Free Motion to Stay - District Court of California - California

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Anthony J. Dain (Bar No. 98947) Victor M. Felix (Bar No. 179622) PROCOPIO, CORY, HARGREAVES & SAVITCH LLP 530 B Street, Suite 2100 San Diego, California 92101 Telephone: 619.238.1900 Facsimile: 619.235.0398 Attorneys for Defendants and Counterclaimants, Kyocera International, Inc. and Kyocera Wireless Corp.

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff, Case No.: 08 CV 0411 BTM (CAB) DECLARATION OF VICTOR M. FELIX IN SUPPORT OF KYOCERA'S MOTION TO STAY PENDING OUTCOME OF REEXAMINATION PROCEEDINGS Date: Time: Ctrm.: Judge: May 2, 2008 11:00 a.m. 15 Hon. Barry Ted Moskowitz

KYOCERA INTERNATIONAL, INC., a California corporation; KYOCERA WIRELESS CORP., a Delaware corporation; and DOES 1-100, Defendants.

NO ORAL ARGUMENT UNLESS REQUESTED BY THE COURT KYOCERA INTERNATIONAL, INC., a California corporation; KYOCERA WIRELESS CORP., a Delaware corporation, Counterclaimants,

JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Counterdefendant. I, Victor M. Felix, declare: 1. I am a partner with the law firm of Procopio, Cory, Hargreaves & Savitch LLP

and one of the attorneys of record for Defendants and Counterclaimants Kyocera International,

DECLARATION OF VICTOR M. FELIX IN SUPPORT OF KYOCERA'S MOTION TO STAY PENDING OUTCOME OF REEXAMINATION PROCEEDINGS Case No. 80-0411 BTM (CAB) 109934/000230/899511.01

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Inc. and Kyocera Wireless Corp. (collectively, "Kyocera"). I have personal knowledge of the facts set forth herein and, if called upon as a witness could and would testify competently thereto. 2. I obtained documents from the files of the United States Patent and Trademark

Office ("PTO") through the PTO's Public Patent Application Information ("PAIR") website portal, available at www.uspto.gov. 3. Attached as Exhibit 1 to Kyocera's Notice of Lodgment in Support of Its Motion

to Stay Pending Outcome of Reexamination Proceedings (the "Notice of Lodgment") is a true and correct copy of a September 10, 2007 Opinion Memorandum/Order staying the litigation in the case entitled Sorensen v. Black & Decker, et al., USDC for the Southern District of California Case No. 06CV1572 BTM (CAB) [Doc. #243]. 4. Attached as Exhibit 2 to Kyocera's Notice of Lodgment is a true and correct copy

of the PTO's grant of Black & Decker's Request for Reexamination dated October 11, 2007 (Application/Control Number 90/008,775). 5. Attached as Exhibit 3 to Kyocera's Notice of Lodgment is a true and correct copy

of the PTO's grant of Phillips Plastic's Request for Reexamination dated February 21, 2008 (Application/Control Number 90/008,976). 6. Attached as Exhibit 4 to Kyocera's Notice of Lodgment is a true and correct copy

of a January 16, 2008 Opinion Memorandum/Order staying the litigation in the case entitled Sorensen v. Digital Networks North America, Inc., USDC for the Northern District of California Case No. C 07-05568 JSW, [Doc. # 39]. 7. Attached as Exhibit 5 to Kyocera's Notice of Lodgment is a true and correct copy

of a PTO publication entitled Ex Parte Reexamination Filing Data, dated June 30, 2006. 8. Attached as Exhibit 6 to Kyocera's Notice of Lodgment is a true and correct copy

of H.R. Rep. No. 96-1307, Part 1 (1980), reprinted in 1980 U.S.C.C.A.N. 6460-6463. 9. On February 8, 2008, a hearing on a motion to stay proceedings pending the

outcome of reexamination proceedings was heard in this Court in the case entitled Sorensen v. Giant International (USA) Ltd., USDC for the Southern District of California Case No. 07CV2121 BTM (CAB). No ruling has yet issued in that case. 2
DECLARATION OF VICTOR M. FELIX IN SUPPORT OF KYOCERA'S MOTION TO STAY PENDING OUTCOME OF REEXAMINATION PROCEEDINGS Case No. 80-0411 BTM (CAB) 109934/000230/899511.01

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On March 14, 2008, a hearing on a motion to stay proceedings pending the

outcome of reexamination proceedings was scheduled to be heard in this Court in the case entitled Sorensen v. Esseplast USA (NC), Inc., USDC for the Southern District of California Case No. 07CV2277 BTM (CAB). No ruling has yet issued in that case. I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct. Executed this 24th day of March, 2008, at San Diego, California. s/Victor M. Felix Victor M. Felix

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DECLARATION OF VICTOR M. FELIX IN SUPPORT OF KYOCERA'S MOTION TO STAY PENDING OUTCOME OF REEXAMINATION PROCEEDINGS Case No. 80-0411 BTM (CAB) 109934/000230/899511.01