Linex Technologies, Inc. v. Hewett-Packard Company et al

Filing 327

ORDER ON PLAINTIFFS 299 MOTION TO DISMISS WITH PREJUDICE CERTAIN OF PLAINTIFFS ASSERTED PATENT CLAIMS AND DEFENDANTS RELATED COUNTERCLAIMS. Signed by Judge Claudia Wilken on 4/16/2014. (ndr, COURT STAFF) (Filed on 4/16/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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LINEX TECHNOLOGIES, INC.,

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Plaintiff,
v.
HEWLETT-PACKARD COMPANY, APPLE
COMPUTER INC., ARUBA NETWORKS,
INC., MERU NETWORKS, INC., RUCKUS
WIRELESS, INC.,
Defendants.

United States District Court
For the Northern District of California

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________________________________/

No. C 13-159 CW
ORDER ON
PLAINTIFF’S MOTION
TO DISMISS WITH
PREJUDICE CERTAIN
OF PLAINTIFF’S
ASSERTED PATENT
CLAIMS AND
DEFENDANTS’
RELATED
COUNTERCLAIMS
(Re: Docket
No. 299)

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On February 4, 2014, Plaintiff Linex Technologies, Inc. moved

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to dismiss with prejudice some of its asserted claims against

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Defendants Hewlett-Packard Company (HP), Apple Computer Inc.,

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Aruba Networks, Inc., Meru Networks, Inc., and Ruckus Wireless,

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Inc., as well as Defendants’ corresponding counterclaims for

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declaratory judgment of non-infringement of the same claims.

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Since the motion was filed, Linex, HP, and Apple filed a

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stipulated motion whereby Linex agreed to dismiss with prejudice

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the same asserted claims implicated by Linex’s motion to dismiss1

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against all Defendants, and HP and Apple agreed to dismiss without

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prejudice their corresponding counterclaims.

Docket No. 309.

The

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The asserted claims at issue in both Linex’s motion to
dismiss and the stipulation are claims 9 and 10 of U.S. Patent No.
6,757,322 (the ‘322 patent), claims 107, 119, 120, 133, 144, and
145 of RE 42,219 (the ‘219 patent), and claim 106 of the RE 43,812
(the ‘812 patent) (collectively, the dismissed claims). See
Docket No. 309 at 2.

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Court granted the stipulation, resolving the bulk of Linex’s

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motion to dismiss.

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to the stipulation,2 and so the status of their counterclaims

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remains to be decided.

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a hearing.

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counsel, the Court GRANTS Linex’s motion to dismiss without

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prejudice Aruba and Meru’s counterclaims regarding the dismissed

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claims.

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Docket No. 311.

Aruba and Meru did not agree

On April 3, 2014, the parties appeared for

Having considered the papers and the arguments of

Linex asserts that now that the Court has dismissed with

United States District Court
For the Northern District of California

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prejudice Linex’s assertion of the dismissed claims, this Court

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lacks subject matter jurisdiction over Aruba and Meru’s

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counterclaims for declaratory judgment of non-infringement of

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those same claims.

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under 28 U.S.C. § 2201(a), a court must find that there is an

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actual controversy, or “a substantial controversy, between parties

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having adverse legal interests, of sufficient immediacy and

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reality to warrant relief.”

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549 U.S. 118, 127 (2007).

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all stages of review, not merely at the time the complaint was

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filed.

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1340, 1345 (Fed. Cir. 2007) (citing Steffel v. Thompson, 415 U.S.

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452, 459 n.10 (1974)).

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declaratory judgment jurisdiction to establish that such

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jurisdiction existed at the time the claim for declaratory relief

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was filed and that it has continued since.”

To entertain a declaratory judgment action

MedImmune, Inc. v. Genentech, Inc.,

This requirement remains constant at

Benitec Australia, Ltd. v. Nucleonics, Inc., 495 F.3d

It is the burden of the party “claiming

Id.

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Ruckus currently does not assert any counterclaims against
Linex. See Docket No. 89.
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Aruba and Meru contend that an actual case or controversy

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exists because Linex charged them with infringement of certain

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claims of the ‘322, ‘219, and ‘812 patents.

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infringement allegations were the basis for subject matter

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jurisdiction in Aruba and Meru’s respective counterclaim

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complaints.

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Court dismissed with prejudice the dismissed claims as asserted

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against all of Defendants’ accused products listed in Linex’s

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Eighth Amended Infringement Contentions, which means Linex cannot

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United States District Court
For the Northern District of California

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reassert those claims against Defendants’ accused products in any

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later proceeding.

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1284-85 (Fed. Cir. 2009).

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controversy identified by Aruba and Meru’s counterclaims regarding

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the dismissed claims now no longer exists.

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See Docket Nos. 90, 93.

Indeed, Linex’s

Since then, however, the

See Nystrom v. Trex Co., Inc., 580 F.3d 1281,
The substantial and immediate

Aruba and Meru point out that their customers could face

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charges of infringement of the dismissed claims even if Aruba and

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Meru themselves can not.

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covenant not to sue included in the stipulation dismissing claims,

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which the Court approved after Aruba and Meru filed their

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opposition.

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Defendants or any of Defendants’ customers based on the dismissed

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claims and products currently in this case, which use the 802.11n

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MIMO functionality.

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that Linex will not be able to revive its infringement allegations

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against any Defendant or any Defendant’s customer based on the

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dismissed claims and products asserted in this case.

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This argument fails in light of Linex’s

In the stipulation, Linex promised not to sue

Docket No. 809.

This sufficiently assures

Aruba and Meru take issue with Linex’s reservation of rights
accompanying its covenant not to sue, which states:
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Linex asserts that it reserves the right to assert the
Dismissed Claims against Defendants and their customers for
infringement of products other than the accused 802.11n MIMO
products included in Linex’s Eighth Amended Infringement
Contentions. For example, Linex asserts it reserves the
right to assert the Dismissed Claims against the Defendants
and their customers based upon products that use LTE
technology.
Aruba and Meru argue that Linex may not reserve legal rights to

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assert infringement of the dismissed claims against the accused
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products.
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The language of Linex’s reservation of rights is more
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confusing than necessary.

The parties have each interpreted this

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United States District Court
For the Northern District of California

language differently.

Linex does not want to give up its right to

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sue any Defendant or Defendant’s customer based on the LTE
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functionality, or any other unknown functionality.

Aruba and Meru

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are concerned that they or their customers will again face
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infringement charges under the patent based on the same 802.11n
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MIMO functionality asserted in this case.

These interests are

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reconcilable, as evidenced by the agreement reached at the
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hearing.

Linex made the following covenant not to sue: “Linex

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covenants not to sue Defendants and Defendants’ customers based on
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products using the 802.11n MIMO functionality, including the
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accused products.”

Aruba and Meru agreed that this covenant not

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to sue would be adequate.

Based on the parties’ agreement at the

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hearing, the Court DISMISSES Aruba and Meru’s infringement
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counterclaims regarding the dismissed claims without prejudice.
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IT IS SO ORDERED.
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Dated:
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4/16/2014
CLAUDIA WILKEN
United States District Judge

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