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Plaintiff MOSAID Technologies, Inc. (“MOSAID”) filed this action on August 9, 2011 asserting U.S. Patent No. 6,505,241 (“the ‘241 patent”) against Adobe Systems, Inc. (“Adobe”), Alcatel-Lucent USA, Inc. (“ALU”), International Business Machines Corp. (“IBM”), Juniper Networks, Inc. (“Juniper”), NetApp, Inc. (“NetApp”) and VMware, Inc. (“VMware”), and U.S. Patent No. 5,892,914 (“the ‘914 patent”) against Red Hat, Inc. (“Red Hat”). (D.I. 1). Because the ‘241 patent had been dedicated to the public and disclaimed pursuant to 35 U.S.C. § 253, this Court lacked subject matter jurisdiction as to the claims against Adobe, ALU, IBM, Juniper, NetApp and VMware. These defendants wrote to MOSAID on September 27, 2011 demanding dismissal of the claims against them. (J. Hohenthaner Sept. 27, 2011 Ltr. To S. Hill (Ex. A)).

In response, on October 6, 2011, MOSAID filed its First Amended Complaint (“FAC”), in which it dropped the allegations about the disclaimed ‘241 patent against Adobe, ALU, IBM, Juniper, NetApp and VMware. (D.I. 16). MOSAID only dismissed NetApp from this litigation, however. (D.I. 17). MOSAID alleged that each of the remaining defendants infringed the ‘914 patent, previously asserted only against Red Hat. (D.I. 16).

On November 11, 2011, without notice to the Defendants or leave of Court, MOSAID filed a Second Amended Complaint (“SAC”). (D.I. 33). The SAC purported to add allegations of infringement of U.S. Patent No. 5,611,049 (“the ‘049 patent”) against Red Hat, Adobe, ALU, IBM and Juniper; U.S. Patent No. 6,205,475 (“the ‘475 patent”) against Adobe, IBM, Juniper and VMware; U.S. Patent No. 6,804,706 (“the ‘706 patent”) against IBM; and U.S. Patent No. 6,026,452 (“the ‘452 patent”) against Red Hat. MOSAID then acknowledged that it had no right to file the SAC without leave of Court and sought leave on December 12, 2011. (D.I. 39). This is the Defendants’ brief in opposition to that motion.

The ‘914, ‘049, ‘475, ‘706 and ‘452 patents each claim priority to the same Patent Cooperation Treaty Application, PCT App. No. PCT/US92/04939. The purported inventor of all of these patents, William Pitts, previously assigned most, if not all, of his rights to all patents stemming from the PCT application to Auspex Systems, Inc. in 1987. The current holder of these rights is dismissed defendant NetApp, not MOSAID. Defendants incorporate herein the Opening Brief in Support of Defendant VMware’s Motion to Dismiss for Lack of Standing (D.I. 46), which, although written to the ‘914 patent, describes the assignment and ownership history of all patents claiming priority to the PCT application.

Back to the MOSAID reply regarding the opposition to the motion for leave to file the second amended complaint, defendants' second argument is that the second amended complaint is so far removed from the either the original complaint or first amended complaint as to constitute a new complaint. If, and only if, that is true, then the defendants' further argument, that the intervening signing of the America Invents Act into law would bar this form of suit that asserts a variety of patents against a variety of defendants:

The SAC [Second Amended Complaint] does not allege that any defendant infringes all five patents, nor does it allege that any two defendants infringe the same set of patents.

the Second Amended Complaint relates back to the original filing date because of the overlapping subject matter in terms of identical devices being accused of infringement of similar patent claims emanating from inter-related patents to those originally asserted in the complaint and the first amendment to the complaint.

... the same conduct that is alleged to give rise to the originally asserted causes of action – the making, use and sale of Adobe Flash Memory Server, Alcatel Velocix Digital Media Delivery Platform, IBM Websphere Software, Juniper Media Flow and VMware vFabric Gemfire Platform – is the very same conduct that is alleged to give rise to the infringement of these additional patents – patents which are part of the same patent family tree as the ‘914 alleged in the first amended complaint.

Of the reply/answers filed by MOSAID, those two, are the most critical to how this case will proceed. However, MOSAID also filed an answer (72 [PDF; Text]) to a group of motions/briefs from different defendants pertaining to issues of:

• Document 50 - MOTION to Dismiss for Failure to State a Claim International Business Machines Corp.'s Motion to Dismiss Plaintiff's Indirect and Willful Infringement Claims;
• Document 48 MOTION to Dismiss for Failure to State a Claim;
• Document 53 MOTION to Dismiss for Failure to State a Claim Mosaid's First Amended Complaint And To Transfer Venue To The Northern District of California;
• Document 60 MOTION to Dismiss for Failure to State a Claim;
• Document 56 MOTION to Dismiss for Failure to State a Claim Motion to Dismiss Under Rule 12(B)(6) and Motion to Strike;
• Document 42 MOTION to Dismiss for Failure to State a Claim or, in the Alternative, for a More Definite Statement, and Motion to Strike;
• Document 45 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter;
• Document 70 MOTION for Extension of Time to File /Unopposed Motion to Extend Time for MOSAID to file Answering Briefs in Response to Defendants' Motions to Dismiss and for Leave to Extend Page Limits on Omnibus Answering Brief; and
• Document 39 MOTION for Leave to File a Second Amended Complaint Plaintiff's Consolidated Answering Brief in Opposition to Defendants' Motions to Dismiss Under Federal Rule of Civil Procedure 12(B)(6) filed by Mosaid Technologies Inc.

Think of this as the omnibus answer.

In addition, MOSAID filed an answer (73 [PDF; Text]) to the motion by Juniper Networks to dismiss the action and transfer venue to the Northern District of California.

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Docket

71  - Filed and Effective: 01/09/2012
REPLY BRIEF
Document Text: REPLY BRIEF re 39 MOTION for Leave to File a Second Amended Complaint /PLAINTIFF'S CONSOLIDATED REPLY BRIEF IN SUPPORT OF MOTION FOR LEAVE TO FILE A SECOND AMENDED COMPLAINT filed by Mosaid Technologies Inc.. (Brauerman, Stephen) (Entered: 01/09/2012)

72  - Filed and Effective: 01/13/2012
ANSWERING BRIEF
Document Text: ANSWERING BRIEF in Opposition re 50 MOTION to Dismiss for Failure to State a Claim International Business Machines Corp.'s Motion to Dismiss Plaintiff's Indirect and Willful Infringement Claims, 48 MOTION to Dismiss for Failure to State a Claim, 53 MOTION to Dismiss for Failure to State a Claim Mosaid's First Amended Complaint And To Transfer Venue To The Northern District of California, 60 MOTION to Dismiss for Failure to State a Claim, 56 MOTION to Dismiss for Failure to State a Claim Motion to Dismiss Under Rule 12(B)(6) and Motion to Strike, 42 MOTION to Dismiss for Failure to State a Claim or, in the Alternative, for a More Definite Statement, and Motion to Strike, 45 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter, 70 MOTION for Extension of Time to File /Unopposed Motion to Extend Time for MOSAID to file Answering Briefs in Response to Defendants' Motions to Dismiss and for Leave to Extend Page Limits on Omnibus Answering Brief, 39 MOTION for Leave to File a Second Amended Complaint Plaintiff's Consolidated Answering Brief in Opposition to Defendants' Motions to Dismiss Under Federal Rule of Civil Procedure 12(B)(6) filed by Mosaid Technologies Inc..Reply Brief due date per Local Rules is 1/23/2012. (Brauerman, Stephen) (Entered: 01/13/2012)

73  - Filed and Effective: 01/13/2012
ANSWERING BRIEF
Document Text: ANSWERING BRIEF in Opposition re 53 MOTION to Dismiss for Failure to State a Claim Mosaid's First Amended Complaint And To Transfer Venue To The Northern District of California Plaintiff's Answering Brief in Opposition to Defendant Juniper Networks' Motion to Dismiss MOSAID's First Amended Complaint and to Transfer Venue to the Northern District of California filed by Mosaid Technologies Inc..Reply Brief due date per Local Rules is 1/23/2012. (Brauerman, Stephen) (Entered: 01/13/2012)

74  - Filed and Effective: 01/13/2012
DECLARATION
Document Text: DECLARATION re 73 Answering Brief in Opposition,, Declaration of Jiri Smetana in Support of Plaintiff's Answering Brief in Opposition to Defendant Juniper Networks' Motion to Dismiss MOSAID's First Amended Complaint and to Transfer Venue to the Northern District of California by Mosaid Technologies Inc.. (Brauerman, Stephen) (Entered: 01/13/2012)

75  - Filed and Effective: 01/17/2012
ORDER
Document Text: ORDER granting 70 Motion for Extension of Time to File. Signed by Chief Judge Gregory M. Sleet on 1/17/2012. (asw) (Entered: 01/17/2012)

76  - Filed and Effective: 01/19/2012
ANSWERING BRIEF
Document Text: ANSWERING BRIEF in Opposition re 45 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter filed by Mosaid Technologies Inc..Reply Brief due date per Local Rules is 1/30/2012. (Attachments: # 1 A, # 2 B, # 3 C, # 4 D, # 5 E, # 6 F (Part I), # 7 F (Part II))(Brauerman, Stephen) (Entered: 01/19/2012)

77  Filed and Effective: 01/19/2012
DECLARATION
Document Text: DECLARATION re 76 Answering Brief in Opposition, /Declaration of William Pitts by Mosaid Technologies Inc.. (Brauerman, Stephen) (Entered: 01/19/2012)

78  - Filed and Effective: 01/20/2012
JOINT STIPULATION
Document Text: Joint STIPULATION to Extend Time for Defendants to File Various Reply Briefs by Adobe Systems Inc., Alcatel Lucent USA Inc., International Business Machines Corporation, Juniper Networks Inc., Mosaid Technologies Inc., Red Hat Inc., VMware Inc.. (Kraman, Pilar) (Entered: 01/20/2012)

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Documents

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
v.
ADOBE SYSTEMS, INC., ALCATEL-
LUCENT USA, INC., APPLE, INC.,
INTERNATIONAL BUSINESS
MACHINES CORP, JUNIPER
NETWORKS, INC., NETAPP, INC., RED
HAT, INC., AND VMWARE, INC.
Defendants.

C.A. No.: 11-698-GMS

JURY TRIAL DEMANDED

___________________________________

PLAINTIFF’S CONSOLIDATED REPLY BRIEF IN SUPPORT OF MOTION
FOR LEAVE TO FILE A SECOND AMENDED COMPLAINT

January 9, 2012

OF COUNSEL:

Steven G. Hill
Douglas R. Kertscher
HILL, KERTSCHER & WHARTON, LLP
[address telephone]

BAYARD, P.A.

Richard D. Kirk (rk0922)
Stephen B. Brauerman (sb4952)
[address email telephone]

Attorneys for Plaintiff Mosaid
Technologies Inc.

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ...... ii

I. NATURE AND STAGE OF THE PROCEEDING ...... 1

II. SUMMARY OF ARGUMENT ...... 1

III. STATEMENT OF FACTS ...... 2

IV. LEGAL ARGUMENT ...... 5

i

TABLE OF AUTHORITIES

Page

CASES

Abbott Labs v. Johnson & Johnson, Inc.,
524 F.2d Supp. 553, 558 n.10 (D. Del. 2007) ...... 9

Androphy v. Smith & Nephew, Inc.,
31 F. Supp. 2d 620, 623 (N.D. Ill. 1998) ...... 7

Collezione Europa U.S.A., Inc. v. Amini Innovation Corp.,
2009 U.S. Dist. LEXIS 76411, *10-12 (D.N.J. 2009) ...... 9

Colt Defense LLC v. Heckler & Koch Defense, Inc.,
C.A. No. 04-258, 2004 U.S. Dist. LEXIS 28690, at *16 (E.D. Va. Oct. 22, 2004) ...... 6, 7

DIRECTV, Inc. v. Barrett,
220 F.R.D. 630, 631 (D. Kan. 2004) ...... 8

Farina v. Nokia, Inc.,
625 F.3d 97, 111 (3d Cir. 2010) ...... 9, 10

Fujitsu Ltd. v. Nanya Tech. Corp.,
2007 U.S. Dist. LEXIS 13132, *8 (N.D. Cal. 2007) ...... 9

Golden Scorpio Corp. v. Steel Horse Bar & Grill,
596 F. Supp. 2d 1282, 1286 (D. Ariz. 2009) ...... 7

Illinois Tool Works, Inc. v. Foster Grant Co.,
395 F. Supp. 234, 250-51 (N.D. Ill. 1974), aff’d 547 F.2d 1300 (7th Cir. 1976) ...... 9

Infineon Technologies v. Fairchild Semiconductor International,
2009 U.S. Dist. LEXIS 94736 (D. Del. 2009) ...... 7, 8

Lucent Techs., Inc. v. Extreme Networks, Inc.,
C.A. No. 03-508-JJF (D. Del. Feb. 9, 2004) ...... 6

Mosley v. Gen. Motors Corp.,
497 F.2d 1330, 1333 (8th Cir. 1974) ...... 8

MyMail, Ltd. v. America Online, Inc.,
223 F.R.D. 455, 457 (E. D. Tex. 2004) ...... 5,6

ii

Philips Elecs. N. Am. Corp. v. Contec Corp.,
220 F.R.D. 415, 418 (D. Del. 2004) ...... 6

Rudd v. Lux Prods. Corp.,
2011 U.S. Dist. LEXIS 4804 , *12 (N.D. Ill. Jan. 12, 2011) ....... 7

Softview v. Apple,
2011 U.S. Dist. LEXIS 112476 (D. Del. 2011) ...... 5

Softview v. Apple,
2011 U.S. Dist. LEXIS 140540 (D. Del. 2011) ...... 5

Sprint Comm. v. TheGlobe.com,
233 F.R.D. 615, 617-18 (D. Kan. 2006) ...... 6

STATUTES

35 U.S.C. § 299 ...... 2, 5, 6, 7, 9, 10

OTHER AUTHORITIES

Fed. R. Civ. P. 12(b)(1) ...... 1

Fed. R. Civ. P. 12(b)(6) ...... 1, 10

Fed. R. Civ. P. 12(b)(7) ...... 1

Fed. R. Civ. 15( c)(1) ...... 7

Fed. R. Civ. P. 20 ...... 2, 5, 6, 7

Fed. R. Civ. P. 42(a) ...... 10

7 CHARLES ALAN WRIGHT, ARTHUR R. MILLER & MARY KAY KANE, FEDERAL PRACTICE AND PROCEDURE §1653 (3d ed. 2001) ...... 8, 9

iii

I. NATURE AND STAGE OF THE PROCEEDING

Plaintiff MOSAID Technologies, Inc. (“MOSAID”) has properly filed a First Amended Complaint accusing each of the defendants of infringing U.S. Patent No. 5,892,914 (the “’914 Patent”). Before any defendant responded to this complaint, MOSAID repeatedly asked the Defendants to consent to leave to file the Second Amended Complaint in this matter. Defendants did not agree and failed to provide any rationale. The instant motion followed. With it, Defendants have exposed their preference that this lawsuit be refilled as six separate lawsuits, while defendant Juniper Networks attempts to add a seventh separate suit in California.

