Motorola Mobility, Inc. v. Apple, Inc.

Filing 347

NOTICE by Apple, Inc., Motorola Mobility, Inc. re 346 Order on Motion to Vacate,, Joint Status Report Regarding Amended Procedural Schedule (Pace, Christopher)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-RNS-TEB
MOTOROLA MOBILITY, INC.,
Plaintiff,

JURY TRIAL DEMANDED

v.
APPLE INC.,
Defendant.
APPLE INC.,
Counterclaim Plaintiff,
v.
MOTOROLA, INC. and
MOTOROLA MOBILITY, INC.,
Counterclaim Defendants.

JOINT STATUS REPORT REGARDING AMENDED PROCEDURAL SCHEDULE
On May 7, 2012, the Court ordered that “[t]he parties shall report to the Court by
May 10, 2012 to inform it of the status of their discussions and whether the parties have reached
any agreement as to an appropriate amended procedural schedule and whether this case should
be consolidated, in whole or in part, with the 2012 case.” D.E. 346. Accordingly, Motorola
Solutions, Inc. (f/k/a Motorola, Inc.) and Motorola Mobility, Inc. (collectively “Motorola”) and
Apple Inc. (“Apple”), by and through counsel, respectfully submit this joint status report on the
parties’ discussions regarding an appropriate procedural schedule and consolidation of the cases.
1.

Despite the parties’ best efforts, Motorola and Apple have thus far been unable to

agree on either an appropriate amended procedural schedule or whether this case should be
consolidated, in whole or in part, with the 2012 case (Case No. 1:12-cv-020271-Civ-RNS).

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2.

On May 2, 2012, counsel for Motorola, counsel for Apple, and counsel for HTC

Corp., HTC America, Inc., One & Company Design, Inc., and HTC America Innovation, Inc.
(collectively “HTC”) met and conferred. During that call, Motorola and Apple agreed to
exchange proposed procedural schedules on May 4, 2012. HTC stated that it wished to remain
informed regarding any further meet and confers between Motorola and Apple, but it would be
premature to circulate its own proposal because it believed Apple’s claims against HTC should
be severed and/or transferred to another district.
3.

On May 4, 2012, Motorola and Apple exchanged their proposed schedules.

Motorola’s proposals for this case and the 2012 case, as currently postured, were as follows:
Event

Proposed Schedule for Proposed Schedule for
Motorola I
Motorola II
-7/13/12
-8/10/12
-11/2/12
5/16/12
--

Infringement contentions
Invalidity contentions
Markman Hearing
Apple (1) to substantially
narrow its claims and (2) to
provide infringement
contentions for its
infringement allegations
under 35 U.S.C. section 271
(f), contained in Apple's
Second Amended Answer
Close of fact discovery
6/8/12
Opening expert reports
6/15/12
Rebuttal expert reports
7/16/12
Close of expert discovery
8/6/12
Deadline to file dispositive 8/20/12
motions
Deadline to file pretrial
10/29/12
motions
Deadline to file joint pretrial 1/11/13
stipulations / jury instructions
Calendar call
1/22/13
Trial
1/28/13

12/10/12
12/17/12
1/18/13
2/8/13
2/22/13
5/10/13
7/12/13
7/22/13
7/29/13

Apple reiterated its preference for full consolidation of this case and the 2012
case—at least through the summary judgment phase with the possibility of the parties voluntarily
narrowing their asserted patents before trial or the Court setting a series of staggered trials—to
avoid duplicative discovery and proposed the following schedule:
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Event
Infringement contentions
Invalidity contentions
Markman Hearing
Close of fact discovery
Opening expert reports
Rebuttal expert reports
Close of expert discovery
Deadline to file dispositive motions
Deadline to file pretrial motions
Deadline to file joint pretrial stipulations / jury
instructions
Calendar call
Trial

Apple’s Proposed
Consolidated
Schedule
9/7/12
10/5/12
1/18/12
5/3/13
6/7/13
7/12/13
8/9/13
8/23/13
9/6/13
11/8/13
12/10/13
12/16/13

If the Court prefers a partially consolidated approach, however, Apple
alternatively proposed that all the overlapping patents asserted by Motorola and Apple should be
tried in this case, with the addition of U.S. Patent No. 8,046,721 (“the ’721 patent”) from the
2012 case because it is a continuation of U.S. Patent No. 7,657,849, which is being asserted by
Apple in this case. Apple’s alternative schedules are set forth below:
Event

Infringement contentions

Invalidity contentions
Markman Hearing
Close of fact discovery
Opening expert reports
Rebuttal expert reports
Close of expert discovery
Deadline to file dispositive motions
Deadline to file pretrial motions
Deadline to file joint pretrial stipulations / jury
instructions
Calendar call
Trial

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Apple’s Proposed
Apple’s Proposed
Schedule for FL-1 plus FL-2 Schedule
overlapping portions of
FL-2 and ’721 patent
5/25/12
9/7/12
(Only on ’721 patent
and new accused
products for overlapping
patents)
6/15/12
10/5/12
(Only on ’721 patent)
-1/18/12
12/21/12
5/3/13
1/11/13
6/7/13
2/13/13
7/12/13
3/22/13
8/9/13
4/5/13
8/23/13
5/24/13
9/6/13
7/26/13
11/8/13
8/13/13
8/19/13

12/10/13
12/16/13

4.

On May 7, 2012, the parties met and conferred again but were unable to reach

agreement on either a proposed schedule or whether the cases should be consolidated, in whole
or in part.
5.

