Case 2:13-cv-05980-SJO-PJW Document 106 Filed 12/11/13 Page 1 of 4 Page ID #:1561
`
`Harold A. Barza (SBN 80888)
`halbarza@quinnemanuel.com
`Robert S. Hill (SBN 276056)
`roberthill@quinnemanuel.com
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`865 S. Figueroa Street 10th Floor
`Los Angeles, California 90017
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
`
`Wayne Taichi Alexander (pro hac vice)
`waynealexander@quinnemanuel.com
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`NBF Hibiya Bldg., 25F
`1-1-7 Uchisaiwai-cho
`Chiyoda-ku, Tokyo 100-0011
`Japan
`Telephone: +81 3 5510 1711
`Facsimile: +81 3 5510 1712
`
`Attorneys for Case No. 13-CV-5980 Defendants
`Pioneer Corporation and
`Pioneer Electronics (USA) Inc.
`
`[additional defense counsel listed on next page]
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
`BLACK HILLS MEDIA, LLC,
`
`Plaintiff,
`v.
`
`(1) PIONEER CORPORATION and
`PIONEER ELECTRONICS (USA)
`INC., (2) YAMAHA
`CORPORATION OF AMERICA,
`and (3) SONOS INC.,
`
`Defendants in
`
`coordinated cases.
`
`
`
`Master Case No. 13-CV-5980-SJO (PJWx)
`
`Coordinated with Case Nos.: 13-CV-6054
`
`13-CV-6062
`
`DEFENDANTS’ NOTICE OF MOTION
`AND MOTION TO DISMISS FOR
`LACK OF STANDING
`
`[Fed. R. Civ. P. 12(b)(1)]
`
`Date: Monday, January 13, 2014
`Time: 10:00 a.m.
`Place: Courtroom of Hon. S. James Otero
`
`SONOS 1006 - Page 1
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106 Filed 12/11/13 Page 2 of 4 Page ID #:1562
`
`Vincent J. Belusko (SBN 100282)
`vbelusko@mofo.com
`David L. Fehrman (SBN 87400)
`dfehrman@mofo.com
`Martin M. Noonen (SBN 169061)
`mnoonen@mofo.com
`Alex S. Yap (SBN 241400)
`ayap@mofo.com
`Jared W. Miller (SBN 287424)
`jaredmiller@mofo.com
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Telephone: (213) 892-5200
`Facsimile: (213) 892-5454
`
`Attorneys for Case No. 13-CV-6054 Defendant
`Yamaha Corporation of America
`
`
`Donald L. Ridge, SBN 132171
`dridge@mpplaw.com
`MORRIS POLICH & PURDY LLP
`1055 West Seventh Street
`Twenty-Fourth Floor
`Los Angeles, California 90017
`Telephone: (213) 891-9100
`Facsimile: (213) 488-1178
`
`George I. Lee (pro hac vice)
`lee@mbhb.com
`MCDONNELL BOEHNEN HULBERT
` & BERGHOFF LLP
`300 South Wacker Drive
`Chicago, Illinois
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`Attorneys for Case No. 13-CV-6062 Defendant
`Sonos Inc.
`
`
`
`SONOS 1006 - Page 2
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106 Filed 12/11/13 Page 3 of 4 Page ID #:1563
`
`PLEASE TAKE NOTICE that pursuant to Fed. R. Civ. P. 12(b)(1), on
`Monday, January 13, 2014, at 10:00 a.m., in the courtroom of the Honorable S.
`James Otero of the U.S. District Court for the Central District of California,
`located at 312 North Spring Street in Los Angeles, California, Defendants in
`Coordinated Case Nos. 13-CV-5980 (i.e., Pioneer Corporation and Pioneer
`Electronics (USA) Inc.), 13-CV-6054 (i.e., Yamaha Corporation of America), and
`13-CV-6062 (i.e., Sonos Inc.) will jointly move and hereby do jointly move this
`Court for an order dismissing the above-captioned lawsuits because Plaintiff
`Black Hills Media, LLC did not have standing to sue when it filed suit.
`As explained in the concurrently filed Memorandum of Points and
`Authorities, while Plaintiff alleged in its May 22, 2012 Complaints that it “owns
`all of the rights and interests” in each of the initially asserted patents, it did not.
