Apple, Inc. v. Motorola, Inc. et al

Filing 161

Brief in Opposition by Defendants Motorola Mobility, Inc., Motorola, Inc. re: 154 Motion to Stay filed by Next Software, Inc., Apple, Inc. (Hansen, Scott)

UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
APPLE INC. and NeXT SOFTWARE,
INC. (f/k/a NeXT COMPUTER, INC.),
Plaintiffs,

v.
MOTOROLA, INC. and MOTOROLA
MOBILITY, INC.
Defendants.

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Case No. 10-CV-662-bbc
JURY TRIAL DEMANDED

OPPOSITION TO PLAINTIFFS’
MOTION FOR A STAY PURSUANT TO FED. R. CIV. P. 19
Defendants Motorola, Inc. d/b/a Motorola Solutions, Inc. and Motorola Mobility, Inc.
(collectively, “Motorola”) respectfully submit this Opposition to Plaintiffs Apple Inc. (“Apple”)
and NeXT Software, Inc.‟s (“NeXT”) (collectively, “Plaintiffs”) Motion for a Stay Pursuant to
Fed. R. Civ. P. 19 and supporting memorandum of law (the “Motion” or “Motion to Stay”).
(D.I. 154, 155.)
SUMMARY OF ARGUMENT
Plaintiffs are yet again seeking to avoid Motorola‟s patents and have apparently even
grown tired of pursuing their own claims. Less than one week before the exchange of expert
reports on liability and just six weeks before the filing deadline for summary judgment motions,
Plaintiffs moved to stay this case in its entirety, including Plaintiffs‟ own claims against
Motorola. Plaintiffs argue that a stay is warranted because Motorola has temporarily afforded
certain powers of consent to Google Inc. pursuant to the Agreement and Plan of Merger (the
“Merger Agreement”) causing Motorola to lose prudential standing, at least while the merger is

pending. (D.I. 155, Mem. of Points and Authorities in Supp. of Mot. to Stay (“Pls. Br.”) at 1-2.)
Plaintiffs‟ allegations are baseless; the Merger Agreement does not affect Motorola‟s prudential
standing. And, even if it somehow did, the standing issues would be transient and would likely
resolve themselves long before judgment is entered in this case.
The concept of prudential standing is rooted in the notion that all parties with the right to
sue must do so in a single action and is incorporated into the joinder requirements of Federal
Rule of Civil Procedure 19 (“Rule 19”). Prudential standing issues arise in patent cases when
more than one party has the right to exclude others from practicing the patented invention.
When there are multiple parties with exclusionary rights, all parties must be joined to prevent the
threat of multiple litigations and recoveries. Here, it is undisputed that Motorola is the only party
with exclusionary rights in its patents. As Plaintiffs admit, even after the execution of the
Merger Agreement, Google does not have any “exclusionary rights in the patent[s]” or any
“contractual right to sue on the patents or license the patents.” (Pls. Br. at 16.) Because Google
does not have any independent right to sue, there is no risk of additional litigation or liability
and, therefore, no defects in Motorola‟s prudential standing. Furthermore, the limited and
temporary power of consent afforded to Google under the terms of the Merger Agreement was
never intended to, nor did it, affect Motorola‟s rights with respect to its patents. The provisions
in the Merger Agreement of which Plaintiffs complain were designed solely to preserve the value
of Motorola‟s intellectual property while the merger is pending, not to diminish Motorola‟s
ability to protect the same.
Even assuming arguendo that the provisions in the Merger Agreement somehow affect
Motorola‟s standing, there is still no reason to stay this case. The complained of provisions are
transient and will cease effect after the close of the merger or termination of the Merger

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Agreement. Once the merger is complete, Motorola will maintain the same rights in its
intellectual property as it had at the outset of the transaction. (Ex. 1, Attach. A (“M.A.”) at §§
1.03, 3.14(c).) Plaintiffs‟ assertions of ambiguity concerning patent ownership post-merger are
ill founded and contrary to the Merger Agreement. Motorola is now, and will remain, the
Patents‟ holder in title under the express terms of the Merger Agreement. (See id.) Plaintiffs‟
assertions to the contrary undermine Plaintiffs‟ purported purpose in seeking a stay. For, if
Plaintiffs truly believe that Motorola‟s patent rights will be in flux at the end of the merger, then
a stay will not cure the purported prudential standing defects and would serve only to
unnecessarily postpone resolution of this case.
Accordingly, Plaintiffs‟ Motion to Stay should be denied.
STATEMENT OF FACTS
I.

