TPL understands the order to refer to service of amended to infringement contentions.

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infringement as early as June 2006, but that the December 26 claim charts appeared to accuse

chips falling outside of the June families. Cook ¶ 24. Although TPL explained that it did not

intend the December 26 claim charts to expand beyond the previously accused families,

Defendants asked TPL to demonstrate correspondence between the previously identified families

and the chips accused of infringement (via claim charts) in December. Id.

E. TPL Prepares and Provides Information Requested By Defendants.

On February 9, 2007, as requested, TPL sent Defendants a spreadsheet providing the

requested correlation between the presently accused chips and the previously accused families,

stating that TPL believed it had provided all of the information that the Defendants needed to

make decisions as to whether or not to oppose the proposed motion to amend PICs, suggesting

that the parties reconsider using representative chips for discovery and trial, and requesting

Defendants to provide their decision by February 13, 2007. Exhs. 11, 12; Cook ¶¶ 25, 26.

F. NEC Agrees To Proceed on the Basis of Representative Parts, and Proposes

Terms of a Proposed "Stipulation to Be Entered by the Parties".

On February 18, NEC wrote that was interested in the representative chip proposal, and

said, "Assuming that we have reached closure on the product list and representative products,

NEC Electronics would like to confirm the terms of the stipulation to be entered by the parties.

NEC Electronics believes that the parties should include the following agreed terms in the

stipulation: [setting forth specific terms]." Exh. 13; Cook ¶ 27. After TPL responded to these

terms [Exh. 14], the parties held a meet and confer on March 13, in which they discussed their

various positions and any objections to the proposed representative part stipulation. Cook ¶ 27.

TPL has worked to overcome the objections of NEC and Toshiba [Id.; Exhs. 15, 16] and believes

that stipulations will be reached with these parties well in advance of the time for them to

respond to the present motion. Cook ¶ 27.

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However, MEI now flatly refuses to consent to the present motion, and refuses to

consider a representative parts stipulation. Cook, ¶ 29.

III. GOOD CAUSE EXISTS TO PERMIT PLAINTIFFS TO CORRECT THEIR

PRELIMINARY INFRINGEMENT CONTENTIONS

A. The Applicable Law.

Patent Rule 3-1 requires a party claiming patent infringement to serve a disclosure of

asserted claims and infringement contentions ("preliminary infringement contentions"8). Patent

Rule 3-1(c) provides that these contentions shall include, inter alia, "each accused apparatus,

product, device, process, method, act, or other instrumentality ('Accused Instrumentality') of

each opposing party of which the party is aware …" as well as "[a] chart identifying specifically

where each element of each asserted claim is found within each Accused Instrumentality … ."

As MEI has recognized, however, the Northern District of California, which uses the same

Patent Local Rules as the Eastern District of Texas, allows a party asserting patent infringement

to serve a single claim chart for a family of products when the single claim chart is representative

of all products within the family. See Renesas Tech. Corp. v. Nanya Tech. Corp., No. C03-

05709JFHRL, 2004 WL 2600466 (N.D. Cal., Nov. 10, 2004).

In ALT, MD. v. Medtronic, Inc., 2006 WL 278868 (E.D.Tex. February 1, 2006), Judge

Davis stated the standard for deciding a motion to supplement pursuant to Patent Rule 3-7:

Federal Rule of Civil Procedure 16(b) requires a showing of good

cause to modify dates set forth in the Court's scheduling order.

Fed.R.Civ.P. 16(b) (providing, in part, "a schedule [scheduling

order] shall not be modified except upon a showing of good cause

8 Recent amendments to the Patent Rules drop the word "preliminary;" however, since the

present motion pertains to events and filings dating back prior to the amendment, TPL has

continued to refer to "PICs" and "preliminary infringement contentions" to avoid confusion.

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and by leave of the district court…."). Patent Rules are considered

part of the Court's scheduling order; therefore, a party seeking

relief must obtain the Court's leave on a good cause showing to

modify the Patent Rule's deadlines. Patent Rule 3-7 incorporates

Rule 16(b)'s cause standard by stating amendment or modification

of the Preliminary or Final Infringement Contentions or the

Preliminary or Final Invalidity Contentions … may be made only

by order of the Court, which shall be entered only upon a showing

of good cause. The good cause standard requires the party seeking

relief to show that the deadlines cannot reasonably be met despite

the diligence of the party needing the extension. A trial court has

broad discretion in allowing scheduling order modifications. The

Court should consider four factors when determining whether to

allow a scheduling order modification: (1) the explanation for the

failure to meet the deadline; (2) the importance of the thing that

would be excluded; (3) potential prejudice in allowing the thing

that would be excluded; and (4) the availability of a continuance

to cure such prejudice.

Id. at *2 (emphasis added, internal quotations and citations omitted.)

As shown below, TPL has demonstrated the requisite good cause for amending its PICs.

