DeclarationCal. Super. - 6th Dist.June 2, 20171 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 FREEL DECL. ISO REPLY ISO MOTION TO COMPEL FURTHER RESPONSES TO REQUESTS FOR PRODUCTION CASE NO. 17-CV-311301 4834-1419-2747.1 WILLIAM J. ROBINSON (State Bar No. 83729) wrobinson@foley.com KIMBERLY A. KLINSPORT (State Bar No. 259018) kklinsport@foley.com JEAN-PAUL CIARDULLO (State Bar No. 284170) jciardullo@foley.com EVA K. FREEL (State Bar No. 318287) efreel@foley.com FOLEY & LARDNER LLP 555 SOUTH FLOWER STREET, SUITE 3500 LOS ANGELES, CA 90071-2411 Telephone: 213-972-4500 Facsimile: 213-486-0065 Attorneys for Defendant Complete Probe Solutions, Inc., SUPERIOR COURT OF THE STATE OF CALIFORNIA FOR THE COUNTY OF SANTA CLARA MARTEK, INC., an Arizona corporation, Plaintiff, v. COMPLETE PROBE SOLUTIONS, INC., a California Corporation, Defendant. CASE NO. 17-CV-311301 DECLARATION OF EVA K. FREEL IN SUPPORT OF DEFENDANT COMPLETE PROBE SOLUTIONS, INC.’S REPLY BRIEF IN SUPPORT OF ITS MOTION TO COMPEL FURTHER RESPONSES TO REQUESTS FOR PRODUCTION, SET ONE [Concurrently filed with Reply In Support of Motion to Compel] DATE: June 28, 2018 TIME: 9:00 a.m. PLACE: Dept. 19 COMPLAINT FILED: JUNE 2, 2017 TRIAL DATE: DECEMBER 3, 2018 Electronically Filed by Superior Court of CA, County of Santa Clara, on 6/21/2018 12:40 PM Reviewed By: R. Burciaga Case #17CV311301 Envelope: 1648134 17CV311301 Santa Clara - Civil R. Burciaga 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 FREEL DECL. ISO REPLY ISO MOTION TO COMPEL FURTHER RESPONSES TO REQUESTS FOR PRODUCTION CASE NO. 17-CV-311301 4834-1419-2747.1 DECLARATION OF EVA K. FREEL I, Eva K. Freel, declare as follows: 1. I am an attorney admitted to practice before all courts in the State of California. I am an associate with the law firm of Foley & Lardner LLP, attorneys of record for Defendant Complete Probe Solutions, Inc. (“Defendant” or “CPS”) in the above-captioned action. I make this declaration based on my personal knowledge and in support of Defendant’s Motion to Compel Further Responses to Requests for Production (the “Motion”). If called as a witness, I could and would testify competently under oath to the following facts. 2. Exhibit A is a true and correct copy of FormFactor’s First Amended Complaint against MarTek in the FormFactor v. MarTek case, 4:14-cv-01122. 3. Exhibit B is a true and correct copy of an email dated June 8, 2018 from counsel for CPS to counsel for MarTek. 4. Exhibit C is a true and correct copy of an email dated June 13, 2018 from counsel for CPS to counsel for MarTek. I declare under penalty of perjury under the laws of the State of California that the foregoing is true and correct. Executed this 21 day of June, 2018 at Los Angeles, California. EVA K. FREEL EXHIBIT A EXHIBIT A 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 FIRST AMENDED COMPLAINT 4821-8335-3626.1 William J. Robinson (State Bar No. 83729) email: wrobinson@foley.com Jean-Paul Ciardullo (State Bar No. 284170) email: jciardullo@foley.com Justin M. Sobaje (State Bar No. 234165) email: jsobaje@foley.com FOLEY & LARDNER LLP 555 South Flower Street, Suite 3500 Los Angeles, CA 90071-2411 Telephone: 213-972-4500 Facsimile: 213-486-0065 STEVE R. SHERMAN (State Bar No. 136589) email: ssherman@tobysherman.com TOBY, SHERMAN & DOYLE, LLP 4309 Hacienda Drive, Suite 350 Pleasanton, CA 94588 Telephone: (925) 463-3300 Facsimile: (925) 463-3301 Attorneys for FORMFACTOR, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION FORMFACTOR, INC., a Delaware corporation, Plaintiff, v. MARTEK, INC., an Arizona corporation. Defendants. No. CV 14-01122 PJH FIRST AMENDED COMPLAINT FOR: 1. COPYRIGHT INFRINGEMENT 2. BREACH OF WRITTEN CONTRACT; 3. UNFAIR COMPETITION UNDER SECTION 43(a) OF THE LANHAM ACT (15 U.S.C. 1125(a)) 4. VIOLATION OF BUSINESS AND PROFESSIONS CODE §17,200 ET. SEQ. DEMAND FOR JURY TRIAL Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page1 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 FIRST AMENDED COMPLAINT 4821-8335-3626.1 FormFactor, Inc. (“FormFactor”), by its attorneys, alleges as follows: JURISDICTION 1. This is a civil action asserting claims for copyright infringement, breach of written contract, federal unfair competition under the Lanham Act, and unfair competition under the California Business and Professions code. This Court has subject matter jurisdiction over the federal claims asserted herein pursuant to 28 U.S.C. §§ 1331 and 1338 and 15 U.S.C. §1125(a). The Court has subject matter over the non-federal claims asserted herein under 28 U.S.C. §§ 1332 and 1367. This Court also has personal jurisdiction over Defendant MarTek, Inc. (“MarTek”). MarTek has contractually agreed to jurisdiction within this Judicial District and, upon information and belief, is doing business in this Judicial District. Requiring MarTek to respond to this action will not violate due process. MarTek is amenable to service of process pursuant to F.R.Civ.P. 4(e). 2. Venue is proper in this Judicial District pursuant to 28 U.S.C. §§ 1391(b) and (c). MarTek transacts business within this Judicial District and has contractually agreed that this Judicial District is a convenient forum. FormFactor resides in this District. INTRA-DISTRICT ASSIGNMENT 3. This Complaint is properly deemed to be an Intellectual Property Action; and therefore, pursuant to Civil L.R. 3-2(c), it may be assigned on a District-wide basis. THE PARTIES 4. FormFactor is a Delaware corporation having a principal place of business at 7005 Southfront Road, Livermore, California. 5. FormFactor is informed and believes, and on that basis alleges, that Defendant MarTek is an Arizona corporation that maintains its principal place of business at 112 South Rockford Drive, Suite 103, Tempe, Arizona 85281. 6. FormFactor is informed and believes, and on that basis alleges, that MarTek has ongoing and systematic contacts with this Judicial District, including as a licensee of certain intellectual property, offers for sale and technical support of products to customers in this Judicial District. BACKGROUND FACTS 7. On or about July 9,2009, Electroglas, Inc. and its subsidiary Electroglas International Inc. Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page2 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 FIRST AMENDED COMPLAINT 4821-8335-3626.1 (collectively “Electroglas”), filed for protection under the Bankruptcy laws of the United States in the U.S. Bankruptcy Court located in Wilmington, Delaware. Electroglas was a company within the semiconductor equipment space and generally divided its business into two areas: (1) the manufacture, sale, service and support of semiconductor wafer probers (its “Prober Business”), and (2) motion control automated technology, or MCAT, business activities (its “MCAT Business”). 8. In the late summer to early fall of 2009, a bankruptcy auction was conducted in order to sell the assets of Electroglas. During the auction proceedings, FormFactor successfully bid on the following Electroglas assets: (a) all of the intellectual property of Electroglas (except for certain rights in two trademarks), regardless as to whether the IP was a part of the Prober Business or the MCAT Business (all such intellectual property collectively the “EG IP”), the MCAT business assets, and (c) certain inventories of prober systems, parts and components, which had application to the prober business of Electroglas ((a), (b) and (c) are also all collectively referred to as the “EG IP and MCAT Assets''). 9. On or about October 2, 2009, the Bankruptcy Court entered an “Order Authorizing the Sale of Purchased Assets to FormFactor, Inc.” (the “October 2 Order”). The assets that FormFactor purchased were the EG IP and MCAT Assets. The October 2, 2009 Order also provided that FormFactor’s purchase of the EG IP and MCAT Assets would be documented in a written agreement. This was done by way of an October 9, 2009 Asset Purchase Agreement (“APA”) among Electroglas, FormFactor, and FormFactor’s subsidiary, Seneca Merger Sub, Inc. (“SMS”). 10. Article 1 of the APA confirmed the SMS/FormFactor’s purchase of the EG IP and MCAT Assets. The term “Intellectual Property” was broadly defined in the APA to include “all intellectual property and proprietary rights of any kind, in any country or jurisdiction, including the following: (i) trademarks, service marks, trade names, ... together with all goodwill, registrations and applications related to the foregoing, except in each case, for the trademarks “ELECTROGLAS” and “E” associated with the Prober Assets (“Trademarks”); (ii) patents, ... renewals, reissues, reexaminations and applications for any of the foregoing) ... (“Patents”); (iii) copyrights and copyrightable subject matter (including any registration and applications for any of the foregoing); (iv) inventions (whether patentable or not), invention disclosures, improvements, trade secrets, know how and confidential or Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page3 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 FIRST AMENDED COMPLAINT 4821-8335-3626.1 proprietary business information (including manufacturing and production processes and techniques, research and development information, technology, drawings, specifications, designs, plans, proposals, technical data, proprietary processes, formulae, algorithms, models, and methodologies; computer software, computer programs, and databases (whether in source code, object code or other form); and all rights to sue for past, present and future infringement, misappropriation, dilution or other violation of any of the foregoing and all remedies at law or equity associated therewith.” 11. On or about March 11, 2010, SMS and MarTek entered into a written “Intellectual Property License Agreement” (hereinafter the “IPLA”) in which MarTek was granted, in § 2.01, a non- exclusive, non-assignable and royalty-bearing license under the “Prober Intellectual Property,” to “make, have made, use, sell, offer for sale, export, and import the Licensed Products and any Improvements with the Software solely in the Licensed Field.” 12. The “Prober Intellectual Property” was defined in § 1.01 of the IPLA as the “portion of the Intellectual Property acquired by Licensor from Electroglas under the [APA] which was used in the Prober Business immediately prior to the effective date of the [APA].” The “Intellectual Property” was defined in § 1.01 included, inter alia, “copyrights (whether or not registered).” 13. On or about July 1, 2010, SMS and MarTek entered into an Addendum to the IPLA (the “Addendum”). The Addendum did not alter the license grant of the IPLA, but did, among other things, modify the date the obligation to pay the defined “Royalty Fees” would commence. 14. SMS thereafter sold, transferred, and assigned to FormFactor its entire worldwide right, title, and interest in, to, and under all intellectual property purchased by SMS pursuant to the APA, as well as and rights arising from such intellectual property, including all rights to sue for infringement, including past infringement of that intellectual property. 15. Various software and related copyrights were included in the Prober Intellectual Property. Among these was software was used to control operation of the 2000 and 4000 series of Electroglas probers (collectively, the “EG Probers”) for testing of semiconductor wafers. That software evolved over time and was variously referred to as “EG 20xx” software (for example, “EG 2001X” or “EG 2010X”), and “EGCommander” (collectively, “EG Software”). Some of the EG Software for the latest EG 6000 Series probers is referred to as “Lightning” software. The EG Software controls the testing of Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page4 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 FIRST AMENDED COMPLAINT 4821-8335-3626.1 a semiconductor wafer within the defined “Licensed Products.” 16. In the IPLA, “Licensed Products” was defined in § 1.01 as the “EG Prober and any Improvements.” EG Probers was defined in § 1.01 as “any of the EG 4090µ+ and EG4090µ Fast Probe 200mm semiconductor wafer prober stations and the EG6000 and EG6000e 300mm semiconductor wafer probe stations …”. Licensed Field was defined in § 1.01 as “the use of the Licensed Products only in a semiconductor test cell consisting of an EG Prober, a semiconductor tester, and a wafer probe card.” Software was defined § 1.01 as “the object code of the current version of the ‘SORTManager Test Floor Manager’ software, ‘Lighting Software’ and ‘EGCommander’ software used in the Prober Business immediate prior to the effective date of the [APA], and copies of any related technical or user documentation”. 