[PROPOSED] CASE NO. 3:13-CV-00356-DMS-WVG
STIPULATED PARTIAL JUDGMENT
-HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: 619.544.6400
FAX: 619.696.0323
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
e.Digital Corporation,
Plaintiff,
v.
JVC Americas Corp.; and, JVC
Kenwood Corporation.
Defendants.
Case No. 3:13-cv-00356-DMS-WVG
STIPULATED PARTIAL
JUDGMENT
Assigned to the
Honorable Judge Dana M. Sabraw
Ctrm: 13A (Annex)
STIPULATED PARTIAL JUDGMENT
OF NON-INFRINGEMENT
Plaintiff and Counter-Defendant e.Digital Corporation (“e.Digital”); and,
Defendants and Counterclaimants JVC Americas Corp. and JVC Kenwood
Corporation (collectively referred to as “JVC”) 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 JVC product lines (the
“Accused Products”) infringe independent claims 33 and 34, and dependent
claims 2, 6 through 8, 10, 15 through 18, 23 through 26, and 28 through 31 of U.S.
Patent No. 5,491,774 (“the ’774 patent”) and independent claim 5 of U.S. Patent
No. 5,839,108 (“the ’108 patent”), as set forth in e.Digital’s Complaint (Dkt#1)
and Preliminary Infringement Contentions (“PICs”) served on June 26, 2013.
2. On August 22, 2013, the Honorable Judge Dana M. Sabraw issued an
order granting JVC’s motion to apply collateral estoppel with respect to the
construction of the term “sole memory of the received processed sound electrocal
signals” contained in claims 33 and 34 of the ’774 patent and claim 5 of the ’108
patent (“Collateral Estoppel Order”). (Dkt #43).
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 and 34 of
the ’774 patent and claim 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#43). The Court
further found that fairness and public policy favor application of issue preclusion
in this matter. (Dkt#43).
4. In view of the foregoing and the operation of the Accused Products,
the Parties therefore agree that the Court may enter a non-final Stipulated Partial
Judgment finding that JVC has not infringed and does not infringe directly and/or
indirectly independent claims 33 and 34, and dependent claims 2, 6 through 8, 10,
15 through 18, 23 through 26, and 28 through 31 of the ‘774 patent, independent
claim 5 of the ‘108 patent, and any other claims depending therefrom.
5. 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 reserve all of their claims,
arguments and defenses.
6. JVC hereby dismisses without prejudice its counterclaims of patent
invalidity and non-infringement, as well as all other counterclaims and defenses,
with respect to the ’774 patent and the ’108 patent, except as those claims relate to
a claim for attorneys’ fees and/or costs, and reserves the right to re-assert such
counterclaims and defenses should e.Digital or any successor in interest to
e.Digital accuse JVC of infringement of the ’774 and/or the ’108 patent at any later
point in time.
7. Accordingly, the Court enters this non-final Stipulated Partial
Judgment of Non-Infringement (a) in favor of JVC on e.Digital’s claim for
infringement of claims 33 and 34 of the ’774 patent, and any other claims
depending therefrom, and claim 5 of the ’108 patent, and any other claims
depending therefrom, and (b) in favor of JVC on JVC’s counterclaims for noninfringement
of claims 33 and 34 of the ’774 patent, and any other claims
depending therefrom, and claim 5 of the ’108 patent, and any other claims
depending therefrom. (Dkt #1).
8. This non-final 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.
9. All issues relating to fees and costs are reserved pending the outcome
of the Parties’ dispute concerning U.S. Patent Nos. 5,742,737 (the “’737 patent”)
and 5,842,170 (the “’170 patent”), and the deadlines for filing any and all motions
seeking fees and/or costs shall be set by the Court after the Parties’ disputes as to
the ‘737 patent and the ‘170 patent are resolved.
10. This non-final 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 30, 2013
UNITED STATES DISTRICT JUDGE
