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Pacer e.DIGITAL v. SanDisk - VOLUNTARY DISMISSAL RE: ‘774 PATENT ONLY !
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
e.Digital Corporation,
Plaintiff,
v.
SanDisk Corporation,
Defendant.
Case No. 3:12-cv-2698-DMS-WVG
JOINT MOTION RE:
VOLUNTARY DISMISSAL OF
CLAIMS AND
COUNTERCLAIMS AS TO THE
‘774 PATENT ONLY
Assigned to the
Honorable Judge Dana M. Sabraw
Ctrm: 13A (Annex
SanDisk Corporation,
Counterclaimant
v.
e.Digital Corporation,
Counter-Defendant.
Plaintiff and Counter-Defendant e.Digital Corporation (hereafter “Plaintiff”
or “e.Digital”) and Defendant and Counterclaimant SanDisk Corporation (hereafter
“Defendant” or “SanDisk”) hereby jointly present this motion pursuant to Federal
Rule of Civil Procedure Rule 41 and Local Civil Rule 7.2 for an order dismissing
certain claims and counterclaims made by the parties in this matter:
WHEREAS, e.Digital filed a Complaint in this action against SanDisk
alleging claims of patent infringement on or about November 5, 2012. (Dkt #1).
WHEREAS, SanDisk filed an answer and counterclaims to e.Digital’s
Complaint on or about January 7, 2013. (Dkt #14).
WHEREAS,
e.Digital filed an amended complaint, the First Amended
Complaint, (“FAC”) on or about March 8, 2013. (Dkt #23).
WHEREAS, the FAC accused SanDisk of infringing U.S. Patent Nos.
5,491,774 (“the ’774 patent”) and 5,742,737 (“the ’737 patent”).
WHEREAS, SanDisk filed an answer to the FAC and counterclaims for
declaratory and other relief on or about March 25, 2013 (Dkt #24).
WHEREAS, e.Digital filed an answer to SanDisk’s counterclaims on or
about April 10, 2013 (Dkt #29).
In view of the foregoing, the Parties, by and through their counsel, agree and
stipulate as follows:
1.
e.Digital agrees to dismiss with prejudice its claims of infringement of
the ‘774 patent only.
2.
No express or implied license, nor any other authorization, to practice
the ’774 patent or any other e.Digital patent is intended by said dismissal. For
clarity, e.Digital and any successors-in-interest to the ‘774 patent agree not to
assert a claim for infringement of the ’774 patent against SanDisk based on the
manufacture, use, sale, offer for sale, or importation of prior or current SanDisk
products. e.Digital and any successors-in-interest to the ‘774 patent also agree not
to assert a claim for infringement of the ’774 patent against any third party based
on the manufacture, use, sale, offer for sale, or importation of prior or current
SanDisk media players, such as the Sansa Clip Zip, Fuze+ and Clip+ music and
video players. However, nothing in this paragraph shall constitute an authorization
under the patent exhaustion doctrine or otherwise prejudice e.Digital’s rights to
pursue claims of patent infringement against any third party with respect to the
’774 patent as they may pertain to any other SanDisk product, including, without
limitation, removable flash memory technology.
3. SanDisk agrees to dismiss without prejudice its counterclaims as to
the ’774 patent only.
4. Each side will bear their own attorneys’ fees and costs, and waive any
recovery of same, in connection with the dismissals herein only.
NOW, THEREFORE,
the parties, via their counsel, hereby jointly submit
this motion pursuant to Federal Rule of Civil Procedure Rule 41 as well as Local
Civil Rule 7.2 and respectfully request that the Court make the following orders:
a) The joint motion is granted;
b) e.Digital’s claims of infringement of the ’774 patent only
are
dismissed with prejudice;
c) SanDisk’s counterclaims as to the ’774 patent only are dismissed
without prejudice; and
d) Each side shall bear their own attorneys’ fees and costs, and waive
any recovery of same, in connection with the dismissals herein only.
Pursuant to Local Civil Rule 7.2, the parties hereto will separately submit a
Proposed Order granting the relief requested.
Dated: October 23, 2013
HANDAL & ASSOCIATES
By: /s/Gabriel G. Hedrick___________
Anton N. Handal
Pamela C. Chalk
Gabriel G. Hedrick
Attorneys for Plaintiff
and Counter-Defendant
e.Digital Corporation
Dated: October 23, 2013
JONES DAY
By: /s/Randall E. Kay ______________
Gregory L. Lippetz
Joe C. Liu
Randall E. Kay
Attorneys for Defendant
And Counterclaimant
SanDisk Corporation
4. Each side will bear their own attorneys’ fees and costs, and waive any
recovery of same, in connection with the dismissals herein only.
NOW, THEREFORE,
the parties, via their counsel, hereby jointly submit
this motion pursuant to Federal Rule of Civil Procedure Rule 41 as well as Local
Civil Rule 7.2 and respectfully request that the Court make the following orders:
a) The joint motion is granted;
b) e.Digital’s claims of infringement of the ’774 patent only
are
dismissed with prejudice;
c) SanDisk’s counterclaims as to the ’774 patent only are dismissed
without prejudice; and
d) Each side shall bear their own attorneys’ fees and costs, and waive
any recovery of same, in connection with the dismissals herein only.
Pursuant to Local Civil Rule 7.2, the parties hereto will separately submit a
Proposed Order granting the relief requested.
Dated: October 23, 2013
HANDAL & ASSOCIATES
By: /s/Gabriel G. Hedrick___________
Anton N. Handal
Pamela C. Chalk
Gabriel G. Hedrick
Attorneys for Plaintiff
and Counter-Defendant
e.Digital Corporation
Dated: October 23, 2013
JONES DAY
By: /s/Randall E. Kay ______________
Gregory L. Lippetz
Joe C. Liu
Randall E. Kay
Attorneys for Defendant
And Counterclaimant
SanDisk Corporation
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