Arczar LLC v. Sony Computer Entertainment America LLC et al

Filing 63

CASE MANAGEMENT ORDER adopting the schedule set forth in 61 Amended Document. Tutorial Hearing set for 6/6/2014 09:00 AM and Markman hearing set for 6/13/2014 09:00 AM, both in Courtroom 12, 19th Floor, San Francisco.Signed by Judge William H. Orrick on 10/09/2013. (jmdS, COURT STAFF) (Filed on 10/9/2013)

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Steven T. Lowe, Esq. SBN 122208
Kris LeFan, Esq., SBN 278611
LOWE & ASSOCIATES, P.C.
11400 Olympic Blvd., Suite 640
Los Angeles, CA 90064
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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Hao Ni, Texas Bar No. 24047205
admitted pro hac vice
[e-mail]
Timothy D. Wang, Texas Bar No. 24067927
admitted pro hac vice
[e-mail]
NI, WANG & ASSOCIATES, PLLC
8140 Walnut Hill Ln., Ste. 310
Dallas, TX 75231
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiffs
Arczar, LLC and GeoVector Corporation

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Andrew L. Chang (CA Bar No. 222309)
SHOOK, HARDY & BACON L.L.P.
One Montgomery, Suite 2700
San Francisco, California 94104-4505
Email: [e-mail]
Phone: [phone]
Facsimile: [phone]
2555 Grand Boulevard
Kansas City, Missouri 64108
B. Trent Webb, admitted pro hac vice
Email: [e-mail]
Jonathan N. Zerger, admitted pro hac vice
Email: [e-mail]
Lynn C. Herndon, admitted pro hac vice
Email: [e-mail]
Phone: [phone]
Facsimile: [phone]

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Attorneys for Defendant
SONY COMPUTER ENTERTAINMENT
AMERICA LLC

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5896797

AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
CASE NO. 3:13-CV-02671-WHO

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

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Case No. 3:13-cv-02671-WHO

ARCZAR LLC and GEOVECTOR
CORPORATION,

AMENDED JOINT CASE MANAGEMENT
CONFERENCE STATEMENT

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Plaintiffs,
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Ctrm: E, 17th Floor
Judge: Honorable William H. Orrick

v.
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Sony Computer Entertainment of America, LLC,
Defendant.

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The parties jointly submit this Amended Joint Case Management Statement and request

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that the Court adopt it as its Case Management Order in this case.

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1. Jurisdiction & Service

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This action arises under the patent laws of the United States, Title 35 of the United States

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Code. This Court has subject matter jurisdiction over patent disputes pursuant to 28 U.S.C. §§

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1331 and 1338(a). All defendants have been served and no parties remain to be served. No

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issues exist related to personal jurisdiction or venue. The parties reserve their rights to address

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standing issues after further discovery.

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2. Facts

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Plaintiffs‟ Amended Complaint alleges that SCEA infringes U.S. Patent Nos. 6,037,936

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(“the ‟936 Patent), 7,916,138 (“the ‟585 Patent”), 5,682,332 (“the „332 Patent”), 6,031,545 (“the

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„545 Patent”), and 7,301,536 (“the „536 Patent”) (collectively, the “patents-in-suit”) by “making,

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using, providing, offering to sell, and/or selling (directly or through intermediaries) the Sony

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Playstation Vita and accompanying augmented reality software . . . .” Plaintiffs further allege

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that, as a result of Defendant‟s infringement, Plaintiffs have suffered monetary damages and are

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entitled to a money judgment in an amount adequate to compensate for Defendant‟s

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infringement, but in no event less than a reasonable royalty for the use made of the invention by

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5896797

AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENTCASE NO. 3:13-CV-02671-WHO

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Defendant, together with interest and costs as fixed by the court. Four of the five asserted

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patents expired in September 2013, and the fifth asserted patent will expire in 2014.

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Before SCEA was required to file an answer, SCEA filed a Motion to Dismiss Plaintiff‟s

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claims for willful patent infringement and a Motion to Change Venue to the United States

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District Court for the Northern District of California pursuant to 28 U.S.C. § 1404. SCEA‟s

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Motion to Change Venue was subsequently granted by the transferor court on May 13, 2013.

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SCEA‟s Motion to Dismiss remains pending, but the parties anticipate that motion to be moot by

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Oct. 1, 2013, for the reasons set forth in paragraphs 4-5, below. To date, SCEA has not yet

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answered Plaintiffs‟ Amended Complaint.

