Beruflich Dokumente
Kultur Dokumente
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11 SIGNAL IP, INC., a California
corporation,
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Plaintiff,
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vs.
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NISSAN NORTH AMERICA, INC., a
15 California corporation,
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Defendant.
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20 Honda Motor Co., Inc. and Honda of America Mfg., Inc. (collectively Honda),
21 Nissan North America, Inc. (Nissan), Mitsubishi Motors North America, Inc.
22 (Mitsubishi), Mazda Motor of America, Inc. (Mazda), Subaru of America, Inc.
23 (Subaru), Kia Motors America, Inc. (Kia), Ford Motor Company (Ford),
24 BMW of North America, LLC (BMW), Chrysler Group LLC (Chrysler), Volvo
25 Cars of North America, LLC (Volvo), Jaguar Land Rover North America, LLC
26 (Jaguar), and Mercedes-Benz USA LLC (MBUSA) (collectively, Defendants)
27 submit their Joint Rule 16(b) Report pursuant to this Courts June 23, 2014 Order
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Case No. 2:14-cv-02962-JAK (JEMx)
JOINT RULE 16(b) REPORT
1 Setting Rule 16(b) Scheduling Conference, Federal Rules of Civil Procedure 16 and
2 26, and the Courts Initial Standing Patent Order.
3
On August 25, 2014, the parties held a joint conference to address the matters
a.
Plaintiffs Statement
As a preliminary matter, Plaintiff notes for the convenience of the Court that
8 its portion of the Joint Rule 16(b) Report is the same for actions it has filed.
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Plaintiff has filed fourteen actions for patent infringement against Defendants
10 American Honda Motor Co., Inc. and Honda of America Mfg., Inc. (collectively
11 Honda), Nissan North America, Inc. (Nissan), Mitsubishi Motors North
12 America, Inc. (Mitsubishi), Mazda Motor of America, Inc. (Mazda), Subaru of
13 America, Inc. (Subaru), Kia Motors America, Inc. (KMA), Ford Motor
14 Company (Ford), BMW of North America, LLC (BMWNA), Mercedes-Benz
15 USA, LLC (Mercedes), Chrysler Group LLC (Chrysler), Volvo Cars of North
16 America, LLC (Volvo), Volkswagen Group of America (VW) and Bentley
17 Motors, Inc. (Bentley), Jaguar Land Rover North America, LLC (Jaguar), and
18 Porsche Cars North America, Inc. (Porsche) (individually Defendant, and
19 collectively Defendants).
20
These actions have not yet been consolidated, and are pending as the
21 following related cases: Signal IP, Inc. v. American Honda Motor Co., Inc. (14-cv22 02454), Signal IP, Inc. v. Kia Motors America, Inc. (14-cv-02457); Signal IP, Inc. v.
23 Mazda Motor of America, Inc. (14-cv-00491); Signal IP, Inc. v. Mazda Motor of
24 America, Inc. (14-cv-02459); Signal IP, Inc. v. Mitsubishi Motors North America,
25 Inc. (14-cv-00497); Signal IP, Inc. v. Mitsubishi Motors North America, Inc. (14-cv26 02462); Signal IP, Inc. v. Nissan North America, Inc. (14-cv-02962); Signal IP, Inc.
27 v. Subaru of America, Inc. (14-cv-02963); Signal IP, Inc. v. BMW of North America,
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JOINT RULE 16(b) REPORT
1 LLC (14-cv-03111); Signal IP, Inc. v. Fiat USA, Inc. (14-cv-03105); Signal IP, Inc.
2 v. Ford Motor Company (14-cv-03106); Signal IP, Inc. v. Jaguar Land Rover North
3 America, LLC (14-cv-03108); Signal IP, Inc. v. Mercedes-Benz USA, LLC (2-14-cv4 03109); Signal IP, Inc. v. Porsche Cars North America, Inc. (2-14-cv-03114);
5 Signal IP, Inc. v. Volkswagen Group of America, Inc. (2-14-cv-03113); Signal IP,
6 Inc. v. Volvo Cars of North America, LLC (14-cv-03107) (collectively the Signal
7 Actions).
8
To streamline the Signal Actions, and to avoid duplication by the parties and
9 the Court, Plaintiff believes it is appropriate to consolidate the Signal Actions for
10 claim construction and other pre-trial matters. A later determination can be made
11 whether one of more of the Signal Actions, or common issues therein, should be
12 tried together.
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U.S. Pat No. 5,714,927 (the 927 Patent), entitled Method of improving
zone of coverage response of automotive radar;
U.S. Pat No. 5,732,375 (the 375 Patent), entitled Method of inhibiting
or allowing airbag deployment;
U.S. Pat No. 6,434,486 (the 486 Patent), entitled Technique for
limiting the range of an object sensing system in a vehicle;
U.S. Pat No. 6,775,601 (the 601 Patent), entitled Method and control
system for controlling propulsion in a hybrid vehicle;
U.S. Pat No. 6,012,007 (the 007 Patent), entitled Occupant detection
method and system for air bag system;
U.S. Pat No. 5,463,374 (the 374 Patent), entitled Method and
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apparatus for tire pressure monitoring and for shared keyless entry
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control; and
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JOINT RULE 16(b) REPORT
communication protocol.
