`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`CANON, INC.
`
`vs.
`
`ROKU INC.,
`
`Plaintiff,
`
`Defendant.
`
`CIVIL ACTION NO. 6:19-cv-00245
`
`JURY TRIAL DEMANDED
`
`CANON, INC.’S UNOPPOSED MOTION
`TO DISMISS WITHOUT PREJUDICE
`CANON’S CLAIMS AGAINST ROKU
`
`Plaintiff Canon, Inc. (“Canon” or “Plaintiff”) for the limited purpose of this case,
`
`in consideration of mutual agreements with Defendant Roku Inc. (“Roku” or
`
`“Defendant”) (collectively, “Parties”), agree and move the Court as follows:
`
`1.
`
`Parties agree that Roku, including its subsidiaries and affiliates, will not
`
`file a declaratory judgment action in any court in connection with U.S. Patent Nos.
`
`7,746,413 (“the ’413 Patent”), 8,078,767 (“the ’767 Patent”), 8,346,986 (“the ’986 Patent”),
`
`8,713,206 (“the ’206 Patent”), and 7,810,130 (“the ’130 Patent”) (collectively, “Asserted
`
`Patents”) during the pendency (through settlement or final appeal, whichever occurs later)
`
`of the following dispute between Canon and TCL entities: Canon, Inc. v. TCL
`
`Electronics Holdings Ltd., et al., Civ. No. 2:18-cv-00546 (E.D. Tex.).
`
`2.
`
`Parties agree that Canon, in consideration of Roku’s agreement above,
`
`will move this Court to dismiss without prejudice Canon’s claims against Roku in this
`
`LEGAL_JP # 4245943.2
`
`1
`
`Roku Exhibit 1019
`Roku, Inc. v. Canon Kabushiki Kaisha
`IPR2020-00343
`Page 00001
`
`
`
`Case 6:19-cv-00245-ADA Document 9 Filed 07/31/19 Page 2 of 4
`
`action.
`
`3.
`
`Parties agree that, if Canon files claims against Roku in any court in
`
`connection with the Asserted Patents, the restrictions set forth in paragraph 1 above
`
`automatically terminate concurrently with any such filing.
`
`THEREFORE, under Parties’ mutual agreements, Canon moves that this Court
`
`dismiss without prejudice Canon’s claims against Roku in this action.
`
`2
`
`IPR2020-00343 Page 00002
`
`
`
`Case 6:19-cv-00245-ADA Document 9 Filed 07/31/19 Page 3 of 4
`
`DATED:
`
`July 31, 2019
`
` By:
`
`/s/John P. Palmer
`John P. Palmer
`State Bar No. 15430600
`palmer@namanhowell.com
`John A. "Andy" Powell
`State Bar No. 24029775
`USPTO Reg. No. 71,533
`powell@namanhowell.com
`NAMAN HOWELL SMITH & LEE, PLLC
`400 Austin Ave., Suite 800
`Waco, Texas 76701
`Tel.: (254) 755-4100
`Fax: (254) 754-6331
`LOCAL COUNSEL FOR PLAINTIFF
`
`YAR R. CHAIKOVSKY (CA Bar #175421
`admitted pro hac vice and admission to be
`submitted) yarchaikovsky@paulhastings.com
`DAVID OKANO (CA Bar #278485 pro hac vice
`and admission to be submitted)
`davidokano@paulhastings.com
`NOBUMASA HIROI (CA Bar # 289592 pro hac
`vice and admission to be submitted)
`nobumasahiroi@paulhastings.com
`
`PAUL HASTINGS LLP
`1117 S. California Avenue Palo Alto, California
`94304-1106
`Tel.: (650) 320-1800
`Fax.: (650) 320-1900
`
`HIROYUKI HAGIWARA (NY Bar #3063690 pro
`hac vice and admission to be submitted)
`hiroyukihagiwara@paulhastings.com
`KYOTARO OZAWA (NY Bar # 5142567 pro
`hac vice and admission to be submitted)
`kyotaroozawa@paulhastings.com
`
`PAUL HASTINGS FOREIGN LAW JOINT
`ENTERPRISE
`Ark Hills Sengokuyama Mori Tower
`Fortieth Floor
`1-9-10 Roppongi
`Minato-ku, Tokyo 106-0032 Japan
`Tel.: 81-3-6229-6015
`Fax.: 81-3-6229-7015
`
`ATTORNEYS FOR PLAINTIFF
`
`3
`
`IPR2020-00343 Page 00003
`
`
`
`Case 6:19-cv-00245-ADA Document 9 Filed 07/31/19 Page 4 of 4
`
`CERTIFICATE OF SERVICE
`
`I certify that on July 31, 2019, I served the foregoing instrument on all counsel of record
`via the Court’s ECF system and/or via email.
`
`/s/ John P. Palmer
` John P. Palmer
`
`4
`
`IPR2020-00343 Page 00004
`
`
`
`Case 6:19-cv-00245-ADA Document 9-1 Filed 07/31/19 Page 1 of 2
`DRAFT PROPOSED ORDER
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`CANON, INC.
`
`vs.
`
`ROKU INC.,
`
`Plaintiff,
`
`Defendant.
`
`CIVIL ACTION NO. 6:19-cv-00245
`
`JURY TRIAL DEMANDED
`
`[PROPOSED] ORDER DISMISSING WITHOUT PREJUDICE
`CANON’S CLAIMS AGAINST ROKU
`
`Before the Court is Plaintiff Canon, Inc. (“Canon” or “Plaintiff”) Unopposed Motion
`
`to Dismiss Without Prejudice Canon’s Claims Against Roku ( “Unopposed Motion”) made
`
`pursuant to mutual agreements with Defendant Roku Inc. (“Roku” or “Defendant”)
`
`(collectively, “Parties”). After considering the Unopposed Motion, the Court finds that the
`
`Unopposed Motion should be GRANTED. It is therefore
`
`ORDERED that Canon’s claims against Roku in this the above-captioned action
`
`is HEREBY DISMISSED WITHOUT PREJUDICE. Each party shall bear its own
`
`fees and costs.
`
`LEGAL_JP # 4245945.1
`
`1
`
`IPR2020-00343 Page 00005
`
`
`
`Case 6:19-cv-00245-ADA Document 9-1 Filed 07/31/19 Page 2 of 2
`
`Dated:
`
`ALAN D ALBRIGHT
`
`UNITED STATES DISTRICT JUDGE
`
`LEGAL_JP # 4245945.1
`
`2
`
`IPR2020-00343 Page 00006
`
`
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