Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 1 of 19 PageID #: 7360
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`ROBOCAST, INC., a Delaware corporation
`
`
`Plaintiff,
`
`
`v.
`
`YOUTUBE, LLC, a Delaware limited liability
`company; and GOOGLE LLC, a Delaware
`limited liability company,
`
`
`Defendants.
`
`
`
`ROBOCAST, INC., a Delaware corporation
`
`
`Plaintiff and Counterclaim Defendant,
`
`
`v.
`
`NETFLIX, INC., a Delaware limited liability
`company
`
`
`Defendant and Counterclaim Plaintiff.
`
`C.A. No. 1:22-cv-00304-JLH
`
`JURY TRIAL DEMANDED
`
`C.A. No. 1:22-cv-00305-JLH
`
`JURY TRIAL DEMANDED
`
`
`OPENING BRIEF MOTION TO MODIFY JOINT SCHEDULING ORDER
`
`Stephen B. Brauerman (#4952)
`Ronald P. Golden, III (#6254)
`600 N. King Street, Suite 400
`Wilmington, DE 19801
`(302) 655-5000
`Fax: (302) 658-6395
`sbrauerman@bayardlaw.com
`rgolden@bayardlaw.com
`
`OF COUNSEL:
`
`Steven Rizzi (pro hac vice)
`MCKOOL SMITH, P.C.
`395 9th Avenue, 50th Floor
`New York, NY 10001-8603
`(212) 402-9400
`srizzi@McKoolSmith.com
`
`Ramy E. Hanna (DE Bar Id #: 5494)
`MCKOOL SMITH, P.C.
`600 Travis St., Suite 7000
`Houston, TX 77002
`(713) 485-7312
`rhanna@McKoolSmith.com
`
`
`
`
`
`
`
`
`

`

`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 2 of 19 PageID #: 7361
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`
`
`Marc N. Henschke (pro hac vice)
`Steven M. Coyle (pro hac vice)
`Andrew C. Ryan (pro hac vice)
`Nicholas A. Geiger (pro hac vice)
`Sara T. Colburn (pro hac vice)
`CANTOR COLBURN LLP
`20 Church Street, 22nd Floor
`Hartford, CT 06103
`Tel. (860) 286-2929
`mhenschke@cantorcolburn.com
`scoyle@cantorcolburn.com
`aryan@cantorcolburn.com
`ngeiger@cantorcolburn.com
`scolburn@cantorcolburn.com
`
`ATTORNEYS FOR PLAINTIFF
`ROBOCAST, INC.
`
`
`
`
`
`
`
`
`
`

`

`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 3 of 19 PageID #: 7362
`
`
`I.
`
`INTRODUCTION ...............................................................................................................1
`
`TABLE OF CONTENTS
`
`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS ..........................................................2
`
`A.
`
`B.
`
`Google Case Status ..................................................................................................6
`
`Netflix Case Status ...................................................................................................7
`
`III.
`
`LEGAL STANDARDS .......................................................................................................9
`
`IV.
`
`ARGUMENT .......................................................................................................................9
`
`A.
`
`Good Cause Exists for a Schedule Modification .....................................................9
`
`1.
`
`2.
`
`3.
`
`Robocast Has Diligently Prosecuted These Cases .......................................9
`
`The Markman Hearing is Not Yet Scheduled ............................................11
`
`Remaining Fact Discovery Cannot be Completed by April 11,
`2024............................................................................................................12
`
`4.
`
`The Cases Should Not be Decoupled.........................................................13
`
`V.
`
`CONCLUSION ..................................................................................................................13
`
`
`
`
`
`
`
`
`i
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`