17. In consideration for the license grants, under § 3.01 of the IPLA, MarTek agreed to pay to FormFactor: (a) a license signing fee of US$25,000.00 (the “License Fee”); (b) a royalty of ten percent (10%) of the Net Sales Price of Licensed Products (the “Royalty Fee”); and (c) an annual license fee of US$25,000.00 (the “Annual Fee”) (collectively, the “Payments”). 18. The timing of MarTek’s actual payments was prescribed in § 3.03 of the IPLA, as amended by the Addendum and provides: Licensee will pay Licensor (i) the License Fee, within five (5) days of the Effective Date; (ii) the Annual Fee, on the anniversary date of the Effective Date throughout the Term; and (iii) the Royalty Fee for each Quarter of the Term, within forty -five (45) days at the end of that Quarter, in each case together with applicable taxes thereon, in cleared funds by electronic transfer in U.S. dollars into such account as Licensor may nominate from time to time. The Royalty Fee obligation of romanette (ii) shall start on July 1, 2010. 19. Under § 3.02 of the IPLA, MarTek was also required to provide FormFactor quarterly royalty reports (“Reports”). 20. Notwithstanding its obligation to pay the Payments and provide Reports, MarTek failed to make all or part of the Payments on numerous occasions and failed to provide Reports. Indeed, MarTek expressly refused to make the Payments owed unless FormFactor agreed to certain conditions that were outside the scope of the IPLA, such as access to source code and execution of an amended Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page5 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 FIRST AMENDED COMPLAINT 4821-8335-3626.1 contract. FormFactor did not agree to MarTek’s preconditions and continued to demand that the monies that were owed be paid and that Reports be provided as required by the IPLA. 21. On or about December 12, 2013, MarTek expressly stated that it would not make any further payments until FormFactor agreed to certain MarTek unilateral conditions for payment. FormFactor promptly advised MarTek this was not acceptable, and one day later on December 13, 2013, MarTek re-stated that it would not make any payment until “these issues are resolved.” 22. In a letter dated December 17, 2013, FormFactor’s counsel confirmed MarTek’s refusal to pay and anticipatory breach of the IPLA, but stated FormFactor would wait 10 days to permit MarTek to make the long overdue payments and avoid termination. 23. In a letter dated January 3, 2014, FormFactor gave MarTek notice of its intent to terminate the IPLA effective January 10, 2014. Although FormFactor had the right to terminate the IPLA immediately, the seven day period was given in an effort to allow MarTek to make the delinquent payments and avoid litigation. MarTek did not pay the delinquent IPLA fees and did not respond to the January 3 letter. 24. FormFactor terminated the IPLA in a letter dated January 15, 2014. 25. Subsequent to termination, MarTek has continued to engage in the same acts relative to its Prober Business that it engaged in with the benefit of the IPLA prior to the termination, including refurbishing, using, selling and offering for sale the EG 4090µ+, 4090µ Fast Probe 200mm wafer probe stations. Such acts involve copying of the formerly licensed EG Software. Such copying occurs both in the making of the probe stations, but in running the probe stations, as the operation thereof cause the copying or loading the software from the storage media on the probe stations into the random access memories of the CPUs that form a part of the storage stations. 26. In addition, subsequent to termination, MarTek has continue to advertise on its website that it is a licensee of the EG IP and that it has the right to engage in acts that constitute copyright infringement in absence of a license. CLAIM 1: COPYRIGHT INFRINGEMENT 27. FormFactor repeats the allegations of paragraphs 1-26 above as though fully set forth herein. Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page6 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6 FIRST AMENDED COMPLAINT 4821-8335-3626.1 28. This is a claim by FormFactor against MarTek for copyright infringement under 17 U.S.C. § 106. 29. FormFactor is informed and believes, and on that basis alleges, that the EG Software was the subject of substantial amounts of research and development by Electroglas prior to bankruptcy. 30. FormFactor is informed and believes, and on that basis alleges, that Electroglas owned all the IP rights in the EG Software that was transferred to SMS/FormFactor. Those items contain a substantial amount of material wholly original with Electroglas and constitute copyrightable subject matter under the laws of the United States. Electroglas complied with the Copyright Act, 17 U.S.C. § 101 et seq. and all other laws governing copyright regarding that software. The EG Software software is fixed in tangible mediums of expression. 31. By virtue of the APA, FormFactor is the sole proprietor of all of its rights, title, and interest in and to the EG Software. 32. Pursuant to 17 U.S.C. § 411, FormFactor sought and obtained copyright registrations in EG Software that are attached hereto as Exhibits 1-3. Those Registrations are Nos. TXu 1-795-303, TXu 1-795-205, and TXu 1-859-721. 33. On March 31, 2014, FormFactor also filed Supplemental Registration applications (“Supplemental Applications”) with the Copyright Office for each of Registrations No. TXu 1-795-303, TXu 1-795-205, and TXu 1-859-721. These Supplemental Applications seek to amend a technical error on the face of the Registration Certificates which states that the registrations exclude prior versions of the software code. Such exclusion was never sought in the original applications, and was improperly stated on the Certificates. Copies of the Form CA Supplemental Applications have been attached at Exhibits 4-6. 34. By means of the actions complained of herein, and in particular by the refurbishing and/or making of, as well as the selling of, such probers as the EG 2001, 4090µ+ and 4090µ Fast Probe 200mm, as well as selling such machines under MarTeck’s own logo, such as the MarTek 4090µ+, MarTek has infringed and will continue to infringe FormFactor's copyrights in and relating to the EG Software. 