decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


To read comments to this article, go here
Mosaid v. Red Hat - Before You File A Complaint, Learn The Law (And The Facts)
Tuesday, January 10 2012 @ 08:40 AM EST

If you were a patent holder contemplating suing a bunch of companies for patent infringement, what's the first thing you would want to know? Do you think maybe it would be that you actually own the patent(s) you are asserting. That thought obviously never crossed MOSAID's mind when it brought suit back in August against Red Hat, IBM and others. (See Mosaid v. Red Hat - A new patent infringement complaint aimed at Linux).

And if that weren't bad enough, your attorneys then demonstrate they have no clue that the America Invents Act (patent reform act) was signed into law on September 16, 2011, or that pleading patent infringement requires something more than saying I own a patent and you infringe it. These guys can't get anything right.

Of course, what makes it all the worse is that MOSAID Technologies is that patent troll that has now climbed into bed with Microsoft and Nokia to try and cause more havoc with Android. There are a number of things I love about Canada - MOSAID is not one of them.

Let's recap the history of this litigation. MOSAID brought its original complaint (PDF; Text] for patent infringement on August 9, 2011, against Red Hat, IBM, Alcatel-Lucent, Adobe, Juniper, VMWare, and NetApp. That original complaint asserted two U.S. patents: 6,505,241 ('241), allegedly infringed by Adobe, Alcatel, IBM, Juniper, and NetApp; and 5,892,914 ('914), allegedly infringed by Red Hat. Interestingly, although VMware is identified as a defendant in the heading and as a party to the suit, the complaint contains no specific allegation that VMware infringed either of the patents, despite the fact that VMware's vFabric GemFire Platform is identified as an infringing product. Screw-up number one.

On September 16, 2011, President Obama signs the America Invents Act into law. More on that in a bit.

On September 27, 2011, purported defendants IBM, Juniper, Adobe, Alcatel-Lucent, NetApp, and VMware wrote to MOSAID informing MOSAID of its second big mistake - MOSAID didn't own the '241 patent. Oops!

After receiving the Complaint, defendants discovered that MOSAID could not assert the ‘241 patent because more than three years earlier—on June 30, 2008—MOSAID’s predecessor-in-interest, Network Caching Technology, LLC, had dedicated the entire patent to the public pursuant to 35 U.S.C. § 253.
Screw up number two!

But rather than simply dropping all of those parties from the complaint, MOSAID proceeded, on October 6, 2011, to file a first amended complaint [PDF; Text] that dropped Netapps but now asserted new claims against IBM, Adobe, Alcatel-Lucent, Juniper and VMware (remember, VMware was never specifically named in the first complaint) under the '914 patent. In addition, realizing that it had failed to be sufficiently specific with its original claims of infringement, MOSAID attempted to provide more specificity in this first amended complaint. As we will see, adding these new allegations against IBM, etal constituted screw up number three.

As if it had not shot itself in the foot enough times already, MOSAID decides to file a second amended complaint on November 11, 2011 [PDF; Text]. But, in order to file a second amended complaint MOSAID required permission from the court or notice to the parties, something MOSAID counsel totally overlooked. Trying to correct this defect MOSAID filed a motion seeking leave [PDF; Text] A WHOLE MONTH LATER on December 12, 2011. Well, timeliness doesn't appear to be a MOSAID forte.

In its supporting brief [PDF; Text] MOSAID claimed it should be granted the right to file the second amended complaint because:

This case is relatively near its inception, as Defendants have not yet filed a responsive pleading. The Third Circuit, in applying Rule 15(a), liberally allows amendments unless to do so would prejudice a nonmoving party. See, e.g., Dole v. Arco Chemical Co., 921 F.2d 484 (3d Cir. 1990). Allowing amendment at this early stage will cause no prejudice to the Defendants; therefore, the Court should allow the Second Amended Complaint.
MOSAID acknowledged that, despite its "diligent" attempts, it could not get the named defendants to concur to the filing of the second amended complaint. Imagine that! But MOSAID assured the court that the defendants would not be unduly prejudiced by this second amendment. SAY WHAT!

The second amended complaint added claims under FOUR NEW PATENTS that were never mentioned in either the original or the first amended complaint:

PatentTitleDefendants
‘049System for accessing distributed data cache channel at each network node to pass requests and dataRed Hat, Adobe, ALU, IBM and Juniper
‘475Request interceptor in network nodes for determining local storage of file image satisfying predetermined criteriaAdobe, IBM, Juniper and VMware
‘706Network system for transmitting overwritten portion of client side node cache image to server site through intermediate downstream nodes updating cache images of data requested by clientIBM
‘452Network distributed site cache ram claimed as up/down stream request/reply channel for storing anticipated data and meta dataRed Hat
Moreover, the second amended complaint did not allege that any defendant infringed all five patents, nor did it allege that any two defendants infringed the same set of patents. Oh, and then there is this:
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.
That, my friends, constitutes screw ups four, five, and six, in part because MOSAID still doesn't seem to understand what it owns and doesn't own and in part because of a little thing called the America Invents Act.

I could describe why the America Invents Act, and specifically new 35 U.S.C. § 299, presents a problem, but I could not do it better than the defendants themselves:

35 U.S.C. § 299, which went into effect on September 16, 2011, permits joinder of multiple defendants in a patent case only if:

(1) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using importing into the United States, offering for sale, or selling of the same accused product or process; and

(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.

35 U.S.C. § 299(a). The statute identifies insufficient conditions for joinder:

(b) Allegations Insufficient for Joinder – For purposes of this subsection, accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.
35 U.S.C. § 299(b).

The AIA further states that “[t]he amendments made by [new 35 U.S.C. § 299] shall apply to any civil action commenced on or after the date of the enactment of this Act.” AIA § 19 at 129. Because Congress did not specify otherwise, the normal relation back rules govern when an action was “commenced.” See Farina v. Nokia Inc., 625 F.3d 97, 111 (3d Cir. 2010) (holding that the newly enacted Class Action Fairness Act (“CAFA”) applied when the amended complaint did not relate back to the original complaint). The Farina court reasoned:

Congress passed CAFA aware of the general principles of relationback analysis, both under state law and Fed.R.Civ.P. 15(c). It is only natural that Congress would intend to incorporate into CAFA the case law governing amended pleadings. “Precisely because CAFA does not define ‘commencement’ of an action, it is obvious that CAFA is not intended to replace case[ ]law deciding when a lawsuit is considered ‘commenced…’” . . . Under this standard, the Second Amended Complaint commenced a new action.
Id. at 112. Congress similarly did not define “commenced” for purposes of the AIA.

For an amendment to relate back to the original complaint, Fed. R. Civ. P. 15(c)(1)(B) requires that “the amendment asserts a claim or defense that arose out of the conduct, transaction, or occurrence set out—or attempted to be set out—in the original pleading” FED.R.CIV.P. 15(c)(1) (2011). “An alleged infringement of one patent is not the ‘same conduct, transaction or occurrence’ as the alleged infringement of another patent.” Illinois Tool Works, Inc. v. Foster Grant Co., 395 F. Supp. 234, 250-51 (N.D. Ill. 1974), aff’d on the merits, 547 F.2d 1300 (7th Cir. 1976), cert. denied, 431 U.S. 929 (1977); 6A CHARLES ALAN WRIGHT & ARTHUR R.MILLER, FEDERAL PRACTICE AND PROCEDURE § 1497 (3d ed. 2011) (“amendments alleging . . . the infringement of a different patent, or even a separate violation of the same statute may be subject to the defense of statute of limitations because of a failure to meet the transaction standard.”). Similarly, a claim cannot relate back to an earlier complaint where the right to assert infringement did not exist at the time of the original filing. See Abbott Labs. v. Johnson and Johnson, Inc., 524 F. Supp. 2d 553, 558 n. 10 (D. Del. 2007) (citing Illinois Tool Works, 395 F. Supp. at 251).

MOSAID’s motion for leave to amend should be denied because the SAC [second amended complaint] violates 35 U.S.C. § 299, and the amendment would therefore be futile. The SAC does not and could not allege that the parties are jointly or severally liable for any acts of infringement. Nor does it allege a common “transaction, occurrence, or series of transactions or occurrences” among the defendants’ “accused product[s] or process[es].” Instead, it alleges that six defendants’ unrelated products infringe various combinations of five patents. The only commonality amongst the defendants is that the SAC alleges that their products infringe one of those five patents, the ‘914 patent. These allegations do not meet the requirements of 35 U.S.C. § 299(a), and indeed are expressly prohibited by 35 U.S.C. § 299(b).

Although the AIA and 35 U.S.C. § 299 went into effect after MOSAID filed its original Complaint, MOSAID filed the FAC [first amended complaint] on October 6, 2011 (and the motion for leave to file the SAC two months later), after the AIA’s September 16, 2011 effective date. The FAC cannot relate back to the original Complaint as to Adobe, ALU, IBM, Juniper and VMware because the original Complaint alleged infringement only of the statutorily disclaimed ‘241 patent against those defendants. The Court lacks jurisdiction to hear allegations relating to a statutorily disclaimed patent, and for these defendants there is no case or controversy to relate back to. The FAC’s allegations that these defendants infringe the ‘914 patent is not the same “conduct, transaction or occurrence” as the alleged infringement of the ‘241 patent. The later allegations of patent infringement cannot satisfy Rule 15(c) and cannot relate back to the original filing. See, e.g., Illinois Tool, 395 F. Supp. at 250-51. The original Complaint alleged that Red Hat infringed the ‘914 patent, but this alone does not permit relation back. See Farina, 625 F.3d at 111-13. For example, in Farina, a newly asserted claim against a single set of defendants, the “LG defendants,” prevented the relation back of Farina’s entire Second Amended Complaint for all defendants. Id. A fortiori, the potential relation back of a single defendant in this case cannot require the relation back of the other five.

The SAC seeks to add four additional patents to the allegations of the FAC, which would be asserted against various combinations of the defendants. The reasons why the FAC does not relate back to the original Complaint apply a fortiori to the SAC. Moreover, the SAC alleges indirect and willful infringement by all parties for all asserted patents, which requires, inter alia, that defendants knew of the patents. The SAC alleges, however, that defendants learned of the patents in suit only after the filing of the original Complaint. (See, e.g., D.I. 39 ¶¶ 21, 38, 54, 59, and 65 (asserting defendants learned of each patent on or after the service of the original Complaints)). Without knowledge of the patent, no claim for indirect infringement or willfulness could have existed at the time of the original Complaint, and the SAC’s indirect infringement claims cannot relate back to a time before the existence of the asserted right. See Abbott Labs., 524 F. Supp. 2d at 558 n. 10. Because the SAC does not relate back to the original Complaint, the AIA, enacted after the original Complaint but before the FAC and SAC, applies to and prohibits the SAC’s joinder of defendants.

In other words, the second amended complaint is so far removed from the original complaint that it is, for all intents and purposes, an original complaint. As such, it is not in a form permitted under the Patent Act as it was amended in September because it incorporates numerous unrelated parties, patents, and allegations of infringement.

There are other reasons this second amended complaint should not be allowed as set forth in the defendants' answering brief [PDF; Text]. Let's just say that they have the issue covered in spades. As for the original claim under the '914 patent against Red Hat, Red Hat has filed a separate motion to dismiss [PDF; Text] and brief [PDF; Text] in which it seeks dismissal of the willful infringement, inducement, and contributory infringement allegations related to the '914 patent, although not the basic infringement allegation.

One would hope the court would throw out the entire proceeding and force MOSAID to start over, which MOSAID is almost certain to do. One could hardly claim that MOSAID would be prejudiced by such an action, but allowing MOSAID to proceed with the second amended complaint would unquestionably prejudice the defendants.


Skip To Comments


************

Docket

1 – Filed and Effective: 08/09/2011
COMPLAINT
Document Text: COMPLAINT filed with Jury Demand against Adobe Systems Inc., Alcatel Lucent USA Inc., International Business Machines Corporation, Juniper Networks Inc., Netapp Inc., Red Hat Inc., VMware Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 350, receipt number 0311-928915.) - filed by Mosaid Technologies Inc.. (Attachments: # 1 Exhibit A part 1, # 2 Exhibit A part 2, # 3 Exhibit A part 3, # 4 Exhibit B part 1, # 5 Exhibit B part 2, # 6 Exhibit B part 3, # 7 Civil Cover Sheet)(els)

2 – Filed and Effective: 08/09/2011
Notice
Document Text: Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction (els)

- Filed and Effective: 08/09/2011
Summons
Document Text: Summons Issued as to Adobe Systems Inc. on 8/9/2011; Alcatel Lucent USA Inc. on 8/9/2011; International Business Machines Corporation on 8/9/2011; Juniper Networks Inc. on 8/9/2011; Netapp Inc. on 8/9/2011; Red Hat Inc. on 8/9/2011; VMware Inc. on 8/9/2011. Requesting party should contact the Help Desk at 302-573-6170 to arrange for pick-up or mailing of the summons. (els)
3 – Filed and Effective: 08/09/2011
Report
Document Text: Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 6,505,241; 5,892,914;. (els)

- Filed and Effective: 08/10/2011
Summons
Document Text: Summons Reissued as to Adobe Systems Inc., Alcatel Lucent USA Inc., International Business Machines Corporation, Juniper Networks Inc., Netapp Inc., Red Hat Inc., VMware Inc.. (dzs, )

4 – Filed and Effective: 08/16/2011
SUMMONS
Document Text: SUMMONS Returned Executed by Mosaid Technologies Inc.. VMware Inc. served on 8/11/2011, answer due 9/1/2011. (Brauerman, Stephen)

5  - Filed and Effective: 08/16/2011
SUMMONS
Document Text: SUMMONS Returned Executed by Mosaid Technologies Inc.. Red Hat Inc. served on 8/11/2011, answer due 9/1/2011. (Brauerman, Stephen)

6 – Filed and Effective: 08/16/2011
SUMMONS
Document Text: SUMMONS Returned Executed by Mosaid Technologies Inc.. Netapp Inc. served on 8/11/2011, answer due 9/1/2011. (Brauerman, Stephen)

7 – Filed and Effective: 08/16/2011
SUMMONS
Document Text: SUMMONS Returned Executed by Mosaid Technologies Inc.. Juniper Networks Inc. served on 8/11/2011, answer due 9/1/2011. (Brauerman, Stephen)

8 – Filed and Effective: 08/16/2011
SUMMONS
Document Text: SUMMONS Returned Executed by Mosaid Technologies Inc.. International Business Machines Corporation served on 8/11/2011, answer due 9/1/2011. (Brauerman, Stephen)

9 – Filed and Effective: 08/16/2011
SUMMONS
Document Text: SUMMONS Returned Executed by Mosaid Technologies Inc.. Alcatel Lucent USA Inc. served on 8/11/2011, answer due 9/1/2011. (Brauerman, Stephen)

10 – Filed and Effective: 08/16/2011
SUMMONS
Document Text: SUMMONS Returned Executed by Mosaid Technologies Inc.. Adobe Systems Inc. served on 8/11/2011, answer due 9/1/2011. (Brauerman, Stephen)

11 – Filed and Effective: 08/17/2011
STIPULATION
Document Text: STIPULATION TO EXTEND TIME Defendant's Answer to October 17, 2011 - filed by International Business Machines Corporation. (Seitz, Collins)

- Filed and Effective: 08/17/2011
Case Assignment
Document Text: Case Assigned to Judge Gregory M. Sleet. Please include the initials of the Judge (GMS) after the case number on all documents filed. (rjb)

- Filed and Effective: 08/17/2011
ORDER
Document Text: SO ORDERED, re 11 STIPULATION TO EXTEND TIME Defendant's Answer to October 17, 2011 filed by International Business Machines Corporation. Set/Reset Answer Deadlines: International Business Machines Corporation answer due 10/17/2011. Ordered by Chief Judge Gregory M. Sleet on 8/17/11. (mmm)

12 – Filed and Effective: 08/18/2011
STIPULATION
Doucment Text: STIPULATION TO EXTEND TIME FOR ALCATEL-LUCENT TO MOVE, ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT to October 17, 2011 - filed by Alcatel Lucent USA Inc., Mosaid Technologies Inc.. (Blumenfeld, Jack)

- Filed and Effective: 08/18/2011
ORDER
Document Text: SO ORDERED, re 12 STIPULATION TO EXTEND TIME FOR ALCATEL-LUCENT TO MOVE, ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT to October 17, 2011 filed by Alcatel Lucent USA Inc., Mosaid Technologies Inc., Set/Reset Answer Deadlines: Alcatel Lucent USA Inc. answer due 10/17/2011. Ordered by Chief Judge Gregory M. Sleet on 8/18/2011. (asw)

13 – Filed and Effective: 08/25/2011
MOTION
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Kenneth R. Adamo and Attorney Jon T. Hohenthaner - filed by International Business Machines Corporation. (Seitz, Collins)

- Filed and Effective: 08/29/2011
ORDER
Document Text: SO ORDERED, re 13 MOTION for Pro Hac Vice Appearance of Attorney Kenneth R. Adamo and Attorney Jon T. Hohenthaner filed by International Business Machines Corporation. Ordered by Chief Judge Gregory M. Sleet on 8/29/2011. (asw)

14 – Filed and Effective: 08/29/2011
MOTION
MOTION for Extension of Time to File /Unopposed Motion to Extend Time for Defendants Adobe Systems, Inc.; Net App., Inc.; Red Hat, Inc.; and VMWare, Inc. to Respond to the Complaint until October 17, 2011 - filed by Mosaid Technologies Inc.. (Brauerman, Stephen)

- Filed and Effective: 08/30/2011
ORDER
Document Text: SO ORDERED, re 14 MOTION for Extension of Time to File /Unopposed Motion to Extend Time for Defendants Adobe Systems, Inc.; Net App., Inc.; Red Hat, Inc.; and VMWare, Inc. to Respond to the Complaint until October 17, 2011 filed by Mosaid Technologies Inc., Set/Reset Answer Deadlines: Adobe Systems Inc. answer due 10/17/2011; Netapp Inc. answer due 10/17/2011; Red Hat Inc. answer due 10/17/2011; VMware Inc. answer due 10/17/2011. Ordered by Chief Judge Gregory M. Sleet on 8/30/2011. (asw)

