Quelle: wolfpack - agoracom.com/ir/patriot/forums/discussion/...s/1049049#message
Darin die Aussage:
XXXX The third patent (the ’336 patent) is currently in reexamination before the PTO, where all claims currently stand rejected. See Chen Decl., Ex. B. xxxx
War das bekannt - alle Claims des 336 zurückgewiesen? - Klingt nicht gut.
Das September auslaufende 148 er kann noch 7 Jahre danach (wenn gültig) zu Lizenzzahlungen führen.
New Pacer--OPPOSITION OF PLAINTIFFS HTC CORPORATION AND HTC AMERICA, INC. TO DEF
posted on Jan 21, 09 10:05PM
New Pacer--OPPOSITION OF PLAINTIFFS HTC CORPORATION AND HTC AMERICA, INC. TO DEFENDANTS’ MOTION FOR RECONSIDERATION
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
HTC CORPORATION and HTC
AMERICA, INC.,
Plaintiffs,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION and ALLIACENSE LIMITED,
Defendants.
Case No. C 08 00882 JF
(related to C 08 00877 JF and C 08 00884)
OPPOSITION OF PLAINTIFFS HTC CORPORATION AND HTC AMERICA, INC. TO DEFENDANTS’ MOTION FOR RECONSIDERATION
Date: January 30, 2009
Time: 9:00 a.m.
Dept: Courtroom 3, 5th Floor
The Honorable Jeremy Fogel
I. INTRODUCTION
Defendants’ motion for reconsideration rests solely on the recent license between the ASUSTeK Entities and the TPL Entities (the “ASUSTeK License”). But the ASUSTeK License does not alter the substantive grounds underlying this Court’s previous Order (the “October 21 Order”) and therefore cannot serve as the basis for reconsideration of that Order. The Defendants’ Motion merely reiterates the arguments proffered in their original motion to dismiss, which were expressly and properly rejected by this Court – and should be again. The Defendants’ motion ignores the Court’s previous holding that TPL’s prior Eastern District of Texas action against other defendants, which was dismissed long before the filing of the present declaratory relief actions, could not serve as a basis for transfer under controlling Federal Circuit law: The Federal Circuit has announced a general rule that it would be an “abuse of discretion” to transfer a first-filed declaratory relief action to another district based on the existence of a prior suit in that district when, as here, the prior suit was not pending at the time the declaratory judgment relief action was filed and where the first-filed action will settle the legal relations of the parties. Docket (“Dkt.”) No. 61 at 7:8-12 (citing Micron Tech., Inc. v. Mosaid Technologies, Inc., 518 F.3d 897, 905 (Fed. Cir. 2008)). This is fatal to the Defendants’ motion. Simply put, the fact the ASUSTeK License may result in a reduction (but not elimination) of the number of patents-insuit that were not construed in the prior suit does not change the fact that the prior suit was
dismissed and inactive before the instant actions were filed. The motion for reconsideration, having identified no other basis on which to seek transfer under 28 U.S.C. § 1404(a), therefore fails as a matter of law under Micron. The ASUSTeK License similarly has no effect on the Court’s finding that the convenience factors under § 1404(a) in light of Micron heavily favored the Northern District of California. The correctness of this Court’s decision is further reinforced by a recent decision from the Federal Circuit that granted a writ of mandamus against the Eastern District of Texas and ordered a patent case out of that district when, as here, that forum lacked a meaningful connection to the parties. See In re TS Tech USA Corp., 2008 WL 5397522 (Fed Cir. Dec. 29, 2008) The presence of patents that were not considered in the prior case was another one of the multiple factors supporting this Court’s decision to deny dismissal and transfer. This factor also remains. In fact, two patents that were never previously construed remain in the instant first-filed case. Of the three patents-in-suit that were the subject of the prior Texas case, TPL has removed one of them from this case by choosing not to assert it (U.S. Patent No. 5,784,584). A second patent from the prior case (U.S. Patent No. 6,598,148) expires in seven months (many years before the other patents-in-suit), while the third patent (U.S. Patent No. 5,809,336) is currently in reexamination before the Patent Office where all claims presently stand rejected. Not surprisingly, in light of these developments, it is almost certain that the present case will focus more heavily on the two new patents that were not previously asserted. Finally, the Micron court expressly cautioned against basing a § 1404(a) transfer decision on variations in the number of defendants or patent claims, which can be easily manipulated. 518 F.3d at 903. The fact remains that the present action will involve legal and factual issues, accused products, and/or claim terms that were never addressed by the Texas court – just as it did prior to
the ASUSTeK License.
