case5:08-cv-00877-psg document395 filed02/04/13 page1 of 3photos.imageevent.com/banos/t3/declaration...

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

DECLARATION OF HAROLD DAVIS ISO MOTION FOR ORDER SHORTENING TIME

CASE NO. 5:08-CV-00877 PSG

Timothy P. Walker (SBN 105001) [email protected] L. Howard Chen (SBN 257393) [email protected] Harold H. Davis, Jr. (SBN 235552) [email protected] Jas Dhillon (SBN 252842) [email protected] K&L GATES LLP Four Embarcadero Center, Suite 1200 San Francisco, California 94111 Tel: (415)882-8200 Fax: (415)882-8220 Jeffrey M. Ratinoff (SBN 197241) [email protected] K&L GATES LLP 630 Hansen Way Palo Alto, CA 94304 Telephone: (650) 798-6700 Facsimile: (650) 798-6701 Attorneys for Plaintiffs ACER INC., ACER AMERICA CORPORATION and GATEWAY, INC.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION ACER INC., ACER AMERICA CORPORATION AND GATEWAY, INC. Plaintiffs,

vs. TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION, AND ALLIACENSE LIMITED, Defendants.

Case No.: 5:08-CV-00877 PSG DECLARATION OF HAROLD DAVIS IN SUPPORT OF PLAINTIFFS’ MOTION TO COMPEL DEFENDANTS TO PRODUCE A 30(B)(6) WITNESS FOR CERTAIN TOPICS

Date: March 12, 2013 Time: 10:00 a.m. Dept: Courtroom 4, 5th Floor Before: Hon. Paul S. Grewal

(Requesting February 12, 2013 Hearing Date)

Case5:08-cv-00877-PSG Document395 Filed02/04/13 Page1 of 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

1 DECLARATION OF HAROLD DAVIS ISO MOTION FOR ORDER SHORTENING TIME


I, Harold Davis, declare:

1. I am an attorney licensed to practice law before all courts in the State of California,

and the United States District Court for the Northern District of California. I am an attorney at K&L

Gates LLP in its San Francisco, California office and I, along with other attorneys at K&L Gates

LLP, am attorney of record for Acer Inc., Acer America Corporation and Gateway, Inc. (collectively

“Acer”). I submit this declaration in support of Acer’s Motion to Compel Defendants’ to Produce a

30(b)(6) witness for certain topics.

2. I have personal knowledge of the matters set forth herein except as to those matters set

forth on information and belief, and as to those I am informed and believe them to be true and could

and would competently testify thereto.

3. Attached as Exhibit 1 to this declaration is a true and correct copy of TPL’s Revised

Patent Local Rule 3-1 Disclosure of Asserted Claims and Preliminary Infringement Contentions,

dated February 11, 2009.

4. Attached as Exhibit 2 to this declaration is a true and correct copy of TPL’s Corrected

Amended Patent Local Rule 3-1 Preliminary Infringement Contentions, dated June 24, 2010.

5. Acer served a 30(b)(6) Deposition Notice on January 8, 2013. Attached as Exhibit 3

to this declaration is a true and correct copy of Acer’s 30(b)(6) Deposition notice to Defendants. The

parties subsequently met and conferred over the identity of TPL’s witnesses, the topics for those

witnesses and the location and timing of the depositions.

6. On January 18, 2013, Defendants served objections to Acer’s deposition notice.

Attached as Exhibit 4 to this declaration is a true and copy of TPL’s objections to Acer’s 30(b)(6)

deposition notice.

7. On January 28, 2013, TPL identified its 30(b)(6) witnesses but did not identify any

witness for topics 31, 55, 56, and 62.

8. Attached as Exhibit 5 is a true and correct copy of a January 28, 2013 e-mail from

TPL’s lead counsel Jim Otteson identifying certain 30(b)(6) topics that TPL had designated Dan

Leckrone to testify about.


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 DECLARATION OF HAROLD DAVIS ISO MOTION FOR ORDER SHORTENING TIME



TPL’s lead counsel Jim Otteson identifying certain 30(b)(6) topics that TPL had designated Dwayne

Hannah to testify about.


TPL’s lead counsel Jim Otteson identifying certain 30(b)(6) topics that TPL had designated Mac

Leckrone to testify about.

11. On January 29, 2013, I sent an e-mail to TPL to inform it that TPL had not nominated

a witness for topics 31, 55, 56, and 62. I also requested a meet-and-confer on the issue. Attached as

Exhibit 8 is a true and correct copy of the January 29, 2013 e-mail I sent.

12. TPL never responded to the request for a meet and confer.

I declare under penalty of perjury under the laws of the United States that the foregoing is true

and correct.

Executed on February 4, 2013, at San Francisco, California.

By: /s/ Harold Davis /s/ Harold Davis


EXHIBIT 1

Case5:08-cv-00877-PSG Document395-1 Filed02/04/13 Page1 of 7

EXHIBIT 2


Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor

San Francisco, CA 94104 (415) 954-4400

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

AMENDED PLR 3-1 INFRINGEMENT CONTENTIONS CASE NO. 5:08-CV-0877 JF

23129\2293072.1

John L. Cooper (State Bar No. 050324) [email protected]

Stephanie P. Skaff (State Bar No. 183119) [email protected]

Eugene Y. Mar (State Bar No. 227071) [email protected]

Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 Telephone: (415) 954-4400 Facsimile: (415) 954-4480

Attorneys for Defendants TECHNOLOGY PROPERTIES LIMITED and ALLIACENSE LIMITED

Charles T. Hoge, Esq. (State Bar No. 110696) [email protected]

Kirby Noonan Lance & Hoge 35 Tenth Avenue San Diego, CA 92101 Telephone: (619) 231-8666 Facsimile: (619) 231-9593

Attorneys for Defendant PATRIOT SCIENTIFIC CORPORATION



SAN JOSE DIVISION

ACER, INC., ACER AMERICA CORP., and GATEWAY, INC.,

Plaintiff, v.

TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION, and ALLIACENSE LIMITED,

Defendants.

Case No. 5:08-CV-0877 JF

CORRECTED AMENDED PATENT LOCAL RULE 3-1 PRELIMINARY INFRINGEMENT CONTENTIONS

The Hon. Jeremy Fogel

Pursuant to Patent Local Rule 3-1, Technology Properties Limited, Patriot Scientific

Corporation, and Alliacense Limited (collectively “TPL”) hereby submit the accompanying

Amended Disclosure of Asserted Claims and Preliminary Infringement Contentions in support of

their allegations of infringement of the patents-in-suit against Plaintiffs and Counterclaim

Defendants Acer, Inc., Acer America Corp., and Gateway, Inc. (collectively “Acer”) to disclose



San Francisco, CA 94104 (415) 954-4400

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 - 23129\2293072.1

pursuant to Patent Local Rule 3-1(b) additional Accused Instrumentalities identified by TPL that

infringe the ‘749, ‘148, and ‘890 Patents.