- Filed and Effective: 08/31/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Kenneth R. Adamo,Jon T. Hohenthaner for International Business Machines Corporation added for electronic noticing. (dmp, )

15 – Filed and Effective: 09/02/2011
MOTION
Document Text: MOTION for Extension of Time to File /Unopposed Motion to Extend Time for Juniper Networks, Inc. to Respond to Complaint until October 17, 2011 - filed by Mosaid Technologies Inc.. (Brauerman, Stephen)

- Filed and Effective: 09/06/2011
ORDER
Document Text: SO ORDERED, re 15 MOTION for Extension of Time to File /Unopposed Motion to Extend Time for Juniper Networks, Inc. to Respond to Complaint until October 17, 2011 filed by Mosaid Technologies Inc., Set/Reset Answer Deadlines: Juniper Networks Inc. answer due 10/17/2011. Ordered by Chief Judge Gregory M. Sleet on 9/6/2011. (asw)

16 - Filed and Effective: 10/06/2011
FIRST AMENDED COMPLAINT
Document Text: First AMENDED COMPLAINT against Adobe Systems Inc., Alcatel Lucent USA Inc., International Business Machines Corporation, Juniper Networks Inc., Red Hat Inc., VMware Inc.- filed by Mosaid Technologies Inc..(Brauerman, Stephen)

17 - Filed and Effective: 10/06/2011
NOTICE
Document Text: NOTICE of Voluntary Dismissal by Mosaid Technologies Inc. as to NetApp Inc. (Brauerman, Stephen)

18 – Filed and Effective: 10/14/2011
STIPULATION
Document Text: STIPULATION TO EXTEND TIME FOR ALCATEL-LUCENT USA, INC. TO MOVE, ANSWER OR OTHERWISE RESPOND TO THE FIRST AMENDED COMPLAINT to November 23, 2011 - filed by Alcatel Lucent USA Inc., Mosaid Technologies Inc.. (Blumenfeld, Jack)

19 – Filed and Effective: 10/14/2011
STIPULATION
Document Text: STIPULATION TO EXTEND TIME to answer or otherwise respond to the First Amended Complaint (D.I. 16) to November 23, 2011 - filed by Red Hat Inc.. (Elliott, Tara)

- Filed and Effective: 10/17/2011
ORDER
Document Text: SO ORDERED, re 18 STIPULATION TO EXTEND TIME FOR ALCATEL-LUCENT USA, INC. TO MOVE, ANSWER OR OTHERWISE RESPOND TO THE FIRST AMENDED COMPLAINT to November 23, 2011 filed by Alcatel Lucent USA Inc., Mosaid Technologies Inc., Set/Reset Answer Deadlines: Alcatel Lucent USA Inc. answer due 11/23/2011. Ordered by Chief Judge Gregory M. Sleet on 10/17/2011. (asw)

- Filed and Effective: 10/17/2011
ORDER
Document Text: ORAL ORDER DENYING 19 STIPULATION TO EXTEND TIME to answer or otherwise respond to the First Amended Complaint (D.I. 16) to November 23, 2011 filed by Red Hat Inc. The parties shall refer to the Court's website and follow Chief Judge Sleet's procedure for filing Stipulations to Extend Time. After reviewing the Court's procedure, the parties may RE-FILE the Stipulation. Ordered by Chief Judge Gregory M. Sleet on 10/17/2011. (asw)

- Filed and Effective: 10/17/2011
CORRECTING ENTRY
Document Text: CORRECTING ENTRY: The docket entry re Oral Order dated 10/17/2011 has been corrected to indicate that D.I. 19 Stipulation is DENIED. (asw)

20 – Filed and Effective: 10/17/2011
STIPULATION
Document Text: STIPULATION Revised Extend time to Answer Complaint to First Amended Complaint by Red Hat Inc.. (Elliott, Tara)

- Filed and Effective: 10/17/2011
ORDER
Document Text: SO ORDERED, re 20 Stipulation filed by Red Hat Inc., Set/Reset Answer Deadlines: Red Hat Inc. answer due 11/23/2011. Ordered by Chief Judge Gregory M. Sleet on 10/17/2011. (asw)

21 – Filed and Effective: 10/17/2011
Proposed Stipulation
Document Text: Proposed STIPULATION TO EXTEND TIME to Answer the Amended Complaint to November 23, 2011 - filed by International Business Machines Corporation. (Seitz, Collins)

- Filed and Effective: 10/17/2011
ORDER
Document Text: SO ORDERED, re 21 Proposed STIPULATION TO EXTEND TIME to Answer the Amended Complaint to November 23, 2011 filed by International Business Machines Corporation, Set/Reset Answer Deadlines: International Business Machines Corporation answer due 11/23/2011. Ordered by Chief Judge Gregory M. Sleet on 10/17/2011. (asw)

22 – Filed and Effective: 10/19/2011
Motion
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Monte M.F. Cooper - filed by VMware Inc.. (Kraman, Pilar)

- Filed and Effective: 10/20/2011
Order
Document Text: SO ORDERED, re 22 MOTION for Pro Hac Vice Appearance of Attorney Monte M.F. Cooper filed by VMware Inc. Ordered by Chief Judge Gregory M. Sleet on 10/20/2011. (asw)

23 – Filed and Effective: 10/20/2011
Motion
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Karen G. Johnson-McKewan and Attorney Jason K. Yu - filed by VMware Inc.. (Kraman, Pilar)

24 – Filed and Effective: 10/20/2011
JOINT STIPULATION
Document Text: Joint STIPULATION TO EXTEND TIME for Defendant VMware, Inc. to answer, move or otherwise respond to Plaintiff's Amended Complaint to November 23, 2011 - filed by Mosaid Technologies Inc., VMware Inc.. (Kraman, Pilar)

- Filed and Effective: 10/21/2011
Order
Document Text: SO ORDERED, re 23 MOTION for Pro Hac Vice Appearance of Attorney Karen G. Johnson-McKewan and Attorney Jason K. Yu filed by VMware Inc. Ordered by Chief Judge Gregory M. Sleet on 10/21/2011. (asw)

- Filed and Effective: 10/21/2011
Order
Document Text: SO ORDERED, re 24 Joint STIPULATION TO EXTEND TIME for Defendant VMware, Inc. to answer, move or otherwise respond to Plaintiff's Amended Complaint to November 23, 2011 filed by VMware Inc., Mosaid Technologies Inc., Set/Reset Answer Deadlines: VMware Inc. answer due 11/23/2011. Ordered by Chief Judge Gregory M. Sleet on 10/21/2011. (asw)

- Filed and Effective: 10/21/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Monte M.F. Cooper for VMware Inc. added for electronic noticing. (nms)

- Filed and Effective: 10/25/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Karen G. Johnson-McKewan for VMware Inc. added for electronic noticing. (dmp, )

- Filed and Effective: 10/25/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Jason K. Yu for VMware Inc. added for electronic noticing. (nms)

25 – Filed and Effective: 10/25/2011
Motion
Document Text: MOTION for Pro Hac Vice Appearance of Attorney I. Neel Chatterjee - filed by VMware Inc.. (Kraman, Pilar)

- Filed and Effective: 10/26/2011
Order
Document Text: SO ORDERED, re 25 MOTION for Pro Hac Vice Appearance of Attorney I. Neel Chatterjee filed by VMware Inc. Ordered by Chief Judge Gregory M. Sleet on 10/26/2011. (asw)

- Filed and Effective: 10/27/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Indra Neel Chatterjee for VMware Inc. added for electronic noticing. (nms)

26 – Filed and Effective: 11/01/2011
Notice
Document Text: NOTICE of Withdrawal of Counsel of Jon T. Hohenthaner by International Business Machines Corporation (Seitz, Collins)

27 – Filed and Effective: 11/02/2011
STIPULATION
Document Text: STIPULATION TO EXTEND TIME to RESPOND to Complaint to November 23, 2011 - filed by Juniper Networks Inc.. (Seitz, Collins)

28 – Filed and Effective: 11/04/2011
MOTION
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Jennifer A. Bauer - filed by Alcatel Lucent USA Inc.. (Blumenfeld, Jack)

- Filed and Effective: 11/07/2011
ORDER
Document Text: SO ORDERED, re 27 STIPULATION TO EXTEND TIME to RESPOND to Complaint to November 23, 2011 filed by Juniper Networks Inc., Set/Reset Answer Deadlines: Juniper Networks Inc. answer due 11/23/2011. Ordered by Chief Judge Gregory M. Sleet on 11/7/2011. (asw)

- Filed and Effective: 11/07/2011
ORDER
Document Text: SO ORDERED, re 28 MOTION for Pro Hac Vice Appearance of Attorney Jennifer A. Bauer filed by Alcatel Lucent USA Inc. Ordered by Chief Judge Gregory M. Sleet on 11/7/2011. (asw)

29 – Filed and Effective: 11/08/2011
Motion
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Richard Birnholz and Jonathan Kagan - filed by Juniper Networks Inc.. (Attachments: # 1 Certification of Richard Birnholz, # 2 Certification of Jonathan Kagan)(Seitz, Collins)

30 – Filed and Effective: 11/11/2011
Notice
Document Text: NOTICE of Appearance by Denise Seastone Kraft on behalf of Adobe Systems Inc. (Attachments: # 1 Certificate of Service)(Kraft, Denise)

31 – Filed and Effective: 11/11/2011
Notice
Document Text: NOTICE of Appearance by Aleine Michelle Porterfield on behalf of Adobe Systems Inc. (Attachments: # 1 Certificate of Service)(Porterfield, Aleine)

32 – Filed and Effective: 11/11/2011
STIPULATION
Document Text: STIPULATION TO EXTEND TIME to Answer, Move, or Otherwise Respond to Plaintiff's First Amended Complaint For Patent Infringement to November 23, 2011 - filed by Adobe Systems Inc.. (Attachments: # 1 Certificate of Service)(Kraft, Denise)

33 – Filed and Effective: 11/11/2011
SECOND AMENDED COMPLAINT
Document Text: Second AMENDED COMPLAINT against Adobe Systems Inc., Alcatel Lucent USA Inc., International Business Machines Corporation, Juniper Networks Inc., Red Hat Inc., VMware Inc.- filed by Mosaid Technologies Inc.. (Attachments: # 1 Exhibit 1 (Part 1), # 2 Exhibit 1 (Part 2), # 3 Exhibit 1 (Part 3), # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Patent/Trademark Report)(Brauerman, Stephen)

- Filed and Effective: 11/14/2011
ORDER
Document Text: SO ORDERED, re 29 MOTION for Pro Hac Vice Appearance of Attorney Richard Birnholz and Jonathan Kagan filed by Juniper Networks Inc. Ordered by Chief Judge Gregory M. Sleet on 11/14/2011. (asw)

   - Filed and Effective: 11/15/2011
ORDER
Document Text: SO ORDERED, re 32 STIPULATION TO EXTEND TIME to Answer, Move, or Otherwise Respond to Plaintiff's First Amended Complaint For Patent Infringement to November 23, 2011 filed by Adobe Systems Inc., Set/Reset Answer Deadlines: Adobe Systems Inc. answer due 11/23/2011. Ordered by Chief Judge Gregory M. Sleet on 11/15/2011. (asw)

34 – Filed and Effective: 11/15/2011
Motion
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Christopher Freeman, James E. Marina and David Rokach of Kirkland & Ellis LLP - filed by International Business Machines Corporation. (Seitz, Collins)

Order
Document Text: SO ORDERED, re 34 MOTION for Pro Hac Vice Appearance of Attorney Christopher Freeman, James E. Marina and David Rokach of Kirkland & Ellis LLP filed by International Business Machines Corporation. Ordered by Chief Judge Gregory M. Sleet on 11/15/2011. (asw)

Motion
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Andrew Valentine - filed by Adobe Systems Inc.. (Attachments: # 1 Text of Proposed Order, # 2 Certification of Counsel, # 3 Certificate of Service)(Kraft, Denise)

- Filed and Effective: 11/16/2011
Order
Document Text: SO ORDERED, re 35 MOTION for Pro Hac Vice Appearance of Attorney Andrew Valentine filed by Adobe Systems Inc. Ordered by Chief Judge Gregory M. Sleet on 11/16/2011. (asw)

- Filed and Effective: 11/21/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney James E. Marina for International Business Machines Corporation added for electronic noticing. (dmp, )

- Filed and Effective: 11/21/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Andrew P. Valentine for Adobe Systems Inc. added for electronic noticing. (dmp, )

36 – Filed and Effective: 11/21/2011
Motion
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Kathi Kelly Lutton and Shelley K. Mack - filed by Red Hat Inc.. (Booker, Gregory)

- Filed and Effective: 11/23/2011
Order
Document Text: SO ORDERED, re 36 MOTION for Pro Hac Vice Appearance of Attorney Kathi Kelly Lutton and Shelley K. Mack filed by Red Hat Inc. Ordered by Chief Judge Gregory M. Sleet on 11/23/11. (mmm)

37 – Filed and Effective: 11/23/2011
Joint Motion
Document Text: Joint MOTION for Extension of Time to File Answer re SO ORDERED, Set/Reset Answer Deadline(s),, Set/Reset Answer Deadline(s), SO ORDERED, Set/Reset Answer Deadline(s),, Set/Reset Answer Deadline(s), 16 Amended Complaint, SO ORDERED, Set/Reset Answer Deadline(s),, Set/Reset Answer Deadline(s), SO ORDERED, Set/Reset Answer Deadline(s) for Defendants Adobe Systems, Inc., Alcatel-Lucent USA, Inc., International Business Machines Corp., Juniper Networks, Inc., Red Hat, Inc. and VMare, Inc. to answer First Amended Complaint to December 23, 2011 - filed by Red Hat Inc.. (Booker, Gregory)

- Filed and Effective: 11/23/2011
Order
Document Text: SO ORDERED, re 37 Joint MOTION for Extension of Time to File Answer re SO ORDERED, Set/Reset Answer Deadline(s), Set/Reset Answer Deadline(s), SO ORDERED, Set/Reset Answer Deadline(s), Set/Reset Answer Deadline(s), 16 Amended Complaint, SO ORDERED, Set/Reset AnswerJoint MOTION for Extension of Time to File Answer re SO ORDERED, Set/Reset Answer Deadline(s), Set/Reset Answer Deadline(s), SO ORDERED, Set/Reset Answer Deadline(s), Set/Reset Answer Deadline(s), 16 Amended Complaint, SO ORDERED, Set/Reset AnswerJoint MOTION for Extension of Time to File Answer re SO ORDERED, Set/Reset Answer Deadline(s), Set/Reset Answer Deadline(s), SO ORDERED, Set/Reset Answer Deadline(s), Set/Reset Answer Deadline(s), 16 Amended Complaint, SO ORDERED, Set/Reset Answer filed by Red Hat Inc., Set/Reset Answer Deadlines: Adobe Systems Inc. answer due 12/23/2011; Alcatel Lucent USA Inc. answer due 12/23/2011; International Business Machines Corporation answer due 12/23/2011; Juniper Networks Inc. answer due 12/23/2011; Red Hat Inc. answer due 12/23/2011; VMware Inc. answer due 12/23/2011. Ordered by Chief Judge Gregory M. Sleet on 11/23/2011. (asw)

- Filed and Effective: 11/30/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Jonathan S. Kagan,Richard M. Birnholz for Juniper Networks Inc. added for electronic noticing. (dmp, )

38 – Filed and Effective: 12/01/2011
Motion
Document Text: MOTION for Pro Hac Vice Appearance of Attorney Steven G. Hill, Douglas R. Kertscher, Blake H. Frye, and Martha L. Decker of Hill, Kertscher & Wharton, LLP - filed by Mosaid Technologies Inc.. (Attachments: # 1 Certification of Steven G. Hill, # 2 Cerftification of Douglas R. Kertscher, # 3 Certification of Blake H. Frye, # 4 Certification of Martha L. Decker)(Brauerman, Stephen)

- Filed and Effective: 12/01/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Katherine K. Lutton for Red Hat Inc. added for electronic noticing. (dmp, )

- Filed and Effective: 12/02/2011
Order
Document Text: SO ORDERED, re 38 MOTION for Pro Hac Vice Appearance of Attorney Steven G. Hill, Douglas R. Kertscher, Blake H. Frye, and Martha L. Decker of Hill, Kertscher & Wharton, LLP filed by Mosaid Technologies Inc. Ordered by Chief Judge Gregory M. Sleet on 12/2/2011. (asw)

- Filed and Effective: 12/12/2011
pro Hac Vice
Document Text: Pro Hac Vice Attorney Steven G. Hill for Mosaid Technologies Inc. added for electronic noticing. (rbe)

39 - Filed and Effective: 12/12/2011
MOTION
Document Text: MOTION for Leave to File a Second Amended Complaint - filed by Mosaid Technologies Inc.. (Attachments: # 1 Exhibit A (Proposed Second Amended Complaint), # 2 Exhibit B, # 3 Local Rule 7.1.1 Certification, # 4 Text of Proposed Order)(Brauerman, Stephen)

40 - Filed and Effective: 12/12/2011
BRIEF
Document Text: OPENING BRIEF in Support re 39 MOTION for Leave to File a Second Amended Complaint filed by Mosaid Technologies Inc..Answering Brief/Response due date per Local Rules is 12/30/2011. (Brauerman, Stephen)

- Filed and Effective: 12/15/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Shelley K. Mack for Red Hat Inc. added for electronic noticing. (rbe)

41 – Filed and Effective: 12/19/2011
Motion
Document Text: MOTION for Extension of Time to Respond to MOSAID's First Amended Complaint - filed by Adobe Systems Inc., Alcatel Lucent USA Inc., International Business Machines Corporation, Juniper Networks Inc., Red Hat Inc., VMware Inc.. (Blumenfeld, Jack)

