Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 1 of 17
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`QUICKLOGIC CORPORATION,
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`Plaintiff,
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`v.
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`KONDA TECHNOLOGIES, INC., et al.,
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`Case No. 5:21-cv-04657-EJD
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`ORDER DENYING DEFENDANTS’
`MOTION TO DISQUALIFY;
`GRANTING IN PART AND DENYING
`IN PART PLAINTIFF’S MOTION TO
`DISMISS
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`Defendants.
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`Re: Dkt. Nos. 43, 45
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`Defendants Konda Technologies, Inc., and Dr. Venkat Konda move to disqualify Baker
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`Botts LLP as counsel for Plaintiff QuickLogic Corporation. See Konda Technologies, Inc. and
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`Venkat Konda’s Motion to Disqualify QuickLogic Corporation’s Counsel (“Mot. to DQ”), Dkt.
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`No. 45. On June 23, 2022, Plaintiff filed an opposition, to which Defendants filed a reply. See
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`QuickLogic Corp.’s Opposition to Defendants’ Motion to Disqualify (“Opp. re DQ”), Dkt. No. 50;
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`see also Defendants’ Reply to Plaintiff’s Opposition to Defendants’ Motion to Disqualify (“Reply
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`re DQ”), Dkt. No. 53.
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`Plaintiff separately moves to dismiss Defendants’ counterclaims pursuant to Federal Rule
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`of Civil Procedure 12(b)(6). See QuickLogic’s Motion to Dismiss (“MTD”), Dkt. No. 43. On
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`June 23, 2022, Defendants filed an opposition, to which Plaintiff filed a reply. See Defendants’
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`Opposition to QuickLogic Corporation’s Motion to Dismiss (“MTD Opp.”), Dkt. No. 51; see also
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`QuickLogic Corp.’s Reply in Support of its Motion to Dismiss (“MTD Reply”), Dkt. No. 52.
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`Having considered the record in this case, the Parties’ papers, and the relevant law, the Court
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`DENIES Defendants’ motion to disqualify and GRANTS in part and DENIES in part
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`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 2 of 17
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`Plaintiff’s motion to dismiss.1
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`I.
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`BACKGROUND
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`A. Dr. Konda’s Interactions with Plaintiff’s Counsel
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`On September 3, 2010, and October 5, 2010, respectively, the Parties executed a Mutual
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`Non-Disclosure Agreement (“2010 Mutual NDA”) and a Licensing and Consulting Agreement
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`(“2010 Licensing and Consulting Agreement” or the “2010 CLA”). Pursuant to the 2010
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`Licensing and Consulting Agreement, beginning in September 2010 and continuing through
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`March 2011, Dr. Konda transferred information regarding Konda’s intellectual property and work
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`product to QuickLogic’s software engineers (“the Project”).
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`According to Dr. Konda, the transfer of technology was implemented based on an SRAM
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`cell-based routing architecture and Konda’s intellectual property, know-how, and work product in
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`a project led by Tim Saxe, the Chief Technology Officer (“CTO”) of QuickLogic. See Venkat
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`Konda’s Declaration in Support of Motion to Disqualify (“Konda Decl.”), Dkt. No. 45-1. Under
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`the Agreement, “Dr. Sax, QuickLogic software engineers, and QuickLogic hardware engineers
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`gained access to Konda’s intellectual property, work product, and proprietary implementation
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`details and technical know-how.” Konda Decl. ¶ 4. Dr. Konda completed the Project by the date
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`agreed upon by the Parties and received a project completion incentive bonus from QuickLogic.
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`Id. ¶ 5. Dr. Konda contends that he “demonstrated a significant savings with the SRAM cell-
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`based routing architecture.” Id. ¶ 6.
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`After the completion of the Project, Brian Faith, QuickLogic’s Chief Operating Officer,
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`and Dr. Saxe met with Dr. Konda and exchanged emails and text messages regarding Konda’s
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`technology. Id. ¶ 7. Dr. Konda alleges that during the ensuing years, from 2010 until 2021,
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`QuickLogic offered to enter a non-exclusive license or exclusive license for additional patents
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`with Konda. Id. ¶ 8. In 2017, QuickLogic obtained consulting services from Konda for a
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`1 On July 11, 2022, the Court found these motions appropriate for decision without oral argument
`pursuant to Civil Local Rule 7-1(b). See Dkt. No. 58.
