Pacer-e.DIGITAL vs Motorola,Non-Infring... patent 774 & 108 without prejudice
in response to
by
Message: Another Edig thursday bye bye and nothing.
SOUTHERN DISTRICT OF CALIFORNIA
e.Digital Corporation,
Plaintiff,
v.
Motorola Mobility LLC,
Defendant.
Case No. 3:13-cv-00780-DMS-WVG
STIPULATED PARTIAL JUDGMENT
Assigned to the
Honorable Judge Dana M. Sabraw
Ctrm: 13A (Annex)
Motorola Mobility LLC,
Counterclaimant,
v.
e.Digital Corporation,
Counter-Defendant.
STIPULATED PARTIAL JUDGMENT
OF NON-INFRINGEMENT
Plaintiff and Counter-
Defendant e.Digital Corporation (“e.Digital”);
Defendant and Counterclaimant Motorola Mobility LLC (“Motorola”) by their
undersigned counsel, hereby stipulate and agree, subject to the approval of the
Court, to the entry of the following Stipulated Partial Judgment of Non
Infringement:
1. In this action, e.Digital has alleged that certain Motorola product lines
(the “Accused Products”) infringe independent claims 33 and 34, and dependent
claims 2, 3, 6, 10, 15 through 16, 18, 23 through 26, and 28 through 31 of U.S.
Patent No. 5,491,774 (“the ’774 patent”) patent and independent claim 2 and
dependent claim 3 of U.S. Patent No. 5,839,108 (“the ’108 patent”), as set forth in
the Complaint (Dkt #1) and e.Di
gital’s Preliminary Infringement Contentions
(“PICs”) served on June 26, 2013.
2. On August 22, 2013, the Honorable Judge Dana M. Sabraw issued an
order granting Motorola’s motion to apply collateral estoppel with respect to the
construction of the term
“sole memory of the received processed sound electronical
signals” contained in claims 33 and 34 of the ’774 patent and claims 2 and 5 of the
’108 patent (“Collateral Estoppel Order”). (Dkt #33).
3. As set forth in the Collateral Estoppel Order, the Court found that the
elements of issue preclusion were met in this matter, and therefore, that e.Digital is
precluded from relitigating the construction of the term “sole memory of the
received processed sound electrical signals” as contained in claims 33 an
d 34 of
the ’774 patent and claims 2 and 5 of the ’108 patent, which term was previously
construed by the U.S District Court for the District of Colorado in
e.Digital Corp.
v. Pentax of America, Inc.
, Civil Action No 09-cv-2578-MSK-MJW (D. Col.) to
mean “that the device use only flash memory, not RAM or any other memory
system, while engaging the CODEC, DSP (as applicable), and memory control
functions, as well as storing the fully-
manipulated data.” (Dkt #33). The Court
further found that fairness and public policy favor application of issue preclusion
in this matter. (Dkt #33).
4.
The Accused Products do not “use only flash memory” but also use at
least RAM memory “while engaging the CODEC, DSP
(as applicable), and
memory control functions, as well as storing the fully-
manipulated data.” In view
of the operation of the Accused Products and the construction of the term “sole
memory of the received processed sound electrical signals,” which e.Digi
tal is
precluded from relitigating, Motorola has not infringed and does not infringe
directly and/or indirectly independent claims 33 and 34, and dependent claims 2, 3,
6, 10, 15 through 16, 18, 23 through 26, and 28 through 31 of the ‘774 patent, and
any other claims depending therefrom, independent claims 2 and 5 and dependent
claim 3 of the ‘108 patent, and any other claims depending therefrom.
5. In view of the foregoing, the Parties therefore agree that the Court
may enter this Stipulated Partial Judgment finding that Motorola has not infringed
and does not infringe directly and/or indirectly, independent claims 33 and 34, and
dependent claims 2, 3, 6, 10, 15 through 16, 18, 23 through 26, and 28 through 31
of the ‘774 patent, and any other claims depe
nding therefrom, independent claims
2 and 5 and dependent claim 3 of the ‘108 patent, and any other claims depending
therefrom.
6.
It is provided, however, that if the Court’s findings as set forth in
Collateral Estoppel Order are reversed, changed, or modified on appeal in such a
manner that would allow e.Digital to relitigate the construction of the term “sole
memory of the received processed sound electrical signals” as contained in the
claims of the ’774 patent and the ’108 patent, , the Parties reserv
e all of their
claims, arguments and defenses.
7. Motorola hereby dismisses without prejudice its counterclaims of
patent invalidity and dismisses otherwise its counterclaims of non-infringement, as
well as all other counterclaims and defenses, with respe
ct to the ’774 patent and the
’108 patent, and reserves the right to re
-assert such counterclaims and defenses
should e.Digital or any successor in interest to e.Digital accuse Motorola of
infringement of the ’774 and/or the ’108 patent at any later point
in time
Accordingly, the Court enters this Stipulated Partial Judgment of Non-
Infringement (a) in favor of Motorola on e.Digital’s claim for infringement of
claims 33 and 34 of the ’774 patent, and any other claims depending therefrom,
and claims 2 an
d 5 of the ’108 patent, and any other claims depending therefrom,
and (b) in favor of Motorola on Motorola’s counterclaims for non
-infringement of
claims 33 and 34 of the ’774 patent, and any other claims depending therefrom,
and claims 2 and 5 of the ’10
8 patent, and any other claims depending therefrom.
(Dkt #1).
9. This Stipulated Partial Judgment of Non-Infringement is without
prejudice to the Parties’ rights to appeal the Court’s Collateral Estoppel Order
and/or any prior or future orders issued by the Court and is without prejudice to
any claim for attorneys’ fees and/or costs under any basis, including without
limitation Rule 11, Rule 54(d) and §285.
10. All issues relating to fees and costs are reserved pending the outcome
of any appeals, and the deadlines for filing such motions shall be set by the Court
after a ruling by the Court of Appeals.
11. This Stipulated Partial Judgment of Non-Infringement, if so
necessary, is to be merged and/or become part of any final judgment entered in this
matter and may be incorporated as an exhibit thereto.
Dated: September 17, 2013
UNITED STATES DISTRICT JUDGE
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