Google Inc. v. Compression Labs Inc et al

Filing 9

Google Inc. v. Compression Labs Inc et al

Doc. 9

Case 5:04-cv-03934-JF

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Filed 10/20/2004

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Shelley K. Wessels (#152394) WESSELS LAW GROUP 861 Bette Ave. Cupertino, CA 95014 Tel.: [phone] [e-mail] Stephen G. Rudisill (of counsel) Gary E. Hood (of counsel) Russell J. Genet (of counsel) Justin D. Swindells (of counsel) Brian N. Anderson (of counsel) JENKENS & GILCHRIST 225 West Washington St., Suite 2600 Chicago, Illinois 60606 Tel. [phone] Fax [phone] Counsel for Defendants Compression Labs, Inc., Forgent Networks, Inc. and General Instrument Corp. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION SUN MICROSYSTEMS, INC., Plaintiff, v. COMPRESSION LABS, INC., Defendant. GOOGLE, INC., a Delaware Corporation, Plaintiff, v. COMPRESSION LABS, INC., a Delaware corporation; FORGENT NETWORKS, INC., a Delaware corporation; and GENERAL INSTRUMENTS [sic] CORPORATION, a Delaware corporation, Defendants.
NOTICE OF RELATED CASE; RESPONSE TO SUN'S NOTICE OF RELATED CASE; NOTICE OF PENDENCY OF OTHER ACTIONS AND PROCEEDING; RESPONSE TO SUN'S NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING Case No. C04-03124 PJH

Case No. C04-03124 PJH NOTICE OF RELATED CASE; RESPONSE TO SUN'S NOTICE OF RELATED CASE; NOTICE OF PENDENCY OF OTHER ACTIONS AND PROCEEDING; RESPONSE TO SUN'S NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING (DUPLICATE ORIGINAL) Case No. C04-03934 CW NOTICE OF RELATED CASE; NOTICE OF PENDENCY OF OTHER ACTIONS AND PROCEEDING (DUPLICATE ORIGINAL)

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Dockets.Justia.com

Case 5:04-cv-03934-JF

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NOTICE OF RELATED CASE Defendants in each of the above-captioned cases pending in this District give notice that these two cases (the "Sun case" and the "Google case") are "related" as provided in Civil L.R. 3-12. The plaintiffs in both of these cases seek declarations that they do not infringe the same patent, U.S. Patent No. 4,698,672 1 (the "'672 patent "), owned by the same party, Compression Labs, Inc. ("CLI"). The patent claims must be construed in both cases, and to avoid inconsistencies, the claim construction should be performed by one Judge. Further, the basis for the plaintiffs' declaratory judgment actions are essentially the same in both cases: the allegation that the '672 patent is infringed by each plaintiff's use of the JPEG image compression standard (as disclosed in actions already filed by CLI in other jurisdictions, see below). Consequently, assignment to a single Judge is certain to conserve judicial resources and promote an efficient determination of the actions. NOTICE OF PENDENCY OF OTHER ACTIONS AND PROCEEDING AND RESPONSE TO SUN'S NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING Defendants in each of the above-captioned cases give notice of the following pending other actions: Compression Labs, Inc. v. Agfa Corp. et al., Case No. 2:04-CV-158 DF (E.D. Te x.) (filed Apr. 22, 2004). Compression Labs, Inc. v. Dell Inc. et al., Case No. 2:04-CV-159 DF (E.D. Tex.) (filed Apr. 22, 2004). Compression Labs, Inc. v. Acer America Corp. et al., Case No. 2:04-CV-294 DF (E.D. Tex.) (filed Aug. 5, 2004). Agfa Corp et al. v. Compression Labs, Inc. et al., Case No. 04-818 SLR (D. Del.) (filed July 2, 2004). Yahoo!, Inc. v. Compression Labs, Inc. et al., Case No. 04-918 SLF (D. Del.) (filed Aug. 2, 2004). Audiovox Corporation et al. v. Compression Labs, Inc. et al., Case No. 04-1293 SLR (D. Del.) (filed Sept. 24, 2004).

The two additional defendants in the Google case have moved to dismiss for lack of subject matter jurisdiction (neither defendant has any ownership interest in the patent) and lack of personal jurisdiction. [See Motion and accompanying papers filed Oct. 12, 2004.] 2

NOTICE OF RELATED CASE; RESPONSE TO SUN'S NOTICE OF RELATED CASE; NOTICE OF PENDENCY OF OTHER ACTIONS AND PROCEEDING; RESPONSE TO SUN'S NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING Case No. C04-03124 PJH

