1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 KAWASAKI JUKOGYO KABUSHIKI Case No. 22-cv-04947-PCP

KAISHA,

8 Plaintiff, ORDER GRANTING MOTION TO 9 STRIKE IN PART AND DENYING IN v. PART 10 RORZE CORPORATION, et al., Re: Dkt. No. 177 11 Defendants.

12 13 Pursuant to Patent Local Rule 3-3, Federal Rules of Civil Procedure 26 and 37, and the 14 Court’s inherent authority, plaintiff Kawasaki Jukogyo Kabushiki Kaisha (“Kawasaki”) has 15 moved for an order striking certain portions of the Opening Expert Report Regarding Invalidity 16 submitted by Dr. Richard Hooper, who has been disclosed as an expert witness for defendants 17 Rorze Corporation and Rorze Automation, Inc. (collectively, “Rorze”). Kawasaki moves to strike 18 those portions on the grounds that Dr. Hooper’s report asserts theories of invalidity that were not 19 disclosed in Rorze’s Amended Invalidity Contentions and theories of invalidity that exceed the 20 numerical limit agreed to by the parties and ordered by the Court in the Joint Stipulation and Order 21 Regarding Case Narrowing Procedure and Rorze’s Motion for Leave to Amend Invalidity 22 Contentions (Dkt. No. 169). 23 Having considered the arguments of the parties and on the papers submitted, the Court 24 GRANTS Kawasaki’s motion to strike references to “Related Art” (Fig. 15 of the asserted 25 patents) and DENIES Kawasaki’s motion to strike Rorze’s invalidity theories exceeding five 26 obviousness combinations per asserted patent. 27 I. Related Art (Fig. 15 of the asserted patents) 1 litigation and to adhere to those theories once they have been disclosed.” Integrated Cir. Sys., Inc. 2 v. Realtex Semiconductor Co., 308 F. Supp. 2d 1106, 1107 (N.D. Cal. 2004). Local Patent Rule 3- 3 3(b) requires a party’s invalidity contentions to identify “[w]hether each item of prior art 4 anticipates each asserted claim or renders it obvious.” Rule 3-3(c) requires parties to provide a 5 chart that identifies “specifically where and how in each alleged item of prior art each limitation of 6 each asserted claim is found.” 7 Contrary to this Local Rule, Rorze asserts Related Art Fig. 15 as a basis for invalidity for 8 the first time in Dr. Hooper’s report. Rorze’s contends that it relies upon the Related Art not as a 9 reference but solely as evidence of the state of the art at the time the patent issued. But this 10 position is belied by Dr. Hooper’s report, which states that prior art Kazunari “does not expressly 11 disclose four openings.” He continues that Kazunari would nevertheless have been obvious in 12 light of “systems employing four FOUPs … as shown in Related Art Fig. 15.” This is evidence 13 that the Related Art goes beyond state-of-the-art background and instead functions as a prior art 14 reference for Rorze’s invalidity contentions. Rorze therefore should have disclosed Related Art 15 Fig. 15 in its invalidity contentions. 16 The Court hereby strikes from Dr. Hooper’s Opening Expert Report Regarding Invalidity 17 all citations to, as well as arguments, opinions, and theories based on, Related Art Fig. 15. The 18 material stricken from Dr. Hooper’s Opening Expert Report Regarding Invalidity includes entries 19 found in the “Exemplary Citation” cells corresponding to claim elements 6[a], 6[b], 13[a], and 20 13[b] in Dr. Hooper’s Exhibits A1, B1, C1, D1, and E1, and entries found in the “Exemplary 21 Citation” cells corresponding to claim elements 20[a], 20[b], 27[a], and 27[b] in Dr. Hooper’s 22 Exhibits A4, B4, C4, D4, and E4. Dr. Hooper shall not be allowed to offer at trial any testimony 23 relating to the substance of the stricken material. 24 II. Invalidity Theories Exceeding Five Obviousness Combinations Per Asserted Patent. 25 In his Opening Expert Report, Dr. Hooper provided alternative rationales for combinations 26 of (1) Kazunari in combination with SEMI E63 Standard and NX-EFEM, (2) Kazunari in 27 combination with SEMI E63 Standard and RS70000, and (3) Fukasawa in combination with SEMI 1 distinct obviousness combination that taken together exceed the limited number of obviousness 2 || combinations previously permitted by the Court pursuant to the parties’ stipulation (Dkt. No. 169). 3 || Although the Court is sympathetic to Kawasaki’s position that Rorze’s reliance on alternative 4 || grounds for obviousness may not narrow the issues in litigation to the degree Kawasaki expected, 5 || Rorze’s approach nevertheless complies with the express wording of the Court’s order. The Court 6 || therefore denies Kawasaki’s motion to strike portions of Dr. Hooper’s report that provide multiple 7 alternative rationales for the same obviousness combinations. Dr. Hooper may testify at trial as to 8 || these matters. 9 10 IT IS SO ORDERED. 11 Dated: December 13, 2024 12 3 P. Casey Pitts 14 United States District Judge 15

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