STIPULATION AND [PROPOSED] ORDER DISMISSING CERTAIN CLAIMS AND ENTERING FINAL JUDGMENT

RICHARD SEEBORG, District Judge.

By Orders dated June 13, 2014, the Court granted SanDisk's motion for summary judgment of exhaustion on all of Round Rock's infringement claims relating to U.S. Patent Nos. 6,570,791 and 6,845,053 (Dkt. No. 358), and granted SanDisk's motion to strike its SD, microSD, and iNand products from this case with respect to U.S. Patent No. 5,682,345 (Dkt. No. 360), among other things. In light of the Court's Orders, the only infringement allegations remaining in this case are: (i) the alleged infringement of U.S. Patent No. 6,383,839 in connection with SanDisk's microSD Memory Cards; and (ii) the alleged infringement of U.S. Patent No. 5,682,345 in connection with SanDisk's mDOC products.

In view of the limited potential recovery relating to the remaining infringement claims compared to the expense of proceeding with trial on these claims, Round Rock hereby covenants not to assert infringement claims against SanDisk or its customers for infringement of U.S. Patent No. 6,383,839 ("the `839 patent") based upon the past or future manufacture, use, sale, offer for sale, or importation of the SanDisk products currently at issue in this action with respect to the `839 patent, i.e., the accused SanDisk microSD Memory Cards. Round Rock further covenants not to assert infringement claims against SanDisk or its customers for infringement of U.S. Patent No. 5,682,345 ("the `345 patent") based upon the past or future manufacture, use, sale, offer for sale, or importation of the SanDisk products currently at issue in this action with respect to the `345 patent, i.e., the accused SanDisk mDOC products. The remaining claims in this action that were not resolved by the Court on summary judgment are therefore moot.

Accordingly, pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), SanDisk Corporation ("SanDisk") and Round Rock Research LLP ("Round Rock") hereby stipulate to dismiss the following causes of action in connection with the remaining pending claims in this action. SanDisk stipulates to dismiss its second cause of action (Declaratory Judgment of Invalidity of U.S. Patent No. 6,383,839) and its fourth cause of action (Declaratory Judgment of Non-Infringement of U.S. Patent No. 5,682,345) without prejudice, and Round Rock stipulates to dismiss the second count of its counterclaims (Infringement of U.S. Patent No. 5,682,345) and the seventh count of its counterclaims (Infringement of U.S. Patent No. 6,383,839) with prejudice.

No further issues remain for trial. The parties therefore respectfully request that the Court enter final judgment pursuant to its June 13, 2014, Order (Dkt. No. 358) in favor of SanDisk on its sixth cause of action (Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,570,791) and twelfth cause of action (Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,845,053), and against Round Rock on Count VIII of it counterclaims (Infringement of U.S. Patent No. 6,570,791) and Count XII of its counterclaims (Infringement of U.S. Patent No. 6,845,053). Each party shall bear its own costs and attorneys' fees.

[PROPOSED] ORDER

Pursuant to the above stipulation, the following causes of action in connection with the remaining pending claims in this action are hereby dismissed. SanDisk's second cause of action (Declaratory Judgment of Invalidity of U.S. Patent No. 6,383,839) and its fourth cause of action (Declaratory Judgment of Non-Infringement of U.S. Patent No. 5,682,345) are hereby dismissed without prejudice, and Round Rock's second count of its counterclaims (Infringement of U.S. Patent No. 5,682,345) and seventh count of its counterclaims (Infringement of U.S. Patent No. 6,383,839) are hereby dismissed with prejudice.

Further, for the reasons set forth in the Court's June 13, 2014, Order (Dkt. No. 358), the Clerk is directed to enter judgment pursuant to Fed. R. Civ. P. 58 in favor of SanDisk Corporation on its sixth cause of action (Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,570,791) and twelfth cause of action (Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,845,053), and against Round Rock on Count VIII of it counterclaims (Infringement of U.S. Patent No. 6,570,791) and Count XII of its counterclaims (Infringement of U.S. Patent No. 6,845,053). This Order resolves all remaining issues between the parties, and each party shall bear its own costs and attorneys' fees.

IT IS SO ORDERED.