- Filed and Effective: 12/20/2011
Pro Hac Vice
Document Text: Pro Hac Vice Attorney Douglas R. Kertscher,Blake H. Frye for Mosaid Technologies Inc. added for electronic noticing. (dmp, )

42 – Filed and Effective: 12/23/2011
Motion
Document Text: MOTION to Dismiss for Failure to State a Claim or, in the Alternative, for a More Definite Statement, and Motion to Strike - filed by VMware Inc.. (Attachments: # 1 Text of Proposed Order)(Kraman, Pilar)

43 – Filed and Effective: 12/23/2011
BRIEF
Document Text: OPENING BRIEF in Support re 42 MOTION to Dismiss for Failure to State a Claim or, in the Alternative, for a More Definite Statement, and Motion to Strike filed by VMware Inc..Answering Brief/Response due date per Local Rules is 1/9/2012. (Kraman, Pilar)

44 – Filed and Effective: 12/23/2011
Declaration
Document Text: DECLARATION re 43 Opening Brief in Support, 42 MOTION to Dismiss for Failure to State a Claim or, in the Alternative, for a More Definite Statement, and Motion to Strike - Declaration of Stacey E. Stillman - by VMware Inc.. (Attachments: # 1 Exhibit A)(Kraman, Pilar)

45 – Filed and Effective: 12/23/2011
Motion
Document Text: MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter - filed by VMware Inc.. (Attachments: # 1 Text of Proposed Order)(Kraman, Pilar)

46 – Filed and Effective: 12/23/2011
BRIEF
Document Text: OPENING BRIEF in Support re 45 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter filed by VMware Inc..Answering Brief/Response due date per Local Rules is 1/9/2012. (Kraman, Pilar)

47 – Filed and Effective: 12/23/2011
Declaration
Document Text: DECLARATION re 46 Opening Brief in Support, 45 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter - Declaration of Monte M.F. Cooper - by VMware Inc.. (Attachments: # 1 Exhibit A-D, # 2 Exhibit E-J)(Kraman, Pilar)

48 – Filed and Effective: 12/23/2011
MOTION
Document Text: MOTION to Dismiss for Failure to State a Claim - filed by Red Hat Inc.. (Attachments: # 1 Text of Proposed Order Proposed Order)(Booker, Gregory)

49 - Filed and Effective: 12/23/2011
BRIEF
Document Text: OPENING BRIEF in Support re 48 MOTION to Dismiss for Failure to State a Claim filed by Red Hat Inc..Answering Brief/Response due date per Local Rules is 1/9/2012. (Booker, Gregory)

50 – Filed and Effective: 12/23/2011
Motion
Document Text: MOTION to Dismiss for Failure to State a Claim International Business Machines Corp.'s Motion to Dismiss Plaintiff's Indirect and Willful Infringement Claims - filed by International Business Machines Corporation. (Seitz, Collins)

51 – Filed and Effective: 12/23/2011
Proposed Order
Document Text: PROPOSED ORDER regarding International Business Machines Corp.'s Motion to Dismiss Plaintiff's Indirect and Willful Infringement Claims 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 by International Business Machines Corporation. (Seitz, Collins)

52 – Filed and Effective: 12/23/2011
BRIEF
Document Text: OPENING BRIEF in Support 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 filed by International Business Machines Corporation. Answering Brief/Response due date per Local Rules is 1/9/2012. (Seitz, Collins)

53 – Filed and Effective: 12/23/2011
Motion
Document Text: MOTION to Dismiss for Failure to State a Claim Mosaid's First Amended Complaint And To Transfer Venue To The Northern District of California - filed by Juniper Networks Inc.. (Attachments: # 1 Text of Proposed Order)(Seitz, Collins)

54 – Filed and Effective: 12/23/2011
BRIEF
Document Text: OPENING BRIEF in Support 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 filed by Juniper Networks Inc..Answering Brief/Response due date per Local Rules is 1/9/2012. (Attachments: # 1 Exhibit A)(Seitz, Collins)

55 – Filed and Effective: 12/23/2011
Declaration
Document Text: DECLARATION 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, 54 Opening Brief in Support, Declaration of Archana Bhuta by Juniper Networks Inc.. (Seitz, Collins)

56 – Filed and Effective: 12/23/2011
Motion
Document Text: MOTION to Dismiss for Failure to State a Claim Motion to Dismiss Under Rule 12(B)(6) and Motion to Strike - filed by Adobe Systems Inc.. (Attachments: # 1 Text of Proposed Order, # 2 Certificate of Service)(Kraft, Denise)

57 – Filed and Effective: 12/23/2011
BRIEF
Document Text: OPENING BRIEF in Support re 56 MOTION to Dismiss for Failure to State a Claim Motion to Dismiss Under Rule 12(B)(6) and Motion to Strike filed by Adobe Systems Inc..Answering Brief/Response due date per Local Rules is 1/9/2012. (Attachments: # 1 Certificate of Service)(Kraft, Denise)

58 – Filed and Effective: 12/23/2011
Declaration
Document Text: DECLARATION re 57 Opening Brief in Support, 56 MOTION to Dismiss for Failure to State a Claim Motion to Dismiss Under Rule 12(B)(6) and Motion to Strike by Adobe Systems Inc.. (Attachments: # 1 Exhibit A, # 2 Certificate of Service)(Kraft, Denise)

59 – Filed and Effective: 12/23/2011
Disclosure Statement
Document Text: Disclosure Statement pursuant to Rule 7.1 filed by Adobe Systems Inc.. (Attachments: # 1 Certificate of Service)(Kraft, Denise)

60 – Filed and Effective: 12/23/2011
Motion
Document Text: MOTION to Dismiss for Failure to State a Claim - filed by Alcatel Lucent USA Inc.. (Saindon, Paul)

61 – Filed and Effective: 12/23/2011
BRIEF
Document Text: OPENING BRIEF in Support re 60 MOTION to Dismiss for Failure to State a Claim filed by Alcatel Lucent USA Inc..Answering Brief/Response due date per Local Rules is 1/9/2012. (Attachments: # 1 Exhibit A)(Saindon, Paul)

62 – Filed and Effective: 12/23/2011
Disclosure Statement
Document Text: Disclosure Statement pursuant to Rule 7.1 filed by Alcatel Lucent USA Inc. identifying Corporate Parent Alcatel Lucent for Alcatel Lucent USA Inc... (Saindon, Paul)

63 – Filed and Effective: 12/29/2011
Amended Motion
Document Text: AMENDED DOCUMENT by Mosaid Technologies Inc.. Amendment to 39 MOTION for Leave to File a Second Amended Complaint /Amendment to Rule 7.1.1 Certification of Counsel Pursuant to Local Rule 7.1.1. (Attachments: # 1 Exhibit A)(Brauerman, Stephen)

64 – Filed and Effective: 12/30/2011
ANSWERING BRIEF
Document Text: ANSWERING BRIEF in Opposition re 39 MOTION for Leave to File a Second Amended Complaint and Motion To Transfer Venue To The Northern District of California filed by Juniper Networks Inc..Reply Brief due date per Local Rules is 1/9/2012. (Attachments: # 1 Exhibit A)(Seitz, Collins)

65 – Filed and Effective: 12/30/2011
ANSWERING BRIEF
Document Text: ANSWERING BRIEF in Opposition re 39 MOTION for Leave to File a Second Amended Complaint filed by Adobe Systems Inc., Alcatel Lucent USA Inc., International Business Machines Corporation, Red Hat Inc., VMware Inc..Reply Brief due date per Local Rules is 1/9/2012. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Saindon, Paul)

66 – Filed and Effective: 01/03/2012
Notice
Document Text: NOTICE of Withdrawal of Motion by Adobe Systems Inc., Alcatel Lucent USA Inc., International Business Machines Corporation, Juniper Networks Inc., Red Hat Inc., VMware Inc. re 41 MOTION for Extension of Time to Respond to MOSAID's First Amended Complaint (Saindon, Paul)

67 – Filed and Effective: 01/06/2012
Disclosure Statement
Document Text: Disclosure Statement pursuant to Rule 7.1 filed by VMware Inc. identifying Corporate Parent EMC Corporation for VMware Inc... (Kraman, Pilar)

68 – Filed and Effective: 01/06/2012
Disclosure Statement
Document Text: Disclosure Statement pursuant to Rule 7.1 filed by International Business Machines Corporation. (Seitz, Collins)

69 – Filed and Effective: 01/06/2012
Disclosure Statement
Document Text: Disclosure Statement pursuant to Rule 7.1 filed by Juniper Networks Inc.. (Seitz, Collins)

70 – Filed and Effective: 01/06/2012
Motion
Document Text: 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 - filed by Mosaid Technologies Inc.. (Brauerman, Stephen)


************

Documents

16

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., RED HAT, INC., AND
VMWARE, INC.
Defendants.

C.A. No.: 1:11-cv-00698-GMS

JURY TRIAL DEMANDED

________________________________

FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff MOSAID Technologies Inc. (“MOSAID”), by and through its undersigned counsel, for its First Amended Complaint for Patent Infringement against the above-named Defendants hereby states:

THE PARTIES

1. Plaintiff MOSAID Technologies Inc. is a corporation subject to the laws of Canada with its principal place of business at 11 Hines Road, Suite 203, Ottawa, Ontario, Canada K2K 2X1. MOSAID’s principal place of business in the United States is located at 5700 Granite Parkway, Suite 960, Plano, Texas 75024.

2. Defendant Adobe Systems, Inc. (“Adobe”) is a Delaware corporation. Adobe may be served through its registered agent, Corporation Service Company, 2711 Centerville Road, Suite 400, Wilmington, DE 19808. Adobe is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

3. Defendant Alcatel-Lucent USA, Inc., (“Alcatel”) is a Delaware corporation. Alcatel-Lucent may be served via its registered agent, Corporation Service Company 2711 Centerville Road, Suite 400, Wilmington, DE 19808. Alcatel is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

4. Defendant International Business Machines Corp (“IBM”) is a Delaware corporation. IBM may be served via its registered agent, the Corporation Trust Company, Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801. IBM is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

5. Defendant Juniper Networks, Inc. (“Juniper”) is a Delaware corporation. Juniper may be served via its registered agent, the Corporation Trust Company, Corporation Trust Center 1209 Orange Street, Wilmington, DE 19801. Juniper is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

6. [Withdrawn.]

7. Defendant Red Hat, Inc. (“Red Hat”) is a Delaware corporation. Red Hat may be served via its registered agent, the Corporation Trust Company, Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801. Red Hat is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district

2

by way of sales and distribution of its products and services, including those accused of infringement herein.

8. Defendant VMware, Inc. (“VMware”) is a Delaware corporation. VMware may be served via its registered agent, the Corporation Trust Company, Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801. VMware is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

JURISDICTION AND VENUE

9. This is an action for patent infringement arising under the provisions of the Patent Laws of the United States of America, Title 35, United States Code.

10. Subject-matter jurisdiction over MOSAID’s claims is conferred upon this Court by 28 U.S.C. § 1331 (federal question jurisdiction) and 28 U.S.C. § 1338(a) (patent jurisdiction).

11. This Court has personal jurisdiction over Defendants because Defendants are subject to general jurisdiction in the State of Delaware. Defendants also have established minimum contacts with the forum. All Defendants are authorized to do business in the State of Delaware and regularly conduct such business. Defendants manufacture, sell and/or offer to sell—products and services, including the products and services specified herein, that are and have been used, offered for sale, sold and/or purchased in Delaware, including in this judicial district. Defendants—directly and/or through their distribution networks——place their infringing software, computer products and related services within the stream of commerce, which stream is directed at this district. Therefore, the exercise of personal jurisdiction over Defendants would not offend traditional notions of fair play and substantial justice.

3

12. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b) and (c) and §1400(b).

COUNT I – INFRINGEMENT OF U.S. PATENT NO. 6,505,241

13. [Withdrawn].

14. [Withdrawn].

15. [Withdrawn].

16. [Withdrawn].

17. [Withdrawn].

18. [Withdrawn].

19. [Withdrawn].

COUNT II – INFRINGEMENT OF U.S. PATENT NO. 5,892,914

20. MOSAID reasserts and incorporates herein by reference the allegations of all preceding paragraphs of this Complaint as if fully set forth herein.

21. On April 6, 1999, U.S. Patent No. 5,892,914 (the “‘914 Patent”) was duly and legally issued by the USPTO. MOSAID is the owner by assignment of all right, title and interest in and to the ‘914 Patent, including all right to recover for any and all past infringement thereof. The ‘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.

22. Upon information and belief, Defendant RedHat has in the past and continues to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘914 Patent by making and using in this judicial district and elsewhere in the United States, a caching method which

4

infringes at least one claim of the ‘914 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘914 Patent further infringes the ‘914 Patent.

23. At a minimum, each of the following products made, sold and/or offered for sale by the Defendant RedHat perform for Red Hat, when used for their intended purposes, the process for projecting an image of a stored dataset from one network distributed cache site to another in response to a request to access such dataset from a client site, and the process consisting of the steps described in the ‘914 Patent, and are and are therefore infringing one or more claims of the '914 Patent:

a. RedHat Enterprise Linux with Resilient Storage Add-On;
b. RedHat Enterprise Server V6;
24. RedHat performs the ‘914 Patent by using the methods described in one or more claims of the ‘914 Patent, and are therefore infringing one or more claims of the '914 Patent. By way of illustration only, RedHat has tested, demonstrated and developed true and accurate technical literature relating to the deployment of RedHat Enterprise Linux with Resilient Storage Add-On and RedHat Enterprise Server V6 in ways that have used the steps claimed in the ‘914 Patent.

25. As a consequence of the infringement by Defendant RedHat complained of herein, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

26. Upon information and belief, Defendant RedHat will continue to infringe the ‘914 Patent unless enjoined by this Court.

5

27. Upon information and belief, Defendants Adobe, Alcatel, IBM, Juniper, and VMWare have in the past and continue to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘914 Patent by making, using, importing, selling and/or offering to sell, in this judicial district and elsewhere in the United States, software, appliances and services which are covered by at least one caching method claim of the ‘914 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘914 Patent further infringes the ‘914 Patent.

28. At a minimum, each of the following products and related services made, used, sold and/or offered for sale by each of the Defendants Adobe, Alcatel, IBM, Juniper, and VMWare perform, when used for their intended purposes, the process for projecting an image of a stored dataset from one network distributed cache site to another in response to a request to access such dataset from a client site, including the process consisting of the steps described in one or more claims of the ‘914 Patent, and are and are therefore infringing one or more claims of the '914 Patent:

a. Adobe Flash Memory Servers;
b. Alcatel Velocix Digital Media Delivery Platform;
c. IBM WebSphere Extreme Scale solution and related Datapower XC10 appliances;
d. Juniper Media Flow Solution and related Media Flow Controllers; and
e. VMware vFabric GemFire Platform and related GemFire servers.
29. By way of illustration only, upon information and belief, Adobe has tested,

6

demonstrated and developed true and accurate technical literature relating to the deployment of multiple interconnected Adobe Flash Memory Servers. Such testing and demonstration constitute use of said servers in ways that have performed the steps claimed in the ‘914 Patent.

30. By way of illustration only, upon information and belief, Alcatel has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the Velocix Digital Media Delivery Platform. Such testing and demonstration has included use of said platform in ways that have performed the steps claimed in the ‘914 Patent.

31. By way of illustration only, upon information and belief, IBM has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the WebSphere Extreme Scale solution and related Datapower XC10 appliances. Such testing and demonstration has included the use of said solution and said appliance in ways that have performed the steps claimed in the ‘914 Patent.

32. By way of illustration only, upon information and belief, Juniper has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the Media Flow Solution and related Media Flow Controllers. Such testing and demonstration has included the use of said solution and said controllers in ways that have performed the steps claimed in the ‘914 Patent.

33. By way of illustration only, upon information and belief, VMWare has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the vFabric GemFire Platform and related GemFire servers. Such testing and demonstration has included the use of said platform in ways that have performed the steps claimed in the ‘914 Patent.

34. By way of illustration only, the aforesaid Defendants, with full knowledge of the

7

‘914 Patent, continues to provide online technical literature, user group support, and other forms of technical support to other users of the aforesaid accused software solutions, platforms and related appliances, assisting said users to perform the steps claimed in the ‘914 Patent.

35. By way of illustration only, the aforesaid Defendants, with full knowledge of the ‘914 Patent, continue to provide marketing and sales-related literature, relating to the aforesaid accused software solutions, platforms and related appliances, encouraging said users to perform the steps claimed in the ‘914 Patent.

36. As a consequence of the infringement of the ‘914 Patent by the aforesaid Defendants, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

PRAYER FOR RELIEF

WHEREFORE, MOSAID prays for entry of judgment and an order that:

(1) Defendants have infringed one or more of the claims of the ‘914 Patent, either literally and/or under the doctrine of equivalents;

(2) Defendants account for and pay to MOSAID all damages, assessment of interest, and costs of MOSAID caused by Defendants’ patent infringement;

(3) MOSAID be granted permanent injunctive relief pursuant to 35 U.S.C. § 283 enjoining Defendants, their officers, agents, servants, employees, affiliates and those persons in active concert of participation with them from further acts of patent infringement of the Asserted Patents;

(4) In the event the Court determines that it will not enter injunctive relief, Defendants continue to pay royalties to MOSAID for its infringement of the ‘914 Patent on a going-forward basis;

8

(5) Defendants account for and pay for increased damages for willful infringement under 35 U.S.C. § 284;

(6) Costs and attorney’s fees be awarded to MOSAID, as this is an exceptional case under 35 U.S.C. § 285; and

(7) MOSAID be granted such further and additional relief as the Court may deem just and proper under the circumstances.

DEMAND FOR JURY TRIAL

MOSAID demands trial by jury on all claims and issues so triable.

October 6, 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.

