Elan Microelectronics Corporation v. Apple, Inc.

Filing 408

Declaration of Jane H. Bu in Support of 406 Objection 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)(Related document(s) 406 ) (Bu, Jane) (Filed on 8/22/2011)

EXHIBIT A

Case5:09-cv-01531-RS Document299-1

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Filed06/17/11 Page2 of 5

YITAI HU (SBN 248085)
[e-mail]
SEAN P. DEBRUINE (SBN 168071)
[e-mail]
ELIZABETH H. RADER (SBN 184963)
[e-mail]
JANE HAN BU (SBN 240081)
[e-mail]
JENNIFER LIU (SBN 268990)
[e-mail]
PALANI P. RATHINASAMY (SBN 269852)
[e-mail]

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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

Case5:09-cv-01531-RS Document299-1

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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.
4.

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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5.

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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6.

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)

Case5:09-cv-01531-RS Document299-1

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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
9.

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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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11.

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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12.

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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13.

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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14.

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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 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)