TPL’s discovery and investigation in this action is continuing, and includes every product

made, used, sold, offered for sale, or imported into the United States by Acer that utilizes a

microprocessor. In particular, these contentions are based on information presently available to

TPL. Accordingly, TPL reserves its right to supplement, amend, and augment the disclosures

made herein as new, additional, or different information is learned and discovered.

A. Asserted Claims (Patent L.R. 3-1(a)).

TPL asserts the following claims:

Claims 1, 6, 7, 9, 10, 11, 13, 14, 15, and 16 of the ‘336 Patent;

Claims 1, 9, 18, 23, 24 of the ‘749 Patent;

Claims 4, 6, 7, 11, 13 of the ‘148 Patent; and

Claims 1, 2, 3, 7, 9 of the ‘890 Patent.

The previously produced data discs labeled Bates Nos. TPL0008274, TPL0072429, and

TPL0556370 contain exemplar claim charts for various classes of the Accused Instrumentalities

that infringe the asserted claims. Concurrent with this disclosure, TPL is producing a disc labeled

as TPL0556371 containing claim charts for additional Accused Instrumentalities that infringe the

‘749, ‘148 and ‘890 Patents. This identification of asserted claims is based on information

reasonably available to TPL at this time. TPL reserves the right to supplement its accused claims

based on information developed in the course of this lawsuit through discovery or additional

factual investigation, in view of the Court’s claim construction order, or as other circumstances

may require.

B. Accused Instrumentalities (Patent L.R. 3-1(b)).

TPL alleges that Acer directly infringes the patents-in-suit. TPL further alleges that Acer

infringes the patents-in-suit indirectly by inducing others to infringe or by contributing to

infringement by others. The accused instrumentalities in this action include any of Acer’s

products that implement the technology described in the claims of the patents-in-suit (including



San Francisco, CA 94104 (415) 954-4400

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 - 23129\2293072.1

prior and subsequent versions of products identified below that implement the technology

described in the claims of the patents-in-suit):

Acer Aspire series PCs (e.g.: M3100, E360, 7520-5823, 1690, 3510, X3200, AOA150-

1570, 5620, 5670) (‘336, ‘749)

Acer Ferrari series PCs (e.g.: 1000, 4000, 5000, 1004WTMi) (‘336)

Acer Travelmate Tablet series PCs (e.g.: C210, 6292-6700, 3260, 4200, 4210, 4270,

4670) (‘336)

Acer Veriton series PCs (e.g.: 3600, 5600, 7600GT, L410) (‘336)

Acer Servers (e.g.: Altos G510, G330 Mk2) (‘336)

Gateway Desktop PCs (e.g.: GM5664, DX441X, GT5670, FX541X, ZX190, ASE380-

UD48) (‘336)

Gateway Notebook PCs (e.g.: C-141X, M-151X, P-172S FX, M-6750, T-6321, 3610GZ,

CX200S-1008549, CX200X - 1008573, M280 - 1008547, S-7200C - 1008588) (‘336,

‘749)

Acer Notebook PCs (e.g.: 3240, 3280, 3290) (‘336)

Acer eMachines Desktop (e.g.: W3653) (‘336)

Gateway Displays (e.g.: HD2200) (‘336)

Acer USB Flash Drives (e.g.: Q80602) (‘336)

Navigon Handheld Devices (e.g.: 2100, 5100, 7100) (‘336, ‘749, ‘890, ‘148)

Acer Portable Navigator / Travel Companion Devices (e.g.: p600, E300, c500) (‘336,

‘148)

Acer Smartphones (e.g.: DX900) (‘336)

Gateway Digital Still Cameras (e.g.: DC-T50) (‘749)

Acer Projectors (e.g.: PD726W, PH530) (‘749)

Gateway Servers (e.g.: E9515R) (‘890)

In this Amended Disclosure, TPL additionally identifies the following previously accused

instrumentalities of infringing additional patents-in-suit:

Acer Rackmount Server Altos R710 (‘890)



San Francisco, CA 94104 (415) 954-4400

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 - 23129\2293072.1

Acer GPS Navigator P600 (‘890)

Acer GPS Navigator Travel Companion e300 (‘890)

Acer PDA Travel Companion C500 (‘890)

TPL additional identifies the following new, accused instrumentalities:

Acer Projector P3250 (‘749, ‘890)

This identification of Accused Instrumentalities is based on information reasonably

available to TPL at this time. TPL reserves the right to supplement its listing of Accused

Instrumentalities based on information developed in the course of this lawsuit through discovery

or additional factual investigation, in view of the Court’s claim construction order, or as other

circumstances may require.

C. Charts Identifying Where Each Element of Each Asserted Claim is Found (Patent L.R. 3-1(c)).

TPL has produced data discs labeled Bates Nos. TPL0008274, TPL0072429, and

TPL0556370 that include supporting references and representative claim charts, which identify

where each element of the asserted claims of the patents-in-suit are found within one or more of

the Accused Instrumentalities identified above. TPL has also produced all the reexamination

proceeding papers for the MMP portfolio and a copy of the ‘336 Patent with the Ex Parte

Reexamination Certificate (TPL0545727-TPL0556369). Concurrent with this amended

disclosure, TPL is producing a disc labeled Bates No. TPL0556371 that include supporting

references and representative claim charts, which identify where each element of the asserted

claims of the ‘749, ‘148, and ‘890 patents are found within the Accused Instrumentalities that

were not previously disclosed in this litigation.

These claim charts are based on information reasonably available to TPL at this time.

TPL is likely to have additional contentions and evidentiary support regarding the Plaintiff’s

infringement after a reasonable opportunity for further investigation and discovery. TPL reserves

the right to supplement these claim charts, or add additional claim charts, based on information

developed in the course of this lawsuit through discovery or additional factual investigation, in

view of the Court’s claim construction order, or as other circumstances may require.



San Francisco, CA 94104 (415) 954-4400

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 - 23129\2293072.1

D. Infringement of the Asserted Claims (Patent L.R. 3-1(e)).

TPL contends that each element of the asserted claims is literally infringed by the

Accused Instrumentalities. In the event that a claim element is not found to be literally present in

the Accused Instrumentalities, TPL asserts that the Accused Instrumentalities infringe under the

doctrine of equivalents.

E. Priority Dates of the Asserted Patents (Patent L.R. 3-1(f)).

Each asserted claim of the ’336, ’148 and ’890 Patents claims a priority date of August 3,

1989, when Application No. 389,334 was filed.

Each asserted claim of the ’749 Patent claims a priority date of August 3, 1989, when the

application that led to its issuance was filed.