For ease of reference, the following table shows the patents asserted against
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775 Patent
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375 Patent
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007 Patent
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927 Patent
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374 Patent
X
X
Porsche
VW
486 Patent
BMW
Mercedes
Jaguar
Volvo
601 Patent
Ford
Subaru
Chrysler
Nissan
Kia
Honda
Patent
Mitsubishi
Mazda
15
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Plaintiff presently asserts a total of 33 claims of the Signal Patents against
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Defendants collectively, with a maximum of only eight claims from any single
patent. With only a few exceptions, the asserted claims are the same in each patent
for each accused Defendant.1
ii.
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Defendants Statement
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27
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The asserted claims are: 601 Patent, claims 8, 9, 10, 11, 13, 15, and 17; 486
Patent, claims 21, 23, 26, 27, 28, 30, 34, and 35; 775 Patent, claim 6; 375 Patent,
claims 1 and 7; 007 Patent, claims 1, 8, 17, 18, 19, 20, 21, and 22; 927 Patent,
claims 1, 2, and 6; and 374 Patent, claims 1, 2, and 3. The asserted claims are the
same for all Defendants except: in the 486 Patent, claims 23, 30, and 35 are
asserted against Mercedes only, claim 27 is not asserted against Mercedes and
VWGoA, and claim 34 is not asserted against VWGoA; and in the 007 Patent,
claims 9, 18, and 22 are asserted against Mazda only.
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JOINT RULE 16(b) REPORT
Identical copies of this Joint Report have been filed in each of the Honda,
2 Kia, Mazda, Mitsubishi, Nissan, Subaru, Chrysler, Ford, Volvo, Jaguar, BMW and
3 Mercedes actions. 2
Plaintiff is a non-practicing entity (NPE) that acquired the asserted patents (or
5 Signal Patents) from Delphi Automotive PLC, which in turn had acquired at least
6 some of the patents from its predecessor Delco Electronics. As stated above, the
7 Plaintiff in these cases has filed fourteen separate lawsuits alleging various
8 combinations of claims from seven largely unrelated patents against a large swath of
9 the automobile industry.
The technologies in these cases include seat occupant sensing and airbag
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11 deployment, tire pressure monitoring systems and keyless entry systems, vehicle
12 control systems in the nature of adaptive cruise control, techniques for controlling
13 blind spot detection, and data bus protocols systems for controlling propulsion in
14 hybrid vehicles. Aside from the airbag patents, the patents are essentially unrelated.
15 They have different inventors, different filing dates, and a broad range of issuance
16 dates ranging from 1995 (19 years ago) to 2004 (10 years ago). If tried together,
17 they will present a considerable challenge for the jury.
While the Plaintiff in these cases is a NPE, Defendants, in contrast, are direct
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19 competitors to each other, and constitute the United States operations of each
20 respective automobile manufacturer. Most Defendants if not all have foreign
21 sister, parent, and subsidiary companies that the Plaintiff has intentionally not
22 named in its Complaints.
All Defendants assert that they do not infringe any valid claim of the asserted
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24 patents. This is not surprising. Presumably, if the patents had value in the industry,
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Case Numbers 14-cv-02454; 14-cv-02457; 14-cv-00491; 14-cv-02459; 14-cv27 00497; 14-cv-02462; 14-cv-02962; 14-cv-02963; 14-cv-03111; 14-cv-03106; 14-cv03108; 2-14-cv-03109; 14-cv-03107.
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JOINT RULE 16(b) REPORT
1 Delphi would not have let the patents lie dormant for ten to twenty years and then
2 sold them to the Plaintiff.
3
Because the asserted patents issued anywhere from 1995 to 2004, there are
4 significant issues of laches and estoppel in this case whose particular facts will vary
5 from vehicle to vehicle and accused system to accused system, and thus Defendant
6 to Defendant.
7
The Defendants assert that damages must be limited in accordance with the
Delphi, the original assignee on some of the asserted patents, is the supplier of
10 the accused technology to some of the defendants in these cases. As such, at least
11 some of the defendants are licensed, and the relevant allegations need to be dropped
12 from the case. Other licensing defenses are known to exist for at least some of the
13 defendants, and Defendants expect that others may become known via discovery.
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Various parties may file for Inter Partes Review and/or Reexamination of at
20 least some claims of the asserted patents before the United States Patent Office. As
21 such, the number of proceedings related to these cases may multiply in coming
22 months.
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The Defendants in the related cases will attempt to work together where
24 possible to facilitate the management of all cases by the Court. However, the
25 Defendants in the various related cases are all direct competitors, and have
26 significant concerns about confidentiality and potential conflicts of interest.
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The Defendants have various foreign and domestic suppliers for the
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JOINT RULE 16(b) REPORT
9 jurisdictions, some Defendants may seek transfer of part or all of their respective
10 case to different jurisdictions. Indeed, Ford has already filed such a motion.
11
Depending on the status of review proceedings before the Patent Office, some
b.
i.
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These Actions arises under the patent laws of the United States, Title 35 of
16 the United States Code. This Court has subject matter jurisdiction pursuant to 28
17 U.S.C. 1331 and 1338(a).
ii.
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Defendants Statement
Defendants do not contest that this Court has subject matter jurisdiction over
c.
Legal Issues
i.
