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FOR THE NORTHERN DISTRICT OF CALIFORNIA
PANASONIC CORPORATION OF NORTH
AMERICA (formerly known as MATSUSHITA
ELECTRIC CORPORATION OF AMERICA)
and MATSUSHITA ELECTRICAL
INDUSTRIAL CO., LTD.,
Plaintiffs
v.
PATRIOT SCIENTIFIC CORPORATION;
TECHNOLOGY PROPERTIES LIMITED, INC;
CHARLES H. MOORE, et al.
Defendants.
/
No. C05 4844 MJJ
No. 05-04847 MJJ
No. 05-04845 MJJ
No. 05-04838 MJJ
ORDER GRANTING DEFENDANT'S
STAY OF PROCEEDING
INTRODUCTION
Before the Court is Defendant Technology Properties Limited, Inc.'s (''TPL'') motion to
dismiss, stay or transfer the present action.1 This motion is opposed by Plaintiffs Panasonic
Corporation of North America (''Panasonic'') and Matsushita Electrical Industrial Co., Ltd. (''MEI'').
For the following reasons, the Court GRANTS Defendant's motion to stay further proceedings in
this action pending the outcome of the action in the United States District Court for Eastern District
of Texas, captioned Technology Properties Limited Inc. v Fujitsu, et al., Case No. 2-05CV-494.
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 1 of 7
United States District Court
For the Northern District of California
FACTUAL BACKGROUND
On December 23, 2003, Patriot Scientific Corporation (?Patriot?) filed suit in the Northern
District of California accusing Fujitsu Microelectronics America, Inc. (''FMA'') of infringing U.S.
Patent No. 5,809,336 ('''336 patent'') (hereinafter, ''the Oakland action''). Around the same time,
Patriot separately filed suit against four other companies - Matsushita Electric Company of America
(now known as Panasonic), NEC USA, Inc., Sony Corporation of America, and Toshiba America,
Inc. - in three other jurisdictions.
On February 11, 2004, the parties in these actions stipulated to consolidate these cases into
the Oakland action. Pursuant to the stipulation, each separately filed action was voluntarily
dismissed and Patriot filed a Consolidated Amended Complaint in the Oakland action.
At that time, it was not clear who was the rightful owner of the patent portfolio containing
the ?336 patent. On February 13, 2004, Patriot filed a separate complaint in the Northern District of
California (Case No. 04-0618 (JF)) against TPL, Daniel E. Leckron, and Charles H. Moore (''the
Moore action'') seeking resolution of the ownership rights of the Moore Microprocessor Patent
(''MMP'') Portfolio. The MMP Portfolio included the '336 patent, as well as United States Patent
Numbers 6,598,148 (the '''148 patent''), and 5,784,584 (the ''584 patent''). Patriot also added TPL as
a defendant in the Oakland action.
On May 19, 2005, Judge Armstrong, who was presiding over the Oakland action, issued an
order inquiring whether the parties wanted to dismiss the Oakland action without prejudice pending
the resolution of the Moore action. Judge Armstrong's order required that, in the event that the
parties decided not to dismiss the Oakland action, the parties ''clearly identify the matters to be heard
by this Court and...provide the Court with a proposed scheduling order that sets forth the earliest
possible dates for discovery cut-off, motion cut-off, pretrial, and trial.?
On June 7, 2005, Patriot and TPL settled their dispute and resolved the ownership of the
MMP Portfolio. Pursuant to the settlement, TPL maintained the complete and exclusive right to
license and enforce the MMP patents. In return, Patriot was to receive a share of the net proceeds.
Subsequent to the TPL-Patriot agreement, TPL engaged in settlement discussions with the
defendants in the Oakland action. TPL also sought and obtained a stay of litigation in order to
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 2 of 7
United States District Court
For the Northern District of California
2TPL added some additional defendants to the Texas action.
3
continue settlement discussions. As part of this effort, TPL and the defendants in the Oakland action
made several statements to the court in a Joint Case Management Conference Statement & Report
(''Joint CMC Statement'') dated June 29, 2005. TPL submitted the following:
''In addition, since TPL has only just now been placed in charge
of the infringement litigation, it is not in a particularly good position to
propose 'earliest possible dates for discovery cut-off, motion cut-off,
pretrial and trial.'
If the Computer Company Case has not been settled within 60
days, TPL will file a supplemental and/or amended pleading substituting
itself for Patriot, and propose appropriate dates for discovery cut-off,
motion cut-off, pretrial and trial....
In the same Joint CMC Statement, Panasonic and the other defendants stated:
''TPL has represented that it has just recently been placed in charge of
this infringement litigation and apparently needs time to make decisions
about how to proceed, including whether to seek leave to file a
supplemental and/or amended pleading substituting itself for Patriot
Scientific as the plaintiff.''
TPL later requested that the court again stay the Oakland action. In so doing, TPL
submitted similar statements as those above in a Joint CMC Statement and Report filed on
September 23, 2005. However, the court denied TPL's request and lifted the stay of the Oakland
action case.
On October 24, 2005, TPL filed a complaint for patent infringement in the Eastern District
of Texas (the ?Texas action'') against Fujitsu Limited, Panasonic, NEC Corporation, Toshiba
Corporation, and 16 of their United States subsidiaries (collectively, ''the Texas Defendants'').
Among the Texas Defendants were all of the defendants involved in the Oakland action.2 The
complaint in the Texas action alleged infringements of the '336 patent, the '584 patent, and the '148
patent.
