Hong Kong uCloudlink Network Technology Limited et al v. SIMO Holdings Inc.

Filing 80

ORDER: Pursuant to stipulation, it is so Ordered: 1. All current case deadlines in Case No. 20-cv-3399 are HEREBY VACATED, and the case is STAYED until the Federal Circuit resolves SIMO's petition for en banc review or, if SIMO does not file suc h a petition by February 4, 2021, the case shall be stayed until February 4, 2021. 2. If SIMO does not file an en banc petition by February 4, 2021, or if SIMO does file such a petition and the Federal Circuit's reversal of this Court's inf ringement judgment in Case No. 18-cv-5427 remains in place after such a petition, SIMO's counterclaim against uCloudlink for infringement of U.S. Pat. No. 9,736,689 (D.I. 48 in Case No. 20-cv-3399) shall be dismissed with prejudice. 3. The parti es will promptly notify the Court if SIMO does not file a petition for en banc review by February 4, 2021, or of the resolution of SIMO's petition for en banc review, and will submit a proposed judgment terminating the case, if appropriate. 4. I f SIMO does not file an en banc petition by February 4, 2021, or if SIMO does file such a petition and the Federal Circuit's reversal of this Court's infringement judgment in Case No. 18-cv-5427 remains in place after such a petition, SIMO and uCloudlink will promptly submit a joint Notice of Termination pursuant to the Escrow Agreement instructing the return of all funds currently in escrow to uCloudlink. 5. Both parties shall bear their own costs and attorneys' fees in Case No. 18-cv-5427 and Case No. 20-cv-3399. (Signed by Judge Jed S. Rakoff on 1/8/2021) (jwh)

Case 1:20-cv-03399-JSR Document 79 Filed 01/08/21 Page 1 of 6
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

HONG KONG UCLOUDLINK NETWORK
TECHNOLOGY LIMITED and
UCLOUDLINK (AMERICA), LTD.,
Plaintiffs,

Civil Action No. 1:20-cv-03399-JSR

v.
SIMO HOLDINGS INC.,
Defendant.

STIPULATION AND [PROPOSED] ORDER FOLLOWING APPELLATE DECISION

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WHEREAS on January 5, 2021, the Federal Circuit issued a decision reversing this Court’s
judgment of infringement in SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology,
Ltd. and Ucloudlink (America) Ltd., Case No. 18-cv-5427, and instructing the Court to enter a
judgment of non-infringement in favor of Hong Kong uCloudlink Network Technology Limited
and Ucloudlink (America), Ltd. (collectively “uCloudlink”) based on a finding that: (1) the
preamble is limiting and requires a plurality of non-local calls databases; and (2) SIMO Holdings
Inc. (“SIMO”) did not create a triable issue of fact as to whether the products at issue in Case No.
18-cv-5427 have a “non-local calls database” as claimed in SIMO’s U.S. Pat. No. 9,736,689;
WHEREAS SIMO has indicated that it may pursue en banc review of the Federal Circuit’s
decision;
WHEREAS the products at issue in this case, Case No. 20-cv-3399, do not differ in any
material way from the products at issue in Case No. 18-cv-5427 with respect to the “non-local
calls database” limitation that formed the basis of the Federal Circuit’s decision;1
WHEREAS the parties are in the process of briefing summary judgment motions with
respect to the products at issue in Case No. 20-cv-3399, with reply briefs due January 7, 2021 and
a hearing scheduled for January 22, 2021;
WHEREAS the parties agree that, absent any changes following further appellate review,
the summary judgment briefing in Case No. 20-cv-3399 will no longer be necessary in light of the
fact that the judgment in favor of uCloudlink in Case No. 18-cv-5427 will necessarily require
judgment to be entered in uCloudlink’s favor with respect to the products at issue in Case No. 20cv-3399;

1

For the sake of clarity, the parties have disputed whether the products at issue in Case No. 20cv-3399 differ in other ways from the products at issue in Case No. 18-cv-5427, but those
disputes are not material to this stipulation.
1