Plaintiffs Statement
24 Signal Actions are the alleged infringement of the Signal Patents, the alleged
25 invalidity of the Signal Patents in view of the relevant prior art, and the monetary or
26 other relief to which Plaintiff is entitled. The meaning and scope of the terms used
27 in the asserted patent claims are germane to these legal issues.
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JOINT RULE 16(b) REPORT
All but three defendants (Nissan, Mercedes and Audi) have filed answers. All
2 defendants who have answered assert defenses of failure to state a claim, non3 infringement, and invalidity. The three defendants who have asserted counterclaims
4 (Mitsubishi, BMW, and Volvo) assert counterclaims for invalidity and non5 infringement.
Other affirmative defenses include failure to state a claim, prosecution history
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14 the Court to consider at this stage are whether the Signal Actions should be
15 consolidated for claim construction and other pre-trial matters, and whether the
16 action against Ford should be transferred to the Eastern District of Michigan.
ii.
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Defendants Statement
Claim construction is a key legal issue in these cases, and Defendants believe
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22 just construing the claims alone will take for the parties and the Court to complete,
23 the Defendants prefer to limit discovery at the outset of the case to claim
24 construction and core technical documents during the initial phase of claim
25 construction. The remaining fact discovery would commence on the date of entry of
26 the claim construction order.3 Because Defendants believe that the claim
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1 construction process will have the effect of eliminating certain patents, claims, or
2 accused products from the case, this phased discovery approach will be more
3 efficient for all of the parties and non-parties from which discovery may be sought
4 (including inventors and suppliers).
5
After the claim construction order, the parties would then undertake fact
8 significant issue in this case as discovery proceeds. Defendants may seek leave to
9 amend their affirmative defenses if warranted by new information produced in
10 discovery.
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12 one or more of the patents in suit. Such defendants may seek to amend their
13 affirmative defenses if warranted by new information. License defenses based on
14 licenses granted to third-party suppliers may also result in intervention of non-party
15 suppliers in one or more of the actions.
16
Finally, Defendants assert that damages in this case should be limited due to
17 laches, estoppel, and/or the provisions of 35 U.S.C. 286 and 287. The earliest of
18 the asserted patents issued 19 years ago. Even the latest issued 10 years ago. The
19 law presents substantial limits on the Plaintiff's ability to recover for infringement of
20 any valid patent claims based on the delay in bringing suit.
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2 concern about the risk of inadvertent disclosure of their confidential and trade secret
3 information to each other. The Defendants recognize that the Court has already
4 entered a Standing Protective Order, but additional protection may be needed for
5 sensitive information, for example, sales and pricing data, trade secrets, and source
6 code.
d.
i.
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Marathon Patent Group, Inc. is the parent corporation of Plaintiff Signal IP,
10 Inc. and owns more than 10% of the outstanding stock of Signal IP. No other
11 publicly traded company owns more than 10% of the outstanding stock in Signal IP.
12
In its Initial Disclosures, Plaintiff identified the following parties and non-
13 party witnesses on the main issues in the case: individuals with knowledge regarding
14 the accused instrumentalities, the named inventors of the Signal Patents, its
15 corporate representative Doug Croxall, and Signals witnesses identified by
16 Defendants in their respective disclosures.
ii.
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Defendants Statement
The Defendants verify that they have identified all subsidiaries, parents, and
The Defendants have also identified all presently known witnesses in their
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i.
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Damages
Plaintiffs Statement
Defendant
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Honda
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JOINT RULE 16(b) REPORT
Defendant
Kia
$133-148M
Mazda
$63-70M
Mitsubishi
$6-7M
Nissan
$151-167M
Subaru
$28-31M
Chrysler
$154-170M
Ford
$304-336M
Volvo
$13-14M
Jaguar
$20-22M
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Mercedes
$120-133M
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BMW
$104-115M
VW
$132-146M
Porsche
$23-25M
Total
$1.4-$1.6B
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Defendants Statement
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JOINT RULE 16(b) REPORT
f.
i.
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Insurance
Plaintiffs Statement
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Defendants Statement
The following Defendants assert that they are unaware of any insurance
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g.
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Motions
i.
Plaintiffs Statement
There are currently four motions pending in the Signal Actions, all filed by
23 defendants: (1) Fords motion to transfer to the United States District Court for the
24 Eastern District of Michigan (Case No. 14-03106, Dkt. No. 36); (2) Mercedes
25 partial motion to dismiss portions of Plaintiffs claims for direct and indirect
26 infringement (Case No. 14-03109, Dkt. No. 34); (3) Nissans motion to dismiss
27 Plaintiffs claims for willful infringement (Case No. 14-03113, Dkt. No. 35); and (4)
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JOINT RULE 16(b) REPORT
1 VWs motion to dismiss Plaintiffs claims for willful infringement (Case No. 142 03113, Dkt. No. 35). Plaintiff opposes these motions.
3
At this time, Plaintiff does not anticipate filing any motions seeking to add
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Defendants Statement
7 Defendants assert that they anticipate filing motions for summary judgment of non8 infringement for at least some and likely all of the asserted claims, depending on the
9 Court's claim construction. Defendants may also file motions for summary judgment
10 of invalidity.
