ASUS Computer International v. Round Rock Research, LLC

MOTION to Strike Portions of ASUS's Expert Reports;; DECLARATION of Justin P.D. Wilcox in Support of Motion to Strike

N.D. Cal.February 14, 2014

DECLARATION OF JUSTIN P.D. WILCOX Case No. 3:12-cv-2099-JST 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 BLACK & HAMILL LLP Bradford J. Black (SBN 252031) bblack@blackhamill.com Andrew G. Hamill (SBN 251156) ahamill@blackhamill.com 4 Embarcadero Center, Suite 1400 San Francisco, California 94111 Telephone: 415-813-6210 Facsimile: 415-813-6222 DESMARAIS LLP Paul A. Bondor (admitted pro hac vice) pbondor@desmaraisllp.com Justin P.D. Wilcox (admitted pro hac vice) jwilcox@desmaraisllp.com Jonas R. McDavit (admitted pro hac vice) jmcdavit@desmaraisllp.com Lauren M. Nowierski (admitted pro hac vice) lnowierski@desmaraisllp.com 230 Park Avenue New York, NY 10169 (212) 351-3400 (Telephone) (212) 351-3401 (Facsimile) Attorneys for Defendant and Counterclaim Plaintiff UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION ASUS COMPUTER INTERNATIONAL, Plaintiff, v. ROUND ROCK RESEARCH, LLC, Defendant. ) ) ) ) ) ) ) ) ) ) Civil Action No. 3:12-cv-02099-JST DECLARATION OF JUSTIN P.D. WILCOX IN SUPPORT OF ROUND ROCK’S MOTION TO STRIKE ROUND ROCK RESEARCH, LLC, Counterclaim Plaintiff, v. ASUSTEK COMPUTER INC. AND ASUS COMPUTER INTERNATIONAL, Counterclaim Defendants. ) ) ) ) ) ) ) ) ) ) ) DECLARATION OF JUSTIN P.D. WILCOX Case No. 3:12-cv-2099-JST 1 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 I, Justin P. D. Wilcox, declare: 1. I am admitted pro hac vice to this Court and an attorney with the law firm of Desmarais LLP, counsel of record for Defendant and Counterclaim Plaintiff Round Rock Research, LLC (“Round Rock”) in the above-captioned matter. I submit this declaration in connection with Round Rock’s Motion To Strike Portions of ASUS’s Expert Reports. I am fully familiar with the facts set forth below. 2. Attached hereto as Exhibit A is a true and correct copy of excerpts of the Expert Report of Dr. R. Jacob Baker Regarding the Invalidity of U.S. Patent Nos. 7,279,353 and 6,765,276. Exhibit A was served by ASUS on January 8, 2014. FILED UNDER SEAL 3. Attached hereto as Exhibit B is a true and correct copy of excerpts of the Expert Report of Dr. R. Jacob Baker Regarding the Invalidity of U.S. Patent Nos. 6,570,791, 6,845,053, and 6,930,949. Exhibit B was served by ASUS Computer International and ASUSTeK Computer Inc. (collectively “ASUS”) on January 8, 2014. FILED UNDER SEAL 4. Attached hereto as Exhibit C is a true and correct copy of excerpts of the Expert Report of Dr. R. Jacob Baker Regarding Noninfringement of U.S. patent Nos. 6,570,791, 6,765,276, 6,845,053, 6,930,949, and 7,279,353. Exhibit C was served by ASUS on January 24, 2014. FILED UNDER SEAL. 5. Attached hereto as Exhibit D is a true and correct copy of excerpts of the Rebuttal Expert Report of Keith R. Ugone, PH.D. Exhibit D was served by ASUS Computer International and ASUSTeK Computer Inc. (collectively “ASUS”) on January 24, 2014. FILED UNDER SEAL 6. Attached hereto as Exhibit E is a true and correct copy of Plaintiff and Counter Defendant ASUS’s Preliminary Invalidity Contentions Pursuant to Patent Local Rules 3-3, 3-4, & 3- 5. Exhibit E was served by ASUS on November 8, 2012. 7. Attached hereto as Exhibit F is a true and correct copy of Exhibit A the Invalidity Claim Chart against U.S. Patent No. 6,930,949 (“the ’949 Patent”) from Plaintiff’s Preliminary Invalidity Contentions Pursuant to Patent Local Rules 3-3, 3-4, & 3-5. Exhibit F was served by ASUS on November 8, 2012. DECLARATION OF JUSTIN P.D. WILCOX Case No. 3:12-cv-2099-JST 2 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. Attached hereto as Exhibit G is a true and correct copy of Exhibit B the Invalidity Claim Chart against U.S. Patent No. 6,765,276 (“the ’276 Patent”) from Plaintiff’s Preliminary Invalidity Contentions Pursuant to Patent Local Rules 3-3, 3-4, & 3-5. Exhibit G was served by ASUS on November 8, 2012. 