Case :-cv-0-vc Document Filed 0/0/ Page of (Counsel listed on signature page) UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION 0 0 TECHNOLOGY PROPERTIES LIMITED LLC, et al, Plaintiffs, v. HUAWEI TECHNOLOGIES CO., LTD. And HUAWEI NORTH AMERICA, Defendants. TECHNOLOGY PROPERTIES LIMITED LLC, et al, v. Plaintiffs, ZTE CORPORATION and ZTE (USA) INC., Defendants. TECHNOLOGY PROPERTIES LIMITED LLC, et al, Plaintiffs, v. SAMSUNG ELECTRONICS CO., LTD. And SAMSUNG ELECTRONICS AMERICA, INC., Defendants. Case No. :-cv-0-vc PLAINTIFFS CASE MANAGEMENT STATEMENT Case No. :-cv-0-vc Case No. :-cv-0-vc PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -CV -0-VC, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of 0 0 TECHNOLOGY PROPERTIES LIMITED LLC, et al, Plaintiffs, v. LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC., Defendants. TECHNOLOGY PROPERTIES LIMITED LLC, et al, v. Plaintiffs, NINTENDO CO., LTD. and NINTENDO OF AMERICA, INC., Defendants. Case No. :-cv-00-vc Case No. :-cv-0-vc PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -CV -0-VC, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of 0 0 I. INTRODUCTION PLAINTIFFS CASE MANAGEMENT STATEMENT On April, 0, the Court entered an order (Dkt. No. in Technology Properties Ltd., ( TPL ) et al. vs. Samsung Electronics Co., Ltd., et al., Case No. -cv-0-vc) asking the Parties to ) address the recent Federal Circuit decision remanding the above-captioned cases to this Court for further proceedings, and ) lay out a plan for moving the cases forward. This Case Management Statement is divided into three sections addressing () the procedural history of these cases, () the background and impact of the Federal Circuit s recent decision, and () Plaintiffs views on how best to proceed with these cases. II. CASE HISTORY Plaintiffs Technology Properties Limited LLC, Phoenix Digital Solutions LLC, and Patriot Scientific Corporation (collectively PDS ) filed various complaints against the Defendants in July 0, alleging infringement of U.S. Patent No.,0, ( the Patent ) and two other patents that were subsequently dropped by agreement of the Parties. Also in July 0, PDS filed a complaint in the International Trade Commission (Investigation No. -TA- ) that contained the same general allegations found in the complaints filed in this Court (i.e., infringement of the Patent). Unless otherwise noted, all subsequent references to a document s particular docket number refer to the docket number in the -0 case, even though the same or substantially similar document may have been filed in the other four cases listed in the caption of this Case Management Statement. This same Case Management Statement is being filed in all five of the cases listed in the caption of this document. Case Nos. -cv-0-vc (TPL et al. vs. Huawei Technologies Co., Ltd. et al.), -cv-0-vc (TPL et al. vs. ZTE Corp., et al.), -cv-0-vc (TPL et al. vs. Samsung Electronics Co., Ltd., et al.), -cv-00-vc (TPL et al. vs. LG Electronics, Inc., et al.), and - cv-0-vc (TPL et al. vs. Nintendo Co., Ltd., et al.). PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of 0 0 On September, 0, the Court stayed the district court actions until a final determination was entered in ITC investigation. Dkt. No.. In September 0, the presiding administrative law judge in the ITC investigation made an initial determination that Defendants accused products at issue in the ITC investigation did not infringe the Patent. On March, 0, the full Commission affirmed the finding. In October 0, in Case No. 0-cv-00-PSG (another suit in this District), which involved HTC Corporation and HTC America, Inc. (collectively HTC ) but none of the Defendants in the present actions, a jury found cellular phones made by HTC that included Qualcomm and Texas Instruments microprocessors infringed the Patent. Some of the same Qualcomm microprocessors at issue in the HTC case are found in Defendants phones in the present cases. In October, 0, Judge Grewal determined that the present cases were related and, because various parties did not consent to magistrate judge jurisdiction, assigned them to Judge Chhabria. Dkt. No. at. In turn, Judge Chhabria returned the cases to Judge Grewal for pretrial purposes, reasoning that Judge Grewal had recently presided over the HTC trial mentioned above. Dkt.. The initial case management conference in the present cases was held on November, 0. Dkt. No.. PDS served its infringement contentions to Defendants on January 0, 0. PDS also served its initial discovery requests to Defendants in January 0. On March 0, 0, Samsung sent a letter to PDS in which it alleged that PDS s infringement contentions were deficient and stated that it had no obligation to provide technical discovery pertaining to certain of the accused products identified in PDS s infringement contentions. On March, 0, PDS replied with a letter indicating that its infringement contentions were sufficient and requesting Samsung s production pursuant to Patent L.R. - and PDS s discovery requests. Other Defendants took similar positions. PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of 0 0 Attorneys at Nelson Bumgardner, P.C. became counsel of record for PDS on April, 0, taking the place of attorneys from Agility IP Law, LLP, which found itself unable to continue