GeoTag, Inc. v. Zoosk, Inc.

Filing 224

STIPULATION AND ORDER re 223 STIPULATION WITH PROPOSED ORDER TO CONTINUE CASE MANAGEMENT CONFERENCE AND STAY OF CASE filed by Geotag, Inc. Case Management Statement due by 7/23/2015. Further Case Management Conference set for 7/30/2015 10:30 AM in Courtroom 5, 17th Floor, San Francisco.. Signed by Judge Edward M. Chen on 4/28/15. (bpf, COURT STAFF) (Filed on 4/28/2015)

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JEFFREY A. TINKER (PRO HAC VICE)
[e-mail]
Winstead PC
500 Winstead Building
2728 N. Harwood Street
Dallas, Texas 75201

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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

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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.

Attorneys for Plaintiff and CounterclaimDefendant GEOTAG, INC.

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UNITED STATES DISTRICT COURT

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ATTORNEYS AT LAW

F ENWICK & W EST LLP

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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,

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STIPULATION AND [PROPOSED]
ORDER TO CONTINUE CASE
MANAGEMENT CONFERENCE AND
STAY OF CASE

v.
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ZOOSK, INC.,
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Defendant.
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AND RELATED COUNTERCLAIMS.
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Current CMC Date: April 30, 2015
Requested CMC Date: TBD

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This case presently is scheduled for a Case Management Conference on Thursday, April
30, 2015. The Joint Case Management Conference Statement is due on April 23, 2015. The
parties respectfully request that the Court continue the Case Management Conference until
sometime after the completion of appellate review of the summary judgment order entered in the
related case Microsoft Corp. and Google v. GeoTag, Inc., Case No. 1:11-cv-175 (RGA) (D. Del.)

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STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

CASE NO.: 13-cv-00217-EMC

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(“Delaware Action), currently on appeal to the Federal Circuit in the case entitled Microsoft v.

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GeoTag, Inc., Case No. 15-1140.

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

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

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involving the same GeoTag patent involved in this case. The public version of the Court’s

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Memorandum Opinion is Dkt. No. 477, filed April 22, 2014.

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2. On October 6, 2014, this Court entered the Stipulation and Proposed Order to Continue

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Case Management Conference and Stay of Case (Dkt. No. 219), ordering the case management

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conference continued until April 30, 2015, and the case stayed until then, so that the Court and
the parties could know the outcome of the appellate review of the summary judgment order

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entered in the Delaware Action.

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ATTORNEYS AT LAW

F ENWICK & W EST LLP

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3. Final judgment in the Delaware Action was entered on October 7, 2014 (Dkt. No. 521)

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after the Delaware court granted a stipulation of dismissal as to Microsoft on October 1, 2014

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(Dkt. No. 518). GeoTag thereafter appealed the judgment to the Federal Circuit, Case No. 15-

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1140 (entitled Microsoft Corp. v. GeoTag, Inc.) on November 6, 2014 (Dkt. No. 522). GeoTag

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has filed its opening brief in the Federal Circuit. Google’s opposition is due on June 19, 2015.

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No hearing date has been set.

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

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the outcome of the appellate adjudication of the summary judgments order in the Delaware

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Action before proceeding with this case because the Federal Circuit’s ruling will likely be

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instructive on issues posed in this action and may even be dispositive of this action. Further, a

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stay of proceedings until the Federal Circuit rules on GeoTag’s appeal will promote judicial

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economy by likely bringing finality and certainty to issues regarding claim construction and

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infringement. Many of the same claim terms that are proposed for construction in this action

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were construed in the Delaware Action. The Federal Circuit’s ruling on those constructions will

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therefore directly impact this action. Additionally, the claims terms that are the basis for those

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summary judgment orders (“dynamic replication” and “geographical areas”) are also a basis for

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Zoosk’s non-infringement defense in this action.
STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

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CASE NO.: 13-cv-00217-EMC

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

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

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ATTORNEYS AT LAW

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

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F ENWICK & W EST LLP

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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

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this case”).

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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 April 30, 2015 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 case Microsoft Corp. and Google v. GeoTag, Inc., Case No. 1:11-cv-175 (RGA) (D. Del.)

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and Federal Circuit Case No. 15-1140 (entitled Microsoft Corp. v. GeoTag, Inc.), or to a future

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date convenient to the Court, and to continue the stay of this case until that continued Case

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Management Conference.

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SO STIPULATED.

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STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

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CASE NO.: 13-cv-00217-EMC

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BECK, BISMONTE & FINLEY, LLP
Dated: April 23, 2015

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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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PURSUANT TO STIPULATION, IT IS SO ORDERED. The CMC is reset for
7/30/2015 at 10:30 a.m. An
updated joint CMC statement shall
be filed by 7/23/2015.

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United States District Judge

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Dated: __________________
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_____________________________
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The Honorable Edward M. Chen

4/28/15

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UNIT
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F ENWICK & W EST LLP

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STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

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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: April 23, 2015

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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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ATTORNEYS AT LAW

F ENWICK & W EST LLP

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STIPULATION AND [PROPOSED] ORDER TO
CONTINUE CMC AND STAY

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CASE NO.: 13-cv-00217-EMC