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)

Download PDF
EXHIBIT A Case5:09-cv-01531-RS Document299-1 1 2 3 4 5 6 Filed06/17/11 Page2 of 5 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 7 ALSTON & BIRD LLP 8 275 Middlefield Road, Suite 150 Menlo Park, CA 94025-4008 Telephone: 650-838-2000 Facsimile: 650-838-2001 9 10 11 Attorneys for Plaintiff and Counterdefendant ELAN MICROELECTRONICS CORPORATION 12 13 UNITED STATES DISTRICT COURT 14 NORTHERN DISTRICT OF CALIFORNIA 15 SAN FRANCISCO DIVISION 16 17 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 18 Plaintiff and Counterdefendant, 19 20 21 22 v. APPLE, INC., Defendant and Counterplaintiff. AND RELATED COUNTERCLAIMS 23 24 25 26 27 28 DECL. OF WAYNE CHANG ISO ELAN'S OPP'N TO APPLE'S MOT. TO COMPEL 1 Case No. 09-cv-01531 RS (PSG Case5:09-cv-01531-RS Document299-1 1 2 3 Filed06/17/11 Page3 of 5 I, Wayne Chang, declare as follows: I. Elan IPR and Legal Department 1. I am the Director of IPR and Legal Department for Elan Microelectronics 4 Corporation ("Elan"). I have personal knowledge of the following facts and if called to testify I 5 could and would testify competently to the matters stated herein. 6 2. Elan's IPR and Legal Department handles all of Elan's legal matters related to IP, 7 such as filing and maintaining patent and trademark applications; overseeing the purchase, transfer 8 and licensing of Elan's IP portfolios, and overseeing contracts and litigation relating to IP. 9 10 11 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 12 firm in 1994, and during my tenure at Elan, I oversee all IP related legal matters that Elan has been 13 involved in, including litigation and licensing matters. 14 5. I have been actively participating in all IP legal matters of Elan and I am 15 considered by my subordinates, the employees of Elan and Elan's outside counsel, for all purposes, 16 to be the general counsel of Elan. 17 6. Currently I supervise seven employees. Of these employees, one has a LL.B. 18 degree, three have a LL.M. degree (one from the Southern Methodist University), two are patent 19 engineers (similar to patent agents) and one legal assistant. 20 7. Mr. Nick Lin is the associate manager of Elan's IPR and Legal Department, 21 dedicated in handling IP related matters. Mr. Lin has a B.S. in mechanical engineering and has a 22 LL.M. degree. In addition to being a patent engineer for Elan, much of Mr. Lin's patent 23 evaluation work or analysis is done in support of various Elan U.S. patent and IP litigation and 24 licensing matters. 25 8. I also act as the conduit between Elan and Elan's outside counsel for IP related 26 matters. As Elan relies primarily on its outside counsel for most of the U.S. legal matters, many of 27 the tasks I assigned to my subordinates or employees of Elan are under the request and direction of 28 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 2 Case No. 09-cv-01531 RS (PSG) Case5:09-cv-01531-RS Document299-1 Filed06/17/11 Page4 of 5 1 counsel and I, for purposes of seeking legal advice, are intended and expected to be confidential. 2 IL Elan's Relevant Litigations 9. 3 Elan started its license negotiation with its competitor Synaptics, Inc. ("Synaptics"), 4 one of the world's largest suppliers of capacitive touchpad products, around 2003 to 2004. During 5 the course of the negotiations, both parties threatened the other side with patent infringement 6 claims. 7 10. The negotiations led Elan to file suit against Synaptics on March 10, 2006, in the 8 district court for the Northern District of California. Synaptics countersued Elan, and filed a 9 separate suit against Elan, alleging Elan infringed five of its patents. After several favorable 10 rulings by the court in the case filed by Elan, the lawsuits were settled in October 2008. In late 11 2008, Elan licensed U.S. Patent No. 5,825,352 ("the 352 patent") to Synaptics. 12 11. From 2005 to 2008, members of Elan's IPR and Legal Department, including 13 myself, were actively engaged in pre-suit evaluations, including interfacing with Elan's outside 14 counsel, regarding negotiations with other potential licensees of the 352 patent. 15 12. In addition to the Synaptics litigation, Elan has been attempting to license the 352 16 patent to Apple since at least August, 2006. Members of the Elan IPR and Legal Department, 17 including myself, have been actively supporting Elan's efforts. 18 III. Common Legal Interest With Elan Customers 19 13. Elan is a component supplier to many downstream electronics makers in the world. 20 Therefore, once Elan is sued for patent infringement, Elan's customers faced similar risks for the 21 same infringement claims. As an example, in 2006, Synaptics sued Prostar and Averatec, two of 22 Elan's customers, for the infringement of Synaptics patents for selling and using products 23 incorporating the allegedly infringing Elan devices. 24 14. 25 26 27 28 DECL. OF WAYNE CHANG ISO ELAN'S OPP'N TO APPLE'S MOT. TO COMPEL 3 Case No. 09-cv-01531 RS (PSG) Case5:09-cv-01531-RS Document299-1 1 Filed06/17/11 Page5 of 5 15. 2 3 4 5 6 7 8 9 10 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. 11 12 13 Chang LEGAL02/32684516v2 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DECL. OF WAYNE CHANG ISO ELAN'S OPP'N TO APPLE'S MOT. TO COMPEL 4 Case No. 09-cv-01531 RS (PSG)

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?