9


17

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
ADOBE SYSTEMS, INC., ALCATEL-
LUCENT USA, INC., INTERNATIONAL
BUSINESS MACHINES CORP., JUNIPER
NETWORKS, INC., NETAPP, INC., RED
HAT, INC., AND VMWARE, INC.
Defendants.
v. C.A. No.: 1:11-cv-00698-GMS

JURY TRIAL DEMANDED

___________________________________

NOTICE OF VOLUNTARY DISMISSAL OF NETAPP, INC.

PLEASE TAKE NOTICE that, pursuant to Rule 41(a) of the Federal Rules of Civil Procedure, Plaintiff MOSAID Technologies Inc., by and through its undersigned counsel hereby voluntarily dismisses its claims against Defendant NetApp Inc. in the above-captioned action.

October 6, 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.


33

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES INC.,
Plaintiff,
ADOBE SYSTEMS, INC., ALCATEL-
BUSINESS MACHINES CORP., JUNIPER
NETWORKS, INC., RED HAT, INC., AND
VMWARE, INC.
Defendants.

v. C.A. No.: 1:11-cv-00698-GMS

JURY TRIAL DEMANDED

____________________________________

SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff MOSAID Technologies Inc. (“MOSAID”), by and through its undersigned counsel, for its Second Amended Complaint for Patent Infringement against the above-named Defendants hereby states:

THE PARTIES

1. Plaintiff MOSAID Technologies Inc. is a corporation subject to the laws of Canada with its principal place of business at 11 Hines Road, Suite 203, Ottawa, Ontario, Canada K2K 2X1. MOSAID’s principal place of business in the United States is located at 5700 Granite Parkway, Suite 960, Plano, Texas 75024.

2. Defendant Adobe Systems, Inc. (“Adobe”) is a Delaware corporation. Adobe may be served through its registered agent, Corporation Service Company, 2711 Centerville Road, Suite 400, Wilmington, DE 19808. Adobe is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

3. Defendant Alcatel-Lucent USA, Inc., (“Alcatel”) is a Delaware corporation. Alcatel-Lucent may be served via its registered agent, Corporation Service Company 2711 Centerville Road, Suite 400, Wilmington, DE 19808. Alcatel is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

4. Defendant International Business Machines Corp (“IBM”) is a Delaware corporation. IBM may be served via its registered agent, the Corporation Trust Company, Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801. IBM is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

5. Defendant Juniper Networks, Inc. (“Juniper”) is a Delaware corporation. Juniper may be served via its registered agent, the Corporation Trust Company, Corporation Trust Center 1209 Orange Street, Wilmington, DE 19801. Juniper is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

6. [Withdrawn.]

7. Defendant Red Hat, Inc. (“Red Hat”) is a Delaware corporation. Red Hat may be served via its registered agent, the Corporation Trust Company, Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801. Red Hat is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district

2

by way of sales and distribution of its products and services, including those accused of infringement herein.

8. Defendant VMware, Inc. (“VMware”) is a Delaware corporation. VMware may be served via its registered agent, the Corporation Trust Company, Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801. VMware is authorized to do business in the State of Delaware, and regularly conducts such business within the State and within this judicial district by way of sales and distribution of its products and services, including those accused of infringement herein.

JURISDICTION AND VENUE

9. This is an action for patent infringement arising under the provisions of the Patent Laws of the United States of America, Title 35, United States Code.

10. Subject-matter jurisdiction over MOSAID’s claims is conferred upon this Court by 28 U.S.C. § 1331 (federal question jurisdiction) and 28 U.S.C. § 1338(a) (patent jurisdiction).

11. This Court has personal jurisdiction over Defendants because Defendants are subject to general jurisdiction in the State of Delaware. Defendants also have established minimum contacts with the forum. All Defendants are authorized to do business in the State of Delaware and regularly conduct such business. Defendants manufacture, sell and/or offer to sell—products and services, including the products and services specified herein, that are and have been used, offered for sale, sold and/or purchased in Delaware, including in this judicial district. Defendants—directly and/or through their distribution networks——place their infringing software, computer products and related services within the stream of commerce, which stream is directed at this district. Therefore, the exercise of personal jurisdiction over Defendants would not offend traditional notions of fair play and substantial justice.

3

12. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b) and (c) and §1400(b).

COUNT I – INFRINGEMENT OF U.S. PATENT NO. 6,505,241

13. [Withdrawn].

14. [Withdrawn].

15. [Withdrawn].

16. [Withdrawn].

17. [Withdrawn].

18. [Withdrawn].

19. [Withdrawn].

COUNT II – INFRINGEMENT OF U.S. PATENT NO. 5,892,914

20. MOSAID reasserts and incorporates herein by reference the allegations of all preceding paragraphs of this Complaint as if fully set forth herein.

21. On April 6, 1999, U.S. Patent No. 5,892,914 (the “‘914 Patent”) was duly and legally issued by the U.S. Patent and Trademark Office (“USPTO”). MOSAID is the owner by assignment of all right, title and interest in and to the ‘914 Patent, including all right to recover for any and all past infringement thereof. The ‘914 Patent is attached hereto as “Exhibit 1,” 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.

22. Upon information and belief, Defendant Red Hat has in the past and continues to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘914 Patent by making and using in this judicial district and elsewhere in the United States, a caching method which

4

infringes at least one claim of the ‘914 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘914 Patent further infringes the ‘914 Patent.

23. At a minimum, when used for their intended purposes, each of the following products and related services, which are made, used, sold and/or offered for sale by the Defendant Red Hat, perform the process for projecting an image of a stored dataset from one network distributed cache site to another in response to a request to access such dataset from a client site, and the process consisting of the steps described in the ‘914 Patent, and are and are therefore infringing one or more claims of the '914 Patent:

a. Red Hat Enterprise Linux with Resilient Storage Add-On;
b. Red Hat Enterprise Server V6;
24. Red Hat performs the ‘914 Patent by using the methods described in one or more claims of the ‘914 Patent, and are therefore infringing one or more claims of the '914 Patent. By way of illustration only, Red Hat has tested, demonstrated and developed true and accurate technical literature relating to the deployment of Red Hat Enterprise Linux with Resilient Storage Add-On and Red Hat Enterprise Server V6 in ways that have used the steps claimed in the ‘914 Patent.

25. As a consequence of the infringement by Defendant Red Hat complained of herein, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

26. Upon information and belief, Defendant Red Hat will continue to infringe the ‘914 Patent unless enjoined by this Court.

5

27. Upon information and belief, Defendants Adobe, Alcatel, IBM, Juniper, and VMware have in the past and continue to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘914 Patent by making, using, importing, selling and/or offering to sell, in this judicial district and elsewhere in the United States, software, appliances and services which are covered by at least one caching method claim of the ‘914 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘914 Patent further infringes the ‘914 Patent.

28. At a minimum, each of the following products and related services made, used, sold and/or offered for sale by each of the Defendants Adobe, Alcatel, IBM, Juniper, and VMware perform, when used for their intended purposes, the process for projecting an image of a stored dataset from one network distributed cache site to another in response to a request to access such dataset from a client site, including the process consisting of the steps described in one or more claims of the ‘914 Patent, and are therefore infringing one or more claims of the '914 Patent:

a. Adobe Flash Memory Server;
b. Alcatel Velocix Digital Media Delivery Platform;
c. IBM WebSphere Extreme Scale solution and related Datapower XC10 appliance;
d. Juniper Media Flow Solution and related Media Flow Controllers;
e. VMware vFabric GemFire Platform.
29. By way of illustration only, upon information and belief, Adobe has tested,

6

demonstrated and developed true and accurate technical literature relating to the deployment of multiple interconnected Adobe Flash Memory Servers. Such testing and demonstration constitute use of said servers in ways that have performed the steps claimed in the ‘914 Patent.

30. By way of illustration only, upon information and belief, Alcatel has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the Velocix Digital Media Delivery Platform. Such testing and demonstration has included use of said platform in ways that have performed the steps claimed in the ‘914 Patent.

31. By way of illustration only, upon information and belief, IBM has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the WebSphere Extreme Scale solution and related Datapower XC10 appliance. Such testing and demonstration has included the use of said solution and said appliance in ways that have performed the steps claimed in the ‘914 Patent.

32. By way of illustration only, upon information and belief, Juniper has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the Media Flow Solution and related Media Flow Controllers. Such testing and demonstration has included the use of said solution and said controllers in ways that have performed the steps claimed in the ‘914 Patent.

33. By way of illustration only, upon information and belief, VMware has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the vFabric GemFire Platform. Such testing and demonstration has included the use of said platform in ways that have performed the steps claimed in the ‘914 Patent.

34. By way of illustration only, the aforesaid Defendants, with full knowledge of the ‘914 Patent, continues to provide online technical literature, user group support, and other forms

7

of technical support to other users of the aforesaid accused software solutions, platforms and related appliances, assisting said users to perform the steps claimed in the ‘914 Patent.

35. By way of illustration only, the aforesaid Defendants, with full knowledge of the ‘914 Patent, continue to provide marketing and sales-related literature, relating to the aforesaid accused software solutions, platforms and related appliances, encouraging said users to perform the steps claimed in the ‘914 Patent.

36. As a consequence of the infringement of the ‘914 Patent by the aforesaid Defendants, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

COUNT III – INFRINGEMENT OF U.S. PATENT NO. 5,611,049

37. MOSAID reasserts and incorporates herein by reference the allegations of all preceding paragraphs of this Complaint as if fully set forth herein.

38. On March 11, 1997, U.S. Patent No. 5,611,049 (the “‘049 Patent”) was duly and legally issued by the USPTO. MOSAID is the owner by assignment of all right, title and interest in and to the ‘049 Patent, including all right to recover for any and all past infringement thereof. The ‘049 Patent is attached hereto as “Exhibit 2,” and each of the Defendants has been aware of the ‘049 Patent since at least as early as on or about August 2011, when each was served with the summons and complaint in this case, and, upon information and belief, commenced investigation into the patent portfolio at issue in this case.

39. Upon information and belief, Defendant Red Hat has in the past and continues to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘049 Patent by making and using in this judicial district and elsewhere in the United States, a caching method which

8

infringes at least one claim of the ‘049 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘049 Patent further infringes the ‘049 Patent.

40. At a minimum, when used for their intended purposes, each of the following products and related services, which are made, used, sold and/or offered for sale by the Defendant Red Hat, perform the process for projecting an image of a stored dataset from one network distributed cache site, the process consisting of the steps described in the ‘049 Patent, and are and are therefore infringing one or more claims of the '049 Patent:

a. Red Hat Enterprise Linux with Resilient Storage Add-On;
b. Red Hat Enterprise Server V6;
41. Red Hat performs the ‘049 Patent by using the methods described in one or more claims of the ‘049 Patent, and are therefore infringing one or more claims of the '049 Patent. By way of illustration only, Red Hat has tested, demonstrated and developed true and accurate technical literature relating to the deployment of Red Hat Enterprise Linux with Resilient Storage Add-On and Red Hat Enterprise Server V6 in ways that have used the steps claimed in the ‘049 Patent.

42. As a consequence of the infringement by Defendant Red Hat complained of herein, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

43. Upon information and belief, Defendant Red Hat will continue to infringe the ‘049 Patent unless enjoined by this Court.

44. Upon information and belief, Defendants Adobe, Alcatel, IBM and Juniper have in the past and continue to infringe, directly, indirectly, literally, under the doctrine of

9

equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘049 Patent by making, using, importing, selling and/or offering to sell, in this judicial district and elsewhere in the United States, software, appliances and services which are covered by at least one caching method claim of the ‘049 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘049 Patent further infringes the ‘049 Patent.

45. At a minimum, each of the following products and related services made, used, sold and/or offered for sale by each of the Defendants Adobe, Alcatel, IBM, and Juniper perform, when used for their intended purposes, the process for projecting an image of a stored dataset from one network distributed cache site to another in response to a request to access such dataset from a client site, including the process consisting of the steps described in one or more claims of the ‘049 Patent, and are therefore infringing one or more claims of the '049 Patent:

a. Adobe Flash Memory Server;
b. Alcatel Velocix Digital Media Delivery Platform;
c. IBM WebSphere Extreme Scale solution and related Datapower XC10 appliance;
d. Juniper Media Flow Solution and related Media Flow Controllers;
46. By way of illustration only, upon information and belief, Adobe has tested, demonstrated and developed true and accurate technical literature relating to the deployment of multiple interconnected Adobe Flash Memory Servers. Such testing and demonstration constitute use of said servers in ways that have performed the steps claimed in the ‘049 Patent.

47. By way of illustration only, upon information and belief, Alcatel has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the Velocix Digital Media Delivery Platform. Such testing and demonstration has included use

10

of said platform in ways that have performed the steps claimed in the ‘049 Patent.

48. By way of illustration only, upon information and belief, IBM has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the WebSphere Extreme Scale solution and related Datapower XC10 appliance. Such testing and demonstration has included the use of said solution and said appliance in ways that have performed the steps claimed in the ‘049 Patent.

49. By way of illustration only, upon information and belief, Juniper has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the Media Flow Solution and related Media Flow Controllers. Such testing and demonstration has included the use of said solution and said controllers in ways that have performed the steps claimed in the ‘049 Patent.

50. By way of illustration only, the aforesaid Defendants, with full knowledge of the ‘049 Patent, continues to provide online technical literature, user group support, and other forms of technical support to other users of the aforesaid accused software solutions, platforms and related appliances, assisting said users to perform the steps claimed in the ‘049 Patent.

51. By way of illustration only, the aforesaid Defendants, with full knowledge of the ‘049 Patent, continue to provide marketing and sales-related literature, relating to the aforesaid accused software solutions, platforms and related appliances, encouraging said users to perform the steps claimed in the ‘049 Patent.

52. As a consequence of the infringement of the ‘049 Patent by the aforesaid Defendants, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

11

COUNT IV – INFRINGEMENT OF U.S. PATENT NO. 6,205,475

53. MOSAID reasserts and incorporates herein by reference the allegations of all preceding paragraphs of this Complaint as if fully set forth herein.

54. On March 20, 2001, U.S. Patent No. 6,205,475 (the “‘475 Patent”) was duly and legally issued by the USPTO. MOSAID is the owner by assignment of all right, title and interest in and to the ‘475 Patent, including all right to recover for any and all past infringement thereof. The ‘475 Patent is attached hereto as “Exhibit 3,” and each of the Defendants has been aware of the ‘475 Patent since at least as early as on or about August 2011, when each was served with the summons and complaint in this case, and, upon information and belief, commenced investigation into the patent portfolio at issue in this case.

55. Upon information and belief, Defendants Adobe, IBM, Juniper, and VMware have in the past and continue to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘475 Patent by making, using, importing, selling and/or offering to sell, in this judicial district and elsewhere in the United States, data storage devices which are covered by at least one claim of the ‘475 Patent. Importing, selling and/or offering to sell products which contribute to or induce the further making or using of said infringing storage devices by others with knowledge of the ‘475 Patent further infringes the ‘475 Patent.

56. At a minimum, each of the following data storage devices and/or networks made, used, sold and/or offered for sale by each of the Defendants Adobe, Alcatel, IBM, Juniper, and VMware perform, when used for their intended purposes, operates as a data storage network including one or more devices for being disposed in a data transmission path between a destination node and a data source, wherein the destination node is operable to request a data file

12

from the data source by directing a request for a data file along the data transmission path, and further include each of the elements of at least one claim of the ‘475 Patent, and are therefore infringing one or more claims of the '475 Patent:
a. Adobe Flash Memory Servers;
b. IBM WebSphere Extreme Scale solution and Websphere servers;
c. Juniper Media Flow Solution and Media Flow Controllers;
d. VMware vFabric GemFire Platform and VM Gemfire Peers.
57. As a consequence of the infringement of the ‘049 Patent by the aforesaid Defendants, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

COUNT V – INFRINGEMENT OF U.S. PATENT NO. 6,804,706

58. MOSAID reasserts and incorporates herein by reference the allegations of all preceding paragraphs of this Complaint as if fully set forth herein.

59. On October 12, 2004, U.S. Patent No. 6,804,706 (the “‘706 Patent”) was duly and legally issued by the USPTO. MOSAID is the owner by assignment of all right, title and interest in and to the ‘706 Patent, including all right to recover for any and all past infringement thereof. The ‘706 Patent is attached hereto as “Exhibit 4,” and each of the Defendants has been aware of the ‘706 Patent since at least as early as on or about August 2011, when each was served with the summons and complaint in this case, and, upon information and belief, commenced investigation into the patent portfolio at issue in this case.

60. Upon information and belief, Defendant IBM has in the past and continue to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘706 Patent by making, using,

13

importing, selling and/or offering to sell, in this judicial district and elsewhere in the United States, software, appliances and services which are covered by at least one caching method claim of the ‘706 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘706 Patent further infringes the ‘706 Patent.

61. At a minimum, the IBM WebSphere Extreme Scale solution made, used, sold and/or offered for sale by Defendant IBM performs, when used for their intended purposes, a method for projecting an image of a stored dataset from a network distributed cache (“NDC”) server terminator site into an NDC client terminator site in response to a request to access the stored dataset transmitted from a client site to the NDC client terminator site, and for the client site to overwrite at least a portion of the image of the stored dataset projected into the NDC client terminator site, including the method consisting of the steps described in one or more claims of the ‘706 Patent, and are therefore infringing one or more claims of the '706 Patent.

62. By way of illustration only, upon information and belief, IBM has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the WebSphere Extreme Scale solution and related Datapower XC10 appliance. Such testing and demonstration has included the use of said solution and said appliance in ways that have performed the steps claimed in the ‘706 Patent.

63. As a consequence of the infringement of the ‘706 Patent by the aforesaid Defendants, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

COUNT VI – INFRINGEMENT OF U.S. PATENT NO. 6,026,452

64. MOSAID reasserts and incorporates herein by reference the allegations of all

14

preceding paragraphs of this Complaint as if fully set forth herein.

65. On February 15, 2000, U.S. Patent No. 6,026,452 (the “‘452 Patent”) was duly and legally issued by the USPTO. MOSAID is the owner by assignment of all right, title and interest in and to the ‘452 Patent, including all right to recover for any and all past infringement thereof. The ‘452 Patent is attached hereto as “Exhibit 5,” and each of the Defendants has been aware of the ‘452 Patent since at least as early as on or about August 2011, when each was served with the summons and complaint in this case, and, upon information and belief, commenced investigation into the patent portfolio at issue in this case.

