Plaintiffs Verizon California Inc., Verizon Trademark Services LLC and Verizon Licensing Company alleged that Defendants Navigation Catalyst Systems Inc. and Basic Fusion Inc. have used an automated process to register and use over three million domain names, many of which are confusingly similar to famous or distinctive trademarks owned by others.
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Date Filed
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#
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Docket Text
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| April 15, 2008 |
1
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COMPLAINT against Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc. (Filing fee $ 350 PAID.) Jury Demanded., filed by plaintiffs Verizon Licensing Company, Verizon
California Inc., Verizon Trademark Services LLC.(ghap) Additional attachment(s) added on 4/22/2008 (hha). Additional attachment(s) added on 4/23/2008 (tdo). (Entered: April 18, 2008)
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| April 15, 2008 |
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20 DAY Summons Issued re Complaint - (Discovery) 1 as to Defendants Navigation
Catalyst Systems, Inc., Basic Fusion, Inc. (ghap) (Entered: April 18, 2008)
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| April 15, 2008 |
2
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CERTIFICATION AND NOTICE of Interested Parties filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (ghap) Additional attachment(s)
added on 4/23/2008 (tdo, ). (Entered: April 18, 2008)
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| April 15, 2008 |
3
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CORPORATE DISCLOSURE STATEMENT filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC identifying none as Corporate Parent. (ghap)
Additional attachment(s) added on 4/22/2008 (hha, ). (Entered: April 18, 2008)
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| April 15, 2008 |
4
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REPORT ON THE FILING OF AN ACTION Regarding a Patent or a Trademark (Initial Notification) filed by Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC.
(ghap) (Entered: April 18, 2008)
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| April 15, 2008 |
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FAX number for Attorney David J Steele is 949-476-8640. (ghap) (Entered: April 18, 2008)
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| April 15, 2008 |
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FAX number for Attorney Howard A Kroll is 626-577-8800. (ghap) (Entered: April 18, 2008)
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| April 15, 2008 |
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FAX number for Attorneys Sarah B Deutsch, John Thorne is 703-351-3670. (ghap) (Entered: April 18, 2008)
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| April 15, 2008 |
23
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CERTIFICATION AND NOTICE of Interested Parties filed by plaintiffs Verizon Licensing Company, Verizon California Inc., and Verizon Trademark Services LLC. (ps) (Entered: June 16, 2008)
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| April 15, 2008 |
24
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REPORT ON THE FILING OF AN ACTION Regarding a Patent or a Trademark (Initial Notification). (ps) Modified on 6/16/2008 (ps). (Entered: June 16, 2008)
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| April 18, 2008 |
5
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NOTICE OF FILING FEE DUE on Pro Hac Vice Application mailed to attorney Sarah B Deutsch for Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC.
(ghap) (Entered: April 18, 2008)
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| April 18, 2008 |
6
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NOTICE OF FILING FEE DUE on Pro Hac Vice Application mailed to attorney John Thorne for Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC.
(ghap) (Entered: April 18, 2008)
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| May 1, 2008 |
7
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NOTICE of Manual Filing filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC of Applications of Non-Resident Attorney to Appear in a
Specific Case for John Thorne & Sarah B. Deutsch. (Steele, David) (Entered: May 1, 2008)
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| May 1, 2008 |
8
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NOTICE of Manual Filing filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC of Notice of Manual Filing of Applications of Non-Resident
Attorney to Appear in a Specific Case and Proposed Orders for John Thorne and Sarah B. Deutsch. (Attachments: # 1 Proposed
Order On Application of Non-Resident Attorney to Appear in a Specific Case for John Thorne# 2 Proposed Order On Application of