THE ADVANCED STAGE OF THIS LITIGATION
Plaintiffs filed their original complaint asserting three patents on October 8, 2010, and

later amended to include twelve additional patents that were the subject of a suit pending in
Delaware. (D.I. 1, 20.) Motorola counterclaimed and asserted six patents (the “Patents”). It is
undisputed that Motorola had standing to assert its Patents at that time. Since the filing of the
complaints and counterclaims, this case has progressed quickly. Currently, the parties are fully
engaged in discovery, and claim construction briefing and argument is complete. (See D.I. 116;
Ex. 1.) Most recently, on September 15, 2011, the parties exchanged expert reports on liability,
and, in the next six weeks, the parties will exchange additional expert reports and submit motions
for summary judgment. (See D.I. 27.) With this Motion, Plaintiffs seek to delay these
proceedings and avoid resolution of this case.1 This is not their first attempt. Plaintiffs also tried

1

Dropping patent claims mid-case also seems to be a theme of late for Plaintiffs. In this
action, Plaintiffs plan to seek voluntarily dismissal of their claim relating to Patent No. 5,969,705 (Count
3

to stay this case six months ago by filing a motion for preliminary injunction in another action
pending before this court. (Apple Inc. v. Motorola Mobility Inc., No. 11-cv-178, D.I. 6.) This
Court rejected Plaintiffs‟ attempts to delay the case then and should do so again here. (Id. at
D.I. 80.)
II.

THE MERGER AGREEMENT AND THE LIMITED POWERS OF CONSENT
AFFORDED TO GOOGLE
Plaintiffs‟ argument for a stay is based on the Merger Agreement executed by Motorola

Mobility Holdings, Inc. (“Motorola Holdings”) and Google on August 15, 2011. (M.A. § 1.01.)
Plaintiffs assert that the limited and temporary rights of consent afforded to Google under the
Merger Agreement cause defects, at least temporarily, in Motorola‟s prudential standing. (Pls.
Br. at 1-3.) In relevant part, the Merger Agreement provides that, while the merger is pending,
Motorola must obtain Google‟s consent, which Google may not unreasonably withhold, before
initiating new lawsuits, amending or settling claims in existing suits, and granting assignments
and licenses unless those licenses are non-transferable, non-sublicensable, non-exclusive
standard licenses entered into in the ordinary course of business. (MA §§ 5.01(j), 5.01(v).)
Other restrictions in the Merger Agreement expressly require that Motorola “conduct its business
and operations according to its ordinary and usual course of business consistent with past
practice and . . . use . . . its reasonable best efforts to preserve intact its business organization.”
(M.A. § 5.01.) At the close of the merger, the Merger Agreement further provides that Motorola
will have the same rights in its intellectual property as it did at the outset of this transaction.
(M.A. § 1.03.) When standing alone or taken together, the purpose of these provisions is clear.

VIII). (Ex. 1 ¶ 3.) They also dismissed claims relating to several patents in a pending case against HTC
before the International Trade Commission, including claims relating four patents currently at issue in this
case: RE Patent No. 39,486, Patent No. 5,929,852, Patent No. 5,915, 131, and Patent No. 5,566,337
(Counts IV, X, XI, and XII, respectively). (D.I. 12 ¶¶ 45-51, 87-107; Ex. 1 ¶ 3.)

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They are meant to preserve the value of Motorola‟s intellectual property assets while the merge
is pending, not to diminish Motorola‟s ability to enforce its Patents.
ARGUMENT
I.

MOTOROLA HAS BOTH PRUDENTIAL AND CONSTITUTIONAL STANDING
TO PURSUE THIS ACTION
Motorola has the necessary constitutional and prudential standing to pursue this action.