F. Identification of TPL’s Products that Incorporate or Reflect the Asserted Claims (Patent L.R. 3-1(g)).

TPL, through its Intellasys brand, has sold millions of dollars of products implementing

the MMP Portfolio technology, including the asserted claims of the patents-in-suit. These

products include:

Product Line Model # Product Description

Intellasys Seaforth 24A Seaforth 40A

Embedded Microprocessor Embedded Microprocessor

Intellasys AR24-C18 AR40-C18

24 Core Computer Array 40 Core Computer Array

OnSpec 90C46D XSil 268 XSil 248/248B XSil 269-G XSil 258 XSil 251/251-LFXSil 259/259-LFXSil 267 XSil 261-G

USB Storage Microcontroller Flash Drive Controller Flash Drive Controller Flash Drive Controller Flash Media Controller HDD and CF Card Controller USB Controller USB Controller Storage Controller



San Francisco, CA 94104 (415) 954-4400

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 - 23129\2293072.1

Product Line Model # Product Description

Indigita iND60C32 iND60C80 iND60C70 iND60C90

A/V Content Manager AV Content Manager Storage Bridge Controller Network Controller

TPL reserves the right to supplement this list of products in view of the Court’s claim

construction ruling or as other circumstances may require. Dated: June 24, 2010 FARELLA BRAUN & MARTEL LLP

By: /s/ John Cooper John L. Cooper

Attorneys for Defendant TECHNOLOGY PROPERTIES LIMITED and ALLIACENSE LIMITED

Dated: June 24, 2010 KIRBY NOONAN LANCE & HOGE, LLP By: _/s/ Charles Hoge____________________ Charles T. Hoge Attorneys for Defendant PATRIOT SCIENTIFIC CORPORATION



San Francisco, CA 94104 (415) 954-4400

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 - 23129\2293072.1

CERTIFICATE OF SERVICE

I, the undersigned, declare:

I am a citizen of the United States and employed in San Francisco County, California. I

am over the age of eighteen years and not a party to the within-entitled action. My business

address is 235 Montgomery Street, 17th Floor, San Francisco, California 94104. On June 24,

2010, I served a copy of the following document(s):

CORRECTED AMENDED PATENT LOCAL RULE 3-1 PRELIMINARY INFRINGEMENT CONTENTIONS

by transmitting via facsimile the document(s) listed above to the fax number(s) set forth below on this date before 5:00 p.m. by placing the document(s) listed above in a sealed Federal Express envelope and affixing a pre-paid air bill, and causing the envelope to be delivered to a Federal

Express agent for delivery.

by transmitting electronically to the following person(s) as set forth below.

Timothy P. Walker, Esq. [email protected] Harold H. Davis, Jr., Esq. [email protected] Jas Dhillon, Esq. [email protected] Jeffrey M. Ratinoff, Esq. [email protected] K&L GATES LLP Four Embarcadero Center, Suite 1200 San Francisco, CA 94111-5994 Telephone: (415) 882-8200 Facsimile: (415) 882-8220

Attorneys for Plaintiffs ACER, INC., ACER AMERICA CORP., AND GATEWAY INC.

I declare under penalty of perjury that the foregoing is true and correct. Executed on June

24, 2010, at San Francisco, California.

/s/ Mindy Claros Mindy Claros


EXHIBIT 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

PLAINTIFFS’ NOTICE OF DEPOSITION PURSUANT TO FED. R. CIV. P. 30(b)(6) Case No. 5:08-cv-00877 JF

Timothy P. Walker (SBN 105001) [email protected] L. Howard Chen (SBN 257393) [email protected] Harold H. Davis, Jr. (SBN 235552) [email protected] Jas Dhillon (SBN 252842) [email protected] K&L GATES LLP Four Embarcadero Center, Suite 1200 San Francisco, CA 94111-5994 Telephone: 415.882.8200 Facsimile: 415.882.8220 Attorneys for Plaintiffs and Counterdefendants ACER, INC., ACER AMERICA CORPORATION and GATEWAY, INC.



SAN JOSE DIVISION

ACER, INC., ACER AMERICA CORPORATION and GATEWAY, INC.,

Plaintiffs, v.

TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION, and ALLIACENSE LIMITED,

Defendants.

Case No. 5:08-cv-00877 JF PLAINTIFFS ACER, INC., ACER AMERICA CORPORATION, AND GATEWAY, INC.’S NOTICE OF DEPOSITION PURSUANT TO FED. R. CIV. P. 30(b)(6)

TECHNOLOGY PROPERTIES LIMITED and PATRIOT SCIENTIFIC CORPORATION,

Counterclaimants v.

ACER, INC., ACER AMERICA CORPORATION and GATEWAY, INC.,

Counterdefendants.


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

PLAINTIFFS’ NOTICE OF DEPOSITION PURSUANT TO FED. R. CIV. P. 30(b)(6) Case No. 5:08-cv-00877 JF

1

PLEASE TAKE NOTICE that pursuant to Rule 30(b)(6) of the Federal Rules of Civil

Procedure, Plaintiffs Acer, Inc., Acer America Corporation, and Gateway, Inc. (collectively, “Acer”),

by and through their counsel, will take the deposition upon oral examination of Defendants

Technology Properties Limited, LLC’s (“TPL”), Patriot Scientific Corporation (“Patriot”), and

Alliacense Limited (collectively, “Defendants”) beginning on January 25, 2013, at 9:00 a.m., or such

other date as agreed upon by the parties, at Cooley LLP, 3175 Hanover Street, Palo Alto 94304,

California and continuing from day to day thereafter until completed. The deposition will be

conducted before an officer authorized by law to administer oaths and will be recorded by

stenographic and video means, and may also be displayed through the instant visual display of the

testimony (e.g., LiveNote).

Pursuant to Rule 30(b)(6), Defendants shall designate and produce one or more of its officers,

employees, managing agents, or other such persons as are most qualified, knowledgeable, and

competent to testify on Defendants’ behalf as to all matters known or reasonably available to

Defendants regarding the topics set forth in Section II of attached Exhibit A, in accordance with the

Definitions set forth in Section I of Exhibit A.

Acer reserves the right to seek additional testimony on the topics listed in Exhibit A in the

event that additional facts or documents become available after the conclusion of the deposition on

this Notice. Acer also reserves the right to serve subsequent Rule 30(b)(6) Notices of Deposition on

additional topics.

Dated: January 8, 2013 K&L GATES LLP

By: /s/ Timothy P. Walker Timothy P. Walker (SBN 105001)

Attorneys for Plaintiffs and Counterdefendants ACER, INC., ACER AMERICA CORPORATION, and GATEWAY, INC.


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

PLAINTIFF’S NOTICE OF DEPOSITION PURSUANT TO FED. R. CIV. 30(b)(6) 2

EXHIBIT A

I. Definitions

The following definitions are applicable to terms employed in this Notice:

1. “All” means any, all and each; “each” means all and each; and “any” means all and

each.

2. “This Litigation” refers to the action entitled Acer Corp., et al. v. TPL, et al., Case No.