B. Why TPL Did Not Provide Claim Charts For All Accused Chips Prior To

The Original Deadline

TPL filed its Original PICs without including claim charts for every accused product

because, in view of the large number of accused products, it reasonably believed all parties

would benefit by using claim charts for representative products rather than for all accused

products, and that providing claim charts for all accused products would merely add bulk without

adding useful information. Accordingly, TPL believed that using claim charts for representative

parts was a rational and practical way to streamline an otherwise complicated case. Moreover,

TPL's counsel had advantageously employed representative parts in other semiconductor patent

infringement litigation; and there is sound case authority for this approach in the Northern

District of California, which employs essentially the same local rules as this district. Indeed,

MEI acknowledged the reasonableness of TPL's approach, citing Northern District of California

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case authority [doc. # 108, p. 5], arguing only that in this particular case TPL had not

demonstrated that it was appropriate to use representative parts. Cook ¶ 16.

Presumably in view of TPL's good faith belief that using representative parts was in

reasonable compliance with the Patent Local Rules, this Court denied TPL 's original request

without prejudice to serving amended PICs in compliance with the Local Rules. Accordingly,

Plaintiffs are now requesting explicit leave to serve the claim charts and amended PICs, each of

which were provided to Defendants in December.

C. The Importance Of The Thing That Would Be Excluded

If the family member chips were excluded, this litigation would not resolve the entire

dispute between the parties. Further proceedings, such as additional patent infringement lawsuits

or contempt proceedings, would be necessary to fully adjudicate plaintiffs' infringement claims.

It would be wasteful of judicial and party resources if plaintiffs were required to assert

infringement by the remaining members of a chip family in a second lawsuit involving identical

parties in which the identical patents and identical claims would be asserted.

Moreover, Defendants assert that these claims, if not included in any judgment resulting

from the present lawsuit, would be barred from assertion in later proceedings by res judicata.

While plaintiffs disagree with this assessment, if Defendants are correct, this would reduce the

value of plaintiffs' claim by orders of magnitude, further evidencing the importance of the claims

which would be excluded if the proposed amendment were denied.

D. There Is No Prejudice To Defendants In Allowing The Amended Preliminary

Infringement Contentions

Trial is scheduled for November 3, 2007, more than seven months away. As a result,

permitting plaintiffs to correct its PICs will not necessitate a continuance of the trial.

Defendants have known that TPL was broadly accusing the presently accused chips,

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albeit identified by families rather than part numbers, since June 28, 2006. Moreover, lest

Defendants were then confused as to which part numbers are within the designated families, TPL

has since provided copies of web pages listing the specific part numbers in August, and lists of

specific part numbers in December.

Rather than suffer prejudice, Defendants have benefited by the delay, to plaintiffs'

prejudice. For example, because Defendants have known since June 28, 2006 that TPL is

accusing entire families of chips, rather than just a few representative chips, they have been able

to use this information in preparing their invalidity contentions, and in submitting requests for reexamination

of the patents-in-suit to the United States Patent and Trademark Office.9

As another example, in January, the parties exchanged proposed Markman

interpretations, and earlier this month Plaintiffs filed their opening Markman brief. As a result of

the Defendants' refusal to provide discovery with regard to the family member chips, Defendants

had the benefit of detailed knowledge concerning the accused family members in preparing their

proposed claim interpretations; whereas Plaintiffs were deprived of this detailed information in

preparing their proposed claim interpretations.

If, after receiving TPL’s Original PICs, Defendants were unsure as to whether TPL was

accusing the families of chips of infringement, Defendants should have contacted TPL for

clarification. Instead, however, Defendants allowed time to pass. Thus, Defendants cannot now

claim that TPL’s delay in submitting complete PICs somehow prejudiced them. In Orion IP,

LLC v. Staples, Inc., 407 F.Supp.2d 815 (E.D.Tex. 2006), Judge Davis refused to allow a

9 NEC submitted requests for re-examination of all three patents in suit on September 21, 2006.

Toshiba submitted requests for re-examination of two out of three of the patents in suit on

October 19, 2006.

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Defendant to claim prejudice when it failed to clarify a purported ambiguity in plaintiff’s PICs

and plaintiff’s discovery requests indicated the scope of the accused products (in Orion, a

website) was broader than that which was specifically identified in the PIC.

