Applied Materials Inc. v. Cohen

Filing 83

STIPULATION AND ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN (modified). Further Case Management Conference advanced from 6/7/2018 to 3/15/2018 at 10:30 AM in San Francisco, Courtroom 05, 17th Floor. Signed by Judge Edward M. Chen on 3/6/18. (bpf, COURT STAFF) (Filed on 3/6/2018)

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[Attorney Information Below]

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UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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APPLIED MATERIALS, INC.,
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Plaintiff,
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vs.

Lead Case No. 3:17-cv-04990-EMC
Consolidated with:
Case No. 3:17-cv-06451-EMC
Case No. 3:17-cv-05001-EMC

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DR. URI COHEN,
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Defendant.

STIPULATION AND [PROPOSED] ORDER
REGARDING CASE SCHEDULE AND
DISCOVERY PLAN

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Judge:
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Hon. Edward M. Chen

TSMC NORTH AMERICA; TAIWAN
SEMICONDUCTOR MANUFACTURING
COMPANY LIMITED,

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Plaintiffs,

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vs.

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URI COHEN,

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Defendant.
DR. URI COHEN,

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Plaintiff,

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vs.

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TAIWAN SEMICONDUCTOR
MANUFACTURING COMPANY LTD.,
HUAWEI DEVICE USA INC., HUAWEI
DEVICE (DONGGUAN) CO. LTD.,

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Defendant.

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GEORGE TZANAVARAS,
Case No. 3:18-cv-01052-EMC
Plaintiff,

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vs.
URI COHEN,
Defendant.

STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
CASE NOS. 3:17-CV-04990-EMC & 3:18-CV-01052-EMC

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Pursuant to the Court’s order at the February 8, 2018 case management conference (see Dkt.

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No. 70), Applied Materials, Inc.; George Tzanavaras; Dr. Uri Cohen; Taiwan Semiconductor

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Manufacturing Company Limited; TSMC North America; Huawei Device USA Inc.; Huawei Device

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(Dongguan) Co., Ltd.; Huawei Device Co., Ltd; and HiSilicon Technologies Co., Ltd., hereby

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provide the following stipulated case schedule and discovery plan for the related cases of Applied

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Materials, Inc. v. Cohen, No. 3:17-cv-04990-EMC; TSMC North America v. Cohen, No. 3:17-cv-

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05001; Cohen v. Taiwan Semiconductor Manufacturing Company Ltd., No. 3:17-cv-06451-EMC

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(collectively, the “Infringement Actions”); and Tzanavaras v. Cohen, No. 3:18-cv-01052-EMC (the

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“Inventorship Action”):

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I.

Agreement to Stay the Infringement Actions.
The parties agree that the inventorship claims raised in the Inventorship Action, brought

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under 35 U.S.C. § 256, should be litigated and resolved before continuation of the litigation of the

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Infringement Actions. Accordingly, the parties agree that all discovery and proceedings in the

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Infringement Actions, including any Patent Local Rule, pleadings, and discovery deadlines, should

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be stayed until resolution of the Inventorship Action. The parties agree that the doctrine of issue

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preclusion from the Inventorship Action will apply to each of them in the Infringement Action as if

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each party was a party to the Inventorship Action. For clarity, the parties agree that alleged

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coinventorship by Mr. Tzanavaras is an issue the parties intend to litigate and resolve in the

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Inventorship Action. The parties agree that no party shall seek a stay of the Inventorship Action,

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even if the Patent Trial and Appeal Board institutes inter partes review proceedings as to one or

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more of the Patents-in-Suit. This agreement shall in no way affect, and shall not be deemed a waiver

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of, Defendants’ ability to seek a stay of the Infringement Actions pending any instituted IPRs.

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The parties agree to meet and confer in good faith promptly after resolution of the

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Inventorship Action regarding a proposed schedule and discovery plan for the Infringement Actions

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that includes a Markman hearing within six months of resolution of the Inventorship Action, if

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necessary and subject to the Court’s own calendar at that time.

