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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

BARCO N.V., a Belgian corporation

Plaintiff,

v.

TECHNOLOGY PROPERTIES LTD., PATRIOT

SCIENTIFIC CORP., and ALLIACENSE LTD.,

Defendants.

Case Number 5:08-cv-05398 JF (HRL)

ORDER1 GRANTING PLAINTIFF’S

MOTION FOR LEAVE TO FILE

SURREPLY, DENYING

PLAINTIFF’S MOTION FOR

SUMMARY JUDGMENT

WITHOUT PREJUDICE, AND

GRANTING DEFENDANT’S

MOTION FOR RELIEF

PURSUANT TO FED. R. CIV. P.

56(d)

[Re: Docket Nos. 112, 148, 156]

Plaintiff Barco N.V. (“Barco”) moves for summary judgment of non-infringement of U.S.

Patent No. 5,809,336 (“the ‘336 Patent”). In response, Defendants Technology Properties Ltd.,

Patriot Scientific Corp., and Alliacense (referred to herein collectively as “TPL”) seek relief

pursuant to Fed. R. Civ. P. 56(d). The Court heard oral argument on February 25, 2011. For the

reasons set forth below, the Court will grant TPL’s motion and will deny Barco’s motion without

prejudice.

2 This matter is one of three related cases. See Acer v. Technology Properties Ltd., et al.

08-00877-JF/HRL; HTC v. Technology Properties Ltd., et al. 08-00882-JF/HRL.

3 U.S. Patent Nos. 5,784,584 (“the ‘584 Patent”), 5,440,749 (“the ‘749 Patent”), and

6,598,148 (“the ‘148 Patent”)

4 TPL asserts claims 1,6, 7, 9-11, and 13-16 of the ‘336 Patent against Barco.

I. BACKGROUND

Barco filed the instant action2 on December 1, 2008, seeking a judicial declaration that

several patents owned by TPL are invalid and/or not infringed.3 On February 17, 2009, TPL

asserted counterclaims with respect to the ‘749 Patent, and to U.S. Patent Nos. 5,530,890 (“the

‘890 Patent”) and 5,809,336 (“the ‘336 Patent”). TPL served infringement contentions pursuant

to Patent L.R. 3-1 on February 20, 2009. On June 17, 2009, the Court stayed this action and all

related cases because of developments in the reexamination of several of the patents. The ‘336

Patent subsequently emerged from reexamination, and the Court dissolved the stay. TPL served

its amended infringement contentions with respect to the ‘336 Patent on April 30, 2010. The

Court denied TPL’s motion to amend its infringement contentions further on September 9, 2010.

Barco then moved for summary judgment. It claims that TPL’s infringement contentions

with respect to the ‘336 Patent do not state how the accused products meet the asserted claim

limitations and that TPL does not have evidence of infringement.4 TPL argues that summary

judgment would be premature because the Court has yet to construe the claims at issue and

discovery is still ongoing.

II. LEGAL STANDARD

A motion for summary judgment should be granted if there is no genuine issue of

material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P.

56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202

(1986). The moving party bears the initial burden of informing the Court of the basis for the

motion and identifying the portions of the pleadings, depositions, answers to interrogatories,

admissions, or affidavits that demonstrate the absence of a triable issue of material fact. Celotex

5 Barco does not manufacture microprocessors. Rather, it purchases products that contain

microprocessors from manufacturers such as Texas Instruments, and then incorporates the

microprocessors into its products. MSJ at 1.

Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

If the moving party meets this initial burden, the burden shifts to the non-moving party to

present specific facts showing that there is a genuine issue for trial. Fed. R. Civ. P. 56(e);

Celotex, 477 U.S. at 324. A genuine issue for trial exists if the non-moving party presents

evidence from which a reasonable jury, viewing the evidence in the light most favorable to that

party, could resolve the material issue in his or her favor. Anderson, 477 U.S. 242, 248-49, 106

S.Ct. 2505, 91 L.Ed.2d 202; Barlow v. Ground, 943 F.2d 1132, 1134-36 (9th Cir. 1991).

However, “[a] non-movant’s bald assertions or a mere scintilla of evidence in his favor are both

insufficient to withstand summary judgment.” F.T.C. v. Stefanchik, 559 F.3d 924, 929 (9th Cir.

2009).

III. DISCUSSION

Barco relies on Exigent Technology, Inc. v. Atrana Solutions, Inc., 442 F. 3d 1301, 1309

(Fed. Cir. 2006) for the proposition that summary judgment of non-infringement is appropriate

where the moving party shows that “the patentee [has] no evidence of infringement and [points]

to the specific ways in which accused systems [do] not meet the claim limitations.” It also

asserts that under Celotex, “the burden on the moving party may be discharged by ‘showing’-that

is, pointing out to the district court-that there is an absence of evidence to support the nonmoving

party’s case.” 477 U.S. at 325 (1986).

Here, Barco contends that it is not liable for infringement because each claim of the ‘336

Patent requires a microprocessor chip with a variable speed clock, while the microprocessors in

Barco’s products contain only fixed clocks.5 According to Barco, this distinction obviates the

need to construe any other claims before consideration of its motion for summary judgment

because the accused products simply do not contain a component that meets the definition of a

6 Barco has stipulated to the definition of “variable speed” as construed in a previous

claim construction in the Eastern District of Texas. MSJ at 2 n. 1. The term has been defined as

“capable of operating at different speeds.” Id.

variable speed clock.6 Barco also argues that TPL will not be able to produce evidence that any

accused product infringes the asserted claims of the ‘336 Patent because TPL’s infringement

contentions are purely speculative.