Additionally, the Defendants have filed motions to dismiss pursuant to Fed. R. Civ. P. 12(b)(6). One defendant, VMware, filed a separate motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(1) and (b)(7) for lack of standing. (D.I. 45-46). Another defendant Juniper Networks, filed a motion to transfer venue. (D.I. 53). Each of these motions is or will be separately addressed. The purpose of this reply is not to repeat arguments presented elsewhere, but instead to focus on the unique reasons presented by these Defendants as to why the Court ought to deny MOSAID’s motion for leave. For the reasons set forth below, MOSAID respectfully requests that the Court grant the motion for leave to amend.

II. SUMMARY OF ARGUMENT

First, the Defendants argue leave should be denied for the reasons presented in VMware’s separately pending motion to dismiss for lack of standing. (D.I. 45-46). Of course, MOSAID is addressing these arguments in a separate brief, which is incorporated herein by reference, so they will not be repeated here.

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Second, the allegation of misjoinder is not properly shown to be a basis for finding the amendment in question “futile.” No motion to sever has been filed by these Defendants, but the fact that misjoinder does not demand dismissal precludes Defendants from showing futility based on alleged misjoinder.

Moreover, there is no misjoinder. 35 U.S.C. § 299 does not apply to this action because the action originally was filed on August 9, 2011, before the effective date of the Leahy-Smith America Invents Act (“AIA”). The provisions of the AIA do not apply to amendments to pleadings in lawsuits filed before the effective date of the AIA. Moreover, even if they did, the Second Amended Complaint relates back to the original filing date because of the overlapping subject matter in terms of identical devices being accused of infringement of similar patent claims emanating from inter-related patents to those originally asserted in the complaint and the first amendment to the complaint.

Section 299 of the AIA was passed precisely because Fed. R. Civ. P. 20 did not per se prohibit the practice of joining defendants in litigation where there are interwoven issues, such as in this case. MOSAID shows case law herein holding that cases such as this one are not per se improper under Rule 20. Thus, futility is inapplicable.

III. STATEMENT OF FACTS

All of the patents-in-suit are inter-related, meaning that they share a common invention disclosure (specification). Admittedly, the patent claims are not identical to each other, but all have overlapping subject matter, namely, accessing cached data in a network by passing requests and data within interconnected network nodes.

The original patent, U.S. Patent No. 5,611,049 (the “’049 Patent”), arises from the national stage of Patent Cooperation Treaty (“PCT”) filing US92/04939 filed Jun. 3,

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1992. (D.I. 33, Exhibit 2, cover sheet.) The ‘914 patent is a divisional patent arising from the same PCT filing. (D.I., Exhibit 1, cover sheet.) In contrast to the Defendants’ suggestion that these are “separate” claims, a comparison of claim 1 of these respective patents immediately reveals their substantially overlapping subject matter:

U.S. Pat. No. 5,611,049, Claim 1	U.S. Pat. No. 5,892,914, Claim 1
1. In a network of digital computers that includes a first plurality of Network Distributed Cache ("NDC") sites, each NDC site including an NDC that has an NDC buffer, a method for projecting images of a stored dataset from an NDC server terminator site into a second plurality of NDC client terminator sites in response to requests to concurrently access such stored dataset transmitted from a third plurality of client sites respectively to the second plurality of NDC client terminator sites, the method comprising the steps of: (a) the NDC receiving the request to access data in the stored dataset;	1. In a network of digital computers that includes a plurality of Network Distributed Cache ("NDC") sites, each NDC site including an NDC that has an NDC buffer, a method for projecting an image of a stored dataset from an NDC server terminator site into an NDC client terminator site in response to a request to access such dataset transmitted from a client site to the NDC client terminator site, the method comprising the steps of: (a) the NDC receiving the request to access data in the stored dataset;
(b) the NDC checking the NDC buffer at this NDC site to determine if a projected image of data requested from the stored dataset is already present there;	(b) the NDC checking the NDC buffer at this NDC site to determine if a projected image of data requested from the dataset is already present there;
(c) if the NDC buffer of this NDC site does not contain a projected image of all data requested from the stored dataset, and if the NDC site receiving the request is not the NDC server terminator site for the stored dataset, the NDC of this NDC site transmitting a request for data from this NDC site downstream to another NDC site closer to the NDC server terminator site for the stored dataset than the present NDC site;	(c) if the NDC buffer of this NDC site does not contain a projected image of all data requested from the dataset, and if the NDC site receiving the request is not the NDC server terminator site for the dataset, the NDC of this NDC site transmitting a request for data from this NDC site downstream to another NDC site closer to the NDC server terminator site for the dataset than the present NDC site;
(d) if the NDC buffer of this NDC site does not contain a projected image of all data requested from the stored dataset, and if the NDC site receiving the request is the NDC server terminator site for the stored dataset,	(d) if the NDC buffer of this NDC site does not contain a projected image of all data requested from the dataset, and if the NDC site receiving the request is the NDC server terminator site for the dataset, the NDC of

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the NDC of the NDC server terminator site accessing the stored dataset to project an image of the requested data into the NDC buffer of the NDC server terminator site;	this NDC site accessing the stored dataset to project an image of the requested data into its NDC buffer;
(e) repeating the steps (a) through (d) until the NDC buffer of the downstream NDC site receiving the request contains a projected image of all requested data;	(e) repeating the steps (a) through (d) until the NDC buffer of the downstream NDC site receiving the request contains a projected image of all requested data;
(f) each successive NDC site, having obtained a projected image of all the requested data, returning the requested data upstream to the NDC site from which the NDC site received the request until the requested data arrives at the NDC client terminator site, each NDC site that returns data upstream to the requesting NDC site retaining a copy of the returned data that the returning NDC site may subsequently transmit to an NDC site other than the NDC site to which the returning NDC site first returned the data, whereby images of the stored dataset may be projected concurrently from a single NDC site into the second plurality of NDC client terminator sites; and	(f) each successive NDC site, having obtained a projected image of all the requested data, returning data requested from it upstream to the NDC site from which it received the request until the requested data arrives at the NDC client terminator site; and
(g) the NDC client terminator site, upon receiving the requested data, returning the requested data to the client site that requested access to the stored dataset.	(g) the NDC client terminator site, upon receiving the requested data, returning the requested data to the client site.

Defendants’ argue that the Court can hear the ‘914 Patent claims presented therein, but ought not also hear as part of the same proceedings the inter-related claims for infringement of the related patents (including the above ‘049 Patent) of the Second Amended Complaint – parent, sibling and children cases of the ‘914 Patent, all sharing a common invention disclosure. Defendants prefer to multiply the judicial proceedings by essentially asking for seven separate cases rather than one, without identifying any efficiencies or benefit to this multiplicity of litigation.

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IV. LEGAL ARGUMENT

Defendants concede that the Court may only deny a motion for leave to amend where there is: (1) undue prejudice; (2) bad faith or dilatory motives; (3) unexplained delay; (4) repeated failures to cure the deficiency by amendments previously allowed; and (5) futility. (D.I. 65 at 6.) The Defendants contend that one ground, futility, is present in this case. As set forth below, Defendants are wrong and MOSAID’s proposed Second Amended Complaint is not futile.

The first argument presented is lack of standing, which of course relates to futility. The argument for lack of standing is based upon a separate filing by VMware, which MOSAID is separately addressing. Thus, MOSAID need not repeat these arguments here.

Defendants’ second futility argument is based upon a supposed violation of 35 U.S.C. § 299. Section 299 was passed because, contrary to the Defendants’ final argument presented (D.I. 65 at 12-14), courts often held that the practice of suing multiple defendants for infringement of the same patent in the same case was not violative of Fed. R. Civ. P. 20. See Softview v. Apple, 2011 U.S. Dist. LEXIS 112476 (D. Del. 2011) (denying motion to sever)(Stark, J.), motion for reconsideration denied, Softview v. Apple, 2011 U.S. Dist. LEXIS 140540 (D. Del. 2011). Thus, Fed. R. Civ. P. provides no basis for claiming that the proposed Second Amended Complaint is “futile.”

As the Defendants acknowledge, there is a split of authority regarding Rule 20. In MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455, 457 (E. D. Tex. 2004), the court rejected the same argument that Defendants allege here. In refuting the defendants’ allegation of improper joinder, that Court opined that such a restricted “interpretation of

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Rule 20 is a hypertechnical one that perhaps fails to recognize the realities of complex, and particularly patent, litigation.” Id. at 457. The Court proceeded to criticize the defendants for “advocate[ing] a rule that requires separate proceedings simply because unrelated defendants … alleged to have infringed the same patent.” Id. Focusing on the need for pretrial efficiency, that Court then stated that “such a per se rule . . . elevates form over substance. Such an interpretation does not further the goals of Rule 20, especially for discovery and motion purposes.” Id. at 457. Other cases held similarly. See, e.g., Sprint Comm. v. TheGlobe.com, 233 F.R.D. 615, 617-18 (D. Kan. 2006) (denying motion to sever pursuant to Fed. R. Civ. P. 20).

The Defendants provide no analysis in attempting to apply misjoinder to the futility of the underlying claims asserted in a proposed amendment. Misjoinder does not translate into an automatic dismissal of claims. See, Philips Elecs. N. Am. Corp. v. Contec Corp., 220 F.R.D. 415, 418 (D. Del. 2004) (Jordan, J.) (ordering separate trials due to improper joinder). (See also D.I. 65 at 12-14 (citing cases ordering separate trials rather than dismissing cases outright due to misjoinder).) Here, no Defendant has moved to dismiss the First Amended Complaint on the basis of alleged misjoinder, suggesting that they know such a motion would be denied.

No Defendant has shown the Court why a futility argument can be predicated upon an alleged procedural misjoinder. The cases relied on by Defendants also do not support a futility argument because they do not result in dismissal. See, e.g., Lucent Techs., Inc. v. Extreme Networks, Inc., C.A. No. 03-508-JJF (D. Del. Feb. 9, 2004) (severing but not dismissing); Colt Defense LLC v. Heckler & Koch Defense, Inc., C.A.

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No. 04-258, 2004 U.S. Dist. LEXIS 28690, at *16 (E.D. Va. Oct. 22, 2004) (severing but not dismissing); Androphy v. Smith & Nephew, Inc., 31 F. Supp. 2d 620, 623 (N.D. Ill. 1998) (“the joinder of Stryker and Howmedica is improper. However, misjoinder is not grounds for dismissal”); Golden Scorpio Corp. v. Steel Horse Bar & Grill, 596 F. Supp. 2d 1282, 1286 (D. Ariz. 2009) (severing but not dismissing); Rudd v. Lux Prods. Corp., 2011 U.S. Dist. LEXIS 4804 , *12 (N.D. Ill. Jan. 12, 2011) (severing but not dismissing). For this reason alone, the Court should reject the Defendants’ arguments relating to misjoinder under AIA Section 299 and under Fed. R. Civ. P. 20.

As the Defendants concede, Section 299 only applies to actions “commenced” after September 16, 2011. (D.I. 65 at 7-8). They argue that the subsequent amendments to the pleadings ought not “relate back” to the original complaint. However, the same conduct that is alleged to give rise to the originally asserted causes of action – the making, use and sale of Adobe Flash Memory Server, Alcatel Velocix Digital Media Delivery Platform, IBM Websphere Software, Juniper Media Flow and VMware vFabric Gemfire Platform – is the very same conduct that is alleged to give rise to the infringement of these additional patents – patents which are part of the same patent family tree as the ‘914 alleged in the first amended complaint.

Cases in this District indicate that suing over identical products and interrelated patents does in fact meet the “claim …that arose out of the conduct, transaction, or occurrence…set out …in the original pleading” language of Fed. R. Civ. 15(c)(1). For example, in Infineon Technologies v. Fairchild Semiconductor International, 2009 U.S. Dist. LEXIS 94736 (D. Del. 2009)(Stark, J.), Infineon filed a complaint in Delaware for

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infringement of five of its patents and for declaratory judgment as to invalidity of six of Fairchild’s patents. Fairchild then filed an infringement action against Infineon in Maine for two patents not named in the Delaware case. Infineon filed a motion for leave to amend its Delaware Complaint to assert the two patents Infineon raised in the Maine action.

Refusing to deny the motion for leave to amend, Judge Stark noted that generally the Court that first has possession of the subject matter must decide it, and concluded that Delaware first had possession of a dispute that was broad enough to include the contentions regarding the Maine patents. He also said “the standard in this Circuit for determining whether 2 suits are one for purposes of the first-filed rule is whether they involve the same facts or issues.” Infineon, 2009 U.S. Dist. LEXIS 94736, at *19 (emphasis added). The Court held that the Maine and Delaware patents all involve a particular type of transistor, the MOSFET, and noted that Infineon had identified multiple points of commonality among the patents’ subject matter, where the same accused products were involved. Id., at 17-21.

Consistent with Judge Stark’s ruling in Infineon, other courts have consistently held that the word “transaction” in the Federal Rules “is a word of flexible meaning. It may comprehend a series of many occurrences, depending not so much upon the immediateness of their connection as upon their logical relationship.” DIRECTV, Inc. v. Barrett, 220 F.R.D. 630, 631 (D. Kan. 2004) (quoting Mosley v. Gen. Motors Corp., 497 F.2d 1330, 1333 (8th Cir. 1974)). For example, the “language in a number of decisions suggests that the courts are inclined to find that claims arise out of the same transaction or occurrence when the likelihood of overlapping proof and duplication in testimony

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indicates that separate trials would result in delay, inconvenience, and added expense to the parties and to the court.” 7 CHARLES ALAN WRIGHT, ARTHUR R. MILLER & MARY KAY KANE, FEDERAL PRACTICE AND PROCEDURE § 1653 (3d ed. 2001)(emphasis added).

The case upon which Defendants principally rely, Illinois Tool Works, Inc. v. Foster Grant Co., 395 F. Supp. 234, 250-51 (N.D. Ill. 1974), aff’d, 547 F.2d 1300 (7th Cir. 1976), is an “outdated out-of-circuit case,” which is not precedential. Fujitsu Ltd. v. Nanya Tech. Corp., 2007 U.S. Dist. LEXIS 13132, *8 (N.D. Ca1. 2007) (calling Illinois Tool “outdated and out-of-circuit,” and refusing to follow it where the alleged conduct at issue was the same for both the original claim and the newly asserted claim); see also Collezione Europa U.S.A., Inc. v. Amini Innovation Corp., 2009 U.S. Dist. LEXIS 76411, *10-12 (D.N.J. 2009) (another court in this circuit suggesting that relation back would apply in the context of related products and related copyrights, and characterizing the opinion in Illinois Tool as a more restrictive view of the law).

Defendants’ citation to Abbott Labs v. Johnson & Johnson, Inc., 524 F. Supp. 2d 553, 558 n.10 (D. Del. 2007) is also inapposite. In Abbott, the Court stated that the claim could not relate back because the right to assert infringement did not exist at the time of the original filing. That is exactly the opposite of this case, where each of the patents infringed are infringed by the same products identified in the original complaint, and where direct infringement is alleged in each of the complaints and amended complaints.

