Honeywell International, Inc. v. Nest Labs, Inc. et al

Filing 20

LETTER & ORDER: Pretrial Conference set for 6/18/2012 02:00 PM in Judge's Chambers, Suite 632 (STP) before Magistrate Judge Janie S. Mayeron. Signed by Magistrate Judge Janie S. Mayeron on 4/23/12. (Attachments: # 1 Consent Form)(jam)

UNITED STATES DISTRICT COURT
FOR THE
DISTRICT OF MINNESOTA
CHAMBERS OF

632 U.S. COURTHOUSE
316 NORTH ROBERT STREET
ST. PAUL, MINNESOTA 55101
[phone]

JANIE S. MAYERON
U. S. MAGISTRATE JUDGE

April 23, 2012

Andrew F. Johnson, Esq.
Faegre Baker Daniels LLP
90 South Seventh Street
Suite 2200
Minneapolis, MN 55402

Erin C. Jones
Fish & Richardson PC
500 Arguello Street
Suite 500
Redwood City, CA 94063

Joel D. Sayres, Esq.
Faegre Baker Daniels LLP
3200 Wells Fargo Center
1700 Lincoln Street
Denver, CO 80203

Michael E. Florey, Esq.
Fish & Richardson PC
60 South Sixth Street
Suite 3200
Minneapolis, MN 55402

Re:

Honeywell International, Inc. v. Nest Labs, Inc., et al.
Civil No. 12-299 (SRN/JSM)

Dear Counsel:
I am enclosing a Notice of Pretrial Conference scheduling a pretrial conference in
the above matter for June 18, 2012 at 2:00 p.m. I am also enclosing a proposed Pretrial
Scheduling Order which is specifically designed to address patent infringement cases. I
wanted to alert you to my intention to use this template for the creation of an appropriate
Pretrial Scheduling Order for this patent case. I will also email this template to you, in the
event you would like to use it for the creation of your Rule 26(f) Report to the Court.
Sincerely,

s/ Janie S. Mayeron
Janie S. Mayeron
JSM:kmh
Encs.

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA

HONEYWELL INTERNATIONAL, INC.,

CIVIL NO. 12-299 (SRN/JSM)

Plaintiff,
v.

ORDER FOR
PRETRIAL CONFERENCE
(PATENT)

NEST LABS, INC.,
BEST BUY CO., INC.,
BEST BUY STORES, L.P., and
BESTBUY.COM, LLC,
Defendants.

TO:

Plaintiff above named and Andrew F. Johnson, Esq. and Joel D. Sayres, Esq.,
attorneys for plaintiff;
Defendants above named and to Erin C. Jones, Esq. and Michael E. Florey, Esq.,
attorneys for defendants.
If counsel for all parties are not listed above, it is the responsibility of counsel for

plaintiff to (1) immediately notify those parties and counsel of this conference, and
(2) inform those parties and counsel of the requirements set forth in this notice.
Failure of any party or counsel to comply with any part of this Order, including
delivery of a hard copy of the Rule 26(f) Report and confidential settlement letter to
Magistrate Judge Mayeron by the date specified in this Order, may result in the
postponement of the pretrial conference, an imposition of an appropriate sanction on the
party, company or attorney who failed to comply, or both.
I.

DATE, TIME, PLACE AND PARTICIPANTS
Pursuant to Rule 16 of the Federal Rules of Civil Procedure and Local Rule 16 of

the Rules of this District, a pretrial conference of trial counsel in the above matter will be

1

held in chambers in Room 632, U.S. Courthouse, 316 North Robert Street, St. Paul,
Minnesota, on June 18, 2012 at 2:00 p.m. before United States Magistrate Judge Janie S.
Mayeron to consider the matters set forth in Rule 16(c), the Rule 26(f) disclosures, and
related matters.
Counsel who will be trying the case should make every effort to be present in
person at the conference. If this is not possible, substitute counsel should attend who can
knowledgeably discuss the dispute and the matters set forth in Rule 16(c), the Rule 26(f)
disclosures, and related matters.
II.

