iLOR, LLC v. Google, Inc.

Filing 74

MOTION to Dismiss by Google, Inc. Remaining Claims (Higgins, James) (Additional attachment(s) added on 1/11/2008: # 1 Proposed Order) (KJR).

iLOR, LLC v. Google, Inc.

Doc. 74

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF KENTUCKY

CENTRA DIVISION
AT LEXINGTON
Electronically Filed
iLOR, LLC,
Plaintiff,
v.

Civil Action No. 5:07-cv-00109-JM

GOOGLE INC.,

Defendant.

DEFENDANT'S MOTION TO DISMISS REMAINING CLAIMS AND COUNTERCLAIMS WITHOUT PREJUDICE, AND FOR ENTRY OF FINAL AND APPEALABLE JUDGMENT
In the Opinion and Order dated November 30,2007, this Court: (1) denied Plaintiffs
motion for preliminary injunction (Document No. 12), (2) granted Defendant's cross-motion for
summary judgment of

non-infringement (Document No. 52), and (3) dismissed with prejudice

Plaintiff s claims against Defendant in this action. The Judgment entered in this action on
November 30, 2007 also stated that the entirety of

this action was dismissed with prejudice, and

struck from the active docket.
At the hearing on November 19, 2007, counsel for Plaintiff

represented without

reservation that Plaintiff would cease to exist, in December of 2007, if its request for a
preliminary injunction were denied (Tr. 8:25-9:2):

Mr. Schmidt: ... Without this injunction - and this is an undisputed fact - iLOR will be
dead next month, in December of2007. It will have run out of

money.

Indeed, Plaintiff s impending and certain demise was at the heart of its request for the
extraordinary relief of a preliminary injunction.

Notwithstanding this unequivocal representation, iLOR was very much alive on
December 31,2007, and on that day noticed an appeal of

the Court's November 30,2007

decision. i That notice was premature, because the case was not yet ripe for appeaL. Although

i Plaintiffs website, http://ww.prefoundblog.com/. is also still up and running.

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Dockets.Justia.com

the November 30, 2007 Judgment appeared to dismiss the entire action with prejudice, the only
claim disposed of

by the November 30,2007 Opinion and Order is Plaintiffs claim for

infringement. Defendant has presented counterclaims in this action, including declaratory
judgment counterclaims for invalidity and unenforceability based on inequitable conduct, which
remain unresolved. (Document 47, at 5-6.) In order to put this case in condition for appeal, all

of Defendant's remaining counterclaims must be disposed of, and judgment then entered. See,
e.g, Nystrom v. TRECo., 339 F.3d 1347,1351 (Fed. Cir. 2003) ("A 'judgment that does not
dispose of pending counterclaims is not a final judgment. "'); Pause Tech. LLC v. TiVo Inc., 401
F.3d 1290 (Fed. Cir. 2005) (decision granting defendant's motion for summary judgment of

non-

infringement was not a final appealable decision where the defendant's invalidity declaratory

judgment counterclaims remained unresolved); Enzo Biochem, Inc. v. Gen-Probe Incorporated,
424 F.3d 1276 (Fed. Cir. 2005) ("Because Gen-Probe's unenforceability counterclaim remains unadjudicated in the district court, the present appeal is not from a final decision within the
meaning of28 U.S.C. § 1295(a)(1).").

It is Plaintiffs burden to ensure that the judgment it appeals from is final.2 See Federal
Circuit Rule 28(a)(5) (requiring appellant to represent that the judgment or order appealed from

is final, or excepted from the final judgment requirement). Given iLOR's repeated assertions
that it would cease to exist if its preliminary injunction motion were denied, it certainly appeared

that no appeal would be taken from the Court's November 30,2007 Opinion and Order.
However, given Plaintiff s apparent change of circumstances, or tactics, Defendant hereby
moves to dismiss all of its remaining counterclaims, without prejudice to reinstituting such counterclaims following the disposition of the appeal of this case to the Court of Appeals for the

Federal Circuit, and asks the Court to thereafter (or concomitantly) re-enter judgment on the
basis of

the fully resolved action.

Dated: January 9, 2008
2 Defendant first raised this jurisdictional defect with Plaintiff

by voicemail on January 4, 2008. Plaintiff refused to stipulate to the relief sought by the present motion, and declined to provide any explanation for its refusaL.

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Respectfully submitted,

s/James R. Higgins, Jr.
Frank E. Scherkenbach Kurt L. Glitzenstein Peter 1. Kirk Matthew 1. Leary FISH & RICHASON, P.c. 225 Franklin Street Boston, MA 02110-2804
Phone: [phone]

Facsimile: [phone]
James R. Higgins, Jr (KBA NO.3 1790) Brian P. McGraw (KBA No. 90447) Charles G. Middleton, III (KBA No. 47641)
MIDDLETON REUTLINGER, P.S.c.

2500 Brown & Williamson Tower Louisville, KY 40202-3410
Phone: [phone]

Facsimile: [phone]
ATTORNYS FOR GOOGLE, INc.

CERTIFICATE OF SERVICE
It is hereby certified that I electronically filed the foregoing Corporate Disclosure Statement

with the clerk of the court by using the CMÆCF system, which will send a notice of electronic filing
to the following:

David E. Schmit (Ohio Bar #0021147) Eleanor Maria Farrell Schalnat William S. Morriss
FROST BROWN TODD LLC

2200 PNC Center 201 East Fifth Street Cincinnati, Ohio 45202
Phone: [phone]
Fax: [phone]

Attornevs for ¡LOR LLC

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