Personalized User Model LLP v. Google Inc.

Filing 558

Letter to The Honorable Leonard P. Stark from Karen Jacobs regarding Google's prior art contentions and pretrial preparation disputes - re 550 Order,. (Attachments: # 1 Exhibits 1-4)(Jacobs, Karen)

EXHIBIT 1

quinn emanuel trial lawyers | san francisco
50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL [phone] FAX [phone]

WRITER'S DIRECT DIAL NO.
[phone]
WRITER'S INTERNET ADDRESS
[e-mail]

January 9, 2014
VIA EMAIL
Jennifer Bennett
Dentons LLP
1530 Page Mill Road
Suite 200
Palo Alto, CA 94304-1125
Re:

Personalized User Model LLP v. Google Inc., C.A. No. 09-00525-LPS

Dear Jennifer:
I write to follow up on the issues discussed during our January 8, 2014 telephonic meet and
confer.
Regarding the schedule for pretrial deadlines, we understand that it is PUM’s position that
Google is a “plaintiff,” and therefore PUM should not be required to provide all its portions of
the Pretrial Order first. This position is unsupported by the Local Rules and by PUM’s own
statements in this litigation.
Local Rule 16.3(c)(1) requires inclusion in the pretrial order of “A statement of the nature of the
action, the pleadings in which the issues are raised (e.g., third amended complaint and answer)
and whether counterclaims, cross-claims, etc., are involved.” Local Rule 16.3(10) further
requires inclusion of “statements by counterclaimants or cross claimants comparable to that
required of plaintiff.” This makes clear that a counterclaimant is not a “plaintiff” under this rule.
PUM's Answer to Google’s counterclaims on ownership where PUM refers to Google as the
“counter-claimant,” not a plaintiff, seems to confirm this point.
The distinction between the timing for the pretrial order disclosures for a plaintiff and other
parties is further made clear in Rule 16.3(d)(1), which requires that the “plaintiff” provide its

quinn emanuel urquhart & sullivan, llp
LOS ANGELES | NEW YORK | SILICON VALLEY | CHICAGO | WASHINGTON, DC | LONDON | TOKYO | MANNHEIM | MOSCOW | HAMBURG | PARIS | MUNICH |
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portions of the Pretrial Order at least 30 days before the deadline to file the pretrial order. It
makes no mention that counterclaimants provide their portions on this date. Instead, Local Rule
16.3(d)(2) says “[n]o less than 14 days before the pretrial order is to be filed with the Court, all
other parties shall provide the plaintiff and each other party with their responses to the plaintiff’s
draft order.” I note that during our call, we asked if PUM had authority for its position that
Google is a plaintiff under Local Rule 16.3. PUM did not provide any. If PUM believes that
there is authority for its position, we again ask that PUM provide it so that we can consider it.
In our call, PUM also suggested that Google was somehow being “difficult” in the negotiation of
the pre-trial order schedule. We do not believe that by following the Local Rules here we are
being difficult. Rather, we think it is unreasonable, especially given the manner and timing in
which PUM has approached this issue, for PUM to expect Google to proceed as PUM proposes.
Indeed, for months PUM asserted it is ready to proceed with a trial date in March. PUM should
be fully prepared to follow the Local Rules in relation to the trial date it sought and obtained.
In sum, Google expects PUM to follow the Local Rules and provide its portions of the pretrial
order, including all that is required by Local Rule 16.3(c),(d)(1), by January 20.1 If PUM
continues to assert that Google is a “plaintiff” in this case such that PUM is not bound to follow
this schedule, Google intends to ask the Court to allow Google to present its case first at trial.
Further, Google will reduce the number of prior art references it is asserting by February 5, at the
time that Google provides its portions of the Pretrial Order according to the Local Rules. This
reduction will include no more than six references for obviousness for any asserted claim, and no
more than ten references total for all claims.
We continue to believe, however, that PUM should first commit to whether it will narrow the
number of asserted claims and/or accused products and should do that narrowing with its portion
of the Pre-trial Order due January 20. During our meet and confer, PUM refused to do so. PUM
did say it may reduce the number of asserted claims or accused products. PUM, however, could
not or would not tell Google whether it will do so, when it would do so, or even when it would
decide whether to do so. As we explained on the call, this is prejudicial and unfair to Google.
Google will be forced to spend time and resources analyzing claims that PUM is going to
ultimately drop from the case in order to determine which prior art references to continue
asserting. Further, Google’s decisions regarding which prior art references to continue asserting
may depend on the products PUM is accusing since PUM is applying claim limitations
inconsistently for purposes of different products and invalidity. If PUM involves on the Court on
these issues, we intend to ask the Court to order PUM to first reduce the number of asserted
claims and/or accused products.
Finally, we see no issue with Google’s inclusion of the individuals who PUM stated will be its
corporate representatives at trial on Google’s Initial Disclosures. Although PUM represented
1

We can agree that PUM’s portions of the Pretrial Order be due on January 20.

