Unwired Planet, LLC v. Apple, Inc.

Filing 296

Order by Hon. Vince Chhabria granting 295 Stipulation Regarding Judgment of Non-Infringement of the '491 Patent.(knm, COURT STAFF) (Filed on 1/21/2015)

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COURTLAND L. REICHMAN, SBN 268873
[e-mail]
MCKOOL SMITH HENNIGAN, P.C.
255 Shoreline Drive, Suite 510
Redwood Shores, CA 94065
Telephone: [phone]
Fax: [phone]

JOSH KREVITT, SBN 208552
[e-mail]
GIBSON, DUNN & CRUTCHER LLP
200 Park Ave., New York, NY 10166-0193
Telephone: [phone]
Fax: [phone]

THEODORE STEVENSON III (pro hac vice)
[e-mail]
300 Crescent Court, Suite 1500
MCKOOL SMITH, P.C.
Dallas, Texas 75201
Telephone: [phone]
Fax: [phone]

H. MARK LYON, SBN 162061
[e-mail]
Y. ERNEST HSIN, SBN 201668
[e-mail]
STUART M. ROSENBERG, SBN 239926
[e-mail]
GIBSON, DUNN & CRUTCHER LLP
1881 Page Mill Rd.
Palo Alto, CA 94304-1211
Telephone: [phone]
Fax: [phone]

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KEVIN BURGESS (pro hac vice)
[e-mail]
JOHN B. CAMPBELL (pro hac vice)
[e-mail]
MCKOOL SMITH, P.C.
300 W. 6th St., Suite 1700
Austin, Texas 78701
Telephone: [phone]
Fax: [phone]

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Attorneys for Plaintiff

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BROOKE MYERS WALLACE, SBN 259169
[e-mail]
GIBSON, DUNN & CRUTCHER LLP
333 South Grand Ave.
Los Angeles, CA 90071
Telephone: [phone]

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Attorneys for Defendant

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IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANSCISO

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UNWIRED PLANET LLC,
a Nevada limited liability company,

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3:13-CV-04134-VC
Plaintiff,

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CIVIL ACTION NO.

v.
APPLE INC.,
a California corporation,

STIPULATION AND [PROPOSED]
ORDER REGARDING JUDGMENT
OF NON-INFRINGEMENT OF THE
’491 PATENT

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Defendant.

Judge: Hon. Vince Chhabria

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WHEREAS, Plaintiff Unwired Planet LLC (“Unwired Planet”) and Defendant Apple Inc.

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(“Apple”) (“the Parties”) stipulate and move for entry of judgment of non-infringement under

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asserted Claims 15 and 26 of U.S. Patent No. 6,813,491 (“the ’491 Patent”) as to all accused

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products under the Court’s Claim Construction Order (Dkt. No. 269) and Order Denying Motion

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to Supplement Infringement Contentions (Dkt. No. 261); and
WHEREAS, entering judgment of non-infringement now will allow the parties to forego

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further litigation in this Court on Claims 15 and 26 of the ’491 Patent, while preserving Unwired

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Planet’s right to appeal the Court’s Claim Construction Order (Dkt. No. 269) and Order Denying

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Motion to Supplement Infringement Contentions (Dkt. No. 261);
IT IS HEREBY STIPULATED AND AGREED by the Parties, subject to the approval of
the Court, as follows:

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1.

This is a patent infringement action brought by Unwired Planet against Apple.

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Unwired Planet filed this patent litigation against Apple on September 19, 2012, in the District of

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Nevada. See Dkt. No. 1. Currently, the patents-in-suit include United States Patents Nos.

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6,647,260; 6,321,092; 6,317,831; 6,532,446; and 6,813,491 (collectively, the “Asserted

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Patents”). Unwired Planet has dismissed without prejudice other patents previously asserted.

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See Dkt. No. 259.
2.

Unwired Planet has accused certain electronic devices, namely certain of

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Defendant’s iOS products prior to the release of iOS8 of infringing the ’491 Patent as shown in

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Dkt. No. 231-13, 231-15, and 231-17 (Unwired Planet’s First Amended Infringement

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Contentions), incorporated by reference herein.

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3.

This case was transferred to the Northern District of California in August 2013.

Dkt. No. 151.

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STIPULATION AND [PROPOSED] ORDER RE: JUDGMENT OF NON-INFRINGEMENT FOR THE ’491
PATENT, Case No. 3:13-CV-04134-VC

4.

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The parties disputed the construction of the term “determining whether the mobile

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device is proximate to its owner” of Claim 15 of the ’491 Patent. Unwired Planet proposed the

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following construction: “determining if the mobile device is close to the individual who owns or

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is using the device.” Apple proposed the following construction: “determining if the mobile

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device is, or is not, close to the individual who owns the device.”
5.

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The parties also disputed the construction of the terms “stationary / active

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preferences” of Claim 26 of the ’491 Patent. Unwired Planet proposed the following

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construction: “configuration of settings that may be set when the mobile device determines that it

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has been / has not been stationary.” Apple proposed the following construction: “configuration of

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user-selectable settings the user wants when the device is stationary / active.”

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6.

