Intermec Technologies Corp. v. Palm, Inc.

Filing 23

EXHIBITS re 15 Response ( Non Motion ) Exh H filed byGoogle Inc.. (Related document(s) 15 ) (Kobialka, Lisa) (Filed on 5/29/2009)

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Intermec Technologies Corp. v. Palm, Inc. Doc. 23 Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page1 of 20 EXHIBIT H Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page2 of 20 1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 BEFORE: vs. IN THE UNITED STATES DISTRICT COURT IN AND FOR THE DISTRICT OF DELAWARE --INTERMEC TECHNOLOGIES CORP., Plaintiff, : : : : : : : : : : : --Wilmington, Delaware Monday, May 18, 2009 4:04 o'clock, p.m. ***Telephone conference --HONORABLE LEONARD P. STARK, U.S. MAGISTRATE JUDGE --APPEARANCES: MORRIS, NICHOLS, ARSHT & TUNNELL BY: RODGER D. SMITH II, ESQ. -andCIVIL ACTION PALM, INC., a Delaware corporation, Defendant. NO. 07-272-SLR-LPS Valerie J. Gunning Official Court Reporter PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page3 of 20 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 APPEARANCES (Continued): FREEBORN & PETERS LLP BY: CARSON P VEACH, ESQ. and JACOB D. KOERING, ESQ. (Chicago, Illinois Counsel for Plaintiff POTTER ANDERSON & CORROON LLP BY: DAVID E. MOORE, ESQ. -and- COVINGTON & BURLING BY: MICHAEL J. MARKMAN, ESQ. (San Francisco, California) Counsel for Defendant 17 18 19 20 21 22 23 24 25 --- PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page4 of 20 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 PROCEEDINGS (REPORTER'S NOTE: The following telephone conference was held in chambers, beginning at 4:04 p.m.) THE COURT: Judge Stark. Good afternoon, counsel. This is Who is there, please? MR. SMITH: Good afternoon, your Honor. Rodger Smith, from Morris Nichols, on behalf of the of plaintiff, Intermec. I also have my co-counsel, Carson Veach and Jake Koering from Freeborn & Peters in Chicago with me. THE COURT: MR. MOORE: All right. Good afternoon your Honor. Dave And Moore, from Potter Anderson, on of behalf of Palm. with me on the line is Michael Markman from Covington & Burling. THE COURT: All right. Good afternoon. For the record, this is our case of Intermec Technologies Corporation versus Palm, Inc. Action No. 07-272-SLR-LPS. I have reviewed the parties' joint letter regarding whether to, I suppose, amend the third amended, or amend the second amended scheduling order. I think I It's Civil have a good sense of the dispute, but I do want to give both PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page5 of 20 4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 sides a chance to add briefly anything that they want to add as followup to the letter. Mr. Smith, why don't you or your colleague start us off, please. MR. SMITH: Thank you, your Honor. Very briefly, as the Court will probably remember, we talked on the phone about two months ago, March 13th, about a two-month adjustment to the schedule here, and in advance of getting on the phone, the parties agreed to that, and both sides had some discovery to be taken. And I think it's important in this context to It was not just the Intermec discovery It was also remember that. that was getting done in that two-month period. some Palm discovery. And Palm, on the record of that hearing, mentioned they had subpoenas to Fed-Ex, hand-held, four prosecuting attorneys and a licensing deposition that were also going to get taken in this two-month period. And interestingly here, it actually was Palm who first asked if they could go beyond -- if we would agree that they could go beyond the May 18th deadline for, in fact, completing fact discovery, and Intermec agreed to that. And on the flip side, Intermec has been working diligently to get its discovery done from these five third PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page6 of 20 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 parties and on subpoenas that were issued in early March. The Sprint and Verizon subpoenas, my understanding is, those are essentially completed, and that just leaves these other three, Microsoft, AT&T and Google, that are not complete as of today, which is the close of fact discovery as it currently stands. I don't want to belabor what was already in our letter, your Honor, but the Microsoft deposition was originally scheduled for May 12th, I think it was, and because of some scheduling issues for Microsoft, had to be pushed back after May 18. Palm originally agreed to that, in part because Intermec had extended them similar accommodation on their deposition of one of the prosecuting attorneys, agreeing that they could take that after May 18 as well. It was only of after it became clear that that discovery from Microsoft wasn't going to get done before the June 1st date for exchange of expert reports that Palm backed off its original agreement, to allow us to go beyond the May 18 date for that discovery. And Microsoft has given us dates, I think, that are going to get this discovery done by early June, but probably not by the June 1st date that currently is in place for completion, or exchange of expert reports. The AT&T depositions, the documents have been PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page7 of 20 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 produced from AT&T, but the depositions, I think the dates offered now are May 21 and 27, so they are not very far of off in terms of getting that done within a reasonable time period here. The last piece of this, and I'm sure your Honor had a chance to look at Judge Alsup's ruling that was attached to the letter, relates to Google. And it's sort of ironic because Intermec originally issued the Google subpoena out of Delaware. Google is incorporated here and As a convenience the subpoena was issued out of Delaware. for Google, we reissued it out of California. We get before Judge Alsup, and he indicated that we should have gotten some sort of indication from