose any dictionary definitions upon which they intend to rely in support of their proposed claim constructions not later than 60 days after service of the Invalidity Contentions. As Dr. Szepesi relies on the dictionary definitions to which Defendants object in support of his opinions on invalidity, rather than claim construction, this evidence is outside the ambit of Patent Local Rule 4-3. Further, as discussed below, to the extent that Dr. Szepesi’s opinions concerning the meaning of the word “layer” as applied to Sicard may have implications as to infringement, the Court does not find that the dictionary definitions offered by Dr. Szepesi on this question constitute an improper attempt to amend the Court’s claim construction. Rather, the Court concludes that Dr. Szepesi is merely addressing what the Court’s claim construction means as to the word “layer” — a term that, prior to summary judgment, did not appear to be a subject of controversy. The Court overrules Defendants’ objection.
b. Szepesi Reports
Defendants assert that the Court should not consider the expert reports of Dr. Szepesi because they are not admissible evidence, citing the rule that “[u]n-sworn expert reports prepared in compliance with Rule 26(a)(2) do not qualify as affidavits or otherwise admissible evidence for purpose of Rule 56, and may be disregarded by the court when ruling on a motion for summary judgment.” Defendants’ Objections (Volterra SJ Motions) at 3 (quoting Smith v. City of Oakland, 2007 WL 2288328, at *3-4, 2007 U.S. Dist. Lexis 59941, at *9-10 (N.D.Cal. Aug. 9, 2007)). Defendants also cite King Tuna, Inc. v. Anova Food, Inc., 2009 WL 650732, at *1-2, 2009 U.S. Dist. LEXIS 22901, at *3-4 (C.D.Cal. Mar. 10, 2009) for the same rule. Id. Defendants’ objection fails for two reasons.
First, both Smith and King Tuna are distinguishable from the facts here in that the reports in those cases were not, in fact, sworn. Here, in contrast, all of the challenged reports end with the statement, “I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.” Nor does either of these cases require that expert reports must be sworn in a separate declaration by the expert, as Defendants appear to suggest.
Second, even assuming Defendants were correct, Volterra has now remedied any deficiency by providing a sworn declaration by Dr. Szepesi with all of the challenged reports attached. See Maytag Corp. v. Electrolux Home Products, Inc., 448 F.Supp.2d 1084, 1064 (N.D.Iowa, 2006) (holding that “subsequent verification or reaffirmation of an unsworn expert’s report, either by affidavit or deposition, allows the court to consider the unsworn expert’s report on a motion for summary judgment”).
The Court overrules Defendants’ objection.
2. Objections to Evidence Offered in Support of Plaintiffs Opposition Briefs (Docket No. 1124)
Defendants object to portions of declarations by Drs. Szepesi and Lidsky filed by Volterra in support of its Opposition briefs, as well as to exhibits attached to Dr. Szepesi’s declaration. Defendants’ Objections to Evidence in Support of Volterra Semiconductor Corporation’s [Opposition to Defendants’] Motions for Summary Judgment (Docket No. 1124) (“Defendants’ Objections (Volterra Oppositions)”). First, Defendants assert that the opinions expressed in paragraphs 36-45 and 64 of Dr. Szepesi’s opposition declaration are new opinions that were not timely disclosed and that the documents attached as Exhibits A through C were not timely disclosed or. produced. Id. (citing Rebuttal Expert Declaration of Dr. Thomas Szepesi in Support of Volterra’s Opposition to Defendants’ Motion for Summary Judgment (Docket No. 1075) (“Szepesi 9/10/10 Opposition Decl.”)). Second, Defendants object to paragraph 12 of the Declaration of David Lidsky in Support of Volterra Semiconductor Corporation’s Opposition to Defendants’ Motions for Summary Judgment of Invalidity (Docket No. 971) (“Lidsky 9/10/10 Opposition Deck”), in which Dr. Lidsky states that Volterra’s products practice the inventions of the Burstein Patents and contain all of the elements of the claims that are currently at issue. Defendants argue that Dr. Lidsky’s opinion lacks foundation because Volterra has not provided technical documents about its products to back up Dr. Lidsky’s statement.
Volterra responds that the documents attached to Dr. Szepesi’s declaration as Exhibits A through C are admissible because: 1) the document in Exhibit A, an excerpt from the Area Array Interconnection Handbook, was disclosed by Defendants during discovery; and 2) the documents in Exhibits B and C were offered to rebut specific opinions expressed by Drs. Garrou and Fair and are permissible under Rule 26(a)(2)(C)(ii) of the Federal Rules of Civil Procedure and Civil Local Rule 7-3(a). See Plaintiff Volterra Semiconductor Corporation’s Opposition to Defendants’ Objections to Evidence in Support of Volterra’s Motions for Summary Judgment (Docket No. 1172) (“Volterra’s Response to Defendants’ Objections (Volterra Oppositions)”).
Volterra also rejects Defendants’ objections to what they argue are new opinions in paragraphs 36-45 and paragraph 64 of Dr. Szepesi’s declaration. Id. According to Volterra, the opinions to which Defendants object in paragraphs 36-45, namely, that the Stratakos 1994 Article does not disclose a flip-chip integrated circuit chip and does not teach away from flip chip, are not new. In support of this assertion, Volterra points to paragraphs 128, 140 and 142 of the Szepesi 7/14/10 Rebuttal Report on Invalidity, which Volterra asserts contain arguments that are essentially the same, if less detailed. Similarly, Volterra argues that the opinion expressed by Dr. Szepesi in paragraph 64 is not new. That paragraph describes Figure 1 of the Bur-stein Patents as a “simplified illustration” to explain why it does not show communication lines to the controller that would provide the command to adjust the output voltage. According to Volterra, this opinion is consistent with Dr. Szepesi’s earlier opinions regarding infringement, expressed in paragraph 30 of the June 28, 2010 Opening Expert Report on Infringement of Plaintiff Volterra Semiconductor Corporations’ Expert: Dr. Thomas Szepesi (“Szepesi Opening Report on Infringement”).