11
As set forth above, some Defendants may move to amend their pleadings to
Some Defendants are also considering filing petitions for Review and/or
16 Reexamination of the asserted patents by the United States Patent and Trademark
17 Office. They may, therefore, move to stay these cases.
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21
Plaintiffs Statement
22 Complex Litigation, Fourth (MCL, 4th) are relevant to the Signal Actions and
23 should be utilized, including:
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Designating a single location (i.e. this District) for storage of source code,
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with a common data format and common review tools ( 11.444, 11.423)
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JOINT RULE 16(b) REPORT
10.221, 11.12);
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(j));
Coordination of depositions on common witnesses to avoid cumulative or
duplicative depositions ( 11.455) (See infra, Section (j));
Phasing discovery by groups of patents and defendants ( 11.422) (See
infra, Section (i) and Exhibit A);
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Potential need for foreign discovery ( 11.494) (See infra, Section (s)); and
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(n)).
ii.
Defendants Statement
16 this case for the Court. To that end, the Defendants are willing to consider the
17 Manual for Complex Litigation as a guideline in these cases. However, because the
18 Defendants are direct competitors with significant confidentiality concerns and
19 potential conflicts of interest, Defendants cannot agree to appoint individual
20 attorneys to represent all Defendants, to permit common depositories for
21 confidential business information produced in the course of discovery, nor can
22 Defendants agree to consolidate seemingly common issues like claim construction
23 without careful prior consideration.
24
On the specific selected portions of the MCL that plaintiff addresses above,
1 code is even necessary in this case. At very least, Plaintiff has yet to demonstrate a
2 need for such burdensome discovery. In most instances, Defendants do not know
3 the specific products or functionality that Plaintiff is accusing, and it is therefore
4 impossible to know what, if any, source code may be relevant to this case.
5 Moreover, Defendants expect that to the extent relevant source code does exist, it is
6 most likely to reside with third parties outside Defendants control. Defendants
7 therefore propose that any decisions on the specific procedural aspects of source
8 code production be postponed until after the claim construction phase of the case,
9 and only then if there is a real, demonstrated need for source code production.
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i.
Status of Discovery
i.
Plaintiffs Statement
26 Other than the disclosures required by the Courts Standing Patent Rules, no other
27 formal discovery has yet been pursued by any party.
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JOINT RULE 16(b) REPORT
1
2
ii.
Defendants Statement
3 the parties have disclosed limited information for purposes of discussing potential
4 settlement. At the outset, Defendants assert that Plaintiff's infringement contentions
5 are grossly deficient.
j.
i.
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Discovery Plan
Plaintiffs Statement
Plaintiff objects to any proposal that discovery be limited at the outset of the
9 case to claim construction and core technical documents. This would cause
10 unnecessary delay and prevent prompt, early discovery that the Court encourages.
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Plaintiff also objects to any proposal that would limit discovery of source
12 code or other technical information. The Courts Standing Patent Rule 2.6.1
13 provides for automatic production of source code and other technical materials, and
14 discovery of this information is important and should not be limited or precluded in
15 any way.
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25 between the parties regarding the forms of production will help eliminate waste and
26 duplication. (MCL 4th, 11.446.) The following procedures and production
27 formats should be adopted in the Signal Actions.
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JOINT RULE 16(b) REPORT
2 45 for ESI shall not include email or other forms of electronic correspondence such
3 as chat logs or instant messaging (collectively email). For discovery of email, the
4 Federal Circuits Model Order Regarding E-Discovery in Patent Cases shall
5 govern.4
Documents shall be produced in Tagged Image File Format (TIFF) format.
7 TIFF files shall be single page and shall be named with a unique production number
8 followed by the appropriate file extension. Load files shall be provided to indicate
9 the location and unitization of the TIFF files. If a document is more than on page,
10 the unitization of the document and any attachments and/or affixed notes shall be
11 maintained as they existed in the original document.
Extracted text shall be provided with all records, except for documents that
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13 originated as hard copy or redacted documents. OCR text shall be provided for
14 hard copy documents. For redacted documents, OCR text shall be provided for the
15 redacted version. For all document file types not conducive to TIFF review (e.g.,
16 Excel, PowerPoint, video/audio files, database (Access, etc.)), files in native format
17 shall be produced, and files shall be named with the production number following
18 by the appropriate file extension. Standard Concordance load files (DAT and
19 Opticon) shall be produced.
Discovery may be served by email on all counsel of record per Federal Rule
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21 of Civil Procedure 5(b)(2)(E), and all documents served by other means shall also be
22 served by email.
Before serving deposition notices and subpoenas, the parties will make every
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24 effort to obtain agreeable deposition dates for attorneys who will take and defend
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26
Available at
27 http://memberconnections.com/olc/filelib/LVFC/cpages/9008/Library/Ediscovery%
20Model%20Order.pdf.