2

that these individuals had no relevant knowledge and that it will not call them at trial, PUM later
represented to the Court that their attendance at trial was so critical that the trial date needed to
scheduled to accommodate them. There is nothing improper about Google merely adding their
names to its Initial Disclosures under the circumstances. We have not identified them as trial
witnesses at this time.
Very truly yours,

David A. Perlson
02426.51753/5700646.1

3

EXHIBIT 2

1
1

IN THE UNITED STATES DISTRICT COURT

2

IN AND FOR THE DISTRICT OF DELAWARE

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9
10

- - INTELLECTUAL VENTURES I, LLC,

:
:
:
v.
:
:
CHECK POINT SOFTWARE TECHNOLOGIES LTD., :
CHECK POINT SOFTWARE TECHNOLOGIES INC., :
McAFEE, INC., SYMANTEC CORP., TREND
:
MICRO INCORPORATED, and TREND MICRO,
:
INC. (USA),
:
Defendants.
- - Plaintiff,

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- - BEFORE:

HONORABLE LEONARD P. STARK, U.S.D.C.J.
- - -

APPEARANCES:

FARNAN, LLP
BY: BRIAN E. FARNAN, ESQ.
and
SUSMAN GODFREY L.L.P.
BY: BROOKE A.M. TAYLOR, ESQ.
(Seattle, Washington)
and
SUSMAN GODFREY L.L.P.
BY: RYAN C. KIRKPATRICK, ESQ.
(Los Angeles, California)
Counsel for Plaintiff

25

1 of 17 sheets

NO. 10-1067-LPS

Wilmington, Delaware
Wednesday, February 22, 2012
TELEPHONE CONFERENCE

11

13

CIVIL ACTION

Brian P. Gaffigan
Registered Merit Reporter

Page 1 to 1 of 36

02/23/2012 08:10:32 AM

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1

APPEARANCES:

4

(Continued)

12:33:10

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6
7

10

and

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17

Durie Tangri in San Francisco.

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MR. ROBERTS:
MR. GRIMM:

Jack

Good afternoon, your Honor.

Karen Jacobs Louden represents

Trend Micro, and her colleague is on the phone today is Yar
Chaikovsky.
Will & Emery.

Also with Yar is David Beckwith with McDermott

THE COURT:

MR. MARSDEN:

Thank you.
Good afternoon, your Honor.

William Marsden from Fish & Richardson.

12:33:54 17

dropped off for some reason but I'm for McAfee and I have
my colleague Ben Elacqua on as well.

12:34:00 19

DURIE TANGRI, LLP
BY: CLEMENT S. ROBERTS, ESQ.
(San Francisco, California)

THE COURT:

12:34:05 20

Okay.

12:34:07 21

Thank you.

I'm sorry.

I

Is there anybody else?

Thank you.

I am here with my court reporter.

For the

12:34:09 22
12:34:14 23

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25

Check Point Software Technologies Limited met al, our Civil

12:34:18 24

Counsel for Check Point Software
Technologies Ltd. and Check Point
Software Technologies Inc.

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record, it is our case of Intellectual Ventures I LLC versus

Action No. 10-1067-LPS.

12:34:24 25

22

discovery disputes, and I'd like to go through them one by

Today's call is to address several

3
1

APPEARANCES:

5

(Continued)

12:34:28

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6

election of 20 asserted claims.

12:34:55

8

references to no more than 20 within 30 days following IV's

12:34:51

Counsel for Symantec Corp.

for an order directing that defendants limit their prior art

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first from IV and then we will give defendants a chance to

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address that issue.

12:35:00

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4

12:34:45

LATHAM & WATKINS, LLP
BY: YURY KAPGAN, ESQ.
(Los Angeles, California)

plaintiff.

12:34:40

and

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3

12:34:59

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2

12:34:34

MORRIS NICHOLS ARSHT & TAYLOR, LLP
BY: THOMAS C. GRIMM, ESQ.

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1

12:34:30

2

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- oOo -

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P R O C E E D I N G S

12:35:03 11

one.
We'll start first with the issues raised by the

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(REPORTER'S NOTE:

THE COURT:
Judge Stark.

