Case 1:16-cv-00455-RGA Document 222 Filed 08/07/17 Page 1 of 4 PageID #: 17997
`
`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`
`JACK B. BLUMENFELD
`(302) 351-9291
`(302) 425-3012 FAX
`jblumenfeld@mnat.com
`
`
`
`The Honorable Richard G. Andrews
`United States District Court
` for the District of Delaware
`844 North King Street
`Wilmington, DE 19801
`
`August 7, 2017
`
`VIA ELECTRONIC FILING
`
`Re:
`
`Acceleration Bay LLC; C.A. Nos. 16-453 (RGA); 16-454 (RGA); and 16-455 (RGA)
`
`Dear Judge Andrews:
`In light of the Court’s July 5, 2017 Order extending claim construction briefing through
`late November, Defendants request that the Court modify the existing schedule so that election
`of prior art, expert reports, Daubert, summary judgment and trial all proceed in an orderly
`fashion after claim construction is complete. Defendants also note that they have pending
`motions to dismiss and have not yet answered. Acceleration Bay opposes any amendments to
`the case schedule. A proposed order, including a table comparing the current schedule with
`Defendants’ proposed revised schedule, is attached as Exhibit A.
`
`Procedural Background. The current schedule was set in February 2017 and follows
`this Court’s traditional sequence, with a claim construction hearing on July 10, 2017, final
`election of asserted claims and prior art, and opening expert reports in September, and summary
`judgment and Daubert motions the following February. The first trial was set for April 2018.
`
`On July 5, 2017, the Court ordered that claim construction occur over five phases, with
`the final joint claim construction brief being due on November 30, 2017. C.A. No. 16-453, D.I.
`206; D.I. 274.1 On July 10, the Court held the first of the five claim construction hearings.
`Defendants’ motions to dismiss were heard that day as well. After rulings on the motions to
`dismiss, Defendants will need to answer. The Court has not scheduled hearings for the last four
`claim construction briefs, and presumably claim construction will not be complete until early
`2018.
`
`
`1 References to docket entries in this letter refer to C.A. No. 16-453.
`
`

`

`Case 1:16-cv-00455-RGA Document 222 Filed 08/07/17 Page 2 of 4 PageID #: 17998
`
`The Honorable Richard G. Andrews
`August 7, 2017
`Page 2
`
`
`
`Argument. Courts in Delaware and around the country have recognized that final
`election of prior art, expert reports, Daubert, and summary judgment should all follow claim
`construction. The practice is more cost effective and efficient because the Parties do not have to
`prepare expert reports with each party's proposed alternative constructions and without knowing
`the Court's claim constructions, which may be different from the parties' proposed constructions.
`
`At the scheduling conference, Defendants specifically raised the very issue of receiving a
`claim construction order before election of prior art and expert reports. See Ex. B, Feb. 17, 2017
`Tr. at 26, 27. The Court took this into account, and explained that it would set a claim
`construction hearing in July and try to issue a claim construction order by the end of August. Id.
`Defendants then agreed to a schedule that accounted for the Court's expected Markman decision
`– that schedule set final election of asserted claims and prior art, and opening expert reports for
`late September, at least three weeks after the expected Markman decision.
`
`The practice of having expert reports after the pleadings are settled and the issuance of
`claim construction rulings is particularly appropriate in these three cases. Plaintiff is asserting 21
`claims from six different patents, and has accused at least 8 distinct product lines across the three
`cases. The parties have vastly different claim construction positions on over 40 terms across the
`six patents. D.I. 236 (Joint Claim Construction Chart, Exhibit 2). Plaintiff specifically raised the
`issue of claim construction as a basis for opposing Activision’s Motion to Dismiss. D.I. 28
`(Plaintiff’s Answering Brief) at 18. Plaintiff has also steadfastly resisted the idea of limiting the
`length of expert reports, and has indicated at a meet and confer it would only consider limiting its
`expert reports to 5,000 pages in each of the three cases.
`
`Scheduling final elections of asserted claims and prior art, expert reports and dispositive
`motions after the pleadings are settled and after claim construction will streamline the case.
`Claim construction briefing will conclude in late November, and no hearing dates have been set.
`Thus, the parties are likely not to have final rulings on claim construction until early 2018.
`Under the current schedule, the parties will need to elect asserted claims and prior art and
`prepare expert reports before they have even completed claim construction briefing. They will
`have to complete all expert discovery and prepare Daubert and dispositive motions (due
`February 2, 2018) without claim construction rulings. Given the significance of claim
`construction, the parties would likely seek to amend or supplement their expert reports given the
`claim constructions. And certainly any summary judgment briefing or Daubert motion briefing
`already filed would need to be modified. It would be highly prejudicial to Defendants to force
`them to make a final election of prior art and prepare dispositive motions before the scope of the
`claims is determined. In contrast, Plaintiff provides no reason to prepare expert reports when the
`parties will likely seek to amend or supplement those reports after the claim construction ruling.
`Thus, waiting for claim construction to conclude and the pleadings to be closed before expert
`reports will lead to a more efficient and orderly resolution of disputes in these actions.
`
`

