EIT Holdings, LLC v. Linkedin Corporation

Filing 22

JOINT CASE MANAGEMENT STATEMENT and Federal Rule of Civil Procedure 26(f) Report filed by EIT Holdings, LLC, Linkedin Corporation. (Goldstein, Edward) (Filed on 8/30/2011)

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Daralyn Durie (SBN 169825)
Ryan M. Kent (SBN 220441)
Eugene Novikov (SBN 257849)
Durie Tangri LLP
217 Leidesdorff Street
San Francisco, CA. 94111
Tel: [phone]
Fax: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]

Mark W. Good (SBN 218809)
Benedict O’Mahoney (SBN 152447
TERRA Law L.L.P.
117 Park Avenue, Third Floor
San Jose, California 95113
Tel: [phone]
Fax: [phone]
Email: [e-mail]
Email: [e-mail]

Edward W. Goldstein (TX Bar No. 08099500)
Goldstein & Lipski PLLC
1177 West Loop South, Suite 400
Houston, Texas 77027
Tel: [phone]
Fax: [phone]
Email: [e-mail]

Attorneys for Defendant
LinkedIn Corporation

Attorneys for Plaintiff EIT Holdings LLC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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EIT HOLDINGS LLC, a Delaware company
Plaintiff,

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CASE NO. 5:11-CV-02465 PSG
JOINT CASE MANAGEMENT
STATEMENT AND FEDERAL RULE OF
CIVIL PROCEDURE 26(F) REPORT

vs.
LINKEDIN CORPORATION, a Delaware

20 Corporation,
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Defendant.

DEMAND FOR JURY TRIAL

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Pursuant to the Court’s Order of May 20, 2011 (Doc. 2), Plaintiff EIT Holdings, LLC

24 (“EIT”) and Defendant LinkedIn Corporation (“LinkedIn”) submit this Joint Case Management
25 Report and Federal Rule of Civil Procedure 26(f).
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1.

Jurisdiction and Service:

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On December 10, 2010, EIT filed a patent infringement action against multiple

3 Defendants in the Northern District of California (C-10-05623-WHA) before the Honorable
4 William H. Alsup. On May 11, 2011, Judge Alsup held that the Defendants, including LinkedIn,
5 were improperly joined. He dismissed all except the first-named Defendant Yelp! Inc. and
6 invited counsel for EIT to re-file against each Defendant in a separation action. This action
7 results from that order.
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This court has subject matter jurisdiction over EIT’s claim under 28 U.S.C. § 1338(a)

9 because this case involves a claim of patent infringement under 35 U.S.C. § 271. The Court
10 likewise has subject matter jurisdiction over Defendant LinkedIn’s counterclaims under 28
11 U.S.C. §§ 1331, 1338(a), 2201 and 2202. No dispute exists regarding personal jurisdiction or
12 venue as to LinkedIn.
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Defendant LinkedIn was served with the Original Complaint in this case and answered

14 that Complaint on June 21, 2011.
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2.

Facts:

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EIT alleges that LinkedIn infringes claims 40 and 41 of United States Patent No. 5,828,837

17 (“the ‘837 patent”) entitled “Computer Network System and Method for Efficient Information
18 Transfer” that was issued on October 27, 1998. EIT asserts that it holds the title by mesne
19 assignments from the inventor, Martin Eikeland, including the right to sue for past, present and
20 future damages.
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Plaintiff asserts the following facts regarding the accused website. The Defendant

22 provides a website that provides commercial and non-commercial information or allows users to
23 buy products or services. Its website allows users to register and create a user account, which
24 includes a unique id such as a unique email address or a user defined unique username for
25 ordering or accessing information. LinkedIn receives and stores information about the users in a
26 database through the use of a web connected server. When a registered user accesses Defendant’s
27 website, references to commercial and non-commercial target information, such as advertisements,
28 additional content on areas of interest or information about additional products, are transmitted to
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1 the user and displayed on his or her web accessible device, including but not limited to a desktop
2 computer, a laptop computer, a mobile phone or a game console. LinkedIndetermines appropriate
3 target information for each user based on the user profile information including but not limited to
4 demographics, personal preferences, interests, past content viewing history and past purchase
5 history.
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LinkedIn disputes that it infringes the asserted claims of the ‘837 patent and asserts that