35. MarTek's actions in continuing to copy and use the EG Software after termination of the Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page7 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 FIRST AMENDED COMPLAINT 4821-8335-3626.1 IPLA constitutes willful copyright infringement. 36. FormFactor is informed and believes, and on that basis alleges, that the foregoing conduct by MarTek was done willfully, wantonly, in bad faith and with knowledge of the fact that the EG Software is protected by federal copyright law and owned by FormFactor. 37. The natural, probable, and foreseeable result of the aforesaid conduct of MarTek has been and will continue to be to deprive FormFactor of business and licensing of the software acquired in the APA, to deprive FormFactor of goodwill, to injure FormFactor's relations with existing and prospective licensees, and to impose substantial expenses on FormFactor to counteract the aforesaid conduct. 38. FormFactor is informed and believes and based thereon alleges that it has lost or will lose license revenues for the software acquired in the APA and has sustained and will continue to sustain damages as a result of MarTek’s conduct. MarTek’s wrongful conduct has also deprived and will continue to deprive FormFactor of opportunities for expanding its goodwill. 39. FormFactor is further entitled to recover from MarTek the damages it has sustained and will sustain because of MarTek's wrongful acts as hereinabove alleged. FormFactor is further entitled to recover from MarTek the gains, profits, and advantages, without any deduction for overhead expenses, that MarTek has obtained because of its wrongful acts as hereinabove alleged. 40. FormFactor is entitled to preliminary and permanent injunctions restraining MarTek, its officers, agents, and employees, and all persons acting on concert with them, from engaging in further such acts in violation of the copyright laws. CLAIM 2: BREACH OF WRITTEN CONTRACT 41. FormFactor repeats the allegations of paragraphs 1-25 above as though fully set forth herein. 42. This is a claim by FormFactor against MarTek for breach of the IPLA. 43. FormFactor has performed all performed all covenants, promises, and conditions required of it under the terms of the IPLA. 44. MarTek breached the IPLA by failing to make payments that it was contractually obligated to make and for failure to do other acts such as providing reports. 45. As a direct and proximate result of the aforesaid breaches of contract by MarTek, Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page8 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 FIRST AMENDED COMPLAINT 4821-8335-3626.1 FormFactor has been damaged in an amount to be determined at trial, but in an amount in excess of $300,000. 46. Section 6.04 of the IPLA contemplates that in the event of a breach, “the damages may be irreparable and difficult to measure,” and, therefore, that Plaintiff will be entitled to seek equitable relief, including an injunction and specific performance, as a remedy for such breach. As such, FormFactor is entitled to an injunction directing compliance with the reporting requirements of the IPLA and to an audit to provide an accounting of the various Payments owed by MarTek. 47. Section 6.04 provides that the prevailing party shall be entitled to its attorneys’ fees in actions relating to the IPLA. As such, FormFactor is entitled to its attorney’s fees relative to MarTek’s breach. CLAIM 3: FEDERAL UNFAIR COMPETITION 48. FormFactor repeats the allegations of paragraphs 1-26 above as though fully set forth herein. 49. This is a claim by FormFactor against MarTek for unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). 50. Notwithstanding FormFactor’s termination of the IPLA, MarTek continues to advertise itself as a licensee of Electroglas technology, as a supplier of refurbished Electroglas probers, and as a servicer of such probers. Such advertisements are, or have been, present on its website at www.martekprobers.com and include or have included such statements as: (a) “MarTek is fully licensed to support Electroglas technology” (which MarTek changed after the original complaint was filed to read “MarTek is factory-trained to support …”); (b) “The MarTek refurbished line of wafer probers includes Electroglas 2001, 3001, 4085, 4080, 4090X, 4090µ, 4090µ+, 4090ff, and Pathfinder;” (c) “MarTek also provides wafer prober parts, field service, repair and training;” and (d) “MarTek is factory trained.” 51. In the absence of being a licensee under the IPLA, MarTek has no right to claim to be a licensee and has no rights to make, sell or service Electroglas probers. Furthermore, insofar as Electroglas terminated operations in 2009, there has not been “factory training” available for almost five years. Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page9 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 FIRST AMENDED COMPLAINT 4821-8335-3626.1 52. Accordingly, MarTek’s statements as described herein constitute false or misleading descriptions of fact, or false or misleading representations of fact, which is likely to cause confusion or cause mistake, or to deceive as to the origin, sponsorship, or approval of MarTek’s goods and services or commercial activities by FormFactor under 15 U.S.C. § 1125(a). 53. MarTek’s statements as described herein constitute unfair competition under 15 U.S.C. § 1125(a). 54. As a direct and proximate result of the aforesaid acts of MarTek, FormFactor has been damaged in the amount of lost licensing revenue from MarTek, injury to FormFactor’s licensing program in that other non-licensees will be encouraged to infringe upon the EG IP, as owned by FormFactor, and by a substantial injury to FormFactor’s goodwill. 55. As a direct and proximate result of the aforesaid acts of MarTek, MarTek has also been unjustly enriched via profiting from activities in which it cannot engage without being a FormFactor licensee and via keeping license payments that should have gone to FormFactor. Such unjust enrichment will be determined at trial, but is in excess of $1 million. 