Google Inc. et al v. Egger et al

Filing 127

Declaration of Thomas B. Walsh, IV in Support of 124 Memorandum in Opposition to Motion to Dismiss - NUMBER TWO filed byGoogle Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, Part 1, # 3 Exhibit B, Part 2, # 4 Exhibit B, Part 3, # 5 Exhibit B, Part 4, # 6 Exhibit B, Part 5, # 7 Exhibit B, Part 6, # 8 Exhibit C - FILED UNDER SEAL, # 9 Exhibit D, Part 1, # 10 Exhibit D, Part 2, # 11 Exhibit D, Part 3, # 12 Exhibit D, Part 4, # 13 Exhibit D, Part 5, # 14 Exhibit E - FILED UNDER SEAL, # 15 Exhibit F - FILED UNDER SEAL, # 16 Exhibit G, # 17 Exhibit H, # 18 Exhibit I - FILED UNDER SEAL, # 19 Exhibit J - FILED UNDER SEAL, # 20 Exhibit K - FILED UNDER SEAL, # 21 Exhibit L - FILED UNDER SEAL, # 22 Exhibit M - FILED UNDER SEAL, # 23 Exhibit N, # 24 Exhibit O)(Related document(s) 124 ) (Walsh, Thomas) (Filed on 7/24/2009)

Google Inc. et al v. Egger et al

Doc. 127 Att. 12

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Filed07/24/09 Page1 of 48

EXHIBIT D PART 5

Dockets.Justia.com

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Case 2:07-cv-0051 1-TJW-CE Document 66-9 Filed 07116/2008 Page 1 of2
Page 1

Copyright 1997 Business Wire, Inc. Business Wire August 25, 1997, Monday
DISTR1BUTION: Business Editors & Computer Writers LENGTH: 1154 words HEADLINE: DeltaPoint and Site/technologies/inc. Deliver SiteSweeper 2.0 for Web Site Quality Control; Newest

Version of Web Site Quality Assurance Software Offers Enhanced Reporting, Scalabihty, Configuration, and Perform ance for Web Professionals
DATELINE: MONTEREY, Calif. BODY:

Aug. 25, 1997-- Siteftechnologies/inc., a wholly owned subsidiary ofDeltaPoint, Inc. (OTC BB;DTPT), today announced the release of SiteSweeper 2.0, the Iatest version ofits Web site quality control software. SiteSweeper gives Web professionals an arsenal of conflgurable analysis tools and reports for ensuring the efficiency, effectiveness, and overall quality oftheir web sites. SiteSweeper can save busy Web professionals significant time by automatically generating customized Web site reports on a Itill range ofquahty control issues, with optimum multiple-server product perforinance, improved scalability and custom configuration. "Anyone who wants to attract, and keep, visitors to their Web site needs to pay attention to potential quality control problems," said Song Huang, VP ofProduct Management at DeltaPoint. "SiteSweeper is a powerfiul application for Web professionals responsible for maintaining Web site quatity and integrity. SiteSweeper identifies quality issues such as missing files, slow pages, broken links and distorted images and simplifies the considerable task ofimprovmg the speed and navigation ofthe Web site." "SiteSweeper is aH about enhancing Web sites to increase productivity and profitability," commented Scott Alien, VP ofChannel Marketing at DeltaPoint. "Everyone from Web content creators to Web masters to visitors will beneflt from maximizing the mformation presentation and distribution from a Web site The better and faster a company dehvers information on their Web site, the better the perception in the mind ofthe customer." Web Quality Control Application · SiteSweeper can help Web managers improve the quality oftheir sites by providing reports on the number ofbroken links, slow pages caused by large images and excessive infonnation, missing ALT attributes, missing image definitions, distorted images, problem page tities, and missing Mcta tags. Optimized Performance, Scalability, and Configuration Power SiteSweeper can sweep multiple sites on multiple servers (UNIX, 0S2, Windows NT) in one session, including secure and proxy servers SiteSweeper also understands HTTP, HTTPS, FTP and Gopher protocols, which allows the product to sweep a broad range of Web servers. Unlike other toois that require the user to invoke an analysis report manually, SiteSweeper can begin automatically sweeping a Web site at spccifled intervals and at specified times -- during off-peak hours -- to avoid overloading Web servers SiteSweeper can paraliel process to provide faster "sweepmg," and users can specifr up to 20 threads - or dif ferent data gathering streams -- simultaneously for optimized performance. Able to sweep even Iarger sites than before, SiteSweeper is suited for environments scaling from small and medium businesses to corporate departinents. SiteSweeper allows the Web professional to define eustomer quality configurations specific to each environment. For example, corporate users sweeping an Intranet site where everyone is on a high-bandwidth Ti line may not be concemed about large sized Web pages that could take a long time to download Web managers can detine new limits if

EXHIBITI7

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Gase 2:07-cv-0051 1 -TJW-CE Document 66-9 FiIed 07/16/2008 Page 2 of 2
Page 2 DeltaPoint and Siteltechnologies/inc. Deliver SiteSweeper 2.0 for Web Site Quality Control; Newest Version of Web Site Quality Assurance Software Offers Bnhanced Reporting, Scalabiity, Configuration desired and can customize reports for site-specific use. If Web professionals find it necessary to sweep sites with different quality standards, SiteSweeper can save configurations so that complete analysis can be performed on these sites with little or no user intervention. Extensive Reporting Capability Web professionals now have the significant advantage ofSiteSweeper's enhanced reporting features, which give them extensive site infoimation at a glance, regardless oftheir operatmg plalform Java based navigation aliows users to view the platforni-independent HTML reports in any browser, as well as share the reports. In addition, Visual Quality Indicator charts graphically depict the information produced by the "sweep." A Site Atlas maps out the entire site structure and shows resource utilization such as server type, total Web site size, plus multiple views with active hyperlinks to all cotnponents ofthe Web site SiteSweeper contams an image catalog that lets users see at a glance a thumbnail of all images, organized by pages, that are in their Web site. Users can review images on their sites by browsing the SiteSweeper image catalog and can view images for content, copyright infiingements, or quality control. Plus, SiteSweepefs advanced reports analyze dynamic pages, forms and queries and note whether these requests elicit a response. SiteSweeper Disfribution SiteSweeper 2.0 runs on Windows 95, Windows 3.1 and Windows NT, and is listed at $ 495. An upgrade from SiteSweeper 1.0 is available for $ 249. DeltaPoint plans to release SiteSweeper 2.0 on the company's Web site in Q3 with full-packaged product shipping shortly thereafter. About DeltaPoint Founded in 1989, DeltaPoint, Inc. is a provider of Web site creation, management, and quality assurance tools for Web-based business environments of all sizes. The Company has business relationships in the Web tools arena with many vendors includmg Sony, Earthlink, Compaq, MacMillan Press, Anawave, the Internet Mali and McGraw-Hill DeltaPoint products are available through distribution, major retail stores and catalog merchants, as well as corporate resellers, international distributors and directly from the company. Headquartered in Monterey, DeltaPoint can be reached at 800/446-6955 or through the World Wide Web at http://www.deltapoint.com . -0-

mis press release contains forward-looking statements that involve risks and uncertainties. DeltaPoint's actual results may differ from the results discussed or forecasted in the forward-looking statements due to factors that include, but are not limited to, risks associated with DeltaPoint's Internet strategy and DeltaPomt's recent completed and pending acquisitions. Further information on potential factors that could affect the fmancial resuits ofDeltaPoint are included in DeltaPoint's Report on Form 10-K for the year ended Dec. 31, 1996 and the report ofForm 10-Q for the period ended June 30, 1997, each ofwhich is on file with the Securities and Exchange Commission.
CONTACT: DeltaPoint, Inc. Scott Alien, 408/648-4000 [e-mail] or Stapieton Communications Elien Brook, 415/988-9207 (Financial Media) [e-mail]
LOAD-DATE:

August 26, 1997

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Bill of Sale, Asiguiuent and License Agreeinent

T1is B111 of Sale, Msigñment, and License Agreezuent is made this IL1T day ofSepternber, 1998 (the 'Effective Date"), by and betweea Site Technologies, Inc. a Corporation. doing busuiess in California ("Sellçr"), and Daniel Egger, aresident of the State ófNorth Caroliza ("Buyer"). WHEREAS Seller Iiaz agieed to sell and assign to buyer and Buyer has agreed to purchu8e and aecept from Selier, certain inteI1ctual property, software, databases, and physical assets, defined below, for the co sideraton andterms set forth herein; and WHEREAS Selier has ii addition agreed to license certain softwar; defined below, as to winoh Selier desires to retain ownerslnpbut is wilhing to grant Buyer a petpetuai, noncxclusive Iicàse, for the considrátion ancl terms set fdtth herein NOW THEREFRB, for gd and vàLuábI consideràlThii, the reeipt ánd sUffieiency of wbich are hroby acknowledged, it is hereby agreedas failows: 1. Purchased Assets. The "PurcbasedAssets" shall inolude ihe foliowing:

)

PATENTS U 5 Patent Nninber 5,544,352, ffled June 14, 1993 (1 e , the (a) "V-Searoh Patent"), and any additions, contuxuatidns, contrnuations in part, drvisions, or extenslons, reissues, renewais, or substituhons ofsuch patent (including tile "Aha Patent), and any foreign counterpart of axiy of thc foregowg, as welt as aLt related docuinerits anil diagrazns mthe files of patentcounsel; TRADEMARKS and COPYRIGHTS: All Selter's righta in "V-Searèh," (b) "Aha," "Libertecb," and any terms nsed in or associatcd with the "V-S.earch Pübllsher's Toollçit," as well as alt lagos and rarkeling and promotional material incorporating such marks; SOFtWARE and DATABASES all software, whether source codè or (c) compiled, and alt databases, associated with the V-Search data-visuahzation system. or the Aha teqbnology, mcludmg but not timited to alt files eontained on Drive 1) ofthe computer bemg conveyed as partofthe sale (and reproduced rn a separate set oftape backups), and enumerated in the metno prepard by Ron Sauers entitled "HIGH-LEVEL SIJMMARY OF ThB FILES CONTAINED ON DRIVE D:,"attached hereto as Exhibit B and liereby ineorporated bjrrefereuce into this document; (d) THIRD-PARTY LICENSES nghts to all hcense agreeznents, including the Folio Infobase lióense, obtained to generate and use the SOFTWARE and DATABASES enumerated above,
(0) P}WSICAL ASSETS Extant copies ofCD-ROMs and disks prepared for

demOnsfrtions ofthe IT-Search teclmoiogy, extant copIes olthë V'SaicfiPublisher's Toolkit, extant

CASC:\WND0WS'EM?ScTcCigiuirn11do

· PATENT REEL: 018160 FRAME: 0501

EXHIBITI8

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1
· rnarketing materiats, sates notebopks, etc., rèlating exclusively to the V'Searcli and Aba tecbnologies an welI as the computor ánd backup tapes upon which the SOFTWARE and DATABASES enumratèd abOve reside, and (1) 000DWILL and CLAJMS: Any and all goodwill, and all claiins and potential claims, relatbig to the Purchased Assets described above. Selier warrants that it hereby transfers good and marketable tltle to the Purchasd 2. Assets, free and clear of all liabiities, mortgages, liens, piedges. cbarges, security interests, etcumbance or title retention agreemeat ofany kind or nature, Excep.t for the foregoing wArranty oftitle, THE PU CHASED ASSETS .AND ThB 3. LICBNSED SOFTWARE ARE ?BOVIDED "ASIS - SWHERE 13" AND WITHOUT ANY WARRANTY OF ANY NATURE WHATSQEVER, rr BE[NG EXPRESSLY UNDERSTOOI) A}D AGREED TIIAT SELLER DISCLAIMS ALL OTHER WARRANTIES INCLUDING, BUT NOT LThflThD 10, WARRAN11ES OFMERCHANTAB!LIT't, NONTNFPJNOEMENT AND FITNESS FOR A PAkTICULAR PURPOSE. Buyer assumes no liabiities of Seller associated with the Purchased Assets or 4. Licensed Software or the operation of the businesses related thereto prior to the Effective Date. Selter agrees to defend, indethnli', and hold Buyer harrii1essagainst any anctall ilabilities associated with the Purebased Assets or Lieensed Software that anse prior to the Closing that may be asserted against Buyer after the Effective Daté, provided (1) Buyer notifies SeUer proxnptly in writing of such claim, (il) Sdiler hs sole control of the defense and all related tt1ement negótiation, and. (ili) 3uyr provides Selier witb. all reasoaably uècessary assistance to peform the ·foregoing. mao event shull Selier b liable mder the foregoing for a claiin based on modifieations adaptatiois or changes to the Licensed Software not inade by Selier or for combinations cifthe Licensed Software with materials nat furntshed by Seller ifsuch nifringement would have been avoided but for such combmation Buyer agrees to defend, indemnify, and hold Selier harmless agalnst any and all liabilities assodated with the Purcliased Assets that arise after the Effective Date, provided (i) Seller notffies Buyer promptly in writing of such claim, (il) Buyer ba.s sole control orthedefene and all retated. sett1enieit negotiations, and (iii) Seiler provides Buyer with alt reasonably necessary assi.stanc to perfonn the foregoing. 5. IN NO EVENT SHALL THE MAXIMUM LIABILITY OF EITHER PARTY ARJSING UNDER THIS AGREEME1T EXCEED TRE AMOUNT PMD BY BUYER HERBUNDE1.. IN NO EVENT SHALL EITFIER PARTY BE LIABLE TO THE OTHER PARTY FOR ANY LOST DATA OR CONThN1, LOST P.OFff 3 OR FOR-ANY INDIRECT, tNCIDENTAL, SPECIAL, CONSQ1JENTtAL, EXEMPLARY OR PUNITIVE DAMAGES ARISTh1G OUT OF OR. RELATrNG TQ TIJE PURCHASED ASSETS OR LICENSED SOFTWARE PROVIDEU 11BREUNDER EVEN IF SUCHPARTY HAS BEEN ADVISED OP T1-LE POSS1BLLITY OF SUCH DAMAGES, AND NOTWTTFISTANDINQ THE FAILURB OF ESSENTIAL PtJRPOSE OF ANY LIMITED REMEDY. 6. Purebase P. In consideratian of the Purchased Assets and the Licensed Sdftware Drovided hereunder, Bayer shalt pay Se11e $ 100,000, pkyabIe in full on the Effective Date hercof. -2PATENT REEL: 018160 FRAME: 0502