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JOINT RULE 16(b) REPORT
Common discovery and discovery limits. In related cases pending before the
Plaintiff proposes that the Signal Actions should be consolidated for pre-trial
10 discovery on common issues. (See MCL 4th, 11.423, 11.464.) Common issues
11 will likely include prosecution of the Signal Patents, discovery regarding the
12 inventions and named inventors of the Signal Patents, alleged prior art of the Signal
13 Patents, prior assignees of the Signal Patents (Delphi Technologies, Inc. or Delco
14 Electronics Corporation), and discovery regarding plaintiff Signal IP, Inc..
15 Accordingly, the following discovery limits are appropriate:
16
Requests for Production. Each side may serve upon each opposing side up to
Interrogatories. Each side may serve, upon each opposing side, up to fifteen
Requests for Admission. Plaintiff may serve up to twenty (20) requests for
26 admission on each of the Defendants, and each Defendant may serve up to twenty
27 (20) requests for admission on Plaintiff. This limit should not apply to requests for
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JOINT RULE 16(b) REPORT
3 coordinated among all parties on each side, and limited on each side to two (2)
4 consecutive days in the same location, with 7 (seven) hours per day. This limit also
5 applies to expert witnesses who must provide a written report under Fed. R. Civ. P.
6 26(a)(2)(B), with the addition that each party on one side that is the subject of a
7 written report from an expert may take up to an additional two (2) hours of
8 deposition testimony. Parties in related cases may use depositions taken in one
9 particular case. (See MCL 4th, 11.455.)
10
The above limits may be modified by order of the Court, upon showing of
11 good cause.
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13
ii.
Defendants Statement
14 discovery is efficient, do not agree that each side be limited to the same number of
15 discovery requests or that each defendant be severely limited in its ability to take
16 individual written discovery or deposition testimony if these cases are consolidated.
17 As explained above, the Defendants represent a broad range of competitors in the
18 automobile market. They have substantially different numbers and types of accused
19 products, and the facts and circumstances surrounding their affirmative defenses and
20 counterclaims will vary. The Defendants may make differing business decisions
21 based on which defenses and counterclaims to actively pursue, and the Defendants
22 have retained different counsel with differing advice on how best to proceed.
23 Moreover, Defendants are restrained in their ability to "share" work product due to
24 their need to protect competitive information, and the potential conflicts of interest
25 between the Defendants as competing entities. Ultimately, it was the Plaintiff's
26 choice to file 14 different lawsuits alleging infringement of 7 unrelated patents that
27 issued anywhere between 1995 to 2004, and Defendants should not bear the
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JOINT RULE 16(b) REPORT
That said, Defendants expect that there may be substantial agreement between
Defendants intend to depose the named inventors of the asserted patents, and
24 will address issues including but not limited to (a) conception; (b) reduction to
25 practice; (c) inventorship; (d) ownership of the asserted patents; (e) claim
26 construction; (f) prior art; (g) inequitable conduct; (h) document retention; and/or (i)
27 discovery efforts.
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JOINT RULE 16(b) REPORT
2 interest on issues including but not limited to: (a) conception; (b) reduction to
3 practice; (c) inventorship; (d) ownership of the asserted patents; (e) claim
4 construction; (f) prior art; (g) inequitable conduct; (h) laches; (i) estoppel; (j)
5 licensing; (k) damages; (l) marking; (h) document retention; and/or (i) discovery
6 efforts.
7
8 Defendants understand Plaintiff has indicated that it has retained certain named
9 inventors and other individuals as fact and/or expert witnesses, and may require
10 more than one deposition of certain individuals on issues such as claim construction
11 and infringement.
12
Defendants reserve the right to issue requests for admission on factual issues
19 including, for example, authentication of documents, key dates, and any other
20 factual issues that Plaintiff can readily admit. The Defendants do not agree to
21 Plaintiff's proposed limit on the number of requests for admission. Though the
22 Federal Rules apply no limit on the number of RFAs that any party may serve in a
23 case, in the spirit of compromise Defendants propose that they be allocated 25
24 collective RFAs to be shared among Defendants, and 75 RFAs to be used
25 individually on a per-defendant basis. Defendants further propose that there be no
26 limit on RFAs served for the purpose of authenticating evidence. Defendants
27 propose that the Plaintiff be limited to 100 RFAs.
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JOINT RULE 16(b) REPORT
2 all issues identified for deposition above. The Defendants agree to Plaintiff's
3 proposed limit on the number of requests for production. Further, the Defendants do
4 not agree to the Federal Circuit Advisory Committees Model Order Regarding E5 Discovery in Patent Cases. The Defendants do not agree that email discovery will
6 be either helpful or necessary, and Plaintiff has made no good faith representation
7 that it will need email discovery in prosecuting its case.
8
21 issues including but not limited to (a) non-infringement; (b) prior art; (c) inequitable
22 conduct; (d) licensing; and/or (e) damages.
23
Defendants propose to have two phases of discovery. The first phase will be
24 limited to claim construction discovery and core technical documents and will end
25 two week before the parties claim construction briefs are due.
26
27
k.
Discovery Cut-Off
i.
Plaintiffs Statement
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JOINT RULE 16(b) REPORT
Plaintiff has proposed a case schedule that includes a plan for the completion
3
4
Defendants Statement
Defendants believe that it is premature to set a discovery cut-off until after the
5 Court has issued a claim construction Order. Because Defendants expect that this
6 case may be substantially narrowed via the claim construction process, it appears
7 appropriate to evaluate the scope of the case and the discovery that remains
8 necessary after the claim construction Order issues, and to set a date at that time.
9
In any case, Defendants propose that fact discovery should conclude 14 days
10 before the date of opening expert reports, and that expert discovery should remain
11 open until 30 days after rebuttal expert reports are served.
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l.
Expert Discovery
i.
