STC.UNM v. Intel Corporation

Filing 226

RESPONSE in Opposition re 218 MOTION for Reconsideration STC.UNM'S RULE 19 MOTION TO CORRECT STANDING AND REQUEST FOR RECONSIDERATION of the Court's Summary Judgment Ruling filed by Intel Corporation. (Atkinson, Clifford)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
STC.UNM,

Civil No. 1:10–cv–01077–RB–WDS
Plaintiff,

v.
INTEL CORPORATION,
Defendant.

I NTEL ’ S O PPOSITION
R ECONSIDERATION

TO

STC’ S R ULE 19 M OTION

OF THE

AND

R EQUEST

FOR

C OURT ’ S S UMMARY J UDGMENT R ULING

Clifford K. Atkinson
Douglas A. Baker
A TKINSON , T HAL & B AKER , P . C .
201 Third Street, N.W., Suite 1850
Albuquerque, NM 87102
(505) 764–8111
Robert A. Van Nest
Brian L. Ferrall
Benedict Y. Hur
K EKER & V AN N EST LLP
710 Sansome Street
San Francisco, CA 94111
(415) 391–5400
Chad. S. Campbell
Timothy J. Franks
P ERKINS C OIE LLP
2901 N. Central Avenue, Suite 2000
Phoenix, AZ 85012
(602) 351–8000

Table of Contents
Table of Authorities ........................................................................................................................ ii
Introduction..................................................................................................................................... 1
Background ..................................................................................................................................... 2
Argument ........................................................................................................................................ 4
I.

STC Cannot Involuntarily Join Sandia Under Rule 19(a) .............................................4
A.

Patent Law Generally Requires Voluntary Joinder of All Patent CoOwners ................................................................................................................. 5

B.

STC Cannot Compel Sandia to Join Because STC Is Not the Exclusive
Licensee of the ’998 Patent.................................................................................. 5
1.

The June 22, 2009, Commercialization Agreement Between STC and
Sandia Does Not Cover the ’998 Patent ......................................................6

2.

Even If the Commercialization Agreement Extended to the ’998
Patent, It Did Not Make STC the Exclusive Licensee of Sandia...............14

II.

Equity Does Not Allow STC to Invoke Rule 19(b) and Treat Sandia, Which STC
Itself Brought into This Dispute, as a Dispensable Party ............................................17

III.

STC’s Motion to Reconsider the Court’s Summary Judgment Ruling Is
Procedurally Improper and Substantively Meritless....................................................22
A.

STC’s New Legal Argument Improperly Relies on Evidence that Was
Available Before Summary Judgment Was Sought or Granted ........................ 22

B.

Federal Retention-of-Title Rules Are Irrelevant Because No Sandia
Employee Was an Inventor of the ’998 Patent .................................................. 23

Conclusion .................................................................................................................................... 24
Certificate of Service .................................................................................................................... 26

–i–

Table of Authorities
Cases

Pages

A10 Networks, Inc. v. Brocade Commc’ns Sys., Inc.,
No. 5:11–CV–05493–LHK, 2012 WL 1932878 (May 29, 2012) .....................................18
A123 Sys., Inc. v. Hydro-Quebec,
626 F.3d 1213 (Fed. Cir. 2010) .........................................................................................18
Abbott Labs. v. Diamedix Corp.,
47 F.3d 1128 (Fed. Cir. 1995) ...........................................................................................14
Bushnell, Inc. v. Brunton Co.,
659 F. Supp. 2d 1150 (D. Kan. 2009) ...............................................................................18
Dainippon Screen Mfg. Co. v. CFMT, Inc.,
142 F.3d 1266 (Fed. Cir. 1998) .........................................................................................18
DDB Techs., L.L.C. v. MLB Advanced Media,
517 F.3d 1284 (Fed. Cir. 2008) ...........................................................................................5
Dow Chem. Co. v. Exxon Corp.,
139 F.3d 1470 (Fed. Cir. 1998) .........................................................................................18
Ethicon, Inc. v. U.S. Surgical Corp.,
135 F.3d 1456 (Fed. Cir. 1998) .....................................................................................5, 16
Fallaux, In re,
564 F.3d 1313 (Fed. Cir. 2009) .........................................................................................20
Indep. Wireless Tel. Co. v. Radio Corp. of Am.,
269 U.S. 459 (1926) ....................................................................................5, 14, 15, 16, 17
Israel Bio-Eng’g Project v. Amgen, Inc.,
475 F.3d 1256 (Fed. Cir. 2007) .................................................................................4, 5, 17
J.M. v. N.M. Dep’t of Health,
No. Civ. 07–0604 RB/ACT (Mar. 5, 2009) ......................................................................22
Moore v. Marsh,
74 U.S. 515 (1868) ............................................................................................................17
Republic of Philippines v. Pimentel,
553 U.S. 851 (2008) ..........................................................................................................20
– ii –

Cases (continued)

Pages

Rite-Hite Corp. v. Kelley Co.,
56 F.3d 1538 (Fed. Cir. 1995) (en banc) ...........................................................................15
Servants of Paraclete v. Does,
204 F.3d 1005 (10th Cir. 2000) ........................................................................................22
Willingham v. Lawton,
555 F.2d 1340 (6th Cir. 1977) ............................................................................................6
Statutes and Rules
35 U.S.C. § 41(b) ..........................................................................................................................11
35 U.S.C. § 251 .............................................................................................................................11
35 U.S.C. § 254 .............................................................................................................................11
35 U.S.C. § 255 .............................................................................................................................11
35 U.S.C. § 256 .............................................................................................................................11
35 U.S.C. § 261 .............................................................................................................................16
42 U.S.C. § 5908 ...........................................................................................................................23
Fed. R. Civ. P. 19 .............................................................................................................. 1, passim
Fed. R. Civ. P. 19 committee note on 1937 adoption ...................................................................14
Fed. R. Civ. P. 19(a) ......................................................................................................... 1, passim
Fed. R. Civ. P. 19(b) ......................................................................................................... 1, passim

– iii –

Introduction
STC’s Rule 19 motion concedes that STC has lacked standing to pursue its patent claims
against Intel since last December and that to proceed it must defy a basic principle of patent law:
that all co-owners of a patent need to join an infringement suit against another party. STC put
itself in this bind. STC had standing as sole owner of the ’998 patent when it filed suit, but the
patent was unenforceable under its terminal disclaimer because the ’321 patent had different
ownership. Desperate to create common ownership and salvage the remaining term of the ’998
patent before it expires in September, STC unilaterally assigned partial ownership in the ’998
patent to Sandia Corporation (“Sandia”). But STC did so at the cost of its standing to sue, and, as
Sandia’s opposition to STC’s motion confirms, Sandia wants no part of this dispute.
STC thus asks the Court to take one of two steps to enable STC to proceed without
voluntary joinder by its co-owner. Both steps are unprecedented and unwarranted. First, STC
asks the Court to involuntarily join Sandia as a co-plaintiff under Rule 19(a) on the theory that
STC is Sandia’s “exclusive licensee” under the terms of a Commercialization Agreement signed
nearly 2½ years before Sandia became a co-owner. That argument is doubly wrong: (1) as this
Court has already recognized, the Commercialization Agreement was limited to the jointlyinvented ’321 patent, and (2) STC is not Sandia’s exclusive licensee in any event. Second, STC
claims that equity requires the Court to treat Sandia as a dispensable party under Rule 19(b) so
that STC can proceed alone. But equity requires the opposite result. To begin with, Sandia’s
co-ownership is critical to STC’s claim: STC survived summary judgment only because of it.
Moreover, allowing STC to proceed alone would be prejudicial to both Intel and Sandia, and
STC still has an alternate route by which it can regain standing and avoid unenforceability.
–1–

STC’s motion also seeks reconsideration of the Court’s summary judgment ruling, but
that request should be denied for two reasons. First, STC’s motion is improper because the
supposedly “new” evidence it cites (information from Sandia lawyer Kevin Bieg about events in
the 1990s) was available during the summary judgment briefing. STC attended Mr. Bieg’s
deposition last year and could have obtained testimony or a declaration on these topics then.
Second, STC’s latest co-ownership theory still fails because there was no Sandia co-inventor on
the ’998 patent. STC argues that the Department of Energy (DOE) automatically took title to the
’998 patent under the Atomic Energy Act and then awarded title to Sandia and UNM jointly. But
the statutory title-allocation provisions apply only to inventions by federal contractors. STC
concedes, and the Court has found, that Sandia’s Bruce Draper was not a co-inventor of the ’998
patent. As a result, DOE—like Mr. Draper—had no rights in the ’998 patent and could not and
did not assign such rights to Sandia. As a matter of law, Sandia had no interest in the ’998 patent
before December 2011, when it received the unsolicited assignment from STC.
In short, the Court correctly granted summary judgment that the ’998 patent was
unenforceable before December 1, 2011, and STC lacks standing to sue for infringement since
then without voluntary joinder by Sandia. Because Sandia has made clear that it will not join
voluntarily, Intel has filed a cross-motion to dismiss STC’s remaining claims and end this case.
Background
The PTO allowed the ’998 patent subject to a terminal disclaimer stipulating that the
patent would be enforceable only while it and the ’321 patent were commonly owned. [See Doc.
179–5] Sandia National Laboratories has co-owned the ’321 patent ever since that patent issued
because Bruce Draper was a co-inventor along with three UNM employees. It is uncontested,

–2–

however, that Mr. Draper did not co-invent the ’998 patent. Instead, all four co-inventors of the
’998 patent were UNM employees. As a result, UNM solely owned the ’998 patent once it
issued, and STC (UNM’s wholly-owned licensing arm) succeeded to UNM’s 100% ownership
interest in 2007. Despite the lack of common ownership and resulting unenforceability, STC
sued to enforce the ’998 patent against numerous companies, including Intel.
When discovery last fall confirmed the continuing lack of common ownership, Intel
promptly raised unenforceability as a defense. In response, STC took two tacks. First, despite
having repeatedly asserted sole ownership to the PTO, ITC, courts, and alleged infringers, STC
suddenly reversed course and claimed that Sandia had always co-owned the ’998 patent. Second,
recognizing the untenability of that position, STC unilaterally assigned a share of the ’998 patent
to Sandia on December 1, 2011, in an effort to salvage the remaining 10 months of the patent’s
term. [Doc. 179–31] STC did not secure Sandia’s agreement to join as a plaintiff in this lawsuit
before the assignment, however, and since then Sandia has maintained a neutral stance and
refused to join STC’s claim. Although STC could resolve both its standing and enforceability
problems by acquiring sole ownership of both the ’998 and ’321 patents, STC has not done so.
Earlier this year, Intel moved for summary judgment of unenforceability of the ’998
patent. In its summary judgment ruling [Doc. 206], this Court held as a matter of law that Sandia
did not co-own the ’998 patent before December 1, 2011, that the ’321 and ’998 patents thus
lacked common ownership before that date, and that the ’998 patent was therefore unenforceable
before that date. Based on the existing record, however, the Court could not tell whether Sandia
National Laboratories (the long-time co-owner of the ’321 patent) and Sandia Corporation (the
new co-owner of the ’998 patent) were the same entity, and thus could not yet determine the

–3–

enforceability of the ’998 patent from December 1, 2011, forward.1
At the end of its decision, the Court recognized that Sandia’s current co-ownership of the
’998 patent raised a standing problem for STC because Sandia is not a plaintiff in this case and
as a general rule, “‘[a]bsent the voluntary joinder of all co-owners of a patent, a co-owner acting
alone will lack standing.’” [Id. at 22 (quoting Israel Bio-Eng’g Project v. Amgen, Inc., 475 F.3d
1256, 1264–65 (Fed. Cir. 2007))] The Court encouraged the parties to confer and file appropriate
motions regarding standing [id.], and later ordered the parties to report on the status of the
standing issue by June 1, 2012 [Doc. 212]. STC reported on that date that it had been unable to
reach any agreement with Sandia and that it planned to file its current motion requesting relief
allowing it to proceed with this case despite Sandia’s refusal to join voluntarily.
To fix its standing problem, STC asks the Court either to join Sandia as an involuntary
plaintiff under Rule 19(a) or to ignore Sandia’s absence by deeming it a necessary-butdispensable party under Rule 19(b). Trying to relitigate summary judgment, STC further urges
the Court to adopt a new (third) theory that Sandia has always co-owned the ’998 patent on the
ground that the Department of Energy (DOE) implicitly granted both UNM and Sandia title to
the ’998 patent when awarding them title to the ’321 patent. As explained below, each of STC’s
arguments is wrong, and the time is ripe for the Court to put this case to an end.
Argument
I.

STC C ANNOT I NVOLUNTARILY J OIN S ANDIA U NDER R ULE 19(a)
Patent law normally requires voluntary joinder of all co-owners in order to sue a third
1

Enforceability after December 1, 2011, remains an open issue, but for purposes of this
motion Intel will assume (without conceding) that the two Sandia entities are the same. Neither
STC’s motion nor Intel’s cross-motion to dismiss requires resolution of that point.
–4–

party for infringement. STC purports to invoke a narrow exception allowing a patent owner’s
exclusive licensee to join the owner as a co-plaintiff against its will, but that exception does not
apply because STC is a co-owner of the ’998 patent, not Sandia’s exclusive licensee.
A.

Patent Law Generally Requires Voluntary Joinder of All Patent Co-Owners

The Federal Circuit has repeatedly recognized that “as a matter of substantive patent law,
all co-owners must ordinarily consent to join as plaintiffs in an infringement suit” and that “‘one
co-owner has the right to impede the other co-owner’s ability to sue infringers by refusing to
voluntarily join in such a suit.’” Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1468 (Fed.
Cir. 1998); see also Israel Bio-Engineering, 475 F.3d at 1264 (each co-owner of a patent “‘has
the right to limit the other co-owner’s ability to sue infringers by refusing to join voluntarily in
[a] patent infringement suit’”). Because one co-owner can unilaterally prevent another co-owner
from suing, “patent co-owners are ‘at the mercy of each other.’” Ethicon, 135 F.3d at 1468.
The Federal Circuit recently reaffirmed this principle in DDB Technologies, L.L.C. v.
MLB Advanced Media, 517 F.3d 1284 (Fed. Cir. 2008), holding that, in general, “Rule 19 does
not permit the involuntary joinder of a patent co-owner in an infringement suit brought by
another co-owner.” Id. at 1289 n.2.
B.

STC Cannot Compel Sandia to Join Because STC
Is Not the Exclusive Licensee of the ’998 Patent

The Federal Circuit has recognized only two narrow situations in which an owner may be
forced to join a suit involuntarily. Ethicon, 135 F.3d at 1468 n.9. First, an owner can be forced to
join when it has granted the plaintiff an exclusive license, because equity forbids a licensorowner from nullifying that exclusivity by refusing to join the licensee’s infringement suit. Indep.
Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459, 469 (1926). Second, an owner can be
–5–

forced to join a suit if the owner has contractually waived its right to refuse to join. Willingham
v. Lawton, 555 F.2d 1340, 1344–45 (6th Cir. 1977). STC concedes that Sandia never waived its
right to refuse to join this suit, so it strains to invoke the exception for exclusive licensees.
In particular, STC contends that Sandia, through a Commercialization Agreement dated
June 22, 2009, made STC the exclusive licensee of the ’998 patent. That argument fails because
(1) as this Court pointed out in its summary judgment order, the Commercialization Agreement
applies only to the ’321 patent, not to the ’998 patent; and (2) the Commercialization Agreement
does not make STC the exclusive licensee of any patent. Notably, Sandia’s opposition to STC’s
motion fully concurs with this view of the contract, to which Sandia is a party. [Doc. 224 at 3–9]
1.

The June 22, 2009, Commercialization Agreement
Between STC and Sandia Does Not Cover the ’998 Patent

In its summary judgment order, this Court recognized that STC and Sandia “did not enter
into any Commercialization Agreement regarding [the] ’998 [patent] … as STC considered itself
the owner of a 100% interest in that patent.” [Doc. 206 at 5] STC ignores that finding. But even
if the issue were open for reconsideration, the Commercialization Agreement was plainly limited
to the ’321 patent, which was jointly invented by UNM and Sandia employees and jointly owned
by STC and Sandia. It did not cover the ’998 patent, which was a UNM-only invention that
Sandia now co-owns only as a result of STC’s litigation-inspired gift more than two years later.2
The origins of the Commercialization Agreement make clear that it was not designed to
apply to inventions made solely by UNM employees, such as the ’998 patent. By its terms, the
2

The only variant of STC’s argument not already considered in connection with the
summary judgment motion is STC’s paradoxical notion that its December 1, 2011, assignment to
Sandia somehow converted the June 22, 2009, Commercialization Agreement into a contract that
covers the ’998 patent as well. As discussed below, that argument makes no sense.
–6–

Commercialization Agreement was adopted pursuant to a 2006 Sandia–STC–UNM
Memorandum of Understanding on Intellectual Property (“MOU”). [See Doc. 218–6
(Commercialization Agreement) preamble] The scope of the MOU was expressly limited to
intellectual property jointly developed and therefore jointly owned by Sandia and UNM/STC.
The MOU “set[ ] forth certain understandings … regarding patenting, licensing, and royalty
sharing of certain inventions and works of authorship that are jointly owned by Sandia and
UNM.” [Doc. 218–5 preamble] It specifically defined “Jointly-Owned Intellectual Property” as
“Intellectual Property that arises from a Subject Invention.” [Id. ¶ 1(g)] “Subject Invention,” in
turn, was defined as any invention “created, conceived or first actually reduced to practice”
according to an arrangement described in § 2 of the MOU. [Id. ¶ 1(a)] Section 2 listed “Subject
Inventions created by both Sandia agents and UNM agents” and “Subject Inventions created by
individuals who are Joint Appointees” (meaning “employed and paid part-time by Sandia and
part-time by UNM”). [Id. ¶ 2 (emphasis added); see id. ¶ 1(d) (defining “Joint Appointee”)]
The text of the Commercialization Agreement further confirms that it covered the ’321
patent jointly invented by Sandia’s Bruce Draper, and not the ’998 patent on which only UNM
employees were inventors. The Commercialization Agreement’s Background section made clear
that the INTELLECTUAL PROPERTY covered was intellectual property to which Draper and
Sandia contributed. It recited that
One inventor (Draper) was an employee of SANDIA at the time of
development of the INTELLECTUAL PROPERTY whose
contributions to the INTELLECTUAL PROPERTY is considered
to be entirely SANDIA
[Doc. 218–6 Background ¶ 1] and that

–7–

Three inventors (Brueck, Zaidi and Chu) were employees of UNM
at the time of development of the INTELLECTUAL PROPERTY
whose contributions to the INTELLECTUAL PROPERTY are
considered to be entirely STC
[Id. Background ¶ 2] The list of inventors (Draper, Brueck, Zaidi, and Chu) matched the
inventorship of the ’321 patent exactly. [See Doc. 179–24] By contrast, the list of inventors of
the ’998 patent was very different: it included UNM employees Hersee and Malloy in addition to
Brueck and Zaidi, but excluded both Chu and Draper. [See Docs. 179–10, 179–11]
The Background of the Commercialization Agreement went on to note that
The U.S. Government has Government Use Rights in all works of
authorship created and inventions conceived or first actually
reduced to practice by SANDIA and SANDIA employees. The
Parties agree to ensure that all interested parties are availed [of] the
Government[’]s Use Rights for such intellectual properties on
contracts from the Government.
[Doc. 218–6 Background ¶ 3] That discussion of government use rights applies to the ’321
patent, to which Sandia employee Draper contributed, but it does not apply to the ’998 patent,
which no Sandia employee co-invented.
Furthermore, when the Commercialization Agreement defined the INTELLECTUAL
PROPERTY it covered, it recited the ’321 patent but not the ’998 patent:
Technology was disclosed to STC on September 20, 1993 in
SD–5308 (Sandia)/UNM–322 (STC)
U.S. Issued Patent No. 5,705,321 issued on January 6, 1998
Title: “Method for Manufacture of Quantum Sized Periodic
Structures in Si Materials”
Inventors: Steven R.J. Brueck, Saleem H. Zaidi, An-Shyang Chu,
and Bruce L. Draper.
[Id. Intellectual Property ¶ 1] This bibliographic description matches the ’321 patent perfectly,
and it does not fit the ’998 patent. The inventions claimed in the ’998 patent were not disclosed
–8–

by Sandia to STC in September 1993. The ’998 patent is not the ’321 patent issued in 1998. The
’998 patent has a different title (“Method and Apparatus for Extending Spatial Frequencies in
Photolithography Images”). And neither Chu nor Draper co-invented the ’998 patent.
Exhibit A to the Commercialization Agreement further confirms that the Agreement is
limited to the ’321 patent. Exhibit A allocates 90% of the commercialization proceeds according
to the number of inventors that each party provided. Consistent with the ’321 patent, Exhibit A
says there were three UNM inventors and one Sandia inventor, entitling STC to 77.5% and
Sandia to 22.5% of revenues. [Doc. 218–6 Ex. A] Such an allocation of revenues would be
inappropriate for the ’998 patent, which has no Sandia inventors, or for a combination of the
’321 and ’998 patents, which have, in total, one Sandia inventor and five UNM inventors.3
Sandia is thus entirely correct that “STC’s arguments concerning the Commercialization
Agreement rest on an unwarranted extension of the scope of the Commercialization Agreement,
and a strained interpretation of the Agreement’s language.” [Doc. 224 at 4] Indeed, it is
nonsensical to think STC and Sandia meant the Commercialization Agreement to cover the ’998
patent. No Sandia employee was a co-inventor, and Sandia had no ownership interest in the ’998
patent until over two years later, when STC gave Sandia an interest in a belated effort to render
the ’998 patent enforceable. Notably, the Commercialization Agreement was dated after the
December 2008 Certificate of Correction in which the PTO, at STC’s behest, designated the ’998
patent a continuation-in-part of the ’321 patent. [See Doc. 179–13 (Certificate of Correction)] If
STC and Sandia had meant the Commercialization Agreement to cover the ’998 patent as well as
the ’321 patent (as a result of the Certificate of Correction or otherwise), they would have said
3

Consistent with this, STC’s discovery responses throughout this case have identified no
evidence that STC has shared any ’998-patent-related revenue with Sandia.
–9–

so. And if STC and Sandia had intended the December 2011 assignment to expand the
Commercialization Agreement and encumber Sandia’s new interest in the ’998 patent, they
would have agreed to amend the Commercialization Agreement to reflect that. They did not.
STC’s contrary arguments cannot withstand scrutiny.
The Referenced Docket Numbers Do Not Include the ’998 Patent.
STC first argues (at 4) that the Commercialization Agreement could not have been
limited to the ’321 patent because the definition of “Intellectual Property” also mentioned
“UNM–322/SD–5308.” But UNM–322 and SD–5308 were merely the docket numbers that
UNM and Sandia assigned for the jointly-developed invention that became the ’321 patent. [See
Ferrall Decl. Ex. 1 (1993 patent disclosure); Doc. 218–1] UNM has a different docket number,
UNM–482, for the solely-UNM invention that became the ’998 patent [see Doc. 179–8], and that
number appears nowhere in the Commercialization Agreement. (Sandia has no docket number
for the ’998 patent because no Sandia employee was an inventor.) STC suggests that the parties
must have meant the docket numbers to cover more than just the ’321 patent because otherwise
the docket information would be duplicative. But the Commercialization Agreement followed
the form specified in Exhibit A to the MOU, which directed the parties to describe “JOINTLYOWNED INTELLECTUAL PROPERTY” by technology disclosure date, title, inventors, and
patents/patent applications. [See Doc. 218–5 at 10 of 14] Moreover, the MOU made clear that
commercialization agreements were limited to jointly owned, jointly invented property. The ’998
patent was not jointly invented, and it was not jointly owned by Sandia until December 1, 2011.
Defined “INTELLECTUAL PROPERTY” Was Limited to the ’321 Patent.
STC’s observation (at 4) that the Commercialization Agreement uses the term

– 10 –

“INTELLECTUAL PROPERTY” also misses the mark. The Agreement defined the covered
INTELLECTUAL PROPERTY as the ’321 patent invented by Brueck, Zaidi, and Chu of UNM
and Draper of Sandia, and it recited those inventors’ contributions to the INTELLECTUAL
PROPERTY in the Background section. Draper and Chu did co-invent the ’321 patent, but they
did not co-invent the ’998 patent. UNM’s Hersee and Malloy co-invented the ’998 patent, but
they were nowhere mentioned in the Commercialization Agreement. Contrary to STC’s
suggestion, the covered INTELLECTUAL PROPERTY was not anything remotely related to the
’321 patent; it was the ’321 patent itself. [See also Doc. 224 (Sandia Opp.) at 5 (agreeing)]
STC’s “PATENTING LEAD” Responsibilities Are Irrelevant.
STC’s arguments (at 5–6) regarding STC’s responsibilities as “PATENTING LEAD”
also fail to suggest any extension to the ’998 patent. STC contends it would make no sense to
limit the INTELLECTUAL PROPERTY to the ’321 patent because STC and Sandia agreed that
STC would be responsible prospectively for patenting, prosecution, or other protection of the
INTELLECTUAL PROPERTY. To begin with, this too was form language taken from the 2006
MOU, which was limited to jointly-developed, jointly-owned intellectual property. [Compare
Doc. 218–6 Responsible Party ¶ 1 with Doc. 218–5 at 10 of 14] Further, the fact that a patent has
already issued does not eliminate the need to take actions to protect the invention. For example,
patentees must pay periodic maintenance fees to keep a patent in force, see 35 U.S.C. § 41(b),
and they may need to seek reissue of a “defective” patent, see 35 U.S.C. § 251, petition to correct
mistakes, see 35 U.S.C. § 254, 255, petition to correct named inventors, see 35 U.S.C. § 256, and
so forth. Patentees may also need to take actions before foreign patent offices. Sandia and STC
agreed to allocate such responsibilities to STC as to the ’321 patent (and reimburse STC from

– 11 –

licensing proceeds), but that allocation provides no reason to infer that the Commercialization
Agreement covered the distinct and substantially different invention claimed in the ’998 patent.
The ’998 Patent Assignment Was Unrelated to the Commercialization Agreement.
STC next argues (at 6) that its December 2011 assignment to Sandia somehow itself had
the effect of bringing the ’998 patent within the scope of the Commercialization Agreement.
STC’s reasoning is flawed. The Commercialization Agreement covered commercialization of the
’321 patent, and it nowhere purported to cover patents on other inventions that were not jointly
developed merely because those patents later became jointly owned for other reasons. If STC
wanted to add the ’998 patent to the Commercialization Agreement after the December 2011
Assignment, STC needed to obtain Sandia’s agreement to amend and broaden the
Commercialization Agreement. STC did not. It is absurd to suggest, as STC does, that the
December 2011 assignment acted as a time machine that magically added the ’998 patent to the
scope of the Commercialization Agreement without any joint agreement to such an expansion.
Draper’s Non-Contribution to the ’998 Invention Is Critical.
STC argues (at 6) that Draper’s lack of inventorship of the ’998 patent is irrelevant
because STC and Sandia supposedly understood that the covered INTELLECTUAL
PROPERTY included inventions that each party considered entirely its own. But STC offers no
evidence of any such intent, Sandia says otherwise in its opposition to STC’s motion, and the
agreements align with Sandia’s understanding. As discussed above, the MOU was limited to
jointly-developed, jointly-owned intellectual property. Moreover, the very paragraphs of the
Commercialization Agreement “Background” section that STC cites make clear that Draper,
Brueck, Zaidi, and Chu all participated in creating the covered INTELLECTUAL PROPERTY.

– 12 –

The point of the two paragraphs was to explain why both parties had an interest in that
INTELLECTUAL PROPERTY: Sandia through Draper, and STC through Brueck, Zaidi, and
Chu. Draper’s lack of inventorship of the ’998 patent is not only relevant; it is fatal to STC’s
claim that the Commercialization Agreement covers that patent.
Sandia’s 1994 Letter Was Limited to Inventions Made by Sandia Employees.
STC next argues (at 6) that interpreting the Commercialization Agreement to cover the
’998 patent is consistent with a 1994 letter from Sandia to UNM. In fact, the 1994 letter further
undermines STC’s argument. It stated that “Sandia is proceeding with a waiver of title request
with DOE” and that “[o]nce Sandia receives title, Sandia will enter into an agreement with UNM
to allow UNM to be the exclusive licensing agent for the invention.” [Doc. 218–4] The letter
thus made clear that “the invention” of which UNM would be the exclusive licensor was an
invention to which the Department of Energy (DOE) had to waive title. DOE had to waive title
as to the ’321 patent because Sandia’s Draper co-invented that patent. By contrast, DOE had no
title in the ’998 patent to waive because Draper was not an inventor on that patent.
The Commercialization Agreement Was Limited to One Joint Invention.
Finally, STC contends (at 7) that the Commercialization Agreement “covers all patents
originating from the inventions created by all four inventors, whether made individually, or
together.” But the Agreement says no such thing. As discussed above, it was plainly limited to
one patent covering a particular invention jointly made by Brueck, Zaidi, Chu, and Draper, not
another patent on a different, later invention by Brueck, Zaidi, and two other UNM employees.
In sum, STC’s argument that it can compel Sandia to join under the “exclusive licensee”
exception to the normal standing rules fails at the outset because the contract that supposedly

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conveyed that status (the Commercialization Agreement) does not extend to the ’998 patent.
2.

Even If the Commercialization Agreement Extended to the ’998
Patent, It Did Not Make STC the Exclusive Licensee of Sandia

Even if the Commercialization Agreement could be read to cover the ’998 patent, the
Commercialization Agreement does not make STC Sandia’s exclusive licensee. STC is a
co-owner of the ’998 patent, not a licensee of any kind. What is more, the rationale for allowing
an exclusive licensee to join an owner involuntarily does not apply here.
The exclusive licensee exception originated in Independent Wireless Telegraph Co. v.
Radio Corporation of America, 269 U.S. 459 (1926), in which the Supreme Court held that
equity requires allowing an exclusive licensee to join its licensor/patent owner involuntarily
because the owner effectively holds its patent “in trust” for its exclusive licensee and must not
deprive that licensee of the exclusivity it bargained for by refusing to join an infringement suit:
[T]he owner of a patent, who grants to another the exclusive right
to make, use, or vend the invention, which does not constitute a
statutory assignment, holds the title to the patent in trust for such a
licensee, to the extent he must allow the use of his name as
plaintiff in any action brought at the instance of the license in law
or in equity to obtain damages for the injury to his exclusive right
by an infringer, or to enjoin infringement of it.
Id. at 469.
When Rule 19 was adopted in 1937, the drafters followed Independent Wireless and
recognized that a party may be involuntarily joined “in a proper case.” See Fed. R. Civ. P. 19
committee note on 1937 adoption. Which cases are “proper” for involuntary joinder depends on
substantive law, however. And in the patent context, they remain limited to those in which the
plaintiff is an exclusive licensee and the party to be joined involuntarily is the patent owner. See,
e.g., Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1133 (Fed. Cir. 1995).
– 14 –

STC plainly is not Sandia’s exclusive licensee of the ’998 patent. By definition, an
“exclusive licensee” is a non-owner whom the owner has granted both (1) rights to practice
(make, use, sell, etc.) the invention and (2) the right to exclude others from practicing the
invention. See, e.g., Independent Wireless, 269 U.S. at 469 (referring to an exclusive licensee as
one who has “the exclusive right to make, use, or vend the invention” and has not received a
statutory assignment making it an owner); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1552
(Fed. Cir. 1995) (en banc) (“To be an exclusive licensee for standing purposes, a party must have
received, not only the right to practice the invention within a given territory, but also the
patentee’s express or implied promise that others shall be excluded from practicing the invention
within that territory.”) (citing Independent Wireless). Here, STC was the sole owner of the ’998
patent from the time UNM assigned its original ownership rights to STC until December 1, 2011.
On that date, STC transferred partial ownership to Sandia, but STC still remained a co-owner.
Sandia has never held the ’998 patent “in trust” for STC, as Independent Wireless requires.
Contrary to STC’s contention (at 3), nothing in the Commercialization Agreement
purported to convert STC into Sandia’s exclusive licensee of the ’998 patent (or any other
patent). As a patent owner, STC did not need a license from Sandia: it already had the right to
practice its patents and the right to exclude others from practicing the claimed inventions
(assuming patent validity and agreement of any co-owners). Moreover, STC points to nothing in
the Commercialization Agreement that conveyed to STC the sole right to practice in any field or
location, much less the right to exclude others from doing so without Sandia’s consent.
STC observes (at 3) that the Commercialization Agreement made STC the
“PATENTING LEAD” and “LICENSING PARTY,” but STC never explains how that allocation

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of responsibilities could make STC Sandia’s exclusive licensee. And it did not. The
PATENTING LEAD is merely responsible for securing intellectual property protection. [Doc.
218–6 Responsible Party ¶ 1] It does not have the sole right to practice in any field or location or
to exclude others from doing so. STC was also designated the LICENSING PARTY, and as such
STC may be the exclusive licensor of covered INTELLECTUAL PROPERTY because Sandia
agreed to refrain from licensing the INTELLECTUAL PROPERTY and to refer licensing
inquiries to STC. [Id. Responsible Party ¶ 3] But an exclusive licensor and an exclusive licensee
are different things. Again, the Commercialization Agreement did not change STC’s right to
practice any covered patent, and it did not give STC any greater right to exclude others from
practicing. In particular, although Sandia made STC its licensing agent, Sandia did not surrender
its right to decide whether to join a suit against third parties that decline to pay for a license.
Furthermore, the policies that animated the Supreme Court’s decision in Independent
Wireless do not apply in this context. The Court’s logic was that as a matter of equity, a patent
owner should not be allowed to grant a party the right to practice to the exclusion others and then
negate the conveyed exclusivity by refusing to join an infringement suit. 269 U.S. at 468–69.
That logic does not apply to a situation involving co-owners. Absent a contractual waiver, a
co-owner may practice a patented invention “without the consent of and without accounting to
the other owners.” 35 U.S.C. § 261. And absent a contractual waiver, “‘one co-owner has the
right to impede the other co-owner’s ability to sue infringers by refusing to voluntarily join in
such a suit.’” Ethicon, 135 F.3d at 1468. Sandia made no such waivers here, and it is acting
entirely legally and equitably in exercising its right not to join this infringement lawsuit.

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II.

E QUITY D OES N OT A LLOW STC TO I NVOKE R ULE 19(b) AND T REAT S ANDIA ,
W HICH STC I TSELF B ROUGHT INTO T HIS D ISPUTE , AS A D ISPENSABLE P ARTY
Tacitly recognizing that involuntary joinder under Rule 19(a) is improper, STC’s primary

argument is that even though STC injected Sandia into this dispute to avoid summary judgment
of unenforceability, the Court should deem Sandia a dispensable party under Rule 19(b) and let
STC proceed despite Sandia’s joint ownership rights in the ’998 patent. As a matter of law,
however, each co-owner is ordinarily indispensable to a patent infringement lawsuit. No
extraordinary circumstances in this case warrant proceeding without Sandia. In fact, the
extraordinary circumstances resulting in Sandia’s involvement were of STC’s own creation, to
avoid complete summary judgment of unenforceability, and thus dictate exactly the opposite
result. Proceeding without Sandia also poses risks of prejudice to both Sandia and Intel.
In Independent Wireless, the Supreme Court recognized that “[t]he presence of the owner
of the patent as a party is indispensable, not only to give jurisdiction under the patent laws, but
also in most cases to enable the alleged infringer to respond in one action to all claims for
infringement….” 269 U.S. at 468 (emphasis added). Case law makes clear that all co-owners—
the entire ownership interest—must be present. See, e.g., Moore v. Marsh, 74 U.S. 515, 520–21
(1868) (“[W]here [an] assignment is of an undivided part of the patent, the action should be
brought for every infringement committed subsequent to the assignment, in the joint names of
the patentee and assignee, as representing the entire interest.”); Israel Bio-Engineering Project,
475 F.3d at 1265 (“Where one co-owner possesses an undivided part of the entire patent, that
joint owner must join all the other co-owners to establish standing.”). That has to be so, not only
to protect accused infringers from harassment by multiple co-owners, but also to protect other
co-owners against, for example, a judgment invalidating claims or adverse claim constructions.
– 17 –

Tellingly, STC cites no cases holding that a co-owner of a patent was dispensable under
Rule 19(b). STC cites A123 Systems, Inc. v. Hydro-Quebec, but there the Federal Circuit agreed
with a district court that a field-of-use licensee could not invoke Rule 19(b) and sue without the
patent owner. 626 F.3d 1213, 1220–22 (Fed. Cir. 2010). In cases involving multiple owners,
courts have routinely rejected plaintiff co-owners’ contentions that they can invoke Rule 19(b)
and proceed without joinder of their co-owners. See Bushnell, Inc. v. Brunton Co., 659 F. Supp.
2d 1150, 1164–65 (D. Kan. 2009) (holding that a co-owner’s right to refuse to join an
infringement suit both precluded involuntary joinder under Rule 19(a) and rendered the co-owner
indispensable under Rule 19(b); case dismissed); A10 Networks, Inc. v. Brocade Commc’ns Sys.,
Inc., No. 5:11–CV–05493–LHK, 2012 WL 1932878, *10–11 (N.D. Cal. May 29, 2012)
(granting motion to dismiss and finding absent co-owners indispensable parties due to potential
prejudice to them and danger that defendant would be subject to multiple lawsuits).
Intel is aware of only two cases in which the Federal Circuit has deemed co-owners
dispensable under Rule 19(b), and both involved unusual facts far removed from those here. Dow
Chemical Co. v. Exxon Corp., 139 F.3d 1470 (Fed. Cir. 1998), held that the nominal patent
owner, Exxon Chemical Patents, Inc., was dispensable because its parent corporation, Exxon
Corporation, was a party and had both the legal duty and capability of protecting its whollyowned subsidiary’s interest. Id. at 1479. Likewise, in Dainippon Screen Manufacturing Co. v.
CFMT, Inc., 142 F.3d 1266 (Fed. Cir. 1998), the nominal patent owner was merely a holding
company, and the Federal Circuit (in dictum) deemed it dispensable because its interests were
well protected by its parent, which was present in the case. Id. at 1272–73.

– 18 –

In this case, Sandia is an independent co-owner, not a subsidiary of STC, and no
extraordinary factors justify allowing STC to proceed without Sandia as a party. To the contrary,
an analysis under Rule 19(b) makes clear that the remnants of STC’s suit must be dismissed.
Rule 19(b) provides that if a required party cannot be joined, “the court must determine
whether, in equity and good conscience, the action should proceed among the existing parties or
should be dismissed.” The rule lists four non-exclusive factors for the court to consider:
(1) the extent to which a judgment rendered in the person’s
absence might prejudice that person or the existing parties;
(2) the extent to which any prejudice could be lessened or avoided
by:
(A) protective provisions in the judgment;
(B) shaping the relief; or
(C) other measures;
(3) whether a judgment rendered in the person’s absence would be
adequate; and
(4) whether the plaintiff would have an adequate remedy if the
action were dismissed for nonjoinder.
Fed. R. Civ. P. 19(b).
As to the first factor, any judgment rendered in Sandia’s absence would likely prejudice
Sandia, Intel, or both. For example, if this Court were to invalidate any claims, Sandia would be
unable to sue other defendants on those claims. Even if the claims survived, stare decisis and the
need to join STC in future cases would effectively bind Sandia to adverse claim constructions. If
Sandia were not bound by this Court’s judgment, then Intel would be prejudiced because Sandia
would be free to sue it a second time for the same conduct. Indeed, allowing STC to proceed
without Sandia would expose Intel to risks of harassment from multiple sources that the common
ownership requirement of the terminal disclaimer was designed to prevent in the first place. See

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In re Fallaux, 564 F.3d 1313, 1319 (Fed. Cir. 2009) (citing “harassment by multiple assignees”
as a reason for double-patenting rejections). To top it off, it would be highly unfair to Intel to let
STC survive summary judgment of unenforceability by unilaterally assigning co-ownership
rights to Sandia, but then turn around and treat Sandia’s presence in this case as insignificant.
STC’s counterarguments on this point are counterfactual. STC asserts (at 8) that
“Sandia’s refusal to join in the suit clearly indicates that it has no interest in defending the
validity of the patent or any interest in the outcome of the infringement issue” and that “Sandia
has made it clear that it has no intention to pursue an action against Intel.” But neither assertion
is true. Sandia simply “prefers to take a neutral position with respect to this matter.” [Doc. 224 at
2] STC cites no evidence that Sandia has disavowed any interest in pursuing infringement claims
against other parties, or that Sandia has waived any ability to assert the ’998 patent against Intel
at some point in the future. Furthermore, Sandia may want to sell its interest, and an invalidity
finding or narrow claim construction would greatly diminish, if not destroy, the value of that
interest. In any event, STC fails to explain why the Court should disregard the absence of the
very party that STC inserted into this dispute in order to survive summary judgment.
As to the second factor, STC has proposed no way to lessen or avoid the potential
prejudice to Sandia and Intel. And any restriction that mitigated the prejudice to Sandia (such as
a ruling that Sandia is not bound by the outcome) would end up prejudicing Intel.
As to the third factor, a judgment would not be “adequate” if Sandia were not a party and
not bound by the judgment. In this context, “adequacy refers to the ‘public stake in settling
disputes by wholes, whenever possible.’” Republic of Philippines v. Pimentel, 553 U.S. 851, 870
(2008). The dispute will not be wholly resolved if Sandia is not bound by the judgment.

– 20 –

As to the fourth factor, STC does, in its words (at 8) “have an alternate route to pursue
the infringement claim.” STC was the sole owner of the ’998 patent and had standing to sue
alone until December 2011, when it assigned a partial interest to Sandia. STC could regain
standing to sue by reacquiring Sandia’s interest in the ’998 patent, and it could solve its
unenforceability problem by acquiring full ownership of the ’321 patent as well. Of course, STC
presumably would have to pay to acquire those rights. But STC should have paid to fix these
problems a long time ago, before going to court and suing numerous parties on the ’998 patent.
Finally, although STC portrays itself (at 8) as a victim of circumstances, the Court should
bear in mind that STC has only itself and its parent, UNM, to blame for its current predicament.
UNM voluntarily executed the terminal disclaimer and accepted the common ownership
condition to obtain the ’998 patent. UNM or STC could have bought out Sandia’s interest in the
’321 patent to ensure enforceability, but they did not. Instead, UNM assigned its interests to
STC, and STC began suing to enforce the ’998 patent even though it was plainly unenforceable
under the terminal disclaimer. Moreover, no one compelled STC to assign an interest in the ’998
patent to Sandia once Intel raised the unenforceability problem last fall. Even then, STC could
have solved that problem by buying Sandia’s interest in the ’321 patent, but it did not. Instead,
desperate to keep this lawsuit alive and not wanting to incur any expense, STC voluntarily and
unilaterally assigned an interest in the ’998 patent to Sandia without bothering to check whether
Sandia was willing to participate. STC can hardly claim that “equity and good conscience”
require extraordinary judicial relief here.4
4

STC also argues that the Court should invoke Rule 19(b) to protect Sandia’s “quasigovernmental” neutrality. As Sandia’s opposition shows, however, the premise is flawed because
Sandia is a privately owned corporation, not a governmental agency. [Doc. 224 at 2 n.2]
– 21 –

III.

STC’ S M OTION TO R ECONSIDER THE C OURT ’ S S UMMARY J UDGMENT
R ULING I S P ROCEDURALLY I MPROPER AND S UBSTANTIVELY M ERITLESS
Finally, STC moves (at 9) for reconsideration of the Court’s decision that UNM and STC

had sole ownership of the ’998 patent until December 2011. With the benefit of another month’s
reflection, STC has hatched a new theory of why it has always shared ownership in the ’998
patent—this time because DOE supposedly took title to the claimed invention under the Atomic
Energy Act and then granted title to Sandia and UNM jointly in the mid-1990s. That argument is
both procedurally barred and substantively wrong.
A.

STC’s New Legal Argument Improperly Relies on Evidence that Was
Available Before Summary Judgment Was Sought or Granted

This Court has recognized that motions for reconsideration are appropriate only in limited
circumstances. Motions for reconsideration are appropriate to address intervening changes in
controlling law, new evidence previously unavailable, and clear errors or manifest injustices.
J.M. v. N.M. Dep’t of Health, No. Civ. 07–0604 RB/ACT, at 3 (Mar. 5, 2009). Reconsideration
motions are “‘not appropriate to revisit issues already addressed or advance arguments that could
have been raised in prior briefing.’” Id. (emphasis added) (quoting Servants of Paraclete v. Does,
204 F.3d 1005, 1012 (10th Cir. 2000)). Thus, reconsideration is not warranted where the motion
merely advances arguments or facts that were available at the time of the original motion.
Here, STC raises a new legal argument, but both that argument and the facts on which it
is based were available when the parties briefed Intel’s summary judgment motion. STC’s “new
evidence” comes from a declaration of Sandia’s Kevin Bieg. But Mr. Bieg is not a new witness,
and his June 6, 2012, declaration does not address facts that have arisen since Intel’s motion.
Mr. Bieg testified as Sandia’s Rule 30(b)(6) witness last fall, and at his deposition he discussed

– 22 –

the very statute, 42 U.S.C. § 5908, on which STC now relies. [See Ferrall Decl. Ex. 2 (11/17/11
Tr.) at 25–26] STC had the opportunity to question Mr. Bieg then, and it could have obtained a
declaration that contained every fact set forth in his recent declaration before the Court’s ruling.
Simply put, STC has no excuse for failing to advance its new theory in a timely fashion.
Summary judgment was properly entered on the arguments and evidence timely presented, and
STC is not entitled to relitigate the issue now.
B.

Federal Retention-of-Title Rules Are Irrelevant Because
No Sandia Employee Was an Inventor of the ’998 Patent

Aside from its procedural defects, STC’s new theory of Sandia ownership has not
substantive merit. STC previously argued that Sandia shared title in the ’998 patent because
Bruce Draper assigned to UNM, and UNM assigned to Sandia, interests in the invention that
became the ’321 patent. This Court properly rejected that argument. As the Supreme Court has
stressed, patent ownership rights derive from inventorship, and Mr. Draper had no ownership
rights in the ’998 patent because he was not an inventor of the invention claimed in that patent.
[Doc. 206 at 9–15] STC’s new argument is that DOE automatically took title to the invention
claimed in the ’998 patent and granted title to Sandia and UNM at their request. But the flaw in
that theory is the same as the Court recognized previously: although Mr. Draper was an inventor
on the ’321 patent, he was not (as even STC concedes, at 6) an inventor on the ’998 patent.
Federal retention-of-title rules apply only when an employee of a federal entity has made
an invention. In particular, 42 U.S.C. § 5908 applies when “any invention is made or conceived
in the course of or under any contract of the Secretary, other than nuclear energy research,
development, and demonstration pursuant to the Atomic Energy Act of 1954” (emphasis added).
Here, no Sandia employee made an inventive contribution to the ’998 patent. Contrary to STC’s
– 23 –

suggestion (at 9), the Atomic Energy Act cannot “trump” when it does not even apply.
Nor does Mr. Bieg’s declaration support STC’s claim. He agrees that the statute “gives
the Government title to inventions made or conceived in the course of or under Sandia’s contract
with DOE ….” [Doc. 218–2 ¶ 8] But inventions by UNM employees alone are not inventions
made or conceived under Sandia’s contract with DOE. Indeed, although Mr. Bieg states that
DOE granted Sandia’s request to retain title to “the invention claimed [in] the ’321 patent” [id.],
he does not say that DOE’s waiver of title applied to the ’998 patent. In fact, the document he
attaches confirms that Sandia elected to take title only to the invention to which Mr. Draper
contributed—the invention of the ’321 patent. [Id. at 12–17 of 23 (naming Draper as inventor)]
Sandia agrees that Mr. Bieg’s declaration does not address the ’998 patent. [Doc. 224 at 9–10]
At bottom, STC is engaging in the same blurring of inventions that the Court has already
seen through. STC is trying to argue that because a Sandia employee co-invented the ’321 patent,
the federal government had an ownership in the ’998 patent. That does not follow. Even if, as
STC contends, the ’998 patent was a continuation-in-part of the application that led to the ’321
patent, the Draper/Sandia contribution to the ’321 patent was not carried over to the ’998 patent.
Because no Sandia employee participated in the ’998 patent’s invention, Sandia had no rights in
the ’998 patent until STC (unilaterally, and for litigation reasons) assigned Sandia an interest in
December 2011. The Court’s ruling was entirely correct, and reconsideration should be denied.
Conclusion
STC’s motion should be denied in its entirety. Instead, as explained in Intel’s crossmotion, the Court should dismiss STC’s remaining claims (for infringement after December 1,
2011) for lack of standing and put an end to a case that STC never should have filed.

– 24 –

Dated: July 10, 2012.

Respectfully submitted,
A TKINSON , T HAL & B AKER , P . C .
/s/ Clifford K. Atkinson
Douglas A. Baker
Clifford K. Atkinson
201 Third Street, N.W., Suite 1850
Albuquerque, NM 87102
(505) 764–8111
K EKER & V AN N EST

LLP

Robert A. Van Nest
Brian L. Ferrall
Benedict Y. Hur
P ERKINS C OIE

LLP

Chad S. Campbell
Timothy J. Franks
Attorneys for Defendant Intel Corporation

– 25 –

Certificate of Service
The undersigned hereby certifies that on July 10, 2012, the foregoing document was
electronically filed with the Clerk of Court using the CM/ECF system, which will automatically
send notification of such filing to all counsel who have entered an appearance in this action.
A TKINSON , T HAL & B AKER , P . C .
/s/ Clifford K. Atkinson
Clifford K. Atkinson

20336-1313/LEGAL23953212.5

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