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Case: 3:10-cv-00700-bbc Document #: 35 Filed: 01/17/11 Page 1 of 6

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF WISCONSIN


MOTOROLA MOBILITY, INC., and
GENERAL INSTRUMENT
CORPORATION,


Plaintiffs,



vs.


MICROSOFT CORPORATION,
Defendant.






Civil Action No. 10-cv-700
District Judge William M. Conley
Magistrate Judge Stephen L. Crocker


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USTIPULATION TO STAY CASE

Plaintiffs Motorola Mobility Inc. and General Instrument Corporation ("Plaintiffs") and

Defendant Microsoft Corporation ("Defendant") (collectively "the Parties"), by and through their

respective counsel of record, hereby stipulate and agree as follows:

1.

The Parties stipulate that Plaintiffs may file a Second Amended Complaint and

that, if not filed prior to the Court’s Order on this stipulation, shall be deemed filed and accepted

as of the entry of the Court’s Order on this stipulation. (See Docket No. 26.) The Second

Amended Complaint, to be filed by Plaintiffs this week, no longer asserts U.S. Patent No.

6,686,931.

2.

Pursuant to 28 U.S.C. § 1659 and the Court's inherent power to control its Docket,

the Parties stipulate to a stay of proceedings in the above-captioned matter pending a final

determination of the United States International Trade Commission ("ITC") in In the Matter of

Certain Gaming and Entertaining Consoles, Related Software, and Components thereof,

Investigation No. 377-TA-752. This stay applies to all remaining claims asserted by Plaintiffs in

their Second Amended Complaint, including all claims relating to U.S. Patent No. 5,311,516.

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Case: 3:10-cv-00700-bbc Document #: 35 Filed: 01/17/11 Page 2 of 6

3.

Defendant agrees that it will not raise Plaintiffs' agreement to stay claims relating

to U.S. Patent No. 5,311,516 in any subsequent Court filing or communication with the Court.

4.

Plaintiffs filed a Complaint in this matter on November 10, 2010, alleging that

Microsoft infringes seven patents: U.S. Patent Nos. 5,319,712; 5,357,571; 6,069,896; 6,980,596;

7,162,094; 5,311,516; and 6,686,931. Five of those patents (U.S. Patent Nos. 5,319,712;

5,357,571; 6,069,896; 6,980,596; 7,162,094) also are being asserted in the ITC proceeding.

Plaintiffs now seek to drop claims relating to U.S. Patent No. 6,686,931 from this case and to

instead assert that patent in case No. 10-cv-826, also pending in this District.

5.

6.

On November 22, 2010, Plaintiffs filed a First Amended Complaint.

On December 21, 2010, Defendant filed a motion to dismiss the First Amended

Complaint pursuant to Rule 12(b)(6).

7.

On December 21, 2010 Defendant also filed a motion to dismiss, stay, or in the

alternative, transfer this case to the Western District of Washington.

8.

On January 11, 2011, Plaintiffs filed a motion for leave to file a Second Amended

Complaint.

9.

28 U.S.C. § 1659(a) provides that “[i]n a civil action involving parties that are

also parties to a proceeding before the [ITC] under section 337 of the Tariff Act of 1930, at the

request of a party to the civil action that is also a respondent in the proceeding before the

Commission, the district court shall stay, until the determination of the Commission becomes

final, proceedings in the civil action with respect to any claim that involves the same issues

involved in the proceeding before the commission,” so long as “such request is made within (1)

30 days after the party is named as a respondent in the proceeding before the Commission, or (2)

30 days after the district court action is filed, whichever is later.” 28 U.S.C. § 1659(a) (emphasis

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Case: 3:10-cv-00700-bbc Document #: 35 Filed: 01/17/11 Page 3 of 6

added). The Parties to the above-captioned civil action are also the Complainants and

Respondent in the ITC proceeding involving the same issues involved here—the putative

infringement of Plaintiffs' five patents identified in Paragraph 4, above.

10.

The requested stipulation is timely. The 30-day period under 28 U.S.C. §

1659(a)(1) did not begin to run until December 17, 2010—the day Defendant was named as

respondent in the proceeding before the ITC.

11.

