UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, DC. Before The Honorable E. James Gildea Administrative Law Judge

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1 UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, DC Before The Honorable E. James Gildea Administrative Law Judge IN THE MATTER OF CERTAIN WIRELESS CONSUMER ELECTRONICS DEVICES AND COMPONENTS THEREOF Investigation No. 337-TA-853 RESPONDENTS SIERRA WIRELESS, INC.'S AND SIERRA WIRELESS AMERICA, INC.'S OPPOSITION TO COMPLAINANTS' MOTION TO AMEND THE COMPLAINT Pursuant to Commission Rules , and , Respondents Sierra Wireless, Inc. and Sierra Wireless America, Inc. hereby oppose Complainants' Motion to Amend the Complaint ("Mot. Amend") (Dkt. No ) (Oct. 2, 2012). Complainants acknowledge that they failed to comply with Commission Rule (a)(5), which requires a complaint to include a summary of all litigation concerning the asserted patent. Complainants claim that they "inadvertently omitted" from their Complaint four civil actions "potentially related to patent ownership rights." Mot. Amend at 5. 1 Even if the claim of inadvertence is accepted, Complainants have not demonstrated good cause for their failure to disclose this litigation in their original Complaint. Moreover, allowing Complainants' proposed amendment would prejudice the rights of the Respondents to this Investigation, the public interest, and, most importantly, the Commission, which was deprived of the opportunity to consider the import of this litigation in deciding whether to institute this investigation. 1 All page numbers cited herein are from the Memorandum of Points and Authorities in support of Complainants' Motion to Amend.

2 Complainants wish the ALJ to accept, and excuse, that they or their counsel were unaware of or forgot even about a state court proceeding in which inventorship and ownership of the Asserted Patent are hotly contested and in which Complainant TPL recently filed a cross complaint. There is no good cause to allow Complainants to cure their failure to comply with Commission Rule Complainants' belated attempt to disclose highly relevant litigation through a proposed amendment to the Complaint cannot cure the problem. Complainants' motion should be denied and the investigation, terminated. I. COMPLAINANTS CANNOT SATISFY THE STANDARD NECESSARY TO JUSTIFY AMENDING THE COMPLAINT A. Amending a Complaint Requires a Showing of Good Cause and an Absence of Prejudice Commission Rule (b)(1) states, in part: "After an investigation has been instituted, the complaint or notice of investigation may be amended only by leave of the Commission for good cause shown and upon such conditions as are necessary to avoid prejudicing the public interest and the rights of the parties to the investigation." 19 C.F.R (b)(1) (emphasis added). A complainant "bears the burden of establishing the existence of good cause to make the requested amendment." Certain Silicon Microphone Packages and Products Containing the Same, Inv. No. 337-TA-695, Order No. 14 at 1 (Apr. 2, 2010) (citing Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller Semiconductor Devices and Products Containing Same, Inv. 337-TA-395, Order No. 18 at 1 (Aug. 27, 1997)). "Generally, good cause exists for amending a complaint after institution when new information is obtained during discovery that was not known to a complainant prior to institution." Certain Devices With Secure Communication Capabilities, Components Thereof & Products Containing the Same, Inv. No. 337-TA-818, Order No. 9: Denying Motion to Amend the Complaint, 2012 WL , at *1 (May 24, 2012) (emphasis added) (citing Certain NOR and NAND Flash Memory Devices and 2

3 Products Containing Same, Inv. No. 337-TA-560, Order No. 4, 2006 WL , at *2 & n.4 (Apr. 25, 2006) ("Flash Memory Devices")). "The complainant must demonstrate why it was unable to assert the new allegations at an earlier point." Certain Portable Electronic Devices & Related Software, Inv. No. 337-TA-797, Order No. 39: Denying Complainant's Motion for Leave to Amend the Complaint and Notice of Investigation, 2011 WL , at *2 (Mar. 5, 2011) (citing Certain Liquid Crystal Display Modules, Products Containing Same, and Methods for Using the Same, Inv. No. 337-TA-634, Order No. 5 at 2 (Aug. 6, 2008)). A motion should "be denied if the complainant seeks to amend its complaint to add information that was known to complainant prior to institution of the investigation." Id. (citing Certain Shirts with Pucker-Free Seams, Inv. No. 337-TA-517, Order No. 6, at 2 (Dec. 8, 2004) (denying a motion to amend the complaint and stating "it is not clear that Complainants have made a timely motion to amend the complaint... because it is not clear that Complainants obtained new information during discovery that was not known to them prior to institution.")). Complainants rely on Flash Memory Devices to argue that motions to amend are "routinely granted." Mot. Amend at 2, citing 337-TA-560, Order No. 4 ("Timely motions to amend the complaint.... are routinely granted.") (emphasis in original). However, by using ellipses to omit key language from the quoted portion of that opinion, Complainants failed to reveal that Flash Memory Devices actually says that only certain categories of motions to amend are routinely granted - not the type of amendment sought here WL , at *2 ("Timely motions to amend the complaint to add additional respondents or assert new claims from the patent at issue are routinely granted.") (emphasis added). Complainants further ignore that this type of amendment (adding respondents or claims) is typically, if not universally, based 3

