Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 1 of 20
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`William E. Devitt (Pro Hac Vice Pending)
`wdevitt@jonesday.com
`JONES DAY
`77 W. Wacker Dr.
`Chicago, IL 60601
`Telephone:
`(312) 782-3939
`Facsimile:
`(312) 782-8585
`
`
`
`Patrick T. Michael (State Bar No. 169745)
`pmichael@jonesday.com
`Krista S. Schwartz (State Bar No. 303604)
`ksschwartz@jonesday.com
`Matthew J. Silveira (State Bar No. 264250)
`msilveira@jonesday.com
`Joe C. Liu (State Bar No. 237356)
`jcliu@jonesday.com
`Michael A. Lavine (Pro Hac Vice Pending)
`mlavine@jonesday.com
`Lidiya A. Mishchenko (State Bar No. 313590)
`lmishchenko@jonesday.com
`JONES DAY
`555 California Street, 26th Floor
`San Francisco, CA 94104
`Telephone:
`415.626.3939
`Facsimile:
`415.875.5700
`
`David B. Cochran (Pro Hac Vice Pending)
`dcochran@jonesday.com
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, OH 44114-1190
`Telephone:
`216.586.3939
`Facsimile:
`216.579.0212
`
`Attorneys for Plaintiff
`XILINX, INC.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`XILINX, INC.,
`
`Plaintiff,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`
`Case No.
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF PATENT NON-
`INFRINGEMENT
`
`DEMAND FOR JURY TRIAL
`
`Defendant.
`
`
`
`Xilinx, Inc. (“Xilinx” or “Plaintiff”), by and through its undersigned counsel, complains
`
`against Godo Kaisha IP Bridge 1 (“IP Bridge” or “Defendant”) as follows:
`
`NATURE OF THE ACTION
`This is an action for declaratory judgment of patent non-infringement arising under
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`1.
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`Complaint for Declaratory Judgment of Patent
`Non-Infringement - Demand for Jury Trial
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`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 2 of 20
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`the patent laws of the United States, Title 35 of the United States Code.
`
`THE PARTIES
`Xilinx is a Delaware corporation with its principal place of business at 2100 Logic
`
`2.
`
`Drive, San Jose, California 95124.
`3.
`
`Xilinx is engaged in the business of designing and developing All Programmable
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`FPGAs, SoCs, MPSoCs, and 3D ICs, which uniquely enables applications that are both software
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`defined and hardware optimized – powering industry advancements in Cloud Computing, 5G
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`Wireless, Embedded Vision, and Industrial IoT.
`4.
`
`Xilinx is a fabless company – meaning that it does not manufacture or fabricate
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`any of its programmable integrated circuit products. Instead, Xilinx contracts third party
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`semiconductor manufacturing companies to manufacture or fabricate all of its programmable
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`integrated circuit products.
`5.
`
`Upon information and belief, IP Bridge is a Japanese Corporation with its principal
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`place of business at c/o Sakura Sogo Jimusho, 1-11 Kanda Jimbocho, Chiyoda-ku, Tokyo, 101-
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`0051, Japan.
`6.
`
`Upon information and belief, IP Bridge was created and funded by the Japanese
`
`government and Japanese private corporations.
`7.
`
`Upon information and belief, IP Bridge is engaged in the business of acquiring
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`patents and generating revenue by enforcing those patents against operating companies, including
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`California companies and companies with principal places of business in the State of California
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`and in the Northern District of California. IP Bridge purports to own over 3,500 patents.
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`JURISDICTION AND VENUE
`This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.,
`
`8.
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`and under the patent laws of the United States, Title 35 of the United States Code.
`9.
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`This Court has subject-matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338,
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`1367, 2201, and 2202.
`10.
`
`This Court has personal jurisdiction over IP Bridge by virtue of its sufficient
`
`minimum contacts with this forum as a result of the business it conducts within the State of
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`Complaint for Declaratory Judgment of Patent
`Non-Infringement – Demand for Jury Trial
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`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 3 of 20
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`California and within the Northern District of California as detailed below.