`As Plaintiff recently confirmed, Plaintiff did not acquire ownership until (at least)
`July 23, 2012, by virtue of assignment agreements that were subsequently
`recorded with the U.S. Patent and Trademark Office.
`It is black letter patent law that a plaintiff must own a patent when it files
`suit, and this jurisdictional defect cannot be corrected by subsequent events (such
`as a later assignment) or in subsequent pleadings (such as an amended complaint).
`The instant motion presents a pure legal issue for the Court, and Federal Circuit
`precedent dictates that these cases must be dismissed for lack of subject matter
`jurisdiction under Rule 12(b)(1).
`The present motion is based upon this Notice of Motion and Motion, the
`concurrently-filed Memorandum of Points and Authorities, the concurrently-filed
`Declaration of Martin M. Noonen, the arguments of counsel at any hearing upon
`this motion, and the concurrently-filed [Proposed] Order.
`As set forth in the concurrently-filed Declaration of Martin M. Noonen, this
`Motion is made following the Civil L.R. 7-3 conferences of counsel that took
`place on November 20, 2013, November 26, 2013, and December 3, 2013.
`
`SONOS 1006 - Page 3
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106 Filed 12/11/13 Page 4 of 4 Page ID #:1564
`
`Dated: December 11, 2013
`
`
`Dated: December 11, 2013
`
`
`Dated: December 11, 2013
`
`
`
`
`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
` SULLIVAN LLP
`
`
`By: /s/ Harold A. Barza (with permission)
`Harold A. Barza
`Robert S. Hill
`Wayne Taichi Alexander
`
`Attorneys for Defendants
`Pioneer Corporation and
`Pioneer Electronics (USA) Inc.
`
`
`MORRISON & FOERSTER LLP
`
`
`By: /s/ Martin M. Noonen
`Vincent J. Belusko
`David L. Fehrman
`Martin M. Noonen
`Alex S. Yap
`Jared W. Miller
`
`Attorneys for Defendant
`Yamaha Corporation of America
`
`
`MCDONNELL BOEHNEN HULBERT
` & BERGHOFF LLP MORRIS
`and
`
`POLICH & PURDY LLP
`
`
`By: /s/ George I. Lee (with permission)
`George I. Lee
`Donald L. Ridge
`
`Attorneys for Defendant
`Sonos Inc.
`
`
`SONOS 1006 - Page 4
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 1 of 23 Page ID
` #:1565
`
`Harold A. Barza (SBN 80888)
`halbarza@quinnemanuel.com
`Robert S. Hill (SBN 276056)
`roberthill@quinnemanuel.com
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`865 S. Figueroa Street 10th Floor
`Los Angeles, California 90017
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
`
`Wayne Taichi Alexander (pro hac vice)
`waynealexander@quinnemanuel.com
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`NBF Hibiya Bldg., 25F
`1-1-7 Uchisaiwai-cho
`Chiyoda-ku, Tokyo 100-0011
`Japan
`Telephone: +81 3 5510 1711
`Facsimile: +81 3 5510 1712
`
`Attorneys for Case No. 13-CV-5980 Defendants
`Pioneer Corporation and
`Pioneer Electronics (USA) Inc.
`
`[additional defense counsel listed on next page]
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
`BLACK HILLS MEDIA, LLC,
`
`Plaintiff,
`v.
`
`(1) PIONEER CORPORATION and
`PIONEER ELECTRONICS (USA)
`INC., (2) YAMAHA
`CORPORATION OF AMERICA,
`and (3) SONOS INC.,
`
`Defendants in
`
`coordinated cases.
`
`
`
`Master Case No. 13-CV-5980-SJO (PJWx)
`
`Coordinated with Case Nos.: 13-CV-6054
`
`13-CV-6062
`
`DEFENDANTS’ MEMORANDUM OF
`POINTS AND AUTHORITIES IN
`SUPPORT OF MOTION TO DISMISS
`FOR LACK OF STANDING
`
`[Fed. R. Civ. P. 12(b)(1)]
`
`Date: Monday, January 13, 2014
`Time: 10:00 a.m.
