Rovi Corporation et al v. Roku, Inc.

Filing 12

ORDER AS MODIFIED GRANTING STAY re 11 STIPULATION WITH PROPOSED ORDER STAYING ACTION filed by Roku, Inc. Due to what may be a lengthy stay, the Clerk shall administratively close this action. The parties shall submit a joint status report apprising the court of any developments which may affect the stay no later than January 14, 2013, and shall submit a similar report every (4) months thereafter. This Order shall not prevent either party from seeking to reopen this case and lif t the stay to set a Case Management Conference or request other relief should the circumstances warrant. Pursuant to Stipulation, it is so ordered as modified. Motions terminated: 11 STIPULATION WITH PROPOSED ORDER STAYING ACTION filed by Roku, Inc. Signed by Judge Edward J. Davila on 7/18/2102. (ecg, COURT STAFF) (Filed on 7/18/2012)

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McDERMOTT WILL & EMERY LLP
YAR R. CHAIKOVSKY, #175421
[e-mail]
DAVID L. LARSON, #112342
[e-mail]
S. MICHAEL SONG, #198656
[e-mail]
HONG S. LIN, #249898
[e-mail]
JEREMIAH A. ARMSTRONG, #253705
[e-mail]
KYLE A. VIRGIEN, #278747
[e-mail]
McDERMOTT WILL & EMERY LLP
275 Middlefield Road, Suite 100
Menlo Park, CA 94025-4004
Telephone:
650 815 7400
Facsimile:
650 815 7401

KEKER & VAN NEST LLP
ASHOK RAMANI - # 200020
[e-mail]
MICHAEL S. KWUN - # 198945
[e-mail]
SHARIF E. JACOB - # 257546
[e-mail]
STACY CHEN - # 261822
[e-mail]
EDWARD A. BAYLEY - # 267532
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Telephone:
415 391 5400
Facsimile:
415 397 7188
Attorneys for Defendant, ROKU, INC.

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Attorneys for Plaintiffs ROVI
CORPORATION, ROVI GUIDES, INC. and
UNITED VIDEO PROPERTIES, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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ROVI CORPORATION, ROVI GUIDES,
INC., and UNITED VIDEO PROPERTIES,
INC.,

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Case No. 5:12-CV-2185 EJD
STIPULATION AND [PROPOSED]
ORDER STAYING ACTION

Plaintiffs,
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Date:
Time:
Dept.:
Judge:

v.
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ROKU, INC.,

Courtroom 4, 5th Floor
Hon. Edward J. Davila

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Defendant.

Date Filed: May 1, 2012

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Trial Date: None
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STIPULATION AND [PROPOSED] ORDER STAYING ACTION
Case No. 5:12-CV-2185 EJD
670553
672957.01

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STIPULATION

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Plaintiffs Rovi Corporation, Rovi Guides, Inc., and United Video Properties, Inc.

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(collectively, “Rovi”) and Defendant Roku, Inc. (“Roku”), hereby stipulate and agree, subject to

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the approval of the Court, as follows:
WHEREAS, on May 1, 2012, Rovi filed a Complaint against Roku alleging infringement

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of U.S. Patent No. 6,898,762;
WHEREAS, on or about May 1, 2012, Rovi also filed a Complaint with the U.S.

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International Trade Commission (“ITC”) against Roku as a proposed Respondent alleging

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infringement of the same patent at issue in the present action;

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WHEREAS, on May 31, 2012, the ITC instituted the investigation entitled Certain

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Products Containing Interactive Program Guide and Parental Control Technology, Inv. No. 337-

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TA-845 (“the Investigation”);
WHEREAS, Roku, as a named respondent in the Investigation, is entitled to a mandatory

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stay of this action “with respect to any claim that involves the same issues involved in the

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proceeding before the Commission” pursuant to 28 U.S.C. § 1659;
WHEREAS, staying the present action in its entirety would promote efficiency and

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preserve judicial resources;

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WHEREAS, a stay will not unduly prejudice any of the parties; and

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WHEREAS, the parties have agreed that Roku need not respond to the Complaint in the

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instant action prior to the Court’s ruling on the present stipulation.
NOW THEREFORE, the parties hereby stipulate and respectfully request, subject to the

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approval of the Court, as follows:
1.

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The deadline for Roku to respond to the Complaint in the present action is

extended until after the Court rules on the present stipulation;
2.

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The present action shall be stayed pending final resolution of the Investigation,

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including any initial and final determinations of the Administrative Law Judge, the ITC, and

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review and appeals therefrom;
3.

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During the stay, any and all proceedings in the present action are stayed;
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STIPULATION AND [PROPOSED] ORDER STAYING ACTION
Case No. 5:12-CV-2185 EJD

670553
672957.01

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4.

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7.

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Roku waives any defects in service and also waives the defenses of insufficiency

of service of process and insufficiency of process.

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Following the expiration of the stay, the parties shall confer with each other and

contact the Court for purposes of lifting the stay and entering a case management order; and

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All pending deadlines are vacated;

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All pending conferences and hearings are taken off calendar;

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Defendant’s undersigned counsel, Sharif E. Jacob, hereby attests that Jeremiah A.
Armstrong, counsel for Plaintiffs, concurs in the filing of this Stipulation and [Proposed] Order
Staying Action in accordance with General Order No. 45, Electronic Case Filing, section 10(b).

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Dated: June 15, 2012

KEKER & VAN NEST LLP

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By:

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/s/ Sharif E. Jacob
Sharif E. Jacob

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Attorneys for Defendant ROKU, INC.

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Dated: June 15, 2012

MCDERMOTT WILL & EMERY LLP

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By:

/s/ Jeremiah A. Armstrong
JEREMIAH A. ARMSTRONG

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Attorneys for Plaintiffs ROVI
CORPORATION; ROVI GUIDES, INC.;
and UNITED VIDEO PROPERTIES, INC.

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ORDER
Due to what may be a lengthy stay, the Clerk shall administratively close this action. The
parties shall submit a joint status [PROPOSED] ORDER of any developments which
report apprising the court
may affect the stay no later than January 14, 2013, and shall submit a similar report every
(4) months thereafter. This Order shall IT IS SO ORDERED.
PURSUANT TO STIPULATION, not prevent either party from seeking to reopen this
case and lift the stay to set a Case Management Conference or request other relief should
the circumstances warrant. Pursuant to Stipulation, it is so ordered as modified.
July 17,
Dated: _________________, 2012
________________________________
HON. EDWARD J. DAVILA
UNITED STATES DISTRICT JUDGE

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STIPULATION AND [PROPOSED] ORDER STAYING ACTION
Case No. 5:12-CV-2185 EJD
670553
672957.01