Likewise, none of these Defendants were brought into this case for the first time after the effective date of the AIA. “A party brought into court by an amendment, and who has, for the first time, an opportunity to make defense to the action, has a right to treat the proceeding, as to him, as commenced by the process which brings him into

9

court.” Farina v. Nokia, Inc., 625 F.3d 97, 111 (3d Cir. 2010) (emphasis added). The original complaint brought each of these defendants into the action prior to passage of the AIA.

Apparently anticipating this, the Defendants also assert that the original complaint against five of the Defendants should not count, because originally-asserted U.S. Patent No. 6,505,241 (the “‘241 Patent”) was disclaimed by a prior owner, unbeknownst to MOSAID. This argument misses the mark, for the First Amended Complaint nevertheless relates back to the Complaint because the patents are inter-related and the same conduct and products are alleged to infringe. Thus, it is still the same transaction or conduct at issue. Although the Defendants try to evade this basic truth by alluding to the allegations of pleading defects raised in their Rule 12(b)(6) motions to dismiss (see D.I. 65 at 11), these motions are not well-founded. Even if these motions had merit, Defendants focus on indirect infringement and willfulness implicitly concedes that every version of the complaint in this case, including the proposed Second Amended Complaint, asserts a viable cause of action for direct infringement against the same set of products.

As a final point, if the Court is inclined to accept the underlying assertion of misjoinder in this case, then it should sever the causes of action presented in the First and Second Amended Complaints rather than dismiss or deny leave of Court, actions which in effect would restart the case. Regardless, in such a case both MOSAID and Defendants would likely seek consolidation of some or all the cases pursuant to Fed. R. Civ. P. 42(a), at least for pre-trial purposes.

10

January 9, 2012

OF COUNSEL:

Steven G. Hill
Douglas R. Kertscher
HILL, KERTSCHER & WHARTON, LLP
[address telephone]

BAYARD, P.A.

/s/ Stephen B. Brauerman
Richard D. Kirk (rk0922)
Stephen B. Brauerman (sb4952)
[address email telephone]

Attorneys for Plaintiff Mosaid
Technologies Inc.

11

72

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
v.
ADOBE SYSTEMS, INC., ALCATEL-
LUCENT USA, INC., APPLE, INC.,
INTERNATIONAL BUSINESS
MACHINES CORP, JUNIPER
NETWORKS, INC., NETAPP, INC., RED
HAT, INC., AND VMWARE, INC.
Defendants.

C.A. No.: 11-698-GMS

JURY TRIAL DEMANDED

___________________________________

PLAINTIFF’S CONSOLIDATED ANSWERING BRIEF IN OPPOSITION TO
DEFENDANTS’ MOTIONS TO DISMISS UNDER
FEDERAL RULE OF CIVIL PROCEDURE 12(B)(6)

January 13, 2012

OF COUNSEL:

Steven G. Hill
Douglas R. Kertscher
HILL, KERTSCHER & WHARTON, LLP
[address telephone]

BAYARD, P.A.

Richard D. Kirk (rk0922)
Stephen B. Brauerman (sb4952)
[address email telephone]

Attorneys for Plaintiff Mosaid
Technologies Inc.

TABLE OF CONTENTS

I. NATURE AND STAGE OF PROCEEDINGS ...... 1

II. SUMMARY OF ARGUMENT ...... 3

1. Direct infringement ...... 3

2. Inducement to Infringe ...... 3

3. Contributory Infringement and Willful Infringement ...... 3

III. ARGUMENT ...... 4

A. Legal Standard ...... 4

B. MOSAID Properly Alleges Direct Infringement ...... 4

C. MOSAID Properly Alleges Inducement to Infringe ...... 6

D. MOSAID Properly Alleges Contributory and Willful Infringement ...... 10

IV. CONCLUSION ...... 12

i

TABLE OF AUTHORITIES

Page

Cases

Ashcroft v. Iqbal,
129 S. Ct. 1937 (2009) ...... 4, 7

Bell Atl. Corp. v. Twombly,
550 U.S. 544 (2007) ...... 4

Dataquill Ltd. v. High Tech Computer Corp.,
2011 U.S. Dist. LEXIS 138565 (S.D. Cal. Dec. 1, 2011) ...... 10

Dole v. Arco Chemical Co.,
921 F.2d 484 (3d Cir. 1990) ...... 13

Foman v. Davis,
371 U.S. 178 (1962) ...... 14

LG Display Co. v. AU Optronics Corp.,
686 F. Supp. 2d 429 (D. Del. 2010) ...... 11

Lucent Techs., Inc. v. Gateway, Inc.,
580 F.3d 1301 (Fed. Cir. 2009) ...... 11

Mallinckrodt Inc. v. E-Z-Em Inc.,
671 F. Supp. 2d 563 (D. Del. 2009) ...... 7, 8, 11, 12, 13, 14

Mallinckrodt Inc.v. E-Z-EM Inc.,
670 F. Supp. 2d 349 (D. Del. 2009) ...... 3, 5, 6

McZeal v. Sprint Nextel Corp.,
501 F.3d 1354 (Fed. Cir. 2007) ...... 6

Minkus Electronic Display Sys. Inc. v. Adaptive Micro Sys. LLC,
2011 U.S. Dist. LEXIS 26827 (D. Del Mar. 16, 2011) ...... 9, 12, 13, 14

Oxford Gene Tech. Ltd. v. Mergen Ltd.,
345 F. Supp. 2d 444 (D. Del. 2004) ...... 10

S.O.I.T.E.C. Silicon on Insulator Techs. v. MEMC Elec. Mats.,
2009 U.S. Dist. LEXIS 13155 (D. Del. 2009) ...... 12

SRI Int'l Inc. v. Internet Sec. Sys.,
647 F. Supp. 2d 323 (D. Del. 2009) ...... 10

ii

Xpoint Techs., Inc. v. Microsoft Corp.,
730 F. Supp. 2d 349 (D. Del. 2010) ...... 6, 9, 13

Statutes

35 U.S.C. § 271(a) ...... 4, 5

Rules Federal Rule of Civil Procedure 8(a)(2) ...... 4

iii

I. NATURE AND STAGE OF PROCEEDINGS

Plaintiff MOSAID Technologies, Inc. (“Plaintiff” or “MOSAID”) filed this patent infringement action on August 9, 2011 (See D.I. No. 1 [Plaintiff’s Complaint for Patent Infringement]), and filed a First Amended Complaint as a matter of right on October 6, 2011 (See D.I. No. 16 [Plaintiff’s First Amended Complaint for Patent Infringement]). The First Amended Complaint withdrew allegations of infringement of U.S. Patent No. 6,505,241 (“the ‘241 Patent”), and dismissed one particular defendant. In the First Amended Complaint, MOSAID alleges that Defendants Adobe Systems, Inc. (“Adobe”), Alcatel Lucent USA Inc., (“Alcatel”), International Business Machines Corp. (“IBM”), Juniper Networks, Inc. (“Juniper”), Red Hat Inc. (“Red Hat”) and VMware, Inc. (“VMware” and collectively with Adobe, Alcatel, IBM, Juniper, and Red Hat, “Defendants”) infringe U.S. Patent No. 5,892,914 (“the ‘914 Patent”), a sibling of the ‘241 Patent.¹

On December 23, 2011, Defendants each filed motions to dismiss and accompanying briefs. (See D.I. Nos. 42-44, 48-58, 60-61.) This brief responds to Defendants’ various motions to dismiss for failure to state a claim. (D.I. Nos. 42, 48, 50, 53, 56, 60.) MOSAID will respond to VMware’s standing motion and Juniper’s transfer of venue motion separately. (D.I. Nos. 45, 53.)

Rather than focusing on the pleadings and the law applying Fed. R. Civ. P 12(b)(6), Defendants speculate about Plaintiff’s decision to file and then amend the Complaint. Defendants mistakenly surmise that Plaintiff only amended the Complaint to allege that each Defendant infringed the ‘914 Patent because defense counsel informed Plaintiff that a

_________________________________

¹ MOSAID has filed also a Motion for Leave to File a Second Amended Complaint. (D.I. No. 39.) This Motion for Leave is fully briefed. (See D.I. Nos. 40, 64,65, 71.)

1

predecessor in interest had disclaimed the ‘241 Patent. Their speculation aside, MOSAID recently acquired this portfolio consisting of numerous inter-related patents in the field of networked distributed caches, and commenced an investigation of the activities of the Defendants pertinent to each of the patents in the portfolio.² That investigation resulted in a Complaint, an amendment, and a request for leave to further amend the Complaint in this case, as infringement continued to be investigated.

Other than mere speculation, Defendants offer no basis for asserting that MOSAID did not begin inquiring into Defendants’ infringement of the ‘914 Patent until after it received notice of the ‘241 disclaimer. Defendants’ conjecture is simply false. The investigation of Defendants’ infringement of the ‘914 Patent, and other related patents, was ongoing at the time MOSAID received notice of the disclaimer. MOSAID asserted each of the First Amended Complaint and the Second Amended Complaint after MOSAID had construed the relevant claims of the patents asserted in each and prepared detailed infringement analyses for each product and relevant patent claim on an element-by-element basis.³ In its original Complaint, MOSAID prioritized the ‘241 Patent, and did not accuse all of the Defendants of infringing the ‘914 Patent, but it continued to investigate the Defendants’ infringement of the related patents. The ‘241 and ‘914 Patents are related patents. The ‘914 Patent describes methods employed by the apparatus claimed in the ‘241 Patent. In fact, the ‘241 Patent is a continuation of the ‘914 Patent. Defendants merely assert that the patents are substantially different but provide no support for that contention.

______________________________________

² The company that MOSAID purchased the patents from was not Network Caching Technologies (“NCT”). Unbeknownst to MOSAID, NCT had previously disclaimed the ‘241 Patent, a fact which is not evident from any review of the ‘241 or ‘914 Patent file history.

³ While these materials are protected as attorney work product because they include attorneys’ mental impressions, if the Court has concerns regarding the adequacy of Plaintiff’s pre-filing investigation, Plaintiff is certainly willing to provide them to the Court for in camera review.

2

Because of the close interrelationship between the patents, it is hardly surprising that MOSAID’s First Amended Complaint contains infringement allegations that are virtually unchanged from those in the original Complaint. The products and practices accused of infringement are identical in each pleading. As set forth below, the allegations asserted against Defendants in the First Amended Complaint satisfy the requirements of Rule 12(b)(6) and the Court should deny Defendants’ Motions to Dismiss.

II. SUMMARY OF ARGUMENT

1. Direct infringement

Because the First Amended Complaint pleads each of the six facts required under Delaware law, Plaintiff states a claim for direct infringement. Mallinckrodt Inc.v. E-Z-EM Inc., 670 F. Supp. 2d 349, 353 (D. Del. 2009) (Farnan, J.).

2. Inducement to Infringe

Plaintiff’s First Amended Complaint alleges that the original Complaint provided Defendants with knowledge of the ‘914 Patent two months before it was filed. This factual allegation is sufficient for the Court reasonably to infer that Defendants had knowledge of the ‘914 Patent at the time of the infringing activity. Further, to the extent that the Court disagrees as to the timing of when the Defendants gained knowledge of the ‘914 Patent that is an issue that merely influences the scope of recoverable damages. It is not a reason to dismiss the complaint at the pleading stage.

3. Contributory Infringement and Willful Infringement

Plaintiff adequately alleges contributory and willful infringement. The knowledge allegations, which are explained more fully in the section on inducement below, apply equally to the Plaintiff’s claims for contributory and willful infringement. Further, the other elements that

3

Defendants claim should have been asserted in the First Amended Complaint are extraneous to whether Plaintiff has properly stated a claim. Lastly, if the Court finds that Plaintiff inadequately alleged its claims, MOSAID respectfully requests that the Court grant the Plaintiff leave to amend, rather than dismissing the First Amended Complaint.

III. ARGUMENT

A. Legal Standard

Federal Rule of Civil Procedure 8(a)(2) only requires that a complaint contain “a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (internal quotations omitted). Although a complaint must contain more than legal conclusions, a complaint is not required to plead “detailed factual allegations.” Twombly, 550 U.S. at 555 and Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009). Even under the recent heightened pleading standards articulated by the Supreme Court, a plaintiff’s burden in pleading its complaint is not equivalent to its burden at trial.

B. MOSAID Properly Alleges Direct Infringement

The Defendants do not agree amongst themselves on whether MOSAID adequately pled direct infringement. In fact, VMware is the only party to contend that MOSAID fails to state a claim for direct infringement. As five of the six Defendants concede, MOSAID adequately pleads direct infringement in its First Amended Complaint by alleging that the Defendants used “the methods described in one or more of the claims of the ‘914 Patent . . . [when they] tested, demonstrated and developed true and accurate technical literature relating to” the accused products in violation of 35 U.S.C. § 271(a). (See D.I. No. 16 at ¶ 24; see also id. at ¶¶ 30, 31, 32, 33, 34.) Use of the methods of the ‘941 Patent by each Defendant constitutes direct

4

infringement, even if the use results from testing its or demonstrating its equipment, whether for internal use or to validate various claims made by the Defendants in their marketing materials about the way their equipment performs. See 35 U.S.C. § 271(a).

To plead a viable claim for direct infringement the plaintiff must have “1) asserted plaintiff's ownership of the patent-in-suit; 2) named defendants; 3) cited the patent-in-suit as allegedly infringed; 4) described the means by which defendant allegedly infringed; 5) pointed to the specific patent law invoked; and 6) identified the allegedly infringing product manufactured and distributed by defendants.” Mallinckrodt Inc., 670 F. Supp. 2d at 353. The First Amended Complaint adequately pleads each of the six facts. Plaintiff’s ownership is alleged in paragraph 21. (D.I. No. 16.) The Defendants are named in paragraphs 2-8. (Id.) The patent-in-suit is cited in several paragraphs, including paragraph 21. (Id.) Plaintiff describes the means by which the Defendants allegedly infringe in multiple paragraphs, including paragraphs 22-24 and 26-35. (Id.) Plaintiff identifies the applicable patent laws in paragraphs 22 and 27. (Id.) Finally, Plaintiff identifies the allegedly infringing products manufactured, used, and sold by the Defendants in paragraphs 23 and 28. (Id.

) Despite allegations concerning each of the required claim elements, VMware alone contends that MOSAID fails to adequately allege that the Defendants perform all of the steps of the patented method. At this stage in the litigation, however, “a patentee need only plead facts sufficient to place the alleged infringer on notice as to what he must defend,” and is “not required to specifically include each element of the claims of the asserted patent.” Mallinckrodt Inc., 670 F. Supp. 2d at 353 (quoting McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007). A plaintiff is not even required to “identify which claims it is asserting.” Xpoint Techs., Inc. v. Microsoft Corp., 730 F. Supp. 2d 349, 353 (D. Del. 2010) (Robinson, J.). If the claim

5

does not have to be identified, there can be no basis in Delaware law for contending that the First Amended Complaint must plead facts showing that VMware performs each step of any particular method claimed within the patent. Because VMware confuses the difference between what MOSAID must prove at trial and what MOSAID must plead in its First Amended Complaint, the Court should deny the Motion to Dismiss as to the adequacy of pleading direct infringement.

