Innovus Prime LLC v. Toshiba Corporation et al

Filing 63

STIPULATION AND ORDER re 62 STIPULATION WITH PROPOSED ORDER Extending The Date For Service of Invalidity Contentions and Claim Construction. Signed by Judge William H. Orrick on 07/23/2013. (jmdS, COURT STAFF) (Filed on 7/23/2013)

1 MARTHA LUEMERS (SBN 104658)
E-MAIL: [e-mail]
2 DORSEY & WHITNEY LLP
305 Lytton Ave.
3 Palo Alto, CA 94301
Telephone: [phone]
4 Facsimile: [phone]
5 PAUL T. MEIKLEJOHN (Pro Hac Vice)
E-Mail: [e-mail]
6 DOUGLAS F. STEWART (Pro Hac Vice)
E-Mail: [e-mail]
7 DORSEY & WHITNEY LLP
701 Fifth Avenue, Suite 6100
8 Seattle, WA 98104
Telephone: [phone]
9 Facsimile: [phone]
10 Attorneys for Defendants
Toshiba Corporation and
11 Toshiba America Information Systems
12

UNITED STATES DISTRICT COURT

13

NORTHERN DISTRICT OF CALIFORNIA – SAN FRANCISCO DIVISION

14
INNOVUS PRIME LLC,

CASE NO. 12-cv-00659-WHO

15
Plaintiff,

STIPULATION AND ORDER
EXTENDING THE DATE FOR SERVICE
OF INVALIDITY CONTENTIONS AND
CLAIM CONSTRUCTION

16
v.
17
TOSHIBA CORP. AND TOSHIBA
18 AMERICA INFORMATION SYSTEMS,
INC,
19
Defendants.
20

Judge: Hon. William H. Orrick

21
22

Pursuant to Civil Local Rules 6-2 and 7-12, Defendants Toshiba Corporation and Toshiba

23 America Information Systems, Inc. (“Toshiba”) and Plaintiff Innovus Prime LLC (“Innovus”)
24 (collectively “the Parties”), hereby stipulate to and request an order extending the due date for
25 Toshiba to serve its invalidity contentions in this matter, and also stipulate to and request an
26 extension of claim construction deadlines. This is the second request for a modification of time
27 for service of invalidity contentions.

Schuettenhelm Decl. at ¶ 3. On March 12, 2013, the

28 Parties stipulated to an extension of the date for service of invalidity contentions until after the
-1STIPULATION AND ORDER EXTENDING THE DATE FOR SERVICE OF INVALIDITY CONTENTIONS Case No. 12-cv-00659-WHO

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
26
27

Court decided Toshiba’s First Motion to Strike Innovus’s Infringement Contentions. Id. at ¶ 4.
On May 10, 2013, the Court granted Toshiba’s Motion to Strike Innovus’s First Amended
Infringement Contentions, and ordered Innovus to serve another set of amended infringement
contentions. Id. at ¶ 5. The Court also ordered Toshiba to serve its invalidity contentions and
accompanying production “45 days after receipt of Innovus’s amended infringement
contentions.” Id. ¶ 6. Pursuant to the Court’s Order, Toshiba’s invalidity contentions are
presently due on August 5, 2013. Id. at ¶ 8.
Toshiba is now preparing to file a Motion to Strike Innovus’s Supplemental Amended
Infringement Contentions (“Second Motion to Strike”). Id. at ¶ 9. Under the Patent Local Rules,
service of invalidity contentions is predicated on the service of infringement contentions, (Patent
Local Rule 3-3), and, as discussed in Toshiba’s Original Motion to Strike, courts in this district
generally stay defendant’s discovery obligations, including service of invalidity contentions,
until issues regarding the sufficiency of infringement contentions are resolved. Dkt. No. 33 at
18. Thus, Toshiba’s Second Motion to Strike will request that discovery be stayed until the
Motion is resolved. Schuettenhelm Decl. at ¶ 10.
However, pursuant to Civil Local Rule 7-2, a hearing on the Second Motion to Strike
cannot be scheduled until after the August 5, 2013, due date for filing invalidity contentions. Id.
at ¶ 11. As a result, the presently requested modification will provide time for the Parties to
complete the briefing on Toshiba’s Second Motion to Strike, as well as for the Court to render its
decision on the Second Motion to Strike. Id. at ¶ 12. Absent an extension, Toshiba will be
placed in the position of having to provide its invalidity contentions before the hearing on the
sufficiency of Innovus’s infringement contentions. Id.
In addition, the current schedule for this case provides deadlines for claim construction
activities predicated on the service of infringement contentions and invalidity contentions. See
Patent Local Rules 4-1 – 4-5. Accordingly, the parties further request that the Court extend the
claim construction deadlines based on the outcome of Toshiba’s Second Motion to Strike. The
presently requested extension will provide time for the Court to render its decision on Toshiba’s

