IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`MICROSOFT CORPORATION,
`
`Plaintiff,
`
`C.A. No. 20-007-RGA
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`REDACTED VERSION
`
`MICROSOFT CORPORATION’S OPPOSITION TO SYNKLOUD’S
`MOTION TO DISMISS PURSUANT TO FED. R. CIV. P. 12(b)(1), 12(h)(3),
`LACK OF STANDING AND 12(b)(6)
`
`Kelly E. Farnan (#4395)
`Farnan@rlf.com
`Travis S. Hunter (#5350)
`Hunter@rlf.com
`RICHARDS, LAYTON & FINGER, P.A.
`920 N. King Street
`Wilmington, DE 19801
`302-651-7700
`
`Attorneys for Plaintiff Microsoft Corporation
`
`OF COUNSEL:
`
`Richard A. Cederoth
`SIDLEY AUSTIN LLP
`One South Dearborn
`Chicago, IL 60603
`(312) 853-7000
`
`Ching-Lee Fukuda
`Ketan V. Patel
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`(212) 839-5300
`
`Dated: April 20, 2020
`
`Adobe - Exhibit 1039, page i
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`

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`CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ...............................................................................................................1
`
`II.
`
`NATURE AND STAGE OF PROCEEDINGS ...................................................................2
`
`III.
`
`SUMMARY OF THE ARGUMENT ..................................................................................2
`
`IV.
`
`STATEMENT OF FACTS ..................................................................................................4
`
`V.
`
`LEGAL STANDARD ..........................................................................................................7
`
`VI. ARGUMENT .......................................................................................................................8
`
`A.
`
`SynKloud’s Motion to Dismiss Microsoft’s Complaint for Lack of Subject Matter
`Jurisdiction Should Be Denied.................................................................................8
`
`1.
`
`2.
`
`3.
`
`4.
`
`
`
`
`
`SynKloud Has Effectively Accused Microsoft of Indirect Infringement ....9
`
`SynKloud Has Effectively Accused Microsoft of Direct Infringement .....12
`
`Subject Matter Jurisdiction Also Exists for Patents Closely Related to the
`’526, ’254, ’780 and ’225 Patents ..............................................................14
`
`5.
`
`Microsoft is Willing to Dismiss the ’7880 Patent ......................................18
`
`SynKloud’s Motion to Dismiss for Lack of Standing Should be Denied ..............18
`
`SynKloud’s Motion to Dismiss for Failure to State a Claim Should Be Denied ...18
`
`Microsoft Should Be Given Leave to Amend to Address Any Pleading
`Deficiencies Found by the Court ...........................................................................20
`
`B.
`
`C.
`
`D.
`
`VII. CONCLUSION ..................................................................................................................20
`
`
`
`
`
`
`
`ii
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`Adobe - Exhibit 1039, page ii
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`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Arkema Inc. v. Honeywell Int’l., Inc.,
`706 F.3d 1351 (Fed. Cir. 2013)......................................................................................3, 14, 15
`
`Arris Grp, Inc. v. British Telecomm. PLC,
`639 F.3d 1368 (Fed. Cir. 2011)........................................................................................ passim
`
`Dow Jones & Company, Inc. v. Ablaise Ltd.,
`583 F.Supp.2d 41 (D.D.C. 2008) .............................................................................................15
`
`Dror v. Kenu, Inc.,
`C.A. No. 19-3043-LB, 2019 WL 5684520 (N.D. Cal. Nov. 1, 2019) .................................3, 14
`
`Foman v. Davis,
`371 U.S. 178 (1962) .................................................................................................................20
`
`Gammino v. American Tel. & Tel Co.,
`Civ. No. 12–666–LPS, 2013 WL 6154569 (D. Del. Nov. 22, 2013)...............................3, 4, 18
`
`Gould Elecs. Inc. v. United States,
`220 F.3d 169 (3d Cir. 2000).......................................................................................................7
`
`Intel Corp. v. Future Link Sys., LLC,
`C.A. No. 14-377-LPS-CJB, 2015 WL 649294 (D. Del. Feb. 12, 2015) ........................3, 13, 20
`
`Kuhn Constr. Co. v. Diamond State Port Corp.,
`C.A. No. 10-637, 2011 WL 1576691 (D. Del. Apr. 26, 2011) ..................................................7
`
`Medgraph, Inc. v. Medtronic, Inc.,
`111 F. Supp. 3d 346 (W.D.N.Y. 2015) ....................................................................................19
