EDWARD V. KING, BAR evking@kingand KING & KELLEHER, LLP Four Embarcadero Center, S San Francisco CA 94 11 I Telephone: 4 15.

78 1.2888 Facsimile: 41 5.781.301 1 Kevin P. Anderson (D.C. B kanderson@wileyrein.co WILEY REIN LLP 1776 K Street NW Washington, DC 20006 Telephone: 202.7 19.7000 Facsimile: 202.7 19.7049 Attorney for ARM Ltd. and ARM, Inc. URT FOR TH NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DlVISION

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ARM, LTD. AND ARM, IN

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laintiffs, v.

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ARM LTD. AND ARM, INC.'S COMPLAINT FOR DECLARATORY JUDGMENT

efendants.

Plaintiffs ARM, Ltd. a~)d ARM, Inc. (collectively "ARM") for their Complaint for Declaratory Judgment against efendant MOSAID Technologies Inc. ("MOSAID"), hereby follows: NATURE OF THE ACTION

1 demand a jury trial and allege

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P e
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This is an actio for declaratory judgment of non-infringement and invalidity of er the Declaratory Judgment Act, 28 U.S.C. $9 2201-02, and the U.S.C.

seven United States Patents patent laws of the United

5 1 et seq., and for such other relief as the Court

deems just and proper.

THE PARTIES
2. ARM, Ltd. and ARM, Inc. are subsidiaries of ARM Holdings plc. ARM, Ltd. is a

corporation organized under :he laws of the England and Wales, with its principal place of businesses in Cambridge, England.
3.

ARM, Inc. is r, subsidiary of ARM Holdings plc and a corporation organized under

the laws of California, with its principal place of business in San Jose, California. 4. by Based on asse~.tions Defendant MOSAID, Defendant MOSAID is a corporation

duly organized and existing uhder the laws of Ontario, Canada, having a principal place of business at 1 1 Hines Road, Si.ite 203, Kanata, Ontario K2K 2x1, Canada. MOSAID is in the business of patent acquisition and enforcement, and has filed patent law suits in district courts in several venues in the United

ACKGROUND OF THE DISPUTE

5. This action arises in connection with a set of seven United rports either to own or to be the. exclusive licensee thereof, These for which certain rights were purportedly procured through and two patents for which MOSAID is listed on the patents (collectively the "Asserted Patents") States Patent Nos. 5,577,230 (the " '230 Patent"); (the " '036 Patent"); 6,141,762 (the " '762 Patent"); 6,256,725 (the " '725 Patent"). 7. The MOSAID are United States Patent Nos. 7,05 1,306 (the " '306 Patent")

States patents that MOSAID seven patents consist of five LSI Corporation (the "LSI as the assignee (the

and 7,4 15,680 (the " '680

8.

MOSAID

received the rights from LSI Corporation to be the exclusive time period of 10 years commencing from May 2007

licensee of the LSI from LSI 2007I070508.php.

9.

LSI

corporate headquarters are at 1621 Barber Lane, Milpitas, CA

95035, which is [Jnited States Patent Nos. 7,05 1,306 (the " '306 Patent") to the face of the Mosaid Patents, the persons in Cupertino, CA and San Jose, CA which are both located in this District. According to the face of the Mosaid Patents, the assignee of these patents was "MOSAID Technologies Corporation, Sunnyvale CA (US)." Sunnyvale is located within this District.

1 1.

For at least 2 years, MOSAID has been harassing ARM'S customers/licensees with

threats of infringement based, at least in part, upon the inclusion of ARM processor cores in the customers'/licensees' products. 12. ARM is a leading designer of processors used in cellular telephones, handheld

computers and numerous other electronic products requiring low power consumption and small size. ARM processor designs are incorporated into the integrated circuits of products sold all over the world. 13.
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ARM designs processors that can be embedded into and form a component of

larger integrated circuits and licenses these processor designs to other companies that make and sell larger integrated circuits, hich are commonly referred to as processor "chips." The processor design supplied by "processor core." These core For example, the ARM9 "family" would include cores 14. To help mainta is commonly referred to as the ARM "core" or ARM known by the generation or "family" of the design. the ARM926EJ-S core. A newer ARM 1 1 as the ARM1 136EJ-S core. competitive position, ARM invests heavily in research and the last year alone. One of ARM'S primary U.S. facilities is San Jose facility employs over 300 scientists, engineers, in addition to numerous sales, marketing and support

development--over $100 located in San Jose, and other

ARM, LTD. AND ARM, INC.'S COMP AlNT FOR DECLARATORY JUDGMENT

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15.

