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`IS 44 lRev, 1290'?) ((sz1} Rev 1/10)
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`CIVIL
`
`COVER SHEET
`The JS 44 Civil cover sheet and the information contained herein neither replace nor supplement the tiling and semee ol‘pleadings or other papers as require lav law, except as provided
`
`by local rules oI‘eourt This form, approved by the Iudicml Conference oithe United States in September 1974, is rcqtnrod for the use of the Clerk ol’Cou
`for i‘ltepurpose of initiating
`the CIVII docket sheet
`(SEE INSTRUCTIONS ON PAGE TWO OFTIIE FORM, I
`DEF ENDANTS
`PLAINTIFFS
`XILINX, INC.
`
`INVENTION INVESTMENT FUND I, LP ET AL.
`
`.4
`
`County of Residence of First Listed Defendant
`(IN US, PLAINTIFF CétS‘ES ONLY)
`NOTE:
`IN LAND CONDEMNATION CASES, USETHE LOCATION OF THE
`LAND INVOLVED
`,
`
`Attorneys (If Known}
`
`(b) County of Residence ofFirst Listed Plairttiflr Santa Clara
`(EXCEPT IN US, PLAINTIFF CASES)
`
`(c) Attorney‘s (Firm Name, Address, and Telephone Number)
`
`Kenneth R. Adamo
`JONES DAY
`
`Behrooz Shariati
`JONES DAY
`
`
`
`
`
`v
`
`
`‘ ?
`5A3
`W
`1755 Embarcadem Road
`2727 North Harwood Street
`Dallas, TX 7520!
`Palo Alto, CA 94303
`.
`‘ég
`_
`V
`,“L
`
`II. BASIS OF JURISDICTION (Place an “X“ in One Box Only)
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an“)? in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`DEF
`PTF
`PTF
`[Z] I E] I
`[:3 4
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`US. Government
`
`3 FederalQuestion
`(US, Government Not a Party)
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`Citizen of'fli's State
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`Incorporated or PrincipalPlace
`ofBus'mess In This State
`
`DEF
`[:3 4
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`US Government
`Defendant
`
`[3 4 Diversity
`(Indicate Citizenship oflharties in Item III)
`
`Citizen of Another State E] 2 E 2
`
`Incorporated and Principal Place E] 5
`oI'Business In Another State
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`[a S
`
`Citizen or Subject ofa
`Foreign Country
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`[:1 3
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`[:3 3
`
`Foreign Nation
`
`[3 6
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`C] 6
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`
`
`[3 230 Rem Leasedc Ejectmem
`E] 240 Torts to Land
`[:3 245 Tort Product Liability
`[:1 290 All Other Real Property
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`IV. NATURE OF SUIT (Place an X’ in One Box Only}
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`CONTRACT
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`OTHER STATUTES
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`PERSONAL INJ URY
`PERSONAL INJURY - 6H) Agriculture
`- 422 Appeal 28 USC 158 - 400 State Reapportionment
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`
`362 Personal Injury” - 620 Other Food & Drug - 423 Withdrawal
`10 Airplane
`- 410 Antitrust
`
`
`
`Med. Malpractice - 625 Drug Related Seizure
`. 430 Banks and Banking
`28 USC IS?
`15 Airplane Product
`
`
`- 450 Commerce
`Liability
`355 Personal [njmy m
`of Property 2| USC 881
`[:3 l4!) Negotiable Instrument
`prom,“ Liability - 630 Liquor Laws —— 460 Deportation
`[I] ISO Recovery of Overpayment mm Assauh. Libel a;
`
`
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`
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`
`353 Asbestos Personal - 640 RR. & Truck
`& Enforcement of Judgment
`Slander
`.
`u 470 Racketeer Influenced and
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`
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`- :33 gopyrlghts
`E3 '5' Medicare AC?
`[11330 Federal Employers‘
`Injury Product
`Corrupt Organizations
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`
`
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`- 480 Consumer Credit
`- 66ft Occupational
`III 840 Tag“
`rlt
`[3 152 Recovery of Defaulted
`Liability
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`- '
`ema
`Safety/Health
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`40 Marine
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`- 490 Cable/Sat TV
`_ 810 Selective Service
`(Exclt Veterans)
`gas Marine pmdm;
`370 0th“ Fraud
`
`
`n 850 Seciln'ties/Commendities.i
`[:3 l53 Recovery of Overpayment
`Liabili
`t
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`LABOR
`SOCIAL SECURITY
`ommms 8mm
`50 Mmof‘zehm
`$3311: $7,ng
`Exchange
`
`
`Pmpm Damage — ”no Fair LaborStandards - 861 HIA ( I395ff)
`- 875 Customer Challenge
`[:3 I60 Stockholders’ Suns
`g5 Mom, Vehicle
`
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`
`Act
`- 862 Black Lung (923)
`[:3 I90 Gther Contact
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`3,35 prawn), Damage
`12 USC 3410
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`Pmdm Liability - 720 LaborzMgmt Relations - 863 DIWC/DIWW (405m)) - 890 Other Statutory Actions
`E3 195 Contract Product Liability
`[31360 Other Personal Injury
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`- 73o Labor/Mgmtkeponing - 864 55”) Title XVI
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`g
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`- 895 Free'jom Of Information
`- 79' Em?" Ilet. Inc,
`442 Employment
`Sentence
`
`
`
`596”” A”
`443 Housing/
`Ilabens Corpus:
`t A"
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`.
`_ 870 Taxes (US. Plaintiff
`Accommodations
`530 General
`)OOAppeal 0,1 Fee
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`
`
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`[33444 Welfare
`535 Death Penalty
`RWMPWM
`or Defendant)
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`
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`540 Mandamus & Other—- 371 Ensign? (Early
`445 Aim wiDisablIities ~
`Eggs?“ ““55
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`- 462NamralizatbnApp1icathn
`- 950 Constitutionalit
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`555 Prison Londltloti - 463 Ilalteas Corpus _
`{34463213, WIDisahillties
`State Statutes
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`Alien Detainee
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`,
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`£23440 Other ClVll Rights
`- 465 Other Immigration
`Actions
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`
`Transferred from
`V. ORIGIN (Place an X" in One Box Only}
`Appeal to District
`[:3 6 Multidistrici
`[:1 2 Removed from
`E] 3 Remanded from
`{:3 4 Reinstated or E 5 another district
`E3 7 Judge from
`Litigation
`State Court
`Appellate Court
`Reopened
`(specify)
`Magistrate
`Judgment
`
` 28 U.S.C. §§ 2201 et seq,
`Cite the US. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`
`VI. CAUSE OF ACTION
`
`Briefdeseription of cause:
`
`Declaratory Judgment Patent Non—In fringement and Invalidity
`[:1 CHECK IF THIS IS A CLASS ACTION
`VII. REQUESTED IN
`CHECK YES only ifdemanded in complaint
`DEMAND 3
`JURY DEMAND:
`[It Vest: No
`UNDER F.R,C.P. 23
`COMPLAINT:
`
`VIII, RELATED CASE(S)
`PLEASE REFER TO CIVIL LR. 3—]2 CONCERNING REQUIREMENT TO FILE
`"NOTICE or RELATED CASE",
`
`ix. DIVISIONAL ASSIGNMENT (CIVIL L.R. 3-2)
`(PLACE AND "x" IN ONE BOX ONLY)
`[:1 SAN FRANCISCO/OAKLAND
`SAN JOSE DEUREKA
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`

