`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
`
`Defendants.
`
`Case No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`
`
`MAXELL, LTD.’S UNOPPOSED MOTION TO DISMISS
`WITHOUT PREJUDICE THE '794 PATENT
`
`
`
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`Case 5:19-cv-00036-RWS Document 679 Filed 03/19/21 Page 2 of 5 PageID #: 33572
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`
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`Pursuant to Fed. R. Civ. P. 41(a)(2), and in an effort to streamline issues for the above-
`
`captioned case, Plaintiff Maxell, Ltd. (“Maxell”) hereby agrees to dismiss without prejudice
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`certain claims from these actions.
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`
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`Specifically, Maxell agrees to dismiss without prejudice its claims of infringement of U.S.
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`Patent No. 6,329,794 (the “’794 patent”). Apple does not object to Maxell reducing its damages
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`total based on this dismissal by reducing the total number of accused units.
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`
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`In addition to dismissing without prejudice its remaining claims of infringement of the ’794
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`patent against Apple, Maxell agrees not to institute any legal action or administrative proceeding
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`against Apple or any Apple products on the ’794 patent until the conclusion of the inter partes
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`review proceedings on that patent (IPR2020-00199), which for avoidance of doubt also includes
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`any appeals from the PTAB’s Final Written Decision in IPR2020-00199. Maxell further agrees
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`that no Apple product shall be used to satisfy any claim or claim element of the ’794 patent asserted
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`by Maxell or its successors and assigns against any party until the conclusion of IPR2020-00199,
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`including any appeals from the PTAB’s Final Written Decision.
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`
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`Apple does not oppose this Motion.
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`At this time, Maxell maintains all claims and defenses not specifically enumerated above.
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`
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`Dated: March 19, 2021
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`
`
`
`
`
`By:
`
`
`
`
`/s/ Jamie B. Beaber
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`
`
`
`Case 5:19-cv-00036-RWS Document 679 Filed 03/19/21 Page 3 of 5 PageID #: 33573
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib J. Siddiqui
`Bryan C. Nese
`William J. Barrow
`Alison T. Gelsleichter
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff Bonner
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`
`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 679 Filed 03/19/21 Page 4 of 5 PageID #: 33574
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`CERTIFICATE OF CONFERENCE
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`The undersigned hereby certifies that counsel for Plaintiff met and conferred with counsel
`for Defendant on this issue on March 18-19, 2021. Counsel for Defendant indicated that it is
`unopposed to the relief sought in this motion.
`
`
`
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`
`
`/s/ Geoff Culbertson
`Geoff Culbertson
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`Case 5:19-cv-00036-RWS Document 679 Filed 03/19/21 Page 5 of 5 PageID #: 33575
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 19th day of March, 2021 with a copy of this document via
`the Court’s CM/ECF system per Local Rule CV-5(a)(3)
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`
`
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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