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WHEREAS in order to stay execution of the judgment of infringement and damages
originally entered in Case No. 18-cv-5427, and in lieu of a supersedeas bond, the parties entered
into an Escrow Agreement dated January 3, 2020; and
WHEREAS the escrow agreement requires that a Notice of Termination be executed
jointly by both parties;
The parties HEREBY STIPULATE AND AGREE as follows:
1. All current case deadlines in Case No. 20-cv-3399 shall be vacated, and the case shall
be stayed until the Federal Circuit resolves SIMO’s petition for en banc review or, if
SIMO does not file such a petition by February 4, 2021, the case shall be stayed until
February 4, 2021.
2. If SIMO does not file an en banc petition by February 4, 2021, or if SIMO does file
such a petition and the Federal Circuit’s reversal of this Court’s infringement judgment
in Case No. 18-cv-5427 remains in place after such a petition, SIMO’s counterclaim
against uCloudlink for infringement of U.S. Pat. No. 9,736,689 (D.I. 48 in Case No.
20-cv-3399) shall be dismissed with prejudice.
3. The parties will promptly notify the Court if SIMO does not file a petition for en banc
review by February 4, 2021, or of the resolution of SIMO’s petition for en banc review,
and will submit a proposed judgment terminating the case, if appropriate.
4. If SIMO does not file an en banc petition by February 4, 2021, or if SIMO does file
such a petition and the Federal Circuit’s reversal of this Court’s infringement judgment
in Case No. 18-cv-5427 remains in place after such a petition, SIMO and uCloudlink

2

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will promptly submit a joint Notice of Termination pursuant to the Escrow Agreement
instructing the return of all funds currently in escrow to uCloudlink.
5. Both parties will bear their own costs and attorneys’ fees in Case No. 18-cv-5427 and
Case No. 20-cv-3399.
6. The parties desire that these stipulations be binding and adopted as an Order of the
Court.
IT IS SO STIPULATED.

Date: January 8, 2021

K&L GATES, LLP
By:

/s/ Benjamin E. Weed
Benjamin E. Weed (Admitted Pro Hac Vice)
K&L Gates LLP
70 W. Madison Street, Suite 3100
Chicago, IL 60602
Tel: [phone]
Fax: [phone]
[e-mail]
Peter E. Soskin (Admitted Pro Hac Vice)
K&L Gates LLP
4 Embarcadero Center, Ste. 1200
San Francisco, CA 94111
Tel: [phone]
Fax: [phone]
[e-mail]

ATTORNEYS FOR DEFENDANT SIMO
HOLDINGS INC.

3

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Date: January 8, 2021

WHITE & CASE LLP
By:

/s/ Jonathan J. Lamberson
JONATHAN J. LAMBERSON (pro hac vice)
[e-mail]
3000 El Camino Real
2 Palo Alto Square, Suite 900
Palo Alto, CA 94063
Telephone: [phone]
Facsimile: [phone]
John Padro (NY Bar No 4827416)
[e-mail]
1221 Avenue of the Americas
Floor 49 Reception
New York, NY 10020
Telephone: [phone]
Facsimile: [phone]

ATTORNEYS FOR PLAINTIFFS HONG KONG
UCLOUDLINK NETWORK TECHNOLOGY
LIMITED AND UCLOUDLINK (AMERICA),
LTD.

4

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[PROPOSED] ORDER
Pursuant to stipulation, it is so Ordered:
1.

All current case deadlines in Case No. 20-cv-3399 are HEREBY VACATED, and the
case is STAYED until the Federal Circuit resolves SIMO’s petition for en banc
review or, if SIMO does not file such a petition by February 4, 2021, the case shall be
stayed until February 4, 2021.

2.

If SIMO does not file an en banc petition by February 4, 2021, or if SIMO does file
such a petition and the Federal Circuit’s reversal of this Court’s infringement
judgment in Case No. 18-cv-5427 remains in place after such a petition, SIMO’s
counterclaim against uCloudlink for infringement of U.S. Pat. No. 9,736,689 (D.I. 48
in Case No. 20-cv-3399) shall be dismissed with prejudice.

3.

The parties will promptly notify the Court if SIMO does not file a petition for en banc
review by February 4, 2021, or of the resolution of SIMO’s petition for en banc
review, and will submit a proposed judgment terminating the case, if appropriate.

4.

If SIMO does not file an en banc petition by February 4, 2021, or if SIMO does file
such a petition and the Federal Circuit’s reversal of this Court’s infringement
judgment in Case No. 18-cv-5427 remains in place after such a petition, SIMO and
uCloudlink will promptly submit a joint Notice of Termination pursuant to the
Escrow Agreement instructing the return of all funds currently in escrow to
uCloudlink.

5.

Both parties shall bear their own costs and attorneys’ fees in Case No. 18-cv-5427
and Case No. 20-cv-3399.

Dated: January 8, 2021
Hon. Jed. S. Rakoff
United States District Court