Case 2:09-cv-00257-JRG Document 290

Filed 04/24/12 Page 1 of 2 PageID #: 9725

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION TIVO INC., Plaintiff, V. VERIZON COMMUNICATIONS INC., ET AL. Defendants.

CAUSE NO. 2:09-CV-257-JRG

ORDER Before the Court is Plaintiff TiVo Inc.s (Tivo) Motion for Judgment on the Pleadings Under Rule 12(c), filed July 5, 2011 (Dkt. No. 192). Defendant Verizon Communications Inc. (Verizon) has asserted U.S. Patent No. 6,381,748 (the 748 patent) against Tivo in this case, and also in the Eastern District of Virginia (EDVA)1 and in the International Trade Commission. Plaintiff argues Defendant should be estopped from continuing to assert its 748 patent against it in this case because the EDVA already determined that the asserted claims of the 748 patent are invalid as part of a partial summary judgment order. Defendant argues that the EDVA partial summary judgment order regarding the asserted claims of the 748 patent is not a final judgment and therefore, cannot serve as a basis for collateral estoppel. Recently, the EDVA has entered a final judgment, from which an appeal to the United States Court of Appeals for the Federal Circuit will proceed. To avoid inconsistent rulings between United States District Courts and to promote judicial economy, this Court DISMISSES WITHOUT PREJUDICE Defendants asserted claims against Tivo based on the 748 patent pending resolution of the EDVA appeal to the Federal Circuit, and potentially, to the Supreme

ActiveVideo Networks, Inc. v. Verizon Commcns Inc., Case No. 2:10-cv-248 (E.D. Va.).

. Case 2:09-cv-00257-JRG Document 290

Filed 04/24/12 Page 2 of 2 PageID #: 9726

Court of the United States. This Order does not preclude Defendant from re-filing its asserted claims in this Court based on the 748 patent subsequent to resolution of the appeal and finalization of the EDVA case, if the EDVAs finding of invalidity does not survive the appellate process.

SIGNED this 19th day of December, 2011. So ORDERED and SIGNED this 23rd day of April, 2012.

____________________________________ RODNEY GILSTRAP UNITED STATES DISTRICT JUDGE