`11.
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`Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b)-(c).
`
`INTRADISTRICT ASSIGNMENT
`For purposes of intradistrict assignment pursuant to Civil Local Rules 3-2(c) and
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`12.
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`3-5(b), this Intellectual Property Action is to be assigned on a district-wide basis.
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`IP BRIDGE’S PATENT ASSERTION AND OTHER ACTIVITIES IN THE NORTHERN
`DISTRICT OF CALIFORNIA
`
`IP Bridge Accuses Xilinx of Infringement and Repeatedly Threatens Litigation
`
`13.
`
`On June 7, 2016, IP Bridge first accused Xilinx of patent infringement and
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`threatened litigation against Xilinx by having its outside litigation counsel, Michael Shore, notify
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`Xilinx that IP Bridge, “a patent aggregator for Japanese technology companies controlled by [the]
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`Japanese government,” believes it “has patents infringed by [] Xilinx.” IP Bridge’s counsel
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`explained that he “had recently sued Omnivision for” IP Bridge.
`14.
`
`On June 8, 2016, to further pressure Xilinx into IP Bridge’s demands, IP Bridge’s
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`counsel informed Xilinx that while a “pre-suit deal can be for an applicable portfolio within the
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`fields of use[, p]ost-suit the license is only for the patents involved in the suit …. Our fees triple if
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`we have to file suit, so that also factors into the cost of any deal.”
`15.
`
`The parties subsequently negotiated a Forbearance and Confidentiality Agreement
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`(“Forbearance Agreement”) to discuss IP Bridge’s patent infringement allegations and licensing
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`demands. The Forbearance Agreement provided, among other things, that, during the term of the
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`Forbearance Period, IP Bridge would not file any lawsuit against Xilinx based upon IP Bridge’s
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`patents relating to semiconductor technology and Xilinx would not file a lawsuit in federal district
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`court requesting a declaration that Xilinx does not infringe any of those patents. The Forbearance
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`Agreement was amended twice to ultimately have the Forbearance Period expire on January 31,
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`2017.
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`16.
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`The negotiations leading to and resulting from the Forbearance Agreement were
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`conducted under the constant threat of litigation.
`17.
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`By July 1, while the parties were still negotiating the Forbearance Agreement, IP
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`Complaint for Declaratory Judgment of Patent
`Non-Infringement – Demand for Jury Trial
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`Bridge’s counsel was already instructing Xilinx’s counsel to “[t]ell your client IPB’s terms or we
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`just sue.”
`18.
`
`On October 1, when IP Bridge grew dissatisfied with Xilinx’s responsiveness in
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`connection with an extension of the Forbearance Agreement, IP Bridge threatened that it was
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`“[t]ime to file suit, I guess.” IP Bridge continued to threaten Xilinx and on October 3 stated that
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`“IP Bridge is filing suit in light of the lack of progress,” and asked Xilinx counsel to accept
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`service or put IP Bridge in touch with “litigation counsel.” IP Bridge threatened that it “will file
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`one minute after the forbearance period ends,” warned that “[i]f Xilinx is too busy to take the
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`matter seriously, maybe a suit will provide the necessary incentive,” and concluded that “[e]ither
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`[Xilinx] agree to extend and meet or we just file the suit.”
`19.
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`On November 23, IP Bridge threatened that Xilinx had two choices—“a
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`reasonable business solution or the start of litigation.” IP Bridge used the threat of sprawling
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`litigation in an effort to convince Xilinx that it had no choice at all. As IP Bridge put it, “[t]here
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`are too many patents, too many claims and too many jurisdictions to defend for a battle to make
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`any sense to Xilinx.”
`20.