MEETING, REPORTS AND DISCLOSURES REQUIRED
A.

Pursuant to Federal Rule of Civil Procedure 26(f), trial counsel for each party

shall confer in person or by telephone on or before May 29, 2012 to discuss (a) settlement,
and (b) to prepare the report required by Rule 26(f) and Local Rule 16.2.
B.

If the case does not settle, no later than June 4, 2012, counsel shall jointly

prepare and file with the Clerk of Court on ECF ("Electronic Case Filing") a complete written
report of the Rule 26(f) meeting. A copy of the 26(f) Report and the confidential
settlement letter shall be mailed, or hand delivered, or faxed to 651-848-1192 or
emailed to chambers at [e-mail] on the same day.
The Report shall contain the following information:
1.

Date and Place of the Meeting; Identification of the Parties and Their
Attorneys; Agenda of Matters for Pretrial Conference.
a.

The date and place at which the meeting was held;

b.

Name, address and occupation or business of each party, together
with the name, address and telephone number of the attorneys who
represented each party at the meeting;

c.

Name of insurance carriers that may be liable for the defense or
payment of any damage award; and
2

d.
2.

An agenda of matters to be discussed at the Pretrial Conference.

Description of the Case
a.

b.

A brief narrative of the facts giving rise to the lawsuit, including a
description of legal claims and defenses; and

c.

3.

A concise statement of the jurisdictional basis of the case, giving
statutory citation and a brief narrative description;

A summary itemization of the dollar amount of each element of the
alleged damages.

Pleadings
a.

b.

The date by which all motions that seek to amend the pleadings to
add parties, claims and defenses will be filed; and

c.

4.

A statement of whether the Complaint and all responsive pleadings
have been filed, and whether any party proposes to amend its
pleadings;

Whether a jury trial is available under the law, and whether a jury trial
has been timely demanded.

Plan for Discovery, Motion Practice and Trial (If the parties are unable to
agree on a discovery plan, the Report shall separately set forth each party's
proposed plan.) Such a plan shall include such matters as focusing the initial
discovery on preliminary issues that might be case dispositive or might lead
to early settlement discussions, instituting document control mechanisms,
stipulating to facts to eliminate unnecessary discovery, and any other matters
counsel may agree upon to control litigation costs and delay. In addition, the
plan shall provide the following information:
a.

All items and issues raised in the proposed Pretrial Scheduling Order
for patent cases (attached);

b.

Whether the parties wish to engage in any method of alternative
dispute resolution following Rule 26(a)(1) disclosures but before
formal discovery is commenced, and if not, when the parties believe
that alternative dispute resolution would be appropriate. In addition,
state the proposed method of alternative dispute resolution;

c.

Whether discovery should be conducted in phases (e.g., to first
discover information bearing on dispositive issues or on settlement),
or limited to or focused upon, particular issues;

3

C.

Each party shall also submit a letter to Magistrate Judge Mayeron concerning

settlement which shall remain confidential between the Court and that party.

This

confidential letter shall describe the following information: (a) the status of settlement
discussions to date; (b) whether you are interested in participating in a voluntary settlement
conference with the Magistrate Judge; (c) if you are interested in participating in a voluntary
settlement conference with the Magistrate Judge, when you believe this settlement
conference should take place. The confidential letter shall be mailed, or hand delivered,
or

faxed

to

651-848-1192

or

emailed

to

chambers

at

[e-mail] on or before June 4, 2012
III.

EXERCISE OF JURISDICTION BY U.S. MAGISTRATE JUDGE PURSUANT TO
TITLE 28, UNITED STATES CODE, SECTION 636(c)
If the parties consent to have this matter tried before the Magistrate Judge, all

counsel are requested to sign the enclosed form by June 18, 2012, and electronically file
said form pursuant to Section II, Part F, of the electronic Case Filing Procedures for the
District of Minnesota (Civil).
Dated:

April 23, 2012

s/ Janie S. Mayeron
JANIE S. MAYERON
United States Magistrate Judge

4

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA

HONEYWELL INTERNATIONAL, INC.,

CIVIL NO. 12-299 (SRN/JSM)

Plaintiff,
v.

