Speedtrack, Inc. v. Wal-Mart.Com USA, LLC, et al.

MOTION to Relate Case -- Administrative Motion to Consider Whether Cases Should be Related [Local Rule 3-12]

N.D. Cal.September 25, 2009

Case No. 06-CV-07336-PJH ADMINISTRATIVE MOTION BY PLAINTIFF TO CONSIDER WHETHER CASES SHOULD BE RELATED 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 @ Z c c ^\ V c ( : Z c c Z ii $ < d g b V c a ae aV l nZ g h ad h V c \ Z aZ h ( X V a^ [ d g c ^V HENNIGAN, BENNETT & DORMAN LLP Roderick G. Dorman (SBN 96908) dormanr@hbdlawyers.com Alan P. Block (SBN 143783) blocka@hbdlawyers.com Marc Morris (SBN 183728) morrism@hbdlawyers.com Omer Salik (SBN 223056) saliko@hbdlawyers.com 865 South Figueroa Street, Suite 2900 Los Angeles, California 90017 Telephone: (213) 694-1200 Fax: (213) 694-1234 Attorneys for Plaintiff, SPEEDTRACK, INC., UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION SPEEDTRACK, INC., Plaintiff, vs. WALMART.COM USA, LLC, et al., Defendants. ) ) ) ) ) ) ) ) ) ) ) Case No.06-CV-07336-PJH ADMINISTRATIVE MOTION BY PLAINTIFF SPEEDTRACK, INC. TO CONSIDER WHETHER CASES SHOULD BE RELATED [LOCAL RULE 3-12] ENDECA TECHNOLOGIES, INC., Intervenor, vs. SPEEDTRACK, INC., Defendant-in-Intervention and Counterclaimant. ) ) ) ) ) ) ) ) ) ) ) ) Case4:06-cv-07336-PJH Document288 Filed09/25/09 Page1 of 5 -1- Case No. 06-CV-07336-PJH ADMINISTRATIVE MOTION BY PLAINTIFF TO CONSIDER WHETHER CASES SHOULD BE RELATED 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 @ Z c c ^\ V c ( : Z c c Z ii $ < d g b V c a ae aV l nZ g h ad h V c \ Z aZ h ( X V a^ [ d g c ^V TO THE COURT AND TO EACH OF THE PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that Plaintiff SpeedTrack, Inc. hereby moves, pursuant to Local Rule 3-12(b), for administrative relief to determine that the recently-filed case of SpeedTrack, Inc. v. Amazon.com, Inc., et. al., Case No. 09-CV-04479-EDL (“the Amazon Action”) is related to the cases of SpeedTrack, Inc. v. Wal-Mart Stores, Inc., et. al., Case No. 06-CV-07336-PJH (“the Wal- Mart Action”) and SpeedTrack, Inc. v. Office Depot, Inc., et. al., Case No. 07-CV-03602-PJH (“the Office Depot Action”) (collectively “Actions”), both of which are currently pending before this Court. The Actions all involve claims by SpeedTrack, Inc. (“SpeedTrack”) that Defendants infringe its U.S. Patent No. 5,544,360 (“the ‘360 patent”) and share many common issues of fact and law. I. INTRODUCTION AND ACTION REQUESTED BY SPEEDTRACK In this Administrative Motion, SpeedTrack requests that the Amazon Action be deemed related to the Wal-Mart and Office Depot Actions currently pending before this Court and that the Amazon Action be reassigned to this Court. For the reasons recounted below, SpeedTrack will seek to stay the Amazon Action pending resolution of the Wal-Mart Action. The Amazon Action is the third action filed by SpeedTrack for infringement of the ‘360 patent. The first-filed Wal-Mart Action is currently stayed pending the resolution of a reexamination proceeding before the United States Patent and Trademark Office (“PTO”). (D.I. No. 282). The second-filed Office Depot Action was deemed related to the Wal-Mart Action and it is currently stayed pending the resolution of the Wal-Mart Action. (D.I. No. 103 [Wal-Mart Action] and D.I . No. 37 [Office Depot]). SpeedTrack filed the Amazon Action at this time to preserve its right to recover damages for the full six-year period preceding the filing of the Amazon Action pursuant to 35 U.S.C. § 286, while the PTO resolves the pending reexamination and this Court resolves the Wal-Mart Action. Following service of the summons and complain upon the defendants in the Amazon Action, SpeedTrack will seek, first by stipulation and then by motion if required, to stay the Amazon Action until the Wal-Mart Action is resolved. When the stay is lifted, SpeedTrack anticipates that it will propose that the Office Depot Action and the Amazon Action proceed in a way to promote settlement, maximize judicial economy, and avoid undue burden upon the Court. Case4:06-cv-07336-PJH Document288 Filed09/25/09 Page2 of 5 -2- Case No. 06-CV-07336-PJH ADMINISTRATIVE MOTION BY PLAINTIFF TO CONSIDER WHETHER CASES SHOULD BE RELATED 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 @ Z c c ^\ V c ( : Z c c Z ii $ < d g b V c a ae aV l nZ g h ad h V c \ Z aZ h ( X V a^ [ d g c ^V II. TITLE AND CASE NUMBER OF EACH APPARENTLY RELATED CASE The earliest-filed case is SpeedTrack, Inc. v. Wal-Mart Stores, Inc., et. al., Case No. 06-CV- 07336-PJH (“the Wal-Mart Action”), filed on November 29, 2006. On July 12, 2007, Plaintiff SpeedTrack filed another action, SpeedTrack, Inc. v. Office Depot, Inc., et. al., Case No. 07-CV- 03602-PJH (“the Office Depot Action”), which the Court has already found to be related to the Wal- Mart Action. (August 13, 2007 Order, D.I. No. 37 [Wal-Mart] and D.I. No. 6 [Office