Case 8:19-cv-01150-JLS-ADS Document 34 Filed 10/25/19 Page 1 of 10 Page ID #:342
`
`Aaron S. Jacobs (Cal. Bar No. 214953)
`ajacobs@princelobel.com
`James J. Foster
`jfoster@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`
`Matthew D. Vella (Cal. State Bar No.
`314548)
`mvella@princelobel.com
`PRINCE LOBEL TYE LLP
`357 S. Coast Highway, Suite 200
`Laguna Beach, CA 92651
`Tel: (949) 232-6375
`
`Attorneys for Plaintiff
`
`JOSHUA A. KREVITT, SBN 208552
`jkrevitt@gibsondunn.com
`PAUL E. TORCHIA
`ptorchia@gibsondunn.com
`FLORINA YEZRIL
`fyezril@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`200 Park Avenue
`New York, NY 10166-0193
`Telephone: 212.351.4000
`Facsimile: 212.351.4035
`
`JENNIFER RHO, SBN 254312
`jrho@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`333 South Grand Avenue
`Los Angeles, CA 90071-3197
`Telephone: 213.229.7000
`Facsimile: 213.229.7520
`
`ANDREW ROBB, SBN 291438
`arobb@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`1881 Page Mill Road
`Palo Alto, CA 94304-1211
`Telephone: 650.849.5300
`Facsimile: 650.849.5333
`
`Attorneys for Defendant Infor, Inc.
`
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`SANTA ANA DIVISION
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`Case No. 8:19-cv-01150-JLS-ADS
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`JOINT 26(f) REPORT
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`Hearing: November 8, 2019
`Courtroom: 10-A
`Judge:
`Josephine L. Staton
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`UNILOC 2017 LLC,
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`v.
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`INFOR, INC.,
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`Plaintiff,
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`Defendant.
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`Pursuant to Federal Rules of Civil Procedure 26 and 34, Plaintiff, Uniloc 2017
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`LLC, and Defendant, Infor, Inc., file this Joint Rule 26(f) Report, per the Court’s
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`Order, Dkt. No. 29.
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`Joint 26(f) Report
`3312507.v1
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`Case No. 8:19-cv-01150-JLS-ADS
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`Case 8:19-cv-01150-JLS-ADS Document 34 Filed 10/25/19 Page 2 of 10 Page ID #:343
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`a.
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`Statement of the case:
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`Uniloc 2017’s Position: This is a patent infringement action. Uniloc 2017
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`accuses Infor products of infringing United States Patent Nos. 6,344,578 and
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`7,069,293, including Infor Workforce Management and Infor CRM Cloud, among
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`others. Uniloc 2017 expects Infor to argue the patents are invalid and not infringed.
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`Infor’s Position: This is the fourth time Uniloc has filed a complaint accusing
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`one of Infor’s products of infringing the two asserted patents. Uniloc first filed a
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`complaint in the Eastern District of Texas in 2017, accusing Infor’s Workforce
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`Management of infringing claims of four patents, including the two patents in suit.
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`Uniloc then waited for Infor to fully brief a motion to dismiss for lack of venue
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`before unilaterally withdrawing that complaint and refiling in the Northern District
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`of Texas, accusing the same product. Uniloc dismissed that case after a court in a
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`separate litigation held the asserted patents to be ineligible. When that decision was
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`reversed in part by the Federal Circuit (with respect to the two patents now at issue),
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`Uniloc filed the original Complaint before this Court, again accusing Workforce
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`Management of infringement. Infor explained to Uniloc that there was no basis to
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`accuse Infor Workforce Management, as Uniloc’s own allegations showed that this
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`product could not infringe, and asked Uniloc to dismiss the case. Uniloc refused,
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`forcing Infor to file a motion to dismiss this action. In response, on the last day
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`permitted under the Federal Rules, Uniloc filed its First Amended Complaint,
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`dropped its allegations against Infor Workforce Management, and for the first time
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`accused a whole new product, Infor CRM Cloud, of infringement.