Non-Resident Attorney to Appear in a Specific Case for Sarah B. Deutsch)(Steele, David) (Entered: May 1, 2008)
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| May 2, 2008 |
9
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APPLICATION OF NON-RESIDENT ATTORNEY Sarah B. Deutsch for Leave to Appear Pro Hac Vice. FEE PAID, filed by plaintiff Verizon Licensing Company, Verizon California Inc., Verizon Trademark
Services LLC. (bm) (Entered: May 6, 2008)
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| May 2, 2008 |
11
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APPLICATION OF NON-RESIDENT ATTORNEY John Thorne for Leave to Appear Pro Hac Vice. FEE PAID. filed by plaintiff Verizon Licensing Company, Verizon California Inc., Verizon Trademark
Services LLC. (bm) Modified on 5/6/2008 (bm, ). (Entered: May 6, 2008)
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| May 2, 2008 |
12
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ORDER by Judge Audrey B. Collins Granting APPLICATION OF NON-RESIDENT ATTORNEY John Thorne for Leave to Appear Pro Hac Vice 11 on behalf of Plaintiffs Verizon Licensing Company, Verizon California Inc.,
Verizon Trademark Services LLC. David J. Steele is designated as local counsel. Fee PAID. (bm) Modified on 5/6/2008 (bm, ). (Entered: May 6, 2008)
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| May 5, 2008 |
10
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ORDER by Judge Audrey B. Collins Granting APPLICATION OF NON-RESIDENT ATTORNEY Sarah B. Deutsch for Leave to Appear Pro Hac Vice 9 to appear on behalf of Plaintiffs Verizon Licensing Company, Verizon California
Inc., Verizon Trademark Services LLC. Sarah B. Deutsch is designated as local counsel. Fee PAID. (bm) (Entered: May 6, 2008)
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| May 9, 2008 |
13
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PROOF OF SERVICE Executed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC, upon Navigation Catalyst Systems, Inc. served on 4/23/2008,
answer due 5/13/2008. Original Summons Not returned. (Steele, David) (Entered: May 9, 2008)
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| May 9, 2008 |
14
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PROOF OF SERVICE Executed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC, upon Basic Fusion, Inc. served on 4/23/2008, answer due
5/13/2008. Original Summons not returned. (Steele, David) (Entered: May 9, 2008)
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| May 15, 2008 |
15
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CORPORATE DISCLOSURE STATEMENT filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc. identifying Connexus Corporation as Corporate Parent. (Givens, Elizabeth)
(Entered: May 15, 2008)
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| May 15, 2008 |
17
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ANSWER to Complaint - (Discovery), Complaint - (Discovery) 1 with JURY DEMAND,
COUNTERCLAIM against Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC filed by defendants' Navigation Catalyst Systems, Inc., Basic Fusion, Inc..(bp)
(Entered: May 16, 2008)
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| May 15, 2008 |
18
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CERTIFICATION of Interested Parties filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc..
(bp) (Entered: May 16, 2008)
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| May 15, 2008 |
20
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Certification and Notice of Interested Parties filed by defendants Navigation Catalyst Systems, Inc. and Basic Fusion, Inc. (ps) (Entered: May 30, 2008)
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| May 16, 2008 |
16
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APPLICATION OF NON-RESIDENT ATTORNEY Brett E. Lewis for Leave to Appear Pro Hac Vice. FEE NOT PAID. filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc..
(Attachments: # 1 Proposed Order on Brent Lewis Pro Hac Vice Application)(Givens, Elizabeth) (Entered: May 16, 2008)
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| May 20, 2008 |
19
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ORDER by Judge Audrey B. Collins Granting APPLICATION OF NON-RESIDENT ATTORNEY Brett E. Lewis for Leave to Appear Pro Hac Vice. 16 by Brett E. Lewis to appear on behalf of Defendants Navigation Catalyst Systems,
Inc., Basic Fusion, Inc., Michael King and Janice Kroll are designated as local counsel. Fee NOT PAID. (es) (Entered: May 21, 2008)
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| June 4, 2008 |
21
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Plaintiffs' ANSWER to Answer to Complaint (Discovery), Answer to Complaint (Discovery), Counterclaim, 17 Answer to Counterclaims of Defendants filed by