12:32:45 16

Good afternoon, everybody.

This is

Who is on the call, please?
MR. FARNAN:

So on that, let's hear

MS. TAYLOR:

Thank you, your Honor.

This is

Brooke Taylor.

12:35:04 12

As you know, the Court ordered IV I to elect 20

12:35:09 13

in chambers, beginning at 12:32 p.m.)

12:29:08 14
12:32:43 15

Telephone conference was held

And first there I want to address IV's request

So go ahead, plaintiffs.

12:35:02 10

09:31:56 13

It's

12:33:52 16

12:33:56 18

and

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8

12:33:51 15

MORRIS NICHOLS ARSHT & TAYLOR, LLP
BY: THOMAS C. GRIMM, ESQ.

20

represents Check Point and his co-counsel is Clem Roberts of

12:33:50 14

Counsel for Trend Micro Incorporated
and Trend Micro, Inc. (USA)

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Blumenfeld is in trial and Karen Jacobs Louden.

7

12:33:49 13

16

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6

Thank you.

12:33:42 12

McDERMOTT WILL & EMERY, LLP
BY: DAVID M. BECKWITH, ESQ.
(San Diego, California)

15

I'm filling in today for Jack

12:33:37 11

and

14

Mr. Grimm, go ahead.

Latham & Watkins.

12:33:35 10

McDERMOTT WILL & EMERY, LLP
BY: YAR R. CHAIKOVSKY, ESQ.
(Menlo Park, California)

12

Okay.

MR. GRIMM:

12:33:34

MORRIS NICHOLS ARSHT & TAYLOR, LLP
BY: THOMAS C. GRIMM, ESQ.

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THE COURT:

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12:33:25

8

4

12:33:21

Counsel for McAfee, Inc.

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12:33:19

FISH & RICHARDSON, P.C.
BY: BENJAMIN C. ELACQUA, ESQ.
(Houston, Texas)

My co-counsel is Yury Kapgan of

12:33:17

and

I'm sorry.

MR. GRIMM:

12:33:30

4

THE COURT:

2

12:33:16

FISH & RICHARDSON, P.C.
BY: WILLIAM J. MARSDEN, JR., ESQ.

3

1

12:33:12

2

asserted claims after the defendants argued we needed to

12:35:11 14

streamline the case for trial.

12:35:13 15

Good afternoon, your Honor.

Shortly following that order, IV I subsequently

12:35:17 16

This

proposed to the defendants that they reciprocally limit the

12:32:46 17

is Brian Farnan on behalf of Intellectual Ventures.

12:35:20 17

number of prior art references they will assert.

12:32:49 18

with me is Brooke Taylor and Ryan Kilpatrick from Susman &

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of defendants offer to consider electing down the road, they

12:32:56 19

Godfrey.

12:35:26 19

refuse to commit to electing 20 prior art references within

12:35:30 20

30 days following IV I's election.

12:32:56 20

THE COURT:

Good afternoon.

12:32:57 21

MR. GRIMM:

Good afternoon, your Honor.

And

12:33:00 22

to hesitate what time of day it was.

12:33:02 23

here in Wilmington on behalf of Morris Nichols.

12:33:06 24

behalf of Symantec.

12:33:09 25

02/23/2012 08:10:32 AM

A VOICE:

I had

Joining the conference.

By stalling, the defendants want to hide the

12:35:34 22
12:35:39 23

references, the vast majority of those uncharted.

defense counsel has admitted in meet and confers, they

12:35:45 25

I'm here on

ball.

12:35:42 24

This is Tom Grimm,

And on the line with me --

12:35:32 21

Though the

cannot possibly rely on as many references at trial.

Page 2 to 5 of 36

The defendants have asserted over 300 prior art
As

2 of 17 sheets

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20

1

potentially needing four or five references, well, there are

1

revision, if need be, so that defendants can be held to

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only four patents in suit. So if you needed five references

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their representation that they are willing to make their

3

per patent, you would be at 20. There is a very large gulf

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election and to complete their charting of those prior art

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between 20 and 300, and so we do really believe it's

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references that they're going to rely on and to do so before

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appropriate and proper to ask the defendants to limit it to

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May 4th.

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20. They haven't proposed any number that is somewhere

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7

between those.

7

So that is the Court's ruling with to the first
dispute.

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We think 20 is the appropriate number. And if

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9

they, after they make their elections, say they need 22 or

9

issue, which is their request for an order compelling Trend

Let's turn next to the plaintiff's second

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23, they can come to us and I'm confident we won't be back

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Micro to supplement its validity contentions and to provide

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at the court over a dispute like that.