28
-2STIPULATION AND ORDER EXTENDING THE DATE FOR SERVICE OF INVALIDITY CONTENTIONS Case No. 12-cv-00659-WHO

1
2
3
4
5
6
7
8
9

Second Motion to Strike, which Toshiba believes should be dispositive of the case, and will
allow the parties to align the claim construction deadlines with the requirements of the Patent
Local Rules. Schuettenhelm Decl. at ¶ 13. Absent an extension, the parties will be placed in the
position of having claim construction occur before invalidity contentions are served, contrary to
the Patent Local Rules. Id.
Accordingly, it is hereby stipulated and agreed to extend the deadlines for invalidity
contentions and claim construction pending resolution of Toshiba’s Second Motion to Strike.
The parties also agree that the claim construction deadlines shall be extended based on the date
that Toshiba’s invalidity contentions are due pursuant to the Patent Local Rules.

10
11 DATED: July 22, 2013

DORSEY & WHITNEY LLP

12
13
14
15
16
17
18
19
20
21
22
23

BY:
/S/ Paul T. Meiklejohn
PAUL T. MEIKLEJOHN (Pro hac vice)
EMail: [e-mail]
DOUGLAS F. STEWART (Pro hac vice)
EMail: [e-mail]
DORSEY & WHITNEY LLP
701 Fifth Avenue, Suite 6100
Seattle, WA 98104
Telephone: [phone]
Facsimile: [phone]
MARTHA LUEMERS (SBN 104658)
E-Mail: [e-mail]
DORSEY & WHITNEY LLP
305 Lytton Ave.
Palo Alto, CA 94301
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant, Toshiba Corporation
and Toshiba America Information Systems, Inc.

24
25
26
27
28
-3STIPULATION AND ORDER EXTENDING THE DATE FOR SERVICE OF INVALIDITY CONTENTIONS Case No. 12-cv-00659-WHO

1 DATED: July 22, 2013

LAW OFFICES OF JOHN W. CARPENTER,
LLC

2
3

BY:
/S/ John Carpenter________
JOHN W. CARPENTER (SBN 221708)
Law Office of John W. Carpenter, LLC
829 Baronne St.
New Orleans, LA 70113
[phone]
[e-mail]

4
5
6
7

Attorney for Plaintiff
Innovus Prime LLC

8
Filer’s Attestation of Concurrence by Signatory

9
10

I, Paul T. Meiklejohn, counsel for Toshiba Corporation and Toshiba America Information

11 Systems, Inc., hereby attest that I have obtained the concurrence of John W. Carpenter in the
12 filing of this document.
13

/s/ Paul T. Meiklejohn__________________
PAUL T. MEIKLEJOHN

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-4STIPULATION AND ORDER EXTENDING THE DATE FOR SERVICE OF INVALIDITY CONTENTIONS Case No. 12-cv-00659-WHO

1
2
3
4
5
6
7

PURSUANT TO STIPULATION IT IS ORDERED THAT the August 5, 2013, due
date for service of Toshiba’s invalidity contentions is hereby extended pending the resolution of
Toshiba’s Motion to Strike Plaintiff’s Supplemental Infringement Contentions.

The Court

further extends the claim construction deadlines pending resolution of Toshiba’s Motion to
Strike Plaintiff’s Supplemental Infringement Contentions. The claim construction deadlines
shall be extended based on the date that Toshiba’s invalidity contentions are due pursuant to the
Patent Local Rules.

8
9

DATED this 23rd day of July, 2013.

10
11
12
13

HONORABLE WILLIAM H. ORRICK
UNITED STATES DISTRICT JUDGE

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-5STIPULATION AND ORDER EXTENDING THE DATE FOR SERVICE OF INVALIDITY CONTENTIONS Case No. 12-cv-00659-WHO