`Place: Courtroom of Hon. S. James Otero
`
`SONOS 1006 - Page 5
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 2 of 23 Page ID
` #:1566
`
`Vincent J. Belusko (SBN 100282)
`vbelusko@mofo.com
`David L. Fehrman (SBN 87400)
`dfehrman@mofo.com
`Martin M. Noonen (SBN 169061)
`mnoonen@mofo.com
`Alex S. Yap (SBN 241400)
`ayap@mofo.com
`Jared W. Miller (SBN 287424)
`jaredmiller@mofo.com
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`Telephone: (213) 892-5200
`Facsimile: (213) 892-5454
`
`Attorneys for Case No. 13-CV-6054 Defendant
`Yamaha Corporation of America
`
`
`Donald L. Ridge, SBN 132171
`dridge@mpplaw.com
`MORRIS POLICH & PURDY LLP
`1055 West Seventh Street
`Twenty-Fourth Floor
`Los Angeles, California 90017
`Telephone: (213) 891-9100
`Facsimile: (213) 488-1178
`
`George I. Lee (pro hac vice)
`lee@mbhb.com
`MCDONNELL BOEHNEN HULBERT
` & BERGHOFF LLP
`300 South Wacker Drive
`Chicago, Illinois
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`Attorneys for Case No. 13-CV-6062 Defendant
`Sonos Inc.
`
`
`SONOS 1006 - Page 6
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 3 of 23 Page ID
` #:1567
`
`I.
`
`II.
`
`
`
`
`INTRODUCTION .............................................................................................. 1
`
`BACKGROUND ................................................................................................ 2
`
`Plaintiff Black Hills Alleged That It “Owns” The Asserted Patents
`In Its Original Complaints ....................................................................... 2
`
`Plaintiff Filed First Amended Complaints In Delaware And
`Waited Until The Last Moment To Effect Service .................................. 3
`
`
`C. When The Ownership Issue Was Raised In A Delaware Court
`Filing, Plaintiff Claimed It Was Being Disparaged ................................. 3
`
`A.
`
`B.
`
`
`D.
`
`
`E.
`
`
`F.
`
`The Standing Issue Was Raised In Defendants’ Pleadings Before
`And After The Cases Were Transferred From Delaware ........................ 5
`
`Plaintiff’s “Chain Of Title” Filings Have Now Confirmed That
`Plaintiff Did Not Own The Patents In Suit When It Filed Suit ............... 5
`
`Defendants Tried To Persuade Plaintiff That These Cases Must Be
`Dismissed During A Thorough “Meet And Confer” Process .................. 6
`
`
`III. THESE CASES MUST BE DISMISSED FOR LACK OF STANDING ......... 8
`
`
`A.
`
`Federal Circuit Precedent Requires Dismissal When A Plaintiff
`Did Not Own The Patent(s) In Suit On The Date It Filed Suit................ 8
`
`
`
`
`
`
`
`
`
`B.
`
`1.
`
`2.
`
`3.
`
`Plaintiff Did Not Have Standing At The Inception Of These
`Lawsuits, And Any Subsequent Assignment To Black Hills
`Cannot Cure The Debilitating Standing Defect .......................... 10
`
`This Court Must Look At The Original Complaints To
`Assess Compliance With The Standing Requirement ................. 10
`
`Owning An Entity That Owns A Patent Does Not Suffice
`To Confer Standing ...................................................................... 11
`
`Plaintiff’s Authorities Are Inapposite To The Absolute Ownership
`Requirement In Patent Cases ................................................................. 12
`
`
`IV. CONCLUSION AND DISCUSSION OF PROPOSED ORDER ................... 16
`
`SONOS 1006 - Page 7
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 4 of 23 Page ID
` #:1568
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`CASES
`Abraxis Bioscience, Inc. v. Navinta LLC,
`625 F.3d 1359 (Fed. Cir. 2010) ................................................................... passim
`
`Central Pines Land Co. v. United States,
`697 F.3d 1360 (Fed. Cir. 2012) ................................................................ 7, 12, 14
`
`ConnectU LLC v. Zuckerberg,
`522 F.3d 82 (1st Cir. 2008) .................................................................. 7, 8, 14, 15
`
`Enzo APA & Son, Inc. v. Geapag A.G.,
`134 F.3d 1090 (Fed. Cir. 1998) ............................................................ 8, 9, 10, 16
`
`GAF Bldg. Materials Corp. v. Elk Corp.,
`90 F.3d 479 (Fed. Cir. 1996) ........................................................................ 14, 15
`
`Keene Corp. v. United States,
`508 U.S. 200, 113 S. Ct. 2035, 124 L. Ed. 2d 118 (1993) ...................... 8, 11, 13
`
`Lans v. Digital Equip. Corp.,
`252 F.3d 1320 (Fed. Cir. 2001) ..................................................................... 9, 11