As to Defendants’ assertion that Dr. Lidsky’s testimony in paragraph 12 of his declaration lacks foundation, Volterra disagrees. Volterra argues that Dr. Lidsky’s statement is supported by detailed interrogatory responses (attached as an exhibit to the Lidsky declaration) — which Dr. Lid-sky helped prepare based on his review of Volterra technical materials — and therefore, is based on personal knowledge.
Defendants’ objections are overruled,
a. Szepesi 9/10/10 Opposition Declaration
Under Civil Local Rule 7-3(a), parties are permitted to file declarations in support of opposition briefs. Further, Rule 26(a)(2)(D)(ii) requires that where expert testimony is offered “solely to contradict or rebut evidence on the same subject matter identified by another party,” that testimony must be disclosed within 30 days of the other party’s disclosure. Having reviewed the opinions and evidence to which Defendants’ object in connection with the Szepesi 9/10/10 Opposition Declaration, the Court concludes that they are admissible on the grounds that: 1) they are not new opinions (paragraphs 36-45 and 64); 2) they are submitted to rebut specific opinions expressed by Defendants’ experts in support of their summary judgment motions (Exhibits B and C); or 3) they were already disclosed by Defendants (Exhibit A). The Court notes that in determining whether an opinion is “new,” it does not require that an expert’s more recent statement must rigidly adhere to his or her original formulation. Rather, the Court compares the more recently articulated opinions to the opinions that were originally expressed to determine whether the opposing party has been given fair notice, while appreciating that in the course of litigation, the positions of the parties and their experts necessarily evolve somewhat as each attempts to respond to the arguments of the other.
b. Lidsky 9/10/10 Opposition Declaration
As discussed further below, an expert’s testimony must be supported by an adequate foundation to be admissible. See Fed.R. Evid. 702; Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 590, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). Here, Volterra has offered expert testimony that is supported by extensive personal knowledge on the part of one of Volterra’s founders and original engineers, who states that he helped draft Volterra’s detailed interrogatory responses (provided as an exhibit to his declaration) addressing the question on which he offers testimony and that he reviewed a variety of technical documents in doing so. Defendants cite to no authority indicating that under these circumstances, an expert’s opinion lacks foundation merely because the underlying technical documents have not been provided. Nor does the Court find authority that supports such a result. The objection is overruled.
B. Plaintiffs Objections
1. Objections to Evidence Offered in Support of Defendants’ Summary Judgment Motions (Docket No. 1181)
Volterra objects on three grounds to the evidence offered by Defendants in support of their summary judgment motions. See Plaintiff Volterra Semiconductor Corporation’s Objections to Evidence Submitted in Support of Defendants’ Motions for Summary Judgment Filed August 20, 2010 (Docket No. 1181) (‘Volterra’s Objections (Primarion SJ Motions)”). First, Volterra objects to numerous paragraphs of declarations by Drs. Fair and Garrou on the basis that they contain new opinions that were not timely disclosed. Id. Second, Volterra objects to Defendants’ reliance on orders and initial office actions by the Patent and Trademark Office (“PTO”) relating to reexamination requests for the Burstein Patents, arguing that they have no probative value as to the question of invalidity because they are the product of incomplete patent reexamination proceedings Id. Finally, Volterra objects to Defendants’ reliance in their summary judgment motions on prior art by Stager, Hallberg and Honn on the basis that this prior art was not listed in Defendants’ invalidity contentions, as required under Patent Local Rule 3-3.
Defendants respond that the Fair and Garrou statements to which Volterra objects do not contain new opinions, citing similar statements made by these experts in earlier reports. Response to Volterra Semiconductor Corporation’s Objections to Evidence in Support of Defendants’ Motions for Summary Judgment Filed August 20, 2010 (Docket No. 1127) (“Defendants’ Response to Volterra’s Objections (Primarion SJ Motions)”) at 1-9, 12. To the extent that the language of the later declarations on occasion differs from the language used previously, Defendants contend, this is merely a result of the fact that the experts are summarizing their earlier opinions. Id. at 12.
As to the Stager, Hallberg and Honn references, Defendants assert that Volterra’s objection should be overruled because Volterra has long been aware of this prior art. In particular, Defendants state that ‘Volterra was aware of the Stager and Hallberg references at least as early as April 26, 2010 when Primarion identified and disclosed the Stager Reference ... in Infineon AG’s Second Amended and Supplemental Responses to Plaintiffs Interrogatory No. 4.” Id. at 12; see also Gargano Decl., Ex. 85 at 110-112, 364-366. Defendants further assert that “Volterra was aware of the Honn reference at least as early as August 12, 2009 when Primarion submitted it as an exhibit in support of summary judgment briefing.” Id. at 12.
Defendants argue that the PTO orders and office actions are admissible because Defendants are not using this evidence to show invalidity, but rather, to “show how the asserted claims and the prior art should be interpreted and understood in the appropriate context.” Id. at 13. Defendants cite to E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed.Cir.1988), in which the Federal Circuit “determined that statements made during reexamination were relevant in construing patent claims.” Id. Similarly, Defendants assert, “Primarion offers evidence from the pending reexamination proceedings as being relevant to the proper construction and understanding of the asserted patent claims.” Id.
a.Opinions of Drs. Fair and Garrou
The Court has reviewed the opinions by Drs. Fair and Garrou to which Volterra objects and finds that as to most of them, the opinions were articulated, in some form, in previous reports and declarations by these experts. However, Defendants have not identified any timely prior testimony that expresses the opinions contained in the following testimony: 1) paragraphs 38, and 43-45 of the Fair Decl. in Support of Defendants’ Sicard SJ Motion; 2) paragraphs 125-126 of the Fair Decl. in Support of Defendants’ Sicard SJ Motion & Claim Chart 4 to the extent these opinions are now being offered to support obviousness rather than only anticipation; and 3) Opinions expressed in Appendix 2 to Fair Decl. in Support of Defendants’ Stratakos SJ Motion with respect to the claim term “a first flip-chip type integrated circuit chip mounted on a printed circuit board.” Accordingly, the Court sustains Volterra’s objections to this testimony on the basis that it is untimely.
