GeoTag, Inc. v. Zoosk, Inc.

Filing 219

STIPULATION AND ORDER re 218 TO CONTINUE CASE MANAGEMENT CONFERENCE AND STAY OF CASE filed by Geotag, Inc. Case Management Statement due by 4/23/2015. Further Case Management Conference set for 4/30/2015 10:30 AM in Courtroom 5, 17th Floor, San Francisco.. Signed by Judge Edward M. Chen on 10/6/14. (bpf, COURT STAFF) (Filed on 10/6/2014)

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STEPHEN F. MALOUF (PRO HAC VICE)
[e-mail]
JEREMY MARTIN (PRO HAC VICE)
[e-mail]
JONATHAN NOCKELS (PRO HAC VICE)
[e-mail]
MALOUF & NOCKELS LLP
3811 Turtle Creek Blvd., Suite 800
Dallas, Texas 75219
214-969-7373 (Telephone)
214-969-7648 (Facsimile)
JEFFREY A. TINKER (PRO HAC VICE)
[e-mail]
Winstead PC
500 Winstead Building
2728 N. Harwood Street
Dallas, Texas 75201

CHARLENE M. MORROW (CSB No.
136411)
[e-mail]
HECTOR J. RIBERA (CSB No. 221511)
[e-mail]
BRIAN E. LAHTI (CSB No. 278951)
[e-mail]
FENWICK & WEST LLP
Silicon Valley Center
801 California Street
Mountain View, CA 94041
Telephone:
650.988.8500
Facsimile:
650.938.5200
Attorneys for Defendant and
Counterclaimant
ZOOSK, INC.

JOSEPH A. GRECO (Cal. Bar No. 104476)
[e-mail]
KIMBERLY P. ZAPATA (Cal. Bar No. 138291)
[e-mail]
Beck, Bismonte & Finley, LLP
150 Almaden Boulevard, 10th Floor
San Jose, CA 95113
Telephone: [phone]
Facsimile: 408.938.0790
Attorneys for Plaintiff and CounterclaimDefendant GEOTAG, INC.
UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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GEOTAG, INC.,

Case No.: 13-cv-00217-EMC
Plaintiff,

v.
ZOOSK, INC.,
Defendant.
AND RELATED COUNTERCLAIMS.

STIPULATION AND [PROPOSED]
ORDER TO CONTINUE CASE
MANAGEMENT CONFERENCE AND
STAY OF CASE
Current CMC Date: October 9, 2014
Requested CMC Date: TBD

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STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

CASE NO.: 13-cv-00217-EMC

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This case presently is scheduled for a Case Management Conference on Thursday,

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October 9, 2014. The Joint Case Management Conference Statement is due on October 2, 2014.

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The parties respectfully request that the Court continue the Case Management Conference until

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sometime after the completion of appellate review of the summary judgment orders entered in

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related cases GeoTag, Inc. v. Starbucks Corp., et al., Case No. 2:10-cv-572 (E.D. Tex. Nov. 7,

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2013) and Microsoft Corp. and Google v. GeoTag, Inc., Case No. 1:11-cv-175 (RGA) (D. Del

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May 13, 2014).

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1.

On July 29, 2014, this Court entered the Stipulation and Proposed Order to

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the Court and the parties could know the outcome of GeoTag’s case against Google in the District

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management conference continued until October 9, 2014 and the case stayed until then, so that

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Continue Case Management Conference and Stay of Case (Docket No. 216), ordering the case

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of Delaware (Microsoft Corporation et al. v. GeoTag, Inc., Civil Action No. 11-00175-RGA),

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which involves the same GeoTag patent as is involved in this case.

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2.

In April 2014, the District of Delaware issued an order denying Google’s motions

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for summary judgment of laches and invalidity and granting Google’s motion for

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noninfringement, involving the same GeoTag patent involved in this case. The public version of

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the Court’s Memorandum Opinion is Dkt. No. 477, filed April 22, 2014. Final judgment is likely

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to be entered soon. On September 12, 2014, Google told the Delaware court that “Google and

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GeoTag, Inc. (“GeoTag”) are working to finalize a proposed final judgment to submit for Court

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approval. Google currently expects to submit a proposed judgment after GeoTag and Microsoft

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finalize their stipulation to dismiss this action as it relates to Microsoft . . . .” Dkt. No. 512. On

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October 1, 2014, the Delaware court granted the stipulation of dismissal as to Microsoft. Dkt.

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No. 518. Moreover, that same day, the Delaware court closed the case and sent the “Report to the

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Commissioner of Patents and Trademarks” for the ’474 patent. GeoTag plans to appeal the order,

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as soon as final judgment is entered in the matter.

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3.