4 on new information not in the possession of the complainants at the time of filing of the complaint. See, e.g., Certain Video Displays, Components Thereof, & Products Containing the Same, Inv. No. 337-TA-687, Order No. 12 (Jan. 8, 2010) (Mot. Amend at 3) (allowing complainant to amend the complaint to add new parties as respondents in view of information obtained during discovery). Complainants' motion involves completely different circumstances. Complainants also erroneously rely on cases in which minor, ministerial corrections to a complaint were permitted by way of a motion to amend. In Certain Insect Traps, Inv. No TA-498, Order No. 7 (April 7, 2004) (Mot Amend at 3), the complainant was permitted to amend its complaint to reflect its proper state of incorporation; the real party in interest had always been in the investigation and the state of incorporation had no effect on any other issue relevant to institution of the investigation by the Commission. Similarly, in Certain Connecting Devices ("Quick Clamps") for Use with Modular Compressed Air Conditioning Units, Including Filters, Regulators, and Lubricators ("FRL's") That Are Part of Larger Pneumatic Systems and the FRL Units They Connect, Inv. No. 337-TA-587, Order No. 8 (Aug. 6, 2007) (Mot. Amend at 3) the complainant was allowed to amend the public version of its complaint by redacting CBI from a particular paragraph. Again, this had no effect on any issues relevant to institution by the Commission. Each of the cases cited by Complainants is readily distinguishable, and none involves a similar fact pattern to that here. B. Complainants Cannot Show the Required Good Cause or an Absence of Prejudice The facts here do not warrant granting Complainants' Motion to Amend. Complainants have not discovered new information subsequent to the institution of the Investigation, and they 4

5 have prejudiced the parties, the public interest and the Commission by failing to disclose highlyrelevant information that was known to them at the time of filing the original Complaint. Complainants claim they made an "honest mistake" in omitting several civil actions involving the asserted patent from their Complaint due to counsel's focus on "the identification of patent infringement" litigations. Mot. Amend at 6-7 (emphasis added). Whether Complainants were forthright should be considered in light of the fact that Complainants did identify other litigation in which patent inventorship and ownership was at issue but that litigation had settled. See Compl Complainants also argue that their failure to disclose relevant litigation was "due to the number of related litigation matters and their complexity." Mot. Amend at 7. The high volume of cases involving the asserted patent cannot be an acceptable excuse, particularly because a complainant controls when it files its complaint. See Certain Semiconductor Chips with Minimized Chip Package Size & Products Containing Same (III), Inv. No. 337-TA-630, Order No. 15 at 2 (May 2, 2008) ("Complainant, had the benefit and advantage of the timing of the filing of the Complaint, while Respondents did not."); Flash Memory Devices, Order No. 21 (Aug. 15, 2006) ("Complainant had complete control of the timing of filing the complaint and it could have waited to file the complaint after it received information... in order to have a good faith basis to assert..."); Certain Absorbent Garments, Inv. No. 337-TA-508, Order No. 13 (Aug. 9, 2004) ("Section 337 cases are on tight deadlines. Complainants have a certain advantage over Respondents in deciding the timing of when to file a complaint after performing a pre-filing inquiry."). Long before filing of the complaint, Complainants knew about the existence and significance of other litigations bearing on ownership of the patent at issue. "This alone negates any 'good cause' argument." Certain Computer Forensic Devices & Products Containing the 5