66. Upon information and belief, Defendant Red Hat has in the past and continue to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘452 Patent by making, using, importing, selling and/or offering to sell, in this judicial district and elsewhere in the United States, software, appliances and services which are covered by at least one caching method claim of the ‘452 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘452 Patent further infringes the ‘452 Patent.

67. At a minimum, when used for its intended purpose, Red Hat’s JBoss Enterprise Portal Platform and JBoss Enterprise Application Platform, each of which is made, used, sold and/or offered for sale by Red Hat, performs, performs a method for caching in the RAM of a digital computer system an image of a portion of data stored in a dataset that the computer system can access in response to a request to access such data, including the steps described in one or more claims of the ‘452 Patent, and are therefore infringing one or more claims of the '452 Patent.

15

68. By way of illustration only, upon information and belief, Red Hat has tested, demonstrated and developed true and accurate technical literature relating to the deployment of the JBoss Enterprise Portal Platform and JBoss Enterprise Application Platform. Such testing and demonstration has included the use of said solution and said appliance in ways that have performed the steps claimed in the ‘452 Patent.

69. As a consequence of the infringement of the ‘452 Patent by the aforesaid Defendants, MOSAID is entitled to recovery of past damages in the form of, at a minimum, a reasonable royalty.

PRAYER FOR RELIEF

WHEREFORE, MOSAID prays for entry of judgment and an order that:

(1) Defendants have infringed one or more of the claims of the ‘914 Patent, ‘049 Patent, ‘475 Patent, 706 Patent and/or the ‘452 Patent (collectively, the “Asserted Patents”), either literally and/or under the doctrine of equivalents;

(2) Defendants account for and pay to MOSAID all damages, assessment of interest, and costs of MOSAID caused by Defendants’ patent infringement of the Asserted Patents;

(3) MOSAID be granted permanent injunctive relief pursuant to 35 U.S.C. § 283 enjoining Defendants, their officers, agents, servants, employees, affiliates and those persons in active concert of participation with them from further acts of patent infringement of the Asserted Patents;

(4) In the event the Court determines that it will not enter injunctive relief, Defendants continue to pay royalties to MOSAID for its infringement of the Asserted Patents on a going-forward basis;

16

(5) Defendants account for and pay for increased damages for willful infringement under 35 U.S.C. § 284;

(6) Costs and attorney’s fees be awarded to MOSAID, as this is an exceptional case under 35 U.S.C. § 285; and

(7) MOSAID be granted such further and additional relief as the Court may deem just and proper under the circumstances.

DEMAND FOR JURY TRIAL

MOSAID demands trial by jury on all claims and issues so triable.

November 11, 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.

17


39

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 MOTION FOR LEAVE TO AMEND

Plaintiff MOSAID Technologies Inc. (“MOSAID”), by and through its undersigned counsel, hereby respectfully moves pursuant to Rule 15(a) of the Federal Rules of Civil Procedure to file a Second Amended Complaint for Patent Infringement against the above-named Defendants. The docket indicates that the Defendants have not filed any responsive pleadings in this action, that no Scheduling Order has been entered, and that no prejudice will result from the proposed amendment. The grounds for this Motion are more fully set forth in the accompanying Opening Brief filed contemporaneously herewith.

December 12, 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 Mosaid Technologies Inc.


40

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., RED
HAT, INC., AND VMWARE, INC.
Defendants.

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

JURY TRIAL DEMANDED

______________________________________

OPENING BRIEF IN SUPPORT OF PLAINTIFF’S MOTION FOR LEAVE TO AMEND

December 12, 2011

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

I. NATURE AND STAGE OF PROCEEDINGS AND STATEMENT OF FACTS ...... 4

II. SUMMARY OF ARGUMENT ...... 5

III. ARGUMENT ...... 5

IV. CONCLUSION ...... 7

2

TABLE OF AUTHORITIES

Page(s)

CASES

Dole v. Arco Chemical Co.,
921 F.2d 484 (3d Cir. 1990) ...... 5, 6

Foman v. Davis,
371 U.S. 178, 9 L. Ed. 222, 83 S. Ct. 227 (1963) ...... 6

Jackson v. Taylor,
2010 U.S. Dist. LEXIS 76573 (D. Del. 2010) ...... 6

Sulzer Testil A.G. v. Picanol N.V.,
358 F.3d 1356 (Fed. Cir. 2004) ...... 5

OTHER AUTHORITIES

District of Delaware Local Rule 15.1 ...... 4

Federal Rule of Civil Procedure 15(a) ...... 5, 6, 7

Federal Rule of Civil Procedure 16 ...... 6

Federal Rule of Civil Procedure 26 ...... 6

3

I. NATURE AND STAGE OF PROCEEDINGS AND STATEMENT OF FACTS

This is an action for patent infringement. Plaintiff filed the within action on August 9, 2011 (See D.I. No. 1 [Plaintiff’s Complaint for Patent Infringement]), and filed a First Amended Complaint on October 6, 2011 (See D.I. No. 16 [Plaintiff’s First Amended Complaint for Patent Infringement]). The First Amended Complaint was filed in part to withdraw allegations of infringement of one particular patent, and to dismiss one particular defendant, in light of information that the Defendants’ counsel shared with Plaintiff’s counsel. The First Amended Complaint alleged that Defendants’ accused products and related processes (hereinafter “accused products”) set forth in the original complaint project images from network distributed cache sites in a manner that infringes one or more claims of the ‘914 patent. (Id.). Plaintiff consented to extensions of time for each Defendant to file a responsive pleading; therefore, none of the Defendants has filed an Answer at this time to the Complaint or the First Amended Complaint.

Plaintiff now files the present Motion seeking leave to file a Second Amended Complaint (filed November 11, 2011 as D.I. No.33) 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 the fact that these accused products also are also believed to infringe additional patents which are related to the ‘914 patent. No new parties (or even new products for that matter) are sought to be added by this proposed amendment.1 When Plaintiff realized that it had grounds to assert these additional patents against the same accused products as those set forth in the First Amended Complaint, it prepared the Second Amended Complaint, which was filed with the Court and served upon all parties on

_____________________________________

1 In accordance with Local Rule 15.1, the Second Amended Complaint is attached to the Motion for Leave as Exhibit “A” and a form of the Second Amended Complaint indicating the manner in which it differs from the First Amended Complaint is attached as Exhibit “B.”

4

November 11, 2011, to give Defendants and the Court prompt notice of these additional infringement claims. Plaintiff has attempted to obtain Defendants’ consent to the filing of the Second Amended Complaint, but Defendants have refused to consent, or to offer any basis for this refusal, making the instant motion necessary.2

As stated, Plaintiff has sought Defendants’ consent to a stipulation relating to the November 11, 2011 filing of the Second Amended Complaint in the hopes of avoiding the need to trouble this Court with early procedural motion practice of this sort, but thus far only Defendant VMWare, Inc. indicated consent. Plaintiff has formally requested information about the other defendants’ positions relating to this matter, but no defendant has explained why it will not consent to the proposed amendment to the pleadings.

II. SUMMARY OF ARGUMENT

This case is relatively near its inception, as Defendants have not yet filed a responsive pleading. The Third Circuit,3 in applying Rule 15(a), liberally allows amendments unless to do so would prejudice a nonmoving party. See, e.g., Dole v. Arco Chemical Co., 921 F.2d 484 (3d Cir. 1990). Allowing amendment at this early stage will cause no prejudice to the Defendants; therefore, the Court should allow the Second Amended Complaint.

III. ARGUMENT

Federal Rule of Civil Procedure 15(a) provides that a party may amend a pleading with the opposing party’s written consent or with the leave of Court. Plaintiff has been unable to

____________________________________

2 A chronology of Plaintiff’s attempts to obtain Defendants’ consent to the filing of the Second Amended Complaint is attached as Exhibit “C”.

3 In matters of procedure, the Federal Circuit applies the law of the regional circuit in which the district court lies, unless the pertinent issue is unique to patent law. See Sulzer Testil A.G. v. Picanol N.V., 358 F.3d 1356, 1363 (Fed. Cir. 2004).

5

secure the consent of all Defendants to amend the Complaint; therefore, Plaintiff has filed the present Motion.

Rule 15(a) also 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).

Leave to amend is properly denied only when there is “undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment, etc.” Id. (citing Foman v. Davis, 371 U.S. 178, 182, 9 L. Ed. 222, 83 S. Ct. 227 (1963)). Absent a showing of one of these circumstances, leave to amend should ordinarily be allowed. Jackson v. Taylor, 2010 U.S. Dist. LEXIS 76573 (D. Del. 2010).

The primary consideration in determining whether to allow amendment is whether the amendment will prejudice the nonmoving party. Dole, 921 F.2d at 488. “A mere claim of prejudice is not sufficient; there must be some showing that [the nonmoving party] ‘was unfairly disadvantaged or deprived of the opportunity to present facts or evidence which it would have offered had the . . . amendments been timely.’” Id.

In the present case, allowing an amendment will cause no conceivable prejudice to the Defendants. In fact, Defendants have not even filed response to the prior Complaints, as Plaintiff agreed, with the approval of the Court, to extend the deadline to file responsive pleadings. The parties have not conducted any Rule 26 conferences, the Court has not held a Rule 16 conference, and no scheduling order has been entered or discussed. Most recently, after the

6

Second Amended Complaint was filed on November 11, 2011, the time for responsive pleadings was extended, by stipulation, through and including December 23, 2011. (D.I. 37.). During that time, Plaintiff hoped that all Defendants would agree to consent to the filing of the Second Amended Complaint; however, not all Defendants have so consented. Under these circumstances, pursuant to the language of Rule 15(a) and the Third Circuit’s policy in favor of liberally allowing amendments when no prejudice will result, Plaintiff’s Motion for Leave to Amend should be granted.

IV. CONCLUSION

For the foregoing reasons, Plaintiff asks that its Motion for Leave to Amend be granted, and that Plaintiff’s Second Amended Complaint, filed November 11, 2011, to be filed nunc pro tunc as a matter of record in these proceedings with said leave.

December 12, 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.

7


48

FOR THE DISTRICT OF DELAWARE

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

C.A. No. 11-698-GMS

____________________________________

DEFENDANT RED HAT INC.’S MOTION TO DISMISS, IN PART,
COUNT II OF PLAINTIFF’S FIRST AMENDED COMPLAINT
PURSUANT TO FED. R. CIV. P. 12(b)(6) FOR FAILURE TO STATE A CLAIM

Defendant Red Hat, Inc. (“Red Hat”) hereby moves for dismissal, in part, of Count II of Plaintiff MOSAID Technologies, Inc.’s (“MOSAID”) First Amended Complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim. Specifically, Red Hat moves to dismiss those portions of Paragraph 22 of the First Amended Complaint which are directed to inducement of infringement or contributory infringement, and Paragraph (5) of the First Amended Complaint’s Prayer for Relief. Red Hat’s Motion is based on the reasons outlined in its Opening Brief in Support of its Motion to Dismiss, in Part, Count II of Plaintiff’s First Amended Complaint Pursuant to Fed. R. Civ. P. 12(b)(6) for Failure to State a Claim, filed contemporaneously herewith, on the pleadings of record in this action, and on such further evidence and argument as the Court may receive prior to its decision on this Motion.

Dated: December 23, 2011

FISH & RICHARDSON P.C.

By: /s/ Gregory R. Booker
Tara D. Elliott (#4483)
Gregory R. Booker (#4784)
Fish & Richardson P.C.
[address telephone email]

Katherine Kelly Lutton
Shelley K. Mack
Fish & Richardson P.C.
[address telephone]

Attorneys for Defendant
RED HAT, INC.

2


49

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., RED HAT, INC.,
AND VMWARE, INC.,
Defendants.

C.A. No. 11-698-GMS

_________________________________

DEFENDANT RED HAT, INC.’S OPENING BRIEF IN SUPPORT OF MOTION TO
DISMISS IN PART COUNT II OF PLAINTIFF’S FIRST AMENDED COMPLAINT
PURSUANT TO FED. R. CIV. P. 12(b)(6) FOR FAILURE TO STATE A CLAIM

Tara D. Elliott (#4483)
Gregory R. Booker (#4784)
Fish & Richardson P.C.
[address telephone email]

Katherine Kelly Lutton
Shelley Mack
Fish & Richardson P.C.
[address telephone]

TABLE OF CONTENTS

Page(s)

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

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

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

IV. ARGUMENT ...... 5

A. Legal Standards Governing Indirect and Willful
Infringement Pleadings ...... 7

B. MOSAID’s Request for Increased Damages for Willful
Infringement Should Be Dismissed Because It Is
Entirely Devoid of Content ...... 8

C. MOSAID’s Inducement Claim Should Be Dismissed for
Failure to State Facts Identifying Any Alleged Direct
Infringer or Supporting an Allegation of Knowledge or
Specific Intent ...... 10

D. MOSAID’s Contributory Infringement Claim Should Be
Dismissed for Failure to Allege Facts Identifying a
Direct Infringer, Showing the Requisite Knowledge or
Specific Intent, or Identifying a Component Meeting the
Requirements of Section 271(c) ...... 12

V. CONCLUSION ...... 14

i

TABLE OF AUTHORITIES

Page(s)

FEDERAL CASES

ACCO Brands, Inc. v. ABA Locks Mfr. Co.,
501 F.3d 1307 (Fed. Cir. 2007) ...... 3, 10

Aro Mfg. Co. v. Convertible Top Replacement Co.,
377 U.S. 476 (1964) ...... 3, 11, 13

Ashcroft v. Iqbal,
556 U.S. 662, 129 S. Ct. 1937 (2009) ...... 1, 6, 7, 10

Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007) ...... passim

Bell Helicopter Textron Inc. v. American Eurocopter, LLC,
729 F. Supp. 2d 789 (N.D. Tex. 2010) ...... 9

BMC Res., Inc. v. Paymentech, L.P.,
498 F.3d 1373 (Fed. Cir. 2007) ...... 3, 10, 13

Cal. Institute of Computer Assisted Surgery, Inc. v. Med-Surgical Services, Inc.,
No. 10-02042 CW, 2010 WL 3063132 ...... 8

Dynacore Holdings Corp. v. U.S. Philips Corp.,
363 F.3d 1263 (Fed. Cir. 2004) ...... 3, 10

EON Corp. IP Holdings LLC v. FLO TV Inc.,
Civ. No. 10-812-SLR, 2011 WL 2708945 ...... passim

Global-Tech Appliances, Inc. v. SEB S.A.,
131 S. Ct. 2060 (2011) ...... 2, 10

In re Seagate Technology, LLC,
497 F.3d 1360 (Fed. Cir. 2007) (en banc) ...... 2, 8

IPVenture, Inc. v. Cellco Partnership,
No. C 10-04755 JSW, 2011 WL 207978 ...... 9

Item Development AB v. Sicor Inc.,
No. Civ. 05-336-SLR, 2006 WL 891032 (D. Del. March 31, 2006) ...... 2, 9

ii

TABLE OF AUTHORITIES (cont’d)

Page(s)

Joy Techs, Inc. v. Flakt, Inc.,
6 F.3d 770 (Fed. Cir. 1993) ...... 11

Mallinckrodt, Inc. v. E-Z-Em Inc.,
670 F. Supp. 2d 349 (D. Del. 2009) ...... passim

Novartis Pharm. Corp. v. Eon Labs Mfg., Inc.,
363 F.3d 1306 (Fed. Cir. 2004) ...... 3, 10

Tech. Licensing Corp. v. Technicolor USA, Inc.,
No. 2:03-1329 WBS EFB, 2010 WL 4070208 (E.D. Cal. Oct. 18, 2010) ...... 8

FEDERAL: STATUTES, RULES, REGULATIONS, CONSTITUTIONAL PROVISIONS

35 U.S.C. § 271(b) ...... 2, 10

35 U.S.C. § 271(c) ...... 3, 12, 13

35 U.S.C. § 284 ...... 9

Fed. R. Civ. P. 8(a)(2) ...... 1

Fed. R. Civ. P. 11(b) ...... 8

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

iii

I. NATURE AND STAGE OF PROCEEDINGS

This is a patent infringement action filed by Plaintiff MOSAID Technologies Inc. (“MOSAID”) against 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”) (collectively, “Defendants”). MOSAID filed its original complaint on August 9, 2011, and its First Amended Complaint on October 6, 2011. Defendants’ response to MOSAID’s First Amended Complaint is due on December 23, 2011. Though MOSAID has moved to file a Second Amended Complaint and moot the First Amended Complaint, MOSAID refused to agree to extend the deadline to Answer the First Amended Complaint until the Court determines which complaint is operable. Defendants have not filed an answer to MOSAID’s First Amended Complaint, and no case management conference has been scheduled.

II. SUMMARY OF ARGUMENT

1. Rule 8 of the Federal Rules of Civil Procedure requires MOSAID to plead specific facts to state a claim for indirect and willful infringement that is “plausible” on its face. See Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007); Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009).

2. Fed. R. Civ. P. 8(a)(2) calls for a “short and plain statement of the claim showing that the pleader is entitled to relief,” and requires that the accused infringer be given “fair notice of what the . . . claim is and the grounds upon which it rests.” Twombly, 550 U.S. at 555-56 (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)).

3. If a complaint fails to satisfy the pleading requirements of Rule 8, it “must be dismissed” under Fed. R. Civ. P. 12(b)(6) for failure to state a claim. Id. at 570.

1

4. To satisfy the requirements of Rule 8, claims of willful and indirect infringement require more than conclusory allegations. See EON Corp. IP Holdings LLC v. FLO TV Inc., Civ. No. 10-812-SLR, 2011 WL 2708945, at **3-4 (D. Del. July 12, 2011); Mallinckrodt, Inc. v. E-ZEm Inc., 670 F. Supp. 2d 349, 354 (D. Del. 2009); Item Development AB v. Sicor Inc., No. Civ. 05-336-SLR, 2006 WL 891032, at *2 (D. Del. March 31, 2006).

