Case 3:13-cv-02326-CAB-NLS Document 15 Filed 01/07/14 Page 1 of 5
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`RUSS, AUGUST & KABAT
`Larry C. Russ, State Bar No. 82760
`Marc A. Fenster, State Bar No. 181067
`Brian D. Ledahl, State Bar No. 186579
`Alexander C.D. Giza, State Bar No. 212327
`J. Power Hely VI, State Bar No. 271231
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Telephone:
`(310) 826-7474
`Facsimile:
`(310) 826-6991
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`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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`SPH America LLC,
` Plaintiff,
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`v.
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`ZTE CORPORATION and ZTE (USA) INC.,
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`Case No. 3:13-cv-02326-CAB-NLS
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`Judge: Cathy Ann Bencivengo
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`Joint Motion for Dismissal Without Prejudice
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`of Defendant ZTE Corporation
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`Defendants
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`JOINT MOTION FOR DISMISSAL WITHOUT PREJUDICE OF DEFENDANT ZTE
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`CORPORATION
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`Pursuant to Fed. R. Civ. P. 41(a)(2), Defendant ZTE Corporation (“ZTE Corp”) and its
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`subsidiary which is also named as a defendant in this action, ZTE (USA) Inc., (collectively, “the
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`ZTE Defendants”), and SPH America (“SPH”) jointly move to dismiss SPH’s complaint against
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`ZTE Corp against SPH without prejudice to reinstate and with no award of fees or costs, based
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`on the following:
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`1. The ZTE Defendants represent that ZTE Corp does not make, use, sell, or offer to
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`sell, or contribute to or induce the infringement of any person or entity in the United States, with
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`respect to the products and patents identified in SPH’s complaint. ZTE (USA) Inc. is the
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`1
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`Exhibit 2005
`IPR2015-00221
`Page 1 of 5
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`Case 3:13-cv-02326-CAB-NLS Document 15 Filed 01/07/14 Page 2 of 5
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`importer of the products identified in SPH’s complaint and remains a named defendant in this
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`action. Further, the ZTE Defendants represent that ZTE Corp does not import any products into
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`the United States, including but not limited to the products identified in SPH’s complaint. To the
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`extent it is determined that ZTE Corp has made, used, sold, offered for sale, imported into the
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`United States, or contributed to or induced the infringement of any person or entity in the United
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`States with respect to products that are now or may in the future be accused of infringement in
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`this action, any such acts will be treated for all purposes of this litigation as if they had been
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`conducted by ZTE (USA) Inc. The ZTE Defendants also represent that ZTE (USA) Inc. has
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`sufficient assets to satisfy any judgment based on the foregoing. SPH’s communications with
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`ZTE Corp regarding any of the patents-in-suit will be treated for purposes of this litigation as
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`also with ZTE (USA) Inc., and ZTE (USA) Inc. can rely on or take any positions and actions that
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`had been or could have been taken by ZTE Corp, except with respect to the personal and subject
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`matter jurisdiction of this Court.
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`2. For the purposes of discovery in this matter, upon entry of an order of dismissal of
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`ZTE Corp without prejudice, information and documents in the possession, custody, or control of
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`ZTE Corp shall be deemed in the possession, custody, or control of ZTE (USA) Inc., but only to
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`the extent they may be relevant to this litigation, SPH issues a request for them to ZTE (USA)
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`Inc., and they are not otherwise available from ZTE (USA) Inc. SPH on the one hand, and ZTE
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`Corp and ZTE (USA) Inc. on the other hand, agree to meet and confer in good faith to resolve
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`any objections consistent with the above agreement, including without limitation objections to
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`the nature or scope of any requests for documents, information, testimony, or any other
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`discoverable matter.
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`3. SPH on the one hand, and the ZTE Defendants on the other hand, agree that any
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`2
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`Exhibit 2005
`IPR2015-00221
`Page 2 of 5
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`Case 3:13-cv-02326-CAB-NLS Document 15 Filed 01/07/14 Page 3 of 5
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`depositions of the officers or employees of ZTE Corp who are residing outside the United States,
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`including personal and corporate depositions pursuant to Federal Rules of Civil Procedure
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`30(b)(1) or 30(b)(6), respectively, will occur at a location mutually agreed to by the parties, or, if
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`the parties cannot reach agreement, such depositions will occur at ZTE Corp’s request in Hong
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`Kong. The ZTE Defendants agree that SPH shall not be restricted to the use of U.S. consular
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`premises or consular officers for certification unless required by law of the country in which the
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`deposition is to take place. The parties to this Stipulation further agree to waive any objection
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`to a stenographer, provided the stenographer is authorized either under the law of the country in
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`which the deposition is taken or is a notary public in one of the states, territories, or District of
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`Columbia, of the United States. The parties agree to negotiate in good faith over the specific
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`location and timing for any such deposition.
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`4. The parties further agree that each party will bear its own costs of suit in
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`connection with the requested dismissal, and request that the Court dismiss the action without
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`prejudice pursuant to Fed. R. Civ. P. 41(a)(2). ZTE Corp agrees that it will not assert that this
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`dismissal precludes or otherwise bars any possible future suit by SPH against ZTE Corp,
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`including a suit involving any of the same patents or claims underlying the instant action.
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`3
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`Exhibit 2005
`IPR2015-00221
`Page 3 of 5
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`Case 3:13-cv-02326-CAB-NLS Document 15 Filed 01/07/14 Page 4 of 5
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`Dated: January 7, 2014
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`/s/ Brian D. Ledahl_____________________
`Brian D. Ledahl
`State Bar No. 186579
`Russ, August & Kabat
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`(310) 826-7474
`bledahl@raklaw.com
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`Attorney for Plaintiff
`SPH America LLC
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`Respectfully submitted,
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`/s/ Nicole Cunningham___________________
`Nicole S. Cunningham
`State Bar No. 234390
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`(619) 544-3123
`Fax (619) 236-1995
`nicole.cunningham@pillsburylaw.com
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`Attorney for Defendants
`ZTE (USA) Inc. and ZTE Corporation
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`IT IS SO ORDERED this _____ day of _________________, 2014.
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`____________________________________
`Hon. Cathy Ann Bencivengo
` United States District Court Judge
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`4
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`Exhibit 2005
`IPR2015-00221
`Page 4 of 5
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`Case 3:13-cv-02326-CAB-NLS Document 15 Filed 01/07/14 Page 5 of 5
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`CERTIFICATE OF SERVICE
`I HEREBY CERTIFY that on this 7th day of January, 2014, a copy of the foregoing
`Motion was filed electronically with the Court using the CM/ECF system and served on all
`counsel of record.
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`/s/ Brian D. Ledahl_____
`Brian D. Ledahl
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`5
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`Exhibit 2005
`IPR2015-00221
`Page 5 of 5
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