representation of PDS. Counsel for PDS and various Defendants met and conferred several times during May 0 to discuss the issue of infringement contentions and document production. On June, 0, Samsung filed a motion to strike PDS s infringement contentions. On June, 0, PDS filed a motion to compel discovery from Samsung. PDS reached informal agreements with other of the Defendants to be bound by the outcome of the PDS/Samsung dispute over whether PDS s infringement contentions were sufficient. The Court issued an Order on July, 0, requiring PDS to serve amended infringement contentions. PDS served amended infringement contentions on Samsung and LG on July, 0 and provided the other Defendants updated infringement contentions in the following two weeks. Dkt. No.. On August, 0, the Parties filed their opening claim construction briefs regarding the single term the Parties submitted for construction entire oscillator. On August, 0, the Parties served responsive claim construction briefs. A claim construction hearing was held on September, 0. On September, 0, Judge Grewal issued a Claim Construction Report and Recommendation regarding the construction of the term an entire oscillator disposed upon said integrated circuit substrate. Dkt. No. 0. On September, 0, the parties filed a Joint Motion to stay all cases and deadlines pending the resolution of PDS s objections regarding the construction of entire oscillator. Dkt. No. 0. On November, 0, Judge Chhabria entered a Final Judgment. Dkt. No.. PDS timely appealed the District Court s ruling regarding the construction of entire oscillator, and, on March, 0, the Federal Circuit issued an opinion that the District Court s construction of entire oscillator required a modified construction. Dkt. No.. PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of Prior to the stay of the actions, various depositions were taken in July. August, and September of 0. These depositions included: a series of third-party prior art depositions, an inventor deposition, five depositions of party witnesses in the US, and two depositions of party witnesses overseas (in Hong Kong and Korea).. At the time of the stay, other party and non-party depositions were scheduled, as discussed below. III. IMPACT OF THE FEDERAL CIRCUIT S DECISION 0 0 The Federal Circuit materially changed the construction of the entire oscillator term in such a manner that PDS can continue to prosecute the above-mentioned cases. As discussed above, the Parties submitted a single term to Judge Grewal for construction an entire oscillator disposed upon said integrated circuit substrate. The Parties differences did not center on the affirmative meaning of the term. Instead, the point of dispute between the Parties was on the existence/scope of two disclaimers of claim scope based on statements made by the persons prosecuting the Patent in - (i.e., Defendants contended that statements were made to the Patent Office that narrowed the meaning of entire oscillator ). On September, 0, Judge Grewal issued his Report and Recommendation regarding the construction of the entire oscillator term. Judge Grewal construed the term as an oscillator located entirely on the same semiconductor substrate as the central processing unit that [] does not require a control signal and [] whose frequency is not fixed by any external crystal. This construction was different than the construction set forth by Judge Grewal of the same term in the HTC case. Based on this new construction, PDS stipulated to non-infringement as to all of the accused products, and sought review of this construction. PDS first filed a Motion for De Novo Determination of a Dispositive Matter Referred to Magistrate Judge regarding the construction to this Court, then appealed the construction to the Federal Circuit. The Parties argued their case to the Federal Circuit on December, 0. On PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of March, 0, the Federal Circuit issued its (precedential) opinion revising one of the two disclaimers found by Judge Grewal, and further explained the meaning of the other. The Federal Circuit s complete construction of the term entire oscillator is an oscillator located entirely on the same semiconductor substrate as the central processing unit that [] does not require a command input to change the clock frequency and [] whose frequency is not fixed by any external crystal. A comparison of the two constructions is presented below: 0 Judge Grewal an oscillator located entirely on the same semiconductor substrate as the central processing unit that does not require a control signal and whose frequency is not fixed by any external crystal. Federal Circuit an oscillator located entirely on the same semiconductor substrate as the central processing unit that does not require a command input to change the clock frequency and whose frequency is not fixed by any external crystal. 