While the Patent Rules place a [sic] heavy burden on plaintiffs to

communicate their case to defendants so that both parties may

adequately prepare for claim construction and trial, defendants also

have a responsibility to make sure they fully understand the nature

of plaintiffs’ allegations. A defendant cannot lay behind the log

until late in the case and then claim it lacks notice as to the scope

of the case or infringement contentions. Orion’s PICs were

sufficient to put Toyota on notice that Orion intended to accuse

more than just the website’s “Model Selector” feature. Toyota

knew, or should have known, this and could have easily sought

clarification either informally or by motion. It did neither, and

now seeks to use its alleged lack of clarification to its advantage at

this stage of the proceeding. To the extent Toyota was confused as

to the extent of the website PICs, most of the responsibility is

Toyota’s. Toyota admits it had discovery disputes with Orion as a

result of the parties’ different understandings of the scope of

Orion’s PICs, yet Toyota did not seek clarification of Orion’s

PICs. The Patent Rules intend to strike a balance of providing fair

notice to defendants without requiring unrealistic, overly factual

contentions from plaintiffs, but the burden of notice the Patent

Rules place on plaintiffs is intended to be a shield for defendants,

not a sword.

Id. at 817-18 (emphasis added.)

In keeping with the policy expressed by Judge Davis, Defendants may not use the Patent

Rules as a sword. By virtue of TPL's June 27 and June 28, 2006 letters, Defendants knew or

should have known that TPL was accusing the families of chips of infringement and were

explicitly told that the original PICs were intended to so assert a mere 10 days after the service of

the Original PICs. The prejudice to Plaintiffs if not permitted to correct the PICs as requested far

outweighs any prejudice to the Defendants as a result of the corrections.

In addition, Defendants' primary concern in opposing TPL's Motion To Correct PICs was

that claim charts for representative chips were not in fact representative of claim charts for their

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corresponding chip families for purposes of infringement. By providing claim charts for all of

the accused products, this concerned is obviated.

Moreover, the proposed amendment will clarify any confusion that may presently exist as

to which products are being accused of infringing which claims of the patents-in-suit.

Thus, the present Motion To Amend PICs will actually eliminate, rather than cause,

prejudice to the Defendants.

E. Only MEI Flatly Opposes the Proposed Amended PICs

After initially acknowledging the appropriateness of using representative parts [doc. #

108, p. 5 ("Of course, it would be acceptable to provide a single chart for a series of products

when there is a fair basis to believe that the separate products are the same for purposes of

infringement."); TPL Reply, doc. # 122, p. 3], and seeming to participate in the representative

parts discussions,10 MEI now flatly refuses a negotiated resolution of the present motion.

IV. CONCLUSION

TPL requests explicit leave to serve the proposed amended PICs and claim charts

provided to Defendants in December, as permitted by this Court's November 7 Order.

DATED: March 26, 2007 Respectfully submitted,

By: /s/ Roger L. Cook

S. Calvin Capshaw, State Bar No. 03783900

BROWN McCARROLL, LLP

ccapshaw@mailbmc.com

1127 Judson Road, Suite 220

P.O. Box 3999

Longview, Texas 75601-5157

Telephone: (903) 236-9800

Facsimile: (903) 236-8787

10 MEI never raised unique objections and did not announce that it intended to oppose that

approach until prior to the March 13 meet and confer telephone conference. Cook, ¶ 29.

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CASE NO.2:05CV494

JONES AND JONES INC., P.C.

Franklin Jones, Jr. (State Bar No. 00000055)

201 West Houston Street, P.O. Drawer 1249

Marshall, TX 75671-1249

Telephone: (903) 938-4395

Facsimile: (903) 938-3360

maizieh@millerfirm.com

IRELAND CARROLL AND KELLEY, P.C.

Otis W. Carroll, State Bar No. 03895700

nancy@icklaw.com

6101 South Broadway, Suite 500

P.O. Box 7879

Tyler, Texas 75711

Telephone: (903) 561-1600

Facsimile: (903) 561-1071

TOWNSEND and TOWNSEND and CREW LLP

Roger L. Cook, CA State Bar No. 55208

rlcook@townsend.com

Eric P. Jacobs, CA State Bar No. 88413

epjacobs@townsend.com

Byron W. Cooper, CA State Bar No. 166578

bwcooper@townsend.com

Iris S. Mitrakos, CA State Bar No. 190162

ismitrakos@townsend.com

Two Embarcadero Center, 8th Floor

San Francisco, California 94111

Telephone: (415) 576-0200

Facsimile: (415) 576-0300

Attorneys for Plaintiff

TECHNOLOGY PROPERTIES LIMITED, INC.

61013658 v1

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CERTIFICATE OF SERVICE

I hereby certify that counsel of record who are deemed to have consented to electronic

service are being served this 26th day of March, 2007, with a copy of this document via the

Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be served

by electronic mail, facsimile transmission and/or first class mail on this same date.

/s/ Roger L. Cook ______

Roger L. Cook

CERTIFICATE OF CONFERENCE

As set forth above, counsel for Plaintiff has communicated with counsel for Defendants

in an attempt to reach an agreement regarding the submission of a corrected PIC. However, as

yet, no agreement has been reached. Therefore, this motion is presently opposed.

/s/ Roger L. Cook ______

Roger L. Cook

61013658 v1

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