`
`Between September 21 and December 15, 2016, IP Bridge identified twenty-two
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`patents that it alleges Xilinx infringes through the manufacture, sale, use, and/or importation of
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`certain programmable integrated circuits (including Xilinx’s Virtex-4, Virtex-5, Virtex-6, Virtex-
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`7, and Kintex-7 products). Specifically, IP Bridge alleges that Xilinx infringes U.S. Patent Nos.
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`5,989,992; 6,197,696; 6,287,973; 6,483,151; 6,492,665; 6,538,324; 6,653,731; 6,873,052;
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`6,969,915; 7,265,450; 7,279,727; 7,417,289; 7,525,189; 7,564,102; 7,709,900; 7,728,439;
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`7,893,501; 7,053,461; 8,203,186; 8,278,763; RE 39,932; and RE 41,980 (collectively, the
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`“Asserted Patents”). In support of its accusations, IP Bridge has provided Xilinx claim charts
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`setting forth its infringement theories for each of the Asserted Patents.
`21. While IP Bridge agreed to not present additional patents beyond the Asserted
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`Patents after December 15, 2016, IP Bridge emphasized that “this does not mean that IP Bridge
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`will not litigate additional patents if the parties cannot agree.”
`22.
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`On January 12, 2017 IP Bridge provided Xilinx with a voluminous list of patents
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`Non-Infringement – Demand for Jury Trial
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`that it was offering to license to Xilinx. The list of patents included the Asserted Patents as well
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`as over 900 other U.S. and foreign patents. Approximately a third of the listed patents are
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`identified as “inactive.”
`23.
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`On January 18, 2017, following a meeting between IP Bridge and Xilinx in San
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`Jose, California, IP Bridge threatened to file a patent infringement lawsuit against Xilinx the day
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`the Forbearance Agreement terminated. IP Bridge’s counsel stated that IP Bridge would “likely
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`file in Guam” as it is “at least ‘two orders of magnitude’ more convenient for my clients than any
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`court on the mainland” and “the President of the Guam bar is Alfonso’s [who also represents IP
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`Bridge] classmate.”
`24.
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`IP Bridge made clear that its strategy was to drive up Xilinx’s litigation costs. IP
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`Bridge threatened additional lawsuits against Xilinx in “other suit locations, Beijing and Tokyo
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`where Xilinx and IP Bridge will be battling.” IP Bridge contended that, to respond to this
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`onslaught of litigation, Xilinx would need to hire high-priced co-counsel, which would “add to
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`Xilinx’s pain by at least a well deserved ‘two orders of magnitude.’”
`25.
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`On January 30, 2017, IP Bridge continued it threatened litigation, stating that the
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`“first suit” in the United States would be “filed later this week,” followed by lawsuits in China
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`and Japan.
`26.
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`The following day, January 31, 2017, IP Bridge threatened that the "FIRST action"
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`will only “represent the ‘first wave' of an onslaught of patents to be asserted, and the filing of
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`suits will continue around the world in subsequent waves until Xilinx makes a reasonable
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`proposal to resolve the matter” and that “[t]his is going to be war.” IP Bridge then directed its
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`threats at in-house counsel for Xilinx, stating “[i]t is your career on the line, and if you think you
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`can win the cases around the world in a cost-effective matter compared to a deal now, you
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`deserve what you get.”
`27.
`
`As a result of IP Bridge’s threats, Xilinx has no alternative but to seek judicial
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`relief.
`28.
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`IP Bridge maintains that Xilinx must take a license to the Asserted Patents, to
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`lawfully continue the manufacture, sale, use, and/or importation of certain programmable
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`Non-Infringement – Demand for Jury Trial
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`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 6 of 20
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`integrated circuits (including Xilinx’s Virtex-4, Virtex-5, Virtex-6, Virtex-7, and Kintex-7
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`products).
`29.
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`Xilinx maintains that it has not infringed and does not infringe any of the Asserted
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`Patents and, therefore, it does not need to take a license to any of the Asserted Patents.
`30.