`
`MedImmune, Inc. v. Genentech, Inc.,
`549 U.S. 118, 127 S. Ct. 764, 166 L. Ed. 2d 604 (2007) ................................... 14
`
`Minneapolis & St. Louis R.R. v. Peoria & Perkin Union Ry. Co.,
`270 U.S. 580, 46 S. Ct. 402, 70 L. Ed. 743 (1926) ....................................... 9, 13
`
`Paradise Creations, Inc. v. UV Sales, Inc.,
`315 F.3d 1304 (Fed. Cir. 2003) ........................................................................... 9
`
`Prasco, LLC v. Medicis Pharm. Corp.,
`537 F.3d 1329 (Fed. Cir. 2008) ............................................................ 7, 8, 14, 15
`
`Procter & Gamble Co. v. Paragon Trade Brands Inc.,
`917 F. Supp. 305 (D. Del. 1995) ....................................................................... 10
`
`Rockwell Int’l Corp. v. United States,
`549 U.S. 457, 127 S. Ct. 1397, 167 L. Ed. 2d 190 (2007) ........... 7, 12, 13, 14, 15
`
`SONOS 1006 - Page 8
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 5 of 23 Page ID
` #:1569
`
`Schreiber Foods, Inc. v. Beatrice Cheese, Inc.,
`402 F.3d 1198 (Fed. Cir. 2005) ...................................................................... 9, 11
`
`STATUTES
`
`28 U.S.C. § 2201 ...................................................................................................... 14
`
`35 U.S.C. § 100(d) ....................................................................................... 1, 8, 9, 13
`
`35 U.S.C. § 281 ............................................................................................ 1, 8, 9, 13
`
`False Claims Act ...................................................................................................... 13
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 4(m) ................................................................................................... 3
`
`Fed. R. Civ. P. 12(b)(1) ................................................................................. 1, 16, 17
`
`SONOS 1006 - Page 9
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 6 of 23 Page ID
` #:1570
`
`I.
`
`INTRODUCTION
`This is a patent case. Black letter patent law requires that a plaintiff own a
`patent before filing suit. It is now uncontroverted that Plaintiff Black Hills Media
`LLC did not own the Patents in Suit when it filed the above-captioned lawsuits on
`May 22, 2012. Accordingly, this Court lacks jurisdiction over these cases and is
`required to dismiss them under Fed. R. Civ. P. 12(b)(1).
`This is a court of limited jurisdiction which only has subject matter
`jurisdiction over patent cases by virtue of statute. Under the Patent Act (see 35
`U.S.C. §§ 100(d) and 281), the rule has long been that a patentee must own the
`asserted patent(s) when a case is filed, and an ownership deficiency cannot be
`corrected after filing. Whatever the stage of the litigation — even after trial — a
`case must be dismissed if the plaintiff did not own the patent(s) when it filed suit.
`This issue cannot be waived and dismissal is not discretionary.
`When this litigation was initially filed in Delaware, Plaintiff alleged that it
`“owns” each of the Patents in Suit. As it turns out, that was not true. Plaintiff did
`not secure ownership of the Patents in Suit until (at least) July 23, 2012, two
`months after filing suit. Accordingly, this case is void ab initio.
`Defendants have addressed this threshold issue as expeditiously as possible
`under the circumstances. While Defendants suspected something might be amiss
`when the cases were still in Delaware, Plaintiff’s former counsel claimed
`“disparage[ment]” when the ownership question was raised in a court filing.
`The ownership issue only came to a head during the November 12, 2013
`Scheduling Conference before this Court. And Defendants were only able to
`confirm that Plaintiff did not own the Patents in Suit when the case was filed
`following Plaintiff’s recent “chain of title” filings that were ordered by the Court
`during the Scheduling Conference. Defendants then tried in vain to convince
`Plaintiff that the litigation must be dismissed, but Plaintiff refused to concede this
`undebatable legal point, requiring Defendants to bring this Rule 12(b)(1) motion.
`
`SONOS 1006 - Page 10
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 7 of 23 Page ID
` #:1571
`
`II. BACKGROUND
`Plaintiff Black Hills Alleged That It “Owns” The Asserted
`A.