As an initial matter, Plaintiffs‟ claim that Motorola lacks prudential standing without Google
fails in light of their admissions that Google does not have any exclusionary rights or any other
contractual right upon which it can sue to enforce the Patents.2 (Pls. Br. at 2, 16.) If Google
does not have any rights to sue, then there is no risk of multiple litigations or liabilities and, thus,
no defects in Motorola‟s prudential standing. Furthermore, the temporary and limited rights of
consent afforded to Google under the Merger Agreement were not intended to prevent Motorola
from protecting its intellectual property right but rather to perverse the value of those rights
while the merger is pending. Plaintiffs admit as much when they acknowledged that no
exclusionary rights flowed to Google under the terms of the Merger Agreement.
(Pls. Br. at 2, 16.) Because Motorola has not ceded any exclusionary rights to Google, Motorola
may pursue this action in its name alone as it has done since the outset of this case. Accordingly,
Plaintiffs‟ Motion to Stay based on a supposed lack of prudential standing should be denied.

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Notably, Plaintiffs‟ brief is full of contradictory statements and arguments. For example,
Plaintiffs argue that Motorola has given up “critical” rights, but that Google‟s rights are unsubstantial.
(Pls. Br. at 7, 16.) Plaintiffs acknowledge that the Merger Agreement provides that Motorola‟s
intellectual property rights will be the same at the close of the merger as they were at the outset of the
transaction, but then argue that ownership of those rights is unclear. (Id. at 3, 5.) Plaintiffs also argue
that Motorola‟s patent rights are “central” to Google‟s interest in Motorola, but then claim that settlement
may not be possible while the merger is pending, presumably because Google would not act on settlement
proposals. (Id. at 2, 10.)

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A.

Standards for Constitutional and Prudential Standing in Patent
Infringement Case

In order to sue for infringement, any party asserting a patent must establish both
constitutional and prudential standing. Morrow v. Microsoft Corp., 499 F.3d 1332, 1339 (Fed.
Cir. 2007). To demonstrate constitutional standing “„[a] plaintiff must allege personal injury
fairly traceable to the defendant‟s allegedly unlawful conduct and likely to be redressed by the
requested relief.‟” Id. (quoting Hein v. Freedom Religion Found. Inc., 551 U.S. 587 (2007).) In
patent infringement cases, this constitutional standing is derived from the Patent Act. Id. The
Patent Act provides that a patentee and his successors in title “shall have remedy by civil action
for infringement of his patent” and bestows upon them the “legal right to exclude others from
making, using, selling, or offering to sell the patented invention in the United States, or
importing the invention.” Id. (citing 35 U.S.C. §§ 100(d), 154, 271 & 281.) As the Federal
Circuit has long recognized, the legal right created by these provisions is the right to exclude. Id.
Thus, only the holder of exclusionary rights has constitutional standing to sue for patent
infringement. Id.
Prudential standing concerns arise when multiple parties hold exclusionary rights in a
patent and have constitutional standing to bring suit. Id. at 1340 (citing Intellectual Prop. Dev.
Inc. v. TCI Cablevision Cal., Inc., 248 F.3d 1333, 1347 (Fed. Cir. 2001). When this occurs, all
parties holding exclusionary rights must be “joined for the purpose of avoiding the potential for
multiple litigations and multiple liabilities and recoveries against the same alleged infringer.”
Morrow, 499 F.3d at 1340; see also Vaupel Textilmaschinen KG v. Meccanica Euro Italia
S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991). “This joinder analysis is incorporated in Federal
Rule of Civil Procedure 19,” which requires that a party be joined when failing to do so would

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“leave an existing party subject to substantial risk of incurring double, multiple, or otherwise
inconsistent obligations . . .” Morrow, 499 F.3d at 1340; Fed. R. Civ. P. 19(a)(1)(B)(ii).
B.