5:08-cv-00877 JF, filed on February 8, 2008 and currently pending in the United States District Court

for the Northern District of California, San Jose Division.

3. “Accused Product(s)” means all products, whether manufactured or sold by Acer or

any of its licensees that allegedly fall within the scope of this litigation, and all prototypes,

derivatives, equivalents, and variations of such products.

4. “And” and “or” should be construed either disjunctively or conjunctively as necessary

to bring within the scope of the subjects set forth below all responses that might otherwise be

construed outside of its scope.

5. “Asserted Patent(s)” means U.S. Patent Nos. 5,440,749, 5,530,890, 5,809,336, and

6,598,148.

6. “Communication” means any oral, written or electronic transmittal of information or

request for information made from one person to another person, whether made in person,

electronically, by telephone or by any other means, and includes any document(s) made only for the

purpose of recording a communication, a fact, an idea, a statement, an inquiry, an opinion, a belief or

otherwise.

7. “Complaint” refers to the First Amended Complaint for Declaratory Judgment (Dkt.

No. 98) filed by Acer in This Litigation.

8. “Answer” refers to Defendants’ Answer and Counterclaim to Complaint for

Declaratory Judgment (Dkt. No. 99) filed by Defendants in This Litigation.

9. “Defendants,” “You,” or “Your” means Technology Properties Limited, LLC and each

predecessor, successor, division, subsidiary, parent, or related company thereof, whether or not

organized under the laws of the United States; Patriot Scientific Corporation and each predecessor,


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


successor, division, subsidiary, parent, or related company thereof, whether or not organized under

the laws of the United States, including but not limited to Alliacense and/or IntellaSys; and

Alliacense Limited and each predecessor, successor, division, subsidiary, parent, or related company

thereof, whether or not organized under the laws of the United States.

10 “Concerning” means concerning, regarding, describing, comprising, referring to,

related to, supporting, favoring, opposing, bolstering, detracting from, located in, considered in

connection with, bearing on, evidencing, indicating, reporting on, recording, alluding to, responding.

11. “Date” means the exact day, month, and year, if ascertainable, and, if the exact day,

month, and/or year are not ascertainable, then the best approximation thereof.

12. “Documents” is synonymous in meaning with and equal in scope to the term

“documents” in Federal Rule of Civil Procedure 34 and related case law, and encompasses all forms

and media, whether in paper, electronic, magnetic, computerized, recorded, microfilmed or other

form, whether claimed to be privileged, protected, immune from discovery, confidential, secret or

personal, including “writings,” “recordings,” “photographs,” “originals” and “duplicates,” as defined

in Federal Rule of Evidence 1001 and related case law. Any document with a comment, a notation,

any text or any other mark that was not part of the document as originally created or prepared shall be

a separate document (i.e., in addition to the original document) and the original document and the

document(s) with the comment, notation, text or other mark shall both (or all) be produced. Likewise,

a draft version (or draft), a previous or outdated version and an amended or revised version of a

document are separate documents. Thus, all draft versions, previous or outdated versions and

amended or revised versions of a document are also to be produced, in their entirety (i.e., without

abbreviation or redaction), in response to the corresponding topic or request.

13. “Identification” or “identity,” when used with respect to a person means providing: the

full name; present or last known address (specifying which); date, state and country of incorporation

or organization, if applicable; name under which incorporated or organized, if applicable; name of the

chief executive officer or person holding a comparable position, if applicable; and, if an entity, the

name of the persons within the entity having knowledge of the subject matter with respect to which

the entity is being identified.


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


14. “Patent Portfolio” means any patent assigned to, owned by, and/or developed by

Defendants, as defined herein, without limitation.

15. “Person(s)” means any individual, firm, partnership, incorporated or unincorporated

association, or any other legal or commercial entity, and shall include the owners, officers, directors,

agents, trustees, parents, or subsidiaries, affiliates, assignees, predecessors, and successors of each

such “person(s).”

16. “Prior Art” means any patent, published patent application, publication, reference,

apparatus, device, system, public knowledge, public use, sale, offer for sale, or invention relating to

the subject matter of the claims of the Asserted Patents that is dated or may have occurred prior to

any filing date for the Asserted Patents and/or Related Patents.

17. “Relate to” means, without limitation, alluding to, concerning, constituting,

containing, discussing, describing, evidencing, identifying, mentioning, in connection with,

pertaining to, referring to, respecting, regarding, responding to, or in any way factually or logically

relevant to the matter described in the topic.

18. “Related Patents” means any patent application filed in the United States or any

foreign country, including the European Patent Office or pursuant to the Patent Cooperation Treaty,

whether pending or not, that directly or indirectly claims priority to or to which priority is claimed

directly or indirectly from the Asserted Patents or any applications therefor, including without

limitation all continuation applications, divisional applications, reissue applications, reexaminations,

and all patents subsequently issued therefrom.

19. “Subject matter” means all products, processes, services, technology,

implementations, uses, and any other subject matter disclosed in, or covered by, one or more claims

of the Asserted Patents.

20. The use of the singular form of any word includes the plural, and the use of the plural

includes the singular.


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


II. Deposition Topics

1. The Answer and Defendants’ preparation of the Answer, including the factual bases

for the assertions, counterclaims, and any information consulted or reviewed in preparing the Answer.

2. Defendants’ knowledge of the Asserted Patents.

3. Defendants’ position that Acer infringes the Asserted Patents.

4. Defendants’ position that the Asserted Patents are valid or enforceable.

5. Defendants’ position that the Asserted Patents are not subject to prosecution history

estoppel.

6. Defendants’ position relating to any of Acer’s affirmative defenses to Defendants’

counterclaims.

7. Defendants’ knowledge of any underlying facts relating to Acer’s affirmative defenses

to Defendants’ counterclaims.

8. Defendants’ past and present organizational structures, including any parents,

subsidiaries, divisions, branches, predecessors or successors in business.

9. Any Defendants’ relationship with Acer, including but not limited to past and present

business and contractual relationships.

10. Defendants’ responses to Acer’s discovery requests.

11. The location of documents requested by Acer, persons having custody of such

documents, and details of all efforts made by Defendants to identify, collect and produce responsive

documents.

12. Defendants’ systems and policies for accounting, record keeping, and document

retention for purposes of litigation.

13. The past and present relationships between and among Technology Properties

Limited, Phoenix Digital Solutions LLC, Alliacense, Intellasys, TPL Micro Limited, Charles H.

Moore, Russell Fish, and Patriot Scientific Corporation, including their legal, financial, and

ownership relationship(s).

14. Defendants’ relationship with TPL Micro Limited.

15. The Asserted Patents, their disclosures, prosecution histories, and reexaminations.


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


16. The conception of the subject matter claimed in each claim of the Asserted Patents,

including but not limited to the conception date(s), the circumstances of conception, the identity of

each person who was involved in or contributed to the conception, the first written description,

depiction, and/or drawings, and Documents relating to any of the foregoing.

