Elan Microelectronics Corporation v. Apple, Inc.

Filing 79

Declaration of Sean P. DeBruine in Support of Motion to Stay Pending Final Determination by the ITC of Investigation No 337-TA-714 re 78 filed byElan Microelectronics Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E) (DeBruine, Sean) (Filed on 4/27/2010) Modified on 4/28/2010 (bw, COURT STAFF).

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Yitai Hu (SBN 248085) ([e-mail]) Sean P. DeBruine (SBN 168071) ([e-mail]) C. Augustine Rakow (SBN 254585) ([e-mail]) ALSTON + BIRD LLP Two Palo Alto Square 3000 El Camino Real, Suite 400 Palo Alto, California 94306 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 30309-3424 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, v. APPLE, INC., Defendant. Plaintiff, Case No. 09-cv-01531 RS DECLARATION OF SEAN P. DEBRUINE IN SUPPORT OF ELAN MICROELECTRONICS CORPORATION'S AND MOTION TO STAY PENDING FINAL DETERMINATION BY THE ITC OF INVESTIGATION NO. 337-TA-714 Date: Time: Dept.: Judge: June 3, 2010 1:30 p.m. Courtroom 3, 17th Floor Richard Seeborg

AND RELATED COUNTERCLAIMS

DECLARATION OF SEAN P. DEBRUINE ISO ELAN MICROELECTRONICS CORPORATION'S MOTION TO STAY PENDING FINAL DETERMINATION BY THE ITC OF INVESTIGATION NO. 337-TA-714

Case No. 09-cv-01531 RS

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I, Sean P. DeBruine, declare as follows: 1. I am a partner in the law firm of Alston & Bird LLP, counsel to Plaintiff Elan

Corporation ("Elan") in this action. I have personal knowledge of the following facts, except as otherwise stated. If called to testify, I could and would testify competently to the matters stated herein. 2. On March 29, 2010, Elan filed a Complaint against Apple under Section 337 of the

Tariff Act of 1930 as amended, in the International Trade Commission (ITC), styled In the Matter of Certain Electronic Devices with Multi-Touch Enabled Touchpads and Touchscreens. 3. On April 23, 2010, in response to Elan's ITC Complaint, the ITC issued a Notice of

Investigation stating that the Commission has instituted an investigation in which Apple is the respondent ("the ITC Investigation"). 4. A copy of that Notice is attached hereto as Exhibit A.

The ITC Investigation is to determine whether there is a violation of Section 337 in

the importation into the United States, the sale for importation or the sale within the United States after importation of certain electronic devices with multi-touch enabled touchpads or touchscreens that infringe one or more claims of U.S. Patent No. 5,825,352 ("the '352 patent") and whether an industry in the United States exists. Apple is named as the only respondent. 5. The '352 patent at issue in the ITC Investigation is one of the patents Elan

originally asserted in this action. The Apple multi-touch enabled products involved in the ITC Investigation are the same as those accused of infringing the '352 patent and the '353 patent in this action. Elan expects that the ITC Investigation will involve the same issues as are presented in this action with respect to the infringement and validity of the '352 patent and Apple's defenses and that discovery concerning the accused Apple products will be of a similar scope. 6. The ITC rules provide for a speedy discovery process, early hearing and an initial

determination by a set deadline. In particular, within a month of the Notice of Investigation the presiding Administrative Law Judge ("ALJ") must issue an order setting a "target date" for the completion of the ITC's investigation and issuance of its Final Determination. A target date may be as early as 12 months from institution, while a target date more that 18 months after institution must be supported by an express finding that the investigation is "more complex" than usual. In
DECLARATION OF SEAN P. DEBRUINE ISO ELAN MICROELECTRONICS CORPORATION'S MOTION TO STAY PENDING FINAL DETERMINATION BY THE ITC OF INVESTIGATION NO. 337-TA-714 Case No. 09-cv-01531 RS

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this case, there is only one patent and one named respondent, the parties have been engaged in substantial discovery relevant to the ITC investigation and the patent has been the subject of litigation in the District Court. These factors favor a shorter target date, such that the evidentiary hearing could take place by the end of the year, and a final decision could be due next spring. 7. Discovery in the ITC proceeds at a very fast pace. In general, responses to

discovery requests are due ten days after service. It is not uncommon for all discovery, including experts, to be completed within six months of the institution of the investigation. On April 26, Chief Administrative Judge Paul J. Luckern issued Order No. 1 in the ITC Investigation. A true and correct copy of Order No. 1 is attached as Exhibit B (the Ground Rules for the investigation, appended to Order No. 1, have been omitted). In this Order, the ALJ set a deadline of May 20, 2010 for the parties to file proposed Discovery Plans and scheduled a preliminary conference for May 27, 2010. Id. After the preliminary conference the ALJ will set a target date and adopt a procedural schedule. In this preliminary order, ALJ Luckern advises the parties to "commence discovery at an early date." Id. at 2. In order to accommodate the pace of discovery, ALJ Luckern requires the parties to hold a telephonic conference with him before filing any motions to compel. Id. As such, and discovery disputes related to the `352 patent will arise before and be decided by ALJ Luckern. 8. Since April 8, 2010, Elan has been in communication with Apple's counsel about

staying all or part of the district court action in light of Elan's ITC complaint. On April 13, 2010, I received an e-mail from Apple's counsel stating that while the statutory period for Apple to elect a stay would not run until 30 days after an investigation is instituted, Apple was disinclined to elect a stay of this action on the '352 patent and, on the contrary, contended that the district court action should proceed in full and on schedule. A true and correct copy of that e-mail is attached as Exhibit C. 9. On April 26, 2010, upon learning of the Notice of Investigation, I again contacted

Apple's counsel stating Elan's intention to move for a stay and asking whether Apple would consent. A true and correct copy of my email is attached hereto as Exhibit D. On April 27,

DECLARATION OF SEAN P. DEBRUINE ISO ELAN MICROELECTRONICS CORPORATION'S MOTION TO STAY PENDING FINAL DETERMINATION BY THE ITC OF INVESTIGATION NO. 337-TA-714

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Apple's counsel responded, stating that Apple would review the motion before taking a position. A true and correct copy of Ms. Mehta's e-mail is attached hereto as Exhibit E. I swear under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed at Palo Alto, California. DATED: April 27, 2010

/s/ Sean P. DeBruine Sean P. DeBruine

LEGAL02/31881771v1

DECLARATION OF SEAN P. DEBRUINE ISO ELAN MICROELECTRONICS CORPORATION'S MOTION TO STAY PENDING FINAL DETERMINATION BY THE ITC OF INVESTIGATION NO. 337-TA-714

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