Zions Bancorporation v. U.S. Ethernet Innovations LLC

Filing 76

Notice of Intent to Appoint a Technical Advisor. Signed by Judge James Ware on September 29, 2011. (Attachments: # 1 Resume of Technical Advisor, Kwan Chan)(jwlc2, COURT STAFF) (Filed on 9/29/2011)

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1 2 3 4 5 6 7 IN THE UNITED STATES DISTRICT COURT 8 FOR THE NORTHERN DISTRICT OF CALIFORNIA 9 SAN FRANCISCO DIVISION U.S. Ethernet Innovations, LLC, 11 For the Northern District of California United States District Court 10 12 13 Plaintiff, v. NOTICE OF INTENT TO APPOINT A TECHNICAL ADVISOR, KWAN CHAN Acer, Inc., et al, 14 15 NO. C 10-03724 JW NO. C 10-05254 JW NO. C 10-03481 JW / AT&T, Inc., et al., 16 Defendants. 17 18 / Zions Bancorporation, et al., 19 20 21 22 Plaintiffs, v. U.S. Ethernet Innovations, LLC, Defendant. 23 / 24 25 In preparation for the upcoming Markman and upon review of the Patents-in-Suit as well as 26 the parties’ contentions regarding claim construction, the Court finds that due to the complexity of 27 these related cases and the Patents-in-Suit, the Court would benefit from the services of a technical 28 advisor on this case. 1 II. STANDARDS 2 A district judge has inherent authority to appoint a technical advisor when the judge deems it 3 desirable and necessary. Ass’n of Mexican-Am. Educators v. California, 231 F.3d 572, 590 (9th Cir. 4 2000) (en banc). The exercise of this authority should be used sparingly and only in highly 5 complicated cases. TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1378 (Fed. Cir. 2002) 6 (interpreting the Ninth Circuit standard for appointing technical advisors). In those limited cases, 7 where the complexity of the science and technology involves something well beyond regular 8 questions of fact and law, the district court has the inherent authority to tap the outside skill and 9 expertise of a technical advisor. Fed. Trade Comm’n v. Enforma Natural Prod., Inc., 362 F.3d 1204, 1213 (9th Cir. 2004); see also Reilly v. United States, 863 F.2d 149, 157 (1st Cir. 1988). The 11 For the Northern District of California United States District Court 10 technical advisor acts as educator, advising on terminology so that the district court can better 12 understand complex evidence and properly discharge its role as decision maker. See TechSearch, 13 286 F.3d at 1377. 14 In Reilly, while conceding that a district court has inherent authority to appoint an expert as a 15 technical advisor, the appellant argued that such power is strictly circumscribed by Fed. R. Evid. 16 706(a). 863 F.2d at 154. The First Circuit held the plain language of 706(a) indicates that the rule is 17 confined to court-appointed expert witnesses and does not embrace expert advisors or consultants: 18 19 20 [706(a)] establishes a procedural framework for nomination and selection of an expert witness and for the proper performance of his role after an appointment is accepted. . . . By and large, these modalities–though critically important in the realm customarily occupied by an expert witness–have marginal, if any, relevance to the functioning of technical advisors. Since an advisor, by definition, is called upon to make no findings and to supply no evidence, . . ., provisions for depositions, cross-questioning, and the like are inapposite. 21 Id. at 155-56. 22 23 24 25 26 27 28 2 1 2 3 4 5 III. PROPOSED ORDER OF APPOINTMENT Accordingly, the Court gives notice to the parties that the Court intends to appoint Mr. Kwan Chan1 as a “Technical Advisor” under the following terms: 1. Any advice provided to the Court by Mr. Chan will not be based on any extra-record information. 