Motorola Mobility, Inc. v. Microsoft Corporation

Filing 190

MOTION for Specially Set Trial Date by Microsoft Corporation. (Attachments: #1 Exhibit Index, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Exhibit D, #6 Text of Proposed Order)(Miner, Curtis)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO: 1:10-CIV-24063-MORENO

MOTOROLA MOBILITY, INC.,
Plaintiff,
vs.
MICROSOFT CORPORATION,
Defendant.

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MICROSOFT CORPORATION’S MOTION FOR A SPECIALLY SET TRIAL DATE

INTRODUCTION
Defendant Microsoft Corporation (“Microsoft”) respectfully requests that this Court set a
special trial date in this action. (See FCPC Judicial Survey, Honorable Frederico A. Moreno,
U.S. District Court Judge) (attached as Exhibit A, p. 6.) This is a large and complex patent
infringement case that involves 14 separate patents and more than 30 accused products. Due to
the multitude of claims and products, 106 potential fact witnesses and more than 20 expert
witnesses may be called to testify at trial in this action. Because of the length and complexity of
the trial, as well as the inherent difficulties in coordinating the schedules of numerous out-ofstate witnesses, Microsoft respectfully requests that the Court enter a specially set trial date.
Granting this request will serve many purposes, including easing the administrative burden for
the Court, the parties, and the witnesses. It will also ensure that the parties are able to present
testimony and evidence to the jury in an orderly and logical fashion that avoids gaps or delays in
testimony that may arise due to the unavailability of witnesses.
FACTUAL BACKGROUND
Motorola Mobility, Inc. (“Motorola”) filed its complaint in this action on November 10,
2010. D.E. 1. The complaint alleges that Microsoft has infringed seven of Motorola‟s patents.1
Id. at ¶¶ 1, 14-62. Motorola contends that almost a dozen of Microsoft‟s products, including
Windows Phone 7 with Silverlight, Windows Live Messenger 2011, Exchange Server 2010 with
Unified Messaging, and Bing Maps and Bing Local for cellular smartphones infringe Motorola‟s
patents. On December 23, 2010, Microsoft answered Motorola‟s complaint and filed a

1

Motorola has accused Microsoft of infringing U.S. Patent Nos. 5,502,839 (“the „839 patent”),
5,764,899 (“the „899 patent”), 5,784,001 (“the „001 patent”), 6,272,333 (“the „333 patent”),
6.408,176 (“the „176 patent”), 6,757,544 (“the „544 patent”) and 6,983,370 (“the „370 patent”).
D.E. 1 at ¶¶ 7-13.

counterclaim alleging that Motorola infringed seven of Microsoft‟s patents.2 Microsoft‟s
counterclaim contended that certain Motorola Android devices and digital video recorders
(“DVRs”) infringe those patents. Counterclaim, at ¶¶ 15-53 (D.E. 21).
On January 21, 2011, this Court sua sponte entered an Order Continuing Trial and
Certain Pretrial Dates (D.E. 36), which set the trial in this action for a two-week period
commencing on October 24, 2011 (the “two-week period”). The order also directed counsel to
appear at a calendar call on October 18, 2011. Microsoft understands that, at this time, trial in
this action is not definitively scheduled to begin on October 24, 2011. Rather, this Court will
determine at the October 18 calendar call when the trial may begin during this two-week period.
It is Microsoft‟s understanding that trials in pending criminal cases and other matters may be
scheduled within the two-week period as well, and the ultimate scheduling of this trial will
depend upon the number of other trials that may be set for the same two-week period and the
progress and length of those trials.
During the course of discovery, Microsoft and Motorola identified 106 potential
individual fact witnesses and retained 22 experts. See Rule 26(a)(1) Second Amended and
Updated Disclosures of Microsoft Corporation, pp. 3-13 (attached hereto as Exhibit B)
(“Microsoft‟s Second Amended Rule 26(a) Disclosures”); Motorola Mobility, Inc.‟s Second
Amended and Updated Rule 26(a)(1) Disclosures, pp. 2-10 (attached hereto as Exhibit C)
(“Motorola‟s Second Amended Rule 26(a) Disclosures”). Thus, a total of 128 witnesses may

2

Microsoft alleged that Motorola violated U.S. Patent Nos. 6,791,536 (“the „536 Patent”),
6,897,853 (“the „853 Patent”), 7,024,214 (“the „214 Patent”), 7,493,130 (“the „130 Patent”),
7,383,460 (“the „460 Patent”), 6,897,904 (“the „904 Patent”), and 6,785,901 (“the „901 Patent”).
Counterclaim at ¶¶ 8-14 (collectively, “the Microsoft Patents”).