In August 2014, the Magistrate Judge Roy S. Payne for the Eastern District of

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Texas issued a report and recommendation to Judge Michael H. Schneider granting summary

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judgment of non-infringement in GeoTag, Inc. v. Starbucks Corp., et al., Case No. 2:10-cv-572
STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

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CASE NO.: 13-cv-00217-EMC

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(E.D. Tex. Nov. 7, 2013), involving the same GeoTag patent involved in this case. Judge

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Schneider has not yet ruled on the recommendation. In the event that Judge Schneider confirms

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the recommendation, GeoTag will appeal the order.

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4.

The parties in this case believe that it makes sense for the parties and the Court to

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know the outcome of the appellate adjudication of the summary judgments orders in the Google

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and Starbuck cases before proceeding with this case because the Federal Circuit’s rulings will

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likely be instructive on the issues posed in this action and may even be dispositive of this action.

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Further, a stay of proceedings until the Federal Circuit rules on GeoTag’s forthcoming appeals

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will promote judicial economy by likely brining finality and certainty to issues regarding claim

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in this action were construed in the Delaware Action and Starbucks Action. The Federal Circuit’s

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construction and infringement. Many of the same claim terms that are proposed for construction

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ruling on those constructions will therefore directly impact this action. Additionally, the claims

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terms that are the basis for those summary judgment orders (“dynamic replication” and

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“geographical areas”) are also a basis for Zoosk’s non-infringement defense in this action.

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In the alternative, if the Court does not stay this action pending appeal, it could cost both

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the Court and the parties substantial resources. The parties would likely complete claim

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construction, fact discovery, expert reports, and dispositive motions before a ruling from the

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Federal Circuit. These exercises could be for naught depending on the Federal Circuit’s ruling.

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As such, in the context of concurrent patent infringement lawsuits involving the same patents,

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courts frequently stay all proceedings following an appeal of one of the related cases to the

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Federal Circuit. See e.g., Phonometrics, Inc. v. Economy Inns of America, 349 F.3d 1356, 1360

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(Fed. Cir. 2003) (acknowledging that the “district court twice stayed the present actions pending

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our decisions in Northern Telecom and Choice Hotels, respectively”); Smithkline Beecham Corp.

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v. Apotex Corp., 2004 WL 1615307, *7 (E.D. Pa. 2004) (staying consolidated action against non-

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Apotex defendants pending review of ruling from Apotex case); Rosenthal Collins Group, LLC v.

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Trading Tech. Int’l, Inc., 2009 WL 3055381 (N.D. Ill. 2009) (staying case because “it makes little

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sense to proceed further on the merits of the underlying patent infringement dispute” until the

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Federal Circuit rules on claim construction issues in other actions that “may affect the direction of
STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

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CASE NO.: 13-cv-00217-EMC

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this case”).
Accordingly, the parties to this action hereby respectfully request that the Court continue

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the Case Management Conference currently scheduled to take place on October 9, 2014 until

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sometime after the completion of the appellate review of the summary judgment orders entered in

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related cases GeoTag, Inc. v. Starbucks Corp., et al., Case No. 2:10-cv-572 (E.D. Tex. Nov. 7,

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2013) and Microsoft Corp. and Google v. GeoTag, Inc., Case No. 1:11-cv-175 (RGA) (D. Del

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May 13, 2014), and to continue the stay of this case until that continued Case Management

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Conference.

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SO STIPULATED.

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By: /s/ Joseph A. Greco
Joseph A. Greco
Attorneys for Plaintiff and CounterclaimDefendant
GeoTag, Inc.

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FENWICK & WEST LLP

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By: /s/ Brian E. Lahti
Brian E. Lahti
Attorneys for Defendant and
Counterclaimant
Zoosk, Inc.

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NO
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STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

. Chen

dward M

Judge E

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IT IS S
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PURSUANT TO STIPULATION, IT IS SO ORDERED. The Further CMC is reset
for 4/30/15 at 10:30 a.m. subject to further continuance. An
updated joint CMC statement shall be filed by 4/23/15.
Dated: __________________
_____________________________
ISTRIC
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TC
10/6/14
T
TheATHonorable Edward M. Chen
United States District Judge
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BECK, BISMONTE & FINLEY, LLP
Dated: October 2, 2014

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CASE NO.: 13-cv-00217-EMC

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ATTESTATION PURSUANT TO LOCAL RULE 5-1(i)(3)
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Pursuant to Local Rule 5-1(i)(3), regarding signatures, I attest that the concurrence in the
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filing of this document has been obtained from its signatories.
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Dated: October 2, 2014

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By: /s/ Joseph A. Greco
Joseph A. Greco

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Attorney for Plaintiff and CounterclaimDefendant GeoTag, Inc.

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STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

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CASE NO.: 13-cv-00217-EMC