Plaintiffs Statement
Plaintiff has proposed a case schedule that includes a plan for expert witness
17 related to patent-specific issues (e.g. infringement and invalidity), and three phases
18 for other expert reports (e.g. damages), in groups of Defendants. Phasing expert
19 discovery in this manner will results in an orderly and efficient timeline for expert
20 disclosures. (See MCL 4th, 11.422).
21
22
ii.
Defendants Statement
23 Staggered discovery will multiply litigation expenses for the Defendants and delay
24 their resolution of the case on dispositive motions. Moreover, it can be expected that
25 scheduling difficulties will interfere, with many parties being unable to make
26 witnesses available within narrowly-confined discovery windows as will result from
27 such phased discovery.
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JOINT RULE 16(b) REPORT
As before, Defendants suggest that the Court revisit the appropriate expert
2 discovery limits after it issues a claim construction order and the parties have time to
3 assess the remaining scope of the case.
m.
i.
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6
Dispositive Motions
Plaintiffs Statement
10 motion (including dispositive or non-dispositive motions) when more than one party
11 is presenting the same issue(s), e.g. invalidity, license, procedural issues, or other
12 issues that may be common to more than one party.
13
Counsel shall meet and confer prior to the filing of a motion to determine if a
14 consolidated motion can be filed and, if so, whether: (i) one consolidated motion can
15 be filed because the issues are common to all moving parties; (ii) a consolidated
16 motion as to common issues can be accompanied by one or more shorter,
17 supplemental motions as to unique issues; or (iii) a motion by one party can be filed
18 to which other parties join in whole or in part. The purpose of this requirement is to
19 prevent the filing of overlapping and duplicative materials with the Court. It is also
20 designed to preclude side-stepping of the page limits on briefs imposed by the Local
21 Rules and this Courts Standing Orders.
22
23
ii.
Defendants Statement
1 impose procedures that could inhibit their ability to file motions in a timely and
2 efficient manner in accordance with the strategic and business decisions of each
3 Defendant.
4
5 motion with regard to many, if not all, patents and defendants. It is expected that
6 several Defendants will move for summary judgment of non-infringement at an
7 early stage in this case.
8
9 dispositive motion. Certain other defenses, such as a license defense, may also be
10 susceptible to dispositive motions.
11
12
13
n.
Settlement
i.
Plaintiffs Statement
14 disposition of the Signal Actions by settlement, and to that end has attempted to
15 initiate settlement discussions with all Defendants. Only one defendant Porsche
16 has not agreed to accept or review settlement materials from Plaintiff, pursuant to
17 Federal Rule of Evidence 408. Parties should be encouraged to at least convey such
18 offers to their clients. (See MCL 4th, 13.24 (Attorneys have an obligation
19 promptly to submit nonfrivolous offers of settlement to the client. Breach of this
20 duty is egregious if counsel will be compensated in whole or in part on the basis of
21 the number of hours expended in the litigation.).)
22
23 408 with ten defendants, and four defendants have not accepted Plaintiffs request to
24 discuss settlement following receipt of the settlement materials.
25
26 participation in a private dispute resolution proceeding (Procedure No. 3), but is also
27 willing to participate in other ADR procedures.
28
25
JOINT RULE 16(b) REPORT
1
2
ii.
Defendants Statement
i.
6
7
Trial Estimate
Plaintiffs Statement
Plaintiff estimates 5 court days for each of the Signal Actions, and anticipates
11
12
Defendants Statement
As an initial point, each Defendant is entitled to its own trial under the AIA.
20
i.
21
22
Trial Counsel
Plaintiffs Statement
Plaintiffs trial counsel are Randall J. Sunshine, Ryan E. Hatch, and Jason L.
23 Haas, all of Liner LLP, 1100 Glendon Avenue, 14th Floor, Los Angeles, California
24 90024.3503.
25
ii.
Defendants Statement
26
Counsel for American Honda Motor Co. are Ahmed Davis, Ralph Phillips, and
27
Scott Elengold from the DC office of Fish & Richardson, Robert Hillman of
28
26
JOINT RULE 16(b) REPORT
1
2
Fishs Boston office, and Geoff Biegler of Fishs San Diego office.
Counsel for Kia Motors America, Inc. are Ron Pabis, Mark Davis, Steve
Shahida from Greenberg Traurigs DC office, and Rich Edlin from Greenberg
5
6
7
Counsel for Mazda North America, Inc. are Matthew D. Satchwell and Paul R.
Steadman of the Chicago, Illinois office of DLA Piper LLP.
Counsel for Mitsubishi Motors North America are Charles Gorenstein and Ali
Imam of the Falls Church, Virginia office of Birch Stewart Kolasch Birch, LLP.
Counsel for Nissan North America, Inc. are B. Trent Webb, Patrick A. Lujin and
10
Richard D. Eiszner of the Kansas City, Mo office of Shook, Hardy & Bacon
11
LLP; Douglas W. Robinson and Gabriel Scott Spooner of the Irvine, California
12
office of Shook, Hardy & Bacon LLP; and Jamie Kitano of the San Francisco,
13
14
15
16
Counsel for Subaru of America, Inc. are Matthew D. Satchwell and Paul R.
Steadman of the Chicago, Illinois office of DLA Piper LLP.
Counsel for Chrysler Group, LLC are Frank C. Cimino and Megan S.
