Elan Microelectronics Corporation v. Apple, Inc.

Filing 139

DECLARATION of Sean P. DeBruine in Opposition to 138 Memorandum in Opposition, filed byElan Microelectronics Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S, # 20 Exhibit T, # 21 Exhibit U, # 22 Exhibit V)(Related document(s) 138 ) (DeBruine, Sean) (Filed on 7/15/2010)

Elan Microelectronics Corporation v. Apple, Inc.

Doc. 139

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Yitai Hu (SBN 248085) ([e-mail]) Sean P. DeBruine (SBN 168071) ([e-mail]) Elizabeth H. Rader (SBN 184963) ([e-mail]) Jennifer Liu (SBN 268990) ([e-mail]) ALSTON & BIRD LLP 275 Middlefield Road, Suite 150 Menlo Park, California 94025 Telephone: [phone] Facsimile: 650-838-2001 T. Hunter Jefferson (admitted pro hac vice) ([e-mail]) ALSTON & BIRD LLP One Atlantic Center 1201 West Peachtree Street Atlanta, Georgia 30309 Telephone: [phone] Facsimile: 404-881-7777 Attorneys for Plaintiff and Counterdefendant ELAN MICROELECTRONICS CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

ELAN MICROELECTRONICS CORPORATION, Plaintiff and Counterdefendant, v. APPLE, INC., Defendant and Counterclaimant. AND RELATED COUNTERCLAIMS I, Sean P. DeBruine, declare as follows: 1.

Case No. 09-cv-01531 RS DECLARATION OF SEAN P. DEBRUINE IN SUPPORT OF ELAN MICROELECTRONICS CORPORATION'S OPPOSITION TO APPLE INC.'S MOTION TO DISMISS DATE: TIME: JUDGE: CTRM: August 5, 2010 1:30 p.m. Richard Seeborg Courtroom 3, 17th Floor

I am a partner in the law firm of Alston & Bird LLP, counsel to Plaintiff Elan

Microelectronics Corporation ("Elan"). I have personal knowledge of the following facts, except those facts stated on information and belief, which facts I believe to be true. If called to testify I could and would testify competently to the matters stated herein.
DECLARATION OF DEBRUINE ISO ELAN'S OPPOSITION TO APPLE'S MOTION TO STRIKE

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2.

On May 25, 2010, Defendant Apple Inc. ("Apple") filed its Third Amended

Answer, Affirmative Defenses, and Counterclaims to Elan Microelectronics Corporation's Complaint (Dkt. No. 96), in which Apple alleges that Elan is infringing claims 1, 2, 3 and 5 of U.S. Patent No. 5,764,218 ("the '218 patent"). Attached hereto as Exhibit A is a true and correct copy of the '218 patent. 3. On May 25, 2010, I took the deposition of Mr. Mark Della Bona, one of inventors

named on the'218 patent. Attached hereto as Exhibit B are true and correct copies of selected pages from the transcript of the May 25, 2010 deposition of Mr. Della Bona, designated by Apple as "Confidential." (FILED UNDER SEAL). 4. After the deposition, Elan added the inequitable conduct allegations against the

'218 patent inventors and others involved in prosecuting the '218 patent application in its Answer and Counterclaims in Response to Apple's Third Amended Answer (Dkt. No. 118), which was filed on June 8, 2010. Attached hereto as Exhibit C is a true and correct copy of Elan's Answer and Counterclaims in Response to Apple's Third Amended Answer. 5. On May 24, 2010, Apple produced documents that it represented were found in the

files of the attorneys who prosecuted the '218 patent. Among the documents produced were detailed Interface Specifications for the GlidePoint® touch pad. In particular, those documents included the "GlidePoint Serial/Parallel Interface SPECIFICATION," (APEL0056352 ­ APEL0056357) and "GlidePoint PS/2 Interface SPECIFICATION," (APEL0056358 ­ APEL0056367). Both documents were also entitled "Rev. 19940707," indicating a date of July 7, 1994. Attached hereto as Exhibit D is a true and correct copy of the "GlidePoint Serial/Parallel Interface SPECIFICATION," designated by Apple as "Confidential." (APEL0056352 ­ APEL0056357). (FILED UNDER SEAL). Attached hereto as Exhibit E is a true and correct copy of the "GlidePoint PS/2 Interface SPECIFICATION," designated by Apple as "Confidential." (APEL0056358 ­ APEL0056367). (FILED UNDER SEAL). // // //
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6.