`

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`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page1 of 16
`Case5:11-cv-0067l-EJD Documentl Filed02/14/11 Pagel of 16
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`Behrooz Shariati (Slate Bar. No. ”4436)
`bshariati@jonesday.cum
`
`Palo Alto, CA 94303
`Telephone:
`(650)?39-3939
`Facsimile:
`(650) 7539-3900
`
`.
`.
`.
`.
`.
`Attorneynfor I’lamty’fi thnx, Inc.
`
`Mitten nttu
`Ill-l3 7»? 2t???
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`1
`..
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`
`Wetmcaiamnia
`Set-Mose
`
`UNITED STATES DIS'I‘RIC’I‘ COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`[\J
`
`cc4anLnM
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`NO
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`
`
`knead}
`
`COMPLAINT FOR DECLARATORY
`
`JUDGMENT 0F PATENT NON-
`lNFRINGEMENT AND INVALIDITY
`
`DEMAND FOR JURY TRIAL
`
`
`
`1
`XIUNX [NC-9
`
`Plaintiff,
`
`v.
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`INVENTION INVESTMENT FUND I LP,
`INVENTION INVESTMENT FUND II LLC,
`INTELLECTUAL VENTURES LLC,
`INTELLECTUAL VENTURES
`MANAGEMENT LLC,
`INTELLECTUAL VENTU RES I LLC,
`INTELLECTUAL VENTURES [I LIJC,
`
`Defendants.
`
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`Xilinx, Inc. {“Xilinx” or “Plaintil'l”‘), by and through its undersigned counsel, complains
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`against Invention Investment Fund I LP, Invention Investment Fund Il LLC, Intellectual Ventures
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`LLC, Intellectual Ventures Management LLC, Intellectual Ventures I LLC, Intellectual Ventures
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`II TIC, as Follows:
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`
`
`
`
`

