Zions Bancorporation v. U.S. Ethernet Innovations LLC

Filing 153

ORDER DENYING AT&T DEFENDANTS ( 76 , 134 in Case No. 10-5254) MOTIONS TO DISMISS, DENYING RENEWED REQUEST TO SEVER CLAIMS AGAINST INTERVENORS AND TO SEVER AND STAY CLAIMS AGAINST ACER DEFENDANTS, AND DIRECTING PARTIES TO FILE BRIEFS ADDRESSING STAY OF CLAIMS AGAINST AT&T DEFENDANTS AND ZIONS BANCORPORATION. Signed by Judge Claudia Wilken on 12/7/2012. (ndr, COURT STAFF) (Filed on 12/7/2012)

1

IN THE UNITED STATES DISTRICT COURT

2

FOR THE NORTHERN DISTRICT OF CALIFORNIA

3
4

ZIONS BANCORPORATION,
Plaintiff,

5
6
7

v.
U.S. ETHERNET INNOVATIONS, LLC,
Defendant.

8
9

United States District Court
For the Northern District of California

10

________________________________/
U.S. ETHERNET INNOVATIONS, LLC,
Plaintiff,

11
12
13
14
15
16
17
18
19
20
21
22

v.
ACER, INC.; ACER AMERICA
CORPORATION; APPLE, INC.; ASUS
COMPUTER INTERNATIONAL; ASUSTEK
COMPUTER, INC.; DELL, INC.;
FUJITSU, LTD.; FUJITSU AMERICA,
INC.; GATEWAY, INC.; HEWLETT
PACKARD CO.; SONY CORPORATION;
SONY CORPORATION OF AMERICA; SONY
ELECTRONICS INC.; TOSHIBA
CORPORATION; TOSHIBA AMERICA,
INC.; and TOSHIBA AMERICA
INFORMATION SYSTEMS, INC.,
Defendants.
INTEL CORPORATION; NVIDIA
CORPORATION; MARVELL
SEMICONDUCTOR, INC.; ATHEROS
COMMUNICATIONS, INC.; and
BROADCOM CORPORATION,

23

Intervenors.

24

________________________________/

25
26
27
28

No. C 10-3481 CW

No. C 10-3724 CW

1

U.S. ETHERNET INNOVATIONS, LLC,,

2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16

No. C 10-5254 CW

Plaintiff,

ORDER DENYING AT&T
DEFENDANTS’
MOTIONS TO DISMISS
(Docket Nos. 76
and 134 in Case
No. 10-5254),
DENYING RENEWED
REQUEST TO SEVER
CLAIMS AGAINST
INTERVENORS AND TO
SEVER AND STAY
CLAIMS AGAINST
ACER DEFENDANTS,
AND DIRECTING
PARTIES TO FILE
BRIEFS ADDRESSING
STAY OF CLAIMS
AGAINST AT&T
DEFENDANTS AND
ZIONS
BANCORPORATION

v.
AT&T MOBILITY LLC; BARNES &
NOBLE, INC.; CLAIRE’S BOUTIQUES,
INC.; J. C. PENNEY COMPANY, INC.;
SALLY BEAUTY HOLDINGS, INC.; ANN
TAYLOR STORES CORPORATION; ANN
TAYLOR RETAIL, INC.; HARLEYDAVIDSON, INC.; HARLEY-DAVIDSON
MOTOR COMPANY, INC.; KIRKLAND’S
INC.; KIRKLAND’S STORES, INC.;
MACY’S, INC.; MACY’S RETAIL
HOLDINGS, INC.; MACY’S WEST
STORES, INC.; NEW YORK & COMPANY,
INC.; LERNER NEW YORK, INC.;
RADIOSHACK CORPORATION; RENT-ACENTER, INC.; and THE DRESS BARN,
INC.,
Defendants.
________________________________/
AND ALL RELATED CLAIMS AND
COUNTERCLAIMS
________________________________/

17
18
19
20
21
22
23
24
25
26
27
28
2

1

The Court has reviewed the case management statement filed by

2

the parties1 on November 2, 2012 and addresses various matters

3

raised therein.