17. The first reduction to practice of the subject matter claimed in each claim of the

Asserted Patents, including but not limited to the date(s) of the reduction to practice, the

circumstances of the reduction to practice, the identity of each person who participated in or has

knowledge of the reduction to practice, and Documents relating to any of the foregoing.

18. Any and all diligence in the reduction to practice of the subject matter claimed in the

Asserted Patents, including but not limited to the date(s) of the diligence, the circumstances of the

diligence, the identity of each person who participated in or has knowledge of the diligence, and

Documents relating to any of the foregoing.

19. The identity of each person who was involved in or contributed to the alleged

invention(s) claimed in the Asserted Patents and the specific roles or contributions of each person to

the alleged invention(s).

20. All Documents, analysis, research and/or testing that compares the alleged

invention(s) claimed in the Asserted Patents with any prior art.

21. Charles H. Moore’s, a named inventor of the Asserted Patents, activities respecting the

ownership, research, design, development, implementation, and testing related to any claim(s) of the

Asserted Patents or products embodying any such claim(s), or the prosecution of the Asserted

Patents, and any Documents relating to the foregoing, including any communications between or

among Defendant(s) and/or Mr. Russell H. Fish III with Mr. Moore respecting the Asserted Patents.

22. Russell H. Fish III’s, a named inventor of the Asserted Patents, activities respecting

the ownership, research, design, development, implementation, and testing related to any claim(s) of

the Asserted Patents or products embodying any such claim(s), or the prosecution of the Asserted

Patents, and any Documents relating to the foregoing, including any communications between or

among Defendant(s) and/or Mr. Charles H. Moore with Mr. Fish respecting the Asserted Patents.


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


23. The first demonstration (in the U.S. and worldwide), first use (in the U.S. and

worldwide), first offer to sell (in the U.S. and worldwide) and first sale (in the U.S. and worldwide)

of any product or prototype covered by the Asserted Patents, including but not limited to the date(s)

of such demonstration, use, and/or sale.

24. The first publication or the first making available to the public (in the U.S. and

worldwide) of any product or prototype covered by any claim of the Asserted Patents or the subject

matter of the Asserted Patents, including but not limited to the date(s) of such publication or making

publicly available.

25. The disclosures in the Asserted Patents, including the factual basis for any contention

regarding whether such disclosures enable one of ordinary skill in the art to make and use the subject

matter claimed in the Asserted Patents.

26. Research and/or product development related to any claim of the Asserted Patents.

27. The prosecution and post-issuance activities (including but not limited to

reexamination proceedings) regarding the Asserted Patents, including, without limitation, any and all

parent applications, divisionals, continuations, continuations-in-part, foreign equivalents, applications

claiming the benefit of the filing date of any of the foregoing (whether abandoned or not), and

maintenance, including but not limited to the identity of the persons who drafted, reviewed,

contributed to, or were otherwise involved in the preparation, filing, prosecution, and/or

reexamination of said patent applications and maintenance of said patent (including Defendants’ prior

and present employees, agents, and attorneys).

28. The identification of all prior art or preexisting technology known to You, by any

person working at Your request, or by any person working on Your behalf, or by any third party in

connection with any analysis or consideration of the claims of the Asserted Patents.

29. All results of prior art searches, investigations or analyses conducted by You, by Your

request, or on Your behalf relating to the validity and/or enforceability of the Asserted Patents,

including but not limited to, the identity of the individuals involved in conducting prior art searches,

and Documents relating to any of the foregoing.


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


30. Your knowledge regarding the disclosure or non-disclosure of prior art (including

information relating to preexisting technology) to the USPTO in connection with the prosecution of

the applications that matured into the Asserted Patents, its parent applications, divisionals,

continuations, continuations-in-part, foreign equivalents, and applications claiming the benefit of the

filing date of any of the foregoing (whether abandoned or not) or the parent or progeny of the

Asserted Patents, including the knowledge and/or compliance with any duty of disclosure to the

USPTO respecting the Asserted Patents, by You, any other Inventors, or any other person having

such duty.

31. The identity, name, design, features, function, structure, and operation of any products

(including, without limitation, any product, apparatus, method, invention, system, service, prototype,

drawing, design, schematic, invention, embodiment or item), covered by any of the subject matter

disclosed or claimed in the Asserted Patents.

32. Your knowledge regarding any documents, publications, presentations, symposiums,

conventions, seminars and/or speeches that concern the Asserted Patents, or any of the subject matter

disclosed or claimed therein.

33. All persons who participated in or have knowledge of the research, design,

development, implementation, and testing related to any claim(s) of the Asserted Patents or products

embodying any such claim(s), and Documents relating to any of the foregoing.

34. Any attempts by You, persons employed or retained by You, or persons acting on

Your behalf to market, sell, or otherwise commercialize any product or prototype covered by the

Asserted Patents, including but not limited to the first demonstration of such product, the first use of

such product, the first sale or offer to sell or license of such product, the date(s) when You began

marketing, offering for sale, or selling such product or prototype, the identity of each person involved

in such activities, and Documents relating to any of the foregoing.

35. All facts that support or negate any assertion of commercial success (including any

facts supporting a nexus between the claims of the Asserted Patents and such success), long felt need,

prior failure to invent, unexpected results, copying, contemporaneous independent invention, prior

skepticism by experts, and praise for products that You contend are covered by the Asserted Patents.


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


36. The factual bases for any benefits that are generated by using a product or method

covered by the Asserted Patents as compared to what was known in the prior art when the

applications for the Asserted Patents were filed.

37. The claims of the Asserted Patents, including the factual basis for any contentions

regarding their scope and meaning.

38. Identification and description of the level of skill of a person of ordinary skill in the art

pertinent to the Asserted Patents at the time the claimed inventions were made.

39. Your knowledge regarding any legal action involving the Asserted Patents, including:

a. Documents, testimony, affidavit, and declaration provided or produced by You in any

legal action involving the Asserted Patents, including This Litigation.

b. Any agreement concerning the Asserted Patents.

c. Any agreement, discussions, and negotiations among Defendants.

d. Any agreement, discussions, and negotiations among Defendants and Intel

Corporation.

40. Defendants’ licensing activities and/or investments related to the Asserted Patents.

41. Any communication by, between, or among Defendants and any third party relating to

the Asserted Patents, this Litigation, or any of Acer’s alleged infringement of any of such party's

patents, including without limitation any reports, statements or analysis by such party.

42. All facts and circumstances concerning any discussions with any third party relating to

a license or potential license to the Asserted Patents.

43. Defendants’ licensing of, or attempts to license, the Asserted Patents, including all

terms and conditions of said licenses and offers related to any attempt to license, and the events and

circumstances leading to each such license.

44. Communications relating to negotiations between Defendants and any other party

regarding the Asserted Patents or technology relating to that disclosed in the Asserted Patents.