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noninfringement contentions. We'll hear first from the

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plaintiff on that on as well.

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We should have had complete invalidity charts

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from the defendants in September, and we are here now before

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the Court in late February not only attempting to get a read

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this issue is part and parcel with the issues we just

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on what the invalidity contentions are of the defendants but

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discussed.

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to ask them to limit them to a reasonable number. And,

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I think Stamps.com does address the issue of

17

MS. TAYLOR: Thank you, your Honor. I think

As you can see in the samples attached to

17

Exhibit A and sort of excerpts from the defendants'

18

them working with us and then, if necessary, with the Court

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invalidity contentions, there are hundreds of exhibits

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to come back to broaden that limit, if that is appropriate.

uncharted and simply listed on which the defendants might

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reliably be heard that they are investigating these.

MR. ROBERTS: Your Honor, if I could just

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THE COURT: Okay.

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21

What we don't want to have happen here is a

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correct one thing I said earlier? I apologize. I made an

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situation of sandbagging. At the outset of the case -- for

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error.

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a scheduling order, the defendants had asked directly to

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permit the defendants to delay invalidity contentions until

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after IV I's infringement contentions were served. The

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25

When you are talking about system prior art,
it's 102(e), not 102(b), so the one year limit doesn't apply

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1

and yes, in fact, they can go more than a year. I apologize,

1

Court rejected this proposal and required each party to

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I gave you wrong information.

2

answer interrogatories as they were served.

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THE COURT: Thank you for that clarification.

3

We served pre-discovery infringement charts in

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With respect to plaintiff's request here, I'm

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September of 2011, and as you heard, initially we got back

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the defendants' invalidity contentions that were due in

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Specifically, I am hereby ordering that

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September of that same month, September of 2011, and they

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defendants reduce their prior art references to no more than

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listed they have no charts. There was just a list of

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30 and to do so within 21 days of the plaintiff's reduction

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references.

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of their asserted claims to the 20 as previously ordered by

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going to grant it in part and deny it in part.

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We met and conferred and met and conferred

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I believe that is a fair accommodation and a

and avoided troubling the Court even though we hadn't we

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the Court.

received any chart, and defendants eventually provided

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proper exercise of discretion given the parties competing

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some chart in October of 2011, yet the current version of

13

concerns as well as a schedule that has been in place for

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invalidity contentions has 300 references with the vast

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some time now and the Court's earlier ruling with respect

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majority of them again uncharted.

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to the plaintiff's election of asserted claims.

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The defendant should provide complete charts for

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the references that they list and we would like

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the plaintiff's 20 asserted claims, they have good cause to

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supplementation --

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seek an increase from the 30 prior art references, then they

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certainly are free to ask that of the Court. Of course,

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they need to meet and confer with plaintiff first and see

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A VOICE: ... has left the conference.

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if you all can agree to raise it somewhat from 30, if that

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THE COURT: Sorry, Ms. Taylor. Go ahead.

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turns out to be the defendants' belief.

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MS. TAYLOR: Thank you, your Honor.

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Let me add, if defendants feel, after they see

In addition to that, I encourage the parties to

24

figure out if there is a way, given the Court's ruling, to

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work together to come up with a schedule or a schedule

02/23/2012 08:10:32 AM

MR. ELAQUA'S RECORDED VOICE: Ben Elaqua for
McAfee ...

23

We would like supplementation within 14 days

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for any reference on which defendants will rely. We again,

25

the election issue was prominent, were required to elect our

Page 18 to 21 of 36

6 of 17 sheets

EXHIBIT 3

1
1

IN THE UNITED STATES DISTRICT COURT

2

IN AND FOR THE DISTRICT OF DELAWARE

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4
5
6
7
8
9
10

- - CLOUDING IP, LLC,

:
:
Plaintiff,
:
v
:
:
GOOGLE INC.,
:
:
:
Defendant.
:
-------------------------------------:
:
(and other captions whose case
:
numbers are listed to the right)
:
:
:

11

- - -

12

Wilmington, Delaware
Friday, December 20, 2013
Scheduling Telephone Conference

13
14

- - -

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23

BEFORE:

HONORABLE LEONARD P. STARK, U.S.D.C.J.

