STATEMENT OF FACTS
As described more fully in Defendants’ Motion for Leave to Amend Infringement Contentions for U.S. Patent No. 5,530,890 (Dkt. 173),3 beginning in 2006, the Moore Microprocessor Portfolio (“MMP”) patents4 have been subjected to a two-prong assault in the court system and at the PTO, where they have been the subject of at least 15 ex parte reexaminations. On February 11, 2011, the PTO issued the Notice of Intent to Issue Ex Parte Reexamination Certificate (“NIRC”) for the ‘749 patent, confirming the patentability of claims 1-7, 10-20, 21-27, 30, and 34-62. Joesten Decl., Ex. D. Claim 9 has been canceled. Id. The claim chart in Exhibit F to the Joesten Declaration shows the current status of the ‘749 patent claims that the PTO has approved through the NIRC and will likely issue upon publication of the Reexamination Certificate. As shown in Exhibit F, Defendants expect thirty new claims to issue. In addition to independent claim 1, which was previously asserted, Defendants are seeking leave to assert six new claims against the existing Accused Instrumentalities. Id., Ex. A. Defendants are also seeking leave to assert ten claims against new Barco products. Id. In order to accommodate Plaintiffs’ demand for an early Markman hearing in all three related cases, Defendants proposed a stipulation to the Plaintiffs whereby the parties would brief the merits of Defendants’ motion for leave to amend the ‘749 patent infringement contentions based on the issuance of the NIRC, rather than waiting until the final Reexamination Certificate issues. (Dkt. 171, 6:15-7:1.) The Defendants reiterated this proposal in the Joint Case 3 Defendants hereby incorporate by reference the Statement of Facts in Defendants’ Motion for Leave to Amend Infringement Contentions for U.S. Patent No. 5,530,890 (Dkt. 173). 4 In addition to the ‘749 patent, the MMP patents include the following United States patents: 5,809,336; 5,784,584; 5,530,890; and 6,598,148. Management Statement, but the Plaintiffs still declined. At a case management conference on March 18, 2011, the Court instructed Defendants to file its motion for leave to amend the ‘749 patent infringement contentions by March 25 so that all the proposed infringement and invalidity contention amendments could be heard on April 22, 2011 and before the Markman hearing on May 10. 3/18/2011 Transcript, 15:9-18:23 (Joesten Decl., Ex. E).