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`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 4 of 19 PageID #: 7363
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Dow Chem. Canada Inc. v. HRD Corp.,
`287 F.R.D. 268 (D. Del. 2012) ..................................................................................................9
`
`Gonzalez v. Comcast Corp.,
`No. Civ.A. 03-445-KAJ, 2004 WL 2009366 (D. Del. Aug. 25, 2004)......................................9
`
`Google Inc. et al v. Robocast, Inc.,
`IPR2023-00590, IPR2023-00591, IPR2023-00592, IPR2023-00593, IPR2023-00594 ............3
`
`McDerby v. Daniels,
`C.A. No. 08-882-GMS, 2010 WL 2403033 (D. Del. June 16, 2010) ........................................9
`
`Meda Pharm. Inc. v. Teva Pharm. USA, Inc.,
`C.A. No. 15-785-LPS, 2016 WL 6693113 (D. Del. Nov. 14, 2016) .........................................9
`
`Netflix, Inc. v. Robocast, Inc.,
`IPR 2023-00081 .........................................................................................................................3
`
`Netflix, Inc. v. Robocast, Inc.,
`IPR2023-00081, Paper 1 (PTAB Oct. 24, 2023) .......................................................................3
`
`Netflix, Inc. v Robocast, Inc.,
`IPR2023-00182, Paper 1 (PTAB Nov. 18, 2022) ......................................................................3
`
`Netflix, Inc. v. Robocast, Inc.,
`IPR2023-00182, Paper 14 (PTAB Jun. 9, 2023) .......................................................................3
`
`Robocast, Inc. v. Netflix, Inc.,
`D.I. No. 38 (D. Del. Jan. 26, 2023) ............................................................................................3
`
`TaKaDu Ltd. v. Innovyze LLC,
`Case No. 21-cv-00291-RGA-SRF, D.I. 143 (D. Del. Jun. 12, 2023) ........................................6
`
`TwinStrand BioSciences, Inc. v. Guardant Health, Inc.,
`C.A. No. 21-1126, D.I. 281 (D. Del. Apr. 18, 2023) .................................................................6
`
`Unified Patents, LLC v. Robocast, Inc.,
`IPR2022-01125, Paper 1 (PTAB Jun. 20, 2022) .......................................................................2
`
`Unified Patents, LLC v. Robocast, Inc.,
`IPR2022-01125, Paper 13 (PTAB Jan. 20, 2023) ......................................................................3
`
`
`
`ii
`
`

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`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 5 of 19 PageID #: 7364
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`OTHER AUTHORITIES
`
`Delaware Default Standard Rules 4(a) and 4(c) ..............................................................................9
`
`Delaware Default Standard Rule 16(b)(4) .......................................................................................9
`
`Delaware Default Standard Rule 30(b)(6) .....................................................................................12
`
`
`
`iii
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`

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`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 6 of 19 PageID #: 7365
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`I.
`
`INTRODUCTION
`
`Plaintiff Robocast, Inc. (“Robocast”) respectfully requests that the Court amend its Joint
`
`Scheduling Order in these two cases to provide for a minimum of a 3.5-month extension of all
`
`remaining deadlines.1 The requested extension is necessary to allow the cases to proceed in the
`
`most efficient manner for the Court and the parties given the impending April 11, 2024, date for
`
`close of fact discovery because: i) the Markman hearing, which had been scheduled for January
`
`17, 2024, was taken off calendar and not yet rescheduled; ii) substantial fact discovery remains in
`
`both cases, including supplemental document and source code productions and all of an estimated
`
`20 or more depositions; and iii) outstanding discovery disputes remain that the parties are
`
`continuing to try and resolve.
`
`Defendants YouTube, LLC and Google LLC (collectively “Google”) have agreed to an
`
`extension of 3.5 months.2 Due to numerous discovery issues Robocast raised in its case against
`
`Google (the “Google Case”), including issues regarding Google’s need to supplement its
`
`productions regarding the accused functionalities and damages, this extension is clearly necessary.
`
`While Robocast believes that a 6-month extension is more realistically required, the 3.5 months
`
`agreement was the result of a compromise reached in an effort to avoid motion practice.
`
`However, Netflix is opposed to a schedule extension, even though it has not and cannot
`
`argue there is any prejudice to Netflix given that the Asserted Patents are expired. In contrast,
`
`Robocast would be substantially prejudiced if the Netflix case schedule were not similarly
`
`extended by, for example, having to produce its witnesses twice for deposition, and separately
`
`
`1 See Google Case, D.I. 53; Netflix Case, D.I. 46.
`2 The Robocast/Google compromise agreement was made in the context of those parties working
`cooperatively together over the past several months to address certain discovery disputes.
`However, other discovery disputes still need to be resolved, and it is clear that the additional time
`is necessary to ensure adequate time during the fact discovery period to do so.
`
`
`
`1
`
`

