Ultra Products, Inc. v. Antec, Inc. et al

Filing 426

STIPULATION AND ORDER AS MODIFIED BY THE COURT RE 425 Stipulation, filed by Streak Products Inc, Case stayed.Signed by Judge Richard Seeborg on 11/30/11. (cl, COURT STAFF) (Filed on 11/30/2011)

*E-Filed 11/30/11*
GREENBERG TRAURIG, LLP
Michael A. Nicodema(¡tro hac
2 vice)(nicodemam@gtlaw. com)
David M. Joyal Qtro hac
J v i c e)Q oy ald@ gtl aw. co m)
200 Park Avenue, P.O. Box 677
4 Florham Park, New Jersey 07932
Telephone: [phone]
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Facsmile: (973) 301 -841 0
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Jeffrey K. Joyner (SBN
I 80a85)( oyned @gtlaw.com)
Jeffrey F. Yee (SBN
I 9 3 I 23)(y eej @ gtl aw. com)
2450 Colorado Avenue, Suite
400 East
Santa Monica, California 90404
Telephone: (3 I 0) 586-7700
Facsimile: (3 l0) 586-7800

MOUNT SPELMAN & FINGERMAN, P.C.
Daniel S. Mount, Esq. (Cal. Bar No. 77517)
Kathryn G. Spelman, Esq. (Cal. Bar No. 154512)
Kevin M. Pasquinelli, Esq. (Cal. Bar No. 246985)
Daniel H. Fingerman, Esq. (Cal. Bar No. 229683)
On Lu, Esq. (Cal. Bar No. 242693)
Mount, Spelman & Fingerman, P.C.
RiverPark Tower, Suite 1650
333 West San Carlos Street
San Jose CA 95110-2740
Phone: [phone]
Fax: [phone]
Email : [e-mail]
Attorneys for Defendants and Counter Claimants

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Attorneys for Plaintiff and Counterclaim
I 2 Defendant

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA, SAN FRANCISCO DIVISION

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Streak Products, Inc.,

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Plaintiff,
vs.

Antec, Inc.,E-Power Technology/PCMCl S,
Enermax Technology Corp., Enermax USA
Corp., Mushkin Inc., Sea Sonic Electronics Co.
Ltd., Sea Sonic Electronics Inc., Tagan
Technology Co., Topower Computer Industrial
Co. Ltd., and Topower Computer (USA) Inc.,

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CASE NO. CVO9-04255 RS

JUDGE: HONORABLE RICHARD
SEEBORG
AS MODIFIED BY THE COURT
JOINT STIPULATION and PROPOSED
ORDER REGARDING
(1) DISMISSAL OF DEFENDANTS' FALSE

MARKING AND UNFAIR COMPETITION
COUNTERCLAIMS; AND

Defendants, Counter-Claimants

(2) STAY OF PROCEEDINGS PENDTNG
FINAL OUTCOME OF INTER PARTES
REEXAMINATION SERIAL NO. 95/001,319

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Courtroom:

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NY 241,598,337v2 I I -1 1 -1 1

April4,2008

Trial Date:

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Case Filed:

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December 2012

RECITALS

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WHEREAS, Plaintiff Streak Products, Inc. ("Plaintiff') and Defendants Antec, Inc. ("Antec");

Mushkin, Inc. ("Mushkin"); Tagan Technology Co. ("Tagan"); Topower Computer (USA), Inc.

4 ("Topower USA"); Enermax USA Corp. ("Enermax
USA"); Sea Sonic Electronics, Inc. ("Sea Sonic
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USA");

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("Topower TW"); and Enermax Technology Corp. ("Enermax TW") (collectively, "the Defendants")

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(Plaintiff and Defendants collectively, "the Parties") recognize the uncertainty of the outcome

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complex litigation and commercial disputes, as well as the extended period of time that it could

Sea Sonic Electronics Co., Ltd. ("Sea Sonic TW")t Topower Computer Industrial Co., Ltd.

and the substantial cost that would be incurred, for the parties to resolve their respective claims in thi

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case through litigation; and have independently concluded that their respective interests would best

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served by

limiting the scope of the disputes between them where possible so as to efficiently resolve any

t2 remaining disputes between them as to U.S. Patent No. 7,133,293 ("the'293 Patent") on a goingl3 forward basis;
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WHEREAS, in response to Plaintiff s Complaint for patent infringement, each of the Defendants

