United States District Court, D. Minnesota
Benjamin G. Damstedt, Esq., Timothy S. Teter, Esq., Jeffrey S. Karr, Esq., Nathan K. Cummings, Esq., Cooley LLP, Palo Alto, CA; Kurt J. Niederluecke, Esq., and Ted C. Koshiol, Esq., Fredrikson & Byron, PA, Minneapolis, MN, for Plaintiff.
David R. Fairbairn, Esq., Catherine A. Shultz, Esq., Katherine J. Rahlin, Esq., Stuart A. Nelson, Esq., Kinney & Lange, PA, Minneapolis, MN, for Defendant.
MEMORANDUM OPINION AND ORDER
ANN D. MONTGOMERY, District Judge.
On October 31, 2013, the undersigned United States District Judge heard oral argument on Plaintiff Everspin Technologies, Inc.'s ("Everspin") Motion for Summary Judgment for Infringement of U.S. Patent No. 5, 861, 328 (the "'328 Patent") [Docket No. 55]. On December 20, 2013, Defendant NVE Corporation ("NVE") argued its Motion for Summary Judgment on Laches [Docket No. 76]. For the reasons discussed below, Everspin's motion for summary judgment is granted in part and denied in part and NVE's motion for summary judgment is granted.
A. Procedural Posture
On February 24, 2012, Everspin sued NVE, alleging that NVE products infringe Everspin's '328 Patent and its U.S. Patent No. 5, 831, 920 (the "'920 Patent"). See Compl. [Docket No. 1]. Everspin brought this suit after NVE sued Everspin for alleged infringement of three NVE patents. Pl.'s Mem. Opp'n to Summ. J. on Laches [Docket No. 90], at 12. NVE is accused of manufacturing and selling GMR sensors, encoders, and isolators which allegedly infringe Everspin's '328 Patent and '920 Patent, entitled "GMR Device Having a Sense Amplifier Protected by a Circuit for Dissipating Electric Charges."
Everspin has not moved for summary judgment on infringement of the '920 Patent, and argues that this suit, including the motion for summary judgment on the '328 Patent infringement claim are defensive in nature. NVE argues Everspin is not entitled to summary judgment because there are fact questions concerning whether NVE's isolator products were manufactured in the method described by Claim 25 of the '328 Patent.
Because Everspin did not file its patent infringement claims against NVE until February 2012, NVE argues Everspin waited too long to file suit, causing unreasonable delay and economic prejudice. NVE argues it is therefore entitled to equitable relief under the doctrine of laches. Everspin responds that NVE's motion for summary judgment on the issue of laches is premature and unwarranted.
B. The '328 Patent
The '328 Patent, entitled "Method of Fabricating GMR Devices, " teaches a method of manufacturing magnetic memory cells in connection with semiconductors using giant magnetoresistive ("GMR") materials as the memory element. Decl. Katherine J. Rahlin [Docket No. 45] Ex. B ('328 Patent) at 1:4-8. Claim 25 teaches:
A method of fabricating magnetic memory devices comprising the steps of:
providing a substrate structure with a semiconductor device formed therein, the substrate structure having a surface with metal interconnects connected to the semiconductor device;
forming a dielectric on the surface of the substrate structure and on the metal interconnects, the dielectric defining a supporting surface;
forming vias through the dielectric from the supporting surface to the metal interconnects;
depositing a metal system through the vias to the metal interconnects to provide electrical contacts in the supporting surface;
disposing and patterning films of giant magneto-resistive material on the supporting surface of the dielectric so as to form at least one magnetic memory cell in electrical communication with the electrical contacts in the supporting surface; and
disposing a dielectric system on the magnetic memory cell so as to seal the cell and provide a barrier to ambient conditions.
Id. at 11:10-35 (emphasis added). Motorola, Inc. ("Motorola") employees filed the '328 Patent on October 7, 1996. Catherine A. Shultz Decl. [Docket No. 73] Exs. 130, 131. In 2004, Motorola assigned the '328 Patent to Freescale Semiconductor, Inc. ("Freescale"). Id . Ex. 131. And in 2009, Everspin became the owner by assignment of the '328 Patent. Id.
C. NVE's Use of GMR Material
In the early 1990s, NVE developed magnetic sensors using GMR materials. Shultz Decl. Ex. 101. NVE concedes the making of these sensors meets all the limitations of Claim 25 of the '328 Patent, except, NVE argues, the GMR material forms a magnetic sensor instead of a memory cell. Edward Murdock, PH.D. Decl. [Docket No. 69] ¶¶ 20-21. Everspin does not claim NVE's magnetic sensors infringe the '328 Patent. See Compl. NVE also developed signal isolators, using essentially the same manufacturing process, namely disposing and patterning GMR material so as to form GMR resistors and sensors for signal isolation. ...