b.PTO Office Actions and Orders
With respect to the PTO Initial Office Actions and reexamination orders, it is well-established that while statements made by the patentee during reexamination proceedings may be probative as to questions of claim construction, see E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed.Cir.1988), preliminary decisions and actions by the PTO in the course of a reexamination proceeding are not probative of invalidity. See Presidio Components Inc. v. American Technical Ceramics Corp., 723 F.Supp.2d 1284, 1300-01 (S.D.Cal.2010). Here, Defendants have not cited to any statement by the patentee and therefore, the holding of Phillips Petroleum does not apply. Rather, Defendants have relied on the preliminary opinions expressed by the PTO on questions of invalidity. As these opinions are only preliminary, however, they have no probative value on that question, as the court in Presidio Components explained. Therefore, Plaintiffs objections to Defendants’ reliance on the PTO office actions and orders are sustained to the extent that Defendants rely on them to support their positions regarding invalidity-
c.Honn, Stager and Hallberg
Finally, the Court sustains Volterra’s objection to Defendants’ reliance on Honn, Stager and Hallberg to show obviousness. Patent Local Rule 3-3 requires that a party disclose the prior art upon which it intends to rely in support of its invalidity defenses and amend its invalidity contentions promptly upon the discovery of new information. Defendants have not shown good cause for their failure to either include these references in their amended invalidity contentions or seek leave to amend their invalidity contentions. The omission is particularly striking in light of the citations to these references in the prosecution history. Clearly, Defendants (like Plaintiff) were aware of these references at an early stage of the case, yet Defendants have offered no explanation for their failure to include them in their invalidity contentions. As a result, Volterra was deprived of the notice to which it was entitled under the patent local rules that Defendants intended to rely on this prior art to show invalidity. See O2 Micro International Limited v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1365 (Fed.Cir.2006) (affirming ruling by district court denying leave to amend invalidity contentions under the Patent Local Rules of the Northern District of California and noting that “[t]he [patent local] rules are designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed”) (quoting Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F.Supp.2d 1121, 1123 (N.D.Cal.2006)).
2. Objections to Evidence Offered in Support of Defendants’ Opposition Briefs (Docket No. 1154)
a. Opposition to MSJ No. 1 (Plaintiffs Infringement SJ Motion)
Volterra objects to Paragraphs 36 and 37 of the Declaration of Richard B. Fair, Ph.D. in Support of Defendants’ Oppositions to Volterra’s Motions for Summary Judgment (“Fair 9/10/10 Opposition Deck”) on the basis that it is not reliable and therefore, inadmissible under Rule 702 of the Federal Rules of Evidence. Plaintiff Volterra Semiconductor Corporation’s Objections to Evidence Submitted by Defendants in Support of Defendants’ Oppositions to Volterra’s Summary Judgment Motions (Docket No. 1154) (“Volterra’s Objections (Primarion’s Oppositions)”) at 1, 5. In Paragraph 37, Dr. Fair states as follows:
In view of Dr. Szepesi’s position that [REDACTED] Fair 9/10/10 Opposition Deck, ¶ 37. Volterra argues that this equivocal statement will not be helpful to the jury to the extent Dr. Fair is not confident enough of his conclusion to affirmatively state that the accused product does not infringe. Volterra further asserts that the paragraphs are unreliable because Dr. Fair ignores highly pertinent conflicting evidence that was cited in Volterra’s motion papers, namely, [REDACTED],
Defendants respond that Volterra’s objection is unfounded to the extent that it relies on the use of the words “it appears” because Dr. Fair’s statement was made in the context of his invalidity analysis and Dr. Szepesi himself has “not applied his ‘invalidity’ version of [REDACTED] to the accused products, even though Volterra has the burden of showing infringement. ” Defendants’ Response to Plaintiffs Objections to Evidence in Support of Defendants’ Oppositions to Volterra’s Motions for Summary Judgment (“Defendants’ Response to Volterra’s Objections (Primarion’s Oppositions)”) at 2 (emphasis in original). According to Defendants, Dr. Fair’s testimony is admissible because it reveals the inconsistency in Dr. Szepesi’s positions and therefore will be helpful to the trier of fact. Id.
The admissibility of expert testimony is governed by Rule 702 of the Federal Rules of Evidence, which provides:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
F.R.Evid. 702. In determining whether expert testimony meets the requirements of Rule 702, courts follow the approach set forth in Daubert v. Merrell Dow Pharm., Inc., in which the Supreme Court described the relevant inquiry as follows:
Faced with a proffer of expert scientific testimony, then, the trial judge must determine ... whether the expert is proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact to understand or determine a fact in issue. This entails a preliminary assessment of whether the reasoning or methodology underlying the testimony is scientifically valid and of whether that reasoning or methodology properly can be applied to the facts in issue.
509 U.S. 579, 590, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). If the basis for the expert’s opinion is clearly unreliable, the district court may disregard that opinion in deciding whether a party has created a genuine issue of material fact. See id. at 596, 113 S.Ct. 2786 (if “the trial court concludes that the scintilla of [expert] evidence presented supporting a position is insufficient to allow a reasonable juror to conclude that the position more likely than not is true, the court remains free to ... grant summary judgment”). The determination of reliability is left to the discretion of the district court, consistent with its gatekeeping function under Rule 702. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 149, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999).