APPEARANCES:

- - BAYARD, P.A.
BY: STEPHEN B. BRAUERMAN, ESQ.
and
RUSS, AUGUST & KABAT
BY: BRIAN LEDAHL, ESQ., and
DORIAN S. BERGER, ESQ.
(Los Angeles, California)
Counsel for Clouding IP, LLC

24

Brian P. Gaffigan
Registered Merit Reporter

25

1 of 15 sheets

CIVIL ACTION
NO. 12-639-LPS
and
NO. 12-641-LPS
NO. 12-675-LPS
NO. 12-1078-LPS
NO. 13-1338-LPS
NO. 13-1341-LPS
NO. 13-1342-LPS
NO. 13-1453-LPS
NO. 13-1454-LPS
NO. 13-1455-LPS
NO. 13-1456-LPS
NO. 13-1457-LPS
NO. 13-1458-LPS

Page 1 to 1 of 32

12/23/2013 07:49:00 AM

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APPEARANCES:

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3
4
5
6
7

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13
14

19
20
21

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C o u n s e l o n b e h a lf o f C A I n c . , d / b / a
C A T e c h n o lo g ie s

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9
10

M O R R IS N IC H O L S A R S H T & T U N N E L L , L L P
B Y : JA C K B . B L U M E N F E L D , E S Q .

O 'K E L L Y E R N S T & B I E L L I , L L C
B Y : D A N IE L P . M U R R A Y , E S Q .

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and

12

and

M IN T Z L E V IN C O H N F E R R IS G L O V S K Y a n d P O P E O , P .C .
BY: STEPH EN P. COLE, ESQ.
(B o s t o n , M a s s a c h u s e t ts )

13

AR N O LD & PO RTER, LLP
B Y : JE N N IF E R S K L E N A R , E S Q .
(L o s A n g e le s , C a lifo r n ia )

14

C o u n s e l o n b e h a lf o f S ie m e n s E n t e r p r is e
C o m m u n ic a t io n s G m b H & C o K G a n d
S ie m e n s E n t e r p ris e C o m m u n ic a tio n s , I n c .

15

C o u n s e l o n b e h a lf o f G o o g le , I n c .
a n d M o t o r o la M o b ility , L L C

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17

S E IT Z R O S S A R O N S T A M & M O R IT Z , L LP
B Y : B E N JA M IN J. S C H L A D W E IL E R , E S Q .

S E IT Z R O S S A R O N S T A M & M O R IT Z , L LP
B Y : B E N JA M IN J. S C H L A D W E IL E R , E S Q .

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19

and

and

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D U A N E M O R R IS , L LP
BY: M ATTHEW C. GAUDET, ESQ.
(A tla n t a , G e o r g ia )

W IN S T O N & S T R A W N , L L P
B Y : J. M IC H A E L W O O D S , E S Q .
(W a s h in g to n , D is t r i c t o f C o lu m b ia )

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C o u n s e l o n b e h a lf o f A T & T M o b ility L L C
a n d A T & T C o rp .

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H O L L A N D & K N IG H T , L L P
B Y : B E N JA M IN M . S TE R N , E S Q .
(B o s t o n , M a s s a c h u s e t ts )

6

C o u n s e l fo r A m a z o n . c o m , I n c . ,
A m a z o n W e b S e r v ic e s , L L C , R a c k s p a c e
H o s t in g , I n c . , a n d D r o p b o x I n c .

22

and

5

P E R K IN S C O IE , L LP
B Y : D A N IE L T . S H V O D IA N , E S Q .
(P a lo A lt o , C a lif o r n ia )

16

18

( C o n t in u e d )

M O R R IS N IC H O L S A R S H T & T U N N E L L , L LP
B Y : JA C K B . B L U M E N F E L D , E S Q .

4

and

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17

3

A S H B Y & G E D D E S , P .A .
B Y : L A U R E N E . M A G U IR E , E S Q .

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APPEARANCES:

2

8

10

4

22

C o u n s e l o n b e h a lf o f V e r iz o n
C o m m u n ic a t io n s I n c .

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24

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25

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1

APPEARANCES:

1

2
3
4
5
6
7

PO TTER A N D E R S O N & C O R R O O N , LLP
B Y : P H IL IP A . R O V N E R , E S Q .

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11
12
13
14
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G O O D W IN P R O C TE R , LL P
B Y : L A N A S . S H IF E R M A N , E S Q .
(B o s t o n , M a s s a c h u s e t ts )
C o u n s e l o n b e h a lf o f C it rix S y s te m s , I n c .

M O R R IS N IC H O L S A R S H T & T U N N E L L , L L P
B Y : JA C K B . B L U M E N F E L D , E S Q .

