Acer, Inc. et al v. Technology Properties Limited et al

Filing 297

FIRST PATENT SCHEDULING ORDER; NOTICE OF INTENT TO APPOINT A SPECIAL MASTER. Signed by Judge James Ware on 10/5/11. (sis, COURT STAFF) (Filed on 10/5/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION
Acer, Inc.,

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For the Northern District of California

United States District Court

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Plaintiff,
v.

Defendants.

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Plaintiff,
v.
Technology Properties Ltd, et al.,
Defendants.

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HTC Corp.,

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FIRST PATENT SCHEDULING ORDER;
NOTICE OF INTENT TO APPOINT A
SPECIAL MASTER

Technology Properties Ltd, et al.,

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NO. C-08-00877 JW
NO. C-08-00882 JW
NO. C-08-05398 JW

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Barco NV,
Plaintiff,
v.
Technology Properties Ltd, et al.,
Defendants.

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On October 3, 2011, the Court conducted a Case Management Conference for the above

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entitled related cases. Counsel for the respective parties were present. Based on the discussion at

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the Conference, the Court ORDERS as follows:

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A.

Notice of Intent to Appoint a Special Master
At the Conference, the Court suggested the appointment of a Special Master to assist in the

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management of this lawsuit. The parties were agreeable. Due to the parties’ consent, the

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complexity of legal and factual issues involved in this case, and the cost savings to the parties which

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will result from a more focused management of pre-trial matters, the Court concludes that the

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appointment of a Special Master in this lawsuit would be beneficial to all. Pursuant to FED. R. CIV.

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P. 53, the Court notifies the parties of its intent to appoint a Special Master.

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1.

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The Special Master shall preside over all proceedings, with the power to hear and make
reports and recommendations on the following pretrial matters:

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For the Northern District of California

United States District Court

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Scope of the Special Master’s Appointment

a.

Timing of pre-answer motions or any responsive pleadings;

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b.

Timing and content of initial disclosures;

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c.

Case development processes (e.g., staged discovery and discovery schedules or
plans);

d.

Disclosures or discovery;

e.

Disclosures or discovery disputes;

f.

Limits on the number of party experts.

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Furthermore, the Special Master shall have the authority to:
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g.

Conduct pretrial conferences and hearings to establish:

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(1)

The substance of the claims and defenses presented in the case and of the
issues to be decided;

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(2)

The material facts not reasonably disputable;

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(3)

The disputed material factual issues;

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(4)

The relief claimed, including a particularized itemization of all elements of
damages which may reasonably be claimed based upon the evidence which
would be presented at trial;

(5)

The pertinent undisputed and disputed points of law, with respect to liability
and relief, including proposed jury instructions;

(6)

The witnesses necessary to be called at trial, except for impeachment or
rebuttal, together with the substance of the testimony to be given;

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(7)

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A compilation of all documents and other items necessary to be offered as
exhibits at trial, except for impeachment or rebuttal, together with a brief
statement following each item describing its substance or purpose and the
identity of the authenticating witness;

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h.

Audit and establish attorney fees to be awarded, if any.

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The Special Master shall exercise the power necessary or proper to regulate all proceedings
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before him and shall do all acts and take all measures necessary or proper for the efficient
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performance of his duties under this Order.
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The Special Master shall file numbered interim reports or recommendations which: 1)
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advise this Court of the status of the case, and 2) recommend the disposition of any matter heard by
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him. The parties shall have ten (10) days from the date an interim report or recommendation is filed
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days after the objection is filed. If no objection is filed, the Special Master’s report or
For the Northern District of California

United States District Court

to file any objections. Any party opposing the objection(s) shall file an opposition within ten (10)
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recommendation shall become a binding Order of the Court and the parties shall comply with the
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Order. If, however, an objection is filed, the matter shall be deemed submitted to the Court without
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oral argument twenty (20) days after the Special Master’s report or recommendation is filed–unless
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an application is made and the Court orders the matter to be scheduled for hearing.
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Reports or recommendations pertaining to non-dispositive motions or pretrial discovery
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matters shall be reconsidered by this Court only where the Special Master’s report or
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recommendation is clearly erroneous or contrary to law.
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2.

Fees and Costs of Special Master

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Unless the Court receives a recommendation from the Special Master for some other
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apportionment, each party shall bear the cost of the Special Master on a per capita basis, payable in
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advance. Upon the appointment of the Special Master, the parties shall meet and confer with the
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Master and develop a plan to set up a trust account whereby the parties shall deposit, initially,
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$20,000 each to cover the anticipated fees and costs. The Special Master shall issue statements to
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the parties and draw from the trust account every 30 days for his performance of the appointment.
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The Special Master will bill at the rate of $600.00 per hour.
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The Special Master shall report to the Court on a periodic basis, every 60 days, regarding the

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state of his fees and expenses and make a recommendation to the Court as to whether the trust

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account needs additional deposits from the parties as the case progresses.

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3.

