Intel Corp. v. Amberwave Systems Corp.

Citations: 233 F.R.D. 416; 63 Fed. R. Serv. 3d 653; 2005 U.S. Dist. LEXIS 29830; 2005 WL 3199043Docket: No. CIV.A. 05-301-KAJ

Court: District Court, D. Delaware; November 28, 2005; Federal District Court

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Intel Corporation is seeking a declaratory judgment of non-infringement regarding patent rights held by AmberWave Systems Corporation, specifically concerning U.S. Patent No. 6,946,371 (the "371 patent"). Intel filed a motion to supplement its complaint to include this new claim. The procedural history reveals that AmberWave initiated the dispute by sending a cease-and-desist letter to Intel on May 9, 2005, referencing U.S. Patent No. 6,831,292 (the "292 patent") and two allowed applications. Intel subsequently filed its original complaint on May 17, 2005, seeking a declaration of non-infringement of the '292 patent and reserving the right to amend for the other patents.

AmberWave responded by filing a separate lawsuit in Texas on July 15, 2005, alleging infringement of U.S. Patent No. 6,881,632 (the "632 patent"). Intel moved to transfer that case to the current court, which was granted due to substantial overlap between the cases. The '499 application became the '371 patent on September 20, 2005, and AmberWave filed an infringement complaint shortly thereafter. Intel's motion recognizes the overlap between its existing non-infringement claims and the proposed supplementation. Intel asserts that the technologies of the '292 and '371 patents are closely related, justifying their inclusion in the same legal proceedings for efficiency and fairness. The '292 patent involves semiconductor structures utilizing strained material layers and controlled impurity diffusion gradients.

The ’371 patent, titled "Methods of Fabricating Semiconductor Structures Having Epitaxially Grown Source and Drain Elements," pertains to the fabrication of semiconductor devices featuring facet-less raised source and drain elements. The technology relates closely to another patent, leading to simultaneous infringement claims against the same Intel devices. AmberWave filed its infringement action before Intel's non-infringement action, arguing that this sequence should determine jurisdictional priority. However, prior analysis by Judge Leonard Davis in a related case indicated that while the patents do not raise identical issues, they involve closely related subject matter, suggesting substantial overlap in core issues. This overlap includes shared technology, infringing devices, and similar evidence required for both patents during litigation. Additionally, AmberWave's claims of willfulness imply that Intel's decision-making and negotiations with AmberWave will also be relevant to both patents. Overall, the court recognizes significant commonalities in the issues surrounding the infringement of both the ’371 and ’292 patents.

The case at hand is determined to be the first-filed action, occurring four months before AmberWave's filing related to the ’371 patent in Texas. AmberWave contends that it cannot be the first-filed action because the proposed supplementation does not relate back to the original complaint's filing date. They argue that the ’499 application could not form the basis of any claims until it became the ’371 patent on September 20, thus not relating back to the May filing date. AmberWave cites GAF Building Materials Corp. v. Elk Corp. to support their position, emphasizing that an issued patent is necessary for subject matter jurisdiction in patent disputes. However, the ruling in GAF does not prevent the supplementation of a case with a dispute over a later-issued patent when subject matter jurisdiction already exists. The court finds AmberWave's arguments unpersuasive and concludes that for determining the priority of litigation, it is appropriate to consider this case as the first-filed action. The court also notes that allowing supplementation will not unduly prejudice any parties. Therefore, Intel’s Motion is granted, requiring Intel to file its Supplemental Complaint within three days, with AmberWave required to respond within ten days. The court emphasizes the importance of sound judicial administration and seeks to avoid burdening the Eastern District of Texas with overlapping disputes.