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3. Identification of Legal Issues

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The principal legal issues in this case are: (1) the proper construction of certain terms in

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the claims of the patents-in-suit and/or the application of prosecution history estoppel for certain

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terms; (2) the invalidity of the patents-in-suit; (3) whether 35 U.S.C. § 287 limits Plaintiffs‟

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potential damages; (4) the correct priority dates and expiration dates of the patents-in-suit; and

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(5) Plaintiffs‟ ownership interests in the patents-in-suit.

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regarding pending motions, SCEA also disputes whether Plaintiffs alleged willful patent

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infringement because Plaintiffs present no facts supporting pre-litigation willful conduct;

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however, to the extent willfulness is part of this case, the Court may need to resolve the objective

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prong of willfulness as a matter of law. Other legal issues may become relevant once SCEA

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answers Plaintiffs‟ Amended Complaint.

As discussed in Section 4 below

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4. Motions

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Prior to this case being docketed in the Northern District of California, SCEA filed a

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Motion to Dismiss Plaintiff‟s claims for willful patent infringement. (Doc. 17; Case No. 2:12-cv-

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787 (E.D. Tex)). The Eastern District of Texas court did not issue a ruling on SCEA‟s Motion to

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Dismiss and, as such, the Motion remains outstanding. However, the parties expect that motion

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to become moot with Plaintiffs‟ filing of the Second Amended Complaint by October 1, 2013

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(discussed below), which will be limited to removing the following Paragraphs of the First

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO

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Amended Complaint related to willfulness allegations: Count I, ¶ 10, Count II ¶ 4, Count III ¶ 9,

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Count IV¶ 14, and Count V ¶ 19.

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Both parties further anticipate filing summary judgment motions, and Daubert motions,

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and if the case proceeds to trial, motions in limine and related motions. Further, the parties

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anticipate briefing on claim construction issues.

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5.

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To resolve the pending Rule 12 motion related to willfulness allegations in the First

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Amended Complaint, Plaintiffs will serve a Second Amended Complaint by October 1, 2013,

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limited to removing the following Paragraphs of the First Amended Complaint: Count I, ¶ 10,

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Count II ¶ 4, Count III ¶ 9, Count IV¶ 14, and Count V ¶ 19. Otherwise, Plaintiffs do not expect

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the addition or dismissal of parties, claims or defenses.

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Amendment of Pleadings

SCEA has not yet filed an Answer in this action. SCEA will Answer Plaintiffs‟ Second

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Amended Complaint by October 22, 2013.

SCEA does not currently anticipate further

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amendments to the pleadings, but reserves the right to do so. The parties agree November 15,

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2013 shall be the deadline to amend pleadings, except for amendments made as a matter of right.

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6. Evidence Preservation

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The parties have reached the following agreement addressing electronically-stored

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information and its preservation:
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Electronically Stored Information (“ESI”): The parties have reviewed the Guidelines

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Relating to the Discovery of Electronically Stored Information, and have conferred

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regarding the preservation of relevant evidence in this action, pursuant to Fed. R. Civ.

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P. 26(f) and ESI Guidelines 2.01 and 2.02. The parties will work in good faith to

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negotiate the terms of a proposed ESI Order for this case which will include

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provisions regarding appropriate date ranges, identity, and number of custodians

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under which responsive ESI will be collected, as well as the identity of an ESI liaison

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for each party. A proposed ESI order, along with any remaining ESI disagreements,

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO

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will be submitted to the Court by December 13, 2013. The parties further agree that

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ESI will be produced as follows:

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The parties agree that (1) that from the date of the original complaint‟s filing, the

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parties are not required to preserve, collect, review, or produce ESI that would

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otherwise be included in a party‟s privilege log.

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The parties will produce responsive ESI in accordance with the deadlines required

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by this Court pursuant to a scheduling order, the Federal Rules of Civil Procedure,

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and the Local Rules of this Court. The parties acknowledge that ESI for

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custodians located in jurisdictions with stringent data privacy laws may take

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additional time to produce, and agree that the parties will meet and confer if

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responsive ESI for custodians located outside the United States cannot be

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produced by the deadline set forth by the Court.

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storage medium in a form that is electronically searchable.

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All English language documents will be exchanged on discs or another digital

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Unless otherwise agreed, the parties will produce ESI as single-page .tiff images

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or single-page PDF files. The ESI shall be produced with Bates numbers, and

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appropriate image-based or data “load” files, as necessary. The parties shall meet

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and confer on the appropriate “load” files to accompany their respective

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document productions. Native files of ESI may be produced at the producing

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party‟s discretion when reasonably necessary to make the information contained

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therein accessible (this would include, for example, spreadsheets or other data

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compilations). A producing party will not be required to produce native files

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except in response to reasonable requests made by the receiving party upon a

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showing of good cause.