6 Same, Inv. No. 337-TA-799, Order No. 21: Denying Motion to Amend the Complaint & Notice of Investigation, 2012 WL , at *2 (Feb. 16, 2012) (citing Certain Elec. Power Tools, Battery Cartridges & Battery Chargers, Inv. No. 337-TA-284, Order No. 21 (Dec. 8, 1988) (denying motion to amend the complaint "[i]n view of the fact that complainant knew or should have known of the existence of these proposed respondents several months ago").) Prior to filing the Complaint, Complainants were fully aware that Complainant Technology Properties Limited, LLC ("TPL") is a named defendant in a state court litigation in which ownership of U.S. Patent No. 5,809,336 (the "'336 Patent or "Asserted Patent") is challenged. In fact, that case was remanded from federal court to state court on January 20, 2011, and is in active litigation. See Ex. A (containing Moore v. Technology Properties Limited, LLC, et al., No. 5:10-cv JW, Order Granting Plaintiff's Motion to Remand (N.D. Cal. Jan. 20, 2011)). In that litigation, Charles H. Moore (one of the named inventors of the '336 Patent) alleges that TPL and its executives wrongfully converted ownership of the Asserted Patent by filing assignment papers with the USPTO without his permission and pursuant to the terms of a fraudulently procured contract. Id. at 3. Additionally, Complainant TPL filed a cross-complaint in that case in January of this year. See Ex. B (containing Moore v. Technology Properties Limited, LLC, et al., 1-10-cv , Cross-Complaint (Jan. 17, 2012). Even if the ALJ were to accept that Complainants' counsel did not know about this and the other litigations, Complainants' counsel could have found out about these litigations in any number of ways for example, by searching the internet or PACER. See Mot. Amend at 7 (Complainants admit these were publicly available cases). More importantly, the client, Complainant TPL, certainly knew about these cases, and counsel could just have asked Daniel E. Lekrone, Chairman and CEO of Complainant TPL (and an attorney), who verified the Complaint in this Investigation and is a 6

7 named defendant in at least one of the litigations that Complainants now seek to identify in their proposed amended Complaint. The only reasonable conclusion is that Complainants knowingly withheld information about these other litigations from the Commission, despite a clear obligation to provide it. See 19 C.F.R (a)(5) (the complaint shall... "[i]nclude a statement as to whether the alleged unfair methods of competition and unfair acts, or the subject matter thereof, are or have been the subject of any court or agency litigation, and, if so, include a brief summary of such litigation"). Not only did Complainants withhold this information, they furthermore asserted that, outside of the numerous litigations identified in their Complaint, "[t]here have been no other court or agency actions, domestic or foreign, involving the Asserted Patent." See Complaint, 155. II. ALLOWING COMPLAINANTS TO AMEND WILL PREJUDICE THE PARTIES, THE PUBLIC INTEREST, AND, MORE IMPORTANTLY, THE COMMISSION A. Amending the Complaint at this Time Would Prejudice the Public Interest Complainants argue that their proposed amendment will not affect the procedural schedule and that there remains a sufficient amount of time in discovery. Complainants further argue that the amendment is for the "sole purpose" of making a "complete and accurate record of the related litigation." Mot. Amend at 8. However, these arguments completely miss the point. Complainants cannot cure the prejudice caused by this omission simply by amending the complaint. Commission Rule exists for the purpose of affording the Commission the opportunity to consider all the facts before deciding whether to institute at all, whether to conduct a preliminary investigation, the timing of institution, the scope of the Investigation, and whether to issue any specific instructions to the ALJ upon institution. Failure to disclose all relevant litigation deprived the Commission of highly relevant information during the pre- 7

8 institution phase, thereby "prejudicing the public interest." See Commission Rule (b)(1). This cannot be cured by a belated amendment. B. Complainants' Motion to Amend the Complaint Is Moot in Light of Sierra Wireless' Motion to Terminate for Complainants' Violation of Their Duty of Candor As set forth in Sierra Wireless' Motion to Terminate for Complainants' Violation of Their Duty of Candor (Dkt. No ) (Sep. 28, 2012), the information Complainants withheld from the Commission in their Complaint, which they now seek to amend, goes directly to the fundamental question of standing whether Complainants own all rights to the Asserted Patent. Complainants assert mootness in their Opposition to Sierra Wireless' Motion to Terminate for Complainants' Violation of Their Duty of Candor ("Opp. Terminate") at 13 (Oct. 10, 2012). However, mootness bears more properly on the question addressed in this pleading that is, whether Complainants should be allowed to amend their Complaint at all. The existence of the undisclosed litigations is material information that was withheld by Complainants, or their counsel, with an intent to mislead the Commission. Complainants have an omission which cannot be cured by a simple amendment. Complainants' omission of relevant litigation from the original Complaint was a breach of Complainants' duty of candor to the Commission as articulated in Certain Indomethacin, Inv. No. 337-TA-183, ancillary proceeding, Comm'n Order at 1 (June 30, 1988) and adopted in Concealed Cabinet Hinges and Mounting Plates, Inv. No. 337 TA 289, Comm'n Op., 1990 WL at *4-5 (Jan. 8, 1990) ("Hinges") (the "Hinges-Indomethacin standard"). No amount of amending the Complaint at this time can undo that damage. Complainants have argued that Sierra Wireless' reliance on Hinges, as well as Certain Woodworking Accessories, 337-TA-383, Order No. 16, 1992 WL (Feb. 20, 1992) and Certain Woodworking Accessories, 337-TA-383, Ancillary Proceeding, RD, 1993 WL

