Greenliant Systems, Inc. v. Xicor LLC

Filing 31

STIPULATION AND ORDER DISMISSING CLAIMS #1-11 AND ENTERING JUDGMENT ON CLAIMS 12 AND 13 re 22 Stipulation filed by Xicor LLC. Signed by Judge Edward M. Chen on 6/22/11. (bpf, COURT STAFF) (Filed on 6/22/2011)

1 Ronald L. Yin (Bar No. 063266)
[e-mail]

2 Michael G. Schwartz (Bar No. 197010)
[e-mail]

3 Erik R. Fuehrer (Bar No. 252578)
4 [e-mail]
DLA Piper LLP (US)
5 2000 University Avenue
East Palo Alto, CA 94303-2214
6 Tel: [phone]
Fax: [phone]

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8 Attorneys for Plaintiff

Greenliant Systems, Inc.

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Kimberly P. Zapata (Bar No. 138291)

10 [e-mail]
11 Beck, Ross, Bismonte & Finley LLP

50 W. San Fernando Street, Suite 1300
12 San Jose, CA 95113
Tel: [phone]
13 Fax: [phone]

14 Attorneys for Defendant
15 Xicor LLC

UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

18 GREENLIANT SYSTEMS, INC.
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Plaintiff,
v.

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XICOR LLC.
Defendant.

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CASE NO. CV 11-00631 MHP
STIPULATED REQUEST TO
DISMISS PLAINTIFF’S CLAIMS
RELATED TO CLAIMS 1-11 OF
U.S. PATENT NO. RE38,370 AND
ENTER JUDGMENT ON CLAIMS
12 & 13 OF US PATENT NO.
RE38,370
[Civil Local Rule 7-12]

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STIPULATED REQUEST TO DISMISS CLAIMS 1-11 AND
ENTER JUDGMENT ON CLAIMS 12 & 13 OF U.S. PATENT
NO. RE38,370

CASE NO. CV 11-0631 MHP

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Pursuant to Local Rule 7-12 of the United States District Court for the Northern District of

2 California, Plaintiff Greenliant Systems, Inc. (“Greenliant”) and Defendant Xicor LLC (“Xicor”)
3 stipulate and agree to dismiss Greenliant’s claims for declaratory relief related to claims 1-11 of
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U.S. Patent No. RE38,370 (the “’370 patent”) and that the Court’s Memorandum & Order entered

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on March 21, 2011 in Silicon Storage Technology, Inc. v. Xicor LLC, No. CV 10-1515 (Dkt. No.
76) (the “March 21 Order”), granting Silicon Storage Technology, Inc.’s summary judgment

8 motion should apply equally in this case.
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STIPULATION
WHEREAS, Greenliant filed this action on February 11, 2011 seeking a declaratory
judgment of non-infringement and invalidity of all claims of the ’370 patent.
WHEREAS, on March 1, 2011, Greenliant agreed to be bound by the results of the cross-

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motions for summary judgment filed in Silicon Storage Technology, Inc. v. Xicor LLC, No. CV

15 10-1515 regarding whether claims 12 and 13 of the ’370 patent were invalid under the rule against
16 recapture.
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WHEREAS, on March 7, 2011, the Court in Silicon Storage Technology, Inc. v. Xicor

18 LLC, No. CV 10-1515 held a hearing on the cross-motions for summary judgment.
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WHEREAS, on March 21, 2011, the Honorable Judge Patel entered summary judgment

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that claims 12 and 13 of the ’370 patent were invalid under the rule against recapture in the March
21 Order.
WHEREAS, on June 1, 2011 Xicor covenanted as follows:
Xicor LLC (“Xicor”), on behalf of itself and any successors-ininterest to U.S. Patent No. RE38,370 (the “’370 patent),
unconditionally covenants not to sue Greenliant Systems Inc.,
(“Greenliant”), or its successors-in-interest, for infringement of
claims 1-11 of the ’370 patent based on Greenliant’s past, present,
and future manufacture, having manufactured, importation, use, sale
and/or offer for sale of any product or process of Greenliant that
STIPULATED REQUEST TO DISMISS CLAIMS 1-11 AND
ENTER JUDGMENT ON CLAIMS 12 & 13 OF U.S. PATENT
NO. RE38,370