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`IP Bridge has stated throughout the parties’ negotiations that in order for Xilinx to
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`avoid litigation, Xilinx must take a license to its semiconductor technology patents (including the
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`Asserted Patents) by January 31, 2017. As of February 1, 2017, Xilinx has not taken a license to
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`any of IP Bridge’s patents.
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`IP Bridge and Its Litigation Counsel Repeatedly Travelled to California to Assert Its
`Patents Against Xilinx
`
`31.
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`Since IP Bridge’s initial contact in June 2016, IP Bridge and its litigation counsel
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`repeatedly travelled to Xilinx’s headquarters in the Northern District of California to enforce IP
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`Bridge’s patents through licensing “negotiations” premised on the ever-present threat of litigation
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`detailed above.
`32.
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`On September 21, 2016, IP Bridge’s representatives and litigation counsel
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`attended a first in-person meeting with Xilinx’s representatives at Xilinx’s headquarters in San
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`Jose, California. Hajime Ogawa (Director of Semiconductor Licensing), Han Xu (IP counsel),
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`and outside litigation counsel attended for IP Bridge. During the meeting, IP Bridge presented its
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`infringement theories on ten of the twenty-two Asserted Patents that it contends Xilinx infringes
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`through Xilinx’s manufacture, sale, use, and/or importation of certain integrated circuits.
`33.
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`Despite Xilinx’s offer to meet via a telephone conference for further meetings, IP
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`Bridge insisted on conducting a second in-person meeting with Xilinx’s representatives at
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`Xilinx’s San Jose headquarters. As a result, the parties held a second in-person meeting on
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`November 7, 2016 at Xilinx’s headquarters. Once again, Mr. Ogawa, Mr. Xu, and outside
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`litigation counsel attended for IP Bridge. During the meeting, the parties primarily discussed IP
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`Bridge’s patent infringement allegations and Xilinx’s rebuttal positions relating to ten of the
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`twenty-two Asserted Patents. IP Bridge’s counsel reiterated that his fees would only increase if
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`Complaint for Declaratory Judgment of Patent
`Non-Infringement – Demand for Jury Trial
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`IP Bridge sued.
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`34.
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`On December 5, 2016, IP Bridge’s representatives and litigation counsel returned
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`to Xilinx’s San Jose headquarters for a third in-person meeting with Xilinx’s representatives. Mr.
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`Ogawa and Mr. Xu attended for IP Bridge. During the meeting the parties primarily discussed IP
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`Bridge’s licensing demands for its semiconductor technology patents, including the Asserted
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`Patents.
`35.
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`On January 18, 2017 IP Bridge’s representatives attended a fourth in-person
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`meeting with Xilinx’s representatives at Xilinx’s headquarters in San Jose California. Mr.
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`Ogawa, Mr. Xu, and outside litigation counsel for IP Bridge were joined by Hideyuki Ogata, IP
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`Bridge’s Executive Vice President and Chief IP Officer. Despite IP Bridge’s stated goal of
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`reaching a mutually acceptable agreement with Xilinx during the January 18 meeting, IP Bridge
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`demanded that Xilinx agree to pay an unreasonable license fee or face costly litigation, and
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`ending the meeting abruptly.
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`E-mails Directed to Xilinx’s In-house IP Counsel in Northern District of California
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`36.
`
`Since October 2016, IP Bridge’s Director of Semiconductor Licensing, sent
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`approximately seventeen e-mails to Xilinx’s Senior Director of Intellectual Property, who works
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`in San Jose, California.
`37.
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`All of those e-mail communications were related to IP Bridge’s patent
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`infringement allegations against Xilinx and IP Bridge’s licensing demands for its semiconductor
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`technology patents, including the Asserted Patents.
`38.
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`Indeed, IP Bridge’s representative was focused on “business decisions and license
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`terms” and warned Xilinx that its “decision to license or not,” i.e., to capitulate or face a lawsuit,
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`was fast approaching.