6 2. To the extent that the Court may ask Mr. Chan to provide a formal written report on 7 technical advice concerning the case, a copy of the formal written report prepared by Mr. Chan shall 8 be provided to the parties. However, the Court reserves the right to have informal verbal 9 communications with Mr. Chan which are not included in any formal written report. 3. Mr. Chan may attend all case-related court proceedings. 11 For the Northern District of California United States District Court 10 4. Mr. Chan may review any pleadings, motions or documents submitted to the Court. 12 5. As a Technical Advisor, Mr. Chan will make no written findings of fact and will not 13 supply any evidence to the Court. Thus, Mr. Chan will be outside the purview of “expert witnesses” 14 under Fed. R. Evid. 706. As such, the provisions in Rule 706 for depositions and questioning of 15 expert witnesses will be inapplicable to Mr. Chan. See Reilly, 863 F.2d at 155-56. 16 17 18 6. Mr. Chan will have no contact with any of the parties or their counsel except for billing purposes. 7. Each party shall bear the cost of the Technical Advisor on a per capita basis, payable in 19 advance. Within ten (10) days of appointment, the parties shall meet and confer with Mr. Chan and 20 develop a plan to set up a trust account whereby the parties shall deposit, initially, $10,000 each to 21 cover the anticipated fees and costs. Mr. Chan shall issue statements to the parties and draw from 22 the trust account every fifteen (15) days for his performance of the appointment. Mr. Chan will bill 23 at the rate of $450.00 per hour. 24 25 26 27 28 1 Attached to this Proposed Order is a courtesy copy of Mr. Chan’s resume. 3 1 The Technical Advisor shall report to the Court on a periodic basis, every sixty (60) days, 2 regarding the state of his fees and expenses and make a recommendation to the Court as to whether 3 the trust account needs additional deposits from the parties as the case progresses. 4 All matters pertaining to the fees of Mr. Chan are referred to the assigned Magistrate Judge. 5 8. Mr. Chan shall file a declaration that he will adhere to the terms of his appointment. 6 On or before October 14, 2011, any party to the litigation wishing to object to Mr. Chan’s 7 appointment on any ground shall file a Notice of Objection to Appointment of Technical Advisor. 8 Among the grounds for objection, the Court specifically would wish to know of any objection based 9 on the following grounds: (a) Bias on the part of Mr. Chan; 11 For the Northern District of California United States District Court 10 (b) Lack of funds to share the fees of the advisor on the part of the objecting party. 12 Any objection shall be lodged directly with the Magistrate Judge. The objection shall state 13 the grounds of objection and be accompanied by a supporting declaration and legal memorandum 14 supporting the objection. The Magistrate Judge shall not advise Judge Ware of the identity of any 15 party making an objection. The Magistrate Judge may confer with the parties to determine if any 16 modification of the terms of appointment would overcome the objection. Thereafter, the Magistrate 17 Judge shall submit a recommendation to Judge Ware in accordance with paragraphs 1-7 or as 18 modified, or of non-appointment due to objections. Judge Ware shall determine whether to make 19 the appointment under any modified terms of appointment. 