Bluestone Innovations Texas LLC vs Epistar Corp et al

Filing 336

ORDER by Judge susan Illston granting 335 Stipulation to serve amended patent infringement contentions (tfS, COURT STAFF) (Filed on 8/28/2013)

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NIRO, HALLER & NIRO
DEAN D. NIRO (Admitted pro hac vice)
[e-mail]
DAVID J. MAHALEK (Admitted pro hac vice)
[e-mail]
ROBERT A. CONLEY (Admitted pro hac vice)
[e-mail]
181 West Madison, Suite 4600
Chicago, IL 60602-4515
Telephone: [phone]
Facsimile: 312-236-3137
Attorneys for Plaintiff
BLUESTONE INNOVATIONS LLC
DURIE TANGRI LLP
DARALYN J. DURIE (SBN 169825)
[e-mail]
SONALI D. MAITRA (SBN 254896)
[e-mail]
217 Leidesdorff Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: 415-236-6300
Attorneys for Defendants and Counter-Plaintiffs
NICHIA CORP. and NICHIA AMERICA CORP.

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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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BLUESTONE INNOVATIONS LLC,
Plaintiff,

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v.

Case No. 3: 12-cv-00059-SI
STIPULATION AND PROPOSED ORDER
UNDER LOCAL RULE 7-12 TO SERVE
AMENDED PATENT L.R. 3-1
INFRINGEMENT CONTENTIONS

NICHIA CORPORATION and
NICHIA AMERICA CORPORATION,
Defendants.

Judge: Honorable Susan Illston
Courtroom: 10, 19th Floor

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STIPULATION UNDER LOCAL RULE 7-12 TO SERVE AMENDED PATENT L.R. 3-1
INFRINGEMENT CONTENTIONS
Case No. 3: 12-cv-00059-SI

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IT IS HEREBY STIPULATED BY THE PARTIES, THROUGH THEIR
UNDERSIGNED COUNSEL:

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Pursuant to Civil L.R. 7-12 and Patent L.R. 3-6, Plaintiff Bluestone Innovations, LLC

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(“Bluestone”) and Defendants Nichia Corporation and Nichia America Corporation (“Nichia”), by and

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through their undersigned counsel, hereby consent and stipulate that, with leave of Court, Bluestone may

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serve amended Patent L.R. 3-1 infringement contentions upon Nichia. In support of this stipulation, the

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parties state as follows:

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On July 26, 2013, Bluestone served its Patent L.R. 3-1 Disclosure of Asserted Claims and

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Infringement Contentions and its Patent L.R. 3-2 Document Production Accompanying Disclosure as

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required by the Court’s Scheduling Order. (Dkt. No. 331).

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2013 that it believed Bluestone’s infringement contentions were deficient. The parties held a telephonic

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meet and confer on August 7, 2013. The parties discussed two issues during the telephonic meet and

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confer. The first issue was whether Bluestone could properly rely upon 7 representative claim charts for

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the 101 Nichia products accused of infringement in Bluestone’s Patent L.R. 3-1 infringement

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contentions. The parties were unable to resolve their dispute on this issue and Nichia filed a discovery

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dispute letter pursuant to the Court’s procedures. (Dkt. No. 334).

Nichia informed Bluestone on August 6,

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The second issue discussed during the August 7, 2013 telephonic meet and confer was the

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sufficiency of Bluestone’s infringement claim charts with regards to the last element of claims 1 and 23.

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Nichia contended that Bluestone’s infringement contentions failed to identify with specificity the “crack

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planes of the epitaxial film” and the “mesas . . . surfaces oriented along” those crack planes as required

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by the asserted claims. Bluestone contended that its Patent L.R. 3-1 infringement contentions provided

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sufficient detail by which one of ordinary skill in the art would be able to ascertain the manner in which

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the “crack planes of the epitaxial film” and the “mesa . . . surfaces oriented along those crack planes” are

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present in the accused Nichia products.

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In an effort to avoid burdening the Court with a discovery dispute on this issue, the parties agreed

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to work together to resolve this matter. Bluestone provided Nichia with an exemplary claim chart that

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provided a further explanation (both graphically and in writing) of Bluestone’s contention regarding the

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STIPULATION UNDER LOCAL RULE 7-12 TO SERVE AMENDED PATENT L.R. 3-1
INFRINGEMENT CONTENTIONS
Case No. 3: 12-cv-00059-SI

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presence of this last claim element in one of Nichia’s accused products, Nichia’s NVSL219AT LED.