Nomination of Special Master

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The Court nominates Tom Denver.1 The parties shall file any objections to Mr. Denver

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being named as Special Master on or before October 13, 2011. In their objections, the parties shall

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provide alternate nominations.

affidavit as required by FED. R. CIV. P. 53(b)(3). The Court’s appointment of the Special Master

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shall become effective on October 14, 2011. Once the appointment is effective, the parties shall

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For the Northern District of California

If no objection is filed and Mr. Denver accepts his appointment, Mr. Denver shall file an

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United States District Court

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notice all relevant discovery and pretrial motions before the Special Master.

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B.

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Case Schedule
The parties shall adhere to the following Case Schedule:

Joint Claim Construction and Prehearing Statement

November 18, 2011

Close of Claim Construction Discovery
(.30 days after the Joint Claim Construction and Prehearing
Statement )

December 19, 2011

Case Tutorial

January 20, 2012

Claim Construction Hearing

January 27, 2012

Further Case Management Conference

February 27, 2012

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None of the dates set in this Order may be changed without an order of the Court made after
a motion is filed pursuant to the Civil Local Rules of Court.

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1.

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No later than the date set in the Case Schedule, all parties must serve on all other parties

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Claim Construction Proceedings

Preliminary Claim Constructions and Extrinsic Evidence pursuant to Patent L.R. 4-2.

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Mr. Denver is with Mediation Masters and may be reached at [phone].
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No later than the date set in the Case Schedule, the parties must file a Joint Claim

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Construction Statement and Prehearing Statement pursuant to Patent L.R. 4-3. The statement shall

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be presented in the following chart format:

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Disputed Term

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Plaintiff’s Proposed
Construction

Defendant’s Proposed
Construction

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The parties shall express their proposed construction in a manner suitable for incorporation into a

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jury instruction. The parties shall identify the terms whose construction will be most significant to

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the resolution of the case, and particularly to the Motion for Summary Judgment currently pending

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before the Court. However, the total terms identified by all parties as most significant cannot exceed

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For the Northern District of California

United States District Court

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10.
Pursuant to Patent L.R. 4-4, all discovery, including depositions of expert witnesses, relating

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to claim construction must be completed within 30 days of filing the Joint Claim Construction

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Statement and Prehearing Statement.

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On the date set in the Case Schedule, the parties shall appear before the Court to present a

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tutorial. The purpose of the tutorial is to allow each party to inform the Court about the background

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of the technical information which is involved in the case and the nature of the dispute.

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Presentations may include demonstrations, expert testimony, or audio visual materials. No cross-

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examination will be permitted. However, the Court may pose questions to parties or witnesses. No

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record will be made of the proceedings. Statements made during the tutorial may not be cited as

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judicial admissions against a party. Each side shall have 90 minutes for their presentation. Any

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party wishing for additional time shall make the appropriate administrative motion in accordance

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with the Civil Local Rules of Court. See Civ. L.R. 7-11.

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At the Tutorial, the parties shall be prepared to address the following procedural
history:

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(a)

A review of Judge Ward’s claim construction order(s);

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(b)

A review of the PTO’s reexaminations and the impact, if any, those proceedings

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have on these cases;
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(c)

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A review of the claims identified in Defendant HTC’s Motion for Summary
Judgment of Non-Infringement as significant in resolving the Motion.

the hearing the Court will consider only intrinsic evidence to interpret the disputed claims, i.e., the

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claims themselves, the written description portion of the specification and the prosecution history.

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Pertinent portions of the intrinsic evidence should be highlighted and indexed to the disputed claim

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language. No testimony will be allowed, unless the Court orders otherwise, based upon a timely

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motion noticed for hearing at least 10 days prior to the Claim Hearing by any party wishing to

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present testimony. Each side shall have 90 minutes for their presentation. Any party wishing for

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additional time shall make the appropriate administrative motion in accordance with the Civil Local

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For the Northern District of California

On the date set in the Case Schedule, the Court will hold a Claim Construction Hearing. At

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United States District Court

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Rules of Court. See Civ. L.R. 7-11.

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Notwithstanding Patent L.R. 4-5, the parties shall comply with the following briefing
schedule:
1.

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Opening Brief: The party claiming patent infringement must serve and file its

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opening brief and supporting evidence on or before the date 35 days prior to the Claim

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Construction Hearing. Accompanying the brief must be a proposed jury instruction which

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incorporates the language which the party contends should be adopted in construing the

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claims.

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2.

Responsive Brief: Each opposing party must serve and file its responsive brief

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and supporting evidence on or before the date 21 days prior to the Claim Construction

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Hearing. Accompanying the brief must be a proposed jury instruction which incorporates the

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language which the party contends should be adopted in construing the claims.

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3.

Reply Brief: The party claiming patent infringement must serve and file any

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reply brief and supporting evidence on or before the date 14 days prior to the Claim

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Construction Hearing.

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2.

Procedure Regarding Dispositive Motions in Patent Cases

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Prior to filing any dispositive motion, the moving party must first advise the Court and

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opposing counsel of its intention to do so by filing and serving a request for a case management

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conference regarding dispositive motion(s). The request must outline the undisputed factual basis

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and legal basis of the proposed motion(s) and a proposed briefing and hearing schedule. The Court

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may schedule a case management conference to establish the schedule for briefing and hearing the

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motion(s) in an orderly and efficient manner or may issue an order adopting the schedule proposed

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by the parties.

