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O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc.

United States District Court for the Northern District of California

November 10, 2005, Decided ; November 10, 2005, Filed

Nos. C 00-4071 CW (EDL), (consolidated with C 01-3995 CW)

Opinion

 [*1068]  ORDER DENYING 02 MICRO'S MOTION FOR PERMANENT INJUNCTION; GRANTING IN PART AND DENYING IN PART MPS' RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW ON CERTAIN ISSUES; AND ADDRESSING OTHER ISSUES; FINDINGS OF FACT AND CONCLUSIONS OF LAW AFTER BENCH TRIAL

Plaintiff and Counterdefendant O2 Micro International Limited and Counterdefendant O2 Micro, Inc. (collectively, O2 Micro) move for a permanent injunction and seek a finding of inequitable conduct and a finding that the case is exceptional under Title 35 U.S.C. section 285. O2 Micro further seeks, under the California Uniform Trade Secrets Act, exemplary damages, an award of a reasonable royalty and attorneys' fees. Defendant and Counterclaimant Monolithic Power Systems, Inc. (MPS) opposes these requests.

MPS renews, pursuant to Federal Rule of Civil Procedure 50(b), its motion for judgment as a matter of law on issues related to 02 Micro's requests. MPS argues that neither the jury's unjust enrichment damages award nor the underlying finding, that MPS used the trade secrets, is supported [**3]  by the evidence. O2 Micro opposes the motion on procedural and substantive grounds. In a separately filed motion, MPS further requests that, as to the patent issues, the Court treat the jury verdict as advisory. O2 Micro also opposes that motion.

The motions for injunctive relief and exemplary damages and for judgment as a matter of law were heard on September 9, 2005. MPS' motion requesting that the jury verdict, in part, be treated as advisory was submitted on the papers. On September 20, 2005, the Court heard additional oral testimony regarding inequitable conduct and reasonable royalty issues. Paul Meyer, O2 Micro's damages expert, and James Moyer, one of the inventors of the patents at issue, testified. Having considered all of the papers filed by the parties, oral argument on the motions and evidence presented, the Court finds that O2 Micro is not entitled to an injunction. The Court denies MPS' motion for judgment as a matter of law with respect to use, but grants MPS judgment as a matter of law with respect to the unjust enrichment damages award. The Court grants O2 Micro a reasonable royalty and exemplary damages, but denies O2 Micro's request for UTSA attorneys' fees. The [**4]  Court finds and concludes that MPS did not engage in inequitable conduct. O2 Micro has failed to prove by clear and convincing evidence that the article in question was material and that MPS acted with intent to  [*1069]  deceive. The Court also finds that this patent case is not extraordinary and thus that O2 Micro is not entitled to attorneys' fees. The Court denies MPS' request that the Court treat the jury verdict regarding patent issues as advisory.

BACKGROUND

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399 F. Supp. 2d 1064 *; 2005 U.S. Dist. LEXIS 29366 **

O2 MICRO INTERNATIONAL LIMITED, a Cayman Islands corporation, Plaintiff, v. MONOLITHIC POWER SYSTEMS, INC., a California corporation, and DOES 1 through 10, Defendant. MONOLITHIC POWER SYSTEMS, INC., a California corporation, Counterclaimant, v. O2 MICRO INTERNATIONAL LIMITED, a Cayman Islands corporation, and O2 MICRO, INC., a California corporation, Counterdefendants.

Subsequent History: Motion granted by, in part, Motion denied by, in part 02 Micro Int'l Ltd v. Monolithic Power Sys., 420 F. Supp. 2d 1070, 2006 U.S. Dist. LEXIS 13678 (N.D. Cal., 2006)

Prior History: 02 Micro Int'l Ltd. v. Monolithic Power Sys., 2004 U.S. Dist. LEXIS 30244 (N.D. Cal., Feb. 11, 2004)

CORE TERMS

trade secret, patent, transformer, misappropriation, damages, argues, royalty, unjust enrichment, injunction, exemplary damages, signal, network, attorney's fees, switches, correctly, inequitable conduct, plurality, clear and convincing evidence, matter of law, secret, load, full-bridge, customer, disclose, voltages, driving, parties, cases, motion for judgment as a matter of law, asserts

Trade Secrets Law, Remedies, Injunctions, General Overview, Threatened Misappropriation, Civil Procedure, Trials, Judgment as Matter of Law, Postverdict Judgment, Directed Verdicts, Judgment as Matter of Law, Misappropriation Actions, Elements of Misappropriation, Use, Damages, Royalties, Punitive Damages, Costs & Attorney Fees, Patent Law, US Patent & Trademark Office Proceedings, Defenses, Inequitable Conduct, Elements, Burdens of Proof, Interference Proceedings, Patentability & Priority Determinations, Collateral Assessments, Attorney Fees, Jurisdiction & Review, Equitable Relief, Injunctions, Jury Trials, Right to Jury Trial, Bench Trials