Accordingly, the Parties respectfully request that the Court enter an Order

directing that:

A. Pursuant to 28 U.S.C. § 1659 and the Court's inherent power to control its Docket,

all proceedings in the above-captioned matter, including proceedings on Defendant’s December

21, 2010 motion to dismiss, stay, or transfer, are hereby stayed pending a final determination of

the United States International Trade Commission ("ITC") in In the Matter of Certain Gaming

and Entertaining Consoles, Related Software, and Components thereof, Investigation No. 377-

TA-752. This stay applies to all remaining claims asserted by Plaintiffs after filing of the Second

Amended Complaint, including all claims relating to U.S. Patent No. 5,311,516;

B. The deadline for Defendant to move, answer, or otherwise respond to the First

Amended Complaint is vacated, and Defendant’s December 21, 2010 motion to dismiss the First

Amended Complaint pursuant to Rule 12(b)(6) is withdrawn without prejudice as moot;

C. Plaintiffs are granted leave to file their Second Amended Complaint. Plaintiffs’

Second Amended Complaint shall have until January 21, 2011 to file their Second Amended

Complaint. If filed after the Court’s Order on this stipulation, the Second Amended Complaint

shall be deemed filed and accepted as of the entry of the Court’s Order on this stipulation;

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Case: 3:10-cv-00700-bbc Document #: 35 Filed: 01/17/11 Page 4 of 6

D. The deadline for Defendant to move, answer, or otherwise respond to the Second

Amended Complaint shall be stayed pending a final determination in the above referenced ITC

proceeding;

E. Within 30 days of a final determination of the ITC proceeding in In the Matter of

Certain Gaming and Entertaining Consoles, Related Software, and Components thereof,

Investigation No. 377-TA-752, and the associated expiration of this stay, the Parties shall confer

with each other and contact the Court for purposes of setting a Scheduling Order, which shall

include the setting of a new deadline for Defendant to move, answer, or otherwise respond to the

Second Amended Complaint.







DATED: January 17, 2011

REINHART BOERNER VAN DEUREN
S.C.

By U/s/Scott W. Hansen
Scott W. Hansen
WI State Bar ID No. 1017206
[email protected]
Lynn M. Stathas
WI State Bar ID No. 1003695
[email protected]
Rebecca Frihart Kennedy
WI State Bar ID No. 1047201
[email protected]
1000 North Water Street, Suite 1700
Milwaukee, WI 53202
Telephone: 414-298-1000
Facsimile: 414-298-8097

Attorneys for Plaintiffs Motorola Mobility Inc.
and General Instrument Corp.

Of Counsel:

Jesse J. Jenner



Presented by,

MICHAEL BEST & FRIEDRICH LLP



By U/s/John C. Scheller
J. Donald Best, SBN 1012450
John C. Scheller, SBN 1031247
Christopher C. Davis, SBN 1064764
One South Pickney Street
Suite 700
Madison, WI 53703

Attorneys for Defendant Microsoft
Corporation

Of Counsel:

David T. Pritikin
[email protected]
Richard A. Cederoth
[email protected]
Douglas I. Lewis
[email protected]
John W. McBride
[email protected]

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Case: 3:10-cv-00700-bbc Document #: 35 Filed: 01/17/11 Page 5 of 6

Steven Pepe
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036
Telephone: 212-596-9000

Norman H. Beamer
Mark D. Rowland
Gabrielle E. Higgins
ROPES & GRAY LLP
1900 University Avenue, 6 th Floor
East Palo Alto, CA 94303
Telephone: 650-617-4000



SIDLEY AUSTIN LLP
One South Dearborn
Chicago, Illinois 60603
(312) 853-7000

T. Andrew Culbert
[email protected]
David E. Killough
[email protected]
MICROSOFT CORPORATION
1 Microsoft Way
Redmond, Washington 98052
425-703-8865
Telephone:
Facsimile:
425-869-1327

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Case: 3:10-cv-00700-bbc Document #: 35 Filed: 01/17/11 Page 6 of 6

UCERTIFICATE OF SERVICE



I hereby certify that on January 17, 2011, I caused true and correct copies of NOTICE OF

APPEARANCE to be served on all counsel of record via the ECF System.













U/s/ John C. Scheller
John C. Scheller



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