Innovus Prime, LLC v. LG Electronics, Inc et al

Filing 144

PATENT SCHEDULING ORDER; ORDER GRANTING PLAINTIFF LEAVE TO AMEND; DENYING MOTION TO DISMISS AS MOOT. Infringement Contentions due by 02/24/12; Invalidity Contentions due by 03/30/12Case Management Statement due by 9/21/2012. Claim Construction Disc overy due by 8/27/2012. Joint Claim Construction and Prehearing statement due by 6/1/2012. Case Management Conference set for 10/1/2012 09:00 AM in Courtroom 9, 19th Floor, San Francisco. Claims Construction Hearing set for 11/9/2012 09:00 AM. Tutorial Hearing set for 11/8/2012 09:00 AM in Courtroom 9, 19th Floor, San Francisco. Signed by Judge James Ware on 2/7/12. (sis, COURT STAFF) (Filed on 2/7/2012)

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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
Innovus Prime, LLC,

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For the Northern District of California

United States District Court

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NO. C 11-04223 JW

Plaintiff,

PATENT SCHEDULING ORDER;
ORDER GRANTING PLAINTIFF LEAVE
TO AMEND; DENYING MOTION TO
DISMISS AS MOOT

v.

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LG Electronics, Inc., et al.,

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Defendants.
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This case is scheduled for a Case Management Conference on February 13, 2012. Pursuant

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to the Federal Rules of Civil Procedure and Local Rules of this Court, the parties conferred and duly

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submitted a Joint Case Management Statement. (See Docket Item No. 143.)

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In their Joint Statement, Plaintiff contends that it will move to amend its Second Amended

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Complaint “to remove any indirect infringement claims” against Defendants, while Defendants

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contend that they “are not opposed” to Plaintiff’s proposed amendments, and that they “agree[] to

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withdraw” their pending Motion to Dismiss1 “at the same time [Plaintiff] files its [Third Amended

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Complaint].” (Docket Item No. 143 at 4-5.) In light of the parties’ contentions, the Court finds

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good cause to grant Plaintiff leave to amend its Complaint. Accordingly, Defendants’ Motion to

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Dismiss is DENIED as moot. On or before February 13, 2012, Plaintiff shall file its Third

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Amended Complaint.

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(Notice of Motion and Motion to Dismiss by Defendants LG Electronics, Inc. and LG
Electronics U.S.A., Inc., hereafter, “Motion to Dismiss,” Docket Item No. 137.)

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Further, based on their joint submission, it appears that a schedule for the case can be set

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without the necessity of an appearance at this time. Accordingly, the Case Management Conference

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is VACATED and the parties are ordered to comply with the following schedule:

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CASE SCHEDULE

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February 24, 2012

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Infringement Contentions (¶ 1)
(.10 days after the Initial Case Management Conference)

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Invalidity Contentions (¶ 2)
(.45 days after the Initial Case Management Conference)

March 30, 2012

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Joint Claim Construction and Prehearing Statement (¶ 6)
(.105 days after the Initial Case Management Conference)

June 1, 2012

Close of Claim Construction Discovery (¶ 7)
(.30 days after the Joint Claim Construction and Prehearing
Statement )

August 27, 2012

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Interim Case Management Conference

October 1, 2012 at 9 a.m.

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September 21, 2012

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Joint Case Management Statement for Interim Conference
(The Statement shall, among other things, update the Court on
the parties’ readiness for the Markman hearing.)

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Case Tutorial (¶ 8)

November 8, 2012

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Claim Construction Hearing (¶ 9)

November 9, 2012

For the Northern District of California

United States District Court

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None of the dates set in this Order may be changed without an order of the Court made after
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a motion is filed pursuant to the Civil Local Rules of Court.
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A. Initial Disclosures
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1. No later than 10 days after the Initial Case Management Conference, the party asserting
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infringement must serve on all parties a Disclosure of Asserted Claims and Infringement
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Contentions and make available for inspection and copying the documents described in Patent L.R.
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3-1.
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2. No later than 45 days after the Initial Case Management Conference, each opposing party
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shall serve on all parties Invalidity Contentions and produce and make available for inspection and
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copying the documents described in Patent L.R. 3-3.
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3. Amendment of the Infringement Contentions or the Invalidity Contentions may be made

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only by order of the Court upon a timely showing of good cause. Motions to amend shall be filed

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pursuant to the Civil Local Rules of Court and noticed for a hearing before the assigned Magistrate

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Judge.