9 (Dec. 13, 1993) is misplaced because those cases are no longer good law. See, generally, Opp. Terminate. As support, they have argued that these cases were never cited again after 1993 "for the proposition that there exists a supplemental pre-institution duty of candor." Id. at Complainants are mistaken. 2 In 1997, ALJ Luckern presided over an investigation in which respondents sought sanctions against a complainant. Certain Hardware Logic Emulation Systems & Components Thereof, 337-TA-383, Order No. 32, 1997 WL (July 8, 1997). ALJ Luckern addressed both the Hinges-Indomethacin standard and Commission Rule In moving for sanctions, the respondents relied on both standards, arguing that complainant's "counsel has an independent duty" and that "the client must verify the facts alleged," citing both Hinges and Commission Rule Id. at *4. In denying relief, ALJ Luckern made a specific finding that "the underlying facts in Hinges and Woodworking are clearly distinguishable from the underlying facts [here]." Id. at *12. Thus, ALJ Luckern applied the Hinges-Indomethacin standard a different standard from that found in Commission Rule in 1997, well after the 1994 Final Rules implemented Commission Rule See 59 F.R (Aug. 1, 1994). It is apparent that ALJ Luckern did not view the 1994 Final Rules to have eviscerated the separate duty of candor under the Hinges-Indomethacin standard, but instead recognized that dual standards exist. 2 The Staff makes the same argument. OUII Staff's Oppositions to Sierra Wireless' Motion to Terminate at 3, n.2. 9

10 III. CONCLUSION For all of the foregoing reasons, Sierra Wireless asks that Complainants' Motion to Amend be denied. Dated: October 12, 2012 Respectfully submitted, /s/ Tom M. Schaumberg Tom M. Schaumberg, Esq. David H. Hollander, Jr., Esq. Katherine R. Lahnstein, Esq. ADDUCI, MASTRIANI & SCHAUMBERG, LLP 1133 Connecticut Avenue, NW, Twelfth Floor Washington, DC Telephone: R. Mark Halligan, Esq. NIXON PEABODY 300 S. Riverside Plaza, 16th Floor Chicago, IL Telephone: Facsimile: Christopher Mooney, Esq. NIXON PEABODY 2 Palo Alto Square 3000 El Camino Real, Suite 500 Palo Alto, CA Telephone: Facsimile: Counsel for Respondents Sierra Wireless, Inc. and Sierra Wireless America, Inc. SIERRA docx 10

11 EXHIBIT A

12 Case5:10-cv JW Document36 Filed01/20/11 Page1 of Charles H. Moore, IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION NO. C JW United States District Court For the Northern District of California v. Plaintiff, Technology Properties Limited, LLC, et al., Defendants. / I. INTRODUCTION ORDER GRANTING PLAINTIFF S MOTION TO REMAND; DENYING DEFENDANTS MOTIONS AS MOOT Charles H. Moore ( Plaintiff ) brings this action against Defendants 1 alleging, inter alia, breach of contract, fraudulent promise and conspiracy to commit fraud. Plaintiff alleges that Defendants retained the licensing proceeds from a portfolio of patents which Plaintiff owned without paying royalties to Plaintiff, in contravention of the parties agreement. Presently before the Court are: (1) Defendants Motion to Compel Arbitration; 2 (2) Defendants Motion to Dismiss Plaintiff s Complaint; 3 and (3) Plaintiff s Motion to Remand Removed Action. 4 The Court finds it appropriate to take the Motions under submission without oral 1 Defendants are Technology Properties Limited, LLC ( TPL ), Alliacense LLC ( Alliacense ), Daniel Edwin Leckrone ( DE Leckrone ), Daniel McNary Leckrone ( DM Leckrone ) and Michael Davis ( Davis ). 2 (Docket Item No. 9.) 3 (Docket Item No. 11.) 4 (hereafter, Motion to Remand, Docket Item Nos. 20, 21.)