.2

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Licensed Software. Buyer and Selier are aware that several components of Se11er's 7. software kno'cin as "SiteSweeper" are shared witli the Pptchasd Assels. SeUe hereby grants Buyer a perpetual, worldwide, fully paid, nonexelusive Iicense to copy, display, perforn, crate derivative works, diitribute and otherwise use the Licensed Software, in source code form, solely in conjunctloa with the Pi ichased Assets. "Licensed Software" shall mean: (a) (b) (c) SiteSweeper. Seiler shall retain.ownersbip of! alt copyrights and other rights in the.Licused Softre, exc ept tbat, althciugh the Licensed Software is usd in ceftain ofthe Purchased Assets, Selier shail have no ow rship üterest ih siich ?urchased Assets. 8. rther Msurancès. The "crawler" used to bulld. Aha databases; HTML Reporter - the repdrtr engine plus ISAPI extension; and Miscellaneous utility files used by V-Search nd/or Aha and also fouud in

(a) Selier agrees to instruct patent counsel, Dorsey and Whltney of Washington, P.C., that Selier has aasigned. to Buyer alt such patent rights tlescribed above and such counsel is authorizecl and directed.to niake availabie and/or to deliver to Buyer all Seller's records relating to such patent rights. Biyer may .provide a copy of this Agreeinent 10 such counsel ancl this Agreement 1 shall constitute Selier's authoiiza.tion to retease such files to Buyer. Setier agrees from timç to time, upon. the request af tbo Buyer, to execute, (b) acknowledge, and deliver alt such further instrumezi.ts, or perform such fbrther acts as may be necessaty, in the opinion qfthe Buyer, in.conneeliôn with the. sale, assIgninent, conveyance, transfer and delivery ofthe Purchascd Asset ar the Liceàsed Software. 9. Terminattou. Bither party may terminate this Agreement in the event of iny materia! breach ofthe terms and conditions ofthis Agreement by the other party, which dethp.tt continues in effeci after the defau tingpartr has been provided with writtân xiOtice ofdefault and thiity (30.) days co cure such defau1. Seotions 1,3, 4,5,6, 9 and 10 shall survive any terxninalion of this Agreement. 10. This Agreement, hieluding the exhibits attached hereto, constitute the entire agrçeinent and understandlng ofthe parties with respect to thesubject matter contained herein and supersede or. cancel all priir agreenients resectiig such subject matter. flA mn ma be amended only by a writtert instrunient executed by all the pasties or. thefr successors or assigns. This Agreement shall Inure to the beneflt of and be bfnding upon the parties hereto and their successors and assigns In the event any provison oftlus Areement shall be held tobe mvand,, the remaining provisions ofthis Agreement shall be uninipairéd idtie pa tie illsibsiitute anew enforceable provision of like econoxmc mtcnt and effect This Agreen%ent rray be executed m one or marc caunxerparts ajd each counterpart deemèd án originàL This Agteexnont miy'also be executed and
CASC:\WIWDOWSTEMSkcTeh.uIgnrnc1I4oc

-3-

PATENT
REEL: 018160 FRAME: 0603

·

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clelivereclin unterarts executhd and delivered via acsimiIe transmission, and any sucb ) counterpat shall be deemed an original for all hitens and purposes.

S HEREO1, the partics have causedthis Agreement to be executed as ofthe EffectiveD Buyer: Daniel Eger JeffAi Inef xecutive Offlcer Date;

5'pf. 16 '18

Date:

ar1 is;

1? r

CASc\W[NDOWSMSilaTcch.ugnznnLdoa

PATENT REEL: 018160 FRAME: 0504

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1N THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

SOVfWARE RIGHTS ARCHIVE, LLC 1 · GOOGLE INC., YAHOO! INC., IAC SEARCH & MEDIA, INC., AOL, LLC, AND LYCOS, INC. Civil Case No. 2:07-cv-511 (TJW)

DEFENDANTS' MOTION TO DISMISS FOR LACK OF STANDING

EXHIB' 20.

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TABLE OF CONTENTS TABLEOFCONTENTS...............................................................................................................1 TABLEOF AUTHOR1TIES........................................................................................................11 1. 11. SUMMARY OF THE ARGUMENT................................................................................1 FACTS...............................................................................................................................2 A. 13 . C. D. 111. The Inventors Assigned All Their Rights To Liberteeh........................................2 Ljbertech (a.k.a. Sjte/Technolo giesllnc.) Never Assigned Its Rights To Egger.....................................................................................................3 Egger's 2005 Assignment To Himself Was A Nullity And A Fraud......................................................................................................................5 SRA Acquired No Rights From Egger But Nonetheless Relied OnThe Void 2005 Assignment.............................................................................6

ARGUMENT.....................................................................................................................8 A. B. Applicable Law......................................................................................................8 SRA And Egger Never Acquired The Patents-In-Suit..........................................9 1. 2. 3. The 1998 Assignment Did Not Transfer Title...........................................9 The 2005 Assignment Transferred No Rights.........................................11 No Document Grants SRA Title..............................................................12

w.

CONCLUSION................................................................................................................12

DEFENDANTS' MOTION TO DISMISS FOR LACK OF STANDING - Page i

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TABLE OF AUTHORITIES Federal Cases
Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24 (1923).....................................1 DoleFood Go. v. Patrickson, 538 U.S. 468 (2003)......................................................................10 EnzoAPA & Son, Inc. v. Geapag AG, 134 F.3d 1090 (Fed. Cir. 1998).........................................1 FilmTecCorp. v. Allied-Signal Inc., 939 F.2d 1568 (Fed. Cir. 1991)............................................8 Howeryv. Alistate Ins. Go., 243 F.3d 912 (5th Cir. 2001)............................................................. 9 Intellectual Prop. Dev., Inc. v. TCI Cablevision of CA, Inc., 248 F.3d 1333

(Fed. Cir. 2001)............................................................................................................. 8 , 12

Lansv. Digital Equip. Corp., 252 F.3d 1320 (Fed. Cir. 2001).................................................8, 10 LDM Techs., Inc. v. Rowen-Waters Group, LLC, No. 02-73520, 2005 WL 2449300 (E.D. Mich. Sept. 28, 2005)............................................................................... 10 Lujanv. Defenders of Wildlife, 504 U.S. 555 (1992) ..................................................................... 9 Quantum Corp. v. Riverbed Tech., Inc., No. C 07-04161 WHA, 2008 WL

314490 (N.D. Cal. Feb. 4, 2008).........................................................................................2 2000).................................................................................................................................12

TM Patents, L.P. v. Int'l Bus. Machs. Corp., 121 F. Supp. 2d 349 (S.D.N.Y.

