CLRB Hanson Industries, LLC et al v. Google Inc.

Reply

N.D. Cal.November 17, 2008

1 COVENANT NOT TO SUE Case No. C 05-01114 JW (HRL) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COUNSEL LISTED ON SIGNATURE PAGES UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA (SAN JOSE DIVISION) In re: ACACIA MEDIA TECHNOLOGIES CORPORATION PATENT LITIGATION Case No. C 05-01114 JW (HRL) MDL No. 1665 STIPULATED COVENANT NOT TO SUE; ORDER THEREON COVENANT NOT TO SUE 1. This Covenant Not to Sue is entered into by Acacia Media Technologies Corporation (“Acacia”), on the one hand, and the following entities, individually or in any combination thereof, on the other: Ademia Multimedia, LLC; ACMP, LLC; AEBN, Inc.; Audio Communications, Inc.; Cyber Trend, Inc.; Cybernet Ventures, Inc.; Game Link, Inc.; Global AVS, Inc.; Innovative Ideas International; Lightspeed Media Group, Inc.; National A-1 Advertising, Inc.; New Destiny Internet Group, LLC; VS Media, Inc.; Offendale Commercial Limited BV; and International Web Innovations, Inc. (collectively, “Defendants”). 2. The “Withdrawn Claims” shall mean Claims 1-18 of U.S. Patent No. 5,132,992 (“‘992 patent”). 3. In exchange for good and valuable consideration, the receipt of which is hereby acknowledged, Acacia hereby covenants not to sue Defendants or their Affiliates (defined below) on the Withdrawn Claims for any past, present, or future claim of infringement arising from CLRB Hanson Industries, LLC et al v. Google Inc. Doc. 276 Dockets.Justia.com 2 COVENANT NOT TO SUE Case No. C 05-01114 JW (HRL) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 manufacturing, having manufactured, exporting, importing, using, selling, or offering to sell any product or method whatsoever, or having engaged in the past in any or all of these activities. 4. Thus, Acacia agrees that, with respect to the Withdrawn Claims, Defendants and their Affiliates shall not be subject to any injunction, and shall have no liability to Acacia or to any purchaser, assignee, or successor-in-interest to the Withdrawn Claims, for any alleged infringement of the Withdrawn Claims, including without limitation any alleged direct infringement, indirect infringement, joint infringement, inducement to infringe, or contributory infringement. For the purpose of this Covenant, “Affiliate” shall be defined, with respect to each Defendant, as a separate corporation, company, or other entity which now or hereafter, directly or indirectly through one or more intermediaries, Controls, is Controlled by, or is under common Control with such Defendant. “ Controls” or “ Controlled by” and “ under common Control with” shall mean the power to direct or cause the direction of the management policies of such corporation, company, or other entity, whether through the ownership of voting securities, or by contract or otherwise. 5. Further, Acacia covenants not to sue any of Defendants’ or their Affiliates’ subscribers on the Withdrawn Claims, where the alleged infringement results from subscribing to and/or using services offered by Defendants or their Affiliates. 6. This Covenant Not to Sue shall bind Acacia and its parent companies, subsidiaries, affiliates, successors and assigns, and present, former, and future employees, officers, shareholders, directors, representatives, agents, attorneys, successors and assigns, and all other persons acting for or on its behalf. Acacia and Defendants intend this covenant to burden the ‘992 patent so as to bar any and all future assignees of the ‘992 patent from asserting the Withdrawn Claims against Defendants and/or their Affiliates. 7. This Covenant Not to Sue shall not affect Acacia’s ability to continue to seek injunctive and/or monetary relief from any Defendant or its Affiliates with respect to any of the remaining patent claims from the patents currently in suit in this action or from any other patents Acacia may assert against any such Defendant or its Affiliates in the future. 3 COVENANT NOT TO SUE Case No. C 05-01114 JW (HRL) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8. This Covenant Not to Sue shall not be admissible at trial. Dated: May 6, 2008 RODERICK G. DORMAN (CA SBN 96908) ALAN P. BLOCK (CA SBN 143783) KEVIN I. SHENKMAN (CA SBN 223315) HENNIGAN, BENNETT & DORMAN LLP 601 South Figueroa Street, Suite 3300 Los Angeles, California 90017 By /s/ Alan P. Block Alan P. Block Attorneys for Plaintiff ACACIA MEDIA TECHNOLOGIES CORPORATION DATED: May 6, 2008 JUANITA R. BROOKS TODD G. MILLER FISH & RICHARDSON P.C. 12390 El Camino Real San Diego, California 92130-2081 By /s/ Todd G. Miller Todd G. Miller Attorneys for Defendants ADEMIA MULTIMEDIA, LLC; AEBN, INC.; AUDIO COMMUNICATIONS, INC.; CYBER TREND, INC.; CYBERNET VENTURES, INC.; ACMP, LLC; GAME LINK, INC.; GLOBAL AVS, INC.; INNOVATIVE IDEAS INTERNATIONAL; LIGHTSPEED MEDIA GROUP, INC.; NATIONAL A-1 ADVERTISING, INC.; NEW DESTINY INTERNET GROUP, LLC; VS MEDIA, INC. DATED: May 6, 2008 WILLIAM J. ROBINSON VICTOR DE GYARFAS FOLEY & LARDNER 2029 Century Park East, 35th Floor Los Angeles, California 90067 By /s/ Victor de Gyarfas Victor de Gyarfas Attorneys for Defendants INTERNATIONAL WEB INNOVATIONS, INC. and OFFENDALE COMMERICAL LIMITED BV 4 COVENANT NOT TO SUE Case No. C 05-01114 JW (HRL) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DATED: May 6, 2008 GARY A. HECKER JAMES M. SLOMINSKI THE HECKER LAW GROUP 1925 Century Park East, Suite 2300 Los Angeles, California 90067 By /s/ James M. Slominski James M. Slominski Attorneys for Defendant OFFENDALE COMMERCIAL BV, LTD. ORDER PURSUANT TO STIPULATION, IT IS SO ORDERED. DATED: ______________________________________ The Honorable James Ware United States District Judge