7 those claims are invalid at least because the prior art anticipates what EIT claims as its invention.
8 LinkedIn asserts, for example, that more than a year prior to the filing of the ‘837 patent, MIT
9 offered its students a personalized electronic newspaper (called Fishwrap) accessible via a
10 website. To receive personalized news, students subscribed online to the Fishwrap service which
11 created user accounts with user names for the students. Students would provide information
12 about, for example, their hometown and academic interests to MIT which stored such information
13 in a database through the use of a WWW server. When a registered user accessed the Fishwrap
14 website, pages containing links to target information such as content on areas of interest (e.g.,
15 Hometown news) were transmitted to and displayed on the computer used by the student. The
16 selection of appropriate target information was made based on each student’s profile which
17 included the personal preferences of that student.
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3.

Legal Issues:

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As in most patent cases, claim construction is a key legal issue in this case. In this case,

20 another court in this district—Judge Alsup—will have considered and decided the meaning of
21 claims 40 and 41 before this Court has had a chance to consider the issue. Judge Alsup has set a
22 claim construction hearing in the prior-filed Yelp case for October 5, 2011, and is likely to issue
23 an order before the end of the year. Such an order will construe terms relevant to this litigation,
24 and is likely to obviate the need for this Court to consider some or all claim constructions issues.
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For example, in the Yelp case, EIT is actually litigating before Judge Alsup the proper

26 meaning of three means-plus-function limitations in claim 40 including whether the specification
27 discloses a corresponding structure that is both clearly linked to the claimed function and that
28 meets the requirements set forth in the Federal Circuit’s decision in Aristocrat Technologies
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1 Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008). LinkedIn believes that
2 should the Court hold that the specification lacks a sufficient disclosure of corresponding
3 structure, claim 40 would be invalid.
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The parties also dispute whether claims 40 and 41 are valid or infringed. LinkedIn asserts

5 that multiple prior art references and prior uses anticipate these claims including, for example,
6 the Fishwrap system described above. LinkedIn further believes that if the claims are not so
7 broad as to encompass the prior art, then they likewise do not extend to the activity that EIT
8 contends infringes in its complaint and LinkedIn would not infringe the claims as a matter of
9 law. EIT contends that the asserted claims are valid and infringed.
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4.

Motions:

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There are no pending motions at this time. EIT’s opening claim construction brief is due

12 to be filed on August 31, 2011 in the prior-filed Yelp case. The claim construction hearing is set
13 for October 5, 2011.
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LinkedIn believes that motions are likely to be filed in the Yelp case that address issues

15 that otherwise would arise in this case, including early summary judgment motions.
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5.

Amendment of Pleadings:

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The parties state that they do not anticipate adding additional parties at this time or other

18 amendments to the pleadings. LinkedIn may seek to amend its answer to include the affirmative
19 defense of inequitable conduct to the extent that discovery uncovers evidence that would warrant
20 pleading that defense.
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6.

Evidence Preservation:

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Both parties have taken steps, including the suspension of normal document destruction

23 programs and the institution of a litigation hold for both hardcopy documents and electronic
24 documents, to preserve evidence relevant to the issues reasonably evident in this action, including
25 interdiction of any document-destruction program and any ongoing erasures of e-mails and other
26 electronically-recorded material. The parties agree that no party must interdict the erasure of
27 voice mails.
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7.

Disclosures:

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The parties will exchange initial disclosures pursuant to Fed. R. Civ. P. 26(a) by

3 September 12, 2011.
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Discovery and Other Scheduling:

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No discovery has yet been taken. The parties anticipate the scope of discovery will be

6 tailored to the following subjects:
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(i) the technical details of the Accused Websites;

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(ii) the corresponding revenue generated therefrom;

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(iii) ‘837 patent and its prosecution;

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(iv) prior art to the ‘837 patent;

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(v) ownership and assignments of the ‘837 patent;

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(vi) knowledge of the websites accused of infringement by any owner(s) and assignee(s)

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of the ‘837 patent;

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(vii) LinkedIn’s affirmative defenses of invalidity and non-infringement of the ‘837

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patent;

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(viii) Defendant’s position that they it is not obligated to pay any damages related to the

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purported infringement of the ’837 patent; and

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(ix) license(s) related to the inventions claimed in the ‘837 patent.