9. Attached hereto as Exhibit H is a true and correct copy of Exhibit C the Invalidity Claim Chart against U.S. Patent No. 6,570,791 (“the ’791 Patent”) from Plaintiff’s Preliminary Invalidity Contentions Pursuant to Patent Local Rules 3-3, 3-4, & 3-5. Exhibit H was served by ASUS on November 8, 2012. 10. Attached hereto as Exhibit I is a true and correct copy of Exhibit E the Invalidity Claim Chart against U.S. Patent No. 7,279,353 (“the ’353 Patent”) from Plaintiff’s Preliminary Invalidity Contentions Pursuant to Patent Local Rules 3-3, 3-4, & 3-5. Exhibit I was served by ASUS on November 8, 2012. 11. Attached hereto as Exhibit J is a true and correct copy of Exhibit F the Invalidity Claim Chart against U.S. Patent No. 6,845,053 (“the ’053 Patent”) from Plaintiff’s Preliminary Invalidity Contentions Pursuant to Patent Local Rules 3-3, 3-4, & 3-5. Exhibit J was served by ASUS on November 8, 2012. 12. Attached as Exhibit K is a chart summarizing the references and combinations that ASUS provided pursuant to Patent Local Rules 3-3, 3-4, & 3-5. 13. Attached as Exhibit L is a chart summarizing the paragraphs in which ASUS’s expert reports contained: (1) new prior art references, new prior art combinations, or new invalidity theories not disclosed in ASUS’s Invalidity Contentions; (2) references to documents that ASUS did not produce during fact discovery and new theories based upon those documents that ASUS also did not disclose during fact discovery; and (3) information that ASUS previously claimed is protected by the attorney-client privilege. 14. Attached hereto as Exhibit M is a true and correct copy of a letter from K. Ringel to P. Bondor dated January 24, 2014 regarding the production of documents bearing the bates numbers ASUS-RR3-0175038 through ASUS-RR3-0177272. DECLARATION OF JUSTIN P.D. WILCOX Case No. 3:12-cv-2099-JST 3 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 15. Attached hereto as Exhibit N is a true and correct copy of Round Rock’s Notice of Deposition pursuant to Rule 30(b)(6) served by Round Rock on September 12, 2013. 16. Attached hereto as Exhibit O is a true and correct copy of the deposition of Mr. Kuoping “Jacky” Lu taken on December 16, 2013 in Palo Alto, California. FILED UNDER SEAL 17. Attached hereto as Exhibit P is a true and correct copy of excerpts from the Tegra 2 Data Sheet bearing bates numbers ASUS-RR3-0175460 through ASUS-RR3-0177171 that was produced by ASUS on January 24, 2014. 18. Attached hereto as Exhibit Q is a true and correct copy of excerpts from the Technical Analysis performed by Chipworks bearing bates numbers ASUS-RR3-0175059 through ASUS- RR3-0175081 that was produced by ASUS on January 24, 2014. FILED UNDER SEAL 19. Attached hereto as Exhibit R is a true and correct copy of Round Rock Research LLC’s First Set of Requests to ASUS for the Production of Documents and Things (Nos. 1-57) served by Round Rock on September 28, 2012. 20. Attached hereto as Exhibit S is a true and correct copy of ASUS’s Supplemental Response to Round Rock’s First Set of Interrogatories (No. 6) served by ASUS on December 4, 2013. FILED UNDER SEAL 21. Attached hereto as Exhibit T is a true and correct copy of excerpts of the deposition of Mr. Howard E. Rhodes taken on December 12, 2013 in Palo Alto, California. FILED UNDER SEAL 22. Attached hereto as Exhibit U is a true and correct copy of correspondence sent by T. Chang to J. McDavit on December 10, 2013. I declare under penalty of perjury that the foregoing is true and correct. Executed on February 14, 2014, in New York, New York. /s/ Justin P.D. Wilcox Justin P.D. Wilcox