5. To establish willful infringement, a plaintiff must demonstrate infringement, as well as the following additional elements: (1) that there was an objectively high likelihood that the defendant’s activities constituted infringement of a valid patent, and (2) either that the defendant subjectively knew of the risk of infringement, or that the risk of infringement was so obvious the defendant should have known of that risk. See In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).

6. MOSAID’s claim against Red Hat for willful infringement of the ’914 patent – to the extent such a claim can be understood to exist – fails to comply with the pleading requirements of Rule 8. The First Amended Complaint omits any mention of or facts supporting willful infringement from its specific pleadings, and instead simply requests in the Prayer for Relief that all Defendants be held to account for increased damages for willful infringement. (D.I. 16 at 9.) It does not allege any facts to support the boilerplate statement that Red Hat was aware of the ’914 patent, nor does it allege an objectively high likelihood that Red Hat’s activities constituted infringement of a valid patent. Likewise, the First Amended Complaint does not allege that Red Hat was subjectively aware of the risk of infringing the ’914 patent, or that such a risk was so obvious that Red Hat should have been aware of it. As a result, MOSAID’s willful infringement claim against Red Hat must be dismissed.

2

7. To prove inducement of infringement, a plaintiff must establish that some third party committed the entire act of direct infringement, and show that the defendant knew of the patent, knowingly induced its infringement and possessed specific intent to encourage it. 35 U.S.C. § 271(b); see Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2067-68 (2011); BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1379 (Fed. Cir. 2007); Novartis Pharm. Corp. v. Eon Labs Mfg., Inc., 363 F.3d 1306, 1308 (Fed. Cir. 2004); ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1312 (Fed. Cir. 2007); Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004); EON Corp. 2011 WL 2708945 at *3; Mallinckrodt, 670 F. Supp. 2d at 354.

8. MOSAID’s claim against Red Hat for inducing infringement of the ’914 patent also fails to comply with the pleading requirements of Rule 8. The First Amended Complaint fails to allege that any third party was induced to directly infringe the ’914 patent, or to identify any such directly infringing third party. (D.I. 16 at ¶ 22.) The First Amended Complaint also fails to allege any facts supporting the boilerplate assertion that Red Hat knew of the ’914 patent, and fails to allege that Red Hat had knowledge of any alleged direct infringement by a third party or the specific intent to cause any third party to infringe. (Id.) As a result, MOSAID’s claim against Red Hat for inducing infringement of the ’914 patent must be dismissed.

9. To prove contributory infringement, a plaintiff must show that a third party committed the entire act of direct infringement, and that the defendant offered to sell or sold a “component of a patented machine . . . constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent . . . .” 35 U.S.C. § 271(c) (emphasis added); BMC Res., 498 F. 3d at 1381; see also Aro Mfg. Co. v.

3

Convertible Top Replacement Co., 377 U.S. 476, 488 (1964); EON Corp., 2011 WL 2708945, at *4; Mallinckrodt, 670 F. Supp. 2d at 354-55.

10. MOSAID’s claim against Red Hat for contributory infringement of the ’914 patent similarly fails to comply with the pleading requirements of Rule 8. The First Amended Complaint fails to identify the component alleged to not be a staple part of commerce, or which third parties used that unspecified component to directly infringe the ’914 patent. (D.I. 16 at ¶ 22.) The First Amended Complaint also fails to allege Red Hat had knowledge of any third party’s direct infringement of the patent-in-suit. As a result, MOSAID’s claim against Red Hat for contributory infringement also must be dismissed.

III. STATEMENT OF FACTS

MOSAID filed its original Complaint on August 9, 2011, accusing seven unrelated parties – Adobe, Alcatel, IBM, NetApp, Juniper, Red Hat, and VMware – of infringing two patents related to network distributed caching: U.S. Patent Nos. 5,892,914 (“the ’914 patent”) and 6,505,241 (“the ’241 patent”). (D.I. 1.) MOSAID alleged that six of the defendants – Adobe, Alcatel, IBM, Juniper, NetApp, and VMware – infringed the ’241 patent, and that only one – Red Hat – infringed the ’914 patent. (Id.) The ’241 patent, however, was previously disclaimed and dedicated to the public.

After the defendants brought this disclaimer to MOSAID’s attention, on October 6, 2011, MOSAID filed its First Amended Complaint (1) dropping NetApp as a defendant, (2) withdrawing its infringement claims under the ’241 patent, and (3) alleging that all six remaining defendants infringed the remaining patent-in-suit (the ’914 patent).1 (D.I. 16.) The First

__________________________________

1 On November 11, 2011, without seeking permission from any defendant or leave to amend from this Court, MOSAID improperly filed a Second Amended Complaint. (D.I. 33.) A month later, on December 12, 2011, MOSAID filed a motion for leave to file its Second Amended Complaint. (D.I. 40.)

4

Amended Complaint contains a single count of patent infringement and combines its allegations against Red Hat for direct and indirect infringement of the ’914 patent into a single paragraph that reads, in its entirety:

22. Upon information and belief, Defendant RedHat has in the past and continues to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘914 Patent by making and using in this judicial district and elsewhere in the United States, a caching method which infringes at least one claim of the ‘914 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘914 Patent further infringes the ‘914 Patent.
(Id. at ¶ 22.)

MOSAID’s allegation of willful infringement – to the extent it is alleged at all – is present nowhere in the causes of action themselves, but only appears in the Prayer for Relief in a single sentence that reads, in its entirety:

(5) Defendants account for and pay for increased damages for willful infringement under 35 U.S.C. § 284.
(Id. at 9.)

IV. ARGUMENT

MOSAID provides no facts supporting its allegations of inducement of infringement, contributory infringement, or willfulness. Instead, its First Amended Complaint merely recites generalized conclusions that Red Hat induces and/or contributorily infringes the ’914 patent, and requests damages for willful infringement in its Prayer for Relief without providing any allegations supporting a willfulness claim. MOSAID’s First Amended Complaint is devoid of even the most basic facts to support its indirect and willfulness allegations, and thus fails to state claims for willful or indirect infringement compliant with the requirements of Rule 8.

5

With respect to willfulness, for instance, the First Amended Complaint fails to plead any facts to support the boilerplate assertion that Red Hat was aware of the ’914 patent, nor does it allege an objectively high likelihood existed that Red Hat’s activities constituted infringement of a valid patent. The First Amended Complaint also lacks any allegation that Red Hat subjectively knew of the risk of infringing the ’914 patent, or that the risk of infringement was so obvious that Red Hat should have known of it. With respect to inducement, MOSAID fails to identify or allege that any third party was induced to infringe the asserted patents, fails to allege any facts to support the boilerplate assertion that Red Hat knew of the ’914 patent, and fails to allege that Red Hat had knowledge of the alleged infringement or the specific intent to cause any third party to infringe. As to contributory infringement, the First Amended Complaint fails to identify the component alleged to not be a staple part of commerce or which third parties used the unspecified component to infringe the patents, and fails to allege that Red Hat had knowledge of any alleged infringement. Instead, MOSAID recites boilerplate generalities and legal conclusions to plead willfulness, contributory infringement and inducement. This is precisely the approach held impermissible in the recent Supreme Court decisions in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009), which underscore that a complaint must allege sufficient facts to establish a plausible claim, and that recitations of bare, conclusory allegations are insufficient to state a claim under the Federal Rules.

Before a case of this magnitude and expense proceeds, MOSAID is required at least to identify sufficient facts to state a plausible claim for relief, and to provide Red Hat with sufficient notice of its allegations to allow Red Hat to mount an appropriate defense. If MOSAID has complied with its pre-filing due diligence obligations, it already should know the identities of purported third-party infringers, know the identity of the components that allegedly

6

are not staples of commerce, and have evidence establishing the requisite knowledge and intent to support its indirect infringement and willfulness claims. But without having so pled, even on information and belief, MOSAID’s allegations of indirect and willful infringement are deficient on their face and should be dismissed.

A. Legal Standards Governing Indirect and Willful Infringement Pleadings
The Supreme Court’s decisions in Twombly and Iqbal ended the practice of pleading boilerplate and conclusory allegations tolerated under Conley – a practice that allowed dismissal of a complaint only where “it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief.” Twombly, 550 U.S. at 561-63. Now, to survive a motion to dismiss, a plaintiff must plead facts sufficient “to state a claim to relief that is plausible on its face.” Id. at 570 (emphasis added). As the Supreme Court ruled in Twombly:

Without some factual allegation in the complaint, it is hard to see how a claimant could satisfy the requirement of providing not only ‘fair notice’ of the nature of the claim, but also ‘grounds’ on which the claim rests. . . . Rule 8(a) “contemplate[s] the statement of circumstances, occurrences, and events in support of the claim presented’ and does not authorize a pleader’s ‘bare averment that he wants relief and is entitled to it.’”
Id. at 555 n.3 (citing 5 Wright & Miller, Federal Practice and Procedure § 1202, pp. 94 & 95 (3d ed. 2004)).

The Supreme Court in Iqbal clarified that the plausibility standard set forth in Twombly applies in all civil actions. Iqbal, 129 S. Ct. at 1953. The Court re-emphasized in Iqbal that “only a complaint that states a plausible claim for relief survives a motion to dismiss.” Id. at 1950. To comply with Rule 8, therefore, a plaintiff must plead “more than an unadorned, the defendant-unlawfully-harmed-me accusation.” Id. at 1949. “Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id. A pleading

7

that contains mere “labels and conclusions” or “a formulaic recitation of the elements of a cause of action will not do.” Id. (quoting Twombly, 550 U.S. at 555). In the patent infringement context, allegations of indirect infringement require more than conclusory allegations. See EON Corp., 2011 WL 2708945, at **3-4 (complaint contained insufficient facts to allow the court to infer defendants had knowledge of the asserted patent); Mallinckrodt, 670 F. Supp. 2d at 354 (dismissing indirect infringement claim where complaint failed to sufficiently plead defendants had knowledge of the asserted patent); see also Tech. Licensing Corp. v. Technicolor USA, Inc., No. 2:03-1329 WBS EFB, 2010 WL 4070208, at *2 (E.D. Cal. Oct. 18, 2010) (finding that allegations of indirect infringement require more than a mere recitation of statutory language even if direct infringement does not); Cal. Institute of Computer Assisted Surgery, Inc. v. Med-Surgical Services, Inc., No. 10-02042 CW, 2010 WL 3063132, at **1-2 (N.D. Cal. Aug. 3, 2010) (dismissing complaint that “complaint merely reiterates the bare elements of patent infringement”).

B. MOSAID’s Request for Increased Damages for Willful Infringement Should
Be Dismissed Because It Is Entirely Devoid of Content
It is unclear as to whether or not MOSAID actually intended to plead willful infringement in its First Amended Complaint. The only indication of a willfulness allegation appears in the Prayer for Relief without any basis to support MOSAID’s request for increased damages. Thus, any alleged claim for willful infringement (to the extent the First Amended Complaint can be understood to assert such a claim) should be dismissed for failing to comply with Rule 8.

To establish willful infringement, a plaintiff must demonstrate infringement, as well as (1) that there was an objectively high likelihood that the defendant’s activities constituted infringement of a valid patent, and (2) either that the defendant subjectively knew of the risk of

8

infringement, or that the risk of infringement was so obvious the defendant should have known of it. See In re Seagate, 497 F.3d at 1371.

At the pleading stage, MOSAID at a minimum must allege the facts forming the basis of a good faith belief that its claim of willful infringement has evidentiary support. See id. at 1374 (“[W]hen a complaint is filed, a patentee must have a good faith basis for alleging willful infringement.” (citing Fed. R. Civ. P. 8(a), 11(b))). Here, MOSAID does not even attempt to make the necessary factual allegations to show willful infringement. Instead, its entire willfulness allegation consists of the following request for increased damages in its Prayer for Relief without any supporting details: “Defendants account for and pay for increased damages for willful infringement under 35 U.S.C. § 284.” (D.I. 16 at 9.)

Nowhere in the First Amended Complaint does MOSAID allege any facts to show that there was an objectively high likelihood that Red Hat’s activities constituted infringement of a valid patent, or that Red Hat either knew or should have known of the risk of infringement. Any claim of willful infringement should therefore be dismissed. See Item Development, 2006 WL 891032, at *2 (finding that plaintiff has not offered any support for a finding of willful infringement and dismissing those allegations); see also Bell Helicopter Textron Inc. v. American Eurocopter, LLC, 729 F. Supp. 2d 789, 800 (N.D. Tex. 2010) (dismissing willful infringement allegations where plaintiff made only conclusory allegations); IPVenture, Inc. v. Cellco Partnership, No. C 10-04755 JSW, 2011 WL 207978, at **2-3 (N.D. Cal. January 21, 2011) (dismissing willful infringement claim for failure to plead facts to support the claim that defendants had actual knowledge of the asserted patent).

9

C. MOSAID’s Inducement Claim Should Be Dismissed for Failure to State
Facts Identifying Any Alleged Direct Infringer or Supporting an Allegation
of Knowledge or Specific Intent
MOSAID’s entire claim against Red Hat for inducement of infringement consists of the following allegations:

Upon information and belief, Defendant Red Hat has in the past and continues to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘914 Patent by making and using in this judicial district and elsewhere in the United States, a caching method which infringes at least one claim of the ‘914 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘914 Patent further infringes the ‘914 Patent.
(D.I. 16 at ¶ 22 (emphasis added).) These boilerplate and conclusory allegations fail to meet the threshold Rule 8 pleading standard as clarified by Twombly and Iqbal. MOSAID’s First Amended Complaint fails to allege facts that support any element of a claim for inducement of infringement. Because the First Amended Complaint fails “to state a claim to relief that is plausible on its face,” Twombly, 550 U.S. at 570, MOSAID’s inducement claim should be dismissed.

As an initial matter, tolerance of factual contentions specifically identified as made on information and belief does not relieve the plaintiff of its obligation to conduct an appropriate Rule 11 investigation. Nor is it a license to make claims without any factual basis. Before MOSAID is permitted discovery as to Red Hat’s alleged inducement, it must allege facts sufficient to show its claim is at least plausible. See Iqbal, 129 S. Ct. at 1950 (“Rule 8 . . . does not unlock the doors of discovery for a plaintiff armed with nothing more than conclusions.”). MOSAID should not be permitted to engage in a fishing expedition absent even the bare allegations to support an inducement claim.

To prove inducement of infringement under 35 U.S.C. § 271(b), a plaintiff must establish

10

that some third party committed the entire act of direct infringement. See BMC Res., 498 F.3d at 1379; Novartis Pharm. Corp., 363 F.3d at 1308; EON Corp., 2011 WL 2708945, at *3 (D. Del. July 12, 2011); Mallinckrodt, 670 F. Supp. 2d at 354. A plaintiff also must show that the defendant knowingly induced that infringement and possessed specific intent to encourage it. See Global-Tech Appliances, 131 S. Ct. at 2067-68; ACCO Brands, 501 F.3d at 1312; Dynacore Holdings, 363 F.3d at 1273; EON Corp. 2011 WL 2708945, at *3; Mallinckrodt, 670 F. Supp. 2d at 354.

Here, MOSAID’s First Amended Complaint is devoid of any allegations establishing the critical elements of its inducement claim. While MOSAID alleges that Red Hat provides “marketing and sales-related literature,” “online technical literature, user group support, and other forms of technical support” in order to assist or encourage users “to perform the steps claimed in the ‘914 patent” (D.I. 16 at ¶¶ 34-35), these statements are unhelpful to determine whether the First Amended Complaint states a plausible claim of inducement. Relying only on nebulous references to “others” or “users,” MOSAID does not identify any specific third party which Red Hat allegedly induced to infringe, and fails to allege any facts to show direct infringement of the ’914 patent by any third party.2

Further, MOSAID fails to allege that Red Hat had the requisite knowledge to support a claim for inducing infringement. Although MOSAID includes the boilerplate statement that Red Hat had “full knowledge of the ‘914 Patent” (D.I. 16 at ¶¶ 34-35), there are no supporting facts

_________________________________

2 It is black-letter law that a defendant cannot be found liable for indirect infringement unless the patentee first shows direct infringement by a third party. See, e. g., Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 483 (1964) (“‘[I]t is settled that if there is no direct infringement of a patent there can be no contributory infringement.’” (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341 (1961)); Joy Techs, Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993) (“Liability for either active inducement of infringement or for contributory infringement is dependent upon the existence of direct infringement.”).

11

pled or allegations that Red Hat knew of the ’914 patent before MOSAID filed its original complaint in August 2011, much less of an objectively high likelihood that Red Hat’s activities constituted infringement of a valid patent.

MOSAID’s First Amended Complaint also omits any allegation that Red Hat possessed the specific intent to induce infringement of the ’914 patent. (D.I. 16.) MOSAID does not allege that Red Hat acted with the specific intent to cause any third party to infringe the ’914 patent. (Id. at ¶ 22.) Because MOSAID has not met the threshold pleading requirements to state a claim for inducing infringement, its allegations against Red Hat for inducement of infringement also should be dismissed. See EON Corp., 2011 WL 2708945 at *4 (granting motion to dismiss for failure to allege that defendants had sufficient knowledge of the asserted patent); Mallinckrodt, 670 F. Supp. 2d at 354 (dismissing claim for inducing infringement where complaint failed to specifically allege the requisite intent and knowledge).

