Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 1 of 14 PageID 8774 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA ORLANDO DIVISION PARKERVISION, INC., PLAINTIFF, v. CASE NO.:6:14-cv-00687-PGB-KRS QUALCOMM INCORPORATED, QUALCOMM ATHEROS, INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., AND SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, DEFENDANTS. PARKERVISION S MOTION TO AMEND THE CASE MANAGEMENT AND SCHEDULING ORDER AND REQUEST FOR EXPEDITED BRIEFING
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 2 of 14 PageID 8775 TABLE OF CONTENTS I. INTRODUCTION...1 II. LEGAL STANDARD...2 III. ARGUMENT...3 A. Final Contentions and Expert Disclosures Will Benefit from Claim Construction...5 B. Avoidance of Potentially Unnecessary Discovery and Expert Opinion For Receiver Claims...6 C. The Modified Schedule Aligns With the Inter Partes Review Proceeding...7 IV. REQUEST FOR EXPEDITED BRIEFING...8 V. CONCLUSION...9 i
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 3 of 14 PageID 8776 TABLE OF AUTHORITIES CASES Page(s) Auto-Owners Ins. Co. v. Ace Elec. Serv., 648 F. Supp. 2d 1371 (M.D. Fla. 2009)...2 Gollihue v. R.J. Reynolds Tobacco Co., 2012 U.S. Dist. LEXIS 12071 (M.D. Fla. Jan. 27, 2012)...3, 4 ParkerVision, Inc. v. Qualcomm, Inc., No. 3:11-cv-719-J-37TEM, Doc. No. 178 at 2 (M.D. Fla. Oct. 14, 2012)...6, 7 Shire Dev., LLC v. Mylan Pharms., Inc., 2015 U.S. Dist. LEXIS 22731 (M.D. Fla. Feb. 24, 2015)...5 OTHER AUTHORITIES Fed. R. Civ. P. 6(b)(1)(A)...1 Fed. R. Civ. P. 16(b)(4)...1, 2 Fed. R. Civ. P. 26(f)...1 Local Rule 3.05(c)...1 ii
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 4 of 14 PageID 8777 Pursuant to Fed. R. Civ. P. 6(b)(1)(A) and 16(b)(4), Plaintiff ParkerVision, Inc. moves to amend the Case Management and Scheduling Order (Doc. No. 92) (previously amended at Doc. Nos. 58, 143, and 223) and requests an expedited briefing schedule for this Motion. I. INTRODUCTION ParkerVision generally seeks to extend the current deadlines in the Case Management and Scheduling Order by three months as shown in the table below. ParkerVision seeks this extension to allow the parties and the Court further time for consideration of the claim construction issues addressed at the August 12, 2015 claim construction hearing, the additional claim construction issues addressed by the Williamson briefing, the issues raised by ParkerVision s Motion to Sever and Stay, the issues raised in the Joint Statement of the parties regarding issue preclusion and collateral estoppel, the issues raised by Defendants pending inter-partes review of some of the patents and claims, ParkerVision s ongoing efforts to appeal the adverse result in ParkerVision I, and ParkerVision s continuing efforts to narrow the case. The current scope of the case, including the issues to be addressed by the experts in the forthcoming expert reports (due January 19, 2016 under the current schedule), is unclear and may change in significant regard in the coming weeks and even after the current expert report deadline. The requested extension will allow time to clarify the issues identified in this motion, which will in turn enable the parties to proceed most efficiently with the claims at issue, to reduce the cost and burden on the parties and the Court, and to allow for more informed expert disclosures. These reasons constitute good cause under Rules 6(b)(1)(A) and 16(b)(4) to amend the dates. ParkerVision proposes the following amended dates and discovery plan pursuant to Fed. R. Civ. P. 26(f) and Local Rule 3.05(c): 1
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 5 of 14 PageID 8778 DEADLINE OR EVENT CURRENT DATE PROPOSED DATE Disclosure of Intent to Rely on Advice of Counsel as a Defense; Amendment of Infringement, Non-infringement, and Invalidity Contentions Jan. 19, 2016 April 18, 2016 Disclosure of Expert Reports on Issues Where the Party Bears the Burden of Proof Jan. 19, 2016 April 18, 2016 Fact Discovery Deadline Mar. 18, 2016 April 18, 2016 1 Disclosure of Rebuttal Expert Reports Feb. 19, 2016 May 20, 2016 Expert Discovery Deadline Mar. 18, 2016 June 17, 2016 Dispositive Motions and Daubert Motions April 12, 2016 July 15, 2016 Parties Deadline to Meet and Confer In Person to Prepare Joint Final Pretrial Statement Parties Deadline for Filing Joint Final Pretrial Statement Deadline for Filing All Other Motions Including Motions In Limine June 2, 2016 Sept. 1, 2016 June 16, 2016 Sept. 16, 2016 June 30, 2016 Sept. 30, 2016 Final Pretrial Conference July 19, 2016 Oct. 18, 2016 Trial Term Begins Aug. 1, 2016 Oct. 31, 2016 Mediation Deadline Feb. 26, 2016 May 27, 2016 II. LEGAL STANDARD The Court may choose to modify the Case Management and Scheduling Order upon a showing of good cause. See Fed. R. Civ. P. 16(b)(4). The good cause standard requires a showing of diligence. Auto-Owners Ins. Co. v. Ace Elec. Serv., 648 F. Supp. 2d 1371, 1377-78 1 ParkerVision believes that the deadline for fact discovery does not need to extend past the deadline for service of expert reports. At that point, the parties should have concluded fact discovery so that all facts can be considered and evaluated in the expert reports. 2