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The parties will not be required to produce metadata accompanying otherwise

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responsive ESI, except in response to reasonable requests and upon a showing of

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good cause; and the parties are not required to preserve metadata fields

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO

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accompanying otherwise responsive ESI that are frequently updated in the

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ordinary course of business such as last-opened dates.

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The parties have agreed that non-responsive ESI does not need to be preserved, searched

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for, or produced in this action. Non-responsive ESI includes the following: (1) back-up tapes;

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(2) “deleted,” “slack,” “fragmented,” and/or “unallocated” data; (3) random access memory

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(RAM) and other ephemeral data; (4) on-line access data such as temporary internet files,

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history, cache, cookies, etc.; (5) PDAs, cell phones, text messages, instant messaging, online

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chats, voicemails, and social media; and (6) electronic lists of contacts and electronic calendar

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data.

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7.

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The parties agree that initial disclosures pursuant to Fed. R. Civ. P. 26(a)(1)(C) will be

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Disclosures

served three weeks following Defendant‟s answer.

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8. Discovery

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No formal discovery has been taken to date. Plaintiffs‟ anticipated discovery includes

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document production, interrogatories and depositions related to the accused instrumentalities, the

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validity of the patents-in-suit, and damages. The parties have not identified any discovery

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disputes.

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SCEA will seek discovery of documents and facts relating to (1) the prosecution of the

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patents-in-suit, other patents in the same family, and foreign counterparts; (2) communications

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with the named inventors of the patents-in-suit; (3) evidence concerning alleged conception,

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reduction to practice, and diligence concerning the inventions underlying the patents-in-suit; (4)

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prior art regarding the patents-in-suit; (5) claim construction and non-infringement of the

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patents-in-suit; (6) invalidity of the patents-in-suit; and (7) Plaintiffs‟ efforts to license the

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patents-in-suit; (8) priority dates and claims of the patents-in-suit; (9) the chain of title for the

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patents-in-suit; (10) other entities with a financial interest in the outcome of this case; and (11)

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third-party discovery relevant to the above-identified topics, particularly as they relate to prior

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art.

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO

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Modification to Discovery Rules: The parties do not anticipate limitations or
modifications to the discovery rules.
Discovery Plan: Pursuant to Rule 26(f) of the Federal Rules of Civil Procedure, the
parties agree to the following discovery plan:
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discrete subparts, may be served per side on another party.

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Interrogatories: The parties agree that a maximum of 25 interrogatories, including all

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Depositions: The parties agree to a maximum of 10 depositions per side (10 by

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Plaintiffs and 10 by Defendant), exclusive of (i) expert depositions, (ii) depositions of

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third parties, and (iii) depositions pursuant to Fed. R. Civ. P. 30(b)(6). The parties

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agree that each deposition shall be limited to 7 hours. The parties further agree to a

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maximum of 14 hours of deposition testimony taken upon each party pursuant to Fed.

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R. Civ. P. 30(b)(6).

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Protective Order: The parties agree that there is a need for discovery in this case to

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be governed by a protective order. Accordingly, the parties will confer and submit a

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jointly proposed protective order, along with any disagreements or competing

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proposals, by December 13, 2013.

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9.

Class Actions

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This case is not a class action.

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10. Related Actions

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In addition to this case is the following related case regarding two of the asserted patents

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in this action, U.S. Patent Nos. 6,037,936 and 7,916,138: ArCzar LLC, et al. v. Nintendo of Am.

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Inc., Case No. 3:13-cv-02672-WHO (N.D. Cal.). On September 17, 2013, Plaintiffs filed the

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following two new related cases: ArCzar LLC, et al. v. Harman Int’l Indus., No. 2:13-cv-00740

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(E.D. Tex.), and ArCzar LLC, et al. v. WowWee USA, Inc., No. 2:13-cv-00741. The following

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related actions have been dismissed: ArCzar LLC, et al. v. Yelp, Inc., Case No. 3:13-cv-02669-

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EDL (N.D. Cal.); ArCzar LLC, et al. v. ZipRealty, Inc., Case No. 3:13-cv-02670-EDL (N.D.

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Cal.); ArCzar LLC v. IKEA North America Servs., LLC, Case No. 2:12-cv-00785-JRG (E.D.

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO

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Tex.); ArCzar LLC v. Hasbro, Inc., Case No. 2:12-cv-00784-JRG (E.D. Tex.).

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11. Relief

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Plaintiffs seek damages related to Defendant‟s patent infringement in the form of lost

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profits or a reasonable royalty. As of yet, Plaintiffs have not calculated the amount of damages

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or discerned the bases on which damages are to be calculated. To date, SCEA has not answered

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the Amended Complaint.

