Compression Labs Incorporated v. Adobe Systems Incorporated et al

Filing 143

Compression Labs Incorporated v. Adobe Systems Incorporated et al

Doc. 143

Case 2:04-cv-00158-DF

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
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: : Plaintiff, : : v. : : 1. Agfa Corporation, : 2. Apple Computer, Incorporated, : 3. Axis Communications, Incorporated, : 4. Canon USA, Incorporated, : 5. Concord Camera Corporation, : 6. Creative Labs, Incorporated, : 7. Eastman Kodak Company, : : 8. Fuji Photo Film U.S.A., 9. Fujitsu Computer Products of America, Inc. : : 10. Gateway, Incorporated, : 11. Hewlett-Packard Company, : 12. JASC Software, : 13. JVC Americas Corporation, : : 14. Kyocera Wireless Corporation, 15. Matsushita Electric Corporation of America, : : 16. Mitsubishi Digital Electronics : America, Incorporated, : 17. Océ North America, Incorporated, : 18. Onkyo U.S.A. Corporation, : 19. PalmOne, Incorporated, : : 20. Panasonic Communications : Corporation of America, : 21. Panasonic Mobile Communications : Development Corporation of USA, : 22. Ricoh Corporation, : 23. Riverdeep, Incorporated (d.b.a. : Broderbund), : 24. Savin Corporation, 25. Thomson, Incorporated, and 26. Xerox Corporation, Compression Labs, Incorporated, Defendants. ---------------------x

C.A. No. 2:04-CV-158 DF

JOINT REPORT CONCERNING DISCOVERY AND SCHEDULING

Dockets.Justia.com

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Pursuant to the Court's instructions at the case management conference held on October 4, 2004, the parties submit this joint report. The parties have reached agreement on a number of issues ­ the remaining areas of disagreement are discussed below. In light of the continued disagreement concerning scheduling and discovery limits, the parties respectfully request a Rule 16(b) conference. I. DESCRIPTION OF THE CASE The parties supplied the Court with their own statements of the case in the Joint Conference Report submitted on September 30, 2004. II. DISCOVERY a. Initial Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1), the parties served their initial disclosures by September 29, 2004. b. Depositions of Fact Witnesses The parties have previously agreed that deposition discovery in this action will be coordinated with the deposition of fact witnesses in the Dell and Acer actions, as well as the Delaware action. All depositions of fact witnesses should be noticed to all parties in this action, the Dell and Acer actions, as well as the Delaware action. The Plaintiff proposes it have 150 hours for depositions of the Defendants in the Agfa, Dell and Acer cases under Fed. R. Civ. P. 30(b)(6), and 100 hours for depositions of nonparties, for a total of 250 hours. The Defendants do not oppose these limits. However, Defendants would not oppose 500 hours of deposition time for the Plaintiff (with no more than 150 hours being used for depositions of the Defendants pursuant to Rule 30(b)(6)), which is the number of hours the Defendants request.

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The Defendants propose that they have a total of 500 hours of deposition time, 70 hours of which can be used for the deposition of the Plaintiff under Fed. R. Civ. P. 30(b)(6). The Plaintiff concurs that 70 hours of deposition of it under Fed. R. Civ. P. 30(b)(6) is appropriate, but contends that the Defendants should be limited to 180 hours for third party depositions plus any unused portion of the 70 hours allotted for the Defendants' deposition of the Plaintiff. c. Depositions of Expert Witnesses The parties agree that the Plaintiff shall have 14 hours of deposition time for each expert designated by the Defendants. To the extent that an expert offers an opinion specific or unique to a particular Defendant, the parties agree that the Plaintiff shall also have a specified additional amount of deposition time with that expert for each Defendant. The parties also agree that Defendants shall share 14 hours of deposition time for each expert designated by the Plaintiff. In addition to these 14 hours, to the extent that an expert offers an opinion specific or unique to a particular Defendant, that Defendant shall have a specified additional amount of deposition time with that expert. The parties are unable to agree on the amount of this additional specified time ­ Plaintiff proposes one (1) hour per additional defendant the opinion is offered for or against, and Defendants propose three (3) hours additional per defendant. The Defendants reserve the right to request more than 3 hours of individual examination based on the facts and circumstances of the case at the time. d. Interrogatories The parties agree that the Plaintiff may submit 30 common interrogatories which each Defendant will separately answer. In addition, Plaintiff will have an additional five interrogatories to ask of each Defendant.

