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PATENT

U.S. District Court [LIVE] Eastern District of TEXAS LIVE (Tyler) CIVIL DOCKET FOR CASE #: 6:06-cv-00523-LED ON Semiconductor Corporation et al v. Samsung Electronics Co., Ltd. et al Assigned to: Judge Leonard Davis Referred to: Demand: $0 Lead Docket: None Related Cases: None Cases in other court: None Cause: 35:271 Patent Infringement Date Filed: 12/4/2006 Jury Demand: Plaintiff Nature of Suit: 830 Patent Jurisdiction: Federal Question

Plaintiff ----------------------ON Semiconductor Corporation represented by Hilda Contreras Galvan Jones Day - Dallas 2727 N Harwood St Dallas, TX 75201 214/969-4556 Fax: 12149695100 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Kenneth Robert Adamo Jones Day - Dallas 2727 N Harwood St Fifth Floor Dallas, TX 75201-1515 214-969-4856 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Semiconductor Components Industries, LLC represented by Hilda Contreras Galvan (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED

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Kenneth Robert Adamo (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED cp ON Semiconductor Corporation

V. Defendant ----------------------Samsung Electronics Co., Ltd. represented by Allen Franklin Gardner Potter Minton PC 110 N College Suite 500 PO Box 359 Tyler, TX 75710-0359 903/597-8311 Email: [email protected] ATTORNEY TO BE NOTICED James E Marina Kirkland & Ellis - NYC 153 E 53rd St Citicorp Center New York, NY 10022-4675 212/446-4800 Fax: 212/446-4900 Email: [email protected] ATTORNEY TO BE NOTICED John M Desmarais Kirkland & Ellis - NYC 153 E 53rd St Citicorp Center New York, NY 10022-4675 212/446-4800 Fax: 12124464900 Email: [email protected] ATTORNEY TO BE NOTICED Samsung Electronics America, Inc. represented by Allen Franklin Gardner (See above for address) ATTORNEY TO BE NOTICED

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James E Marina (See above for address) ATTORNEY TO BE NOTICED John M Desmarais (See above for address) ATTORNEY TO BE NOTICED Michael Edwin Jones Potter Minton PC 110 N College Suite 500 PO Box 359 Tyler, TX 75710-0359 903/597/8311 Fax: 9035930846 Email: [email protected] ATTORNEY TO BE NOTICED Samsung Telecommunications America General, LLC represented by Allen Franklin Gardner (See above for address) ATTORNEY TO BE NOTICED James E Marina (See above for address) ATTORNEY TO BE NOTICED John M Desmarais (See above for address) ATTORNEY TO BE NOTICED Michael Edwin Jones (See above for address) ATTORNEY TO BE NOTICED Samsung Semiconductor, Inc. represented by Allen Franklin Gardner (See above for address) ATTORNEY TO BE NOTICED James E Marina (See above for address) ATTORNEY TO BE NOTICED John M Desmarais (See above for address) ATTORNEY TO BE NOTICED Michael Edwin Jones

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(See above for address) ATTORNEY TO BE NOTICED Samsung Austin Semiconductor, LLC represented by Allen Franklin Gardner (See above for address) ATTORNEY TO BE NOTICED James E Marina (See above for address) ATTORNEY TO BE NOTICED John M Desmarais (See above for address) ATTORNEY TO BE NOTICED Michael Edwin Jones (See above for address) ATTORNEY TO BE NOTICED

Filing Date

#

Docket Text COMPLAINT against Samsung Austin Semiconductor, LLC, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc. (Filing fee $ 350 pd.) , filed by ON Semiconductor Corporation, Semiconductor Components Industries, LLC. (Attachments: # (1) Exhibit A# (2) Exhibit B# (3) Exhibit C# (4) Exhibit D)(mjc ) (Entered: 12/6/2006) Filing fee received: $ 350.00, receipt number 6-1-7763 (mjc ) (Entered: 12/6/2006) E-GOV SEALED SUMMONS Issued as to Samsung Austin Semiconductor, LLC, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc. (mjc ) (Entered: 12/6/2006) Summons Reissued as to Samsung Austin Semiconductor, LLC. (mjc ) (Entered: 12/6/2006) Form mailed to Commissioner of Patents and Trademarks. (mjc ) (Entered: 12/6/2006)

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CORPORATE DISCLOSURE STATEMENT filed by Semiconductor Components Industries, LLC identifying ON Semiconductor Corp. as Corporate Parent. (Galvan, Hilda) (Entered: 12/6/2006) CORPORATE DISCLOSURE STATEMENT filed by ON Semiconductor Corporation (Galvan, Hilda) (Entered: 12/6/2006) MOTION to Change Venue Defendants' Motion to Transfer to the District of Delaware Pursuant to the First-to-File Rule by Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc.. (Attachments: # (1) Affidavit Declaration of Patrick Muir# (2) Affidavit Declaration of Michael Jones# (3) Exhibit 1 to Jones Declaration# (4) Exhibit 2 to Jones Declaration# (5) Exhibit 3 to Jones Declaration# (6) Exhibit 4 to Jones Declaration# (7) Exhibit 5 to Jones Declaration# (8) Text of Proposed Order)(Jones, Michael) (Entered: 12/26/2006) ANSWER to Complaint with Jury Demand by Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc..(Jones, Michael) (Entered: 12/26/2006) CORPORATE DISCLOSURE STATEMENT filed by Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc. (Jones, Michael) (Entered: 12/26/2006) MOTION to Seal Defendants' Unopposed Motion for Leave to File and Amended Unredacted Version of Their Previously File Motion to Transfer to the District of Delaware Pursuant to the First-to-File Rule, Under Seal by Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc.. (Attachments: # (1) Text of Proposed Order)(Jones, Michael) (Entered: 12/26/2006) ORDER granting [10] Motion to Seal. Defendants are authorized to file an amended, non-redacted version of their previously filed Motion to Transfer to the District of Delaware pursuant to the First-To-File rule under seal. Signed by Judge Leonard Davis on 1/3/07. (kjr, ) (Entered: 1/4/2007) SEALED PATENT MOTION by Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor,