0 With respect to the disclaimer whose frequency is not fixed by any external crystal, the Federal Circuit explained what the Court s wording encapsulates. The Federal Circuit explained that () the entire oscillator must be a variable frequency oscillator rather than a fixed-frequency crystal, and () the entire oscillator cannot require an external crystal or frequency generator. The explanation from the Federal Circuit provides clarity surrounding Judge Grewal s construction that should guide both the Parties and this Court going forward. The problem with Judge Grewal s construction as it applied to PDS s infringement theories dealt with the portion of the construction that prevented the entire oscillator from requir[ing] a control signal. This is the portion of the construction that was altered by the PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of 0 0 Federal Circuit. The entire oscillator is part of a system known as a phase locked loop. This system supplies a control signal to the oscillator to regulate the frequency of the oscillator. The Federal Circuit modified this construction to now prohibit the oscillator from requiring a command input to change frequency. This is a much more limited disclaimer. Based on this narrowed disclaimer, PDS s case can continue. Further, while the disclaimer requiring the frequency of the entire oscillator not be fixed by an external crystal was not changed, the Federal Circuit s clarifying comments about this disclaimer are also helpful to PDS s case. PDS anticipates that Defendants will make much of the second to last sentence of the Federal Circuit s opinion where the Federal Circuit posited that the altered construction may not change the ultimate determination of infringement. PDS notes that this sentence is dicta, that the Federal Circuit was not reviewing any kind of factual record on which it could make a determination as to the impact of the altered construction (and which is why it remanded the case), and, based on questions at oral argument, the Federal Circuit misunderstood some of the technical issues at issue in this case. In light of the foregoing, PDS believes the most prudent course of action is to set aside the Federal Circuit s dicta on the effect of its decision in favor of the Parties presenting actual evidence on the issue of infringement so that a fact finder can make an informed decision. IV. PLAN FOR FURTHER PROCEEDINGS Prior to filing this Case Management Statement, counsel for a particular Defendant contacted PDS s counsel to find out how PDS was going to proceed with this lawsuit. PDS informed this Defendant that it believes the Federal Circuit s opinion was a positive outcome for PDS and that it was going to proceed with the cases. On that call, PDS suggested that the Parties confer about the schedule presented below prior to filing this Statement, so that any areas of agreement could be noted and certain issues streamlined. PDS sent a version of the schedule PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of 0 0 below to Defendant s counsel, for distribution to the rest of the Defendants, on Friday, April, 0, along with a request for a follow-up call. As of the filing of this Statement, PDS had not heard back from any of the Defendants about PDS s proposed schedule. In the same email, PDS also raised the issue of an early summary judgment process if Defendants believed, in light of the Federal Circuit s opinion, that they were in possession of facts fatal to PDS s case and which were ripe for a summary judgment motion. After sending the email on April, PDS s counsel has spoken with certain Defendants counsel. In those calls, PDS was made aware that at least some Defendants believe that PDS s case is fatally flawed in light of the Federal Circuit opinion. If Defendants believe that they are in possession of facts that are case dispositive, PDS would like to dispose of these issues through an early summary judgment process before engaging in the discovery set out below. Defendants will have their issues heard at some point and PDS believes that addressing any case dispositive issues Defendants currently believe exist will potentially save everyone time and money. While a number of factual issues remain to be discovered, the basics of how the accused systems operate are not really in dispute. Thus, while the factual record may not be complete, it very well may be complete enough to proceed with an early summary judgment motion. PDS represents that it is willing to work in good faith to stipulate to any uncontroverted facts as to the operation of the accused systems so as to allow Defendants to file summary judgment motions sooner rather than later to provide for the efficient handling of these cases. Turning now to the remaining fact discovery that needs to be taken, when the Parties entered into their stipulation, there was less than a month left in the schedule to complete fact discovery. At the time of the stipulation, PDS had scheduled 0(b)() depositions of Samsung, ZTE, Nintendo, and Qualcomm (a third party in these actions), among others. The Samsung PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page 0 of 0 0 depositions were to take place in Korea, the ZTE depositions were set to take place in Hong Kong, the Nintendo depositions were set to take place in the U.S. Embassy in Osaka, Japan (as required by Japanese law), and the Qualcomm deposition was set to take place outside of San Diego, California. Further, it had sent deposition subpoenas to NVidia (another third party) and IBM (another third party) and was actively working with counsel for those two companies to schedule depositions. PDS s plan for further proceedings is