`
`MedImmune, Inc. v. Genentech, Inc.,
`549 U.S. 118 (2007) ...................................................................................................................8
`
`Micron Tech., Inc. v. MOSAID Techs., Inc.,
`518 F.3d 897 (Fed. Cir. 2008)............................................................................................17, 18
`
`Microsoft Corp. v. DataTern, Inc.,
`755 F.3d 899 (Fed. Cir. 2014)........................................................................................9, 10, 12
`
`Microsoft Corp. v. GeoTag, Inc.,
`C.A. No. 11-175, 2014 WL 4312167 (D. Del. Aug. 29, 2014) ...........................................8, 12
`
`iii
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`Adobe - Exhibit 1039, page iii
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`Miics & Partners Am. Inc. v. Toshiba Electric Co.,
`C.A. No. 14-803-RGA (D. Del.) ..............................................................................................20
`
`In re Mobile Telecomm. Techs., LLC,
`247 F. Supp. 3d 456 (D. Del. 2017) ...................................................................................12, 17
`
`Petter Investments, Inc. v. Hydro Eng’g, Inc.,
`828 F. Supp. 2d 924 (W.D. Mich. 2011) .................................................................................15
`
`Philips v. ASUSTek Computer Inc.,
`C.A. No. 15-1125-GMS, 2016 WL 6246763 (D. Del. Oct. 25, 2016) ................................3, 18
`
`PPS Data, LLC v. Allscripts Healthcare Sols., Inc.,
`C.A. No. 11-273, 2012 WL 243346 (M.D. Fla. Jan. 25, 2012) ...............................................19
`
`SanDisk Corp. v. STMicroelectronics, Inc.,
`480 F.3d 1372 (Fed. Cir. 2007)..................................................................................................8
`
`Sanofi-Aventis U.S. LLC et al v. Merck Sharp & Dohme Corp.,
`C.A. No. 16-812-RGA (D. Del.) ..............................................................................................20
`
`Seaboard Int’l, Inc. v. Cameron Int’l Corp.,
`No. 13-00281-MLH-SKO, 2013 WL 3936889 (E.D. Cal. July 30, 2013) ..............................16
`
`Softech Worldwide, LLC v. Internet Tech. Broad. Corp.,
`C.A. No. 10-651-JCC, 2010 WL 4645791 (E.D. Va. Nov. 8, 2010) .......................................19
`
`Sprint Commc’ns Co., L.P. v. Charter Commc’ns, Inc., et al.,
`C.A. No. 17-1734-RGA (D. Del.) ............................................................................................20
`
`SynKloud Techs., LLC v. Adobe Inc.,
`No. 19-00527-ADA (W.D. Tex. Sept. 6, 2019) .........................................................................7
`
`SynKloud Techs., LLC v. BLU Prods., Inc.,
`C.A. No. 19-553-RGA, D.I. 1 (D. Del. Mar. 22, 2019) .........................................................4, 5
`
`SynKloud Techs., LLC v. Dropbox, Inc.,
`C.A. No. 19-00525-ADA (W.D. Tex. Sept. 6, 2019) ................................................................7
`
`SynKloud Techs., LLC v. Dropbox, Inc.,
`No. 19-00526-ADA (W.D. Tex. Sept. 6, 2019) .........................................................................7
`
`SynKloud Techs., LLC v. HP Inc.,
`C.A. No. 19-1360-RGA, D.I. 1 (D. Del. July 16, 2019) ........................................................6, 7
`
`Tesco Corp. v. Weatherford Int’l, Inc.,
`C.A. No. 08-2531, 2009 WL 497134 (S.D. Tex. Feb. 26, 2009) ............................................15
`
`iv
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`Adobe - Exhibit 1039, page iv
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`TSMC Tech., Inc. v. Zond, LLC,
`C.A. No. 14-721-LPS-CJB, 2014 WL 7498398 (D. Del. Jan. 8, 2014) ..............................3, 18
`
`Wistron Corp. v. Phillip M. Adams & Assocs., LLC,
`C.A. No. 10-4458, 2011 WL 1654466 (N.D. Cal. Apr. 28, 2011) ..........................................19
`
`Xilinx, Inc. v. Invention Inv. Fund I LP,
`C.A. No. 11-0671, 2011 WL 3206686 (N.D. Cal. July 27, 2011) ...........................................19
`
`Statutes
`
`28 U.S.C. § 2201(a) .....................................................................................................................2, 8
`
`35 U.S.C. 271(c) ............................................................................................................................10
`
`35 U.S.C. §§ 101, 102, 103 ............................................................................................................19
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`v
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`Adobe - Exhibit 1039, page v
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`I.