On October 24, 2005, the same day that TPL filed in Texas, Patriot dismissed its complaint
in the Oakland action. Subsequently, on November 28, 2005, Panasonic and MEI filed the instant
action (the ?Panasonic action'') in the Northern District of California, seeking a declaratory
judgment of non-infringement of the same three patents currently at issue in the Texas action. That
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 3 of 7
United States District Court
For the Northern District of California
305-4837 MJJ (voluntarily withdrawn), 05-4838 MHP, 05-4845 CW, 05-4847 WHA, and the instant action,05-4844
CRB, filed November 28, 2005.
4Panasonic does not dispute that both suits involve the same parties. Even if Panasonic disputed this contention
since Patriot, Moore, and Leckrone are absent from the Texas suit, all three have consented to be joined to the Texas action.
See Def. Mot. p. 10.
4
same day, the other Oakland defendants filed their own declaratory actions in this district, resulting
in five separate actions filed against TPL on November 28, 2005.3
LEGAL STANDARD AND ANALYSIS
A. ''First to File'' Rule
Where a complaint involving the same parties and same issues has already been filed in a
different federal district, the court in which the second suit is filed may either transfer, stay, or
dismiss the second suit. Alltrade Inc. v. Uniweld Products, Inc., 946 F.2d 622, 625 (9th Cir. 1991).
The ''first to file'' rule normally serves the purpose of promoting efficiency and should not be
disregarded lightly. Church of Scientology of California v. United States Department of the Army,
611 F.2d 738, 750 (9th Cir. 1979). The concern is to avoid the waste of duplication, to avoid
rulings which may trench upon the authority of other courts, and to avoid piecemeal resolution of
issues that call for a uniform result. Colorado River Conser. Dist. v. United States, 424 U.S. 800,
818-820 (1976). In order to apply the rule, the moving party, usually the defendant, must satisfy
three factors: 1) the chronology of the two actions; 2) the similarity of the two actions; and 3) the
similarity of the issues. Alltrade, 946 F.2d at 625-626.
Here, the instant action involves the same issues and parties involved in the Texas action. In
both actions, the same parties dispute whether the same three patents have been infringed.4 TPL
initiated the Texas action on October 24, 2005, a full month before Panasonic initiated the instant
action. Absent any compelling exception to the general rule, this Court should grant deference to
the Texas court and allow that court to determine whether to try the case.
A court may determine not to follow the ''first to file'' rule when circumstances indicate bad
faith, anticipatory breach, or forum shopping. Alltrade Inc. v. Uniweld Products, Inc. 946 F.2d 622,
628 (9th Cir. 1991). The court is permitted an ample degree of discretion in determining whether or
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 4 of 7
United States District Court
For the Northern District of California
52/11/04 MDL Stipulation.
6Panasonic relies on Fred Hutchinson Cancer Center Research Ctr. v. United of Omaha Life Ins. Co., 821 F. Supp.
644 (D.Or. 1993), for the proposition that TPL is bound by Patriot's stipulation, enforceable under the doctrine of promissory
estoppel . However, Hutchinson is clearly distinguishable from the present case because the promise in that involved a third
party beneficiary to an agreement. Here, no such third party beneficiary exists, as Defendants were actual parties to their
agreement with Patriot, and were not third party beneficiaries to any explicit agreement between Patriot and TPL.
Accordingly, Panasonic's reliance on Hutchinson is misplaced.
7Case No. C03-5787 (SBA). Joint Case Management Conference Statement and Report, Filed 6/29/05. In this Joint
CMC Statement, TPL states: ''If the Computer Company Case has not been settled within 60 days, TPL will file a
supplemental and/or amended pleading substituting itself for Patriot, and propose appropriate dates for discovery cut-off,
motion cut-off, pretrial and trial.''
5
not to exercise an exception to the general ''first to file'' rule. Alltrade, 946 F.2d at 628 (citing
Ketrotest Manufacturing Co. v. C-O-Two Fire Equipment Co., 342 U.S. 180, 183-84 (1952).
Panasonic asserts that the Court should not follow the general rule because TPL acted in bad
faith by not complying with Patriot's stipulation in the Oakland action. In that agreement, Patriot
promised to prosecute it's patent infringement suit in the Northern District of California against
Panasonic and other entities.5 However, TPL was not a party to the Oakland action when Patriot
agreed to this stipulation. TPL only became a party in the Oakland action after Patriot's stipulation.
Furthermore, when Patriot amended its complaint to incorporate TPL into the Oakland litigation,
TPL was joined as an adverse party. Only subsequent to the amended complaint did Patriot and
TPL reach a settlement which aligned their interests. Since TPL was a separate entity and did not
agree to the terms and conditions of Patriot?s sitpulation, TPL is not bound by Patriot's agreement.6
Panasonic next contends that TPL made misrepresentations to the Oakland court, and that
on this basis, the Court should not follow the ''first-to-file'' rule. Panasonic maintains that after the
TPL-Patriot settlement, TPL represented to Judge Armstrong that TPL would continue to litigate
the patent dispute in the Northern District. Panasonic alleges that the Oakland defendants relied on
TPL?s representations, and that TPL acted in bad faith when it initiated the Texas action and
permitted Patriot to dismiss the Oakland action. Panasonic urges the Court to hold TPL to its
alleged promise. However, Panasonic overstates the scope of TPL's representations to the Oakland
court. Plaintiff relies on statements which appear as part of a request for a 60-day stay of
proceeding to pursue settlement discussions.7 This statement was not a promise that TPL would
unconditionally continue with the existing case, nor was it a promise that TPL would maintain any
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 5 of 7
United States District Court
For the Northern District of California
8Judge Armstrong's Order, dated 05/19/2005, requests the ''parties provide the Court with a proposed scheduling
order that sets forth the earliest possible dates for discovery cut-off, motion cut-off, pre-trial and trial.'' Additionally, the
sentence immediately before TPL's statement at issue in the Joint Case Management Conference Statement and Report
(6/29/05) mentions Judge Armstrong's request.