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Inc.. (Attachments: # (1) Muir Declaration# (2) Exhibit A to Muir Declaration# (3) Exhibit B to Muir Declaration# (4) Exhibit C to Muir Declaration# (5) Exhibit D to Muir Declaration# (6) Exhibit E to Muir Declaration# (7) Exhibit F to Muir Declaration# (8) Exhibit G to Muir Declaration# (9) Jones Declaration# (10) Exhibit 1 to Jones Declaration# (11) Exhibit 2 to Jones Declaration# (12) Exhibit 3 to Jones Declaration# (13) Exhibit 4 to Jones Declaration# (14) Exhibit 5 to Jones Declaration# (15) Text of Proposed Order)(Jones, Michael) (Entered: 1/4/2007) MOTION for Leave to File Under Seal Plaintiffs' Opposition to Defendants' Motion to Transfer to the District of Delaware Pursuant to the First to File Rule (Unopposed) by ON Semiconductor Corporation, Semiconductor Components Industries, LLC. (Attachments: # (1) Text of Proposed Order)(Adamo, Kenneth) (Entered: 1/5/2007) NOTICE of Attorney Appearance by Michael Charles Smith on behalf of ON Semiconductor Corporation, Semiconductor Components Industries, LLC (Smith, Michael) (Entered: 1/8/2007) SEALED RESPONSE to Motion re [7] MOTION to Change Venue Defendants' Motion to Transfer to the District of Delaware Pursuant to the First-to-File Rule filed by ON Semiconductor Corporation, Semiconductor Components Industries, LLC. (Attachments: # (1) Affidavit Declaration of G. Sonny Cave# (2) Affidavit Declaration of Tharan Gregory Lanier# (3) Exhibit 1# (4) Exhibit 2# (5) Errata 3# (6) Exhibit 4# (7) Exhibit 5# (8) Affidavit Declaration of Bradley J. Botsch# (9) Exhibit 1# (10) Exhibit 2# (11) Exhibit 3# (12) Exhibit 4# (13) Exhibit 5# (14) Exhibit 6# (15) Exhibit 7# (16) Exhibit 8# (17) Exhibit 9# (18) Exhibit 10# (19) Exhibit 11# (20) Exhibit 12# (21) Exhibit 13# (22) Text of Proposed Order)(Adamo, Kenneth) (Entered: 1/8/2007) ORDER granting [13] Motion for Leave to File Plaintiffs' Opposition to Defendants' Motion to Transfer to the District of Delaware under seal . Signed by Judge Leonard Davis on 1/8/07. (mjc ) (Entered: 1/8/2007) SEALED REPLY to Response to Motion re [12] SEALED PATENT MOTION filed by Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc.. (Attachments: # (1) Declaration of Jay Shim# (2) Second Declaration of Patrick Muir# (3) Declaration of Allen Gardner# (4) Exhibit A to Gardner Declaration) (Jones, Michael) (Entered: 1/16/2007)

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MOTION for Leave to File Under Seal Plaintiffs' Sur-Reply to Defendants' Motion to Transfer to the District of Delaware Pursuant to the First to File Rule (Unopposed) by ON Semiconductor Corporation, Semiconductor Components Industries, LLC. (Attachments: # (1) Text of Proposed Order)(Adamo, Kenneth) (Entered: 1/19/2007) ORDER granting [18] Motion for Leave to File Under Seal Plaintiffs' Sur-Reply to Defendants' Motion to Transfer . Signed by Judge Leonard Davis on 1/22/07. (mjc ) (Entered: 1/22/2007) SEALED SUR-REPLY in Support of its Opposition to Samsung's Motion to the District of Delaware Pursuant to the First-to-File Rule re [7] MOTION to Change Venue Defendants' Motion to Transfer to the District of Delaware Pursuant to the First-to-File Rule filed by ON Semiconductor Corporation, Semiconductor Components Industries, LLC. (Adamo, Kenneth) (Entered: 1/23/2007) NOTICE of Attorney Appearance by Allen Franklin Gardner on behalf of Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc. (Gardner, Allen) (Entered: 1/29/2007) NOTICE by ON Semiconductor Corporation, Semiconductor Components Industries, LLC re [20] Sealed Reply to Response to Motion, Supplement to Sur-Reply in Support of Opposition to Samsung's Motion to Transfer to the District of Delaware Pursuant to the First-To-File Rule (Attachments: # (1) Exhibit A)(Adamo, Kenneth) (Entered: 2/16/2007) NOTICE by Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc. Defendants' Notice Of Collateral Proceedings (Attachments: # (1) Exhibit 1# (2)Exhibit 2) (Gardner, Allen) (Entered: 2/22/2007) NOTICE by Samsung Austin Semiconductor, LLC, Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc. Second Notice of Collateral Proceedings (Attachments: # (1) Exhibit A)(Jones, Michael) (Entered: 3/15/2007) ANSWER to Complaint with Jury Demand by Samsung Electronics Co., Ltd..(Gardner, Allen) (Entered: 4/20/2007) CORPORATE DISCLOSURE STATEMENT filed by Samsung

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Electronics Co., Ltd. identifying None as Corporate Parent. (Gardner, Allen) (Entered: 4/20/2007) NOTICE by Samsung Electronics Co., Ltd. re [7] MOTION to Change Venue Defendants' Motion to Transfer to the District of Delaware Pursuant to the First-to-File Rule Notice of Joinder in Motion to Transfer (Gardner, Allen) (Entered: 4/20/2007) NOTICE of Hearing: Scheduling Conference set for 6/13/2007 02:00 PM before Judge Leonard Davis in Tyler. Proposed Discovery Order is Appendix A; Proposed Docket Control Order is Appendix B.(mjc ) (Entered: 5/3/2007) NOTICE of Hearing on Motion [7] MOTION to Change Venue Defendants' Motion to Transfer to the District of Delaware Pursuant to the First-to-File Rule: Motion Hearing set for 6/13/2007 02:00 PM before Judge Leonard Davis. (rlf, ) (Entered: 5/3/2007) APPLICATION to Appear Pro Hac Vice by Attorney John M Desmarais for Samsung Austin Semiconductor, LLC and Samsung Electronics Co., Ltd. Fee pd., 6-1-10036. Approved 6/12/07. (mjc ) (Entered: 6/12/2007) APPLICATION to Appear Pro Hac Vice by Attorney James E Marina for Samsung Austin Semiconductor, LLC and Samsung Electronics Co., Ltd. Fee pd., 6-1-10036. Approved 6/12/07. (mjc ) (Entered: 6/12/2007) STATUS REPORT Regarding Proposed Docket Control Order by ON Semiconductor Corporation, Semiconductor Components Industries, LLC. (Attachments: # (1) Exhibit A - Proposed Docket Control Order) (Smith, Michael) (Entered: 6/12/2007) Minute Entry for proceedings held before Judge Leonard Davis : Motion Hearing held on 6/13/2007 re [7] MOTION to Change Venue Defendants' Motion to Transfer to the District of Delaware Pursuant to the First-to-File Rule filed by Samsung Electronics America, Inc., Samsung Telecommunications America General, LLC, Samsung Semiconductor, Inc., Samsung Austin Semiconductor, LLC. NOTE: Scheduling Conference not held after Court's ruling to Transfer Case. (Court Reporter Shea Sloan.) (rlf, ) (Entered: 6/13/2007) MEMORANDUM OPINION AND ORDER granting [12] Sealed Patent Motion to transfer pursuant to the first-to-file rule. This case shall be TRANSFERRED to the district judge and magistrate judge