Federal Statutes

11U.S.Ci1141.............................................................................................................................2 35U.S.C.261...........................................................................................................................8,9 35U.S.C.281...............................................................................................................................1
Federal Rules

Fed. R. Civ. Proc. 12(b)(1) .............................................................................................................1
State Statutes

Cal. Corp. Code § 1107(a)........................................................................................................ 5 , 11 Del. Code tit. 8, § 259(a)........................................................................................................... 5, 11 Del. Code tit. 8, § 271.....................................................................................................................2

DEFENDANTS' MOTION TO DISMISS FOR LACK OF STANDING - Page ii

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Defendants Google Inc., Yahoo! Inc., IAC Search & Media, Inc., AOL LLC, and Lycos, Inc. (collectively, "Defendants") move the Court to dismiss this action for patent infringement for lack of subject matterjunsdiction pursuant to Fed. R. Civ. P. 12(b)(1). Plaintiff Software Rights Archive, LLC ("SRA") brought this action alieging that Defendants infringe U.S. Patent Nos. 5,544,352 (the "352 patent"), 5,832,494 (the "494 patent"), and 6,233,571 (the "571 patent") (collectively "the patents-in-suit"). However, contrary to the allegations made by SRA in its complaint, SRA is not the assignee of the patents-in-suit, and therefore lacks standing to bring this action.1 1. SUMMARY OF THE ARGUMENT The right to sue for patent infringement is limited by statute and case law to the owner of the patent.2 See 35 U.S.C. § 281 ("A patentee shall have remedy by civil action for infringement
ofhis patent."); Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24, 40 (1923)

("[T] he plaintiff in an [infringement] action ... must be the person or persons in whom the legal title to the patent resided at the time of the infringement."). if a party lacks ownership rights in the patent-in-suit at the time of fihing its complaint, then there is no standing, and the case should be dismissed. Under Article ffl of the Constitution, a plaintiff must establish standing to sue before a federal court will consider the merits of its claims. As one court aptly noted: In light of the proliferation of patent-infringement actions, it is not too much to ask sophisticated patent litigants to be careful when it comes to the threshold issue of standing.... District judges cannot overlook a defect in the chain of title, for the entirety of massive litigation might wind up being vacated years later, for lack of threshold standing. As carpenters say, it is wise to "measure twice and cut once." Defendants have filed a complaint for declaratory judgment in the Northem District of Califomia against Daniel Egger, SRA, and Site Technologies, Inc. Civil Action No. 3:08-cv03172-MEJ. The Northem District of California is the proper venue and jurisdiction for resolving the controversies relating to Site Technologies, Inc. and its patents (Exhibit 1). While the Federal Circuit has made an exception to this standing rule for exclusive licensees with all substantial rights to a patent, see Enzo APA & Son, Inc. v. Geapag AG, 134 F3d 1090, 1093-94 (Fed. Cir. 1998), nothing in Plaintiff's complaint alieges that SRA is an exclusive licensee with such rights.
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Quantum Corp. v. Riverbed Tech., Inc., No. C 07-04161 WHA, 2008 WL 314490, at *3 (N.D. Cal. Feb. 4, 2008) (citations omitted). Here, SRA's complaint should be dismissed because it has never owned the patents-insuit. SRA presumably will argue that its ownership arises from a February 22, 2005 assignment from Damel Egger ("Egger"). Egger, however, had no patent rights to convey to SRA in February 2005. This is because neither of the two prior assignments that purported to convey rights to Egger actually conveyed any rights to the patents-in-suit: 1. The first assignment, the "1998 Assignment," was from Site Technologies, Inc., a California corporation, to Egger. However, Site Technologies, Inc. did not own the patents at that time, and the corporation's subsequent bankruptcy fihing and confinned Plan of Reorgamzation would have prevented Egger from obtaining the patents from the estate. 2. The second assignment, the "2005 Assignment," was from Sitefrechnologies/Inc., a Delaware corporation, to Egger for $1, via an instrument executed by Egger himself. However, by this time in 2005, Site/Technologiesflnc. did not even exist and Egger did not have authority to transfer its assets (much less to himself).3 Moreover, applicable corporate and bankruptcy !aw would have required additional approvals for such an assignment to Egger, none of which were obtained.4 Thus, neither purported assignment granted Egger title to the patents-in-suit. And since Egger did not acquire the patents-in-suit, SRA did not acquire the patents-in-suit from him and thus has no standing to bring this action.

11. FACTS A. The Inventors Assigned All Their Rights To Libertech

The '352 patent issued from Application Serial No. 08/076,658, which named Daniel Egger as its sole inventor. Pursuant to an assignment dated November 9, 1993 and recorded with

These events are summarized in the timeline attached hereto as Exhibit 2. Under Delaware General Corporation Law § 271 and otherwise, the approval of shareholders and the board of directors of Site Technologies Inc. would have been required for such a transaction. No board then existed. Moreover, during bankruptcy, the sole shareholder/parent corporation could have acted only through a Responsible Person acting pursuant to the Chapter 11 Plan ofReorganization. See 11 U.S.C. § 1141.

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the USPTO (Exhibit 3), Egger assigned all his rights in this application, and hence the '352 patent, to Libertech, Inc., a Delaware corporation that he founded in 1992. On May 17, 1996, a continuation-in-part application to the '352 patent was filed. This application named Egger, as well as Shawn Cannon and Ronald D. Sauers, as inventors and later issued as the '494 patent. Pursuant to an assignment recorded with the USPTO (Exhibit 4), all three co-inventors assigned all their rights in the application that later issued as the '494 patent to Libertech, Inc. on June 18, 1996. A divisional application of the '494 patent later issued as the

'571 patent.
As a result of these two assignments, all the rights to the patents-in-suit resided squarely with Libertech.

B.

