Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 1 of 11 Page ID #:271
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`Matthew G. Berkowitz (SBN 310426)
`matthew.berkowitz@shearman.com
`Yue (Joy) Wang (SBN 300594)
`joy.wang@shearman.com
`SHEARMAN & STERLING LLP
`1460 El Camino Real, 2nd Floor
`Menlo Park, CA 94025
`Telephone: 650.838.3600
`Fax: 650.838.3699
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`L. Kieran Kieckhefer (SBN 251978)
`kieran.kieckhefer@shearman.com
`SHEARMAN & STERLING LLP
`535 Mission Street, 25th Floor
`San Francisco, CA 94105
`Telephone: 415.616.1100
`Fax: 415.616.1199
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`Attorneys for Defendant NetSuite Inc.
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`Additional Counsel Listed on Signature Page
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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-01151-JLS-DFM
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`JOINT 26(f) REPORT
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`Hearing: November 1, 2019
`Courtroom: 10-A
`Judge:
`Joseph L. Staton
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`Plaintiff,
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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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`Pursuant to Federal Rules of Civil Procedure 26 and 34, Plaintiff, Uniloc
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`2017 LLC, and Defendant, NetSuite Inc., file this Joint Rule 26(f) Report, per the
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`Court’s Order, Dkt. No. 25.
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`I.
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`STATEMENT OF THE CASE
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`A. Uniloc’s Position
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`This is a patent infringement action. Uniloc 2017 accuses NetSuite of
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`infringing United States Patent Nos. 6,344,578 and 7,069,293. NetSuite denies
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`infringement and alleges the patents are invalid.
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 2 of 11 Page ID #:272
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`In an earlier action in the Eastern District of Texas, the judge had issued an
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`interlocutory claim construction order, and the Uniloc plaintiffs then filed a Motion
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`for Reconsideration to correct several errors. Before the motion could get resolved,
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`the case went up on appeal to the Federal Circuit on eligibility grounds. The case
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`has now returned to the district court, which will, in time, consider and decide the
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`issues raised by the Motion for Reconsideration. It appears NetSuite wants this
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`Court to jump ahead of the Texas court, by moving up its own claim construction.
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`That seems counter-intuitive to Uniloc 2017.
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`B. NetSuite’s Position
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`The litigation history on the asserted patents is highly-relevant to this matter
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`and to the schedule that NetSuite believes should be set in this case. See D.I. 27.
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`Of particular relevance is Uniloc USA, Inc. et al. v. ADP, LLC, 16-cv-00741-
`RWS (E.D. Tex.) (“ADP cases”).1 On August 17, 2017, Judge Schroeder issued a
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`Markman order in the ADP cases construing numerous claim terms of the ’293 and
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`’578 patents (the “Markman Order”). That Markman Order continues to govern in
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`those ongoing cases.
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`NetSuite believes that it does not infringe either of the Asserted Patents,
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`under the Markman Order or otherwise, and that, in view of Judge Schroeder’s
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`prior work, this Court can implement streamlined claim construction proceedings
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`(as outlined in the attached Exhibit B) on a single term, “application program(s)”
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`that will be case-dispositive if construed in a manner consistent with the Markman
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`Order.
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`NetSuite also contends that the claims are invalid under 35 U.S.C. §§ 101,
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`102, 103, and/or 112, particularly when read as broadly as Uniloc implies in its
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` 1
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` This case was consolidated for discovery purposes with 16-cv-00744-JRG; 16-cv-
`00858; 16-cv-00859; 16-00860; and 16-cv-00863, all in the Eastern District of
`Texas and involving the ’578 and ’293 patents.
`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 3 of 11 Page ID #:273
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`first Amended Complaint and when ignoring the Federal Circuit’s guidance about
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`claim scope (as Uniloc has done in the first Amended Complaint).
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`II. LEGAL ISSUES
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`A. Uniloc’s Position
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`The key legal issues will include the construction of the asserted claims. The
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`other issues NetSuite lists are primarily factual.
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`B. NetSuite’s Position
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`NetSuite agrees with Uniloc that claim construction is critical. In addition,
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`and depending on the outcome of claim construction, the key legal issues will also
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`include:
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`1. Whether Defendant has infringed the patents-in-suit in violation of 35 §§
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`U.S.C. 271(a), (b);
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`2. Whether the patents-in-suit meet the conditions for patentability and
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`satisfy all of the requirements set forth in the provisions of 35 U.S.C. §§
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`101, 102, 103, and/or 112;
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`3. Whether Uniloc has standing to assert the patents-in-suit;
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`4. Whether the patents-in-suit are enforceable;
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`5. whether Uniloc is collaterally estopped, either now or at a later time, in
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`view of other litigation history on the patents-in-suit;
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`6. The amount of damages, if any, under 35 U.S.C. § 284;
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`7. Whether Uniloc’s alleged damages are limited under 35 U.S.C. § 287;
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`8. Whether attorneys’ fees, costs, or expenses are recoverable under 35
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`U.S.C. §§ 284 and/or 285; and
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`9. In the event that the patents-in-suit are found not infringed,
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`unenforceable, and/or invalid, the relief, if any, to be awarded to
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`NetSuite.