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The parties further agree that all documents and electronically stored information (“ESI”)

20 produced in discovery will be produced either in single-page Tagged Image File Format (“.tiff”)
21 or in the document’s native format at the producing-party’s election. If any TIFF image cannot
22 be viewed, however, the requesting party may request the native files that were associated with
23 the unviewable TIFF images. While the parties are not required to OCR their documents before
24 production, if they do, they shall produce, along with the TIFF images, electronically extracted
25 text and/or OCR generated text.
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The parties agree to adhere to Federal Rule of Civil Procedure 26(b)(5) in their assertion

27 of a privilege or the work product, common interest or joint defense doctrines to withhold
28 otherwise relevant documents. Moreover, the parties agree that each party asserting such a
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1 privilege or doctrine shall log the withheld document in a manner that, without revealing
2 information itself privileged or protected, will enable other parties to assess the claim. Neither
3 party, however, shall be required to log withheld documents that were created on or after
4 December 10, 2010, where those document were created by or sent to or from outside or in-house
5 counsel for a party. The withheld document log for a given production must be provided within
6 thirty (30) days of request by another party.
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The parties propose that the discovery rules found in the Federal Rules of Civil Procedure

8 should not be modified except to clarify that expert depositions shall not count towards the limits
9 set forth by the Federal Rules of Civil Procedure.
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The parties will negotiate in good faith on a stipulated protective order that is based on the

11 model protective orders provided by the Northern District of California and will submit a
12 stipulated protective order no later than September 12, 2011. The parties plan to propose a
13 protective order that will provide for post-production assertion of privilege for inadvertently
14 produced privileged documents.
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9.

Class Actions:

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This matter is not a class action.

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10.

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Though the Court has declared the cases unrelated, the same patent is being asserted in the

Related Cases:

19 this District against Netflix, Inc. (C.A. No. 5:11-cv-02466 HRL), against Monster Worldwide, Inc.
20 (C.A. No. 5:11-cv-02472 HRL), against Priceline.com Incorporated (C.A. No. 3:11-cv-0246821 MEJ), against TheStreet.com, Inc. (C.A. No. 3:11-cv-02469 JCS), against eHarmony.com, Inc.
22 (C.A. No. 3:11-cv-02463 JCS) against TicketMaster L.L.C. (C.A. No. 3:11-cv-02471 EDL) and
23 against Yelp!, Inc. (C.A. No. 3:10-cv-05623 WHA). The same patent is also being litigated in
24 United States District Court for the District of Delaware against WebMD LLC (C.A. No. 10-108125 JBS-AMD).
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Relief:

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EIT contends that it is entitled to damages adequate to compensate it for LinkedIn’s

28 infringement. EIT also contends that, in accordance with the patent laws, it is entitled to at least a
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1 reasonable royalty for LinkedIn’s infringement of the claimed inventions. EIT contends that a
2 comprehensive determination of a reasonable royalty cannot be made at this time. In addition,
3 EIT contends that it is entitled to interest and costs as determined by the Court.
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LinkedIn contends that because it does not infringe the asserted claims of the ’837 patent,

5 and because the asserted claims of ‘837 patent are invalid, EIT should take nothing by way of its
6 Complaint and that the Court should issue a declaration that each asserted claim of the ‘837
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patent has not been infringed and/or that each asserted claim of the ‘837 patent is invalid.
12.

Settlement and ADR:

The parties have had preliminary discussions, but have not reached a resolution. Based on
those preliminary discussions, LinkedIn believes that any form of ADR is premature at this point
and that settlement discussions will not be productive at least until after the parties have briefed
claim construction and likely not until they have briefed motion(s) for summary judgment in the

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Yelp case. To that end, LinkedIn would propose a deadline to complete court-sponsored ADR of
Februrary 29, 2012.
Plaintiff EIT believes that an early deadline to complete court-sponsored ADR would save
both the parties’ and Court’s time and resources. EIT, however, agrees to a February 29, 2012

16 deadline for completing court-sponsored ADR.
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13.
Consent to Magistrate Judge For All Purposes:
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The parties have consented to proceed before a magistrate judge.