`

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`DJ
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`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page2 of 16
`Case5:11-cv-00671-EJD Documentl Filed02/14/11 Page2 of 16
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`NATURE OF THE ACTION
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`1.
`
`This is an action for declaratory judgment of patent non-infringement, invalidity,
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`and uncntorceability arising under the patent laws of the United States, Title 35 of the United
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`States Code.
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`2.
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`Plaintiff, Xilinx, is a Delaware corporation with its principal place of business at.
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`2 l 00 Logic Drive, San Jose, California 95 l24. Xilinx is engaged in the business ofdesigning,
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`E developing, and marketing complete programmable logic solutions, including advanced
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`integrated circuits, software design tools, predefined system functions delivered as intellectual
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`property cores, design services, customer training, field engineering, and customer support.
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`3.
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`0n information and belief, Defendants, Invention Investment Fund I LP, is a
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`Delaware limited partnership, and Invention Investment Fund II LLC, Intellectual Ventures LLC,
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`Intellectual Ventures Management LLC, Intellectual Ventures I LLC, Intellectual Ventures II
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`LLC, and are Delaware limited liability companies each with their principal place ofbusiness
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`3150 1391'1 Avenue SE, Building 4, Bellevue, Washington 98005.
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`4.
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`0n information and belief, each of. the Defendants is in the business of acquiring
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`' and licensing patents and patent portfolios. Upon information and belief, each ot‘the Defendants
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`is otherwise subject to thejurisdiction of this Court. Throughout this complaint, the defendants
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`are collectively referred to as “IV".
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`JURISDICTION AND VENUE
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`5.
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`This actiou arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 313391.,
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`under the patent laws of the United States, Title 35 of the United States Code. This Court has
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`subject-matterjurisdiction pursuant to 28 U.S.C. §§ 1331, 1338, l367, 2201, and 2202.
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`6.
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`This Court has personal jurisdiction over Defendants by virtue of their sufficient
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`minimum contacts with this forum as a result of the business they conduct within the State of
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`California and within the Northern District ot‘California.
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`'1.
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`Venue is proper in this district pursuant to 28 U.S.C. §§ 139l(b)—(c) and 1400(b).
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`INTRADlSTRlCT ASSIGNMEN'I‘
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`8.
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`For purposes of intradistrict assignment pursuant to Civil Local Rules 3-2(c) and
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`3-503), this Intellectual Property Action is to be assigned on a district-wide basis.
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`THE PATENTS-IN~SUIT
`
`9.
`
`The United States Patent and "I‘rademark Office (the “USP’I‘O’U issued United
`
`States Patent No. 5,524,251 (“the ‘251 patent”), entitled “Microcomputer having ALU
`
`Performing Min and Max Operations," on June 4, 1996
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`to.
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`The USPTO issued United States Patent No. 5,687,325 (“the ’325 patent”),
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`entitled “Application Specific Field Programmable Gate Array,” on November 1 l, 1997. On
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`December 8, 2010, Intellectual Ventures I], LLC alleged infringement of the ‘325 patent by
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`Altera Corporation, Microsemi Corporation, and Lattice Semiconductor Corporation in case 1 :10-
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`ev-01065 filed in the District ofDelawarc.
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`11.
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`"the USPTO issued United States Patent No. $351,736 (“the ’236 patent”),
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`entitled “Testable Electronic System." on May 12, 1998.
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`12.
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`The USFIO issued United States Patent No. 5,387,165 (“the ’165 patent”),
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`13.
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`The USPTO issued United States Patent No. 6,252,527 (“the ’52? patent”),
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`entitled “Interface Unit for Serial-to-Parallel Conversion andfor Parallel-to~Serial Conversion,”
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`on June 26, 2001.
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`14.
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`The USPTO issued United States Patent No. 6,260,083r (“the ’087 patent”),
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`
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`E entitled “Embedded Configurable Logic ASIC,” on July 10, 2001 On December 8, 201 0,
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`Intellectual Ventures II, LLC alleged infringement of the ‘325 patent by Altcra Corporation,
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`Microsemi Corporation, and Lattice Semiconductor Corporation in case l :10—cv-01065 filed in
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`the District of Delaware.
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`15.
