Motorola Mobility, Inc. v. Microsoft Corporation

Filing 62

Defendant's MOTION to Change Venue Defendant's Motion to Transfer This Action to the Western District of Washington and Accompanying Memorandum of Law by Microsoft Corporation. Responses due by 6/6/2011 (Attachments: #1 Exhibit Exhibit A David Kaefer's Declaration, #2 Exhibit Exhibit 1 to David Kaefer's Declaration, #3 Exhibit Exhibit 2 to David Kaefer's Declaration, #4 Exhibit Exhibit 3 to David Kaefer's Declaration, #5 Exhibit Exhibit B Curtis Miner's Declaration, #6 Exhibit Exhibit 1 to Curtis Miner's Declaration, #7 Exhibit Exhibit 2 to Curtis Miner's Declaration, #8 Exhibit Exhibit 3 to Curtis Miner's Declaration, #9 Exhibit Exhibit 4 to Curtis Miner's Declaration, #10 Exhibit Exhibit 5 to Curtis Miner's Declaration, #11 Exhibit Exhibit 6 to Curtis Miner's Declaration, #12 Exhibit Exhibit 7 to Curtis Miner's Declaration, #13 Exhibit Exhibit 8 to Curtis Miner's Declaration, #14 Exhibit Exhibit 9 to Curtis Miner's Declaration, #15 Exhibit Exhibit 10 to Curtis Miner's Declaration, #16 Exhibit Exhibit 11 to Curtis Miner's Declaration, #17 Exhibit Exhibit 12 to Curtis Miner's Declaration, #18 Exhibit Exhibit 13 to Curtis Miner's Declaration, #19 Exhibit Exhibit 14 to Curtis Miner's Declaration, #20 Exhibit Exhibit 15 to Curtis Miner's Declaration, #21 Exhibit Exhibit 16 to Curtis Miner's Declaration, #22 Exhibit Group Exhibit C to Motion, #23 Exhibit Group Exhibit D to Motion)(Miner, Curtis)

Case 2:10-cv-01577-RSM Document 33

Filed 11/08/10 Page 1 of 5

The Honorable Ricardo S. Martinez

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UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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MICROSOFT CORPORATION,
CASE NO. C10-01577-RSM

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Plaintiff,

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STIPULATION AND [PROPOSED]
ORDER TO STAY ACTION

v.

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Note on Motion Calendar:
November 8, 2010

MOTOROLA, INC., and
MOTOROLA MOBILITY, INC.,

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Defendants.

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STIPULATION
Plaintiff Microsoft Corporation and Defendants Motorola, Inc., and Motorola Mobility,

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Inc., collectively (“the Parties”), by and through their respective counsel of record, hereby

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stipulate and agree as follows:

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1.

Pursuant to 28 U.S.C. § 1659, the Parties stipulate to a stay of proceedings in the

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above-captioned matter pending a final determination of the United States International Trade

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Commission (“ITC”) in In the Matter of Certain Mobile Devices, Associated Software, and

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Components Thereof, Investigation No. 337-TA-744.

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2.

On October 1, 2010, Plaintiff Microsoft Corporation (“Microsoft”) filed a

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Complaint in this matter. Five days later, on October 6, 2010, Microsoft filed an Amended

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Complaint, which added Motorola Mobility, Inc. (“Motorola Mobility”) as a defendant. Microsoft

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served its Amended Complaint on Motorola, Inc. (“Motorola”) on October 8, 2010 and on
STIPULATION AND [PROPOSED] ORDER TO STAY
ACTION - 1
CASE NO. C10-01577-RSM

SUMMIT LAW GROUP PLLC
315 FIFTH AVENUE SOUTH, SUITE 1000
SEATTLE, WASHINGTON 98104-2682
Telephone: [phone]
Fax: [phone]

Case 2:10-cv-01577-RSM Document 33

Filed 11/08/10 Page 2 of 5

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Motorola Mobility on October 28, 2010. In a Stipulation filed on October 27, 2010, the Parties

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agreed that Motorola and Motorola Mobility’s deadline to answer or otherwise move the Court for

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relief in this action should be extended from October 29, 2010 to November 22, 2010. The Court

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so Ordered this extension on November 1, 2010. ECF No. 32.