The Court finds that Dr. Fair’s opinion in paragraph 37 is unhelpful and misleading because it is not supported by a factual basis. First, Dr. Fair’s statements are based on a single picture that only shows [REDACTED] of the accused product. Second, Dr. Fair does not address [REDACTED]
Third, Dr. Fair does not explain why he apparently rejects Dr. Szepesi’s opinion that [REDACTED] Accordingly, the Court sustains Volterra’s objection to Dr. Fair’s statements in Paragraphs 37 of his opposition declaration and does not consider that testimony in deciding Volterra’s Infringement Summary Judgment Motion.
b. Opposition to MSJ No. 2 (Plaintiffs Prior Art SJ Motion)
Volterra objects to statements made by Dr. Fair in paragraphs 26-29 and 31-34 of his September 10, 2010 opposition declaration. Volterra’s Objections (Primarion’s Oppositions) at 6-7. Volterra’s objections are overruled.
i. Paragraphs 26-29 of Fair Opposition Declaration
In paragraphs 26-29 of his opposition declaration, Dr. Fair challenges statements by Dr. Szepesi in his invalidity report regarding the date the invention in the asserted patents was conceived. Fair 9/10/10 Opposition Decl., ¶ 26-29; see also Szepesi 7/14/10 Rebuttal Report on Invalidity, ¶¶ 389-402 (opining that invention of asserted claims was conceived as of April 3,1998, or at least, by April 16,1998, citing entries in the lab notebooks of Drs. Nickel and Burstein dated March 26, 1998, April 3, 1998, April 16, 1998 and July 7, 1998). According to Dr. Fair, Dr. Szepesi appeared not to have “conducted an independent analysis regarding whether the asserted claims were conceived by April 3, 1998 [but instead] relie[d] solely on the declaration of Andrew Burstein.” Fair 9/10/10 Opposition Deck, ¶¶ 26-27. Dr. Fair opines further that Dr. Burstein, contended in his declaration that the April 3, 1998 date of conception was “supported by the document labeled VLTR0007451 because it showfed] all of the claim limitations of the asserted claims of the Burstein Patents.” Id., ¶ 27. Dr. Fair states that this document — which is a page dated April 3, 1998 from Dr. Burstein’s lab notebook — lacks certain required elements of the asserted claims, including “a plurality of doped regions,” “solder balls,” a “filter,” a “control circuit” or a “second filter” and that Dr. Burstein conceded as much in his deposition. Id., ¶ 28-29.
Volterra objects to Dr. Fair’s statement on the basis that he addresses only the April 3, 1998 entry in Dr. Burstein’s notebook whereas Dr. Szepesi’s opinion about the conception date was based on several entries in the inventors’ lab notebooks. Volterra’s Objections (Primarion’s Oppositions) at 6-7. Because Dr. Fair ignores relevant evidence, Volterra asserts, his opinion is unreliable and should be found inadmissible. Volterra’s Objections (Primarion’s Oppositions) at 7 (citing Union Carbide Corp. v. American Can. Co., 724 F.2d 1567, 1572 (Fed.Cir.1984) and Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1047 (Fed.Cir.2000)). Volterra further asserts that Dr. Fair’s statements concerning the missing claim elements in the April 3, 1998 entry are inadmissible because they are entirely conclusory. Id.
Defendants respond that Union Carbide is not on point because in that case, the court did not find that the expert’s affidavit was inadmissible but rather, found that it did not create a fact question on summary judgment because it merely ignored relevant evidence rather than contradicting it. See Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 4. Further, Defendants assert, Union Carbide is distinguishable because in that case, the expert whose testimony was at issue had little background in the relevant subject matter. In addition, Defendants assert that Dr. Fair’s testimony differs from the affidavit in Union Carbide because he highlights contradictions between the Burstein declaration cited by Volterra and Dr. Burstein’s deposition testimony. Id. Finally, Defendants argue that Arthur A. Collins is also distinguishable because in that case, as in Union Carbide, the court did not find the expert testimony to be inadmissible but instead, found that an expert’s conclusory statement that the accused device included a critical claim limitation could not defeat summary judgment without factual support. Id. at 5 (citing 216 F.3d at 1047). Here, in contrast, Dr. Fair has offered factual support for his opinion, Defendants argue. Id.
As discussed above, a court has the discretion to find expert testimony inadmissible — or decline to consider expert testimony on summary judgment — where it is unreliable or misleading. The testimony in paragraphs 26-29 of the Fair Opposition Declaration does not warrant exclusion on this basis. Although the narrow focus of Dr. Fair’s statements, which address only the April 3, 1998 notebook entry, may or may not be sufficient to create a dispute of fact sufficient to survive summary judgment, the Court does not find Dr. Fair's statements to be so unreliable or misleading as to find them inadmissible. Dr. Fair is, undisputably, qualified to express an opinion as to the significance of Dr. Burstein’s notebook entries and he has done so. It is apparent from the statements in paragraphs 26-29 that Dr. Fair’s opinions regarding the invention date are based only on his review of the April 3, 1998 notebook entry. While Dr. Fair does not address Dr. Szepesi’s opinions regarding the other notebook entries cited by Dr. Szepesi, this omission is not so misleading as to warrant the exclusion of these paragraphs, even if it may render these opinions less persuasive to a fact finder. Therefore, Volterra’s objection is overruled.
ii. Paragraphs 31-34 of Fair Opposition Declaration
In paragraphs 31-34 of his opposition declaration, Dr. Fair challenges statements by Dr. Szepesi in his invalidity report regarding the date the invention in the asserted patents was reduced to practice. Fair 9/10/10 Opposition Deck, ¶ 31-34; see also Szepesi 7/14/10 Rebuttal Report on Invalidity, ¶¶ 376-388 (opining that the first embodiment of the invention was the Cop5 device that was tested on September 5, 1998). According to Dr. Fair, Dr. Szepesi’s opinion that the invention was reduced to practice on September 5, 1998 is based entirely on statements in Dr. Burstein’s declaration, many of which were uncorroborated. Fair 9/10/10 Opposition Deck, ¶ 31. For example, according to Dr. Fair, Dr. Burstein frequently relies on pages from Mr. Nickel’s notebook to show that all of the limitations of the asserted claims were present in the embodiment that was tested on September 5, 1998 but fails to present any evidence that the drawings in Dr. Nickel’s notebooks accurately reflect the embodiment that was tested on September 5, 1998. Id., ¶¶ 32-33. Dr. Fair also cites to deposition testimony by Dr. Burstein in which he conceded that a September 5 email on which he relied in his declaration failed to show some of the asserted claim limitations. Id., ¶ 34.
