Tessera, Inc. v. Motorola, Inc. et al

Filing 338

ORDER by Judge Claudia Wilken Granting 337 Stipulation. (ndr, COURT STAFF) (Filed on 2/12/2014)

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DAVID H. DOLKAS (SBN: 111080) [e-mail]
DAVID L. LARSON (SBN: 112342) [e-mail]
TERRY W. AHEARN (SBN: 216543) [e-mail]
McDERMOTT WILL & EMERY LLP
275 Middlefield Road, Suite 100
Menlo Park, CA 94025-4004
Telephone: [phone]

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Attorneys for Defendant and Counterclaimant
QUALCOMM INCORPORATED
GREGORY P. STONE (SBN 078329) [e-mail]
TED G. DANE (SBN 143195) [e-mail]
ZACHARY M. BRIERS (SBN 287984) [e-mail]
MUNGER, TOLLES & OLSON LLP
355 S. Grand Ave., 35th Fl.
Los Angeles, CA 90071-1560
Tel: [phone]
Attorneys for Plaintiff and Counterdefendant
TESSERA, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND DIVISION

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Plaintiff,
JOINT STIPULATION OF QUALCOMM
INCORPORATED AND TESSERA, INC.;
[PROPOSED] ORDER

v.

MOTOROLA INC., QUALCOMM, INC.,
FREESCALE SEMICONDUCTOR INC.,
A TI TECHNOLOGIES INC., A Tl
TECHNOLOGIES ULC., et a!.,
Defendants.

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CASE NO. 4:12-CV-00692-CW

TESSERA, INC.,

AND RELATED COUNTERCLAIMS.

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STIPULATION
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WHEREAS Qualcomm CDMA Technologies Asia Pacific Pte. Ltd. ("QCT AP") is a
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wholly-owned, indirect subsidiary of Qualcomm Incorporated ("Qualcomm").

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WHEREAS, on August 7, 2013, the Court issued an order granting Tessera, Inc.'s

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("Tessera") motion for leave to amend its complaint to assert claims against QCTAP (Dkt. No.

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280).

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WHEREAS, on August 9, 2013, Tessera filed its Second Amended Complaint, which

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asserts claims against QCTAP for direct infringement, induced infringement, contributory

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infringement and willful infringement of U.S. Patent No. 5,852,326 ("the '326 patent") (Dkt. No.

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283) (the "Claims").

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WHEREAS Tessera's Second Amended Complaint also asserts claims against Qualcomm

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for direct infringement, induced infringement, contributory infringement, and willful

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infringement of the '326 patent (Dkt. No. 283).

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WHEREAS Qualcomm and Tessera have agreed for purposes ofthis litigation that, to the

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extent any liability arises from commercial activity of QCTAP with respect to the accused

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products, and to the extent that QCTAP's liability is not wholly duplicative of Qualcomm's own

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liability, Qualcomm shall assume QCTAP' s liability therefor and any portion of QCTAP' s

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liability that is not wholly duplicative of Qualcomm's own liability, and judgment may be entered

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against Qualcomm thereon.

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WHEREAS Qualcomm and Tessera further have agreed that, in exchange for the

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commitments made by Qualcomm in the foregoing paragraphs, this action shall be stayed against

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QCTAP, and, Tessera agrees not to pursue, against QCTAP, the claims alleged herein against

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QCTAP, either in this action or in any subsequent proceeding. The parties agree that either (i)

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once there is a judgment for or against Qualcomm, the Court shall enter such judgment pursuant

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to Rule 54(b ), such judgment can be appealed notwithstanding any stay related to QCTAP, and

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once any such judgment has been satisfied, or all appeals therefrom have been exhausted, any

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stay related to QCTAP will be lifted and Tessera will dismiss the claims alleged herein against

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QCTAP with prejudice; or (ii) once there is a settlement of all claims between Tessera and

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STIPULATION
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Qualcomm, any stay related to QCTAP will be lifted and Tessera will dismiss the claims alleged
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herein against QCTAP with prejudice.