Plaintiffs/Counterclaim-Defendants Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC.(Steele, David) (Entered: June 4, 2008)
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| June 9, 2008 |
22
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NOTICE OF MOTION AND MOTION for Preliminary Injunction re: registration of domain names filed by Plaintiffs/Counterclaim-Defendants Verizon Licensing Company, Verizon California Inc.,
Verizon Trademark Services LLC. Motion set for hearing on 6/30/2008 at 10:00 AM before Judge Audrey B. Collins. (Attachments: # 1 Appendix Memorandum of Points & Authorities in Support of Motion for Preliminary Injunction, # 2 Declaration Declaration of Janis M. Manning in Support of Motion for Preliminary Injunction, # 3 Exhibit Exh. A to Manning Declaration, # 4 Exhibit Exh. B to Manning
Declaration, # 5 Exhibit Exh. C to Manning Declaration, # 6
Exhibit Exh. D to Manning Declaration, # 7 Exhibit Exh. E to Manning Declaration, # 8 Exhibit Exh. F to Manning Declaration, # 9 Declaration Declaration of
Anne F. Bradley in Support of Motion for Preliminary Injunction, # 10 Exhibit Exh. A to Bradley Declaration, # 11 Exhibit Exh. B to Bradley Declaration, # 12 Exhibit Exh. C to Bradley
Declaration, # 13 Exhibit Exh. D-Pt.1 to Bradley Declaration, # 14 Exhibit Exh. D-Pt.2 Bradley Declaration, # 15 Exhibit Exh. D-Pt.3
Bradley Declaration, # 16 Exhibit Exh. D-Pt.4 to Bradley Declaration, # 17 Exhibit Exh. D-Pt.5 to Bradley Declaration, # 18 Exhibit Exh. E to
Bradley Declaration, # 19 Exhibit Exh. F to Bradley Declaration, # 20 Exhibit Exh. G to Bradley Declaration, # 21 Exhibit Exh. H to Bradley
Declaration, # 22 Exhibit Exh. I to Bradley Declaration, # 23
Exhibit Exh. J. to Bradley Declaration, # 24 Exhibit Exh. K to Bradley Declaration, # 25 Proposed Order Proposed Order for Preliminary Injunction)(Steele, David) (Entered: June 9, 2008)
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| June 16, 2008 |
25
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MEMORANDUM in Opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter
Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Lewis, Brett) (Entered: June 16, 2008)
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| June 16, 2008 |
26
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DECLARATION of Matt Wrock in opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter
Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Lewis, Brett) (Entered: June 16, 2008)
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| June 16, 2008 |
27
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DECLARATION of Matt Wrock in opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter
Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Attachments: # 1 Exhibit Wrock Exhibit A part 1, # 2 Exhibit Wrock Exhibit A part 2, # 3 Exhibit Wrock Aff Exhibit A part
3)(Lewis, Brett) (Entered: June 16, 2008)
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| June 16, 2008 |
28
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DECLARATION of Robert P. Johnson in opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter
Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Attachments: # 1 Exhibit Johnson Decl. Ex. A, # 2 Exhibit Johnson Decl. Ex. B, # 3 Exhibit Johnson Decl. Ex. C, #
4 Exhibit Johnson Decl. Ex. D, # 5 Exhibit Johnson Decl. Ex. E, #
6 Exhibit Johnson Decl. Ex. F, # 7 Exhibit Johnson Decl. Ex. G, #
8 Exhibit Johnson Decl. Ex. H, # 9 Exhibit Johnson Decl. Ex. I, #
10 Exhibit Johnson Decl. Ex. J, # 11 Exhibit Johnson Decl. Ex. K,
# 12 Exhibit Johnson Decl. Ex. L, # 13 Exhibit Johnson Decl. Ex.
M, # 14 Exhibit Johnson Decl. Ex. N, # 15 Exhibit Johnson Decl.
Ex. O, # 16 Exhibit Johnson Decl. Ex. P, # 17 Exhibit Johnson
Decl. Ex. Q, # 18 Exhibit Johnson Decl. Ex. R, # 19 Exhibit
Johnson Decl. Ex. S)(Lewis, Brett) (Entered: June 16, 2008)
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| June 16, 2008 |
29
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DECLARATION of Seth Jacoby in opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter
Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Attachments: # 1 Exhibit Jacoby Ex. A, # 2 Exhibit Jacoby Ex. D, # 3 Exhibit Jacoby Ex. E, # 4 Exhibit Jacoby Ex. F, # 5 Exhibit Jacoby Ex. G, # 6 Exhibit Jacoby Exhibit H, # 7 Exhibit Jacoby Ex. I, # 8 Exhibit Jacoby Ex. J, # 9 Exhibit Jacoby Ex. K, # 10 Exhibit Jacoby Ex. L, # 11 Exhibit Jacoby Ex. M, # 12 Exhibit Jacoby Ex. N, # 13 Exhibit Jacoby Ex. O, # 14 Exhibit Jacoby Ex. P, # 15 Exhibit Jacoby Ex. Q, # 16 Exhibit Jacoby Ex. B, # 17 Exhibit Jacoby Ex. C)(Lewis, Brett)
(Entered: June 16, 2008)
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| June 19, 2008 |
30
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ORDER RE CONFERENCE: 1. PRETRIAL CONFERENCE PURSUANT TO F.R.CIV.P. 16 AND 26; AND LOCAL RULE 26; 2. MOTIONS & EX PARTE APPLICATIONS; 3. EFILING - COURTESY COPIES by Judge Audrey B.
