Case 8:19-cv-01151-DOC-KES Document 38 Filed 11/20/19 Page 1 of 7 Page ID #:340
`
`
`
`
`
`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
`
`Attorney for Defendant NetSuite Inc.
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`SANTA ANA DIVISION
`
`
`UNILOC 2017 LLC,
`
`
`Plaintiff,
`
`v.
`
`NETSUITE INC.,
`
`
`Defendant.
`
`Case No. 8:19-cv-01151-DOC(KESx)
`
`
`DEFENDANT’S AMENDED 26(f)
`REPORT
`
`Hearing: December 4, 2019, 3 p.m.
`Judge:
`David O. Carter
`
`
`
`
`Defendant’s Amended 26(f) Report
`
`1 Case No. 8:19-cv-01151-DOC(KESx)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`
`

`

`Case 8:19-cv-01151-DOC-KES Document 38 Filed 11/20/19 Page 2 of 7 Page ID #:341
`
`
`Pursuant to Federal Rules of Civil Procedure 26 and 34, Defendant NetSuite
`Inc. (“NetSuite”) files this Amended Rule 26(f) Report. The parties previously filed
`a Joint Rule 26(f) report on October 18, 2019. D.I. 29. The Court subsequently
`transferred this case pursuant General Order 19-03, vacated the prior scheduling
`conference before Judge Staton, and set a new scheduling conference for December
`4, 2019. D.I. 35, 37. The parties in several related cases pending before the Court
`have been ordered to attend this same conference. See 8:19-cv-1150-DOC(KESx),
`Uniloc 2017 LLC v. Infor, Inc., D.I. 39 (Nov. 6, 2019); 8:19-cv-1061-DOC(KESx),
`Square Enix, Inc. et al. v. Uniloc 2017 LLC, D.I. 36 (Oct. 28, 2019); 8:19-cv-1062-
`DOC(KESx), Ubisoft, Inc. v. Uniloc 2017 LLC, D.I. 45 (Nov. 6, 2019).
`Accordingly, NetSuite believes it would be helpful for the Court to have NetSuite’s
`updated positions on the Rule 26(f) issues, including proposed dates, many of which
`(including the date for serving infringement contentions) are affected by the revised
`scheduling conference date. For example, Uniloc previously proposed serving
`infringement contentions on November 15 (D.I. 29-1), but let that date come and go,
`presumably because of the transfer and new scheduling conference date.
`NetSuite coordinated a uniform schedule (attached as Exhibit A) with the
`other related Defendants and Declaratory Judgment Plaintiffs and understands that
`they are proposing the same schedule as NetSuite. However, Uniloc declined to
`participate in this amended 26(f) report, indicating that it did not believe it was
`necessary to submit a revised proposal by November 20, or to coordinate a schedule
`between the different cases that are set for conference on December 4.
`(1) NetSuite’s Statement of the case:
`As detailed in NetSuite’s pending motion to dismiss Uniloc’s first Amended
`Complaint, the litigation history on the asserted patents is highly-relevant to this
`matter. See D.I. 27.
`
`Defendant’s Amended 26(f) Report
`
`2 Case No. 8:19-cv-01151-DOC (KESx)
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 8:19-cv-01151-DOC-KES Document 38 Filed 11/20/19 Page 3 of 7 Page ID #:342
`
`
`Judge Schroeder in the Eastern District of Texas issued a Markman order in
`Uniloc USA, Inc. et al. v. ADP, LLC, 16-cv-00741-RWS (E.D. Tex.) (“ADP cases”)1
`construing numerous claim terms of the ’293 and ’578 patents (the “Markman
`Order”). That Markman Order continues to govern in those ongoing cases.
`NetSuite believes that it does not infringe either of the Patents-in-Suit, under
`Judge Schroeder’s Markman Order—in particular the construction of the term
`“application program(s)”—or otherwise, and that, in view of Judge Schroeder’s prior
`work, this Court’s adoption of Judge Schroeder’s construction of “application
`program(s)” in the context of NetSuite’s motion to dismiss will be case-dispositive
`for NetSuite.
`NetSuite believes that, given Judge Schroeder’s ruling, which turns entirely on
`a question of law, the Court need not conduct full claim construction proceedings.
`However, to the extent that the Court believes further claim construction briefing is
`necessary with respect to the term “application program(s),” NetSuite proposes that
`the Court address the issue early in the case, prior to addressing other claim
`construction issues and before the parties or Court take time with potentially
`unnecessary discovery issues. Given the prior litigation history, NetSuite contends
`that the Court should stay discovery until the construction of “application
`program(s)” is resolved. D.I. 30.
`NetSuite also contends that the claims are invalid under 35 U.S.C. §§ 101,
`102, 103, and/or 112, particularly when read as broadly as Uniloc implies in its first
`Amended Complaint and when ignoring the Federal Circuit’s guidance about claim
`scope (as Uniloc has done in the first Amended Complaint). NetSuite also contends
`that the asserted claims of the asserted patents are unenforceable, that Uniloc lacks
`standing, and that it has failed to mark or give pre-suit notice, limiting relief under
`
`
`1 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.
`Defendant’s Amended 26(f) Report
`3 Case No. 8:19-cv-01151-DOC (KESx)
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 8:19-cv-01151-DOC-KES Document 38 Filed 11/20/19 Page 4 of 7 Page ID #:343
`
`
`35 U.S.C. § 287(a). NetSuite further contends that this case is exceptional and that
`NetSuite is entitled to reasonable attorneys’ fees, expenses, and costs incurred in this
`actions pursuant 35 U.S.C. § 285.
