New Pacer--THIRD SUPPLEMENTAL JOINT CASE MANAGEMENT CONFERENCE
STATEMENT
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA - SAN JOSE DIVISION ACER, INC., ACER AMERICA CORPORATION AND GATEWAY, INC.,
Plaintiffs,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION,
and ALLIACENSE LIMITED,
Defendants..
THIRD SUPPLEMENTAL JOINT CASE MANAGEMENT CONFERENCE
STATEMENT
Date: February 12, 2010
Time: 10:30 a.m.
Dept: Courtroom 3, 5th Floor
Before: Honorable Jeremy Fogel
HTC CORP. AND HTC AMERICA, INC.,
Plaintiffs,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION,
and ALLIACENSE LIMITED,
Defendants.
BARCO, N.V.
Plaintiffs,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION,
and ALLIACENSE LIMITED,
Defendants.
Plaintiffs Acer, Inc., Acer America Corporation and Gateway, Inc. (“Acer”), HTC Corp. and HTC America, Inc. (“HTC”) and Barco N.V. (“Barco”) (collectively, the “Plaintiffs”), along with Defendants Technology Properties Limited (“TPL”), Patriot Scientific Corporation, and Alliacense Limited (collectively, the “Defendants”), hereby submit the following Third
Supplemental Joint Case Management Conference Statement (“CMC Statement”) in advance of the Conference scheduled for February 12, 2010.
Procedural Background
On May 1, 2009, Plaintiff Acer filed a Motion to Stay All Proceedings Pending Reexamination of the Patents-In-Suit. HTC filed a similar motion in the related action, 5:08-cv-00882 JF. On June 17, the Court granted a ninety-day stay in the Acer and HTC cases, and sua sponte ordered a corresponding stay in the matter of Barco v. TPL et al. (Case No. 5:08-cv-05398 JF) (the “Barco Matter”). On September 18, 2009, the Court held a case management conference (“CMC”) and considered the parties’ request to maintain the stay in this litigation. Ultimately, the Court decided to maintain the stay until a subsequent case management conference set on November 6, 2009, in which the Court will decide whether or not to continue maintaining the stay. The Court subsequently postponed the case management conference by one week and set it on November 13, 2009. The Court renewed the 90-day stay at the request of TPL, Acer, and HTC. A case management conference has been set for February 12, 2010 in which the Court would decide whether or not to continue maintaining the stay. During the November 2009 CMC, Barco requested that the Court lift the stay as to U.S. Patent No. 5,784,584 (the “’584 Patent”), based upon the fact that a reexamination certificate had issued in July of 2009. Barco also stated it intended to file a motion for summary judgment of noninfringement based on a prior court ruling. As part of their answers to Plaintiffs’ declaratory judgment claims, Defendants asserted as an affirmative defense that Plaintiffs had infringed all the patents-in-suit. See e.g. Case No. 5:08-cv-00877, Dkt. # 99 at p. 5, line 11-12. The Court ordered that TPL “will decide within 30 days whether it [is] going to assert a counterclaim on the ’584 [P]atent. If so, [TPL] will notify counsel and file the counterclaim forthwith. If it decides not to then the stay is l fted as to the ’584 so that … the declaratory plaintiff can bring a motion for summary judgment.” 11/13/2009 Tr. at 10:1-8. On December 10, 2009, TPL filed a motion to dismiss Barco’s claim for declaratory judgment as to the ’584 Patent on the basis of lack of subject matter jurisdiction. On January 22, 2010, Barco filed its opposition to TPL’s motion to dismiss. On January 29, 2010, TPL filed its reply brief in support of its motion to dismiss. Along with its reply brief, TPL filed a signed covenant not to sue on the ’584 Patent in favor of Barco only. TPL has not taken similar action with respect to Acer or HTC. The hearing for this motion has been set for February 12, 2010, the same time as the CMC for which this CMC Statement is prepared. Current Status of Patents-In-Suit
The five patents-in-suit have collectively been the subject of sixteen 16 separate requests for reexamination since September 2006. The following developments have occurred since the parties last reported to the Court on November 13, 2009.