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assigned to Samsung Electronics Co Ltd v. ON Semiconductor Corporation in the District of Delaware. Signed by Judge Leonard Davis on 06/21/07. cc:attys 6-22-07 (mll, ) (Entered: 6/22/2007) Per Local Rule CV-83(b), this case will be transferred to the US District Court of Delaware on or after 7-12-07. (mll, ) (Entered: 6/22/2007) TRANSCRIPT of Proceedings held on 6/13/07 before Judge Leonard Davis. Court Reporter: Shea Sloan. Motion Hearing held. See [33] (19 pages)[email protected](sms, ) (Entered: 7/8/2007)

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UNITED STATES DISTRICT COURT
EASTERN

District of

TEXAS

ON SEMICONDUCTOR CORPORATION and SEMICONDUCTOR COMPONENTS INDUSTRIES, L.L.C.

SUMMONS IN A CIVIL ACTION

V.
SAMSUNG ELECTRONICS CO., LTD., et al.

CASE NUMBER: 6:06cv523

TO: (Name and address of Defendant)
SAMSUNG AUSTIN SEMICONDUCTOR, L.L.C. 12100 Samsung Blvd. Austin, Texas 78754 Registered Agent: CT Corp Systems 1021 Main St # 1150 Houston, TX 77002

YOU ARE HEREBY SUMMONED and required to serve on PLAINTIFF'S ATTORNEY (name and address)
Kenneth R. Adamo, Esq. Hilda C. Galvan, Esq. JONES DAY 2727 North Harwood St. Dallas, Texas 75201

20 an answer to the complaint which is served on you with this summons, within days after service of this summons on you, exclusive of the day of service. If you fail to do so, judgment by default will be taken against you for the relief demanded in the complaint. Any answer that you serve on the parties to this action must be filed with the Clerk of this Court within a reasonable period of time after service.

12/4/06
CLERK DATE

(By) DEPUTY CLERK

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RETURN OF SERVICE
Service of the Summons and complaint was made by me(1)
NAME OF SERVER (PRINT) DATE TITLE

Check one box below to indicate appropriate method of service

G Served personally upon the defendant. Place where served:

G Left copies thereof at the defendant's dwelling house or usual place of abode with a person of suitable age and
discretion then residing therein. Name of person with whom the summons and complaint were left:

G Returned unexecuted:

G Other (specify):

STATEMENT OF SERVICE FEES
TRAVEL SERVICES TOTAL

$0.00

DECLARATION OF SERVER
I declare under penalty of perjury under the laws of the United States of America that the foregoing information contained in the Return of Service and Statement of Service Fees is true and correct.
Executed on
Date Signature of Server

Address of Server

(1) As to who may serve a summons see Rule 4 of the Federal Rules of Civil Procedure.

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION ON SEMICONDUCTOR CORPORATION, and SEMICONDUCTOR COMPONENTS INDUSTRIES, L.L.C. Plaintiffs, v. CORPORATE DISCLOSURE STATEMENT OF PLAINTIFF SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA GENERAL, L.L.C., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.L.C., Defendants. SEMICONDUCTOR COMPONENTS INDUSTRIES, L.L.C.'S CORPORATE DISCLOSURE STATEMENT Pursuant to Federal Rule of Civil Procedure 7.1, Plaintiff Semiconductor Components Industries, L.L.C. states that it is a wholly owned subsidiary of ON Semiconductor Corp., and that ON Semiconductor Corp. is a publicly traded company. Date: December 6, 2006 Respectfully submitted, ___/s/ Hilda C. Galvan__________________ Kenneth R. Adamo State Bar No. 00846960 [email protected] Hilda C. Galvan State Bar No. 00787512 [email protected] JONES DAY 2727 North Harwood Street Dallas, Texas 75201-1515 Telephone: (214) 220-3939 Facsimile: (214) 969-5100 Tharan Gregory Lanier [email protected]

Civil Action No. 6:06cv523

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CA Bar No. 138784 JONES DAY 2882 Sand Hill Road, Suite 240 Menlo Park, CA 94025 Telephone: (650) 739-3939 Facsimile: (650) 739-3900 Carl R. Roth State Bar No. 17312000 [email protected] Michael C. Smith [email protected] 115 N Wellington Suite 200 P O Box 876 Marshall, Texas 75670 Telephone: (903) 935-1665 Facsimile: (903) 935-1797 ATTORNEYS FOR ON SEMICONDUCTOR CORPORATION AND SEMICONDUCTOR COMPONENTS INDUSTRIES, L.L.C. Of Counsel: Behrooz Shariati JONES DAY 2882 Sand Hill Road, Suite 240 Menlo Park, CA 94025

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CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on December 6, 2006. Any other counsel of record will be served by facsimile transmission and/or first class mail. ___/s/ Hilda C. Galvan__________________

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION ON SEMICONDUCTOR CORPORATION, and SEMICONDUCTOR COMPONENTS INDUSTRIES, L.L.C. Plaintiffs, v. CORPORATE DISCLOSURE STATEMENT OF PLAINTIFF ON SEMICONDUCTOR CORPORATION SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA GENERAL, L.L.C., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.L.C., Defendants. ON SEMICONDUCTOR CORPORATION'S CORPORATE DISCLOSURE STATEMENT Pursuant to Federal Rule of Civil Procedure 7.1, Plaintiff ON Semiconductor Corporation states that it does not have any parent corporation(s), and that no publicly-held company owns 10 percent or more of its stock. Date: December 6, 2006 Respectfully submitted, _________/s/ Hilda C. Galvan_____________ Kenneth R. Adamo State Bar No. 00846960 [email protected] Hilda C. Galvan State Bar No. 00787512 [email protected] JONES DAY 2727 North Harwood Street Dallas, Texas 75201-1515 Telephone: (214) 220-3939 Facsimile: (214) 969-5100 Tharan Gregory Lanier [email protected] CA Bar No. 138784