PRETRIAL SCHEDULING ORDER
(PATENT)

NEST LABS, INC.,
BEST BUY CO., INC.,
BEST BUY STORES, L.P., and
BESTBUY.COM, LLC,
Defendants.
Pursuant to Rule 16 of the Federal Rules of Civil Procedure and the Local Rules of
this Court, and in order to secure the just, speedy, and inexpensive determination of this
action, the following order shall govern these proceedings. This schedule may be modified
only upon formal motion and a showing of good cause as required by Local Rule 16.3.
Initial Fact Discovery
1.

All pre-discovery disclosures required by Rule 26(a)(1) shall be completed on
or before

2.

No more than
interrogatories, counted in accordance with Rule 33(a),
shall be served by either side.

3.

No more than
requests for production of documents and things shall be
served by either side.

4.

No more than

requests for admissions shall be served by either side.

5.

No more than
by either side.

depositions, excluding expert depositions, shall be taken

6.

When responding to discovery requests, each party shall interpret terms of
art liberally, and shall supply discovery relating to the general issue, rather
than applying a particularized definition for those terms. It is not sufficient to
include a specific definition of a term of art and to respond based on that
definition.

7.

If the plaintiff has not pleaded a claim of willful infringement, or the defendant
has not pleaded the defenses of patent invalidity or unenforceability, but the
opposing party has custody of evidence on these issues, then the opposing
party cannot object to relevant discovery on the basis that such matters have
not been pleaded.

8.

If the plaintiff has submitted the device in its patent, or a substantially similar
device, to a patent office in a foreign jurisdiction, then by request of the
defendant the plaintiff shall produce:
a.

Prior art cited against the foreign application.

b.

Communications sent to and received from foreign patent offices
about the foreign application.

9.

If the inventor for the patent is deposed, the plaintiff shall not object or refuse
to any questions by the defendant, except on the basis of privilege. If the
inventor has knowledge sufficient to do so, the inventor shall answer all
questions that seek an opinion on documents or other matters relevant to this
litigation. If an inventor claims not to have knowledge sufficient to form an
opinion, then the inventor shall not be permitted to testify to those matters at
trial, and the opposing party may advise the fact finder that the inventor was
unable to answer these questions.

10.

Fact discovery shall be commenced in time to be completed on or before
. The parties shall serve discovery requests so that responses
are due on or before this date.

Application of Privileges
1.

Regardless of whether patent prosecution occurs in a domestic or foreign
jurisdiction, communications between the inventors, prosecution counsel, and
others prosecuting the patent application are privileged. If the defendant
demands such communications and the plaintiff objects on the basis of
privilege, the defendant shall not move to compel disclosure unless it
demonstrates what it expects to be disclosed and how this information will be
used at trial. In such a motion, it is insufficient for the defendant to claim that
such communications will be damaging to the plaintiff.

2.

Unless the parties reach an agreement to the contrary, all documents that a
party withholds in the course of discovery shall be recorded in a withheld
document log. The log must include the authors; the recipients; their
positions in relationship to the party; the date that the document was
authored or retransmitted; the bases for withholding the document; and a
sufficient description of the content to allow the opposing party to determine
whether a challenge to withholding is appropriate. For any motions to compel
discovery, the opposing party shall be prepared to produce a current copy of
its withheld document log.
2

Expert Discovery
1.

All experts that are disclosed may be deposed. Each party may call all
disclosed experts at trial.

2.

For issues on which a party has the burden of persuasion, the parties shall
disclose expert identities on or before
and shall disclose expert
reports on or before
.

3.

Rebuttal expert identities and reports shall be disclosed on or before
.

4.

The parties shall not submit expert reports, other than the initial and rebuttal
expert reports authorized above, unless a party receives leave in advance
from the court.

5.

All matters disclosed by a party to its experts shall be subject to discovery by
the opposing party.

6.

The parties shall not be required to retain or produce drafts of expert reports.
The parties shall be permitted to inquire into whether persons other than the
expert participated in the drafting of that expert’s report.