`
`INTRODUCTION
`
`Subject matter jurisdiction exists in this case because Plaintiff Microsoft Corporation
`
`(“Microsoft”) has properly pleaded that Defendant SynKloud Technologies, LLC (“SynKloud”)
`
`has publicly and privately based its infringement allegations for the Patents-in-Suit on specific
`
`Microsoft cloud storage products and services. SynKloud has publicly accused HP. Inc. (“HP”) of
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`infringing at least three patents based entirely upon its sales (and offers for sale) of Microsoft
`
`Windows-based computers that use other Microsoft products and services. Jurisdictional discovery
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`has confirmed that SynKloud further has, in licensing communications to Microsoft’s customers
`
`and original equipment manufacturers (“OEMs”), made the same allegations as to other Patents-
`
`in-Suit. In each instance, SynKloud relies exclusively upon Microsoft software to satisfy the
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`functional requirements of the claims. No other party’s software is mentioned, and without the
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`identified Microsoft software, SynKloud’s claim charts would be effectively empty.
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`As part of a litigation and licensing campaign initiated against the cloud storage
`
`marketplace, SynKloud has also sued similarly situated suppliers for infringement of certain
`
`Patents-in-Suit which are closely related to those patents SynKloud alleges are practiced by
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`Microsoft’s customers and OEMs based on their use of Microsoft products and services. The
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`totality of these allegations demonstrates that an actual controversy exists between Microsoft and
`
`SynKloud as to whether Microsoft’s products and services practice the Patents-in-Suit.
`
`The facts also demonstrate that Microsoft’s Complaint fully meets all necessary pleading
`
`requirements for a declaratory judgment action. The Complaint identifies specific examples of
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`Microsoft software that SynKloud has wrongly accused of causing infringement of the Patents-in-
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`Suit as well as Microsoft’s basis for its non-infringement defense. The law requires nothing more.
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`Finally, in contrast to SynKloud’s contentions that the number of patents in this action
`
`renders the case unmanageable, Delaware courts have regularly presided over cases involving ten
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`Adobe - Exhibit 1039, page 1
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`or more patents.1 The number of asserted patents and claims will naturally be winnowed before
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`the case is tried. However, the number of potential claims does not provide a basis for dismissing
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`the case at the pleadings stage.
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`Accordingly, SynKloud’s Motion to Dismiss (D.I. 9) should be denied.
`
`II.
`
`NATURE AND STAGE OF PROCEEDINGS
`
`Microsoft filed its Complaint in this action on January 3, 2020 requesting a declaratory
`
`judgment of non-infringement against eleven SynKloud patents: U.S. Patent Nos. 9,098,526 (“the
`
`’526 Patent”), 10,015,254 (“the ’254 Patent”), 8,606,880 (“the ’6880 Patent”), 8,856,195 (“the
`
`’195 Patent”), 8,868,690 (“the ’690 Patent”), 9,219,780 (“the ’780 Patent”), 9,239,686 (“the ’686
`
`Patent”), 7,870,225 (“the ’225 Patent”), 7,792,923 (“the ’923 Patent”), 7,849,153 (“the ’153
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`Patent”) and the ’7880 Patent (collectively, “the Patents-in-Suit”). See D.I. 1.
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`On February 26, 2020, SynKloud moved to dismiss alleging lack of subject matter
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`jurisdiction and standing as well as a failure to state a claim for lack of specificity of the accused
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`products. See D.I. 9. The Court allowed jurisdictional discovery on April 6, 2020 to allow
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`Microsoft to obtain and use correspondence and claim charts in which SynKloud accused
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`Microsoft’s products and services of infringement. D.I. 22.
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`III.
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`SUMMARY OF THE ARGUMENT
`
`1.