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JONES DAY 2882 Sand Hill Road, Suite 240 Menlo Park, CA 94025 Telephone: (650) 739-3939 Facsimile: (650) 739-3900 Carl R. Roth State Bar No. 17312000 [email protected] Michael C. Smith [email protected] 115 N Wellington Suite 200 P O Box 876 Marshall, Texas 75670 Telephone: (903) 935-1665 Facsimile: (903) 935-1797 ATTORNEYS FOR ON SEMICONDUCTOR CORPORATION AND SEMICONDUCTOR COMPONENTS INDUSTRIES, L.L.C. Of Counsel: Behrooz Shariati JONES DAY 2882 Sand Hill Road, Suite 240 Menlo Park, CA 94025

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CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on December 6, 2006. Any other counsel of record will be served by facsimile transmission and/or first class mail. ___/s/ Hilda C. Galvan__________________

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION

ON SEMICONDUCTOR CORP. and SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,

Plaintiffs, v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA GENERAL, L.L.C., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR L.L.C., Defendants.

: : : : : : : : : : : : : : : : : : : : : :

Civil Action No. 6:06-cv-523 (LED) JURY TRIAL DEMANDED

DEFENDANTS' MOTION TO TRANSFER TO THE DISTRICT OF DELAWARE PURSUANT TO THE FIRST-TO-FILE RULE (PARTIALLY REDACTED) Michael E. Jones Allen F. Gardner POTTER MINTON 110 North College 500 Plaza Tower Tyler, Texas 75702 (903) 597-8311 Attorneys for Samsung Electronics America, Inc., Samsung Telecommunications America General, L.L.C., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor L.L.C.

OF COUNSEL: John M. Desmarais James E. Marina KIRKLAND & ELLIS LLP 153 East 53rd Street New York, New York 10022-4675 (212) 446-4800 Dated: December 26, 2006

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TABLE OF CONTENTS Page PROCEDURAL HISTORY.............................................................................................................1 STATEMENT OF FACTS ..............................................................................................................2 ARGUMENT...................................................................................................................................2 I. II. LEGAL STANDARDS. ......................................................................................................2 THERE IS A SUBSTANTIAL OVERLAP OF ISSUES BETWEEN THE TEXAS ACTION AND THE DELAWARE ACTION, AND THE FIRST-TOFILE RULE THEREFORE APPLIES.................................................................................4 THE DELAWARE ACTION WAS NOT FILED IN ANTICIPATION OF THE TEXAS ACTION.................................................................................................................5 THE INTERESTS OF EXPEDIANCY AND JUSTICE DO NOT WEIGH AGAINST TRANSFER TO THE DISTRICT OF DELAWARE.......................................7

III.

IV.

CONCLUSION..............................................................................................................................11

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TABLE OF AUTHORITIES Page(s) Cases ADE Corp. v. KLA-Tencor Corp., 138 F. Supp. 2d 565 (D. Del. 2001).................................................................................. 10 AdvanceMe, Inc. v. Rapidpay LLC, 450 F. Supp. 2d 669 (E.D. Tex. 2006).............................................................................. 10 Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192 (D. Del. 1998)...................................................................................... 8 AmberWave Systems Corp. v. Intel Corp., No. 2:05-CV-321, 2005 WL 2861476 (E.D. Tex. Nov. 1, 2005) ....................................... 4 Arrowhead Industrial Water, Inc. v. Ecolochem, Inc., 846 F.2d 731 (Fed. Cir. 1988)............................................................................................. 6 Cadle Co. v. Whataburger of Alice, Inc., 174 F.3d 599 (5th Cir. 1999) .............................................................................................. 2 Chase Manhattan Bank, U.S.A., N.A. v. Freedom Card, Inc., 265 F. Supp. 2d 445 (D. Del. 2003).................................................................................... 8 Continental Airlines, Inc. v. American Airlines, Inc., 805 F. Supp. 1392 (S.D. Tex. 1992) ................................................................................. 10 Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 821 F. Supp. 962 (D. Del. 1993)....................................................................................... 10 Dorman Products, Inc. v. Pontiac Coil, Inc., No. 06-3157, 2006 WL 2927307 (E.D. Pa. 2006) .............................................................. 7 Electronics for Imaging, Inc. v. Coyle, 394 F.3d 1341 (Fed. Cir. 2005)........................................................................................... 5 Fina Research S.A. v. Baroid, Ltd., 141 F.3d 1479 (Fed. Cir. 1998)........................................................................................... 6 Genentech Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed Cir. 1993).............................................................................................. 3 Goodyear Tire & Rubber Co. v. Releasomers, Inc., 824 F.2d 953 (Fed. Cir. 1987)............................................................................................. 5 Intel Corp. v. AmberWave Systems Corp., 233 F.R.D. 416 (D. Del. 2005) ........................................................................................... 4

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J. Lyons & Co. Ltd. v. Republic of Tea, Inc., 892 F. Supp. 486 (S.D.N.Y. 1995)...................................................................................... 6 Jelec USA, Inc. v. Safety Controls, Inc., No. H-06-2379, 2006 WL 3358896 (S.D. Tex. Nov. 17, 2006) ......................................... 9 Mann Mfg., Inc. v. Hortex, Inc., 439 F.2d 403 (5th Cir. 1971) .............................................................................................. 3 Matsushita Battery Industrial Co., Ltd. v. Energy Conversion Devices, Inc., No. 96-101, 1996 WL 328594 (D. Del. Apr. 23, 1996)...................................................... 8 Motorola, Inc. v. PC-Tel, Inc., 58 F. Supp. 2d 349 (D. Del. 1999)...................................................................................... 8 National Instruments Corp. v. Softwire Technology, LLC, No. 2:03-CV-047, 2003 U.S. Dist. LEXIS 26952 (E.D. Tex. May 9, 2003)...................... 5 Overson v. Berryman Products, No. 2:06CV114, 2006 WL 3345264 (E.D. Tex. Nov. 6, 2006).......................................... 9 Save Power Ltd., v. Syntek Finance Corp., 121 F.3d 947 (5th Cir. 1997) .............................................................................................. 3 Singleton v. Volkswagen of America, Inc., No. 2-06-CV-222, 2006 WL 2634768 (E.D. Tex. Sept. 12, 2006)..................................... 8 Sutter Corp. v. P & P Indus., Inc., 125 F.3d 914 (5th Cir. 1997) .......................................................................................... 2, 3 Wesley-Jessen Corp. v. Pilkington Visioncare, Inc., 157 F.R.D. 215 (D. Del. 1993) ........................................................................................... 7 Statutes 28 U.S.C. § 2201............................................................................................................................. 8