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`The USPTO issued United States Patent No. 6,272,646 (“the ’646 patent”),
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`entitled “Programmable Logic Device Having an Integrated Phase Lock Loop,” on August 7,
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`200]. On December 8, 2010, Intellectual Ventures ll, LLC alleged infringement of the ‘325
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`
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`patent by Altera Corporation, Microsemi Corporation, and Lattice Semiconductor Corporation in
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`case lzltl-ev—0l065 tiled in the District of Delaware.
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`16.
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`'li’he USPTO issued United States Patent No. 6,321,331 (“the ‘331 patent”),
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`entitted “Real Time Debugger Interface for Embedded Systems,” on November 20, 2001.
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`17.
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`The USPTO issued United States Patent No. 6,408,415 (“the ’415 patent”),
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`entitled “Test Mode Setup Circuit for Microcontroller Unit,” on J one 18, 2002.
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`18.
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`The USPTO issued United States Patent No. 6,682,865 (“the ’865 patent”),
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`entitled “On-Chip Service Processor for Test and Debug of Integrated Circuits," on February 3,
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`2004.
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`19.
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`The USPTO issued United States Patent No. 6,698,001 (“the ’001 patent”),
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`I: entitled "Method for Generating Register Transfer Level Code,” on February 24, 2004.
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`20.
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`The USPTO issued United States Patent No. 6,747,350 (“the ’350 patent”),
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`I entitled “Flip Chip Package Structure,” on June 8, 2004.
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`
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`21.
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`The USPTO issued United States Patent No. 6,768,497 (“the “49'? patent”),
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`entitled “Elastic Presentation Space,” on July 27, 2004.
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`22.
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`The USPTO issued United States Patent No. 6,993,669 (“the ’669 patent”),
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`1' entitled “Low Power Clocking Systems and Methods," on January 31, 2006. On December 8,
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`2010, Intellectual Ventures 1, LLC alleged infringement of the ”325 patent by Altera Corporation
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`and Lattice Semiconductor Corporation in case 1:10—cv-01065 filed in the District of Delaware.
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`23.
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`The USPTO issued United States Patent No. 7,080,301 (“the ’301 patent”),
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`entitled “On-Chip Service Processor,” on July 18, 2006.
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`24.
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`The USPTO issued United States Patent No. 7,100,061 (“the ’06] patent”),
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`entitled “Adaptive Power Control," on August 29, 2006.
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`FIRST COUNT
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`(Declaratory Judgment of Non—Infringement of the ’25] Patent)
`
`25.
`
`The allegations contained in paragraphs 1 through 24 are incorporated by reference
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`as if fully set herein.
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`.
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`26.
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`IV claims to be the owuer and assignee of all rights, title, and interest in and under
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`the ’25! patent.
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`27.
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`IV has accused Plaintiff ofinfringing the ’251 patent through its manufacture, sale,
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`use, andfor importation of certain integrated circuits, and has asserted that Plaintiff must take a
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`license to the ”251 patent to lawfully continue the manufacture, sale, use, andfor importation of
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`these integrated circuits.
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`28.
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`Plaintiff has informed IV that Plaintiff contends that it has the right to engage in
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`the manufacture, sate, use, andfor importation of thCSe integrated circuits without a license to the
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`“251 patent.
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`29.
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`Under ali the circumstances in this dispute, IV has, at a minimum, created a
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`substantial, immediate, and real controversy between the parties as to the non-infringement of the
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`’25l patent. A valid and justiciable controversy has arisen and exists between Plaintiffand IV
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`within the meaning 0f28 U.S.C. § 2201.
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`30.
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`On information and belief, Plaintiff has not directly or indirectly infringed any
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`vaiid and enforceable claims ofthe “251 patent, either literally or under the doctrine of
`
`equivalents.
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`3 l.
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`Ajudicial deetaration ot‘non—infringement of the ’251 patent is necessary and
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`appropriate in order to resolve this controversy.
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`SECOND COUNT
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`(Declaratory Judgment of Invalidity of the ’25] Patent)
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`32.