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14.

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The parties do not believe this case is suitable for reference to binding arbitration, a

Other References:

21 special master, or the Judicial Panel on Multidistrict Litigation.
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15.

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The parties are not aware of any issues that can be narrowed by agreement or by motion at

Narrowing of Issues:

24 this time.
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Expedited Schedule:

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EIT contends that this is not the type of case that can be handled on an expedited basis

27 with streamlined procedures.
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LinkedIn also believes that this case should not be handled on an expedited basis.

2 LinkedIn believes that Judge Alsup will decide issues in the prior-filed Yelp case that will have a
3 direct impact on this case, including claim construction and potentially the validity of some or all
4 of the claims asserted in this case. LinkedIn therefore believes that efficiencies for the parties and
5 the Court militate in favor of a schedule that deviates from the Patent Local Rules by providing
6 additional time before claim construction to permit Judge Alsup to rule on claim construction in
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the Yelp case. EIT‘s proposed schedule is in accordance with the local rules.
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Scheduling:

The parties propose the following schedules:

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Event

EIT

LinkedIn

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Rule 26(f) Conference

August 16, 2011

August 16, 2011

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Rule 26(a) Initial Disclosures

August 30, 2011

September 12, 2011

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Deadline to comply with Civil L.R. 16-8
and ADR L.R. 3-5

February 29, 2012

February 29, 2012

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Initial Case Management Conference

September 6, 2011

September 6, 2011

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Last Day for Plaintiff’s Disclosure of
Asserted Claims and Infringement
Contentions (Patent L.R. 3-1) and Related
Documents (Patent L.R. 3-2)

September 20, 2011 September 20, 2011

Deadline to Amend Pleadings

January 23, 2012

March 5, 2012

Last Day for Defendant’s Invalidity
Contentions (Patent L.R. 3-3) and Related
Document Production (Patent L.R. 3-4)

November 4, 2011

November 4, 2011

Last Day for the Exchange of Proposed
Terms and Claim Elements for
Construction (Patent L.R. 4-1(a))

November 18, 2011

January 16, 2012

Last Day for Exchange of Preliminary
Proposed Claim Construction and Extrinsic
Evidence (Patent L.R. 4-2)

December 9, 2011

February 6, 2012

File Joint Claim Construction Statement
(Patent L.R. 4-3) – limited to 10 terms

January 3, 2012

April 3, 2012

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Event

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unless leave of court granted

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EIT

LinkedIn

Completion of Claim Construction
Discovery (Patent L.R. 4-4)

February 2, 2012

May 7, 2012

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Last Day for Plaintiff’s Opening Claim
Construction Brief (Patent L.R. 4-5(a))

February 17, 2012

May 21, 2012

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Last Day for Defendant’s Opposing Claim
Construction Brief, (Patent L.R. 4-5(b))

March 2, 2012

June 4, 2012

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Last Day for Plaintiff’s Reply Claim
Construction Brief (Patent L.R. 4-5(c))

March 9, 2012

June 11, 2012

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Tutorial

Subject to Court's
calendar

Subject to Court’s
calendar

Claim Construction Hearing

Subject to Court’s
calendar

Subject to Court’s
calendar

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Further Joint Case Management Report and Within 30 days of
Conference
claim construction
ruling

Within 30 days of
claim construction
ruling

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Advice of Counsel Disclosure

50 days after claim
construction ruling

50 days after claim
construction ruling

Close of Fact Discovery

TBD

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Deadline for Rule 26(a)2(B) expert
TBD
designations for party bearing the burden of
proof

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Close of all Expert Discovery

TBD

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Deadline for filing dispositive motions

TBD

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Deadline for oppositions to dispositive
motions

TBD
TBD

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Deadline for replies in support of
dispositive motions

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The parties propose that the hearings on
dispositive motions be held before this date

TBD

Deadline for filing motions in limine; and
papers in support thereof

TBD

The parties shall file a joint statement of
the case, a joint exhibit list, a joint witness
list, proposed jury instructions and a

TBD

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Event

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proposed verdict form;

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The parties will lodge the Final Pre-Trial
Conference Order;

TBD

Trial

TBD

EIT

LinkedIn

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Neither party has proposed a schedule beyond the further joint case management report

7 and conference. By that conference, the parties will have received the Court’s order on claim
8 construction. The parties believe they will then be better positioned to provide suggestions on
9 what the remainder of the schedule should be, including specifically expert and fact discovery
10 deadlines.
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18.