II. BACKGROUND
A. Judge Ward’s Claim Construction Order in the Dismissed TPL Lawsuit. In 2005, the Defendants filed a patent infringement action against various entities in the Eastern District of Texas. See Technology Properties Ltd. v. Fujitsu Ltd., No. 2:05-cv-00494- TJW. That case did not involve any of the plaintiffs in the present Related Actions, and involved for the Court’s convenience, a copy of this decision is attached as Exhibit A to the Declaration of Kyle D. Chen in Support of the Opposition of Plaintiffs HTC Corporation and HTC America, Inc. to Defendants’ Motion for Reconsideration (hereinafter “Chen Decl.”) only three of the patents at issue in the present litigation.2 The Texas lawsuit was assigned to the Honorable John T. Ward, who conducted a claim construction hearing in 2006 and issued a claim construction order in 2007. The action was dismissed later that year following a settlement between TPL and all but one of the defendants. TPL unsuccessfully appealed Judge Ward’s rulings as to the ’584 patent – the Federal Circuit summarily affirmed the trial court’s rulings. See Technology Properties Ltd. v. ARM Ltd., No. 2008-1020 (Fed. Cir. 2008). B. The Present Action Focuses on Patents Not Previously Considered. The present action for declaratory judgment was filed on February 8, 2008, as were the related ASUSTeK and Acer litigations (ASUSTeK Computer Inc. v. Technology Properties Ltd., No. 5:08-CV-0884 JF (the “ASUSTeK Action”), and Acer, Inc v. Technology Properties Ltd., No. 5:08-CV-00877 JF (the “Acer Action”)). In the present action, HTC seeks declaratory judgment of non-infringement and invalidity as to five patents: the ’584 patent, the ’336 patent, and the ’148 patent, as well as U.S. Patent Nos. 5,440,749 (the “’749 patent”), and U.S. Patent No. 5,530,890 (the “’890 patent”). Only three of these five patents were considered in the prior Texas action (’584, ’148 and ’336), but those patents are largely irrelevant to these proceedings. First, the TPL Entities abandoned their claim of infringement under the ’584 patent by failing to raise it in their answer and counterclaims. Dkt No. 60 at 6:18-9:2. They also declined to serve any infringement contentions under Patent Local Rule 3-1 for the ’584 patent, and thus have removed that patent from this case. A second patent (the ’148 patent) is scheduled to expire on August 3, 2009, many
years before the expiration of the other patents-in-suit. The third patent (the ’336 patent) is currently in reexamination before the PTO, where all claims currently stand rejected. See Chen Decl., Ex. B. It is not surprising, therefore, that the focus of the infringement claims advanced by the TPL Entities has been on the two patents that were never asserted in the prior Texas action. On December 19, 2008, the parties to the ASUSTeK Action entered into a license 2 U.S. Patent Nos. 5,784,584 (the “’584 patent”), 5,809,336 (the “’336 patent”), and 6,598,148 (the “’148 patent”). agreement which covered the patents at issue in the present action as well as four additional patents from a different portfolio. The ASUSTeK License did not affect the parties, patents, claims, or issues pending in the Acer Action or the present action.
III. ARGUMENT
A. The Northern District of California Remains the Proper Venue.
The Federal Circuit has held that an assessment of whether to transfer a patent action must be based on the convenience factors under § 1404(a). Micron, 518 F.3d at 902-03 (“Thus, in cases such as this with competing forum interests, the trial court needs to consider the ‘convenience factors’ found in a transfer analysis under 28 U.S.C. § 1404(a).”). A recent decision from the Federal Circuit reaffirmed the importance of scrupulous adherence to the §1404(a) factors in the determination of venue issues. In In re TS Tech, 2008 WL 5397522, at *1, the plaintiff filed suit for patent infringement in the Eastern District of Texas even though the key witnesses and the majority of relevant physical and documentary evidence were located in Ohio, Michigan and Canada. The district court denied the defendant’s motion to transfer to Ohio, relying heavily on the plaintiff’s choice of forum and the arguments that the Eastern District of Texas has a substantial interest in resolution of a dispute because accused products were sold in
