HTC Corporation et al v. Technology Properties Limited et al

Filing 152

STIPULATION AND ORDER TO DISMISS THE SECOND CLAIM OF PLAINTIFFS' FIRST AMENDED COMPLAINT re 151 . Signed by Judge Jeremy Fogel on 3/25/10. (dlm, COURT STAFF) (Filed on 3/30/2010)

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Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 [phone]

John L. Cooper (State Bar No. 050324) [e-mail] Jeffrey M. Fisher (State Bar No. 155284) [e-mail] Eugene Y. Mar (State Bar No. 227071) [e-mail] Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 Telephone: [phone] Facsimile: [phone] Attorneys for Defendants TECHNOLOGY PROPERTIES LIMITED and ALLIACENSE LIMITED

Heidi L. Keefe (State Bar No 178960) [e-mail] Mark R. Weinstein (State Bar No 193043) [e-mail] Kyle D. Chen (State Bar No 239501) [e-mail] Cooley Godward Kronish LLP 3000 El Camino Real Five Palo Alto Square, 4th Floor Palo Alto, California 94306 Telephone: [phone] Fax: [phone] Attorneys For Plaintiffs HTC CORPORATION and HTC AMERICA, INC.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

HTC CORP., and HTC AMERICA, INC., Plaintiff, v. TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION, and ALLIACENSE LIMITED, Defendants.

Case No. 5:08-cv-00882 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-00882 (JF)

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Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 [phone]

WHEREAS plaintiffs HTC Corporation and HTC America, Inc. (collectively "HTC") filed a First Amended Complaint seeking a declaratory judgment that HTC 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 HTC's averment that HTC 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 action, Barco N.V. v. Technology Properties Limited, et al., Case No. 08-05398 JF, TPL moved to dismiss the `584 patent and proffered a covenant-not-tosue. Based on the covenant, the Court granted TPL's motion to dismiss the `584 patent on February 19, 2010; WHEREAS TPL has offered and hereby provides to HTC 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, HTC has agreed to dismiss its declaratory judgment claim as to the '584 patent on the terms set forth below; NOW, THEREFORE, TPL and HTC, 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 HTC, 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 HTC Corporation and HTC America, Inc. (collectively "HTC") 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 HTC 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\2185528.2

STIPULATED REQUEST TO DISMISS `584 PATENT /Case No. 5:08-cv-00882 (JF)

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Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 [phone]

Claim of Declaratory Judgment Regarding the '584 Patent in HTC'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: March 15, 2010 FARELLA BRAUN & MARTEL LLP By: /s/ John L. Cooper John L. Cooper Attorneys for Defendants TECHNOLOGY PROPERTIES LIMITED and ALLIACENSE LIMITED Dated: March 15, 2010 KIRBY NOONAN LANCE & HOGE By: /s/ Charles T. Hoge Charles T. Hoge Attorneys for Defendant PATRIOT SCIENTIFIC CORPORATION Dated: March 15, 2010 COOLEY GODWARD KRONISH LLP By: /s/ Kyle Chen Kyle Chen Attorneys for Plaintiffs HTC Corp. and HTC America, Inc. I hereby attest that I have on file all holograph signatures for any signatures indicated by a "conformed" signature (/s/) within this e-filed document. Dated: March 15, 2010 /s/ John L. Cooper John L. Cooper

STIPULATED REQUEST TO DISMISS `584 PATENT /Case No. 5:08-cv-00882 (JF)

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Farella Braun & Martel LLP 235 Montgomery Street, 17th Floor San Francisco, CA 94104 [phone]

PURSUANT TO STIPULATION, IT IS SO ORDERED: 1. TPL has provided the following covenant-not-to-sue to HTC, 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 HTC Corporation and HTC America, Inc. (collectively "HTC") 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 HTC 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 HTC'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.

3/25/10 DATED: ___________________ Honorable Jeremy Fogel United States District Court Judge

STIPULATED REQUEST TO DISMISS `584 PATENT /Case No. 5:08-cv-00882 (JF)

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