Case 8:19-cv-01150-DOC-KES Document 43 Filed 11/26/19 Page 1 of 5 Page ID #:573
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`James L. Etheridge (SBN 158629)
`ETHERIDGE LAW GROUP, PLLC
`Jim@Etheridgelaw.com
`2600 East Southlake Blvd Suite 120-324
`Southlake, TX 76092
`(817) 470-7249 - Telephone
`(817) 887-5950 – Facsimile
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`Attorneys for Uniloc 2017 LLC
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`Aaron S. Jacobs (Cal. Bar No. 214953)
`ajacobs@princelobel.com
`James J. Foster (pro hac vice)
`jfoster@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
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`Matthew Vella (Cal. Bar No. 314548)
`mvella@princelobel.com
`PRINCE LOBEL TYE LLP
`357 S Coast Highway, Suite 200
`Laguna Beach, CA 92651
`Tel: 949-232-6375
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`Attorneys for Uniloc 2017 LLC
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`SOUTHERN DIVISION
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`Case No. 8:19-cv-01061-DOC-KES
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`Hearing: December 4, 2019, 3 p.m.
`Judge:
`David O. Carter
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`Plaintiffs,
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`SQUARE ENIX, INC., and
`SQUARE ENIX LLC,
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`v.
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`UNILOC 2017 LLC,
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`UBISOFT, INC.,
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`v.
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`UNILOC 2017 LLC,
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`Defendant.
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`Plaintiff,
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`Defendant.
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`Case No. 8:19-cv-01062-DOC-KES
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`Hearing: December 4, 2019, 3 p.m.
`Judge:
`David O. Carter
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`UNILOC 2017’S SUPPLEMENTAL
`RULE 26(f) REPORT
`3339001.v1
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`Case 8:19-cv-01150-DOC-KES Document 43 Filed 11/26/19 Page 2 of 5 Page ID #:574
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`Plaintiff,
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`UNILOC 2017 LLC,
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`v.
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`INFOR, INC.,
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`UNILOC 2017 LLC,
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`v.
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`NETSUITE, INC.,
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`Defendant.
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`Plaintiff,
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`Defendant.
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`Case No. 8:19-cv-01150-DOC-KES
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`Hearing: December 4, 2019, 3 p.m.
`Judge:
`David O. Carter
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`Case No. 8:19-cv-01151-DOC-KES
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`Hearing: December 4, 2019, 3 p.m.
`Judge:
`David O. Carter
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`UNILOC 2017’S SUPPLEMENTAL RULE 26(f) REPORT
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`Uniloc 2017 LLC, the patent owner, is the plaintiff in two of the above
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`actions; in the other two, which are declaratory judgment actions, it is the defendant.
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`To avoid confusion, Uniloc 2017 will refer to the other parties in these actions as the
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`“Accused Infringers.”
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`A Joint 26(f) Report had been timely filed in each action. On November 20,
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`each of the Accused Infringers filed, in its respective action, an Amended or a
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`Supplemental 26(f) Report, expressing its views on how the action should proceed,
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`now that all four actions are assigned to the same judge. This Supplemental Report,
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`in turn, gives Uniloc 2017’s views on how each of these actions should proceed.
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`1.
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`The Square Enix action should remain separate.
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`In the Square Enix action, different counsel represents Uniloc 2017. They
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`request that action be kept separate from the other three actions.
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`In Square Enix, Uniloc 2017 has filed a motion to dismiss because of the
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`pendency of a competing action in the Eastern District of Texas, involving different
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`parties. Additionally, that case presents the issue as to which Square Enix-related
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`entities should be made parties in this Court, which needs to be resolved before that
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`action can move forward.
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`UNILOC 2017’S SUPPLEMENTAL
`RULE 26(f) REPORT
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`Case 8:19-cv-01150-DOC-KES Document 43 Filed 11/26/19 Page 3 of 5 Page ID #:575
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`The other three actions have no such threshold issues, and are ready to move
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`forward expeditiously.
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`2.
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`Overview of the other three actions.
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`Uniloc 2017 first brought suit on the patents-in-suit against Ubisoft and
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`NetSuite in July/August 2016, and against Infor in May 2017. In the normal course,
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`those actions would have gone to judgment well before now. But they were waylaid:
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`first, by venue issues raised by TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
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`137 S.Ct. 1514 (2017), and secondly, by a district court decision, since reversed, that
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`certain patent claims were ineligible for patenting. Uniloc USA, Inc. v. ADP LLC,
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`279 F.Supp. 736 (E.D. Tex. 2017).