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STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
CASE NOS. 3:17-CV-04990-EMC & 3:18-CV-01052-EMC

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II.

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Proposed Schedule for the Inventorship Action.
Subject to the Court’s approval, the parties believe that an expedited schedule is appropriate

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to resolve the Inventorship Action. Mr. Tzanavaras and Dr. Cohen have agreed upon and propose

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the following schedule for the Inventorship Action:

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Event
Dr. Cohen’s Answer to Mr.
Tzanavaras’s Complaint
Rule 26 Initial Disclosures
Opening of Fact Discovery
Close of Fact Discovery
Opening Expert Reports 1
Rebuttal Expert Reports
Close of Expert Discovery
Motion for Summary Judgment 2
MSJ Responses
MSJ Replies
Pretrial Conference
Trial

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Date
3/15/18
3/23/18
3/23/18
7/31/18
8/15/18
9/5/18
9/19/18
9/21/18
10/5/18
10/12/18
10/16/18 at 2:30 pm
10/29/18 (subject to the
Court’s availability)

At present, Mr. Tzanavaras does not believe there are any jury trial issues in the Inventorship

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Action. There is no right to a jury trial for inventorship claims asserted under 35 U.S.C. § 256. See

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Shum v. Intel Corp., 499 F.3d 1272, 1277 (Fed. Cir. 2007) (“[A]n action for correction of

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inventorship under § 256, standing alone, is an equitable claim to which no right to a jury trial

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attaches.”). Dr. Cohen reserves the right to seek a jury trial on any issues so triable. The parties

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agree to discuss whether a bench or jury trial is appropriate with the Court at a later time.

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The parties expect that a trial will last 2 to 3 court days.
III.

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Discovery Plan for the Inventorship Action.
Mr. Tzanavaras and Dr. Cohen have agreed upon the following discovery limits, which are

modified from those set forth in the Federal Rules of Civil Procedure:

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Dr. Cohen proposes the Court limit expert reports to one per side, given the expedited schedule.
Mr. Tzanavaras believes that a limited number of expert reports is appropriate in light of the
expedited schedule. However, given the early stage of the case, it is difficult to know the number of
expert reports that might be needed. Accordingly, Mr. Tzanavaras proposes that the parties meet and
confer at a later date to determine the appropriate number of expert reports.
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Dr. Cohen proposes setting a deadline for filing summary judgment motions. While Mr.
Tzanavaras does not believe such a deadline is necessary, he does not oppose Dr. Cohen’s proposal.
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STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
CASE NOS. 3:17-CV-04990-EMC & 3:18-CV-01052-EMC

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10 interrogatories (“ROGs”) per side;

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15 requests for admission (“RFAs”) per side, with the exception of RFAs regarding the

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authenticity of documents;

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One seven-hour deposition of Dr. Cohen;

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One seven-hour deposition of Mr. Tzanavaras; and

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Up to three third-party document and/or deposition subpoenas per side.

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Mr. Tzanavaras and Dr. Cohen further agree to the following procedures regarding discovery

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in the Inventorship Action:
•

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Each party responding to ROGs or RFAs shall respond substantively to such ROGs or

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RFAs by the initial deadline for responding set forth in the Federal Rules of Civil

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Procedure, i.e., 30 days after service of the ROGs or RFAs, subject to appropriate

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objections; and
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Each party responding to requests for production (“RFPs”) shall work in good faith to

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produce substantially all non-privileged, responsive documents on the same day that

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written objections and responses to the RFPs are due under the Federal Rules of Civil

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Procedure, i.e., 30 days after service of the RFPs, or as otherwise agreed to by the parties.

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All parties agree that, if Dr. Cohen is deposed for one day in the Inventorship Action, that

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day will count as one day toward the number of days that Defendants are permitted to depose Dr.

