Johnson Controls Technology Company v. Distech Controls Inc.

Application Number	Patent Number	External Links
-	US6369716	Espacenet Google Patents
-	US7025281	Espacenet Google Patents
-	US9528865	Espacenet Google Patents
-	US9952074	Espacenet Google Patents

COMPLAINT FOR PATENT INFRINGEMENT filed with Jury Demand against Distech Controls Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 400, receipt number ADEDC-3069952.) - filed by Johnson Controls Technology Company. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Civil Cover Sheet)(myr) (Entered: 07/20/2020)

2020-07-17

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Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (myr) (Entered: 07/20/2020)

2020-07-17

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Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) US 6,369,716 B1 ;US 7,025,281 B2 ;US 9,528,865 B2 ;US 9,952,074 B2. (myr) (Entered: 07/20/2020)

2020-07-17

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Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent Johnson Controls International, plc for Johnson Controls Technology Company filed by Johnson Controls Technology Company. (myr) (Entered: 07/20/2020)

2020-07-17

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Summonses Issued (please complete the top portion of the form and print out for use/service). (myr) (Entered: 07/20/2020)

2020-07-20

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Case Assigned/Reassigned

2020-07-22

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Case Assigned to Judge Maryellen Noreika. Please include the initials of the Judge (MN) after the case number on all documents filed. (rjb)

2020-07-22

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WAIVER OF SERVICE returned executed by Johnson Controls Technology Company: For Distech Controls Inc. waiver sent on 7/21/2020, answer due 10/19/2020. (Pascale, Karen) (Entered: 09/29/2020)

2020-09-29

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UNOPPOSED MOTION for Extension of Time to November 18, 2020 for Defendant to answer, move, or otherwise respond to the Complaint - filed by Johnson Controls Technology Company. (Pascale, Karen) Modified on 9/30/2020 (dlw). (Entered: 09/29/2020)

2020-09-29

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~Util - Set/Reset Answer Deadline AND SO ORDERED

2020-09-30

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No Actions

SO ORDERED re 7 UNOPPOSED MOTION for Extension of Time to November 18, 2020 for Defendant to answer, move, or otherwise respond to the Complaint (Set/Reset Answer Deadlines: Distech Controls Inc. answer due 11/18/2020). ORDERED by Judge Maryellen Noreika on 9/30/2020. (dlw)

2020-09-30

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No Actions

UNOPPOSED MOTION to Amend/Correct 1 Complaint - filed by Johnson Controls Technology Company. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Text of Proposed Order)(Pascale, Karen) Modified on 11/18/2020 (dlw). (Entered: 11/17/2020)

2020-11-17

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ORDER GRANTING 8 Motion to Amend/Correct. Signed by Judge Maryellen Noreika on 11/18/2020. (dlw) (Entered: 11/18/2020)

2020-11-18

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FIRST AMENDED COMPLAINT against Distech Controls Inc.- filed by Johnson Controls Technology Company. (Attachments: # 1 Exhibit A - F, # 2 Redline Comparison)(dlw) (Entered: 11/18/2020)

2020-11-18

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Amended Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s): US 6,369,716 B1; US 7,025,281 B2; US 9,952,074 B2. US 9,528,865 B2 dropped from suit with the filing of the First Amended Complaint. (dlw) (Entered: 11/18/2020)

2020-11-18

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CERTIFICATE OF SERVICE of First Amended Complaint on November 19, 2020 by Johnson Controls Technology Company re 10 Amended Complaint (Pascale, Karen) (Entered: 11/24/2020)

2020-11-24

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ANSWER to Amended Complaint, re: 10 Amended Complaint with Jury Demand and Affirmative Defenses by Distech Controls Inc. (Renck, Richard) Modified on 12/3/2020 (dlw). (Entered: 12/03/2020)

2020-12-03

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Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent Acuity Brands, Inc. for Distech Controls Inc. filed by Distech Controls Inc.. (Renck, Richard) (Entered: 12/03/2020)