`
`Subject Matter Jurisdiction and Standing. The Court may exercise subject matter
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`jurisdiction under the Declaratory Judgment Act wherever “a case of actual controversy” exists
`
`between parties. 28 U.S.C. §2201(a). Where, as here, (1) a patent owner accuses a supplier’s
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`customers and OEMs of infringement based on their sale and use of the supplier’s software and
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`
`1 As discussed is more detail below, based on the jurisdictional discovery made available to
`Microsoft, it will stipulate to the dismissal, without prejudice, of U.S. Patent No. 7,457,880 (“the
`’7880 Patent”).
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`2
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`Adobe - Exhibit 1039, page 2
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`(2) the supplier acknowledges and accepts a duty to defend the customer accused of infringement,
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`the supplier has standing to commence a declaratory judgment action on those asserted patents.
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`Arris Grp, Inc. v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011). The Federal
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`Circuit has held that “there is a controversy between patentee and the supplier as to the supplier’s
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`liability for induced or contributory infringement based on the alleged acts of direct infringement
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`by its customers.” Id. Independently, the Court also has jurisdiction because SynKloud’s
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`allegations undeniably accuse Microsoft’s customers of direct infringement “solely due to the use
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`or sale” of Microsoft software, thereby effectively accusing Microsoft of direct infringement based
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`on its own making and sale of those products. Intel Corp. v. Future Link Sys., LLC, C.A. No. 14-
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`377-LPS-CJB, 2015 WL 649294, at *7 n.10 (D. Del. Feb. 12, 2015). Finally, the Court has
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`jurisdiction to resolve the overlapping disputes as to those patents SynKloud has not yet expressly
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`asserted against Microsoft’s customers because they are closely related to the already asserted
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`patents and SynKloud has expressed an intent to assert those patents against other similarly
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`situated suppliers. Dror v. Kenu, Inc., C.A. No. 19-3043-LB, 2019 WL 5684520, at *9 (N.D. Cal.
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`Nov. 1, 2019); Arkema Inc. v. Honeywell Int’l., Inc., 706 F.3d 1351 (Fed. Cir. 2013).
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`2.
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`Sufficiency of the Pleadings. Delaware courts require that pleadings identify at least
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`one specific product that is alleged to infringe. See Philips v. ASUSTek Computer Inc., C.A.
`
`No. 15-1125-GMS, 2016 WL 6246763, at *3-4 (D. Del. Oct. 25, 2016); TSMC Tech., Inc. v.
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`Zond, LLC, C.A. No. 14-721-LPS-CJB, 2014 WL 7498398, at *5 (D. Del. Jan. 8, 2014). Here,
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`Microsoft has identified specific products which SynKloud has accused of infringement but, in
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`fact, do not practice any claims of the Patents-in-Suit. Gammino v. American Tel. & Tel Co., Civ.
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`No. 12–666–LPS, 2013 WL 6154569, at *3 (D. Del. Nov. 22, 2013). Because Microsoft has
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`3
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`properly plead specific products and identified specific claim limitations that are not practiced by
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`those products, there is no basis for SynKloud’s request to dismiss the Complaint.
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`IV.
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`STATEMENT OF FACTS
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`Since 2007, Microsoft has developed, marketed, used and offered for sale its OneDrive
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`cloud storage software which comes pre-installed on Windows-based devices offered by
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`manufacturers including HP, Samsung, ASUS and Dell, among others. D.I. 1 at ¶24. OneDrive—
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`which works in conjunction with Microsoft’s Windows, Outlook and Edge software—allows users
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`the ability to store data on a remote storage server while also allowing access to that data from any
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`of the user’s devices. Id.
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`The Patents-in-Suit all relate to systems for remotely storing and accessing data, and can
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`be categorized into three distinct groups: (1) the ’526 Patent Family, consisting of the ’526, ’254,
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`’780, ’686, ’6880, ’690, and ’195 Patents, which describes wireless systems and processes for
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`storing data retrieved from a remote web server onto a remote storage server; (2) the ’225 Patent
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`Family, consisting of the ’225, ’923, and ’153 Patents, which describes systems and processes that
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`allow a wireless device to communicate with a network attached device in the same manner it
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`would with a local device; and (3) the ’7880 Patent which stands on its own and describes a system
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`for resolving conflicts when multiple users attempt to simultaneously access the same data. See
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`D.I. 1 at ¶¶13-23; see also id., Exs. A-K.
