Elan Microelectronics Corporation v. Apple, Inc.
Filing
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EXHIBITS re 288 Declaration in Support, /Exhibits 9, 10, and 11 to the Declaration of Jane H. Bu in Support of Elan Microelectroncis Corporation's Opposition to Apple, Inc.'s Motion to Compel (Public Versions) filed byElan Microelectronics Corporation. (Attachments: # 1 Exhibit 10, # 2 Exhibit 11)(Related document(s) 288 ) (Bu, Jane) (Filed on 6/17/2011)
EXHIBIT 10
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YITAI HU (SBN 248085)
yitai.hu@alston.com
SEAN P. DEBRUINE (SBN 168071)
sean.debruine@alston.com
ELIZABETH H. RADER (SBN 184963)
elizabeth.rader@alston.com
JANE HAN BU (SBN 240081)
jane.bu@alston.com
JENNIFER LIU (SBN 268990)
celine.liu@alston.com
PALANI P. RATHINASAMY (SBN 269852)
palani.rathinasamy@alston.com
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ALSTON & BIRD LLP
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275 Middlefield Road, Suite 150
Menlo Park, CA 94025-4008
Telephone:
650-838-2000
Facsimile:
650-838-2001
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Attorneys for Plaintiff and Counterdefendant
ELAN MICROELECTRONICS
CORPORATION
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN FRANCISCO DIVISION
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ELAN MICROELECTRONICS
CORPORATION,
Case No. 09-cv-01531 RS (PSG)
DECLARATION OF WAYNE CHANG IN
SUPPORT OF ELAN
MICROELECTRONICS
CORPORATION'S OPPOSITION TO
APPLE, INC.'S MOTION TO COMPEL
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Plaintiff and Counterdefendant,
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v.
APPLE, INC.,
Defendant and Counterplaintiff.
AND RELATED COUNTERCLAIMS
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DECL. OF WAYNE CHANG ISO ELAN'S OPP'N TO
APPLE'S MOT. TO COMPEL
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Case No. 09-cv-01531 RS (PSG
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I, Wayne Chang, declare as follows:
I.
Elan IPR and Legal Department
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I am the Director of IPR and Legal Department for Elan Microelectronics
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Corporation ("Elan"). I have personal knowledge of the following facts and if called to testify I
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could and would testify competently to the matters stated herein.
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2.
Elan's IPR and Legal Department handles all of Elan's legal matters related to IP,
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such as filing and maintaining patent and trademark applications; overseeing the purchase, transfer
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and licensing of Elan's IP portfolios, and overseeing contracts and litigation relating to IP.
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3.
I have a B.S. degree in electronics engineering, and I have formal legal training
from the National Chiao Tung University ("NCTU"), Institute of Technology Law.
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I have been the acting general counsel and legal director of Elan since I joined the
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firm in 1994, and during my tenure at Elan, I oversee all IP related legal matters that Elan has been
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involved in, including litigation and licensing matters.
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I have been actively participating in all IP legal matters of Elan and I am
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considered by my subordinates, the employees of Elan and Elan's outside counsel, for all purposes,
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to be the general counsel of Elan.
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Currently I supervise seven employees. Of these employees, one has a LL.B.
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degree, three have a LL.M. degree (one from the Southern Methodist University), two are patent
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engineers (similar to patent agents) and one legal assistant.
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7.
Mr. Nick Lin is the associate manager of Elan's IPR and Legal Department,
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dedicated in handling IP related matters. Mr. Lin has a B.S. in mechanical engineering and has a
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LL.M. degree. In addition to being a patent engineer for Elan, much of Mr. Lin's patent
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evaluation work or analysis is done in support of various Elan U.S. patent and IP litigation and
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licensing matters.
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8.
I also act as the conduit between Elan and Elan's outside counsel for IP related
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matters. As Elan relies primarily on its outside counsel for most of the U.S. legal matters, many of
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the tasks I assigned to my subordinates or employees of Elan are under the request and direction of
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Elan's outside counsel. Communications between Elan's employees and I, and between Elan's
DECL. OF WAYNE CHANG ISO ELAN'S OPP'N TO
APPLE'S MOT. TO COMPEL
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Case No. 09-cv-01531 RS (PSG)
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counsel and I, for purposes of seeking legal advice, are intended and expected to be confidential.
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IL
Elan's Relevant Litigations
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Elan started its license negotiation with its competitor Synaptics, Inc. ("Synaptics"),
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one of the world's largest suppliers of capacitive touchpad products, around 2003 to 2004. During
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the course of the negotiations, both parties threatened the other side with patent infringement
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claims.
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The negotiations led Elan to file suit against Synaptics on March 10, 2006, in the
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district court for the Northern District of California. Synaptics countersued Elan, and filed a
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separate suit against Elan, alleging Elan infringed five of its patents. After several favorable
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rulings by the court in the case filed by Elan, the lawsuits were settled in October 2008. In late
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2008, Elan licensed U.S. Patent No. 5,825,352 ("the 352 patent") to Synaptics.
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From 2005 to 2008, members of Elan's IPR and Legal Department, including
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myself, were actively engaged in pre-suit evaluations, including interfacing with Elan's outside
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counsel, regarding negotiations with other potential licensees of the 352 patent.
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In addition to the Synaptics litigation, Elan has been attempting to license the 352
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patent to Apple since at least August, 2006. Members of the Elan IPR and Legal Department,
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including myself, have been actively supporting Elan's efforts.
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III. Common Legal Interest With Elan Customers
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Elan is a component supplier to many downstream electronics makers in the world.
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Therefore, once Elan is sued for patent infringement, Elan's customers faced similar risks for the
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same infringement claims. As an example, in 2006, Synaptics sued Prostar and Averatec, two of
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Elan's customers, for the infringement of Synaptics patents for selling and using products
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incorporating the allegedly infringing Elan devices.
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DECL. OF WAYNE CHANG ISO ELAN'S OPP'N TO
APPLE'S MOT. TO COMPEL
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Case No. 09-cv-01531 RS (PSG)
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15.
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I swear under penalty of perjury under the laws of the United States that the foregoing is
true and correct. Executed this 14th day of June, 2011, in Hsinchu, Taiwan.
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Chang
LEGAL02/32684516v2
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DECL. OF WAYNE CHANG ISO ELAN'S OPP'N TO
APPLE'S MOT. TO COMPEL
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Case No. 09-cv-01531 RS (PSG)
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