IconFind, Inc. v. Google, Inc.

Filing 47

JOINT STATUS REPORT by Google, Inc.. (Malecek, Michael)

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Michael J. Malecek (State Bar No. 171034)
Email address: [e-mail]
Kenneth Maikish (State Bar No. 267265)
Email address: [e-mail]
KAYE SCHOLER LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant
GOOGLE INC.

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UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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ICONFIND, INC.,

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Case No. 2:11-CV-00319 GEB JFM

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Plaintiff,

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JOINT STATUS REPORT

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v.

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GOOGLE INC.,

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Defendant.

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JOINT STATUS REPORT
Case No. 2:11-CV-00319 GEB JFM

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Pursuant to the Court's Order of February 3, 2011, Local Rule 240, and Rule 26(f), the
parties submit the following Joint Status Report.

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1.

bases for their claims and defenses, as well as the possibilities for a prompt settlement, and
developed a proposed discovery plan. This meeting was attended by:

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a.

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Michael Malecek, Kenneth Maikish, and John LaBarre, on behalf of Defendant

Google.
2.

All parties have been served.

3.

It is too early to determine whether the joinder of additional parties or amendments to the

pleadings will be necessary, but none are currently anticipated.
4.

This Court has original jurisdiction over the subject matter of IconFind's patent

infringement claim under 28 U.S.C. § 1338(a). Google does not object to this Court’s exercise of
personal jurisdiction over it in this matter. Venue is proper in this district under 28 U.S.C. §§
1391 and 1400(b).
5.

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Brian Haan and Anna Folgers, on behalf of Plaintiff, IconFind;

b.

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On April 28, 2011 a meeting was held at which the parties discussed the nature of and

Proposed Discovery Plan and Case Schedule.
a.

Discovery will be needed on at least the following subjects: patent validity, patent

infringement and damages, as well as the defenses and counterclaims asserted by Google. As
indicated below, Google believes that discovery with respect to willfulness and damages should
be bifurcated. IconFind opposes bifurcating discovery with respect to willfulness and damages
and believes bifurcation would result in more burden, expense and delay for the parties and the
Court.
b.

The parties will exchange the information required by Fed. R. Civ. P. 26(a)(1) by

June 10, 2011.
c.

On or before July 1, 2011, IconFind will provide initial infringement contentions

containing the following information: 1) each asserted patent claim; 2) each accused

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JOINT STATUS REPORT
Case No. 2:11-CV-00319 GEB JFM

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instrumentality; 3) a chart identifying where each limitation of each asserted claim is found

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within the accused instrumentality; 4) the priority date to which each asserted claim is entitled;

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and 5) the bases for its willful infringement allegation. With its infringement contentions, and to

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the extent not already provided in discovery, IconFind will produce: 1) all documents evidencing

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conception and reduction to practice of each claimed invention; 2) a copy of the file history for

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the patent in suit; and 3) all documents evidencing ownership of the patents by IconFind. The

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foregoing contentions are to be deemed continuing, requiring prompt supplementation whenever

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the conditions of Fed.R.Civ.P. 26(e) are satisfied.

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d.

On or before August 15, 2011, Google will provide initial invalidity contentions

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containing the following information: 1) the identity of each item of prior art on which Google

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intends to rely; 2) whether each item of prior art anticipates each asserted claim or renders it

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obvious, including an explanation of why the prior art renders the asserted claim obvious and an

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identification of any combinations of prior art; 3) a chart identifying where in each item of prior

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art each limitation of each asserted claim is found; 4) any grounds for invalidity under 35 U.S.C.

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§§ 101 and 112. With its invalidity contentions, and to the extent not already provided in

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discovery, in conformity with a Protective Order entered into in this matter , Google will produce

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or otherwise make available for inspection: 1) source code, specifications, schematics, flow

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charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects

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or elements of the accused instrumentality identified by IconFind; and 2) a copy of each item of

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prior art identified in Google's invalidity contentions. The foregoing contentions are to be

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deemed continuing, requiring prompt supplementation whenever the conditions of Fed.R.Civ.P.

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26(e) are satisfied.

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e.

The parties should be allowed until November 21, 2011 to join additional parties

and to amend the pleadings.
f.

Each party shall serve on each other party its Proposed Terms for Construction by

September 30, 2011.

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JOINT STATUS REPORT
Case No. 2:11-CV-00319 GEB JFM

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g.