`Patents In Its Original Complaints
`On May 22, 2012, Plaintiff Black Hills Media, LLC (referenced herein as
`“Plaintiff” or “Black Hills”) initiated the above-captioned lawsuits in Delaware
`against (1) Pioneer Corporation and Pioneer Electronics (USA) (“Pioneer”),
`(2) Yamaha Corporation of America (“Yamaha”), and (3) Sonos Inc. (“Sonos”).1
`In its original Complaints in the Pioneer, Yamaha, and Sonos cases,
`Plaintiff Black Hills claimed to own each of the asserted patents. In the Pioneer
`and Yamaha cases, Plaintiff initially asserted three patents and made the following
`allegation in the May 22, 2012 Complaints in those two actions:
`Black Hills owns all of the rights and interests in United States
`Patent Nos. 8,045,952 (the “’952 Patent”); 8,050,652 (the “’652
`Patent”); and 6,985,694 (the “’694 Patent”) (collectively, the
`“Patents in Suit”).
`(Pioneer Dkt. No. 1 at ¶ 6; Yamaha Dkt. No. 1 at ¶ 6; emphasis added.) Plaintiff
`asserted those same three patents and five others against Sonos, and made a
`similar claim of present ownership in its May 22, 2012 Complaint in that case:
`Black Hills owns all of the rights and interests in United States
`Patent Nos. 8,045,952 (the “’952 Patent”); 8,050,652 (the “’652
`Patent”); 6,985,694 (the “’694 Patent”); 7,742,740 (the “’740
`Patent”); 6,757,517 (the “’517 Patent”); 7,236,739 (the “’739
`Patent”); 6,826,283 (the “’283 Patent”); and 8,028,323 (the “’323
`Patent”) (collectively, the “Patents in Suit”).
`(Sonos Dkt. No. 1 at ¶ 6; emphasis added.) As it later turned out, Plaintiff’s
`claims of ownership were untrue.
`
`1 Plaintiff filed a fourth Delaware lawsuit that same day against Logitech,
`Inc., which was dismissed on November 13, 2013 (see Logitech Dkt. No. 79).
`
`SONOS 1006 - Page 11
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 8 of 23 Page ID
` #:1572
`
`B.
`
`Plaintiff Filed First Amended Complaints In Delaware And
`Waited Until The Last Moment To Effect Service
`Plaintiff never served the original Complaints, but instead filed First
`Amended Complaints in the Pioneer, Yamaha, and Sonos cases on September 12,
`2012, adding three more patents to each lawsuit. In addition to the patents that
`were asserted in the original Complaints, the First Amended Complaints alleged
`infringement of U.S. Patent Nos. 6,108,686 (the “’686 Patent”), 8,230,099 (the
`“’099 Patent”), and 8,214,873 (the “’873 Patent”). Plaintiff again alleged that
`“Black Hills owns all of the rights and interests in” each asserted patent. (See
`Pioneer Dkt. No. 3 at ¶ 6; Yamaha Dkt. No. 3 at ¶ 6; Sonos Dkt. No. 3 at ¶ 6.)
`This time, Plaintiff’s ownership claim may have been legitimate, but as will be
`discussed, that was too late — standing cannot be corrected retroactively.
`Plaintiff appeared to have been in no hurry to litigate, waiting until almost
`literally the last moment to serve. In fact, Plaintiff served the Summons and First
`Amended Complaint on Yamaha on September 19, 2012 (see Yamaha Dkt. No.
`6), which was exactly “120 days after the Complaint [was] filed” (which is the
`“Time Limit for Service” under Fed. R. Civ. P. 4(m)).
`C. When The Ownership Issue Was Raised In A Delaware Court
`Filing, Plaintiff Claimed It Was Being Disparaged
`When Plaintiff filed the original Complaints on May 22, 2012, there were
`no recorded assignments for the Patents in Suit evidencing ownership by Black
`Hills. Then again, there is no requirement to record patent assignments with the
`U.S. Patent and Trademark Office (“PTO”). Thus, there was then no reason to
`question Plaintiff’s original Complaint allegations that “Black Hills owns all of
`the rights and interests in” the Patents in Suit.