`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 3 of 17
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`
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`comparison of “a) Konda Tech’s FPGA routing architecture licensed by QuickLogic in 2010, b)
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`FPGA Routing architecture implemented by Flex Logix Technologies, Inc. (“Flex Logix”), which
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`is a competitor to QuickLogic in eFPGA markets, and c) Konda Tech’s routing architecture.” Id.
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`at ¶ 9.
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`On June 8, 2018, Dr. Konda sent Mr. Faith and Dr. Saxe a text that asked for a reference
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`for a potential licensee. Id. ¶ 11. Dr. Konda informed Mr. Faith and Dr. Saxe that he was
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`planning to meet with Flex Logix, a potential licensee, on June 13, 2018. Id. ¶ 12. Mr. Faith
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`called Dr. Konda and requested that he cancel the meeting and to fly back to San Jose so that
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`QuickLogic could obtain a license to the additional patents in the Konda Technology Patent
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`Portfolio. Id. ¶ 14. Dr. Konda claims that “Mr. Faith told [him] not to meet Flex Logix’s attorney
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`[himself] and that [he] should sign up with an attorney to attend [the] meeting.” Id. ¶ 14. Mr.
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`Faith allegedly said that “he knew a good attorney” and that he would introduce Dr. Konda to the
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`attorney to help “Konda Tech in Konda Tech’s patent infringement lawsuit against Flex Logix.”2
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`Id. ¶ 14.
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`Pursuant to this call, Dr. Konda canceled the meeting and flew back to San Jose to meet
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`with Mr. Faith. Id. ¶ 15. During that meeting, Mr. Faith told Dr. Konda that he would make an
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`email introduction to Hopkins Guy, an attorney at Baker Botts LLP and Plaintiff’s counsel. Id.
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`¶¶ 15, 16. Dr. Konda spoke with Mr. Guy on June 15, 2018. Id. ¶ 17. He then met with Mr. Guy
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`in person on June 20, 2018. Id. During that meeting, Mr. Guy inquired about and discussed
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`Konda’s portfolio. Id. He also inquired about and discussed Konda Tech’s patent infringement
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`claims against Flex Logix, namely the statute of limitations for the claim. Id. Dr. Konda alleges
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`that during this meeting, Mr. Guy also discussed Konda’s status and discussed options and
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`strategies. Id. According to Dr. Konda, Mr. Guy never cautioned him not to disclose confidential
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`information or that the information disclosed would be used against him through Mr. Guy’s
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`2 It is unclear when Dr. Konda intended to pursue a patent infringement lawsuit against Flex
`Logix, that is whether the decision occurred before or after the described meeting.
`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 4 of 17
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`representation of QuickLogic. Id. ¶¶ 18, 19.
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`B. The Scope of this Action
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`Plaintiff filed this case as a declaratory judgment lawsuit under 28 U.S.C. §§ 1331, 1338,
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`1367, 2201, & 2202 to resolve certain unsubstantiated claims made by Defendants. Specifically,
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`to resolve whether Plaintiff was infringing Defendants’ patents. Plaintiff argues that while it is
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`typical for a patent owner to counterclaim for infringement in response to a declaratory judgment
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`suit, Defendants’ counterclaims are so conclusory that they mandate dismissal.
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`In August 2021, Defendants moved to dismiss Plaintiff’s complaint. See Dkt. No. 20.
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`Defendants argued that the Court lacked subject-matter jurisdiction in part because Dr. Konda did
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`not “have any familiarity with the QuickLogic products prior to the present action being filed” and
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`“did not conduct an infringement analysis.” Id. at 15. In support of these facts, Defendants filed
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`two declarations signed by Dr. Konda. See Dkt. Nos. 20-1, 29-1. The Court disagreed with
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`Defendants and concluded that subject-matter jurisdiction existed because, “with the filing of [a]
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`case and desist letter . . . , the controversy between the parties was substantial enough to provide
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`jurisdiction for a declaratory relief action.” Dkt. No. 34.