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ç292,
l6 Plaintiff s sale of its Power Bar product marked with the '293 Patent number;
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based on

WHEREAS, in response to Plaintiffls Complaint for patent infringement, each of the Defendan

l8 served an answer including a counterclaim for unfair competition under the California Business &
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Professions Code $ 17200 based on their allegations of false patent marking;

WHEREAS, on September 16, 2011, President Obama signed into law the Leahy-Smith

2t America Invents Act ("the America Invents Act"), which inter alio amended 35 U.S.C. ç 292(b) to
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state that "[o]nly the United States may sue for penalty"; and (2) state that only those parties who

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assert a "competitive injury" may file a civil action for recovery of damages "adequate to compe

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(l)

for the injury";

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WHEREAS, the America Invents Act states that the amendments to $292 shall apply to all cases

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WHEREAS, the Defendants have agreed to dismiss, with prejudice, their counterclaims for false

28 patent marking and unfair competition under the California Business

& Professions Code $ 17200;

WHEREAS, Plaintiff and the Defendants have jointly agreed to stay this litigation pending hnal

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of

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resolution

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Reexamination Proceeding"), including frnal resolution of any appeals to the Board of Patent Appeals

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and Interferences and the United States Court of Appeals for the Federal Circuit'

U.S. Patent and Trademark Office Inter Partes Reexamination Serial No. 95/001,319 ("the

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WHEREAS, Defendants have discussed dismissal of the counterclaim for false patent marking

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under 35 U.S.C. ç292 with the Director of Intellectual Property Staff of the U.S. Department of Justice,

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Civil Division,

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counterclaim;

and he has indicated that the Department of Justice

will not object to the dismissal of

this

WHEREAS, the Parties agree that this stipulation agreeing to a stay of the proceedings does not
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affect the stay previously granted to defendants Magnell and NewEgg (Dkt. #261) which remains in

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effect as granted; and

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STIPULATION

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IT IS HEREBY STIPULATED, by and between the Plaintiff and the Defendants, through their

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l5 undersigned attorneys of record,
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and in accordance with the recitals contained herein, that:

The Defendants agree to dismiss their counterclaims for false patent marking and for unfair

t7 competition under the California Business & Professions Code $ 17200 with prejudice, and

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2.

The Parties agree that this litigation be stayed pending final resolution of the Reexamination

t9 Proceeding, including final resolution of any appeals to the Board of Patent Appeals and Interferences
20 and the United States Court of Appeals for the Federal Circuit.

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3.

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litigation was stayed pending final resolution of the Reexamination Proceeding shall not be disclosed to

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the

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USPTO decisions or any other thing associated with the Reexamination Proceeding from being

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introduced into evidence in the litigation as permitted by the Federal Rules of Evidence or any other

The Parties agree that in the event this litigation proceeds to a jury trial, the fact that this

jury. Such agreement

26 appropriate rule or law.
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does not preclude the admission

of the Reexamination Proceeding, its filings,

The stay discussed in paragraph 2, will run for six months from the date of
this order. The parties will schedule a Case Management Conference a
month before the conclusion of this six month period.

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Dated: November 30, 201I

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Respectfully submitted,

J

GREENBERG TRAURIG, LLP

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Michael A. NicodemaQtro hac vice)
David M. Joyal Qtro hac vice)
Jeffrey K. Joyner (SBN 180485)
Jeffrey F. Yee (SBN 193123)

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By: /s/ JeÍfrelt F. Yee
Attorneys for Plaintiff Streak Products, Inc.

MOUNT, SPELMAN & FINGERMAN, P.C.
Daniel S. Mount, Esq. (Cal. Bar No. 77517)
Kathryn G. Spelman, Esq.(Cal. BarNo. 154512)
Kevin M. Pasquinelli, Esq. (Cal. Bar No. 246985)

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Daniel H. Fingerman, Esq. (Cal. Bar No. 229683)
On Lu, Esq. (Cal. Bar No. 242693)

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By:

/s/ Kevin M. Pasquinelli (withpermissiorl)_
Attorneys for Defendants-Counterclaimants

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l5 PURSUANT TO STIPULATION,IT IS SO ORDERED:

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Dated:

11/30/11

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United States District Judge