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Once a hearing date for the motion has been set and the briefing is closed, the moving party
shall compile a three ring binder (to be lodged with the Court) containing (1) the motion and any

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For the Northern District of California

United States District Court

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supporting memorandum of law; (2) the opposition memorandum; (3) any reply memorandum; and

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(4) any exhibits in support or opposition to the motion, which shall be clearly labeled. At the

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beginning of each binder the moving party shall include, as appropriate, a Chart A or B, in the

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format described below; each statement shall be supported by appropriate citations to the motion

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papers and or exhibits.

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Chart A - Summary of Infringement Issues
Patent Claim/Elements

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Stipulated
Construction/Court
Construction

Accused Product

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‘000 Patent, Claim 1

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an apparatus comprising

apparatus means: “a device
which. . .”

Riverside Model 2

1. a handle

Riverside Model 2

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“handle” means a part held
by the human hand

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Defense Asserted

Chart B - Summary of Invalidity Issues

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Title of
Motion

Patent

Claim No.

Basis of
challenge

Summary of
argument in
support of
motion

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the product lacks a handle

Summary of
argument in
opposition to
motion

Comments

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Partial
Motion for
Summary
Judgment of
Invalidity

‘000

Claim 3

Lack of
Disclosure of
Best Mode

The
specification
states that the
inventor was
aware [See
‘000 Patent,
Col 3:5-10]

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The reference is to
a different
invention.

This matter is
controlled by
the Court’s
claim
construction
of the
following
terms:

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3.

Electronic Storage of Exhibits

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The Court has available a digital and video electronic evidence presentation system. The

the case will involve voluminous documentation. If so, as the parties identify documentary material

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For the Northern District of California

parties are ordered to familiarize themselves with the system, and to meet and confer about whether

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United States District Court

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which is likely to be used as trial exhibits, the parties are ordered to electronically store these

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materials in a fashion which will facilitate displaying them electronically during the trial. The

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parties are reminded that Civil L.R. 30-2(b) requires sequential numbering of exhibits during

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depositions and that numbering must be maintained for those exhibits throughout the litigation.

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Each proposed exhibit shall be pre-marked for identification. All exhibits shall be marked with

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numerals. The parties shall meet and confer on a division which will avoid duplication (e.g.,

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Plaintiff: 1-99,000; Defendant #1: 100,000-299,999; Defendant #2: 300,000-500,000).

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4.

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In addition to having a Special Master manage the parties’ discovery efforts, the Court

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Technical Advisor

reserves the right to also appoint a Technical Advisor.

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A district judge has inherent authority to appoint a technical advisor when the judge deems it

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desirable and necessary. Ass’n of Mexican-Am. Educators v. California, 231 F.3d 572, 590 (9th Cir.

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2000) (en banc). The exercise of this authority should be used sparingly and only in highly

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complicated cases. TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1378 (Fed. Cir. 2002)

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(interpreting the Ninth Circuit standard for appointing technical advisors). In those limited cases,

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where the complexity of the science and technology involves something well beyond regular

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questions of fact and law, the district court has the inherent authority to tap the outside skill and

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expertise of a technical advisor. Fed. Trade Comm’n v. Enforma Natural Prod., Inc., 362 F.3d 1204,

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1213 (9th Cir. 2004); see also Reilly v. United States, 863 F.2d 149, 157 (1st Cir. 1988). The

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technical advisor acts as educator, advising on terminology so that the district court can better

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understand complex evidence and properly discharge its role as decision maker. See TechSearch,

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286 F.3d at 1377.

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Accordingly, upon review of the Patents-in-Suit and the parties’ Claim Construction briefs,

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the Court will give notice as to whether an appointment of a Technical Advisor is warranted in this

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case.

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Dated: October 5, 2011
JAMES WARE
United States District Chief Judge

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For the Northern District of California

United States District Court

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THIS IS TO CERTIFY THAT COPIES OF THIS ORDER HAVE BEEN DELIVERED TO:

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Deepak Gupta [e-mail]
Eugene Y. Mar [e-mail]
Harold H. Davis [e-mail]
Jas S Dhillon [e-mail]
Jas S Dhillon [e-mail]
Jas S Dhillon [e-mail]
Jeffrey M. Fisher [e-mail]
Jeffrey Michael Ratinoff [e-mail]
John L. Cooper [e-mail]
Kyle Dakai Chen [e-mail]
Mark R. Weinstein [e-mail]
Nan E. Joesten [e-mail]
Paul A. Alsdorf [e-mail]
Samuel Citron O'Rourke [e-mail]
Stephanie Powers Skaff [e-mail]
Timothy Paar Walker [e-mail]
William Sloan Coats [e-mail]

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For the Northern District of California

United States District Court

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Dated: October 5, 2011

Richard W. Wieking, Clerk

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By:

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/s/ JW Chambers
Susan Imbriani
Courtroom Deputy