e.Digital v. Woodman Labs (GoPro)

e.Digital v. Woodman Labs (GoPro) While the appeal in this case was pending, this Court issued a stay in this matter pending the outcome of the appeal. (Dkt #80). 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 United States Patent No. 5,742,737 (“’737patent”). The ’737 patent was not at issue in the appeal.

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”). GoPro 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 GoPro.

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. GoPro plans to oppose any such motion. Its case has been pending in this Court since December, 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.

An Early Neutral Evaluation was held in this matter before Judge Gallo prior to the stay. GoPro recently proposed another settlement conference in front of Judge Gallo, but e.Digital declined. GoPro remains open to another settlement conference and believes it would help efficiently resolve this matter. The parties in this matter further stipulate and agree that the name of this matter can be changed to e.Digital Corporation v. GoPro, Inc.

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