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`The allegations contained in paragraphs I through 31 are incorporated by reference
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`as if fully set herein.
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`33.
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`Under all the circumstances in this diSpute, IV has, at a minimum, created a
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`substantial, immediate, and real controversy between the parties as to the invalidity of the '251
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`patent. A valid and justiciabie controversy has arisen and exists between Plaintiff and IV within
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`the meaning of28 U.S.C. § 220}.
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`l
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`IQ
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`H-iChUl-TA
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`34.
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`On information and belief, the ’25} patent is invalid because ol'its i'aiiure to
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`comply with one or more of the requirements of the patent laws of the United States, including,
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`without limitation, 3S U.S.C. §§ 10!, 102, 103, andfor 112.
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`35.
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`A judicial declaration of invalidity of the ”251 patent is necessary and appropriate
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`in order to resolve this controversy.
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`THIRD COUNT
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`(Declaratory Judgment of Lack of Standing to Enforce the '25] Patent)
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`36.
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`line allegations contained in paragraphs 1 through 35 are incorporated by reference
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`as if fully set herein.
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`3?.
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`IV claims to be the owner and assignee of all rights, title, and interest in and under
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`the ’251 patent.
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`38.
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`On information and belief, IV has not shown that it has the right to bring an action
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`to enforce the ‘251 patent.
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`39.
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`Under all the circumstances in this dispute, IV has, at a minimum, created a
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`substantial, immediate, and real controversy between the parties as to whether [V has standing to
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`enforce the '251 patent. A valid and justiciablc controversy has arisen and exists between
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`Plaintiff and 1V within the meaning ot‘28 U.S.C. § 2201.
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`40.
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`Ajudicial declaration that IV lacks standing to enforce the ’25] patent is necessary
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`and appropriate in order to resolve this controversy.
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`FOURTH COUNT
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`(Declaratory Judgment of Non-Infringement of the ’325 Patent)
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`41.
`
`The allegations contained in paragraphs 1 through 40 are incorporated by reference
`
`as if fully set herein.
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`42.
`
`{V claims to be the owner and assignee of all rights, title, and interest in and under
`
`the ’325 patent.
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`43.
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`IV has accused Plaintiff of infringing the “325 patent through its manufacture, sale.
`
`use, and/or importation of certain integrated circuits, and has asserted that Plaintiffmust take a
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`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page7 of 16
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`license to the “325 patent to lawfully continue the manufacture, sale, use, and/or importation of
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`these integrated circuits.
`
`44.
`
`Plaintiff has informed IV that Plaintiff contends that it has the right to engage in
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`the manufacture, sale, use, andt'or importation of these integrated circuits without a license to the
`
`”325 patent.
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`45.
`
`Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non-infringement of the l
`
`I
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`
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`’325 patent. A valid andjusticiable controversy has arisen and exists between Plaintiff and IV
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`within the meaning of 28 U.S.C. § 220}.
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`46.
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`Upon information and belief, Plaintiff has not directly or indirectly infringed any
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`valid and entorceable claims of the ‘325 patent, either literally or under the doctrine of
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`equivalents.
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`47.
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`A judicial declaration of non—infringement of the ”325 patent is necessary and
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`appropriate in order to resolve this controversy.
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`FIFTH COUNT
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`(Declaratory Judgment of Invalidity of the '325 Patent)
`
`48.
`The allegations contained in paragraphs 1 through 47 are incorporated by reference
`as if fully set herein.
`I
`
`49.
`
`Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the invalidity of the ’325
`
`patent. A valid and justiciable controversy has arisen and exists between Plaintiff and IV within
`
`the meaning of28 U.S.C. § 2201.
`
`50.
`
`Upon information and belief, the “325 patent is invalid because of its failure to
`
`comply with one or more of the requirements of the patent laws of the United States, including,
`
`without limitation, 35 U.S.C. §§ 101, 102, l03, andfor 112.
`
`51.
`
`A judicial declaration of invalidity ot‘the ’325 patent is necessary and appropriate
`
`in order to resolve this controversy.
`
`
`
`
`
`