Plaintiffs’ Acknowledgement that Google does not have any Exclusionary
Rights in the Patents Dooms Their Prudential Standing Claims

Plaintiffs‟ claim that Google must be joined to this suit to satisfy prudential standing
concerns necessarily fails because Plaintiffs admit that Google lacks the requisite exclusionary
rights to be a necessary party. (Pls. Br. at 2, 16.) In Plaintiffs‟ own words:
Google holds no exclusionary rights in the patents. There is no evidence that
Google may practice the patents, much less to the exclusion of anyone else. Nor
is there evidence that Google may grant licenses to the patents, such that it would
suffer economic injury by uncompensated infringement. . . . There is no evidence
that Google has the contractual right to sue on the patents or license the patents.
(Pls. Br. at 16 (emphasis in original).)
Without exclusionary rights, Google lacks constitutional standing and cannot bring any
action based on the Patents. Morrow, 499 F.3d at 1339. Plaintiffs, therefore, are not facing any
threat of multiple litigations or liabilities and have no basis to challenge Motorola‟s prudential
standing. See id; see also Fed. R. Civ. P. 19(a)(1)(B)(ii). As the Federal Circuit recognized in
Morrow, when “prudential concerns are not at play in a particular case, joinder of the [party] is
not necessary.” Morrow, 499 F.3d at 1340. Thus, in light of Plaintiffs‟ acknowledgement that
Google does not have exclusionary rights or any other right to bring suit, it is clear that Google is
not a necessary party and need not be joined to this action. Accordingly, Plaintiffs‟ Motion
should be denied.
C.

Because Google’s Powers of Consent are not Significant Exclusionary Rights,
Motorola Maintains the Requisite Standing to Bring this Action in its Name
Alone

Motorola maintains standing to pursue this action solely in its name even while the
Merger Agreement is in effect. With regard to standing, the Federal Circuit has identified three
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categories of plaintiffs: (1) those that can sue in their name alone, (2) those that can sue only if
another party is joined to the suit, and (3) those that cannot even participate as a party in an
infringement suit. Morrow, 499 F.3d at 1339. The scope of the parties‟ exclusionary rights
determines the category into which it falls. Those in the first category hold all substantial
exclusionary rights and can sue in their names alone; those in the second category hold some, but
not all, exclusionary rights and must join others; and those in the third category hold no
exclusionary rights and can never sue. Id. at 1339-41.
It is undisputed that Motorola fell into the first category at the outset of this litigation.
However, Plaintiffs now assert that the limited powers of consent afforded to Google under the
Merger Agreement transferred Motorola from the first to the second category. (Pls. Br. at 7.)
The only way that Motorola could move from the first to the second category is by transferring
exclusionary rights to Google. Morrow, 499 F.3d at 1340. Here, Plaintiffs admit that the Merger
Agreement made no such transfer. (Pls. Br. at 2, 16.) Where there was no transfer of
exclusionary rights to Google, it necessarily follows that Motorola has maintained all of its
exclusionary rights in the Patents and can continue in this action alone.
Moreover, a review of the parties‟ intent in affording Google powers of consent and the
limited and temporary nature of those powers confirms this conclusion. To determine whether a
provision in an agreement transfers exclusionary rights, courts “must ascertain the intention of
the parties and examine the substance of what was granted.” Vaupel, 944 F.2d at 874. Here, the
intent of the parties is clear. Motorola, the Patents‟ title holder, is engaged in a merger
transaction with Google. As part of that transaction, Motorola afforded Google limited and
temporary rights of consent designed to preserve the value of Motorola‟s intellectual property.

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Such provisions are common in merger agreements and ensure that the purchaser receives the
assets at the close of the transaction for which he bargained.
Turning then to the rights, the Federal Circuit considers the following factors in assessing
whether a party‟s exclusionary rights are significant enough to allow the party to sue in its own
name:


whether the party has an exclusive right to sue for infringement;



whether the party has an exclusive right to make, use, and sell products and
services under the patent;



whether the party has the ability to assign and sublicense the patent;



whether the party can recover damages in infringement actions;



whether a licensor can supervise and control the licensee;



whether the party is obligated to continue paying patent maintenance fees;



whether the party has reversion rights; and



the duration of the existing rights.

