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 Att. 12

EXHIBIT L

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Chad S. Campbell (SBN 258723) [e-mail] PERKINS COIE BROWN & BAIN P.A. 2901 North Central Avenue, Suite 2000 Phoenix, AZ 85012-2788 Telephone: [phone] Facsimile: [phone] Lauren Sliger (SBN 213880) [e-mail] PERKINS COIE LLP 1888 Century Park East, Suite 1700 Los Angeles, CA 90067-1721 Telephone: [phone] Facsimile: [phone] Farschad Farzan (SBN 215194) [e-mail] PERKINS COIE LLP Four Embarcadero Center, Suite 2400 San Francisco, CA 94111 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff Microsoft Corporation UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION MICROSOFT CORPORATION, a Washington corporation, Plaintiff, v. TIVO INC., a Delaware corporation, Case No. 5:10-cv-00240-RS (PVT) PLAINTIFF MICROSOFT CORPORATIONS' DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS (Patent Local Rules 3-1 and 3-2) Defendant.

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AND RELATED COUNTERCLAIMS.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I.

Pursuant to Patent Local Rules ("P.L.R.") 3-1 of the Local Rules of Practice for Patent Cases before the United States District Court for the Northern District of California, Plaintiff Microsoft Corporation ("Microsoft") makes the following Disclosure of Asserted Claims and Infringement Contentions. Microsoft's statements are based on publicly available sources that describe or show aspects of the accused infringing devices. Discovery in this action has only recently begun, no third party discovery has yet been taken, no source code has been reviewed, and the claims of the patents-in-suit have not yet been construed by the Court. Pursuant to the Federal Rules of Civil Procedure and the Patent Local Rules, Microsoft therefore reserves the right to supplement, amend and/or modify this Disclosure as its theories of the case are more fully developed over the course of discovery. This disclosure is made solely for the purpose of this action. This disclosure is subject to all objections as to competence, relevance, materiality, propriety, and admissibility, and to any and all other objections on any grounds that would require the exclusion of statements contained herein if such disclosure were asked of, or statements contained herein were made by, a witness present and testifying in court, all of which objections and grounds are expressly reserved and may be interposed at the time of trial. P.L.R. 3-1: DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS FOR U.S. PATENT NO. 6,008,803 A. Asserted Claims

Microsoft alleges that Defendant TiVo Inc. ("TiVo") infringes at least claims 1 and 2 of United States Patent No. 6,008,803 ("the '803 Patent")(the "Asserted '803 Patent Claims"). The contentions of Asserted '803 Patent Claims are, at this stage in the proceedings, necessarily limited in the sense that Microsoft has had limited access to information concerning the structure and function of TiVo's accused products, software, and services. Microsoft reserves the right to supplement these contentions as it obtains additional information concerning TiVo's accused products and/or services over the course of discovery.

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B.

Accused Instrumentalities

Subject to the foregoing reservations, and based on information presently known to it, Microsoft believes that at least the following apparatuses, products, devices, processes, methods, acts, or other instrumentalities of TiVo infringe or are covered by the Asserted '803 Patent Claims: Series2, Series2 DT, Series3 HD, TiVo HD, TiVo HD XL, TiVo Premiere, and TiVo Premiere XL. Microsoft reserves the right to add, amend, or remove TiVo products as discovery continues. C. Preliminary Claim Charts

A claim chart identifying where each element of each Asserted '803 Patent Claim is found within the Accused Instrumentalities is attached hereto as Attachment A. This claim chart is based solely on publicly-available documents and information because no documents have been provided yet by TiVo. Therefore, additional claims, and infringement positions may become applicable as information regarding TiVo's instrumentalities is acquired through the discovery process and otherwise. Microsoft expressly reserves the right to augment, supplement and revise its infringement contentions and charted information as discovery progresses. D. Indirect Infringement

Microsoft also and/or alternatively contends that TiVo indirectly infringes at least the '803 Patent Asserted Claims by actively inducing third parties (i.e., customers, subscribers and business partners) to infringe by providing third parties with specific and detailed explanations, instructions, and information as to arrangements, applications, and uses of its products, software and services that promote and demonstrate how to use its products, software and services in an infringing manner. E. Doctrine of Equivalents