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Nichia reviewed the proposed amendment to the claim chart for the NVSL219AT LED and informed

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Bluestone that, based on Bluestone’s representation that it will supplement each of its claim charts in the

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same manner, Nichia no longer intended to move on this discovery dispute. The only issue that remains

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on this front is the due date of Nichia’s invalidity contentions in light of Bluestone’s supplementation of

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its infringement contentions. This issue is raised in the parties’ discovery dispute letter. (See Dkt. No.

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334).

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Accordingly, the parties stipulate that Bluestone may amend its Patent L.R. 3-1 infringement

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contentions within three days of this Stipulation and Proposed Order to provide a further graphical and

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textual explanation regarding the manner in which the “crack planes of the epitaxial film” and the “mesa

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. . . surfaces oriented along those crack planes” are present in the accused Nichia products.

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STIPULATION UNDER LOCAL RULE 7-12 TO SERVED AMENDED PATENT L.R. 3-1
INFRINGEMENT CONTENTIONS
Case No. 3: 12-cv-00059-SI

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Dated: August 26, 2013

NIRO, HALLER, & NIRO

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By: /s/ David J. Mahalek
DAVID J. MAHALEK
DAVIS WRIGHT TREMAINE LLP
MARTIN L. FINEMAN (SBN 104413)
[e-mail]
505 Montgomery Street
Suite 800
San Francisco, CA 94111
Telephone: [phone]
Facsimile: 415-276-6599
NIRO, HALLER & NIRO
DEAN D. NIRO (Admitted pro hac vice)
[e-mail]
DAVID J. MAHALEK (Admitted pro hac vice)
[e-mail]
ROBERT A. CONLEY (Admitted pro hac vice)
[e-mail]
OLIVER D. YANG (Admitted pro hac vice)
[e-mail]
181 West Madison, Suite 4600
Chicago, IL 60602-4515
Telephone: [phone]
Facsimile: 312-236-3137
Attorneys for Plaintiff
BLUESTONE INNOVATIONS LLC

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STIPULATION UNDER LOCAL RULE 7-12 TO SERVED AMENDED PATENT L.R. 3-1
INFRINGEMENT CONTENTIONS
Case No. 3: 12-cv-00059-SI

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Dated: August 26, 2013

DURIE TANGRI LLP

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By: /s/ Catherine Nyarady
CATHERINE NYARADY

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PAUL, WEISS, RIFKIND, WHARTON &
GARRISON LLP
KENNETH A. GALLO (Admitted pro hac vice)
[e-mail]
DIANE C. GAYLOR (Admitted pro hac vice)
[e-mail]
J. BRIAN HART, JR. (Admitted pro hac vice)
[e-mail]
2001 K Street, NW
Washington, DC 20006-1047
Telephone: [phone]
Facsimile: 202-204-7350

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PAUL, WEISS, RIFKIND, WHARTON &
GARRISON LLP
CATHERINE NYARADY (Admitted pro hac vice)
[e-mail]
BRIAN P. EGAN (Admitted pro hac vice)
[e-mail]
1285 Avenue of the Americas
New York, NY 10019-6064
Telephone: [phone]
Facsimile: 212-757-3990

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Attorneys for Defendants and Counter-Claimants
NICHIA CORP. and NICHIA AMERICA CORP.

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I, David J. Mahalek, am the ECF User whose identification and password are being used to file this

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Stipulation Under Local Rule 7-12. Pursuant to Civil L.R. 5-1(i)(3), I hereby attest that counsel for the

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foregoing parties have concurred in this filing.

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/s/ David J. Mahalek
DAVID J. MAHALEK

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STIPULATION UNDER LOCAL RULE 7-12 TO SERVED AMENDED PATENT L.R. 3-1
INFRINGEMENT CONTENTIONS
Case No. 3: 12-cv-00059-SI

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PURSUANT TO STIPULATION, IT IS SO ORDERED.

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Dated:

8/27/13

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HONORABLE SUSAN ILLSTON
UNITED STATES DISTRICT JUDGE

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STIPULATION UNDER LOCAL RULE 7-12 TO SERVED AMENDED PATENT L.R. 3-1
INFRINGEMENT CONTENTIONS
Case No. 3: 12-cv-00059-SI