Touchscreen Gestures LLC v. Google Inc.

Filing 65

ORDER RE PARTIAL DISMISSAL OF CLAIMS AND THIRD AMENDED COMPLAINT by Judge Alsup terminating 59 Ex Parte Application ; granting in part and denying in part 62 Motion for Leave to File (whalc1, COURT STAFF) (Filed on 10/17/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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TOUCHSCREEN GESTURES LLC,

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Plaintiff,

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v.

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CASE NO. 3:13-cv-02478-WHA

GOOGLE INC.,

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[PROPOSED] ORDER OF PARTIAL
DISMISSAL OF CLAIMS

Defendant.

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WHEREAS, on July 19, 2013, plaintiff Touchscreen Gestures LLC (“Touchscreen”)

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filed an amended complaint (“Amended Complaint,” Doc. #41) alleging, among other things,

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that Google Inc. infringed, and was infringing, U.S. Patent No. 7,180,506 (“the ’506 patent”),

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U.S. Patent No. 7,184,031 (“the ’031 patent”), U.S. Patent No. 7,190,356 (“the ’356 patent”),

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U.S. Patent No. 8,164,575 (“the ’575 patent”), and U.S. Patent No. 7,274,357 (“the ’357

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patent”) (collectively, the “Asserted Patents”); and

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WHEREAS, Touchscreen in its Amended Complaint further identified “examples of

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Google products that infringe” each of the aforementioned patents, including the “Motorola

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Atrix and Droid 3 smartphones as well as the Google Nexus 7 tablet”; and

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WHEREAS, on July 25, 2013, Touchscreen served its Disclosure of Asserted Claims

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and Infringement Contentions for Defendant Google Inc. and asserted, among other things, that

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“the Google Chromebook, which allow the identification of a movement of a single tap . . .

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infringe[s] claims of the ’506 patent;” and

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WHEREAS, in its infringement contentions, Touchscreen further contended that

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Google infringes the asserted claims “contributorily, and or by inducement” and “that it is

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nonetheless a direct infringer under the theory of joint infringement in that it instructs, directs

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and requires its customers to perform any steps it does not itself perform, or because any

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ORDER OF PARTIAL DISMISSAL OF CLAIMS

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Case No. 3:13-cv-02478-WHA

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component alleged missing from any apparatus claim is supplied by its customers at Google’s

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instruction and control;” and

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WHEREAS, Defendants Google Inc. (“Google”) denied those allegations in its answer
and asserted related affirmative defenses and counterclaims; and
WHEREAS, Google has raised objections with Touchscreen regarding the sufficiency
of its infringement contentions and other disclosures; and

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WHEREAS, the parties wish to resolve those disputes concerning Touchscreen’s claims

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related to the ’031, ’575, and ’357, ’506 patents and the Motorola Atrix smartphone, Droid 3

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smartphone, and Google Chromebook;

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IT IS HEREBY ORDERED AND ADJUDGED THAT:
(1)

Touchscreen’s claims that Google has infringed, and is infringing, the ’031, ’575,

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’357 and ’506 patents by Google products that were accused or could have been

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accused by Plaintiff as of the date of Plaintiff’s Amended Complaint (Doc. #41)

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are DISMISSED WITH PREJUDICE and Google’s counterclaims seeking

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declaratory judgment of non-infringement and invalidity of the ’031, ’575, ’357

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and ’506 patents are DISMISSED WITHOUT PREJUDICE as moot;

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(2)

Touchscreen’s claims against Google that the making, use, sale, offering for sale,

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or importation of Motorola Atrix smartphones, Motorola Droid 3 smartphones,

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and Google Chromebooks infringe, and have infringed, any of the Asserted

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Patents are DISMISSED WITH PREJUDICE;

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(3)

Touchscreen’s remaining claim that Google has infringed, and is infringing the

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’356 patent is limited to allegations of direct infringement by Google’s making,

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use, sale, offering for sale or importation of the Google Nexus 7 tablet;

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(4)

Touchscreen’s Third Amended Complaint shall be revised to:
(a) delete paragraphs 6-10 relating to Touchscreen’s allegations of infringement
of the ’506 patent;
(b) remove the reference to the ’506 patent in the Prayer for Relief;

ORDER OF PARTIAL DISMISSAL OF CLAIMS

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Case No. 3:13-cv-02478-WHA

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(c) remove the reference to the “Google Chromebook” as an accused product in

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paragraph 18 in Touchscreen’s claim of infringement of the ’356 patent; and

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(d) replace all general references to “infringement” with more specific references

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to “direct infringement” in paragraphs 13 and 14 and in the Prayer for Relief.

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DATED:

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________________________________
William Alsup
RED
RD Judge
United States District E
S SO O

IT I
IFIED
S MOD
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NO

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illi
Judge W

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p

am Alsu

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Date: October 16, 2013.

ICT
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HON. WILLIAM H. ALSUP,DISTR
U.S.D.J.

FO

IT IS SO ORDERED.

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Touchscreen shall file its third amended complaint revised as stated above by October 21 at
Noon. To this extent, the motion forIT IS HEREBYis Granted. Defendant Google shall file
leave to amend SO ORDERED:
its answer to the third amended complaint within seven days of the date it is filed.

UNIT
ED

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ORDER OF PARTIAL DISMISSAL OF CLAIMS

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Case No. 3:13-cv-02478-WHA