Microsoft Corporation v. TIVO Inc

Filing 22

DECLARATION of Joseph Lipner filed by Defendant TIVO Inc. re 21 MOTION to Stay Pursuant to 28 U.S.C. § 1659 and Transfer Venue Pursuant to 28 U.S.C. § 1404(a) MOTION to Stay Pursuant to 28 U.S.C. § 1659 and Transfer Venue Pursuant to 28 U.S.C. § 1404(a) (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P)(McWilliam, Jofrey)

Microsoft Corporation v. TIVO Inc

Doc. 22

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The Honorable Ricardo S. Martinez

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON MICROSOFT CORPORATION, Plaintiff, ) ) ) ) ) ) ) ) ) )

No. 2:11-cv-00134 RSM DECLARATION OF JOSEPH LIPNER NOTE ON MOTION CALENDAR: FRIDAY, MARCH 18, 2011

I, Joseph Lipner, hereby declare as follows: I am an partner at the law firm of Irell & Manella LLP, and am counsel of record

for Defendant TiVo Inc. ("TiVo") in this matter. I am admitted pro hac vice for this matter. I submit this Declaration in support of Defendant's Motion to Stay Pursuant to 28 U.S.C. § 1659 and to Transfer Venue Pursuant to 28 U.S.C. § 1404(a). Except where stated, I have personal knowledge of the facts set forth in this Declaration and, if called as a witness, could and would testify competently to such facts. 2. Attached hereto as Exhibit A is a true and correct copy of Microsoft's Opening

Claim Construction Brief, filed in the matter Microsoft Corp. v. Tivo Inc., Case No. 5:10-CV00240-LHK (N.D. Cal. 2010) (the "California Action").

DECLARATION OF JOSEPH LIPNER (No. 2:11-cv-00134 RSM) 1

38TH FLOOR 1000 SECOND AVENUE SEATTLE, WASHINGTON 98104 [phone]

Dockets.Justia.com

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3.

Attached hereto as Exhibit B is a true and correct copy of the Complaint of

Microsoft Corporation Under Section 337 of the Tariff Act of 1930, As Amended, which Microsoft filed with the United States International Trade Commission on January 24, 2011. 4. Attached hereto as Exhibit C is a true and correct copy of the Second Declaration

of James Baldwin, filed by Microsoft in the matter TiVo v. AT&T Inc., et al., Case No. 2:09-cv0259-DF (E.D. Tex. 2009) (the "Texas Action"). 5. Attached hereto as Exhibit D is a true and correct copy of Microsoft

Corporation's First Supplemental Rule 26(a) Disclosures, filed by Microsoft in the Texas Action. 6. Attached hereto as Exhibit E is a true and correct copy of U.S. Patent No.

5,654,748 (the "'748 patent"), asserted by Microsoft in the California Action. 7. Attached hereto as Exhibit F is a true and correct copy of U.S. Patent No.

5,585,838 (the "'838 patent"), asserted by Microsoft in the instant suit. 8. Attached hereto as Exhibit G is a true and correct copy of U.S. Patent No.

4,706,121, listed by TiVo as a prior art reference to the '748 patent. Patrick Young is named as an inventor. Our research indicates that Mr. Young appears to live in the Northern District of California. 9. Attached hereto as Exhibit H is a true and correct copy of U.S. Patent No.

5,479,268, listed by TiVo as a prior art reference to the '748 patent. Patrick Young is named as an inventor. David J. Anderson, Allan Ebright, Michael Faber, and John Roop are also named as inventors. Our research indicates that each of these individuals appears to live in the Northern District of California. 10. Attached hereto as Exhibit I is a true and correct copy of U.S. Patent No.

5,583,560, listed by TiVo as a prior art reference to the '748 patent. 11. Attached hereto as Exhibit J is a true and correct copy of U.S. Patent No.

5,594,509, listed by TiVo as a prior art reference to the '748 patent. Our research indicates that eight of the nine inventors listed on Patent Nos. 5,583,560 and 5,594,509 appear to reside in the

DECLARATION OF JOSEPH LIPNER (No. 2:11-cv-00134 RSM) 2

38TH FLOOR 1000 SECOND AVENUE SEATTLE, WASHINGTON 98104 [phone]

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Northern District of California: Fabrice Florin, Michael Buettner, Glenn Corey, Janey Fritsche, Peter Maresca, Peter Miller, Stuart Sharpe, and Nick West. 12. Attached hereto as Exhibit K is a true and correct copy of U.S. Patent No.

5,805,804, listed by TiVo as a prior art reference to the '748 patent. 13. Attached hereto as Exhibit L is a true and correct copy of Plaintiff Microsoft

Corporations' Disclosure of Asserted Claims and Infringement Contentions in the California Action. 14. 6,008,803. 15. 5,731,844. 16. 5,648,824. 17. Attached hereto as Exhibit P is a true and correct copy of U.S. District Court ­ Attached hereto as Exhibit O is a true and correct copy of U.S. Patent No. Attached hereto as Exhibit N is a true and correct copy of U.S. Patent No. Attached hereto as Exhibit M is a true and correct copy of U.S. Patent No.

Judicial Caseload Profiles available at http://www.uscourts.gov/cgi-bin/cmsd2010Sep.pl. 18. I am informed that Microsoft has begun reviewing TiVo's source code for the

accused products in connection with the Texas Action and the California Action in law offices in the Northern District of California. I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. DATED this 3rd day of March, 2011 at Los Angeles, California. By /s/ Joseph Lipner Joseph Lipner CA State Bar No. 155735 1800 Avenue of the Stars, Suite 900 Los Angeles, CA 90067 Phone: [phone] Fax: [phone] Email: [e-mail]

DECLARATION OF JOSEPH LIPNER (No. 2:11-cv-00134 RSM) 3

38TH FLOOR 1000 SECOND AVENUE SEATTLE, WASHINGTON 98104 [phone]

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CERTIFICATE OF SERVICE The undersigned attorney certifies that on the 3rd day of March, 2011, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following: Arthur W. Harrigan, Jr. Christopher Wion Shane P. Cramer Danielson Harrigan Leyh & Tollefson LLP 999 Third Avenue, Suite 4400 Seattle, WA 98104 [e-mail] [e-mail] [e-mail] T. Andrew Culbert Stacy Quan Microsoft Corporation One Microsoft Way Redmond, WA 98052 Mark Davis Weil, Gotshal & Manges LLP 1300 Eye Street NW, Suite 900 Washington, DC 20005-3314 [e-mail] Tim DeMasi Weil, Gotshal & Manges LLP 767 Fifth Avenue New York, NY 10153 [e-mail] Counsel for Microsoft Corporation /s/ Jofrey M. McWilliam Jofrey M. McWilliam 1000 Second Avenue, Suite 3800 Seattle, WA 98104-4082 Telephone: [phone] Facsimile: [phone] Email: [e-mail]

DECLARATION OF JOSEPH LIPNER (No. 2:11-cv-00134 RSM) 4

38TH FLOOR 1000 SECOND AVENUE SEATTLE, WASHINGTON 98104 [phone]