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Among the first three cases, filed by the patent holder CLI in the Eastern District of Texas, the first two together include 30 other defendants than those identified in the titles above; the third case includes Google and Sun among the 9 other non-title defendants. Discovery has been ordered to continue and a trial date of October, 2005, has been set for each of the three Texas actions. The Delaware actions, like the two here in Northern California, essentially involve attempts by accused infringers to secure a venue different than the one chosen by CLI. All of the cases involve CLI's allegation that the defendants have infringed the same patent at issue in the Google and Sun declaratory judgment actions in this District, the '672 patent. Further, the basis for the infringement charge is the same against each defendant (their use of the JPEG baseline standard). Additionally, there is a pending proceeding before the Judicial Panel on Multidistrict Litigation ("JPML"). Google, Sun, and a third accused infringer (Yahoo!, Inc.) already filed a motion on September 27, 2004 with the JPML to consolidate and coordinate all eight cases pursuant to 28 U.S.C. § 1407 and to transfer them all here, to the Northern District of California. 2 Defendants in the Google and Sun actions here will reserve statement on whether the cases should be handled as Multidistrict Litigation, information requested by Civil L.R. 3-13(b)(3)(B), for their response to the Motion already filed before the Judicial Panel. RESPONSE TO SUN'S NOTICE OF RELATED CASE Sun requests that the Court delay decision on reassignment until after the JPML decision. Such a delay is unwarranted and contravenes the JPML Rules. The Multidistrict Litigation transfer motion is not anywhere close to decision; only the opening papers, by only three parties, have been filed. 3 It is also a multifaceted motion involving more than 40 parties and must be decided by a Judicial Panel. By contrast, only one judge (Judge Hamilton, who has the first- filed case) will make the decision on reassigning the Sun and Google cases in this District to the same judge. See Civil L.R. 3-12(e). The decision requires no submissions other than the Notices of Related Cases and
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They make this request although the two California cases are two of the last to be filed and involve only two of the scores of accused infringers. 3 The JPML filed Sun, Google, and Yahoo!'s motion on October 4, 2004 (In re Compression Labs, Inc. Patent Litigation, Docket No. MDL-1654) and ordered that responses be filed on or before October 25, 2004. 3

NOTICE OF RELATED CASE; RESPONSE TO SUN'S NOTICE OF RELATED CASE; NOTICE OF PENDENCY OF OTHER ACTIONS AND PROCEEDING; RESPONSE TO SUN'S NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING Case No. C04-03124 PJH

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Responses already filed, plus any additional responses, which must be filed within 10 days. Civil L.R. 3-12(d). The cases indisputably concern the same issues of infringement of the same patent owned by the same party, CLI. 4 Yet Sun, in its Notice of Related Case, etc., filed October 13, 2004, unaccountably asks the Court to delay the simple reassignment decision until the Judicial Panel decides whether to send the cases into Multidistrict Litigation and, more dauntingly, where. Sun gives no reason supporting delay. Nor can it. It is beyond controversy that the filing of a motion to transfer an action pursuant to 28 U.S.C. § 1407 does not suspend the proceedings in the transferor court. In fact, the JPML's Rules of Procedure expressly direct that a pending action before the JPML does not affect pretrial proceedings : The pendency of a motion, order to show cause, conditional transfer order or conditional remand order before the Panel concerning transfer or remand of an action pursuant to 28 U.S.C. § 1407 does not affect or suspend orders and pretrial proceedings in the district court in which the action is pending and does not in any way limit the pretrial jurisdiction of that court. A transfer or remand pursuant to 28 U.S.C. § 1407 shall be effective when the transfer or remand order is filed in the office of the clerk of the district court of the transferee district. Rule 1.5 of the Rules of Procedure of the Judicial Panel on Multidistrict Litigation, 199 F.R.D. 425 (2001); see also Tortola Rests., L.P. v. Kimberly-Clark Corp., 987 F. Supp. 1186, 1188-89 (N.D. Cal. 1997). Certainly the Eastern District of Texas has seen no problem with determining reassignment now instead of later: As one can see by the case numbers, the three cases in that district have been assigned to a single judge: DF (Judge Folsom). Indeed, the third Texas action in which both Google and Sun are defendants (2:04CV294 DF), was originally assigned to Judge Ward, but was later reassigned to Judge Folsom pursuant to certain defendants' motion. Furthermore, the circumstances here in the Northern California already urge reassignment to a single judge. The principle purposes for such reassignment, judicial economy and avoiding inconsistency, see Civil L.R. 3-12(b), (c)(3), already exist: Defendant CLI has moved to dismiss in both cases, on the same grounds. Sun has not

There is no subject matter or personal jurisdiction as to the other two defendants in the Google action, as shown by Defendants' Motion to Dismiss or, in the Alternative, to Transfer (filed Oct. 12, 2004). 4
NOTICE OF RELATED CASE; RESPONSE TO SUN'S NOTICE OF RELATED CASE; NOTICE OF PENDENCY OF OTHER ACTIONS AND PROCEEDING; RESPONSE TO SUN'S NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING Case No. C04-03124 PJH

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asked the Court to stay decision on those motions. They should proceed to decision, as should reassignment.

Dated: October 20, 2004

WESSELS LAW GR0UP

By: __________________________________ Shelley K. Wessels Counsel for Defendants Compression Labs, Inc., Forgent Networks, Inc. and General Instrument Corp.

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NOTICE OF RELATED CASE; RESPONSE TO SUN'S NOTICE OF RELATED CASE; NOTICE OF PENDENCY OF OTHER ACTIONS AND PROCEEDING; RESPONSE TO SUN'S NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING Case No. C04-03124 PJH