Synopsys, Inc. v. Atoptech, Inc

Filing 142

STIPULATION AND ORDER STAYING PATENT CLAIMS (COUNTS II-V) PENDING INTER PARTES REVIEW. Signed by Judge Maxine M. Chesney on July 22, 2014. (mmclc2, COURT STAFF) (Filed on 7/22/2014)

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Robert A. Mittelstaedt (SBN 60359)
[e-mail]
Krista S. Schwartz (Admitted Pro Hac Vice)
[e-mail]
Joe C. Liu (SBN 237356)
[e-mail]
Nathaniel P. Garrett (SBN 248211)
[e-mail]
JONES DAY
555 California Street, 26th Floor
San Francisco, CA 94104
Telephone:
[phone]
Facsimile:
[phone]
Patrick T. Michael (SBN 169745)
[e-mail]
Heather N. Fugitt (SBN 261588)
[e-mail]
JONES DAY
1755 Embarcadero Road
Palo Alto, CA 94303
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Plaintiff
SYNOPSYS, INC.

Jeffrey A. Miller (SBN 160602)
Deborah E. Fishman (SBN 197584)
Katie J.L. Scott (SBN 233171)
Assad H. Rajani (SBN 251143)
Michael S. Tonkinson (SBN 265011)
DICKSTEIN SHAPIRO LLP
1841 Page Mill Road, Suite 150
Palo Alto, CA 94304
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Paul G. Novak (SBN 261388)
DICKSTEIN SHAPIRO LLP
2049 Century Park East, Suite 700
Los Angeles, CA 90067
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorneys for Defendant
ATOPTECH, INC.

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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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SYNOPSYS, INC.,

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Plaintiff,

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v.

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ATOPTECH, INC.,

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Defendants.

Case No. 3:13-cv-02965-MMC (DMR)
STIPULATION AND [PROPOSED] ORDER
STAYING PATENT CLAIMS (COUNTS II –V)
PENDING INTER PARTES REVIEW
Date:
Time:
Judge:
Courtroom:

August 15, 2014
9:00 a.m.
Hon. Maxine M. Chesney
7, 19th Floor

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STIPULATION AND [PROPOSED] ORDER
STAYING PATENT CLAIMS
Case No. 3:13-cv-02965-MMC (DMR)

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Plaintiff Synopsys, Inc. (“Synopsys”) and Defendant ATopTech, Inc. (“ATopTech,” and

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together with Synopsys, the “Parties”), by and through their respective counsel, stipulate and

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agree as follows:

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WHEREAS, on November 25, 2013, Synopsys filed an Amended Complaint (ECF No. 43)

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in this action, alleging claims for copyright infringement, patent infringement, breach of contract

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and breach of the implied covenant of good faith and fair dealing;

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WHEREAS, on December 5, 2013, ATopTech filed a Motion to Dismiss certain of

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Synopsys’ claims (ECF No. 44), which motion remains pending and no hearing date has been set;

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WHEREAS, on March 7, 2014, this Court disqualified ATopTech’s counsel O’Melveny

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Meyers (ECF No. 91) and on May 29, 2014 the Federal Circuit denied ATopTech’s petition for a

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writ of mandamus appealing this Court’s disqualification order (ECF No. 113);

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WHEREAS, this Court ordered ATopTech to cause new counsel to appear by June 16,

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2014 and ordered the parties to appear for a Case Management Conference on July 25, 2014 (ECF

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No. 112);

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WHEREAS, on June 10, 2014, attorneys from Dickstein Shapiro appeared on behalf of
ATopTech (ECF Nos. 116-120);
WHEREAS, on July 11, 2014 Synopsys filed a Motion to Disqualify Dickstein Shapiro
LLP (ECF No. 128), which motion is set for hearing on August 15, 2014;

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WHEREAS, on July 11, 2014, ATopTech filed petitions for inter partes review of all four

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patents at issue in this litigation, U.S. Patent Nos. 6,405,348, 6,507,941, 6,237,127, and 6,567,967

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(“the Patents-in-Suit”) before the Patent Trial and Appeal Board (“PTAB”) of the United States

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Patent and Trademark Office;

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WHEREAS, on July 11, 2014, ATopTech filed a Motion To Stay Patent Claims Pending

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Inter Partes Review (ECF No. 136) seeking a partial stay of the action with respect to Synopsys’s

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patent claims (Counts II - V);

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WHEREAS, the Parties have met and conferred and, subject to the Court’s approval, have
agreed to a partial stay of the action with respect to the patent claims;
NOW, THEREFORE, IT IS HEREBY STIPULATED by the Parties, through their
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STIPULATION AND [PROPOSED] ORDER
STAYING PATENT CLAIMS
Case No. 3:13-cv-02965-MMC (DMR)

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respective counsel of record, that:
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Synopsys’s patent claims (Counts II - V) are stayed pending the PTAB’s decision

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on whether to institute inter partes review of the Patents-in-Suit (the “Partial Stay”). Synopsys

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will serve ATopTech with its identification of asserted claims for each of the Patents-in-Suit on or

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before August 8, 2014, but all other deadlines pursuant to the Patent Local Rules are suspended.

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The August 15, 2014 hearing date for Defendant’s Motion to Stay Patent Claims Pending Inter

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Partes Review (ECF No. 136) is vacated.

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2.

The Parties shall jointly file a status report within 10 days of the date after the

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PTAB’s decision whether to grant inter partes review. In the event that none of the inter partes

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review petitions are granted, the stay of Synopsys’s patent claims will be automatically lifted. In

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the event fewer than all of the petitions are granted, the parties shall jointly discuss whether they

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believe the Partial Stay should be lifted or modified and shall apprise the Court of their respective

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positions. Should the PTAB institute inter partes review on all four of the Patents-in-Suit, the

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Partial Stay shall remain in effect until the PTAB issues a final written decision on all instituted

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inter partes review proceedings.

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3.

If the Partial Stay remains in place following the grant of some or all of the inter

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partes review petitions, the Parties shall jointly file a status report within 10 days of the date on

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which the last of the PTAB’s final written decision is rendered on the inter partes reviews. Upon

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notice of issuance of the PTAB’s final written decision to the Court, the stay is lifted subject to

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further order of the Court.

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4.

This Order is without prejudice to either party filing a motion to lift the stay upon

a showing of good cause.
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The Partial Stay will not include any of the non-patent claims (Counts I, VI and

VII), nor shall it disturb the schedule for the pending Motion to Disqualify Dickstein Shapiro LLP.
IT IS SO STIPULATED.

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STIPULATION AND [PROPOSED] ORDER
STAYING PATENT CLAIMS
Case No. 3:13-cv-02965-MMC (DMR)

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Dated: July 22, 2014

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Respectfully submitted,
JONES DAY

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By: /s/ Patrick T. Michael
Patrick T. Michael

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Attorneys for Plaintiff
SYNOPSYS, INC.

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In accordance with Local Rule 5-1(i)(3), the above signatory attests that concurrence in

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the filing of this document has been obtained from the signatory below.

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Dated: July 22, 2014

DICKSTEIN SHAPIRO

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By: /s/ Deborah E. Fishman
Deborah E. Fishman

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Attorneys for Defendant
ATOPTECH, INC.

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IT IS SO ORDERED.
July 22, 2014
DATED: ________________________

By:
Hon. Maxine M. Chesney

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SVI-149513v1

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STIPULATION AND [PROPOSED] ORDER
STAYING PATENT CLAIMS
Case No. 3:13-cv-02965-MMC (DMR)