9Case No. C03-5787 (SBA). Joint Case Management Conference Statement and Report, Filed 6/29/05.
6
future patent litigation in the Northern District. Rather, the statement was an acknowledgment of
Judge Armstrong's request for discovery cut-off dates8 and an assurance by TPL that the request
would be addressed after the stay. Furthermore, in the Joint CMC Statement, Panasonic and the
other defendants even recognized that TPL still needed time to determine ''whether to seek leave to
file a supplemental and/or amended pleadings substituting itself for Patriot.'' (emphasis added).9 At
the time, the parties had only recently determined that TPL was the owner of the patents at issue.
TPL, as a separate and independent entity from Patriot, had the right to prosecute its patents
infringement case in the manner and forum of its choosing. There is nothing before the Court to
suggest that TPL should be bound by Patriot?s litigation decisions. Accordingly, the Court finds
that TPL did not misrepresent to Judge Armstrong that TPL would continue suit in the Northern
District.
Finally, Panasonic contends that the Court should decline to follow the ''first to file'' rule
because TPL forum shopped its case to the Eastern District of Texas. However, there is evidence
that TPL?s decision was not based purely on forum shopping considerations. One of the inventors
of the patents at issue resides in Texas. Moreover, ''unless the balance [of private and public
interest factors] is strongly in favor of the defendant, the plaintiff's choice of forum should rarely be
disturbed.'' Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). Defendant's alleged forum
shopping alone, without more, is not enough to compel the Court to disregard the first-to-file rule.
Plaintiffs have given the Court little reason to dispense with the ''first to file'' rule.
Accordingly, the Court will follow the rule and stay this action pending the outcome of the Texas
action.
/ / /
/ / /
/ / /
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 6 of 7
United States District Court
For the Northern District of California
10Alternatively, Defendant has argued that the Court should decline to exercise its discretionary jurisdiction over
Plaintiffs' declaratory action. Since Defendant essentially makes the same argument as to both grounds, and the Court is
already granting a stay in this action, the Court declines to address the issue of the exercise of discretionary jurisdiction.
7
/ / /
/ / /
CONCLUSION
For the foregoing reasons, the Court GRANTS Defendant's Motion to Stay this case
pending resolution of the Texas action.10 This order also stays the following related actions in this
district: 05-4847, 05-4845, 05-4838. The parties are ordered to provide the Court with a status of
the Texas action every six months from the date of this Order, or sooner upon resolution of the
Texas action as to any of the parties.
IT IS SO ORDERED.
Dated: March 16, 2006
MARTIN J. JENKINS
UNITED STATES DISTRICT JUDGE
Optionen
0
--------------------------------------------------
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
PANASONIC CORPORATION OF NORTH
AMERICA (formerly known as MATSUSHITA
ELECTRIC CORPORATION OF AMERICA)
and MATSUSHITA ELECTRICAL
INDUSTRIAL CO., LTD.,
Plaintiffs
v.
PATRIOT SCIENTIFIC CORPORATION;
TECHNOLOGY PROPERTIES LIMITED, INC;
CHARLES H. MOORE, et al.
Defendants.
/
No. C05 4844 MJJ
No. 05-04847 MJJ
No. 05-04845 MJJ
No. 05-04838 MJJ
ORDER GRANTING DEFENDANT'S
STAY OF PROCEEDING
INTRODUCTION
Before the Court is Defendant Technology Properties Limited, Inc.'s (''TPL'') motion to
dismiss, stay or transfer the present action.1 This motion is opposed by Plaintiffs Panasonic
Corporation of North America (''Panasonic'') and Matsushita Electrical Industrial Co., Ltd. (''MEI'').
For the following reasons, the Court GRANTS Defendant's motion to stay further proceedings in
this action pending the outcome of the action in the United States District Court for Eastern District
of Texas, captioned Technology Properties Limited Inc. v Fujitsu, et al., Case No. 2-05CV-494.
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 1 of 7
United States District Court
For the Northern District of California
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FACTUAL BACKGROUND
On December 23, 2003, Patriot Scientific Corporation (?Patriot?) filed suit in the Northern
District of California accusing Fujitsu Microelectronics America, Inc. (''FMA'') of infringing U.S.
Patent No. 5,809,336 ('''336 patent'') (hereinafter, ''the Oakland action''). Around the same time,
Patriot separately filed suit against four other companies - Matsushita Electric Company of America
(now known as Panasonic), NEC USA, Inc., Sony Corporation of America, and Toshiba America,
Inc. - in three other jurisdictions.
On February 11, 2004, the parties in these actions stipulated to consolidate these cases into
the Oakland action. Pursuant to the stipulation, each separately filed action was voluntarily
dismissed and Patriot filed a Consolidated Amended Complaint in the Oakland action.
At that time, it was not clear who was the rightful owner of the patent portfolio containing
the ?336 patent. On February 13, 2004, Patriot filed a separate complaint in the Northern District of
California (Case No. 04-0618 (JF)) against TPL, Daniel E. Leckron, and Charles H. Moore (''the
Moore action'') seeking resolution of the ownership rights of the Moore Microprocessor Patent
(''MMP'') Portfolio. The MMP Portfolio included the '336 patent, as well as United States Patent
Numbers 6,598,148 (the '''148 patent''), and 5,784,584 (the ''584 patent''). Patriot also added TPL as
a defendant in the Oakland action.
On May 19, 2005, Judge Armstrong, who was presiding over the Oakland action, issued an
order inquiring whether the parties wanted to dismiss the Oakland action without prejudice pending
the resolution of the Moore action. Judge Armstrong's order required that, in the event that the
parties decided not to dismiss the Oakland action, the parties ''clearly identify the matters to be heard
by this Court and...provide the Court with a proposed scheduling order that sets forth the earliest
possible dates for discovery cut-off, motion cut-off, pretrial, and trial.?