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WHEREAS Qualcomm and Tessera further have agreed that, in consideration of the

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commitments made by Qualcomm and Tessera in the foregoing paragraphs, Tessera will not

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pursue its current claim against Qualcomm or QCTAP for willful infringement.

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NOW THEREFORE, the Parties, by their undersigned attorneys, hereby stipulate that:

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1.

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This Stipulation is to be used in the instant action only and shall not be binding on

any party in any other administrative or judicial capacity.
2.

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For purposes of this litigation, to the extent any liability arises from any

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commercial activity of QCTAP with respect to the accused products, and to the extent that

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QCTAP's liability is not wholly duplicative ofQualcomm's own liability, Qualcomm shall

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assume QCTAP' s liability therefor and any portion of QCTAP' s liability that is not wholly

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duplicative ofQualcomm's own liability, and judgment may be entered against Qualcomm

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thereon.
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Qualcomm will not argue, or take any position in the present action, that it is not

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liable for the commercial activity of QCTAP with respect to the accused products by virtue of the

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fact that Qualcomm and QCTAP are distinct corporate entities.
4.

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Other than documents produced by Qualcomm Bates numbered QTSDOOOOOOO I,

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QTSD00003363, and/or QTSD0008024, the documents produced by Qualcomm that reflect any

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commercial activity of QCTAP are "authentic" as that term is used in FRE 901 and FRE 902, and

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qualify as "business records" under FRE 803(6). Neither Party will object to the admissibility of

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these documents on the grounds that they are not "authentic" as that term is used in FRE 90 I and

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FRE 902; are not "duplicates" ofthe originals, as that term is used in FRE IOOI(4) and 1003; or

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do not constitute "business records" under FRE 803(6).
5.

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In consideration of the commitments made by Qualcomm in the foregoing

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paragraphs, this action shall be stayed against QCTAP, and, Tessera agrees not to pursue, against

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QCTAP, the claims alleged herein against QCTAP, either in this action or in any subsequent

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proceeding. The parties agree that either (i) once there is a judgment for or against Qualcomm
STIPULATION
219392311

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4:12-CV-00692 and Related Cases

the Court shall enter such judgment pursuant to Rule 54(b), such judgment can be appealed
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notwithstanding any stay related to QCTAP, and once any such judgment has been satisfied, or all

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appeals therefrom have been exhausted, any stay related to QCTAP will be lifted and Tessera will

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dismiss the claims alleged herein against QCT AP with prejudice; or (ii) once there is a settlement

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of all claims between Tessera and Qualcomm, any stay related to QCT AP will be lifted and

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Tessera will dismiss the claims alleged herein against QCTAP with prejudice.

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Tessera will dismiss its claim for willful infringement of the '326 patent against

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Qualcomm and QCT AP within three days of the execution of this stipulation by all parties.

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Tessera's dismissal of its claim for willful infringement of the '326 patent against

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Qualcomm shall not in any way affect any of its remaining claims against Qualcomm, including

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claims for direct infringement, induced infringement, or cont~l;mtory infringement.

y'~

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D.r\TED: October 24, 2013

By:

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niel Foster [e-mail]
McDermott Will & Emery, LLP
275 Middlefield Road, Suite 100
Menlo Park, CA 94025-4004
Tel: [phone]
Attorneys for Defendant Q11akomm Incorporated and QCTAP

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D.ATED: October 24, 2013

By:

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Ted G. Dane ted.dm;[e-mail]
Munger, Tolles & Olson LLP
355 S. Grand Ave., 35th Fl.
Los Angeles, CA 90071-1560
Tel: [phone]
Fax: [phone]

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Attorneys for Plaintiff and Counter-defendant Tmera, Inc.

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PURSUANT TO STIPULATION, IT IS SO ORDERED.

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Dated:

2/12/2014

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The Honorable Claudia Wilken

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United States District Court Judge

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STIPULATION
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