An in-chambers order issued Wednesday by Judge George H. Wu denied defendants Apple, Broadcom, and Avago Technologies’ motion to reopen discovery in the patent saga filed by the California Institute of Technology (Caltech) over the intellectual property underlying certain semiconductor chips and Apple products incorporating those chips. The court sided with Caltech because, among other factors, it found that the defendants were not diligent in obtaining initial discovery.
The high-profile case is over five years old and was recently remanded for a second trial after a trip to the Federal Circuit. In February, an appellate panel nixed a jury award of $1.1 billion in favor of Caltech.
The opinion said that the trial judge had not adequately accounted for the possibility of double recovery in view of patent licensing negotiation procedure. As such, the panel directed the court to retry the issue of damages.
After remand, the Los Angeles, Calif. court overseeing the dispute permitted the defendants to move to reopen discovery, and in this week’s redacted opinion considered their request. Specifically, Apple and Broadcom sought information relating to Caltech’s “post-trial accusations in another case that unmarked Microsoft products infringe the asserted patents.”
Using the Ninth Circuit’s multi-factor test, the court pointed to Caltech’s argument that the discovery sought would burden it and other third parties from both a time and expense perspective very late in the game. “Defendants’ discovery request would change this case from a limited retrial on damages to involve predicate complex licensing and product issues that fall outside the scope of this case,” Judge Wu opined in declining to have “a trial within a trial” on issues not part of the suit.
Further, the opinion cited the defendants’ apparent lack of diligence in investigating the sub-licensing issue they seek to delve into now. The court concluded that the defendants could have explored the defense earlier, a factor that weighed heavily against granting their motion.
As a next step, Judge Wu directed the parties to meet, confer, and file a joint status report concerning trial preparations within a week.
Caltech is represented by Quinn Emanuel Urquhart & Sullivan. Apple and Broadcom are represented by Wilmer Cutler Pickering Hale and Dorr LLP.