CASE NO. CV 11-0631 MHP

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exists on or before the date of this covenant. Further, the foregoing
covenant not to sue on claims 1-11 of the ’370 patent extends to any
past, present, and future distributors, customers, suppliers, and
manufacturers of any product or process that was manufactured,
having manufactured, used, sold, offered for sale, or imported by
Greenliant on or before the date of this covenant, but only to the
extent that: (a) such suit is based on the making, use, distribution,
sale or offer to sale of a Greenliant product or process that exists on
or before this covenant was made, or (b) such suit is based on a
combination of a current Greenliant product or process and one or
more non-Greenliant products or process, such that a combination
would not constitute direct or indirect infringement of the ’370
patent absent the Greenliant product or process. This covenant also
extends to Greenliant Systems, Ltd. and its subsidiaries and their
past, present, and future customers, but only to the extent of their
involvement, if any, in the manufacture, having manufactured,
importation, use, sale, and/or offer for sale of a currently existing
Greenliant product or process. This covenant shall automatically
bind all successors to and any future assignees of the ’370 patent.

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WHEREAS, the parties agree that, because of Xicor’s covenant not to sue Greenliant on

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claims 1-11, no substantial controversy currently exists between the parties regarding claims 1-11
of the ’370 patent.

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IT IS THEREFORE STIPULATED BY AND AMONG THE PARTIES THROUGH

17 THEIR RESPECTIVE COUNSEL AS FOLLOWS:
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The Court should dismiss Greenliant Systems, Inc.’s claims for declaratory judgment relief

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20 of noninfringement and invalidity that relate to claims 1-11 of the ’370 patent.
Because the parties agreed to be bound by the results of the cross-motions for summary

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22 judgment filed in Silicon Storage Technology, Inc. v. Xicor LLC, No. CV 10-1515, on that basis,
23 the parties stipulate that the March 21 Order applies equally in this case and should be entered
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herein.

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Accordingly, entry of the March 21 Order in this case resolves Greenliant System, Inc.’s
claims for declaratory judgment relief of noninfringement and invalidity of claims 12 and 13 of
STIPULATED REQUEST TO DISMISS CLAIMS 1-11 AND
ENTER JUDGMENT ON CLAIMS 12 & 13 OF U.S. PATENT
NO. RE38,370

CASE NO. CV 11-0631 MHP

1 the ’370 patent. As such, the parties agree that the Court may proceed to enter final judgment in
2 this case.
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Xicor LLC expressly reserves, and by this stipulation does not in any respect waive, the
right to file an appeal from any judgment entered in this matter. Xicor specifically reserves all
rights to contest on appeal any and all factual or legal findings of the Court’s March 21 Order, and
to urge or contest on appeal any basis for reversal of the March 21 Order. Greenliant expressly

8 reserves all rights to argue on appeal any basis for dismissal of the appeal and affirmance of the
9 March 21 Order.
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To the extent that SST moves to intervene in this case either before entry of judgment or

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after appeal, Greenliant by making this stipulation does not waive any right it may have to support

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such intervention.

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14 Respectfully submitted by:
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SHORE CHAN BRAGALONE DEPUMPO LLP

DLA PIPER LLP (US)

/s/ Jeffrey R. Bragalone
Attorneys for Defendant

/s/ Ronald L. Yin
Ronald L. Yin
Attorneys for Plaintiff
Greenliant Systems, Inc.

Date: June 6, 2011

Date: June 6, 2011

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17 Jeffrey R. Bragalone
18 Xicor LLC
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STIPULATED REQUEST TO DISMISS CLAIMS 1-11 AND
ENTER JUDGMENT ON CLAIMS 12 & 13 OF U.S. PATENT
NO. RE38,370

CASE NO. CV 11-0631 MHP

1 PURSUANT TO THE STIPULATION, IT IS SO ORDERED

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Pursuant to General Order No. 45, Section X (B) regarding signatures, I, Jeffrey R.

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Edward M. Chen

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FILERS ATTESTATIONC
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Honorable MarilynED Patel
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Bragalone, attest that concurrence in the filing ofD I S document O been obtained.
this
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By: /s/ Jeffrey R. Bragalone
Jeffrey R. Bragalone

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STIPULATED REQUEST TO DISMISS CLAIMS 1-11 AND
ENTER JUDGMENT ON CLAIMS 12 & 13 OF U.S. PATENT
NO. RE38,370

CASE NO. CV 11-0631 MHP