VMware’s contention that the investigation of its use of the ‘914 Patent did not begin until receipt of notice that the ‘241 Patent had been disclaimed is both irrelevant and false. (See supra Part I.) Regardless, the Court need not resolve this factual dispute at the pleading stage, because on a motion to dismiss, the factual allegations set forth in the First Amended Complaint must be accepted as true. See Iqbal, 129 S. Ct. at 1940-41.

VMware also argues that MOSAID fails to state a claim for direct infringement because its allegations contain conditional language. Although some courts disfavor the use of conditional language, its use does not warrant dismissal of a complaint. This Court has found a complaint to sufficiently allege infringement, even though it contained conditional language. Mallinckrodt Inc. v. E-Z-Em Inc., 671 F. Supp. 2d 563, 569 (D. Del. 2009) (Farnan, J.) (holding that “the proposed Amended and Supplemental Complaint sufficiently pleads that Defendants intended to induce infringing acts” when the complaint alleged defendants “actively induc[e] the making, use, offer for sale, sale, and/or import”). Despite its use of conditional language, because the First Amended Complaint gives the Defendants fair notice of what the claim is, Defendants’ motions should be denied.

C. MOSAID Properly Alleges Inducement to Infringe

MOSAID adequately alleges that each of the Defendants knowingly induced infringement of the ‘914 Patent. See Mallinckrodt Inc., 671 F. Supp. 2d at 568-69 (outlining the

6

elements of inducement as requiring the plaintiff plead “that the alleged infringer's actions induced infringing acts and that he knew or should have known his actions would induce actual infringements.”). In paragraph 21 of its First Amended Complaint, Plaintiff alleges, “[t]he ‘914 Patent is attached to the original complaint in this matter, and each of the Defendants has been aware of the ‘914 Patent since at least as early as on or about August 2011, when each was served with the summons and complaint in this case.” (See D.I. No. 16 (emphasis added).) Plaintiff further alleges, that with full knowledge of the ‘914 Patent the Defendants encourage users to perform the steps claimed in the ‘914 Patent by continuing to provide marketing and sales-related literature, relating to the accused products. (See D.I. No. 16 at ¶. 35.) Although the original Complaint only alleged that Red Hat infringed the ‘914 Patent, it alleged that each Defendant induced infringement of a sister patent – the ‘241 Patent. Given that the ‘914 Patent was attached to the Complaint served on all of the Defendants, each Defendant had knowledge of the ‘914 Patent as of at least August 9, 2011. Because each Defendant had actual knowledge of the ‘914 Patent and MOSAID’s previously-asserted allegation that Defendants induced infringement of a sister patent, MOSAID’s allegation that Defendants knowingly induced infringement of the ‘914 Patent after service of the original Complaint is reasonable.

Defendants cite a line of cases which are not applicable to this case, holding that knowledge of the patent occurring after filing the action asserting patent infringement is insufficient for pleading knowledge for indirect infringement. See e.g. Xpoint Techs., Inc., 730 F. Supp. 2d at 357. Assuming arguendo that this line of cases may have applied to the original Complaint, it does not apply to the First Amended Complaint. The First Amended Complaint, alleges that the Defendants had knowledge of the ‘914 patent approximately two months before it was filed.

7

Further, when this Court has previously held that the plaintiff failed to adequately allege pre-filing knowledge, the Court did not dismiss the complaint but rather limited the available damages unless the plaintiff amended its complaint:

Given that all defendants will be deemed to have knowledge of the ’174 patent as of the date the complaint was filed, and given that the only consequence (I believe) of this decision is limiting plaintiffs damages to the period dating from a defendant’s first knowledge of the ’174 patent, the court will so limit plaintiff's damages as to each defendant unless plaintiff chooses to amend its complaint to allege sufficient facts as to an individual defendant's knowledge.

Minkus Electronic Display Sys. Inc. v. Adaptive Micro Sys. LLC, C.A. No. 10-666-SLR, 2011 U.S. Dist. LEXIS 26827, *17 (D. Del Mar. 16, 2011) (J. Robinson). In the event that this Court concludes that the original Complaint did not give the Defendants adequate notice of the ‘914 Patent, the Court should simply limit the damages period to the date after the First Amended Complaint was filed unless MOSAID discovers facts demonstrating Defendants’ knowledge of the ‘914 Patent prior to that date.

While the Defendants are correct that at trial Plaintiff must prove a third party direct infringer, at the pleading stage, this issue is premature. See Minkus Electronic Display Sys. Inc., 2011 U.S. Dist. LEXIS 26827, at *14 (“Plaintiff need not plead that a specific third party directly infringes the patent-in-suit in order to state a claim for indirect infringement.”). Even absent identification of a third party, Plaintiff adequately pleads inducement of infringement and the Motions to Dismiss should be denied.

Finally, not only did the original Complaint provide the Defendants with knowledge of the ‘914 Patent but it also evidences that they were subjectively aware of the risks of infringement and allows the Court to reasonably infer intent to induce infringement. In the context of indirect infringement, MOSAID is not required to provide direct evidence of intent. Oxford Gene Tech. Ltd. v. Mergen Ltd., 345 F. Supp. 2d 444, 464 (D. Del. 2004) (Jordan, J.) (“A

8

patentee may prove intent through circumstantial evidence.”). Specifically, this District has held that “showing that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements . . . amounts to a showing of specific intent.” SRI Int'l Inc. v. Internet Sec. Sys., 647 F. Supp. 2d 323, 335 (D. Del. 2009) (Robinson, J.). See also Dataquill Ltd. v. High Tech Computer Corp., C.A. No. 08-cv-543-IEG (BGS), 2011 U.S. Dist. LEXIS 138565, *26-*28 (S.D. Cal. Dec. 1, 2011).

Additionally, intent to infringe can be inferred from MOSAID’s allegation that the Defendants provide technical product information. (See D.I. No. 16 at ¶¶ 24, 30-35); LG Display Co. v. AU Optronics Corp., 686 F. Supp. 2d 429, 464-65 (D. Del. 2010) (Farnan, J.) (holding that “product information and marketing materials to its U.S. customers for the purpose of encouraging U.S. sales” was evidence of intent to induce); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1322 (Fed. Cir. 2009) (“Evidence of. . . advertising an infringing use, can support a finding of an intention for the product to be used in an infringing manner.”).

Further, this Court has not required plaintiffs to plead factual allegations of intent to induce infringement to survive a motion to dismiss. Mallinckrodt Inc., 671 F. Supp. 2d at 569. There, the Court found “the proposed Amended and Supplemental Complaint sufficiently pleads that Defendants intended to induce infringing acts” when the complaint only alleged the conclusory statements that Defendants “actively induc[e] the making, use, offer for sale, sale, and/or import of” allegedly infringing product, “intend[ing] that others will use its injector systems in a manner that infringes the ‘434 patent.” Given the lower standard for pleading intent than knowledge, MOSAID adequately pled the specific intent element.

9

D. MOSAID Properly Alleges Contributory and Willful Infringement

Again the Defendants cannot agree whether the Plaintiff adequately pleads contributory and willful infringement. See Mallinckrodt Inc., 671 F. Supp. 2d at 569 (to plead contributory infringement the complaint must adequately plead that “the alleged contributory infringer knew that the combination for which his component was especially designed was both patented and infringing”) and S.O.I.T.E.C. Silicon on Insulator Techs. v. MEMC Elec. Mats., 2009 U.S. Dist. LEXIS 13155 (D. Del. 2009) (Robinson, J.) (finding that post-Twombly willful infringement can be adequately plead with conclusory allegations and holding that “is and has been willful” is sufficient). Some contend that Plaintiff fails to adequately allege the knowledge and intent elements. Others assert that the Plaintiff is also obligated to identify the specific component and plead that it lacks substantial non-infringing uses. As discussed in the preceding section, the Plaintiff alleges sufficient facts (based on the August, 2011 filing of the original Complaint) for the Court reasonably to infer that the Defendants had knowledge of the patent-in-suit before they induced infringement.

Additionally, to state a claim for contributory infringement, a plaintiff is not required to plead that a third party committed an entire act of infringement. See Minkus Electronic Display Sys. Inc., 2011 U.S. Dist. LEXIS 26827 at *14. Likewise, a plaintiff is not required to identify the component that lacks substantial noninfringing uses. Id at *15. As long as the plaintiff identifies the “specific products that directly infringe” that “satisfies the requirement that some part or product contributorily infringe.” Id. Again, because the Defendants confuse the difference between stating a claim for contributory infringement and proving contributory infringement, Defendants’ motions should be denied.

10

In the event that the Court finds that the Plaintiff has not adequately alleged direct infringement, inducement to infringe, contributory infringement, and/or willfulness, the Court should grant leave for the Plaintiff to amend to cure, or withdraw, the necessary allegations. Federal Rule of Civil Procedure 15(a) states that “[t]he court should freely give leave when justice so requires.” The Third Circuit has followed this mandate, adopting a policy of liberally allowing amendment unless certain extraordinary circumstances exist. See Dole v. Arco Chemical Co., 921 F.2d 484, 487 (3d Cir. 1990) (noting that the Third Circuit uses “strong liberality” in determining whether amendment should be permitted); Mallinckrodt Inc., 671 F. Supp. 2d at 567-68. Specifically in the context of patent infringement, this Court has consistently granted leave for the plaintiff to amend its complaint in situations where it found that the plaintiff inadequately pled infringement. See Xpoint Techs., Inc., 730 F. Supp. 2d at 357 (“The court will give leave to plaintiff to amend its indirect infringement claims”); Mallinckrodt Inc., 671 F. Supp. 2d at 567-68 ; Minkus Electronic Display Sys. Inc., 2011 U.S. Dist. LEXIS 26827 at *17.

Amendment should be permitted absent a showing of “undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendment previously allowed, undue prejudice to the opposing party by virtue of the allowance of the amendment, futility of the amendment, etc.” Foman v. Davis, 371 U.S. 178, 182 (1962). In the present case, allowing an amendment to cure any pleading deficiencies would cause no conceivable prejudice to the Defendants. Here, any amendment would not cause undue delay because discovery has not yet begun. Additionally, the Defendants’ raised this issue for the first time on December 23, 2011 in their motions to dismiss. Finally, an opportunity to cure will not be futile because the Plaintiff’s ongoing investigation continues to yield the discovery of more factual information

11

which can now be plead (e.g., specific customers of the Defendants who are directly infringing, along with Defendants’ intentional and ongoing sales, marketing and customer support initiatives undertaken with specific knowledge of the ‘914 Patent). Given the specific context of this case, the applicable rules, and the Third Circuit’s policy of liberality in granting leave to amend, if the Court were to conclude that MOSAID failed sufficiently to pled any of its claims, it should afford MOSAID the ability to amend to cure or withdraw the allegations.

IV. CONCLUSION

For the foregoing reasons, Plaintiff respectfully requests that the Court deny each of the Defendants’ Motions to Dismiss.

January 13, 2012

OF COUNSEL:

Steven G. Hill
Douglas R. Kertscher
HILL, KERTSCHER & WHARTON, LLP
[address telephone]

BAYARD, P.A.

/s/ Stephen B. Brauerman
Richard D. Kirk (rk0922)
Stephen B. Brauerman (sb4952)
[address email telephone]

Attorneys for Plaintiff
MOSAID Technologies Inc.

12

73

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
v.
ADOBE SYSTEMS, INC., ALCATEL-
LUCENT USA, INC., APPLE, INC.,
INTERNATIONAL BUSINESS
MACHINES CORP, JUNIPER
NETWORKS, INC., NETAPP, INC., RED
HAT, INC., AND VMWARE, INC.
Defendants.

C.A. No.: 11-698-GMS

JURY TRIAL DEMANDED

___________________________________

PLAINTIFF’S ANSWERING BRIEF IN OPPOSITION TO DEFENDANT JUNIPER
NETWORKS’ MOTION TO DISMISS MOSAID’S FIRST AMENDED COMPLAINT
AND TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA

January 13, 2012

OF COUNSEL:

Steven G. Hill
Douglas R. Kertscher
HILL, KERTSCHER & WHARTON, LLP
[address telephone]

BAYARD, P.A.

Richard D. Kirk (rk0922)
Stephen B. Brauerman (sb4952)
[address email telephone]

Attorneys for Plaintiff Mosaid
Technologies Inc.

TABLE OF CONTENTS

I. NATURE AND STAGE OF PROCEEDINGS ...... 1

II. SUMMARY OF ARGUMENT ...... 2

III. ARGUMENT ...... 2

A. MOSAID’S First Amended Complaint properly asserts direct, indirect and willful infringement claims against Juniper ...... 2

B. Defendants are properly joined as parties in this case ...... 3

C. The District of Delaware is the proper venue for this action ...... 3

1. Relevant Factors for a Motion to Transfer ...... 4

2. Private Interest Factors ...... 5

3. Public Interest Factors ...... 8

IV. CONCLUSION ...... 10

i

TABLE OF AUTHORITIES

Federal Cases

Acuity Brands, Inc. v. Cooper Industries, Inc.,
2008 U.S.Dist. LEXIS 58364 at *2 ...... 4, 5, 6, 7, 8

Apple, Inc. v. High Tech Computer Corp.,
2011 U.S. Dist. LEXIS 4278, at *4 (D. Del. January 18, 2011) ...... 6

Automotive Technologies Int’l, Inc. v. American Honda Motor Co., Inc.,
2006 U.S. Dist. LEXIS 92249, *3 ...... 5, 9

Campbell Pet Company v. Miale,
542 F.3d 879 (Fed. Cir. 2008) ...... 6

Carl Zeiss Meditec v. Optovue, Inc.,
2011 U.S. Dist. LEXIS, *4 (D. Del. April 12, 2011) ...... 7, 8

Infineon Technologies v. Fairchild Semiconductor International,
2009 U.S. Dist. LEXIS 94736, *19 (D. Del. 2009) ...... 8

Jumara v. State Farm, Ins. Co.,
55 F.3d 873, 879 (3d Cir. 1995) ...... 4, 7

Serco Services Co. v. Kelley Co.,
51 F.3d 1037, 1039 (Fed. Cir. 1993) ...... 8

Shutte v. Armco Steel Corp.,
431 F.2d 22, 25 (3d Cir. 1970) ...... 4

Wesley-Jessen Corp. v. Pilkington Visioncare, Inc.,
157 F.R.D. 215, 218 (D. Del. 1993) ...... 8

Statutes

28 U.S.C. § 1404 ...... 8

Leahy-Smith American Invents Act, Pub. L. No. 112-29, § 299 (2011) ...... 3

Other Authorities http://www.uscourts.gov/Statistics/FederalCourtManagementStatistics.aspx ...... 9

ii

In addition to asserting the same general arguments for dismissal that the other Defendants in this action have made, Defendant Juniper Networks, Inc. (“Juniper”) has moved to transfer venue to the Northern District of California. As set forth below and in MOSAID’s Consolidated Answering Brief in Opposition to Defendants’ Motions to Dismiss (the “Consolidated Answering Brief”) (D.I. 72), Juniper’s arguments for dismissal are without merit and venue is proper in the District of Delaware. Therefore, Juniper’s Motion to Dismiss MOSAID’s First Amended Complaint and to Transfer Venue to the Northern District of California should be denied.