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`Other IP Bridge Activities Directed at Northern District of California
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`39.
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`IP Bridge provides an interactive English language website directed at residents of
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`the United States, including those that reside in the Northern District of California.
`40.
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`IP Bridge has filed patent infringement cases against other companies that all have
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`a significant presence in the Northern District of California. On February 14, 2016, IP Bridge
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`filed a patent infringement suit against Avago Technologies, Ltd.; Avago Technologies U.S., Inc.
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`and LSI Corporation (all with principal places of business in the Northern District of California)
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`as well as against Broadcom Limited (with dual headquarters in the Northern District of
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`California and Singapore) and Broadcom Corporation (with a principal place of business in
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`California). On April 22, 2016, IP Bridge filed a patent infringement case against OmniVision
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`Technologies, Inc. (with a principal place of business at 4275 Burton Drive, Santa Clara,
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`California 95054).
`41.
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`Upon information and belief, IP Bridge representatives have travelled to and
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`sought legal advice from the Palo Alto California office of Ropes & Gray – where the lead
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`lawyers representing IP Bridge in its patent infringement case against Broadcom Limited et al.
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`reside.
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`42.
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`Upon information and belief, IP Bridge representatives have travelled to and
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`sought legal advice from the San Francisco California office of Morrison & Foerster – where the
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`lead lawyers representing IP Bridge in its patent infringement case against TCL Communications
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`Technology, TCT Mobile, and TCT Mobile (US) reside.
`43.
`
`On information and belief, IP Bridge’s Director of Semiconductor Licensing was
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`in San Jose California between November 26, 2016 and December 2, 2016 to conduct business on
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`behalf of IP Bridge.
`
`THE PATENTS-IN-SUIT
`The United States Patent and Trademark Office (the “USPTO”) issued United
`
`44.
`
`States Patent No. 6,483,151 (“the ‘151 patent”), entitled “Semiconductor Device and Method of
`
`Manufacturing the Same,” on November 19, 2002. A true and correct copy of the ‘151 patent is
`
`attached as Exhibit A.
`45.
`
`The USPTO issued United States Patent No. 6,492,665 (“the ‘665 patent”),
`
`entitled “Semiconductor Device,” on December 10, 2002. A true and correct copy of the ‘665
`
`patent is attached as Exhibit B.
`46.
`
`The USPTO issued United States Patent No. 6,653,731 (“the ‘731 patent”),
`
`entitled “Semiconductor Device and Method for Fabricating Same,” on November 25, 2003. A
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`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 9 of 20
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`true and correct copy of the ‘731 patent is attached as Exhibit C.
`47.
`
`The USPTO issued United States Patent No. 6,873,052 (“the ‘052 patent”),
`
`entitled “Porous, Film, Wiring Structure, and Method of Forming the Same,” on March 29, 2005.
`
`A true and correct copy of the ‘052 patent is attached as Exhibit D.
`48.
`
`The USPTO issued United States Patent No. 6,969,915 (“the ‘915 patent”),
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`entitled “Semiconductor Device, Manufacturing Method and Apparatus for the Same,” on
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`November 29, 2005. A true and correct copy of the ‘915 patent is attached as Exhibit E.
`49.
`
`The USPTO issued United States Patent No. 7,053,461 (“the ‘461 patent”),
`
`entitled “Semiconductor Device,” on May 30, 2006. A true and correct copy of the ‘461 patent is
`
`attached as Exhibit F.
`50.
`
`The USPTO issued United States Patent No. 7,417,289 (“the ‘289 patent”),
`
`entitled “Semiconductor Device Having Internal Stress Film,” on August 26, 2008. A true and
`
`correct copy of the ‘289 patent is attached as Exhibit G.
`51.
`
`The USPTO issued United States Patent No. 7,525,189 (“the ‘189 patent”),
`
`entitled “Semiconductor Device, Wiring Board, and Manufacturing Method Thereof,” on April
`
`28, 2009. A true and correct copy of the ‘189 patent is attached as Exhibit H.
