Aristocrat Technologies et al v. International Game Technology et al

Filing 499

ORDER REGARDING CASE SCHEDULE AND ADDITIONAL CLAIM CONSTRUCTION BRIEFING. (rmwlc2, COURT STAFF) (Filed on 5/14/2009)

1 2 3 4 5 6 7 8 9 10 United United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 v. INTERNATIONAL GAME TECHNOLOGY and IGT, Defendants. ARISTOCRAT TECHNOLOGIES, ARISTOCRAT PTY LIMITED and ARISTOCRAT TECHNOLOGIES, INC., Plaintiffs, No. C-06-03717 RMW IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION E-FILED on 05/14/09

ORDER REGARDING CASE SCHEDULE AND ADDITIONAL CLAIM CONSTRUCTION BRIEFING [Re Docket No. 157, 163, 174]

At the claim construction hearing on March 18, 2009, the court requested that the parties file a proposed case schedule, along with a list of pre-appeal motions pending before this court. At the hearing and in its filing, IGT seeks a bench trial on inequitable conduct in June of 2009. IGT also moves for supplemental claim construction proceedings as to claims at issue in IGT's Muniauction summary judgment motion. For the reasons stated below, the court denies IGT's request for a separate inequitable-conduct bench trial, and grants IGT's administrative motion for additional claim-construction proceedings.
ORDER REGARDING CASE SCHEDULE AND ADDITIONAL CLAIM CONSTRUCTION BRIEFING --No. C-06-03717 RMW JAS

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

I. INEQUITABLE CONDUCT BENCH TRIAL On September 19, 2006, IGT moved in district court for a one-day bench trial on an inequitable conduct issue. Order Denying Defendants' Mot. for One-Day Bench Trial, Docket No. 33. On November 11, 2006, Judge Jenkins denied the motion because IGT had shown neither that the bifurcated proceeding would promote judicial economy, nor that Aristocrat would not be prejudiced. Id. at 4-5 (citing Spectra-Physics Lasers, Inc. v. Uniphase Corp., 144 F.R.D. 99, 101 (N.D.Cal. 1992)). With respect to judicial economy, the court reasoned that "inequitable conduct, no matter how limited the issue," is a fact-intensive inquiry. This is particularly true when the issue involves intent to deceive." Id. at 4. Additionally, the court concluded that the inequitable-conduct trial might take more than the one day IGT proposed. As for prejudice, the court was "not convinced that it can order an early bench trial without the potential for evidentiary overlap with the underlying proceeding." Id. at 5. IGT contends that its renewed request for an inequitable-conduct bench trial is based in part on the Federal Circuit's statement on appeal that prosecution irregularities could be redressible under the inequitable-conduct framework. Aristocrat Technologies v. International Game Technology, 543 F.3d 657, 663 (Fed. Cir. 2008). This court does not read the Federal Circuit to mean that IGT's motion for a separate trial should be revived; rather the court was emphasizing that, although the prosecution irregularities at issue in the appeal did not provide a basis for invalidity, as a general proposition an inequitable conduct claim could nevertheless provide relief if a procedural irregularity involved affirmative representations of material fact. Therefore, the court finds that similar concerns still militate against a separate inequitable-conduct trial. IGT's renewed request is denied. II. SUPPLEMENTAL CLAIM CONSTRUCTION PROCEEDINGS In Aristocrat's supplemental briefing in support of its motion for 56(f) discovery, Aristocrat argued that certain patent terms require acts that need not be performed by the player. Because these terms were not included in the original claim construction briefing, IGT now moves for additional claim construction. The court finds that additional construction is necessary.