I. NATURE AND STAGE OF PROCEEDINGS

Plaintiff filed the within patent infringement action on August 9, 2011 (See D.I. 1 [Plaintiff’s Complaint for Patent Infringement]), and filed a First Amended Complaint on October 6, 2011 (See D.I. 16 [Plaintiff’s First Amended Complaint for Patent Infringement]). On December 13, 2011, Plaintiff filed a Motion for Leave to File a Second Amended Complaint, (originally filed November 11, 2011 as D.I. 33) seeking to add additional infringement allegations relating to the same accused products that are already in the case, based upon Plaintiff’s continuing investigation of these products. These additional allegations arise out of the fact that these accused products are also believed to infringe additional patents which are related to the ‘914 patent asserted in the First Amended Complaint. No new parties and no new products were sought to be added by the proposed Second Amended Complaint. Defendants have each filed motions to dismiss Plaintiff’s First Amended Complaint, contending that it insufficiently pleads indirect and willful infringement.

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II. SUMMARY OF ARGUMENT Juniper’s arguments for dismissal are substantively the same as those of the other Defendants. Therefore, to simplify the issues for the Court, MOSAID addresses those arguments in its Consolidated Answering Brief. (D.I. 72.) The unique arguments Juniper asserts concerning joinder and transfer and are addressed in this brief. This action was filed before the effective date of the Leahy-Smith America Invents Act, so its provisions precluding the joinder of multiple patent infringers in one action do not apply to this case. Furthermore, while Juniper’s Brief indicates that Defendants’ Joint Motion to Dismiss or Sever Claims for Improper Joinder is concurrently filed, no joint motion has actually been filed at this time. MOSAID, with the consent of Juniper’s counsel and permission of the Court, will address that argument in detail in the event a joint motion is filed.

Juniper requests that the action against it be severed and transferred to the Northern District of California, but it fails to carry its burden to establish a need for transfer. Among other things, Plaintiff legitimately chose this forum as the state of incorporation of every Defendant in this case. Furthermore, Juniper demonstrates no private or public interest factors that show a need to interfere with that rational choice.

III. ARGUMENT

A. MOSAID’S First Amended Complaint properly asserts direct, indirect and
willful infringement claims against Juniper.

Each Defendant has moved to dismiss Plaintiff’s First Amended Complaint, contending that it fails to adequately plead indirect and willful infringement claims. Rather than file a separate response opposing Juniper’s Motion on this issue, Plaintiff incorporates herein its

2

Consolidated Answering Brief (D.I. 72), showing that Plaintiff has sufficiently plead its claims in this case.¹

B. Defendants are properly joined as parties in this case.

Juniper’s Brief asserts that the First Amended Complaint “should be dismissed for improper joinder.” (See D.I. 54 at 12 [Defendant Juniper Networks’ Motion to Dismiss MOSAID’S First Amended Complaint and to Transfer Venue to the Northern District of California]). Juniper includes a short, one-paragraph argument on this point and states that “[t]he grounds for this requested relief are further set forth in Defendants’ Joint Motion to Dismiss Or Sever Claims for Improper Joinder.” To date, no such Joint Motion has been filed, and counsel for Juniper has informed Plaintiff’s counsel that there is no need to respond to Juniper’s contention on this point unless and until Defendants submit a Joint Motion. As a result, the Court should deny this aspect of Juniper’s motion as moot. Suffice to say that this action was filed before the effective date of the Leahy-Smith American Invents Act, Pub. L. No. 112-29, § 299 (2011), and that Plaintiff properly sued Defendants for infringement of related patents in accordance with procedural rules in place at the time of filing. Plaintiff will further address this issue when and if Defendants file a Joint Motion, as indicated.

C. The District of Delaware is the proper venue for this action.

All of the Defendants in this action, including Juniper, are Delaware corporations. Thus, venue is unquestionably proper in this judicial district. Nonetheless, Juniper has moved to sever the claims against it and to transfer the case to the Northern District of California, arguing that it

_______________________________

¹ Plaintiff further notes that, while Juniper’s Motion is entitled “Defendant Juniper Networks’ Motion to Dismiss MOSAID’S First Amended Complaint,” Juniper makes no assertion that the First Amended Complaint fails to properly allege a claim of direct infringement. Therefore, with respect to its argument that infringement allegations have been insufficiently plead, Juniper’s Motion is more properly characterized as a partial motion to dismiss.

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is a “clearly more convenient forum.” (See D.I. No. 54 at 13). The Third Circuit and this Court have issued several decisions that mandate denial of Juniper’s Motion.

1. Relevant Factors for a Motion to Transfer

In a motion to transfer, the burden is on the movant to establish the need to transfer to the proposed venue. See, e.g., Jumara v. State Farm, Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995); see also Acuity Brands, Inc. v. Cooper Industries, Inc., 2008 U.S.Dist. LEXIS 58364 at *2. “[U]nless the balance of convenience strongly favors a transfer in favor of [the] defendant, the plaintiff’s choice of forum should prevail.” Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970).

In Jumara, the Third Circuit identified private and public interest factors as among those that may be considered in deciding a motion to transfer:

Private interest factors: (1) plaintiff’s forum preference as manifested in the original choice; (2) defendant’s preference; (3) whether the claim arose elsewhere; (4) the convenience of the parties as indicated by their relative physical and financial condition; (5) the convenience of the witnesses but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and (6) location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum).

Public interest factors: (1) the enforceability of the judgment; (2) practical considerations that could make the trial easy, expeditious, or inexpensive; (3) the relative administrative difficulty in the two fora resulting from court congestion; (4) the local interest in deciding local controversies at home; (5) the public policies of the fora; and (6) the familiarity of the trial judge with the applicable state law in diversity cases. Jumara, 55 F.3d at 875.

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Application of these factors weighs against transfer under the circumstances of this case and Juniper cannot carry its burden to overcome Plaintiff’s chosen venue.

2. Private Interest Factors

The initial private interest factor – the plaintiff’s choice of forum – weighs strongly against transfer. Juniper asserts that Plaintiff’s choice merits less deference in this instance because it is not MOSAID’s principal place of business, as MOSAID is a Canadian corporation. However, even where the plaintiff’s principal place of business is not the pending venue, “the court should not disregard a plaintiff’s choice of forum where it has a rational and legitimate reason for choosing the forum.” Automotive Technologies Int’l, Inc. v. American Honda Motor Co., Inc., 2006 U.S. Dist. LEXIS 92249, *3. In this action, all of the Defendants are Delaware corporations. (See D.I. No. 16, ¶¶ 2-8 [Plaintiff’s First Amended]). It is imminently rational for Plaintiff to sue Defendants in the State where each one of them is incorporated. “Having received the benefits of Delaware incorporation, a defendant cannot now complain that another corporation has chosen to sue it here.” Acuity Brands, supra at *3.

Plaintiff’s headquarters is based in Ottawa, Canada. Plaintiff’s principal office is less than 500 miles from Wilmington, Delaware, making it a reasonable forum for trial. Defendants are all Delaware corporations and none have moved to dismiss on personal jurisdiction grounds. In fact, Juniper does not contend that the Plaintiff picked this forum for an illegitimate reason. It is imminently reasonable for Plaintiff to choose a forum in which each of the Defendants is incorporated and which is reasonably close to Plaintiff’s corporate residence. As Juniper does not deny that there is legitimate reason for Plaintiff to file suit in Delaware, Juniper is unable to carry its substantial burden to overcome Plaintiff’s chosen forum.

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Furthermore, while each of the Defendants is subject to jurisdiction in Delaware, MOSAID is not subject to jurisdiction in the venue where Juniper seeks transfer – the Northern District of California. MOSAID is not registered to do business in California and it maintains no employees or offices there. (See Smetana Declaration, ¶ 5.) Consequently, MOSAID does not have the “continuous and systematic” contacts with California necessary to sustain general jurisdiction over MOSAID there (See Campbell Pet Company v. Miale, 542 F.3d 879 (Fed. Cir. 2008)), and Juniper has made no showing of specific jurisdiction. Thus, MOSAID made an appropriate choice of forum and venue should remain in Delaware.

Juniper’s primary arguments regarding the private interest factors are similar to those that this Court has considered and rejected on numerous occasions. Juniper asserts that convenience of the parties weighs in favor of transfer. However, Juniper provides no evidence of any undue burden that will result from litigation in Delaware.² See Apple, Inc. v. High Tech Computer Corp., 2011 U.S. Dist. LEXIS 4278, at *4 (D. Del. January 18, 2011) (transfer denied where movant “failed to demonstrate a specific physical or financial condition that would make litigating in Delaware burdensome.”). Litigation in California would certainly not be more convenient for MOSAID, which has no connection of any kind with California. (See Smetana Declaration, ¶ 5.) When a plaintiff has a rational basis for bringing an action in Delaware, that choice of forum warrants strong deference, even if another forum is more convenient for both the Plaintiff and the Defendant – which California is not. See Acuity, supra at *4 (denying transfer where plaintiff was headquartered in Georgia, the venue to which transfer was sought, but had

_________________________________

² In fact, litigation in Delaware would appear to be quite convenient and pose no difficulty for Juniper, as Juniper recently filed its own patent action in the District of Delaware against a California-based competitor. See Juniper Networks, Inc. v. Palo Alto Networks, Inc., C.A. No. 1:11-cv-01258-SLR, filed on December 19, 2011.

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rational basis for filing action in Delaware because “even if it would be more convenient for [the plaintiff] to litigate in Georgia, its choice of forum should not be lightly disturbed.”).

Juniper also claims that the convenience of witnesses weighs in favor of transfer. Specifically, Juniper notes that the inventor is identified on the patents as residing in California and asserts that because Juniper is headquartered in California “in large part its technical and business witnesses are likely to be in this same location.” (See D.I. 54 at 16). Juniper overlooks the fact that the Third Circuit considers convenience of the witnesses “only to the extent that the witnesses may actually be unavailable for trial.” Jumara, 55 F.3d at 879. Juniper fails to identify a single witness who will be unavailable for trial in Delaware. See Acuity, supra at *4 (transfer denied where movant identified out-of-state witnesses but failed “to demonstrate that these witnesses will be either unable or unwilling to travel to Delaware.”); see also Carl Zeiss Meditec v. Optovue, Inc., 2011 U.S. Dist. LEXIS, *4 (D. Del. April 12, 2011) (transfer denied where Court noted that “[w]hile it is true that none of the potential third-party witnesses identified by the parties appear to reside in Delaware, [movant] fails to demonstrate that any witness is unable or unwilling to travel to Delaware.”) In addition, Juniper’s “technical and business witnesses” at its headquarters are irrelevant to this consideration, as “[p]arty witnesses such as employees are presumed willing to testify at trial.” Id. Thus, Juniper has failed to establish that the convenience of witnesses favors transfer of this action.

Similarly, Juniper contends that the location of books, records and evidence merits transfer to the Northern District of California because its headquarters is located there. Again, Juniper fails to demonstrate that any evidence could not be produced in Delaware.

As this court has previously noted:

Technological advances have substantially reduced the burden of having to litigate in a distant forum . . . These technologies have shortened the time it takes

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to transfer information, reduced the bulk or size of documents or things on which information is recorded and can be transferred and have lowered the cost of moving that information from one place to another.

Carl Zeiss, supra at *4 (quoting Wesley-Jessen Corp. v. Pilkington Visioncare, Inc., 157 F.R.D. 215, 218 (D. Del. 1993). The location of evidence does not warrant transfer of this case.

3. Public Interest Factors

Several public interest factors have no application in this case, and Juniper essentially concedes as much. Of the public interest factors Juniper claims, it argues most strenuously of “practical considerations,” which it again contends weighs in favor of transfer because of the location of documents and witnesses. As previously noted, Juniper provides no evidence – or even a claim – that any particular witnesses or evidence will be unavailable for trial in Delaware. Therefore, these “practical considerations” do not justify transfer of this case. See Acuity, supra at *4 (noting that “a flight to Delaware is not an onerous task warranting transfer.”)

Juniper also argues that its filing of a declaratory judgment action in the Northern District of California, over four months after Plaintiff filed this action, supports transfer of this case. (See D.I. 54 at 18). Juniper offers no authority for its position that a later-filed case merits transfer of an action that precedes it.³ Moreover, as stated above, MOSAID is not subject to jurisdiction in California. It would be inappropriate to use 28 U.S.C. § 1404 to transfer this

________________________________

³ To the extent Juniper contends that the California declaratory judgment action should be considered “first filed” because MOSAID’s amended complaints assert additional patents not identified in MOSIAD’s initial complaint, MOSAID notes that the complaint and amended complaints all concern the same accused products and the same technology. “[T]he standard in this Circuit for determining whether two suits are one for purposes of the first-filed rule is whether they involve the same facts or issues.” Infineon Technologies v. Fairchild Semiconductor International, 2009 U.S. Dist. LEXIS 94736, *19 (D. Del. 2009). Moreover, the first filed rule is not absolute, and the Court has the discretion to maximize judicial efficiency and economy in determining the venue for litigation to proceed. Serco Services Co. v. Kelley Co., 51 F.3d 1037, 1039 (Fed. Cir. 1993).

8

action from a Court that undisputedly has jurisdiction over all parties, to a venue that cannot exercise jurisdiction over MOSAID.

In addressing other public interest factors, Juniper asserts that transfer will further the public interest of relieving Delaware’s court docket. However, the Northern District of California’s docket is similarly burdened. The most recent (June 2011) Federal Court Management Statistics show that the Northern District of California has more cases per judgeship (486) than does the District of Delaware (464) and that the Northern District of California has a longer time to trial (30.3 months) than does the District of Delaware (26.8 months).⁴ In addition, for the first time in several years, the District of Delaware now has a full bench, with the recent confirmation of its fourth District Judge and second Magistrate Judge. Thus, court congestion does not warrant transfer to the Northern District of California.

Finally, Juniper contends that local interest and public policy weighs in favor or transferring this action. “[I]t is well settled that patent rights are not considered state or local matters and do not implicate local interests.” Automotive Technologies Int’l, Inc., supra at *3; see also Carl Zeiss Meditec, supra at *5 (“because this is a patent infringement case, local concerns are not implicated.”) Consequently, local interest and public policy does not support transfer.

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⁴ This date, compiled by the Administrative Office of the U.S. Courts, can be found at http://www.uscourts.gov/Statistics/FederalCourtManagementStatistics.aspx.

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IV. CONCLUSION

For the foregoing reasons, Plaintiff respectfully requests that the Court deny Defendant Juniper’s Motion to Transfer.

January 13, 2011

OF COUNSEL:

Steven G. Hill
Douglas R. Kertscher
HILL, KERTSCHER & WHARTON, LLP
[address telephone]

BAYARD, P.A.

/s/ Stephen B. Brauerman
Richard D. Kirk (rk0922)
Stephen B. Brauerman (sb4952)
[address email telephone]

Attorneys for Plaintiff
MOSAID Technologies Inc.

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74

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
v.
ADOBE SYSTEMS, INC., ALCATEL-
LUCENT USA, INC., APPLE, INC.,
INTERNATIONAL BUSINESS
MACHINES CORP, JUNIPER
NETWORKS, INC., NETAPP, INC., RED
HAT, INC., AND VMWARE, INC.
Defendants.