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`Three days after the Court issued its order denying Defendants’ motion to dismiss, defense
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`counsel emailed Plaintiff’s counsel that “Dr. Konda cannot determine if QuickLogic is infringing
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`any of the patents in the Konda interconnect patent portfolio at this time.” Dkt. No. 35-3.
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`Defense counsel proposed delaying the case and engaging in expedited discovery. Id. However,
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`less than two weeks later, Defendants filed their Answer and Counterclaims. See Answer to
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`Complaint with Jury Demand and Counterclaims (“Answer”), Dkt. No. 35. Defendants allege
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`counterclaims of infringement of the patents identified in Plaintiff’s Complaint, plus additional
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`patents. Answer ¶¶ 177–510. Defendants also assert state law claims for (1) breach of contract,
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`(2) breach of the covenant of good faith and fair dealing; and (3) breach of confidential
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`relationship. Answer ¶¶ 107–76.
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`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 5 of 17
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`C. The 2010 Consulting and License Agreement
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`On October 5, 2010, the Parties entered the 2010 Consulting and License Agreement.
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`Defendants’ counterclaims frequently reference and rely on the 2010 CLA attached to Plaintiff’s
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`Complaint. See Answer ¶¶ 83–84, 86–88, 90, 92, 99–105. Like the 2010 Mutual NDA, the 2010
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`CLA contained an integration clause. The 2010 CLA is subject to California law.
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`The 2010 CLA defines “Konda Intellectual Property” as the “intellectual property listed on
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`Exhibit A to this Agreement.” See Dkt. No. 1-3 at § 1.1. Exhibit A to the agreement lists several
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`patent applications. See id. at Ex. A. The 2010 CLA granted to Plaintiff “a non-exclusive,
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`royalty-free, irrevocable, and world-wide right” license to Konda Intellectual Property:
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`1.2 License Grant. Subject to payment in full of the one-time, paid-
`up license fee set forth below, Konda hereby grants to QuickLogic a
`non-exclusive, royalty-free, irrevocable and world-wide right . . . to
`reproduce, make derivative works of, publicly perform, publicly
`display and distribute in any form or medium, whether now known or
`later developed, and to make, have made, use, import, offer to sell,
`and sell the Konda Intellectual Property incorporated or used in the
`programmable logic of QuickLogic products for the purpose of
`developing and marketing QuickLogic products or otherwise
`commercializing QuickLogic's technology, but not for the purpose of
`marketing Konda Intellectual Property separate from QuickLogic
`products.
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`Id. at § 1.2. The license grant survives the 2010 CLA’s “termination or expiration.” Id. at § 1.4.
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`In the 2010 CLA, Konda Technologies also promises to “take all steps reasonably
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`necessary to hold QuickLogic’s Confidential Information in trust and confidence[.]” Id. at § 3.1.
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`The 2010 CLA contains no promises by Plaintiff to keep any of Konda Technologies’ information
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`confidential. Id.; see also id. at §§ 5.2 & 5.3 (assignment and waiver).
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`Finally, the 2010 CLA contains two important clauses regarding liability. First, it contains
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`a section regarding informal dispute resolution.
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`8.7 Informal Dispute Resolution. In the event of any dispute or
`disagreement between the parties hereto either with respect to the
`interpretation of this Agreement or the performance of any
`obligations set forth herein, whether in contract, statute, tort such as
`negligence or otherwise (each a “Dispute”), an officer of Konda and
`an officer of QuickLogic shall meet to negotiate and resolve such
`matters in good faith without resort to formal legal proceedings. If
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`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 6 of 17
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`the officers are unable to resolve the dispute within 10 business days
`after referral of the matter to them, then either party shall have the
`right to institute legal proceedings to seek any remedy available under
`law or equity.
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`Id. at § 8.7. Second, for disputes regarding the 2010 CLA, “either party’s aggregate liability” is
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`limited to “the amounts actually paid to [Konda Technologies] under [the] Agreement.” Id. at
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`§ 7.2. The maximum amount payable to Konda Technologies under the 2010 CLA was $260,000.
