Free Opening Brief in Support - District Court of Delaware - Delaware

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EXHIBIT A

Page 1 of 1 Case 1:07-cv-00170-JJF Cook, Malcolm
From: Sent: To: Cc: Subject: Misiag, Richard J (GE, Corporate) [[email protected]] Tuesday, March 20, 2007 11:34 AM MacNichol, Marie H (Marie) Smith, David L (David); Glick, Kenneth R (GE, Corporate); Moller, Peter (GE, Corporate) Motorola/Altocom Agreement

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Importance: High Attachments: Redacted Alto-com - MOT X-License Agreement.pdf Marie: Attached is a copy of the redacted Motorola/Altocom Patent Cross-License Agreement. Pursuant to Paragraph 4.2 of the Agreement, Agere is not licensed to GE's analog modem patent portfolio. As of the date of the Agreement, January 30, 2001, Agere was not in existence and was therefore neither an existing customer nor an existing licensee of standalone ALTOCOM software MODEMS. Marie, I recognize you are traveling on business next week. Given that we still have the opportunity to meet and resolve this matter this week I would propose our teams endeavor to meet before Friday, or even this weekend if necessary, to further discuss settlement proposals. Frankly, we would like to understand Agere's last, best offer if your intention is to settle this matter quickly and amicably. Please advise me of your availability this week or weekend. Regards, Richard Misiag Vice President, Licensing GE Trading and Licensing 105 Carnegie Center, 3rd Floor Princeton, NJ 08540 USA T: 609.936.6041 C: 609.865.9145 F: 609.936.6083

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EXHIBIT B

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Message Case 1:07-cv-00170-JJF
455 North Cityfront Plaza Orive Chicago, IL 60611-5599 312.222.8106 - Oirect

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312.321.4299 - Fax
mstolarski (iu sebri n ks. com

ww.usebrinks.com
IPlease Note: This message is intended for the individual or entity named above and may constitute a privi and confidential communication. If you are not the intended recipient, please do not read, copy, use, or disc this message. Please notify the sender by replying to this message, and then delete the message from you

system. Thank you.¡

From: Saffer, Ian L. (mailto:ilsaffer(Çtownsend.comJ
Sent: Monday, September 10, 2007 11:08 AM
To: Stolarski, Mike

Subject: RE: CIF v. Agere

Mike,

I am available to talk about Motorola's Response to Agere's Second Subpoena anytime today (Monday), tomorrow (Tuesday) after 2 p.m. MDT, and any time on Wednesday. Please let me know when you are available.
Also, I need to follow up with you Motorola's Response to Agere's First Subpoena. As mentioned in my last

letter (dated September 5; copy attached) we believe that documents should be produced immediately
under Local Rule 26.2. As you know, we are under tight time constraints to complete discovery pertaining to Agere's license defense. Thus, with respect to the license defense, we need dates certain for (a)

production of documents and (b) a deposition of your client. If you are unable to produce documents by
the end ofthis week, and also propose at least one deposition date in mid-October, we will have no

alternative other than to file a motion to compeL. As stated in my last letter, we do not wish to place undue time pressure on you, but we have veiy limited time in which to complete this discovery. I am available to discuss these issues during the times mentioned above.
I look forward to hearing from you.
Regards,

Ian

Ian 1. Saffer

Townsend and Townsend and Crew LLP
1200 17th Street #2700
Denver, Colorado 80202

303.571.4000
303.571.4321 (fax)

----Original Message----From: Stolarski, Mike (mailto:mstolarski(Qbrinkshofer.comJ Sent: Friday, September 07,20078:10 AM To: Saffer, Ian L.

10117/2007

Message Case 1:07-cv-00170-JJF
Subject: CIF v. Agere

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Ian,

Please find attached Motorola's Response to Agere's Second Subpoena. Please let me know when you may be available early next week to discuss this response.

Best regards,
Mike Stolarski Intellectual Property Attorney

Brinks Hofer Gilson & Lione
NBC Tower, Suite 3600 455 North Cityfront Plaza Orive Chicago, IL 60611-5599 312.222.8106 - Oirect

312.321.4299 - Fax
mstola rski (iu sebrin ks. com

ww.usebrinks.com
IPlease Note: This message is intended for the individual or entity named above and may constitute and confidential communication. If you are not the intended recipient, please do not read, copy, use, this message. Please notify the sender by replying to this message, and then delete the message frc

system. Thank you.¡

1 0117/2007

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EXHIBIT C

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EXHIBIT E

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Portfolio Media, Inc. 1 648

Broadway. Suite 200 1 New York, NY 100121 www.law360.com

Phone: +1 21253763311 Fax: +1 2125376371 1 customerservice(¡portoliomedia.com

Another Term, Another High-Stakes Patent Case
Wednesday, Oct 24, 2007 --- Patent disputes are qualifying as certworthy in

increasing numbers.
In the past two years alone, the U.S. Supreme Court has granted certiorari in patent cases more times than in the first twelve years following the inception of the U.S. Court of Appeals for the Federal Circuit - i.e., the court created by

Congress in 1982 to reign in circuit conflicts and bring about doctrinal
uniformity in patent law.

The conventional view now is that the Supreme Court is reigning in the
Federal Circuit.

During the past two terms, not only has the Supreme Court consistently reversed the Federal Circuit, the reversals have all been unanimous or near-unanimous, never garnering more than a single dissenter.
This trend prompted Judge Gajarsa to remark that "the Federal Circuit is
poised to become the 'Ninth Circuit' of the twenty-first century."(1)

another certiorari grant in a patent case: Quanta Computer, Inc. v. LG Electronics, Inc. At issue in Quanta is the Federal Circuit's application of the patent exhaustion doctrine, also known as the first-sale doctrine.
So begins the October 2007 Term with yet

This long-standing doctrine provides that an authorized sale of a patented

article exhausts the patentee's exclusive rights as to that article insofar as the article embodies the invention. The patentee is therefore precluded from obtaining any further royalties or restrictions on the article.