`(2) Principal issues:
`Subject to and without waiving its positions and arguments, NetSuite asserts
`that some of the disputed issues include, but are not limited to, the following:
` Construction of the asserted claims;
` Whether NetSuite has infringed and/or is directly infringing the
`Patents-in-Suit;
` Whether the Patents-in-Suit are invalid under 35 U.S.C. §§
`101, 102, 103, and/or 112;
` Whether the Patents-In-Suit are unenforceable;
` Whether Uniloc has standing to assert the Patents-in-Suit;
` Whether Uniloc is collaterally estopped, either now or at a later
`time, in view of other litigation history on the Patents-in-Suit
` Whether Uniloc has complied with 35 U.S.C. § 287 and
`whether Uniloc’s alleged damages are limited under the same;
` The amount of damages, if any, under 35 U.S.C. § 284;
` Whether this case is exceptional and, if so, the amount of
`damages to which Plaintiff or Defendant is entitled.
`NetSuite reserves the right to revise or supplement this list as the case progresses.
`(3) Motions to Amend, Joining Parties: NetSuite does not contemplate
`motions to add parties or claims, to file amended pleadings, to dismiss for lack of
`jurisdiction, or to transfer venue.
`(4) Dispositive motions:
`NetSuite has filed a motion to dismiss Uniloc’s First Amended Complaint and
`a motion to stay discovery pending resolution of the term “application program(s).”
`See D.I. 27; D.I. 30. NetSuite anticipates filing a motion for summary judgment
`Defendant’s Amended 26(f) Report
`4 Case No. 8:19-cv-01151-DOC (KESx)
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 8:19-cv-01151-DOC-KES Document 38 Filed 11/20/19 Page 5 of 7 Page ID #:344
`
`
`after claim construction proceedings, if necessary. NetSuite does not anticipate any
`other motions at this stage.
`(5) Settlement efforts:
`NetSuite believes that ADR Procedure No. 2 is best suited for the case, but
`requests that the mediation be held after construction of the term “application
`program(s).” NetSuite believes that early determination of the construction of the
`term “application program(s)” will be useful for settlement purposes.
`(6) Discovery plan:
`NetSuite has put forth an agreed proposed schedule that should govern
`discovery, attached as Exhibit A. 2
`NetSuite proposes that Fed. R. Civ. P. Rule 30(a)(2)’s limit on depositions
`taken without further leave of Court for good cause should be set at 5 depositions per
`party, given the scope of the case and the fact that neither an injunction nor lost
`profits (two issues that often require additional discovery) are in play.
`NetSuite believes that discovery should be stayed pending resolution of the
`term “application program(s)” for the reasons explained in its co-pending motion to
`stay. See D.I. 30. NetSuite believes that the proposed schedule set forth in Exhibit
`A provides sufficient time for its motions to be decided and for the parties to later
`conduct discovery should the motions be denied.
`(7) Preliminary trial estimate: NetSuite believes that a four (4)-day jury
`trial is appropriate.
`(8) Other issues and specific proposed dates:
`Because this is a patent case, NetSuite proposes adoption of the Northern
`District of California patent rules, with the following modification to the deadlines
`specified therein to streamline the issues and discovery in this case:
`
`
`2 NetSuite believes that construction of “application program” should
`precede other dates on the agreed-upon schedule, as set forth in its
`statement of the case.
`Defendant’s Amended 26(f) Report
`
`5 Case No. 8:19-cv-01151-DOC (KESx)
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 8:19-cv-01151-DOC-KES Document 38 Filed 11/20/19 Page 6 of 7 Page ID #:345
`
`
` Uniloc will serve P.R. 3-1 and 3-2 disclosures on November
`22, 2019.3
` Assuming Uniloc serves its P.R. 3-1 and 3-2 disclosures by
`November 22, 2019, NetSuite will serve P.R. 3-3 and 3-4
`disclosures by the later of February 14, 2020, or 30 days after
`the ruling on the pending motion to dismiss. 4
`NetSuite proposes a schedule, attached as Exhibit A, which includes the
`following dates:
`a. Discovery cut-off date:
`November 6, 2020
`b. Final motion cut-off date: Monday, March 1, 2021
`c. Final pre-trial conference: Monday, April 5, 2021
`d. First Trial5:
`Tuesday, May 4, 2021
`NetSuite has coordinated its proposed schedule with the Defendants and
`Declaratory Judgment Plaintiffs in the other cases pending before this Court on these
`same two Patents-in-Suit, but does not believe these cases should be consolidated for
`trial. NetSuite proposes that the Court address the order in which the cases should
`be set for trial at the pre-trial conference.
`
`
`
`
`3 NetSuite does not object to extending the date for infringement and
`invalidity contentions if Uniloc stipulates to staying discovery as per
`NetSuite’s motion.
`4 If Uniloc delays service of its infringement contentions, NetSuite
`believes that it should receive a corresponding extension on service of
`invalidity contentions.
`5 First trial amongst related cases.
`Defendant’s Amended 26(f) Report
`
`
`
`6 Case No. 8:19-cv-01151-DOC (KESx)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 8:19-cv-01151-DOC-KES Document 38 Filed 11/20/19 Page 7 of 7 Page ID #:346
`
`
`Dated: November 20, 2019
`
`
`
`
`Respectfully submitted,
`
`
`/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
`
`Attorneys for Defendant NetSuite Inc.
`
`Defendant’s Amended 26(f) Report
`
`7 Case No. 8:19-cv-01151-DOC (KESx)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`