Libertech (a.k.a. Site/Technologiesflnc.) Never Assigned Its Rights To Egger

On August 22, 1996, Libertech, Inc. changed its name to Site/Technologiesllnc. The name change was also recorded with the USPTO. (Exhibit 5). For ease of reference, we will continue to refer to both Libertech Inc. and Site/Technologies/Inc. as "Libertech" except where necessary to show correspondence to the documents. On July 11, 1997, Deltapoint, Inc., a California corporation, purchased all the shares of Libertech pursuant to a Stock Exchange Agreement that Deltapoint publicly disclosed in an SEC fihing (Exhibit 6). The Agreement was executed by Jeffrey Ait on behalf of Deltapoint and by Ron Sauers, on Libertech's behalf as its last President before the change of control. (See Exhibit 6 at p. 22). After being acquired as a subsidiary of Deltapoint, Libertech remained the sole holder of record title to the '352 patent and the applications that would issue as the '494 and '571 patents. Other Deltapoint fihings and press releases confirmed Libertech's status as a whollyowned subsidiary. See, e.g., Exhibits 7, 8 & 9. Thereafter, Deltapoint, Inc., the Califomia corporation and parent of Libertech, changed its name to Site Technologies, Inc. (distinguishable from its subsidiary Libertech (a.k.a. Site/Technologies/Inc.) by the absence of slashes in its name). Since Deltapoint, Inc. and Site

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Technologies, Inc. are merely two different names for the same company, we will generaily refer to the company as "Deltapoint." In September 1998, Deltapoint agreed to sell its technology pertaining to a product called "V-Search" to Egger. Deltapoint and Egger entered into a Bill of Sale, Assignment and License Agreement (Exhibit 10, pp. 1-4) pursuant to which Egger would pay $ 100,000 to obtain software, software copyrights, software Iicenses, trademarks, certain physical property, and rights to the '352 patent and certain related applications. 5 As recorded with the USPTO, this Bill of Sale was followed by an undated assignment (the "Undated Assignment," hereafter) (Exhibit 10, pp. 5-6) relating to the '352 patent (but not the then-pending continuation-in-part applications that later issued as the '494 and '571 patents). Numerous irregularities appear on the face of the Undated Assignment, among them: (i) its last sentence of text cuts off in mid-sentence followed by a blank line; (ii) no signature other than the initials of Daniel Egger, the purported assignee, appears on the same page as the document' s text; and (iii) the lone signature of an attesting witness appears on a separate page from the document' s text. Even apart from these and other defects, these documents did not transfer any patent rights to Egger because at this time Libertech, not its parent Deltapoint, held the rights to the patents-in-suit. Simply put, Deltapoint had no patent rights to convey. After the purported assignment of the '352 patent to Egger by Deltapoint, on February 21, 1999, Deltapoint commenced Chapter 11 bankruptcy proceedings in the United States Bankruptcy Court for the Northern District of California. 6 In its February 18, 2000, Statement of Financial Affairs, Deltapoint identified Libertech as its subsidiary from "9/94present." (Exhibit 9 at 7). On June 15, 2000, the bankruptcy court approved Deltapoint's First Amended Plan of Reorganization governing the estate's assets. Deltapoint' s official Statement of Financial Affairs in the bankruptcy proceedings, filed on February 18, 2000, reported that Eggers had paid only $80,000 of that $100,000, however. (Exhibit 9). The bankruptcy case is In re Site Technologies, Inc. dba Deltapoint, Inc.; Case No. 99-50736JRG-11 (Bankr. N.D. Cal.).

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Subsequently, on December 21, 2000, Deltapoint (a.k.a. Site Technologies, Inc.), the Califomia corporation, filed certificates with the California and Delaware Secretaries of State (Exhibits 11 & 12) stating that it merged itself and its subsidiary Libertech (a.k.a. Site/Technologiesllnc.) together, leaving Deltapoint as the surviving corporation.7 As a consequence of the December 2000 merger documents, all the assets of Libertech including title to the patents-in-suit - would have become the property of the surviving entity, Deltapoint (a.k.a. Site Technologies, Inc.). See Cal. Corp. Code § 1 107(a) ("Upon merger... the surviving corporation shall succeed, without other transfer, to all the rights and property of each of the disappearing corporations."). Also as a second consequence of the merger documents, Libertech (a.k.a. Site/Technologiesflnc.) would have ceased to exist. See Del. Code tit. 8, § 259(a) ("When any merger or consolidation shall have become effective under this chapter, the separate existence of all the constituent corporations ... shall cease."). The bankruptcy proceeding came to a close with the bankruptcy court's final decree on January 6, 2004. Pursuant to ¶ 14.2 of the First Amended Plan of Reorganization, which was approved by the bankruptcy court: All property of the Bankruptcy Estate shall vest in the Debtor subject to the terms and conditions of the Plan. All property of the Debtor, except as otherwise provided in the Plan, shall be free and clear of any liens, encumbrances, Claims of Creditors and Interests of Equity Security Holders. Consequently, Deltapoint's property emerged free and clear of any liens and claims.

C.

Egger's 2005 Assignment To Hiinself Was A Nullity And A Fraud

Egger formed Software Rights Archive, Inc. as a Delaware corporation in September 2004. Shortly before purporting to assign rights to the patents-in-suit to SRA, Egger executed a February 11, 2005 Assignment (again, the "2005 Assignment") in which he purported to be the President of the nonexistent Libertech (Site/Technologiesflnc.) and to assign Libertech's patent Just prior to fihing the merger certificates, Jeffrey Ait, Chief Executive Officer of Deltapoint, also filed a document (Exhibit 13) with the Delaware Secretary of State purporting to revive and renew Libertech's Certificate of Incorporation, which had expired on March 1, 1999.

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rights over to himself. A copy of the document that Egger executed and then recorded with the USPTO is attached as Exhibit 14. The 2005 Assignment, however, is a fraud and of no effect. First, at the time of the 2005 Assignment, Libertech was defunct and/or did not exist. (Exhibits 11 & 12). Therefore, it could not have owned the patents in 2005. Second, even if, at the time the 2005 Assignment was executed, Libertech did exist and did own the patents, Egger was not the President of Libertech (a.k.a. Site/Technologies/Inc.). Egger, therefore, had no authonty to assign whatever rights Libertech could have possessed. Thus, in the 2005 Assignment, Egger not only faisely stated that he was the President of a defunct and/or non-existent company that held title to the patents, but then proceeded to transfer those alleged rights to himself. The 2005 Assignment is no more than a fraudulent instrument designed to deceive Defendants, the USPTO, and the Court. D. SRA Acquired No Rights From Egger But Nonetheless Relied On The Void 2005 Assignment

After executing the purported assigmnent of the '352 and '494 patents to himself as an alleged officer of a defunct andlor nonexistent company, on February 22, 2005, Egger promptly assigned the rights that he purportedly acquired by virtue of the 2005 Assignment to his holding company, SRA, so that it could sue Defendants. (Exhibit 15). The foliowing table summarizes the various assignments and merger documents and their apparent legal effect:

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Legal Effect# Listed Assignor - Listed Assignee Title Holder Immediately beforeTransaction ________________ ________________ _________________ None Egger Deltapoint (a.k.a. Libertech (a.k.a. 1998 Bill of Site/Technologies/ Site Technologies, Sale and Title remains with Inc.) Inc.) Undated Libertech (a.k.a. Assignment of SitelTechnologies/ '352 patent ________________ ________________ ________________ Inc.) (Exhibit 10) By merger, title (not applicable) (not applicable) December 2000 Libertech (a.k.a. would transfer to Sitefrechnologies/ Merger of merged entity, Inc.) Deltapoint and Deltapoint (a.k.a. Libertech Site Technologies, (Exhibits 11 & 12) _________________ __________________ _________________ Inc.) None Egger defunct andior Deltapoint (a.k.a. February 11, Site Technologies, non-existent entity 2005 Assign- Libertech (a.k.a. Inc.) ment of '352 SiteiTechnologies/ and '494 patents ________________ ________________ Inc.) (Exhibit 14) None SRA Deltapoint (a.k.a. Egger February 22, Site Technologies, 2005 Inc.) Assignment of '352, '494 and '571 patents __________________ __________________ (Exhibit 15) # See Argument below. As demonstrated above, Egger never acquired the patents-in-suit and therefore had no rights to transfer to SRA. Nonetheless, Egger and SRA persist in relying on the 2005 Assignment to exploit the patents-in-suit and to attempt to wrongfully enforce them against Defendants. For example, when the '494 patent expired for failure to pay maintenance fees on November 4, 2006, Egger, acting as President of SRA, submitted a Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (Exhibit 16). In the accompanying statement declaring ownership (titled "Statement Under 37 C.F.R. 3.73(b)") (Exhibit 17), as required by USPTO regulations, Egger declared that SRA was "the assignee of the entire right, title, and interest" to the '494 patent. In this statement, SRA relied on the 2005 Assignment to establish ownership without disclosing that the assigning entity was defunct

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and/or had ceased to exist and did not own the patents, and that Egger had no authority to execute it. Even more, SRA further misrepresented the chain of title by omitting the slashes in the name of Sitei'Fechnologies/Jnc. (i.e., Libertech) so that it appeared to be the same entity as Site Technologies, Inc. (i.e., Deltapoint). SRA would not have been able to make the required showing of ownership without these misrepresentations and falsehoods. On November 21, 2007, SRA filed this action against Defendants. In its complaint, SRA averred that it was "the assignee of all right, title, and interest in and to" the '352 patent, and "the assignee of the '494 patent."8 As further explained below, SRA has no standing to bring this action, and consequently the Court lacks subject matter jurisdiction.
111. ARGUMENT A. Applicable Law

It is a basic principle of patent law that a party who lacks legal ownership of or substantially all the rights to a patent is without standing to sue for infringement of that patent.
See Lans v. Digital Equip. Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001) ("If a party lacks title to

a patent, that party 'has no standing to bring an infringement action' under that patent.") (citing
FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 1568, 1571 (Fed. Cir. 1991)). By statute, the

assignment of a patent from one partyto another must be done in writing. 35 U.S.C. § 261 ("Application for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing."); see also Enzo APA & Son, Inc., 134 F.3d at 1093 (holding that a virtual assignment, just like actual assignments, must be in writing). Without standing to bring an action for infringement, there is no subject matter junsdiction over the claim, requiring the action to be dismissed. Intellectual Prop. Dev., Inc. v.
TCI Cablevision ofCA, Inc., 248 F.3d 1333, 1345 (Fed. Cir. 2001), cert. denied, 534 U.S. 895

(2001). Once a defendant asserts lack 01 subject matter jurisdiction in a motion to dismiss, the
8 See 9['J[ 10, 15 and 20 of Plaintiff's Complaint. SRA did not aver that it had any rights to the

'571 patent.
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plaintiff bears the burden of establishing that the court has the requisite subject matterjurisdiction over the dispute. Lujan v. Defenders of Wild1fe, 504 U.S. 555, 560(1992). Because federal courts have limited jurisdiction, it is presumed that a suit lies outside these limits, and accordingly the burden of establishing federal jurisdiction rests on the party seeking the federal forum. Howery v. Alistate Ins. Go., 243 F.3d 912, 916 (5th Cir. 2001). B. SRA And Egger Never Acquired The Patents-In-Suit

It is undisputed that SRA's alleged rights are entirely derivative of Egger's. It is also undisputed that, as of June 1996, Libertech (a.k.a. Site/Technologies/Inc.) was the sole owner of the patents-in-suit based on assignments from the named inventors. Thus, the only issue is what rights, if any, Egger obtained from Libertech (a.k.a. Site/Technologiesllnc.) based on (1) the 1998 Assignment and (2) the 2005 Assigmnent. 1. The 1998 Assigmnent Did Not Transfer Title

Plaintiff cannot establish standing based on the 1998 Assignment because the patents were not owned by the transferor, Site Technologies, Inc. (referred to as Deltapoint herein). Instead, the patents were owned by Libertech, a subsidiary of Deltapoint who was not even a party to the 1998 Assignment. (See Exhibit 10). As a result, the 1998 Assignment could not have transferred title to Egger. Under the Patent Act, patent assignments must be in writing to be effective. 35U.S.C. § 261. Although Deltapoint owned all the shares of Libertech in 1998, there is no written assignment on record at the U.S. Patent Office that transfers title in the patents from Libertech to Deltapoint. In the absence of such a written conveyance to Deltapoint prior to the 1998 Assignment, Libertech, and not its parent Deltapoint, remained the sole owner of the patents-insuit.9 Defendants are unaware of any assignment from Libertech to Deltapoint and have asked Plaintiff's counsel to provide documents establishing chain of title. Rather than do so, Plaintiff's counsel has pointed to statements in two of Deltapoint's SEC fihings and alluded to other unspecified documents. In the first SEC fihing, Deltapoint suggested that its stock purchase agreement (Exhibit 6) included "all outstanding assets of" Libertech. But, this
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Moreover, Libertech' s mere status as a subsidiary of Deltapoint also did not vest Deltapoint with ownership of the patents. To the contrary, the distinctiveness of each corporate entity must be respected. As the Supreme Court explained in Dole Food Go. v. Patrickson, "[a] corporate parent which owns the shares of a subsidiary does not, for that reason alone, own or have legal title to the assets of the subsidiary." 538 U.S. 468, 475 (2003). Likewise, the Federal Circuit has held that the owner of a patentee does not itself have standing to sue for patent infringement. Lans, 252 F.3d at 1328. The plaintiff in Lans was the sole owner of a non-operational holding company which held legal title to the asserted patents.
Id. at 1324-25. The Federal Circuit affirmed that there was no jurisdiction because the plaintiff lacked standing. Id. at 1328; see also LDM Techs., Inc. v. Rowen-Waters Group, LLC, No. 02-