1. U.S. Patent No. 5,809,336 (the “’336 Patent”) On December 15, 2009, the PTO issued a Reexamination Certificate for the ’336 Patent allowing twelve claims, among which six are amended claims (1, 2, 6, 7, 8 and 10) and the other six new claims (11-16) added during the reexamination proceedings. On November 14, 2009, the PTO granted a pending request for a reexamination on the ’336 Patent. Thus, there is one reexamination proceeding on the ’336 Patent currently pending before the PTO, which is expected to issue an Office action.
2. U.S. Patent No. 5,440,749 (the “’749 Patent”) On September 24, 2009, the PTO merged three (3) pending reexaminations into a single proceeding. The PTO issued a non-final Office action on November 19, 2009, rejecting asserted claims 1, 9 and 20 but affirming asserted claims 23 and 24 ultimately dependent from rejected claim 9. On January 19, 2010, TPL submitted a response to the non-final office action. This combined proceeding is still pending before the PTO, which is expected to issue an Office action.
3. U.S. Patent No. 6,598,148 (the “’148 Patent”) On October 2, 2009, the PTO merged the two (2) pending reexaminations into a single proceeding. On December 11, 2009, the PTO issued a non-final office action rejecting claims 4, 6, 7, 11, and 13-15 and canceling asserted claims 8 and 10 (i.e., currently all asserted claims have been either rejected or cancelled). The deadline for TPL to file its response to this office action is February 11, 2010. The proceeding is still pending before PTO.
4. U.S. Patent No. 5,530,890 Patent (the “’890 Patent”) The PTO issued a non-final Office action on November 5, 2009, rejecting asserted claims 1, 2 and 7 but affirming asserted claim 9 dependent from rejected claim 1. TPL filed its response on January 5, 2010. The PTO is currently considering TPL’s response, and is expected to issue an Office action.
5. U.S. Patent No. 5,784,584 (the “’584 Patent”) A Reexamination Certificate was issued on July 21, 2009 A new reexamination request against the ’584 Patent (filed on October 2, 2009) was denied on November 4, 2009. TPL has not filed any amended infringement contentions against any of the Plaintiffs as required by the Court. TPL has granted a covenant not to sue to Barco, but has not taken a position on the ’584 Patent
with regard to HTC or Acer. Plaintiff Acer and Barco’s Statement Now that reexamination certificates have issued for the ’336 and ’584 Patents, and there are responses to non-final office actions for the remaining patents-in-suit, Acer and Barco believe that the case is at a stage where it may proceed and the stay can be lifted. There has been sufficient development of the intrinsic record that a stay of the proceedings is no longer required.
Because all of the claims for the ’336 Patent have been amended and new claims added, there is a need for new infringement and invalidity contentions, disclosures of claim terms, and the filing of joint claim construction statement to address new claim language that has been added to the reexamined patents. Accordingly, Acer and Barco respectfully request that the following schedule be entered:
EVENT DATE / RULE (if applicable) Last Day to Serve Amended Disclosure of Asserted Claims and Preliminary Infringement Contentions (and related documents) for the ‘336 Patent February 22, 2010 (P.L.R. 3-1, 3-2) Last Day to Serve Amended Invalidity Contentions (and related documents) April 8, 2010 (P.L.R. 3-3, 3-4) Last Day to Exchange List of “Proposed Terms and Claim Elements for Construction” and “Preliminary Claim Constructions and Extrinsic Evidence for the ‘336 Patent April 30, 2010 (P.L.R. 4-2, 4-3) Last Day to File Joint Claim Construction and Prehearing Statement May 21, 2010 (P.L.R. 4-3)
Claim Construction Discovery Closes June 18, 2010
EVENT DATE / RULE (if applicable)
Defendants’ Opening Claim Construction Brief July 2, 2010
Plaintiffs’ Responsive Claim Construction Brief July 16, 2010