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3.

The Amended Complaint alleges that Motorola and Motorola Mobility have

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infringed, either directly or indirectly, nine Microsoft patents: U.S. Patent Nos. 5,579,517;

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5,758,352; 6,621,746; 6,826,762; 6,909,910; 7,644,376; 5,665,133; 6,578,054; and 6,370,566. See

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Amended Complaint, ¶¶ 11-12, 14-15, 17-18, 20-21, 23-24, 26-27, 29-30, 32-33, and 35-36. The

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same day Microsoft filed its initial Complaint in this action—October 1, 2010—it also filed a

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Complaint with the ITC against Motorola and in connection with the same nine Microsoft patents,

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asserting that Motorola has infringed these patents and has therefore engaged in unfair competition

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or violated Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337.

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4.

Eleven days later, on October 12, 2010, Microsoft amended its ITC Complaint to

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add Motorola Mobility as a respondent. On November 1, 2010, the ITC instituted an investigation

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based on the Amended Complaint and formally named Motorola and Motorola Mobility as

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respondents. Thus, at present, Motorola and Motorola Mobility are both defendants in this civil

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action and respondents in the ITC proceeding.

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5.

28 U.S.C. § 1659(a) provides that “[i]n a civil action involving parties that are also

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parties to a proceeding before the [ITC] under section 337 of the Tariff Act of 1930, at the request

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of a party to the civil action that is also a respondent in the proceeding before the Commission, the

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district court shall stay, until the determination of the Commission becomes final, proceedings in

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the civil action with respect to any claim that involves the same issues involved in the proceeding

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before the commission,” so long as “such request is made within (1) 30 days after the party is

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named as a respondent in the proceeding before the Commission, or (2) 30 days after the district

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court action is filed, whichever is later.” 28 U.S.C. § 1659(a) (emphasis added). Motorola and

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Motorola Mobility are parties to the above-captioned civil action and also the respondents in In the
STIPULATION AND [PROPOSED] ORDER TO STAY
ACTION - 2
CASE NO. C10-01577-RSM

SUMMIT LAW GROUP PLLC
315 FIFTH AVENUE SOUTH, SUITE 1000
SEATTLE, WASHINGTON 98104-2682
Telephone: [phone]
Fax: [phone]

Case 2:10-cv-01577-RSM Document 33

Filed 11/08/10 Page 3 of 5

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Matter of Certain Mobile Devices, Associated Software, and Components Thereof, an ITC

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proceeding involving the same issues involved here—the putative infringement of nine Microsoft

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patents.
6.

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This requested stipulation is timely. The 30-day period under 28 U.S.C.

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§ 1659(a)(1) did not begin to run until November 1, 2010—the day Motorola and Motorola

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Mobility were “named as [] respondent[s] in the proceeding before the Commission.” 28 U.S.C.

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§ 1659(a)(1); see 19 C.F.R. § 210.3 (defining “respondent” as “any person named in a notice of

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investigation”).

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7.

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Accordingly, the Parties respectfully request that the Court enter an Order directing

that:
A.

Pursuant to 28 U.S.C. § 1659(a) et seq. and the Court’s inherent power to

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control its docket, this civil action is stayed until a final determination of the ITC proceeding in In

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the Matter of Certain Mobile Devices, Associated Software, and Components Thereof,

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Investigation No. 337-TA-744;

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B.

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The deadline for Motorola and Motorola Mobility to move, answer, or

otherwise respond to the Amended Complaint is vacated; and
C.

Within 30 days of a final determination of the ITC proceeding in In the

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Matter of Certain Mobile Devices, Associated Software, and Components Thereof, Investigation

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No. 337-TA-744, and the associated expiration of this stay, the Parties shall confer with each other

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and contact the Court for purposes of setting a Scheduling Order, which shall include the setting of

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a new deadline for Motorola and Motorola Mobility to move, answer, or otherwise respond to

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Microsoft’s Amended Complaint.