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 6 of 14 PageID 8779 (M.D. Fla. 2009) (citing Sosa v. Airprint Sys., 133 F.3d 1417, 1418 (11th Cir. Fla. 1998)). Courts in this District also consider all of the circumstances of the case, including facts external to the parties conduct. Gollihue v. R.J. Reynolds Tobacco Co., 2012 U.S. Dist. LEXIS 12071, at *6 (M.D. Fla. Jan. 27, 2012) (quoting Auto-Owners Ins. Co., 648 F. Supp. 2d at *1377-78)). III. ARGUMENT The Markman Hearing was held on August 12, 2015 and the parties followed up with a Joint Statement regarding the applicability of the recent Williamson case to the construction of certain claim terms. See Doc. Nos. 198 and 216 at 1-5. A claim construction order has not yet been entered. In the interim, ParkerVision has diligently proceeded with pursuing discovery and requesting (in September 2015) that the Court address the status of its receiver patents and claims by entering an order severing and staying those claims until there is finality in ParkerVision I. See Doc. No. 218. At the same time, the Defendants asserted that issue preclusion and collateral estoppel bar ParkerVision s infringement claims with respect to the receiver patents and claims and proposed a schedule (not yet entered by the Court) for briefing this issue. See Doc. No. 216. ParkerVision is also appealing the adverse result of ParkerVision I and Defendants have requested inter-partes review of some of ParkerVision s patents and claims (see Doc. No. 219). Finally, ParkerVision has continued to narrow the scope of this case by voluntarily dropping patents and claims an effort largely unreciprocated by the Defendants. See Doc. No. 228. 2 2 ParkerVision also has an outstanding Motion to Compel against Samsung, who has produced only a handful of non-public documents. See Doc. No. 225. Resolution of the Motion to Compel, particularly if Samsung is ordered to produce additional documentation, will impact ParkerVision s expert reports regarding Samsung, providing further cause for the requested extension. 3
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 7 of 14 PageID 8780 In light of the foregoing, a number of issues that remain unresolved consisting almost entirely of facts external to the parties conduct will have a significant impact on the scope of the case and expert disclosures. See Gollihue, 2012 U.S. Dist. LEXIS 12071, at *6. These outstanding issues will have a significant impact on the scope of this case and the issues to be addressed in the expert disclosures, are external to the discovery conduct of the parties, and require guidance from this Court, the Supreme Court, or the Patent Office. These outstanding issues thus warrant modifications to the Case Management and Scheduling Order in order to allow the parties to proceed as efficiently as possible in completing discovery and in preparing expert reports that fairly address the issues likely to be in this case at trial. 3 Currently the parties final infringement/invalidity contentions and expert reports are due on January 19th and the parties are in the midst of scheduling and taking depositions. The pending claim construction issues and open questions regarding ParkerVision s Motion to Sever and Stay, Defendants anticipated motion for summary judgment of issue preclusion and collateral estoppel and the impact of the Defendant-requested inter-partes review of some of ParkerVision s patents create uncertainty as to how the parties should proceed with discovery and expert reports and what issues should or should not be included therein. An extension of the deadlines in this case will permit this Court, the Supreme Court, and the Patent Office the time to provide the guidance needed to resolve these open questions so that the parties may efficiently proceed with discovery and expert reports. 3 While the purposes of this motion would be accomplished by modifying only the deadline for service of expert reports, the deadlines set forth in the Case Management and Scheduling Order will not allow for such an extension without also extending other case deadlines. See Doc. Nos. 92 and 223. 4