On July 17, 2014, Unwired Planet served its Second Supplemental Infringement

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Contentions for the ’491 Patent as shown in Dkt. Nos. 231-9, 231-11, incorporated by reference

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herein. Also on July 17, 2014, Unwired Planet agreed to Apple’s proposed construction of the

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term “determining whether the mobile device is proximate to its owner” of Claim 15 of the ’491

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Patent.

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7.

Apple objected to the service of Unwired Planet’s Second Supplemental

Infringement Contentions with respect to the ’491 Patent, including the addition of contentions
regarding the “Do Not Disturb” feature with respect to Claims 15 and 26 of the ’491 Patent, and

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“Touch ID” with respect to Claim 15 of the ’491 Patent.
8.

On August 29, 2014, Unwired Planet moved to amend its infringement

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contentions for the ’491 Patent. See Dkt. Nos. 232 (Motion to Supplement Infringement

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Contentions), 245-3 (Reply).

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9.

On September 15, 2014, Apple opposed Unwired Planet’s Motion with respect to

the ’491 Patent. See Dkt. No. 242.

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STIPULATION AND [PROPOSED] ORDER RE: JUDGMENT OF NON-INFRINGEMENT FOR THE ’491
PATENT, Case No. 3:13-CV-04134-VC

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10.

On October 23, 2014, the Court denied Plaintiff’s Motion to Supplement

Infringement Contentions. Dkt. No. 261.
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On November 3, 2014, the Court issued a Claim Construction Order construing

the disputed claim terms of the Asserted Patents. Dkt. No. 269. The Court accepted the parties’

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agreed-upon construction of the term “determining whether the device is proximate to its owner”
of Claim 15 of the ’491 Patent: “determining if the mobile device is, or is not, close to the

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individual who owns the device.” Id. at 1. The Court adopted the following construction of

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“stationary / active preferences” term of Claim 26: “configuration of user-selectable settings the

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user wants when the device determines that it is / is not stationary.” Id. at 28.
12.

The Parties now stipulate that, given the Court’s construction of the term

“stationary / active preferences” as set forth in the Court’s Claim Construction Order (Dkt. No.

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269), and the Court’s denial of Unwired Planet’s Motion to Supplement its Infringement

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Contentions (see Dkt. Nos. 232, 261), Unwired Planet cannot prove infringement of Claim 26 of

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the ’491 Patent for the accused products.

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13.

The Parties further stipulate that, given Parties’ agreed-upon construction of

“determining whether the mobile device is proximate to its owner”, and the Court’s denial of
Unwired Planet’s Motion to Supplement Infringement Contentions (see Dkt. Nos. 232, 261),
Unwired Planet cannot prove infringement of Claim 15 of the ’491 Patent for the accused

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products.
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The Parties respectfully request that the Court enter judgment of non-infringement

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as to the ’491 Patent to conserve judicial resources and to avoid the time and expense of further

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discovery and motion practice related to the ’491 Patent. Upon entry of such judgment and upon

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entry of final judgment in this case resolving the remaining Asserted Patents, Unwired Planet

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intends to file a notice of appeal as to the Court’s Claim Construction Order (Dkt. No. 269) and

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STIPULATION AND [PROPOSED] ORDER RE: JUDGMENT OF NON-INFRINGEMENT FOR THE ’491
PATENT, Case No. 3:13-CV-04134-VC

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Order Denying Motion to Supplement Infringement Contentions (Dkt. No. 261). In the event that

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the Federal Circuit dismisses Unwired Planet’s appeal as premature, Unwired Planet reserves the

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right (which Defendant does not contest) to undertake further proceedings in this Court on

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remand to complete the record for appeal.

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15.

The Parties further stipulate and agree that Defendant’s unadjudicated affirmative

defenses and counterclaims as to the ’491 Patent are dismissed without prejudice to being

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reasserted in the event of remand or other assertions by Unwired Planet of the ’491 Patent.

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IT IS SO AGREED AND STIPULATED this 19th day of January, 2015:

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By: /s/ John Campbell

By: /s/ Brooke Myers Wallace

Theodore Stevenson III
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Telephone: [phone]

Josh Krevitt
GIBSON, DUNN & CRUTCHER LLP
200 Park Avenue
New York, New York 10166-0193
Telephone: [phone]

Kevin Burgess
John B. Campbell
MCKOOL SMITH, P.C.
300 W. 6th St., Suite 1700
Austin, TX 78701
Telephone: [phone]

H. Mark Lyon
Y. Ernest Hsin
Stuart M. Rosenberg
GIBSON, DUNN & CRUTCHER LLP
1881 Page Mill Road
Palo Alto, CA 94304-1211
Telephone: [phone]

Attorneys for Plaintiff Unwired Planet LLC

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Brooke Myers Wallace
GIBSON, DUNN & CRUTCHER LLP
333 South Grand Ave.
Los Angeles, CA 90071
Telephone: [phone]

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Attorneys for Defendant Apple Inc.

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IT IS SO ORDERED.

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UNITED STATES DISTRICT JUDGE
DATED:

January 20, 2015

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STIPULATION AND [PROPOSED] ORDER RE: JUDGMENT OF NON-INFRINGEMENT FOR THE ’491
PATENT, Case No. 3:13-CV-04134-VC