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`On March 22, 2019, SynKloud began a litigation and licensing campaign directed to the
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`cloud storage industry based primarily on the Patents-in-Suit. On that date, SynKloud brought an
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`infringement action against BLU Products, Inc. (“BLU”) asserting the ’526, ’254 and ’780 Patents.
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`See SynKloud Techs., LLC v. BLU Prods., Inc., C.A. No. 19-553-RGA, D.I. 1 (D. Del. Mar. 22,
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`2019). On that same date, SynKloud’s President, Robert Colao,
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`4
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`Adobe - Exhibit 1039, page 4
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` See Declaration of Ketan. V. Patel (“Patel Decl.”), Ex. A at 1.
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` Id. at 1.
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` Id. at 3.
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`22, 25, 34-40, 58, 68-74 and 77-84.
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` Id.
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` Patel Decl., Ex. B at 6, 16-
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` Id. at 68-74. No other party’s software or services are mentioned for these claims.
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` Patel Decl., Ex. C at 1
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`.
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` Id. at 1, 4.
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`5
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`Adobe - Exhibit 1039, page 5
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` Id. at 1.
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` Patel Decl., Ex. D at 12-17, 39-44, 53-58 and 61-68.
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` Id.
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` Id.
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`6-12, 15-22 and 25-32.
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` Patel Decl., Ex. E at 1.
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` Id.
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` Patel Decl., Ex. F at
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` Patel Decl., Ex. G at 1.
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` Patel Decl., Ex. H at 1.
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`On July 16, 2019, SynKloud brought suit against HP Inc. (“HP”) initially alleging
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`infringement of the ’526 and ’254 patents based on HP’s use of Microsoft Outlook and OneDrive.
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`See SynKloud Techs., LLC v. HP Inc., C.A. No. 19-1360-RGA, D.I. 1 (D. Del. July 16, 2019).
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`6
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`Adobe - Exhibit 1039, page 6
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`SynKloud later further accused OneDrive, in conjunction with Microsoft Windows, of causing HP
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`to infringe the ’225 patent. Id., D.I. 15. For each patent, SynKloud’s claim charts identified
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`Microsoft products and services, and included annotated images of Microsoft software. Id., Ex. 2
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`at 1-7; id., Ex. 4 at 1-8; id., Ex. 7 at 1-8. No other party’s software or services were mentioned.
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`On September 6, 2019, SynKloud filed three actions in the Western District of Texas
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`accusing cloud storage technology similar to that accused in the HP action. In two of three cases,
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`SynKloud alleged that these cloud storage service providers infringed patents closely related to
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`those asserted in the HP action and
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` See SynKloud Techs., LLC
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`v. Dropbox, Inc., No. 19-00526-ADA (W.D. Tex. Sept. 6, 2019) (asserting the ’254, ’780, ’686,
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`’6880, ’690 and ’195 Patents); SynKloud Techs., LLC v. Adobe Inc., No. 19-00527-ADA (W.D.
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`Tex. Sept. 6, 2019) (asserting same patents); see also SynKloud Techs., LLC v. Dropbox, Inc., C.A.
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`No. 19-00525-ADA (W.D. Tex. Sept. 6, 2019) (asserting the ’7880 Patent).
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`In response to SynKloud’s litigation and licensing campaign asserting different
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`combinations of cloud storage patents in multiple different jurisdictions, its accusations against
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`Microsoft’s customers, OEMS, products and services, and its public representations that it was
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`actively seeking licenses “to the [cloud computing] industry under its entire portfolio,” Microsoft
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`brought the instant action. See D.I. 1 at ¶27 (citing https://www.synkloud.com/licensing).
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`V.
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`LEGAL STANDARD
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`Because SynKloud disputes only the factual sufficiency of Microsoft’s allegations, the
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`Court must accept the allegations as true and consider them in the light most favorable to
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`Microsoft. See, e.g., Gould Elecs. Inc. v. United States, 220 F.3d 169, 176-77 (3d Cir. 2000).
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`Indeed, “[t]he standard for surviving a Rule 12(b)(1) motion is lower than that for a Rule 12(b)(6)
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`motion.” Gould Elect., 220 F.3d at 178; see also Kuhn Constr. Co. v. Diamond State Port Corp.,
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`7
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`Adobe - Exhibit 1039, page 7
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`C.A. No. 10-637, 2011 WL 1576691, at *2 (D. Del. Apr. 26, 2011) (“Dismissal for a facial
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`challenge to jurisdiction is ‘proper only when the claim clearly appears to be immaterial and made
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`solely for the purpose of obtaining jurisdiction or . . . is wholly insubstantial and frivolous.’”).