Volterra contends that these paragraphs should be excluded on the basis that they are not based on Dr. Fair’s expertise, are not helpful and invade the province of the trier of fact. Volterra’s Objections (Primarion’s Oppositions) at 7 (citing Union Carbide Corp. v. American Can. Co., 724 F.2d 1567, 1572 (Fed.Cir.1984) and Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1047 (Fed.Cir.2000)). Defendants respond that it is appropriate for an expert to compare factual evidence to claim limitations and that this testimony is admissible. Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 5.
The Court finds that the opinions offered by Dr. Fair in paragraphs 31-34 are based on his expertise and supported by a factual basis. Therefore, Volterra’s objection to these paragraphs is overruled.
c. Opposition to MSJ No. 3 (Plaintiffs Undisclosed References SJ Motion)
Plaintiff objects to Appendices A and B to Defendants’ Opposition to Plaintiff Volterra Semiconductor Corporation’s Motion for Partial Summary Judgment of No Invalidity Based on Prior Art References and On-Sale Bar Allegations Not Disclosed in Defendants’ First Amended Invalidity Contentions, or, in the Alternative, to Preclude Defendants from Relying Upon Undisclosed Prior Art and On-Sale Bar Allegations (“Defendants’ Opposition to Plaintiffs Undisclosed References SJ Motion”) on the basis that these appendices were not timely filed. Volterra’s Objections (Primarion’s Oppositions) at 16. In particular, although Defendants expressly referred to these appendices in their Opposition brief, which was filed on September 10, 2010, they failed to serve them on Plaintiff until September 16, 2010 and did not file them until the next day. Id. The appendices identified the specific documents and deposition transcripts that Defendants contend Volterra improperly failed to include in its interrogatory responses. Id.; see also Docket No. 1095 (Notice of Errata containing Appendices A & B). The Court concludes that exclusion of the appendices is not warranted.
First, there is no indication that Defendants’ omission was willful. Rather, Defendants state in their Notice of Errata that their failure to attach the appendices was inadvertent and the Court has no reason to doubt this representation, especially as Defendants apparently responded promptly to Plaintiffs inquiry by serving and filing the appendices within a week of filing their Opposition brief.
Second, Plaintiff was not materially prejudiced by the omission, as it received the appendices on September 16, 2010— eight days before its Reply brief was due. Although Plaintiffs time to respond was admittedly cut short, Plaintiff did not request an extension on its Reply brief and has never requested leave to file a supplemental brief addressing the specific testimony and documents disclosed in the appendices.
Accordingly, the objection is overruled.
d. Oppositions to MSJ Nos. 4 (Plaintiffs Anticipation SJ Motion) & 5 (Plaintiffs Obviousness SJ Motion)
Plaintiff objects to the following evidence cited in support of Defendants’ Opposition to Plaintiffs Motion for Partial Summary Judgment of No Anticipation Pursuant to 35 U.S.C. § 102 [MSJ No. 4] (“Defendants’ Opposition to Plaintiffs Anticipation SJ Motion”) and Defendants’ Opposition to Plaintiffs Motion for Partial Summary Judgment of Nonobviousness (“Defendants’ Opposition to Plaintiffs Obviousness SJ Motion”): 1) the PTO Initial Office Actions and reexamination orders discussed above, on the ground that this evidence has no relevance to invalidity; 2) the prosecution history of the '264 patent and ten prior art references that were not disclosed in Defendants’ First Amended Invalidity Contentions, on the basis that Defendants failed to comply with Patent Local Rule 3-3, which requires that a party must disclose all prior art. on which it intends to rely, in support of 'invalidity in its invalidity contentions; 3) opinions expressed by Drs. Fair and Garrou in supporting declarations based on the same prior art references; 4) the Stratakos Thesis as prior art, based on the arguments regarding the1 invention date advanced in Plaintiffs Prior Art SJ Motion; and 5) demonstrative exhibits 128 and 129 to the Gargano Deck, based on the assertion that these figures are not what they appear to be. Volterra’s Objections (Primarion’s Oppositions) at 4.
Defendants respond that the PTO Initial Office Actions and reexamination orders are admissible for the reasons discussed above. Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 13-14. They argue that the references that were not disclosed in their invalidity contentions should be considered because they are simply being used to provide “context for how a [person of ordinary skill in the art] would have understood certain terms of art” and not as prior art references, and moreover, that Volterra was aware of all of them because they were disclosed in interrogatory responses or expert reports, or were initially cited by Volterra. Id. at 10-11. Defendants further assert that Volterra’s objections to Hallberg and Stager should be overruled because Volterra was aware of this prior art and therefore, no prejudice will arise from considering it. Id. at 10. Defendants argue that the Court should overrule Plaintiffs objections to the opinions expressed in the declarations of Drs. Fair and Garrou that rely on the undisclosed references to the extent the underlying references are admissible. Id. at 13. Defendants also argue that the objections to the opinions of Drs. Fair and Garrou are untimely because those opinions were contained in the opening declarations of Drs. Fair and Garrou, filed on August 20, 2010, but Plaintiff failed to include the objections in its earlier evidentiary objections. Id. at 13. Defendants reject Plaintiffs objection to the Stratakos Thesis, citing the arguments that it advances in its opposition to Plaintiffs Prior Art SJ Motion. Id. at 14. Finally, Defendants argue that Exhibits 128 and 129 are simply graphic aids and are not evidence and further, that they are not misleading,
i.The Undisclosed Prior Art References
With respect to the patent prosecution history, Volterra has not pointed to any authority that persuades the Court that a party asserting an invalidity defense is required, under the Patent Local Rules, to list as prior art the prosecution history of the asserted patent in its invalidity contentions. Therefore, Volterra’s objection to Defendants’ reliance on the prosecution history is overruled. On the other hand, with respect to the remaining ten prior art references, the Court finds no authority for what appears to be an end-run around the Patent Local Rules by Defendants. As discussed further below, one of the goals of Patent Local Rule 3-3 is to ensure that a party asserting invalidity disclose the theories on which it intends to rely in a timely manner so as to avoid undue prejudice to the patent holder. Because Defendants failed to comply with the Patent Local Rules, the Court sustains Volterra’s objections as to the ten undisclosed prior art references listed in Volterra’s objections.