Defendants’ Reply Claim Construction Brief July 23, 2010 (P.L.R. 4-5c) Patent Technology Tutorial* *If requested by the Court* 20 days after Reply Claim Construction Brief Claim Construction Hearing [To Be Determined by the Court’s Schedule] Status Conference Three weeks after Claim Construction Hearing Final Infringement Contentions Per P.L.R. 3-6 (30 days after claim construction ruling) Final Invalidity Contentions Per P.L.R. 3-6 (50 days after claim construction ruling) Defendants to serve willfulness documents; opinion of counsel Per P.L.R. 3-8 (50 days after claim construction ruling) Close of Fact Discovery 6 months after final Invalidity Contentions Initial Expert Reports 30 days after Close of Fact Discovery Rebuttal Expert Reports 30 days after Initial Expert Reports Close of Expert Discovery 2 weeks after Rebuttal Expert Reports Trial TBD Statement of Plaintiff HTC HTC supports a further continuance of the stay for at least sixty (60) days to allow for further development of the reexamination record. Significant recent progress has been achieved with respect to all of the pending reexaminations. The reexaminations of the ’148, ’749 and ’890 Patents have been assigned to a single examiner and appear to be progressing expeditiously. The past three months have resulted in three separate Office actions by the USPTO as to these patents, each rejecting claims that TPL has asserted in this case. Substantive responses to two of these Office Actions were filed by TPL last month, and a third response is due by February 11. these responses will present new intrinsic evidence regarding the scope of the claims. Prematurely lifting the stay at this time may result in needless waste of judicial resources as to the ’148, ’749 and ’890 Patents, as illustrated by the now-completed reexamination of the ’336 Patent. As noted above, the ’336 reexamination resulted in either the cancellation or amendment to all of the original claims, as well as the of several new claims, such that none of the originally-issued claims from that patent exists today. New infringement and invalidity contentions will have to be served to account for new narrowing limitations in the surviving claims as well any new claims TPL may assert – essentially a “reboot.” The same may very well be required as to the other three patents-in-suit if TPL is similarly forced to narrow its claims in the pending reexaminations (assuming they are not simply invalidated). In any case, there is a significant risk that interim work by the parties and the Court as to these three patents will prove to be a waste of party and judicial resources. HTC therefore respectfully requests that the stay be continued for at least another sixty (60) days.
Defendants’ Statement Defendants note that Plaintiffs Acer and HTC were the parties that first requested this stay and have previously requested the Court continue the stay as long as the patents-in-suit were being reexamined by the PTO. Defendants do not oppose either the lifting or a short continuance (i.e. 60 days) of the stay.
Dated: February 8, 2010
K&L GATES LLP
By: /s/ Timothy P. Walker
Timothy P. Walker
Harold H. Davis
Attorneys for Plaintiffs
ACER, INC., ACER AMERICA
CORPORATION and GATEWAY, INC.
COOLEY GODWARD KRONISH LLP
By: /s/ Kyle Chen
Kyle Chen
Attorneys for Plaintiffs
HTC Corp. and HTC America, Inc.
BAKER & McKENZIE LLP
By: /s/ Edward K. Runyan
Edward K. Runyan
Daniel J. O’Connor
Tod L. Gamlen
Attorneys for Plaintiff Barco N.V.
FARELLA BRAUN & MARTEL LLP
By:/s/ John L. Cooper
John L. Cooper
Attorneys for Defendants
TECHNOLOGY PROPERTIES LIMITED
and ALLIACENSE LIMITED
KIRBY NOONAN LANCE & HOGE, LLP
By: /s/ Charles Hoge
Charles T. Hoge
Attorneys for Defendant
PATRIOT SCIENTIFIC CORPORATION ATTESTATION
Pursuant to General Order No. 45, I represent that concurrence in the filing of this document has been obtained from each of the other signatories which shall serve in lieu of their signatures on
this document.
/s/ John L. Cooper