Alfred E. Mann Found. for Scientific Research v. Cochlear Corp., 604 F.3d 1354, 1360 (Fed.
Cir. 2010)
These factors weigh in favor of finding that Motorola, the Patents‟ title holder, maintains
a more than sufficient bundle of exclusionary right to pursue this action in its name alone. Most
importantly, nothing in the Merger Agreement divests Motorola of the exclusive rights to sue to
enforce, assign and sublicense, or practice the Patents. The Merger Agreement merely requires
that Motorola temporarily obtain Google‟s consent, which may not be unreasonably withheld,
before initiating new lawsuits, amending or settling claims in existing suits, and granting certain
assignments and licenses. (M.A. §§ 5.01(j), (v).) The Merger Agreement does not give Google
any right to undertake these activities on its own, to be involved in or control these activities

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after Google gives its consent, or to share in the proceeds from these activities. Furthermore,
even under the Merger Agreement, Motorola maintains the right to enter into non-transferable,
non-sublicensable, non-exclusive standard licenses without Google‟s consent.
Google‟s limited and temporary powers of consent do not affect Motorola‟s exclusionary
rights in the Patents. As the Federal Circuit found in Vaupel, veto powers are not substantial
rights. 944 F.2d at 875. In Vaupel, the Federal Circuit held that a “sublicensing veto was a
minor derogation from the grant of rights” that “did not substantially interfere with the full use
by Vaupel of the exclusive rights under the patent.” Vaupel, 944 F.2d at 875; see also
Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1251-52 (Fed. Cir. 2000) (explaining that consent
provisions in licensing agreement did not significantly restrict scope of rights in patent). As with
the veto power that existed in Vaupel, Google‟s powers of consent under the Merger Agreement
do not substantially interfere with Motorola‟s exclusionary rights and do not affect Motorola‟s
standing in this action.
The limited duration of Google‟s rights of consent also supports a finding that Motorola‟s
exclusionary rights have not materially diminished. Here, Google‟s consent (which cannot be
unreasonably withheld) is required only while the merger is pending. (M.A. §§ 5.01, 7.02.)
After the merger closes or the Merger Agreement is otherwise terminated, Google‟s limited
rights of consent will cease. (M.A. § 5.01.) Additionally, under certain circumstances, Motorola
can unilaterally terminate the Merger Agreement and extinguish Google‟s already limited rights.
(M.A. § 7.01.) Because the rights afforded to Google were both limited and transient, they do
not substantially interfere with Motorola‟s exclusionary rights and, thus, should not affect
Motorola‟s standing.

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Furthermore, Plaintiffs have not identified any case in which a title holder in a patent was
divested of standing based on temporary rights afforded to another party in a merger agreement.
Instead, Plaintiffs seek to rely, in large part, on several cases dealing with exclusive licensees
who were attempting to assert patents without joining the party holding title to the patents. See
Sicom Systems Ltd. v. Agilent Techs., Inc., 427 F.3d 971 (Fed. Cir. 2005); TCI, 248 F.3d 1333;
Propat Int’l Corp. v. RPost Ltd., 473 F.3d 1187 (Fed. Cir. 2007); Abbott Laboratories v.
Diamedix Corp., 47 F.3d 1128 (Fed. Cir. 1995). These cases are easily distinguishable because
they deal with licensees, not holders in title, who were never vested with all substantial
exclusionary rights such that they could sue in their own names.
Sicom, Abbott, and TCI are further distinguishable because, in each of those cases,
multiple parties held the right to participate in litigation.3 See Sicom, 427 F.3d at 979; TCI, 248
F.3d at 1342; Abbott, 47 F.3d at 1132. Loss of the exclusive right to sue is a primary
consideration in the Court‟s analysis and a key differentiating factor here. In Sicom and Abbott,
both the patentees and the parties licensing those patents maintained the right to bring actions to
enforce the patents. See Sicom, 427 F.3d at 979; Abbott, 47 F.3d at 1132. And, in TCI, the
patentee acknowledged in the licensing agreement that it would be a necessary party under
certain circumstance. TCI, 248 F.3d at 1342. Motorola, on the other hand, is the only party with
constitutional standing to sue for enforcement of the Patents, which precludes any concerns over
prudential standing. Thus, these cases are not analogous.
3

