Case 3:15-cv-01477-BJD-JRK Document 48 Filed 05/04/17 Page 1 of 6 PageID 2268 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., ) Plaintiff, ) v. Case No. 3:15-cv-1477-39-JRK ) APPLE INC.,et al., ) Defendants. ) PARKERVISION S MOTION TO OPEN THE CASE AND LIFT STAY Plaintiff ParkerVision, Inc. moves the Court to lift the stay and place the case on the active docket, pursuant paragraphs 2 and 3 of the Court s February 12, 2016 order staying this action (Doc. 41). The parallel ITC Investigation has been terminated, and the grounds for a stay under 28 U.S.C. 1659 no longer exist. ParkerVision also requests that the Court order the parties to conduct a Rule 16 conference within 10 days of lifting the stay, and to file a case management report within 14 days of the Rule 16 conference. Local Rule 3.05 envisions the parties holding this conference regardless of any pending motions or procedural questions. This is a civil action against Defendants Apple Inc., Qualcomm Incorporated, LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG
Case 3:15-cv-01477-BJD-JRK Document 48 Filed 05/04/17 Page 2 of 6 PageID 2269 Electronics MobileComm U.S.A, Inc. for the infringement of four ParkerVision patents. 1 On December 15, 2015, ParkerVision filed a Complaint in the U.S. International Trade Commission ( ITC ), requesting that the ITC institute an investigation against Defendants under Section 337 of The Tariff Act of 1930, as amended (the ITC Complaint ). In the ITC Complaint, ParkerVision asserted infringement of the same four patents that are at issue in this case. On January 15, 2016, the ITC issued a Notice of Institution of Investigation entitled Certain RF Capable Integrated Circuits and Products Containing the Same, Investigation No. 337-TA-982 ( ITC Investigation ). Pursuant to 19 C.F.R. 210.10(b), the ITC Investigation was instituted by publication of the Notice of Institution in the Federal Register on January 21, 2016. On February 9, 2016, Defendants filed an Unopposed Motion to Stay in this action pursuant to 28 U.S.C. 1659 (Doc. 40), requesting this Court to stay this action until the ITC Investigation was terminated. This Court granted the motion on February 12, 2016 (Doc. 41), staying this action pending a final determination of the International Trade Commission (para. 2). On March 13, 2017, ParkerVision filed a Motion to Terminate the ITC Investigation based on withdrawal of the ITC Complaint. On April 3, 2017, the Administrative Law Judge issued an Initial Determination granting ParkerVision s 1 A Stipulation of Dismissal without Prejudice as to Samsung Defendants was filed on July 22, 2016. 2
Case 3:15-cv-01477-BJD-JRK Document 48 Filed 05/04/17 Page 3 of 6 PageID 2270 motion (the Initial Determination; attached as Exhibit 1). On April 28, the ITC declined to review the Initial Determination, resulting in a final determination terminating the Investigation, attached as Exhibit 2. The Court s discretion to stay litigation is based on its inherent power to control its docket. That same power allows the Court to lift the stay. Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988). According to 28 U.S.C. 1659, the statute that compelled this Court to enter a stay because of the ITC Investigation, grounds for a stay no longer exist. The Court stayed this action pending a final determination of the International Trade Commission and contemplated a motion to reopen filed by any party (paras. 2 and 3). The final determination of the ITC occurred on April 28, 2016. Thus the Court should lift the stay and place this action on the Court s active docket. The Court should further order the parties to conduct a Rule 16 conference within 10 days of lifting the stay, and file a case management report within the following 14 days. This action will be designated as a Track Two or Three Case. In either event, Local Rule 3.05(c) requires the parties attorneys to conduct a Rule 16 conference within 60 days of service of process on any defendant regardless of any pending motions, such as motions to dismiss: (c) The following procedures shall apply depending upon the Track to which a case has been designated: * * * (2) Track Two Cases - - * * * 3
Case 3:15-cv-01477-BJD-JRK Document 48 Filed 05/04/17 Page 4 of 6 PageID 2271 (B) Counsel and any unrepresented party shall meet within 60 days after service of the complaint upon any defendant, or the first appearance of any defendant, regardless of the pendency of any undecided motions, for the purpose of preparing and filing a Case Management Report in the form prescribed below. Unless the Court orders otherwise, parties represented by counsel are permitted, but are not required, to attend the case management meeting. The Case Management Report must be filed within 14 days after the meeting. Unless otherwise ordered by the Court, a party may not seek discovery from any source before the meeting. * * * (3) Track Three Cases - - (A) The provisions of subsections (c)(2)(a),(b) and (c)(i)-(vii) of this rule shall apply to all Track Three Cases. Local Rule 3.05(c) (emphasis added). Pursuant to Local Rule 3.01(c), February 21, 2016 would have been the deadline for the attorneys to meet to address a case management report. Defendants LG Electronics U.S.A., Inc. and QUALCOMM Incorporated were served with process on December 23, 2015 (Docs. 15 and 17) (February 21, 2016 is 60 days after December 23, 2015). But in the meantime, the Court entered the order staying the case on February 12, 2016 (Doc. 41). There were only nine days of the 60 day deadline remaining when the Court stayed the case. 2 2 Because of defendants partial objection to the relief requested by this motion, the Court will likely wait another 14 days pursuant to Local Rule 3.01(b) to consider whatever memoranda defendants file in opposition to this motion. With ParkerVision s requested requirement that the attorneys meet and confer within ten days of an order lifting the stay, the end of the Court s original stay (the April 28, 2016 final determination of the International Trade Commission ) will have been passed by at least a month. 4
Case 3:15-cv-01477-BJD-JRK Document 48 Filed 05/04/17 Page 5 of 6 PageID 2272 Local Rule 3.01(g) certification Counsel for ParkerVision has conferred with counsel for defendants. Defendants do not oppose the administrative step of reopening the case but oppose ParkerVision s motion on the grounds that it is premature and contrary to the Court s February 12, 2016 Order (Doc. 41). Defendants will separately comply with the Court s February 12, 2016 Order. Also, given that that most of the parties have not responded to the Complaint, defendants oppose the request for a Case Management Conference because it too is premature. MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO PC By /s/ Michael J. McNamara Michael J. McNamara Michael T. Renaud (Mass BBO No. 629783) James M. Wodarski (Mass BBO No. 627036) Michael J. McNamara (Mass BBO No. 665885) Kristina R. Cary (Mass BBO No. 688759) Daniel B. Weinger (Mass BBO No. 681770) Boston, MA 02111 Tel: (617) 542-6000 Facsimile: (617) 542-2241 MTRenaud@mintz.com JWodarski@mintz.com MMcNamara@mintz.com KRCary@mintz.com DBWeinger@mintz.com SMITH HULSEY & BUSEY By /s/ James A. Bolling Stephen D. Busey James A. Bolling Florida Bar Number 117790 Florida Bar Number 901253 225 Water Street, Suite 1800 Jacksonville, Florida 32202 (904) 359-7700 (904) 359-7708 (facsimile) busey@smithhulsey.com jbolling@smithhulsey.com Attorneys for ParkerVision, Inc. 5
Case 3:15-cv-01477-BJD-JRK Document 48 Filed 05/04/17 Page 6 of 6 PageID 2273 Certificate of Service I certify that on May 4, 2017, I electronically filed the foregoing with the Clerk of Court by using the CM/ECF system. I further certify that I mailed the foregoing document and the notice of electronic filing by first-class mail to the following non-cm/ecf participants: none. /s/ James A. Bolling Attorney 68808724v.3 6
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