C.A. No.: 11-698-GMS

JURY TRIAL DEMANDED

___________________________________

DECLARATION OF JIRI SMETANA

I, Jiri Smetana, declare as follows:

1. My name is Jiri Smetana. I am over twenty-one (21) ears of age, laboring under no physical or mental disabilities and am competent to make this affidavit. I have personal knowledge of the matters set forth herein and if called to testify, I could and would competently testify as follows:
2. I am the Patent Litigation Manager at MOSAID Corporation Ltd., a wholly-owned subsidiary of MOSAID Technologies Inc. (collectively "MOSAID").
3. MOSAID Technologies Inc. is a Canadian corporation. It has maintained it corporate headquarters in Ontario, Canada since its founding in 1975.
4. Neither MOSAID Technologies Inc., MOSAID Corporation Ltd., nor any affiliate, subsidiary or other related entity maintains an office in California.
5. Neither MOSAID Technologies Inc., nor MOSAID Corporation Ltd., is registered to do busines in California, pay taxes in California, or maintains any employees, records, or information relevant to the asserted patents in California.
6. The foreging matters are true and correct and within my personal knowledge.

I Declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.

Executed this 9th ay of January, 2012.

/s/Jiri Smetana
Jiri Smetana

2

76

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
v.
ADOBE SYSTEMS, INC., ALCATEL-
LUCENT USA, INC., APPLE, INC.,
INTERNATIONAL BUSINESS
MACHINES CORP, JUNIPER
NETWORKS, INC., NETAPP, INC., RED
HAT, INC., AND VMWARE, INC.
Defendants.

C.A. No.: 11-698-GMS

JURY TRIAL DEMANDED

___________________________________

PLAINTIFF’S RESPONSE TO VMWARE’S
MOTION TO DISMISS FOR LACK OF STANDING

January 19, 2012

OF COUNSEL:

Steven G. Hill
Douglas R. Kertscher
HILL, KERTSCHER & WHARTON, LLP
[address telephone]

BAYARD, P.A.

Richard D. Kirk (rk0922)
Stephen B. Brauerman (sb4952)
[address email telephone]

Attorneys for Plaintiff Mosaid
Technologies Inc.

TABLE OF CONTENTS

I. NATURE AND STAGE OF PROCEEDINGS ...... 1

II. SUMMARY OF ARGUMENT ...... 1

III. STATEMENT OF FACTS ...... 4

a. Pitts and the Auspex Agreement “for use with Auspex Products” ...... 4

b. Prior Patent Litigation and Judge Walker’s Ruling Regarding Inca ...... 7

c. Auspex’s Bankrutpcy Filing and Description of its Assets ...... 9

IV. ARGUMENT AND CITATION OF AUTHORITY ...... 10

A. Legal Standard ...... 10

B. The Prior Agreements Afford Limited Product Licenses That Do Not
Deprive MOSAID of Standing to Sue ...... 11

C. Auspex, Inca and NetApp are Not Necessary Parties ...... 17

V. CONCLUSION ...... 19

i

TABLE OF AUTHORITIES

Federal Cases

Dow Chem. Co. v. Nova Chems. Corp. (Can.),
726 F. Supp. 2d 459, 462 (D. Del. 2010) (Farnan, J.) ...... 12

Fairchild Semiconductor Corp. v. Power Integrations, Inc.,
630 F. Supp. 2d 365, 371 (D. Del. 2007) (Farnan, J.) ...... 14

Field v. Volkswagenwerk AG,
626 F.2d 293, 300 (3d Cir. 1980) ...... 18

Jurimex Kommerz Transit G.M.B.H. v. Case Corp.,
65 Fed.Appx. 803, 805 (3d Cir. 2003) ...... 17

Kulick v. Pocono Downs Racing Ass'n,
816 F.2d 895, 899 (3d Cir.1987) ...... 11

Prima Tek II, L.L.C. v. A-Roo Co.,
222 F.3d 1372, 1378-79 (Fed. Cir. 2000) ...... 11

Propat Intern. Corp. v. Rpost, Inc.,
473 F.3d 1187 (Fed. 2007) ...... 15

Purdue Pharma Prods. L.P. v. Par Pharm., Inc.,
C.A. No. 07-255-JJF, 2008 U.S. Dist. LEXIS 98178 *7 (D. Del. Aug. 26, 2008) (Jordan, J.) ...... 15

Sicom Sys. Ltd. v. Agilent Techs., Inc.,
427 F.3d 971, 979 (Fed. Cir. 2005) ...... 13

St. Clair IP Consultants, Inc.v. Palm, Inc.,
2009 WL 1220546, *8, 10 (D.Del. 2009)(Stark, J.) ...... 13

Federal Statutes

Fed. R. Civ. P. 12(b)(1) ...... 1

Fed. R. Civ. P. 12(b)(7) ...... 1, 17

Fed. R. Civ. P. 19 ...... 19

Fed.R.Civ.P. 19(a) ...... 17, 18

Fed.R.Civ.P. 19(b) ...... 17, 18

ii

I. NATURE AND STAGE OF PROCEEDINGS

Plaintiff MOSAID Technologies Inc. (“Plaintiff”) has properly filed a First Amended Complaint accusing each of the Defendants Adobe Systems, Inc. (“Adobe”), Alcatel Lucent USA Inc., (“Alcatel”), International Business Machines Corp. (“IBM”), Juniper Networks, Inc. (“Juniper”), Red Hat Inc. (“Red Hat”) and VMware, Inc. (“VMware” and collectively with Adobe, Alcatel, IBM, Juniper, and Red Hat, “Defendants”) of infringing U.S. Patent No. 5,892,914 (the “‘914 Patent”).

Only Defendant VMware filed a motion to dismiss for lack of standing pursuant to Fed. R. Civ. P. 12(b)(1) and alleges there are other necessary parties who should be joined pursuant to Fed. R. Civ. P. 12(b)(7). (D.I. 45). The present filing focuses on the unique issues raised in the motion to dismiss for lack of standing or for joinder of necessary parties.

II. SUMMARY OF ARGUMENT

Plaintiff alleges in its First Amended Complaint that it is the “owner…of all right, title and interest in the ‘914 patent.” (D.I. 16 at ¶ 21). VMware’s motion constitutes a factual attack, as opposed to a facial attack, on Plaintiff’s standing pursuant to Fed. R. Civ. P. 12(b)(1) and is based primarily on two licenses granted prior to MOSAID’s acquisition of the ‘914 Patent: a 1994 license between William Pitts (“Pitts”), the inventor of the ‘914 Patent, and Auspex Systems, Inc. (“Auspex”) and a 1996 license between Pitts and Inca Technology, Inc. (“Inca”).

VMware’s motion is notable for what it does not say. VMware’s legal team represented a prior defendant faced with infringement of the same patent rights. VMware’s legal team asserted in that prior case that the Pitts-Inca license deprived the former owner of the Pitts’ patents of standing to sue. The District Court in the prior case looked at the plain language of the

1

Inca agreement and held that there was no standing problem because Inca’s license scope was limited to a specific field of use.

Although VMware now adds further reference to a second product license agreement with Auspex from 1994, that agreement is of no moment for the very same reason -- on its face, the Auspex agreement is limited to a specific field of use restricted for use only with “Auspex products,” which is even narrower than the field of use restriction in the Inca agreement that a prior court found utterly inadequate to deprive the patent owner of standing to sue for infringement.

VMware does not submit the portions of Pitts’ deposition testimony (which was solicited by VMware’s legal team) where he clearly describes the language and the intention of the Auspex agreement as limited by this specific field of use.

VMware’s contention that Pitts transferred “substantially all” of his patent ownership rights via the Auspex agreement is contrary to:

• the plain language of the license portion of the agreement, which merely transfers Pitts’ intellectual property (“IP”) within a very narrow field of use, namely “with Auspex Products.” (Ex. A, pg. 1);
• the plain language of the entire agreement. Defendant’s interpretation of the license portion of the agreement would render Sections 6.0 – 6.2 of the agreement superfluous. Defendant’s interpretation also ignores Sections 3.2-4.2, which only compensate Pitts for sales employing his IP in the narrow field of use “with Auspex Products.”
• the missing language not in the agreement, e.g., the agreement is silent on and does not transfer to Auspex the right to sue others for infringement or even the

2

right to exclude Pitts from practicing his invention, nor does it transfer substantially all the rights necessary or standard for a patent license agreement, namely, the right to make, have made, import, use of offer for sale products practicing the patents, but rather grants strictly a license “to distribute and authorize others to distribute;”
• the post-agreement conduct of the parties, because in 2003, Auspex did not claim to own any substantial interest in any of Pitts’ patents in its filings with either the Bankruptcy Court¹ or the Securities and Exchange Commission (“SEC”), and never otherwise contended to Pitts that it owned “substantially all” of Pitts’ patent rights; and
• Judge Walker’s (Northern District of California) prior 2002 order, which denied a motion to dismiss for lack of standing brought in 2002 by VMware’s present legal team, and which was based upon an even broader license to Inca than the Auspex license presently asserted by Defendant VMware.

VMware’s motion for joinder of three separate corporations (Auspex, Inca, and Network Appliances, Inc. (“NetApp”)) does not satisfy Rule 19’s definition of a necessary party because NetApp did not purchase any of Pitts’ patents from Auspex in bankruptcy (which listed no ownership of any interest in any of Pitts’ patents) and because Plaintiff’s allegations of infringement do not implicate the narrow scope of licenses granted to Auspex (use with “Auspex products”) and Inca (use in the “File System Field”). Thus, VMware’s motion is meritless and should be denied.

___________________________________

¹ Auspex filed bankruptcy in the Northern District of California in April 2003, case number 03- 52596-MM11.

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III. STATEMENT OF FACTS

a. Pitts and the Auspex Agreement “for use with Auspex Products”

After working for Auspex for three years, William Pitts left Auspex in 1990. After leaving Auspex, Pitts conceived of the subject matter that were ultimately reflected in the June 1992 Patent application, a Patent Cooperation Treaty Application with the USPTO, No. PCT/US92/04939 (the “PCT Application”). (Pitts Decl., ¶ 2, filed contemporaneously herewith). The core principles of this application for letters patent applied to having network nodes (multiple machines), each having their own cache and processing, as well as the ability to communicate upstream and downstream with each other to locate a requested item of data in a memory cache or, if necessary, in the original file. (Pitts Decl., ¶ 2).

Later in 1992, Pitts had discussions with Auspex wherein they suggested that Pitts would return to work for them and assign them all of his IP in exchange for a certain amount of Auspex stock. However, Pitts and Auspex were not able to reach any agreement on this and did not speak again until 1994. (Pitts Decl., ¶ 3).

In 1994, Auspex and Pitts reached a “more limited agreement,” (Pitts Decl., ¶ 4), the May 5, 1994 Auspex/Pitts Agreement. (Ex. A). At the time of this more limited agreement, no claims of any of the Pitts patents had issued. (Pitts Decl., ¶ 15).

The patent’s earliest claims were not allowed until several years later. (Pitts Decl., ¶ 15). Thus, it was not known at the time of the Auspex agreement what the scope of any future patent claims (claims defining the legal scope of any actual patent rights) would be. (Pitts Decl., ¶ 15).

The operative field of use language pertinent to any exclusive rights conferred by the “more limited” Auspex agreement reads as follows (in pertinent part):

Pitts hereby grants to Auspex, under all applicable patents, copyrights, and other Intellectual Property Rights owned by Pitts or licensed to Pitts, an irrevocable, perpetual,

4

exclusive, worldwide, royalty-bearing license with the right to sublicense, to distribute and authorize others to distribute...the Product…for use with Auspex products with all ancillary rights necessary to accomplish such sale or distribution, and including the right to prepare or have prepared derivative works based on the product.

(Ex. A, p. 1, Sect. 2.0 (emphasis added)). This agreement is a product license agreement with exclusivity in a very narrow field of use. (Pitts Decl., ¶ 5; Pitts Depo., p. 81, 266-68, attached as Ex. B).

The agreement specifically states in Section 2.0 that the rights conferred are rights restricted by field of use to the “Product … for use with Auspex products.” (Ex. A, p. 1; Pitts Depo., p. 81, 266-68; Pitts Decl., ¶ 5). By the agreement, Pitts’ intended to give specific product and adjacent IP rights to Auspex with a restrictive field of use (limited to use with Auspex products) to help Auspex enhance the desirability of its products, namely, Auspex servers (boxes). (Pitts Depo., p. 81, 248-49, 258, 262, 272; Pitts Decl., ¶ 6). “The word exclusive was used is because it was constrained for use within Auspex products or in conjunction with Auspex products.” (Pitts Depo., p. 278).

Consistent with this language, Pitts’ recollection and understanding of the agreement is that he gave Auspex the exclusive rights, including IP rights, to his source code (Product) for use with the Auspex box, to incorporate it into the box, and to sell the box (and to sublicense my code to customers as might be necessary) for use with the Auspex box. (Pitts Depo., p. 63-64; Pitts Decl., ¶ 6).

Pitts did not intend to nor did he actually license to Auspex, either exclusively or nonexclusively, any IP rights outside the limited field of Auspex product-specific use, as described in the agreement. (Pitts Decl., ¶ 9). Additionally, the agreement gave Auspex no right to sublicense any patent rights to third parties except to the extent, per Section 2.0 of the agreement, the third parties were customers and the sublicense pertained to using my work product “with

5

Auspex products” (i.e., an Auspex server). (Pitts Decl., ¶ 13). In fact, the agreement does not in any way explicitly authorize Auspex to make products under Pitts’ patents or even to use them, a fundamental part of any actual patent license grant. (Ex. A).

In terms of products or code or inventions for use with anything other than the Auspex box, Pitts gave Auspex nothing. (Pitts Decl., ¶ 8).

The Auspex agreement describes the compensation that Pitts was to have been paid. Section 3.2 – 3.4 describe that Pitts was to be paid royalties only for actual Auspex sales made when the Pitts software was “bundled with an Auspex file server…” or “sold to the existing Auspex installed base or as a separately priced invoice line item with new file servers.” (Ex. A, p. 2). Consistent with this, Pitts understood that “Auspex was to have paid [him] a royalty on every Auspex box sold (none were) which utilized [his] source code.” (Pitts Decl., ¶ 7).

The Auspex agreement, in section 4.1-4.2, called for Pitts to implement the software “within the standard system software of the standard Auspex file server” and for Auspex to provide Pitts with “a standard Auspex file server in the Auspex facilities.” (Ex. A, p. 2). Sections 3.2 through 4.2, reflected that Pitts was to receive royalties based upon sales to Auspex customers. (Pitts Depo., P. 243; Pitts Decl., ¶ 8).

The agreement is silent on compensation to Pitts in the event of any other type of IP licensing or usage (other than usage with Auspex products), and Pitts “never would have agreed to permit Auspex to enforce any of [his] IP rights, including [his] patent rights, or to otherwise collect license fees from persons other than persons using Auspex products.” (Pitts Decl., ¶ 9 (emphasis added)). In the agreement, there are no provisions contemplating any licensing of any product or patent rights to any person other than an Auspex customer using Auspex products. (Ex. A; Pitts Decl, ¶ 9 (emphasis added)).