4

See Docket No. 649 in Case No. 10-3724.

The parties note that AT&T Defendants’ motions to dismiss in

5

U.S. Ethernet Innovations, LLC v. AT&T Mobility (the AT&T case),

6

Docket Nos. 76 and 134 in Case No. 10-5254, remain pending.

7

parties dispute whether supplemental submissions should be filed

8

regarding the motions.

9

filed in connection with the motions and finds that no further

The

The Court has reviewed the papers already

United States District Court
For the Northern District of California

10

briefing is necessary.

11

submission on the papers and DENIES them.

12

complaint is sufficiently plead to inform AT&T Defendants of its

13

claims against them pursuant to the relevant legal standards.

14

In re Bill of Lading Transmission and Processing System Patent

15

Litig., 681 F.3d 1323, 1331-46 (Fed. Cir. 2012).

16

Court is not persuaded that the pleading unfairly prejudices AT&T

The Court takes the motions under
Plaintiff’s amended

See

Further, the

17
18
1

19
20
21
22
23
24
25
26
27
28

For the purposes of this Order, the Court adopts the
parties’ terminology as follows: (1) Intervenors for Atheros
Communications, Inc., Intel Corporation, Marvel Semiconductor,
Inc., NVIDIA Corporation and Broadcom Corporation; (2) Acer
Defendants for Acer, Inc., Acer America Corporation, Apple, Inc.,
ASUS Computer International, ASUSTeK Computer, Inc., Dell, Inc.,
Fujitsu Ltd., Fujitsu America, Inc., Gateway, Inc., Hewlett
Packard Co., Sony Corporation; Sony Corporation of America, Sony
Electronics Inc., Toshiba Corporation, Toshiba America, Inc., and
Toshiba America Information Systems, Inc.; (3) AT&T Defendants for
AT&T Mobility, LLC; Barnes & Noble, Inc., Claire’s Boutiques,
Inc., J.C. Penney Company, Inc., Sally Beauty Holdings, Inc., Ann
Taylor Stores Corporation, Ann Taylor Retail, Inc., HarleyDavidson, Inc., Harley-Davidson Motor Company, Inc., Kirkland’s
Inc., Kirkland’s Stores, Inc., Macy’s, Inc., Macy’s Retail
Holdings, Inc., Macy’s West Stores, Inc., New York & Company,
Inc., Lerner New York, Inc., Radioshack Corporation, Rent-ACenter, Inc., The Dress Barn, Inc.; and (4) Defendants for Acer
Defendants, AT&T Defendants and Zions Bancorporation collectively.
The Court refers to U.S. Ethernet Innovations, Inc. as Plaintiff.
3

1

Defendants’ ability to prepare a proper defense.

2

Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156,

3

1159 (C.D. Cal. 2010) (noting that the court “requires the prompt

4

filing of infringement contentions, which put the party accused of

5

infringement on detailed notice of the basis for the allegations

6

against it”).

7

upon AT&T Defendants its infringement contentions, which, pursuant

8

to Patent Local Rule 3-1, provide the specificity that these

9

Defendants seek.

United States District Court
For the Northern District of California

10

See, e.g.,

More than a year and a half ago, Plaintiff served

In the case management statement, the parties agree that the

11

issues of severance and stays should be addressed before discovery

12

begins and other case management dates are set.2

13

Intervenors represent that Intervenors are suppliers of networking

14

adapter chips, Acer Defendants are computer makers, and AT&T

15

Defendants and Zions Bancorporation are end users of computers

16

with network adapters.

17

Intervenors into separate cases against each Intervenor and to

18

stay the cases against all Defendants pending resolution of the

19

cases against Intervenors.

20

primarily computer manufacturers and sellers” and opposes any

21

severance or stay.