On June 7, 2005, Patriot and TPL settled their dispute and resolved the ownership of the
MMP Portfolio. Pursuant to the settlement, TPL maintained the complete and exclusive right to
license and enforce the MMP patents. In return, Patriot was to receive a share of the net proceeds.
Subsequent to the TPL-Patriot agreement, TPL engaged in settlement discussions with the
defendants in the Oakland action. TPL also sought and obtained a stay of litigation in order to
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 2 of 7
United States District Court
For the Northern District of California
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2TPL added some additional defendants to the Texas action.
3
continue settlement discussions. As part of this effort, TPL and the defendants in the Oakland action
made several statements to the court in a Joint Case Management Conference Statement & Report
(''Joint CMC Statement'') dated June 29, 2005. TPL submitted the following:
''In addition, since TPL has only just now been placed in charge
of the infringement litigation, it is not in a particularly good position to
propose 'earliest possible dates for discovery cut-off, motion cut-off,
pretrial and trial.'
If the Computer Company Case has not been settled within 60
days, TPL will file a supplemental and/or amended pleading substituting
itself for Patriot, and propose appropriate dates for discovery cut-off,
motion cut-off, pretrial and trial....
In the same Joint CMC Statement, Panasonic and the other defendants stated:
''TPL has represented that it has just recently been placed in charge of
this infringement litigation and apparently needs time to make decisions
about how to proceed, including whether to seek leave to file a
supplemental and/or amended pleading substituting itself for Patriot
Scientific as the plaintiff.''
TPL later requested that the court again stay the Oakland action. In so doing, TPL
submitted similar statements as those above in a Joint CMC Statement and Report filed on
September 23, 2005. However, the court denied TPL's request and lifted the stay of the Oakland
action case.
On October 24, 2005, TPL filed a complaint for patent infringement in the Eastern District
of Texas (the ?Texas action'') against Fujitsu Limited, Panasonic, NEC Corporation, Toshiba
Corporation, and 16 of their United States subsidiaries (collectively, ''the Texas Defendants'').
Among the Texas Defendants were all of the defendants involved in the Oakland action.2 The
complaint in the Texas action alleged infringements of the '336 patent, the '584 patent, and the '148
patent.
On October 24, 2005, the same day that TPL filed in Texas, Patriot dismissed its complaint
in the Oakland action. Subsequently, on November 28, 2005, Panasonic and MEI filed the instant
action (the ?Panasonic action'') in the Northern District of California, seeking a declaratory
judgment of non-infringement of the same three patents currently at issue in the Texas action. That
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 3 of 7
United States District Court
For the Northern District of California
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305-4837 MJJ (voluntarily withdrawn), 05-4838 MHP, 05-4845 CW, 05-4847 WHA, and the instant action,05-4844
CRB, filed November 28, 2005.
4Panasonic does not dispute that both suits involve the same parties. Even if Panasonic disputed this contention
since Patriot, Moore, and Leckrone are absent from the Texas suit, all three have consented to be joined to the Texas action.
See Def. Mot. p. 10.
4
same day, the other Oakland defendants filed their own declaratory actions in this district, resulting
in five separate actions filed against TPL on November 28, 2005.3
LEGAL STANDARD AND ANALYSIS
A. ''First to File'' Rule
Where a complaint involving the same parties and same issues has already been filed in a
different federal district, the court in which the second suit is filed may either transfer, stay, or
dismiss the second suit. Alltrade Inc. v. Uniweld Products, Inc., 946 F.2d 622, 625 (9th Cir. 1991).
The ''first to file'' rule normally serves the purpose of promoting efficiency and should not be
disregarded lightly. Church of Scientology of California v. United States Department of the Army,
611 F.2d 738, 750 (9th Cir. 1979). The concern is to avoid the waste of duplication, to avoid
rulings which may trench upon the authority of other courts, and to avoid piecemeal resolution of
issues that call for a uniform result. Colorado River Conser. Dist. v. United States, 424 U.S. 800,
818-820 (1976). In order to apply the rule, the moving party, usually the defendant, must satisfy
three factors: 1) the chronology of the two actions; 2) the similarity of the two actions; and 3) the
similarity of the issues. Alltrade, 946 F.2d at 625-626.
Here, the instant action involves the same issues and parties involved in the Texas action. In
both actions, the same parties dispute whether the same three patents have been infringed.4 TPL
initiated the Texas action on October 24, 2005, a full month before Panasonic initiated the instant
action. Absent any compelling exception to the general rule, this Court should grant deference to
the Texas court and allow that court to determine whether to try the case.
A court may determine not to follow the ''first to file'' rule when circumstances indicate bad
faith, anticipatory breach, or forum shopping. Alltrade Inc. v. Uniweld Products, Inc. 946 F.2d 622,
628 (9th Cir. 1991). The court is permitted an ample degree of discretion in determining whether or
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 4 of 7
United States District Court
For the Northern District of California
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52/11/04 MDL Stipulation.
6Panasonic relies on Fred Hutchinson Cancer Center Research Ctr. v. United of Omaha Life Ins. Co., 821 F. Supp.
644 (D.Or. 1993), for the proposition that TPL is bound by Patriot's stipulation, enforceable under the doctrine of promissory
estoppel . However, Hutchinson is clearly distinguishable from the present case because the promise in that involved a third
party beneficiary to an agreement. Here, no such third party beneficiary exists, as Defendants were actual parties to their
agreement with Patriot, and were not third party beneficiaries to any explicit agreement between Patriot and TPL.