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`The 2010 CLA excludes “special, non-compensatory, punitive, incidental, consequential,
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`exemplary, or other indirect damages of any kind or nature . . . , regardless of the form of
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`action . . . , incurred by the other party and arising out of or in connection with [the] Agreement.”
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`Id. at § 7.1.
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`II.
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`LEGAL STANDARDS
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`A. Motion to Disqualify and Implied Waiver
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`The decision whether to disqualify counsel is committed to the discretion of the district
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`court. See Gas-A-Tron of Ariz. v. Union Oil Co. of Cal., 534 F.2d 1322, 1325 (9th Cir. 1976).
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`State law is applied in determining matters of disqualification. In re Cnty. of L.A., 223 F.3d 990,
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`995 (9th Cir. 2000). Generally, outright disqualification is disfavored because it may drastically
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`affect several important interests—a client’s right to choose counsel, an attorney’s interest in
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`representing a client, the financial burden on a client who must replace disqualified counsel, and
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`the possibility that the disqualification motion is merely pursued for tactical reasons. Concat LP v.
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`Unilever, PLC, 350 F. Supp. 3d 796, 814 (N.D. Cal. 2004).
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`“It is well settled that a former client who is entitled to object to an attorney representing
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`an opposing party on the ground of conflict of interest but who knowingly refrains from asserting
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`it promptly is deemed to have waived that right.” Trust Corp. of Montana v. Piper Aircraft Corp.,
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`701 F.2d 85, 87 (9th Cir. 1983). “Delay is significant not only from the perspective of prejudice
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`to the nonmoving party, it is also an indication that the alleged breach of confidentiality was not
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`seen as serious or substantial by the moving party.” Liberty Nat’l Enter., L.P. v. Chi. Title Ins.
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`Co., 194 Cal. App. 4th 839, 847 (2011). If the opposing party “offers prima facie evidence of an
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`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`unreasonable delay by the former client in making a motion and resulting prejudice to the current
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`client,” the burden “shifts back to the party seeking disqualification to justify the delay.” River
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`W., Inc. v. Nickel, 188 Cal. App. 3d 1297, 1298 (1987). That party should address “how long he
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`has known of the potential conflict; whether he has been represented by counsel since he has
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`known of the potential conflict; whether anyone prevented the moving party from making the
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`motion earlier, and if so, under what circumstances; and whether an earlier motion to disqualify
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`would have been inappropriate or futile, and why.” Id. at 1309.
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`B. California Rule of Professional Conduct 1.18
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`Pursuant to Civil Local Rule 11, every attorney practicing before this court must “comply
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`with the standards of professional conduct required of members of the State Bar of California.”
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`N.D. Cal. Civ. L.R. 11-4(a)(1). Under California Rule of Professional Conduct 1.18, an attorney
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`has a continued duty of confidentiality and loyalty to a potential client. A “prospective client” is a
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`person who consults a lawyer “for the purpose of retaining the lawyer or securing legal advice or
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`advice from the lawyer in the lawyer’s professional capacity.” Cal. R. Prof. Conduct 1.18(a).
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`However, not all persons who communicate information to a lawyer are entitled to protection
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`under this rule. A person who “communicates information unilaterally to a lawyer, without
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`reasonable expectation that the lawyer is willing to discuss the possibility of forming a lawyer-
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`client relationship or provide legal advice is not a ‘prospective client.’” Id. cmt. 2. Further, Rule
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`1.18 only prohibits a material adverse representation if the lawyer received information from the
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`prospective client that is protected by Business and Professions Code § 6068(e). Id. 1.18(c).
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`Business and Professions Code § 6068(e) covers “any information obtained by the lawyer
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`during the professional relationship, or relating to the representation, which the client has
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`requested to be inviolate or the disclosure of which might be embarrassing or detrimental to the
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`client.” State Bar of California, Standing Committee on Professional Responsibility and Conduct,
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`Formal Opinion No. 2016-195 (cleaned up). If the allegedly confidential information disclosed
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`“becomes a matter of public record or is disclosed to third parties, the disqualification movant
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`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 8 of 17
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`cannot rely on such disclosures as confidential information.” Faraday&Future, Inc. v. EVelozcity,
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`Inc., 2018 WL 4849704, at *7 (C.D. Cal. May 30, 2018).