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Plaintiff proposes that all Defendants in the Agfa, Dell and Acer cases will share 30 joint and common interrogatories which Defendants will propound together. In addition, each Defendant will have an additional five interrogatories to ask of each Plaintiff. Defendants propose that the co-defendants in each case share 30 joint and common interrogatories, which these co-defendants will propound together. In addition, each Defendant will have an additional five interrogatories to ask of each Plaintiff. e. Requests for Admission The parties agree that the Plaintiff may propose 50 common requests for admission which each Defendant will separately answer. In addition, Plaintiff will have an additional five requests to make of each Defendant. Plaintiff proposes that Defendants in the Agfa, Dell and Acer cases shall share 50 joint and common requests for admission which Defendants will propound together. In addition, each Defendant will have an additional five requests to make of the Plaintiff. Defendants propose that the co-defendants in each case share 50 joint and common requests for admissions, which these co-defendants will propound together. In addition, each Defendant will have an additional five requests to make of each Plaintiff. f. Requests for Documents The parties agree that document discovery in this action will be coordinated with the document discovery in the Dell and Acer Actions, as well as the Delaware Action. All documents produced by any party or non-party in this action, the Dell and Acer Actions or the Delaware Action shall be treated as if such documents were produced in this action, the Dell and Acer Actions, as well as the Delaware Action, irrespective of whether the document request or subpoena pursuant to which such documents were produced was captioned in this action, the Dell and Acer Actions or the Delaware Action. 3

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g. Mandatory Disclosures The parties agree to the Plaintiff providing "Asserted Claims and Preliminary Infringement Contentions," as defined below, on the date set forth in the Scheduling Order. Additionally, the parties agree to the Defendants providing "Preliminary Invalidity Contentions," as defined below, on the date set forth in the Scheduling Order. The Defendants do not agree that they must disclose documents without a document request pursuant to Rule 34 of the Federal Rules of Civil Procedure, as proposed by the Plaintiff below. 1. "Disclosure of Asserted Claims and Preliminary Infringement Contentions"

"Disclosure of Asserted Claims and Preliminary Infringement Contentions" means that the Plaintiff must provide the following separately for each defendant: (a) Each claim of each patent in suit that is allegedly infringed by each opposing party; (b) Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality ("Accused Instrumentality") of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus must be identified by name or model number, if known. Each method or process must be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process; (c) A chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function; (d) Whether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents in the Accused Instrumentality; (e) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled; and (f) If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party must identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim. 2. "Preliminary Invalidity Contentions"

"Preliminary Invalidity Contentions" means that the Defendants must provide the following: 4

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(a) The identity of each item of prior art that allegedly anticipates each asserted claim or renders it obvious. Each prior art patent shall be identified by its number, country of origin, and date of issue. Each prior art publication must be identified by its title, date of publication, and where feasible, author and publisher. Prior art under 35 U.S.C. § 102(b) shall be identified by specifying the item offered for sale or publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity which made the use or which made and received the offer, or the person or entity which made the information known or to whom it was made known. Prior art under 35 U.S.C. § 102(f) shall be identified by providing the name of the person(s) from whom and the circumstances under which the invention or any part of it was derived. Prior art under 35 U.S.C. § 102(g) shall be identified by providing the identities of the person(s) or entities involved in and the circumstances surrounding the making of the invention before the patent applicant(s); (b) Whether each item of prior art anticipates each asserted claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each such combination, and the motivation to combine such items, must be identified; (c) A chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in each item of prior art that performs the claimed function; and (d) Any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) or enablement or written description under 35 U.S.C. § 112(1) of any of the asserted claims. 3. Plaintiff's Proposed Mandatory Document Disclosures