45. All facts and circumstances relating to communications by, between, or among

Defendants and any third party relating to the Asserted Patents, including claims of possible

infringement of the Asserted Patents.


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


46. All instances in which any person has asserted that the Asserted Patents are invalid or

unenforceable, including the identification of each such party asserting invalidity or unenforceability

and identification of any prior art identified by such party.

47. Patents and printed publications, including those identified as a result of any prior art

search conducted on Your behalf and those brought to Your attention by a third party, relating to the

Asserted Patents.

48. All actual, attempted, potential, or proposed agreements that refer or relate to the

Asserted Patents or technology covered (in whole or in part) by the Asserted Patents, including

licenses and/or grant of rights (including ownership rights) under the Asserted Patents.

49. Defendants’ licensing policies, practices and procedures, including without limitation

policies, practices and procedures relating to patent licenses.

50. Any legal action initiated or threatened by Defendants involving the Asserted Patents,

including any settlement or other disposition of such actions.

51. Defendants’ licensing activities, license agreements, and related activities, including

without limitation:

a. the identity of all entities that Defendants’ have entered into a license with for the

Asserted Patents and the identity of all licensed products that practice the Asserted Patents;

b. the identity of any employee, consultant, or contractor of any Defendants with

knowledge about this topic.

52. The circumstances---including but not limited to, all discussions and/or negotiations,

past or ongoing; all purchase, transfer, divestiture, or assignment agreements; all transfer of title or

ownership, or recordations; and all permissions to use or practice a patent—surrounding any license

or potential license related to the Asserted Patents.

53. With respect to any communications between Defendants and all actual and/or

potential licensees concerning licensing the Asserted Patents, Related Patents and/or Defendants’

Patent Portfolio: (i) the date of any such communications; (ii) the content of any such

communications; (iii) the parties to any such communications; (iv) the existence, content, location,

and custodian of any documents that relate to such communications.


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


54. Any plans by Defendants to: (i) cease licensing the Asserted Patents; (ii) sell all or any

part of Defendants’ Patent Portfolio; and/or (iii) sell all or any part of any Defendant(s) or related

entity’s business.

55. Facts related to OnSpec Electronic, Inc. (“OnSpec”) and its products, including but

without limitation:

a. OnSpec’s ownership and organizational structure;

b. OnSpec’s related companies and entities;

c. OnSpec’s past and present business(es), operation(s), and activities;

d. OnSpec's products and product lines;

e. The operation of OnSpec's products;

f. The facts and circumstances regarding TPL’s acquisition of OnSpec, including the

amount paid in any agreements or valuations relating to the acquisition.

56. Information relating to the receipt, retention, and location of OnSpec files and

documents that existed prior to TPL’s acquisition of OnSpec.

57. The documents routinely created or created in the ordinary course of business by each

business unit or sub-unit of any Defendant concerning licensing of the Asserted Patents from 1993 to

the present.

58. All analyses performed by or for any Defendant relating to the value of the Asserted

Patents, or any group of patents that includes the Asserted Patents, including without limitation the

values ascribed to the Asserted Patents or any group of patents that includes the Asserted Patents.

59. All analyses performed by any person, whether or not by or for any Defendant,

relating to the value of the Asserted Patents, or any group of patents that includes the Asserted

Patents, or relating to the value of any Defendant, Defendants’ other patent portfolios, or any of their

parts or divisions or affiliates, including without limitation anyone in relation to a potential sale of

any Defendant or any of their patents or patent portfolios.

60. The nature, resources, scope, and size of Defendants and their operations, in the U.S.

and worldwide, including but not limited to their: corporate organization, entities and activities;

assets, revenues, costs, debts, and internal allocations thereof, including the technology families and


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


geographic distribution of their patents; business performance, plans and forecasts; investor relations

and communications.

61. The nature, resources, scope, and size of Defendants’ industry and marketplace, in the

U.S. and worldwide, including but not limited to their: competitors, suppliers, customers, and other

industry members; industry and market assessment and analysis, both internal and as received from

third parties.

62. Any and all facts related to the research, development, testing, and manufacturing of

any product and/or technology incorporating the alleged inventions claimed in the Asserted Patents,

including but not limited to the number, location, and identity of all employees involved in such

research, development, testing, and manufacturing, and the amounts invested in this research,

development, testing, and manufacturing.


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


PROOF OF SERVICE STATE OF CALIFORNIA, CITY AND COUNTY OF SAN FRANCISCO

I am employed in the county of San Francisco, State of California. I am over the age of 18 and not a party to the within action; my business address is K&L Gates LLP, Four Embarcadero Center, Suite 1200, San Francisco, California 94111. On January 8, 2013, I served the foregoing document(s):

PLAINTIFFS ACER, INC. AND ACER AMERICA CORPORATION AND

GATEWAY, INC.’S NOTICE OF DEPOSITION PURSUANT TO FED. R. CIV. P. 30(b)(6)

together with an unsigned copy of this declaration, on all interested parties in this action as follows:

SEE ATTACHED SERVICE LIST

[ X ] BY MAIL (By Following Office Business Practice): I am readily familiar with this firm’s practice of collection and processing correspondence for mailing. It is deposited with the U.S. Postal Service on that same day in the ordinary course of business. I placed such envelope(s) for collection and mailing on that date following ordinary business practice.

[ X ] BY ELECTRONIC MAIL: I am personally and readily familiar with the business practice of the firm for the preparation and processing of documents in portable document format (PDF) for e-mailing. I prepared said document(s) in PDF and then caused such documents to be served by electronic mail to the above addressees.

[ ] BY FEDERAL EXPRESS: I deposited such envelope in a box or other facility regularly maintained by Federal Express, an express service carrier, or delivered to a courier or driver authorized by said express service carrier to receive documents in an envelope designated by the said express service carrier, addressed as above, with delivery fees paid or provided for, to be transmitted by Federal Express.

I declare under penalty of perjury under the laws of the State of California that the above is true and correct.

Executed on January 8, 2013, at San Francisco, California. /s/ Julia M. Alvarez-Tam Julia Alvarez-Tam


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


SERVICE LIST Acer, Inc., et al. v. Technology Properties Limited, et al.

