Opinion
Case No. CV19-04980 AB (FFMx)
04-22-2020
NOMADIX, INC., Plaintiff, v. GUEST-TEK INTERACTIVE ENTERTAINMENT LTD., Defendant.
JUDGMENT
Plaintiff Nomadix, Inc. ("Nomadix"), filed a Motion for Summary Judgment. (Dkt. No. 66.) After reviewing the opposition Defendant Guest-Tek Interactive Entertainment Ltd. ("Guest-Tek") filed and hearing oral argument, the Court granted Nomadix's motion. (Dkt. No. 113.) The Court now enters final judgment in favor of Plaintiff Nomadix as follows.
1. Defendant Guest-Tek, and its officers, agents, servants, employees, representatives, directors, attorneys, successors, affiliates, and assigns, and entities owned or controlled by Guest-Tek, and all those in active concert or participation with any of the foregoing, are hereby permanently ENJOINED from each of the following acts:
a. participating any further in, or otherwise taking any further action in, each of IPR2019-00211, IPR2019-00253, and IPR2019-01191 before the Patent Trial and Appeal Board ("PTAB") of the United States Patent and Trademark Office, except in furtherance of paragraph 2 below;
b. initiating, pursuing, prosecuting, or taking any steps with respect to any appeal or review of any judgment, decision, order, or disposition in any of IPR2019-00211, IPR2019-00253, and IPR2019-01191;
c. filing any additional petitions with the PTAB challenging a Nomadix patent licensed under the parties' December 30, 2010 Confidential License Agreement (the "Agreement"); and
d. subject to clauses 7.1 and 7.2 of the Agreement, raising a dispute arising out of or in connection with the Agreement in any forum other than the United States District Court for the Central District of California, or, only if such dispute may not be brought in that District Court, a California Superior Court in Los Angeles or Orange County.
2. Defendant Guest-Tek is hereby ORDERED to join Plaintiff Nomadix in requesting that the PTAB terminate IPR2019-00211 and IPR2019-00253, including cooperating with Plaintiff Nomadix in taking steps—within two business days of entry of this final judgment in the civil docket—to obtain authorization from the PTAB to file motions to terminate IPR2019-00211 and IPR2019-00253 and including, in each proceeding, joining—within two business days of obtaining such authorization—in a motion substantially of the following form:
Defendant Guest-Tek is further hereby ORDERED to withdraw—within two business days of entry of this final judgment in the civil docket—the request for rehearing it filed in IPR2019-01191. If the PTAB nonetheless institutes review in IPR2019-01191, Defendant Guest-Tek is further hereby ORDERED to join Plaintiff Nomadix in requesting that the PTAB terminate IPR2019-01191 in the manner ordered above for IPR2019-00211 and IPR2019-00253 and to initiate such steps within two business days of such institution of review.
JOINT MOTION TO TERMINATE PROCEEDING
Pursuant to 37 C.F.R. § 42.72, Petitioner and Patent Owner jointly move to terminate the present proceeding, Case [IPR2019-00211 or IPR2019-00253]. The Board authorized this joint motion on __________.
Petitioner filed a petition for inter partes review of U.S. Patent No. [7,953,857 or 8,626,922] on November 12, 2018. On January 23, 2020, in Nomadix, Inc. v. Guest-Tek Interactive Entertainment Ltd., Case No. CV19-04980 AB (FFMx), the United States District Court for the Central District of California ("the District Court") granted a motion by Patent Owner for summary judgment, holding that, by initiating the present inter partes review proceeding, Petitioner violated the forum-selection clause in a patent license agreement that the parties entered into in December, 2010. (Ex. ___[copy of Dkt. No. 113].) On __________, the District Court entered final judgment in Patent Owner's favor, ordering Petitioner to join Patent Owner in moving to terminate the present proceeding and enjoining Petitioner from otherwise participating further in the present proceeding. (Ex. ___ [copy of this judgment].) In particular, the District Court ordered Petitioner to join Patent Owner in filing the present motion to terminate. (Id.) The Board has not decided the merits of the inter partes review. Termination of this proceeding in its entirety as to all parties is proper and consistent with the District Court's judgment.
3. Defendant Guest-Tek, and its officers, agents, servants, employees, representatives, directors, attorneys, successors, affiliates, and assigns, and entities owned or controlled by Guest-Tek, and all those in active concert or participation with any of the foregoing, are hereby ENJOINED from taking any steps to avoid termination of IPR2019-00211 and IPR2019-00253 or to otherwise subvert the order in paragraph 2.
4. Plaintiff Nomadix is the prevailing party in this action and shall have 14 days from the entry of this final judgment in the civil docket to file a motion to recover attorneys' fees and costs whether or not automatically taxable under Federal Rule of Civil Procedure 54(d)(1).
5. This Court retains jurisdiction for the purpose of implementing and enforcing this judgment, including the foregoing injunction, including by way of post-judgment discovery related thereto. Plaintiff Nomadix is permitted to conduct post-judgment discovery directed to compliance with, and enforcement of, this judgment.
IT IS SO ORDERED, ADJUDGED, AND DECREED. Dated: April 22, 2020
/s/_________
Honorable André Birotte Jr.