D. MOSAID’s Contributory Infringement Claim Should Be Dismissed for
Failure to Allege Facts Identifying a Direct Infringer, Showing the Requisite
Knowledge or Specific Intent, or Identifying a Component Meeting the
Requirements of Section 271(c)
MOSAID’s claim against Red Hat for contributory infringement of the ’914 patent consists, in its entirety, of the following paragraph:

22. Upon information and belief, Defendant Red Hat has in the past and continues to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘914 Patent by making and using in this judicial district and elsewhere in the United States, a caching method which infringes at least one claim of the ‘914 Patent. Importing, selling and/or offering to sell products and services which contribute to or induce the further making or using of said caching method by others with knowledge of the ‘914 Patent further infringes the ‘914 Patent.
(D.I. 16 at ¶ 22 (emphasis added).) These boilerplate and conclusory allegations likewise fail to meet the threshold Rule 8 pleading standard as clarified by Twombly and Iqbal. To state a claim

12

for contributory infringement, MOSAID must plead facts sufficient “to state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at 570. Because the First Amended Complaint fails to allege facts essential to support a claim of contributory infringement against Red Hat, MOSAID’s contributory infringement claim should be dismissed.

To prove contributory infringement under 35 U.S.C. § 271(c), a plaintiff must show the defendant offered to sell or sold a “component of a patented machine . . . constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent . . . .” 35 U.S.C. § 271(c) (emphasis added); see also Aro Mfg. Co., 377 U.S. at 488 (“It is only sale of a component of a patented combination ‘knowing the same to be especially made or adapted for use in an infringement of such patent’ that is contributory infringement by statute.”); EON Corp., 2011 WL 2708945, at *4; Mallinckrodt, 670 F. Supp. 2d at 354-55. As with inducing infringement, contributory infringement requires as a predicate that some other party committed the entire act of direct infringement. See, e.g., BMC Res., 498 F. 3d at 1381.

MOSAID’s First Amended Complaint, however, is devoid of any allegation establishing critical elements of its contributory infringement claim. First, MOSAID fails to identify any specific component meeting the requirements of Section 271(c). (D.I. 16 at ¶ 22.) Second, MOSAID fails to allege that Red Hat had the requisite knowledge that some unspecified component of the alleged infringing products was especially made or especially adapted to infringe the ’914 patent. (Id.) Finally, MOSAID fails to identify any third party to whom Red Hat has allegedly contributed the unknown component. (Id.) Accordingly, MOSAID has failed to meet the threshold pleading requirements to state a claim for contributory infringement, and its contributory infringement allegations should be dismissed. See EON Corp., 2011 WL

13

2708945, at *4 (dismissing indirect infringement claim for failure to allege defendants had sufficient knowledge of the asserted patent); Mallinckrodt, 670 F. Supp. 2d at 355 (dismissing contributory infringement claims for failure to sufficiently plead defendants’ knowledge of the asserted patent).

V. CONCLUSION

For the reasons set forth above, Red Hat respectfully requests that the Court grant its motion and dismiss without prejudice those portions of Paragraph 22 of Plaintiff’s First Amended Complaint that are directed to inducement of infringement or contributory infringement, and Paragraph (5) (directed to willful infringement) of the First Amended Complaint’s Prayer for Relief.

14

Dated: December 23, 2011

FISH & RICHARDSON P.C.

By: /s/ Gregory R. Booker
Tara D. Elliott (#4483)
Gregory R. Booker (#4784)
Fish & Richardson P.C.
[address telephone email]

Katherine Kelly Lutton
Shelley K. Mack
Fish & Richardson P.C.
[address telephone]

Attorneys for Defendant
RED HAT, INC.

15


63

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOSAID TECHNOLOGIES, INC,
Plaintiff,
v.
ADOBE SYSTEMS, INC., et al.
Defendants.

C.A. No. 11-698-GMS

___________________________________

PLAINTIFF MOSAID TECHNOLOGIES, INC.’S AMENDMENT TO
CERTIFICATION OF COUNSEL PURSUANT TO LOCAL RULE 7.1.1

Plaintiff MOSAID Technologies, Inc.’s (“MOSAID”) Certification of Counsel Pursuant to Local Rule 7.1.1 attached to its Motion for Leave to file a Second Amended Complaint (the “Motion”) stated that “Defendant VMWare consents to the Motion[.]” (D.I. 39.) On December 22, 2011, VMWare, Inc. (“VMWare”) asked MOSAID to clarify this statement. Although MOSAID does not believe any clarification is necessary, MOSAID attaches VMWare’s November 15, 2011, e-mail to this Amendment to its Rule 7.1.1 Certification, in which VMWare stated: “VMware will stipulate pursuant to FRCP 15(a)(2) that MOSAID may file the Second Amended Complaint it filed last Friday. However, as I also mentioned, to be effective, that will require the agreement of the other Defendants, which I do not have authority to speak to.” Since the other defendants oppose the Motion, MOSAID now understands that VMware now opposes the Motion as well.

December 29, 2011

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.

2


65

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.; RED HAT, INC. and
VMWARE, INC.,
Defendants.

C.A. No. 11-698 (GMS)

DEFENDANTS' ANSWERING BRIEF IN OPPOSITION TO
PLAINTIFF'S MOTION FOR LEAVE TO FILE A SECOND AMENDED COMPLAINT

DLAPIPER LLP (US)
Denise S. Kraft (#2778)
Aleine Porterfield (#5053)
[address telephone email]

Attorneys for Adobe Systems, Inc.

MORRIS, NICHOLS, ARSHT &TUNNELL LLP
Jack B. Blumenfeld (#1014)
Paul Saindon (#5110)
[address telephone email]

Attorneys for Alcatel-Lucent USA, Inc.

SEITZ ROSS ARONSTAM &MORITZ, LLP
Collins J. Seitz, Jr. (#2237)
[address telephone email]

Attorneys for International Business Machines Corp.

FISH & RICHARDSON P.C.
Tara D. Elliott (#4883)
Gregory R. Booker (#4784)
[address telephone email]

Attorneys for Red Hat Inc.

YOUNG CONAWAY STARGATT &TAYLOR, LLP
Adam W. Poff (#3990)
Pilar G. Kraman (#5199)
[address telephone email]

Attorneys for VMware, Inc.

December 30, 2011

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ...... ii

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

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

III. STATEMENT OF FACTS ...... 3

IV. ARGUMENT ...... 6

A. Legal Standard on a Motion for Leave to Amend ...... 6

B. MOSAID’s Motion for Leave to Amend Should be Denied ...... 6

1. MOSAID Lacks Standing to Assert the Claims of
the SAC ...... 6

2. The Amendment Would Be Futile Because the SAC
Violates 35 U.S.C. § 299 ...... 7

3. The SAC Should Not Be Permitted Under Federal
Rule 20 ...... 12

V. CONCLUSION ...... 14

i

TABLE OF AUTHORITIES

Page(s)

CASES

3V Inc. v. Ciba Specialty Chems. Corp.,
587 F. Supp. 2d 641 (D. Del. 2008) ...... 10

Abbott Labs. v. Johnson and Johnson, Inc.,
524 F. Supp. 2d 553 (D. Del. 2007) ...... 9, 11

Androphy v. Smith & Nephew, Inc.,
31 F. Supp. 2d 620 (N.D. Ill. 1998) ...... 13

Bear Creek Techs., Inc. v. RCN Comms.,
C.A. No. 11-103, 2011 WL 3626787 (E.D. Va. Aug. 17, 2011) ...... 12

Cedars-Sinai Med. Ctr. v. Watkins,
11 F.3d 1573 (Fed. Cir. 1993) ...... 7

Codex Corp. v. Milgo Elec. Corp.,
553 F.2d 735 (1st Cir. 1977) ...... 14

Colt Defense LLC v. Heckler & Koch Defense, Inc.,
C.A. No. 04-258, 2004 U.S. Dist. LEXIS 28690 (E.D. Va. Oct. 22, 2004) ...... 13

Cornell & Co. v. Occupational Safety & Health Review Comm’n,
573 F.2d 820 (3d Cir. 1978) ...... 6

Farina v. Nokia Inc.,
625 F.3d 97 (3d Cir. 2010) ...... 8, 11

Foman v. Davis,
371 U.S. 178 (1962) ...... 6

Golden Scorpio Corp. v. Steel Horse Bar & Grill,
596 F. Supp. 2d 1282 (D. Ariz. 2009) ...... 13

Guinn v. Kopf,
96 F.3d 1419 (Fed. Cir. 1996) ...... 10

Illinois Tool Works, Inc. v. Foster Grant Co.,
395 F. Supp. 234 (N.D. Ill. 1974), aff’d on the merits, 547 F.2d 1300 (7th Cir. 1976), cert. denied, 431 U.S. 929 (1977) ...... 9, 10

Insituform Techs., Inc. v. CAT Contracting, Inc.,
385 F.3d 1360 (Fed. Cir. 2004) ...... 8

ii

Lorenz v. CSX Corp.,
1 F.3d 1406 (3d Cir. 1993) ...... 6

Lucent Techs., Inc. v. Extreme Networks, Inc.,
C.A. No. 03-508-JJF (D. Del. Feb. 9, 2004) ...... 12, 14

McGinley v. Franklin Sports, Inc.,
262 F.3d 1339 (Fed. Cir. 2001) ...... 8

Multi-Tech Sys., Inc. v. Net2Phone, Inc.,
C.A. No. 00-346, 2000 WL 34494824 (D. Minn. June 26, 2000) ...... 13

MyMail, Ltd. v. America Online, Inc.,
223 F.R.D. 455 (E.D. Tex. 2004) ....... 13

New Jersey Mach. Inc. v. Alford Indus., Inc.,
C.A. No. 89-1879 (JCL), 1991 WL 340196 (D.N.J. Oct. 7, 1991) ...... 12

Optimum Power Solutions LLC, v. Apple Inc.,
C.A. No. 11-1509 SI, 2011 WL 4387905 (N.D. Cal. Sept. 20, 2011) ...... 13

Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch,
564 F. Supp. 1358 (D. Del. 1983) ...... 12, 14

Philips Elecs. N. Am. Corp. v. Contec Corp.,
220 F.R.D. 415 (D. Del. 2004) ...... 12, 14

Prime Care of Ne. Kan., LLC v. Humana Ins. Co.,
447 F.3d 1284 (10th Cir. 2006) ....... 8

Rudd v. Lux Prods. Corp.,
C.A. 09-6957, 2011 WL 148052 (N.D. Ill. Jan. 12, 2011) ...... 14

Sicom Sys., Ltd. v. Agilent Techs., Inc.,
427 F.3d 971 (Fed. Cir. 2005) ...... 6, 7

Sony Elecs., Inc. v. Orion IP, LLC,
C.A. No. 05-255-GMS, 2006 WL 680657 (D. Del. March 14, 2006) ...... 14

Spread Spectrum Screening, LLC v. Eastman Kodak Co.,
C.A. No. 10-1101, 2010 WL 3516106 (N.D. Ill. Sept. 1, 2010) ...... 13

W.L. Gore & Assoc’s, Inc. v. Oak Materials Group, Inc.,
424 F. Supp. 700 (D. Del. 1976) ...... 10

Warth v. Seldin,
422 U.S. 490 (1975) ...... 6

iii

WiAV Networks, LLC v. 3Com Corp., C.A. No. 10-03448 WHA, 2010 WL 3895047 (N.D. Cal. Oct. 1, 2010) ...... 13

RULES AND STATUTES

35 U.S.C. § 253 ....... 1, 4, 10

35 U.S.C. § 299 ...... passim

FED.R.CIV.P. 15 ...... 3, 8-10

FED.R.CIV.P. 20 ...... 3, 12-14

OTHER AUTHORITIES

6A CHARLES ALAN WRIGHT & ARTHUR R.MILLER, FEDERAL PRACTICE AND PROCEDURE § 1497 (3d ed. 2011) ...... 9

iv

I. NATURE AND STAGE OF THE PROCEEDING

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.1 (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.

________________________________

1 VMware has moved to dismiss due to MOSAID’s lack of standing to assert the ‘914 patent. (D.I. 45). That motion is currently pending before the Court.

1

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).2 This is the Defendants’ brief in opposition to that motion.3

II. SUMMARY OF ARGUMENT

MOSAID’s motion for leave to amend should be denied first, because it lacks standing to sue on the asserted patents. VMware has already moved to dismiss the FAC for lack of standing. (D.I. 45). Each of the five patents asserted in the SAC claims priority to the same PCT patent application discussed in that motion to dismiss. MOSAID does not own sufficient rights to assert any patent claiming priority to that PCT application, and should not be permitted leave to assert patents that it does not own. (See D.I. 46).

Second, leave to amend should be denied because the SAC would violate the explicit misjoinder provisions of Section 299. Enacted as part of the Leahy-Smith America Invents Act, H.R. 1249, 112th Cong., § 19 (2011) (“AIA”), Section 299 expressly prohibits the joinder of multiple defendants “based solely on allegations that they each have infringed the patent or patents in suit,” and permits joinder only where the asserted right to relief arises “out of the same transaction, occurrence, or series of transactions or occurrences relating to . . . the same accused product or process.” The SAC, however, would violate this statute by lumping together different defendants with different products, when the only relationship is some of the patents asserted against them. Although the original Complaint predated the enactment of the AIA, the

_____________________________

2 MOSAID declined defendants’ request to extend the time to answer the FAC until after the Court decides this motion. Defendants moved to dismiss the FAC on December 23, 2011. (D.I. 42, 45, 48, 50, 53, 56 and 60).

3 Juniper answers separately to address issues specific to it, but also joins in this brief.

2

FAC and SAC do not relate back to the original Complaint because allegations of infringement of different patents are not the same “conduct, transaction or occurrence” required by Rule 15(c).

Finally, even in the absence of 35 U.S.C. § 299, the SAC would improperly and prejudicially join defendants together in violation of Fed.R.Civ.P. 20. The original Complaint itself contained two completely separate causes of action: an allegation that six defendants infringed a single disclaimed patent, and a separate allegation that an unrelated defendant infringed an unrelated patent. These two completely separate causes of action should not have been filed in a single complaint, and the SAC, in which no two defendants are accused of infringing the same set of patents, fares no better.

III. STATEMENT OF FACTS

In its original Complaint, MOSAID asserted two patents: the ‘241 and the ‘914. As to the ‘241 patent, entitled “Network intermediate node cache serving as proxy to client node to request missing data from server,” the Complaint alleged:

Upon information and belief, Defendants Adobe, Alcatel, IBM, Juniper, and NetApp have in the past and continue to infringe, directly, indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the inducement of others, one or more of the claims of the ‘241 Patent by making, using, importing, selling and/or offering to sell, in this judicial district and elsewhere in the United States, software which is covered by at least one claim of the ‘241 Patent.4
(D.I. 1 ¶ 15). The Complaint then alleged that the “Adobe Flash Memory Server;” “Alcatel Velocix Digital media Delivery Platform;” “IBM WebSphere Software;” “Juniper Media Flow;”

______________________________

4 All emphasis added unless otherwise indicated.

3

“NetApp FlexCache;” and “VMware vFabric GemFire Platform”5 products each infringed the ‘241 patent. (Id. ¶ 16). The ‘214 patent was not asserted against Red Hat. As to the ‘914 patent, entitled “system for accessing distributed data cache at each network node to pass requests and data,” the Complaint alleged infringement by only “Defendant RedHat” for the “RedHat Enterprise Linux with Resilient Storage Add-On” and “RedHat Enterprise Server V6” products. (Id. ¶¶ 22-23). The original Complaint alleged two separate and discrete causes of action with not even a common patent asserted as a commonality.

After receiving the Complaint, defendants discovered that MOSAID could not assert the ‘241 patent because more than three years earlier—on June 30, 2008—MOSAID’s predecessor-in-interest, Network Caching Technology, LLC, had dedicated the entire patent to the public pursuant to 35 U.S.C. § 253. (Ex. A). Defendants wrote to MOSAID’s counsel and requested the dismissal of the lawsuit against each defendant accused of infringing the ‘241 patent. (Id.). Instead of doing so, MOSAID filed the FAC on October 6, 2011. (D.I. 16).

In the FAC, MOSAID dropped all of the original allegations against Adobe, ALU, IBM, Juniper and VMware, in substance dismissing the action against them as it existed prior to the AIA. To keep its earlier filing date, MOSAID added the new allegations that, in addition to Red Hat, the other defendants (except NetApp) also infringed the ‘914 patent.6 (D.I. 16 ¶ 27). The prayer for relief also sought damages for defendants’ purported willful infringement of the ‘914 patent. (Id. ¶ (5)).

______________________________

5 The Complaint did not specifically allege that VMware infringed any patent, but did allege that the “VMware vFabric GemFire Platform” infringed the ‘241 patent.

6 MOSAID separately dismissed the allegations against NetApp completely. (D.I. 17).

4

On November 11, 2011, MOSAID sought to further expand this litigation by filing the SAC without notice or leave of Court. (D.I. 33) The SAC seeks to add the following allegations of infringement:

PatentTitleDefendants
‘049System for accessing distributed data cache channel at each network node to pass requests and dataRed Hat, Adobe, ALU, IBM and Juniper
‘475Request interceptor in network nodes for determining local storage of file image satisfying predetermined criteriaAdobe, IBM, Juniper and VMware
‘706Network system for transmitting overwritten portion of client side node cache image to server site through intermediate downstream nodes updating cache images of data requested by clientIBM
‘452Network distributed site cache ram claimed as up/down stream request/reply channel for storing anticipated data and meta dataRed Hat

(Id. ¶¶ 37-68). The SAC 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 ‘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.

5

IV. ARGUMENT

A. Legal Standard on a Motion for Leave to Amend
The Supreme Court has enumerated several bases for which leave to amend may be denied, including “undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment, etc.” Foman v. Davis, 371 U.S. 178, 182 (1962). The Third Circuit has “interpreted these factors to mean that ‘prejudice to the non-moving party is the touchstone of the denial of an amendment.’” Lorenz v. CSX Corp., 1 F.3d 1406, 1414 (3d Cir. 1993) (quoting Cornell & Co. v. Occupational Safety & Health Review Comm’n, 573 F.2d 820, 823 (3d Cir. 1978). “In the absence of substantial or undue prejudice, denial instead must be based on bad faith or dilatory motives, truly undue or unexplained delay, repeated failures to cure the deficiency by amendments previously allowed, or futility of amendment.” Id.

