Acer, Inc. et al v. Technology Properties Limited et al

Filing 171

STIPULATION AND ORDER TO DISMISS THE SECOND CLAIM OF PLAINTIFFS' FIRST AMENDED COMPLAINT re 165 . Signed by Judge Jeremy Fogel on 6/28/10. (dlm, COURT STAFF) (Filed on 7/6/2010)

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 (415) 954-4400 John L. Cooper (State Bar No. 050324) jcooper@fbm.com Stephanie P. Skaff (State Bar No. 183119) sskaff@fbm.com Eugene Y. Mar (State Bar No. 227071) emar@fbm.com Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 Telephone: (415) 954-4400 Facsimile: (415) 954-4480 Attorneys for Defendants TECHNOLOGY PROPERTIES LIMITED and ALLIACENSE LIMITED Charles T. Hoge (State Bar No. 110696) choge@knlh.com KIRBY NOONAN LANCE & HOGE 35 Tenth Avenue San Diego, California 92101 Telephone: (619) 231-8666 Facsimile: (619) 231-9593 Attorney for Defendants PATRIOT SCIENTIFIC CORP. Timothy Paar Walker (State Bar No. 105001) Harold H. Davis, Jr. (State Bar No. 235552) K&L Gates LLP 55 Second Street, Suite 1700 San Francisco, CA 94105-3493 Telephone: (415) 882-8200 Facsimile: (415) 882-8220 Jeffrey Ratinoff (State Bar No. 197241) K&L Gates LLP 630 Hansen Way Palo Alto, CA 94340 Telephone: (650) 798-6700 Facsimile: (650) 798-6701 Attorneys for Plaintiffs ACER INC., ACER AMERICA CORP., and GATEWAY INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION ACER, INC., ACER AMERICA CORP., and GATEWAY INC., Plaintiff, v. TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION, and ALLIACENSE LIMITED, Defendants. Case No. 5:08-cv-00877 JF STIPULATED REQUEST TO DISMISS THE SECOND CLAIM OF PLAINTIFFS' FIRST AMENDED COMPLAINT REGARDING U.S. PATENT NO. 5,784,584 -----------------AND [PROPOSED] ORDER THEREON___ The Honorable Jeremy Fogel STIPULATED REQUEST TO DISMISS `584 PATENT /Case No. 5:08-cv-00877 (JF) 23129\2274760.1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 (415) 954-4400 WHEREAS plaintiffs Acer, Inc., Acer America Corp., and Gateway, Inc. (collectively "Acer") filed a First Amended Complaint seeking a declaratory judgment that Acer did not infringe any valid and enforceable claim of U.S. Patent No. 5,784,584 ("'584 patent"); WHEREAS defendants Technology Properties Limited, Patriot Scientific Corporation, and Alliacense Limited (collectively "TPL") filed an Answer denying Acer's averment that Acer did not infringe any valid and enforceable claim of the '584 patent but did not assert a counterclaim based on that patent; WHEREAS, in the related actions, Barco N.V. v. Technology Properties Limited, et al., Case No. 08-05398 JF and HTC v. Technology Properties Limited, et al., Case No. 08-0882 JF, the Court has dismissed the `584 patent based on a covenant not to sue with the same scope and language; WHEREAS TPL has offered and hereby provides to Acer a covenant-not-to-sue with respect to the '584 patent, which is reproduced in its entirety below; and WHEREAS in light of TPL's covenant-not-to-sue, Acer has agreed to dismiss its declaratory judgment claim as to the '584 patent on the terms set forth below; NOW, THEREFORE, TPL and Acer, by and through their undersigned counsel, hereby stipulate, and respectfully request that the Court order, as follows: 1. TPL has provided the following covenant-not-to-sue to Acer, which the Court hereby approves: Technology Properties Limited and Patriot Scientific Corporation, each on behalf of itself and any successors-in-interest to U.S. Patent No. 5,784,584 ("the '584 patent"), hereby unconditionally and irrevocably covenant not to assert at any time any claim of patent infringement including direct infringement, contributory infringement and/or inducing infringement against Acer, Inc., Acer America Corp., and Gateway Inc. (collectively "Acer") under any claim of the '584 patent as they currently read, and any claim in any reissued or reexamined version of the '584 patent that is the same as, or substantially identical to, any claim of the '584 patent as it currently reads, against any products made, used, offered for sale, sold, or imported into the United States by Acer currently or at any time prior to the date of this covenant. 