that district. Id. Granting a writ of mandamus, the Federal Circuit held that the district court’s decision was a misapplication of §1404(a) and constituted a clear abuse of discretion justifying the use of an extraordinary writ. Id. at *3-5. The Federal Circuit, noting that the Eastern District of Texas had no meaningful ties to the parties, ordered the case transferred to Ohio because the cost of willing witnesses’ attendance was considerably lower, the relative ease of access to sources of proof was higher, and the localized interest was much more significant there than in the Eastern District of Texas. Id. This Court in its original Order ruled that California, and not Texas, is the proper venue for the parties’ claims pursuant to the first-to-file rule and a correct analysis of the §1404(a) convenience factors. See Dkt. No. 61 at 6:6-15. The witnesses, evidence and localized interests in the present action remain centered in California. See id. The Defendants have not asserted and cannot assert that the ASUSTeK License significantly changes the convenience factors under 1404(a) that were the basis of the Court’s ruling. Moreover, the departure of one or more parties, or of one or more of the patents-in-suit, should not affect the § 1404(a) analysis. Otherwise, a party could easily manipulate these factors in order to control the Court’s venue decisions by settling out individual defendants or abandoning or asserting different patents. The Federal Circuit has expressly warned against such a danger. See Micron, 518 F.3d at 903 (“If, as in this case, a patent holder could simply name another defendant or add a few additional claims to the later filed infringement, then the Supreme Court’s more lenient standard for declaratory judgment plaintiff would lose its primary intended effect.”). Thus, there is no reason to deviate from this Court’s conclusion that the “convenience factors weigh heavily in favor of retaining the case in this Court.” Id. at 6:5-6. Indeed, TS Tech strongly suggests that any other conclusion would be an abuse of discretion. The Defendants’ suggested application of § 1404(a) would, in fact, result in its evisceration. Under the Defendants’ logic, a patentee could file a lawsuit in a favorable jurisdiction against one or more defendants, proceed through the claim construction phase, and then use that order as a basis to transfer all future lawsuits against different parties involving the same patents into that jurisdiction, regardless of the § 1404(a) factors, regardless of the accused parties’ connection to that jurisdiction, and regardless of whether that action is still pending. Such a result would be contrary to controlling Federal Circuit authority and should be avoided. B. The Reduction in the Number of Patents-in-Suit Is Not A Material New Fact that Warrants Reconsideration of the October 21 Order. Civil Local Rule 7-9(b)(2) requires that the moving party show “the emergence of new material facts or a change of law occurring after the time” of the challenged order. This Court has strictly applied this requirement and routinely denies motions for reconsideration. See, e.g., U.S. v. Beardslee, No. CR-94-0186, 2008 WL 5382520, at *1-2 (N.D. Cal. Dec. 22, 2008); Californians for Disability Rights, Inc. v. Cal. Dep’t of Transp., No. C-06-5125, 2008 WL 5068676, at *1-3 (N.D. Cal. Nov. 24, 2008); Villalta v. Bardini, No. C-06-4087, 2008 WL 5000142, at *1-2 (N.D. Cal. Nov. 21, 2008); Kilgore v. Walker, No. C-07-5124, 2008 WL 4561186, at *1 (N.D. Cal. Oct. 11, 2008); Tokuyama Corp. v. Vision Dynamics, LLC, No. C-08-2781, 2008 WL 4532565, at *1-2 (N.D. Cal. Oct. 9, 2008); Man Against Extinction v. Hall, No. C-08-01488, 2008 WL 4534279, at *1-2 (N.D. Cal. Oct. 7, 2008). The ASUSTeK License does not constitute a material new fact sufficient to warrant reversal of the October 21 Order under L.R. 7-9. To the contrary, as explained above, developments in the law since the Order have actually strengthened the grounds on which the
October 21 Order was based. Defendants have essentially argued that because the ASUSTeK License reduced the number of new patents at issue in the present and related actions from six to two, the weight to be given to the prior claim construction order is heightened. But this Court expressly acknowledged that it is free to consider the prior claim construction order and give whatever weight it is due. Dkt. No. 61 at 6:25-7:2. The Defendants’ motion overinflates the significance of a prior claim construction order in a dead lawsuit involving different accused parties and products.