USND Case No.: 5:08-cv-00877 JF

James C. Otteson, Esq. Michelle Breit, Esq. AGILITY IP LAW, LLP 149 Commonwealth Drive Menlo Park, CA 94025 Phone: 650-227-4800 Fax: 650-318-3483 Email: [email protected] [email protected] Attorneys for Technology Properties Limited and Alliacense Limited

James R. Farmer OTTESON LAW GROUP 14350 North 87th Street, Suite 190 Scottsdale, AZ 85260 480-646-3434 Fax: 480-646-3438 Email: [email protected] Attorneys for Technology Properties Limited and Alliacense Limited

Brandon Baum, Esq. BAUM LEGAL 149 Commonwealth Drive Menlo Park, CA 94025 Phone: 650-294-1032 Fax: 650-318-3483 Email: [email protected] Attorneys for Technology Properties Limited and Alliacense Limited


EXHIBIT 4


DEFENDANTS’ OBJ. AND RESP. TO PLAINTIFFS’ NOTICE OF DEPOSITION CV08-00877 (PSG) Page 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

JAMES C. OTTESON, State Bar No. 157781 [email protected] MICHELLE G. BREIT, State Bar No. 133143 [email protected] AGILITY IP LAW, LLP 149 Commonwealth Drive Menlo Park, CA 94025 Telephone: (650) 227-4800 Facsimile: (650) 318-3483 Attorneys for Defendants TECHNOLOGY PROPERTIES LIMITED and ALLIACENSE LIMITED



SAN JOSE DIVISION ACER, INC., ACER AMERICA CORPORATION and GATEWAY, INC. Plaintiffs, v. TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION and ALLIACENSE LIMITED, Defendants.

Case No. 5:08-cv-00877 JF DEFENDANTS’ OBJECTIONS AND RESPONSES TO PLAINTIFFS ACER, INC., ACER AMERICA CORPORATION, AND GATEWAY, INC.’S NOTICE OF DEPOSITION PURSUANT TO FED. R. CIV. P. 30(b)(6)

TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION and ALLIACENSE LIMITED, Plaintiffs, v. ACER, INC., ACER AMERICA CORPORATION and GATEWAY, INC.

Pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure, Defendants

Technology Properties Limited, Alliacense Limited, and Patriot Scientific Corporation

(collectively “TPL”) hereby submit their objections and responses to Plaintiffs Acer Inc., Acer

America Corporation, and Gateway Inc.’s Notice of Deposition Pursuant to Fed. R. Civ. P.

30(b)(6), as follows:



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

GENERAL OBJECTIONS

1. TPL objects to the listed date, time and location in Respondents’ First Corporate

Deposition Notice to Complainants as not reasonable or convenient. TPL will meet and confer

with Respondents regarding mutually agreeable times, dates and locations.

2. TPL objects to each Definition, Instruction and Topic to the extent that it purports

to impose any requirement or discovery obligation on TPL other than those set forth by the

Federal Rules of Civil Procedure.

3. TPL objects to each Definition, Instruction and Topic to the extent that it seeks

information protected from discovery by applicable privileges, including but not limited to the

attorney-client-privilege, the work-product doctrine, and/or any other applicable privilege or

immunity. Any disclosure of such protected or privileged information is inadvertent and is not

intended to waive those privileges or protections.

4. TPL objects to each Definition, Instruction and Topic to the extent that it seeks

confidential business information and/or trade secrets. TPL will only provide responses calling

for confidential or trade secret information subject to the Protective Order.

5. TPL objects to each Topic to the extent that it purports to require TPL to disclose

information in violation of a legal or contractual obligation of nondisclosure to a third party.

TPL will not provide such information without either the consent of the relevant third party or an

order compelling production. TPL will provide notice if it must seek third party consent to

respond to any particular Topic.

6. TPL objects to these Topics to the extent that they seek information that is

available from public sources, more conveniently or less expensively obtained from another

source, or otherwise just as available to Acer as it is to TPL.

7. TPL objects to these Topics to the extent that they seek information that is not

known to TPL and outside of TPL’s possession, custody, and control.

8. TPL objects to each Definition, Instruction and Topic to the extent they are overly

broad, unduly burdensome, seek information that is not reasonably calculated to lead to the



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

discovery of admissible evidence, or seek information that is not related to any claim or defense

or the subject matter involved in this case.

9. TPL objects to these Topics as vague, overly broad and unduly burdensome to the

extent that they fail to specify a relevant time period, or specify a time period beyond the scope

of this case.

10. TPL objects to these Topics as unreasonably cumulative or duplicative to the

extent that more than one Topic seeks the same information.

OBJECTIONS TO DEFINITIONS

1. TPL objects to the definition of the term “Communication” as vague, ambiguous,

overbroad, and unduly burdensome, and not reasonably calculated to lead to the discovery of

admissible evidence.

2. TPL objects to the definition of the terms “Defendants,” “You,” or “Your” as

overly broad, unduly burdensome, and not reasonably calculated to lead to the discovery of

admissible evidence. TPL further objects to the definition of “You,” “Your,” and

“Complainants” to the extent that it calls for information protected by the attorney-client-

privilege, the work-product doctrine, and/or any other applicable privilege or immunity. TPL

further objects to the definition of “You,” “Your,” and “Complainants” to the extent that it seeks

information that is outside of TPL’s possession, custody and control. TPL will interpret these

terms to mean Technology Properties Limited, LLC, Patriot Scientific Corporation, and

Alliacense Limited.

3. TPL objects to the definition of the term “Concerning” as vague, ambiguous,



4. TPL objects to the definition of “Documents” as overly broad, unduly

burdensome, and not reasonably calculated to lead to the discovery of admissible evidence. TPL

will construe the term consistently with the Federal Rules of Civil Procedure.



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. TPL objects to the definition of the terms “Identification” and “identity” as overly

broad, unduly burdensome, vague and ambiguous. TPL also objects to the definition of “identity” to

the extent that it purports to impose requirement and discovery obligation on TPL other than those

set forth by Commission Rules. TPL additionally objects to the extent that the term “Identity”

requires TPL to identify information protected by the attorney-client-privilege, the work-product

doctrine, and/or any other applicable privilege or immunity. TPL will construe the term consistently

with the Federal Rules of Civil Procedure.

6. TPL objects to the definition of the term “Patent Portfolio” as vague, ambiguous,



7. TPL objects to the definition of the term “Person(s)” as overly broad, unduly

burdensome, vague, and ambiguous. TPL will construe the term consistently with the Federal Rules

of Civil Procedure.

8. TPL objects to the definition of the term “Prior Art” as overly broad, unduly

burdensome, vague, and ambiguous.

9. TPL objects to the definition of the term “Relate to” as vague, ambiguous, overbroad,

and unduly burdensome, and not reasonably calculated to lead to the discovery of admissible

evidence.

10. TPL objects to the definition of the term “Related Patents” as overly broad and

unduly burdensome. TPL further objects to the phrase as seeking information that is not relevant

to any claim or defense, nor likely to lead to the discovery of admissible evidence.

11. TPL objects to the definition of the term “Subject matter” as vague, ambiguous,



OBJECTIONS AND RESPONSES TO DEPOSITION TOPICS

Topic No. 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

The Answer and Defendants’ preparation of the Answer, including the factual bases for

the assertions, counterclaims, and any information consulted or reviewed in preparing the

Answer.

Objections and Response to Topic No. 1:

In addition to its General Objections, TPL objects to this Topic as asking for information

protected from discovery by applicable privileges, including but not limited to the attorney-

client-privilege, the work-product doctrine, and/or any other applicable privilege or immunity.