Defendants and

They seek to sever the claims against the

Plaintiff asserts that Defendants “are

22
23
24
25
26
27
28

2

These three cases were administratively related on March 7,
2011. See Docket No. 43 in Case No. 10-3481 (finding Zions
Bancorporation v. U.S. Ethernet Innovations, LLC, Case No. 10-3481
(the Zions case), related to the AT&T case and U.S. Ethernet
Innovations, LLC v. Acer, Inc., Case No. 10-3724 (the Acer case),
and reassigning the Zions case); Docket No. 497 in Case No.
10-3724 (noting that “it is the Court’s practice to not relate
cases that are already assigned to it,” but relating the AT&T and
Acer cases “for the purposes of claim construction coordination”).
4

1

In the Acer case, Intervenors and Acer Defendants previously

2

moved to sever the claims against Intervenors into separate cases,

3

to sever and stay the claims against Acer Defendants, and to stay

4

the claims against AT&T Defendants and Zions Bancorporation.

5

Docket No. 449 in Case No. 10-3724.

6

to these cases denied the motion as premature without prejudice to

7

renewal after a technology tutorial and found that Intervenors and

8

Acer Defendants did not have standing to seek a stay on behalf of

9

the other parties.

The judge previously assigned

Docket No. 475 in Case No. 10-3724.

AT&T

United States District Court
For the Northern District of California

10

Defendants subsequently filed a motion to stay in the AT&T case,

11

which the judge granted “pending the tutorial in the Acer case and

12

further order of the Court.”

13

5254.

14

“a single Markman to construe all the disputed claims would be

15

more efficient than any bifurcation at this time,” and providing

16

that it “would conduct a claim construction hearing and issue a

17

Claim Construction Order that will serve as the law of the case

18

prior to bifurcation.”

19

No. 255 in Case No. 10-5254.

20

the stay imposed in the AT&T case so that the parties in that case

21

could “meet and confer with the Defendants in the Acer case and

22

participate in the claim construction process.”

23

thereafter, the Court denied AT&T Defendants’ motion for leave to

24

file a motion for reconsideration, in which they argued the AT&T

25

case should remain stayed; the Court noted that, “based on the

26

claim construction, the Court would be better situated to make

27

determinations on which Defendants were properly in the case.”

28

Docket No. 263 in Case No. 10-5254.

Docket Nos. 245, 246 in Case No. 10-

After the tutorial, the Court issued an order finding that

Docket No. 497 in Case No. 10-3724; Docket
At that time, the Court also lifted

5

Id.

Shortly

1

The Court deems the representation in the case management

2

statement that Intervenors and Acer Defendants intend to refile

3

their motion to sever and stay certain claims as their renewed

4

motion.

5

connection with Intervenors’ and Acer Defendants’ motion to stay

6

and to sever, AT&T Defendants’ motion to stay and AT&T Defendants’

7

motion for reconsideration of the order lifting the stay in the

8

AT&T case, as well as the case management statement, the claim

9

construction orders and other relevant documents.

The Court has reviewed the papers filed by the parties in

The Court

United States District Court
For the Northern District of California

10

DENIES the request to sever the claims against Intervenors and

11

Acer Defendants prior to trial.

12

questions of law and fact that would be most efficiently handled

13

on a consolidated basis for pretrial purposes.

14

dispositive motions have been decided, the Court will determine

15

whether to sever the claims against the various Defendants and

16

Intervenors for trial.

17

the claims against Acer Defendants pending resolution of the

18

claims against Intervenors.

19

These claims involve common

After all case

The Court also DENIES the request to stay

The Court ORDERS that Plaintiff, AT&T Defendants and Zions

20

Bancorporation file supplemental briefs addressing whether the

21

claims against AT&T Defendants and Zions Bancorporation should be

22

stayed pending resolution of the claims against Intervenors and

23

Acer Defendants.

24

file a joint brief of ten pages or less within seven days of the

25

date of this Order.

26

not required to file a supplemental brief, they may join the brief

27

filed by AT&T Defendants and Zions Bancorporation.

28

shall file its brief of ten pages or less within seven days

AT&T Defendants and Zions Bancorporation shall

Although Acer Defendants and Intervenors are

6

Plaintiff

1

thereafter.

2

been, discovery may commence and the Court will ask the parties to

3

submit joint or separate proposed case management schedules.

4

The issue will be decided on the papers.

Once it has

IT IS SO ORDERED.

5
6
7

Dated: 12/7/2012

CLAUDIA WILKEN
United States District Judge

8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
7