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Defendants Samsung Electronics America, Inc., Samsung Telecommunications America General L.L.C., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor L.L.C.1 respectfully move this Court, pursuant to the first-to-file rule, for an order transferring this action to the United States District Court for the District of Delaware. This patent infringement action filed on December 4, 2006 addresses the same issues of patent infringement and invalidity already at issue in an action filed on November 30, 2006 by co-defendant Samsung Electronics Co., Ltd. in the United States District Court for the District of Delaware. Because there is a substantial overlap of issues between this action and the earlier-filed Delaware action -- all four patents asserted by Plaintiffs in this action are at issue in the Delaware action, and the parties to both actions are the same -- this Court should transfer this action to Delaware pursuant to the first-to-file rule for a determination of which action should proceed. PROCEDURAL HISTORY On November 30, 2006, Defendant Samsung Electronics Co., Ltd. ("SEC") filed a complaint in the United States District Court for the District of Delaware, Civil Action No. 06CV-0720 (the "Delaware Action"), seeking a declaration that three United States patents purportedly owned by Plaintiffs -- U.S. Patent Nos. 5,563,594 (the "`594 Patent"), 6,362,644 (the "`644 Patent"), and 5,361,001 (the "`001 Patent") -- are invalid and not infringed by Samsung. (Jones Dec. Ex. 1.) Four days later, on December 4, 2006, Plaintiffs filed this patent infringement action against SEC (the "Texas Action"), alleging infringement of the same three patents at issue in the Delaware Action and a fourth patent, U.S. Patent No. 5,000,827 (the "`827 Patent"). Plaintiffs also named four SEC affiliates as co-defendants in the Texas Action -- Samsung Electronics

1

Co-defendant Samsung Electronics Co., Ltd. has not been served with the Complaint. If and when it is served, Samsung Electronics Co., Ltd. will join in this motion.

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America, Inc. ("SEA"), Samsung Telecommunications America General, L.L.C. ("STA"), Samsung Semiconductor, Inc. ("SSI"), and Samsung Austin Semiconductor L.L.C. ("SAS"). On December 21, 2006, Defendants filed an amended complaint in the Delaware Action adding SEA, STA, SSI, and SAS as co-plaintiffs with SEC, adding a claim for declaratory judgment of noninfringement and invalidity of the `827 patent, and adding a claim against Plaintiffs for infringement of an SEC patent -- U.S. Patent No. 5,252,177. (Jones Dec. Ex. 2.) That same day, Defendants also filed a motion to enjoin Plaintiffs from pursuing the Texas Action pursuant to the first-filed rule. That motion is pending before the Delaware court. (Jones Dec. Ex. 3.) Because the Delaware Action is the first-filed action, and because the Texas Action is duplicative of the Delaware Action, Defendants move this Court under the first-to-file rule for an order transferring the Texas Action to Delaware. STATEMENT OF FACTS [REDACTED]2 ARGUMENT I. Legal Standards. Under the "first-to-file" rule, the court in which an action is first filed is the appropriate court to determine whether subsequently filed cases involving substantially similar issues should proceed. See, e.g., Cadle Co. v. Whataburger of Alice, Inc., 174 F.3d 599, 606 (5th Cir. 1999);

2

In connection with Defendants' motion to enjoin filed in Delaware, Plaintiffs contended that the parties' licensing discussions were confidential and requested that the motion be filed under seal. Defendants did so, with a full reservation of rights to challenge Plaintiffs' confidentiality assertion. Because the parties' licensing discussions are addressed in this motion as well, Defendants have filed a redacted version of this motion along with a motion for leave to file an amended version under seal, again with a full reservation of rights to challenge Plaintiffs' confidentiality assertion.

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Sutter Corp. v. P & P Indus., Inc., 125 F.3d 914, 920 (5th Cir. 1997); Save Power Ltd., v. Syntek Finance Corp., 121 F.3d 947, 950 (5th Cir. 1997); see also Genentech Inc. v. Eli Lilly & Co., 998 F.2d 931, 938 (Fed Cir. 1993). Courts use the first-to-file rule "to maximize judicial economy and minimize embarrassing inconsistencies by prophylactically refusing to hear a case raising issues that might substantially duplicate those raised by a case pending in another court." Cadle, 174 F.3d at 604 (emphasis in original). Furthermore, the first-to-file rule "not only determines which court may decide the merits of substantially similar issues, but also establishes which court may decide whether the second suit filed must be dismissed, stayed, or transferred and consolidated." Cadle, 174 F.3d at 606 (quoting Sutter Corp., 125 F.3d at 920). The only inquiry in the court in which the second suit is filed is whether or not there might be a substantial overlap of issues between the first and second suits. See Cadle, 174 F.3d at 606. If there might be a substantial overlap of issues between the first and second suits, the proper course of action for the court in which the second suit was filed is to transfer the case to the court in which the first suit was filed "to determine which case should, in the interests of sound judicial administration and judicial economy, proceed." Id. The determination of whether there is an actual substantial overlap between the two actions is thus reserved for the first-filed court. See, e.g., Mann Mfg., Inc. v. Hortex, Inc., 439 F.2d 403, 408 (5th Cir. 1971) ("By virtue of its prior jurisdiction over the common subject matter and its injunction of suit involving that subject matter in Texas, the ultimate determination of whether there actually was a substantial overlap requiring consolidation of the two suits in New York belonged to the United States District Court in New York."). As set forth below, the first-to-file rule requires that this action be transferred to the United States District Court for the District of Delaware.

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II.