the Delaware Court that -- about relating to the relevance of what we were seeking from Google. So it is currently our intention with respect to Google to issue, reissue a subpoena out of Delaware related to Google with a relatively quick return date, in particular because they've had the original subpoena for 60 days or more, and should be able to respond relatively quickly. To the extent there needs to be any further motion practice with respect to Google, either motion to quash or motion to compel, that would be properly brought before your Honor, given the relationship to the pending PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page8 of 20 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 case. So it's a long way around to say people have been working very hard to get third-party discovery done, be it they're not parties within our control. And the basic relief we're before your Honor today seeking is an 11-day, essentially, an 11-day extension of time for expert reports, from June 1st to June 12th, and the opportunity to complete this third-party discovery along the terms I've just laid out. I think a couple things are important, and then I will be quiet. A couple things are important. A couple things Palm does not say in their papers, they never say that the discovery we're seeking is not relevant and they don't say that they're going to be prejudiced. So I think the upshot here is basically that Palm is trying to get a tactical advantage by holding us to the date, even though they don't dispute that there is some relevance to this discovery and they can't show any prejudice. Basically, all of this is encouraging these third parties to run out the clock and prevent us from getting relevant discovery. So we'd respectfully ask your Honor to grant our request to extend the expert report date to June 12th and give us permission to complete this discovery. PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page9 of 20 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 June 12th. THE COURT: Now, but you want more than just You also want a chance to amend the expert reports if you get third-party discovery subsequent to June 12th. Is that right? MR. SMITH: Your Honor, part of our problem is trying to understand how quickly we'll get compliance. Google will be the best example here. Not knowing how or when Google will comply, it does put us in a little bit of a box. I mean, we could live, I think, with a June 12th exchange date for expert reports, and I think in the coming days or week, we'll know whether Google will have the Google information in hand in time to meet that date or whether we'd need a further adjustment. I mean, I've also seen it in other cases, where you have third-party issues hanging out there, that there is a limited leave to supplement your report to account for any additional information gathered through a deposition or two that could either -or in a foreign country or otherwise delayed in coming into the case. THE COURT: May 18th date. And refresh my recollection on the You indicated that that had been agreed upon before I got on the call. Did you not reasonably think that you would be done by today, and why shouldn't I hold you to that date? PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page10 of 20 9 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 for Palm. MR. SMITH: We obviously had every expectation Nobody would be happier than But it's largely due to that we would get this done. Intermec to have this done. circumstances beyond our control that it hasn't gotten done. THE COURT: All right. Mr. MOORE, or Mr. Markman, if you could -MR. MARKMAN: Your Honor, this is Mike Markman, Why don't I start where Mr. Smith ended. First of all, we do believe that the discovery that Intermec is trying to take is not relevant and the Google subpoena is the best example of that. There is an order on Google's motion for protective order before Judge Alsup, which your Honor now has, in which Judge Alsup makes clear in no uncertain terms that he is granting Google a protective order. Now, Intermec may want to go and try to reissue a subpoena as to Google from Delaware, but woe beyond to them, if they ever of want to go back in front of Judge Alsup. I believe that there are some significant issues that Judge Alsup would have with respect to a reissued Google subpoena or even the notion that it is being raised on the call today that would, quite frankly, astonish the Court here in the Northern District of California, and may, in fact, be in violation of Judge Alsup's order. PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page11 of 20 10 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 In Judge Alsup's order, he states in no uncertain terms that the discovery Intermec was seeking was likely irrelevant, but that the relevance was beyond the issue as a result of some other findings that he found with respect to the overbreadth the subpoena. Now, Palm has, at every time in this case, done its utmost to be reasonable. Two months ago, when we were before you the last time on March 13th, we agreed that we could move the discovery cutoff in the case out along with all of the other dates, including service, dates for service of expert reports by two months. And we also stated in no uncertain terms on the record of that call, in which I think everybody on the phone was a participant, that that would be it. That would be the last extension of time, precisely because it otherwise would result in prejudice to Palm, because it's time to exchange expert reports and get things moving again. In fact, your Honor, if I remember correctly, needed to go and confer with Judge Robinson's chambers about moving the date again for the claim construction hearing in order to accommodate the change in deadline that Intermec was proposing. Now, during the two-month period that we have done this, Palm has agreed with respect to Intermec's deposition dates and has proceeded