Because AR 's business depends upon the utilization of its processor cores by its cores, ARM is sensitive to accusations of patent are concerned by allegations that their current andor

customers which license its

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infringement. ARM'S

future products incorporatind ARM processor cores might infringe a patent. Thus, it is important For ARM to address any clo$ of uncertainty created by allegations of infringement from MOSAID.
16.

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This action ar ses out of threats or actions taken by MOSAID to ARM'S customers

related to products andlor se ices provided by ARM to its customers. 17. ARM seeks a eclaration that (i) that its products and processor cores do not claims of the Asserted Patents; (ii) that ARM'S processor cores,

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directly or indirectly infringe

when incorporated into the pr ducts of ARM'S customers/licensees,do not directly or indirectly t any the claims of the Asserted Patents are assert the LSI Patents, and MOSAID should customers that it has standing to assert the LSI Patents. OSAID has threatened include at least Freescale Semiconductor, In Semiconductors (the "Thre 19. MOSAID h cts with the Threatened Customers including etings that occurred in this District. resentatives travelled to Santa Clara, CA, which is in this District, to pr September 24,2009, accusations of infrin infringement against NVIDIA on or around VIDIA Corporation, ST Microelectronics, and NXP

communications to and

1 20,2010. At those times, MOSAID made

of one or more of the Asserted Patents by ores. MOSAID similarly travelled to this

District on or arou claims of one or

cusations of infringement of one or more VIDIA products which include ARM

ARM, LTD. AND ARM, INC.'S COMP AlNT FOR DECLARATORY JUDGMENT -4-

processor cores. 2 1.

Similarly, on r around June 3,20 1 0, MOSAID representatives made accusations

of infringement of one or mo e claims of one or more of the Asserted Patents by ST Microelectronics products w ich included ARM processor cores. 22. During these dresentation to ARM'S licensees/customers, MOSAID present

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various claim charts purporti g to demonstrate that certain products containing ARM processing cores infringed one or more c aims of one or more of the Asserted Patents. These presentations cited to one or more docurne ts generated by ARM as purported evidence of the alleged infringement.
23.

MOSAID cont nued its harassment campaign by recently filing a lawsuit asserting

1n

patent infringement of the As erted Patents against Freescale Semiconductor, Inc. and NVIDIA Corporation. See Mosaid Tec nologies lnc. v. Freescale Semiconductor, Inc., et al, Case No.
6: 1 1-cv-00 173 (EDTX). 24.

ARM did not

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e any technology in the Asserted Patents in the design,

development or implementati n of ARM'S products. ARM has not infringed and does not

d Patents. Indeed, MOSAID distorts the Asserted Patents by infringe any claims of the ~ssbrted

applying them in a manner thdt is not supported by and is contrary to the patents' claims, disclosures and histories, in

customers/licensees to which 25.

ARM has certain obligations to one or more of the Threatened Customers which

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improper scheme to extract royalties from ARM andlor ARM'S OSAID plainly is not entitled.

include certain obligations to i demnify its customers under certain conditions for threats of patent infringement liability w ich implicate products, including processor cores, supplied by ARM.
26.

By making acc sations of patent infringement against products of the Threatened

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Customers which include AR

processor cores, MOSAID has made at least an implicit assertion

that ARM has indirectly infrin ed one or more claims of one or more of the Asserted Patents.
27.

Upon informatign and belief, MOSAID's agreement to acquire rights in the LSI

ARM, LTD. AND ARM, INC.'S COMP AlNT FOR DECLARATORY JUDGMENT

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Patents did not transfer sufti ient rights to permit MOSAID to unilaterally assert the LSI Patents. As such, MOSAID is believed to have been impermissibly stating and/or implying to ARM customers that it has the legal standing to tile suit on the LSI Patents by itself when it does not. 28. MOSAID's th .eats and actions against ARM'S customers, under all the

circumstances, show that there is a substantial controversy, between ARM and MOSAID having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

JURISDICTION AND VENUE

29. This Court has subject matter over these Counterclaims pursuant to 28 U.S.C.

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133I, 1338, and 2201 and the patent laws of the Unites States, 35 U. S. C. 8 I, et seq. 30. 1400(b). 3 1. Venue is proper in this judicial district under 28 U.S.C.

