ARM et. al. v. MOSAID Technologies

8/6/2019 ARM et. al. v. MOSAID Technologies

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EDWARD V. KING, BARevking@kingandKING & KELLEHER, LLPFour Embarcadero Center, S . 7p% ,San Francisco CA 94 11 I -. L.Telephone: 4 15.78 1.2888Facsimile: 41 5.781.301 1LYKevin P. Anderson (D.C. B 476504), to be admitted pro hac V~~@"=HARDI. [email protected] NORTHERNLERK, U.S ,ISTI3ICTISTRICTF CA L I F O ~ ~ ~ J I AOURTWILEY REIN LLP1776 K Street NWWashington, DC 20006Telephone: 202.7 19.7000Facsimile: 202.7 19.7049

Attorney forARM Ltd. and ARM, Inc.

URTFOR TH NORTHERN DISTRICT OF CALIFORNIA7 SAN JOSE D lVISION ! i JRARM, LTD. AND ARM, IN

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II

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1)laintiffs, 1) ARM LTD. AND AR M, INC.'S) COM PLAINT FOR

v. ) DECLARATORY JUDGMEN T1

efendants.

1 Plaintiffs ARM , Ltd. a~)dARM, Inc. (collectively "ARM") for their Com plaint for1 Declaratory Judgment against efendant MO SAID Technolog ies Inc. ("MOSAID"), herebyP1 demand a jury trial and allege follows:e1 1 NATURE OF THE ACTION

1. This is an actio for declaratory judgment of non-infringement and invalidity ofseven United S tates Paten ts er the Declaratory Judgment Act, 28 U.S.C. $9 2201-02, and thepatent laws of the United U.S.C. 5 1 et seq., and for such other relief as the Court


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several venues in the U nitedACKGROUND OF THE DISPUTE

5. This action arises in connection with a set of seven U nited

deem s just and proper.

2. ARM, Ltd. andcorporation o rganized under

States patents that MOS AID rports either to own or to be the. exclusive licensee thereof, Theseseven patents consist of five for which certain rights were purportedly procured throughLSI Corporation (the "LSI and two patents for which MO SAID is listed on the patentsas the assignee (the (collectively the "Asserted Patents")

States Patent Nos. 5,577,230 (the " 230 Patent");(the " '036 Patent"); 6,141,762 (the " 762 Patent");

THE PARTIESARM , Inc. are subsidiaries of ARM Holdings plc. ARM , Ltd. is a

:he laws of the England and Wales, with its principal place of

6,256,725 (the " 725 Patent").7. The MOSAID are United Sta tes Patent Nos. 7,05 1,306 (the " 306 Patent")and 7,4 15,680 (the " 6808. MOSAID received the rights from LSI C orporation to be the exc lusive

licensee of the LSI time period of 10 years commencing from May 2007from LSI2007I070508.php.

businesses in C ambridge, England.3 . ARM, Inc. is r ,

the laws of California, with its4. Based on

duly organized and existingbusiness at 1 1 Hines Road,business of patent acquisition

subsidiary of ARM Holdings plc and a corporation organized underprincipal place of business in S an Jose, California.

asse~.tions y Defendant MO SAID, Defendant MOSAID is a corporationuhder the laws of O ntario, Canada, having a principal place of

Si.ite 203, Kanata, Ontario K2K 2x 1, Canada. MO SAID is in theand enforcement, and has filed patent law suits in district courts in


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9. LSI corpora te headquarters are at 1621 Barber Lane, M ilpitas, CA95035, which is

[Jnited States Patent Nos. 7,05 1,306 (the " 306 Patent")to the face of the Mosaid Patents, the persons

in Cupertino, CA and San Jose, CA which are

sell larger integrated circuits, hich are comm only referred to as processor "chips." Theprocessor design supplied by is comm only referred to as the ARM "core" or ARM"processor core." These core known by the generation or "family" of the design.For example, the ARM9 the ARM 926EJ-S core. A newer ARM 1 1

both located in this District.patents was "MOSAIDwithin this District.