2020-12-03

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ORAL ORDER - IT IS HEREBY ORDERED that the parties shall confer regarding proposed dates in the scheduling order and shall submit a proposed order, including a proposal for the length and timing of trial, to the Court no later than thirty (30) days from the date of this Order. The parties are to use the Court's form scheduling order, which is posted at http://www.ded.uscourts.gov (see Chambers, Judge Noreika, Forms). If there are disputes or issues that the Court needs to address in the proposed scheduling order, the parties shall direct the Court to the paragraph numbers in which those appear in a cover letter to the Court. ORDERED by Judge Maryellen Noreika on 12/3/2020. (dlw) (Entered: 12/03/2020)

2020-12-03

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Oral Order

2020-12-03

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MOTION for Pro Hac Vice Appearance of Attorney Janine A. Carlan, Attorney Bradford C. Frese and Attorney Gary A. Coad - filed by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 12/09/2020)

2020-12-09

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SO ORDERED re 16 MOTION for Pro Hac Vice Appearance of Attorney Janine A. Carlan, Attorney Bradford C. Frese and Attorney Gary A. Coad filed by Johnson Controls Technology Company. ORDERED by Judge Maryellen Noreika on 12/10/2020. (dlw)

2020-12-10

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Pro Hac Vice Attorneys Janine A. Carlan and Gary A. Coad for Johnson Controls Technology Company added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (kmd)

2020-12-10

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SO ORDERED

2020-12-10

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Add Attorneys - PHV only

2020-12-10

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Joint STIPULATION TO EXTEND TIME to File Scheduling Order to January 19, 2021 - filed by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 01/04/2021)

2021-01-04

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SO ORDERED re 17 Joint STIPULATION TO EXTEND TIME to File Scheduling Order to January 19, 2021. ORDERED by Judge Maryellen Noreika on 1/4/2021. (dlw)

2021-01-04

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SO ORDERED

2021-01-04

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PROPOSED ORDER - [Proposed] Scheduling Order - re 15 Oral Order,, by Johnson Controls Technology Company. (Attachments: # 1 Letter to The Honorable Maryellen Noreika from Karen L. Pascale regarding the parties' disagreements in Proposed Scheduling Order)(Pascale, Karen) (Entered: 01/19/2021)

2021-01-19

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ORAL ORDER Setting Telephonic Scheduling Conference: IT IS HEREBY ORDERED that a telephonic Scheduling Conference is set for 2/3/2021 at 03:00 PM before Judge Maryellen Noreika. Counsel shall provide dial-in credentials for the teleconference by emailing this Court's judicial administrator. ORDERED by Judge Maryellen Noreika on 1/21/2021. (dlw) (Entered: 01/21/2021)

2021-01-21

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Order Setting Scheduling Conference

2021-01-21

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Minute Entry for proceedings held before Judge Maryellen Noreika - Scheduling Telephone Conference held on 2/3/2021 re Proposed Order ( 18 ). The plaintiff shall refile the proposed scheduling order with the Court's amendments by 2/10/2021. (Court Reporter Dale Hawkins.) (mdb)

2021-02-03

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Scheduling Conference

2021-02-03

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Official Transcript of Teleconference held on 02/03/2021 before Judge Maryellen Noreika. Court Reporter/Transcriber Dale C. Hawkins,Email: Dale_Hawkins@ded.uscourts.gov. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 3/2/2021. Redacted Transcript Deadline set for 3/12/2021. Release of Transcript Restriction set for 5/10/2021. (dh) (Entered: 02/09/2021)

2021-02-09

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PROPOSED ORDER - [Proposed] Scheduling Order - by Johnson Controls Technology Company. (Attachments: # 1 Letter to The Honorable Maryellen Noreika from Karen L. Pascale regarding revised Proposed Scheduling Order)(Pascale, Karen) (Entered: 02/09/2021)

