Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al
Filing
290
ORDER denying as moot 200 Motion for Protective Order; denying as moot 201 Motion to Expedite Briefing Schedule regarding Plaintiffs Motion For Entry of Protective Order; denying 243 Motion for Leave to Construe Previously Construed Term. This provisional claim construction Order sets forth the Courts initial constructions for the disputed claim terms in U.S. Patent No. 5,490,216. The Court will issue a Memorandum Opinion, including a full analysis of the disputed claim terms, at a later date. The Court may modify these provisional constructions when it issues the Memorandum Opinion. This Order is intended to serve as a guideline and framework with which the parties may proceed at an earlier point in the litigation. Signed by Judge Leonard Davis on 11/03/11. cc:attys 11-04-11 (mll, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
SONY CORPORATION OF AMERICA,
ET AL.
Defendants.
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
DISK DOCTORS LABS, INC., ET AL.
Defendants.
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
NATIONAL INSTRUMENTS CORP., ET
AL.
Defendants.
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
ENGRASP, INC., ET AL.
Defendants.
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CASE NO. 6:10-CV-373
PATENT CASE
CASE NO. 610-CV-471
PATENT CASE
CASE NO. 610-CV-472
PATENT CASE
CASE NO. 610-CV-591
PATENT CASE
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UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
BMC SOFTWARE, INC., ET AL.
Defendants.
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UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
FOXIT CORPORATION, ET AL.
Defendants.
SYMANTEC CORPORATION, ET AL.
Plaintiffs,
vs.
UNILOC USA, INC., ET AL.
Defendants.
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CASE NO. 6:10-CV-636
PATENT CASE
CASE NO. 6:10-CV-691
PATENT CASE
CASE NO. 6:11-CV-33
PATENT CASE
ORDER
This provisional claim construction Order sets forth the Court’s initial constructions for the
disputed claim terms in U.S. Patent No. 5,490,216 (“the ‘216 patent”). The Court will issue a
Memorandum Opinion, including a full analysis of the disputed claim terms, at a later date. The
Court may modify these provisional constructions when it issues the Memorandum Opinion. This
Order is intended to serve as a guideline and framework with which the parties may proceed at an
earlier point in the litigation.
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BACKGROUND
Uniloc USA, Inc., et. al asserts the ‘216 patent against Defendants. The ‘216 patent is now
before the Court for claim construction.
‘216 PATENT
1.
permits use of said digital data . . . only if [the local licensee unique ID] has matched
[the remote licensee unique ID]1
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
The ordinary meaning of the phrase is
clear and unambiguous. Thus, the phrase
does not require construction.
When [the local and remote licensee
unique IDs] have matched then the use of
said digital data is permitted.
The Court provisionally finds that this term does not require construction.
2.
Reexamination Disclaimer 1: Licensee Unique ID2
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
There is no disclaimer in the
reexamination file history.
The licensee unique ID/Security Key
cannot be generated by a checksum,
summation algorithm, summer, or
equivalents thereof, used to test data
integrity.
The Court provisionally finds that there is no disclaimer in the reexamination file history.
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The term is used in claim 1.
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This will apply to all asserted claims.
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3.
Reexamination Disclaimer 2: Licensee Unique ID3
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
There is no disclaimer in the
reexamination file history.
The licensee unique ID generated by the
means recited in each of the claims must be
derived from at least one piece of
information that is specific to the user,
such as name, billing information, or
product information unique to the
installation entered by the user. The
information cannot be specific to the
computer or independently generated by
the computer.
The Court provisionally finds that there is no disclaimer in the reexamination file history.
MOTIONS
At the Markman hearing, the Court heard argument on various pending motions. The Court
hereby DENIES Defendant Activision Blizzard, Inc.’s Motion to Strike Plaintiff’s First Amended
Infringement Contentions (Uniloc v. Sony Corporation of America, Inc., 6:10cv373, Doc. No. 175)
and Defendant Pervasive Software’s Motion For Leave to Construe Previously Construed Term
(Uniloc v. National Instruments Corp., 6:10cv472, Doc. No. 243).
The Court may issue
Memorandum Opinions regarding these rulings at a later date.
The parties also represented during the hearing that Uniloc’s Motion to Compel Defendant
Intego, Inc. To Produce Sales Data (Uniloc v. Disk Doctors Lab, Inc., 6:10cv471, Doc. No. 203),
Motion For Protective Order (Uniloc v. National Instruments Corp., 6:10cv472, Doc. No. 200) and
Motion to Expedite Briefing Schedule regarding Plaintiffs Motion For Entry of Protective Order
3
This will apply to all asserted claims.
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(Uniloc v. National Instruments Corp., 6:10cv472, Doc. No. 201) have been resolved. Accordingly,
those motions are DENIED as MOOT.