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`Infor does not agree with Uniloc’ assertion that Infor Workforce Management
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`remains an accused product. Uniloc accused that product in the original complaint,
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`included allegations of infringement related to that product, and dropped them all in
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`response to Infor’s motion to dismiss. Uniloc does not deny any of these facts, but
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`rather asserts that Infor CRM Cloud is only “exemplary,” and that Infor Workforce
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`Management is somehow still in the case, even though Uniloc could not maintain its
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`Joint 26(f) Report
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`Case 8:19-cv-01150-JLS-ADS Document 34 Filed 10/25/19 Page 3 of 10 Page ID #:344
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`allegations of infringement against that product in the face of Infor’s motion. Infor
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`disagrees, and believes that Uniloc has abandoned any claim with respect to
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`Workforce Management.
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`Infor denies the allegations set forth in Uniloc’s statement above and in its
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`First Amended Complaint. Infor contends that the asserted claims of the asserted
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`patents are not infringed, directly or indirectly, by CRM Cloud or any other Infor
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`product. Infor also contends that the asserted claims of the asserted patents are
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`invalid, ineligible, and unenforceable, and that Uniloc should take nothing by way of
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`its operative complaint. Infor further contends that this case is exceptional and that
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`it is entitled to reasonable attorneys’ fees, expenses, and costs incurred in this actions
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`pursuant 35 U.S.C. § 285.
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`By October 31, 2019, Infor will file a renewed motion to dismiss Uniloc’s
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`First Amended Complaint, because Uniloc has failed to plead—and cannot plead—
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`infringement for any of the asserted claims, and because, by virtue of Uniloc’s
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`amendment accusing an entirely new product, Uniloc’s damages case is now
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`severely limited by its failure to plead—and inability to plead—pre-suit notice of
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`infringement under 35 U.S.C. § 287.
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`In light of specific circumstances of this case, Infor is filing a motion next
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`week to stay discovery and all related proceedings, except for service of Initial
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`Disclosures, pending resolution of Infor’s motion to dismiss. As explained more
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`fully in that motion, the equities strongly favor a stay, given the strength of Infor’s
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`motion to dismiss, Uniloc’s accusation of a new a product identified for the first time
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`in Uniloc’s recently filed amended complaint, Uniloc’s threats to seek discovery
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`regarding Workforce Management (for which Uniloc abandoned its allegations of
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`infringement) and “other products” for which Uniloc has no Rule 11 basis to plead
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`infringement, and the complete lack of harm to Uniloc if discovery is stayed by a
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`few months.
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`Joint 26(f) Report
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`Case 8:19-cv-01150-JLS-ADS Document 34 Filed 10/25/19 Page 4 of 10 Page ID #:345
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`b.
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`Legal issues: The key legal issues will include the construction of the
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`asserted claims.
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`c.
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`Damages:
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`Uniloc 2017’s Position: Uniloc 2017 seeks damages in the nature of a
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`reasonable royalty for infringing use. As there has been no discovery as yet as to the
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`extent of use of the accused products, the parties cannot presently give a realistic
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`range of provable damages.
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`Infor’s Position: The Court’s September 20, 2019 Order Setting Scheduling
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`Conference required Uniloc to identify a realistic range of provable damages, and
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`Uniloc has failed to do so. In any case, any hypothetical damages recoverable by
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`Uniloc would be minimal, due at least in part to Uniloc’s failure to comply with 35
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`U.S.C. § 287(a) by either marking or giving actual notice of the product now
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`accused for infringement for the first time in Uniloc’s amended complaint.
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`d.
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`Insurance: The parties are not currently aware of any insurance that
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`would affect the outcome of this litigation.
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`e. Motions: The parties do not contemplate motions to add parties or
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`claims, to file amended pleadings, to dismiss for lack of jurisdiction, or to transfer
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`venue.
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`f.
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`Complexity: The Manual for Complex Litigation need not be used in
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`this case.
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`g.
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`Status of discovery: No discovery has taken place, as yet. Uniloc 2017
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`has made its Initial Disclosures. Infor will make its Initial Disclosures by November
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`25, 2019.
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`h.
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`Discovery plan:
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`The subjects on which discovery may be needed include the patents and
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`inventors, the accused products, infringement, damages, limitations on damages
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`(including for failure to mark or provide pre-suit notice of alleged infringement for
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`Joint 26(f) Report
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`the accused product), prior art, validity, standing, licensing, enforceability, and
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`equitable defenses including unclean hands.