While Microsoft alleges that TiVo has literally infringed each of the Asserted '803 Patent Claims, it may also have infringed one or more of the Asserted '803 Patent Claims through the doctrine of equivalents. To the extent that any differences are alleged to exist between the Asserted Claims and the Accused Instrumentalities, such differences are insubstantial. TiVo's products and/or methods perform substantially the same function, in substantially the same way,
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to yield substantially the same result as the claimed subject matter, and therefore TiVo has infringed the Asserted '803 Patent Claims both literally and under the doctrine of equivalents. F. Priority Dates

Each of the Asserted '803 Patent Claims is entitled to a priority date at least as early as, and possibly earlier than, November 29, 1994, the filing date of U.S. Application No. 08/346,442, now U.S. Patent No. 5,623,613, the grandparent to the '803 Patent; and/or December 13, 1996, the filing date of U.S. Application No. 08/766,808, now U.S. Patent No. 5,812,123, the parent to the '803 Patent. The Asserted '803 Patent Claims may be entitled to an earlier priority date based on their conception and/or actual reduction to practice dates. G. Willful Infringement

TiVo has been willfully infringing the Asserted '803 Patent Claims since at least as early as January 25, 2010, the date on which Microsoft served TiVo with the present Complaint. II. P.L.R. 3-1: DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS FOR U.S. PATENT NO. 6,055,314 A. Asserted Claims

Microsoft alleges that TiVo infringes at least claims 1-4, 6-8, 27, 29, 30, 32, 42, 63-64, and 70 of United States Patent No. 6,055,314 ("the '314 Patent") (the "Asserted '314 Patent 17 Claims"). The contentions of Asserted '314 Patent Claims are, at this stage in the proceedings, 18 necessarily limited in the sense that Microsoft has had limited access to information concerning 19 the structure and function of TiVo's accused products, software and services. The '314 Patent 20 claims implicate non-public operation of circuits, logic, software, and/or firmware within TiVo's 21 DVRs that cannot be readily investigated from public information or research. Microsoft reserves 22 the right to supplement these contentions and/or provide additional evidence of infringement 23 following TiVo's and third parties' disclosure of that information concerning TiVo's accused 24 products and/or services over the course of discovery. 25 B. 26 Subject to the foregoing reservations, and based on information presently known to it, 27 Microsoft believes that at least the following apparatuses, products, devices, processes, methods, 28
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acts, or other instrumentalities of TiVo infringe or are covered by the Asserted '314 Patent Claims: Series3 HD, TiVo HD, TiVo HD XL, TiVo Premiere, and TiVo Premiere XL. Microsoft reserves the right to add, amend, or remove TiVo products as discovery continues. C. Preliminary Claim Charts

A claim chart identifying where each element of each Asserted '314 Patent Claim is found within the Accused Instrumentalities is attached hereto as Attachment B. This claim chart is based solely on publicly-available documents and information because no documents have been provided yet by TiVo. Therefore, additional claims, and infringement positions may become applicable as information regarding TiVo's instrumentalities is acquired through the discovery process and otherwise. Microsoft expressly reserves the right to augment, supplement and revise its infringement contentions and charted information as discovery progresses. D. Indirect Infringement

Microsoft also and/or alternatively contends that TiVo indirectly infringes at least the Asserted '314 Patent Claims by actively inducing third parties (i.e., customers, subscribers and business partners) to infringe by providing third parties with specific and detailed explanations, instructions, and information as to arrangements, applications, and uses of its products and services that promote and demonstrate how to use its products and services in an infringing manner. E. Doctrine of Equivalents

While Microsoft alleges that TiVo has literally infringed each of the Asserted '314 Patent Claims, it may also have infringed one or more of the Asserted '314 Patent Claims through the doctrine of equivalents. To the extent that any differences are alleged to exist between the Asserted '314 Patent Claims and the Accused Instrumentalities, such differences are insubstantial. TiVo's products and/or methods perform substantially the same function, in substantially the same way, to yield substantially the same result as the claimed subject matter, and therefore TiVo has infringed the Asserted '314 Patent Claims both literally and under the doctrine of equivalents.

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