13 Case5:10-cv JW Document36 Filed01/20/11 Page2 of argument. See Civ. L.R. 7-1(b). Based on the papers submitted to date, the Court GRANTS Plaintiff s Motion to Remand and DENIES Defendants Motions. II. BACKGROUND A. Factual Allegations In a Complaint filed on September 27, 2010, 5 Plaintiff alleges as follows: TPL is a California limited liability company with its principle place of business in Santa Clara and Alliacense is a Delaware limited liability company that is a wholly owned subsidiary of TPL. (Complaint 1-2.) DE Leckrone and DM Leckrone are licensed California attorneys, and the Chairman of the Board of TPL and the President of Alliacense, respectively. (Complaint 3-4.) Davis was the Executive Vice President of Licensing for United States District Court For the Northern District of California Alliacense. (Id. 5.) Plaintiff and DE Leckrone began a continuing attorney-client relationship sometime prior to October 2002, when DE Leckrone assisted Plaintiff in reacquiring rights to certain patents Plaintiff owned and negotiating an employment contract between Plaintiff and a third-party company. (Id ) Eventually, Plaintiff began negotiation of an agreement whereby DE Leckrone, through TPL, would agree to commercialize Plaintiff s patent portfolio by licensing the patents to third party companies. (Id. 19.) Plaintiff believed that the commercialization agreement he signed only granted TPL the right to license Plaintiff s patent portfolio on Plaintiff s behalf. (Id. 25.) While the licensing efforts met with substantial initial success, Defendants failed to make regular royalty payments or to provide Plaintiff with an accounting of revenues and expenses, in contravention of the commercialization agreement. (Complaint ) Revenues generated by the licensing of Plaintiff s patent portfolio were diverted to support TPL s business expansion into the acquisition and licensing of unrelated patent portfolios. (Id ) Further, Defendants began incurring unreasonable business expenses which were passed through to Plaintiff. (Id.) Plaintiff eventually re-negotiated with Defendants 5 (Notice of Removal, Ex. A at 47-75, hereafter, Complaint, Docket Item No. 1.) 2

14 Case5:10-cv JW Document36 Filed01/20/11 Page3 of and agreed to a written amendment to the original commercialization agreement which restructured how expenses and payments were to be distributed between Plaintiff and Defendants. (Id ) On September 27, 2006, Defendants breached the commercialization agreement and continue to be in breach of the agreement to this day. (Complaint 47, 111.) Defendants ongoing breach of the obligations set forth in the commercialization agreement and the amendment include: (1) wrongful conversion of all right, title and interest in the most valuable patents in Plaintiff s portfolio through the filing of assignment papers with the United States Patent and Trademark Office; (2) failure to make royalty payments; (3) failure to provide quarterly operating statements and balance sheets; (4) failure to exert reasonable United States District Court For the Northern District of California efforts to commercialize Plaintiff s patent portfolio; (5) failure to advise Plaintiff of any licenses entered into involving Plaintiff s patent portfolio; and (6) failure to provide a contractually mandated security interest in Plaintiff s patent portfolio. (Id.) On the basis of the allegations outlined above, Plaintiff alleges eight causes of action: (1) Cancellation of Instrument by Means of Fraud of Attorney as to all Defendants; (2) Cancellation of Instrument by Means of Mistake or Misrepresentation as to all Defendants; (3) Rescission of the Commercialization Agreement as to Defendants TPL and DE Leckrone; (4) Rescission of Amendment One to the Commercialization Agreement as to Defendants TPL and DE Leckrone; (5) Conspiracy to Commit Fraud as to all Defendants; (6) Breach of Contract as to Defendants TPL and Alliacense; (7) Constructive Trust and Accounting as to Defendants TPL and DE Leckrone; and (8) Preliminary and Permanent Injunction as to all Defendants. B. Procedural History On September 27, 2010, Plaintiff filed this Complaint in the Superior Court of California for the County of Santa Clara. (Notice of Removal 1, Docket Item No. 1.) On October 5, 2010, Defendants TPL and Alliacense were served. (Id. 2.) On October 20, 2010, Defendants removed the action to federal court alleging original jurisdiction under 28 U.S.C and (Id. 3.) Specifically, Defendants alleged that the claims asserted in the Complaint arise under federal law, 28 3

