Free Declaration in Support - District Court of California - California

Case 5:07-cv-04507-JF

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1 ROBERT J. YORIO (SBN 93178) [email protected] 2 COLBY B. SPRINGER (SBN 214868) [email protected] 3 CHRISTINE S. WATSON (SBN 218006) [email protected] 4 CARR & FERRELL LLP 2200 Geng Road 5 Palo Alto, California 94303 Telephone: (650) 812-3400 6 Facsimile: (650) 812-3444 7 Attorneys for Plaintiff ACTICON TECHNOLOGIES LLC 8 9 10 11 12 13 ACTICON TECHNOLOGIES LLC, 14 15 v. Plaintiff, DECLARATION OF CHRISTINE S. WATSON IN SUPPORT OF PLAINTIFF ACTICON TECHNOLOGIES LLC'S EX PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER AND MOTION FOR PRELIMINARY INJUNCTION Date: Time: Judge: Courtroom: TBD TBD Hon. Jeremy Fogel 3, Fifth Floor CASE NO. C 07-4507 JF (HRL) UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

16 PRETEC ELECTRONICS CORPORATION, a dissolved California corporation; PTI 17 GLOBAL, INC., a California corporation; CHIU FENG CHEN, an individual; GORDON 18 YU, an individual; TOMMY HO, an individual; ROBERT WU, an individual; GRACE YU, an 19 individual; KUEI LU, an individual; and DOES 1 through 20, 20 Defendants. 21 22 23 24 25 26 27 28
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I, the undersigned, CHRISTINE S. WATSON, declare as follows: 1. I am an attorney admitted to practice before all of the courts of the State of California. I am an associate with the firm of Carr & Ferrell LLP, the attorneys of record for plaintiff Acticon Technologies LLC ("ACTICON"). I make this declaration in support of Acticon's Ex Parte Motion for Temporary Restraining Order and Motion for Preliminary Injunction. I am one of the attorneys responsible for representing ACTICON in this action, and the facts set out -1Decl. of Christine S. Watson ISO Plaintiff Acticon Technologies LLC's Ex Parte Application for Temporary Restraining Order and Motion for Preliminary Injunction ­ C 07-4507 JF (HRL)

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herein are within my personal knowledge, or are based on documents in my possession and other information to which I have access in the course of my duties. If called upon to do so I could and would testify to the truth thereof. 2. ACTICON is the owner of the entire right, title and interest in U.S. Patent Nos. 4,603,320 (the "`320 Patent"); 4,543,450 (the "`450 Patent"); 4,972,470 (the "`470 Patent"); and 4,686,506 (the "`506 Patent") (collectively, the "Patents-in-Suit"), which describe various forms of electronic connectors. True and correct copies of the Patents-in-Suit are attached to the Complaint in this action, as Exhibits A, B, C, and D, respectively. A true and correct copy of the Complaint is attached hereto as Exhibit "A." 3. On or about August 1, 2006, ACTICON filed a patent infringement action titled, Acticon Technologies LLC v. Pretec Electronics Corp., et al., in the United States District Court for the Northern District of California, Case No. C 06-4679 JF (HRL) ("FIRST COMPLAINT"). Defendant PRETEC ELECTRONICS CORPORATION ("PRETEC") was named as a defendant in the FIRST COMPLAINT and Defendant ROBERT WU (as corporate representative of PRETEC) was personally served with the summons and FIRST COMPLAINT at 46791 Fremont Boulevard, Fremont, California, on or about August 17, 2006. 4. PRETEC did not respond to the FIRST COMPLAINT on or before September 6, 2006, the deadline for PRETEC to answer or otherwise respond to the FIRST COMPLAINT. 5. On or about September 13, 2006, ACTICON filed a Request for Entry of Default against PRETEC. The Clerk of the United States District Court, Northern District of California entered the default of PRETEC in Acticon Technologies LLC v. Pretec Electronics Corp., et al., Case No. C 06-4679 JF (HRL) on September 19, 2006 (Docket Entry 13). 6. On or about October 5, 2006, on behalf of ACTICON, I sent a letter to PRETEC via certified U.S. mail advising that ACTICON would request entry of default judgment against PRETEC if PRETEC did not respond to ACTICON's communication on or before October 11, 2006. PRETEC did not respond to ACTICON's October 5, 2006 letter. A true and correct copy of the October 5, 2006 letter is attached hereto as Exhibit "B." -2Decl. of Christine S. Watson ISO Plaintiff Acticon Technologies LLC's Ex Parte Application for Temporary Restraining Order and Motion for Preliminary Injunction ­ C 07-4507 JF (HRL)