The Plaintiff proposes that it must produce to each opposing party or make available for inspection and copying the following information with its "Disclosure of Asserted Claims and Preliminary Infringement Contentions:" (a) Documents (e.g., contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site testing agreements, and third party or joint development agreements) sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell, the claimed invention prior to the date of application for the patent in suit. A party's production of a document as required herein shall not constitute an admission that such document evidences or is prior art under 35 U.S.C. § 102; (b) All documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the patent in suit or the priority date identified in disclosures, whichever is earlier; and (c) A copy of the file history for each patent in suit. The Plaintiff shall separately identify by production number which documents correspond to each category. The Plaintiff proposes that each Defendant must produce or make available for inspection and copying the following items with its "Preliminary Invalidity Contentions:" 5

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(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its P. R. 3-1(c) chart; and (b) A copy of each item of prior art identified in disclosures which does not appear in the file history of the patent(s) at issue. To the extent any such item is not in English, an English translation of the portion(s) relied upon must be produced. h. Experts 1. CLI's Position

Plaintiff proposes a limit of six experts per side. 2. Defendants' position

Defendants are mindful of the large number of defendants in this action and the need to present a trial to the jury in a manageable fashion. However, Defendants request that the Court delay any consideration of the issue of limits on the number and/or scope of testifying experts (and other witnesses as well) at least until May 1, 2005, or such a time that the issues in this case are better developed and the number of defendants likely to be remaining at the time of trial is better know. III. SCHEDULING A chart combining the parties' scheduling proposals is attached as Exhibit A. "Clean" copies of the parties' proposed schedules are attached as Exhibits B and C. IV. OTHER PROVISIONS a. Markman provisions 1. "Preliminary Claim Constructions and Extrinsic Evidence"

"Preliminary Claim Constructions and Extrinsic Evidence" means a preliminary proposed construction of each claim term, phrase, or clause which the parties collectively have identified for claim construction purposes, and, for each element which any party contends is governed by 35 U.S.C. §112(6), identify the structure(s), act(s), or material(s) corresponding to that element. The parties shall also simultaneously exchange a preliminary identification of extrinsic evidence, including without limitation, dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and expert witnesses they contend support their respective claim constructions. The parties shall identify each such item of extrinsic 6

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evidence by production number or produce a copy of any such item not previously produced. With respect to any such witness, percipient or expert, the parties shall also provide a brief description of the substance of that witness' proposed testimony. 2. "Joint Claim Construction and Prehearing Statement"

The Plaintiff proposes that the parties file a "Joint Claim Construction and Prehearing Statement," which means a report containing the following information: (a) The construction of those claim terms, phrases, or clauses on which the parties agree; (b) Each party's proposed construction of each disputed claim term, phrase, or clause, together with an identification of all references from the specification or prosecution history that support that construction, and an identification of any extrinsic evidence known to the party on which it intends to rely either to support its proposed construction of the claim or to oppose any other party's proposed construction of the claim, including, but not limited to, as permitted by law, dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and expert witnesses; (c) The anticipated length of time necessary for the Claim Construction Hearing; (d) Whether any party proposes to call one or more witnesses, including experts, at the Claim Construction Hearing, the identity of each such witness, and for each expert, a summary of each opinion to be offered in sufficient detail to permit a meaningful deposition of that expert; and (e) A list of any other issues which might appropriately be taken up at a prehearing conference prior to the Claim Construction Hearing, and proposed dates, if not previously set, for any such prehearing conference. b. Technical Adviser or Special Master

Plaintiff does not believe that appointment of a technical adviser or special master is necessary. The Defendants defer to the Court as to the necessity of a technical advisor or special master and take no position about whether either should be utilized. However, the parties propose that the Court utilize the following selection process for a technical adviser or special master, in the event the Court deems one to be necessary in this case: By November 8, 2004, or 21 days following the Rule 16(b) scheduling conference, whichever is later, each side shall exchange names of up to 5 candidates for the position of technical advisor and/or special master. After this exchange, the parties shall have until November 19, 2004, or 32 days following the Rule 16(b) scheduling conference, whichever is later, to jointly contact the candidates to discuss the candidate's credentials, willingness to participate, conflicts, etc. The parties shall not have any ex parte contact with potential 7