straight-forward. In the absence of an early summary judgment process, a period of time should be established to complete fact discovery, followed by the usual expert discovery, dispositive motion practice, and pretrial period. PDS proposes the schedule set forth below: Event Date Fact Discovery Cut-Off October 0, 0 Opening expert reports due November, 0 Rebuttal expert reports due December, 0 Close of expert discovery January, 0 Last day to file summary judgment motions February, 0 Summary Judgment hearing April, 0 The five months of fact discovery requested by PDS will allow for the orderly processing of the remaining fact discovery to take place, examples of which include: - Rescheduling and taking the depositions of third parties Qualcomm, NVidia, and IBM; - Rescheduling and taking the 0(b)() depositions of Samsung in Korea and ZTE in Hong Kong; - Rescheduling and taking of Nintendo depositions in Japan (the scheduling of depositions PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of 0 0 in Japan is a lengthy process, as rooms in the U.S. Embassy are limited and have to be reserved, and those reservations have to coincide with the availability of Nintendo s designated corporate representatives); - Possibly amending PDS s infringement contentions in light of the Federal Circuit s construction of the term entire oscillator (PDS is actively considering this possibility but has not made a decision at this time); and - Reviewing Defendants recent document production (as well as the documents that are to be produced), and, if necessary, conducting various meet and confers regarding the sufficiency of the various Defendants document productions and interrogatory responses. The foregoing is not an exhaustive list. Rather, it is provided to give the Court a sense of the significant discovery that remains to be conducted. After the five months of fact discovery, PDS proposes the Parties then proceed to exchange expert reports and file dispositive motions in a typical fashion. PDS anticipates Defendants proposing a shorter time to complete fact discovery. PDS suspects that Defendants will point out that PDS asked for additional time to complete fact discovery prior to entering into the stipulation, and that Judge Grewal did in fact add an additional month on to the schedule (which was two months less than requested by PDS) (PDS s letter brief to Judge Grewal on this topic is found at Dkt. No., while Defendants response is found at Dkt. No. ). Defendants will also probably point out that there was less than a month left in the fact discovery period when this case was stayed, and that allowing an additional fourplus months now is unwarranted. PDS s response to this type of argument is that rescheduling all of the depositions will take time, especially the third party depositions, where PDS must accommodate the schedules of non-litigants. Also, scheduling depositions in Japan typically takes months, given the logistics PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
Case :-cv-0-vc Document Filed 0/0/ Page of 0 involved. Further, given that some Defendants are still in the process of producing key documents, PDS should have a chance to review those documents and seek relief if the production is not sufficient. In sum, these cases have been pending since 0. Providing for a discovery period that allows for the orderly taking of discovery outweighs rushing through an shortened schedule that causes undue inconvenience for the Court, the Parties, and non-litigants, and which invites motion practice in order to preserve a Party s positions. Finally, for the Court s convenience, PDS notes that it is willing to consider consent to jurisdiction of a magistrate judge should such consent be requested. 0 Dated: May, 0 Respectfully Submitted, /s/ Barry J. Bumgardner NELSON BUMGARDNER, P.C. Edward R. Nelson, III (Pro Hac Vice) ed@nelbum.com Brent Nelson Bumgardner (Pro Hac Vice) brent@nelbum.com Barry J. Bumgardner (Pro Hac Vice) barry@nelbum.com Thomas Christopher Cecil (Pro Hac Vice) tom@nelbum.com John Murphy (Pro Hac Vice) murphy@nelbum.com West th Street, Suite 00 Fort Worth, Texas 0 [Tel.] () - [Fax] () - BANYS, P.C. Christopher D. Banys (SBN 00) cdb@banyspc.com Jennifer Lu Gilbert (SBN 0) jlg@banyspc.com 0 Elwell Court, Suite 00 Palo Alto, California 0 [Tel.] (0) 0-0 [Fax] (0) -0 ATTORNEYS FOR PLAINTIFF PHOENIX DIGITAL SOLUTIONS, LLC PLAINTIFFS CASE MANAGEMENT STATEMENT 0 CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC
0 0 Case :-cv-0-vc Document Filed 0/0/ Page of /s/ Charles T. Hoge (with permission) KIRBY NOONAN LANCE & HOGE LLP Charles T. Hoge (SBN 0) choge@knlh.com 0 Tenth Avenue, Suite 00 San Diego, California 0 [Tel.] () - Attorneys for Plaintiff PATRIOT SCIENTIFIC CORPORATION /s/ William L. Bretschneider (with permission) SILICON VALLEY LAW GROUP William L. Bretschneider (SBN ) wlb@svlg.com 0 W. San Fernando Street, Suite 0 San Jose, California [Tel.] (0) -00 [Fax] (0) -0 Attorneys for Plaintiff TECHNOLOGY PROPERTIES LIMITED, LLC CERTIFICATE OF SERVICE I hereby certify that on May, 0, I caused the foregoing document to be served on counsel of record via the Court s CM/ECF system. Dated: May, 0 By: /s/ Barry J. Bumgardner Barry J. Bumgardner PLAINTIFFS CASE MANAGEMENT STATEMENT CASE NOS. -cv-0-vc, -0-VC, -0-VC, -00-VC, -0-VC