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 8 of 14 PageID 8781 A. Final Contentions and Expert Disclosures Will Benefit from Claim Construction Granting an extension of the dates set forth in the Case Management and Scheduling Order will allow the Court additional time to consider and issue a claim construction order and allow time for the parties to digest and respond to the claim construction order in their final contentions and expert reports. Such extensions would preserve the Court s and the parties resources and simplify the issues in the case. See, e.g., Shire Dev., LLC v. Mylan Pharms., Inc., 2015 U.S. Dist. LEXIS 22731, *8 (M.D. Fla. Feb. 24, 2015) (concluding that granting the plaintiff s motion for an extension of discovery and case deadlines to provide the parties with the benefit of the Court s claim construction order would preserve the parties resources and simplify the issues, and would not unduly prejudice [the defendant]. ). Indeed, Qualcomm has previously recognized the importance of receiving a claim construction order in sufficient time to consider the claim construction order in advance of key dates such as the deadline for serving amended infringement/invalidity contentions, expert reports, and summary judgment motions. Specifically, in the Joint Motion to Extend Deadlines that Will Be Impacted By The Claim Construction Ruling in ParkerVision I, Qualcomm joined ParkerVision in requesting an extension of the deadlines set forth in the Case Management and Scheduling Order because: 3. ParkerVision and Qualcomm s decisions on whether to serve amended Contentions must be based on their good faith belief that the Court s claim construction ruling requires amendment. ParkerVision and Qualcomm therefore request that the deadlines for amending their Contentions be extended approximately one month. 4. The amended Contentions, together with the Court s claim construction ruling, may also (i) require additional discovery, (ii) impact expert opinions, and (iii) impact the parties decisions regarding motions for summary judgment. 5
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 9 of 14 PageID 8782 ParkerVision, Inc. v. Qualcomm, Inc., No. 3:11-cv-719-J-37TEM, Doc. No. 178 at 2 (M.D. Fla. Oct. 14, 2012). Claim construction will impact the opinions issued by the experts and it may impact the claims asserted by ParkerVision and the alleged prior art asserted by Defendants. If the parties proceed with serving final infringement/invalidity contentions and filing expert reports on January 19 without having yet received a claim construction order or without having sufficient time to consider the claim construction order, then the contentions and expert reports will likely need to include alternative contentions or opinions, i.e., a set of opinions as to validity/invalidity and infringement/non-infringement assuming that the Court adopts ParkerVision s proposed constructions and another set assuming that the Court adopts Defendants proposed constructions. Including such alternative opinions in expert reports requires unnecessary time and expense by the parties. Or if the Court adopts a claim construction different from one proposed by either party, the parties experts would then have no choice but to amend and potentially re-work the bulk of the expert reports after receiving claim construction. Accordingly, postponing the deadline for filing expert reports in order to allow the Court additional time to enter a claim construction order will prove the most efficient course of action by saving time and expense that would be necessary for the parties and their expert witnesses to consider, test, and draft alternative contentions and opinions. B. Avoidance of Potentially Unnecessary Discovery and Expert Opinion For Receiver Claims As explained in ParkerVision s Motion to Sever and Stay, ParkerVision seeks to avoid burdening the parties with discovery regarding certain receiver patents and claims that may (at least according to Defendants arguments) ultimately prove unnecessary if the Supreme Court denies ParkerVision s petition for certiorari. See Doc. No. 218 at 7. Accordingly, and in light of 6
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 10 of 14 PageID 8783 its request that the Court sever and stay the receiver patents and claims, ParkerVision has generally voluntarily suspended discovery regarding the receiver patents and claims in order to avoid pursuing discovery on patents and claims that may prove unnecessary in light of the Supreme Court s future certiorari decision and to prevent piecemeal discovery regarding the receiver patents and claims i.e., pursuing discovery immediately regarding patents and claims that ParkerVision contends would not be affected by ParkerVision I while suspending discovery on those that would be affected. But if ParkerVision must conduct complete discovery and fully address all of its receiver patents and claims as Defendants seem to contend ParkerVision will have no choice but to move forward on receiver discovery (and subject the parties to the burden and expense associated therewith) in order to include that information in its expert reports under the current schedule. See id. C. The Modified Schedule Aligns With the Inter Partes Review Proceeding An additional (although secondary) consideration is the parallel inter partes review proceeding before the Patent and Trademark Office ( PTO ). See Doc. No. 219. Qualcomm has filed petitions for inter partes review before the PTO of certain patents and claims at issue in this litigation. See id. The PTO conducts an initial analysis to determine whether it will institute an inter partes review. If it decides to institute the inter partes review, the PTO will then evaluate the validity of the patents and claims before it. This evaluation of validity by the PTO would proceed in parallel to this litigation. If the PTO decides to institute inter partes review, the Defendants will likely request that the Court stay this litigation while the inter partes review proceeds. The PTO is expected to issue a decision as to whether it is instituting inter partes review on or around March 10, 2016. Thus, under ParkerVision s proposed modifications to the Case Management and Scheduling Order, the proceedings in this case and in the IPR would be more 7