6

Since the Auspex agreement is silent with respect to any royalties owed to Pitts in the event of a license fee paid to any third party using any of his IP for products other than Auspex products, VMware’s interpretation of the agreement requires the Court to conclude that Pitts wanted royalties for use of his IP with Auspex products, but was content to let Auspex have his IP rights for free as to the vast majority of the marketplace that was not using Auspex products. (Pitts Decl, ¶ 9). Pitts did not agree and would never have agreed to such a one-sided arrangement. (Pitts Decl, ¶ 9).

The Auspex agreement, in sections 6.0-6.2, contained a section called “Ownership of IP Related to a Derivative Works and Auspex Funded Development.” (Ex. A, p. 3). In section 6.1, the parties agreed that “Derivative works of the Product developed by or on behalf of Auspex shall be the sole and exclusive property of Auspex.” (Ex. A, p. 3). In Section 6.2, the parties agreed that “[w]henever Auspex funds Pitts’ development of a new feature, product, etc…Auspex will own the resulting Funded Development, including all patent, copyright, trade secret and all other [IP] rights arising therefrom.” (Ex. A, p. 3). The parties, in inserting these paragraphs, clearly agreed that this statement of additional assignment of rights to Auspex was necessary, notwithstanding the previously-stated license grant in Section 2.0. (Ex. A, p. 1).

After the May 5, 1994 agreement, Pitts worked with Auspex for approximately sixty (60) days to develop prototype software as requested. (Pitts Decl, ¶ 14). Pitts demonstrated this software to Auspex, but did not give it to Auspex. (Pitts Decl, ¶ 14). After that, Auspex never made further inquiry into Pitts’ patent application(s), patents or other IP rights. (Pitts Decl, ¶ 14). Pitts did not consider the Auspex agreement in effect or relevant. (Pitts Depo, p. 314).

b. Prior Patent Litigation and Judge Walker’s Ruling Regarding Inca

In October 1996 (after the foregoing limited product distribution license to Auspex), Pitts

7

granted an “exclusive license of the ‘049, the ‘914 and the ‘452 patents to Inca, including the right to sublicense the patents.” (Walker, J., Order of August 13, 2002, p. 3, attached as Ex. C).

Subsequently, in April 2001, Inca, Network Caching Technology LLC (“NCT”) and Pitts entered into an agreement which cancelled the prior agreement between the parties and assigned all interest in the relevant patents (including the ‘914 patent) from Pitts to NCT. (Ex. C, p. 3; D.I. 47, Declaration of Monte M.F. Cooper in Support of Defendant VMWare, Inc’s Motion to Dismiss for Lack of Jurisdiction over the Subject Matter, Ex. F, hereinafter “Cooper Decl.”)). Under this agreement, Inca retained only limited rights with respect to the patents at issue.² (Ex. C, p. 3).

Inca was granted a nonexclusive license in the “File System Field,” the right within this limited field of use to sublicense its proprietary products to others, the right of approval over any license NCT might grant in this narrow field, and finally the right to sue separately in this narrow field. (Ex. C, p. 3). In this agreement, there was no mention of Auspex or any prior transfer.(Cooper Decl., Ex. D).

Notably, and as held by Judge Walker, this license stated that “[t]he File System Field excludes the HTTP, FTP, TFTP and/or Gopher protocols.” (Cooper Decl., ¶ 3, p. 3 (emphasis added)). In the present case, the accused products operate according to the HTTP protocol and other protocols that are not in the File System Field. Importantly, VMware has not offered any evidence that its accused products fit within the File System Field so as to implicate the Inca agreement.

_________________________________

² Contrary to VMware’s assertions about Inca’s right to sublicense, Inca only received a right to sublicense patents “in connection with the sale or other transfer of Inca’s proprietary products and/or systems.” (Cooper Decl. Ex. F, Section A (3))

8

Later in 2001, NCT brought litigation in the Northern District of California, alleging infringement against six (6) different Defendants. One Defendant was Inktomi Corp. (“Inktomi”), which was represented by the same legal team that is now representing VMware. In 2002, Inktomi moved to dismiss NCT’s complaint based upon lack of standing, contending that “NCT does not retain sufficient rights under the 2001 agreement in the patents at issue to have standing to sue.” (Ex. C, p. 4).

Judge Walker denied Inktomi’s motion. (Ex. C). After quoting Pitts’ assignment agreement to NCT (Cooper Decl., Ex. F, ¶ 1) and Inca’s assignment agreement to NCT (Cooper Decl., Ex. E, ¶ 2), Judge Walker held that “[b]y the plain language of the agreement, NCT now holds the title to the patents at issue…the agreement is specific that all interests in the patents are assigned to NCT and in return, NCT provides a license to Inca limited to the file system field. As the title holder of the patents at issue, NCT has standing to sue in this action.” (Ex. C, p. 5). In 2003, NCT reached a settlement with all parties, including Inktomi, and no party ever appealed Judge Walker’s order.³

Later, on April 7, 2009, NCT assigned all of its patent rights to Twister Investments, LLC. (Ex. E). Finally, on April 26, 2011, Twister Investments, LLC assigned all of its patent rights in these patents to Plaintiff MOSAID Technologies, conferring standing upon MOSAID to bring this suit. (Ex. E). VMware does not contend that these agreements deprive MOSAID of standing to bring this suit.

c. Auspex’s Bankrutpcy Filing and Description of its Assets

In April 2003, during the pendency of the NCT-Inktomi patent litigation, Auspex filed for bankruptcy in the Northern District of California. As part of this filing, on April 22, 2003,

__________________________________

³ Defendant VMware does not mention Judge Walker’s order in its brief, and a fortiori, does not contend that Judge Walker committed error in any way in his order.

9

Auspex filed with the Bankruptcy Court “A Description of Auspex Systems, Inc. IP Inclusive of Software, Hardware Platform, Patents and Assignable Licenses.” (Ex. F). This twenty-eight (28) page document makes no claim to ownership of any of the Pitts patents, including the ‘914 patent. (Ex. F). It also makes no claim to ownership of any interest in the outcome of the prior NCT patent litigation which was pending at the time. (Ex. F).

Despite Auspex’s representations to the Bankruptcy Court, VMware nevertheless asserts that Network Appliances, Inc. (“NetApp”) purchased Auspex’s patent assets out of the Bankruptcy Court. Neither this agreement (Cooper Decl. Ex. E), nor Auspex’s June 2003 8K filing with the Securities and Exchange Commission describing this purchase, make any reference to ownership of any interest in any of the Pitts patents, including the ‘914 patent. (Ex. F).

At no point before, during or after the entry into the May 1994 agreement with Auspex, did anyone from Auspex ever advise Pitts that Auspex believed that it had any right or interest in any of his IP rights outside of the narrow field of use described in Section 2.0, “for use with Auspex products.” (Pitts Decl, ¶ 5).

IV. ARGUMENT AND CITATION OF AUTHORITY

A. Legal Standard

While the plaintiff bears the burden to prove that jurisdiction does in fact exist, the plaintiff’s burden is relatively light, for “dismissal for lack of jurisdiction is not appropriate merely because the legal theory alleged is probably false, but only because the right claimed is ‘so insubstantial, implausible, foreclosed by prior decisions of this Court, or otherwise completely devoid of merit as to not involve a federal controversy.’” Kulick v. Pocono Downs

10

Racing Ass’n, 816 F.2d 895, 899 (3d Cir.1987) (quoting Oneida Indian Nation v. County of Oneida, 414 U.S. 661, 666 (1974)).

B. Deprive MOSAID of Standing to Sue.

In order to deprive the Plaintiff of standing, the 1994 Auspex agreement must have transferred “all substantial rights” in the currently asserted patents.⁴ Prima Tek II, L.L.C. v. ARoo Co., 222 F.3d 1372, 1378-79 (Fed. Cir. 2000) (holding that patentee did not transfer all substantial rights). In Prima Tek II, the patentee granted the assignee a worldwide license to make, use, and sell products covered by certain patents, but only to the extent necessary to sublicense the right to make, use, and sell the patented products. Id. at 1379. The Federal Circuit held that this product license did not transfer all substantial patent rights: “[i]n evaluating whether a particular license agreement transfers all substantial rights in a patent to the licensee, we pay particular attention to whether the agreement conveys in full the right to exclude others from making, using and selling the patented invention in the exclusive territory.” Id. At 1379.

Similarly, the 1994 Auspex agreement was, on its face in Section 2.0, limited as a license only “to distribute ... Products ... for use with Auspex products.” In other words, the parties only intended to transfer to Auspex the exclusive right to combine its products with Pitts’ invention and then distribute same to Auspex customers. There is no language anywhere in the agreement conveying any IP rights outside the limited field of Auspex product-specific use. A fortiori, there is no language anywhere in the agreement conveying in full the right to exclude others from making, using and selling the patented invention outside the limited field of Auspex product-specific use.

_________________________________

⁴ Since no claims had been issued by the USPTO in May 1994, Pitts could not have known or intended that the specific claims of the ‘914 or the patents sought to be asserted in the Second Amended Complaint (all of which issued after 1994) be licensed to Auspex in 1994.

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The agreement, read as a whole, further supports the conclusion that the parties only intended a limited license only “for use with Auspex products.” Defendant VMware ignores indications spread throughout the Auspex agreement that Pitts did not intend to transfer “all substantial rights” to Auspex in fields of use other than Auspex products. Agreements, including those purporting to be patent license agreements, should be read in their entirety. See Dow Chem. Co. v. Nova Chems. Corp. (Can.), 726 F. Supp. 2d 459, 462 (D. Del. 2010) (Farnan, J.) (holding that the plaintiff has standing because, “[w]hile this statement appears to be a broad transfer it must be read in the context of Section 1.07, which provides an explicit definition of the term ‘Patent Rights.’”).

The compensation sections of the Auspex agreement, Sections 3.2-3.4, make clear that Pitts was only to be paid for royalty fees when sales of his software were sold in conjunction with or for use with other Auspex products. Were VMware’s interpretation of the agreement correct, Pitts would have transferred Auspex his entire patent rights (as Defendant VMware contends) without providing for himself any royalties in the event of any licensing of his IP rights to the vast majority of the marketplace that was not using Auspex products. Pitts was not employed by Auspex and was not receiving significant income from the agreement, and as such, never would have agreed to such a one-sided arrangement. (Pitts Decl, ¶ 9). Accordingly, reading the compensation sections of 3.2-3.4 together with the license grant of Section 2.0, it is clear that the parties intended (as expressed in Section 2.0) to transfer only a limited license for Auspex’s use of his IP rights in conjunction with the distribution of Auspex products.

Similarly, Sections 6.0-6.2 of the agreement support the construction of the agreement exclusively with Auspex products. Section 6.1 grants ownership to Auspex of derivative works “developed by or on behalf of” Auspex; Section 6.2 makes it clear that Auspex was only going to

12

own the rights in product developments for which Auspex funded the development. These are the only portions of the agreement where any ownership interest by Auspex in any intellectual property rights was expressly addressed. Moreover, if (as VMware contends) Pitts had previously conveyed “all substantial rights” to Auspex in Section 2.0, then Sections 6.1 and 6.2 would be meaningless, if not contradictory, to the rest of the agreement. Where the Defendant’s interpretation of assignment agreement would render portions of the agreement superfluous, courts should reject the proffered interpretation in favor of one that considers the agreement in its entirety. St. Clair IP Consultants, Inc.v. Palm, Inc., 2009 WL 1220546, *8, 10 (D.Del. 2009)(Stark, J.)(denying motion to dismiss for lack of standing).

Sections of 6.0-6.2 only have meaning where Section 2.0 is interpreted to grant only a limited license of the IP “for use with Auspex products.” When read together with the grant of Section 2.0, it is clear that the parties intended (as expressed in Section 2.0) to transfer only a limited license for Auspex’s use of his IP rights in conjunction with Auspex products.

Another factor in determining whether Pitts transferred “all substantial rights” is whether the Auspex received the exclusive right to sue for patent infringement. One of the most important rights in the standing analysis is the exclusive right to sue for patent infringement because this is the means by which a party exercises the right to exclude others from making, using, and selling the claimed invention. Sicom Sys. Ltd. v. Agilent Techs., Inc., 427 F.3d 971, 979 (Fed. Cir. 2005). Here, the Auspex agreement does not convey or make any reference to any assignment of Pitts’ right to sue for patent infringement of his invention.

In the absence of such express language, the Court should not conclude that Pitts intended such a broad assignment of the right to sue for patent infringement. This Court has required broad, express language in order to find that the patentee has assigned the “exclusive

13

right to sue for patent infringement.” Fairchild Semiconductor Corp. v. Power Integrations, Inc., 630 F. Supp. 2d 365, 371 (D. Del. 2007) (Farnan, J.). In Fairchild, the license agreement at issue granted to the licensee the exclusive right to sue one particular company for patent infringement. Id. at 371. However, the Court found that this license still did not confer “all substantial rights” because “the right to sue others still resides with [patentee]…Succinctly put, [assignee] is a bare licensee with the right to sue a specific entity. The Supreme Court has recognized that the attempted assignment of a right to sue a particular entity ‘carrie[s] no part of the title to the patent or interest in it and therefore confer[s] no right to sue for damages for infringement of the patent after the execution of the instrument.’” Id. In contrast, the Auspex agreement gave Auspex no express right to sue anyone, and as such cannot be said to have transferred the “exclusive right to sue for patent infringement.”

Aware of this problem with its argument, VMware attempts to concoct a broad assignment where one does not otherwise exist. Defendant VMware contends that section 2.0 conveyed to Auspex the right to sue for enforcement, and that this transfer is hidden within the language “all the ancillary rights.” (D.I. 46, VMware’s Opening Brief in Support of its Motion to Dismiss for Lack of Jurisdiction Over the Subject Matter, at 16 hereinafter “VMWare’s Opening Brief”). Notwithstanding the absence of express language in the agreement relating to the right to sue, this argument also fails when read in the context of the rest of the sentence upon which VMware relies: “Pitts hereby grants Auspex…for sale, lease, license ... the Product ... for use with Auspex products with all ancillary rights necessary to accomplish such sale or distribution [of Auspex products], and including the right to prepare or have prepared derivative works based on the product [relating to Sections 6.0-6.2 of the agreement].” (Ex. A). Accordingly, the agreement conveyed only those “ancillary rights” that would allow Auspex

14

to effectuate sales of its products and further its own product technology; the language was intended to give Auspex the right to modify Pitts’ intellectual property as necessary to fit each Auspex product customer for sales purposes only. It did not convey the right to sue for patent infringement. In fact, Pitts confirms that he did not provide Auspex with any right to enforce his patents. (Pitts Decl. ¶ 17).

