MediaTek Inc. v. Freescale Semiconductor, Inc.

Filing 589

ORDER GRANTING ADDITIONAL JOINT STIPULATIONS FOR TRIAL PURPOSES re 467 STIPULATION WITH PROPOSED ORDER GRANTING ADDITIONAL JOINT STIPULATIONS FOR TRIAL PURPOSES filed by MediaTek Inc., Freescale Semiconductor, Inc. Signed by Judge Yvonne Gonzalez Rogers on 8/1/14. (fs, COURT STAFF) (Filed on 8/1/2014)

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Alexander Hadjis (pro hac vice)
[e-mail]
CADWALADER, WICKERSHAM & TAFT
LLP
700 Sixth Street, NW
Washington, DC 20001
Telephone: [phone]
Facsimile: [phone]

Keith L. Slenkovich (SBN 129793)
[e-mail]
Joseph F. Haag (SBN 248749)
[e-mail]
Nathan L. Walker (SBN 206128)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304
Telephone: [phone]
Facsimile: [phone]

Rudy Y. Kim (CA SBN 199426)
[e-mail]
MORRISON & FOERSTER LLP
755 Page Mill Road
Palo Alto, CA 94304
Telephone: [phone]
Facsimile: [phone]

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William F. Lee (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]

Joshua A. Hartman (pro hac vice)
[e-mail]
MORRISON & FOERSTER LLP
2000 Pennsylvania Avenue NW
Suite 6000
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]

James M. Dowd (SBN 259578)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
350 S. Grand Avenue, Suite 2100
Los Angeles, CA 90071
Telephone: [phone]
Facsimile: [phone]

Attorneys for Defendant
FREESCALE SEMICONDUCTOR, INC.

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Attorneys for Plaintiff MEDIATEK INC.
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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND DIVISION
MEDIATEK INC.

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Civil Action No. 4:11-cv-05341 (YGR)
(JSC)
[PROPOSED] ORDER GRANTING
ADDITIONAL JOINT STIPULATIONS
FOR TRIAL PURPOSES
Hon. Yvonne Gonzalez Rogers

Plaintiff,
v.
FREESCALE SEMICONDUCTOR, INC.
Defendant.

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4:11-cv-05341 (YGR) (JSC)

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[Proposed] Order Granting Joint Stipulations

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The parties to this action—Plaintiff MediaTek, Inc. (“MediaTek”) and Defendant

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Freescale Semiconductor, Inc. (“Freescale”)—have stipulated to the matters listed in paragraphs 1

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through 36 below solely for purposes of trial in this action. The parties further stipulate and

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request that the matters listed in paragraphs 1 through 36 below shall be incorporated into the trial

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record, without the necessity of supporting testimony or exhibits, and that this Joint Stipulation

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may be provided to the jury. The parties respectfully ask the Court to approve these stipulations

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by signing the proposed Order set forth below.

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Stipulated Matters

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1.

MediaTek is a semiconductor company. MediaTek was founded in 1997.

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2.

Freescale is a Delaware corporation with its principal place of business located in

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Austin, Texas.

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3.

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Motorola in 2004.

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4.

Freescale is a former division of Motorola, Inc. (Motorola) and was spun off from

On May 18, 2004, the United States Patent and Trademark Office (“Patent

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Office”) issued U.S. Patent No. 6,738,845 (the ’845 patent) to Analog Devices, Inc. (“Analog

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Devices”) as assignee of the ’845 patent.

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5.

On May 3, 2005, the Patent Office issued U.S. Patent No. 6,889,331 (the ’331

patent) to Analog Devices as assignee of the ’331 patent.
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MediaTek acquired the wireless division of Analog Devices in January 2008, and,

as a part of that acquisition, acquired the ’845 and ’331 patents.
7.

On July 11, 2000, the Patent Office issued U.S. Patent No. 6,088,753 (the ’753

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patent) to Fusion Micromedia Corporation (“Fusion,”) as assignee of the ’753 patent. In 2001,

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Fusion (a/k/a Sitera Incorporated) merged into Vitesse Semiconductor Corporation (“Vitesse”)

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and, as part of that merger, Vitesse acquired the ‘753 patent.

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8.

MediaTek acquired certain assets of Vitesse in June 2009, and, as a part of that

acquisition, acquired the ’753 patent.

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9.

MediaTek owns all right, title, and interest in the ’845, ’331, and ’753 patents.

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10.

The priority date for the ’845 patent is November 5, 1999.

4:11-cv-05341 (YGR) (JSC)

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[Proposed] Order Granting Joint Stipulations

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Palle Birk as inventors.

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12.

The non-provisional application leading to the issuance of the ’845 patent was

filed with the Patent Office on November 3, 2000.

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The ’845 patent names Rainer R. Hadwiger, Paul Krivacek, Joern Sorensen, and

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The ’845 patent claims priority to and incorporates by reference Provision

Application No. 60/163,816, filed November 5, 1999.

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14.

The priority date for the ’331 patent is August 29, 2001.