`52.
`
`The USPTO issued United States Patent No. 7,564,102 (“the ‘102 patent”),
`
`entitled “Semiconductor Device and Its Manufacturing Method,” on July 21, 2009. A true and
`
`correct copy of the ‘102 patent is attached as Exhibit I.
`53.
`
`The USPTO issued United States Patent No. 7,728,439 (“the ‘439 patent”),
`
`entitled “Semiconductor Device, Wiring Substrate, and Method for Manufacturing Wiring
`
`Substrate,” on June 1, 2010. A true and correct copy of the ‘439 patent is attached as Exhibit J.
`54.
`
`The USPTO issued United States Patent No. 8,203,186 (“the ‘186 patent”),
`
`entitled “Semiconductor Device Including a Stress Film,” on June 19, 2012. A true and correct
`
`copy of the ‘186 patent is attached as Exhibit K.
`55.
`
`The USPTO issued United States Patent No. 8,278,763 (“the ‘763 patent”),
`
`entitled “Semiconductor Device,” on October 2, 2012. A true and correct copy of the ‘763 patent
`
`- 9 -
`
`Complaint for Declaratory Judgment of Patent
`Non-Infringement – Demand for Jury Trial
`
`is attached as Exhibit L.
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`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 10 of 20
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`FIRST COUNT
`
`(Declaratory Judgment of Non-Infringement of the ‘151 Patent)
`
`56.
`
`The allegations contained in paragraphs 1 through 55 are incorporated by reference
`
`as if fully set herein.
`57.
`
`IP Bridge claims to be the owner and assignee of all rights, title, and interest in and
`
`under the ‘151 patent.
`58.
`
`IP Bridge has accused Xilinx of infringing at least claims 7-10 and 13-16 of the
`
`‘151 patent through its manufacture, sale, use, and/or importation of the Xilinx Kintex-7
`
`products, and has asserted that Xilinx must take a license to the ‘151 patent to lawfully continue
`
`the manufacture, sale, use, and/or importation of at least the Xilinx Kintex-7 products.
`59.
`
`Upon information and belief, Xilinx has not directly or indirectly infringed claims
`
`7-10 and 13-16 of the ‘151 patent, either literally or under the doctrine of equivalents, at least
`
`because the Xilinx Kintex-7 products do not include each and every element of claims 7-10 or 13-
`
`16 of the ‘151 patent.
`60.
`
`Xilinx has informed IP Bridge that Xilinx contends that it has the right to engage
`
`in the manufacture, sale, use, and/or importation of the Xilinx Kintex-7 products without a license
`
`to the ‘151 patent.
`61.
`
`Under all the circumstances in this dispute, IP Bridge has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non-infringement of the
`
`‘151 patent. A valid and justiciable controversy has arisen and exists between Xilinx and IP
`
`Bridge within the meaning of 28 U.S.C. § 2201.
`62.
`
`A judicial declaration of non-infringement of the ‘151 patent is necessary and
`
`appropriate in order to resolve this controversy.
`
`SECOND COUNT
`
`(Declaratory Judgment of Non-Infringement of the ‘665 Patent)
`
`63.
`
`The allegations contained in paragraphs 1 through 55 are incorporated by reference
`
`as if fully set herein.
`64.
`
`IP Bridge claims to be the owner and assignee of all rights, title, and interest in and
`
`- 10 -
`
`Complaint for Declaratory Judgment of Patent
`Non-Infringement – Demand for Jury Trial
`
`
`
`
`
`

`

`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 11 of 20
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`under the ‘665 patent.
`65.
`
`IP Bridge has accused Xilinx of infringing at least claims 9 and 13 of the ‘665
`
`patent through its manufacture, sale, use, and/or importation of the Xilinx Kintex-7 products, and
`
`has asserted that Xilinx must take a license to the ‘665 patent to lawfully continue the
`
`manufacture, sale, use, and/or importation of at least the Xilinx Kintex-7 products.