Propat, another licensee case cited by Plaintiffs, is also distinguishable on its facts. 473 F.3d
1187. In Propat, the licensee, Propat, was granted rights to license patents, enforce those licensing
agreements, and to sue infringers, all of which were subject to the patent holder‟s approval. Id. at 1190.
Relying in large part on the fact that Propat could not practice the patents and had to seek approval for all
of its activities relating to the patents, the Court held that Propat did not have sufficient exclusionary
rights to establish constitutional standing. Id. at 1190-92. Here, there is no dispute that Motorola has
sufficient exclusionary rights to establish constitutional standing. Unlike Propat, Motorola has the right
to practice the Patents and grant certain licenses without seeking consent. Thus, Plaintiffs‟ reliance on
Propat is misplaced.

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Finally, the cases that Plaintiffs cite where the holders in title of the patents lost standing
to sue, either on their own or at all, are distinguishable for the same reason as those above—the
holder in title conveyed the right, either in part or in whole, to sue to another party. See
Enhanced Security Research, LLC v. Cisco Systems, Inc., No. 09-390-JJF, 2010 WL 2573953, at
*4 (D. Del. June 25, 2010); Zenith Elecs. Corp. v. Exzec Inc., 876 F.Supp. 175 (N.D. Ill. 1995).
In Enhanced Security Research, ESR granted another party “the exclusive right to: initiate,
maintain, manage, resolve, conclude and settle all arrangements and activities in connection with
any and all licensing or litigation enforcement efforts.” Enhanced Security Research, No. 09390-JJF, 2010 WL 2573953, at *4. Similarly, in Zenith, the patent holder granted an exclusive
licensee the express right to “initiate legal action in its own name.” Zenith, 876 F. Supp. at 179.
These cases are inapplicable to the instant case because Motorola has not conveyed any right to
sue for enforcement to another party, including Google. Accordingly, Plaintiffs‟ Motion should
be denied.
II.

EVEN ASSUMING THAT THE MERGER AGREEMENT AFFECTED
MOTOROLA’S STANDING, THE COURT STILL NEED NOT STAY THIS
ACTION
Even if this Court finds that Google‟s rights under the Merger Agreement create standing

defects, this case still need not be stayed. Any such issues are transient and will likely resolve
themselves before any judgment is entered in this case. After the close of the transaction or the
termination of the Merger Agreement, Motorola‟s rights with respect to the Patents will return to
their original condition and any existing defect will be cured. (M.A. § 3.14(c).) This case can
continue even with a temporary loss of standing so long as the standing defect is cured before
judgment is entered. See Schreiber Foods, Inc v. Beatrice Cheese, Inc. 402 F.3d 1198, 1202-04
(Fed. Cir. 2005).

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Plaintiffs‟ claims that Motorola‟s post-merger rights are in flux and that “there is no way
of knowing how the patent rights will be distributed” is contrary to the terms of the Merger
Agreement. (Pls. Br. at 3.) The Merger Agreement is clear on this point; it provides that
Google‟s limited powers of consent will cease at the close of the merger or termination of the
Merger Agreement. (M.A. §§ 5.01, 7.02.) According to the Merger Agreement, Motorola will
then have the same rights in the Patents that it had at the outset of this litigation.
(M.A. § 3.14(c).) Because the natural resolution of the transaction would cure any alleged
standing issues, the Court need not derail this entire case.4
Further, Plaintiffs‟ claim that patent rights post-merger “is a matter of sheer speculation”
casts doubt on the purpose of their Motion. If the same uncertainty will remain, then nothing is
gained by staying this case. The only purpose that a stay will serve is to unnecessarily delay the
case, which seems to be Plaintiffs‟ actual intent as opposed to any legitimate concern regarding
standing.
Moreover, granting Plaintiffs‟ unnecessary stay would set a dangerous precedent.
Plaintiffs complain of terms in the Merger Agreement that require Motorola to seek consent
before initiating new lawsuits, amending or settling claims in existing suits, and granting
assignments and licenses for the limited period while the merger is pending. (M.A. § 5.01.)
Such terms are common in merger agreements and serve the stated purpose of “preserv[ing]
intact [Motorola‟s] business organization.” (Id.) Interfering with the ability of potential
acquirers to obtain and assert such protections between signing and closing would have a chilling
4