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15.

The ’331 patent names Joern Soerensen, Michael Allen, and Palle Birk as

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inventors.

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filed with the Patent Office on August 29, 2002.

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The non-provisional application leading to the issuance of the ’331 patent was

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The ’331 patent claims priority to and incorporates by reference Provisional

Application No. 60/315,655, filed August 29, 2001.

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18.

The priority date for the ’753 patent is May 27, 1997.

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19.

The ’753 patent names Stephen James Sheafor and James Yuan Wei as inventors.

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20.

The non-provisional application leading to the issuance of the ’753 patent was

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filed with the Patent Office on August 2, 1999. (Dkt. No. 394 at ¶ 57.)

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No. 08/863,875, which led to issuance of U.S. Patent No. 5,983,303 (the ’303 patent).

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The non-provisional application leading to the issuance of Bowes856 was filed on

March 21, 1996.

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U.S. Patent No. 5,828,856 to Bowes et al. (Bowes856) was issued on October 27,

1998.

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The ’753 patent is a division of the application that led to issuance of the ’303

patent.

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The ’753 patent claims priority to and incorporates by reference prior application

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U.S. Patent No. 5,546,547 to Bowes et al. (Bowes547) was issued on August 13,

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The non-provisional application leading to the issuance of Bowes547 was filed on

1996.

4:11-cv-05341 (YGR) (JSC)

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[Proposed] Order Granting Joint Stipulations

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January 28, 1994.

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27.

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N. Bhuyan et al. (“Bhuyan reference”), was published by the IEEE in February 1989.

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The damages period applicable to the ’753 patent in this case runs from

November 4, 2011, to present.

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The damages period applicable to the ’845 and ’331 in this case runs from

November 3, 2011, to present.

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The non-provisional application leading to Kawai was filed on December 19,

1994.

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U.S. Patent No. 5,584,010 to Kawai et al. (Kawai) was issued on December 10,

1996.

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The Motorola MC88410 – Secondary Cache Controller User’s Manual was

published by Motorola Inc. in 1992.

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The non-provisional application leading to Halepete was filed on January 18,

2000.

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U.S. Patent No. 7,100,061 to Halepete et al. (Halepete) was issued on August 29,

2006.

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The article “Performance of Multiprocessor Interconnection Networks,” by Laxmi

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Freescale was licensed to the ’845 and ’331 patents between August 30, 2004, and

August 30, 2010, under a patent license agreement with Analog Devices.

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36.

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The parties make the foregoing stipulations for the limited purpose of simplifying the

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Freescale’s license under the ’845 and ’331 patents expired on August 30, 2010.

issues for trial. See Fed. R. Civ. P. 16(c)(2)(A).

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PURSUANT TO STIPULATION, IT IS SO ORDERED.

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Dated:

August 1

, 2014

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United States District Judge
YVONNE GONZALEZ ROGERS

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4:11-cv-05341 (YGR) (JSC)

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[Proposed] Order Granting Joint Stipulations

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Dated: February 24, 2014

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Respectfully submitted,
WILMER CUTLER PICKERING
HALE AND DORR LLP

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By: _ /s/ James M. Dowd___________
James M. Dowd

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Keith L. Slenkovich (SBN 129793)
[e-mail]
Joseph F. Haag (SBN 248749)
[e-mail]
Christopher A. Franklin (SBN 272587)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304
Telephone: [phone]
Facsimile: [phone]

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William F. Lee (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]

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James M. Dowd (SBN 259578)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
350 S. Grand Avenue, Suite 2100
Los Angeles, CA 90071
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiff MEDIATEK INC.

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4:11-cv-05341 (YGR) (JSC)

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[Proposed] Order Granting Joint Stipulations

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Respectfully submitted,

Dated: February 24, 2014

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FREESCALE SEMICONDUCTOR, INC.

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By its attorneys,

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/s/
Alexander J. Hadjis
ALEXANDER J. HADJIS (pro hac vice)
[e-mail]
CADWALADER, WICKERSHAM & TAFT
LLP
700 Sixth Street, N.W.
Washington, D.C. 20001
Telephone: [phone]
Facsimile: [phone]

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RUDY Y. KIM (CA SBN 199426)
[e-mail]
MORRISON & FOERSTER LLP
755 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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JOSHUA A. HARTMAN (pro hac vice)
[e-mail]
MORRISON & FOERSTER LLP
2000 Pennsylvania Avenue, NW
Suite 6000
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant-Counterclaimant
FREESCALE SEMICONDUCTOR, INC.

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ATTESTATION OF CONCURRENCE IN FILING
Pursuant to the United States District Court for the Northern District of California’s General Order

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No. 45, Section X.B., I, Rudy Y. Kim, attest that concurrence in the filing of this document has been

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obtained from James Dowd and Alexander J. Hadjis.

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/s/ Rudy Y. Kim
Rudy Y. Kim

_

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4:11-cv-05341 (YGR) (JSC)

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[Proposed] Order Granting Joint Stipulations