Accordingly, Panasonic's reliance on Hutchinson is misplaced.
7Case No. C03-5787 (SBA). Joint Case Management Conference Statement and Report, Filed 6/29/05. In this Joint
CMC Statement, TPL states: ''If the Computer Company Case has not been settled within 60 days, TPL will file a
supplemental and/or amended pleading substituting itself for Patriot, and propose appropriate dates for discovery cut-off,
motion cut-off, pretrial and trial.''
5
not to exercise an exception to the general ''first to file'' rule. Alltrade, 946 F.2d at 628 (citing
Ketrotest Manufacturing Co. v. C-O-Two Fire Equipment Co., 342 U.S. 180, 183-84 (1952).
Panasonic asserts that the Court should not follow the general rule because TPL acted in bad
faith by not complying with Patriot's stipulation in the Oakland action. In that agreement, Patriot
promised to prosecute it's patent infringement suit in the Northern District of California against
Panasonic and other entities.5 However, TPL was not a party to the Oakland action when Patriot
agreed to this stipulation. TPL only became a party in the Oakland action after Patriot's stipulation.
Furthermore, when Patriot amended its complaint to incorporate TPL into the Oakland litigation,
TPL was joined as an adverse party. Only subsequent to the amended complaint did Patriot and
TPL reach a settlement which aligned their interests. Since TPL was a separate entity and did not
agree to the terms and conditions of Patriot?s sitpulation, TPL is not bound by Patriot's agreement.6
Panasonic next contends that TPL made misrepresentations to the Oakland court, and that
on this basis, the Court should not follow the ''first-to-file'' rule. Panasonic maintains that after the
TPL-Patriot settlement, TPL represented to Judge Armstrong that TPL would continue to litigate
the patent dispute in the Northern District. Panasonic alleges that the Oakland defendants relied on
TPL?s representations, and that TPL acted in bad faith when it initiated the Texas action and
permitted Patriot to dismiss the Oakland action. Panasonic urges the Court to hold TPL to its
alleged promise. However, Panasonic overstates the scope of TPL's representations to the Oakland
court. Plaintiff relies on statements which appear as part of a request for a 60-day stay of
proceeding to pursue settlement discussions.7 This statement was not a promise that TPL would
unconditionally continue with the existing case, nor was it a promise that TPL would maintain any
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 5 of 7
United States District Court
For the Northern District of California
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8Judge Armstrong's Order, dated 05/19/2005, requests the ''parties provide the Court with a proposed scheduling
order that sets forth the earliest possible dates for discovery cut-off, motion cut-off, pre-trial and trial.'' Additionally, the
sentence immediately before TPL's statement at issue in the Joint Case Management Conference Statement and Report
(6/29/05) mentions Judge Armstrong's request.
9Case No. C03-5787 (SBA). Joint Case Management Conference Statement and Report, Filed 6/29/05.
6
future patent litigation in the Northern District. Rather, the statement was an acknowledgment of
Judge Armstrong's request for discovery cut-off dates8 and an assurance by TPL that the request
would be addressed after the stay. Furthermore, in the Joint CMC Statement, Panasonic and the
other defendants even recognized that TPL still needed time to determine ''whether to seek leave to
file a supplemental and/or amended pleadings substituting itself for Patriot.'' (emphasis added).9 At
the time, the parties had only recently determined that TPL was the owner of the patents at issue.
TPL, as a separate and independent entity from Patriot, had the right to prosecute its patents
infringement case in the manner and forum of its choosing. There is nothing before the Court to
suggest that TPL should be bound by Patriot?s litigation decisions. Accordingly, the Court finds
that TPL did not misrepresent to Judge Armstrong that TPL would continue suit in the Northern
District.
Finally, Panasonic contends that the Court should decline to follow the ''first to file'' rule
because TPL forum shopped its case to the Eastern District of Texas. However, there is evidence
that TPL?s decision was not based purely on forum shopping considerations. One of the inventors
of the patents at issue resides in Texas. Moreover, ''unless the balance [of private and public
interest factors] is strongly in favor of the defendant, the plaintiff's choice of forum should rarely be
disturbed.'' Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). Defendant's alleged forum
shopping alone, without more, is not enough to compel the Court to disregard the first-to-file rule.
Plaintiffs have given the Court little reason to dispense with the ''first to file'' rule.
Accordingly, the Court will follow the rule and stay this action pending the outcome of the Texas
action.
/ / /
/ / /
/ / /
Case 3:05-cv-04844-MJJ Document 43 Filed 03/16/2006 Page 6 of 7
United States District Court
For the Northern District of California
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10Alternatively, Defendant has argued that the Court should decline to exercise its discretionary jurisdiction over
Plaintiffs' declaratory action. Since Defendant essentially makes the same argument as to both grounds, and the Court is
already granting a stay in this action, the Court declines to address the issue of the exercise of discretionary jurisdiction.
7
/ / /
/ / /
CONCLUSION
For the foregoing reasons, the Court GRANTS Defendant's Motion to Stay this case
pending resolution of the Texas action.10 This order also stays the following related actions in this
district: 05-4847, 05-4845, 05-4838. The parties are ordered to provide the Court with a status of
the Texas action every six months from the date of this Order, or sooner upon resolution of the
Texas action as to any of the parties.
IT IS SO ORDERED.
Dated: March 16, 2006
MARTIN J. JENKINS
UNITED STATES DISTRICT JUDGE
--------------------------------------------------
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ausserdem sind die gerichte in texas eher firmenfreundlich - siehe Bush firmen
wie wird diese meldung auf den boersenkurs - kindermolle, was denkst du
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@Joker, schon was verkauft?
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Ich bin doch nicht blöd;-)
Nur keine Hektik, das wird schon.