2021-02-09

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SCHEDULING ORDER: Case referred to the Magistrate Judge for the purpose of exploring ADR. Joinder of Parties due by 5/1/2021. Amended Pleadings due by 5/1/2021. Fact Discovery completed by 4/22/2022. Opening Expert Reports due by 5/19/2022. Rebuttal Expert Reports due by 6/20/2022. Reply Expert Reports due by 7/21/2022. Expert Discovery due by 8/22/2022. A Status Conference is set for 5/20/2021 at 10:00 AM before Judge Maryellen Noreika Dispositive Motions due by 9/21/2022. Claim Construction Opening Brief served by 8/26/2021. Claim Construction Answering Brief served by 9/23/2021. Claim Construction Reply Brief served by 10/14/2021. Claim Construction Surreply Brief served by 11/4/2021. Joint Claim Construction Brief filed by 11/11/2021. A Markman Hearing is set for 11/23/2021 at 11:00 AM in Courtroom 4A before Judge Maryellen Noreika. A Pretrial Conference is set for 2/6/2023 at 01:00 PM in Courtroom 4A before Judge Maryellen Noreika. A 5-day Jury Trial is set for 2/13/2023 at 09:30 AM in Courtroom 4A before Judge Maryellen Noreika. Signed by Judge Maryellen Noreika on 2/11/2021. (dlw) (Entered: 02/11/2021)

2021-02-11

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ORAL ORDER: If during the history of this case, Plaintiff(s) and Defendant(s) jointly wish to schedule a form of alternative dispute resolution ("ADR"), such as mediation, with Judge Burke, they should contact chambers by e-mail at Deborah_Benyo@ded.uscourts.gov or by phone. Additionally, if either side wishes to speak ex parte with Judge Burke regarding ADR matters, they may contact chambers via e-mail or by phone to arrange a time for a call. Ordered by Judge Christopher J. Burke on 2/11/2021. (dlb) (Entered: 02/11/2021)

2021-02-11

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CASE REFERRED to Magistrate Judge Christopher J. Burke for Mediation. Please see Standing Order dated January 20, 2016, regarding disclosure of confidential ADR communications. A link to the standing order is provided here for your convenience at https://www.ded.uscourts.gov/sites/ded/files/forms/StandingOrderforADR-Mediation.pdf (cak)

2021-02-11

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Oral Order

2021-02-11

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Case Referred to Mediation - Magistrate Judge only

2021-02-11

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Joint STIPULATION to Stay All Case Deadlines by Distech Controls Inc.. (Renck, Richard) (Entered: 02/17/2021)

2021-02-17

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SO ORDERED re 24 Stipulation to Stay All Case Deadlines - IT IS HEREBY ORDERED that all case deadlines are STAYED through and including 3/18/2021. ORDERED by Judge Maryellen Noreika on 2/17/2021. (dlw)

2021-02-17

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SO ORDERED

2021-02-17

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Joint STIPULATION to Extend Stay of All Case Deadlines by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 03/17/2021)

2021-03-17

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SO ORDERED re 25 Stipulation to Extend Stay of All Case Deadlines - IT IS HEREBY ORDERED that all case deadlines are further STAYED through and including 4/19/2021. ORDERED by Judge Maryellen Noreika on 3/18/2021. (dlw)

2021-03-18

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SO ORDERED

2021-03-18

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STIPULATION to Extend Stay of All Case Deadlines Through May 19, 2021 re 25 Stipulation by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 04/19/2021)

2021-04-19

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SO ORDERED re 26 Stipulation to Extend Stay of All Case Deadlines. IT IS HEREBY ORDERED that all case deadlines are further STAYED through and including 5/19/2021. ORDERED by Judge Maryellen Noreika on 4/19/2021. (dlw)

2021-04-19

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SO ORDERED

2021-04-19

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ORAL ORDER terminating Scheduling Order Deadlines - IT IS HEREBY ORDERED that the 5/20/2021 Status Teleconference and related joint letter submission are TERMINATED. ORDERED by Judge Maryellen Noreika on 5/17/2021. (dlw)

2021-05-17

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1 - Terminate Scheduling Order Deadlines

2021-05-17

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STIPULATION of Dismissal by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 05/19/2021)