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 4 of 11 Page ID #:274
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`III. DAMAGES
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`A. Uniloc 2017’s Position
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`Uniloc 2017 seeks damages in the nature of a reasonable royalty for
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`infringing use. As there has been no discovery as yet as to the extent of use of the
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`accused products, the parties cannot presently give a realistic range of provable
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`damages.
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`B. NetSuite’s Position
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`NetSuite does not believe that Uniloc is entitled to damages.
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`IV.
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`INSURANCE
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`Neither party has insurance coverage
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`V. MOTIONS
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`A. Uniloc 2017’s Position
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`Uniloc 2017 does not contemplate motions to add parties or claims, or to file
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`amended pleadings.
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`B. NetSuite’s Position
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`NetSuite has filed a motion to dismiss Uniloc’s First Amended Complaint.
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`NetSuite anticipates filing (1) a motion to stay discovery pending an abbreviated
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`claim construction proceeding and/or (2) a motion for summary judgment after
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`claim construction proceedings. NetSuite does not anticipate any other motions at
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`this stage.
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`VI. COMPLEXITY
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`The parties agree that the Manual for Complex Litigation need not be used
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`in this case.
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`VII. STATUS OF DISCOVERY
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`A. Uniloc 2017’s Position
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`No discovery has taken place, as yet, except Uniloc 2107 has served Rule 34
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`trequests.. Uniloc 2017 has made its initial disclosures.
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 5 of 11 Page ID #:275
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`B. NetSuite’s Position
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`Uniloc 2017 served NetSuite with two sets of Requests for Production of
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`Documents and Electronically Stored Information pursuant to Federal Rule of
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`Civil Procedure 26(d)(2) on August 8 and October 4, 2019. NetSuite has not yet
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`served written discovery. NetSuite believes that discovery should be stayed except
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`as may be relevant to the initial claim construction proceedings outlined in the
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`attached Exhibit B. NetSuite will make its initial disclosures by October 25, 2019.
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`VIII. DISCOVERY PLAN
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`A. Uniloc 2017’s Position
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`The subjects on which discovery may be needed are the patents and
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`inventors, the accused products, infringement, damages, prior art, and validity.
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`Discovery should not be conducted in phases.
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`There are no issues about disclosure, discovery, or preservation of
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`electronically stored information.
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`There are no issues about claims of privilege, or of protection on trial-
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`preparation materials. Privilege logs need not include any documents or
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`information dated or created after August 2, 2016.
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`The parties do not propose changes to the limitations on the scope of
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`discovery imposed by the local and Federal rules.
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`Uniloc 2017 will submit to the Standing Protective Order Judge Guilford
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`uses.
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`Uniloc 2017 proposes a discovery cutoff date in the attached Exhibit B.
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`B. NetSuite’s Position
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`Initial Disclosures: The parties do not propose any changes to the initial
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`disclosure schedule under the Federal Rules.
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 6 of 11 Page ID #:276
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`Subjects of discovery: NetSuite contends that discovery should be phased,
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`and that, in view of Judge Schroeder’s Markman Order, all discovery should be
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`stayed except as it may relate to claim construction proceedings.
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`Any issues about the disclosure, discovery, or preservation of ESI: None to
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`note.
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`NetSuite proposes that, in view of the limited scope of this case, the parties
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`should, in the first instance, be limited to 5 depositions per side, with the right to
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`seek additional depositions for good cause. More specifically, this case involves
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`only two patents accused against a single software platform. Uniloc is only
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`seeking a reasonable royalty as damages, meaning that the parties will not need to
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`take discovery on complicated lost profits issues (such as discovery on the market,
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`and causation of potential lost customers).
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`NetSuite also anticipates submission of a Proposed Protective Order and
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`Proposed e-Discovery Order, wherein it will propose reasonable limits on the
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`scope of electronic discovery including email.
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`IX. EXPERT DISCOVERY
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`The parties propose the default schedule for expert disclosures and discovery
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`in the attached Exhibit B, except that NetSuite believes that expert reports should
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`come 1 week prior to the deadline for summary judgment motions, so that the
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`parties can avoid filing motions where there may be an unexpected factual dispute.
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`NetSuite also proposes that the deposition of any expert be limited to 7 hours
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`per primary report (e.g., if an expert offers a report on infringement issues and the
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`same expert offers a report on validity issues, then that expert would be subject to
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`14 hours of deposition and an expert that offers a report on damages will be subject
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`to 7 hours of deposition). NetSuite also proposes that if any of the parties uses two
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`or more experts on any individual issue (the issue of infringement, the issue of
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 7 of 11 Page ID #:277
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`validity, or the issue of damages), the parties agree to work cooperatively to fairly
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`adjust the above hour limits.
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`X. DISPOSITIVE MOTIONS
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`A. Uniloc 2017’s Position
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`No motions for summary judgment or partial summary judgment are currently
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`contemplated.