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21
22
23
24
25

M O R R IS N IC H O L S A R S H T & T U N N E L L , L LP
BY:

JA C K B . B L U M E N F E L D , E S Q .

4
and

5
O R R IC K , H E R R IN G T O N & S U T C L IF F E , L L P
BY:

K A R E N G . JO H N S O N -M cK E W A N , E S Q .
(S a n F r a n c is c o , C a lifo r n ia )

7
C o u n s e l o n b e h a lf o f E M C C o r p o r a t io n ,

and

8

AR N O LD & PO RTER, LLP
BY: PAUL ALEXANDER, ESQ.
(P a lo A lt o , C a lif o r n ia )
and

E M C I n te r n a tio n a l U . S . H o ld in g s , I n c .
a n d V M w a re , In c .

9
10

AR N O LD & PO RTER, LLP
B Y : D E N IS E L. M cK E N Z IE , E S Q .
(L o s A n g e le s , C a lifo r n ia )
C o u n s e l o n b e h a lf o f H e w le t t - P a c k a r d
Com pany

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( C o n t in u e d )

2

6

17

19

APPEARANCES:

3

and

8
9

5

( C o n t in u e d )

D U A N E M O R R IS , L LP
B Y : B E N JA M IN A . S M Y T H , E S Q .
and
D IC K S T E IN S H A P IR O , L L C
B Y : FR A N K C . C IM IN O , E S Q .
(W a s h in g to n , D is t r i c t o f C o lu m b ia )
C o u n s e l o n b e h a lf o f S A P A G
a n d S A P A m e rica , In c .

12/23/2013 07:49:00 AM

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- oO o P R O C E E D I N G S
( R E P O R T E R 'S N O T E :

T h e fo llo w in g t e le p h o n ic

s c h e d u lin g c o n fe r e n c e w a s h e ld in c h a m b e r s , b e g in n in g a t
1 0 : 0 3 a .m .)
THE COURT:
J u d g e S ta r k .

G o o d m o r n in g , e v e r y b o d y . T h is i s

W h o is th e r e , p le a s e ?

MR. BRAUERMAN:

G o o d m o r n in g , Y o u r H o n o r .

T h is

i s S te v e B r a u e r m a n f r o m B a y a r d o n b e h a lf o f p la in tiff
C lo u d in g I P , L L C . I'm j o in e d o n t h e lin e b y m y c o - c o u n s e l,
B r ia n L e d a h l a n d D o r ia n B e r g e r fr o m R u s s , A u g u s t & K a b a t in
L o s A n g e le s .
THE COURT:

O kay. Thank you.

M S . M A G U IR E :

G o o d m o r n in g , Y o u r H o n o r . F o r

d e fe n d a n ts A m a z o n , R a c k s p a c e a n d D r o p b o x , th is is L a u r e n

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2 of 15 sheets

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if the Court imposes, for example, the prior art limitations

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this is not a situation where the defendants are without the

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that the plaintiff has asked for, it limits their prior art

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ability to know what is going on in the case. July is some

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designations. It limits their right in depositions. Those

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months from now, and during that time defendants will get

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are the problems that will arise if the two companies are

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contentions both under 4(a), very soon, and under 4(c), well

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treated as a single entity for purposes of the scheduling

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before that deadline. I think this is consistent with the

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order.

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spirit, if not the precise timing certainly but the spirit

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and the concept of the model order proposed by the Federal
Circuit Advisory Committee.

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I understand the Court isn't deciding the joinder

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issue at this point, but I wanted the Court to understand that

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that was the reason for our request.

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before having perfect knowledge. And that's a consequence
of the need to streamline things.

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MR. LEDAHL: Yes, Your Honor. I think just a

We think that those same kinds of practical

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couple of quick issues.

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Plaintiff is going to have to limit claims at an early stage

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briefly you want to say briefly in reply?

these limits impact both parties, practically speaking.

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Okay. Thank you. Mr. Ledahl, is there anything

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THE COURT: Okay. Thank you. Is there any
other defendant?

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Obviously, this is something where we think

First. Mr. Blumenfeld, in talking about some of

considerations warrant a limit on prior art and that it's

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not unreasonable to ask defendants to do that, and that

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the limitations, made a number of references to 14 patents.

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we're not suggesting an unreasonably early time for that.

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I just want to be clear that there is no case in which 14

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THE COURT: All right. Thank you very much.

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patents are asserted against a single defendant. In fact,

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by my count, the case with the highest number of patents

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that are in dispute and preface it by saying I am hereby

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asserted against a single defendant is actually the Amazon

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directing that the plaintiff, on behalf of all parties,

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case that was in the first wave where the Court set the

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submit a revised proposed scheduling order that will embody

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limits that are consistent with what Clouding is proposing.