56. By the aforesaid acts, MarTek has irreparably injured FormFactor and FormFactor is entitled to preliminary and permanent injunctions restraining MarTek, its officers, agents, and employees, and all persons acting on concert with them, from engaging in further such acts in violation of the Lanham Act. CLAIM 4: STATE UNFAIR COMPETITION 57. FormFactor repeats the allegations of paragraphs 1-26, 43-44, and 50-53 above as though fully set forth herein. 58. This is a claim by FormFactor against MarTek for unfair competition in violation of California Business and Professions Code § 17,200 et seq. 59. The acts of MarTek in competing unfairly with FormFactor include those acts set forth above in ¶¶ 44 and 50. 60. The acts of MarTek as set forth herein have resulted in MarTek competing unfairly with FormFactor via acts that have resulted in lost licensing revenue to FormFactor, injury to FormFactor’s licensing program in that other non-licensees will be encouraged to infringe upon the EG IP as owned Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page10 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10 FIRST AMENDED COMPLAINT 4821-8335-3626.1 by FormFactor, and by a substantial injury to FormFactor’s goodwill. 61. As a direct and proximate cause of MarTek’s unfair competition, MarTek has been unjustly enriched in an amount will be determined at trial, but is in excess of $1 million. 62. In doing the acts hereinabove alleged, MarTek has acted fraudulently, oppressively, and maliciously and, by reason thereof, FormFactor is entitled to exemplary and punitive damages against each of them in the amount of $5 million. 63. By the aforesaid acts, MarTek has irreparably injured FormFactor and FormFactor is entitled to preliminary and permanent injunctions restraining MarTek, its officers, agents, and employees, and all persons acting on concert with them, from engaging in further such acts in violation of the California Business and Professions Code. PRAYER FOR RELIEF Wherefore, FormFactor prays for judgment against MarTek as follows: UNDER CLAIM 1 1. That MarTek be held to have infringed FormFactor's copyrights in the EG Software. 2. That such infringement be deemed willful. 3. That MarTek, its officers, directors, agents, servants, employees, and all other persons in active concert or privity or in participation with them, be enjoined from directly or indirectly infringing FormFactor's copyrights in its the EG Software or to participating or assisting in any such activity. 4. That MarTek, its officers, directors, agents, servants, employees, and all other persons in active concert or privity or in participation with them, be directed via a mandatory injunction to return to FormFactor any originals, copies, facsimiles, or duplicates of the EG Software in their possession, custody, or control. 5. That judgment be entered for FormFactor against MarTek for FormFactor's actual damages suffered, and for any additional profits attributable to infringement of FormFactor's copyrights, without deduction of overhead expenses. 6. That MarTek be required to account for all gains, profits, and advantages derived from its acts of infringement and other violations of law, including any appropriate statutory damages. 7. That all gains, profits, and advantages derived by MarTek from their acts of infringement Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page11 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11 FIRST AMENDED COMPLAINT 4821-8335-3626.1 and other violations of law be deemed to be in constructive trust for the benefit of FormFactor. UNDER CLAIM 2 8. That MarTek be adjudged to have breached the IPLA. 9. That FormFactor be awarded the damages resulting from MarTek’s breach of the IPLA. 10. That an injunction and specific performance be ordered, including ordering MarTek to provide the reports that were not provided and to submit to the audit permitted by the IPLA. 11. That FormFactor be awarded its attorneys’ fees. UNDER CLAIM 3 12. That MarTek be adjudged to have violated 15 U.S.C. § 1125(a) by the acts complained of herein. 13. That an accounting be had of the damages to FormFactor and the total gains, profits, unjust enrichment and other accumulations of MarTek resulting from the acts complained of herein, that such damages be found to be in an amount of not less than the sum of $1M, and that an increase in such damages of three times the amount be assessed against MarTek. 14. That this case be declared exceptional under 15 U.S.C. § 1117 and that FormFactor be awarded its attorneys’ fees. 15. That MarTek, its officers, directors, agents, servants, employees, and all other persons in active concert or privity or in participation with them, be enjoined from using any a false or misleading description of fact, or a false or misleading representation of fact, which is likely to cause confusion or cause mistake, or to deceive as to the origin, sponsorship, or approval of MarTek’s goods and services or commercial activities by FormFactor. 16. That MarTek be ordered to publish corrective advertising to counter the harm that has resulted from its false or misleading description of facts and false or misleading representations of fact. UNDER CLAIM 4 17. That MarTek be ordered to disgorge and restore to FormFactor the monies that may have been acquired by means its unfair competition with FormFactor. 18. That MarTek and its subsidiaries, affiliates, parents, successors, assigns, officers, agents, servants, employees, attorneys, and all persons acting in concert or in participation with them, or any of Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page12 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 12 FIRST AMENDED COMPLAINT 4821-8335-3626.1 them, be temporarily and preliminarily enjoined during the pendency of this action, and permanently enjoined thereafter, from any and all further acts of unfair competition. 19. That exemplary and punitive damages be awarded against MarTek in the amount not less than the sum of $5 million. UNDER ALL CLAIMS 20. That FormFactor be awarded the costs of suit and an assessment of interest, including prejudgment interest. 21. That FormFactor be awarded its attorneys’ fees. 22. That FormFactor have such other, further, and different relief as the Court deems proper under the circumstances. Dated: April 3, 2014 __/S/ WILLIAM J. ROBINSON__ William J. Robinson FOLEY & LARDNER LLP Attorneys for FORMFACTOR, INC. DEMAND FOR JURY TRIAL FormFactor hereby demands a trial by jury of all issues triable by a jury. Dated: April 3, 2014 _/S/ WILLIAM J. ROBINSON_______ William J. Robinson FOLEY & LARDNER LLP Attorneys for FORMFACTOR, INC. Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page13 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 13 FIRST AMENDED COMPLAINT 4821-8335-3626.1 Case4:14-cv-01122-PJH Document13 Filed04/03/14 Page14 of 14 EXHIBIT B EXHIBIT B 1 Freel, Eva From: Klinsport, Kimberly A. Sent: Friday, June 08, 2018 3:19 PM To: 'Cheng, Mike' Cc: Picone, Christian E.; Robinson, Bill; Ciardullo, Jean-Paul; Freel, Eva; Saptoro, Lian P.; Miller, David K. Subject: RE: Martek v. CPS - Stipulated Protective Order Attachments: RE: MarTek v. CPS Mike, This version is more comprehensive and as we discussed previously, it includes an AEO provision and one for any inadvertent disclosures. The definitions section clarifies and streamlines the defined terms. I don’t think there is anything controversial there or in the other provisions. In addition, we had previously exchanged communications about Request for Production (“RFP”) Nos. 28-30 that seek pleading and deposition transcripts from the FormFactor v. MarTek litigation (“FF v. MT”)and whether the parties could agree that Foley use its own copies from the litigation and consider any confidential materials from that litigation to be confidential with the same designations in this litigation. Some of those materials include an AEO designation, thus necessitating such a designation in the protective order for this action. To the extent that you have any additional edits, please let us know. Otherwise, I think the last version I sent over encompasses both sides’ suggested edits and offers the most comprehensive protections for both parties. To that end, I’d like to get the protective order on file next week. With regard to some of the motion to compel issues that you emailed us about on April 23, 2018, including RFP No. 28- 30 that I mentioned above, I think we can reach an agreement on a couple of issues. (I am attaching a copy of your email for ease of reference.) For RFP Nos. 28-30, we have been proposing that any pleadings or deposition transcripts from FF v. MT would have the same designations they did in the FF v. MT suit. Although we are including any documents that were attached as exhibits to any pleadings and/or deposition transcripts in our request and offer to use our own copies from the FF v. MT matter, we are not extending that proposal to all documents exchanged between the parties in that lawsuit. Again, to the extent that any documents attached as exhibits to pleadings or deposition transcripts were designated as confidential or AEO, those designations would apply in the instant litigation as well. Please let us know if MarTek agrees to this proposal. If so, and if we can get a protective order in place, CPS will forego pressing on RFP Nos. 28-30 in its pending motion to compel. In addition, your April 23, 2018 email also provided Bates numbers to royalty report documents that MarTek produced in discovery as being responsive to Special Interrogatory Nos. 23 and 24. The documents you refer to appear to respond to Special Interrogatory No. 23. Accordingly, CPS is willing to drop Special Interrogatory No. 23 from its pending motion to compel. The documents do not appear to be responsive to Special Interrogatory No. 24, however, because that interrogatory asks for information about payments MarTek contends CPS should have made, but did not make. As such, CPS plans to proceed with its motion to compel on Special Interrogatory No. 24. However, please let us know if there is anything further that you’d like us to consider with regard to Special Interrogatory No. 24, or any of the other discovery requests that are the subject of one of the pending motions to compel. Thank you, Kimberly Kimberly A. Klinsport 2 Foley & Lardner LLP 555 South Flower Street | Suite 3500 Los Angeles, CA 90071-2411 P 213.972.4741 View My Bio Visit Foley.com From: Cheng, Mike [mailto:Mike.Cheng@berliner.com] Sent: Friday, June 08, 2018 8:19 AM To: Klinsport, Kimberly A. Cc: Picone, Christian E. Subject: RE: Martek v. CPS - Stipulated Protective Order Hi Kimberly, The inclusion of the definitions in this version of the SPO seems unnecessary. Is there any reason why you think this is better than the prior version that we had been discussing? I’ll re-forward you my March 1, 2018 email with our proposed comments. Thanks. Mike Mike Cheng | Attorney Mike.Cheng@berliner.com San Jose | Modesto | Merced 10 Almaden Blvd., Eleventh Floor | San Jose, California 95113 | 408.286.5800 | F 408.998.5388 | www.berliner.com CONFIDENTIALITY NOTICE: This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. Please consider the environment before printing this email. From: KKlinsport@foley.com [mailto:KKlinsport@foley.com] Sent: Thursday, June 07, 2018 4:59 PM To: Cheng, Mike; Picone, Christian E. Cc: EFreel@foley.com; JCiardullo@foley.com; LSaptoro@foley.com; DKMiller@foley.com; WRobinson@foley.com Subject: RE: Martek v. CPS - Stipulated Protective Order 3 Hi Mike, I just wanted to follow up with you on my email below regarding the SPO. Please let me know if you have any other edits or comments, or if we can get this finalized and filed with the Court. Thank you, Kimberly Kimberly A. Klinsport Foley & Lardner LLP 555 South Flower Street | Suite 3500 Los Angeles, CA 90071-2411 P 213.972.4741 View My Bio Visit Foley.com From: Klinsport, Kimberly A. Sent: Friday, June 01, 2018 10:01 AM To: Cheng, Mike (Mike.Cheng@berliner.com) Cc: Freel, Eva; Ciardullo, Jean-Paul; Saptoro, Lian P.; Miller, David K. Subject: Martek v. CPS - Stipulated Protective Order Hi Mike, I am following up with you on the outstanding protective order between the parties for this matter. When we last spoke, I had sent a revised proposed stipulated protective order (SPO) to you and I believe that you have since wanted to confirm that we incorporated your changes and what other provisions had been added pursuant to our other prior conversations. The last SPO that I sent you added in a definitions section for clarity, an AEO provision, and provisions for any inadvertent disclosures. I had also adopted your proposed edits, which