`

`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page8 of 16
`Case5:11-cv-00671-EJD Documentl Filed02/14/11 Page8 of 16
`
`SIXTH COUNT
`
`(Declaratory Judgment of Lack of Standing to Enforce the ’325 Patent)
`
`52.
`
`The allegations contained in paragraphs 1 through 51 are incorporated by reference
`
`as if fully set herein.
`
`53.
`
`IV claims to he the owner and assignee of all rights, title, and interest in and under
`
`the “325 patent.
`
`54.
`
`On information and belief, IV has not shown that it has the right to bring an action
`
`to enforce the ’325 patent.
`
`55.
`
`Under all the circumstances In this dispute, [V has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to whether IV has standing to
`
`enforce the ’3 25 patent. A valid and justiciable controversy has arisen and exists between
`
`Plaintiff and IV within the meaning of28 U.S.C. § 2201.
`
`S6.
`
`A judicial declaration that IV lacks standing to enforce the ’325 patent is necessary
`
`and appropriate in order to resolve this controversy.
`
`SEVENTH COUNT
`
`(Declaratory Judgment of Non-Infringement of the ’736 Patent)
`
`57.
`
`'1”he allegations contained in paragraphs 1 through 56 are incorporated by reference
`
`as if fully set herein.
`
`58.
`
`IV claims to be the owner and assignee of all rights, title, and interest in and under
`
`the ”736 patent.
`
`59.
`
`IV has accused Plaintiff of infringing the ’736 patent through its manufacture, sale,
`
`use, andfor importation of certain integrated circuits, and has aSSerted that Plaintiff must take a
`
`license to the ‘736 patent to lawfully continue the manufacture, sale, use, and/or importation of
`
`these integrated circuits.
`
`60.
`
`Plaintiff has informed lV that Plaintiff contends that it has the right to engage in
`
`the manufacture, sale, use, andfor importation ot‘these integrated circuits without a license to the
`
`”736 patent.
`
`10
`
`DOOM-JO"
`
`
`
`
`
`

`

`
`
`
`
`wivzgmswmmvm.
`
`“a,.,,,mfl.._m.‘rrmwtwmmn«new».
`
`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page9 of 16
`Case5:11-cv-00671-EJD Documentl Filed02/14/11 Page9 of 16
`
`6!.
`
`Under all the circumstances in this dispute, IV has, at a minimum. created a
`
`substantial, immediate, and real controversy between the parties as to the nan—infringement of the
`
`’736 patent. A valid and justiciable controversy has arisen and exists between Plaintiff and IV
`
`within the meaning of28 USC. § 220i.
`
`62.
`
`On information and belief, Plaintiff has not directly or indirectly infringed any
`
`valid and enforceable claims of the ‘736 patent, either literally or under the doctrine of
`
`equivalents.
`
`63.
`
`Ajudicial declaration of nonuinfringement 0f the ’736 patent is necessary and
`
`appropriate in order to resolve this controversy.
`
`EIGHTH COUNT
`
`("Declaratory Judgment of Invalidity of the ’736 Patent)
`
`64.
`
`'Ihe allegations contained in paragraphs 1 through 63 are incorporated by reference
`
`as if fully set herein.
`
`65.
`
`Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the invalidity of the '736
`
`patent. A valid andjusticiable controversy has arisen and exists between Plaintiff and IV within
`
`the meaning 01’28 U.S.C. § 2201-
`
`66.
`
`On information and belief, the ‘736 patent is invalid because of its failure to
`
`comply with one or more of the requirements of the patent laws of the United States, including,
`
`without limitation, 35 U.S.C. §§ 10!, 102, 103, andfor 112.
`
`67.
`
`Ajudicial declaration of invalidity of the ”736 patent is necessary and appropriate
`
`in order to resolve this controversy.
`
`NINTH COUNT
`
`(Declaratory Judgment of Lack of Standing to Enforce the ’736 Patent)
`
`68.
`
`The allegations contained in paragraphs 1 through 67 are incorporated by reference
`
`as it‘fully set herein.
`
`69.
`
`IV claims to be the owner and assignee of all rights, title, and interest in and under
`
`the "336 patent.
`
`
`
`