2. In light of TPL's covenant-not-to-sue with respect to the '584 patent, the Second -223129\2274760.1 STIPULATED REQUEST TO DISMISS `584 PATENT /Case No. 5:08-cv-00877 (JF) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 (415) 954-4400 Claim of Declaratory Judgment Regarding the '584 Patent in Acer's First Amended Complaint is hereby DISMISSED without prejudice, for lack of subject matter jurisdiction, pursuant to Fed. R. Civ. P. 41(a)(2). 3. The dismissal provided by this Order does not limit the parties' ability to continue to prosecute its remaining claims, defenses, and counterclaims in this litigation regarding U.S. Patent Nos. 5,809,336; 6,598,148; 5,440,749; and 5,530,890. This dismissal also does not limit any rights by the parties to subsequently seek recovery of attorneys' fees and costs. IT IS HEREBY STIPULATED. Dated: June 25, 2010 I represent that concurrence in the filing of this document has been obtained from each of the other signatories which shall serve in lieu of their signatures on this document. FARELLA BRAUN & MARTEL LLP By: /s/ John L. Cooper John L. Cooper Attorneys for Defendants TECHNOLOGY PROPERTIES LIMITED and ALLIACENSE LIMITED KIRBY NOONAN LANCE & HOGE By: /s/ Charles T. Hoge Charles T. Hoge Attorneys for Defendant PATRIOT SCIENTIFIC CORPORATION Dated: June 25, 2010 K&L GATES LLP By: /s/ Jeffrey Ratinoff Jeffrey Ratinoff Attorneys for Plaintiffs ACER, INC., ACER AMERICA CORP. and GATEWAY INC. Dated: June 25, 2010 STIPULATED REQUEST TO DISMISS `584 PATENT /Case No. 5:08-cv-00877 (JF) -3- 23129\2274760.1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 (415) 954-4400 PURSUANT TO STIPULATION, IT IS SO ORDERED: 1. TPL has provided the following covenant-not-to-sue to Acer, which the Court hereby approves: Technology Properties Limited and Patriot Scientific Corporation, each on behalf of itself and any successors-in-interest to U.S. Patent No. 5,784,584 ("the '584 patent"), hereby unconditionally and irrevocably covenant not to assert at any time any claim of patent infringement including direct infringement, contributory infringement and/or inducing infringement against Acer, Inc., Acer America Corp., and Gateway Inc. (collectively "Acer") under any claim of the '584 patent as they currently read, and any claim in any reissued or reexamined version of the '584 patent that is the same as, or substantially identical to, any claim of the '584 patent as it currently reads, against any products made, used, offered for sale, sold, or imported into the United States by Acer currently or at any time prior to the date of this covenant. 2. In light of TPL's covenant-not-to-sue with respect to the '584 patent, the Second Claim of Declaratory Judgment Regarding the '584 Patent in Acer's First Amended Complaint is hereby DISMISSED without prejudice, for lack of subject matter jurisdiction, pursuant to Fed. R. Civ. P. 41(a)(2). 3. The dismissal provided by this Order does not limit the parties' ability to continue to prosecute its remaining claims, defenses, and counterclaims in this litigation regarding U.S. Patent Nos. 5,809,336; 6,598,148; 5,440,749; and 5,530,890. This dismissal also does not limit any rights by the parties to subsequently seek recovery of attorneys' fees and costs. 6/28/10 DATED: ___________________ Honorable Jeremy Fogel United States District Court Judge STIPULATED REQUEST TO DISMISS `584 PATENT /Case No. 5:08-cv-00877 (JF) -4- 23129\2274760.1

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