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the rulings that I give you, and I'll get your views at the

I don't think that the change in the number of

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end as to when you want to submit that in light of the fact

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that the holidays are imminently upon all of us.

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defendants or anything like that warrants the changes that

Well, let me give you a resolution to the issues

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defendants are proposing in terms of additional limits, for

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example, on Clouding or suggest that there needs to be some

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expansion because, frankly, like I said, the most sort of

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First, and this is where I guess Mr. Ledahl ended

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number of patents are in a case where the Court has already

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as well, the proposed limitations on prior art references that

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evaluated these issues.

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can be asserted and relied upon by defendants.

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Let me go through the issues in the order that I
think plaintiff initially raised them.

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As to the issue that Mr. Blumenfeld discussed

Certainly -- and I don't think this is even

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about limits on prior art and the suggestion that it was

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contested -- at some point the defendants will need to be

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too early. I think it's important to clarify that by both

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limited in terms of the number of prior art references that

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parties' scheduling proposals on this, the timing we're

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they can assert. But the question is at what point?

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talking about here is going to have infringement contentions

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provided under Rule 4(c) by mid-May, so this is two months

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are both too early and too drastic in terms of numbers, and

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after that effectively. It's not some unreasonably early

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so I'm not adopting either of the timing proposals from the

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time in the case.

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plaintiff. I'm essentially adopting what the defendants

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have proposed but with a slight, I suppose, caveat.

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Mr. Blumenfeld also mentioned something about

I think that the proposals from the plaintiff

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priority dates. My recollection is that priority dates

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and things about that were the subject of interrogatories

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4 exchanges of contention, there will be no obligation on

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that were common interrogatories proposed in the first wave

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the defendants to reduce the number of prior art references.

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of cases that were already answered and, moreover, to the

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extent that there is any new patent, for example, in the

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so that is, let's say, 75 days after receiving the Court's

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parties' joint proposal, we have addressed that by the end

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claim construction, at that point, on that 75th day, I want

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of January, plaintiff will supplement its responses to those

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the language to read something to the effect that the parties

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interrogatories to address the possible supplementation of

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will submit their proposal or proposals for the defendants to

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those interrogatories to the extent there are, for example,

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reduce the number of prior art references, meaning that when

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additional patents.

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this case gets to the point where I have already construed the

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claims, I will then focus on, as you all will have focused on

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7 of 15 sheets

My expectation is that on something like that,

So to be precise, in the course of the paragraph

When it comes to the time frame after Markman, and

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12/23/2013 07:49:00 AM

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in anticipation of the filing, I will focus on how big is

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or limiting the number of disputes that the Court will

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this case at that point, how many patents are in suit, how

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resolve, but I just don't think that the relief sought here

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many defendants are here, how many accused products are there.

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to limit the overall number of claims asserted across these

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13 or so cases, I don't think that is warranted here.

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At that point, you will all be able to give me

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very concrete proposals for the timing and the number of

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On the third I guess set of issues related to

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prior art references that the case should be reduced to, and

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depositions, on almost all of this, I'm in agreement with

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I'll make an informed decision at that point.

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the plaintiff here. So specifically in terms of the number

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of hours per defendant group that the plaintiff can use, I'm

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going to adhere to the 70 that I adopted in the first case.

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To do it sooner than that, to do it on the schedule
that the plaintiff proposes, I think is not warranted. There

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are reasons that include the size of this case that I think

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I continue to think that is a reasonable number. Obviously,

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make that unwarranted in these circumstances, and there is so

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it doesn't mean that the plaintiff necessarily has to use

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much uncertainty, particularly for the newer added defendants.

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all of that. Always, all sides have to behave reasonably

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and not abusively with the number of hours they have.

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I'm not even sure at a academic level, I suppose,

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that the analogy that the plaintiff would draw between the num-

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ber of asserted claims and the number of prior art references

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don't think that that is a necessary limitation either. I

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is even a very accurate analogy. But I need not unpack

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think the hours are an adequate limitation; and if the

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entirely that academic issue to simply resolve the concrete

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plaintiff has a good faith basis to take a lot of very short

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dispute in front of me today. On that dispute, essentially,

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depositions, sometimes that may be what is warranted by the

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as I say, I'm going with the defendants, but I do want, on

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circumstances. Again, it's all limited by the reasonable

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that 75th day after the Markman, I want your specific

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and non-abusive principles. If plaintiff is being abusive

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proposals as to when and by how much prior art references

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regardless of the number of hours that I give it, I trust

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will be reduced.