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candidates. If more than 3 candidates proposed by a side are disqualified due to an unwillingness to participate or a conflict, that side may propose additional candidates to be jointly contacted by both sides until that side has identified 2 candidates that are willing and able to participate, or until 54 days following the Rule 16(b) scheduling conference, whichever is earlier. Once at least 2 candidates per side who are willing and able to participate have been identified, each side shall have 5 business days to select up to 2 candidates from the list of willing and available proposed candidates to be submitted to the Court for consideration. After the names have been submitted to the Court, each side shall have 10 business days to file objections to the other side's nominations. If any objections are filed, the side proposing the candidate shall have 5 business days to file a response. c. Mediation

The parties have agreed to mediation before the Hon. Robert M. Parker in this case. A proposed order appointing Judge Parker is attached as Exhibit D. V. BIFURCATION Defendants dispute the appropriateness of the joinder of all Defendants in a single case. Defendants reserve the right to seek separate trials on some or all issues at the appropriate time. Furthermore, Defendants reserve the right to request that the issue of willful infringement be bifurcated and tried separately from the other issues in this case. Defendants also reserve the right to request that discovery and a trial on willful infringement take place after the completion of the primary trial on patent infringement and other liability issues." Dated: October 18, 2004

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Respectfully submitted on behalf of the Plaintiff, Compression Labs, Inc. Dated: October 18, 2004 By: . Stephen G. Rudisill (attorney-in-charge) Illinois Bar No.: 2417049 Texas Bar No.: 17376050 [e-mail] John C. Gatz Illinois Bar No.: 6237140 [e-mail] Russell J. Genet Illinois Bar No.:6255982 rgenet @jenkens.com Justin D. Swindells Illinois Bar No.: 6257291 [e-mail] JENKENS & GILCHRIST, P.C. 225 West Washington Street, Suite 2600 Chicago, Illinois 60606 Tel. [phone] Fax [phone] S. Calvin Capshaw III Texas Bar No.: 03783900 [e-mail] BROWN, McCARROLL, L.L.P. 1127 Judson Road, Suite 220 Longview, Texas 75601-5157 Tel. [phone] Fax. [phone] Franklin Jones, Jr. Texas Bar No.: 00000055 [e-mail] JONES & JONES, Inc., P.C. 201 West Houston Street (75670) P.O. Drawer 1249 Marshall, Texas 75670-1249 Tel. [phone] Fax. [phone] Otis Carroll Texas Bar No.: 03895700 Jack Wesley Hill Texas Bar No.: 24032294 9

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[e-mail] IRELAND, CARROLL & KELLEY, P.C. 6101 South Broadway, Suite 500 Tyler, Texas 75703 Tel. [phone] Fax. [phone] Carl R. Roth Texas Bar No.: 17312000 [e-mail] Michael C. Smith Texas Bar No.: 18650410 [e-mail] THE ROTH LAW FIRM 115 North Wellington, Suite 200 P.O. Box 876 Marshall, Texas 75670 Tel. [phone] Fax [phone] ATTORNEYS FOR PLAINTIFF

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Respectfully Submitted on behalf of all Defendants, _____/s/___________________________ Eric M. Albritton Texas Bar No. 00790215 Albritton Law Firm P.O. Box 2649 Longview, Texas 75606 903/757-8449 (office) 903/758-7397 (fax) [e-mail] Counsel for Axis Communications, Inc.; Concord Camera Corp.; Creative Labs, Inc.; Fujitsu Computer Products of America, Inc.; Hewlett-Packard Company; JVC Americas; Matsushita Electric Corporation of America; Panasonic Communications Corporation of America; Panasonic Mobile Communications Development Corporation of USA; Ricoh Corporation; Riverdeep, Inc.; and Savin Corporation OF COUNSEL: H. Michael Hartmann [e-mail] Wesley O. Mueller [e-mail] Leydig, Voit & Mayer, Ltd. Two Prudential Plaza; Suite 4900 Chicago, Illinois 60601 Tel: [phone] Fax: [phone] (Counsel for Agfa Corp.) George A. Riley [e-mail] O'Melveny & Myers L.L.P. Embarcadero Center West 275 Battery Street San Francisco, California 94111-3305