Bis gleich
joker
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richtig ist das in texas ein urteil viel Schneller gefällt wird als in Anderen Staaten,da die Grundlage klar ist,und das Urteil eigentlich "vorgefällt ist"denke icch wird es in ein Paar wochen einige gute News geben.
Ich denke man kann das Gegenteil behaupten das Texas angeblich Firmenfreundlich ist.aber dies waen nicht die News die ich gestern Erwartet hatte,aber umso schöner für und dann können wir uns heut freuen,undswar
1.Texas ist klar
2.direktorin der PTsc besitzt 1.300000 Aktien die sie auch bei einem Kurs von 2,23$ nicht verkauft hat,sie besitzt weiterhin jede einzelne Aktie
so jetzt kommst
sie hat 150.000 Aktien Aufgestockt.
diese News ist aber erst vor Börsenende gestern bekannt gewesen.
ich denke das heut der kurs Enorm hochgehen wird.zumindest sehe ich uns heut bei 2$,das problem ist leider Heut ist Friday :(
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weil die Da eil Urteil eine viel Höhere Summe der Lizenzahlung gebe würde.
fakt ist Frau Direktorin ist nicht Dumm.sie liebt ihre Aktien momentan :)
fakt ist die Anwälte wissen das in Texas sehr schnell endscheiden wird,die sind sich der Sache so klar das sie sich Auf eine Aussergerichtliche gar nicht einlassen.
Da bedeutet Kohleeeeee :)
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ja leider ist meiner meinung nach immer freitags so ein Muffel tag an der Börse,
aber nicht alles was ich meine muss richtig sein,
ich bin mir jedoch sicher ds wir in Amiland,wo der Kurs ja gemahcht wird mit grün anfangen,und mit gutem grün den tag beenden.
Egal,,wichtig ist das der Kurs in den Nächsten wochen ganz woanders stehen wird
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heute ein leichtes grün in US, und dann nächste woche gehts weiter.
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greets
fussi
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Unterhaltungselektronik bei CeBIT-Ausstellern beschlagnahmt
Freitag 17. März 2006, 13:33 Uhr
Hannover (ddp). Wegen Lizenzverstößen sind auf der Computermesse CeBIT mehr als 500 patentrechtlich geschützte Produkte beschlagnahmt worden. Dazu gehörten MP3- und MP4-Player, DVD-Recorder, DVD-Player und Handys, wie die Staatsanwaltschaft am Freitag in Hannover mitteilte. In den Messehallen seien 22 Durchsuchungsbeschlüsse vollstreckt worden. Bei den durchsuchten Messeständen handelt es sich den Angaben zufolge zumeist um Ausstellerfirmen aus der Volksrepublik China.
Den Firmenverantwortlichen wird vorgeworfen, die entsprechenden Produkte ohne Lizenz
des Patentrechtsinhabers nach Deutschland eingeführt und dort ausgestellt zu haben. Das Delikt steht nach dem Patentgesetz unter Strafe. Die betreffenden Aussteller müssten möglicherweise bei ihrer nächsten Einreise nach Deutschland mit Konsequenzen rechnen, sagte ein Sprecher des Zollfahndungsamts Hannover. Die CeBIT war am Mittwoch zu Ende gegangen. Justiz und Zoll waren aktiv geworden, weil Rechtsvertreter zweier namhafter Firmen auf der Messe Lizenzvergehen bei Produkten der von ihnen vertretenen Firmen sowie Geschmacksmuster festgestellt hatten. Sie hatten daraufhin Strafanträge gegen die ausländischen Firmen bei der Staatsanwaltschaft Hannover gestellt.
ddp.djn/bei/hwa
Ob die auch bei Microsoft waren? Da fehlt ja auch noch eine Lizenz:
http://www.pcwelt.de/know-how/hardware/15927/index8.html
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Viele von Euch haben den Beitrag sicher schon gelesen, für die, die ihn noch nicht kennen, hier ein Klärungsversuch aus Agoracom.
http://www.agoracom.com/nonmemforum/...61&refid=0&orig=460761
Subject: The venue ruling and current/future status......
From ronran
PostID 460761 On Friday, March 17, 2006 (EST) at 12:15:19 AM
--------------------------------------------------
It is good to see everyone in a better mood, without all the backbiting and namecalling of the last couple of days. As promised, I have read the Jenkins ruling, and I wanted to share my thoughts about our current status and why I think the ruling is important for the future. This will likely be a long post ? apologies in advance.
First, I think we owe a round of applause to our lead counsel, Roger Cook, for having done a fine job ? the briefs he filed were excellent, and I have heard that he likewise did a fine job at oral argument. Second, I see no evidence that Toshiba settled ? the ruling specifically states that only the other two companies opposed the motion, and the most likely interpretation is that Toshiba simply sat back and let someone else take up the challenge. Had it gone the other way, Toshiba could have merely filed what we lawyers call a ?me, too, motion? and it would have been granted without a hearing.
IMO, this ruling is important not only for the effect that it will likely have on the J3, but also on other alleged infringers. Before I go further, however, I must caution you that the following should not be taken as investment advice, for the simple reason that I could be wrong. As I always advise, each of us must carefully consider his or her personal financial situation before running out and buying more shares at the open tomorrow (or at any other time) ? as much as I am cheering right now, I have two kids who still need to go to college, and I can assure you that today?s ruling did not cause me to liquidate my bank accounts and/or place another mortgage on the house so that I can drop all of that money into PTSC.