B. MOSAID’s Motion for Leave to Amend Should be
Denied

1. MOSAID Lacks Standing to Assert the Claims of
the SAC
Standing is “the threshold question in every federal case, determining the power of the court to entertain the suit.” Warth v. Seldin, 422 U.S. 490, 498-99 (1975); Sicom Sys., Ltd. v. Agilent Techs., Inc., 427 F.3d 971, 975 (Fed. Cir. 2005). The question of standing determines “whether the litigant is entitled to have the court decide the merits of the dispute or of particular issues.” Warth, 422 U.S. at 498. MOSAID, not defendants, bears the burden of establishing standing because “[t]he burden of establishing jurisdiction in the district court lies with the party

6

seeking to invoke the court’s jurisdiction.” Cedars-Sinai Med. Ctr. v. Watkins, 11 F.3d 1573, 1583 (Fed. Cir. 1993); Sicom Sys., 427 F.3d at 975.

For the reasons stated in VMware’s Motion to Dismiss for Lack of Standing and accompanying Opening Brief, MOSAID lacks standing to assert any patent claiming priority to that PCT application.7 (D.I. 45, 46). Although that Brief directly addresses only one of the five patents of the SAC, the ‘914 patent, the transfers addressed in the Brief apply equally to all patents derived from the PCT application. Each of the five patents in the SAC claims priority to the same PCT application. Because MOSAID lacks standing to assert each of the five SAC patents, leave to amend to include those patents is improper and should be denied.

2. The Amendment Would Be Futile Because the
SAC Violates 35 U.S.C. § 299
35 U.S.C. § 299, which went into effect on September 16, 2011, permits joinder of multiple defendants in a patent case only if:

(1) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using importing into the United States, offering for sale, or selling of the same accused product or process; and

(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.

35 U.S.C. § 299(a). The statute identifies insufficient conditions for joinder:

(b) Allegations Insufficient for Joinder – For purposes of this subsection, accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions
_______________________________

7 To avoid repetition, defendants hereby incorporate the Opening Brief by reference rather than repeating the arguments a second time for the Court. See D.I. 46.

7

consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.
35 U.S.C. § 299(b).

The AIA further states that “[t]he amendments made by [new 35 U.S.C. § 299] shall apply to any civil action commenced on or after the date of the enactment of this Act.” AIA § 19 at 129. Because Congress did not specify otherwise, the normal relation back rules govern when an action was “commenced.” See Farina v. Nokia Inc., 625 F.3d 97, 111 (3d Cir. 2010)8 (holding that the newly enacted Class Action Fairness Act (“CAFA”) applied when the amended complaint did not relate back to the original complaint). The Farina court reasoned:

Congress passed CAFA aware of the general principles of relationback analysis, both under state law and Fed.R.Civ.P. 15(c). It is only natural that Congress would intend to incorporate into CAFA the case law governing amended pleadings. “Precisely because CAFA does not define ‘commencement’ of an action, it is obvious that CAFA is not intended to replace case[ ]law deciding when a lawsuit is considered ‘commenced…’” . . . Under this standard, the Second Amended Complaint commenced a new action.
Id. at 112.9 Congress similarly did not define “commenced” for purposes of the AIA.

For an amendment to relate back to the original complaint, Fed. R. Civ. P. 15(c)(1)(B) requires that “the amendment asserts a claim or defense that arose out of the conduct,

_________________________________

8 The Federal Circuit applies regional precedent to issues of joinder. See, e.g., Insituform Techs., Inc. v. CAT Contracting, Inc., 385 F.3d 1360,1372 (Fed. Cir. 2004) (“Because the joinder issue is not unique to patent law, we apply the law of the regional circuit.”); McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1357 (Fed. Cir. 2001) (“A district court’s decision to grant or deny a motion for leave to join a party involves a procedural question that raises no special issues relating to patent law, and, therefore Tenth Circuit law applies in this case.”).

9 The Farina court also expressed concern that disregarding the relation back rules would entail “the practically untenable result that once a pre-CAFA case is filed, the plaintiff can tack on new causes of action so substantively independent of the original case that they would be properly treated as filed after CAFA’s effective date for all legal purposes … except for CAFA.” Id. at 111 (quoting Prime Care of Ne. Kan., LLC v. Humana Ins. Co., 447 F.3d 1284, 1288 n. 4 (10th Cir. 2006)).

8

transaction, or occurrence set out—or attempted to be set out—in the original pleading” FED.R.CIV.P. 15(c)(1) (2011). “An alleged infringement of one patent is not the ‘same conduct, transaction or occurrence’ as the alleged infringement of another patent.” Illinois Tool Works, Inc. v. Foster Grant Co., 395 F. Supp. 234, 250-51 (N.D. Ill. 1974), aff’d on the merits, 547 F.2d 1300 (7th Cir. 1976), cert. denied, 431 U.S. 929 (1977); 6A CHARLES ALAN WRIGHT & ARTHUR R.MILLER, FEDERAL PRACTICE AND PROCEDURE § 1497 (3d ed. 2011) (“amendments alleging . . . the infringement of a different patent, or even a separate violation of the same statute may be subject to the defense of statute of limitations because of a failure to meet the transaction standard.”). Similarly, a claim cannot relate back to an earlier complaint where the right to assert infringement did not exist at the time of the original filing. See Abbott Labs. v. Johnson and Johnson, Inc., 524 F. Supp. 2d 553, 558 n. 10 (D. Del. 2007) (citing Illinois Tool Works, 395 F. Supp. at 251).

MOSAID’s motion for leave to amend should be denied because the SAC violates 35 U.S.C. § 299, and the amendment would therefore be futile. The SAC does not and could not allege that the parties are jointly or severally liable for any acts of infringement. Nor does it allege a common “transaction, occurrence, or series of transactions or occurrences” among the defendants’ “accused product[s] or process[es].” Instead, it alleges that six defendants’ unrelated products infringe various combinations of five patents. The only commonality amongst the defendants is that the SAC alleges that their products infringe one of those five patents, the ‘914

9

patent. These allegations do not meet the requirements of 35 U.S.C. § 299(a), and indeed are expressly prohibited by 35 U.S.C. § 299(b).10

Although the AIA and 35 U.S.C. § 299 went into effect after MOSAID filed its original Complaint, MOSAID filed the FAC on October 6, 2011 (and the motion for leave to file the SAC two months later), after the AIA’s September 16, 2011 effective date. The FAC cannot relate back to the original Complaint as to Adobe, ALU, IBM, Juniper and VMware because the original Complaint alleged infringement only of the statutorily disclaimed ‘241 patent against those defendants. The Court lacks jurisdiction to hear allegations relating to a statutorily disclaimed patent,11 and for these defendants there is no case or controversy to relate back to. The FAC’s allegations that these defendants infringe the ‘914 patent is not the same “conduct, transaction or occurrence” as the alleged infringement of the ‘241 patent. The later allegations of patent infringement cannot satisfy Rule 15(c) and cannot relate back to the original filing.12 See, e.g., Illinois Tool, 395 F. Supp. at 250-51.

______________________________

10 Although the same arguments apply to the FAC, defendants did not have an opportunity to oppose the entry of that complaint. Defendants plan on filing a motion to dismiss or sever the FAC for misjoinder.

11 “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed . . . .” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 492 (1935)). A disclaimed patent cannot be the source of subject matter jurisdiction for the Court. See W.L. Gore & Assoc’s, Inc. v. Oak Materials Group, Inc., 424 F. Supp. 700, 702 (D. Del. 1976) (“Since all the claims have been disclaimed, the effect of plaintiff’s action is the same as dedication of the patent to the public or abandonment. The Court, therefore, no longer has any jurisdiction . . . .”); 3V Inc. v. Ciba Specialty Chems. Corp., 587 F. Supp. 2d 641, 645 (D. Del. 2008) (same).

12 To the extent that MOSAID argues that allegations that the additional defendants infringed the ‘914 patent should relate back to the original Complaint because the FAC merely added additional parties to an existing claim, Rule 15(c) requires that the additional party “knew or should have known that the action would have been brought against it, but for a mistake concerning the proper party’s identity.” Fed.R.Civ.P. 15(c)(1)(C)(ii). It is not plausible to suggest that the defendants “knew or should have known” that MOSAID would have asserted the ‘914 patent against them “but for a mistake concerning [their] identity” when MOSAID had included them in a litigation involving the ‘914 patent, but chose not to assert it against them.

10

The original Complaint alleged that Red Hat infringed the ‘914 patent, but this alone does not permit relation back. See Farina, 625 F.3d at 111-13. For example, in Farina, a newly asserted claim against a single set of defendants, the “LG defendants,” prevented the relation back of Farina’s entire Second Amended Complaint for all defendants. Id. A fortiori, the potential relation back of a single defendant in this case cannot require the relation back of the other five.

The SAC seeks to add four additional patents to the allegations of the FAC, which would be asserted against various combinations of the defendants. The reasons why the FAC does not relate back to the original Complaint apply a fortiori to the SAC. Moreover, the SAC alleges indirect and willful infringement by all parties for all asserted patents, which requires, inter alia, that defendants knew of the patents. The SAC alleges, however, that defendants learned of the patents in suit only after the filing of the original Complaint. (See, e.g., D.I. 39 ¶¶ 21, 38, 54, 59, and 65 (asserting defendants learned of each patent on or after the service of the original Complaints)). Without knowledge of the patent, no claim for indirect infringement or willfulness could have existed at the time of the original Complaint, and the SAC’s indirect infringement claims cannot relate back to a time before the existence of the asserted right. See Abbott Labs., 524 F. Supp. 2d at 558 n. 10. Because the SAC does not relate back to the original Complaint, the AIA, enacted after the original Complaint but before the FAC and SAC, applies to and prohibits the SAC’s joinder of defendants.

11

3. The SAC Should Not Be Permitted Under
Federal Rule 20
Under Rule 20, joinder of multiple defendants in one action is proper only if:

(A) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and

(B) any question of law or fact common to all defendants will arise in the action.

Fed. R. Civ. P. 20(a)(2). As Judge Jordan held, “[i]n order to permit joinder, both tests must be satisfied.” Philips Elecs. N. Am. Corp. v. Contec Corp., 220 F.R.D. 415, 417 (D. Del. 2004); see also Bear Creek Techs., Inc. v. RCN Comms., C.A. No. 11-103, 2011 WL 3626787, at *1 (E.D. Va. Aug. 17, 2011) (“[C]ourts have uniformly held that parties are misjoined when they fail to satisfy either of the preconditions for permissive joinder of parties set forth in [Rule] 20a.”).

Even before the AIA went into effect on September 16, 2011, an allegation that multiple parties infringed the same patent was “an insufficient basis to join unrelated parties as defendants in the same lawsuit” because “[a]llegations of infringement against two unrelated parties based on different acts do not arise from the same transaction.” Philips Elecs., 220 F.R.D. at 417-18. See also Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch, 564 F. Supp. 1358, 1371 (D. Del. 1983) (same); Lucent Techs., Inc. v. Extreme Networks, Inc., C.A. No. 03- 508-JJF (D. Del. Feb. 9, 2004) (severing the defendants because plaintiff failed to satisfy the joinder standard) (Ex. B); New Jersey Mach. Inc. v. Alford Indus., Inc., C.A. No. 89-1879 (JCL), 1991 WL 340196, at *1 (D.N.J. Oct. 7, 1991) (“Infringement of the same patent by different machines and parties does not constitute the same transaction or occurrence to justify joinder of the new defendants.”). “[N]umerous courts have found that ‘joinder is often improper where [multiple] competing businesses have allegedly infringed the same patent by selling different

12

products.’” WiAV Networks, LLC v. 3Com Corp., C.A. No. 10-03448 WHA, 2010 WL 3895047, at *3 (N.D. Cal. Oct. 1, 2010) (quoting Spread Spectrum Screening, LLC v. Eastman Kodak Co., C.A. No. 10-1101, 2010 WL 3516106, at *2 (N.D. Ill. Sept. 1, 2010)); see also Colt Defense LLC v. Heckler & Koch Defense, Inc., C.A. No. 04-258, 2004 U.S. Dist. LEXIS 28690, at *13 (E.D. Va. Oct. 22, 2004) (describing as “overwhelming authority” the rule prohibiting joinder of patent defendants accused of infringing the same patent with different products).13

By including section 299(b), Congress did not intend the AIA to change Rule 20, but only undo a misinterpretation based primarily on the Eastern District of Texas’s opinion in MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455, 456 (E.D. Tex. 2004). The legislative history of the AIA is clear that the purpose of section 299(b) was to confirm the existing majority rule and put to rest that minority construction. As stated in the House Report, the AIA only intended to “legislatively abrogate[] the construction of Rule 20(a) adopted in MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004)” to “effectively conform[] these courts’ jurisprudence to that followed by a majority of jurisdictions.” H.R. REP. No. 112-98, pt. 1, at 55

_______________________________

13 Additional cases where courts have found misjoinder based upon the status of defendants as competitors selling different products include Optimum Power Solutions LLC, v. Apple Inc., C.A. No. 11-1509 SI, 2011 WL 4387905, at *3 (N.D. Cal. Sept. 20, 2011) (“Plaintiff has not alleged that defendants acted in concert or otherwise controlled or directed each others’ conduct—and indeed defendants appear to be ardent competitors of one another in the market place for their products”); Bear Creek, 2011 WL 3626787, at *5 (dismissing misjoined defendants where they were “independently owned and operated entities, and in some cases direct competitors.”); Androphy v. Smith & Nephew, Inc., 31 F. Supp. 2d 620, 623 (N.D. Ill. 1998) (“Here, [defendants] are separate companies that independently design, manufacture and sell different products in competition with each other. Clearly, the common transaction requirement has not been met as to the claims against [defendants].”); Multi-Tech Sys., Inc. v. Net2Phone, Inc., C.A. No. 00-346, 2000 WL 34494824, at *7 (D. Minn. June 26, 2000) (“Plaintiff asserts infringement claims against unrelated defendants who primarily compete in the same marketplace and provide independent products and services.”); Golden Scorpio Corp. v. Steel Horse Bar & Grill, 596 F. Supp. 2d 1282, 1285 (D. Ariz. 2009) (“allegations against multiple and unrelated defendants for acts of patent . . . infringement do not support joinder under Rule 20(a)” (citations omitted)) (severing a defendant for misjoinder).

13

n. 61 (citing Rudd v. Lux Prods. Corp., C.A. 09-6957, 2011 WL 148052, at *3 (N.D. Ill. Jan. 12, 2011)).

Even if the AIA did not apply to the SAC, Congress did not intend 35 U.S.C. § 299 to change the majority view of Rule 20, but rather to codify it and make it mandatory. As exemplified in Paine Webber, Philips and Lucent, even before the AIA, this Court has recognized the majority view that alleged infringement of the same patent is not sufficient to join parties. Joinder under the SAC would prejudice defendants. The SAC alleges different products infringe for each defendant. Indeed, the SAC only asserts one of the five patents, the ‘914 patent, against each of the six defendants. Two of the remaining asserted patents are asserted against only a single defendant, and no defendant is accused of infringing all five patents. As this Court has previously held, “[a]lthough there may be some efficiency to be gained by consolidating certain aspects of discovery, [plaintiff] ignores the possibility that collateral issues specific to any one of the many unrelated parties involved in both cases may create inefficiencies that would not arise if the proceedings remained separate.” Sony Elecs., Inc. v. Orion IP, LLC, C.A. No. 05-255-GMS, 2006 WL 680657, at *2 (D. Del. March 14, 2006) (citing Codex Corp. v. Milgo Elec. Corp., 553 F.2d 735, 739 (1st Cir. 1977)). MOSAID’s motion for leave to amend should be denied, regardless of the applicability of the AIA.

V. CONCLUSION

For the foregoing reasons, MOSAID’s Motion for Leave to File a Second Amended Complaint should be denied.

14

DLAPIPER LLP (US)

/s/ Aleine Porterfield

Denise S. Kraft (#2778)
Aleine Porterfield (#5053)
[address telephone email]

Attorneys for Adobe Systems, Inc.

MORRIS, NICHOLS, ARSHT &TUNNELL LLP

/s/ Paul Saindon

Jack B. Blumenfeld (#1014)
Paul Saindon (#5110)
[address telephone email]

Attorneys for Alcatel-Lucent USA, Inc.

SEITZ ROSS ARONSTAM &MORITZ, LLP

/s/ Collins J. Seitz, Jr.

Collins J. Seitz, Jr. (#2237)
[address telephone email]

Attorneys for International Business Machines Corp.

FISH & RICHARDSON P.C.

/s/ Gregory R. Booker

Tara D. Elliott (#4883)
Gregory R. Booker (#4784)
[address telephone email]

Attorneys for Red Hat Inc.

YOUNG CONAWAY STARGATT &TAYLOR, LLP

/s/ Adam W. Poff

Adam W. Poff (#3990)
Pilar G. Kraman (#5199)
[address telephone email]

Attorneys for VMware, Inc.

December 30, 2011

15

CERTIFICATE OF SERVICE

I hereby certify that on December 30, 2011, I caused the foregoing to be electronically filed with the Clerk of the Court using CM/ECF, which will send notification of such filing to all registered participants.

Richard D. Kirk, Esquire
Stephen B. Brauerman, Esquire
BAYARD, P.A.
[address]
Attorneys for Plaintiff

VIA ELECTRONIC MAIL

Steven G. Hill, Esquire
Douglas R. Kertscher, Esquire
HILL, KERTSCHER &WHARTON, LLP
[address]
Attorneys for Plaintiff

VIA ELECTRONIC MAIL

Collins J. Seitz, Jr., Esquire
SEITZ ROSS ARONSTAM &MORITZ, LLP
[address]
Attorneys for Juniper Networks, Inc.

VIA ELECTRONIC MAIL

Richard Birnholz, Esquire
Jonathan Kagan, Esquire
IRELL &MANELLA LLP
[address]
Attorneys for Juniper Networks, Inc.

VIA ELECTRONIC MAIL

/s/ Paul Saindon

Paul Saindon (#5110)

16



  View Printable Version


Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )