Software Rights Archive, LLC v. Google Inc. et al

Filing 118

SUR-REPLY to Reply to Response to Motion re 66 MOTION to Dismiss for Lack of Standing filed by Software Rights Archive, LLC. (Attachments: # 1 Exhibit Table of Exhibits, # 2 Exhibit Exhibit 1, # 3 Exhibit Exhibit 2, # 4 Exhibit Exhibit 3, # 5 Exhibit Exhibit 4, # 6 Exhibit Exhibit 5, # 7 Exhibit Exhibit 6, # 8 Exhibit Exhibit 7, # 9 Exhibit Exhibit 8, # 10 Exhibit Exhibit 8, # 11 Exhibit Exhibit 10, # 12 Exhibit Exhibit 11, # 13 Exhibit Exhibit 12, # 14 Errata Exhibit 13, # 15 Exhibit Exhibit 14, # 16 Exhibit Exhibit 15, # 17 Exhibit Exhibit 16, # 18 Exhibit Exhibit 17, # 19 Exhibit Exhibit 18, # 20 Exhibit Exhibit 19, # 21 Exhibit Exhibit 20, # 22 Exhibit Exhibit 21, # 23 Exhibit Exhibit 22, # 24 Exhibit Exhibit 23, # 25 Exhibit Exhibit 24, # 26 Exhibit Exhibit 25, # 27 Exhibit Exhibit 26, # 28 Errata Exhibit 27)(Duvvuri, Narasa)

Case 2:07 -cv-00511- T JW-CE Document 66 Filed 07/16/2008 Page 1 of 19

IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

SOFTWARE RIGHTS ARCHIVE, LLC
v.

Civil Case No. 2:07-cv-511 (TJW)

GOOGLE INC., YAHOO! INC., lAC SEARCH & MEDIA, INC., AOL, LLC, AND LYCOS, INC.

DEFENDANTS' MOTION TO DISMISS FOR LACK OF STANING

EXH\B\" 20 .

Case 2:07 -cv-00511- T JW-CE Document 66 Filed 07/16/2008 Page 2 of 19

TABLE OF CONTENTS
TABLE OF CONTNTS............................................................................................................... I
TABLE OF AUTHORITffS ........................................................................................................11

i. SUMMARY OF THE ARGUMENT ................................................................................1
II. FACTS...............................................................................................................................2
A. The Inventors Assigned All Their Rights To Liberlech ............... ........ .................2
B. Libertech (a.k.a. SitelTechnologieslIc.) Never Assigned Its

Rights To Egger.................. ............. ............. ..................... ........... ........ .................3
C. Egger's 2005 Assignent To Himself Was A Nullty And A

Fraud......................................................................................................................5

D. SRA Acquired No Rights From Egger But Nonetheless Relied
On The Void 2005 Assignment ...................... ................... .......... ...... ....................6

II. ARGUMENT........... ................................ ......... ........ .................................... .................. ...8

A. Applicable Law ......................................................................................................8

B. SRA And Egger Never Acquied The Patents-In-Suit ..........................................9
1. The 1998 Assignent Did Not Transfer Title .............................. .............9
2. The 2005 Assignment Transferred No Rights .........................................11

3. No Document Grants SRA Title..............................................................12

IV. CONCLUSION................................................................................................................12

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TABLE OF AUTHORITIES
Federal Cases

Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24 (1923) ..................................... 1

Dole Food Co. v. Patrickson, 538 U.S. 468 (2003)...................................................................... 10
Enzo APA & Son, Inc. v. Geapag AG, 134 F.3d 1090 (Fed. Cir. 1998) ......................................... 1

FilmTec Corp. v. Alled-Signal Inc., 939 F.2d 1568 (Fed. Cir. 1991) ............................................8
Howery v. Allstate Ins. Co., 243 F.3d 912 (5th Cir. 2001) ............................................................. 9

Intellectual Prop. Dev., Inc. v. TCI Cablevision ofCA, Inc., 248 F.3d 1333 (Fed. Cir. 2001).............................................................................................................8, 12
Lans v. Digital Equip. Corp., 252 F.3d 1320 (Fed. Cir. 2001)................................................. 8, 10
LDM Techs., Inc. v. Rowen- Waters Group, LLC, No. 02-73520, 2005 WL 2449300 (E.D. Mich. Sept. 28, 2005) ............................................................................... 10
Lujan v. Defenders of

Wildlife, 504 U.S. 555 (1992) .....................................................................9

Quantum Corp. v. Riverbed Tech., Inc., No. C 07-04161 WHA, 2008 WL 314490 (N.D. Cal. Feb. 4, 2008)......................................................................................... 2

TM Patents, L.P. v. Intl Bus. Machs. Corp., 121 F. Supp. 2d 349 (S.D.N.Y.
2000) .................................................................................................................................12

Federal Statutes
11 U.S.C. § 1141.............................................................................................................................2

35 U.S.C. § 261...........................................................................................................................8,9
35 U.S.C. § 281...............................................................................................................................1
Federal Rules

Fed. R. Civ. Proc. 12(b)(1) ............................................................................................................. 1
State Statutes

Cal. Corp. Code § 1107(a) ........................................................................................................ 5, 11
DeL. Code tit. 8, § 259(a)........................................................................................................... 5, 11

DeL. Code tit. 8, § 271 ................. ................ ......... ........ .................... ..... ......... ................................. 2

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Defendants Google Inc., Yahoo! Inc., lAC Search & Media, Inc., AOL LLC, and Lycos,

Inc. (collectively, "Defendants") move the Court to dismiss ths action for patent infringement

for lack of subject matter jursdiction pursuant to Fed. R. Civ. P. 12(b)(1). Plaintiff Software
Rights Archive, LLC ("SRA") brought this action alleging that Defendants infringe U.S. Patent
Nos. 5,544,352 (the '''352 patent"), 5,832,494 (the '''494 patent"), and 6,233,571 (the "'571

patent") (collectively "the patents-in-suit"). However, contrar to the allegations made by SRA
in its complaint, SRA is not the assignee of the patents-in-suit, and therefore lacks standing to
bring ths action. i

I. SUMRY OF THE ARGUMENT
The right to sue for patent infringement is limited by statute and case law to the owner of the patent.2 See 35 U.S.C. § 281 ("A patentee shall have remedy by civil action for infringement
of

his patent."); Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24,40 (1923)

("(T)he plaintiff in an (infringement) action... must be the person or persons in whom the legal

title to the patent resided at the time of the infringement."). If a pary lacks ownership rights in
the patent-in-suit at the time of filing its complaint, then there is no standing, and the case should

be dismissed. Under Article il of the Constitution, a plaintiff must establish standing to sue

before a federal court wil consider the merits of its claims. As one cour aptly noted:
In light of the proliferation of patent-infringement actions, it is not too much to ask sophisticated patent litigants to be careful when it
comes to the threshold issue of standing.... Distrct

judges cannot

overlook a defect in the chain of title, for the entirety of massive litigation might wind up being vacated years later, for lack of
threshold standing. As carenters say, it is wise to "measure twice

and cut once."

i Defendants have filed a complaint for declaratory judgment in the Northern Distrct of Californa against Danel Egger, SRA, and Site Technologies, Inc. Civil Action No. 3:08-cvjurisdiction for 03172-MEJ. The Northern District of Californa is the proper venue and resolving the controversies relating to Site Technologies, Inc. and its patents (Exhibit 1). 2 While the Federal Circuit has made an exception to ths standing rule for exclusive licensees with all substantial rights to a patent, see Enzo APA & Son, Inc. v. Geapag AG, 134 F.3d 1090, 1093-94 (Fed. Cir. 1998), nothing in Plaintiffs complaint alleges that SRA is an exclusive licensee with such rights.

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Quantum Corp. v. Riverbed Tech., Inc., No. C 07-04161 WHA, 2008 WL 314490, at *3 (N.D.
Cal. Feb. 4, 2008) (citations omitted).

Here, SRA's complaint should be dismissed because it has never owned the patents-insuit. SRA presumably wil argue that its ownership arses from a Februar 22, 2005 assignent

from Daniel Egger ("Egger"). Egger, however, had no patent rights to convey to SRA in

February 2005. This is because neither of the two prior assignments that purorted to convey
rights to Egger actually conveyed any rights to the patents-in-suit:
1. The first assignent, the "1998 Assignent," was from Site Technologies, Inc., a

California corporation, to Egger. However, Site Technologies, Inc. did not own the patents at that time, and the corporation's subsequent bankrptcy fiing and confirmed Plan of Reorganzation would have prevented Egger from obtaining the patents from the estate.
2. The second assignment, the "2005 Assignment," was from SitelTechnologieslIc.,

a Delaware corporation, to Egger for $1, via an instrment executed by Egger

himself. However, by this time in 2005, SitelTechnologieslInc. did not even exist and Egger did not have authority to transfer its assets (much less to himselt).3 Moreover, applicable corporate and banptcy law would have required additional approvals for such an assignment to Egger, none of which were
obtained.4
Thus, neither purported assignent granted Egger title to the patents-in-suit. And since
Egger did not acquie the patents-in-suit, SRA did not acquire the patents-in-suit from him and

thus has no standing to bring this action.

II. FACTS
A. The Inventors Assigned All Their Rights To Libertech

The '352 patent issued from Application Serial No. 08/076,658, which named Danel
Egger as its sole inventor. Pursuant to an assignent dated November 9, 1993 and recorded with

3 These events are summarized in the timeline attached hereto as Exhibit 2. 4 Under Delaware General Corporation Law § 271 and otherwise, the approval of shareholders and the board of directors of Site Technologies Inc. would have been required for such a transaction. No board then existed. Moreover, during banptcy, the sole shareholder/parent corporation could have acted only through a Responsible Person acting pursuant to the
Chapter 11 Plan of

Reorganization. See 11 U.S.C. § 1141.

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the USPTO (Exhibit 3), Egger assigned all his rights in this application, and hence the '352
patent, to Libertech, Inc., a Delaware corporation that he founded in 1992.

On May 17, 1996, a continuation-in-par application to the '352 patent was fied. Ths
application named Egger, as well as Shawn Cannon and Ronald D. Sauers, as inventors and later

issued as the' 494 patent. Pursuant to an assignment recorded with the USPTO (Exhibit 4), all
three co-inventors assigned all their rights in the application that later issued as the' 494 patent to

Libertech, Inc. on June 18, 1996. A divisional application of the '494 patent later issued as the
, 571 patent.

As a result of these two assignments, all the rights to the patents-in-suit resided squarely
with Libertech.

B. Libertech (a.k.a. Sitelechnologieslc.) Never Assigned Its Rights To Egger

On August 22, 1996, Libertech, Inc. changed its name to SitelTechnologieslIc. The name change was also recorded with the USPTO. (Exhibit 5). For ease of reference, we wil
continue to refer to both Libertech Inc. and SitelTechnologieslIc. as "Libertech" except where
necessary to show correspondence to the documents.

On July 11, 1997, Deltapoint, Inc., a California corporation, purchased all the shares of
Libertech pursuant to a Stock Exchange Agreement that Deltapoint publicly disc1ased in an SEC

filing (Exhibit 6). The Agreement was executed by Jeffrey Ait on behalf of Deltapoint and by
Ron Sauers, on Libertech's behalf as its last President before the change of control. (See Exhibit
6 at p. 22). After being acquired as a subsidiar of Deltapoint, Libertech remained the sole

holder of record title to the ' 352 patent and the applications that would issue as the ' 494 and ' 571
patents. Other Deltapoint fiings and press releases confirmed Libertech's status as a wholly-

owned subsidiary. See, e.g., Exhibits 7,8 & 9.
Thereafter, Deltapoint, Inc., the Californa corporation and parent of Libertech, changed

its name to Site Technologies, Inc. (distinguishable from its subsidiar Libertech (a.k.a.

SitelechnologieslIc.) by the absence of slashes in its name). Since Deltapoint, Inc. and Site

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Technologies, Inc. are merely two different names for the same company, we wil generally refer

to the company as "Deltapoint."

In September 1998, Deltapoint agreed to sell its technology pertning to a product called

"V -Search" to Egger. Deltapoint and Egger entered into a Bil of Sale, Assignent and License
Agreement (Exhibit 10, pp. 1-4) pursuant to which

Egger would pay $100,000 to obtain

software, software copyrghts, software licenses, trademarks, certain physical property, and

rights to the '352 patent and certain related applications. 5 As recorded with the USPTO, ths Bil
of Sale was followed by an undated assignment (the "Undated Assignment," hereafer) (Exhibit
10, pp. 5-6) relating to the '352 patent (but not the then-pending continuation-in-par applications
that later issued as the '494 and ' 571 patents). Numerous iregularties appear on the face of the

Undated Assignment, among them: (i) its last sentence of text cuts off in mid-sentence followed by a blank line; (ii) no signature other than the initials of Daniel Egger, the purported assignee,

appears on the same page as the document's text; and (ii) the lone signature of an attesting

witness appears on a separate page from the document's text. Even apar from these and other
defects, these documents did not transfer any patent rights to Egger because at this time

Libertech, not its parent Deltapoint, held the rights to the patents-in-suit. Simply put, Deltapoint
had no patent rights to convey.

After the purported assignment of the '352 patent to Egger by Deltapoint, on

Februar 21, 1999, Deltapoint commenced Chapter 11 banptcy proceedings in the United
States Banptcy Court for the Nortern District of Californa.6 In its February 18, 2000,

Statement of Financial Affais, Deltapoint identified Libertech as its subsidiar from "9/94present." (Exhibit 9 at 7). On June 15, 2000, the bankptcy court approved Deltapoint's First
Amended Plan of

Reorganization governng the estate's assets.

5 Deltapoint's official Statement of Financial Affairs in the banptcy proceedings, fied on
February 18,2000, reported that Eggers had paid only $80,000 ofthat $100,000, however.

(Exhibit 9).
6 The banptcy

JRG-11 (Ban. N.D. Cal.). .
DEFENDANS' MOTION TO DISMISS FOR LACK OF STANDING - Page 4

case is In re Site Technologies, Inc. dba Deltapoint, Inc.; Case No. 99-50736-

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Subsequently, on December 21,2000, Deltapoint (a.k.a. Site Technologies, Inc.), the

Californa corporation, fied certficates with the Californa and Delaware Secretares of State
(Exhibits 11 & 12) stating that it merged itself and its subsidiar Libertech (a.k.a.

SitelTechnologiesnnc.) together, leaving Deltapoint as the surviving corporation?
As a consequence of the December 2000 merger documents, all the assets of Libertech -

including title to the patents-in-suit - would have become the property of the suriving entity,
Deltapoint (a.k.a. Site Technologies, Inc.). See CaL. Corp. Code § 1107(a) ("Upon merger... the

suriving corporation shall succeed, without other transfer, to all the rights and property of each

of the disappearng corporations."). Also as a second consequence of the merger documents,
Libertech (a.k.a. SitelTechnologieslIc.) would have ceased to exist. See DeL. Code tit. 8, §
259(a) ("When any merger or consolidation shall have become effective under this chapter, .,.

the separate existence of all the constituent corporations... shall cease.").
The bankptcy proceeding came to a close with the banptcy court's final decree on
Januar 6, 2004. Pursuant to lJ 14.2 of

the First Amended Plan of Reorganization, which was

approved by the bankrptcy cour:

All property of the Banptcy Estate shall vest in the Debtor subject to the terms and conditions of the Plan. All property of the
Debtor, except as otherwise provided in the Plan, shall be free and clear of any liens, encumbrances, Claims of Creditors and Interests of Equity Security Holders.
Consequently, Deltapoint's property emerged free and clear of any liens and claims.
c. Egger's 2005 Assignment To Himself Was A Nullty And A Fraud

Egger formed Software Rights Archive, Inc. as a Delaware corporation in September

2004. Shortly before purortng to assign rights to the patents-in-suit to SRA, Egger executed a

February 11,2005 Assignment (again, the "2005 Assignent") in which he purorted to be the
President of the nonexistent Libertech (SitelTechnologieslIc.) and to assign Libertech' s patent
7 Just prior to filing the merger certificates, Jeffrey Ait, Chief Executive Officer of Deltapoint,
also fied a document (Exhibit 13) with the Delaware Secretar of State purortng to revive

and renew Libertech's Certficate of Incorporation, which had expired on March 1, 1999.

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rights over to himself. A copy of the document that Egger executed and then recorded with the
USPTO is attached as Exhibit 14. The 2005 Assignment, however, is a fraud and of no effect. First, at the time of the 2005

Assignment, Libertech was defunct and/or did not exist. (Exhibits 11 & 12). Therefore, it could
not have owned the patents in 2005. Second, even if, at the time the 2005 Assignment was

executed, Libertech did exist and did own the patents, Egger was not the President of Libertech
(a.k.a. SitelTechnologieslIc.). Egger, therefore, had no authority to assign whatever rights

Libertech could have possessed. Thus, in the 2005 Assignent, Egger not only falsely stated
that he was the President of a defunct and/or non-existent company that

held title to the patents,

but then proceeded to transfer those alleged rights to himself. The 2005 Assignment is no more than a fraudulent instrument designed to deceive Defendants, the USPTO, and the Cour.

