Order Denying Xycarb's Motion To Bifurcate And Lam's Motion For Summary Judgment, Lam Research Corp. v. Schunk Semiconductor, Case No. C-03-1335-EMC.

On August 22, 2014, Judge Edward Chen denied defendant Xycarb Ceramics, Inc.'s ("Xycarb") motion for a bifurcated trial and Lam Research Corp.'s ("Lam") motion for partial summary judgment, deeming Lam's motion to be an improper motion for reconsideration.

Motion to Bifurcate

Lam filed this lawsuit in May 2003, alleging Xycarb and its parent Schunk Semiconductor, infringe U.S. Patent No. 5,074,456 and Reissue Patent No. RE 41, 266. Fast forward eleven years. Xycarb moved for a bifurcated trial, following a recent claim construction order issued by Judge Chen. Xycarb argued bifurcation was warranted (1) to prevent juror confusion, (2) to conserve judicial resources, and (3) appropriate given Xycarb's "overwhelming likelihood" to prevail on the question of liability given the court's claim construction.

Judge Chen denied Xycarb's motion. Judge Chen found that the question of liability and damages were not separate questions, relying in part of the fact that Lam was seeking enhanced damages due to Xycarb's and Schunk's alleged willful infringement. Judge Chen also concluded that a bifurcated proceeding would use up scarce judicial resources since it would entail a second trial and cause additional delay. As for Xycarb's argument it bifurcation was warranted in light its alleged "overwhelming likelihood" of prevailing, Judge Chen found that this was an unsubstantiated argument that was undermined by the fact that Xycarb had not moved for summary judgment.

Motion for Summary Judgment Deemed To Be Motion for Reconsideration

Lam filed a motion for partial summary judgment on the disputed issue that Claims 33 and 36 of the '266 reissue patent "both disclose and claim a shrink fit method of holding." Lam relied on certain positions taken by Xycarb in its 2010 invalidity contentions as putative admissions supporting Lam's motion. Specifically, Xycarb's invalidity contentions claimed the Claims 33 and 36 disclosed "shrink fit bonding" and were therefore invalid in light of certain allegedly similar prior art. Xycarb's contentions contained a number of reservations—among them, a reservation that its contentions did not constitute admissions.

Lam had previously pointed to the invalidity contentions in motion for reconsideration it had filed after Judge Chen's claim construction order, and Judge Chen found that Lam's motion for summary judgment was, in fact, a "second motion for reconsideration":

To begin, Lam's motion – while characterized as a "motion for partial summary judgment" – is properly construed as either (1) a second motion for reconsideration of this Court's claim construction order or, perhaps, (2) a motion for reconsideration of the Court's denial of the first motion for reconsideration. Either way, Civil Local Rule 7-9 articulates the standard for motion for reconsideration – a standard the Court has previously found was not met by Lam's recent discovery of three-and-half year old invalidity contentions.

(Emphasis in original.) Judge Chen also rejected Lam's argument that statements in Xycarb's invalidity contentions were judicial admissions. Judge Chen found that the contentions were, at most, disputed statements of fact regarding Xycarb's understanding of the Patent-in-Suit. Judge Chen also noted the substantial reservations that preceded the contentions, including Xycarb's statement that they were "not admissions." Judge Chen also determined that claim construction was not an issue for a party to "admit," but rather a question of law to be determined by the Court.

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