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`The Declaratory Judgment Act looks only for a “case of actual controversy” between the
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`parties for the Court to exercise jurisdiction. 28 U.S.C. §2201(a). In determining whether there is
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`subject matter jurisdiction, a court should ask “whether the facts alleged, under all circumstances,
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`show that there is a substantial controversy, between parties having adverse legal interests, of
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`sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune,
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`Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (internal citation omitted). To determine whether
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`a case or controversy exists, courts “look to the elements of the potential cause of action” and
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`whether there is “a reasonable potential that such a claim could be brought.” Microsoft Corp. v.
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`GeoTag, Inc., C.A. No. 11-175, 2014 WL 4312167, at *2 (D. Del. Aug. 29, 2014). An “adverse
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`legal interest” under MedImmune is a “dispute as to a legal right—for example an underlying legal
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`cause of action that the declaratory defendant could have brought or threatened to bring.” Arris,
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`639 F.3d at 1375. “Article III jurisdiction may be met where the patentee takes a position that puts
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`the declaratory judgment plaintiff in the position of either pursuing arguably illegal behavior or
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`abandoning that which he claims a right to do.” SanDisk Corp. v. STMicroelectronics, Inc., 480
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`F.3d 1372, 1381 (Fed. Cir. 2007).
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`VI. ARGUMENT
`
`A.
`
`SynKloud’s Motion to Dismiss Microsoft’s Complaint for Lack of Subject
`Matter Jurisdiction Should Be Denied
`
`1.
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`8
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`Adobe - Exhibit 1039, page 8
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` Patel Decl., Ex. A at 1; id., Ex. C at 1; id., Ex. D at 1
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`Further, Medimmune requires neither an express assertion of infringement nor any direct
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`communications or enforcement attempts between a patentee and a declaratory judgment plaintiff
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`to support jurisdiction. See id. at 1381 (finding an actual controversy despite no explicit accusation
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`of direct or indirect infringement); Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 902 (Fed. Cir.
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`2014) (finding jurisdiction though parties “did not discuss customer lawsuits [prior to] declaratory
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`judgment complaint”); DataTern, 755 F.3d at 905 (finding jurisdiction though “[n]othing in the
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`record suggest[ed] that Microsoft encouraged the acts accused of direct infringement”).
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`2.
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`SynKloud Has Effectively Accused Microsoft of Indirect Infringement
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`Moreover, the Federal Circuit has recognized that jurisdiction is not limited to only these
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`narrow circumstances. “[W]here a patent holder accuses customers of direct infringement based
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`on the sale or use of a supplier’s equipment, the supplier has standing to commence a declaratory
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`judgment action if . . . there is a controversy between the patentee and the supplier as to the
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`supplier’s liability for induced or contributory infringement based on the alleged acts of direct
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`9
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`Adobe - Exhibit 1039, page 9
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`infringement by its customers.” Arris, 639 F.3d at 1375; see also id. at 1378 (finding that the
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`patentee’s “extensive focus on [supplier’s] products in its infringement contentions” was sufficient
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`to support the implicit assertion that the supplier had indirectly infringed the patent under 35 U.S.C.
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`271(c)); id. at 1381 (finding that patentee’s infringement accusations against customer “carried the
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`implied assertion that [the supplier] was committing contributory infringement”).
`
`As in Arris, SynKloud’s suit against HP and its
`
`
`
` have also created legal adversity between SynKloud and Microsoft due to
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`SynKloud’s implied assertions of indirect infringement against Microsoft as to the ’526, ’254, ’225
`
`and ’780 patents. See, e.g. Patel Decl., Ex. B at 6, 16-22, 25, 34-40, 58, 68-74 and 77-84
`
`D at 12-17, 39-44, 53-58 and 61-68
`
`; Ex. F at 6-12, 15-22 and 25-32
`
`
`
`
`
`; Ex.
`
`
`
`
`
`
`
`; D.I. 1, Ex. L at 2-8 (same for HP laptops).
