HADDAD v. USA

Filing 117

SCHEDULING ORDER: Plaintiff serves preliminary infringement contentions on 3/5/21. Defendants serve preliminary invalidity contentions on 4/30/21. Parties exchange claims terms for construction on 5/14/21. Parties exchange proposed claim constructions on 5/28/21. Parties disclose extrinsic evidence on 6/4/21. Deadline to meet and confer to narrow terms in dispute and exchange revised list of terms/constructions on 6/11/21. Joint Status Report due on 6/18/2021. Signed by Judge Ryan T. Holte. (yg) Service on parties made.

In the United States Court of Federal Claims
No. 17-307C
(Filed: 16 February 2021)

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MICHAEL HADDAD,
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Plaintiff,
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v.
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THE UNITED STATES,
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Defendant,
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and
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TRANS DIGITAL TECHNOLOGIES
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LIMITED LIABILITY COMPANY and
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IDEMIA IDENTITY & SECURITY USA
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LLC,
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Third-Party Defendants. *
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ORDER
On 12 January 2021, the Court issued an order denying the government’s motion for
summary judgment on a counterclaim and plaintiff’s motion for reconsideration. See Opinion
and Order, ECF No. 113. The Court further ordered the parties to file a joint status report
(“JSR”) containing “(1) a proposed discovery schedule; (2) whether the parties have claim
construction disputes; and (3) a proposed schedule for claim construction briefing if the parties
have claim construction disputes.” Id. at 21. On 9 February 2021, the parties filed a JSR
containing their respective positions on the schedule of claim construction and discovery. See
Joint Status Report, ECF No. 116 (“JSR”). The Court previously stayed defendants’ motions for
summary judgment on issues of patent invalidity (ECF No. 63) and non-infringement (ECF No.
88). See Order, ECF No. 92.
In the JSR, plaintiff contends “[t]he parties have multiple claim construction disputes”
and requests the Court conduct claim construction before resolving the pending motions using
Judge Albright’s default schedule in the United States District Court, Western District of Texas
(Order Governing Proceedings – Patent Cases, current version as of 2 February 2021) (“the
Albright schedule”). See JSR at 6–8. Plaintiff proposes “the Albright schedule should be
implemented immediately, with Plaintiff’s contentions on infringement due on March 5, 2021.”
Id. at 10. Plaintiff also requests discovery “move[s] forward on all fronts.” Id. at 2.

Defendants request “any claim construction proceedings should be limited to claim
construction issues that must be resolved in connection with Defendants’ pending motions for
summary judgment.” Id. at 9. Defendants contend there is no need for a separate claim
construction proceeding and request the Court resolve claim construction issues in the context of
summary judgment. Id. Nevertheless, “[i]f the Court is inclined to open this case for claim
construction and/or fact discovery before addressing [d]efendants’ pending motions, [d]efendants
believe the parties are in agreement that any schedule, including a briefing schedule for claim
construction, should generally track [the Albright schedule].” Id. at 11. Regarding discovery,
defendants request “the Court limit the scope of discovery to specified matters implicated by
[d]efendants’ pending motions.” Id. at 6.
As the parties have claim construction disputes, the Court finds it necessary to conduct
claim construction before considering defendants’ pending summary judgment motions. See
Landis v. North American Co., 299 U.S. 248, 255–56 (1936) (“[T]he power inherent in every
court to control the disposition of the causes on its docket with economy of time and effort for
itself, for counsel, and for litigants.”); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521
F.3d 1351, 1362 (Fed. Cir. 2008) (“When the parties present a fundamental dispute regarding the
scope of a claim term, it is the court’s duty to resolve it.”). The scope of claim construction
should cover all disputes the parties have in the asserted patent claims. As the parties agree to
follow Judge Albright’s default schedule in the United States District Court, Western District of
Texas, the Court sets the schedule as follows:
Event
Deadline
Plaintiff serves preliminary infringement contentions in
5 March 2021
the form of a chart setting forth where in the accused
product(s) each element of the asserted claim(s) are
found. Plaintiff shall also identify the earliest priority
date (i.e. the earliest date of invention) for each asserted
claim and produce: (1) all documents evidencing
conception and reduction to practice for each claimed
invention, and (2) a copy of the file history for each
patent in suit.
Defendant serves preliminary invalidity contentions in
30 April 2021
the form of (1) a chart setting forth where in the prior art
references each element of the asserted claim(s) are
found, (2) an identification of any limitations the
Defendant contends are indefinite or lack written
description under section 112, and (3) an identification of
any claims the Defendant contends are directed to
ineligible subject matter under section 101. Defendant
shall also produce (1) all prior art referenced in the
invalidity contentions, (2) technical documents, including
software where applicable, sufficient to show the
operation of the accused product(s), and (3) summary,
annual sales information for the accused product(s) for

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the two years preceding the filing of the Complaint,
unless the parties agree to some other timeframe.
Parties exchange claim terms for construction.

14 May 2021

Parties exchange proposed claim constructions.

28 May 2021

Parties disclose extrinsic evidence. The parties shall
4 June 2021
disclose any extrinsic evidence, including the identity of
any expert witness they may rely upon with respect to
claim construction or indefiniteness. With respect to any
expert identified, the parties shall identify the scope
of the topics for the witness’s expected testimony. 1 With
respect to items of extrinsic evidence, the parties shall
identify each such item by production number or produce
a copy of any such item if not previously produced.
Deadline to meet and confer to narrow terms in dispute,
exchange revised list of terms/constructions, and discuss
the joint status report (due 18 June 2021) for all claim
construction briefing and scheduling the claim
construction hearing.

11 June 2021

The parties shall file a joint status report on or before 18 June 2021 regarding their
respective positions on claim construction briefing schedule, the time and place of the claim
construction hearing, and any updated positions regarding the need for discovery to open in
conjunction with claim construction briefing. The Court encourages the parties to contemplate a
claim construction briefing timeline similar to that of Judge Albright in the United States District
Court, Western District of Texas (Order Governing Proceedings – Patent Cases, current version
as of 18 June 2021). After reviewing the joint status report, the Court will consider opening
limited discovery in conjunction with claim construction briefing. If needed, the Court will hold
a status conference to discuss the parties’ joint status report. Consideration of all other motions
remains STAYED.
IT IS SO ORDERED.
s/ Ryan T. Holte
RYAN T. HOLTE
Judge

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Any party may utilize a rebuttal expert in response to a brief where expert testimony is relied upon by the other
party.

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