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Tel: [phone] Fax: [phone] (Counsel for Apple Computer, Inc.) Mark C. Scarsi [e-mail] Michelle L. Davidson [e-mail] O'Melveny & Myers L.L.P. 400 South Hope Street Los Angeles, California 90071-2899 Tel: [phone] Fax: [phone] (Counsel for Apple Computer, Inc.) Herschel Tracy Crawford [e-mail] Eric Hugh Findlay [e-mail] Ramey & Flock 100 E. Ferguson, Suite 500 Tyler, Texas 75702 Tel: [phone] Fax: [phone] (Counsel for Apple Computer, Inc.) Lance Lee [e-mail] Young, Pickett & Lee 4122 Texas Blvd. Texarkana, Texas 75503 Tel: [phone] Fax: [phone] (Counsel for Apple Computer, Inc.) Barry W. Graham [e-mail] Elizabeth A. Niemeyer [e-mail] Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 1300 I Street, N.W. Washington, D.C. 20005-3315 Tel: [phone] Fax: [phone] (Counsel for Axis Communications, Inc.) 12

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John A. O'Brien jo'[e-mail] Nicholas M. Cannella [e-mail] Fitzpatrick, Cella, Harper & Scinto 30 Rockefeller Plaza New York, New York 10112-3801 Tel.: [phone] Fax: [phone] (Counsel for Canon U.S.A., Inc.) Brian L. Klock [e-mail] Fitzpatrick, Cella, Harper & Scinto 1900 K Street, N.W. Washington, D.C. 20006 Tel: [phone] Fax: [phone] (Counsel for Canon U.S.A., Inc.) Jack B. Baldwin [e-mail] Baldwin & Baldwin, L.L.P. 400 West Houston Street Marshall, Texas 75670 Tel: [phone] Fax: [phone] (Counsel for Canon U.S.A., Inc.) Scott L. Lampert Florida State Bar No. 0085642 4000 Hollywood Blvd. Ste. 650N Hollywood, Florida 33021 [phone] (phone) [phone] (fax) [e-mail] (Counsel for Concord Camera Corp.) Robert Haslam California State Bar No. 71134 Heller Ehrman White & McAuliffe LLP 275 Middlefield Road Menlo Park, CA 94025 [phone] (phone) [phone] (fax) 13

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[e-mail] (Counsel for Creative Labs, Inc.) Joseph P. Lavelle [e-mail] Kenneth W. Donnelly [e-mail] Vivian S. Kuo [e-mail] Howrey Simon Arnold & White 1299 Pennsylvania Ave., N.W. Washington, D.C. 20004 Tel: [phone] Fax: [phone] (Counsel for Eastman Kodak Company) Nicholas H. Patton [e-mail] Justin Kurt Truelove [e-mail] Robert William Schroeder, III [e-mail] Patton, Tidwell & Schroeder, L.L.P. P.O. Box 5398 Texarkana, Texas 75505 Tel: [phone] Fax: [phone] (Counsel for Eastman Kodak Company) Steven J. Routh [e-mail] Hogan & Hartson, L.L.P. 555 13th Street N.W. Washington, D.C. 20004 Tel: [phone] Fax: [phone] (Counsel for Fuji Photo Film U.S.A.) William C. Gooding [e-mail] Gooding & Dodson 2005 Moores Lane P.O. Box 1877 Texarkana, Texas 75504 Tel: [phone] Fax: [phone]