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`Each of those Accused Infringers has thus now been aware of the patents for
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`at least 2-3 years, as well as aware of the extent and theory of the infringement
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`allegations against them. And each would have long since formulated its defenses.
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`So Uniloc 2017 believes it appropriate to move those three actions forward
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`expeditiously.
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`Uniloc 2017 thus suggests dispensing with some of the preliminary steps that
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`might be appropriate to a first-filed patent action, such as formal infringement and
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`invalidity contentions.
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`3.
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`Trial Date.
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`Uniloc 2017 requests the Court set a trial date for at least one of these cases
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`before the end of 2020. Uniloc 2017 suggests first Ubisoft, and then Netsuite and
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`Infor. (Judge Guilford had already set a November 10, 2020 trial date in Ubisoft.) If
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`the action against that first Accused Infringer is resolved, by settlement or otherwise,
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`then the next Accused Infringer would fill that trial slot.
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`4.
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`Claim Construction.
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`In an action filed in the Eastern District of Texas, Uniloc USA, Inc. v. AVG
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`Technologies USA, Inc., the district court had issued an interlocutory claim
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`construction order in 2017, and is currently considering a motion by Uniloc 2017 to
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`UNILOC 2017’S SUPPLEMENTAL
`RULE 26(f) REPORT
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`Case 8:19-cv-01150-DOC-KES Document 43 Filed 11/26/19 Page 4 of 5 Page ID #:576
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`reconsider certain of those rulings, as erroneous. Although that court’s final claim
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`construction ruling would not bind this Court, Uniloc 2017 believes that court’s final
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`ruling, when it issues, would be a useful starting point when this Court itself
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`construes the claims.
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`Netsuite and Infor have filed motions for summary judgment (which they have
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`labeled as Motions to Dismiss, to evade this Court’s rule limiting each party to one
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`summary judgment motion) arguing the Texas court’s interlocutory construction
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`creates issue preclusion. If those Accused Infringers re-notice those motions, this
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`Court should stay them, pending a final claim construction ruling in the Texas
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`action.
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`As to procedure, in these three actions Uniloc 2017 opposes the imposition of
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`the local patent rules of other districts, such as those of the Northern District of
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`California. Implementing the Northern District rules would drag the claim
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`construction process out over six months, and simply retrace the path already trod in
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`Texas, to no apparent purpose.
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`Finally, Uniloc 2017 requests this Court defer its own consideration of claim
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`construction until its consideration of motions for summary judgment, where only
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`issues relevant to the outcome would be fully briefed.
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`In the meantime, the parties can otherwise get the cases ready for trial.
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`5.
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`Schedule.
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`The Federal and Local Rules, and this Court’s Standard Orders, require the
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`parties to suggest certain dates. Here are Uniloc 2017’s suggestions for Ubisoft (or
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`whichever action the Court selects to try first):
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`Fact discovery cutoff
`Last day to serve initial expert reports
`Last day to notice motions for hearing
`Final pretrial conference
`Trial date
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`6/30/20
`7/15/20
`9/21/20
`10/26/20
`11/10/20
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`UNILOC 2017’S SUPPLEMENTAL
`RULE 26(f) REPORT
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`Case 8:19-cv-01150-DOC-KES Document 43 Filed 11/26/19 Page 5 of 5 Page ID #:577
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`(Judge Guilford had scheduled Ubisoft for trial November 10, so the parties were
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`already preparing to that schedule.) All of the above dates, except for the dates for
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`pretrial conference and trial, could be the same for all three actions. Once the Court
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`sets these dates, other dates can be calculated by rote application of the rules, or this
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`Court’s Standard Orders.
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`6.
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`ADR
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`Uniloc 2017 asks this Court to order the parties to mediate before March 31,
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`2020 before a neutral selected by the Court’s Mediation Panel.
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`Dated: November 26, 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 (pro hac vice)
`jfoster@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`
`Matthew Vella (Cal. 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 Uniloc 2017 LLC
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`
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`
`
`/s/ James L. Etheridge
`ETHERIDGE LAW GROUP, PLLC
`James L. Etheridge (SBN 158629)
`Jim@Etheridgelaw.com
`2600 East Southlake Blvd Suite 120-324
`Southlake, TX 76092
`(817) 470-7249 - Telephone
`(817) 887-5950 – Facsimile
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`Attorneys for Uniloc 2017 LLC
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`ATTESTATION OF FILER
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`I hereby attest that all other signatories listed, and on whose behalf the filing is
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`submitted, concur in the filing’s content and have authorized the filing.
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`/s/ James J. Foster
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`UNILOC 2017’S SUPPLEMENTAL
`RULE 26(f) REPORT
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