diligently to finish up PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page12 of 20 11 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 the discovery that Palm wanted to take. The deposition of Federal Express took place and has been completed. We've decided that it is not necessary to take the depositions of most of the prosecuting attorneys that we thought we might need to depose while reserving all rights to take their depositions if they appear on a trial witness list later on. And here we are at the end of the two-month period of time that everybody had agreed to and everybody knew there would be no extensions from, and they want to take further discovery from Google despite an order that they would likely be in contempt on. And they want to take further irrelevant discovery from AT&T and from Microsoft. So Palm's position is very simple. They ought to be held to the May 18th date that everybody agreed on that we thought we would be done with by this stage. And with respect to Mr. Smith's characterizations of Palm backing out of a deal to take depositions after the discovery cutoff, out of professional courtesy, we had agreed that we could shuffle around deposition dates, but never in a million years did we agree that we would change the dates for the exchange of expert reports. We never expected that they would try to offer deposition dates that would be after the date for the PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page13 of 20 12 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 exchange of expert reports. And the reason why we would not have agreed to that is because we need finality in the expert reports because, throughout the case, we've been shooting at a moving target. And by way of example, Google's name does not appear anywhere in the infringement contentions that Intermec has served. Neither does AT&T. Neither does anybody else, except perhaps Microsoft and Sun MicroSystems, which they chose not to depose. So Palm's position is simply that we have bargained in very good faith here, we've tried to be extremely reasonable about these deposition dates, and at this stage, discovery should be done. And I think the To continue Google subpoena is the best example of that. litigating against Google by Intermec does not serve any useful purpose and likely would result in a contempt finding back here in California. THE COURT: All right. Let's say that I agree, Mr. Markman, that your client has acted in good faith and maybe May 18th was going to be the cutoff. Articulate to me why I shouldn't just give Intermec, nonetheless, an extra week to two weeks for discovery and for the initial expert report. You know, basically take the time out of the month you have all given yourselves to do a rebuttal expert report and keep PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page14 of 20 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 everything on track, because I do agree, I don't intend to move any of the later dates, and I don't think Judge Robinson intends that either. See why not give an them an extra 10 to 14 days out of the expert period and then be done with it? MR. MARKMAN: The problem, your Honor, with that is that it jams Palm far more than -- and would prejudice Palm far more than it would prejudice Intermec. We are defending against allegations of infringement as to five very complicated patents, and our rebuttal report is going to have to address the noninfringement -- well, the infringement arguments that are set out in Intermec's opening expert report. Now, Intermec's opening expert report apparently is going to be based on some of this new discovery, none of which is even referenced at all in their infringement contentions. So we are not going to have a good idea of what there is to shoot at, if you will, until we see the opening expert report. And at that point, if the time is taken out of rebuttal expert report time, we're going to be left scrambling while Intermec is basically allowed to get discovery, to keep the target moving, and to really jam us despite the fact that we bargained in good faith here. THE COURT: All right. And did I understand PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page15 of 20 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 correctly, you are done with your depositions at this point? MR. MARKMAN: We are. There's a single prosecuting attorney deposition that Palm had continued to want to take that does not impact any of the expert report deadlines and that Intermec at least initially had agreed we could take after May 18th, but if we need to forego that deposition, then so be it. We believe that's outside of the scope of what we had agreed to here because the testimony from that witness will not impact anything in any of the expert reports. It purely relates to inequitable conduct allegations in the case. THE COURT: MR. SMITH: couple of points? THE COURT: MR. SMITH: Yes. Go ahead. All right. Your Honor, may I be heard on a Regardless of whether Mr. Markman at this point is willing to give up that deposition of the prosecuting attorney, those were, in fact -- some of the depositions, the prosecuting attorney depositions, were some of the ones that Palm was given the right to take within the additional two-month period that we last talked about at the conference on March 13th. So he may give it up now, but, again, that was something he did not get done in the time, and, frankly, PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page16 of 20 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 it's not surprising that some of these third-party issues take some time. It happens in virtually every case. In terms of the surprise, or the lack of understanding of what the infringement contexts are, I mean, this is all discovery that Intermec initially sought from Palm and its 30(b)(6) witnesses, as you might remember. And the claims of the patents here relate not just to the device that Palm