`

`
`
`Cd‘s-ION
`
`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page10 of 16
`Case5:ll—cv-0067l-EJD Documentl Filed02/14/11 PagelO of 16
`
`78'.
`
`On information and beiief, IV has not shown that it has the right to bring an action
`
`to enforce the ’736 patent.
`
`71.
`
`Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to whether IV has standing to
`
`enforce the ’736 patent. A valid and justiciable controversy has arisen and exists between
`
`Plaintiff and IV within the meaning of28 U.S.C. § 2201.
`
`72.
`
`A judicial declaration that IV lacks standing to enforce the ’736 patent is necessary
`
`and appropriate in order to resolve this controversy.
`
`TENTH COUNT
`
`(Declaratory Judgment of Non-Infringement 0f the ’165 Patent)
`
`73.
`
`The aliegations contained in paragraphs 1 through 72 are incorporated by reference
`
`as if fully set herein.
`
`?4.
`
`IV ciaims to be the owner and assignee of all rights, title, and interest in and under
`
`the ’i65 patent.
`
`75.
`
`IV has accused I’Iaintiff of infringing the ‘165 patent through its manufacture, safe.
`
`use, andfor importation of certain integrated circuits, and has asserted that Plaintiff must take a
`
`license to the ’165 patent to Iawfiilly continue the manutacture, sale, use, andfor importation of
`
`these integrated circuits.
`
`76.
`
`Plaintiff has informed 1V that Plaintiff contends that it has the right to engage in
`
`the manufacture, sale, use, andfor importation of these integrated circuits without a license to the
`
`”165 patent.
`
`77.
`
`Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non—infringement of the
`
`’165 patent. A valid andjusticiable controversy has arisen and exists between Plaintiff and IV
`
`CDKO
`
`3 within the meaning of28 U.S.C. § 220].
`
`7'8.
`
`On information and belief, Plaintiff has not directly or indirectly infringed any
`
`valid and enforceable claims of the ‘ 165 patent, either literally or under the doctrine of
`
`; equivalents.
`
`
`
`-"“""’*fi§1w$—'£-3'.=
`
`
`
`10
`
`

`

`
`
`Icy—«onueflm.fi..wavzwllm_wurad...
`
`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page11 of 16
`Case5:ll-cv-0067l-EJD Documentl Filed02/14/11 Pagell of 16
`
`7'9.
`
`A judicial declaration ol‘non-int‘ringement ofthc ’165 patent is necessary and
`
`appropriate in order to resolve this controversy.
`
`ELEVENTH COUNT
`
`(Declaratory Judgment of Invalidity of the ’165 Patent)
`
`80.
`
`The allegations contained in paragraphs 1 through 79 are incorporated by reference
`
`as if fully set herein.
`
`81.
`
`Under all the circumstances in this dispute, [V has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the invalidity of the ’ 165
`
`patent. A valid and justiciable controversy has arisen and exists between Plaintiff and IV within
`
`the meaning 01°28 U.S.C. § 2201.
`
`82.
`
`On information and belief, the “165 patent is invalid because ofits failure to
`
`comply with one or more of the requirements ofthe patent laws of the "United States, including,
`
`without limitation, 35 U.S.C. §§ 101, 102, 103, andfor 112.
`
`83.
`
`Ajudicial declaration of invalidity of the ‘165 patent is necessary and appropriate
`
`in order to resolve this controversy.
`
`TWELFTH COUNT
`
`(Declaratory Judgment of Lack of Standing to Enforce the ’165 Patent)
`
`84.
`
`The allegations contained in paragraphs I through 83 are incorporated by reference
`
`
`
`: as if fully set herein.
`
`85. W claims to be the owner and assignee of all rights, title, and interest in and under
`
`the ’165 patent.
`
`86.
`
`On information and belief, IV has not shown that it has the right to bring an action
`
`to enforce the ’165 patent.
`
`87.
`
`Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to whether W has standing to
`
`enforce the ’ 165 patent. A valid and justiciable controversy has arisen and exists between
`
`Plaintiff and 1V within the meaning of 28 U.S.C. § 2201.
`
`
`
`

`

`
`
`
`
`...-_.....«.,u«...-...-g.-.-.-...w«.e-.—-.onn—.u.‘5:-
`
`.4.
`
`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page12 of 16
`Case5:ll—cv-0067l-EJD Documentl Filed02/14/11 Page12 of 16
`
`DJ
`
`U1
`
`0O00MlCh
`
`88.
`
`Ajudicial declaration that [V lacks standing to enforce the ”165 patent is necessary
`
`and appropriate in order to resolve this controversy.
`
`THIRTEENTI-I COUNT
`
`(Declaratory Judgment of Non-Infringement of the ‘52? Patent)
`
`89.
`
`The allegations contained in paragraphs I through 88 are incorporated by reference
`
`as if fully set herein.
`
`90.
`
`IV claims to be the owner and assignee of all rights, title, and interest in and under
`
`the ‘52? patent.
`
`91.
`
`IV has accused Plaintiff of infringing the ’52? patent through its manufacture, sale,
`
`use, and/”or importation of certain integrated circuits, and has asserted that Plaintiff must take a
`
`license to the ’52? patent to lawfully continue the manufacture, sale, use, andfor importation of
`
`these integrated circuits.
`
`92.
`
`Plaintiff has informed N that Plaintiff contends that it has the right to engage in
`
`the manufacture, sale, use, andfor importation of these integrated circuits without a license to the
`
`‘52? patent.
`
`93.
`
`Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non~infringement ot‘the
`
`’52? patent. A valid and justiciable controversy has arisen and exists between Plaintiff and [V
`
`within the meaning ot'28 U.S.C. § 2201.
`
`94.
`
`Upon information and belief, Plaintiff has not directly or indirectly infringed any
`
`valid and enforceable claims ofthc ’52? patent, either literally or under the doctrine of
`equivalents.
`,2
`
`95.
`
`Ajudicial declaration of non-infringement of the ”527 patent is necessary and
`
`appropriate in order to resalve this controversy.
`
`FOU RTEENTH COUNT
`
`(Declaratory Judgment of Invalidity of the ’52?” Patent)
`
`96.
`
`The allegations contained in paragraphs 1 through 95 are incorporated by reference
`
`as if fully set herein.
`
`12
`
`
`
`
`
`