Collins, Set/Reset Deadlines/Hearings: Pretrial/Scheduling Conference set for 8/11/2008 10:00 AM before Judge Audrey B. Collins. (See document for text of order.) (ps) (Entered:
06/20/2008)
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| June 23, 2008 |
31
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REPLY in support of a MOTION for Preliminary Injunction re: registration of domain names 22 filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon
Trademark Services LLC, Counter Defendants Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (Attachments: # 1 Declaration of David Steele in Support of Motion for Preliminary Injunction, # 2 Exhibit A-M to Declaration of D. Steele, # 3 Exhibit N-P to Declaration
of D. Steele)(Steele, David) (Entered: June 23, 2008)
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| June 30, 2008 |
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ORDER by Judge Audrey B. Collins: This order shall constitute the Courts findings of fact and conclusions of law on this issue. Based on the findings and conclusions set forth above, the
Court hereby GRANTS in part and DENIES in part Plaintiffs Motion for a Preliminary Injunction 22 . Plaintiffs request for an order enjoining Defendants from registering any domain
name using an automated process is DENIED. However, the Court will issue a Preliminary Injunction enjoining Defendants from registering or using any domain name that is identical or
confusingly similar to the following marks: VERIZON, VERIZON WIRELESS, FIOS, VERIZON FIOS, VZ, VZACCESS, VZEMAIL, VZGLOBAL, VZVOICE, and VZW.Defendants will be further enjoined from
assisting, aiding, or abetting any other person or business entity in registering or using any domain name that is identical or confusingly similar to these same ten marks. As the
injunctive relief ordered is relatively modest, the Court orders Plaintiffs to post a $10,000.00 bond within ten days of the date of entry of the Preliminary Injunction. If Plaintiffs
fail to post the bond in a timely manner, the Preliminary Injunction will be vacated. (ir) (Entered: June 30, 2008)
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| June 30, 2008 |
33
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MINUTES: Plaintiffs motion for Preliminary Injunction 22 . Motion granted in
part and denied in part by Judge Audrey B. Collins Court Reporter: Katherine Stride. (ir) (Entered: July 2, 2008)
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| July 3, 2008 |
34
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NOTICE AND REQUEST of Settlement Procedure Selection (Sp3); parties request to appear before a retired judicial officer or other dispute resolution body for mediation type settlement
proceedings. Filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC(Kroll, Howard) (Entered: July 3, 2008)
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| July 18, 2008 |
35
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STIPULATION to Continue Pretrial/Scheduling Conference from August 11, 2008 to September 8, 2008 filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark
Services LLC. (Attachments: # 1 Proposed Order to Continue Pretrial/Scheduling Conference)(Steele, David) (Entered:
07/18/2008)
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| July 21, 2008 |
36
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ORDER TO CONTINUE PRETRIAL/SCHEDULING CONFERENCE by Judge Audrey B. Collins, GRANTING Stipulation to Continue, 35 : ( Pretrial/Scheduling Conference set for 9/8/2008 at 10:00 AM before Judge
Audrey B. Collins.) (ca) (Entered: July 22, 2008)
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| August 29, 2008 |
37
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JOINT REPORT Rule 26(f) Discovery Plan ; estimated length of trial 7-10 days, filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC,
Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Defendants Verizon Licensing Company,
Verizon California Inc., Verizon Trademark Services LLC.. (Criona, Danielle) (Entered: August 29, 2008)
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| September 2, 2008 |
38
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WITHDRAWAL of, Answer to Counterclaim, 21 , Answer to Complaint (Discovery),
Answer to Complaint (Discovery), Counterclaim, 17 , filed by Counter
Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Lewis, Brett) (Entered: September 2, 2008)
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| September 8, 2008 |
39
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NOTICE TO FILER OF DEFICIENCIES in Electronically Filed Documents. The following error(s) was found: Docket entry text must match document e-filed; Judge's initial indicated incorrectly
on document. RE: Notice of Withdrawal of Claim 38 . In response to this
notice the court may order (1) an amended or correct document to be filed (2) the document stricken or (3) take other action as the court deems appropriate. (ab) (Entered: September 9, 2008)
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| September 8, 2008 |
40
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MINUTES OF Scheduling Conference held before Judge Audrey B. Collins: Add claims/parties cutoff: 12/1/2008; Discovery cut-off: 3/1/2009; Expert Discovery cutoff: 6/12/09; Law and Motion