ii.Opinions Expressed by Drs. Fair and Garrou that rely on the Undisclosed References
Volterra also objects to the following opinions expressed by Drs. Fair and Garrou that “discuss or are dependent upon” one or more of Defendants’ undisclosed prior art references: 1) Fair Decl. in Support of Defendants’ Stratakos SJ Motion, ¶¶ 21, 35, 39, 40, 45, 58, 78-85, 86, 88 & 91 (citing to the undisclosed references cited in paragraph 58), as well as Appendix 2 at pp. 5-6; and 2) Garrou Decl. in Support of Defendants’ Stratakos SJ Motion, ¶¶ 20, 22, 24, 26-30, 35^1, 45-46, 51, 54, 56-57, 62, 66-72 and 78-79. Volterra’s Objections (Primarion’s Oppositions) at 13. These objections are sustained, except with respect to ¶¶ 36 and 37 of the Garrou declaration and ¶¶ 78-85, 86, 88 and 91 of the Fair declaration, which express opinions based on the prosecution history of the ’264 patent.
iii.Stratakos Thesis
Volterra objects to Defendants’ reliance on the Stratakos Thesis for the same reasons it argues that it is entitled to summary judgment that the Stratakos Thesis is not prior art. As discussed below, the Court concludes that fact questions remain as to whether the Stratakos Thesis is prior art and therefore, the objection is overruled.
iv. Exhibits 128 and 129
Volterra objects to Exhibits 128 and 129 to the Gargano Declaration on the basis that they are inauthentic and misleading. The Court overrules this objection because these exhibits are not offered as evidence but only to illustrate Defendants’ position regarding [REDACTED] in the accused product as compared to[REDACTED]. While the diagrams may or may not be helpful, the Court finds that they are not so misleading as to require that they be excluded.
e. Opposition to MSJ No. 7 (Plaintiffs Inequitable Conduct SJ Motion)
Volterra objects to evidence cited by Defendants in support of their Opposition to Plaintiffs Inequitable Conduct SJ Motion on the ground that these documents were not disclosed by Defendants in their interrogatory responses. Specifically, Volterra seeks exclusion of the following evidence: 1) excerpts of the prosecution file histories for the '522 and '264 patents, including Small Entity Status Declarations submitted by Volterra in connection with the '522 and '264 patent applications (Gargano Deck, Exs. 2, 94 & 95); 2) PTO orders granting reexamination requests for the '522 and '264 patents and documents related to the reexamination proceeding (Gargano Deck, Exs. 20, 21, 71, 73, 124, 144); 3) the first page of a PowerPoint presentation by Alan King and Anthony Stratakos listing Alan King as Chairman and CEO of Berkeley Integrated Technologies and Anthony Stratakos as President and CTO of the same entity (Gargano Deck, Ex. 115) and February 4, 1999 letter from Alan King to Jeff Staszak listing “Volterra People” (Gargano Deck, Ex. 116); 4) interrogatory response by Volterra stating that Berkeley Integrated Technologies, Inc. was incorporated in Delaware in August 1996 and changed its name to Volterra in 1997 and providing list of officers (Gargano Deck, Ex. 4); 5) section of Fair opposition declaration addressing materiality of ten prior art references listed in Defendants’ invalidity contentions in connection with their inequitable conduct affirmative defense (Fair 9/10/10 Opposition Deck, ¶¶ 58-185). In addition, Volterra seeks exclusion of two arguments it contends should have been disclosed by Defendants in their discovery responses: 1) the argument that any undisclosed prior art reference is material based on the fact that the PTO has either granted reexamination of the Burstein Patents based on the reference or issued any subsequent office action based upon it; and 2) the argument that Volterra’s BIT-Buck prototype would have been material to the patentability of the Burstein Patents.
Defendants assert that these objections should be overruled. First, with respect to Gargano Exs. 2, 94 and 95, the prosecution file histories of the '522 and '264 patents (which include the Small Entity Status Declarations for the '264 and '522 patents), Defendants argue that this evidence is admissible because Defendants’ interrogatory responses state that Volterra engaged in inequitable conduct “for at least the reasons set forth in Defendants’ First Amended Answer ... incorporated herein by reference.” Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 6 (citing Gargano Deck, Ex. 236 (Infineon AG’s Second Amended and Supp. Response to Interrog. No. 8, 4/26/10)). Defendants’ First Amended Answer, in turn, includes an inequitable conduct counterclaim based on allegations related to the prosecution of the patents in suit, including allegations based on the Small Entity Status Declarations for the '522 and '264 patents, which were signed by Anthony Stratakos. First Amended Answer [docket no. 92], Counterclaim ¶¶ 32-38.