$8

1391(b), (c), (d), and

MOSAID is su ject to the personal jurisdiction of this Court because, among other activities to this District, previously maintained offices in

reasons, it has purposefully this District in which one

to purportedly exclusively lice se one or more of the asserted patents with a company which has its corporate headquarters in t is District, has participated in meetings in this District in which it asserted infringement of these atents, and has previously availed itself of this Court to enforce its patents.

the Asserted Patents were developed, entered into contracts

to Santa Clara, CA, which is in this District, to present accusations of patent i February 24,20 10, and April infringement of one or more which include ARM to this District on or around July 13,2010 and repeated accusations of Patents by NVIDIA of one or more claims of one or more of the Asserted ARM processor cores. against NVIDIA on or around September 24,2009, those times, MOSAID made accusations of or more of the Asserted Patents by NVIDIA products

ARM. LTD. AND ARM, INC.'S COMP AlNT FOR DECLARATORY JUDGMENT

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34.

MOSAID, inc/uding its subsidiaries, has previously sought the assistance of this alleged patent rights. See Mosaid Technologies, Inc. v. Micron 8-cv-4494-JF; Micron Technoloa, Inc. v. Mosaid Technologies (counterclaim plaintiff). Upon informat on and belief, MOSAID previously maintained offices in this

Court in attempts to enforce Technolop, Inc., Case No. Inc., Case No. 35.

District including oftices in S nnyvale, CA and Santa Clara, CA, at which activities related to one or more of the Asserted P tents are believed to have occurred. 36. The persons n ed as inventors on the face of the MOSAID Patents reside in

Cupertino, CA and San Jose, A which are both located in this District. 37. The assignee li ted on the face of the MOSAID patents is "MOSAID Technologies

Corporation, Sunnyvale CA ( S)." Sunnyvale, CA is located within this District. 38. The LSI Patent are owned by LSI Corporation, which has its headquarters located

at 1621 Barber Lane, Milpitas CA 95035, which is in this District. 39. This is an intell ctual property action and therefore may be assigned on a districtnotes for the Court that at least one of the Asserted Patents (the

wide basis. Nevertheless, A

'725 Patent) appears to implic te the same accused ARM functionality as a case current pending in this Court before the ~ o n o r l b l e Jeremy Fogel captioned Nazomi Communications Inc. v. Nokia, et ol, Case No. 5: 10-C$-4686. It is ARM'S understanding that Judge Fogel is leaving the bench and that this Nazomi c will be assigned to a different judge in this District.

e "4" a

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DECLARATORY JUDG ENT OF NONINFRINGEMENT OF THE LSI PATENTS

40. ARM incorpora es and realleges the allegations of paragraphs 1-39 above as if set

forth fully herein. 41.

1ents as a result of MOSAID's assertions of infringement by MOSAID regarding the LSI P

A valid and just ciable controversy has arisen and exists between ARM and ARM'S customers related to A@ processor cores. ARM desires a judicial determination and declaration of the respective ridhts of the parties regarding the LSI Patents.

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COUNT 1

42. 43.

ARM has not irectly or indirectly infringed any claim of the LSI-Patents. ARM'S custo ersllicensees, to the extent they have incorporated ARM'S have not directly or indirectly infringed any claim of the LSI

processor cores into their pro Patents.

COUNT 2 DECLARATORY
44.

OF INVALIDITY OF THE LSI PATENTS

ARM incorpor tes and realleges the allegations of paragraphs 1-43 above as if set

forth fully herein. 45.

A valid and jus iciable controversy has arisen and exists between ARM and

MOSAID regarding the LSI P tents as a result of MOSAID's assertions of infringement by ARM'S customers related to declaration of the respective 46. Each claim o RM processor cores. ARM desires a judicial determination and of the parties regarding the LSI Patents. SI Patents that MOSAID asserts is infringed either by or cores is invalid under one or more provisions of 35 U. S. C. $9

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through the use of ARM pr 102, 103,and 112.