7.

Every expert report shall begin with a succinct statement of the opinions that
the expert is expected to testify to at trial.

8.

An expert shall not testify on matters not disclosed in the expert’s report, or
use or refer to evidence not disclosed in the expert’s report, unless the party
receives leave in advance from the court.

9.

When applying for leave to modify the foregoing limitations on expert reports
and testimony, a party shall submit a written application that includes (1) a
proposed amendment to the expert report that explains any new matters to
be included; (2) an explanation why new matters were not or could not be
included in the original report; and (3) an assessment of prejudice, should the
new matters be included, to that party and against the adverse party. This
application shall be filed and served no later than thirty days before the final
pretrial conference. Any opposing briefs shall be filed and served no later
than ten days after the application is filed.

10.

All expert discovery, including expert depositions, shall be completed on or
.
before

Claim Construction (“Markman”) Issues
1.

The plaintiff shall serve a claim chart upon the defendant on or before
. This claim chart shall indicate:
a.

The claims of its patent that are infringed.
3

b.

c.

For every claim of infringement, the elements of the defendant’s
products or methods that constitute the infringement, including where
those elements are found.

d.

2.

The defendant’s products or methods that literally infringe those
claims or that infringe those claims under the doctrine of equivalents.

In addition, for claims under the doctrine of equivalents, an
explanation how elements of the defendant’s products or methods
have an equivalent function, way, or result, and why any purported
differences are not substantial.

The defendant shall serve a claim chart upon the plaintiff on or before
. This claim chart shall indicate:
a.

b.

For claims under the doctrine of equivalents, an explanation how the
elements of the defendant’s products do not have an equivalent
function, way, or result, and why these differences are substantial.

c.

3.

The elements, disclosed in plaintiff’s claim chart, that are present or
absent in the accused device. If an element is absent, the defendant
shall include the basis for this contention.

Any basis for asserting that the claims advanced by plaintiff are
invalid.

The parties shall simultaneously exchange lists of contested claim terms, that
each party contends will require decision by the court, on or before
.
a.

Each party shall also submit a statement that preliminarily discloses
all extrinsic evidence that the party will submit in support of its
interpretation of contested claim terms, including without limitation
dictionary definitions; citations to treatises and prior art; and testimony
from fact or expert witnesses. If a party has yet to disclose any of this
evidence in discovery, then that evidence shall be attached to the
memorandum. If a party is relying on testimony from fact or expert
witnesses, then that party shall provide a brief description of the
substance of the anticipated testimony. For expert witnesses, the
proponent shall also summarize the opinions the witness will testify to,
in sufficient detail to permit a meaningful deposition of the witness on
those matters.

b.

If a party intends to rely on an expert witness to respond to expert
testimony disclosed by the opposing party with respect to extrinsic
evidence pursuant to subparagraph (a) above, whether or not this
expert has been previously disclosed pursuant to subparagraph (a)
above, on or before _____________, the identity of this responding
expert shall be disclosed and the party shall also summarize the
4

opinions the witness will testify to, in sufficient detail to permit a
meaningful deposition of the witness on those matters..
c.

d.

4.

On or before _________________, any depositions of expert
witnesses bearing on claims construction shall be completed.
The parties shall meet and confer on or before ___________, for the
purpose of narrowing the contested issues and preparing a joint claim
construction statement.

On or before
, the parties shall file a joint claim construction
statement [and contact the Court to schedule the Markman hearing.] This
joint claim construction statement shall indicate:
a.

b.

Each party’s proposed construction of all claim terms, phrases, or
clauses on which the parties disagree. Each party shall cite the
evidence on which it intends to rely, including records from the
prosecution of the patent, in support of its construction of claim terms.

c.

[Whether the parties are seeking to hold a Markman hearing and] An
estimate of the time required for such a hearing.

d.

5.

The construction of all claim terms, phrases, or clauses on which the
parties agree.