73520, 2005 WL 2449300, at *2 (E.D. Mich. Sept. 28, 2005) ("[T]here is no authority which confers standing on a parent company to file a patent suit on behalf of its subsidiary"). Because the sole owner of a patentee has no standing to sue for patent infringement, such a parent also cannot by assignment grant a third party sufficient title to do so. Thus, Deltapoint (a.k.a. Site Technologies, Inc.), despite being Libertech's (a.k.a. Site/Technologies/Inc.' s) parent by virtue of having acquired all of Libertech's shares (see Exhibit 6), could not, and did not, transfer any rights to the patents-in-suit to Egger by way of the 1998 Assignment. In fact, SRA and Egger conceded this point when Egger concocted the fraudulent 2005 Assignment, in which he declared that, as of that date, Site/Technologiesflnc. (i.e., Libertech) was "the owner of the patent(s) identified on Schedule A" namely the '352 and '494 patents and

statement did not even mention the patents-in-suit, and moreover mischaracterized the stock purchase agreement (Exhibit 6) as an asset purchase. In the second SEC fihing, Deltapoint stated that, on September 30, 1998, it had "consummated the sale of its V-Search technology and related patents" for $ 100,000. This document, too, fails to establish a valid transfer of the patents from Libertech to Deltapoint. Deltapoint subsequently retreated from this representation, reporting to the bankruptcy court that it had received only $80,000 from Egger. (Exhibit 9). Regardless of the factual discrepancies in these documents, neither is a written conveyance establishing an unbroken chain of title from Libertech to Egger. Plaintiff cannot rely on inaccurate SEC filings to bridge a gap in the chain of title. (As discussed below, the absence of such a link motivated Egger to create such a document in February 2005, albeit a fraudulent one.)
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then purported to transfer "the entire right, title, and interest in and to the Patents" to himself. (Exhibit 14). In other words, despite the alleged 1998 sale of the "V-Search" technology to Egger by the parent Deltapoint, its subsidiary Libertech (a.k.a. Site/Technologies/Inc.) retained alt rights to the patents at that time. 2. The 2005 Assignment Transferred No Rights

Given that the 1998 Assignment did not convey the patents-in-suit to Egger, SRA must rety on the 2005 Assignment (Exhibit 14). Egger executed this document himself on behalf of Libertech as its supposed President and purported to assign the '352 and '494 patents (but not the '571 patent) to himsetf as an individuat. However, the 2005 Assignment failed to transfer any rights to Egger for the simple reasons that, by February 11, 2005, Libertech was defunct and/or did not exist, and even if it did, it no longer owned the patents and Egger was not its President. Exhibits 11 and 12 to this motion indicate that this Delaware corporation (Libertech, a.k.a. Site/Technologies/Inc.) merged into a California corporation (Dettapoint, a.k.a. Site Technotogies, Inc.) on December 21, 2000. By operation of Detaware taw, Det. Code tit. 8, § 259(a), Libertech, the owner of the patents before the merger, woutd have then ceased to exist. A purported assignment by a non-existent entity that cannot own any property is obviously nult and void. Furthermore, all of Libertech's property woutd have been subsumed by the entity emerging from the merger, Deltapoint, a Catifornia corporation. See Cat. Corp. Code § 1 107(a) and at page 5 above. Thus, after the merger on December 21, 2000, Deltapoint (a.k.a. Site Technotogies, Inc.) woutd have owned the patents-in-suit. On February 11, 2005, Egger also coutd not have been President of the defunct andlor non-existent Libertech. Egger had previousty transferred all his shares in Libertech to Dettapoint pursuant to the 1997 Stock Exchange Agreement (see in particutar § I.1.c of Exhibit 6 at 1-2). In the merger documents (Exhibits 11 & 12), Deltapoint declared that, immediately prior to the merger, Dettapoint owned alt shares in Libertech. Nothing suggests that Egger was ever made President of Libertech after Deltapoint acquired ownership of alt stock in Libertech in 1997. In

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any event, no President of Libertech could have so transferred the patents to himself without the approvals required by law, i.e., consent of the board of directors (then no longer existing) and pertinent approvals under bankruptcy law.'° Indeed, the 2005 Assignment appears to be nothing more than a fiction concocted by Egger to bridge the missing link in the chain of title!' Egger appears to have been fully aware that the purported 1998 Assignment was ineffective and reso!ved to take title instead by pretending to be President of the defunct and/or non-existent Libertech. But a party cannot take by assignment more rights than the assignor had. TM Patents, L.P. v. Int'l Bus. Machs. Corp., 121 F. Supp. 2d 349, 365 (S.D.N.Y. 2000) ("[A]n assignee [cannot obtain] any tit!e better than the assignor had."). Hence, SRA, like Egger, did not obtain any rights to the patents-in-suit by way of the 2005 Assignment. It was nothing more than a sham transaction perpetrated upon the USPTO, and ultimately Defendants and this Court. 3. No Document Grants SRA Title

Because neither the 1998 Assignment nor the duplicitous 2005 Assignment conveyed the patents-in-suit to Egger, SRA did not acquire any rights to the patents from Egger and consequently has no standing to bring this action. Absent subject matterjurisdiction, this case must be dismissed. Intellectual Prop. Dev., Inc., 248 F.3d at 1345. Iv. CONCLUSION For the reasons stated, this Court lacks subject matter jurisdiction over this case. The case should be dismissed.

10

11 Plaintiff's

See Footnote 4. counsel has not provided any explanation for the 2005 Assignment.

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Dated: July 16, 2008

Respectfully submitted, By: Is/Thomas B. Walsh, 1V Juamta R. Brooks - Lead Attomey (CA Bar No. 75934) E-mail: [e-mail] Fish & Richardson P.C. 12390 El Camino Real San Diego, CA 92130
Telephone: [phone] Facsimile: [phone]

Thomas B. Walsh, W Texas BarNo. 00785173 Fish & Richardson P.C. 5000 Bank One Center 1717 Main Street Dailas, TX 75201 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] Harry L. Gillam, Jr. Texas BarNo. 07921800 E-mail: [e-mail] Melissa R. Smith Texas BarNo. 24001351 E-mail: [e-mail] GILLAM & SM1TH, L.L.P. 303 South Washington Avenue Marshall, TX 75670 Telephone: [phone] Facsimile: [phone] Attorneys for Defendants GOOGLE INC. and AOL LLC

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By: /sfRichard 5. J. Hung (by permission) Michael A. Jacobs (CA Bar No. 111664) Richard 5. J. Hung (CA Bar No. 197425) MORRISON & FOERSTER 425 Market Street San Francisco, CA 94105 Telephone: [phone] Facsimile: 415-268-7522 Email: [e-mail] Email: [e-mail] Michael E. Jones Texas Bar No. 10929400 Potter Minton, A Professional Corporation 110 North College, Suite 500 Tyler, Texas 75702 Telephone: [phone] Facsimile: [phone] Email: [e-mail] Attomeys for Defendant YAHOO! INC.