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`The parties have exchanged a draft ESI order to govern the e-discovery
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`procedures in this case. The parties anticipate submitting that proposed order to the
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`Court by November 25, 2019. The parties are also negotiating a proposed Protective
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`Order. In the interim, they have agreed to be bound by Judge Guilford’s Standing
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`Protective Order.
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`There are currently no disputes about initial disclosures or preservation of
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`electronically stored information. There are currently no disputes about claims of
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`privilege or of protection on trial-preparation materials. The parties agree that
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`privilege logs need not include any documents or information dated or created after
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`May 2, 2017.
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`The parties dispute the timing of discovery.
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`Uniloc 2017’s Position: Discovery should not be conducted in phases, and it
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`should not be stayed. Uniloc 2017 proposes a discovery cutoff date in the attached
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`Exhibit B. Uniloc 2017 does not propose changes to the limitations on the scope of
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`discovery imposed by the local and Federal rules, and opposes Infor’s proposal.
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`Infor’s Position: Infor proposes that discovery should be stayed pending
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`resolution of the motion to dismiss, for the reasons discussed above and in Infor’s
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`motion to stay filed next week. Infor proposes that the Court order the parties to
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`propose these deadlines after consideration of these motions. In the alternative, and
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`to the extent the Court wishes to set dates for fact discovery now, Infor proposes
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`discovery deadlines as identified in the attached Exhibit B. In addition, Infor
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`proposes that in the event discovery proceeds, Fed. R. Civ. P. Rule 30(a)(2)’s limit
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`on depositions taken without further leave of Court should be set at 5 depositions per
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`side.
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`Case 8:19-cv-01150-JLS-ADS Document 34 Filed 10/25/19 Page 6 of 10 Page ID #:347
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`i.
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`Expert discovery:
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`Uniloc 2017’s Position: Proposed dates for expert disclosures and discovery
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`are included in the attached Exhibit B.
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`Infor’s Position: For the reasons discussed above, Infor proposes that the
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`Court order parties to propose these deadlines after consideration of Infor’s renewed
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`motion to dismiss and motion to stay discovery. In the alternative, and to the extent
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`the Court wishes to set dates for expert discovery now, Infor proposes discovery
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`deadlines as identified in the attached Exhibit B.
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`j.
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`Dispositive motions:
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`The parties dispute the timing of motions for summary judgment.
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`Uniloc 2017’s Position: Uniloc 2017 does not expect to file a motion for
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`summary judgment. As to motions for summary judgment, Uniloc 2017 believes the
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`schedule in the Model Order should be followed.
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`Infor’s Position: Infor expects to
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`file motions for summary judgment relating to non-infringement, invalidity,
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`ineligibility, and / or failure to mark or other damages limitations, in the event the
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`case is not resolved by the motion to dismiss.
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`For the reasons discussed above, Infor proposes that the Court order the
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`parties to propose these deadlines after consideration of Infor’s renewed motion to
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`dismiss and motion to stay discovery. In the alternative, and to the extent the Court
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`wishes to set deadlines for dispositive motions now, Infor believes that dispositive
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`motions should be due after the close of expert discovery. Specifically, as reflected
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`in the attached Exhibit B, Infor believes that expert reports should be due two weeks
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`after the close of fact discovery, rebuttal reports should be due four weeks later,
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`expert discovery should close two weeks after that, and motions for summary
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`judgement should be due two weeks after that. This compressed schedule would
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`only extend trial by eight additional weeks, while continuing to give the Court the
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`same time to decide these motions as currently contemplated under the presumptive
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`scheduling order.
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`Joint 26(f) Report
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`Case 8:19-cv-01150-JLS-ADS Document 34 Filed 10/25/19 Page 7 of 10 Page ID #:348
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`Given the importance of expert discovery in solidifying positions on the
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`merits in patent cases, high-volume patent districts, such as the Eastern District of
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`Texas, frequently have dispositive motions due after expert discovery closes. See,
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`e.g.,
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`http://www.txed.uscourts.gov/sites/default/files/judgeFiles/Model%20Docket%20Co
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`ntrol%20Order%20-%20Rev.10.9.19.docx. This approach allows the moving party
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`to rely on admissions obtained during expert discovery in its motion.