`66.
`
`Upon information and belief, Xilinx has not directly or indirectly infringed claims
`
`9 and 13 of the ‘665 patent, either literally or under the doctrine of equivalents, at least because
`
`the Xilinx Kintex-7 products do not include each and every element of claims 9 or 13 of the ‘665
`
`patent.
`
`67.
`
`Xilinx has informed IP Bridge that Xilinx contends that it has the right to engage
`
`in the manufacture, sale, use, and/or importation of the Xilinx Kintex-7 products without a license
`
`to the ‘665 patent.
`68.
`
`Under all the circumstances in this dispute, IP Bridge has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non-infringement of the
`
`‘665 patent. A valid and justiciable controversy has arisen and exists between Xilinx and IP
`
`Bridge within the meaning of 28 U.S.C. § 2201.
`69.
`
`A judicial declaration of non-infringement of the ‘665 patent is necessary and
`
`appropriate in order to resolve this controversy.
`
`THIRD COUNT
`
`(Declaratory Judgment of Non-Infringement of the ‘731 Patent)
`
`70.
`
`The allegations contained in paragraphs 1 through 55 are incorporated by reference
`
`as if fully set herein.
`71.
`
`IP Bridge claims to be the owner and assignee of all rights, title, and interest in and
`
`under the ‘731 patent.
`72.
`
`IP Bridge has accused Xilinx of infringing at least claim 5 of the ‘731 patent
`
`through its manufacture, sale, use, and/or importation of the Xilinx Kintex-7 products, and has
`
`asserted that Xilinx must take a license to the ‘731 patent to lawfully continue the manufacture,
`
`sale, use, and/or importation of at least the Xilinx Kintex-7 products.
`
`- 11 -
`
`Complaint for Declaratory Judgment of Patent
`Non-Infringement – Demand for Jury Trial
`
`
`
`
`
`

`

`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 12 of 20
`
`73.
`
`Upon information and belief, Xilinx has not directly or indirectly infringed claim 5
`
`of the ‘731 patent, either literally or under the doctrine of equivalents, at least because the Xilinx
`
`Kintex-7 products do not include each and every element of claim 5 of the ‘731 patent.
`74.
`
`Xilinx has informed IP Bridge that Xilinx contends that it has the right to engage
`
`in the manufacture, sale, use, and/or importation of the Xilinx Kintex-7 products without a license
`
`to the ‘731 patent.
`75.
`
`Under all the circumstances in this dispute, IP Bridge has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non-infringement of the
`
`‘731 patent. A valid and justiciable controversy has arisen and exists between Xilinx and IP
`
`Bridge within the meaning of 28 U.S.C. § 2201.
`76.
`
`A judicial declaration of non-infringement of the ‘731 patent is necessary and
`
`appropriate in order to resolve this controversy.
`
`FOURTH COUNT
`
`(Declaratory Judgment of Non-Infringement of the ‘052 Patent)
`
`77.
`
`The allegations contained in paragraphs 1 through 55 are incorporated by reference
`
`as if fully set herein.
`78.
`
`IP Bridge claims to be the owner and assignee of all rights, title, and interest in and
`
`under the ‘052 patent.
`79.
`
`IP Bridge has accused Xilinx of infringing at least claim 1 of the ‘052 patent
`
`through its manufacture, sale, use, and/or importation of the Xilinx Virtex-6 and Kintex-7
`
`products, and has asserted that Xilinx must take a license to the ‘052 patent to lawfully continue
`
`the manufacture, sale, use, and/or importation of at least the Xilinx Virtex-6 and Kintex-7
`
`products.
`80.
`
`Upon information and belief, Xilinx has not directly or indirectly infringed claim 1
`
`of the ‘052 patent, either literally or under the doctrine of equivalents, at least because the Xilinx
`
`Virtex-6 or Kintex-7 products do not include each and every element of claim 1 of the ‘052
`
`81.
