STC.UNM v. Intel Corporation

Filing 202

STC.UNM'S SUR- REPLY re 178 MOTION for Summary Judgment of Unenforceability and Memorandum in Support filed by STC. UNM. (Attachments: # 1 Declaration of Keith Vogt with Exhibits_Part 1, # 2 Declaration of Keith Vogt with Exhibits_Part 2)(Pedersen, Steven)

Case 1:10-cv-01077-RB-WDS Document 196-1

Filed 03/06/12 Page 2 of 64

UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
STC.UNM,
Plaintiff,
v.
INTEL CORPORATION,

Civil No. 10-CV-01077-RB-WDS

Defendant.
STCUNM'S SURREPLY TO INTEL’S MOTION
FOR SUMMARY JUDGMENT OF UNENFORCEABILITY
Intel submits a new declaration and a new exhibit in its Reply Brief on its Motion for
Summary Judgment. The new “evidence” is aimed at establishing that Sandia National
Laboratories is a legal entity. However, the evidence already of record, from a Sandia
Corporation Rule 30 (b)(6) witness (Sandia’s Chief Patent Counsel), establishes that:
“… Sandia National Laboratories is essentially the facilities that are owned by the
Department of Energy. And we are contractor operated by Sandia Corporation,
which is the legal entity, actually, which runs Sandia National Labs.
~~~
[Sandia Corporation] manages Sandia National Laboratories which is effectively
the facilities out there, but it also, you know, it is a trademark owned by the
Department of Energy, Sandia National Laboratories, but, we do business as
Sandia National Laboratories so I think most of the public knows us as Sandia
National Laboratories.”
Bieg [Ex U], at 8:18-9:9 (emphasis added). Thus, viewing Intel’s new evidence in its best light
only moves this factual matter from the category of clearly established against Intel to the
category of “genuine issue of material fact.” Either way, Intel loses.
Further, unlike Intel, STC.UNM obtained the underlying public records available for a sample
of 20 patents of the 323 identified by Intel. Dec. of K. Vogt at ¶¶2-3. The documents obtained
reveal that all of the underlying assignments identify Sandia Corporation as the entity assigned

Case 1:10-cv-01077-RB-WDS Document 196-1

Filed 03/06/12 Page 3 of 64

the ownership interest. Dec. of K. Vogt; Exs 7 & 8. These documents establish that Sandia
Corporation had a practice of identifying Sandia National Laboratories on the cover sheet as the
party receiving the assignment and identifying Sandia Corporation in the assignment as the real
party receiving the assignment. This interchangeable use of the two designations to refer to the
same entity confirms that Sandia National Laboratories is indeed a DBA of Sandia Corporation
as Mr. Bieg testified.
Finally, Intel’s Reply Brief devotes a substantial portion of its reply (at 3-6), that it glossed
over in its principal brief (fleeting references and no legal authority, at 8, 10, 18), viz., whether
there was co-ownership prior to December 1, 2011 as a result of Draper’s contribution to the
invention. Whether the Court finds that co-ownership has always existed (Resp. at 10-11), or
came into existence once the Patent Office issued the Certificate of Correction (Resp. at 8-10),
the “claims” of the ‘998 patent need not have been invented by Draper for Sandia Corp. and
STC.UNM to enjoy common in the ‘321 and ‘998 patents. See Resp. at 12. Intel cites to no
authority to establish the incorrect legal theory it posits, i.e., common owners of an invention do
not enjoy common ownership in continuing patents. This is because the opposite is true. See
Resp. Br. at 9-11 (citing SiRF Tech., Inc. v. ITC, 601 F.3d 1319, 1326 (Fed. Cir. 2010); Abraxis
Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1364 (Fed. Cir. 2010); Hendrie v. Sayles, 98
U.S. 546, 554-555 (U.S. 1879); E.I. Du Pont de Nemours & Co. v. Okuley, 2000 U.S. Dist.
LEXIS 21385, at *80 (S.D. Ohio Dec. 21, 2000).

2

Case 1:10-cv-01077-RB-WDS Document 196-1

Dated: March 6, 2012

Filed 03/06/12 Page 4 of 64

Respectfully submitted,
/s/ Steven R. Pedersen
Rolf O. Stadheim
Joseph A. Grear
George C. Summerfield
Keith A. Vogt
Steven R. Pedersen
STADHEIM & GREAR, LTD.
400 N. Michigan Avenue, Suite 2200
Chicago, Illinois 60611
[phone]

Deron B. Knoner
KELEHER & MCLEOD, P.A
201 Third Street NW, 12th Floor
PO Box AA
Albuquerque, New Mexico 87103
[phone]

Attorneys for Plaintiff STC.UNM

3

UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
STC.UNM,
Plaintiff,
Civil No. 1:10-cv-01077-RB-WDS

v.
INTEL CORPORATION
Defendant.

CERTIFICATE OF SERVICE
Certificate of Service: I HEREBY CERTIFY that on the 11th day of April, 2012, I filed the
foregoing electronically through the CM/ECF system, which caused the following counsel for
Defendant, Intel, Corp. to be served by electronic means, as more fully reflected on the Notice of
Electronic Filing:
Clifford K. Atkinson ([e-mail]);
Douglas A. Baker ([e-mail]);
Robert A Van Nest ([e-mail]);
Brian L Ferrall ([e-mail]);
Paven Malhotra ([e-mail]);
Benedict Y Hur ([e-mail]));
Jonathan M. James ([e-mail]);
Chad S Campbell ([e-mail]);
Timothy J Franks ([e-mail]);
Mark E Strickland ([e-mail]);
Jonathan L McFarland ([e-mail]); and
Justin D. Rodriguez ([e-mail]).

/s/ Steven R. Pedersen
Attorney for Plaintiff