1. There is No Support for Defendants’ Argument That Venue Must Reside With a Court That Has Previously Examined Patents-in-Suit. Defendants have cited absolutely no authority holding that prior claim construction of the patents-in-suit is a factor, much less a determinative factor, in a court’s analysis of whether to retain jurisdiction of a patent lawsuit. The Federal Circuit in Micron expressly held that the fact that another court “has heard cases involving some of the same patents…does not suggest a better forum in [that court].” 518 F.3d at 905. The ruling on this point in Micron does not leave room to conclude that a Markman ruling in a separate, closed matter involving different defendants and addressing a subset of terms of a subset of patents can override a proper transfer analysis. Defendants attempt to avoid application of the Micron ruling by representing that “MOSAID did not involve a situation where the patents at issue were previously studied and construed by another Court, as is now the case here.” Dkt. No. 71 at 6:10-11. This is completely false. Case records show that the majority of the twelve patents at issue in the MOSAID-Micron litigation were either previously construed by the U.S. District Court for the District of New Jersey in a prior lawsuit between MOSAID and Infineon Technologies of North America (“the Infineon Action”), or derived from common parent applications as the previously construed patents. Compare Claim Construction Order, Infineon Technologies N. Am. Corp. v. MOSAID Technologies, Inc., No. 03-CV-4698 (D.N.J. Mar. 23, 2004) and Micron’s First Amended Complaint for Declaratory Judgment, MOSAID Technologies, Inc. v. Micron Technologies, Inc., No. 5:06-CV-04496 (N.D. Cal. July 28, 2008) The Federal Circuit panel issuing the Micron decision was clearly aware of the New Jersey court’s claim construction rulings. See Micron, 518 F.3d at 899-900 (referencing claim construction ruling in Infineon Action). This Court was also well aware of the New Jersey claim construction rulings. See Order Denying Joint Motion to Vacate at 2:11-13, Infineon Technologies N. Am. Corp. v. MOSAID Technologies, Inc., No. C:02-5772 (N.D. Cal. Feb. 5, 2007) (Fogel, J.) (describing the New Jersey Court’s claim construction order). Nevertheless, neither this Court nor the Federal Circuit addressed the prior claim construction ruling in the Infineon Action as having any bearing on the transfer analysis. There is no legal support for Defendants’ argument that a patent infringement action must be transferred to the court that previously construed a subset of the patents-in-suit. 2. Judicial Economy Would Not Be Enhanced By Dismissal or Transfer. Defendants’ arguments regarding any purported judicial economy are a rehash of the arguments raised in its original motion to dismiss, all of which were previously considered and rejected by the Court.3 Defendants’ recitation of claim terms in its motion for reconsideration is inapposite because there is no guarantee that the claim terms construed by Judge Ward will be the same terms that will be in dispute between the parties to the instant action and related actions. As explained above, the lawsuit underlying the Ward Claim Construction Order is dead, and not available for consolidation with the present action. In all likelihood, only one of the previously construed patents will be in serious contention in the present action since Defendants have not asserted the ‘584 patent and the ‘148 patent is scheduled to expire this year, and that remaining 3. This is a violation of Civil Local Rule 7-9(c): “No motion for leave to file a motion for reconsideration may repeat any oral or written argument made by the applying party in support of or in opposition to the interlocutory order which the party now seeks to have reconsidered. Any party who violates this restriction shall be subject to appropriate sanctions.” patent’s claims all presently stand rejected by the Patent and Trademark Office. See Chen Decl., Ex. B. The present litigation involves two patents that were never before Judge Ward and will raise factual and legal issues that have never been considered by him. Further, to the extent that this Court wishes to rely on the Ward Claim onstruction Order to enhance efficiency, it is free to do so. Judge Ward’s analysis and conclusions regarding the ’148 patent, the ’336 patent, and the ’584 patent remain available to this Court, and nothing prevents this Court from giving Judge Ward’s order the appropriate weight. Dkt. No. 61 at 6:25-7:2 (“While Judge Ward’s claim construction ruling is not res judicata, this Court certainly will consider it and give it whatever persuasive weight it deems appropriate.”). The ASUSTeK License does not change this. This conclusion is supported by ample competent precedents, including the October 21 Order. Numerous other courts have properly ruled that another court’s prior experience with common issues of fact or technology is not dispositive and does not by itself support a transfer. See Pall Corp. v. PTI Techs., Inc., 992 F. Supp. 196, 202 (E.D.N.Y. 1998) (rejecting the “insinuation that this Court should transfer the suit to ‘avoid expending effort educat[ing itself] on both the technology in general and the particular patents’” because “the Court’s function in every case [is] to familiarize itself with the pertinent facts, data, technology and law”); Truth Hardware Corp. v. Ashland Products, Inc., No. C.A. 02-1541 GMS, 2003 WL 118005, *1 (D. Del. Jan. 13, 2003) (concluding that “[w]hile the court does not doubt that the Illinois court may be more familiar with the technology at this juncture, the present court is amply qualified to likewise familiarize itself”) The Texas Court’s prior (and by now, likely stale) experience with some of the patents in suit in the present actions does not constitute any more sufficient ground for transfer now than it did previously.
C. This Court Has Already Relied on the October 21 Order to Decide Important Procedural Issues. This Court has already relied on the October 21 Order to rule against HTC on an important discovery issue. Specifically, Judge Lloyd’s Order Granting in Part and Denying in Part Defendants’ Motion to Compel Plaintiffs’ Depositions, dated December 16, 2008, relied on in part on the October 21 Order in concluding that HTC must produce its witnesses in this district. See Dkt. No. 68. Fairness militates against allowing the Defendants, who have relied upon the October 21 Order to their benefit, to request now that the Order be overturned.
IV. CONCLUSION
For the foregoing reasons, HTC respectfully requests that the Court deny the Defendants’ Motion for Reconsideration.
Dated: January 21, 2009
WHITE & CASE LLP
By: Kyle D. Chen
Attorneys for Plaintiffs
HTC CORPORATION and
HTC AMERICA, INC.
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