`
`Xilinx has informed IP Bridge that Xilinx contends that it has the right to engage
`
`- 12 -
`
`Complaint for Declaratory Judgment of Patent
`Non-Infringement – Demand for Jury Trial
`
`patent.
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`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 13 of 20
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`in the manufacture, sale, use, and/or importation of the Xilinx Virtex-6 and Kintex-7 products
`
`without a license to the ‘052 patent..
`82.
`
`Under all the circumstances in this dispute, IP Bridge has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non-infringement of the
`
`‘052 patent. A valid and justiciable controversy has arisen and exists between Xilinx and IP
`
`Bridge within the meaning of 28 U.S.C. § 2201.
`83.
`
`A judicial declaration of non-infringement of the ‘052 patent is necessary and
`
`appropriate in order to resolve this controversy.
`
`FIFTH COUNT
`
`(Declaratory Judgment of Non-Infringement of the ‘915 Patent)
`
`84.
`
`The allegations contained in paragraphs 1 through 55 are incorporated by reference
`
`as if fully set herein.
`85.
`
`IP Bridge claims to be the owner and assignee of all rights, title, and interest in and
`
`under the ‘915 patent.
`86.
`
`IP Bridge has accused Xilinx of infringing at least claims 1-2, 6, 8, and 61 of the
`
`‘915 patent through its manufacture, sale, use, and/or importation of the Xilinx Kintex-7
`
`products, and has asserted that Xilinx must take a license to the ‘915 patent to lawfully continue
`
`the manufacture, sale, use, and/or importation of at least the Xilinx Kintex-7 products.
`87.
`
`Upon information and belief, Xilinx has not directly or indirectly infringed claims
`
`1-2, 6, 8, and 61 of the ‘915 patent, either literally or under the doctrine of equivalents, at least
`
`because the Xilinx Kintex-7 products do not include each and every element of claims 1-2, 6, 8,
`
`or 61 of the ‘915 patent.
`88.
`
`Xilinx has informed IP Bridge that Xilinx contends that it has the right to engage
`
`in the manufacture, sale, use, and/or importation of the Xilinx Kintex-7 products without a license
`
`to the ‘915 patent.
`89.
`
`Under all the circumstances in this dispute, IP Bridge has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non-infringement of the
`
`‘915 patent. A valid and justiciable controversy has arisen and exists between Xilinx and IP
`
`- 13 -
`
`Complaint for Declaratory Judgment of Patent
`Non-Infringement – Demand for Jury Trial
`
`
`
`
`
`

`

`Case 3:17-cv-00509-JCS Document 1 Filed 02/01/17 Page 14 of 20
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`Bridge within the meaning of 28 U.S.C. § 2201.
`90.
`
`A judicial declaration of non-infringement of the ‘915 patent is necessary and
`
`appropriate in order to resolve this controversy.
`
`SIXTH COUNT
`
`(Declaratory Judgment of Non-Infringement of the ‘461 Patent)
`
`91.
`
`The allegations contained in paragraphs 1 through 55 are incorporated by reference
`
`as if fully set herein.
`92.
`
`IP Bridge claims to be the owner and assignee of all rights, title, and interest in and
`
`under the ‘461 patent.
`93.
`
`IP Bridge has accused Xilinx of infringing at least claims 1 and 2 of the ‘461
`
`patent through its manufacture, sale, use, and/or importation of the Xilinx Kintex-7 products, and
`
`has asserted that Xilinx must take a license to the ‘461 patent to lawfully continue the
`
`manufacture, sale, use, and/or importation of at least the Xilinx Kintex-7 products.
`94.
`
`Upon information and belief, Xilinx has not directly or indirectly infringed claims
`
`1 and 2 of the ‘461 patent, either literally or under the doctrine of equivalents, at least because the
`
`Xilinx Kintex-7 products do not inclu