San Francisco Technology, Inc. v. Aero Products International, Inc et al

Filing 108

STIPULATION AND ORDER re 104 staying case as to Sterling International, Inc. Signed by Magistrate Judge Howard R. Lloyd on 8/17/2010. (hrllc2, COURT STAFF) (Filed on 8/17/2010)

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Kathryn G. Spelman, Esq. (Cal. Bar No. 154512) Daniel H. Fingerman, Esq. (Cal. Bar No. 229683) Mount & Stoelker, P.C. RiverPark Tower, Suite 1650 333 West San Carlos Street San Jose CA 95110-2740 Phone: [phone] Fax: [phone] Email: [e-mail], [e-mail] Counsel for San Francisco Technology Inc.

*E-FILED 08-17-2010*

U.S. District Court Northern District of California San Francisco Technology Inc. Case No. 5:10-cv-02994-HRL Stipulation to Stay Case With Respect to Sterling International Inc. and ======== [Proposed] Order

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MOUNT & STOELKER, P.C. RIVERPARK TOWER, SUITE 1650 333 WEST SAN CARLOS STREET SAN JOSE, CALIFORNIA 95110-2740 TELEPHONE [phone]

12 13 14 15 16 17 18 19 20 21 Defendants 22 23 24 25 26 27 28 Aero Products International Inc., BP Lubricants USA Inc., BRK Brands Inc., Calico Brands Inc., Cooper Lighting LLC, Darex LLC, Dexas International Ltd., DynaGro Nutrition Solutions, Fiskars Brands Inc., Global Concepts Inc., Homax Products Inc., Kimberly-Clark Corporation, Kraco Enterprises LLC, Lixit Corporation, Mead Westvaco Corporation, Nutrition 21 Inc., Oatey Co., Optimum Technologies Inc., Newell Rubbermaid Inc., Schick Manufacturing Inc., The Scotts Company LLC, Sterling International Inc., Vitamin Power Incorporated, Woodstream Corporation, 4-D Design Inc.

[Re: Docket No. 104]

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MOUNT & STOELKER, P.C. RIVERPARK TOWER, SUITE 1650 333 WEST SAN CARLOS STREET SAN JOSE, CALIFORNIA 95110-2740 TELEPHONE [phone]

Plaintiff San Francisco Technology Inc. ("SF Tech") and defendant Sterling International Inc. ("Defendant") enter into this stipulation and seek the relief set forth below. 1. SF Tech filed its Complaint on July 8, 2010, alleging that Defendant has falsely

marked articles in violation of 35 U.S.C. § 292. SF Tech asserts that it is a qui tam relator in this case. 2. SF Tech had earlier filed similar Complaints in this court, asserting similar false

marking claims against other defendants, also asserting that it is a qui tam relator. Those cases are styled: a. San Francisco Technology Inc. v. Adobe Systems Incorporated, et al., Case

No. 5:09-cv-06083-RS ("Adobe"), filed on December 30, 2009. b. San Francisco Technology Inc. v. The Glad Products Company, et al., Case

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No. 5:10-cv-00966-JF ("Glad"), filed on March 5, 2010. 3. Defendant anticipates that it will challenge SF Tech's standing in this case. Defendant

also anticipates that it might raise challenges to personal jurisdiction and/or venue in this case. 4. In similar cases involving qui tam relators under 35 U.S.C. § 292, District Courts have

split on the question of whether a qui tam relator has standing in such cases. See e.g., Juniper Networks v. Shipley, 2010 U.S. Dist. Lexis 24889, 16­17 (N.D. Cal. 2010) ("Juniper Networks 2") (finding standing); Pequignot v. Solo Cup Co., 640 F. Supp. 2d 714 (E.D. Va. 2009) ("Pequignot 2") (finding standing); Stauffer v. Brooks Brothers Inc., 615 F. Supp. 2d 248 (S.D.N.Y. 2009) ("Stauffer") (finding a lack of standing). 5. The District Court's decision in Stauffer (finding a lack of standing) is currently on

appeal in the Federal Circuit (Case No. 2009-1428). That appeal has been fully briefed, and the Federal Circuit panel heard oral arguments on August 3, 2010. 6. It is widely expected that the Federal Circuit will issue a ruling in Stauffer concerning

the standing of qui tam relators under 35 U.S.C. § 292. The parties to this stipulation anticipate that the Federal Circuit's ruling will have a significant effect on the standing question in this case. 7. In light of the pending appeal in Stauffer, and in order to streamline the issues in

Adobe and Glad, Judge Seeborg of this court entered an order staying Adobe on April 13, 2010, and
Case No. 5:10-cv-02994-HRL Stipulation to Stay Case With Respect to Sterling International Inc. and [Proposed] Order ======== Page 1

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MOUNT & STOELKER, P.C. RIVERPARK TOWER, SUITE 1650 333 WEST SAN CARLOS STREET SAN JOSE, CALIFORNIA 95110-2740 TELEPHONE [phone]

Judge Fogel of this court entered an order staying Glad on July 19, 2010. Those cases have been stayed until the Federal Circuit issues a decision in Stauffer. 8. In order to streamline this case and to narrow the issues that this court will be required

to decide, the parties to this stipulation have reached an agreement. They hereby stipulate to stay this case until the Federal Circuit issues a decision in Stauffer. In exchange, Defendant agrees that it will not challenge personal jurisdiction or venue in this court. This stipulation is not intended to affect any other rights, claims, defenses, or arguments of any party. Accordingly, after the stay is lifted, this case will be litigated in this court, and Defendant may raise any defenses to SF Tech's claim other than venue or personal jurisdiction. 9. SF Tech previously entered into a stipulation with another defendant similar to this

one, and the court granted the relief sought. See Docket No. 77. 10. The parties seek the following relief: a. All proceedings in this case will be stayed with respect to Defendant until the

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Federal Circuit issues a decision in Stauffer. b. SF Tech will notify this court when the Federal Circuit issues a decision in

Stauffer. Defendant's deadline to file a response to the Complaint will be 30 days from the filing of this notice. c. The stipulating parties have agreed that personal jurisdiction and venue are

appropriate in the Northern District of California in this case. However, no other rights, claims, defenses, or arguments of any party are affected by this stipulation.

In accordance with General Order No. 45.X.B., Dan Fingerman, counsel for SF Tech, attests that each other signatory listed below has concurred in the filing of this document.

Date: August 13, 2010

Mount & Stoelker, P.C. /s/ Dan Fingerman Counsel for San Francisco Technology Inc.

Case No. 5:10-cv-02994-HRL ======== Stipulation to Stay Case With Respect to Sterling International Inc. and [Proposed] Order

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MOUNT & STOELKER, P.C. RIVERPARK TOWER, SUITE 1650 333 WEST SAN CARLOS STREET SAN JOSE, CALIFORNIA 95110-2740 TELEPHONE [phone]

Date: August 13, 2010

Abbey, Weitzenberg, Warren & Emery /s/ Stephanie Walker Counsel for Sterling International Inc.

Pursuant to stipulation, it is so ordered

August 17, 2010 Date: ___________________________

_________________________________________ Magistrate Judge Howard R. Lloyd

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Case No. 5:10-cv-02994-HRL Stipulation to Stay Case With Respect to Sterling International Inc. and [Proposed] Order ======== Page 3