were: - Moving the paragraph regarding the procedure for filing records under seal from the “use of materials in discovery” section to the “use of materials in court” section; - Adding in a provision that the Order could be modified by written agreement between the parties or by order of the Court; and - Changing the deadline for parties to return documents post-litigation from 30 days to 60 days (though you left the destruction deadline at 30 days). As noted above, we accepted and incorporated your proposed edits, with the exception of some of the internal paragraph number changes because those changed with the addition of the definitions and inadvertent disclosure sections. I am reattaching a copy of the proposed SPO here. Please let me know if you have any further comments or edits to this proposed SPO, or if we can get this finalized and on file with the Court. Thank you, Kimberly 4 Kimberly A. Klinsport Foley & Lardner LLP 555 South Flower Street | Suite 3500 Los Angeles, CA 90071-2411 P 213.972.4741 View My Bio Visit Foley.com The preceding email message may be confidential or protected by the attorney-client or work-product privileges. It is not intended for transmission to, or receipt by, any unauthorized persons. If you have received this message in error, please (i) do not read it, (ii) reply to the sender that you received the message in error, and (iii) erase or destroy the message and any attachments or copies. Any disclosure, copying, distribution or reliance on the contents of this message or its attachments is strictly prohibited, and may be unlawful. Unintended transmission does not constitute waiver of the attorney-client privilege or any other privilege. Legal advice contained in the preceding message is solely for the benefit of the Foley & Lardner LLP client(s) represented by the Firm in the particular matter that is the subject of this message, and may not be relied upon by any other party. Unless expressly stated otherwise, nothing contained in this message should be construed as a digital or electronic signature, nor is it intended to reflect an intention to make an agreement by electronic means. EXHIBIT C EXHIBIT C 1 Freel, Eva From: Klinsport, Kimberly A. Sent: Wednesday, June 13, 2018 2:59 PM To: 'Cheng, Mike' Cc: Picone, Christian E.; Robinson, Bill; Ciardullo, Jean-Paul; Freel, Eva; Miller, David K.; Saptoro, Lian P. Subject: RE: MarTek v. CPS: Upcoming Motions to Compel Mike, It was nice seeing you yesterday at the Trial Setting Conference. Please allow this email to address some of the meet and confer issues that we discussed regarding CPS’s pending motions to compel. Yesterday we again discussed Request for Production (“RFP”) Nos. 28-30. We have exchanged several communications about RFP Nos. 28-30, which seek pleading and deposition transcripts from the FormFactor v. MarTek litigation (“FF v. MT”). We have repeatedly discussed whether the parties could agree that Foley use its own copies from the litigation and consider any confidential materials from that litigation to be confidential with the same designations in this litigation. Although we are including any documents that were attached as exhibits to any pleadings and/or deposition transcripts in our request and offer to use our own copies from the FF v. MT matter, I have clarified that we are not extending that proposal to all documents exchanged between the parties in that lawsuit. Again, to the extent that any documents attached as exhibits to pleadings or deposition transcripts were designated as confidential or AEO, those designations would apply in the instant litigation as well. We are still waiting to receive confirmation from MarTek whether MarTek agrees to this proposal. Please respond in writing to let us know whether or not MarTek agrees to this approach. Otherwise, we will proceed with our motion to compel and will ask the Court to order MarTek to produce copies of all pleadings and deposition transcripts. On a related note, we also discussed that you proposed additional revisions to the stipulated protective order. As part of our discussion, I explained that the lines that you cut out of Paragraph 8 pertain to an in-person or on-site inspection and although we may not contemplate any on-site inspections taking place at this point, we want to keep that provision in. You indicated that you’d prefer we include some reference to “in-person” or “on-site inspection” for clarity. We are fine to add that in and we are fine with accepting all of your minor/cosmetic edits throughout. The only provisions left to discuss are those in Part Four: Use of Confidential Materials in Discovery Proceedings. As an initial matter, we note that you removed the AEO designation from the paragraph. However, that term is separately defined from “Confidential Information” and therefore, we think it is prudent to include it. Please let us know if you disagree or why you think that AEO does not need to be included in Part Four. Finally, it looks like the last two sentences on the end are meant to comport with the requirements in Paragraph 20 of Part Three. We are not necessarily opposed to including this, but think that we need to include the instruction from Paragraph 19 of Part Three as well. We also note that we will need to update the paragraph numbers throughout. Please let us know your thoughts on these items and we can send you back an updated version in redline. With regard to the Special Interrogatories, our motion to compel addresses Nos. 17, 18, 19, 23, and 24. We already reached an agreement on No. 23 and CPS will not be pursuing No. 23 with the pending motion to compel. With regard to Nos. 17 and 18, we discussed the issues regarding the uncertainty/open-endedness of the use of the phrase, “which includes but is not limited to…” in those responses, as CPS is trying to pin down what MarTek’s specific contentions are and what facts MarTek specifically asserts in support of its assertions. You advised yesterday that although the responses contain that phrase, all of the facts and contentions are listed out in the responses. Accordingly, you noted that MarTek would consider serving amending responses eliminating the use of the phrases. Please let us 2 know if MarTek will serve such amended responses. If so, and provided that CPS