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`C. Federal Rule of Civil Procedure 12(b)(6)
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`“To survive a motion to dismiss, a complaint must contain sufficient factual matter,
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`accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S.
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`662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A plaintiff must
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`“plead[] factual content that allows the court to draw the reasonable inference that the defendant is
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`liable for the misconduct alleged[,]” which requires “more than a sheer possibility that a defendant
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`has acted unlawfully.” Id. (citing Twombly, 550 U.S. at 556). These standards apply to both
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`allegations in a complaint and in counterclaims. See Starr v. Baca, 652 F.3d 1202, 1216 (9th Cir.
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`2011).
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`Although “a court must accept as true all of the allegations contained in a complaint[,]”
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`“[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements, do not suffice.” Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 555). “[T]o be
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`entitled to [a] presumption of truth, allegations in a . . . counterclaim may not simply recite the
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`elements of a cause of action, but must contain sufficient allegations of underlying facts to give
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`fair notice and to enable the opposing party to defend itself effectively.” Starr, 652 F.3d at 1216.
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`Such factual allegations “must plausibly suggest an entitlement to relief, such that it is not unfair
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`to require the opposing party to be subjected to the expense of discovery and continued litigation.”
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`Id.
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`“[A] plaintiff cannot assert a plausible claim for infringement under the Iqbal/Twombly
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`standard by reciting the [patent] claim elements and merely concluding that the accused product
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`has those elements. There must be some factual allegations that, when taken as true, articulate
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`why it is plausible that the accused product infringes the patent claim.” Bot M8 LLC v. Sony Corp.
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`of Am., 4 F.4th 1342, 1353 (Fed. Cir. 2021). “A plaintiff is not required to plead infringement on
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`an element-by-element basis.” Id. at 1352 (citing Nalco Co v. Chem-Mod, LLC, 883 F.3d 1337,
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`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 9 of 17
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`1350 (Fed. Cir. 2018)). However, a plausible claim requires at least some allegations regarding
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`how an accused product satisfies certain claim limitations. See id. at 1355 (“While Bot M8 points
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`to different storage components in the allegedly infringing devices, it never says which one or
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`ones satisfy the mutual authentication limitation.”).
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`III. DISCUSSION
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`A. Defendants’ Motion to Disqualify Counsel
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`To the extent a conflict exists, Defendants have waived their right to pursue it. A
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`chronology of this case is helpful. On May 5, 2021, Baker Botts sent a letter informing
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`Defendants that Baker Botts and Mr. Guy were representing QuickLogic in this matter. See Dkt
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`1-4. Subsequently, on June 16, 2021, Plaintiff filed suit, listing “G. Hopkins Guy III” as counsel
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`of record on its Complaint. See Dkt. No.1. Thereafter, in August 2021, Defendants moved to
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`dismiss Plaintiff’s actions. Mr. Guy, among other attorneys from Baker Botts, defended Plaintiff
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`from dismissal. See Dkt. No. 27. It was not until nearly seven months into litigation, and after a
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`failed motion to dismiss, that Defendants made any suggestion that grounds for disqualification
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`existed. See Dkt. No. 39 (filed February 8, 2022). This delay is unreasonable as a matter of law.
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`See, e.g., Skyy Spirits, LLC v. Rubyy, LLC, 2009 WL 3762418, at *4 (N.D. Cal. Nov. 9, 2009)
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`(“Rubyy’s eight-month delay, when considered in conjunction with the specific circumstances of
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`this action—including the nature of the previous representation, the prejudice to Skyy, and
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`Rubyy’s willingness to deal with Attorney Kinnear in settlement negotiations—weighs heavily
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`against disqualification.” (emphasis added)); Openwave Sys. Inc. v. Myriad France S.A.S., 2011
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`WL 1225978, at *6 (N.D. Cal. Mar. 31, 2011) (finding a four month delay unreasonable);
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`Chartwell Staffing Servs. Inc. v. Am. Int’l Indus., Inc., 2021 WL5927845, at *3 (C.D. Cal. Aug.