Additionally, Motorola retains the right to sue for infringement that occurred prior to the
alleged loss in standing. It is well-settled that a party possessed of the legal title to a patent at the time of
infringement may bring suit to recover past damages. See Mas-Hamilton Grp. v. LaGrad, Inc., 156 F.3d
1205, 1210 (Fed. Cir. 1998). Thus, even assuming that the Merger Agreement somehow affected
Motorola‟s standing, which it did not, it would not affect Motorola‟s ability to recover damages for
infringement prior to August 15, 2011.

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effect on the sale of entities with valuable intellectual property rights. This chilling effect is
potentially prejudicial to such entities‟ owners (here, the public shareholders of Motorola, who
serve to benefit by a substantially above-market sale price). Precedent for such a stay would also
be potentially disruptive to an untold number of other patent suits. Essentially, Plaintiffs are
proposing a rule that would require all pre-existing patent litigation be stayed between execution
of any merger agreement and the close of the transaction. Such a rule would have wide-ranging
application and would serve only to unnecessarily protract litigation and increase burdens both
on litigants and the courts. Accordingly, Plaintiffs‟ Motion to Stay should be denied.
III.

IN THE EVENT THAT THE COURT IS INCLINED TO GRANT A STAY,
MOTOROLA REQUESTS AN OPPORTUNITY TO CURE ANY STANDING
ISSUES
To grant a stay, this Court must find that, despite the express terms of the Merger

Agreement and Plaintiffs‟ own admissions to the contrary, Motorola has ceded exclusionary
rights to Google through the Merger Agreement such that Motorola cannot proceed in this action
alone.5 Should the Court so hold, Motorola respectfully requests a limited period of time before
the entry of any such order so that Motorola can attempt to cure the defects in standing identified
by the Court. See Schreiber Foods, 402 F.3d at 1202-04 (holding that the temporary loss of
standing during a patent case can be cured before judgment).
CONCLUSION
For the foregoing reasons, Motorola respectfully requests that the Court deny Plaintiffs‟
Motion to Stay and allow this action to take its natural course.
5

Plaintiffs‟ citation to several cases that stand for the unremarkable proposition that this
Court has the authority to issue a stay does nothing to demonstrate that a stay is appropriate
based on the facts of this case. (Pls. Br. at 19-21 (citing Silicon Graphics, Inc. v. ATI Techs., Inc. No.
06-c-611-C WL 5595952, at *9 (W.D. Wis. June 14, 2007); Henri’s Food Prods. Co., Inc. v. Home Ins.
Co.,474 F. Supp. 889, 893-93 (E.D. Wis. 1979); Christian v. Monaco Coach Corp., No. SA CV 0800141-CJC, 2009 WL 1574553 (C.D. Cal. May 14, 2009).)

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Dated: September 21, 2011

Respectfully submitted,
MOTOROLA MOBILITY, INC.
By:
/s/ Scott W. Hansen

QUINN EMANUEL URQUHART
& SULLIVAN, LLP
Edward J. DeFranco
Alexander Rudis
Richard W. Erwine
51 Madison Avenue, 22nd Floor
New York, NY 10010
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[e-mail]
[e-mail]

Scott W. Hansen (1017206)
Lynn M. Stathas (1003695)
Lisa Nester Kass
REINHART BOERNER VAN DEUREN, S.C.
22 East Mifflin Street
P.O. Box 2018
Madison, WI 53701-2018
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[e-mail]
[e-mail]

David A. Nelson
500 West Madison St., Suite 2450
Chicago, IL 60661
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

Attorneys for Defendants
Motorola Solutions, Inc. (f/k/a Motorola, Inc.)
and Motorola Mobility, Inc.

Robert W. Stone
Brian Cannon
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[e-mail]
Charles K. Verhoeven
David Perlson
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

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