e.Digital Corporation v. SanDisk

e.Digital v. SanDisk United States Patent No. 5,742,737 (“’737 patent”), which is the only patent currently asserted against SanDisk, was not at issue in the aforementioned appeal. While an appeal was not filed in the SanDisk case, this Court issued a stay in this matter pending the outcome of the appeal on the ground that it was related to the cases in which an appeal was filed. (Dkt #63). Given that a mandate has been issued and the previous appeal related proceedings have now concluded, the stay in this matter should be lifted so that the parties may proceed with their claims and/or counterclaims in the case as to the ’737 patent.

Plaintiff further notes that it anticipates seeking leave to amend the operative complaint to add patent infringement claims with respect to Claim 1 of U.S. Patent No. 5,839,108 (“’108 patent”). SanDisk has agreed not to oppose Plaintiff’s amendment, provided that the parties agree to, and the court approves, a reasonable case schedule that accounts for the fact that the ’108 patent is newly asserted against SanDisk.

Further, in light of the fact that the Honorable Marilyn L. Huff has issued two claim construction orders concerning Claim 1 of the ’108 patent while this matter was stayed (see Exhibits A and B hereto) Plaintiff will further be making a motion to transfer this matter to the Honorable Marilyn L. Huff where one or more other patent infringement cases asserting Claim 1 of the ’108 patent are currently pending. SanDisk plans to oppose any such motion. Its case has been pending in this Court since November, 2012 and this Court is familiar with both the ’737 and ’108 patents. As a result, there is no justification for transferring this case to Judge Huff.

It should further be noted that an Early Neutral Evaluation was never held in the e.Digital v. SanDisk matter prior to the case being stayed and, accordingly, the parties jointly request that the Court schedule the case for an ENE.