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testify at trial. Only fourteen of these individuals, at most, reside in Florida.3 The remaining 114
witnesses reside in Washington, Illinois, or in other locations across the United States and
Canada.4 Without knowledge of a date certain on which the trial will begin, coordinating the
order and presentation of testimony from these numerous witnesses in a logical manner, while
also avoiding unnecessary gaps and delays in testimony, would be a nearly impossible task in
this case.
ARGUMENT
This Court has indicated that a party may request a specially set trial date in writing to the
Court. (See Exhibit A, p. 6.) As set forth below, the circumstances presented by this case make
it an appropriate candidate for a specially-set trial date.
A.

The Parties Have Identified More Than 120 Witnesses, the Substantial
Majority of Whom Need to Travel from Numerous Locations Across the
Country to Testify at Trial.

This is an extremely large case that could require testimony from as many as 106
individual fact witnesses and 22 experts. All but 14 of these witnesses – a total of 114 people –
reside outside of Florida and will have to travel from all across the country and Canada to trial.
Specifically, of the 92 individual fact witnesses who live out of state, 39 reside in the State of
Washington, which is Microsoft‟s headquarters and principal place of business, 5 and 27 reside in

3

It is presently unclear whether two of Motorola‟s witnesses, Senaka Balasuriya and Daniel
Crilly, reside in Florida. The number of Florida witnesses referenced above includes these two
individuals.
4

Although the parties may identify fewer witnesses closer to trial, the total number will remain
very large and the vast majority of them will still need to travel long distances to attend trial.
5

Indeed, given this action‟s strong connection to Washington, on May 19, 2011, Microsoft filed
a motion to transfer this action to the Western District of Washington. D.E. 62 at 9-13, Ex. 1;
D.E. 89 at 6-7. The motion to transfer was fully briefed as of June 14, 2011 and is currently
pending.

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Illinois, Motorola‟s principal place of business. The remaining 26 fact witnesses reside in
Arizona (four witnesses), California (seven witnesses), Pennsylvania (five witnesses), Texas
(three witnesses), Missouri, Massachusetts, Virginia, Washington, D.C., and Ontario, Canada
(three witnesses).6 Moreover, because Microsoft‟s main research and development facilities are
located in Redmond, Washington, nearly all of Microsoft‟s employees, in-house counsel and
client representatives (totaling more than 35 in number) will need to travel from Washington to
trial.7
In addition, the parties retained a total of 22 testifying experts (eleven per side). All of
the parties‟ experts reside out of state and will be required to travel from numerous locations
across the country to testify. Four of Microsoft‟s eleven experts will need to travel from
California. Microsoft‟s remaining experts will be traveling from Colorado, Indiana, New York,
Ohio, and Minnesota. Six of Motorola‟s experts reside in California. The rest of them live in
Georgia, Massachusetts, Maryland, Connecticut, and Virginia. The witnesses will require, if not
a definitive date upon which they will be called to testify, a close approximation of this date to
avoid unnecessary travel and extended periods of time away from work and other obligations.
Cf. Broder v. Stroup & Martin, P.A. et. al., No. 08-61641-CIV-MORENO (S.D. Fla.) (Moreno,
J.) (D.E. 85; order dated July 22, 2009) (specially setting trial in class action lawsuit brought
under Fair Labor Standards Act involving eleven live witnesses) (Group Exhibit D); Abbott
Laboratories v. Andrx Corp. et al., No. 03-60867-CIV-HIGHSMITH (S.D. Fla.) (D.E. 53, 61;
order dated July 1, 2005) (Highsmith, J.) (granting joint motion for specially set trial in patent
6

Twenty-two of the fact witnesses identified by Motorola are non-parties, including former
employees. (See Exhibit C). Microsoft has identified twelve non-party witnesses, all of whom
live in Washington or elsewhere on the west coast. (See Exhibit B).
7

In addition, Microsoft‟s lead counsel is Sidley Austin LLP. Counsel of record from Sidley
Austin are located in Chicago, Dallas, Los Angeles, and Washington, D.C.

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infringement action involving seven out-of-town testifying witnesses as well as other counsel
and client representatives; parties argued that the need for witnesses to travel and make special
work arrangements should require a set trial date) (Group Exhibit D).8
B.

Setting a Firm Trial Date Would Expedite the Completion of Trial and
Alleviate Logistical Burdens for Jurors.

In addition, entering a specially set trial date would greatly expedite the completion of
trial and alleviate logistical burdens for jurors. In light of the large number of witnesses and
complexity of the issues, Microsoft reasonably anticipates the trial will last from two to four
weeks.9 As noted above, Microsoft understands that the ultimate scheduling of this trial will
depend upon the number of other trials that may be set for the same two-week period and the
progress and length of those trials. If other trials scheduled within the period do not progress as
anticipated, the start of the trial in this case would need to be delayed. Moreover, coordinating
the testimony from more than 100 potential witnesses will be challenging, and there is a risk that
if a witness is unable to travel to Florida on shorter notice, a party may not be in a position to
present evidence in an orderly and logical fashion. This would create needless delays in the
completion of the trial as well as undue confusion for the jury. By filing this motion, Microsoft