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STIPULATION AND [PROPOSED] ORDER TO STAY
ACTION - 3
CASE NO. C10-01577-RSM

SUMMIT LAW GROUP PLLC
315 FIFTH AVENUE SOUTH, SUITE 1000
SEATTLE, WASHINGTON 98104-2682
Telephone: [phone]
Fax: [phone]

Case 2:10-cv-01577-RSM Document 33

DATED this 8th day of November, 2010.

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SUMMIT LAW GROUP PLLC

DANIELSON HARRIGAN LEYH & TOLLEFSON
LLP

By /s/ Philip S. McCune
Philip S. McCune, WSBA #21081
Lynn M. Engel, WSBA #21934
[e-mail]
[e-mail]

By /s/ Christopher T. Wion
Arthur W. Harrigan, Jr., WSBA #1751
Christopher T. Wion, WSBA #33207
[e-mail]
[e-mail]

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Filed 11/08/10 Page 4 of 5

And by
Edward J. DeFranco (pro hac vice)
Quinn Emanuel
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
[e-mail]
Charles K. Verhoeven (pro hac vice)
Quinn Emanuel
50 California Street, 22nd Floor
San Francisco, CA 94111
[phone]
[e-mail]
David Nelson (pro hac vice)
Quinn Emanuel
500 W. Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Defendants Motorola, Inc., and
Motorola Mobility, Inc.

T. Andrew Culbert, WSBA #35925
David E. Killough, WSBA #40185
Microsoft Corporation
One Microsoft Way
Redmond, WA 98052
[phone]
[e-mail]
[e-mail]
Of Counsel:
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
Sidley Austin LLP
One South Dearborn
Chicago, IL 60603
[phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Brian R. Nester
Kevin C. Wheeler
Sidley Austin LLP
1501 K Street NW
Washington, DC 20005
[phone]
[e-mail]
[e-mail]

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Attorneys for Plaintiff Microsoft Corporation

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STIPULATION AND [PROPOSED] ORDER TO STAY
ACTION - 4
CASE NO. C10-01577-RSM

SUMMIT LAW GROUP PLLC
315 FIFTH AVENUE SOUTH, SUITE 1000
SEATTLE, WASHINGTON 98104-2682
Telephone: [phone]
Fax: [phone]

Case 2:10-cv-01577-RSM Document 33

Filed 11/08/10 Page 5 of 5

ORDER

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IT IS SO ORDERED.

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DATED this ____ day of ______________, 2010.

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THE HONORABLE RICARDO S. MARTINEZ
UNITED STATES DISTRICT COURT JUDGE

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Presented by:

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SUMMIT LAW GROUP PLLC

DANIELSON HARRIGAN LEYH & TOLLEFSON
LLP

By /s/ Philip S. McCune
Philip S. McCune, WSBA #21081
Lynn M. Engel, WSBA #21934
[e-mail]
[e-mail]

By /s/ Christopher T. Wion
Arthur W. Harrigan, Jr., WSBA #1751
Christopher T. Wion, WSBA #33207
[e-mail]
[e-mail]

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And by

T. Andrew Culbert, WSBA #35925
David E. Killough, WSBA #40185
Microsoft Corporation
One Microsoft Way
Redmond, WA 98052
[phone]
[e-mail]
[e-mail]

Edward J. DeFranco (pro hac vice)
Quinn Emanuel
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
[e-mail]
Charles K. Verhoeven (pro hac vice )
Quinn Emanuel
50 California Street, 22nd Floor
San Francisco, CA 94111
[phone]
[e-mail]

And by
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
Sidley Austin LLP
One South Dearborn
Chicago, IL 60603
[phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

David Nelson (pro hac vice)
Quinn Emanuel
500 W. Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Defendants Motorola, Inc., and
Motorola Mobility, Inc.

Brian R. Nester
Kevin C. Wheeler
Sidley Austin LLP
1501 K Street NW
Washington, DC
20005
[phone]
[e-mail]
[e-mail]

Attorneys for Plaintiff Microsoft Corporation

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STIPULATION AND [PROPOSED] ORDER TO STAY
ACTION - 5
CASE NO. C10-01577-RSM

SUMMIT LAW GROUP PLLC
315 FIFTH AVENUE SOUTH, SUITE 1000
SEATTLE, WASHINGTON 98104-2682
Telephone: [phone]
Fax: [phone]