ORDER REGARDING CASE SCHEDULE AND ADDITIONAL CLAIM CONSTRUCTION BRIEFING --No. C-06-03717 RMW JAS 2

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

The parties will incorporate their discussion of the new disputed terms into the as-yet unfiled motions for summary judgment. Aristocrat may include its claim construction arguments in its opposition to the Muniauction summary judgment motion, not to exceed thirty pages. IGT may respond in its reply, not to exceed 20 pages. And Aristocrat may have a sur-reply, not to exceed ten pages, limited to responding to the claim-construction arguments in IGT's reply. The schedule below takes into account the assigned magistrate's May 13, 2009 order granting in part and denying in part Aristocrat's motion to compel. If claim construction briefing raises additional issues not covered by IGT's original summary judgment motion, they can be dealt with in later motions. III. CASE SCHEDULE The court adopts the following schedule: Case Event Hearing on IGT's Motions to Compel (Dkt. 191 and 205) Aristocrat's Opposition to IGT's Muniauction Summary Judgment Motion Due (includes supplemental claim construction briefing, not to exceed 30 pages) IGT's Reply in support of Muniauction Summary Judgment (including supplemental claim construction briefing, not to exceed 20 pages) Aristocrat's Sur-reply (limited to claim construction issues, not to exceed 10 pages) Hearing on IGT's Muniauction Summary Judgment Motion, IGT's Prosecution Laches Summary Judgment Motion, and IGT's Motion for Sanctions (Dkt. 242). June 26, 2009 June 12, 2009 June 6, 2009 May 29, 2009 Date To be determined by assigned magistrate.

ORDER REGARDING CASE SCHEDULE AND ADDITIONAL CLAIM CONSTRUCTION BRIEFING --No. C-06-03717 RMW JAS 3

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Fact Discovery Cut-off Expert Reports Due Last Day to Amend Pleadings Rebuttal Expert Reports Due Expert Discovery Cut-off Daubert Motions Due Dispositive Motions Due Oppositions to Dispositive Motions Due Daubert Oppositions Due Daubert Replies Due Replies ISO Dispositive Motions Due Parties Meet and Confer Trial Briefs (optional) Motions In Limine Deposition and Discovery Responses Proposed Voir Dire Questions Jury Instructions Form of Verdict Joint Pretrial Statement Oppositions to Motion In Limine Objections to Use of Deposition Excerpts or Other Discovery Responses Deposition Counter-Designations Objections to Voir Dire, Verdict Form, Authenticity or Admissibility of Trial Exhibits Pretrial Conference Jury Trial

July 27, 2009 July 27, 2009 July 27, 2009 August 10, 2009 August 26, 2009 September 2, 2009 September 2, 2009 September 16, 2009 September 16, 2009 September 23, 2009 September 23, 2009 October 19, 2009 October 23, 2009 October 23, 2009 October 23, 2009 October 23, 2009 October 23, 2009 October 23, 2009 October 23, 2009 November 3, 2009 November 3, 2009

November 3, 2009 November 3, 2009

To be determined November 30, 2009

ORDER REGARDING CASE SCHEDULE AND ADDITIONAL CLAIM CONSTRUCTION BRIEFING --No. C-06-03717 RMW JAS 4

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
ORDER REGARDING CASE SCHEDULE AND ADDITIONAL CLAIM CONSTRUCTION BRIEFING --No. C-06-03717 RMW JAS 5

DATED:

05/14/09

RONALD M. WHYTE United States District Judge

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Notice of this document has been electronically sent to: Counsel for Plaintiff: Anthony R. de Alcaeus [e-mail] Terrence Patrick McMahon [e-mail] Robert J. Blanch , Jr. [e-mail] Counsel for Defendants: Jeffrey Stewart Love Adam Randal Wichman Gabriel M. Ramsey Garth Alan Winn Kristin L. Cleveland Lane M Chitwood Patrick Marshall Bible Robert T. Cruzen Samir N. Pandya Stephanie Sue Irvine [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail]

Counsel are responsible for distributing copies of this document to co-counsel that have not registered for e-filing under the court's CM/ECF program.

Dated:

05/14/09

JAS Chambers of Judge Whyte

ORDER REGARDING CASE SCHEDULE AND ADDITIONAL CLAIM CONSTRUCTION BRIEFING --No. C-06-03717 RMW JAS 6