cutoff: 6/29/2009; Final Pretrial Conference: 9/28/2009 10:00 AM; Jury Trial set for 10/13/2009 08:30 AM; Counsel are reminded of the requirements of Local Rule 16-14. Counsel shall
submit their notice of settlement selection within 10 days.Court Reporter: Katherine Stride. (lc) Modified on 9/10/2008 (lc). (Entered: September 10, 2008)
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| September 8, 2008 |
41
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CIVIL JURY TRIAL ORDER by Judge Audrey B. Collins: The above matter is set for trial before the Honorable Audrey B. Collins, Courtroom 680, Roybal Federal Building, 255 East Temple
Street, Los Angeles, CA 90012. PRETRIAL AND TRIAL DATES 1. The Court orders the following dates: a. Cut-off date for filing motions to join other parties and amending the pleadings
isDecember 1, 2009. b. Discovery cut-off is March 1, 2009; Expert Discovery cut-off is June 16, 2009. c. Cut-off date for motions to be filed is Monday, June 29, 2009. d. Final Pretrial
Conference is set for Monday, September 28, 2009, at 10:00 a.m. Trial counsel must be present. Note: Counsel must comply with Local Rule 16. e. Trial is set for Tuesday, October 13, 2009,
at 8:30 a.m. PLEASE READ DOCUMENT FOR FURTHER INFORMATION (ca) (Entered: September 11, 2008)
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| October 21, 2008 |
42
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STIPULATION for Judgment as to Defendants, STIPULATION for Permanent Injunction as to Defendants filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark
Services LLC. (Attachments: # 1 Proposed Order for Final Judgment and Permanent Injunction)(Steele, David) (Entered:
10/21/2008)
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| October 21, 2008 |
43
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NOTICE OF MOTION AND Joint MOTION for Release of Funds filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (Attachments: # 1 Proposed Order Returning Plaintiffs' Deposit Posted in Support of Preliminary Injunction)(Steele, David) (Entered: October 21, 2008)
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| October 22, 2008 |
44
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NOTICE TO FILER OF DEFICIENCIES in Electronically Filed Documents. The following errors were found: Case name and number not on Title Page. Proposed Order was not submitted as separate
attachment RE: Stipulation for Judgment, Stipulation for Permanent Injunction 42 . In response to this notice the court may order (1) an amended or correct
document to be filed (2) the document stricken or (3) take other action as the court deems appropriate. (ir) (Entered: October 22, 2008)
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| October 22, 2008 |
45
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NOTICE TO FILER OF DEFICIENCIES in Electronically Filed Documents. The following error(s) was found: Incorrect event used. Correct event is Motion and Related Filings - Request - Order.
Proposed document shall be submitted as separate attachment RE: Joint MOTION for Release of Funds 43 . In response to this notice the court may order (1) an amended or correct
document to be filed (2) the document stricken or (3) take other action as the court deems appropriate. (ir) (Entered: October 22, 2008)
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| October 22, 2008 |
46
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STIPULATED ORDER by Judge Audrey B. Collins regarding Stipulated Request for Release of Funds 43 . Plaintiffs and Defendants further request that the Clerk of the Court remit the
funds, payable to Christie, Parker & Hale LLP to the following address: Christine, Parker & Hale LLP c/o David J Steele, Esq at 3501 Jamboree Road Suite 6000- North Tower Newport
Beach, CA 92660. (ir) (Entered: October 23, 2008)
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| October 22, 2008 |
47
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STIPULATED ORDER for Final Judgment and Permanent Injunction 42 by Judge
Audrey B. Collins: The parties, having reached a full settlement of this matter, hereby stipulate and agree to the entry of final judgment and permanent injunction as follows: 1.
Defendants Navigation Catalyst Systems, Inc. and Basic Fusion, Inc. and their officers, agents, servants, employees, and attorneys, and those persons in active concert or participation
with them who receive actual notice of this Order, shall be permanently enjoined. This Court has jurisdiction over the parties and the subject matter of this action. This Court shall
retain jurisdiction to the extent necessary to enforcethis Permanent Injunction. All relief not expressly granted herein is DENIED. Each party shall bear its own costs, expenses and
attorneys fees. This is a Final Judgment. (Made JS-6. Case Terminated.) (ir) (Entered: October 23, 2008)
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| November 4, 2008 |
48
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REPORT ON THE DETERMINATION OF AN ACTION Regarding a Patent or Trademark. (Closing) (ir) (Entered: November 4, 2008)
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