Attached hereto as Exhibit F is a true and correct copy of the '218 patent

application dated January 31, 2005 from the prosecution history of the '218 patent. 7. Attached hereto as Exhibit G is a true and correct copy of the text of an article

appearing in the May 17, 1994 edition of PC Magazine entitled "Touch 'n' Point." (ELN538901). 8. Attached hereto as Exhibit H is a true and correct copy of the text of an article

appearing in the July 1994 edition of PC World magazine entitled "Trackball Alternative: Let Your Finger Do the Mousing." (ELN538902). 9. Attached hereto as Exhibit I is a true and correct copy of the text of an article

appearing in the November 7, 1994 edition of InfoWorld magazine entitled "Let your finger do the pointing with GlidePoint." (ELN538905). 10. Attached hereto as Exhibit J is a true and correct copy of the text of an article

appearing in the October 17, 1994 edition of InfoWorld magazine entitled "Alps unveils GlidePoint pad." (ELN538906). 11. Attached hereto as Exhibit K is a true and correct copy of the text of an article

appearing in the September 19, 1994 edition of Government Computer News magazine entitled "Trackball getting on your nerves? Try GlidePoint." (ELN538903). 12. Attached hereto as Exhibit L is a true and correct copy of the text of an article

appearing in the September 13, 1994 edition of PC Magazine entitled "GlidePoint: finger navigation." (ELN538904). 13. Attached hereto as Exhibit M is a true and correct copy of the text of an article

appearing in the May 30, 1994 edition of PC WEEK magazine entitled "We've Built A Better Mouse; Now We Need A Better Trap," produced and designated by Apple as "Confidential." (APEL0405502). (FILED UNDER SEAL). 14. Attached hereto as Exhibit N is a true and correct copy of the text of an article

appearing in the May 9, 1994 edition of PC WEEK magazine entitled "Cirque's GlidePoint technology could cure track ball-mung blues." (ELN538909). // //
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15.

Attached hereto as Exhibit O is a true and correct copy of the text of an article

appearing in the November 1994 edition of PC World magazine entitled "POINTERS in the Right Direction." (ELN538910 ­ ELN538911). 16. Attached hereto as Exhibit P is a true and correct copy of the text of an article

appearing in the August 12, 1994 Chicago Tribune newspaper entitled "Cirque's GlidePoint Reinvents the Mouse Tap." (ELN538915 ­ ELN538916). 17. Attached hereto as Exhibit Q is a true and correct copy of the text of an article

appearing in the June 5, 1994 Salt Lake Tribune newspaper. (ELN538917 ­ ELN538918). 18. Attached hereto as Exhibit R is a true and correct copy of the text of an article

appearing in the May 2, 1994 edition of Computerworld magazine entitled "Trackball alternative shows promise," produced and designated by Apple as "Confidential.". (APEL0405505). (FILED UNDER SEAL). 19. Attached hereto as Exhibit S is a true and correct copy of the text of an article

appearing in the June 1, 1994 edition of BYTE magazine entitled "News & Views: POINTING DEVICES Apple, Cirque Unveil Trackball Alternative," produced and designated by Apple as "Confidential." (APEL0405503). (FILED UNDER SEAL). 20. Attached hereto as Exhibit T is a true and correct copy of "TECHNOLOGY

DEVELOPMENT AND LICENSE AGREEMENT between APPLE COMPUTER, INC. and PROXIMA, INC.," dated May 15, 1990, designated by Apple as "Confidential." (APEL0405576 ­ APEL0405594). (FILED UNDER SEAL). 21. Attached hereto as Exhibit U is a true and correct copy of a letter between Mr.

Della Bona and Cirque's president Mr. George Gerpheide regarding the interpretation of the license agreement with respect to Cirque's sale of the GlidePoint® touch pad and whether Cirque could acknowledge to the public that Apple's touch pad was based on Cirque's design, dated June 2, 1994, designated by Apple as "Confidential." (APEL0405498 ­ APEL0405499). (FILED UNDER SEAL). // //
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22.

Attached hereto as Exhibit V is a true and correct copy of an Amendment dated

December 23, 1996 from the prosecution history of the '218 patent. I swear under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on July 15, 2010, at Menlo Park, California.

/s/ Sean P. DeBruine Sean P. DeBruine

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