11. For at least 2threats of infringement based,customers'/licensees' products.

12. ARM is a leadingcomputers and numerous othersize. ARM processor designsover the world.

13. ARM designsI larger integrated circuits and

"family" would include cores as the ARM1 136EJ-S core.14. To help mainta competitive position, ARM invests heavily in research and

development--over $100 the last year alone. One of ARM'S primary U.S. facilities islocated in San Jose, San Jose facility employs over 300 scientists, engineers,and other in addition to numerous sales, marketing and support

According to the face of the Mosaid Patents, the assignee of theseTechnologies Corporation, Sunnyvale CA (US)." Sunnyvale is located

years, M OSAID has been harassing AR M'S customers/licensees withat least in part, upon the inclusion of ARM processor cores in the

designer of processors used in cellular telephones, handheldelectronic products requiring low power consumption and small

are incorporated into the integrated circuits of products so ld all

processors that can be em bedded into and form a component oflicenses these processor designs to other companies that make and

ARM, LTD. AN D ARM, INC.'S COMP AlNT FOR DECLARATO RY JUDGMENT! - 3 -


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15. Because AR 's business depends upon the utilization of its processor cores by itsMcustomers which license its cores, ARM is sensitive to accusation s of patentinfringement. ARM 'S are concerned by allegations that their current an dor1 future products incorporatind ARM processor cores might infringe a patent. Thus, it is important1 For ARM to address any clo$ of uncertainty created by a llega tions of infringem ent from1 MOSAID.

16. This action ar ses out of threats or actions taken by M OSAID to ARM 'S customers?31 related to products andlor se ices provided by ARM to its custom ers.I I when incorporated into the pr ducts of ARM'S custom ers/licensees, do not directly or indirectly9

l o

t any the claims of the Asserted Patents areassert the LSI Patents, and MO SAID shouldcustom ers that it has standing to assert the

LSI Patents.OSAID has threatened include at least

Freescale Semiconductor, In VIDIA Corporation, ST M icroelectronics, and NXPSemiconductors (the "Thre

19. MOSAID h cts with the Threatened Customers includingcomm unications to and etings that occurred in this District.

resentatives travelled to Santa Clara, CA, whichis in this District, to pr infringement against NVIDIA on o r aroundSeptember 24,200 9, 1 20,2 010 . At those times, MOSAID madeaccusations of infrin of one or m ore of the A sserted Patents by

ores. MOSA ID similarly travelled to thisDistrict on or arou cusations of infringement of one or moreclaims of one or VIDIA products which include ARM

17. ARM seeks a eclaration that (i ) that its products and processor cores do notdirectly or indirectly infringe claims of the Asserted Patents; (ii) that ARM 'S processor cores,

ARM, LTD. AND ARM, INC.'S COMP Al NT FOR DECLARATORY JUDGMENT1 - 4 -


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processor cores.2 1. Similarly, on r around June 3 ,2 0 10, MOSAID representatives made accusations

of infringement of one or mo e claims of one or more of the Asserted Patents by S TIicroelectronics products w ich included ARM processor cores.422. During these dresentation to ARM'S licensees/customers, MO SAID presentvarious claim charts purporti g to demonstrate that certain products containing ARM processingcores infringed one or more c aims of one or more of the Asserted Patents. These presentations

infringement.1ited to one or more docurne ts generated by ARM as purported evidence of the allegedn

23 . MO SAID cont nued its harassment campaign by recently filing a lawsuit assertingIatent infringement of the As erted Patents against Freescale S emicond uctor, Inc. and NVIDIA7Corporation. See Mosa id Tec nologies lnc. v. Free scale S emiconductor, Inc., et al, Case No.6: 1 1-cv-00 173 (EDTX). h

24 . ARM did not I any technology in the Asserted Patents in the design,development or implementati n of ARM 'S products. ARM has not infringed and does notdinfringe any claims of the ~ s s b r t e d atents. Indeed, MOSA ID distorts the Asserted Patents byIapplying them in a manner thdt is not supported by and is contrary to the patents' claims,disclosures and histories, in improper scheme to extract royalties from ARM andlor ARM 'Scustomers/licensees to which OSAID plainly is not entitled.",