D. SRA Acquired No Rights From Egger But Nonetheless Relied On The Void
2005 Assignment
After executing the purported assignent of the' 352 and ' 494 patents to hiself as an
alleged officer of a defunct and/or nonexistent company, on Februar 22, 2005, Egger promptly

assigned the rights that he purportedly acquired by virue of the 2005 Assignent to his holding
company, SRA, so that it could sue Defendants. (Exhibit 15).

The following table summarzes the varous assignments and merger documents and their
apparent legal effect:

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Title Holder

Listed Assignor ~ Listed Assignee

Legal Effect#

Imediately
1998 Bil of

before Transaction Libertech (a.k.a.

Sale and Undated Assignment of
'352 patent
(Exhibit 10)

Sitefechnologies/
Inc.)

Deltapoint (a.k.a. Site Technologies, Inc.)

Egger

None
Title remains with Libertech (a.k.a. Siteflechnologies/ Inc.) By merger, title would transfer to merged entity, Deltapoint (a.k.a. Site Technologies, Inc.) None

December 2000
Merger of

Libertech (a.k.a.

(not applicable)

(not applicable)

Sitefechnologiesl
Inc.)

Deltapoint and Libertech (Exhibits i i &
12)

Februar i 1, 2005 Assignment of '352

Deltapoint (a.k.a. Site Technologies, Inc.)

defunct and/or

Egger

and '494 patents
(Exhibit 14)

Februar 22, 2005 Assignment of '352, '494 and
'571 patents

Deltapoint (a.k.a. Site Technologies, Inc.)

non-existent entity Libertech (a.k.a. Siteflechnologies/ Inc.) Egger

SRA

None

(Exhbit 15)

#See Argument below.
As demonstrated above, Egger never acquired the patents-in.,suit and therefore had no

rights to transfer to SRA. Nonetheless, Egger and SRA persist in relying on the 2005
Assignment to exploit the patents-in-suit and to attempt to wrongfully enforce them against
Defendants. For example, when the ' 494 patent expired for failure to pay maintenance fees on
November 4,2006, Egger, acting as President of SRA, submitted a Petition to Accept

Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (Exhibit 16). In the
accompanying statement declarng ownership (titled "Statement Under 37 C.F.R. 3.73(b )")

(Exhibit 17), as required by USPTO regulations, Egger declared that SRA was "the assignee of

the entire right, title, and interest" to the' 494 patent. In this statement, SRA relied on the 2005
Assignment to establish ownership without disclosing that the assigning entity was defunct

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and/or had ceased to exist and did not own the patents, and that Egger had no authority to

execute it. Even more, SRA further misrepresented the chain of title by omitting the slashes in
the name of SitelTechnologieslIc. (i.e.,

Libertech) so that it appeared to be the same entity as

Site Technologies, Inc. (i.e., Deltapoint). SRA would not have been able to make the required
showing of ownership without these misrepresentations and falsehoods.

On November 21,2007, SRA fied this action against Defendants. In its complaint, SRA
averred that it was "the assignee of all right, title, and interest in and to" the '352 patent, and "the
assignee of

the '494 patent."s As further explained below, SRA has no standing to bring this

actioni and consequently the Cour lacks subject matter jursdiction.

III. ARGUMENT
A. Applicable Law

It is a basic principle of patent law that a pary who lacks legal ownership of or

substantially all the rights to a patent is without stading to sue for infringement of that patent.
See Lans v. Digital Equip. Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001) ("If a pary lacks title to
a patent, that pary 'has no standing to bring an infringement action' under that patent.") (citing

FilmTee Corp. v. Alled-Signal Inc., 939 F.2d 1568, 1571 (Fed. Cir. 1991)). By statute, the

assignment of a patent from one pary to another must be done in writing. 35 U.S.C. § 261
("Application for patent, patents, or any interest therein, shall be assignable in law by an

instrument in writing:'); see also Enzo APA & Son, Inc., 134 F.3d at 1093 (holding that a virual
assignent, just like actual assignments, must be in writing).