17
18
19
20
21
Counsel for BMW of North America, LLC are Joseph P. Lavelle and Andrew N.
Stein of the Washington D.C. office of DLA Piper LLP (US).
Counsel for Ford Motor Company are John LeRoy, Frank Angileri, Linda
22
Mettes and Chris Smith of the Southfield, Michigan office of Brooks Kushman.
23
Counsel for Jaguar Land Rover North America are Matthew J. Moore, Clement
24
J. Naples, Lisa K. Nguyen, and Jason M. Garr of the Washington, D.C., New
25
26
Counsel for Volvo Cars of North America, LLC are David T. Pollock and Tracy
27
Zurzolo Quinn of the San Francisco and Philadelphia offices of Reed Smith
28
27
JOINT RULE 16(b) REPORT
1
2
LLP.
Counsel for Mercedes-Benz USA LLC are Scott W. Doyle and Jonathan R.
DeFosse of the Washington, D.C. office of Shearman & Sterling LLP; and Don
i.
7
8
Plaintiff does not believe the Court should appoint a master or independent
9 scientific expert.
ii.
10
11
Defendants Statement
Defendants agree that it does not appear at this time that court-appointed,
12 independent scientific experts are necessary in this case However, if the Court
13 believes that a technical expert may be helpful to it for some limited technical
14 purpose, as it did in Brandywine Communications Technologies, LLC v. Toshiba
15 Corp., No.LA CV12-03211, the Defendants would not object to such appointment.
r.
16
i.
17
18
Timetable
Plaintiffs Statement
19
Defendants Statement
20
21
Defendants have provided reasonable date proposals for the deadlines leading
22 up to the Markman hearing that reflect the current size and complexity of the cases.
23 Importantly, all Defendants expect that the cases are going to be substantially
24 streamlined via the claim construction process, and expect that both patents and
25 parties currently involved in the cases will be removed after the claims are
26 construed.
27
28
28
JOINT RULE 16(b) REPORT
1 party groups after the Markman hearing, because that approach is irresponsibly
2 lengthy and does not provide timely disclosures to the Defendants that Plaintiff
3 chose to sue all at one time. Because the landscape is certain to be materially
4 different after the Markman decision issues and the range of products to which these
5 cases may apply will be narrowed significantly, in ways that cannot now be
6 predicted and will likely be at odds with Plaintiffs staggered approach, Defendants
7 propose that the Court set a Scheduling Conference shortly after the Markman
8 decision issues, at which time the remaining parties can submit a reasonable
9 schedule proposal that meaningfully addresses the scope of the cases (if any) as it
10 exists at that time.
11
It should also be noted that Defendants have put forward two competing
12 proposals for how the schedule should proceed leading up to the Markman hearing.
13 Both proposals are set forth in Exhibit A. As can be seen, the Defendants in Group
14 B believe additional time is required to complete the events set forth in the schedule
15 relative to Defendants in Group A. Defendants that advocate for the Group A
16 schedule are Mazda, Subaru, Ford, Mercedes, Nissan, Volvo, Mitsubishi, BMW,
17 Jaguar, and Chrysler. Defendants that advocate for the Group B schedule are Honda
18 and Kia.
19
20
21
s.
Other Issues
i.
Plaintiffs Statement
22 Protective Order (Standing Orders, Exhibit E) governs discovery unless the Court
23 enters a different protective order. (S.P.R. 1.5.) Plaintiff believes that the Courts
24 Standing Protective Order is appropriate in large part, but should be tailored to
25 facilitate an efficient and orderly review of source code in the Signal Actions, to
26 take place in a single geographic area (e.g. in this District), organized appropriately,
27 and with a common set of source code review tools. (See MCL 4th, 33.25 (Some
28
29
JOINT RULE 16(b) REPORT
1 courts have incorporated standing protective orders as part of the initial pretrial
2 conference; however, the particular patent case may dictate a more tailored order.)
3
5.2
10
11
12
secured room, and the inspecting party shall not copy, remove, or
13
otherwise transfer any portion of the source code onto any recordable
14
15
16
17
18
19
representatives during any source code review, but only to ensure that
20
21
code. The secured computer shall run the Microsoft Windows Operating
22
23
24
25
26
27
28
30
JOINT RULE 16(b) REPORT
orderly and efficient review of source code, which request shall not be
4 efficient and orderly review of source code. (See MCL 4th, 11.444, 11.423.)
5
6 party is already represented by at least one law firm with offices in this District. (See
7 L.R. 83-2.1.3.4 (Every attorney seeking to appear pro hac vice must designate as
8 Local Counsel an attorney with whom the Court and opposing counsel may readily
9 communicate regarding the conduct of the case and upon whom documents may be
10 served. An attorney may be designated as Local Counsel only if he or she: (1) is a
11 member of this Court; and (2) maintains an office within the District.) (emphasis
12 added))
13
In addition, the majority of Defendants national law firms also have offices
14 in this District.5 If production in this District is inconvenient, the parties will meet
15 and confer and designate a different common location, such as Washington D.C. or
16 New York, for the production of all source code.
Non-English speaking witnesses and discovery in foreign jurisdictions.
17
18 Plaintiff intends to rely largely on documentary evidence, but may also pursue
19 discovery of non-English speaking witnesses, or discovery in foreign jurisdictions.
ii.