sells, the hand-held phone, but it relates -- they relate to how that phone exists and interacts with Internet programs and cell phone systems. So the idea that Palm, there might be some relevance to how Palm's products work within larger systems, it shouldn't be a surprise to them, and they should be able to understand pretty easily how that would be relevant here. In terms of the timing, I know your Honor suggested taking the time out of the initial expert reports. There's actually a fair amount of time before any summary judgment or claim construction briefing is due. I think that process starts the end of August, August 28th, so it's roughly three months from now for the parties to get two rounds of expert reports exchanged and do some expert discovery. So whether you take all of the week or two weeks from opening reports, or whether you then just have PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page17 of 20 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 that slide out by a comparable amounts of time and maybe take it out of the deposition period, whatever, there's certainly enough time here to alleviate whatever prejudice Mr. Markman claims with respect to having to respond to our experts. MR. MARKMAN: point for Palm? THE COURT: Yes. Go ahead. Your Honor, may I make one final MR. MARKMAN: The only other thing that I would add to this discussion is, it would have been very easy if, as Mr. Smith is saying, it should have been clear that the Palm products are being accused as a component of a larger system. It would have been very easy for them to serve subpoenas on these third parties many, many months before they did. They chose to do it right before the close of fact discovery the last time, and in order to accommodate them and be reasonable, and as a result of information that we learned in depositions at the end of the last fact discovery cutoff, we agreed to give them another two months. But the point is, Intermec, if it really is as straightforward as Mr. Smith makes it sound, could have served these subpoenas months and months ago, and they should have, and we should not be talking about modifying a case schedule that has impacts on third-party experts, PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page18 of 20 17 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 on attorney preparation and on the Court at this late date. THE COURT: All right. Thank you, counsel. What you have said has been helpful and the letter was direct and to the point as well, and I appreciate that. I have to say, I am surprised a bit that we are here where we are. We are not talking about a large time difference in terms of the relief that's sought. On the other hand, I understand the frustration that Palm feels that we are even here at all and that this third-party discovery is not done yet. It certainly seems that it was anticipated when we last met by the parties, and I think by the Court as well, that this would all be done by now, and I understand you are close, but you are not quite there. So I'm faced with a situation where there is some -- there's a little bit of time, not much, there is a little bit of time left in the discovery schedule, in the scheduling order, such that I could and am going to move some dates around just a little bit. But I do also want to say that, obviously, it would have been better if all of this had been wrapped up. If the third-party fact discovery efforts had started a little sooner, then maybe we wouldn't be in this situation. PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page19 of 20 18 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 What I am going to do considering all the factors, the potential relevance as well as the potential burden, is, I am going to extend the fact discovery cutoff to May 29th. on June 5th. So I recognize that's going to be a very short turnaround time for the opening expert reports, but that is a result of how long it has taken to get this third-party discovery. And I'm going to retain the I am going to make opening expert reports due one-month period for rebuttal expert reports and move that date to July 6th. where they are. So expert discovery to be commenced in time to be completed by July 27th. My hope and my thought, based on the representations that have been made, is that the extra almost two weeks or 11 days, I guess, of fact discovery will give Intermec time to complete the discovery from AT&T. My hope, if you wish, is that you will get the Microsoft discovery due by then. If I understood correctly, And I'm going to keep all the other dates it could have been done by now, or soon after now, but for some concern about expenses and traveling. It seems to me if this discovery is important enough, you will get it done by the May 29th date. PAC917629v.1 05/22/2009 9:53 am Case3:09-mc-80097-WHA Document23 Filed05/29/09 Page20 of 20 19 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Bye. dates. And with respect to Google, I don't have a live dispute in front of me. If Intermec chooses to subpoena Google again, I think it's likely that will end up in some type of litigation, given what Judge Alsup has to say. I will rule on that if and when it comes before me. this point, no one is directly asking, and I am not providing any opportunity to supplement expert reports. So, again, we are going to change just a few We are going to have fact discovery cutoff of We are going to have expert reports, the initial But And at May 29th. expert reports, due by June 5th, and the rebuttal expert reports due by July 6th. We will get an order out with these new dates. I don't want reargument, but anything that I've not been clear about, Mr. Smith? MR. SMITH: THE COURT: No, your Honor. And Mr. Markman? No, your Honor. Thank you. MR. MARKMAN: THE COURT: All right. Thank you, counsel. (Telephone conference concluded at 4:22 p.m.) - PAC917629v.1 05/22/2009 9:53 am

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