Plaintiff and Counter-Defendant e.Digital Corporation (“Plaintiff”) and
Defendant and Counterclaimant Philips Electronics North America Corporation
(“Philips”) (collectively, the “Parties”) by their undersigned counsel, hereby
stipulate and agree, subject to the approval of the Court, to the entry of the attached
Stipulated Non-Final Partial Judgment of Non-Infringement and jointly move for
entry of same. Good cause exists for the relief requested as set forth below.
WHEREAS, e.Digital filed a Complaint asserting claims against Philips for
patent infringement on or about November 5, 2012 (Dkt #1);
WHEREAS, the Complaint alleged that certain Philips products (the
“Accused Products”) infringed e.Digital’s U.S. Patent Nos. 5,491,774 (“the ’774
patent”), 5,742,737 (“the ’737 patent”), 5,839,108 (“the ’108 patent”), and
5,842,170 (“the ’170 patent”), as set forth more fully in the Complaint (Dkt #1)
and e.Digital’s June 26, 2013 preliminary infringement contentions.
WHEREAS, Philips filed an answer to the Complaint and counterclaims for
declaratory and other relief on or about June 12, 2013 (Dkt #27).
WHEREAS, e.Digital filed an answer to Philips’s counterclaims on or about
July 1, 2013 (Dkt #32).
WHEREAS, on or about June 19, 2013, Philips filed a motion to apply
collateral estoppel in this matter with respect to the above-referenced terms as now
contained in the re-examined and amended claims 33 and 34 claims of the ’774
patent and a similar claim term contained in the asserted claims 2 and 5 of the ’108
patent. (Dkt#30).
WHEREAS, e.Digital opposed the motion (Dkt #33) and oral argument was
heard on July 26, 2013.
WHEREAS, on August 22, 2013, the Court entered an Order granting
Philips’s motion to apply collateral estoppel (Dkt #41) (“Collateral Estoppel
Order”).
In view of the foregoing, the Parties, by and through their counsel, agree and
stipulate as follows:
1. In light of the Collateral Estoppel Order, the Parties agree that the
Non-Final Stipulated Partial Judgment attached hereto as Exhibit “A” may be
entered by the Court and/or incorporated into any final judgment of the Court in
this matter. The Non-Final Stipulated Partial Judgment is not a final judgment
pursuant to Federal Rule of Civil Procedure 54(b),
2. The Non-Final Stipulated Partial Judgment is without prejudice to the
Parties’ rights to appeal the Collateral Estoppel Order and any prior or future
Orders issued by the Court.
3. All disputes relating to fees and costs are reserved pending the
outcome of the Parties’ dispute concerning U.S. Patent Nos. 5,742,737 and
5,842,170, and the deadlines for filing any and all motions seeking fees and/or
costs shall be set by the Court after the Parties’ dispute as to the ’737 and ’170
patents are resolved.
Entry of the attached Non-Final Partial Judgment will streamline the case
and the issues to be decided and will avoid unnecessary expenditure of fees and
costs by the parties.
Respectfully submitted.
Dated: September 30, 2013
HANDAL & ASSOCIATES