15 Case5:10-cv JW Document36 Filed01/20/11 Page4 of and Plaintiff s right to relief on the claims alleged necessarily depends on the resolution of substantial questions of federal patent law. (Id.) Presently before the Court are various Motions by the parties. As Plaintiff s Motion to Remand may be dispositive, the Court will address this Motion first. III. STANDARDS If, prior to final judgment, the district court discovers its lack of subject matter jurisdiction, it must remand the case. 28 U.S.C. 1447(c). A defendant seeking removal of an action to federal court bears the burden of establishing grounds for federal jurisdiction. Quinones v. Target Stores, No. C , 2005 U.S. Dist. LEXIS 31915, at *4 (N.D. Cal. Nov. 23, 2005). Removal statutes are construed restrictively. Ethridge v. Harbor House Restaurant, 861 F.2d 1389, 1393 (9th Cir. United States District Court For the Northern District of California ). Doubts as to removability are resolved in favor of remanding the case to state court. Shamrock Oil & Gas Corp. v. Sheets, 313 U.S. 100, (1941); Gaus v. Miles, Inc., 980 F.2d 564, 566 (9th Cir. 1992). IV. DISCUSSION A. Motion to Remand Plaintiff moves to remand this action to state court on the ground that none of Plaintiff s eight causes of action arise under federal patent law. (Motion to Remand at 6-7.) Defendants contend that Plaintiff has alleged claims that require the application and determination of federal patent law. 6 Title 28 U.S.C. 1338(a) provides that the district courts shall have original and exclusive jurisdiction of any civil action arising under any act of Congress relating to patents. Section 1338(a) jurisdiction extends only to those cases in which a well pleaded complaint establishes either [(1)] that federal patent law creates the cause of action or [(2)] that the plaintiff s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well pleaded claims. Christianson v. Colt Indus. Operating 6 (Defendants Opposition to Plaintiff s Motion to Remand Removed Action at 1, hereafter, Opposition, Docket Item No. 26.) 4

16 Case5:10-cv JW Document36 Filed01/20/11 Page5 of Corp., 486 U.S. 800, (1988). If on the face of a well-pleaded complaint there are reasons completely unrelated to the provisions and purposes of the patent laws why the plaintiff may or may not be entitled to the relief it seeks, then the claim does not arise under those laws. Id. at 810 (internal citations and quotations omitted). It is well settled that if the [plaintiff] pleads a cause of action based on rights created by contract, or on the common law of torts, the case is not one arising under the patent laws. Jim Arnold Corp. V. Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed. Cir. 1997) (citations omitted). 7 Here, the Court finds that none of Plaintiff s claims meet the test set forth in Christianson for jurisdiction under federal patent law. Plaintiff s claims and the damages Plaintiff seeks are based solely on state law. For example, Plaintiff seeks relief from the parties contract on the grounds of United States District Court For the Northern District of California fraud and mistake 8 or rescission of the agreement. 9 In addition, Plaintiff seeks damages that arise under state law causes of action including breach of contract 10 and conspiracy to commit fraud. 11 Further, Plaintiff seeks imposition of a constructive trust 12 and an injunction See also Prize Frize, Inc. v. Matrix, Inc., 167 F.3d 1261, 1264 (Fed. Cir. 1999), abrogated by statute on other grounds, (finding allegations that defendant s unfair, unlawful and collusive actions deprived the plaintiff of its ownership of four patents did not arise under federal patent law and thus deprived Federal Circuit of appellate jurisdiction); Tech. Licensing Corp. v. Intersil Corp., No , 2009 U.S. Dist. Lexis , at *1-3 (N.D. Cal. Dec. 18, 2009) (finding that remand was proper because, although the parties dispute arose from a patent license agreement, the plaintiff s complaint asserted only breach of contract and related state law claims). 8 See Cal. Civ. Code See Cal. Civ. Code See Cal. Civ. Code See Cal. Civ. Code 3294(a). 12 See Cal. Civ. Code 2223, 2224; Communist Party v. 522 Valencia, Inc., 35 Cal. App. 4th 980, 990 (Cal. App. 1995). 13 See Cal. Civ. Code 3420, et seq; Cal. Code. Civ. Proc. 527(a). Finally, to the extent there is a conflict regarding ownership of the patent portfolio, that too is a matter for the state court, as claims concerning patent ownership do not create federal jurisdiction. See Jim Arnold Corp.,