`
`In DataTern, the Federal Circuit found that infringement accusations against Microsoft’s
`
`customers created an actual controversy as to inducement of one of two patents at issue because
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`of evidence that Microsoft (and SAP) “provide[] [their] customers with the necessary components
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`to infringe [the asserted patents] as well as the instruction manuals for using the components in an
`
`infringing manner.” 755 F.3d at 904.2 “When the holder of a patent with system claims accuses a
`
`
`2 DataTern also found that jurisdiction did not exist for one of the two patents asserted against
`Microsoft. Id. at 905-06 (finding claim charts as to the second patent “substantively different
`[because] they cite[d] exclusively to third-party—not Microsoft provided documentation for
`
`10
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`Adobe - Exhibit 1039, page 10
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`

`

`customer of direct infringement based on the customer’s making, using, or selling of an allegedly
`
`infringing system in which a supplier’s product functions as a material component, there may be
`
`an implicit assertion that the supplier has indirectly infringed the patent.” Arris, 639 F.3d at 1375.
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`SynKloud has alleged that Microsoft provides material components—Outlook and
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`OneDrive software—of the allegedly infringing customer products. D.I. 1 at ¶¶3, 26, 29. Outlook
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`and OneDrive functionality is the heart of SynKloud’s infringement allegations. See Patel Decl.,
`
`Ex. B at 6, 16-22, 25, 34-40, 58, 68-74 and 77-84
`
`
`
`
`
`; Ex. D at 12-17, 39-44, 53-58 and 61-68; Ex.
`
`F at 6-12, 15-22 and 25-32; D.I. 1, Ex. L at 2-8; D.I. 1, Ex. M at 2-9; D.I. 1, Ex. N at 2-9.
`
`See, e.g., Ex. B at 21
`
`
`
`
`
`
`
`, 39 (same for ’526 patent), 73 (same for ’254
`
`patent) and 81
`
`. Indeed, there can be no doubt that
`
`SynKloud’s allegations rely upon Microsoft software as material components of the accused OEM
`
`devices. Its charts refer to Microsoft OneDrive and Outlook repeatedly—in fact, ten or more times
`
`for each patent claim. See, e.g., Id. at 68-74. Those charts refer to no other party’s software.
`
`Without the accusations against Microsoft, SynKloud’s claim charts would be nothing more than
`
`a hollow shell.
`
`
`several key claim limitations”). In contrast, SynKloud’s allegations here rely exclusively on
`Microsoft provided instructions in the form of screenshots of Microsoft functionality. See, e.g.,
`Patel Decl., Ex. B at 16-22, 34-40, 68-74.
`
`11
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`Adobe - Exhibit 1039, page 11
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`

`

`In fact, upon reviewing SynKloud’s claim charts,
`
` Patel Decl., Ex. G at 1.
`
` Id., Ex. H at 1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Accordingly, there is sufficient record evidence to support an actual controversy as to
`
`Microsoft’s alleged liability for at least indirect infringement of the ’526, ’254, ’780 and ’225
`
`patents.
`
`3.
`
`SynKloud Has Effectively Accused Microsoft of Direct Infringement
`
`Even if SynKloud had not accused Microsoft of indirectly infringing the Patents-in-Suit,
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`subject matter jurisdiction exists over Microsoft’s claims as neither the existence of
`
`indemnification obligations nor theories of indirect infringement are prerequisites for establishing
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`subject matter jurisdiction. In re Mobile Telecomm. Techs., LLC, 247 F. Supp. 3d 456, 461 (D.
`
`Del. 2017). In determining whether a case or controversy exists, courts also “look to the elements
`
`of the potential cause of action.” DataTern, 755 F.3d at 904-05. To support jurisdiction, there only
`
`need be “a reasonable potential that such a claim could be brought.” Id. at 905. Accordingly, a
`
`supplier may be accused of directly infringing a patent based on the same direct infringement
`
`allegation against a customer. GeoTag, 2014 WL 4312167, at *2 (noting that patentee “could just
`
`as easily have asserted a claim of direct infringement against [the declaratory judgment plaintiff
`
`supplier], based on the same underlying circumstances in the customer suits. An express accusation
`
`12
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`Adobe - Exhibit 1039, page 12
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`

`

`[of direct infringement] by [the patentee] was unnecessary.”); see also Intel, 2015 WL 649294, at
`
`*7 n.10 (“There could well be situations, particularly regarding a patent claim covering a product,
`
`system, or apparatus, where a patentee clearly accuses a customer of direct infringement of a claim
`
`solely due to the use or sale of a component purchased from a manufacturer supplier.”).