25. ARM has certain obligations to one or more of the Threatened Custom ers whichinclude certain obligations to iI demnify its customers under certain conditions for threats ofpatent infringemen t liability w ich implicate products, including processor cores, supplied byARM. h26 . By making acc4 ations of patent infringement against products of the T hreatenedCustomers which include AR processor cores, MOSA ID h as made at least an implicit assertionthat ARM has indirectly infrin ed one or more claims of one or more o f the Asserted Patents.f27. Upon informatign and belief, MOSA ID's agreem ent to acquire rights in the LSIARM, LTD. AND ARM, INC.'S COMP AlNT FOR DECLARATORY JUDGMENTI I -


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1400(b).3 1. MOSAID is sub ect to the personal jurisdiction o f this Court because, among other

Patents did not transfer sufti ient rights to permit MOSAID to unilaterally assert the LSI Patents.d

reasons, i t has purposefully activities to this District, previously maintained offices inthis District in which one the Asserted Patents w ere developed, entered into contracts

As such, MOSAID is believedcustomers that it has the legal

28. MO SAID's thcircumstances, show that thereadverse legal interests, ofdeclaratory judgm ent.

29. This Court has133 I, 1338, and 2201 and the

30. Venue is proper

to purportedly exclusively lice se one or more of the asserted patents with a company which hasr

to have been imperm issibly stating and/or implying to ARMstanding to tile suit on the LSI Patents by itself when it does not..eats and actions against ARM'S customers, under all the

is a substantial controversy, between ARM and M OSA ID havingsufficient imm ediacy and reality to warrant the issuance of a

JURISDICTION AND VEN UEsubject matter over these Counterclaims pursuant to 28 U.S.C. $8patent laws of the Un ites States, 35 U. S . C. 8 I, et seq.

in this judicial district under 28 U.S.C. $8 1391(b), (c), (d), and

its corporate headquarters in t is District, has participate d in meetings in this District in which itasserted infringement of thesea tents, and has previously availed itself of this Court to enforce itspatents.

to S anta Clara, CA, which is in this District, topresent accusations of patent i against NVIDIA on o r around September 24,2 009 ,February 24 ,20 10, and April those times, MO SAID made accusations ofinfringement of one or more or more of the Asserted Patents by NVIDIA productswhich include ARM

to this District on or around July 13 ,20 10 andrepeated accusations of of one or more claims of one or more of the AssertedPatents by NVIDIA ARM processor cores.

ARM. LTD. AND ARM, INC.'S COM P AlNT FOR DECLARATORY JUDGMENT1 - 6 -


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42. ARM has not irectly or indirectly infringed any claim of the LS I-Paten ts.43. ARM 'S custo ersllicensee s, to the extent they have incorporated ARM 'S

processor cores into their pro have not directly or indirectly infringed any claim of the LSIPatents.

COUNT 2DECLARATORY O F INVALIDITY OF THE LSI PATENTS

44. ARM incorpor tes and realleges the allegations of paragraphs 1-43 above as if setforth fully herein.

45. A valid and jus iciable controversy has arisen and exists between ARM andMO SAID regarding the LSI P tents as a result of MO SAID 's assertions of infringement byARM 'S customers related to1M processor cores. ARM desires a judicial determ ination anddeclaration of the respective of the parties regarding the LSI P atents.46. Each claim o SI Patents that MOSA ID asserts is infringed either by orthrough the use of ARM pr cores is invalid under one or more provisions o f 35 U. S. C. $9102, 103,and 112.

I COUNT 3DECLARATORY JUDG OF NONINFRINGEMENT O F THE MOSAID PATENTS

47. ARM inco nd realleges the allegations of paragraphs 1-46 abo ve as if setforth hl ly herein.

48. A valid an le controversy has arisen and exists between ARM andMOS AID regarding the atents as a result of MO SAID's assertions of infringement byARM 'S customers related to processor cores. ARM d esires a judicial determ ination anddeclaration of the respec f the parties regarding the MOSA ID P atents.

