Opinion
4:18-cv-04969-HSG
09-09-2021
ZOMM, LLC, Plaintiff, v. APPLE INC., Defendant.
O'MELVENY & MYERS LLP David R. Eberhart (S.B. #195474) Luann L. Simmons (S.B. #203526) Attorneys for Defendant APPLE INC. KELLEY DRYE AND WARREN LLP Michael J. Zinna (admitted pro hac vice) David G. Lindenbaum (pro hac vice) Whitney M. Smith (pro hac vice) Andrew W. Homer (State Bar No. 259852) Tahir L. Boykins (State Bar No. 323441) Attorneys for Plaintiff ZOMM, LLC
O'MELVENY & MYERS LLP David R. Eberhart (S.B. #195474) Luann L. Simmons (S.B. #203526) Attorneys for Defendant APPLE INC.
KELLEY DRYE AND WARREN LLP Michael J. Zinna (admitted pro hac vice) David G. Lindenbaum (pro hac vice) Whitney M. Smith (pro hac vice) Andrew W. Homer (State Bar No. 259852) Tahir L. Boykins (State Bar No. 323441) Attorneys for Plaintiff ZOMM, LLC
JOINT MOTION AND ORDER FOR ENTRY OF FINAL JUDGMENT
Haywood S. Gilliam, Jr. United States District Court Judge
WHEREAS, on April 23, 2019, Zomm filed a Complaint asserting a First Cause of Action for alleged infringement of U.S. Patent No. 8, 351, 895 ('"895 Patent"), a Second Cause of Action for alleged breach of contract, and a Third Cause of Action for alleged unfair competition (ECF 1);
WHEREAS, on October 3, 2018, Zomm filed an Amended Complaint asserting a First Cause of Action for alleged infringement of the '895 Patent, a Second Cause of Action for alleged breach of contract, and a Third Cause of Action for alleged unfair competition (ECF 37);
WHEREAS, on November 9, 2018, Apple filed two IPR petitions challenging the patentability of all claims of the sole asserted patent in this action, the '895 Patent;
WHEREAS, on December 3, 2018, Apple filed a Motion to Dismiss and Stay (ECF 45);
WHEREAS, on May 10, 2019, the U.S. Patent Trial and Appeal Board ("PTAB") issued decisions instituting review of both IPR petitions;
WHEREAS, on June 17, 2019, the Court granted Apple's motion and dismissed without prejudice Zomm's non-patent causes of action and stayed the patent cause of action pending IPR (ECF 81);
WHEREAS, on July 17, 2019, Zomm filed a Second Amended Complaint asserting a First Cause of Action for alleged infringement of the '895 Patent and a Second Cause of Action for alleged breach of contract (ECF 84);
WHEREAS, on September 24, 2019, pursuant to stipulation, the Court dismissed with prejudice the Second Cause of Action (Breach of Contract) in Zomm's Second Amended Complaint (ECF 93);
WHEREAS, on May 7, 2020, the PTAB issued Final Written Decisions in both IPRs finding all claims of the '895 Patent unpatentable and denying Zomm's motion to amend certain claims;
WHEREAS, on July 9, 2020, Zomm filed notices of appeal of the PTAB's Final Written Decisions in both IPRs, and on July 16, 2020, the United States Court of Appeals for the Federal Court ("Federal Circuit") docketed Zomm's appeals (Appeal Nos. 2020-2000, 2020-2002);
WHEREAS, on July 13, 2020, the Court stayed this action until resolution of both appeals (ECF 101);
WHEREAS, on April 9, 2021, the Federal Circuit issued a summary affirmance pursuant to Fed. Cir. R. 36, affirming the PTAB's Final Written Decisions;
WHEREAS, on May 17, 2021, the Federal Circuit issued its Mandate to the PTAB in accordance with the judgment and awarded costs to Apple;
THEREFORE, consistent with the Federal Circuit's decision, Zomm and Apple jointly request that the Court enter a final judgment pursuant to Rule 58(b) of the Federal Rules of Civil Procedure in favor of Apple and against Zomm as follows:
1. All claims of U.S. Patent No. 8, 351, 895 are invalid.
2. Zomm's Second Amended Complaint is dismissed with prejudice; and
3. Each party shall bear its own costs, expenses, and attorneys' fees.
A proposed form of judgment accompanies this Motion.
Dated: September 8, 2021
CERTIFICATE OF SERVICE
I certify that all counsel of record is being served on September 8, 2021, with a copy of this document via the Court's CM/ECF system.
FILER'S ATTESTATION
Pursuant to Local Rule 5-1(i)(3), I hereby attest that the other signatory listed, on whose behalf the filing is submitted, concurs in the filing's content and has authorized the filing.
FINAL JUDGMENT
Before the Court is the Joint Motion for Entry of Final Judgement filed by Zomm, Inc. ("Zomm") and Apple Inc. ("Apple") in the captioned case. For the reasons stated in the Joint Motion and good cause appearing, IT IS HEREBY ORDERED, ADJUDGED AND DECREED THAT final judgment be and is hereby entered in favor of Defendant Apple Inc. and against Plaintiff Zomm, Inc. as follows:
1. All claims of U.S. Patent No. 8, 351, 895 are invalid.
2. Zomm's Second Amended Complaint is dismissed with prejudice; and
3. Each party shall bear its own costs, expenses, and attorneys' fees.
IT IS SO ORDERED