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`Under this Court’s model schedule, dispositive motions are due on the same
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`day opening expert reports are due. In this case, this arrangement poses a substantial
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`risk that the summary judgment papers will not align with expert reports, frustrating
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`the ability to resolve the case prior to trial. Infor would file its motions based on the
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`existing record on the same day Uniloc would serve its expert reports, where Uniloc
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`could potentially change or expand on its prior contentions disclosed during
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`discovery. In fact, during the meet and confer process before filing this Joint
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`Statement, Infor asked Uniloc to confirm that Uniloc would agree to be strictly
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`bound by its infringement contentions when opposing summary judgment. Uniloc
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`refused. As such, having expert discovery after summary judgment motions are due
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`would pose a significant risk that Uniloc might improperly shift its infringement
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`theories in expert discovery after seeing Infor’s motion. For that reason, Infor
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`proposes that the schedule provide for summary judgment motions to be heard after
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`the close of expert discovery.
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`k.
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`Alternative dispute resolution: Uniloc 2017 believes ADR Procedure
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`No. 2 is best suited for this case. Uniloc 2017 requests that the mediation be held
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`before the end of 2019. Infor believes that the mediation would be most effective
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`after the parties have more visibility on threshold issues, including Infor’s to-be-filed
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`motions to dismiss and stay. Infor therefore requests that mediation be set some
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`time in 2020, after its motion to dismiss has been resolved. Infor prefers ADR
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`Joint 26(f) Report
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`Case 8:19-cv-01150-JLS-ADS Document 34 Filed 10/25/19 Page 8 of 10 Page ID #:349
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`Procedure No. 3, but would further confer with Uniloc about whcih ADR procedure
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`would be most appropriate when the parties are closer to mediation.
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`Settlement efforts: The parties have engaged in preliminary
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`discussions through their counsel.
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`m.
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`Preliminary trial estimate: The parties estimate 5–7 days will be
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`needed for trial, which will be to a jury. Uniloc 2017 expects to call five witnesses.
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`Infor expects to call six witnesses.
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`n.
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`Trial counsel: James J. Foster will appear as trial counsel for Uniloc
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`2017. Josh Krevitt and Paul Torchia will appear as trial counsel for Infor.
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`Independent expert or master: The parties do not currently believe
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`this is a case in which a master or independent scientific expert should be appointed.
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`p. Other issues: The parties do not currently see any other issues affecting
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`the status or management of the case.
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`Case 8:19-cv-01150-JLS-ADS Document 34 Filed 10/25/19 Page 9 of 10 Page ID #:350
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`Dated: October 25, 2019
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`Respectfully submitted,
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`/s/ James J. Foster
`Aaron S. Jacobs (Cal. Bar No. 214953)
`ajacobs@princelobel.com
`James J. Foster
`jfoster@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`
`Matthew D. Vella (Cal. State Bar No. 314548)
`mvella@princelobel.com
`PRINCE LOBEL TYE LLP
`357 S. Coast Highway, Suite 200
`Laguna Beach, CA 92651
`Tel: (949) 232-6375
`
`Attorneys for Plaintiff
`
`
`/s/ Paul E. Torchia
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`JOSHUA A. KREVITT, SBN 208552
`jkrevitt@gibsondunn.com
`PAUL E. TORCHIA
`ptorchia@gibsondunn.com
`FLORINA YEZRIL
`fyezril@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`200 Park Avenue
`New York, NY 10166-0193
`Telephone: 212.351.4000
`Facsimile: 212.351.4035
`
`JENNIFER RHO, SBN 254312
`jrho@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`333 South Grand Avenue
`Los Angeles, CA 90071-3197
`Telephone: 213.229.7000
`Facsimile: 213.229.7520
`
`ANDREW ROBB, SBN 291438
`arobb@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`1881 Page Mill Road
`Palo Alto, CA 94304-1211
`Telephone: 650.849.5300
`Facsimile: 650.849.5333
`
`Attorneys for Defendant Infor, Inc.
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`Joint 26(f) Report
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`ECF CERTIFICATION
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`I certify that my ECF identification and password have been used to file this
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`document. Agreement to file this document was obtained from counsel for Infor, Inc.
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`/s/ James J. Foster
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`Joint 26(f) Report
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`Case No. 8:19-cv-01150-JLS-ADS
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