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`10, 2021) (finding a three-month delay unreasonable); Finmeccanica S.p.A. v. Gen. Motors Corp.,
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`2008 WL 11340060, at *3 (C.D. Cal. Apr. 29, 2008) (finding a six-month delay unreasonable).
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`In the instant action, Defendants’ delay is significant. As recounted above, much has
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`happened since Baker Botts, and specifically Mr. Guy, began representing QuickLogic. At no
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`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`time during the initial filing of this action or the earlier motions to dismiss did Defendants express
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`a concern about a possible conflict with Baker Botts’ representation of QuickLogic. Baker Botts
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`has put time and effort into defending Plaintiff against a motion to dismiss and has developed a
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`strong understanding of the facts at hand. Disqualifying Baker Botts at this point would prejudice
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`QuickLogic.
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`Because an attempt to disqualify the opposing attorney is often tactically motivated and
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`disruptive to the litigation process, disqualification is a drastic measure that is generally
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`disfavored. See Visa U.S.A., Inc. v. First Data Corp., 241 F. Supp. 2d 1100, 1104 (N.D. Cal.
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`2003). Given the unlikelihood that an actual breach of confidentiality occured,3 the strategic
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`timing of the motion (filed just days after Defendants’ motion to dismiss was denied), and the
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`delay in filing, Defendants’ motion appears to be motivated by a desire to derail the ongoing
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`litigation. It is for this reason that motions for disqualification are “subjected to a particularly
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`strict judicial scrutiny.” Optyl Eyewear Fashion Int’l Corp. v. Style Cos., Ltd., 760 F.2d 1045,
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`1050 (9th Cir. 1985). The party seeking disqualification bears a “heavy burden,” which
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`Defendants have failed to meet. See City & Cnty. of S.F. v. Cobra Sols., Inc., 38 Cal. 4th 839, 851
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`(2006). For these reasons, Defendants’ motion to disqualify is DENIED.
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`B. Plaintiff’s Motion to Dismiss
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`Plaintiff moves to dismiss Defendants’ counterclaims under Federal Rule of Civil
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`Procedure 12(b)(6). Plaintiff first moves to dismiss Defendants’ patent infringement
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`counterclaims (causes of action four through seventeen). Plaintiff next moves to dismiss
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`3 The Court has serious doubts about whether Dr. Konda qualified as a prospective client within
`the meaning of Rule 1.18. From the evidence submitted by Dr. Konda, it appears that Mr. Guy
`consulted with Dr. Konda to conduct diligence on Konda Technologies to help QuickLogic
`determine whether it should buy more patents from Konda. Indeed, the text messages provided by
`Dr. Konda establish that he followed-up with QuickLogic over a period of years to see if
`QuickLogic would buy more patents. When QuickLogic finally agreed to meet with Dr. Konda, it
`appears that he was put in touch with Mr. Guy so that QuickLogic could evaluate the potential
`liabilities of Konda Technology. Moreover, all the information allegedly disclosed to Mr. Guy is
`in the public domain. See Konda Technologies, http://kondatech.com/index.php/konda-
`technologies-will-never-license-konda-ip-to-flex-logix/ (last visited July 22, 2022).
`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`

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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 11 of 17
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`Defendants’ remaining claims for breach of the 2010 CLA (cause of action one), breach of the
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`covenant of good faith and fair dealing (cause of action two), and breach of confidential
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`relationship (cause of action three). Rather than defend the counterclaims pled in their Answer,
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`Defendants ask the Court to consider a new declaration that is attached to their opposition. See
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`MTD Opp. at 4 (“Accordingly, this Court should deny QuickLogic’s Motion and grant Konda
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`leave to amend its First Amended Answer and Counterclaims . . . .” (emphasis added)). Even
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`assuming this is a proper way to pursue amendment, Defendants have largely demonstrated that
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`leave to amend would be futile.