The parties shall simultaneously exchange their Proposed Claim Constructions and

Extrinsic Evidence by November 11, 2011.
h.

The parties shall file their Joint Claim Construction and Prehearing Statement by

December 16, 2011.
i.

Each party shall serve and file an opening claim construction brief and supporting

evidence by January 20, 2012.
j.

Each party shall serve and file its responsive brief and supporting evidence by

February 24, 2012.
k.

Subject to the convenience of the Court's calendar such hearing will be held on or

about March 15, 2012.
l.

Initial expert disclosures will be made by 21 days after the entry of a Claim

Construction Order by this Court.
m.

All fact discovery shall be commenced in time to be completed by 45 days after

the entry of a Claim Construction Order by this Court.
n.

Reports from retained experts under Rule 26(a)(2): Initial reports for matters on

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which a party bears the burden of proof shall be served 45 days after the entry of a Claim

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Construction Order by this Court. Rebuttal expert reports shall be served 75 days after the entry

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of a Claim Construction Order by this Court.

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o.

Any party desiring to depose an expert witness shall notice and complete said

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deposition no later than thirty days from the day rebuttal expert reports are due, unless otherwise

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agreed in writing by the parties or ordered by the Court.

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p.

All dispositive, partially dispositive or other motions shall be filed by 120 days

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after the entry of a Claim Construction Order by this Court. Since discovery has not yet been

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initiated, the parties do not have a firm understanding as to which, if any, issues may be

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determined by motion.

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JOINT STATUS REPORT
Case No. 2:11-CV-00319 GEB JFM

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q.

A final pre-trial conference to be held approximately 90 days before trial as the

Court’s schedule allows.

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r.

The parties believe that the case will be ready for trial 260 days after the entry of a

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Claim Construction Order by the Court. A jury trial has been demanded. The parties anticipate

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that the trial will take approximately 5-7 court days to complete.

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s.

Google believes that the issues of infringement, invalidity and unenforceability,

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should be separated from the issues of willfulness and damages for purposes of discovery and

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trial. Accordingly, Google contends that the above should only apply to the issues of

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infringement and invalidity and a new schedule should be issued, as appropriate, to address the

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issues of willfulness and damages. IconFind opposes bifurcating discovery with respect to

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willfulness and damages and believes bifurcation would result in more burden, expense and delay

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for the parties and the Court.

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6.

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interrogatories and all other discovery, absent further agreement of the parties or leave of the

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Court, save as indicated below:

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The limitations of the Federal Rules of Civil Procedure shall govern depositions,

a. Maximum of 35 requests for admission by each side, not including requests for

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admission solely regarding authentication of documents for which there shall be no

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limit.

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b. To the extent that an inventor is provided as a Rule 30(b)(6) witness, this does not

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preclude such person from being noticed for deposition in his or her individual

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capacity under Rule 30(a)(1).

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proceedings.

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8.

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their agreement with respect to such discovery is attached as Exhibit 1 to this Joint Status Report.

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9.

At this time, the parties do not propose any modifications to the standard pretrial

The parties have addressed the issue of discovery of electronically stored information, and

The parties anticipate submitting a proposed protective order in this matter.

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JOINT STATUS REPORT
Case No. 2:11-CV-00319 GEB JFM

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alternate dispute resolution including as required under Local Rule 240(a)(17) and Local Rule

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271(d). The undersigned counsel understand and have explained to their respective clients the

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Voluntary Dispute Resolution Program rules and process, and, the undersigned counsels’ clients

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have carefully considered whether this action might benefit from participation in the Voluntary

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Dispute Resolution Program. The parties believe that settlement is unlikely at this time, however,

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the parties are open to further discussions regarding settlement. The likelihood of settlement

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may, however, increase after the parties have exchanged their respective contentions and

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discovery documents and responses.

The parties have discussed the possibility of settlement and the appropriateness of

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are necessary in this matter. The parties do not consent to try this matter before a magistrate

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judge.

The parties do not believe that any special procedures such as reference to a special master

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Dated: May 9, 2011

By:

/s/ Brian E. Hahn
As Authorized on May 9, 2011
Brian E. Hahn
NIRO, HALLER & NIRO
Attorneys for IconFind, Inc.

By:

/s/ Michael Malecek
Michael Malecek
KAYE SCHOLER LLP
Attorneys for Google Inc.

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JOINT STATUS REPORT
Case No. 2:11-CV-00319 GEB JFM