`After Plaintiff filed and served the First Amended Complaints in September
`2012, a check of the PTO Assignment Database revealed that Plaintiff had
`recorded assignment agreements in the interim. While Defendants were then
`focused on challenging various pleading deficiencies (in Rule 12(b)(6) and 12(c)
`
`SONOS 1006 - Page 12
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 9 of 23 Page ID
` #:1573
`
`motions filed with the Delaware court), and seeking to transfer the Delaware cases
`to the Central District of California (where each U.S. Defendant is physically
`located), the ownership issue was raised in a Delaware court filing, only to draw a
`claim of disparagement.
`Specifically, on January 22, 2013, Defendant Yamaha stated as follows in
`its Opening Brief in support of its Motion to Transfer Venue:
`
`
`
`(Yamaha Dkt. No. 15 at 4.) Rather than “own up” to the fact that there might be
`an issue, Plaintiff’s former counsel accused Yamaha of disparaging Plaintiff:
`… Yamaha further raises issues concerning Black Hills’ motives for
`bringing suit in Delaware and the ownership of some of the asserted
`patents. Aside from an obvious attempt to disparage Black Hills, it
`is unclear what these observations add to the question before the
`Court, which is whether this case should be transferred to the
`Southern Division of the Central District of California.
`(Yamaha Dkt. No. 20 at 1; emphasis added.) Of course, the truth is not
`disparaging.
`
`SONOS 1006 - Page 13
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 10 of 23 Page ID
` #:1574
`
`D. The Standing Issue Was Raised In Defendants’ Pleadings Before
`And After The Cases Were Transferred From Delaware
`In addition to raising the ownership issue during briefing of its transfer
`motion (which was granted by the District of Delaware in an August 5, 2013
`Order (see Yamaha Dkt. No. 31)), Yamaha asserted a “lack of standing” defense
`in its Answers to the First and Second Amended Complaints (see Yamaha Dkt.
`No. 29 at 10 and Dkt. No. 75 at 17), and Sonos did likewise in its Answer to the
`Second Amended Complaint (see Sonos Dkt. No. 70 at 18-19). Of course,
`without discovery from Plaintiff on the ownership issue, Defendants were only
`able to plead lack of standing based on “information and belief.”
`Plaintiff’s “Chain Of Title” Filings Have Now Confirmed That
`E.
`Plaintiff Did Not Own The Patents In Suit When It Filed Suit
`Defendants did not anticipate receiving discovery on the ownership issue
`until December 12, 2013 (the date the parties agreed to propose as the due date for
`Plaintiff’s N.D. Cal. Patent Rule 3-1 and 3-2 disclosures). Under N.D. Cal. Patent
`Rule 3-2(d), Plaintiff is required to produce “[a]ll documents evidencing
`ownership of the patent rights by the party asserting patent infringement.”
`However, this issue came to a head at the November 12, 2013 Scheduling
`Conference before this Court. As recounted in this Court’s Minute Order:
`At the November 12 Scheduling Conference, the Court ordered
`Plaintiff to disclose documents evidencing its ownership of the
`Patents-in-Suit by November 15, 2013, pursuant to Rule 26(a).
`(Pioneer Dkt. No. 103 at 2.)
`On November 15, 2013, Plaintiff filed a “Notice of Black Hills’ Chain of
`Title Regarding the Patents-in-Suit” (Pioneer Dkt. No. 100), which consisted of a
`chart purporting to show the “chain of title” for 11 out of the 12 Patents in Suit.
`In addition to omitting reference to the ’686 Patent in the chart, Plaintiff’s initial
`“chain of title” filing did not include any back-up documentation as noted by the
`Court in its subsequent Minute Order:
`
`SONOS 1006 - Page 14
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 11 of 23 Page ID
` #:1575
`
`[I]n this [initial] Notice of Chain of Title, Plaintiff only lists the past
`and present owners of the Patents-in-Suit. Plaintiff does not appear
`to have provided documents or other evidence demonstrating the
`validity of the claimed transfers of ownership to Plaintiff. Plaintiff
`must provide this evidence no later than November 25, 2013.
`(Pioneer Dkt. No. 103 at 3.)
`At the Court’s behest, Plaintiff then filed “Black Hills’ Amended Notice of
`Chain of Title Regarding the Patents-in-Suit” (Pioneer Dkt. No. 104) on
`November 25, 2013. This Amended Notice attached numerous agreements, and
`the “chain of title” chart now referenced the previously-omitted ’686 Patent.