CASE MANAGEMENT
Early in this multiple-defendant case, the Court held a status conference to both flesh out
Plaintiff’s rationale for suing more than 124 defendants, and to entertain ideas regarding case
management of a series of cases of this magnitude. See Uniloc v. Sony Corp. of America, et. al.,
610cv373, Doc. No. 126; see also Raylon, LLC v. Complus Data Innovations, Co., et. al.,
6:09cv355, Doc. No. 147 at 5; Parallel Networks, LLC v. Abercrombie & Fitch Co., et. al.,
6:10cv111, Doc. No. 338. Given the total number of defendants and the relative size of these cases,
the Court requested input from the parties regarding strategies to promote the efficient and
economical management of these cases. Based on the Court’s assessment of the case and the
parties’ input, the Court modified its standard docket control order and fashioned a unique schedule
regarding discovery disclosures for these cases.
First, the Court maintained the normal early disclosure of Uniloc’s Infringement Contentions
under P.R. 3-1 and 3-2. Id. at 6. The Court also implemented an early disclosure of Uniloc’s
previous licenses and Defendants’ accused product sales data. Id. at 6-7. Next, the Court set an
early mediation deadline, and deferred P.R. 3-3 and 3-4 (Invalidity Contentions and Accompanying
Disclosures) and all other disclosures under Federal Rule of Civil Procedure 16 until after the early
mediation deadline. Id. at 6-7. Defendants also had the option to disclose source code related to the
accused instrumentalities identified in Uniloc’s P.R. 3-1(c) chart(s). Id. If a Defendant chose to
disclose its source code, Uniloc was obligated to amend its P.R. 3-1(c) chart(s), incorporating the
source code, within 30 days. Id. The parties would then mediate the case, and only after the
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mediation were Defendants required to comply with P.R. 3-3 and 3-4 and the exchange of
disclosures according to the Court’s Discovery Order. Id. at 6-7.
At the Markman hearing, the parties provided comments regarding the results of this
modified schedule. The parties reported that of the 124 Defendants initially named and the 95
remaining Defendants that appeared at the April status conference, only 20 parties remained in the
case.4 In other words, across all cases, a total of 104 Defendants resolved their differences with
Uniloc without the need for expensive and extensive early discovery. The parties agreed that the
early disclosure of source code and sales data facilitated substantive discussions regarding noninfringement and allowed the parties to evaluate their relative positions at an early stage without the
need for voluminous and expensive discovery. The parties also stated that the Court’s approach to
this type of case, i.e. multiple defendant software patent case, allowed the parties to narrow the
number of asserted claims and accused products significantly, in turn, reducing the cost of discovery
for the remaining parties.
A few Defendants voiced concern regarding the “compressed” nature of the Court’s
modified schedule. To which, the Court encouraged and encourages any future multiple defendant
parties to substantively voice this concern early in the process so the Court can evaluate the need
to extend any deadlines set out in a modified schedule.
The Court commends the parties for taking the modified schedule seriously and significantly
narrowing the number of parties, claims, and accused products that are at issue in this case. The
Court notes that despite the very vocal criticism of large multiple-defendant cases, this case in
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The remaining 95 defendants consisted of 79 defendant groups. The remaining 20 defendants consist of
17 defendant groups.
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particular demonstrates that with willing parties, the Court can fashion a litigation process that
attempts to successfully address the myriad concerns of all parties. As a result, this leads to efficient
and economical resolution of these cases with regard to many Defendants without the need for
expensive discovery. The Court can imagine the expense that each party may have borne had these
cases been filed serially in far-flung venues across the nation. Not to mention—had these cases been
filed serially across the nation—the concept of any judicial economy would have been severely
undermined. The Court has also observed that many Defendants in these multiple party suits save
significantly by sharing costs for, among other things, experts and third-party discovery vendors.
In addition, the Court has increasingly faced cases involving patents that have been
previously construed in another District Court and/or at the Federal Circuit. The Court notes that
multiple Defendant suits, run efficiently and economically, may avoid some of the thorny stare
decisis issues that invariably arise when a patent has been previously evaluated by another court
and/or the Federal Circuit. In a multiple defendant suit, all parties with a stake in the construction
of the patent terms are afforded an opportunity to have their arguments heard at one time. Absent
such a scenario, a particular Defendant may be bound by a previous construction in which it had no
input. See e.g. Eolas Technologies, Inc. v. Adobe Systems, Inc., et. al., 6:09cv446, Doc. No. 989.
The Court again commends the parties for their willingness to work toward the efficient
resolution of these cases. As mentioned at the Markman hearing, this provisional claim construction
order triggers the parties’ responsibility to meet and confer and to jointly file in each case a notice
that the cases are ready for a management conference. See Uniloc v. Sony Corp. of America, et. al.,
610cv373, Doc. No. 126 at 7-8.
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So ORDERED and SIGNED this 3rd day of November, 2011.
__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE
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