As to the J3, if you did not see the article on Judge Ward and the ?rocket docket? in Marshall, Texas that one of our members here posted a week or so ago, then go to post #460707 from tonight and take a look. Remember, I have been a practicing litigation attorney for nearly 25 years, and I can tell you from personal experience that the venue of a given case is an extremely important factor ? give me a good case to defend in my hometown court and I will advise the client to take it to trial, but take that identical case about 70 miles down the highway to a well-known plaintiff?s venue and it would be unprofessional of me not to advise the client that settlement would probably be the better course of action. Believe me, this is not lost on the J3, which is why they wanted to stay in CA so badly ? and just as importantly, it is not lost on Mr. Cook and Mr. Leckrone. Also, don?t be concerned that the J3 might have good local counsel in Texas ? they do, but TPL has hired some of most well-respected and connected attorneys in Marshall, so we are in good hands from that aspect.
It is my understanding that our attorneys can be ready to try this case in relatively short order, and as such, adding to that the ?rocket docket? factor, and I think we will be proceeding much more quickly in TX that would have been the situation in CA. This is good for PTSC/TPL, i.e., speed yields pressure on the defendants, and is thus good for our side. As a result, I look for a Markman hearing to be set more quickly, which will hopefully result in additional pressure for settlement ? those of you who think that going through and actual trial would be better do not understand that a finding of infringement in the J3 cases would not necessarily control the result against other companies that may be sued in the future. In other words, settlement remains preferable IMO.
Does this mean that the J3 will now appear in Mr. Leckrone?s office tomorrow morning, ready to settle with a blank check in hand? Of course not ? just as we would have done had the ruling gone the other way, the J3 will continue to assert that they still have a chance of winning the case at trial, yadda-yadda-yadda. We should remain cautious because the game ain?t over and the fat lady hasn?t hit the high note yet, and because, just in general, it isn?t good to take anything for granted ? but in truth, both sides are beginning to see the handwriting on the wall.
Beyond the J3, however, the Jenkins ruling takes on additional importance. To date, many of the other companies that have previously been put on notice as infringers have probably been watching the current litigation as a type of ?test case?, hoping that the J3 prevail so as to give all of them some ?wiggle room?. By definition, however, if the J3 settle, then there is NO PENDING LITIGATION ? in other words, some of these other companies out there may find that they are in danger of BECOMING the ?test case?, and that isn?t a very comforting thought when some of the biggest names in the industry are no longer running interference. Just as importantly, if the J3 litigation disappears, there would seem to be no negative factor on the immediate horizon to inhibit settlements with these other companies ---- there is no immediate chance for a bad litigation result against PTSC/TPL which those other companies might try to rely upon. Having said that, COULD some negative materialize? Sure it could ? one of these other companies might decide to ?fight it out?, or something unexpected could come out of the blue in some form that we cannot presently foresee ? but for now, we appear to be on solid ground.
I am sure there are some things I am missing in all of this, so the above is meant point out the most important aspects of the Jenkins ruling in terms of our current status and near term future. If I think of something else, I will post as we proceed, but for now, I am tired and have already gone on longer than I had intended.
In closing, I am not going to get back into the subject of prayer, and I certainly don?t want to appear as if I am telling any of you how to live your lives. On the other hand, I think it is very important that we keep our perspective, and that we maintain clarity of mind and purpose. It is not going to add one second to any of our lives to obsess about when the next settlement might be coming, or from what company, or for how much it might be ? sure, we will all hope for those things and will continue to analyze them, but we should not let ourselves become slaves to such thoughts.
I urge you to BE THANKFUL, RIGHT NOW, FOR WHAT YOU HAVE. No matter how much money we may make from our investment n PTSC, it will not buy us a place in Heaven, nor will it even buy us true and lasting happiness on Earth ? and whatever we do buy with such money, if it comes to us, will be fleeting in the overall way of things. It will not purchase the smiles and kisses we get from our loved ones, nor a pat on the back or the kind words of a true friend. It will not make us ?better people?, nor give us real security in life or, more importantly, for eternity ? that kind of security is found elsewhere.
And so, my friends, I continue to believe that we should look to the future with cautious optimism. Good luck to all, and Godspeed.
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" This ruling puts a halt to procedural maneuvering by the Matsushita, Panasonic, JVC, Toshiba, and NEC entities," said Dan Leckrone, chairman of the TPL Group. Leckrone noted that the Fujitsu entities -- who were also defendants in the Texas action -- have recently purchased a license under the MMP Portfolio, and have been dismissed from the Texas and California actions.
The validity of TPL's views regarding the scope of the MMP Portfolio has gained substantial momentum since marquee chip makers Intel and AMD purchased MMP licenses last year. Since the beginning of 2006, Hewlett-Packard, Casio Computer and Fujitsu have purchased MMP system licenses. TPL believes that the intellectual property protected by the MMP Portfolio is used in a wide variety of end-user products including personal computers, servers, workstations, home theater systems, digital TVs, video games, DVD Recorders/Players, mobile handsets and automotive electronics.
" The TPL Group continues to have our complete confidence as they proceed with their highly effective, exclusive management of our valuable jointly owned patent portfolio," stated David Pohl, chairman and CEO of Patriot Scientific.
About the MMP Portfolio
The patent portfolio, marketed as the Moore Microprocessor Patent(TM) Portfolio, contains intellectual property that is jointly owned by publicly held Patriot Scientific Corporation and the privately held TPL Group. The portfolio encompasses seven U.S. patents as well as their European and Japanese counterparts. Both TPL and Patriot assert that their jointly owned patents protect techniques used in designing microprocessors, microcontrollers, Digital Signal Processor (DSPs), embedded processors and System-on-Chip (SoC) implementations. The MMP Portfolio is exclusively managed by Alliacense, a TPL Group enterprise.