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7. Notwithstanding the default entered against PRETEC, on or about October 19, 2006, PRETEC filed a motion captioned, "Motion to Change Time," requesting a sixty-day continuance of the November 29, 2006 Initial Case Management Conference in Acticon Technologies LLC v. Pretec Electronics Corp., et al., Case No. C 06-4679 JF (HRL) (Docket Entry 21). This motion was signed by Defendant TOMMY HO and Defendant GORDON YU. A true and correct copy of the Motion to Change Time is attached hereto as Exhibit "C." 8. On October 24, 2006, Defendant TOMMY HO contacted me via telephone. The following day, in a telephone conference between TOMMY HO and myself, TOMMY HO requested a description of the "Accused Products" in the FIRST COMPLAINT (which consisted of PCMCIA, CompactFlash and Secure Digital I/O form factor electronic connectors) and agreed to provide ACTICON with six years of annual sales information for PRETEC's Accused Products. 9. On October 26, 2006, Defendant TOMMY HO wrote in an e-mail message to me, "Thanks for the information. We will study the accused products as you claimed. If we agree, then we will prepare the past years of sales information. If we disagree on some of the accused products, we will contact you to discuss. We will try to get as much sales information as possible." A true and correct copy of Defendant TOMMY HO's October 26, 2006 e-mail to me is attached hereto as Exhibit "D." 10. Based on Defendant TOMMY HO's agreement on behalf of PRETEC to provide sales information for the Accused Products to ACTICON, ACTICON agreed not to seek entry of default judgment against PRETEC and did not oppose PRETEC's Motion to Change Time and filed a Statement of Non-Opposition to Pretec's Motion to Change Time on October 27, 2006, in Acticon Technologies LLC v. Pretec Electronics Corp., et. al., Case No. C 06-4679 JF (HRL). 11. That same day, October 27, 2006, a company named Pretec Technology, Inc., who was not named a defendant in the FIRST COMPLAINT, filed a Certificate of Amendment of Articles of Incorporation with the California Secretary of State to change its corporate name -3Decl. of Christine S. Watson ISO Plaintiff Acticon Technologies LLC's Ex Parte Application for Temporary Restraining Order and Motion for Preliminary Injunction ­ C 07-4507 JF (HRL)

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to PTI GLOBAL, INC. PTI GLOBAL, INC. is a named defendant in the instant action, Acticon Technologies LLC v. Pretec Electronics Corp., et al, Case No. 07-4507 JF (HRL) ("SECOND COMPLAINT"). A true and correct copy of Pretec Technology, Inc.'s Certificate of Amendment of Articles of Incorporation is attached hereto as Exhibit "E." Pretec Technolgy, Inc./PTI GLOBAL, INC.'s December 2006 Statement of Information filed in the Office of the Secretary of State of the State of California lists Defendant KUEI LU as the Chief Executive Officer, Secretary and Chief Financial Officer of PTI GLOBAL, INC. Previously, Defendants ROBERT WU, TOMMY HO and GRACE YU were listed as the officers and/or directors in Pretec Technology, Inc./PTI GLOBAL, INC.'s May 2006 Statement of Information. True and correct copies of Pretec Technology, Inc./PTI GLOBAL INC.'s April 2006, May 2006 and December 2006 Statements of Information are attached hereto as Exhibit "O." 12. On October 31, 2006, the Court granted PRETEC's motion in Acticon Technologies LLC v. Pretec Electronics Corp., et al., Case No. C 06-4679 JF (HRL), and continued the Initial Case Management Conference scheduled for November 29, 2006 to February 2, 2007. (Docket Entry 24). 13. I never heard from PRETEC or TOMMY HO subsequent to the correspondence described in Paragraph 9 above. On November 15, 2006, I sent a follow-up e-mail to TOMMY HO regarding his representations that he would provide PRETEC's sales figures to ACTICON and indicating that I was unable to reach him via telephone, but I never received any response to my e-mail. A true and correct copy of the November 15, 2006 e-mail is attached hereto as Exhibit "F." To the best of my knowledge, PRETEC has not filed a Substitution of Counsel in this case at any time after this Court granted PRETEC's Motion to Change time on October 31, 2006 and PRETEC did not appear at the February 2, 2007 Initial Case Management Conference. 14. On November 28, 2006, one day prior to the originally scheduled Case Management Conference and one month after Pretec Technology, Inc. changed its name to PTI GLOBAL, INC., PRETEC filed a Certificate of Dissolution in the office of the Secretary of -4Decl. of Christine S. Watson ISO Plaintiff Acticon Technologies LLC's Ex Parte Application for Temporary Restraining Order and Motion for Preliminary Injunction ­ C 07-4507 JF (HRL)