49. ARM ha or indirectly infringed any claim of the MOSAID Patents.50. ARM 'S nsees, to the extent they have incorporated ARM 'S

processor cores into th ve not directly or indirectly infringed any claim of theMOSA ID Patents.

ARM, LTD. AND ARM, INC.'S CO MP AlNT FOR DECLARATORY JUDGMENT1 - 8 -


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>COUNT 4

DECLARATORY JU GME NT OF INVALIDITY OF THE MOSA lD PATENTS5 1. ARM incorpor tes and realleges the allega tions of paragraphs 1-50 abov e as if set

forth fully herein.52. A valid and jus iciable controversy has arisen and exists between ARM and

MOSAID regarding the MOS ID Patents as a result of MO SAID's assertions of infringement by1RM's customers related to RM processor cores. ARM desires a judicial determ ination andAdeclaration of the respective ri ~ h t s f the parties regarding the MOSAID Patents.53. Each claim of t e MO SAID Patents that MOSAID asserts is infringed either by or

5 8 102, 103, and 112.

1through the use of ARM proc sor cores is invalid under one or more provisions of 35 U. S. C.+ COUNT 5DECLARATORY JUDGMENT OF LACK O F STANDING BY MOSAID T o ASSERT

THE LSI PATENTS54. ARM incorpor es and realleges the allegations of paragraphs 1-53 above as if set

forth fully herein.4

55. A valid and just'ciable controversy has arisen and exists between ARM andMOSAID regarding the LSI P tents as a result of MOSA ID's assertions of infringement byARM 's customers related to A M processor cores. ARM desires a judicial determination anddecla ration of the respective ri hts of the parties regarding the LSI Patents.!56. MOSAID lacks tandin g to unilaterally assert one or more of the LSI Patents byitself. I"

COUNT 6DECLARATORY JUDGM NT REGARDING DAMAGE S FOR ANY INFRINGEMENT7 OF ANY VALID CLAIM

57. ARM incorpora es and realleges the allegations of paragraphs 1-56 abov e as if setforth fully herein. 9ARM, 1,TD. AND ARM, INC.'S COMP AlNT FOR DECLARATORY JUDGM ENTL - 9 -


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58. A valid and jurjticiable controversy has arisen and exists between ARM andMOSAID regarding the Asse ed Patents as a result of MOSA ID's assertions of infringement byARM'S customers related to RM processor cores. ARM desires a judicial determination and::declaration of the respective r ghts of the parties regarding the Asserted Patents.

59. Any claim byiSAID for damages related to infringem ent based upon ARMprocessor cores would have, a royalty base, the amount received by ARM for those cores.


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1 REQUEST FOR RELIEFWHEREFORE , ARM requeits that this Court:

a. declare that th d Asserted Patents are invalid;b. declare that A@M has not infringed and is not directly or indirectly infring ing an y

claim of the Asserted Patents;c. declare that M's customers/licensees have not infringed and are not directly or

indirectly infringing any of the Asserted Patents insofar as they include ARM processorcores in their products;

d. declare that SAID lacks standing to asser t the LSI Patents;e. prohibit from asserting or implying to customers of ARM that it has the

legal right to file suit of the LSI Patents on its own;f. under 35 U.S.C. 8 285 and award ARM is

attorneys' fees, costs, and exp in connec tion with this action; andg. award ARM and further relief as to which it may be entitled.

ARM, LTD. AND ARM, INC.'S C OM P AINT FOR DECLARATORY JUDGMENTI I , -


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Dated: August 5, 201 1r

I:DWARD V. KING. -0. 85726cvking(i$kinyandkell~he&omKING & KELLEC-IER, LLPFour Embarcadero Center, Seventeenth FloorSan Francisco CA 94 1 1 IPhone: (41 5) 78 1-2888Facsimile: (4 15) 78 1-30 1 1KEVIN P. ANDERS ON (pro htrc vice)[email protected] REIN LLP1 776 K Street NWWashington, DC 20006Phone: (202) 7 19-7000Fax: (202) 7 19-7049

1 Attorneys for ARM LTD. and ARM, Inc.

Documents

ARM et. al. v. MOSAID Technologies