On May 8, 2012, Motorola circulated a revised proposed schedule for this case,

which would provide Apple with an opportunity to update its infringement contentions for the
patents currently pending in the present case and to litigate its claims concerning the ’721 patent,
but only against Motorola, not against HTC. Motorola stated that it would be agreeable to
coordinating the discovery on Apple’s claims concerning the ’721 patent with HTC to avoid
duplication, even if Apple’s claims against Motorola and HTC proceeded in separate actions.
HTC stated that it would not agree to Apple asserting the ’721 patent against it in this case.
Motorola’s revised schedule for a partially consolidated case is set forth below:
Event
Apple to substantially reduce its claim terms and to
provide updated infringement contentions on the
’456, ’509, ’560, and ’849 patents (and on ’721
patent, if applicable)
Invalidity contentions on ’721 patent (if applicable)
Close of fact discovery
Opening expert reports
Rebuttal expert reports
Close of expert discovery
Deadline to file dispositive motions
Deadline to file pretrial motions
Deadline to file joint pretrial stipulations / jury
instructions
Calendar call
Trial
6.

Proposed Schedule for Motorola I
5/21/12

6/04/12
7/9/12
7/16/12
8/16/12
9/6/12
9/20/12
11/29/12
2/11/13
2/22/13
3/4/13

On May 9, 2012, Apple responded that Motorola’s revised proposal did not allow

sufficient time for the amount of additional discovery that remained or for the parties to
coordinate discovery regarding the ’721 patent, especially since HTC has indicated that it intends
to file a motion to sever Apple’s claims against it. In addition, Apple stated that Motorola’s
proposed July deadlines for the close of fact discovery and the exchange of opening expert

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reports would not be feasible given the action currently pending between Apple and Motorola in
the Northern District of Illinois, which is set for four back-to-back trials in June and July. The
next day, Motorola responded and indicated that it believes there is sufficient time to complete
the additional discovery sought by Apple and that the parties have sufficient resources to deal
with both these actions and the action in the Northern District of Illinois.
7.

On May 10, 2012, HTC circulated its proposed schedule for the 2012 case

(reproduced below), while maintaining its position that Apple’s claims against HTC should be
severed and/or transferred.
Event
Infringement contentions
Invalidity contentions
Markman Hearing
Apple (1) to substantially narrow its claims and
(2) to provide infringement contentions for its
infringement allegations under 35 U.S.C. section
271 (f), contained in Apple's Second Amended
Answer
Joint Interim Status Report
Close of fact discovery
Opening expert reports
Rebuttal expert reports
Close of expert discovery
Deadline to file dispositive motions
Deadline to file pretrial motions
Deadline to file joint pretrial stipulations / jury
instructions
Calendar call
Trial

HTC’s Proposed Schedule for
Claims Asserted Against
HTC in Motorola II
7/13/12
9/28/12
4/26/13
--

6/21/13
7/5/13
8/16/13
9/6/13
10/4/13
11/1/14
1/31/14
3/24/14
4/7/14
4/14/14

The parties have not yet had a chance to meet and confer regarding HTC’s proposal.
8.

The parties are willing to continue their discussions, but in light of their current

disagreements regarding the procedural schedule and whether the two cases should be
consolidated, it does not appear likely that they will reach agreement. Specifically, Motorola
opposes full consolidation, but would be willing to agree to partial consolidation without any
claims against HTC in this case, as set forth above. Apple prefers full consolidation, but

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proposes, in the alternative, partial consolidation with overlapping patents and its claims
concerning the ’721 patent against both parties in this case. HTC opposes any consolidation, in
whole or in part, of the two cases. Instead, HTC believes that the claims against it should be
severed or at least litigated on a separate schedule.

Dated: May 10, 2012

Respectfully submitted,

/s/ Edward M. Mullins
Edward M. Mullins
[e-mail]
Hal M. Lucas
[e-mail]
Astigarrage Davis Mullins & Grossman,
P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]

/s/ Christopher R. J. Pace
Christopher R. J. Pace
[e-mail]
Edward Soto
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]

Attorneys for Motorola Mobility, Inc.
and Motorola Solutions, Inc.

Attorneys for Apple Inc.

Of Counsel:
Mark D. Baker
[e-mail]
Edward J. DeFranco
[e-mail]
Alexander Rudis
[e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Telephone: [phone]
Facsimile: [phone]

Of Counsel:
Matthew D. Powers
[e-mail]
Steven Cherensky
[e-mail]
Tensegrity Law Group LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: 650-802-6001
Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]

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Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

Charles K. Verhoeven
[e-mail]
David A. Perlson
[e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

Robert D. Fram
[e-mail]
Christine Saunders Haskett
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

David A. Nelson
[e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
Telephone: [phone]
Facsimile: [phone]
Attorneys for Motorola Mobility, Inc. and
Motorola Solutions, Inc.

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Attorneys for Apple Inc.

CERTIFICATE OF SERVICE
I hereby certify that on May 10, 2012, I electronically filed the foregoing
document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document
is being served this day on all counsel of record or pro se parties identified on the attached
Service List in the manner specified, either via transmission of Notices of Electronic Filing
generated by CM/ECF or in some other authorized manner for those counsel or parties who are
not authorized to received electronically Notices of Electronic Filing.
/s/ Christopher R. J. Pace
Christopher R. J. Pace (Fla. Bar No. 0721166)

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SERVICE LIST
Motorola Mobility, Inc. versus Apple Inc.
Case No. 1:10cv023580-Civ-RNS
United States District Court, Southern District of Florida
Edward M. Mullins
Fla. Bar No. 863920
[e-mail]
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Of Counsel:
Charles K. Verhoeven
David A. Perlson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
[phone]
Raymond N. Nimrod
Edward J. DeFranco
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
David A. Nelson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Motorola Mobility, Inc. and Motorola, Inc.
Electronically served via email

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