Whether any party intends to call witnesses at the Markman hearing,
and if so, the identity of the witnesses. In addition, for expert
witnesses, the proponent shall also summarize the opinions the
witness will testify to at the hearing.

If a Markman hearing is scheduled, the court shall issue an order indicating
(1) whether it will receive evidence at the hearing, and if so, what evidence;
(2) whether evidence shall be taken through affidavits previously filed or
through live testimony; and (3) when the parties shall submit briefs.

Discovery on Particular Defenses
1.

If the defendant intends to advance an invalidity defense:
a.

On or before
, the defendant shall serve the plaintiff with
a prior art statement that discloses and explains in detail how prior art
invalidates the patent.

b.

On or before ________________, the plaintiff shall serve the
defendant with a prior art statement that examines the prior art that
the defendant has disclosed and explains why this prior art does not
invalidate the patent.

5

c.

d.

2.

The parties’ prior art statements may be submitted in the form of
expert reports.
Once a party has submitted its prior art statement, this statement
cannot be amended to include additional prior art without leave in
advance from the court.

If the defendant intends to advance an advice-of-counsel defense against
willful infringement:
a.

The defendant may postpone its waiver of any applicable attorneyclient privilege on such matters until
.

b.

All relevant privileged documents shall be disclosed on or before
.

c.

Additional discovery on an advice-of-counsel defense will take place
after
and shall be completed on or before
.

Non-Dispositive Motions
All non-dispositive motions shall be scheduled, filed, and served in compliance with
the Electronic Case Filing Procedures for the District of Minnesota, with Local Rules 7.1
and 37.1, and in the form prescribed by Local Rule 37.2 as modified as follows:
1.

When a submission is filed on ECF, one paper hard copy, three-hole
punched, of the entire submission shall be mailed or delivered to the
undersigned in an envelope addressed to Katherine Haagenson, Calendar
Clerk, contemporaneously with the submission being posted on ECF.

2.

With respect to any submission filed with the Court which is sealed and
posted on ECF with a placeholder, the sealed submission shall be sent
electronically or hand delivered to all parties and the Court
contemporaneously with the documents being posted on ECF.

3.

Motions which seek to amend the pleadings to add claims or add parties shall
be filed, served and HEARD on or before ________. (This deadline does not
apply to motions which seek to amend the complaint to add a claim for
punitive damages.) Such motions must be brought on or before the nondispositive motion deadline. After this date, if discovery supplies evidence
for claims or defenses that were not pleaded, then a party may move for
leave to amend, so long as the motion proceeds with due diligence. All
motions to amend shall include a redlined version reflecting the changes
contained in the proposed amended pleading.

4.

All non-dispositive motions relating to fact discovery, shall be served, filed
and HEARD on or before
. All non-dispositive motions relating
6

to expert discovery shall be served, filed and HEARD on or before
. All non-dispositive motions relating to the extension or modification of
this scheduling order shall be served, filed and HEARD on or before
.1
5.

Prior to scheduling any non-dispositive motion and following the conference
required by Fed. R. Civ. P. 37(a)(1) and L.R. 37.1, parties are encouraged
to consider whether the motion, including motions relating to discovery and
scheduling, can be informally resolved through a telephone conference with
the Magistrate Judge.2

6.

A Reply Memorandum not exceeding 1750 words (including footnotes) may
be filed and delivered to opposing counsel and the chambers of this Court no
later than 12:00 noon two business days preceding the hearing, so long as
the total word count for the original and reply memorandum does not exceed
12,000 words.

1

In the event the Court is unable to schedule the hearing for a non-dispositive
motion before these dates because of conflicts in its own schedule, the moving party's
motion papers (notice of motion, motion, affidavits, exhibits, memorandum of law, and
proposed order) must be served and filed 14 days before this date, the responding party's
response must be served and filed 7 days before this date, and the moving party's reply
served and filed no later than 12:00 noon two business days before this date.
2