There Is A Substantial Overlap Of Issues Between The Texas Action And The Delaware Action, And The First-To-File Rule Therefore Applies. It is indisputable that there is a substantial overlap of issues between the Texas Action

and the first-filed Delaware Action. First, the same three patents that were the subject of SEC's original complaint in the Delaware Action -- the `594 patent, the `644 patent, and the `001 patent -- are all asserted in the Texas Action by Plaintiffs. (Jones Dec. Ex. 1.) Thus, the identical issues of infringement and validity raised in the Texas Action with respect to the `594, `644, and `001 patents are already at issue in the Delaware Action. Additionally, Defendants have filed an amended complaint adding to the Delaware Action the fourth patent asserted by Plaintiffs in the Texas Action -- the `827 patent. Thus, the `827 patent -- which, given the fact that it was not disclosed to SEC during the yearlong licensing discussions, appears to have been added by Plaintiffs to manufacture an argument that the two cases are not identical -- is also at issue in the Delaware Action. Further, because all four of Plaintiffs' patents relate to design and manufacture of semiconductor products, and therefore involve closely related subject matter, the Delaware Action is deemed to be the first-filed action with respect to the `827 patent as well. See AmberWave Systems Corp. v. Intel Corp., No. 2:05-CV-321, 2005 WL 2861476 (E.D. Tex. Nov. 1, 2005), and Intel Corp. v. AmberWave Systems Corp., 233 F.R.D. 416, 418 (D. Del. 2005). Just like in Intel, presentation of the parties' respective infringement and noninfringement positions for all four patents "will require a judge, on the summary judgment motions that are sure to be filed, and a jury, at any trial of the case, to become familiar with the same field of art, the same fundamental science and technology associated with methods of semiconductor fabrication, the same allegedly infringing devices, and, in any damages analysis, the same pricing, sales, and related market data." Intel, 233 F.R.D. at 418.

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Third, with the filing of the amended complaint in the Delaware Action adding SEA, STA, SSI, and SAS as co-plaintiffs, the parties to the Delaware and Texas Actions are identical. Even as originally filed, however, both actions had Samsung's interests on one side and Plaintiffs' interests on the other. In any event, it is well-settled that the first-to-file rule does not require identity of parties. See, e.g., National Instruments Corp. v. Softwire Technology, LLC, No. 2:03-CV-047, 2003 U.S. Dist. LEXIS 26952 (E.D. Tex. May 9, 2003). In view of the foregoing, there is a substantial overlap of issues between the Texas Action and the Delaware Action. Unless Plaintiffs can demonstrate some exception to the first-to-file rule -- which they cannot -- this case should be transferred to Delaware. III. The Delaware Action Was Not Filed In Anticipation Of The Texas Action. Although some courts may recognize an exception to the first-to-file rule where the first action was filed in anticipation of the second action in a "race to the courthouse," as the Court in National Instruments observed, that issue is more properly addressed by the first-filed court rather than the second-filed court. National Instruments, 2003 U.S. Dist. LEXIS 26952 at *3. Nonetheless, the Delaware Action was not filed in anticipation of the Texas Action. The purpose of declaratory judgment actions in patent cases is "to provide the allegedly infringing party relief from uncertainty and delay regarding its legal rights." Goodyear Tire & Rubber Co. v. Releasomers, Inc., 824 F.2d 953, 956 (Fed. Cir. 1987); Electronics for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1346 (Fed. Cir. 2005). In view of Plaintiffs' pre-suit threats, SEC had more than adequate grounds to file the Delaware Action, and to file in Delaware. The Declaratory Judgment Act requires the existence of an actual controversy before a federal court may exercise jurisdiction in a declaratory judgment action. 28 U.S.C. § 2201. In a patent case, an actual case or controversy exists when there is: (1) an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory 5
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judgment plaintiff that it will face an infringement suit; and (2) present activity which could constitute infringement or concrete steps taken with the intent to conduct such activity. See, e.g, Fina Research S.A. v. Baroid, Ltd., 141 F.3d 1479, 1481 (Fed. Cir. 1998). Furthermore, "[w]hen the [patentee's] conduct . . . falls short of an express charge, one must consider the `totality of the circumstances' in determining whether that conduct meets the first prong of the test." Arrowhead Industrial Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 736 (Fed. Cir. 1988). Both prongs of this test are met in this case. [REDACTED] In view of the foregoing, Plaintiffs cannot credibly argue that SEC filed the Delaware Action in anticipation of the Texas Action. Plaintiffs never indicated that they planned to file suit against SEC within a specific or definite timeframe, or that they were considering bringing suit in the Eastern District of Texas. (Muir Dec. ¶ 16.) Because both Plaintiffs are Delaware companies, filing a declaratory judgment action in Delaware was a perfectly sound choice by SEC. Further, Delaware does not offer Defendants any special advantage or convenience over other forums. Patent law is uniform throughout the United States, and Delaware therefore does not offer Defendants law that is more favorable than other jurisdictions. Nor does Delaware offer Defendants any particular convenience with respect to location of witnesses or documents, as neither Plaintiffs nor Defendants are located in Delaware. This case does not have any of the hallmarks one would expect to see in a case of anticipatory filing. For example, Plaintiffs never indicated to SEC that they were about to file an infringement action, such as by sending a letter stating Plaintiffs' "intention to file suit, a filing date, and/or a specific forum for the filing of the suit," J. Lyons & Co. Ltd. v. Republic of Tea, Inc., 892 F. Supp. 486, 491 (S.D.N.Y. 1995), or by providing SEC with a draft infringement

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complaint. See Dorman Products, Inc. v. Pontiac Coil, Inc., No. 06-3157, 2006 WL 2927307 (E.D. Pa. 2006) . Nor did SEC's filing of the Delaware Action secure a venue that differed from the venue that one would have expected Plaintiffs to choose. The District of Arizona, not Eastern District of Texas, is Plaintiffs' home forum, and SEC is headquartered in Seoul, Korea. Plaintiffs would therefore not have been expected to choose the Eastern District of Texas as a forum. In view of the foregoing, SEC's filing of the Delaware Action was proper and not anticipatory. As such, the first-to-file rule applies, and this case should be transferred to the District of Delaware. IV. The Interests Of Expediancy And Justice Do Not Weigh Against Transfer To The District of Delaware. Nor do the interests of expediency and justice warrant a departure from the first-to-file rule. As this Court observed in AmberWave, if this Court were to retain this action there would be "simultaneous actions between the same parties over related technologies and involving the same accused products." AmberWave, 2005 WL 2861476 at *2. Moreover, the Eastern District of Texas does not offer any more convenience for the parties and witnesses than the District of Delaware. Plaintiffs are Delaware companies with headquarters in Phoenix and offices across the United States and abroad (Jones Dec. Ex. 4), and none of the Defendants are headquartered in the Eastern District of Texas.3 And because Plaintiffs are both Delaware companies, they should not be heard to complain that they would be inconvenienced by litigating this case in Delaware. See, e.g., Wesley-Jessen Corp. v. Pilkington Visioncare, Inc., 157 F.R.D. 215, 218 (D. Del. 1993) ("Absent some showing of a unique or unexpected burden, [Delaware] corporations