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(Counsel for Fuji Photo Film U.S.A.) Christopher E. Chalsen [e-mail] Michael M. Murray [e-mail] Milbank, Tweed, Hadley & McCloy, LLP One Chase Manhattan Plaza New York, New York 10005-1413 Tel: [phone] Fax: [phone] (Counsel for Fujitsu Computer Products of America, Inc.) W. Bryan Farney, P.C. [e-mail] Darryl J. Adams [e-mail] Dewey Ballantine LLP 401 Congress Ave., Suite 3200 Austin, Texas 78701-2478 Tel: [phone] Fax: [phone] (Counsel for Gateway, Inc.) Nicholas H. Patton [e-mail] Justin Kurt Truelove [e-mail] Robert William Schroeder, III [e-mail] Patton, Tidwell & Schroeder, L.L.P. 4605 Texas Blvd. Texarkana, Texas 75505-5398 Tel: [phone] Fax: [phone] (Counsel for Gateway, Inc.) Danny L. Williams [e-mail] Williams, Morgan & Amerson 10333 Richmond, Suite 1100 Houston, Texas 77042 Tel: [phone] Fax: [phone] Fax: [phone] (Counsel for Hewlett-Packard Company)

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Nicholas H. Patton [e-mail] Justin Kurt Truelove [e-mail] Robert William Schroeder, III [e-mail] Patton, Tidwell & Schroeder, L.L.P. 4605 Texas Blvd. Texarkana, Texas 75505-5398 Tel: [phone] Fax: [phone] (Counsel for Hewlett-Packard Company) John Allcock [e-mail] Sean C. Cunningham [e-mail] Bruce H. Watrous [e-mail] Gray Cary Ware & Freidenrich 401 B Street, Suite 2000 San Diego, California 92101 Tel: [phone] Fax: [phone] Fax: [phone] (Counsel for Hewlett-Packard Company) Alan Albright [e-mail] Elizabeth Brown Fore [e-mail] 1221 S. MoPac Expressway, Suite 400 Austin, Texas 78746 Tel: [phone] Fax: [phone] (Counsel for Hewlett-Packard Company) Daniel W. McDonald [e-mail] Deakin T. Lauer [e-mail] Merchant & Gould, P.C. 3200 IDS Center 80 S. 8th Street Minneapolis, Minnesota 55402 Tel: [phone]

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Fax: [phone] (Counsel for JASC Software, Inc.) Franklin A. Poff, Jr. [e-mail] Crisp, Boyd & Poff, L.L.P. P.O. Box 6297 Texarkana, Texas 75505 Tel: [phone] Fax: [phone] (Counsel for JASC Software, Inc.) Morton Amster [e-mail] Abraham Kasdan [e-mail] Joseph Casino [e-mail] Amster, Rothstein & Ebenstein LLP 90 Park Avenue New York, New York 10016 Tel: [phone] Fax: [phone] (Counsel for JVC Americas, Matsushita Electric Corporation of America, Panasonic Communications Corporation of America and Panasonic Mobile Communications Development Corporation of USA) Jennifer Parker Ainsworth [e-mail] Wilson, Sheehy, Knowles, Robertson & Cornelius P.O. Box 7339 Tyler, Texas 75711 Tel: [phone] Fax: [phone] (Counsel for Kyocera Wireless Corporation) Stuart Lubitz [e-mail] Hogan & Hartson, L.L.P. Biltmore Tower 500 South Grand Avenue, Suite 1900 Los Angeles, California 90071 Tel: [phone] Fax: [phone] (Counsel for Kyocera Wireless Corporation)

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John W. Kozak [e-mail] Steven P. Petersen [e-mail] Leydig, Voit and Mayer, Ltd Two Prudential Plaza 180 North Stetson, Suite 4900 Chicago, Illinois 60601 Tel: [phone] Fax: [phone] (Counsel for Mitsubishi Digital Electronics America, Inc.) Donald R. Harris [e-mail] Terrence J. Truax [e-mail] Jenner & Block One IBM Plaza Chicago, Illinois 60611 Tel: [phone] Fax: [phone] (Counsel for Mitsubishi Digital Electronics America, Inc.) Melvin R. Wilcox, III Wilson, Sheehy, Knowles, Robertson & Cornelius 909 ESE Loop 323, Suite 400 Tyler, Texas 75701 Telephone: [phone] Fax: [phone] Email: [e-mail] Frederick H. Colen [e-mail] Barry J. Coyne [e-mail] Joshua S. Bish [e-mail] Reed Smith, LLP 435 Sixth Avenue Pittsburgh, Pennsylvania 15219 Tel: [phone] Fax: [phone] (Counsel for Oce North America, Inc.) Clyde M. Siebman [e-mail] 18