At the Rule 16 Scheduling Conference, the Court advised the parties that it
is willing to resolve nondispositive disputes between the parties on an informal basis via a
telephone conference. However, before the Court will agree to proceed with this informal
resolution mechanism, the "meet and confer" required by Fed. R. Civ. P. 37(a)(1) and L.R.
37.1 must have taken place, and all parties to the dispute must agree to use this informal
resolution process as the very nature of the process is such that the parties are giving up
rights they would otherwise have (e.g. the dispute is heard over the phone; there is no
recording or transcript of the phone conversation; no briefs, declarations or sworn affidavits
are filed). If the parties do agree to use this informal resolution process, one of the parties
shall contact Calendar Clerk Katie Haagenson, 651-848-1190, to schedule the conference.
The parties may (but are not required to do so) submit short letters, with or without a limited
number of documents attached, prior to the conference to set forth their respective
positions. The Court will read the written submissions of the parties before the phone
conference, hear arguments of counsel at the conference, and if no one changes their
decision during the phone conference regarding their willingness to participate in this
informal resolution process, the Court will issue its decision at the conclusion of the phone
conference or shortly after the conference. Depending on the nature of the dispute, the
Court may or may not issue a written order. If there is no agreement to resolve a dispute
through this informal resolution process, then the dispute must be presented to the Court
via formal motion and hearing.
7

Dispositive Motions
All dispositive motions and supporting pleadings (notice of motion, motion, exhibits,
affidavits, memorandum of law, and proposed order), shall be served and filed on or before
(INSERT DATE). In the event that the hearing for the motion is set to take place more
than 42 days after this date, then unless the parties agree otherwise or as ordered by the
Court, the response to the dispositive motion (including affidavits, exhibits and
memorandum of law) shall be served and filed no later than 21 days after this date, and the
reply memorandum shall be served and filed no later than 28 days after this date.]
All dispositive motions shall be scheduled, filed and served in compliance with the
Electronic Case Filing Procedures for the District of Minnesota and in compliance with
Local Rule 7.1. When a motion, response or reply brief is filed on ECF, two paper courtesy
copies of the pleading and all supporting documents shall be mailed or delivered to
Calendar Clerk Sheri Frette, 612-664-5890, contemporaneously with the documents being
posted on ECF.
Trial
This case shall be ready for a jury trial on
pending dispositive motions. The anticipated length of trial is

, or upon resolution of any
days.

General
Handling of Sealed Documents Filed in Connection with All Motions
In connection with any motion filed with this Court, only those portions of a party's
submission (e.g., memorandum of law, affidavit and exhibits) which meet the
requirements for treatment of protection from public filing (e.g., because they are
subject to the attorney-client privilege or work product doctrine, meet the standards
articulated by Fed. R. Civ. P. 26(c)(1)(G), or a statute, rule or regulation prohibits
their disclosure), shall be filed under seal. Designation of material as confidential
or protected by any party pursuant to a protective order as the sole basis for filing
the material under seal shall not satisfy this requirement.

8

Protective Order
The parties propose handling the protection of confidential information as follows:
_____________. [The parties intend to enter into a protective order. [In the interim,
any documents which any producing party believes should be governed by a
protective order shall be produced to opposing counsel for the attorney's review only
and not withheld on the basis that no protective order is yet in place. After the
protective order is entered, the producing party shall designate the documents under
the protective order.]
Electronic Discovery
The parties propose handling any issues relating to the disclosure or discovery of
electronically stored information, including the form or forms in which it should be
produced, as follows: ______________. The parties shall preserve all electronic
documents that bear on any claims, defenses or the subject matter of this lawsuit.
Tutorial Describing the Technology and Matters in Issue
The parties agree that a tutorial for the Court would [would not] be helpful,
particularly in connection with the Claim Construction hearing. The parties submit
that the tutorial should include videos.
Patent Procedure Tutorial
The parties agree that the video "An Introduction to the Patent System," distributed
by the Federal Judicial Center, should [should not] be shown to the jurors in
connection with its preliminary jury instructions.
Protection of Privileged and Trial Preparation Materials
The parties propose handling claims of privilege and protection of trial preparation
material as follows: ____________________________

Dated:

JANIE S. MAYERON
United States Magistrate Judge

9