Case 1:10-cv LAK -AJP Document 150 Filed 03/07/11 Page 1 of 5. March 4, 2011

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1 ". I' Case 1:10-cv LAK -AJP Document 150 Filed 03/07/11 Page 1 of 5 Mar :28pm From-GREENBERG TRAUIG T-I05 P.002 1:1 GreenbergTraurig F-337 RlchiJrd D, Heml> Tell12,456.ea10 Fill( Mrrlsr@gd..w.cO/ll VIA FA CSIMILE Hon, Andrew J. Peck United States Magistrate Judge Daniel Patrick Moynihan United States Courthouse 500 Pearl St., Courtroom: 20D New York, NY Fax: Re: Wi-LAN Inc. v. LG Electronics, Inc. and LG Electronics U.S.A., Inc. Civil Action No. 10 Civ. 432 (LAK) (AJP) Dear Magistrate Judge Peck: This letter provides to the Court each side's response to the third item in the Court's Endorsed Letter dated February 28, 2011 (at Docket No. 141), wherein the Court asked the parties the following question: "Does it make sense to have claim construction briefing before other issues because of the above problems with non-party discovery?" Unfortunately. the parties were unable to come to an agreement on a proposed claim construction protocol. The parties' respective positions on this question are set forth below. Plaintiffs Proposal Plaintiff does not agree to a separate claim construction protocol, and proposes that the Court address any claim construction issues in the context of summary judgment proceedings. Defendants' Proposal In response to the Court's February 28 th ruling, Defendants made the fallowing claim construction protocol proposal to Plaintiff: March 18, The parties jointly file a claim construction stipulation to agreed terms. if any, and separately file their respective claim construction briefs (up to 35 pages per side). April 1, The parties file responsive claim construction briefs (up to 35 pages per side). Gfl.EENSERG 1"AAURlG, UP ATIORNEYS AT LAW WCIZ We~r Drive. SoJlta 3100 Chicago. Illinois Tel 312.4S6.&tQO Fax ,805 ALBAIIi\, AMSTERDAM ATl.ANTA AUSTIN SEfUlN easton BRUSSELS CHICAGO DA~S DELAWARE DENVER FORT LAUDERDALE HOUSTON LAS VEGAS LONDON LOS ANGEt.1$ MIAMI NEW JERSEY NEW \'ORK ORANGE COUIIIiY ORLANDO PALM BeACH COUNTY philadelphia PHOENIX ROME SACRAMENTO SAN FRANasco SHANGHAI SIUCON VAUEY TAt.l.AHASSEE TAMPA 'TYSONS CORNeR I J I WASHINGTON, D.C. WHITE PLAINS ZURICH

2 , Case 1:10-cv LAK -AJP Document 150 Filed 03/07/11 Page 2 of 5 Mar O~:29pm From-GREENBERG TRAUIG T-l05 P.003 H37 Page 2 TBD - Markman hearing, subject to the Court's availability.1 Plaintiffs Position Plaintiff Wi-LAN Inc. ("Plaintiff") does not agree to Defendants' proposed separate claim construction protocol. Defendants have still failed to demonstrate why a separate claim construction procedure is necessary or would be helpful to the resolution of this matter. Defendants' proposed schedule would not promote judicial economy or obviate the need for the parties to argue in the alternative in their summary judgment briefs. Under Defendants' proposed schedule. opening summary judgment briefs would be due before briefing on claim construction was complete, let alone resolved by the Court. The parties would therefore need to argue in the alternative pending the Court's ruling on yet-to-be completed claim construction motions. Rather than burden the Court with this separate set of briefs, Plaintiff proposes that the Court consider claim construction issues as part of the "omnibus" summary judgment proceeding as the Court and the parties have planned to do all along. Defendants' reliance on local rules from other District Courts is irrelevant. as the Local Rules of this Court do not provide for any such separate claim construction proceedings. Many other patent heavy District Courts and Judges handle proceedings just as Plaintiff proposes and the Court has planned to do, with claim construction being considered at the same time as dispositive motions. At the outset of this litigation, Defendants agreed to a case schedule with no separate claim construction procedure, and the litigation has proceeded on that basis for nearly one year since that schedule was entered. Defendants have shown no basis to change course now. Further, Defendants' nebulous suggestion that the Court "contlnu[e] the dispositive motion cutoff for a brief period of time after it enters its own claim construction ruling" is nothing more than a blatant effort to delay the case still further and put off final resolution of this matter. Plaintiff is prepared to carry this litigation through summary Judgment and trial in accordance with the Court's schedule. Defendants continue to seek every excuse in the book to delay, No further delay resutting from a separate, burdensome and unnecessary claim construction protocol Is warranted. I Defendants also suggested that they would consider a protocol that only involved the filing of a single claim construction brief, if Plaintiff would agree to the parties' exchange of proposed tenns and constructions in advance of filing those briefs, but Plaintiff likewise rejected that proposal. GREENBERG l1wjrig, llp