Depot]). The recently-filed case, SpeedTrack, Inc. v. Amazon.com, Inc., et. al., Case No. 09-CV- 04479-EDL (“the Amazon Action”), was filed on September 23, 2009. A copy of the Complaint in the Amazon Action is attached hereto as Exhibit 1. III. STATEMENT OF THE RELATIONSHIP OF THE ACTIONS The Amazon Action, the Wal-Mart Action and the Office Depot Action all involve SpeedTrack, Inc.’s (“SpeedTrack”) claims for infringement of the ‘360 patent, and thus all three actions concern the same subject matter. In the Wal-Mart Action, SpeedTrack sued Wal-Mart.com USA, LLC (“Wal-Mart”) for infringement of the ‘360 patent based on the methods employed by Wal-Mart on its Internet website using a software product called the “Endeca Information Access Platform.”1 Wal-Mart’s software supplier, Endeca Technologies, Inc., intervened in the Wal-Mart Action. In the Office Depot Action, SpeedTrack sued six companies for infringement of the ‘360 patent based on each company’s Internet website: (1) Office Depot, Inc.; (2) CDW Corporation; (3) Newegg,com; (4) Circuit City Stores, Inc.; (5) PC Connection, Inc.; (6) CompUSA, Inc. All six Defendants in the Office Depot Action also use Endeca’s Information Access Platform. Accordingly, SpeedTrack reasonable expects that the outcome of the Wal-Mart Action concerning whether the use of Endeca’s Information Access Platform infringes the ‘360 patent will be highly 1 Additionally, SpeedTrack sued Toyota Motor Sales U.S.A., Inc., Magellan Navigation, Inc., and The Hertz Corporation in the Wal-Mart Action for infringement of the ‘360 patent based on these defendants’ use and sales of GPS navigation devices. SpeedTrack has settled with Hertz, Toyota, and Magellan, as each has licensed the ‘360 patent from SpeedTrack. The Court has dismissed SpeedTrack’s claims against each of these defendants. Thus, there are no longer any claims by SpeedTrack for infringement of GPS navigation devices in the Wal-Mart Action. Case4:06-cv-07336-PJH Document288 Filed09/25/09 Page3 of 5 -3- Case No. 06-CV-07336-PJH ADMINISTRATIVE MOTION BY PLAINTIFF TO CONSIDER WHETHER CASES SHOULD BE RELATED 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 @ Z c c ^\ V c ( : Z c c Z ii $ < d g b V c a ae aV l nZ g h ad h V c \ Z aZ h ( X V a^ [ d g c ^V predictive of the outcome of the Office Depot Action in its entirety against all six defendants in that action. In the Amazon Action, SpeedTrack sued 20 companies or groups of related companies for infringement of the ‘360 patent. Although twenty companies are defendants in the Amazon Action, only five different infringing software products are collectively used by those twenty defendants, and seven of those twenty new defendants use the Endeca software which is the subject of both the Wal-Mart Action and the Office Depot Action. The list below which has been prepared from publicly available sources, identifies the common software products used by the twenty defendants named in the Amazon Action: 1. Endeca Information Access Platform: a. Costco Wholesale Corporation b. 1-800-Flowers.com, Inc. c. Barnesandnoble.com, LLC and Barnesandnoble, Inc. d. The Home Depot, Inc. e. Nike, Inc. f. Northern Tool & Equipment Catalog Co., Inc. g. J & R Electronics, Inc. 2. FAST Search and Transfer (now owned by Microsoft Corporation): a. Dell, Inc. b. Best Buy Co. and Best Buy.com, LLC c. Systemax, Inc. 3. Mercado (now owned by Omniture, Inc.) a. Office Max, Inc. b. Macy’s, Inc. and Macys.com, Inc. c. Overstock.com, Inc. d. Recreational Equipment, Inc. e. Value Vision International, Inc., dba ShopNBC.com f. B & H Foto & Electronics Corp. Case4:06-cv-07336-PJH Document288 Filed09/25/09 Page4 of 5 -4- Case No. 06-CV-07336-PJH ADMINISTRATIVE MOTION BY PLAINTIFF TO CONSIDER WHETHER CASES SHOULD BE RELATED 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 @ Z c c ^\ V c ( : Z c c Z ii $ < d g b V c a ae aV l nZ g h ad h V c \ Z aZ h ( X V a^ [ d g c ^V 4. Progress EasyAsk: a. Hewlett-Packard Company b. Redcats USA, Inc. c. Retail Convergence, Inc., dba Smartbargains.com 5. Software developed in-house: a. Amazon.com, Inc. The Amazon Action should be clearly deemed a Related Case to the Wal-Mart Action and the Office Depot Action. All three of the Actions involve related issues of claim construction, validity, and infringement of the ‘360 patent, and there will be an unduly burdensome duplication of labor and expense or conflicting results if the Amazon.com Action is conducted before different judges. Assignment of the Amazon.com Action to Judge Hamilton will conserve judicial resources and promote an efficient determination of the Amazon.com Action. DATED: September 25, 2009 HENNIGAN, BENNETT & DORMAN LLP By /S/ Alan P. Block Roderick G. Dorman Alan P. Block Marc Morris Omer Salik Attorneys for Plaintiff, SPEEDTRACK, INC. Case4:06-cv-07336-PJH Document288 Filed09/25/09 Page5 of 5