17 Case5:10-cv JW Document36 Filed01/20/11 Page6 of F.3d at Thus, federal patent law does not create any of Plaintiff s causes of action, nor does Plaintiff s right to relief necessarily depend on resolution of a substantial question of patent law. Defendants rely on U.S. Valves, Inc. v. Dray 14 and Smith v. Healy 15 as support for the contention that Plaintiff s claims are preempted by federal patent law. (Opposition at 7.) The Court finds both cases distinguishable. In U.S. Valves, the plaintiff, an exclusive patent licensee, alleged the defendant licensor breached the license by selling patented products. 212 F.3d at The Federal Circuit held that the licensee s right to relief required an interpretation of the patents in order to determine if the sold products were covered by the licensed patents. Id. Similarly, the plaintiffs in Smith, [sought] general damages for [d]efendants production of [p]laintiff s product without [p]laintiffs permission rather than seeking enforcement of a royalty agreement U.S. Dist. United States District Court For the Northern District of California LEXIS , at *22. Here, unlike U.S. Valves or Smith, Plaintiff does not allege that Defendants sold any allegedly infringing product, but instead alleges that Defendants were engaged in efforts to commercialize Plaintiff s inventions by way of licensing efforts. Plaintiff is seeking relief from a contract which he alleges was entered into by means of fraud or mistake, or alternatively, damages for Defendants failure to abide by the terms of that contract. Thus, no analysis or construction of the patents is required. Rather, the analysis will involve consideration of state law principles such as contract formation and performance. Accordingly, the Court GRANTS Plaintiff s Motion to Remand B. Motion to Compel Arbitration and Motion to Dismiss Defendants move to compel arbitration on the ground that the parties agreement included a provision requiring submission of any dispute arising under the agreement to binding arbitration. 16 In addition, Defendants move to dismiss Plaintiff s Complaint on the grounds that Plaintiff fails to allege sufficient facts to state any claim against DE Leckrone, DM Leckrone, Davis or Alliacense F.3d 1368 (Fed. Cir. 2000). 15 No , 2010 U.S. Dist. LEXIS (D. Or. Oct. 7, 2010). 16 (Memorandum of Points and Authorities in Support of Defendants Motion to Compel Arbitration at 1, Docket Item No. 9.) 6

18 Case5:10-cv JW Document36 Filed01/20/11 Page7 of and that Plaintiff fails to allege any claim for injunctive relief, cancellation or rescission. 17 In light of the Court s decision to remand this action to state court, the Court DENIES Defendants Motions as moot. V. CONCLUSION The Court GRANTS Plaintiff s Motion to Remand and DENIES Defendants Motion to Compel Arbitration and Motion to Dismiss as moot. The Clerk shall immediately remand this case to the Superior Court of California, County of Santa Clara and close this file. Each party shall bear their own fees and costs. 9 United States District Court For the Northern District of California Dated: January 20, 2011 JAMES WARE United States District Chief Judge (Memorandum of Points and Authorities in Support of Defendants Motion to Dismiss Pursuant to F.R.C.P. Rule 12(b)(6) at 1, Docket Item No. 11.) 7

19 Case5:10-cv JW Document36 Filed01/20/11 Page8 of THIS IS TO CERTIFY THAT COPIES OF THIS ORDER HAVE BEEN DELIVERED TO: Jon Mark Thacker jthacker@ropers.com Kenneth Harlin Prochnow kprochnow@chilesprolaw.com Lita Monique Verrier lverrier@rmkb.com Michael J. Ioannou mioannou@rmkb.com Robert Clive Chiles rchiles@chilesprolaw.com 5 6 Dated: January 20, 2011 Richard W. Wieking, Clerk By: /s/ JW Chambers Elizabeth Garcia Courtroom Deputy United States District Court For the Northern District of California

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38 CERTIFICATE OF SERVICE I hereby certify that a copy of the foregoing RESPONDENTS SIERRA WIRELESS, INC.'S AND SIERRA WIRELESS AMERICA, INC.'S OPPOSITION TO COMPLAINANTS' MOTION TO AMEND THE COMPLAINT was served to the parties, in the manner indicated below, this 12 th day of October 2012: The Honorable Lisa R. Barton Acting Secretary U.S. INTERNATIONAL TRADE COMMISSION 500 E Street, SW, Room 112-A Washington, DC The Honorable E. James Gildea Administrative Law Judge U.S. INTERNATIONAL TRADE COMMISSION 500 E Street, S.W. Washington, DC Whitney Winston, Esq. Investigative Attorney Office of Unfair Import Investigations U.S. INTERNATIONAL TRADE COMMISSION 500 E Street, S.W. Washington, DC VIA ELECTRONIC FILING VIA HAND DELIVERY 2 Copies VIA ELECTRONIC MAIL (whitney.winston@usitc.gov) COUNSEL FOR COMPLAINANTS TECHNOLOGY PROPERTIES LIMITED LLC and PHOENIX DIGITAL SOLUTIONS LLC James C. Otteson, Esq. AGILITY IP LAW, LLP 149 Commonwealth Drive Menlo Park, CA Michelle G. Breit, Esq. James R. Farmer, Esq. OTTESON LAW GROUP AGILITY IP LAW, LLP North 87 th Street, Suite 190 Scottsdale, AZ VIA ELECTRONIC MAIL (TPL853@agilityiplaw.com)