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the defendants will let the plaintiff know and ultimately

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let me know if they need to do so.

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I expect certainly that after that time, there

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will be further narrowing, as there always is, and ultimately

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this case will end with a trial or trials in which the parties

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In terms of limiting depositions to just 10, I

With respect to the inventor depositions, I
think 14 hours is the proper default, particularly in a case

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will be given a certain number of hours to make their

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like this. I'm not going to, at this early stage of the

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presentation, and that will necessarily cause limitations to

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case, require that any inventor be deposed for 21 hours.

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be adopted as well.

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If, and when, the defendants identify five, or whatever

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number it turns out to be, inventors that you think 14 hours

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is inadequate for, talk to the plaintiff about that. If you

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can't work it out, then we'll have a discovery dispute to
resolve.

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That's that first issue regarding prior art
references.
The second issue is whether there should be a

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limitation on the number of asserted claims across all of

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the cases. Here, I'm with the plaintiff.

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I'm hearing the concern which is primarily on

The only other I think deposition-related issue
-- and this is one that I'm not going to go with the plaintiff.

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behalf of the defendants a concern that Markman may get too

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To the extent the plaintiff is requiring that those two

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out of control if the plaintiff could have something like 40

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days of deposition time with each inventor necessarily be

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asserted claims and make them a different 40 against each

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consecutive, that is, two consecutive days, I'm not going to

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defense group.

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lock that in at this time. So, again, be reasonable in

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trying to accommodate everyone's schedule but I'm not going

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occur. But there are steps in the Markman process itself

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to order that be done in all instances with inventors.

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for flagging anything that is out of control or unreasonable,

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including the whole joint claim construction chart process.

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issue is the issue regarding whether EMC and VMware will

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First of all, I think that is very unlikely to

Then I think, finally, the only remaining

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be considered separate defendant groups. On this, I'm in

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be more unmanageable than what we all anticipate, in light

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agreement with the plaintiff. I'm not going to treat EMC

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of setting aside a couple of days and how big this case is,

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and VMware as separate defense groups for purposes of

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if anybody thinks it's getting too unreasonable as you are

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discovery and scheduling, which is the only issue in front

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going through the process of preparing for that, then

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of me now.

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obviously first talk to one another, see if you can agree on

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reasonable limits. And if you can't, then you will have to

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a severance or joinder dispute in front of me right now,

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come back to me and we will consider things such as reducing

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so I'm certainly not deciding such a dispute. I'm only

If either side thinks that Markman is going to

12/23/2013 07:49:00 AM

As I indicated in the questioning, I don't have

Page 26 to 29 of 32

8 of 15 sheets

EXHIBIT 4

Proposed Pre-trial Order Schedule in PUM/Google 09-525-LPS
Date

Event

Fri Jan. 10

Deadline for Google to provide notice of its anticipatory
references and not more than 10 obviousness
combinations on which it will rely

Mon Jan. 20

PUM serves shell PTO, with uncontested facts (III.A)
and trial procedures

Tues Jan. 21

Parties serve Daubert motions

Wed Jan. 22

Parties serve contested facts (III.B) and issues of law
(IV) on issues for which they bear the burden of proof

Mon Jan. 27

Parties serve fact and expert witness lists on issues for
which they bear the burden of proof (V.A-C); Google
provides comments on pretrial order shell, uncontested
facts (III.A), and trial procedures

Wed Jan. 29

Parties serve deposition designations (V.D), and opening
motions in limine (IX).

Fri Jan. 31

PUM provides proposed jury instructions and verdict
form; Parties serve trial exhibit lists with electronic
copies of exhibits (VI.A), rebuttal on contested facts
(III.B) and issues of law (IV)

Fri Feb. 7

Parties serve oppositions to Daubert motions and
objections to deposition designations and counterdesignations (V.D)

Mon Feb. 10

Parties exchange lists of additional matters (XV) and
serve motion in limine oppositions

Wed Feb. 12

Google provides response to proposed jury instructions
and verdict form

Fri Feb. 14

Parties serve objections to deposition counterdesignations (V.D), replies to Daubert motions

Tues. Feb. 18

Parties serve objections to trial exhibits (VI.A), and
motion in limine replies (IX)

Wed Feb. 19

Final PTO due

Fri Feb. 21

Deadline to file voir dire questions, proposed jury
instructions, and verdict sheet

Wed Feb. 26

Pretrial conference (2 pm ET)