Topic No. 2:

Defendants’ knowledge of the Asserted Patents.


In addition to its General Objections, TPL objects to this Topic to the extent that it is

vague and ambiguous as to the term “knowledge.” TPL further objects to this Topic to the extent

it is seeking information protected from discovery by applicable privileges, including but not

limited to the attorney-client-privilege, the work-product doctrine, and/or any other applicable

privilege or immunity.

Topic No. 3:

Defendants’ position that Acer infringes the Asserted Patents.



vague and ambiguous as to the term “position.” TPL further objects to this topic to the extent it

improperly seeks expert opinions, legal contentions, or conclusions of law rather than factual

information. TPL further objects to this Topic as premature because it improperly seeks legal

contentions related to expert discovery. TPL further objects to this Topic to the extent it is

seeking information protected from discovery by applicable privileges, including but not limited

to the attorney-client-privilege, the work-product doctrine, and/or any other applicable privilege

or immunity.

Topic No. 4:



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

Defendants’ position that the Asserted Patents are valid or enforceable.






contentions related to expert discovery. PL further objects to this Topic to the extent it is seeking



immunity.

Topic No. 5:

Defendants’ position that the Asserted Patents are not subject to prosecution history

estoppel.






contentions related to expert discovery. PL further objects to this Topic to the extent it is seeking



immunity. TPL further objects to this Topic to the extent it is seeking information protected

from discovery by applicable privileges, including but not limited to the attorney-client-

privilege, the work-product doctrine, and/or any other applicable privilege or immunity.

Topic No. 6:

Defendants’ position relating to any of Acer’s affirmative defenses to Defendants’

counterclaims.



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



vague and ambiguous as to the term “position.” TPL further objects to this Topic to the extent it

is seeking information protected from discovery by applicable privileges, including but not


privilege or immunity. TPL further objects to this Topic as it improperly seeks expert opinions,

legal contentions, or conclusions of law rather than factual information

Topic No. 7:

Defendants’ knowledge of any underlying facts relating to Acer’s affirmative defenses to

Defendants’ counterclaims.



vague and ambiguous as to the term “knowledge.” TPL further objects to this Topic to the extent

it is seeking information protected from discovery by applicable privileges, including but not


privilege or immunity.

Topic No. 8:

Defendants’ past and present organizational structures, including any parents,

subsidiaries, divisions, branches, predecessors or successors in business.



vague, ambiguous, overbroad and unduly burdensome. TPL further objects to this Topic as

seeking information that is not relevant to any claim or defense, nor likely to lead to admissible

evidence.

Subject to these objections and the General Objections set forth above, TPL states that it

will produce one or more witnesses to testify regarding this Topic.

Topic No. 9:



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

Any Defendants’ relationship with Acer, including but not limited to past and present

business and contractual relationships.





evidence.



Topic No. 10:

Defendants’ responses to Acer’s discovery requests.





evidence.



Topic No. 11:

The location of documents requested by Acer, persons having custody of such

documents, and details of all efforts made by Defendants to identify, collect and produce

responsive documents.



vague, ambiguous, overbroad and unduly burdensome. TPL further objects to this Topic to the

extent it is seeking information protected from discovery by applicable privileges, including but

not limited to the attorney-client-privilege, the work-product doctrine, and/or any other

applicable privilege or immunity.



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



Topic No. 12:

Defendants’ systems and policies for accounting, record keeping, and document retention

for purposes of litigation.



vague, ambiguous, overbroad and unduly burdensome. TPL further objects to this Topic to the

extent it is seeking information protected from discovery by applicable privileges, including but

not limited to the attorney-client-privilege, the work-product doctrine, and/or any other

applicable privilege or immunity.



Topic No. 13:

The past and present relationships between and among Technology Properties Limited,

Phoenix Digital Solutions LLC, Alliacense, Intellasys, TPL Micro Limited, Charles H. Moore,

Russell Fish, and Patriot Scientific Corporation, including their legal, financial, and ownership

relationship(s).



vague and ambiguous with respect to the term “relationships.” TPL objects to this Topic as

overbroad and unduly burdensome, as it extends to information that is not relevant to any claim

or defense, and/or is not reasonably calculated to lead to the discovery of admissible evidence.



Topic No. 14:

Defendants’ relationship with TPL Micro Limited.



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



vague and ambiguous with respect to the term “relationship.” TPL objects to this Topic as

overbroad and unduly burdensome, as it extends to information that is not relevant to any claim

or defense, and/or is not reasonably calculated to lead to the discovery of admissible evidence.



Topic No. 15:

The Asserted Patents, their disclosures, prosecution histories, and reexaminations.



vague, ambiguous, overbroad and unduly burdensome as to the term “disclosure.” TPL further

objects to the Topic to the extent that it seeks information protected from discovery by applicable

privileges, including but not limited to the attorney-client-privilege, the work-product doctrine,

and/or any other applicable privilege or immunity.



Topic No. 16:

The conception of the subject matter claimed in each claim of the Asserted Patents,

including but not limited to the conception date(s), the circumstances of conception, the identity

of each person who was involved in or contributed to the conception, the first written

description, depiction, and/or drawings, and Documents relating to any of the foregoing.


In addition to its General Objections, TPL objects to this Topic as vague, ambiguous,

overbroad and unduly burdensome. TPL further objects to the Topic to the extent that it seeks



immunity.



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



Topic No. 17:

The first reduction to practice of the subject matter claimed in each claim of the Asserted

Patents, including but not limited to the date(s) of the reduction to practice, the circumstances of

the reduction to practice, the identity of each person who participated in or has knowledge of the

reduction to practice, and Documents relating to any of the foregoing.



overbroad and unduly burdensome. TPL further objects to the Topic to the extent that it seeks



immunity.



Topic No. 18:

Any and all diligence in the reduction to practice of the subject matter claimed in the

Asserted Patents, including but not limited to the date(s) of the diligence, the circumstances of

the diligence, the identity of each person who participated in or has knowledge of the diligence,

and Documents relating to any of the foregoing.



overbroad and unduly burdensome, particularly as to the phrase “[a]ny and all diligence.” TPL

further objects to the Topic to the extent that it seeks information protected from discovery by

applicable privileges, including but not limited to the attorney-client-privilege, the work-product

doctrine, and/or any other applicable privilege or immunity.





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

Topic No. 19:

The identity of each person who was involved in or contributed to the alleged

invention(s) claimed in the Asserted Patents and the specific roles or contributions of each

person to the alleged invention(s).



overbroad and unduly burdensome, particularly as to the phrases “identity of each person who

was involved in or contributed to the alleged invention(s)” and “specific roles or contributions.”

TPL further objects to the Topic to the extent that it seeks information protected from discovery

by applicable privileges, including but not limited to the attorney-client-privilege, the work-

product doctrine, and/or any other applicable privilege or immunity.


will produce one or more witnesses to testify regarding this Topic