`

`
`
`
`
`my-muv._e-.A..M4..MM¥W ......_”7...,"..
`
`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page13 of 16
`Case5:ll—cv-0067l-EJD Documentl Filed02/14/11 Page13 of 16
`
`97.
`
`Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`M
`
`substantial, immediate, and real controversy between the parties as to the invalidity of the ’52?
`
`patent. A valid and justiciabie controversy has arisen and exists between Plaintiff and 1V within
`
`
`
`
`
`}
`
`the meaning 01°28 U.S.C. § 2201.
`
`98.
`
`Upon information and belief, the ’52? patent is invalid because of its failure to
`
`comply with one or more of the requirements of the patent laws of the United States, including,
`
`without limitation, 35 U.S.C. §§ 101, 102, 103, andr’or l 12.
`
`99.
`
`Ajudiciai declaration of invalidity of the ”527 patent is necessary and appropriate
`
`in order to resolve this controversy.
`
`FIFTEE-NTI-I COUNT
`
`(Declaratory Judgment of Lack of Standing to Enforce the ’52? Patent)
`
`£00.
`
`The allegations contained in paragraphs 1 through 99 are incorporated by reference
`
`as if fully set herein.
`
`101.
`
`[V claims to he the owner and assignee of all rights, title, and interest in and under
`
`the ’52? patent.
`
`102.
`
`On information and belief, IV has not shown that it has the right to bring an action
`
`to enforce the ”527 patent.
`
`103. Under all the circumstances in this dispute, IV has, at a minimum, created a
`
`substantial. immediate, and real controversy between the parties as to whether IV has standing to
`
`enforce the ”527 patent. A valid and justieiable controversy has arisen and exists between
`
`Plaintiff and [V within the meaning of 28 U.S.C. § 2201.
`
`104.
`
`A judicial declaration that W lacks standing to enforce the ”527 patent is necessary
`
`and appropriate in order to resolve this controversy.
`
`SIXTEENTH COUNT
`
`(Declaratory Judgment of Non-Infringement of the ’08? Patent)
`
`105.
`
`The allegations contained in paragraphs 1 through 104 are incorporated by
`
`reference as if fully set herein.
`
`
`
`l3
`
`

`

`
`
`Case5:11-cv-00671-EJD Document1 Filed02/14/11 Page14 of 16
`Case5:ll—cv-0067l-EJD Documentl Filed02/14/11 Page14 of 16
`
`106.
`
`IV claims to be the owner and assignee ofall rights, title, and interest in and under
`
`the ’087 patent.
`
`107.
`
`IV has accused Plaintiff of infringing the ’08? patent through its manufacture, saleE
`
`use, andfor importation of certain integrated circuits, and has asserted that Plaintiff must take a
`
`license to the ’08? patent to lawfully continue the manufacture, sale, use, andx’or importation of
`
`these integrated circuits.
`
`108.
`
`Plaintiff has informed N that Plaintiff contends that it has the right to engage in
`
`the manufacture, sale, use, andfor importation of these integrated circuits without a license to the
`
`‘087 patent.
`
`109. Under all the circumstances in this dispute, W has, at a minimum, created a
`
`substantial, immediate, and real controversy between the parties as to the non-infringement of the
`
`‘087 patent. A valid and justieiable controversy has arisen and exists between Plaintiff and 1V
`
`within the meaning of 28 USC. § 2201.
`
`110.
`
`Upon