TPL contends that even under Exigent, Barco’s motion for summary judgment is

premature. In Exigent, claim construction already had occurred. In this case, the parties have

not completed fact discovery, nor has the Court set a date for the close of fact discovery, and at

this point in the litigation the only individuals who have been deposed are the inventors of the

disputed patents and claim construction experts. According to TPL, the focus of discovery has

been directed at the construction of the asserted claims because definition of the claims is a

necessary predicate to determining infringement.

Indeed, in several of the cases relied upon by Barco, summary judgment of noninfringement

was granted only after the court conducted a Markman hearing or after the close of

fact discovery. Exigent, 442 F. 3d at 1301; TechSearch L.L.C. v. Intel Corp., 286 F.3d 1360

(Fed. Cir. 2002); Utstarcom , Inc. v. Starent Networks, No. 07-CV-2582, 2009 U.S. Dist. LEXIS

93869 (N.D. Ill. Sep. 16, 2009) (holding that in order to grant summary judgment the court must

determine the meaning of the claim before evaluating whether or not the accused product meets

the claim limitations). TPL argues that the existing factual questions related to infringement of

the ‘336 Patent cannot be determined based on infringement contentions alone. It emphasizes

that discovery is necessary to with respect to whether the accused products contain the asserted

claim limitations, and seeks relief pursuant to Fed. R. Civ. P. 56(d).

In order to obtain relief pursuant to Rule 56(d), a party must establish that it has been

diligent in conducting discovery and that “there is some basis for believing that the information

sought actually exists.” Blough v. Holland Realty, Inc., 574 F.3d 1084, 1091 n. 5 (9th Cir. 2009).

According to TPL, information unquestionably exists that will describe the operation of the

7 TPL indicates that it has subpoenaed documents from chip manufacturers in an effort to

obtain key chip schematics such as product level datasheets, block diagrams, source code, and

technical presentations that will enable TPL to determine the design and operation of the

microprocessors in the accused products. Opp. Br. at 24-25; See Ex. I to Mar Decl. ISO

Opposition to Summary Judgment, Dkt. 136. Additionally, TPL served its First Request for

Production of Documents in February 2009, seeking documents that would show (1) the

engineering design of the microprocessors, (2) any testing Barco has performed on the

microprocessors, and (3) which Barco products contain the microprocessor technology at issue.

Ex. B to Mar. Decl. ISO Opposition to Summary Judgment, Dkt. 136. Barco maintains that it

does not possess the information sought by TPL and has informed TPL of this fact. It argues

further that any concerns TPL harbored with regard to unfulfilled discovery requests should have

been raised by a motion to compel.

disputed microprocessor chips, and in fact this information is the subject of outstanding

document requests directed to Barco and the chip manufacturers.7 Barco argues that TPL has not

exercised diligence in discovery because, after two years of litigation, it just now is seeking

information from the most obvious source–the chip manufacturers. However, the issue is not

whether TPL has conducted discovery with seamless precision, but whether TPL has worked in

earnest during the relevant period. It appears that TPL has been consistent in its discovery

efforts throughout the course of litigation. Moreover, the Court believes that analysis of TPL’s

infringement contentions will be best informed by formal construction of the claims asserted

therein.

Barco seeks leave to file a surreply and has included a copy of its surreply in its motion

for leave. Dkt. 156. The Court finds this matter suitable for resolution without oral argument,

and will vacate the hearing date of April 22, 2011. See Civ. L.R. 7-1(b). The motion for leave

will be granted. In its surreply, Barco argues that because the parties have agreed upon the terms

most critical to its alleged infringement of the ‘336 Patent, a claim construction hearing would

serve no useful purpose. The surreply cites to a chart of agreed-upon terms presented in

conjunction with the parties’ Joint Claim Construction Statement. Ex. A to Joint Claim

Construction Statement, Dkt. 110. However, while the Court appreciates the fact that the parties

have agreed upon definitions for many of the terms relevant to TPL’s claims, review of the Joint

Claim Construction Statement itself shows that several potentially significant terms remain in

dispute. Terms such as “ring oscillator” and “operates asynchronously to” have been identified

by the parties in previous submissions as being critical to the resolution of the issues in the

instant case, but these terms do not appear to be the subject of agreement and in fact appear in

the chart of disputed claim terms. Ex. B to Joint Claim Construction Statement, Dkt. 110.

In its surreply, Barco requests that the Court reserve ruling on the motion for summary

judgment rather than deny the motion without prejudice so that Barco need not re-file its motion

after claim construction has taken place. However, for the reasons stated above, any future

motion for summary judgment will need to address additional evidence obtained in discovery.

IV. ORDER

Good cause therefor appearing, Barco’s motion for leave to file a surreply is GRANTED.

Barco’s motion for summary judgment of non-infringement of the ‘336 Patent is DENIED

WITHOUT PREJUDICE, and TPL’s motion for relief pursuant to Fed. R. Civ. P. 56(d) is

GRANTED.

IT IS SO ORDERED.

DATED: March 8, 2011 _______________________________

JEREMY FOGEL

United States District Judge