3 Case 1:10-cv LAK -AJP Document 150 Filed 03/07/11 Page 3 of 5 11:1.,..04"11 ali!2r/l1ii ~rom-cr{;{;nil{;rc TRAU! G 31Z T-l05 P.004 Page 3 gefendants' Position In rejecting Defendants' proposal, Plaintiff did not offer any alternative claim construction protocol. Plaintiff argues that Defendants "failed to demonstrate why a separate claim construction is necessary or would be helpful to the resolution of this matter:' Defendants submit that the benefits of incorporating a claim construction protocol prior to the dispositive motion cutoff are obvious, given that the Court must first arrive at an appropriate claim construction, before ruling on any summary judgment motion involving the patent claims. Indeed. several of the "patent-heavy" districts have adopted local patent rules expressly requiring the resolution of claim construction long before consideration of motions for summary judgment (John E. Schneider, Local Patent Rules: The Devil Is In The Detai/s, attached as Exhibit A. also available at Speaker-Materials/Documents/ED_2010_SM_Schneider_PPRpdf.) Prior knowledge of the Court's claim construction of disputed terms will indisputably streamline summary judgment briefing on the issues of infringement and invalidity. Plaintiff argues that a separate claim construction protocol will not promote judicial economy because the current dispositive motion cutoff will still require the parties to brief alternative arguments in their summary judgment briefs. That concern, however, is easily addressed by the Court's continuing the dispositive motion cutoff for a brief period of time after it enters its own claim construction ruling. The parties would then be able to streamline their summary judgment papers to address the issues of infringement and invalidity based solely upon the Court's claim construction-and not alternative, hypothetical constructions-thereby avoiding significant irrelevant briefing while promoting judicial efficiency. Indeed, resolution of the claim construction may itself dispose of the case, as it will either support or refute Plaintiffs current RRT-1-based theory of infringement. Plaintiffs suggestion that introducing a claim construction protocol into the case would conflict with the Court's and the parties' plans to conduct claim construction as part of some "omnibus" summary judgment proceeding is mistaken. From early in this case, Defendants have urged the Court to incorporate a claim construction protocol into the case scheduling order. (See, e.g., 05/21/10 Hr'g Tr. at 31 :17-23, 35:7-36:8; 08/23/10 Hr'g Tr. at 4:24-7:10; 2/10/11 Hr'g Tr. at 28:25-29:14, 61:16-19, attached as Exhibit B.) The very question posed by the Court's February 28"' ruling and invitation to the parties to submit an agreed protocol suggests to Defendants the Court's recognition of these benefits.

4 Case 1:10-cv LAK -AJP Document 150 Filed 03/07/11 Page 4 of 5 M:ir~04~11 as: 2Bpm From-GREENBERG TRAUI G T-l05 P.D05 Page 4 Accordingly, Defendants respectfully request that the Court enter a claim construction protocol along the lines suggested by Defendants and extend the date for filing dispositive motions until shortly after the date on which the Court enters its claim construction ruling for the case. Summary The above statements accurately reflect each of the parties' positions on the issue of early claim construction. cc: Counsel of record (via ) on. Andrew Y k ~c~ GREENBERG TRAURIG, LLP

5 Case 1:10-cv LAK -AJP Document 150 Filed 03/07/11 Page 5 of 5 ECF TRANSCRIPTION SHEET ANDREW J. PECK UNITED STATES MAGISTRATE JUDGE UNITED STATES DISTRICT COURT Southern District of New York United States Courthouse 500 Pearl Street. Room 1370 New York. N.Y Fax No.: (212) Telephone No.: (212) Dated: March 7, 2011 Total Number of Pages: _5_ TRANSCRIPTION OF MEMO ENDORSED ORDER Because the parties have not agreed to a separate claim construction briefing schedule, the Court will continue with the "omnibus" briefing approach and schedule previously set. Copies by ECF to: All counsel Judge Lewis A. Kaplan