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By: Isi Claude M. Stem (by permission) Claude M. Stem (CA Bar No. 96737) Jennifer A. Kash (CA Bar No. 203679) QUINN EMANUEL URQUHART OLWER & HEDGES, LLP 555 Twin Dolphin Drive, Suite 560 Redwood Shores, CA 94065 Telephone: [phone] Facsimile: [phone] Email: [e-mail] Email:[e-mail] Otis Carroll Tex. Bar No. 03895700 Collin Maloney Tex. BarNo. 00794219 IRELAND, CARROLL & KELLEY, P.C. 6101 S. Broadway, Suite 500 Tyler, Texas 75703 Tel: [phone] Fax: [phone] Email: [e-mail] Attorneys for Defendants IAC SEARCH & MEDIA, INC. and LYCOS, INC.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on July 16, 2008 on all counsel of record who are deemed to have consented to electronic service via the Court's CMI.ECF system per Local Rule CV-5(a)(3). IslThomas B. Walsh. W Thomas B. Walsh, TV

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IN THE UNITEDSTATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION SOFTWARE RIGHTS ARC}IIVE, LLC § § Plaintiff, § §
v. § §

Civil Action No. 2:07-cv-511-TJW

GOOGLE INC., YAHOO! INC., § IAC SEARCH & MEDIA, INC., AOL LLC, § and LYCOS, INC. § § Defefldants.

JURY TRIAL DEMANDED

DECLARATION OF J. CHRISTOPIIER LYNCU ( 1, J. Christopher Lynch, under penalty ofperjury, hereby make the foliowing declaration.

All façts set forth herein are true and correct, and 1 make this declaration based upon my personal knowledge and upon review ofavailablerecords. 1..\ 1 am a partner at Wyrick Robbins Yátes & Ponton LLP and my. practice is primarily outside general counsel representation of technology-based businesses. 1 assisted Dazue! Egger in aspects of the 1998 acquisition of the V-Search Technology and patents from
Site Technologies, Inc. (the "V-Search Acquisition") and in the subsequent fihing of an

assignment m 2005 (the "2005 Assignment"). A true and correct copy of the 2005 Assignment is attached hereto as Exhibit A. 2. 1 understand that certain defendants in the Software Rights Archive LLC v.

Google, et aL, case pending in the Eastem District of Texas have accused .Daniel Egger of

fraudulently filing the 2005 Assigmnent for the express purpose of correcting a defect with respect to the name of the party conveying the patents he acquired in the V-Search Acquisition. This aliegation is based upon a number offactual inaccuracies.
16573.5-547719 v2

EXHIBIT 21

1

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3.

1 was the attomey who supervisedmy staff in the preparation of, and who advised

Daniel Egger to file, the 2005 Assignment. The purpose of filing the 2005 Assigninent was not to conect any defect in the name of the party on the mstrument. 1 did not understand there to be any distinction between the entity from which Daniel Egger purchased the patents in question ("Site Technologies, Inc." and "Site/Tàchnologies/Inc. at the tirne of the 2005 assignment. The first time I'heard ofthis issue was after the flhing ofthe-Defendants' Motion to Dismiss. Nor did DanieI Egger raise this issue with me in 2005 or anytime prior to the defendants' aliegation. Daniel Egger never rais.ed any issue with respect to the validity of the 1998 Bill of Sale oi assignments with me and never questioned the validity ofhis chain oftitle. 4. The 2005 Assignment was filed to replace the then-misplaced 1998 Bill of Sale

and the 199.8 Assignment used in the V-Search Acquisition. In or prior to October 2004, Daniel Egger had,iced me to assign the patents to an entity named Software Rights Archive, Inc. When my .staff reviewed the records at the Patent and Trademark Offlce (the "PTO"), we discoveredfthat no previous assignrnent had yet been filed. 1 did not have a copy ofthe 1998 Bill of Sale or 1998 Assignrnent, so 1 asked Daniel Egger to locate them. He toldme that he could not locate them. 1 advised him to file a replacement assignnient reflecting the previous transaction. 1 then supervised my staff in the preparation of the 2005 Assignment and Daniel Egger executed it without further revision. 1 understand . that Daniel Egger later found the missing 1998 Bill of Sale and the 1998 Assigninent and filed them with. the Patent and Trademark Office. 5. My understandiñg is that the Defendants aliege that Darnel Egger intentionally

represented that he w'as a president of Site/Tcchnologies/Inc. and flled the 2005 Assignment to mislead others as to his ownership rights. 1 had advised"Daniel Egger to sign as the president of

6573.5-5477I9 v2

2 /

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Site/Technologies/Inc. The basis for such advice was that, in 2005, the Site entities were no longer operating companies and a foriner officer or other agent needed to sign the 2005 Assignment. It was my belief that Daniel Egger retained a right to execute documents related to winding up past business. transactions because he was a former president of Site/Tecbnologies/lnc. Because we were merely attempting to replicate the lost 1998 Assignment that we understood hád already been made, it was my understanding that these actions were .fairly within the winding up authorityof the companies, which were no longer operating. 1 was not aware of any issue with respect to whether the 1998 Assignment properly conveyed legal title to Daniel Egger. 1 understood it was a valid transfer. My recommendation to make Site/Technologies/Inc. a arty to the 2005 Assignment was driven by Daniel Eggr's status as a former officer and not an attempt to correct any error with respect to thenameQfthepartyonthe l998Assignrnent.

1 declare under penalty of perjury under thó laws of the United States of America that the foregoing is true and correct.

derLch4 Executed on

7 2008

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1

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1 2 3 4 5 6 7 8 9 10 12. 12 13 14 15 16 17 18 19 20 21 22 23 24 25
Doemer & Goldberg -- A Veritext Company Florham Park, NJ -- Shrewsbury, NJ [phone]

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116 1 A. Yes. 1 name change with the U.S. Patent Office? Q. And in paragraph 3 ofyour Declaration, you 2 2 A. We -- 1 assume this is what you're interested 3 in -- we also filed an assignment from Slash to Daniel 3 taik about the purpose of fihing the 2005 Slash 4 assignment; is that correct? 4 Egger. 5 A. That's correct. 5 Q. And when did you do that? Q. And you state in part that the purpose of 6 6 A. In February 2005. 7 fihing the 2005 Slash assignment was not to correct any 7 Q . I'm going to hand you what's been marked as 8 defect in the name of the party on the instrument; is 8 Exhibit 42. 9 that correct? 9 (Lynch Exhibit 42 marked for identification.) 10 A. That's correct. 10 BY MR. BAKER: 11 11 Q. Do you recognize that document? Q . 1 guess, later in the Declaration, in paragraph 12 4, you state that your intention was to file a 12 A. Yes, 1 do. 13 replacement assignment reflecting the previous 13 Q. What is it? 14 transaction; is that right? 14 A. It is a patent assignment from Slash to Daniel 15 A. That's right. 15 Egger with respect to the 494 and 352 patents. Q. And the previous transaction you're referring Q. Okay. And what's the date ofthis assignment? 16 16 17 to there is the 1998 bill ofsale and assignment that 17 A. Executed February 11, 2005. 18 we talked about earlier; is that right? 18 Q. Ifyou look at t