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 11 of 14 PageID 8784 closely aligned. Should the PTO institute inter partes review for some of the patents or claims at issue in this litigation although ParkerVision vigorously contends that it should not the threemonth extension to the deadlines proposed by ParkerVision would allow the parties the opportunity to complete expert reports and consider whether to request a stay of this case in advance of conducting expert discovery, dispositive and Daubert motion practice, and pre-trial preparations. IV. REQUEST FOR EXPEDITED BRIEFING ParkerVision respectfully requests that the Court issue an expedited briefing schedule on this Motion and address the Motion on an expedited basis. Expedited briefing on this Motion is appropriate in light of the upcoming deadlines. Currently the parties final infringement and invalidity contentions and opening expert reports are due to be served on January 19, 2016. In this Motion, ParkerVision seeks a three month extension of all dates set forth in the current Case Management and Scheduling Order to provide additional time for the issuance and analysis of a claim construction order and guidance from the Court as to ParkerVision s receiver claims, which will permit the parties to most efficiently proceed with serving final contentions and expert reports. Time is of the essence because under the standard briefing schedule, the Defendants will not even file their responsive brief until December 28 just three weeks before the January 19th deadline. Even if the Court were to rule on the Motion at that time, the parties would not receive the full benefit of the requested extensions because the January 19 date for service of final contentions and expert reports would be imminent. In light of the foregoing, ParkerVision requests that the Court set the deadline for Defendants brief in opposition, if any, to ParkerVision s Motion to Amend the Scheduling Order for Friday, December 18, 2015. 8
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 12 of 14 PageID 8785 V. CONCLUSION ParkerVision respectfully requests that the Court amend the schedule as set forth above. 9
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 13 of 14 PageID 8786 December 10, 2015 Respectfully submitted, McKOOL SMITH, P.C. /s/ Douglas A. Cawley Douglas A. Cawley, (Trial Counsel, pro hac vice) Texas State Bar No. 04035500 E-mail: dcawley@mckoolsmith.com Richard A. Kamprath (pro hac vice) Texas State Bar No. 24078767 E-mail: rkamprath@mckoolsmith.com McKool Smith P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Telecopier: (214) 978-4044 Kevin L. Burgess (pro hac vice) Texas State Bar No. 24006927 E-mail: kburgess@mckoolsmith.com Joshua W. Budwin (pro hac vice) Texas State Bar No. 24050347 E-mail: jbudwin@mckoolsmith.com Leah Buratti (pro hac vice) Texas State Bar No. 24064897 E-mail: lburatti@mckoolsmith.com Kathy H. Li (pro hac vice) Texas State Bar No. 24070142 E-mail: kli@mckoolsmith.com Mario Apreotesi (pro hac vice) Texas State Bar No. 24080772 E-mail: mapreotesi@mckoolsmith.com Puneet Kohli Texas Bar No. 24090523 pkohli@mckoolsmith.com McKool Smith P.C. 300 West Sixth Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Telecopier: (512) 692-8744 SMITH HULSEY & BUSEY /s/ James A. Bolling Stephen D. Busey James A. Bolling Florida Bar Number 117790 Florida Bar Number 901253 Smith Hulsey & Busey 225 Water Street, Suite 1800 Jacksonville, Florida 32202 (904) 359-7700 (904) 359-7708 (facsimile) busey@smithhulsey.com jbolling@smithhulsey.com McKOOL SMITH HENNIGAN, P.C. Michael G. Flanigan Illinois State Bar No. 6309008 mflanigan@mckoolsmith.com 255 Shoreline Drive, Suite 510 Redwood Shores, CA 94065 Telephone: (650) 394-1400 Facsimile: (650) 394-1422 ATTORNEYS FOR PARKERVISION, INC. 10
Case 6:14-cv-00687-PGB-KRS Document 229 Filed 12/10/15 Page 14 of 14 PageID 8787 CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the above and foregoing document has been served on all counsel of record via the Court s ECF system on December 10, 2015. /s/ Leah Buratti Leah Buratti CERTIFICATE OF CONFERENCE I hereby certify that pursuant to Local Rule 3.01(g), on December 9, 2015 counsel for ParkerVision telephonically conferred with counsel for Defendants, who object to the relief sought in this Motion. /s/ Leah Buratti Leah Buratti 11