Elan Microelectronics Corporation v. Apple, Inc.

Filing 181

Declaration of Sean P. DeBruine in Support of 180 MOTION for Leave to File Elan's Unopposed Motion for Leave to Amend Invalidity Contentions Pursuant to Patent L.R. 3-6 filed byElan Microelectronics Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Related document(s) 180 ) (DeBruine, Sean) (Filed on 10/25/2010)

Elan Microelectronics Corporation v. Apple, Inc.

Doc. 181

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YITAI HU (SBN 248085) [e-mail] SEAN P. DEBRUINE (SBN 168071) [e-mail] ELIZABETH H. RADER (SBN 184963) [e-mail] TSAI-YU (APRIL) CHEN (SBN 264523) [e-mail] JANE HAN BU (SBN 240081) [e-mail] JENNIFER LIU (SBN 268990) [e-mail] ALSTON & BIRD LLP 275 Middlefield Road, Suite 150 Menlo Park, CA 94025-4008 Telephone: [phone] Facsimile: 650-838-2001 Attorneys for Plaintiff and Counterdefendant ELAN MICROELECTRONICS CORPORATION

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

ELAN MICROELECTRONICS CORPORATION, Plaintiff, v. APPLE, INC., Defendant.

Case No. 09-cv-01531 RS (PVT) DECLARATION OF SEAN P. DEBRUINE IN SUPPORT OF ELAN'S UNOPPOSED MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS PURSUANT TO PATENT L.R. 3-6 JURY TRIAL DEMANDED DATE: November 30, 2010 TIME: 10:00 a.m. JUDGE: Patricia V. Trumbull CTRM: 5, 4th Floor

AND RELATED COUNTERCLAIMS

DECLARATION OF SEAN P. DEBRUINE ISO ELAN'S MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS

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I, Sean DeBruine, declare: I am a partner with the law firm of Alston & Bird, LLP, counsel for Plaintiff and CounterDefendant Elan Microelectronics Corporation ("Elan") in the above-captioned matter. I submit this declaration based on personal knowledge and following a reasonable investigation. If called upon as a witness, I could competently testify to the truth of each statement herein. 1. Pursuant to Pat. L.R. 3-3, on December 7, 2009 Elan served Apple with Elan's

Invalidity Contentions concerning Apple's asserted U.S. patents no. 5,764,218 ("the '218 patent"), 7,495,659 ("the '659 patent") and 6,933,929 ("the '929 patent"). On May 25, 2010 Apple filed its Third Amended Answer and Counterclaims [Dkt. No. 96] in which Apple dropped its allegation that Elan was infringing the `929 patent. 2. Elan's December 7, 2009 Invalidity Contentions disclosed the prior invention, sale,

offer for sale and public use Cirque Corporation GlidePoint product as invalidating prior art to the `218 patent, and the GlidePoint User's Guide as an invalidating publication. During a previous case, Elan had taken discovery of Cirque. That discovery, including source code produced by Cirque and discussed by its deposition witnesses, was designated as "Attorneys' Eyes Only." As of the parties' initial invalidity contentions the Stipulated Protective Order had not yet been entered, Elan did not disclose the details of the confidential Cirque materials in those disclosures. Upon entry of the Protective Order Elan produced the confidential discovery, including source code and deposition transcripts for the Cirque witnesses, as well as Elan's invalidity contentions applying that evidence to claims asserted in the previous litigation that are very similar to the asserted claims of Apple's `218 patent in this matter. 3. In its December 7, 2009 Invalidity Contentions Elan also disclosed various

products and publications from MicroTouch Systems, Inc. as prior art. On April 28, 2010, pursuant to a subpoena served by Elan to 3M Inc., the current owner of MicroTouch produced documents to Elan and Apple. Several of those documents evidence additional prior art relevant to the asserted Apple patents. 4. U.S. patent 5,463,388 to Boie et al ("the '388 patent") was cited by the PTO during

prosecution of Elan's asserted '352 patent. Upon further review of the '352 file history last
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spring, it became apparent that the '388 patent was also relevant prior art to Apple' s '218 patent. On April 22, 2010 in an email to Ms. Sonal Mehta, Esq., Apple's counsel, I notified Apple of its intention to supplement its invalidity contentions to disclose the '388 patent and provide the proposed amended invalidity contentions and claim chart. A true and correct copy of that email is attached hereto as Exhibit A. 5. Elan's Preliminary Invalidity Contentions also asserted a patent granted to

Synaptics, Inc. as prior art to Apple's '659 patent. Upon further investigation, Elan concluded that another Synaptics patent, U.S. Patent No. 5,943,052 is also additional prior art. Elan's Supplemental Contentions add analysis of that new Synaptics patent. 6. Two months after Elan proposed that the parties stipulate to Elan's proposed

amended invalidity contentions, Apple proposed amending its contentions. Attached as Exhibit B is a true and correct copy of an email chain between Ms. Sonal Mehta and myself, which includes emails dated June 22, 2010, June 25, 2010, and August 23, 2010. As set forth in that email correspondence, Elan agreed with that proposal, and indicated that it anticipated it would further amend its contentions. In June, 2010 the parties prepared for and participated in the Claim Construction Hearing in this matter, and in August 2010 the parties conducted a Claim Construction hearing in the parallel International Trade Commission investigation. For these and other reasons the matter of amended invalidity contentions was not pursued further by the parties. 7. On September 20, 2010 Apple filed its Unopposed Motion for Leave to Amend

Invalidity Contentions. 8. On October 12, 2010 Elan provided its current proposed Amended Invalidity

Contentions. Apple initially agreed that the parties stipulate to each other's proposed amended invalidity contentions. Attached as Exhibit C is a true and correct copy of an email chain between Ms. Sonal Mehta and my colleague Ms. Jane Bu between October 12 to October 20, 2010, reflecting that agreement. However, on October 18, 2010 the Court granted Apple's Unopposed Motion for Leave to File its amended contentions. As such, Apple indicated that it would no longer stipulate, but that it would not oppose Elan's motion. I declare under the penalty of perjury under the laws of the United States of America that
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the foregoing is true and correct. Executed on October 25, 2010, at Menlo Park, California.

/s/ Sean P. DeBruine Sean P. DeBruine
LEGAL02/32234388v2

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