Apple, Inc v. S3 Graphics Co., Ltd. et al

Filing 47

STIPULATION AND ORDER GRANTING STAY PENDING REEXAMINATION re 45 Stipulation. *** Deadlines terminated re 40 Patent Scheduling Order; 10/14/2011 Hearing Terminated. Motions terminated: 44 MOTION to Stay Defendant S3 Graphics Co., Ltd.'s and S3 Graphics, Inc.'s Notice of Motion and Motion to Stay filed by S3 Graphics, Inc., S3 Graphics Co., Ltd. *** Set Case Flags: STAYED (Case Stayed). Signed by Judge Edward J. Davila on 9/1/2011. (ecg, COURT STAFF) (Filed on 9/1/2011)

1
2
3
4
5
6
7
8

CHRIS R. OTTENWELLER (STATE BAR NO. 73649)
[e-mail]
BAS DE BLANK (STATE BAR NO. 191487)
[e-mail]
DENISE M. MINGRONE (STATE BAR NO. 135224)
[e-mail]
JESSE CHENG (STATE BAR NO. 259909)
[e-mail]
ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
Menlo Park, California 94025
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Plaintiff
APPLE INC.

9
10

UNITED STATES DISTRICT COURT

11

NORTHERN DISTRICT OF CALIFORNIA

12

SAN JOSE DIVISION

13
14

APPLE INC., a California corporation,
Plaintiff,

15
16
17
18
19

v.

Case No. CV-11-00210 EJD
STIPULATION AND [PROPOSED]
ORDER RE STAY PENDING
REEXAMINATION

S3 GRAPHICS CO., LTD., a Cayman Islands
corporation, and S3 GRAPHICS, INC., a
Delaware corporation,
Defendants.

20
21
22
23
24
25
26
27
28
STIPULATION AND [PROPOSED] ORDER RE STAY
CV-11-00210 EJD

1

WHEREAS, this is an action brought by plaintiff Apple Inc. (“Apple”) against defendants

2

S3 Graphics Co., Ltd. and S3 Graphics, Inc. (collectively, “S3G”) seeking a declaratory judgment

3

of non-infringement and invalidity of United States Patent Nos. 6,658,146 (the “’146 Patent”);

4

6,683,978 (the “’978 Patent”); 6,775,417 (the “’417 Patent”); and 7,043,087 (the “’087 Patent”)

5

(collectively, the “Asserted Patents”);

6

WHEREAS, S3G has denied that the Asserted Patents are invalid and not infringed and

7

asserted claims 2, 4, 8, 13, 16, 18, and 19 of the ‘146 Patent, claims 11, 14, and 16 of the ‘978

8

Patent, claims 1, 7, 8, 12, 13, 15, and 23 of the ‘417 Patent and claims 1, 6, and 7 of the ‘087

9

Patent (collectively, the “Asserted Claims”);

10

WHEREAS, the United States Patent and Trademark Office (the “Patent Office”) is

11

currently reexamining all of the Asserted Claims, has determined that new and non-cumulative

12

prior art raises substantial new questions as to the patentability of the Asserted Claims, and has

13

issued Office Actions rejecting the Asserted Claims as unpatentable in light of this new prior art;

14
15

WHEREAS, in light of the pending reexamination of the Asserted Claims, S3G has
moved this Court to stay the pending action; and,

16

WHEREAS, the parties agree the reexaminations are well advanced and that the interests

17

of justice are served by granting a stay because it would be most efficient to wait until the Patent

18

Office proceedings are completed and the Patent Office issues reexamination certificates for the

19

patents at issue, detailing what changes (if any) eventually result from its reexaminations;

20

THEREFORE, the parties hereby stipulate and request that the Court order as follows:

21

1.

That this action be stayed until the after a post-reexamination case management

22

conference, to be held no earlier than three months after the Patent Office completes any of the

23

pending reexaminations by issuing a Reexamination Certificate.

24

2.

That the parties submit a joint status report within 30 days after the Patent Office

25

completes any of the pending reexaminations by issuing a reexamination certificate, such report

26

informing the Court of the status of all pending reexaminations and the parties’ positions on

27

whether the stay should be lifted.

28

3.

That all present deadlines and court dates be continued until the stay is lifted.
-1-

STIPULATION AND [PROPOSED] ORDER TO STAY
PROCEEDINGS PURSUANT TO 28 U.S.C. § 1659
CV-11-00210 HRL

1

This stipulation is without prejudice to either party seeking to lift or extend the stay if

2

circumstances warrant.

3
4

I, Bas de Blank, certify that I have obtained authorization from John Alison to affix his
signature to this stipulation on behalf of S3G.

5
6

Dated: August 25, 2011

7

ORRICK, HERRINGTON & SUTCLIFFE LLP

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.

By: /s/ Bas de Blank
Bas de Blank

By: /s/ John Alison
John Alison

8
9
10
11

Attorneys for Plaintiff
APPLE INC.

Attorneys for Defendants
S3 GRAPHICS CO., LTD.,
and S3 GRAPHICS, INC.

12
13
14
15

[PROPOSED] ORDER

16

Good cause showing, this action shall be stayed pursuant to 35 U.S.C. § 305 and the

17
18

foregoing stipulation of the parties. The Order terminates Defendant's Motion to Stay (Docket Item
44) as MOOT. ORDERED.
IT IS SO

19

IT IS SO ORDERED

20

Dated: September 1, 2011
Edward J. Davila
United States District Judge

21
22
23
24
25
26
27
28
-2-

STIPULATION AND [PROPOSED] ORDER TO STAY
PROCEEDINGS PURSUANT TO 28 U.S.C. § 1659
CV-11-00210 HRL