Without standing to bring an action for infringement, there is no subject matter

jurisdiction over the claim, requirng the action to be dismissed. Intellectual Prop. Dev., Inc. v.
TCI Cablevision ofCA, Inc., 248 F.3d 1333, 1345 (Fed. Cir. 2001), cert. denied, 534 U.S. 895

(2001). Once a defendant asserts lack of subject matter jursdiction in a motion to dismiss, the
S See Tn 10, 15 and 20 of Plaintiff s Complaint. SRA did not aver that it had any rights to the
, 571 patent.
(

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plaintiff bears the burden of establishing that the cour has the requisite subject matter jursdiction over the dispute. Lujan v. Defenders of

Wildlife, 504 U.S. 555,560 (1992). Because

federal courts have limited jurisdiction, it is presumed that a suit lies outside these limits, and

accordingly the burden of establishing federal jursdiction rests on the pary seeking the federal forum. Howery v. Allstate Ins. Co., 243 F.3d 912,916 (5th Cir. 2001).

B. SRA And Egger Never Acquired The Patents-In-Suit
It is undisputed that SRA's alleged rights are entirely derivative of Egger's. It is also
undisputed that, as of June 1996, Libertech (a.k.a. SitelTechnologies/lnc.) was the sole owner of
the patents-in-suit based on assignents from the named inventors. Thus, the only issue is what

rights, if any, Egger obtained from Libertech (a.k.a. SitelTechnologieslIc.) based on (1) the
1998 Assignment and (2) the 2005 Assignent.

1. The 1998 Assignment Did Not Transfer Title

Plaintiff cannot establish standing based on the 1998 Assignment because the patents were not owned by the transferor, Site Technologies, Inc. (referred to as Deltapoint herein).
Instead, the

patents were owned by Libertech, a subsidiar of Deltapoint who was not even a

pary to the 1998 Assignment. (See Exhibit 10). As a result, the 1998 Assignent could not
have transferred title to Egger.

Under the Patent Act, patent assignents must be in writing to be effective. 35U.S.C.
§ 261. Although Deltapoint owned all the shares of

Libertech in 1998, there is no written

assignent on record at the U.S. Patent Offce that transfers title in the patents from Libertech to

Deltapoint. In the absence of such a written conveyance to Deltapoint prior to the 1998
Assignment, Libertech, and not its parent Deltapoint, remained the sole owner of the patents-insuit.9

9 Defendants are unaware of any assignment from Libertech to Deltapoint and have asked Plaintiff s counsel to provide documents establishing chain of title. Rather than do so, Deltapoints SEC fiings and alluded to Plaintiffs counsel has pointed to statements in two of other unspecified documents. In the first SEC fiing, Deltapoint suggested that its stock purchase agreement (Exhibit 6) included "ali outstanding assets of' Libertech. But, ths
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Moreover, Libertech's mere status as a subsidiar of

Deltapoint also did not vest

Deltapoint with ownership of the patents. To the contrary, the distinctiveness of each corporate

entity must be respected. As the Supreme Cour explained in Dole Food Co. v. Patrickson, "(a)
corporate parent which owns the shares of a subsidiar does not, for that reason alone, own or
have legal title to the assets of

the subsidiar." 538 U.S. 468, 475 (2003).

Likewise, the Federal Circuit has held that the owner of a patentee does not itself have

standing to sue for patent infringement. Lans, 252 F.3d at 1328. The plaintiff in Lans was the
sole owner of a non-operational holding company which held legal title to the asserted patents.

Id. at 1324-25. The Federal Circuit affrmed that there was no jurisdiction because the plaintiff
lacked standing. Id. at 1328; see also WM Techs., Inc. v. Rowen- Waters Group, UC, No. 0273520, 2005 WL 2449300, at *2 (E.D. Mich. Sept. 28, 2005) ("(T)here is no authority which
confers standing on a parent company to fie a patent suit on

behalf of its subsidiar").

Because the sole owner of a patentee has no standing to sue for patent infringement, such

a parent also cannot by assignent grant a thid pary suffcient title to do so. Thus, Deltapoint
(a.k.a. Site Technologies, Inc.), despite being Libertech's (a.k.a. SitelTechnologieslIc.'s) parent
by virte of having acquired all of

Libertech's shares (see Exhibit 6), could not, and did not,

transfer any rights to the patents-in-suit to Egger by way of the 1998 Assignment.