The Supreme Court has not squarely addressed the exhaustion doctrine since 1942,(2) a year in which the Court decided eleven intellectual property
cases (a number not since surpassed).

Sixty-five years later, the Court is revisiting the doctrine - and once again, at

a time when heavy attention is focused on intellectual property cases.
In the case at bar, LG owns several patents related to systems and methods

for receiving and transmitting data in computer systems. In 2000, LG
licensed the right to make, use, and sell microprocessors and chipsets under these patents to industry giant InteL.

That license expressly disclaims any express or implied license for acts of

infringement that may occur when a subsequent purchaser of Intel

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microprocessors and chipsets combines those Intel components with

non-Intel products or components.

The petitioners, several Taiwan-based computer manufacturers, are such
downstream purchasers for whom LG intended to retain the right to sue.

It is undisputed that Intel notified the petitioners that they could face an infringement lawsuit by LG for combining Intel products with non-Intel
products. The petitioners disregarded the notice, and litigation ensued.

The petitioners argued that LG's license to Intel and Intel's subsequent sale of chips to petitioners exhausted LG's patent rights with respect to those
chips.
In a partial summary judgment ruling, the U.S. District Court for the Northern

District of California agreed with the petitioners. Judge Claudia Wilken

determined that under LG's infringement theory, there could be no
reasonable use of Intel's chips that did not infringe LG's patents. As such, Judge Wilken concluded that LG was impermissibly trying to obtain double royalties on the same patents.
The Federal Circuit reversed. The pivotal fact, in the court of appeals' view, was that Intel's sale of chips to the petitioners was "conditionaL"

Conditional sales - i.e., sales subject to restrictions on the purchaser's right to use or resell the article - do not trigger the first-sale doctrine, the Federal
Circuit ruled.

The Supreme Court alluded to such a principle in an opinion dating back more than a century. In Mitchell v. Hawley, the High Court stated that a sale
"without any conditions" can exhaust one's patent rights.(3)

Here, the Federal Circuit concluded that Intel's sale of chips to the petitioners was "conditional" due to the disclaimer notice that Intel sent to the petitioners.

U.S. Solicitor General Paul Clement, whose views were sought at the certiorari stage, opined that the Federal Circuit had developed an overly
broad reading of what constituted a "conditional" sale.

The Solicitor General Uoined by the U.S. Patent and Trademark Offce)

argued that the Federal Circuit's understanding of "conditional" and
"unconditional" sales had deviated from the Supreme Court's teachings.

Those precedents, asserted the government, explain that an unconditional sale simply occurs when a person acquires lawful title to a patented item.

The petitioners no doubt welcomed the General Clement's comments. In recent years, the Supreme Court has routinely invited the Solicitor General's views in patent cases and has ultimately decided those cases in accordance with such advice.
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Then again, the Solicitor General may not be in complete lockstep with the

petitioners. The government appeared to tiptoe around the merits of one
issue: whether the exhaustion doctrine applies to method patents.

On that question, the district court and Federal Circuit were in agreement.
Both courts ruled against the petitioners, holding that method claims - as opposed to apparatus claims - are exempt from the exhaustion doctrine. Undeterred, the petitioners continue to assert that LG's method claims were

exhausted.
It is unclear what standard, if any, the Solicitor General will ultimately
advocate regarding the treatment of method claims. The government's

certiorari-stage brief focused on the exhaustion doctrine as applied to the
sale of "articles," "items," or "devices," rather than "methods" or "processes."

The Solicitor General did quarrel, however, with the Federal Circuit's holding that method patents are categorically exempt from the first-sale doctrine. To
the contrary, the Solicitor General pointed to Supreme Court patent-exhaustion cases that involved method patents.

Whichever way the Court goes, the decision in Quanta should have a
profound and lasting impact on patent licensing practices, particularly in the computer technology industry.

According to the petitioners, if the Federal Circuit's ruling stands, then LG's
"patents are infringed by every computer in the world, whenever

microprocessors and chipsets are combined with generic components such
as busses and memory."(4)
The petitioners dramatically warn of "an explosion of infringement suits

seeking a second round of royalties from persons who (like petitioners) purchased goods and paid full price for them expecting that the patentee's
claims were satisfied."(5)

This is perhaps smart posturing at a time when the judicial (and
congressional) pendulum seems to be gravitating towards protecting businesses from what is perceived as rampant abuses and excesses in
patent litigation.

Briefing is currently scheduled to be completed by December 28, 2007, meaning that oral argument will take place in early 2008, with a decision
likely to be issued in the spring. The computer industry will be watching closely.
--By Eric W. Hagen, McDermott Will & Emery LLP

Eric W. Hagen, a partner in McDermott's Los Angeles office and a member

of the firm's intellectual property, media & technology department, focuses
his practice on intellectual property litigation.
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(1) A.J. Gajarsa & L.P. Cogswell, IIi, The Federal Circuit and the Supreme
Court, 55 Am. U. L. Rev. 821, 844 (2006).
(2) United States v. Univis Lens Co., 316 U.S. 241 (1942).
(3) 83 U.S. (16 WalL.) 544, 547 (1873).
(4) Pet. for Cert. at 1.

(5) Id. at 29.

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EXHIBIT F

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EXHIBIT I

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EXHIBIT L

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