Free Memorandum in Opposition - District Court of California - California

Case 3:07-cv-05626-SI

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JEFFREY E. FAUCETTE (No. 193066) Email: [email protected] SIMONA ALESSANDRA AGNOLUCCI (No. 246943) Email: [email protected] HOWARD RICE NEMEROVSKI CANADY FALK & RABKIN A Professional Corporation Three Embarcadero Center, 7th Floor San Francisco, California 94111-4024 Telephone: 415/434-1600 Facsimile: 415/217-5910 KEVIN B. BURGESS (Pro Hac Vice) Email: [email protected] McKOOL SMITH P.C. 300 W. 6th Street, Suite 1700 Austin, Texas 78701 Telephone: 512/692-8700 Facsimile: 512/692-8744 Attorneys for Defendant WI-LAN, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

MARVELL SEMICONDUCTOR INC., a California corporation, Plaintiff, v. WI-LAN, INC., a Canadian corporation, Defendant.

No. C 07-05626 SI WI-LAN, INC.'S OPPOSITION TO MARVELL SEMICONDUCTOR, INC.'S ADMINISTRATIVE MOTION FOR LEAVE TO FILE SURREPLY Hearing Date: Location: Time: Judge: June 20, 2008 Courtroom 10, 19th Floor 9:00 a.m. Honorable Judge Illston

OPPOSITION TO MOTION TO FILE SURREPLY

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Marvell Semiconductor, Inc. ("Marvell") argues that good cause exists for filing the proposed surreply because "[t]he June 6th Covenant is new information . . . ." Marvell is wrong--the June 6th Covenant is not new information. The June 6th Covenant is verbatim the same covenant as the March 28th Covenant (exhibit A to the Motion to Dismiss) with the sole exception that the June 6th Covenant applies to Marvell's new Tavor chipset family as opposed to the PXA90x family of chipsets that Marvell was selling at the time it filed its declaratory judgment complaint. Marvell previously described the March 28th Covenant for the PXA90x family of chipsets as a "broad covenant not to sue." Opposition at 5. Indeed, in its Opposition to the Motion to Dismiss, Marvell complained that "Wi-LAN has not given an equally broad covenant not to sue on Marvell Release 5 products which are either in, or about to enter, the market, such as the Tavor family of chipsets." Id. at 5. Pursuant to Marvell's request, Wi-LAN granted Marvell the same broad covenant not to sue on the new Tavor family of chipsets. Marvell's proposed Surreply belatedly seeks to raise issues with the scope of the covenant--issues Marvell did not raise previously--and it does so despite the fact that Wi-LAN has provided the same broad covenant not to sue it provided for the PXA90x family of chipsets. covenant. Furthermore, Marvell's Motion to File a Surreply should be denied as the Proposed Surreply is futile. Marvell argues that the "broad covenant not to sue" is limited in two respects: 1) the covenant does not include Marvell's affiliated companies; and 2) the Marvell should not now be heard to complain about the scope of the

covenant excludes future products. Neither perceived limitation is sufficient for the Court to maintain jurisdiction. First, "conceivable claims against `affiliates' of the plaintiffs . . . are insufficient to generate the required actual cases or controversies that have been extinguished by [the] covenant not to sue the plaintiffs on the claims of the [] patent." In re Columbia Univ. Patent Litig., 343 F. Supp. 2d 35, 49 (D. Mass. 2004).
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Second, future products of unknown, undefined scope cannot be of "sufficient immediacy and reality to warrant the issuance of a declaratory judgment." Cat Tech., LLC v. Tubemaster, Inc., No. 2007-1443, slip op. at 10 (Fed. Cir. May 28, 2008) (citing MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118, 127 (2007) (internal citation and quotation marks omitted)). Marvell has the burden of establishing the immediacy and reality of future products sufficient for declaratory judgment jurisdiction; but, Marvell has done nothing more than advance an unsupported allegation of possible future products. As this Court has explained, "`[t]he residual possibility of a future infringement suit based on [] future acts is simply too speculative a basis for jurisdiction over [a] counterclaim for declaratory judgments of invalidity.'" Sharper Image Corp. v. Honeywell Int'l, Inc., Nos. C 02-4860 CW; C 04-0529 CW, 2005 U.S. Dist. LEXIS 32425, at *7 (N.D. Cal. Aug. 31, 2005) (quoting Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1058 (Fed. Cir. 1995)). There is no new information justifying Marvell's request for leave to file its proposed Surreply. Wi-LAN, therefore, respectfully requests that the Court deny Marvell's Motion for Leave to File a Surreply. Wi-LAN also respectfully submits that the record is clear that no case or controversy exists to maintain declaratory judgment jurisdiction, and a hearing to decide this matter is, therefore, unnecessary, especially in view of the covenants that Wi-LAN has provided, not only for the PXA90x family of chipsets being sold at the time the Complaint was filed-- which is when jurisdiction must be established by Marvell--but also for the new Tavor family of chip sets. /// /// /// /// /// ///
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DATED: June 17, 2008. Respectfully, JEFFREY E. FAUCETTE SIMONA ALESSANDRA AGNOLUCCI HOWARD RICE NEMEROVSKI CANADY FALK & RABKIN A Professional Corporation By: /s/ SIMONA ALESSANDRA AGNOLUCCI

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Attorneys for Defendant WI-LAN, INC.

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