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Cohen in the Infringement Actions.

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The parties also agree that any discovery taken and produced in the Inventorship Action shall

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also be deemed usable as if produced in the Infringement Actions.

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//

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//

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//

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STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
CASE NOS. 3:17-CV-04990-EMC & 3:18-CV-01052-EMC

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Dated: March 5, 2018

Respectfully submitted,

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By: /s/ Brett M. Schuman
Brett M. Schuman
[e-mail]
GOODWIN PROCTER LLP
Three Embarcadero Center
San Francisco, CA 94111
Te1.: [phone]
Fax.: [phone]

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Andrew S. Ong
[e-mail]
GOODWIN PROCTER LLP
135 Commonwealth Drive
Menlo Park, California 94025
Te1.: [phone]
Fax.: [phone]

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Attorneys for Applied Materials, Inc.
and George Tzanavaras

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Dated: March 5, 2018

KEKER, VAN NEST & PETERS LLP

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By:

/s/ Brian L. Ferrall
BRIAN L. FERRALL - # 160847
[e-mail]
EDWARD A. BAYLEY - # 267532
[e-mail]
BRYN WILLIAMS - # 3016999
633 Battery Street
San Francisco, CA 94111-1809
Telephone:
415 391 5400
Facsimile:
415 397 7188
Attorneys for
TSMC NORTH AMERICA; TAIWAN
SEMICONDUCTOR MANUFACTURING
COMPANY LIMITED.

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STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
CASE NOS. 3:17-CV-04990-EMC & 3:18-CV-01052-EMC

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Dated: March 5, 2018

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MORRISON & FOERSTER LLP
By: /s/ Rudy Y. Kim
Rudy Y. Kim (CA SBN 199426)
[e-mail]
Marc David Peters (CA SBN 211725)
[e-mail]
MORRISON & FOERSTER LLP
755 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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Attorneys for
HUAWEI DEVICE USA INC.,
HUAWEI DEVICE (DONGGUAN) CO., LTD.,
HUAWEI DEVICE CO., LTD., AND
HISILICON TECHNOLOGIES CO., LTD.

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Dated: March 5, 2018

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STEYER LOWENTHAL BOODROOKAS
ALVAREZ & SMITH LLP
By: /s/ Jill M. Manning
Jill M. Manning

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Jill M. Manning (SBN 178849)
One California Street, Suite 300
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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Attorneys for Dr. Uri Cohen

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Dated: March __, 2018

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discuss remainder of the stipulation at that time.
_________________________________
S DISTRICT
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HON. EDWARD M. CHEN
ERED
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UNITED STATESDIFIED
DISTRICT JUDGE
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Judge Ed

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UNIT
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IT IS SO ORDERED. See modifications on p. 2. Special CMC is
set for 3/15/18 at 10:30 a.m. The Court will

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STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
CASE NOS. 3:17-CV-04990-EMC & 3:18-CV-01052-EMC

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ATTORNEY ATTESTATION
I hereby attest, pursuant to Local Rule 5-1(i)(3), that I obtained the concurrence in the filing
of this document from the signatories indicated by the conformed signature (/s/).

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/s/ Brett M. Schuman
Brett M. Schuman

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STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
CASE NOS. 3:17-CV-04990-EMC & 3:18-CV-01052-EMC

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CERTIFICATE OF SERVICE
I hereby certify that I electronically filed the foregoing with the Clerk of the Court for the

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United States District Court for the Northern District of California by using the CM/ECF system on

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March 5, 2018. I further certify that all participants in the case are registered CM/ECF users and

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that service will be accomplished by the CM/ECF system.

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I certify under penalty of perjury that the foregoing is true and correct. Executed on March
5, 2018 in San Francisco, California.

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/s/ Brett M. Schuman
Brett M. Schuman

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STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
CASE NOS. 3:17-CV-04990-EMC & 3:18-CV-01052-EMC