`
`Here, SynKloud has broadly accused at least HP,
`
` of infringing
`
`the Patents-in-Suit merely on the basis that each sells wireless devices pre-installed with Outlook
`
`and OneDrive. Patel Decl., Ex. B at 6, 16-22, 25, 34-40, 58, 68-74 and 77-84; Ex. D at 12-17, 39-
`
`44, 53-58 and 61-68; Ex. F at 6-12, 15-22 and 25-32; D.I. 1, Ex. L at 2-8, Ex. M at 2-9, Ex. N at
`
`2-9. SynKloud has accused Microsoft’s software and servers of performing all of the functionality
`
`necessary to remotely store and retrieve data. See, e.g., Patel Decl., Ex. B at 6, 16-22, 25, 34-40,
`
`58, 68-74 and 77-84
`
`
`
`; see also Ex. D at 12-17, 39-44, 53-58 and 61-68;
`
`Ex. F at 6-12, 15-22 and 25-32; D.I. 1, Ex. L at 2-8; Ex. M at 2-9; Ex. N at 2-9.
`
`In fact, SynKloud’s claim charts often use the exact same screen captures of OneDrive
`
`functionality, regardless of the devices accused, despite claiming that the images describe the
`
`operation of two different devices. Compare Patel Decl., Ex. B
`
` at 35-40,
`
`69-74 and Ex. D
`
` at 13-17, 40-44
`
`
`
`; also
`
`compare Ex. B
`
` at 79-84 and D.I. 1, Ex. N (HP ’225 Patent
`
`Claim Chart) at 4-9 (alleging infringement of different OEM devices using identical descriptions
`
`and screenshots captured on same days at same times). By doing so, SynKloud effectively
`
`concedes that the focus of its infringement claims is Microsoft’s products and services, not the
`
`OEM laptops or other devices.
`
`13
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`Adobe - Exhibit 1039, page 13
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`

`

`Accordingly, there is sufficient record evidence to support an actual controversy as to
`
`Microsoft’s alleged liability for direct infringement of at least the ’526, ’254, ’780 and ’225
`
`patents.
`
`4.
`
`Subject Matter Jurisdiction Also Exists for Patents Closely Related to
`the ’526, ’254, ’780 and ’225 Patents
`
`Despite SynKloud’s protests, courts have routinely found that relationship between
`
`asserted and unasserted patents are an important factor in determining declaratory judgment
`
`jurisdiction. SynKloud’s argument that the Court lacks subject matter jurisdiction over 8 of the 11
`
`Patents-in-Suit simply because it did not assert those patents against HP (D.I. 9 at 10) fails to meet
`
`the substance of this issue. Microsoft’s Complaint and SynKloud’s
`
`
`
` demonstrate that four of the eleven Patents-in-Suit (the ’526, ’254, ’780
`
`and ’225 Patents) are asserted solely based on Microsoft products and services, and six additional
`
`patents (the ’6880, ’690, ’686, ‘923 and ’195 Patents) are closely related to at least those four
`
`patents. See D.I. 1 at ¶¶13-23; id., Exs. A-K.
`
`Microsoft’s inclusion of these other patents conforms to accepted declaratory judgment
`
`precedent. For example, in Dror, 2019 WL 5684520, at *9, a court found jurisdiction over all
`
`patents in a four-patent declaratory judgment action despite the patentee’s argument that it had not
`
`ever alleged that two of the patents had been infringed. The court found that “a specific threat of
`
`infringement litigation by the patentee is not required to establish jurisdiction” and because the
`
`patentee had threated to sue with respect to two of the four asserted patents, the relationship
`
`between the four patents gave rise to declaratory-judgment jurisdiction for all patents. Id.
`
`Similarly, in Arkema, the Federal Circuit ruled in favor of a declaratory judgment plaintiff
`
`finding that where two patents were already at issue in a litigation, the district court had subject
`
`matter jurisdiction for a declaratory judgment action against two continuation patents. 706 F.3d at
`
`14
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`Adobe - Exhibit 1039, page 14
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`

`

`1357. The court found that this was “a quintessential example of a situation in which declaratory
`
`relief [was] warranted” because the declaratory judgment plaintiff had plans to offer a product in
`
`the United States, but if t