The case upon which VMware relies does not even support its contention that a right to sue can be transferred cryptically by invoking “ancillary rights” relating to specific product sales and specific product development of a single company. (VMware Opening Brief, p. 16). In Propat Intern. Corp. v. Rpost, Inc., 473 F.3d 1187 (Fed. 2007), the agreement expressly gave the licensee “the responsibility to license the patent to third parties, to enforce the licensing agreements, and to sue infringers.” Id. at 1190. VMware does not cite any authority to support its proposition that a transfer of “all substantial rights” in a patent, including the right to sue, can happen without this kind of express transfer of the right to sue for patent infringement.⁵

Moreover, another factor in determining whether patentee has transferred “all substantial rights” is whether the patentee expressly transferred his own right to practice the invention. See, Purdue Pharma Prods. L.P. v. Par Pharm., Inc., C.A. No. 07-255-JJF, 2008 U.S. Dist. LEXIS 98178 *7 (D. Del. Aug. 26, 2008) (Jordan, J.) (reservation of rights in transferor is sufficient to undermine assignee’s claim of standing). In the present case, the Agreement does not include any transfer of Pitts’ right to practice his own invention, and the Agreement as a whole

_______________________________

⁵ VMware contends that that the grant to Auspex of a royalty-free license makes the retained right-to-sue illusory (VMWare’s Opening Brief at p. 16). However, Auspex did not have an “unfettered” or “royalty-free” right to grant a license, as required by the cases cited by VMware. Instead, they only had a right to license for use with an Auspex product, and this limited field of use of Auspex products is not implicated by any of Plaintiff’s allegations or Defendant’s products in this case.

15

(particularly the sole grant of ownership in Sections 6.1-6.2) demonstrates that Pitts reserved this right for himself.

Likewise, Auspex’s bankruptcy and SEC filings show that Auspex did not claim to have purchased “all substantial rights” in Pitts’ IP. Auspex’s filing with the Bankruptcy Court listing twenty-eight (28) pages of “Software, Hardware Platform, Patents and Assignable Licenses” makes no reference to any interest in any of Pitts’ patents even though Pitts’ patents, including the ‘914 Patent, had issued by the time Auspex filed for bankruptcy. Similarly, Auspex’s SEC filing does not refer to any of Pitts’ patents. (Ex. F).

Further, after the effort to work together in 1994 failed, Pitts and Auspex went their separate ways, and at no point before, during or after the entry into the May 1994 agreement with Auspex, did anyone from Auspex ever advise Pitts that Auspex believed that it had any right or interest in any of his IP rights outside of the narrow field of use described in Section 2.0, “for use with Auspex products.” (Pitts Decl, ¶ 17).

Consistent with Pitts’ own belief and intent that he did not grant “all substantial rights” to Auspex, Pitts proceeded to assign his patent portfolio to NCT. MOSAID derives its ownership of these patents from Twister, which purchased them from NCT. (Ex. E).

There is no evidence that either Pitts or Auspex intended or believed that the 1994 agreement transferred “all of Pitts’ substantial rights” in his IP. VMware’s contentions to the contrary are not supported by the express language of the agreement, the intentions of the parties, nor the applicable law.

Finally, as previously held by Judge Walker based on the plain language of the 2001 agreement, Inca only retained a license to Pitts’ patents in the File System which “excludes the HTTP, FTP, TFTP and/or Gopher protocols.” (Cooper Decl., Ex. E, ¶ 3, p. 3). In the present

16

case, Plaintiff contends that the accused products operate according to the HTTP protocol and other protocols that are outside the File System Field, as defined in this agreement. At the same time, VMware has not offered evidence that its infringing products are within the File System Field. Accordingly, VMware’s motion should be denied.

C. Auspex, Inca and NetApp are Not Necessary Parties

For the purpose of Rule 12(b)(7), the Court accepts as true the factual allegations of the complaint. See Jurimex Kommerz Transit G.M.B.H. v. Case Corp., 65 Fed. Appx. 803, 805 (3d Cir. 2003). A court, in evaluating such a motion, applies the two-part test set forth in Rule 19. The first part of this test asks whether the absent party is necessary for adjudication of the issue. The second part of the test is equitable in nature, and is directed to whether a necessary party is indispensable to a fair resolution of the issues. Id.

Rule 19(a) provides that an absent person is a necessary party if he is subject to service of process and either: (1) in his absence, complete relief cannot be accorded among the parties; or (2) the absent person claims an interest in the subject matter and that his absence will, as a practical matter, either prejudice his ability to protect that interest or result in multiple or otherwise inconsistent obligations. FED. R. CIV. P. 19(a).

If a person is deemed necessary under Rule 19(a) but cannot be joined, the Court must ascertain the extent to which prejudice will result to the non-party; the ability of the court to shape relief to avoid prejudice to absent persons; the adequacy of relief available to parties in the necessary party’s absence; and the adequate remedy available to the plaintiff if the action is dismissed for nonjoinder. FED. R. CIV. P. 19(b). Rule 19(b) only applies where a person should be made a party under Rule 19(a). See Field v. Volkswagenwerk AG, 626 F.2d 293, 300 (3d Cir.

17

1980). Thus, if a party is not necessary under Rule 19(a), the Court need not conduct an analysis under Rule 19(b).

None of the three (3) parties identified by Defendant VMware has any of its respective interests implicated by the present lawsuit. First, none of the three has claimed any interest in the subject matter of the suit – usage outside the narrow fields of Auspex products and outside the File System Field -- or sought to intervene in the present case.⁶ Second, the Court can afford complete relief in this case because none of Plaintiff’s infringement contentions implicate any other parties’ interests. For example, Plaintiff does not contend that any Defendant’s infringement arises from any Defendant’s use of Auspex products or products within the File System Field.

This means that NetApp (which acquired Auspex’s rights, such as they are) also has no interest in the present litigation. NetApp, having acquired only the intellectual property detailed in a twenty-eight (28) page listing of Auspex’s IP rights, cannot avoid the inconvenient truth that the list makes no mention of any interest in any of Pitts’ IP rights; accordingly, NetApp cannot and does not contend that it has any ownership rights or interest in Pitts’ IP rights. Moreover, VMware has put no evidence into the record to show that NetApp purchased any of Mr. Pitts’ intellectual property rights.

The infringement allegations in the present case do not implicate the narrow fields of use which define the scope of the product licenses afforded to Auspex and Inca. Accordingly, those entities have no interest in the present litigation and cannot be considered necessary parties.

__________________________________

⁶ Plaintiff believes that Auspex ceased operations after the conclusion of its bankruptcy in 2003.

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V. CONCLUSION

For the foregoing reasons, Plaintiff requests that the Court deny Defendant VMware’s motion to dismiss for lack of standing and motion for joinder under Fed. R. Civ. P. 19.

January 19, 2012

OF COUNSEL:

Steven G. Hill
Douglas R. Kertscher
HILL, KERTSCHER & WHARTON, LLP
[address telephone]

BAYARD, P.A.

/s/ Stephen B. Brauerman
Richard D. Kirk (rk0922)
Stephen B. Brauerman (sb4952)
[address email telephone]

Attorneys for Plaintiff MOSAID
Technologies Inc.

19

77

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
v.
ADOBE SYSTEMS, INC., ALCATEL-
LUCENT USA, INC., APPLE, INC.,
INTERNATIONAL BUSINESS
MACHINES CORP, JUNIPER
NETWORKS, INC., NETAPP, INC., RED
HAT, INC., AND VMWARE, INC.
Defendants.

C.A. No.: 11-698-GMS

JURY TRIAL DEMANDED

___________________________________

DECLARATION OF WILLIAM PITTS

1

I, William Pitts, declare as follows:

1. My name is William Pitts. I am over twenty-one (21) years of age, laboring under no physical or mental disabilities and am competent to make this affidavit. I have personal knowledge of the matters set forth herein and if called to testify, I could and would competently testify to the best of my personal recollection as follows:
2. I left Auspex in 1990. Afterwards, I conceived of the subject matter disclosed in the original invention disclosure which was filed with the United States Patent and Trade Office on June 3, 1992 and became Application No. PCT/US92/04939. The core principles of this application for letters patent applied to having network nodes (multiple machines), each
having their own cache and processing, as well as the ability to communicate upstream and downstream with each other to locate a requested item of data in a memory cache or, if necessary, in the original file.
3. In late 1992, I had discussions with Auspex wherein they suggested that I would return to work for them and assign them all of my intellectual property in exchange for a certain amount of Auspex stock. However, we were not able to reach any agreement on this and I did not speak with Auspex again until 1993.
4. In a1994, Auspex and I reached an more limited agreement whereby they could incorporate the software that I had been working on into Auspex products and I signed the May 5, 1994 Auspex/Pitts license agreement.
5. This agreement is a product license agreement with exclusivity in a very narrow field of use. the agreement specifically states in Section 2.0 that the rights conferred are limited to rights relating to the "Product ... for use with Auspex products."
6. Consistent with this language, my recollection and understanding of the agreement is that I gave Auspex the exclusive rights, including intellectual property rights, to my source code (Product) for use with the Auspex box, to incorporate it into the box, and to sell the box (and to sublicense my code to customers as might be necessary) for use with the Auspex box.

2

7. In return for the foregoing limited rights, Auspex was to have paid me a royalty on every Auspex box sold (none were) which utilized my source code.
8. In terms of products or code or inventions for use with anything other than the Auspex box, I gave Auspex nothing. The royalty compensation sections of the agreement, Sections 3.2 through 4.2, reflected this understanding, and state that I was to receive royalties based upon sales to Auspex customers.
9. I never would have agreed to permit Auspex to enforce any of my intellectual property rights, including my patent rights, or to otherwise collect license fees from persons other than persons using Auspex products. In the agreement, there are no provisions contemplating any licensing of any Product or patent rights to any person other than an Auspex customer using Auspex products. Since the agreement is silent with respect to any royalty payments being owed to me in the event of a license fee paid to any third party using any of my intellectual property for products other than Auspex products, the suggestion that Auspex could enforce patent rights of mine against persons doing things other than using Auspex products is tantamount to saying that I wanted royalties fro use with Auspex products, but was content to let Auspex have my patent rights for the vast majority of the

3

marketplace that was not using Auspex products. Again, to repeat, I never would have agreed to such a one-sided arrangement.
10. My intent in reaching this agreement was to give certain product and adjacent intellectual property rights to Auspex with a restrictive field of use (limited to use with Auspex products) to help Auspex enhance the desirability of its products, namely, Auspex servers (boxes).
11. I did not intend to, nor do I believe that I licensed to Auspex, either exlcusively or non-exclusively, any intellectual property rights outside the limited field of Auspex product-specific use, as described above.
12. Again, the agreement gave Auspex no rights to enforce any of my patent rights against any infringers, regardless of any field of use considerations.
13. Additionally, the agreement gave Auspex no right to sublicense any patent rights to third parties except to the extent, per Section 2.0 of the agreement, the third parties were customers and the sublicense pertained to using my work product "with Auspex products" (i.e., an Auspex server).
14. For approximately sixty (60) days after entering the agreement with Auspex, I developed prototype software as requested. I demonstrated this software to Auspex but did not give it to them. After that, Auspex never made further inquiry into my patent application(s), patents or other intellectual property rights.

4

15. At the time I entered into the agreement with Auspex, no claims of any of my patents had issued. My earliest patent claims were not allowed until several years later. Thus, it was not known at the time of the agreement with Auspex what the scope of any future patent claims (claims defining the legal scope of any actual patent rights) would be.
16. Auspex never made further inquiry into my patent application(s), patent or other intellectual property rights.
17. At no point in time, either before, during or after the entry into the agreement with Auspex, did anyone from Auspex ever advise me that Auspex believed that it had any right or interest in any of my intellectual property rights outside of the narrow field of use described in Section 2.0, to wit, "for use with Auspex products."
18. To the best of my recollection, the foregoing matters are true and correct and within my personal knowledge.

I Declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.

Executed this 13 day of January, 2012.

William M. Pitts
William Pitts

5

78

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
v.
ADOBE SYSTEMS, INC.; ALCATEL-
LUCENT USA, INC.; INTERNATIONAL
BUSINESS MACHINES CORP.; JUNIPER
NETWORKS, INC.; NETAPP, INC.; RED
HAT, INC.; AND VMWARE, INC.;
Defendants.

C.A. No. 11-698-GMS

STIPULATION AND ORDER

WHEREAS, defendants VMware, Inc., Red Hat, Inc., International Business Machines Corp., Adobe Systems, Inc., Juniper Networks, Inc., and Alcatel-Lucent USA, Inc. each filed motions to dismiss for failure to state a claim (collectively, the “Pleading Sufficiency Motions”);

WHEREAS, defendant VMware, Inc. also filed a Motion to Dismiss for Lack of Jurisdiction over the Subject Matter (the “Standing Motion”) and defendant Juniper Networks, Inc. filed a motion to transfer venue to the Northern District of California, combined with its Pleading Sufficiency Motion (the “Transfer Motion”);

WHEREAS the parties previously agreed to, and the Court granted, (1) a modification of the briefing in this matter to permit Plaintiff to submit an omnibus brief responding to defendants Pleading Sufficiency Motions; and (2) an extension of time for Plaintiff to file its omnibus answering brief, as well as answering briefs in opposition to defendant Juniper Networks, Inc.’s Transfer Motion and VMware, Inc.’s Standing Motion;

WHEREAS, in order to permit the defendants to seek to coordinate on a joint reply brief in support of their Pleading Sufficiency Motions, and due to scheduling issues of counsel, the parties have further agreed to an extension of time for Defendants to file their reply briefs;

THE PARTIES HEREBY STIPULATE AND AGREE, subject to the approval of the Court, that:

1. Defendants’ reply briefs in support of their Pleading Sufficiency Motions shall be filed on or before January 30, 2012;
2. Juniper Networks, Inc.’s reply brief in support of its Transfer Motion shall be filed on or before January 30, 2012; and
3. VMware, Inc.’s reply brief in support of its Standing Motion shall be filed on or before February 9, 2012.

BAYARD, P.A.

/s/ Stephen B. Brauerman
Richard D. Kirk (No. 922)
Stephen B. Brauerman (No. 4952)
[address telephone email]

SEITZ ROSS ARONSTAM & MORITZ LLP

/s/ Collins J. Seitz, Jr.
Collins J. Seitz, Jr. (No. 2237)
[address telephone email]

Counsel for Defendant Int’l Business
Machines Corp. and Juniper Networks, Inc.

YOUNG CONAWAY STARGATT
& TAYLOR, LLP

/s/ Pilar G. Kraman
Adam W. Poff (No. 3990)
Pilar G. Kraman (No. 5199)
[address telephone email]

Counsel for Defendant VMware, Inc.

MORRIS, NICHOLS, ARSHT & TUNNELL
LLP

/s/ Jack B. Blumenfeld
Jack B. Blumenfeld (No. 1014)
Paul Saindon (No. 5110)
[address telephone email]

Counsel for Defendant Alcatel-Lucent USA, Inc.

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FISH & RICHARDSON P.C.

/s/ Gregory R. Booker
Tara D. Elliott (No. 4483)
Gregory R. Booker (No. 4784)
[address telephone email]

Counsel for Defendant Red Hat Inc.

DLA PIPER LLP (US)

/s/ Denise S. Kraft
Denise S. Kraft (No. 2778)
Aleine Porterfield (No. 5053)
[address telephone email]

Attorneys for Defendant Adobe Systems, Inc.

SO ORDERED, this ____ day of January, 2012.

____________________________________
United States District Judge

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