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Siebman, Reynolds & Burg Federal Courthouse Square 300 N. Travis Street Sherman, Texas 75090 Tel: [phone] Fax: [phone] (Counsel for Oce North America, Inc.) Barry J. Bendes [e-mail] Wolf Block Schoor & Solis-Cohen 1650 Arch Street, 22 Floor Philadelphia, Pennsylvania 19103 Tel: [phone] Fax: [phone] (Counsel for Onkyo U.S.A. Corporation) Kenneth G. Roberts [e-mail] Wolf Block Schoor & Solis-Cohen 250 Park Avenue New York, New York 10177 Tel: [phone] Fax: [phone] (Counsel for Onkyo U.S.A. Corporation) Scott E. Stevens [e-mail] Bunt, Wright & Stevens P.O. Box 3969 Longview, Texas 75606 Tel: [phone] Fax: [phone] (Counsel for Onkyo U.S.A. Corporation) Mark D. Flanagan [e-mail] Bart E. Volkmer [e-mail] Wilson Sonsini Goodrich & Rosati 650 Page Mill Road Palo Alto, California 94303-1050 Tel: [phone] Fax: [phone] (Counsel for palmOne, Inc.)

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M. Craig Tyler [e-mail] Wilson Sonsini Goodrich & Rosati 8911 Capital of Texas Hwy. North Westech 360, Suite 3350 Austin, Texas 78759-7247 Tel: [phone] Fax: [phone] (Counsel for palmOne, Inc.) Anthony C. Roth [e-mail] Morgan, Lewis & Bockius L.L.P. 1111 Pennsylvania Avenue, N.W. Washington, D.C. 20004 Tel: [phone] Fax: [phone] (Counsel for Ricoh Corporation and Savin Corporation) Robert J. Hollingshead [e-mail] Morgan, Lewis & Bockius LLP Shin-Tokyo Building, 9th Floor 3-1, Marunouchi 3 chome Chiyoda-ku, Tokyo 100-0005, Japan Tel: [phone] Fax: [phone] (Counsel for Ricoh Corporation and Savin Corporation) M. Matthews Hall [e-mail] Kolisch Hartwell, P.C. 200 Pacific Building 520 S.W. Yamhill Street Portland, Oregon 97204 Tel: [phone] Fax: [phone] (Counsel for Riverdeep, Inc.) E. Lee Haag [e-mail] Marc L. Delflache [e-mail] Richard S. Zembek [e-mail] Andrew Price 20

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[e-mail] Fulbright & Jaworski, LLP 1301 McKinney Street Houston, Texas 77010-3095 Tel: [phone] Fax: [phone] (Counsel for Thomson, Incorporated) Guy N. Harrison [e-mail] Attorney at Law 217 North Center Longview, Texas 75601 Tel: [phone] Fax: [phone] (Counsel for Thomson, Incorporated) James P. Bradley [e-mail] William O. Fifield [e-mail] Sidley Austin Brown & Wood LLP 717 North Harwood Dallas, Texas 75201 Tel: [phone] Fax: [phone] (Counsel for Xerox Corporation) Lance Lee [e-mail] Young, Pickett & Lee 4122 Texas Blvd. Texarkana, Texas 75503 Tel: [phone] Fax: [phone] (Counsel for Xerox Corporation)

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CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this motion was served on all counsel who are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R. Civ. P. 5(d) and Local Rule CV-5(e), all other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by certified mail, return receipt requested, on this the 18th day of October, 2004.

___________________________________ Michael C. Smith

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