3

SEC has its principal place of business in Seoul, Korea. SEA has its principal place of business in Ridgefield Park, New Jersey. STA has its principal place of business in Richardson, Texas, which is in the Northern District of Texas. SSI has its principal place of business in San Jose California. SAS has its principal place of business in Austin, Texas, which is in the Western District of Texas. 7
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should not be successful in arguing that litigation in their state of incorporation is inconvenient."). Further, when the typical private and public interest factors in a convenience analysis are considered, it is clear that the Eastern District of Texas is no more convenient than the District of Delaware. See, e.g, Singleton v. Volkswagen of America, Inc., No. 2-06-CV-222, 2006 WL 2634768, *1 (E.D. Tex. Sept. 12, 2006) (setting forth private and public interest factors that are considered in a convenience analysis). First, SEC's choice of Delaware as a forum is rational and appropriate given that both Plaintiffs are Delaware companies, and that Delaware has an interest in cases that involve companies that have availed themselves of the protection of Delaware's laws. See Chase Manhattan Bank, U.S.A., N.A. v. Freedom Card, Inc., 265 F. Supp. 2d 445 (D. Del. 2003), quoting Motorola, Inc. v. PC-Tel, Inc., 58 F. Supp. 2d 349, 356 (D. Del. 1999) ("this forum's interest extends to these corporate citizens that have sought the protection of Delaware's laws."). Second, the Eastern District of Texas is no more convenient to Plaintiffs -- who are headquartered in Phoenix -- than the District of Delaware. Plaintiffs are sophisticated companies with operations throughout the United States and abroad. In 2005, Plaintiffs had over $1.2 billion in revenue. (Jones Dec. Ex. 4.) "[F]or a company engaged in business throughout the United States, the claim that litigation away from the most convenient forum is burdensome is somewhat suspect." Matsushita Battery Industrial Co., Ltd. v. Energy Conversion Devices, Inc., No. 96-101, 1996 WL 328594 (D. Del. Apr. 23, 1996) ; see also Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 202 (D. Del. 1998) (litigating in Delaware "should not impose an undue financial burden" on the parties because they were "multi-million dollar corporations with

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interests and activities spanning the globe"). And in this case, unlike in Matsushita, the Eastern District of Texas is not even the most convenient forum for Plaintiffs. Third, the convenience of witnesses does not render the Eastern District of Texas more convenient than the District of Delaware. As an initial matter, it is well-settled that the convenience of party witnesses is accorded less weight in a convenience analysis than non-party witnesses, because each party is able and obligated to procure the attendance of its own witnesses for trial. See, e.g., Overson v. Berryman Products, No. 2:06CV114, 2006 WL 3345264, *2 (E.D. Tex. Nov. 6, 2006); see also Jelec USA, Inc. v. Safety Controls, Inc., No. H06-2379, 2006 WL 3358896, *5 (S.D. Tex. Nov. 17, 2006) ("The convenience of parties and employees of corporate parties, however, is entitled to less weight because that party will be able to compel their testimony at trial."). In this case there is no reason to believe that there will be a significant number of non-party witnesses, and there is certainly no reason to believe that there will be a significant number of non-party witnesses located in the Eastern District of Texas. Witness convenience, therefore, does not favor the Eastern District of Texas over the District of Delaware. Plaintiffs are headquartered in Phoenix and operate nationally and internationally. Defendants are a Korea-based family of companies with headquarters in Korea. The products that are accused of infringement, DRAMs, were designed and developed in Korea. (Muir Dec. ¶ 19.) Thus, most of the witnesses who have knowledge of the accused products are located in Korea, as are the relevant technical documents. Id. Additionally, the infringement alleged by Plaintiffs is not focused on any one single jurisdiction, but is alleged to occur throughout the United States. (See Complaint.) Discovery in this case will thus take place in Korea and throughout the United States, and the overall burden and cost of litigating this case will be the same whether trial takes place in Delaware or Texas.

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Fourth, the location of documents and other sources of proof does not favor the Eastern District of Texas over the District of Delaware. The two most common practices for producing documents in patents cases -- like in other complex cases -- is either to produce them electronically, or to copy and mail them to opposing counsel. Thus, the ultimate location of trial will have no impact on document production or access to other sources of proof. See ,e.g., AdvanceMe, Inc. v. Rapidpay LLC, 450 F. Supp. 2d 669, 675 (E.D. Tex. 2006) ("Typically, documents and other records are easily transportable in paper or electronic form."); Continental Airlines, Inc. v. American Airlines, Inc., 805 F. Supp. 1392, 1401 (S.D. Tex. 1992) ("the relevant documents could be produced and examined anywhere."); see also ADE Corp. v. KLATencor Corp., 138 F. Supp. 2d 565, 571 (D. Del. 2001); ("With new technologies for storing and transmitting information, the burden of gathering and transmitting documents 3,000 miles is probably not significantly more than it is to transport them 30 miles"); Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 821 F. Supp. 962, 966-67 (D. Del. 1993) ("The location of documents, in the context of access to proof, in a document-intensive case such as this can be misleading . . . Regardless of where trial is held, the documents will be copied and mailed to the offices of counsel and subsequently transported to trial."). Either way, the ultimate location of trial has no impact on document production. Fifth, none of the public interests factors typically considered in a convenience analysis -- the administrative difficulties caused by court congestion, the local interest in adjudicating local disputes, the unfairness of burdening citizens in an unrelated forum with jury duty, and the avoidance of unnecessary problems in conflict of laws -- favor the Eastern District of Texas over the District of Delaware. To the contrary, given that none of the parties have as their home forum the Eastern District of Texas, that infringement is alleged to occur throughout the United

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States, that Plaintiffs are both Delaware companies, and that two of the Defendants are Delaware companies and none are Texas companies,4 the public interest favors the District of Delaware over the Eastern District of Texas. In view of the foregoing, the interests of expediency and justice do not warrant departure from the first-to-file rule. CONCLUSION For the foregoing reasons, pursuant to the first-to-file rule, Defendants respectfully request that the Court grant their motion and transfer this action to the United States District Court for the District of Delaware. Respectfully submitted, Dated: December 26, 2006 /s/ Michael E. Jones Michael E. Jones State Bar No. 10929400 [email protected] Allen F. Gardner State Bar No. 24043679 [email protected] POTTER MINTON A Professional Corporation 110 North College 500 Plaza Tower Tyler, Texas X 75702 (903) 597-8311 (903) 593-0846 (Facsimile) Attorneys for Samsung Electronics America, Inc., Samsung Telecommunications America General, L.L.C., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor L.L.C.