39 COUNSEL FOR COMPLAINANT PATRIOT SCIENTIFIC CORPORATION Charles T. Hoge, Esq. KIRBY NOONAN LANCE & HOGE LLP 350 Tenth Avenue, Suite 1300 San Diego, CA COUNSEL FOR RESPONDENTS AMAZON.COM, INC., ACER INC., ACER AMERICA CORPORATION AND NOVATEL WIRELESS, INC. Eric C. Rusnak K&L GATES LLP 1601 K Street, NW Washington, DC Michael J. Bettinger K&L GATES LLP Four Embarcadero Center, 12th Floor San Francisco, CA Michael J. Abernathy K&L GATES LLP 70 West Madison Street, Suite 3100 Chicago, IL VIA ELECTRONIC MAIL (choge@knlh.com) VIA ELECTRONIC MAIL (AcerAmazonNovatel_ITC853@klgates.com) COUNSEL FOR RESPONDENT BARNES & NOBLE, INC. Paul F. Brinkman QUINN EMANUEL URQUHART &SULLIVAN, LLP 1299 Pennsylvania Avenue NW, Suite 825 Washington, DC VIA ELECTRONIC MAIL (BN-853@quinnemanuel.com) COUNSEL FOR RESPONDENT GARMIN LTD, GARMIN INTERNATIONAL, INC. AND GARMIN USA, INC. Louis S. Mastriani ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P Connecticut Avenue, NW, 12 th Floor Washington, DC VIA ELECTRONIC MAIL (Garmin-853@adduci.com) Adam P. Seitz ERISE IP, P.A College Boulevard, Suite 300 Overland Park, KS VIA ELECTRONIC MAIL (garmin-853@erise.com) 2

40 COUNSEL FOR RESPONDENTS HTC CORPORATION AND HTC AMERICA, INC. Stephen R. Smith COOLEY LLP Freedom Drive Reston, VA Heidi Keefe COOLEY LLP Five Palo Alto square 3000 El Camino Real Palo Alto, CA COUNSEL FOR RESPONDENT HUAWEI TECHNOLOGIES CO., LTD. VIA ELECTRONIC MAIL Timothy C. Bickham STEPTOE & JOHNSON LLP 1330 Connecticut Avenue, NW Washington, DC VIA ELECTRONIC MAIL COUNSEL FOR RESPONDENTS KYOCERA CORPORATION AND KYOCERA COMMUNICATIONS, INC. M. Andrew Woodmansee David C. Doyle MORRISON &FOERSTER LLP High Bluff Drive San Diego, CA G. Brian Busey MORRISON &FOERSTER LLP 2000 Pennsylvania Ave., NW, Suite 6000 Washington, DC Scott Elengold FISH & RICHARDSON P.C K Street, N.W., Suite 1100 Washington, D.C VIA ELECTRONIC MAIL (Kyocera-TPL-ITC@mofo.com) COUNSEL FOR RESPONDENTS LG ELECTRONICS, INC. AND LG ELECTRONICS U.S.A., INC. VIA ELECTRONIC MAIL (LG-TPLITCService@fr.com) 3

41 COUNSEL FOR RESPONDENTS NINTENDO CO., LTD. AND NINTENDO OF AMERICA INC. Stephen R. Smith COOLEY LLP Freedom Drive Reston, VA Thomas J. Friel, Jr. COOLEY LLP 101 California Street, 5 th Floor San Francisco, CA Matthew Brigham COOLEY LLP Five Palo Alto Square 3000 El Camino Real Palo Alto, CA COUNSEL FOR RESPONDENTS SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG ELECTRONICS AMERICA, INC. Andrew Valentine DLA PIPER LLP (US) 2000 University Avenue East Palo Alto, California COUNSEL FOR RESPONDENTS ZTE CORPORATION AND ZTE (USA) Jay H. Reiziss BRINKS HOFER GILSON & LIONE 1850 K Street, NW, Suite 675 Washington, DC William H. Frankel BRINKS HOFER GILSON & LIONE NBC Tower, Suite N. Cityfront Plaza Drive Chicago, IL VIA ELECTRONIC MAIL (Nintendo-TPL@cooley.com) VIA ELECTRONIC MAIL (853-DLA-Samsung- Team@dlapiper.com) VIA ELECTRONIC MAIL (Brinks-853-ZTE@brinkshofer.com) OTHER RESPONDENTS Huawei North America 5700 Tennyson Parkway, Suite 500 Plano, TX VIA FIRST-CLASS MAIL /s/ Patricia L. Cotton, Senior Paralegal ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P. 4