Trial:

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EIT anticipates that this case will be tried by jury and the anticipated length of the trial is

13 approximately 5-7 days. EIT does not believe the trial should be bifurcated.
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LinkedIn believes that this case will be resolved in its favor on summary judgment.

15 LinkedIn agrees that any remaining issues would be tried to a jury but anticipates that trial should
16 last up to 7 days depending on the remaining issues to be tried.
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Disclosure of Non-party Interested Entities or Persons:

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The parties have filed their respective “Certification of Interested Entities or Persons”

19 required by Civil Local Rule 3-16. In its Certification of Interested Entities or Persons, defendant
20 LinkedIn Corporation certified that it has no parent corporation, and that no publically-held
21 corporation owns 10% or more of its stock.
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EIT also certified certified that it has no parent corporation, and that no publically-held

23 corporation owns 10% or more of its stock.
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Other Matters:

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In addition, the parties address below the further matters required under Patent Local Rule

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a.

Proposed modifications to the obligations or deadlines set forth in the Patent
Local Rules.

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LinkedIn proposes the modifications of the deadlines provided for in the Patent Local

2 Rules as outlined above in Discovery and Other Scheduling. EIT has not modified any deadlines.

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The format of the Claim Construction Hearing, including whether the Court
will hear live testimony, the order of presentation, and the estimated length of
the hearing.

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The parties do not believe that live testimony should be received at the claim construction

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b.

6 hearing. The parties propose that the plaintiff EIT shall present first followed by defendant
7 LinkedIn’s presentation with the Court free to seek further responses from either party after their
8 initial presentations. The parties estimate that the claim construction hearing will last
9 approximately 3 hours.
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c.

The scope and timing of any claim construction discovery

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At this time, neither party anticipates a need for limiting the scope of discovery relating to

12 claim construction.
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d.

How the parties intend to educate the court on the technology at issue.

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The parties do not believe that a short technology tutorial is necessary in this case, but are

15 happy to present a tutorial if the Court would prefer one. The parties do not believe that any
16 technology tutorial would last more than twenty (20) minutes per side.
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1 Dated: August 30, 2011

Respectfully submitted,

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3 Counsel for EIT Holdings, LLC

Counsel for LinkedIn Corporation

4 By: /s/ Edward W. Goldstein

By: s/_Ryan Kent______________

5 Edward W. Goldstein (TX Bar No. 08099500)
6 GOLDSTEIN & LIPSKI, P.L.L.C.

Daralyn Durie (SBN 169825)
Ryan M. Kent (SBN 220441)
Durie Tangri LLP
217 Leidesdorff Street
San Francisco, CA. 94111
Tel: [phone]
Fax: [phone]
Email: [e-mail]
Email: [e-mail]

1177 West Loop South, Suite 400
7 Houston, TX 77027
Tel: [phone]
8 Fax: [phone]
Email: [e-mail]

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10 Benedict O’Mahoney (SBN 152447)
TERRA Law LLP
11 177 Park Avenue, Third Floor
San Jose, California 95113
12 Tel: [phone]
Fax: [phone]
13 Email: [e-mail]

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Attestation of Concurrence

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I, Edward W. Goldstein, as the ECF user and filer of this document, attest that

19 concurrence in the filing of this document has been obtained from each of the above signatories.
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Dated: August 30, 2011

By: /s/ Edward W. Goldstein
Counsel for EIT Holdings, LLC

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CERTIFICATE OF SERVICE

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The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system on August 30, 2011, or, if not yet registered with the Court's CM/ECF system,
via electronic mail pursuant to Fed.R.Civ.P. 5(b)(2)(E). Any other counsel of record will be
served by first class U.S. Mail.

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/s/ Edward W. Goldstein
Edward W. Goldstein

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