20
Defendants Statement
Defendants propose the Court defer consideration of the source code issue
21
22 until such time as there is an actual, demonstrated need for the production of such
23 code. At a minimum, Defendants disagree that it is appropriate for their confidential
24 source code (to the extent any such code exists within their control) be placed on a
25
Defendants with national counsel having offices in Los Angeles or Orange County
26 include: Honda (Fish & Richardson); Nissan (Shook, Hardy & Bacon); Mazda,
27 Subaru and BMW (DLA Piper); Kia (Greenberg Traurig); Ford (Brooks Kushman);
Chrysler (Dickstein Shapiro); Volvo (Reed Smith); and Jaguar (Latham & Watkins).
28
31
JOINT RULE 16(b) REPORT
i.
3
4
Patent Cases
Plaintiffs Statement
All parties to the Signal Actions should work to limit the terms in dispute by
In addition to the information in S.P.R. 3.4.2 through 3.4.5, the parties should
19 address in the Joint Claim Construction and Prehearing Statement (S.P.R. 3.4)
20 whether: (i) one consolidated brief on each side can be filed because the issues are
21 common to all parties; (ii) a consolidated brief as to issues common to all
22 Defendants must be accompanied by one or more shorter, supplemental briefs as to
23 unique issues; and (iii) whether the default page limits should be increased on both
24 sides to accommodate any supplemental briefing. The purpose of this requirement
25 is to prevent the filing of duplicative materials with the Court, and to preclude the
26 side-stepping of the page limits on briefs.
27
Each side should provide a single set of presentation and tutorial materials.
28
32
JOINT RULE 16(b) REPORT
1 (S.P.R. 3.5). The parties shall jointly lodge with the Court the material described in
2 S.P.R. 3.5.1 through 3.5.3 (i.e. the chart with the parties proposed constructions;
3 annotated copies of the file histories; electronic copy of each file history). Each side
4 will have a maximum of 45 minutes to present evidence and argument in support of
5 their positions, but the parties can address whether additional time is necessary in
6 the Joint Claim Construction and Prehearing Statement, pursuant to the procedure
7 set forth in S.P.R. 3.4.4.
Plaintiffs proposed schedule for Markman proceedings is set forth in Exhibit
8
9 A.
10
12
13 report the Federal Circuit Advisory Committees Model Order Limiting Excess
14 patent Claims and Prior Art (Model Order). 6 Plaintiff believes that the limits set
15 forth in Phases 1 and 2 of the Model Order 7 are appropriate and should apply across
16 all Signal Actions in a consolidated fashion (i.e. Plaintiff should abide by the limits
17 on asserted claims across all actions, and Defendants jointly should abide by the
18 limits on prior art across all actions).
In fact, Plaintiff is already essentially at or below these limits for the Signal
19
20 Actions. Plaintiff currently asserts 33 claims in 7 patents, with no more than eight
21
22
23
24
25
26
27
28
1 claims per patent. (See Section (a).) This is only one claim above the limit of 32
2 asserted claims in Phase 1, and already below the limit of 10 claims per patent.
3
4
ii.
Defendants Statement
Because the Defendants believe that claim construction is the number one
5 issue that will help the parties work out issues of non-infringement and invalidity, it
6 should not be given short shrift as proposed by Plaintiff. Defendants believe that
7 there are significant limitations to the scope of the patents in suit that will present
8 substantial, common non-infringement arguments for many of the Defendants.
9 Accordingly, the Defendants propose proceeding only with claim construction
10 discovery at this point.
11
19 present claim construction terms or arguments with one another, and they request
20 the right to present separate terms and briefs to the Court. However, the Defendants
21 will work together to coordinate on common terms and positions, and will limit the
22 briefing, as appropriate, for overlapping positions.
23
Defendants suggest a limit of five claim terms for construction per patent,
24 with the parties all working together to identify the terms as well as to provide the
25 Court with a list of the 10 most significant claim terms. Given the size and scope of
26 the case, Plaintiffs proposal on the Markman briefing page limit is unworkable.
27 Defendants suggest that the Court set forth a date for the parties to submit proposals
28
34
JOINT RULE 16(b) REPORT
u.
Plaintiffs Statement
Plaintiff does not wish to have a Magistrate preside over the Signal Actions
12 but does not oppose a Magistrate Judge presiding over discovery and procedural
13 issues, or settlement conferences.
14
15
ii.
Defendants Statement
Defendants do not wish to have a Magistrate Judge preside at trial, but would
16 welcome a Magistrate Judge to preside over discovery and procedural issues, as well
17 as settlement conferences in these Central District of California Actions.
18
19 Dated: September 5, 2014
LINER LLP
20
21
By:
22
Randall J. Sunshine
Ryan E. Hatch
Jason L. Haas
Attorneys for Plaintiff SIGNAL
IP, INC.
23
24
25
26
27
28
35
2
3
By:
4
5
6
7
8
9
10
11
I, Ryan E. Hatch, attest that all signatories listed, and on whose behalf the
12 filing is submitted, concur in the filings content and have authorized the filing.
13
14
15 Dated: September 5, 2014
By:
16
17
18
19
20
21
22
23
24
25
26
27
28
36
JOINT RULE 16(b) REPORT