`

`Case 1:16-cv-00455-RGA Document 222 Filed 08/07/17 Page 3 of 4 PageID #: 17999
`
`The Honorable Richard G. Andrews
`August 7, 2017
`Page 3
`
`
`
`Expert reports, Daubert Motions, and motions for summary judgment will all be
`substantially less burdensome on both the parties and Court after claim construction. This is all
`the more so because at least 14 of the 21 Asserted Claims may be held invalid as indefinite or as
`directed to unpatentable subject matter. See Ex. C. The parties and Court will benefit from
`knowing the Court’s constructions and what claims have survived claim construction before the
`parties elect asserted claims and prior art, prepare expert reports and file Daubert and summary
`judgment motions.2
`
`On the other hand, proceeding with expert reports without claim constructions and before
`the claims and defenses are presented in the pleadings provides no guarantee that the schedule
`will not be moved later. Given Plaintiff's infringement contentions and responses to
`interrogatories, Defendants are concerned that Plaintiff's expert reports will be inadequate or
`identify brand new theories not previously disclosed in Plaintiff's infringement contentions or
`responses to interrogatories. Defendants have prevailed on multiple motions to compel
`regarding Plaintiff's explanation of how the Accused Products allegedly infringe. In response to
`the latest Motion, the Special Master explained that "if Plaintiff's expert reports set forth
`infringement contentions that had not been previously disclosed, it may be appropriate to
`reconsider Defendants' motion for sanctions and appropriate relief." Special Master Order No. 6.
`
`The current schedule leaves little time for the Special Master to thoroughly review
`Plaintiff’s expert reports before summary judgment papers are due. Defendants are justifiably
`concerned that Plaintiff will seek to add new theories in its expert reports. As noted, Plaintiff
`will likely object to page limits on expert reports and has indicated it may serve incredibly
`voluminous expert reports. With this large volume of expert reports, the Special Master will
`likely need to resolve disputes regarding whether Plaintiff has added new theories of
`infringement. Such resolution is not practical until after the claim construction rulings are
`issued.
`
`Finally, Plaintiff has not identified any prejudice from an extension of the schedule. The
`patents issued more than a decade ago and Plaintiff does not sell or manufacture any products
`and seeks only reasonable royalty damages. There can be no prejudice to it from a few months
`delay to ensure that the remainder of the case is prepared efficiently and correctly.
`
`Pursuant to Federal Rule of Civil Procedure 16(b)(4), Defendants, therefore, request that
`all currently pending scheduling order dates be reset. Defendants’ proposed schedule in Exhibit
`A anticipates that the Court would have ruled on all pending motions to dismiss and issued
`rulings on all claim construction issues by February 2018. Otherwise, the proposed schedule
`maintains the same amount of time between the various events.
`
`2 Defendants’ Motions to Dismiss also may significantly reduce the scope of the case.
`Defendants have moved to dismiss Plaintiff's claims against Sony products. About half of all
`accused products in this case are games on the Sony platform, and as explained in the motion to
`dismiss, Plaintiff lacks standing to sue on those products. Given the lack of standing, there
`should be no expert reports at all on the Sony products.
`
`

`

`Case 1:16-cv-00455-RGA Document 222 Filed 08/07/17 Page 4 of 4 PageID #: 18000
`
`The Honorable Richard G. Andrews
`August 7, 2017
`Page 4
`
`
`
`
`
`JBB:cjl
`Enclosure
`cc:
`Clerk of Court (Via Hand Delivery; w/enclosure)
`
`All Counsel of Record (Via Electronic Mail; w/enclosure)
`11229034
`
`Respectfully,
`
`/s/ Jack B. Blumenfeld
`
`Jack B. Blumenfeld (#1014)
`
`
`