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`1. Patent Infringement Counterclaims (Causes of Action 4–17)
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`Plaintiff argues that Defendants’ patent infringement counterclaims fail to include any
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`allegations that map the claim language to the accused products. Instead, the counterclaims
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`“simply restate the claim language alongside bald assertions of infringement.” MTD at 9. For
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`example, the Answer alleges:
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`181. On information and belief, the Accused FPGA Devices include
`a programmable integrated circuit comprising a plurality of
`programmable logic blocks and a network such that QuickLogic
`infringes at least claim 1 of the ‘322 Patent for at least the following
`reasons:
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`182. QuickLogic’s Accused FPGA Devices have a programmable
`integrated circuit comprising a plurality of programmable logic
`blocks and a network.
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`183. On information and belief, the Accused FPGA Devices have a
`plurality of programmable logic blocks and a network, and said each
`plurality of programmable logic blocks comprising a plurality of inlet
`links and a plurality of outlet links.
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`Answer ¶¶ 181–83 (emphasis added). As Plaintiff notes, these allegations simply parrot the claim
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`language. Defendants use an identical approach for all 14 patents. See Answer ¶¶ 181–92, 199–
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`214, 221–38, 245–79, 286–307, 314–29, 336–56, 336–56, 363–97, 404–14, 421–33, 440–54, 461–
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`74, 481–91, 498–508. Indeed, Defendants make no attempt to compare any of the claim
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`limitations to the accused products and instead use conclusory allegations like “on information and
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`belief” to demonstrate infringement. See Celgard, LLC v. Shenzhen Senior Tech. Material Co.
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`Case No.: 5:21-cv-04657-EJD
`ORDER DENYING DEFENDANTS’ MOTION TO DISQUALIFY; GRANTING IN PART
`AND DENYING IN PART PLAINTIFF’S MOTION TO DISMISS
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`Case 5:21-cv-04657-EJD Document 62 Filed 08/02/22 Page 12 of 17
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`Ltd. (US) Research Inst., 2020 WL 7392909, at *5 (N.D. Cal. July 23, 2020) (“The inclusion of
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`[the phrase ‘information and belief’] creates an ‘inference that [the claimant] likely lacks
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`knowledge of the underlying facts to support the assertion[s], and is instead engaging in
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`speculation to an undue degree.’” (quoting Delphix Corp. v. Actifo, Inc., 2014 WL 4628490, at *2
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`(N.D. Cal. Mar. 19, 2014))).4
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`The amended answer does not remedy these deficiencies. Instead, the answer continues to
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`recite claim elements and corresponding conclusions without supporting factual allegations. See
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`Dkt. No. 51, Gaustad Decl., Ex. A at 36–37. For this reason, the Court determines that
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`amendment would be futile and GRANTS Plaintiff’s motion to dismiss counterclaims four
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`through seventeen without leave to amend.5
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`2. Breach of the 2010 CLA (Cause of Action 1)
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`Defendants’ Counterclaim Cause of Action One alleges that Plaintiff breached both the
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`license and the informal dispute resolution clause of the 2010 CLA. Answer ¶¶ 89, 90, 102, 104,
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`106, 111–18, 120–22. Defendants amended answer now challenges:
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`QuickLogic’s alleged use of “Konda Intellectual Property (e.g. then
`pending patents), work product, and proprietary information details
`and technical know-how licensed by Konda to QuickLogic in open
`source code through OSFPGA separate from QuickLogic products in
`violation of the license granted by Konda to QuickLogic. Konda has
`been harmed because Konda has been unsuccessful in licensing to
`other FPGA vendors because of QuickLogic’s open sourcing of
`Konda Intellectual Property (e.g., then pending patents), work
`product, and proprietary implementation details and technical know-
`how in OSFPGA repositories separate from QuickLogic products and
`without Konda’s authorization to do so.
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`Dkt. No. 51, Gaustad Decl., Ex. A ¶ 150. Plaintiff argues that these allegations remain deficient
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`4 As noted, Defendants represented that they could not determine whether Plaintiff infringed any
`of Konda’s patents and that they “did not conduct an infringement analysis.” See supra. This
`suggests that infringement was either not occurring or was difficult to locate. Either way, it
`supports dismissal as it seems likely that no grounds for infringement exist.
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` 5
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` Because Defendants fail to sufficiently plead direct infringement, their allegations of induced
`infringement and willful infringement necessarily fail. See In re Bill of Lading Transmission &
`Processing Sys. Patent Litig., 681