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State of California. A true and correct copy of the Certificate of Dissolution is attached hereto as Exhibit "G". Defendant CHIU FENG CHEN certified and declared under penalty of perjury in the Certificate of Dissolution that, inter alia, "THE CORPORATION'S KNOWN DEBTS AND LIABILTIES HAVE BEEN ACTUALLY PAID." 15. PRETEC, who supposedly dissolved in November 2006, issued a press release on April 4, 2007, announcing its new Rugged Industrial CompactFlash card. A true and correct copy of the press release is attached as Exhibit "H". 16. Prior to the filing of the SECOND COMPLAINT, I visited PTI GLOBAL, INC.'s web site, located at www.ptiglobalusa.com, where PTI GLOBAL, INC. sells PRETEC products online. The homepage of PTI GLOBAL, INC.'s web site contains the header, "Flash Memory Innovation by PRETEC." A true and correct copy of a screenshot of PTI GLOBAL, INC.'s homepage, taken on October 3, 2007, is attached hereto as Exhibit "I." I also visited PTI GLOBAL, INC.'s storefront in Amazon.com's online marketplace, located at http://www.amazon.com/shops/pti_global. The "About PTI Global Inc." section of PTI GLOBAL, INC.'s storefront, states, "Since 1993, PRETEC brand has been recognized internationally for it's [sic] experience in pioneering innovative and quality products offered to the data storage, mobile computing and industrial markets. PRETEC brand is focused on global markets providing it's [sic] full-line of own brand-name products: USB device storage, Flash memory Card storage, Multi-Media solution, Mobile Peripherals, MultiFunction, Industrial storage and Accessory. PRETEC brand products with unique ID design and highest reliability create PRETEC's winning formula, reaching the customer's needs and enhancing your digital world." A true and correct copy of the "About PTI Global Inc." section of PTI GLOBAL, INC.'s Amazon.com storefront is attached hereto as Exhibit "J." 17. In addition, I visited PTI GLOBAL, INC.'s web site, which lists PTI GLOBAL, INC.'s address as "231 Whitney Place, Fremont, CA 94539" and lists PTI GLOBAL, INC.'s telephone number as "510-249-9055." See http://www.ptiglobalusa.com/info.html. My assistant performed a WHOIS record search for "pretec.com" and the Technical Contact

-5Decl. of Christine S. Watson ISO Plaintiff Acticon Technologies LLC's Ex Parte Application for Temporary Restraining Order and Motion for Preliminary Injunction ­ C 07-4507 JF (HRL)

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listed for PRETEC is an individual whose address is "231 Whitney Place, Fremont, CA 94539" and whose telephone number is "510-249-9055." 18. Prior to the filing of the SECOND COMPLAINT, I also conducted an Internet search for "Pretec Electronics Corporation" in "Fremont, California," at the web site www.google.com/maps. This search returned the result of an address of "231 Whitney Place, Fremont, CA 94539" and a phone number of "(510) 249-9055." In addition, I performed an Internet search for "Pretec Electronics Corporation" in "Fremont, California," at the web site www.maps.yahoo.com, which returned an address of "231 Whitney Place, Fremont, CA 94539" and a phone number of "(510) 249-9055." On October 2, 2007, I performed a search at www.maps.yahoo.com of "231 Whitney Place, Fremont, CA 94539" and the Yahoo! map program prompted me to select either "Pretec Electronics Corporation" or "Pti Global." A true and correct copy of the screenshot of the October 2, 2007 search results is attached as Exhibit "K". I visited 231 Whitney Place, Fremont, CA 94539 and the parking spaces directly outside the building located at 231 Whitney Place are designated as reserved for PTI GLOBAL, INC. 19. Both prior to and subsequent to the filing of the SECOND COMPLAINT, I visited PRETEC's web site, located at www.pretec.com. During those visits, clicking on the "Where to Buy" link on the site directed me to purchase PRETEC products at http://www.ptiglobalusa.com, http://www.amazon.com/shops/pti-global and 231 Whitney Place, Fremont, CA 94539. A true and correct copy of the screenshot of the "Where to Buy" page on PRETEC's web site is attached hereto as Exhibit "L." PRETEC's web site also lists PTI GLOBAL, INC. as its U.S. office. A true and correct copy of a screenshot of the "Contact Information" page on PRETEC's web site is attached hereto as Exhibit "M." As late as October 3, 2007, PRETEC's web site stated that PRETEC has 83 distributors in 59 countries. As recently as September 24, 2007, PTI GLOBAL, INC. has sold PRETEC products at its Amazon.com marketplace online storefront, as indicated by buyer feedback on the site. A true and correct copy of a screenshot of the "Feedback" page on PTI GLOBAL, INC.'s Storefront is attached hereto as Exhibit "N." -6Decl. of Christine S. Watson ISO Plaintiff Acticon Technologies LLC's Ex Parte Application for Temporary Restraining Order and Motion for Preliminary Injunction ­ C 07-4507 JF (HRL)

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20. I certify to the Court that my firm faxed notice of ACTICON's Ex Parte Application for Temporary and Restraining Order and Motion for Preliminary Injunction to PTI GLOBAL, INC. on Thursday, October 4, 2007, and that my firm will be attempting personal service on DEFENDANTS of the SECOND COMPLAINT and all papers and pleadings associated with this Ex Parte Application for Temporary Restraining Order and Motion for Preliminary Injunction on October 5, 2007.

I declare under penalty of perjury under the laws of the State of California that the

9 foregoing is true and correct. 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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Executed this

4th

day of October, 2007, at Palo Alto, California.

/s/ Christine S. Watson CHRISTINE S. WATSON

-7Decl. of Christine S. Watson ISO Plaintiff Acticon Technologies LLC's Ex Parte Application for Temporary Restraining Order and Motion for Preliminary Injunction ­ C 07-4507 JF (HRL)