In fact, SRA and Egger conceded ths point when Egger concocted the fraudulent 2005

Assignent, in which he declared that, as of that date, SitelTechnologieslInc. (i.e., Libertech)
was "the owner of the patent(s) identified on Schedule A" namely the '352 and '494 patents and

statement did not even mention the patents-in-suit, and moreover mischaracterized the stock purchase agreement (Exhibit 6) as an asset purchase. In the second SEC fiing, Deltapoint
stated that, on September 30, 1998, it had "consummated the sale of its V -Search technology and related patents" for $100,000. This document, too, fails to establish a valid transfer of the

patents from Libertech to Deltapoint. Deltapoint subsequently retreated from this
representation, reporting to the banptcy court that it had received only $80,000 from Egger.

(Exhibit 9). Regardless of the factual discrepancies in these documents, neither is a written conveyance establishing an unbroken chain of title from Libertech to Egger. Plaintiff cannot rely on inaccurate SEC filings to bridge a gap in the chain of title. (As discussed below, the absence of such a link motivated Egger to create such a document in Februar 2005, albeit a
fraudulent one.)

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then purported to transfer "the entire right, title, and interest in and to the Patents" to himself.
(Exhibit 14). In other words, despite the alleged 1998 sale of

the "V-Search" technology to

Egger by the parent Deltapoint, its subsidiar Libertech (a.k.a. SitelTechnologieslIc.) retained

all rights to the patents at that time.
2. The 2005 Assignment Transferred No Rights

Given that the 1998 Assignment did not convey the pntents-in-suit to Egger, SRA must

rely on the 2005 Assignment (Exhibit 14). Egger executed this document himself on behalf of
Libertech as its supposed President and purorted to assign

the '352 and '494 patents (but not the

'571 patent) to himself as an individuaL. However, the 2005 Assignent failed to transfer any

rights to Egger for the simple reasons that, by Februar 11,2005, Libertech was defunct and/or
did not exist, and even if it did, it no longer owned the patents and Egger was not its President.
Exhibits 11 and 12 to this motion indicate that this Delaware corporation (Libertech,

a.k.a. SitelTechnologieslInc.) merged into a California corporation (Deltapoint, a.k.a. Site
Technologies, Inc.) on December 21,2000. By operation of Delaware law, DeL. Code tit. 8,

§ 259(a), Libertech, the owner of the patents before the merger, would have then ceased to exist.
A purported assignent by a non-existent entity that cannot own any property is obviously null

and void. Furhermore, all of Libertech' s property would have been subsumed by the entity
emerging from the merger, Deltapoint, a Californa corporation. See CaL. Corp. Code § 1107(a)

and at page 5 above. Thus, afer the merger on December 21,2000, Deltapoint (a.k.a. Site
Technologies, Inc.) would have owned the patents-in-suit.
On Februar 11, 2005, Egger also could not have been President of the defunct and/or

non-existent Libertech. Egger had previously transferred all his shares in Libertech to Deltapoint
pursuant to the 1997 Stock Exchange Agreement (see in paricular § i.1.c of

Exhibit 6 at 1-2). In

the merger documents (Exhibits 11 & 12), Deltapoint declared that, immediately prior to the

merger, Deltapoint owned all shares in Libertech. Nothng suggests that Egger was ever made President of Libertech afer Deltapoint acquired ownership of all stock in Libertech in 1997. In

DEFENDANS' MOTION TO DISMISS FOR LACK OF STANING - Page 11

Case 2:07 -cv-00511- T JW-CE Document 66 Filed 07/16/2008 Page 15 of 19

any event, no President of Libertech could have so transferred the patents to himself without the approvals required by law, i.e., consent of the board of directors (then no longer existing) and
pertnent approvals under banptcy law. 10

Indeed, the 2005 Assignment appears to be nothing more than a fiction concocted by
Egger to bridge the missing link in the chain of title. i i Egger appears to have been fully aware
that the purported 1998 Assignment was ineffective and resolved to take title instead by

pretending to be President of the defunct and/or non-existent Libertech. But a pary cannot tae
by assignent more rights than the assignor had. TM Patents, L.P. v. Intl Bus. Machs. Corp.,

121 F. Supp. 2d 349,365 (S.D.N.Y. 2000) ("(A)n assignee (cannot obtain) any title better than
the assignor had."). Hence, SRA, like Egger, did not obtain any rights to the patents-in-suit by

way of the 2005 Assignment. It was nothing more than a sham transaction perpetrated upon the

USPTO, and ultimately Defendants and this Cour.
3. No Document Grants SRA Title

Because neither the 1998 Assignent nor the duplicitous 2005 Assignment conveyed the

patents-in-suit to Egger, SRA did not acquire any rights to the patents from Egger and

consequently has no standing to bring this action. Absent subject matter jurisdiction, ths case
must be dismissed. Intellectual Prop. Dev., Inc., 248 F.3d at 1345.