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`B. NetSuite’s Position
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`NetSuite believes that, in the event its Motion to Dismiss the First Amended
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`Complaint (D.I. 27) is not granted, this case will be ripe for resolution after claim
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`construction of a on a single claim term, “application program(s),” as outlined in
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`the attached Exhibit B. NetSuite is not anticipating any other summary judgment
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`motions at this time.
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`XI. ALTERNATIVE DISPUTE RESOLUTION
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`The parties believe ADR Procedure No. 2 is best suited for this case. Uniloc
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`2017 requests that the mediation be held before the end of 2019. NetSuite requests
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`that the mediation be held after resolution of an abbreviated claim construction
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`proceeding on a single claim term, “application program(s),” as outlined in the
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`attached Exhibit B.
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`XII. SETTLEMENT EFFORTS
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`A. Uniloc 2017’s Position
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`The parties have not had any substantive settlement discussions or had
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`written communications concerning settlement.
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`B. NetSuite’s Position
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`Uniloc’s counsel contacted NetSuite’s counsel regarding the possibility of
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`settlement on August 9, 2019. NetSuite’s counsel responded later the same day
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`indicating that it was happy to hear proposals. Uniloc did not respond again after
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 8 of 11 Page ID #:278
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`that. NetSuite believes that an early, abbreviated claim construction as outlined in
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`the attached Exhibit B will be useful for purposes of settlement efforts.
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`XIII. PRELIMINARY TRIAL ESTIMATE
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`The parties estimate 4-5 days will be needed for trial, which will be to a jury.
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`Uniloc 2017 expects to call five witnesses. NetSuite expects to call 4-5 witnesses.
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`XIV. TRIAL COUNSEL
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`James J. Foster will appear as trial counsel for Uniloc 2017. Matthew G.
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`Berkowitz and L. Kieran Kieckhefer will appear as trial counsel for NetSuite.
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`XV. INDEPENDENT EXPERT OR MASTER
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`A. Uniloc 2017’s Position
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`This is not a case in which a master or independent scientific expert should
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`be appointed.
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`B. NetSuite’s Position
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`No independent expert needed.
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`XVI. OTHER ISSUES
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`A. Uniloc 2017’s Position
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`Uniloc does not currently see any other issues affecting the status or
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`management of the case.
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`B. NetSuite’s Position
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`As indicated above, and as reflected in the proposed schedule, NetSuite
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`believes that discovery should be stayed pending resolution of an abbreviated and
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`expedited claim construction proceeding on a single claim term, “application
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`program(s),” as outlined in the attached Exhibit B.
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`There is precedent for courts taking this same approach in similar situations.
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`See Judge Alan Albright, Order Governing Proceedings – Patent Case, W.D. Tex.
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`available at https://www.txwd.uscourts.gov/judges-information/standing-
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`orders/index.html (select “Waco Division”) (“Except with regard to discovery
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 9 of 11 Page ID #:279
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`necessary for claim construction, all other discovery is stayed until after the
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`Markman hearing.”); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803-804 (Fed. Cir. 1999) (affirming stay of discovery pending resolution of early
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`claim construction); Tech. Innovations Assocs. v. Google, Inc., No. 13-0355-LPS,
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`2014 WL 3896121 (D. Del. Aug. 7, 2014) (Judge Stark noting that he stayed
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`discovery pending limited Markman concerning a single claim term because it
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`would likely “facilitate the just, speedy, and inexpensive determination of these
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`actions, even if the Court’s construction did not prove to be case dispositive.”);
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`Oral Order, Tech. Innovations Assocs. v. Google, Inc., No. 13-0355-LPS, D.I. 33
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`(D. Del. Jun. 9, 2014); Tyco Healthcare Retail Servs. AG v. Kimberly-Clark Corp.,
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`No 06–3762, 2007 WL 2155571 at *1-2 (E.D. Penn. July 24, 2007) (construing a
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`single disputed term early because it “may prove dispositive” and furthers the
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`“salutary goals of speed and economy”).
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 10 of 11 Page ID #:280
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`Dated: October 18, 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
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`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
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`Attorneys for Plaintiff
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`/s/ Matthew G. Berkowitz
`Matthew G. Berkowitz (SBN 310426)
`matthew.berkowitz@shearman.com
`Yue (Joy) Wang (SBN 300594)
`joy.wang@shearman.com
`SHEARMAN & STERLING LLP
`1460 El Camino Real, 2nd Floor
`Menlo Park, CA 94025
`Telephone: 650.838.3600
`Fax: 650.838.3699
`
`L. Kieran Kieckhefer (SBN 251978)
`kieran.kieckhefer@shearman.com
`SHEARMAN & STERLING LLP
`535 Mission Street, 25th Floor
`San Francisco, CA 94105
`Telephone: 415.616.1100
`Fax: 415.616.1199
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`Attorneys for Defendant NetSuite Inc.
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`JOINT RULE 26(F) REPORT
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`Case 8:19-cv-01151-JLS-DFM Document 29 Filed 10/18/19 Page 11 of 11 Page ID #:281
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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
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`is submitted, concur in the filing’s content and have authorized the filing.
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`/s/ Matthew G. Berkowitz
`Matthew G. Berkowitz
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`JOINT RULE 26(F) REPORT
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