2021-05-19

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SO ORDERED, re 27 Stipulation of Dismissal filed by Johnson Controls Technology Company. Signed by Judge Maryellen Noreika on 5/20/2021. Civil Case Terminated (mdb) (Entered: 05/20/2021)

2021-05-20

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Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s). (Attachments: # 1 Stipulation of dismissal)(mdb) (Entered: 05/20/2021)

2021-05-20

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Overview

Parties

Defendant

Distech Controls Inc. Follow

Represented By

Plaintiff

Johnson Controls Technology Company Follow

Represented By

Court & Judges

Patents Involved

Docket Entries

Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (myr) (Entered: 07/20/2020)

Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) US 6,369,716 B1 ;US 7,025,281 B2 ;US 9,528,865 B2 ;US 9,952,074 B2. (myr) (Entered: 07/20/2020)

Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent Johnson Controls International, plc for Johnson Controls Technology Company filed by Johnson Controls Technology Company. (myr) (Entered: 07/20/2020)

Summonses Issued (please complete the top portion of the form and print out for use/service). (myr) (Entered: 07/20/2020)

Case Assigned/Reassigned

Case Assigned to Judge Maryellen Noreika. Please include the initials of the Judge (MN) after the case number on all documents filed. (rjb)

WAIVER OF SERVICE returned executed by Johnson Controls Technology Company: For Distech Controls Inc. waiver sent on 7/21/2020, answer due 10/19/2020. (Pascale, Karen) (Entered: 09/29/2020)

UNOPPOSED MOTION for Extension of Time to November 18, 2020 for Defendant to answer, move, or otherwise respond to the Complaint - filed by Johnson Controls Technology Company. (Pascale, Karen) Modified on 9/30/2020 (dlw). (Entered: 09/29/2020)

~Util - Set/Reset Answer Deadline AND SO ORDERED

SO ORDERED re 7 UNOPPOSED MOTION for Extension of Time to November 18, 2020 for Defendant to answer, move, or otherwise respond to the Complaint (Set/Reset Answer Deadlines: Distech Controls Inc. answer due 11/18/2020). ORDERED by Judge Maryellen Noreika on 9/30/2020. (dlw)

UNOPPOSED MOTION to Amend/Correct 1 Complaint - filed by Johnson Controls Technology Company. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Text of Proposed Order)(Pascale, Karen) Modified on 11/18/2020 (dlw). (Entered: 11/17/2020)

ORDER GRANTING 8 Motion to Amend/Correct. Signed by Judge Maryellen Noreika on 11/18/2020. (dlw) (Entered: 11/18/2020)

FIRST AMENDED COMPLAINT against Distech Controls Inc.- filed by Johnson Controls Technology Company. (Attachments: # 1 Exhibit A - F, # 2 Redline Comparison)(dlw) (Entered: 11/18/2020)

Amended Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s): US 6,369,716 B1; US 7,025,281 B2; US 9,952,074 B2. US 9,528,865 B2 dropped from suit with the filing of the First Amended Complaint. (dlw) (Entered: 11/18/2020)

CERTIFICATE OF SERVICE of First Amended Complaint on November 19, 2020 by Johnson Controls Technology Company re 10 Amended Complaint (Pascale, Karen) (Entered: 11/24/2020)

ANSWER to Amended Complaint, re: 10 Amended Complaint with Jury Demand and Affirmative Defenses by Distech Controls Inc. (Renck, Richard) Modified on 12/3/2020 (dlw). (Entered: 12/03/2020)

Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent Acuity Brands, Inc. for Distech Controls Inc. filed by Distech Controls Inc.. (Renck, Richard) (Entered: 12/03/2020)

Oral Order

MOTION for Pro Hac Vice Appearance of Attorney Janine A. Carlan, Attorney Bradford C. Frese and Attorney Gary A. Coad - filed by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 12/09/2020)

SO ORDERED re 16 MOTION for Pro Hac Vice Appearance of Attorney Janine A. Carlan, Attorney Bradford C. Frese and Attorney Gary A. Coad filed by Johnson Controls Technology Company. ORDERED by Judge Maryellen Noreika on 12/10/2020. (dlw)