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See also Chow et al. v. Chau et al., No. 09-CV-21893-WMH (S.D. Fla.) (D.E. 241; order
dated Mar. 30, 2011) (Hoeveler, J.) (setting special trial date in trademark infringement case
involving dispute over name of restaurant) (minute order) (Group Exh. D); Bonner v. Am.
Offshore Marine, Inc., No. 08-CV-61486-AMS (S.D. Fla.) (D.E. 37) (Simonton, J.) (setting
special trial date in employment discrimination case) (minute order) (Group Exh. D);
Commercial Jet, Inc. v. Wren Equip. Fin. Ltd., No. 05-20265-CIV-MARTINEZ-BANDSTRA
(S.D. Fla.) (D.E. 63, 64; order dated Nov. 2, 2006) (Martinez, J.) (granting joint motion for
special setting after parties appeared at the calendar call and were advised that the trial would
need to be postponed in light of a previously-scheduled criminal trial) (Group Exh. D).
9

This is a conservative estimate, given that two weeks of trial would leave less than one day of
testimony for each of the patents-in-suit. Thus, it is highly likely that the trial will last closer to
four weeks than two weeks.

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hopes to facilitate a special setting that enables this Court to reserve sufficient time on its
calendar for this trial before trials in other cases are scheduled.
Furthermore, given the length of the trial, a large prospective jury pool will be necessary.
Jurors will require a reasonable amount of advance notice of the trial‟s start date to make the
requisite arrangements to be absent from work throughout the duration of the trial and
deliberations. Setting a special date would facilitate an orderly jury selection process and help
alleviate any logistical burdens associated with serving on a jury during a lengthy trial.
C.

Coordinating the Presentation of Evidence and Testimony in this Action
Presents Numerous Logistical Challenges that Warrant a Special Setting.

Coordinating the presentation of testimony for a large number of witnesses, the vast
majority of whom have to travel long distances, presents numerous logistical challenges. In
trying this case in the Southern District of Florida, Microsoft will be required to, inter alia, (a)
make suitable arrangements for storing and accessing voluminous discovery materials, (b)
arrange for the travel and lodging of numerous witnesses and members of the legal trial teams,
and (c) reserve suitable conference rooms and work space. Satisfying these logistical needs will
require significant coordination and expense and would be made substantially less burdensome if
this Court sets a firm trial date that permits Microsoft to plan accordingly. Having a specially-set
trial date would prevent Microsoft from incurring the unnecessary significant expense that would
result if, after all of the witnesses, counsel and other client representatives traveled to Miami, the
trial needed to be postponed because another action scheduled within the two-week period has
not yet been completed.
In short, this is a paradigm case for utilization of the procedure that permits the setting of
a firm trial date. A special setting will enable the trial to be completed as expeditiously as
possible while at the same time preventing the creation of any undue imposition on the jurors,

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testifying witnesses, or other trial participants. In the interest of judicial efficiency and economy,
Microsoft respectfully requests this Court to grant its motion for a specially set date.
CONCLUSION
Accordingly, for all of the foregoing reasons, Microsoft respectfully requests that this
Court enter an order setting forth a date certain upon which trial in this action is to begin. A
proposed order is attached to this motion as Exhibit E.
CERTIFICATE OF GOOD FAITH COMPLIANCE
Pursuant to S.D. Fla. L.R. 7.1(a)(3), the undersigned counsel certifies that prior to the
filing of the instant motion, the parties met and conferred in good faith regarding this motion.
Motorola advised that it does not wish to join in this motion.
Dated: August 10, 2011
Respectfully submitted,
COLSON HICKS EIDSON
Roberto Martínez
Curtis B. Miner
255 Alhambra Circle, Penthouse
Coral Gables, Florida 33134
Tel. [phone]
Fax. [phone]
By: /s/ Curtis B. Miner
Curtis B. Miner
(Fla. Bar No. 885681)
E-mail: [e-mail]

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David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Tel. [phone]

Brian R. Nester
SIDLEY AUSTIN LLP
1501 K Street, NW
Washington, D.C. 20005
Tel. [phone]

Paul D. Tripodi II
Sidley Austin LLP
555 West Fifth Street
Los Angeles, CA 90013
Tel: [phone]

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on the 10th day of August 2011, I caused the foregoing
document to be served and filed by CM/ECF on all counsel of record, and caused it to be served
by hand as well on the counsel identified on the below Service List.
____s/ Curtis B. Miner___________
Curtis B. Miner
SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-Moreno
By Hand
Edward M. Mullins, Esq.
ASTIGARRAGA DAVIS
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Via CM/ECF
Steven Pepe
Jesse J. Jenner
Leslie M. Spencer
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036-8704
Norman H. Beamer
Mark D. Rowland
Gabrielle E. Higgins
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
Kevin J. Post
Megan F. Raymond
ROPES & GRAY LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005-3948
Counsel for Plaintiff Motorola Mobility, Inc.