About Patriot Scientific
Patriot Scientific (PTSC.OB) has emerged as an effective and dynamic intellectual property licensing Company, developing and marketing innovative and proprietary semiconductor technologies. The company's portfolio of proprietary designs encompasses fundamental microprocessor technology, as well as pending patents designed to protect Patriot's proprietary technology. Detailed information about Patriot Scientific can be found on the website www.ptsc.com. Copies of Patriot Scientific press releases, current price quotes, stock charts and other valuable information for investors may be found at www.hawkassociates.com and www.americanmicrocaps.com. An investment profile on Patriot Scientific may be found at http://www.hawkassociates.com/patriot/profile.htm.
About The TPL Group
Founded in 1988, Silicon Valley based TPL Group has a solid track record in delivering a complete suite of intellectual property management services. In addition to optimizing IP Portfolio value and protecting assets from infringement, the TPL Group is also well versed in optimally converting portfolio value into cash return for its owner(s). Through Alliacense, a cadre of senior licensing executives, the TPL Group manages IP Licensing Programs across a broad array of industries. For more information, visit www.tplgroup.net.
Safe Harbor statement under the Private Securities Litigation Reform Act of 1995: Statements in this news release looking forward in time involve risks and uncertainties, including the risks associated with the effect of changing economic conditions, trends in the products markets, variations in the Company's cash flow, market acceptance risks, technical development risks, seasonality and other risk factors detailed in the Company's Securities and Exchange Commission filings.
Alliacense, Moore Microprocessor Patent, and MMP are trademarks of Technology Properties Limited (TPL). All other
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CARLSBAD, Calif.--(BUSINESS WIRE)--March 17, 2006--
Northern California court grants TPL's motion to stay proceedings
pending outcome of infringement proceedings against major Japanese
manufacturers in Eastern District of Texas
Patriot Scientific Corporation (OTC Bulletin Board: PTSC), an intellectual property licensing company, today announced that the U.S. District Court of Northern California has stayed the declaratory judgment actions recently filed in that court against the TPL Group, a global intellectual property management company, and Patriot Scientific, et al, by major Japanese manufacturers. Further proceedings in the California actions were stayed pending outcome of TPL's earlier-filed action against those same companies in the U.S. District Court in the Eastern District of Texas. This clears the way for the Texas court -- sometimes referred to as the "rocket docket" for its expeditious rulings in patent infringement cases -- to now take the lead in judging TPL's broad-based intellectual property claims for infringement of three of the 10 patents in the Moore Microprocessor Patent(TM) (MMP) Portfolio that is jointly owned by the TPL Group and Patriot Scientific.
"This ruling puts a halt to procedural maneuvering by the Matsushita, Panasonic, JVC, Toshiba, and NEC entities," said Dan Leckrone, chairman of the TPL Group. Leckrone noted that the Fujitsu entities -- who were also defendants in the Texas action -- have recently purchased a license under the MMP Portfolio, and have been dismissed from the Texas and California actions.
The validity of TPL's views regarding the scope of the MMP Portfolio has gained substantial momentum since marquee chip makers Intel and AMD purchased MMP licenses last year. Since the beginning of 2006, Hewlett-Packard, Casio Computer and Fujitsu have purchased MMP system licenses. TPL believes that the intellectual property protected by the MMP Portfolio is used in a wide variety of end-user products including personal computers, servers, workstations, home theater systems, digital TVs, video games, DVD Recorders/Players, mobile handsets and automotive electronics.
"The TPL Group continues to have our complete confidence as they proceed with their highly effective, exclusive management of our valuable jointly owned patent portfolio," stated David Pohl, chairman and CEO of Patriot Scientific.
About the MMP Portfolio
The patent portfolio, marketed as the Moore Microprocessor Patent(TM) Portfolio, contains intellectual property that is jointly owned by publicly held Patriot Scientific Corporation and the privately held TPL Group. The portfolio encompasses seven U.S. patents as well as their European and Japanese counterparts. Both TPL and Patriot assert that their jointly owned patents protect techniques used in designing microprocessors, microcontrollers, Digital Signal Processor (DSPs), embedded processors and System-on-Chip (SoC) implementations. The MMP Portfolio is exclusively managed by Alliacense, a TPL Group enterprise.
About Patriot Scientific
Patriot Scientific (PTSC.OB) has emerged as an effective and dynamic intellectual property licensing Company, developing and marketing innovative and proprietary semiconductor technologies. The company's portfolio of proprietary designs encompasses fundamental microprocessor technology, as well as pending patents designed to protect Patriot's proprietary technology. Detailed information about Patriot Scientific can be found on the website www.ptsc.com. Copies of Patriot Scientific press releases, current price quotes, stock charts and other valuable information for investors may be found at www.hawkassociates.com and www.americanmicrocaps.com. An investment profile on Patriot Scientific may be found at http://www.hawkassociates.com/patriot/profile.htm.
About The TPL Group
Founded in 1988, Silicon Valley based TPL Group has a solid track record in delivering a complete suite of intellectual property management services. In addition to optimizing IP Portfolio value and protecting assets from infringement, the TPL Group is also well versed in optimally converting portfolio value into cash return for its owner(s). Through Alliacense, a cadre of senior licensing executives, the TPL Group manages IP Licensing Programs across a broad array of industries. For more information, visit www.tplgroup.net.
Safe Harbor statement under the Private Securities Litigation Reform Act of 1995: Statements in this news release looking forward in time involve risks and uncertainties, including the risks associated with the effect of changing economic conditions, trends in the products markets, variations in the Company's cash flow, market acceptance risks, technical development risks, seasonality and other risk factors detailed in the Company's Securities and Exchange Commission filings.
Alliacense, Moore Microprocessor Patent, and MMP are trademarks of Technology Properties Limited (TPL). All other trademarks belong to their respective owners.
Source: Patriot Scientific Corporation
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