SEC is a corporation organized under the laws of the Republic of Korea. SEA is a New York corporation. STA is a Delaware limited liability company. SSI is a California corporation. SAS is a Delaware limited liability company.

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OF COUNSEL: John M. Desmarais James E. Marina KIRKLAND & ELLIS LLP 153 East 53rd Street New York, New York 10022-4675 (212) 446-4800 CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on December 26, 2006. Any other counsel of record will be served by first class on this same date. /s/ Michael E. Jones

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION

ON SEMICONDUCTOR CORP. and SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,

Plaintiffs, v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA GENERAL, L.L.C., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR L.L.C., Defendants.

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Civil Action No. 6:06 cv 523

DECLARATION OF PATRICK MUIR IN SUPPORT OF DEFENDANTS' MOTION TO TRANSFER

I, PATRICK MUIR, declare that the following is true and correct: 1. I am a licensed attorney and the principal of Muir Patent Consulting located in

Great Falls, Virginia. I am outside counsel to Samsung Electronics Co. Ltd. Prior to starting Muir Patent Consulting, I was employed as in-house patent counsel at Samsung, and therefore have familiarity with Samsung's semiconductor engineering operations. I submit this Declaration in support of the motion to transfer this action to Delaware.

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2.

I have been a member of the team that has represented Samsung in its licensing

discussions with Plaintiffs. I therefore have firsthand knowledge of those discussions. [PARAGRAPHS 3-18 AND EXHIBITS A-G REDACTED] 19. The Samsung DRAM products that are accused of infringement in this case were

designed and developed in Korea. Most of the Samsung witnesses who have knowledge of the relevant technical aspects of the accused products are therefore located in Korea, as are most of the relevant technical documents relating to the accused products. I declare under penalty of perjury that the foregoing is true and correct.

Dated: December 26, 2006

/s/ Patrick Muir

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION

ON SEMICONDUCTOR CORP. and SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,

Plaintiffs, v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA GENERAL, L.L.C., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR L.L.C., Defendants.

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Civil Action No. 6:06-cv-523 (LED) JURY TRIAL DEMANDED

DECLARATION OF MICHAEL JONES IN SUPPORT OF DEFENDANTS' MOTION TO TRANSFER

I, MICHAEL JONES, declare that the following is true and correct: 1. I am a shareholder in the law firm of Potter Minton and represent Defendants

Samsung Electronics America, Inc., Samsung Telecommunications America General L.L.C., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor L.L.C. in this action. I submit this Declaration in support of the motion to transfer this action to Delaware.

{A48\6808\0004\W0317196.1 }

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2.

Attached hereto as Exhibit 1 is a copy of the Complaint (without exhibits) filed in

Civil Action No. 06-CV-0720 (D. Del.) on November 30, 2006. 3. Attached hereto as Exhibit 2 is a copy of the Amended Complaint (without

exhibits) filed in Civil Action No. 06-CV-0720 (D. Del.) on December 21, 2006. 4. Attached hereto as Exhibit 3 is a copy of the Motion to Enjoin and supporting

brief (without exhibits) filed in Civil Action No. 06-CV-0720 (D. Del.) on December 21, 2006. 5. Attached hereto as Exhibit 4 are excerpts from Plaintiffs' 2005 10-K and website,

www.onsemi.com. 6. Attached hereto as Exhibit 5 are copies of the unpublished cases cited in

Defendants' motion to transfer arranged in alphabetical order. I declare under penalty of perjury that the foregoing is true and correct.

Dated: December 26, 2006

/s/ Michael E. Jones Michael E. Jones

{A48\6808\0004\W0317196.1 }2

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Exhibit 1

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Exhibit 2

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REDACTED

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Page 1

Not Reported in F.Supp.2d Not Reported in F.Supp.2d, 2005 WL 2861476 (E.D.Tex.) (Cite as: Not Reported in F.Supp.2d)

Briefs and Other Related Documents AmberWave Systems Corp. v. Intel Corp.E.D.Tex.,2005.Only the Westlaw citation is currently available. United States District Court,E.D. Texas, Marshall Division. AMBERWAVE SYSTEMS CORPORATION Plaintiff v. INTEL CORPORATION Defendant No. 2:05-CV-321. Nov. 1, 2005. Sidney Calvin Capshaw, III, Brown McCarroll, Thomas John Ward, Jr., Law Office of T. John Ward Jr. PC, Longview, TX, Amir A. Naini, Christopher A. Vanderlaan, David I. Gindler, Jason G. Sheasby, Morgan Chu, Irell & Manella LLP, Los Angeles, CA, Franklin Jones, Jr., Jones & Jones, Marshall, TX, Otis W. Carroll, Jr., Ireland Carroll & Kelley, PC, Tyler, TX, for Plaintiff. George M. Newcombe, Harrison J. Frahn, IV, Jeffrey E. Ostrow, Patrick E. King, Simpson Thacher & Bartlett LLP, Palo Alto, CA, Harry Lee Gillam, Jr., Gillam & Smith, L.L.P., Marshall, TX, Henry B. Gutman, Jeremy S. Pitcock, Simpson Thacher & Bartlett, New York, NY, John Frederick Bufe, Michael Edwin Jones, Potter Minton, Tyler, TX, for Defendant. MEMORANDUM OPINION AND ORDER DAVIS, J. *1 Before the Court is Intel's Motion to Transfer (Docket No. 17). Having considered the parties' written submissions, the Court GRANTS the motion. BACKGROUND AmberWave Systems Corporation brought this suit on July 15, 2005 accusing Intel Corporation of infringing U.S. Patent No. 6,881,632. Two months earlier, on May 17, 2005, Intel brought a declaratory judgment action against AmberWave in Delaware seeking a judgment that Intel does not infringe Am-

berWave's U.S. Patent No. 6,831,292. The '632 patent teaches a method of constructing inverters and other circuits using strained semiconductor transistors. The '292 patent teaches a method minimizing or eliminating the impurities in the semiconductor material while fabricating individual transistors. Thus, the patents are related to different scientific fields in the same area of technology. AmberWave and Intel are the only two entities involved in both litigations, and the same products are accused in both litigations. Intel moves the Court to transfer this case to the Delaware court where the declaratory judgment action is pending. Intel claims the Delaware action is the first-filed action and therefore, under the firstto-file rule, this Court should transfer this action to the Delaware court where the declaratory judgment action is pending. APPLICABLE LAW When overlapping suits are file