20 21 22 Dated: September 29, 2011 JAMES WARE United States District Chief Judge 23 24 25 26 27 28 4 1 THIS IS TO CERTIFY THAT COPIES OF THIS ORDER HAVE BEEN DELIVERED TO: 2 3 4 5 6 7 8 9 11 For the Northern District of California United States District Court 10 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Andy Tindel atindel@andytindel.com Anthony H. Son ason@wileyrein.com Ashlea Pflug araymond@winston.com Barry Kenneth Shelton shelton@fr.com Benjamin Charles Elacqua elacqua@fr.com Brian Christopher Claassen Brian.Claassen@kmob.com Bruce A Smith bsmith@jwfirm.com Charlene Marie Morrow cmorrow@fenwick.com Charles Ainsworth charley@pbatyler.com Christopher Frederick Jeu cjeu@mofo.com Christopher Needham Cravey ccravey@wmalaw.com Christopher Ronald Noyes christopher.noyes@wilmerhale.com Craig Steven Summers 2css@kmob.com Danny Lloyd Williams dwilliams@wmalaw.com Darryl Michael Woo dwoo@fenwick.com David J Healey healey@fr.com David J. Healey Healey@fr.com David Lee Gann dgann@rgrdlaw.com David T McDonald david.mcdonald@klgates.com David T Pollock dpollock@reedsmith.com Deron R Dacus ddacus@rameyflock.com Dominic E. Massa dominic.massa@wilmerhale.com Douglas R. Young dyoung@fbm.com E Joseph Benz jbenz@csgrr.com Eric Louis Toscano etoscano@reedsmith.com Garland T. Stephens stephens@fr.com Harold H Davis harold.davis@klgates.com Hector J. Ribera hribera@fenwick.com Hiep Huu Nguyen hnguyen@winston.com Hsiang H. Lin jlin@ftbklaw.com Irfan A Lateef 2ial@kmob.com Irfan Ahmed Lateef ial@kmob.com Jack Wesley Hill fedserv@icklaw.com Jack Wesley Hill fedserv@icklaw.com James Patrick Brogan jbrogan@cooley.com Jason S Jackson jjackson@rgrdlaw.com Jeffrey Fuming Yee yeej@gtlaw.com Jeffrey K. Joyner joynerj@gtlaw.com Jennifer Parker Ainsworth jainsworth@wilsonlawfirm.com Jessica M. Kattula jkattula@rgrdlaw.com John Christopher Herman jherman@rgrdlaw.com John K. Grant johnkg@rgrdlaw.com John Philip Brinkmann brinkmann@fr.com John W Thornburgh thornburgh@fr.com Jonah D Mitchell jmitchell@reedsmith.com Jonah Dylan Mitchell jmitchell@reedsmith.com Jordan Jaffe jordanjaffe@quinnemanuel.com Karl J Kramer kkramer@mofo.com Kevin P.B. Johnson kevinjohnson@quinnemanuel.com Kimball R Anderson kanderson@winston.com 5 1 2 3 4 5 6 7 8 9 11 For the Northern District of California United States District Court 10 12 13 14 15 16 17 18 19 Kyle D Chen kyle.chen@cooley.com Kyung Kim dkim@wmalaw.com Lam Khanh Nguyen lnguyen@cooley.com Laura Katherine Carter lcarter@winston.com Lillian J Pan lpan@orrick.com Lionel Marks Lavenue Lionel.Lavenue@finnegan.com Mahmoud Munes Tomeh 2mmt@kmob.com Mark Daniel Selwyn mark.selwyn@wilmerhale.com Marko R Zoretic 2mrz@kmob.com Matthew Clay Harris mch@emafirm.com Matthew J. Brigham mbrigham@cooley.com Michael J Newton mike.newton@alston.com Michael J. Bettinger mike.bettinger@klgates.com Michael L Brody Mbrody@winston.com Nicholas James Nugent nicholas.nugent@finnegan.com Patricia Kane Schmidt patricia.schmidt@klgates.com Peter M Jones pjones@rgrdlaw.com Ray R. Zado rayzado@quinnemanuel.com Richard T Ting rting@reedsmith.com Robert Christopher Bunt rcbunt@pbatyler.com Robert M Parker rmparker@pbatyler.com Roderick Bland Williams rick.williams@klgates.com Roger Brian Craft bcraft@findlaycraft.com Ruben Singh Bains rbains@wmalaw.com Ryan K. Walsh rwalsh@rgrdlaw.com Scott D. Baker sbaker@reedsmith.com Scott Richard Mosko scott.mosko@finnegan.com Sean Sang-Chul Pak seanpak@quinnemanuel.com Seth M Sproul sproul@fr.com Seth McCarthy Sproul sproul@fr.com Steven S. Baik sbaik@ftbklaw.com Thomas J. Friel tfriel@cooley.com Thomas John Ward jw@jwfirm.com Thomas John Ward jw@jwfirm.com Timothy Paar Walker timothy.walker@klgates.com Todd Richard Gregorian tgregorian@fenwick.com William F. Lee william.lee@wilmerhale.com 20 Dated: September 29, 2011 Richard W. Wieking, Clerk 21 By: 22 23 24 25 26 27 28 6 /s/ JW Chambers Susan Imbriani Courtroom Deputy

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