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12. Settlement and ADR

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Plaintiffs believe that prospects for settlement are high. The parties have filed a

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Stipulation and Proposed Order Selecting an ADR Process, choosing mediation, which the Court

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has adopted. SCEA will require several items from Plaintiffs prior to mediation, including

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copies of all settlement agreements, assignments, licenses, or other financial agreements related

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to the patents-in-suit, as well as a list of all asserted claims.

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13. Consent to Magistrate for all Purposes

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Plaintiffs consent to a magistrate conducting all further pleadings including trial and entry

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of judgment. SCEA declined to consent to assignment of a United States Magistrate Judge for

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trial by jury.

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14. Other References

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The parties agree that this case is not suitable for other references at this time.

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15. Narrowing of Issues

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The parties will work together to narrow issues. Both parties anticipate filing motions for

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summary adjudication and other similar motions that may narrow some of the issues.

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16. Expedited Trial Procedure

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The parties agree that this case is not suitable for expedited trial.

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17. Scheduling

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The parties agree to the following schedule:

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO

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Event

Proposed Date

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Plaintiffs serve Second Amended Complaint, limited
to removing the following Paragraphs of the First
Amended Complaint: Count I, ¶ 10, Count II ¶ 4,
Count III ¶ 9, Count IV¶ 14, and Count V ¶ 19

10/1/13

Defendant serves Answer to Second Amended
Complaint

10/22/13

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Plaintiffs serve Infringement Contentions

11/5/13
(per P.L.R. 3-1, 3-2)

Deadline to amend pleadings or add parties

11/15/13, unless
amendments or
pleadings otherwise
available by right

Defendant serves Invalidity Contentions

12/20/13
(per P.L.R. 3-3, 3-4)

Parties exchange proposed terms for construction

1/3/14
(per P.L.R. 4-1)

Parties exchange preliminary claim constructions and
extrinsic evidence

1/24/14
(per P.L.R. 4-2)

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Parties file Joint Claim Construction and Prehearing
Statement

2/18/14
(per P.L.R. 4-3)

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Parties complete Claim Construction Discovery

3/20/14
(per P.L.R. 4-4)

Plaintiffs file Claim Construction Brief

4/4/14
(per P.L.R. 4-5(a))

Defendant files Claim Construction Brief

4/18/14
(per P.L.R. 4-5(b))

Plaintiffs file Reply Claim Construction Brief

4/25/14
(per P.L.R. 4-5(c))

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Claim Construction Hearing

To be set by the Court

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Production of document related to advice of counsel

50 days after Claim
Construction Order
(per P.L.R. 3-7)

Parties complete Fact Discovery

90 days after Claim
Construction Order

Parties designate experts and serve initial reports on

30 days after completion of

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO

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issues for which party bears the burden of proof
Parties serve rebuttal reports

30 days after deadline to
designate initial expert
reports

Parties complete Expert Discovery

30 days after deadline for
rebuttal reports

Deadline to File Dispositive Motions

30 days after expert
discovery completed

Hearing of Dispositive Motions

To be set by the Court

Pretrial Conference

To be set after Claim
Construction Order

Trial

To be set after Claim
Construction Order

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Fact Discovery

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18. Trial

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Plaintiffs’ Contention: The length of trial will be one week.

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Defendant’s Contention: SCEA anticipates that trial will last approximately 10 trial

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days, depending on the number of asserted patent claims remaining.
19. Disclosure of Non-party Interested Entities or Persons
The parties will file a Certification of Interested Entities or Persons in compliance with

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Civil Local Rule 3-16 prior to the Case Management Conference.
20. Other
The parties are aware of no other issues at this time.

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO

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LOWE & ASSOCIATES, P.C.

Dated: October 7, 2013

/s/ Kris LeFan

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By:
KRIS LEFAN

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Attorney for Plaintiffs
ARCZAR, LLC AND AND GEOVECTOR
CORPORATION

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Dated: October 7, 2013
By: /s/ Jon Zerger
JON ZERGER

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Attorney for Defendant

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CASE MANAGEMENT ORDER
The above JOINT CASE MANAGEMENT STATEMENT & PROPOSED ORDER is
approved as the Case Management Order for this case and all parties shall comply with its

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provisions. In addition, the Tutorial will be held on June 6, 2014 at 9:00 a.m. The Claim

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Construction hearing will be held on June 13, 2014 at 9:00 a.m.

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IT IS SO ORDERED

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Dated: October 9, 2013

________________________________
Honorable William H. Orrick
District Court Judge

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AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Case No. 3:13-cv-02671-WHO