Second, Defendants assert that Exhibits 115 and 116 to the Gargano Declaration are admissible because in their interrogatory responses, Defendants stated that Volterra committed inequitable conduct by withholding “the Bit-Buck voltage regulator (identified during the depositions of Dr. Stratakos, Dr. Lidsky, and Dr. Bur-stein ) developed by Volterra and/or Berkeley Integrated Technologies, Inc.” Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 7 (citing Gargano Deck, Ex. 236) (emphasis added). Defendants further point out that Exhibit 115 was marked as exhibit 9 during the July 15, 2009 deposition of Dr. Lidsky, and that Dr. Lidsky testified about the slides showing the Bit-Buck voltage regulator contained in that exhibit. Id. (citing Ex. 115 (showing exhibit tag on document) and Ex. 233 (excerpt of 7/15/09 Lidsky deposition transcript)). Similarly, Exhibit 116 was marked as exhibit 26 at the July 28, 2009 deposition of Dr. Stratakos and Dr. Stratakos was asked questions about the document during his deposition. Id. (citing Ex. 116 (showing exhibit tag on document) and Ex. 234 (excerpt of 7/28/09 Stratakos deposition transcript)).
Third, Defendants argue that Exhibit 141 is admissible because it is Volterra’s own interrogatory responses and therefore is an admission.
Fourth, Defendants argue that they adequately disclosed in their interrogatory responses their position that the PTO Office Actions and orders granting the reexamination requests show that the undisclosed prior art references are material to patent-ability. In particular, Defendants assert that their “interrogatory responses expressly disclose that Defendants’ case of inequitable conduct is based inter alia on the pending reexaminations of the '264 and '522 patents, which necessarily includes the documents filed in these reexaminations.” Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 7. Defendants point also to their further statement in tsheir interrogatory responses that Volterra has taken “positions in the reexamination proceedings that contradict positions taken during this litigation” and cited examples. Id.
Fifth, Defendants assert that Dr. Fair’s opinions addressing the materiality of the references that Defendants contend were withheld from the PTO during patent prosecution are proper because materiality is a proper subject of expert opinion and the opinions were timely submitted.” Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 8.
Sixth, Defendants argue that their argument relating to the BIT-Buck voltage regulator is admissible because they stated in their interrogatory responses that Plaintiff committed inequitable conduct by withholding the BIT-Buck voltage regulator, as discussed above.
i.Prosecution History and Small Entity Status Declarations
The Court overrules Volterra’s objections to Defendants’ rebanee on the prosecution history and the Small Entity Status Declarations. Defendants’ interrogatory responses made clear that their inequitable conduct claim was based, in part, on conduct that occurred during the prosecution of the patent. Accordingly, Volterra had sufficient notice that Defendants intended to rely on the prosecution history file. In addition, Defendants expressly incorporated their First Amended Answer, which included allegations in support of their inequitable conduct counterclaim and affirmative defense based on the Small Entity Status Declarations. Therefore, the Court finds that Gargano Decl., Exs. 2, 94 and 95 are admissible.
ii.Exhibits 115 and 116
The Court overrules Volterra’s objection to Exhibit 115 and sustains its objection to Exhibit 116. Exhibit 115 is the first page of a Power-Point presentation that included a slide depicting Volterra’s BIT-Buck voltage regulator. See Declaration of Daniel R. Foster in Support of Defendants’ Response to Plaintiffs Objections to Evidence in Support of Defendants’ Oppositions to Volterra’s Motions for Summary Judgment and Plaintiffs’ Objections to Evidence in Support of Defendants’ Reply Memoranda (“Foster Decl.”), Ex. 233 (excerpt of 7/15/09 Lidsky Depo.) at 86. This document was marked as an exhibit during the deposition of Dr. Lid-sky, who was asked to testify about the contents of the document, including the slide depicting Volterra’s BIT-Buck voltage regulator, at some length. Id. Accordingly, Defendants’ interrogatory response referencing the BIT-Buck voltage regulator identified during Dr. Lidsky’s deposition gave Plaintiff sufficient notice that Defendants intended to rely on this document.
On the other hand, Defendants’ interrogatory response did not provide Volterra sufficient notice as to Exhibit 116. That document is an email message by Alan King listing “Volterra people.” Gargano Decl., Ex. 116. It contains no mention of the BIT-Buck voltage regulator and although it was marked as an exhibit at the deposition of Dr. Stratakos, the questions that were asked about the document during Dr. Stratakos’ deposition also did not relate to the BIT-Buck voltage regulator. See Foster Deck, Ex. 234 (excerpt of 7/28/09 deposition of Dr. Stratakos) at 137-144. As a result, Defendants’ interrogatory responses stating that then-inequitable conduct defense was based on the BIT-Buck voltage regulator identified during Dr. Stratakos’ deposition did not put Volterra on notice that Defendants intended to rely on the email offered as Exhibit 116. Volterra’s objection to Exhibit 116 is sustained.
iii.Volterra’s Interrogatory Responses
Exhibit 141 of the Gargano Declaration is an excerpt from Volterra’s own interrogatory responses. While Defendants are incorrect in their assertion that Volterra’s interrogatory responses are binding admissions (and thus admissible), see Synopsys, Inc. v. Magma Design Automation, Inc., 2006 WL 825277 (N.D.Cal., March 30,2006) (Chesney, J.) (“answers were given in response to interrogatories, rather than to requests for admissions and, consequently, are not binding”) (citing Fed.R.Civ.P. 33(c) and Fed.R.Civ.P. 36(b)); Fort Hall Landowners Alliance, Inc. v. Bureau of Indian Affairs, 2007 WL 2187256, at *2 (D.Idaho, July 16, 2007) (noting that answers to interrogatories “are not binding admissions in this circuit”) (citing Victory Carriers Inc. v. Stockton Stevedoring Co., 388 F.2d 955, 959 (9th Cir.1968) (holding that answers to interrogatories not given the same binding effect conferred on responses to requests for admission) and Donovan v. Crisostomo, 689 F.2d 869, 875 (9th Cir.1982) (stating that “[ijnterrogatories do not supersede or supplement pleadings, nor do they bind parties as an allegation or admission in a pleading or pre-trial order”)), the Court also finds no authority for the proposition that a party’s own interrogatory responses may be excluded on the basis that the party seeking to rely on them did not expressly state as much in their interrogatory responses. Therefore, Plaintiffs objection to Exhibit 141 is overruled.