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B. Claim Construction Proceedings
4. No later than 10 days after filing Invalidity Contentions, all parties must serve on all other

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parties Proposed Terms and Claim Elements for Construction pursuant to Patent L.R. 4-1. The

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parties shall thereafter meet and confer for the purposes of limiting the terms in dispute by

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narrowing or resolving differences and facilitating the ultimate preparation of a Joint Claim
Construction and Prehearing Statement. The parties shall also jointly identify the 10 terms likely to

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For the Northern District of California

United States District Court

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be most significant to resolving the parties’ dispute, including those terms for which construction

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may be case or claim dispositive.

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5. No later than 20 days after exchanging Proposed Terms and Claim Elements for

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Construction, all parties must serve on all other parties Preliminary Claim Constructions and

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Extrinsic Evidence pursuant to Patent L.R. 4-2.

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6. No later than 30 days after exchanging Preliminary Claim Constructions, the parties must

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file a Joint Claim Construction Statement and Prehearing Statement pursuant to Patent L.R. 4-3.

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The statement shall 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. However, the total terms identified by all parties as most significant

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cannot exceed 10.

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

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

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Construction Statement and Prehearing Statement.

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8. 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 party shall have 45 minutes for their presentation.

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

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accordance with the Civil Local Rules of Court. See Civ. L.R. 7-11.
9. On the date set in the Case Schedule, the Court will hold a Claim Construction Hearing.

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For the Northern District of California

United States District Court

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

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

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history. Pertinent portions of the intrinsic evidence should be highlighted and indexed to the

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disputed claim language. No testimony will be allowed, unless the Court orders otherwise, based

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

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wishing to present testimony. Each party shall have one hour for their presentation. Any party

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

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

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

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a.

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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b.

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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c.

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.
C. Further Case Management Order

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11. At the conclusion of the Claim Construction Hearing, the Court will set a date and time
for a further Case Management Conference to schedule subsequent events in the case.

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

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For the Northern District of California

United States District Court

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D. Procedure Regarding Dispositive Motions in Patent Cases

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

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shall compile a three ring binder (to be lodged with the Court) containing (1) the motion and any

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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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Chart B - Summary of Invalidity Issues

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the product lacks a handle

Title of
Motion

Patent

Claim No.

Basis of
challenge

Summary of
argument in
support of
motion

Summary of
argument in
opposition to
motion

Comments

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]

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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For the Northern District of California

United States District Court

Defense Asserted

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E. Electronic Storage of Exhibits
13. The Court has available a digital and video electronic evidence presentation system. The

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

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

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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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Dated: February 7, 2012
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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Christopher J. Cox [e-mail]
David L. Yohai [e-mail]
Douglas F. Stewart [e-mail]
Jaime G. Touchstone [e-mail]
Jamie L. Dupree [e-mail]
Jeffrey G. Mote [e-mail]
John David Antoni [e-mail]
John Wade Carpenter [e-mail]
Joseph Edward Thomas [e-mail]
Kevin J O'Shea [e-mail]
Mark A. Grant [e-mail]
Martha Corcoran Luemers [e-mail]
Michael V. Solomita [e-mail]
Nicholas A Brown [e-mail]
Nicholas Charles Dylan Willoughby [e-mail]
Paul Thomas Meiklejohn [e-mail]
Richard D Harris [e-mail]
Robert Walker Adams [e-mail]
Updeep S. Gill [e-mail]
Vincent Joseph Belusko [e-mail]
Virginia A. Crisp [e-mail]
William Joseph Kolegraff [e-mail]
William Paul Schuck [e-mail]

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For the Northern District of California

United States District Court

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Dated: February 7, 2012

Richard W. Wieking, Clerk

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By:

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/s/ JW Chambers
Susan Imbriani
Courtroom Deputy