IV. CONCLUSION
For the reasons stated, this Cour lacks subject matter jursdiction over ths case. The
case should be dismissed.

10 See Footnote 4.
11 Plaintiff s counsel has not provided any explanation for the 2005 Assignent.

DEFENDANTS' MOTION TO DISMISS FOR LACK OF STANING - Page 12

Case 2:07 -cv-00511- T JW-CE Document 66 Filed 07/16/2008 Page 16 of 19

Dated: July 16,2008

Respectflly submitted,

By: /slThomas B. Walsh, IV
Juanta R. Brooks - Lead Attorney

(CA Bar No. 75934)
E-mail: brooks(gfr.com

Fish & Richardson P.C. 12390 El Camno Real San Diego, CA 92130
Telephone: [phone]

Facsimile: [phone]
Thomas B. Walsh, IV Texas Bar No. 00785173 Fish & Richardson P.C.
5000

Ban One Center

1717 Main Street Dallas, TX 75201
Telephone: [phone]

Facsimile: [phone]
E-mail: walsh(gfr.com

Har L. Gilam, Jr.
Texas BarNo. 07921800
E-mail: gil(ggilamsmithlaw.com

Melissa R. Smith

Texas Bar No. 24001351 E-mail: melissa(ggilamsmithlaw.com

GILLAM & SMIT, L.L.P.
303 South Washington Avenue Marshall, TX 75670
Telephone: [phone]

Facsimile: [phone]
Attorneys for Defendants GOOGLE INC. and

AOLLLC

DEFENDANS' MOTION TO DISMISS FOR LACK OF STANING - Page 13

Case 2:07 -cv-00511- T JW-CE Document 66 Filed 07/16/2008 Page 17 of 19

By: /slRchard S. J. Hung (by permission) Michael A. Jacobs (CA Bar No. 111664) Richard S. J. Hung (CA Bar No. 197425) MORRISON & FOERSTER 425 Market Street San Francisco, CA 94105 Telephone: [phone] Facsimile: 415-268-7522 Email: mjacobs(gmofo.com
Email: rhung(gmofo.com

Michael E. Jones Texas Bar No. 10929400 Potter Minton, A Professional Corporation 110 North College, Suite 500 Tyler, Texas 75702 Telephone: [phone] Facsimile: [phone] Email: miejones(gpottermnton.com

Attorneys for Defendant YAHOO! INC.

DEFENDANS' MOTION TO DISMISS FOR LACK OF STANING - Page 14

Case 2:07 -cv-00511- T JW-CE Document 66 Filed 07/16/2008 Page 18 of 19

By: lsI Claude M. Stern (by permission) Claude M. Stern (CA Bar No. 96737)
Jennfer A. Kash (CA Bar No. 203679)

QUIN EMAL URQUHRT
OLIVR & HEDGES, LLP 555 Twin Dolphin Drive, Suite 560 Redwood Shores, CA 94065
Telephone: [phone]

Facsimile: [phone] Email: claudestern(gquinnemanue1.com Email:jenniferkash(gquinnemanuel.com

Otis Caroll
Tex. Bar No. 03895700
Coll Maloney

Tex. Bar No. 0094219

IR, CAROLL & KEY, P.C.
6101 S. Broadway, Suite 500 Tyler, Texas 75703 Tel: [phone]
Fax: [phone]

Em: Fedrv(gicklaw.com
Attorneys for Defendants lAC SEARCH & MEDIA, INC. and LYCOS, INC.

DEFENDANS' MOTION TO DISMISS FOR LACK OF STANING - Page 15

Case 2:07 -cv-00511- T JW-CE Document 66 Filed 07/16/2008 Page 19 of 19

CERTIFCATE OF SERVICE
The undersigned hereby certfies that a true and correct copy of the above and record foregoing document has been served on July 16, 2008 on all counsel of who are deemed to have consented to electronic service via the Court's CMlCF
system per Local Rule CV -5(a)(3).

/slThomas B. Walsh. IV Thomas B. Walsh, IV

DEFENDANS' MOTION TO DISMISS FOR LACK OF STANING - Page 16