iv.Argument that Undisclosed Prior Art is Material Based on Fact that PTO has Granted Reexamination Request
Volterra argues that Defendants should not be allowed to rely on the PTO decisions relating to the reexamination request to establish materiality because they did not identify these decisions in their interrogatory responses. Because the Court does not reach the question of whether the undisclosed prior art is material to patent-ability, it declines to rule on this objection.
v.Expert Opinion Addressing Materiality of Undisclosed References
In paragraphs 58-185 of the Fair 9/10/10 Opposition Deck, Dr. Fair addresses the materiality of the references that Defendants identified in their interrogatory responses as the ones that allegedly were not disclosed by individuals at Volterra during the prosecution of the asserted patents. Because the Court does not reach the question of whether the undisclosed prior art is material to patentability, it declines to rule on this objection.
vi.Argument that BIT-Buck Voltage Regulator is Material to Patentability
Because the Court does not reach the question of whether the undisclosed prior art is material to patentability, it declines to rule on this objection.
f. MSJ No. 8 (Plaintiffs On-Sale Bar SJ Motion)
Volterra objects to several documents cited by Defendants in support of their Opposition to Plaintiffs On-Sale Bar SJ Motion on the ground that these documents were not disclosed by Defendants in their interrogatory responses. Specifically, Volterra seeks exclusion of the following documents: 1) Docket No. 358 (Prototype Tracking Document, dated 1/6/99); 2) Gargano Deck, Exs. 107-108 (Volterra’s responses to Primarion Interrogatory Number 8); 3) Gargano Deck, Ex. 109 (Volterra email dated 1/20/99); and 4) Ex. 100 to Declaration of David Dolkas in Support of Defendants’ Opposition to Plaintiffs Motion for Preliminary Injunction. Defendants respond that the interrogatory responses are admissible as party admissions. They further contend that the remaining documents are admissible because Volterra had notice of them. In particular, Defendants point out that: 1) the Prototype Tracking Document (Docket Number 358) was offered by Volterra as an exhibit in support of its preliminary injunction motion; 2) Exhibit 109 to the Gargano Declaration was marked as an exhibit by Defendants on August 7, 2009, at the deposition of Dr. Burstein; and 3) Exhibit 100 to the Dolkas Declaration was cited by Defendants in their opposition to the preliminary injunction motion for the same purpose as it is offered here, namely, to show delivery of the Tut prototype in December 1998. The Court overrules Plaintiffs objections as to all of the documents except Exhibit 109.
In its interrogatories, Volterra asked Defendants to “describe in detail ALL facts that YOU contend support EACH defense, including without limitation by IDENTIFYING ALL DOCUMENTS which support or RELATE to EACH affirmative defense.” See Comb. Fisher Deck, Ex. 28 (Defendant Primarion Inc.’s Third Supplemental and Amended Response to Plaintiff Volterra Semiconductor Corporation’s Second Set of Interrogatories [Supplemented as to Interrogatory No. 14]) (“Primarion 6/18/10 Supp. Interr. Responses”) at 4 (interrogatory 14); Ex. 29 (Defendant Infineon Technologies North America Corp.’s Third Amended and Supplemental Responses to Plaintiff Volterra Semiconductor Corporation’s Second Set of Interrogatories [Supplemented as to Nos. 4 and 8] (“Infineon 6/18/10 Supp. Interr. Responses”)) at 401 (interrogatory no. 8); Ex. 30 (Defendant Infineon Technologies AG’s Third Amended and Supplemental Responses to Plaintiff Volterra Semiconductor Corporation’s Second Set of Interrogatories [Supplemented as to Interrogatory Nos. 4 and 8] (“Defendant Infineon AG’s 6/18/10 Supp. Interr. Responses”)) at 403. Defendants’ initial responses in connection with their on-sale bar defenses were brief and conclusory and did not list any documents. Subsequently, Volterra brought a motion to compel seeking more complete responses, and the Court expressly ordered that Defendants provide all facts, documents and witnesses related to their affirmative defenses. See May 7, 2010 Hearing Transcript [Sealed Version]. Despite the Court’s order, in their supplemental responses Defendants again failed to identify any documents supporting their on-sale bar defense. Thus, it is within the Court’s discretion to exclude all of the undisclosed documents to which Volterra objects on the basis of Defendants’ failure to comply with the Court’s order. See Avila v. Willits Environmental Remediation Trust, 2007 WL 108347, at *4 (N.D.Cal. Jan. 10, 2007) (holding that plaintiffs were barred from introducing evidence in opposition to summary judgment that was not included in discovery responses despite representation to court in response to defendant’s motion to compel that plaintiffs discovery responses were “complete”).
Having found that Defendants failed to comply with the Court’s order, however, the Court declines to adopt the remedy sought by Plaintiff, namely, the exclusion of virtually all of the evidence cited by Defendants in support of their on-sale bar defenses, because Plaintiff had sufficient notice as to at least some of the documents that Defendants’ on-sale bar defense would rely on them. First, the Prototype Tracking Document (Docket Number 358) was cited by Volterra in connection with the preliminary injunction and Defendants expressly referred to Volterra’s use of Prototype Tracking Documents in connection with their on-sale bar defense in their amended invalidity contentions. See Comb. Fisher Deck, Ex. 39 (First Amended Invalidity Contentions) at 7 (contending in support of invalidity under § 102(b) that “Plaintiff ... admits to using Prototype Tracking Documents (‘PTD’) to track delivery and maintain the confidentiality of information it disclosed to Intel [and] has failed to produce any PTDs that cover the December 1998 delivery to ESG”). Therefore, the Court ov