Ultratec, Inc. et al v. Sorenson Communications, Inc. et al

Filing 192

ORDER granting 110 Motion to Dismiss; granting 142 Motion to Dismiss. Plaintiffs' claims of infringement of U.S. Patents No. 7,164,753, No. 6,882,707, and No. 6,567,503 are DISMISSED with prejudice. Defendants' counterclaims of invalidity and non-infringement of U.S. Patents No. 7,164,753, No. 6,882,707, and No. 6,567,503 are DISMISSED without prejudice. Signed by District Judge James D. Peterson on 4/15/15. (jat)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

ULTRATEC, INC. and CAPTEL, INC.,
Plaintiffs,

ORDER

v.
14-cv-66-jdp
SORENSON COMMUNICATIONS, INC.
and CAPTIONCALL, LLC,
Defendants.

Plaintiffs Ultratec, Inc. and CapTel, Inc. have moved to dismiss their claims of
infringement of U.S. Patents No. 7,164,753, No. 6,882,707, and No. 6,567,503 with prejudice.
Dkt. 110 and Dkt. 142. They have also moved to dismiss defendants Sorenson
Communications, Inc. and CaptionCall, LLC’s corresponding counterclaims for declaratory
judgment of invalidity and non-infringement of those patents without prejudice. Dkt. 110 and
Dkt. 142. Defendants do not oppose these motions, but they reserve the right to ask for fees.
Dkt. 163 and Dkt. 180.
Plaintiffs have provided covenants that they will not enforce any claims of these patents
against any of defendants’ existing systems. Dkt. 112-1 and Dkt. 144-1. Such covenants
eliminate any actual controversy over these patents. Amana Refrigeration, Inc. v. Quadlux, Inc.,
172 F.3d 852, 855-56 (Fed. Cir. 1999). Accordingly, the court will grant the motions to dismiss
the claims and counterclaims involving these three patents from this case.
IT IS ORDERED that:
1. Plaintiffs’ claims of infringement of U.S. Patents No. 7,164,753, No. 6,882,707, and
No. 6,567,503 are DISMISSED with prejudice.

2. Defendants’ counterclaims of invalidity and non-infringement of U.S. Patents No.
7,164,753, No. 6,882,707, and No. 6,567,503 are DISMISSED without prejudice.
Entered April 15, 2015.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

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