`The revised “chain of title” chart in the Amended Notice included another
`conspicuous change. Whereas Plaintiff’s initial chart was riddled with “wholly
`owned by Black Hills” parentheticals (Pioneer Dkt. No. 100; emphasis added)
`when referencing certain previous assignees for each Patent in Suit (with the
`exception of the omitted ’686 Patent), the revised chart removed these
`parentheticals; as discussed below, this change appears to have been precipitated
`by Defendants raising this issue during the “meet and confer” process.
`Whether or not the Amended Notice is now complete (noting that Plaintiff
`has indicated that additional ownership documentation may be produced on
`December 12, 2013), Plaintiff’s “chain of title” filings at least confirm that Black
`Hills did not own any of the Patents in Suit when it filed suit on May 22, 2012.
`F. Defendants Tried To Persuade Plaintiff That These Cases Must
`Be Dismissed During A Thorough “Meet And Confer” Process
`As detailed in the supporting Declaration of Martin M. Noonen, the parties
`met and conferred on multiple occasions before Defendants filed this motion:
`1.
`After Defendants reviewed and digested Plaintiff’s initial “chain of
`title” Notice (which was filed at 3:47 p.m. Pacific time on Friday, November 15),
`Defendants contacted Plaintiff on the following Tuesday morning to request a
`
`SONOS 1006 - Page 15
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 12 of 23 Page ID
` #:1576
`
`teleconference to discuss “Black Hill’s chain of title pleading and whether subject
`matter jurisdiction exists.” (See Noonen Decl., Exh. A.)
`2.
`During the initial “meet and confer” teleconference on Wednesday,
`November 20, Plaintiff first informed Defendants that it had just received a call
`from the Court instructing Plaintiff to supplement its “chain of title” filing by
`November 25. Plaintiff then cited a 2007 Supreme Court decision (Rockwell) that
`it claimed to be controlling on the standing issue. Defendants raised the omission
`of the ’686 Patent in the initial chart as well as the dubious “wholly owned by
`Black Hills” parentheticals (which Plaintiff removed in its Amended Notice).
`3.
`On Friday, November 22, Defendants contacted Plaintiff to arrange a
`second teleconference on November 26 to “discuss Black Hill’s forthcoming
`expanded chain of title pleading, and to further discuss whether subject matter
`jurisdiction exists[.]” (See Noonen Decl., Exh. A.)
`4.
`During the second “meet and confer” on Tuesday, November 26,
`Defendants cited a Federal Circuit opinion (Central Pines) that distinguished
`Rockwell, and explained that Federal Circuit precedent both before and after
`Rockwell dictates that a plaintiff must own a patent at the inception of a lawsuit
`for there to be subject matter jurisdiction (as demonstrated by way of example in
`the Federal Circuit’s 2010 opinion in Abraxis). In view of the ensuing
`Thanksgiving holiday, Plaintiff asked for an opportunity to review Defendants’
`authorities, and the parties agreed to reconvene early the following week.
`5.
`During the third and final “meet and confer” teleconference on
`Tuesday, December 3, Plaintiff cited a Federal Circuit decision in a declaratory
`judgment case (Prasco) and a First Circuit decision in a copyright case
`(ConnectU) as purported support for what Defendants believe to be the untenable
`proposition that an ownership defect in a patent case can be corrected after filing.
`The parties confirmed that they were at an impasse, and Defendants are filing this
`motion after waiting the requisite seven days under C.D. Cal. Local Rule 7-3.
`
`SONOS 1006 - Page 16
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 13 of 23 Page ID
` #:1577
`
`III. THESE CASES MUST BE DISMISSED FOR LACK OF STANDING
`This motion presents a clear-cut legal issue. The relevant facts are few and
`uncontroverted. Plaintiff’s “chain of title” filings now confirm that “Black Hills”
`(i.e., Plaintiff) did not take ownership of any of the Patents in Suit any earlier than
`July 23, 2012, two months after Plaintiff filed its May 22, 2012 Complaints
`alleging that “Black Hills owns all of the rights and interests in” the Patents in
`Suit.
`
`As set forth below, when a plaintiff files suit for patent infringement
`without owning the patent(s) in suit, the plaintiff does not have standing, the court
`does not have jurisdiction, and the case must be dismissed. Defendants will first
`discuss the long-standing Federal Circuit jurisprudence that establishes this
`intractable rule, and will then distinguish the inapposite cases that Plaintiff has
`raised (i.e., Rockwell, Prasco, ConnectU) in the face of this controlling precedent.