receives verified, amended responses on or before Monday, June 18, CPS is willing to drop Nos. 17 and 18 from its pending motion to compel. With regard to No. 19, we discussed the issue/question of whether the dongles were transferred “under and/or pursuant to” the 2011 IPLA. You explained that regardless of whether or not the dongles fall within the 2011 IPLA or were transferred separately and/or outside of the 2011 IPLA, MarTek did not otherwise transfer anything under the IPLA. You noted that in your April 23, 2018 email to me, you believe you confirmed this. However, your email notes that MarTek is “currently unaware” of anything other than dongles being transferred to CPS. Unfortunately, this response again suggests that MarTek may later claim or allege that something other than the dongles were transferred to CPS. Based on our conversation, however, it is my understanding that MarTek can confirm that nothing other than the dongles were transferred. Therefore, we propose that MarTek amend its response to simply state, “The dongles are the only items that MarTek transferred to CPS” and serve a verified, amended response on or before Monday, June 18. Please let us know if this proposal is acceptable. Finally, with regard to No. 24, which seeks information about any amounts that MarTek claims CPS owes but has not paid to MarTek, you explained yesterday that MarTek does not currently claim that CPS owes it any unpaid sums and that any such claim and information related to such a claim is not discoverable until an audit is performed. You further explained that MarTek does not have a monetary claim against CPS at this time, as this action is limited to the parties’ disagreement over the scope of the audit rights, and that it may be the case that an audit reveals that no additional monies are owed to MarTek by CPS. We understand MarTek’s position and ask that MarTek amend its response to No. 24 to clarify that MarTek is not aware of and is not currently marking any claim that there are any monies owed by CPS to MarTek at this time, and that any such information will only be discoverable after an audit is conducted. Again, we request that a verified, amended response to No. 24 be served on us on or before Monday, June 18 in order for CPS to withdraw its motion to compel as to Special Interrogatory No. 24. Please let us know if the above is agreeable to you. In the event that we have an agreement on all Special Interrogatories and received verified, amended responses by Monday, June 18, CPS will withdraw its pending motion to compel for the Special Interrogatories. If there is anything else you’d like to discuss further, please do not hesitate to reach out. Thank you, Kimberly Kimberly A. Klinsport Foley & Lardner LLP 555 South Flower Street | Suite 3500 Los Angeles, CA 90071-2411 P 213.972.4741 View My Bio Visit Foley.com From: Cheng, Mike [mailto:Mike.Cheng@berliner.com] Sent: Wednesday, June 13, 2018 2:29 PM To: Klinsport, Kimberly A. 3 Cc: Picone, Christian E. Subject: MarTek v. CPS: Upcoming Motions to Compel Hi Kimberly, Per our conversation yesterday, will I be hearing back from you about a potential resolution of the Motion to Compel Further Responses to Special Interrogatories? Also, I’d like to serve both Oppositions via email this Friday (which is the deadline to file). Please let me know if you’re amenable to electronic service (solely for purposes of these two Motions). You can of course have the same courtesy with respect to your Reply papers. Mike Mike Cheng | Attorney Mike.Cheng@berliner.com San Jose | Modesto | Merced 10 Almaden Blvd., Eleventh Floor | San Jose, California 95113 | 408.286.5800 | F 408.998.5388 | www.berliner.com CONFIDENTIALITY NOTICE: This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. Please consider the environment before printing this email. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 FREEL DECL. ISO REPLY ISO MOTION TO COMPEL FURTHER RESPONSES TO REQUESTS FOR PRODUCTION CASE NO. 17-CV-311301 4834-1419-2747.1 PROOF OF SERVICE I am employed in the County of Los Angeles, State of California. I am over the age of 18 and not a party to this action; my current business address is 555 South Flower Street, Suite 3500, Los Angeles, CA 90071-2411. On June 21, 2018, I served the document(s) described as: DECLARATION OF EVA K. FREEL IN SUPPORT OF DEFENDANT COMPLETE PROBE SOLUTIONS, INC.’S REPLY BRIEF IN SUPPORT OF ITS MOTION TO COMPEL FURTHER RESPONSES TO REQUESTS FOR PRODUCTION, SET ONE on the interested parties in this action as follows: Christian E. Picone Michael J. Cheng BERLINER COHEN LLP 10 Almaden Boulevard, 11th Floor San Jose, CA 95113-2233 email: christian.picone@berliner.com email: michael.cheng@berliner.com BY MAIL I am readily familiar with the firm’s practice of collection and processing correspondence for mailing with the United States Postal Service; the firm deposits the collected correspondence with the United States Postal Service that same day, in the ordinary course of business, with postage thereon fully prepaid, at Los Angeles, California. I placed the envelope(s) for collection and mailing on the above date following ordinary business practices. X BY EXPRESS SERVICE CARRIER (Via Overnight Courier Service) X I am readily familiar with the firm’s practice for collection and processing of correspondence for delivery by FedEx: collected packages are picked up by an express carrier representative on the same day, with the Airbill listing the account number for billing to sender, at Los Angeles, California, in the ordinary course of business. I placed the envelope(s) in an envelope or package designated by the express service carrier for collection and processing for express service delivery on the above date following ordinary business practices. BY E-MAIL I served the foregoing document via e-mail to the addressees above at the e-mail addresses listed therein. BY MESSENGER. I caused the above-referenced documents to be messengered to the addressee(s). X Executed on June 21, 2018, at Los Angeles, California. X I declare under penalty of perjury under the laws of the State of California that the above is true and correct. X I declare that I am employed in the office of a member of the bar of this court at whose direction the service was made. David Miller