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DECLARATORY JUDG
47. ARM inco

COUNT 3 OF NONINFRINGEMENT OF THE MOSAID PATENTS

nd realleges the allegations of paragraphs 1-46 above as if set

forth hlly herein. 48. A valid an le controversy has arisen and exists between ARM and atents as a result of MOSAID's assertions of infringement by processor cores. ARM desires a judicial determination and f the parties regarding the MOSAID Patents. or indirectly infringed any claim of the MOSAID Patents. nsees, to the extent they have incorporated ARM'S ve not directly or indirectly infringed any claim of the

MOSAID regarding the ARM'S customers related to declaration of the respec 49. 50. ARM ha ARM'S

processor cores into th MOSAID Patents.

ARM, LTD. AND ARM, INC.'S COMP AlNT FOR DECLARATORY JUDGMENT

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DECLARATORY JU GMENT OF INVALIDITY OF THE MOSAlD PATENTS

5 1.

ARM incorpor tes and realleges the allegations of paragraphs 1-50 above as if set

forth fully herein. 52.

A valid and jus iciable controversy has arisen and exists between ARM and

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COUNT 4

MOSAID regarding the MOS ID Patents as a result of MOSAID's assertions of infringement by ARM's customers related to RM processor cores. ARM desires a judicial determination and declaration of the respective ri ~ h t of the parties regarding the MOSAID Patents. s

53.

Each claim oft e MOSAID Patents that MOSAID asserts is infringed either by or

through the use of ARM proc sor cores is invalid under one or more provisions of 35 U. S. C.

58 102, 103, and 112.

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COUNT 5 DECLARATORY JUDGMENT OF LACK OF STANDING BY MOSAID T o ASSERT THE LSI PATENTS

54.

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

forth fully herein. 55.

A valid and just'ciable controversy has arisen and exists between ARM and

MOSAID regarding the LSI P tents as a result of MOSAID's assertions of infringement by ARM's customers related to A M processor cores. ARM desires a judicial determination and declaration of the respective ri hts of the parties regarding the LSI Patents.
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56. itself.

MOSAID lacks tanding to unilaterally assert one or more of the LSI Patents by

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COUNT 6 DECLARATORY JUDGM NT REGARDING DAMAGES FOR ANY INFRINGEMENT OF ANY VALID CLAIM

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57.

ARM incorpora es and realleges the allegations of paragraphs 1-56 above as if set

forth fully herein.

ARM, 1,TD. AND ARM, INC.'S COMP AlNT FOR DECLARATORY JUDGMENT -9-

58.

A valid and jurjticiable controversy has arisen and exists between ARM and

MOSAID regarding the Asse ed Patents as a result of MOSAID's assertions of infringement by ARM'S customers related to RM processor cores. ARM desires a judicial determination and declaration of the respective r ghts of the parties regarding the Asserted Patents. 59. Any claim by OSAID for damages related to infringement based upon ARM a royalty base, the amount received by ARM for those cores.

processor cores would have,

REQUEST FOR RELIEF WHEREFORE, ARM requeits that this Court:

a.
b.

declare that thd Asserted Patents are invalid; declare that A@M has not infringed and is not directly or indirectly infringing any

claim of the Asserted Patents; 1 c. declare that M's customers/licensees have not infringed and are not directly or of the Asserted Patents insofar as they include ARM processor

indirectly infringing any cores in their products; d. e. declare that prohibit

SAID lacks standing to assert the LSI Patents; from asserting or implying to customers of ARM that it has the of the LSI Patents on its own; under 35 U.S.C. 8 285 and award ARM is in connection with this action; and and further relief as to which it may be entitled.

legal right to file suit f. attorneys' fees, costs, and exp g. award ARM

ARM, LTD. AND ARM, INC.'S COMP AINT FOR DECLARATORY JUDGMENT

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Dated: August 5, 201 1

r

I:DWARD V. KING. -0.

cvking(i$kinyandkell~he&om

85726

KING & KELLEC-IER, LLP Four Embarcadero Center, Seventeenth Floor San Francisco CA 94 1 1 I Phone: (41 5) 78 1-2888 Facsimile: (4 15) 78 1-30 1 1
KEVIN P. ANDERSON (pro htrc vice) kanderson@wileyrein.com WILEY REIN LLP 1 776 K Street NW Washington, DC 20006 Phone: (202) 7 19-7000 Fax: (202) 7 19-7049

1 Attorneys for ARM LTD. and ARM, Inc.

ARM. LTD. A N D ARM, INC.'S C O M P ~ A I N T FOR DECLARATORY JUDGMENT

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