`Federal Circuit Precedent Requires Dismissal When A Plaintiff
`A.
`Did Not Own The Patent(s) In Suit On The Date It Filed Suit
`The requirement that a “patentee” own a patent before filing suit comes
`from the Patent Act:
`The Patent Act (the Act) provides that a “patentee” shall have
`remedy by civil action for patent infringement. 35 U.S.C. § 281
`(1994). The term “patentee” is defined in the Act under section
`100(d) as including not only the patentee to whom the patent issued,
`but the successors in title to the patentee.
`Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998).
`In Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359 (Fed. Cir. 2010),
`the Federal Circuit summarized the ownership requirement in patent cases:
`A court may exercise jurisdiction only if a plaintiff has standing
`to sue on the date it files suit. Keene Corp. v. United States, 508
`U.S. 200, 207, 113 S. Ct. 2035, 124 L. Ed. 2d 118 (1993) (There is a
`
`SONOS 1006 - Page 17
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 14 of 23 Page ID
` #:1578
`
`“longstanding principle that the ‘jurisdiction of the Court depends
`upon the state of things at the time of the action brought.’”) (internal
`citations omitted); Minneapolis & St. Louis R.R. v. Peoria & Perkin
`Union Ry. Co., 270 U.S. 580, 586, 46 S. Ct. 402, 70 L. Ed. 743
`(1926) (“The jurisdiction of the lower court depends upon the state of
`things existing at the time the suit was brought.”). Based upon this
`Supreme Court jurisprudence, we have held that in a patent
`infringement action, “the plaintiff must demonstrate that it held
`enforceable title to the patent at the inception of the lawsuit” to
`assert standing. Paradise Creations, Inc. v. UV Sales, Inc., 315
`F.3d 1304, 1309-310 (Fed. Cir. 2003); see also 35 U.S.C. §§ 100(d),
`281 (A “patentee” is entitled to bring a “civil action for infringement
`of his patent,” and the patentee includes the “successors in title to the
`patentee.”). Thus, “if the original plaintiff lacked Article III
`initial standing, the suit must be dismissed, and the jurisdictional
`defect cannot be cured” after the inception of the lawsuit.
`Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1203
`(Fed. Cir. 2005); Lans v. Digital Equip. Corp., 252 F.3d 1320, 1328
`(Fed. Cir. 2001) (affirming dismissal of complaint and denial of
`motion to amend pleadings to substitute assignee as plaintiff when
`plaintiff-inventor assigned the patent prior to filing the action).
`Id. at 1364 (emphasis added).
`Thus, under Federal Circuit precedent, “[b]ased upon … Supreme Court
`jurisprudence,” a patentee must own a patent when filing suit for infringement of
`such patent, and standing to file patent lawsuits cannot be conferred retroactively.
`Id.; see also Enzo, 134 F.3d at 1093 (“nunc pro tunc assignments are not
`sufficient to confer retroactive standing.”).
`
`SONOS 1006 - Page 18
`
`

`

`Case 2:13-cv-05980-SJO-PJW Document 106-1 Filed 12/11/13 Page 15 of 23 Page ID
` #:1579
`
`In Enzo, the Federal Circuit explained the rationale for the ownership
`requirement in patent cases:
`As a general matter, parties should possess rights before seeking to
`have them vindicated in court. Allowing a subsequent assignment to
`automatically cure a standing defect would unjustifiably expand the
`number of people who are statutorily authorized to sue.
`Id. at 1093-94 (quoting Procter & Gamble Co. v. Paragon Trade Brands Inc., 917
`F. Supp. 305, 310 (D. Del. 1995)). Here, Plaintiff did not possess rights in the
`Patents in Suit before seeking to have them vindicated in court.
`Plaintiff Did Not Have Standing At The Inception Of
`1.
`These Lawsuits, And Any Subsequent Assignment To
`Black Hills Cannot Cure The Debilitating Standing Defect
`The only salient facts on this motion are provided in Plaintiff’s amended
`“chain of title” filing (Pioneer Dkt. No. 104). There, for each Patent in Suit,
`Plaintiff has confirmed that the plaintiff in this action (i.e., B