Pro Hac Vice Attorneys Janine A. Carlan and Gary A. Coad for Johnson Controls Technology Company added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (kmd)

SO ORDERED

Add Attorneys - PHV only

Joint STIPULATION TO EXTEND TIME to File Scheduling Order to January 19, 2021 - filed by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 01/04/2021)

SO ORDERED re 17 Joint STIPULATION TO EXTEND TIME to File Scheduling Order to January 19, 2021. ORDERED by Judge Maryellen Noreika on 1/4/2021. (dlw)

SO ORDERED

PROPOSED ORDER - [Proposed] Scheduling Order - re 15 Oral Order,, by Johnson Controls Technology Company. (Attachments: # 1 Letter to The Honorable Maryellen Noreika from Karen L. Pascale regarding the parties' disagreements in Proposed Scheduling Order)(Pascale, Karen) (Entered: 01/19/2021)

Order Setting Scheduling Conference

Minute Entry for proceedings held before Judge Maryellen Noreika - Scheduling Telephone Conference held on 2/3/2021 re Proposed Order ( 18 ). The plaintiff shall refile the proposed scheduling order with the Court's amendments by 2/10/2021. (Court Reporter Dale Hawkins.) (mdb)

Scheduling Conference

PROPOSED ORDER - [Proposed] Scheduling Order - by Johnson Controls Technology Company. (Attachments: # 1 Letter to The Honorable Maryellen Noreika from Karen L. Pascale regarding revised Proposed Scheduling Order)(Pascale, Karen) (Entered: 02/09/2021)

Oral Order

Case Referred to Mediation - Magistrate Judge only

Joint STIPULATION to Stay All Case Deadlines by Distech Controls Inc.. (Renck, Richard) (Entered: 02/17/2021)

SO ORDERED re 24 Stipulation to Stay All Case Deadlines - IT IS HEREBY ORDERED that all case deadlines are STAYED through and including 3/18/2021. ORDERED by Judge Maryellen Noreika on 2/17/2021. (dlw)

SO ORDERED

Joint STIPULATION to Extend Stay of All Case Deadlines by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 03/17/2021)

SO ORDERED re 25 Stipulation to Extend Stay of All Case Deadlines - IT IS HEREBY ORDERED that all case deadlines are further STAYED through and including 4/19/2021. ORDERED by Judge Maryellen Noreika on 3/18/2021. (dlw)

SO ORDERED

STIPULATION to Extend Stay of All Case Deadlines Through May 19, 2021 re 25 Stipulation by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 04/19/2021)

SO ORDERED re 26 Stipulation to Extend Stay of All Case Deadlines. IT IS HEREBY ORDERED that all case deadlines are further STAYED through and including 5/19/2021. ORDERED by Judge Maryellen Noreika on 4/19/2021. (dlw)

SO ORDERED

ORAL ORDER terminating Scheduling Order Deadlines - IT IS HEREBY ORDERED that the 5/20/2021 Status Teleconference and related joint letter submission are TERMINATED. ORDERED by Judge Maryellen Noreika on 5/17/2021. (dlw)

1 - Terminate Scheduling Order Deadlines

STIPULATION of Dismissal by Johnson Controls Technology Company. (Pascale, Karen) (Entered: 05/19/2021)

SO ORDERED, re 27 Stipulation of Dismissal filed by Johnson Controls Technology Company. Signed by Judge Maryellen Noreika on 5/20/2021. ***Civil Case Terminated*** (mdb) (Entered: 05/20/2021)

Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s). (Attachments: # 1 Stipulation of dismissal)(mdb) (Entered: 05/20/2021)

Track Case Updates

Distech Controls Inc.

Johnson Controls Technology Company

SO ORDERED, re 27 Stipulation of Dismissal filed by Johnson Controls Technology Company. Signed by Judge Maryellen Noreika on 5/20/2021. Civil Case Terminated (mdb) (Entered: 05/20/2021)