SecuGen Corporation v. Suprema, Inc.

Filing 26

STIPULATION and ORDER Temporarily Staying Case. Signed by Judge Susan Illston on 12/4/2011. (rcs, COURT STAFF) (Filed on 12/14/2011)

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Brian E. Mitchell (SBN 190095)
Jigang Jin (SBN 239465)
MITCHELL + COMPANY, LAW
OFFICES
4 Embarcadero Center, Suite 1400
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Craig C. Daniel (SBN 212588)
Axcel Law Partners LLP
Four Embarcadero Center, 14th Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: 415-704-8804
[e-mail]

D. James Pak (SBN 194331)
BAKER & McKENZIE LLP
12544 High Bluff Drive, Third Floor
San Diego, CA 92130-3051
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Tod Gamlen (SBN 83458)
BAKER & McKENZIE LLP
660 Hansen Way
Palo Alto, California 94304
Tel: [phone]
Fax: [phone]
[e-mail]
Attorneys for Defendant Suprema, Inc.

Attorneys for Plaintiff SecuGen Corporation

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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SECUGEN CORPORATION

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Case No. 11-CV-3450 SI

Plaintiff,

STIPULATION AND [PROPOSED]
ORDER TEMPORARILY STAYING
CASE

v.
SUPREMA, INC., et al.
Defendants.

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Baker & McKenzie LLP
12544 High Bluff Drive,
Third Floor
San Diego, CA 92130-

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Case No. 11-CV-3450 SI
JOINT STIPULATION TO STAY

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Plaintiff SecuGen Corporation (“SecuGen”) and Defendant Suprema, Inc.
(“Suprema”) hereby stipulate as follows:
WHEREAS, there are currently two pending lawsuits between SecuGen and
Suprema;

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WHEREAS, on July 14, 2011, Plaintiff SecuGen filed this action for patent

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infringement against Defendant Suprema [D.I. 1] (“the SecuGen Patent Infringement

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Action”);

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WHEREAS, on October 14, 2011, SecuGen filed a First Amended Complaint

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adding as defendants RBH Access Technologies, Inc., RBH USA, Inc. and Apirary,

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Inc. on the basis that they market or re-sell Suprema’s products in the United States

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[D.I. 15];

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WHEREAS, Suprema’s response to the First Amended Complaint is due on

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December 1, 2011 [D.I. 18], and the Case Management Conference has been

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scheduled for January 13, 2012 [D.I. 13];

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WHEREAS, on June 7, 2011, prior to the filing of the present action, Suprema

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filed a Declaratory Judgment action in this District Court against SecuGen, seeking,

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inter alia, a declaration as valid and enforceable a “No Proceeding Clause” in an OEM

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Agreement between Suprema and SecuGen dated May 6, 2009, [Case No. 3:11-cv-

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02783-WHA (“the Suprema Contract Action”)].

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Proceeding Clause” is valid and enforceable, and has counterclaimed for breach of

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contract and fraud,

SecuGen denies that the “No

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WHEREAS, in the Suprema Contract Action, Suprema alleges that under the

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No Proceeding Clause SecuGen is precluded from initiating any adverse proceeding

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against Suprema, including any action for infringement of any of SecuGen’s IP rights,

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during the term of the OEM Agreement, which is set to expire on May 6, 2012; and

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WHEREAS, SecuGen and Suprema agree that the OEM Agreement does not

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bar SecuGen’s pursuit of a patent infringement action against Suprema for products

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Baker & McKenzie LLP
12544 High Bluff Drive,
Third Floor
San Diego, CA 92130

Case No. 11-CV-3450 SI
JOINT STIPULATION TO STAY

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sold or offered for sale on or after May 6, 2012, and therefore currently agree, at a

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minimum, to stay the SecuGen Patent Infringement Action until May 6, 2012,

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without prejudice to any party seeking to extend such stay pending resolution of the

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Suprema Contract Action.

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THEREFORE, IT IS HEREBY STIPULATED by the parties and the parties
respectfully request the Court as follows:
(1)

The present SecuGen Patent Infringement Action shall be stayed until

May 6, 2012;
(2)

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Defendants responses to the First Amended Complaint in the present

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SecuGen Patent Infringement Action shall be due within fourteen (14) days of the lift

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of the stay; and

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(3)

Nothing in this stipulation prevents any party from requesting an

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extension of this stay from the Court pending resolution of the Suprema Contract

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Action.

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Dated: December 1, 2011

Respectfully submitted,

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SecuGen Corporation

Suprema, Inc.

______/s/_________
Brian E. Mitchell

_____/s/________
D. James Pak

Attorneys for Plaintiff SecuGen
Corporation

Attorneys for Defendant Suprema, Inc.

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Baker & McKenzie LLP
12544 High Bluff Drive,
Third Floor
San Diego, CA 92130

ORDER
PURSUANT TO STIPULATION, IT IS SO ORDERED
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December __, 2011

____________________________
Susan Ilston
United States District Judge
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Case No. 11-CV-3450 SI
JOINT STIPULATION TO STAY

ATTESTATION PER GENERAL ORDER 45
I, Craig C. Daniel, am the ECF User whose ID and password are being used to file this
Stipulation. In compliance with General Order 45, X.B., I hereby attest that the counsel
listed above have concurred with this filing.
Dated: December 1, 2011
/s/_________
Craig C. Daniel
Attorneys for SecuGen Corporation