`

`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 7 of 19 PageID #: 7366
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`brief and argue the many common defenses and issues. For similar reasons, two different schedules
`
`would also increase the burden on the Court for no good reason. Indeed, the Court was mindful of
`
`the inefficiencies associated with two separate schedules and specifically required the parties to
`
`“coordinate” discovery. (D.I. 46 at 2.)
`
`Robocast therefore proposes at least a 3.5-month extension of all remaining deadlines in
`
`both cases. A chart listing the extended deadlines is attached hereto as Exhibit A to the Moore
`
`Declaration and reflects the agreement reached with Google. As discussed below, more than
`
`enough good cause exists for entry of an Amended Scheduling Order.3
`
`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`Robocast filed both of the instant cases on March 7, 2022, asserting that Google and Netflix
`
`infringe U.S. Patent Nos. 7,155,451, 8,606,819, and 8,965,932 (the “Asserted Patents”) through
`
`their provision of certain automated playlist functionalities. (Google Case, D.I. 1; Netflix Case,
`
`D.I. 1). Unlike Defendants, Robocast is a small company with limited resources. And there is
`
`substantial overlap in these cases on all issues. Thus, at the outset of these cases, Judge Andrews
`
`rejected Defendants’ attempt to decouple the cases, and entered a joint scheduling order that
`
`requires coordination to ensure discovery proceeds in an efficient manner.
`
`Soon after Robocast commenced the Delaware Action, Netflix sought to invalidate the
`
`three Asserted Patents in the PTAB. On June 30, 2022, Unified Patents LLC, an organization
`
`closely related to Netflix, petitioned the U.S. Patent Trial and Appeal Board (“PTAB”) for inter
`
`partes review of the ’932 patent on four separate grounds. Unified Patents, LLC v. Robocast, Inc.,
`
`IPR2022-01125, Paper 1 (PTAB Jun. 20, 2022). On October 24, 2022, Netflix petitioned for inter
`
`
`3 Robocast notes that its requested extension is without prejudice to seek a further extension,
`should, for example, the lingering disputes with Defendants take significant additional time or
`Court intervention to resolve.
`
`
`
`2
`
`

`

`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 8 of 19 PageID #: 7367
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`partes review of the ’451 patent on six grounds. Netflix, Inc. v. Robocast, Inc., IPR2023-00081,
`
`Paper 1 (PTAB Oct. 24, 2023); id, Paper 11 (PTAB Jan. 23, 2023) (corrected petition). On
`
`November 11, 2022, Netflix petitioned for inter partes review of the ’819 patent on four grounds.
`
`Netflix, Inc. v Robocast, Inc., IPR2023-00182, Paper 1 (PTAB Nov. 18, 2022). Netflix then
`
`unsuccessfully moved to stay the Delaware Action while its IPR petitions were pending institution.
`
`Robocast, Inc. v. Netflix, Inc., Dkt. No. 38 (D. Del. Jan. 26, 2023). Nevertheless, in order to ensure
`
`these cases are litigated most efficiently, Robocast indicated that it would stipulate to a stay if any
`
`of the IPRs were granted. (D.I. 34 at 1.)
`
`The PTAB denied all of the Netflix IPR petitions on the merits, finding that Unified Patents
`
`and Netflix failed to demonstrate a reasonable likelihood that they would prevail in establishing
`
`that even a single challenged patent claim was invalid.4
`
`Google delayed filing its IPRs until right before the one-year statutory deadline, filing a
`
`total of five IPRS in February, 2023. Google, LLC f/k/a Google Inc. et al v. Robocast, Inc.,
`
`IPR2023-00590, IPR2023-00591, IPR2023-00592, IPR2023-00593, IPR2023-00594. All of
`
`Google’s IPRs met the same fate as the Netflix IPRs – denial of institution on the merits. But
`
`because of Google’s delay, the last decision denying institution was not issued until September 18,
`
`2023.
`
`The Court’s Joint Scheduling Order (“JSO”), entered on February 21, 2023, sets identical
`
`deadlines for both cases, save for the trial dates.5 The JSO provides that document production in
`
`
`4 See Unified Patents, LLC v. Robocast, Inc., IPR2022-01125, Paper 13 (PTAB Jan. 20, 2023)
`(denying institution); Netflix, Inc. v. Robocast, Inc., IPR 2023-00081, Paper 19 (PTAB May 11,
`2023) (denying institution); id., Paper 21 (denying rehearing); Netflix, Inc. v. Robocast, Inc.,
`IPR2023-00182, Paper 14 (PTAB Jun. 9, 2023) (denying institution).
`5 The Google Case is set for trial on February 10, 2025, and the Netflix Case is set for trial on
`March 3, 2025. Id.
`
`
`
`
`3
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`

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`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 9 of 19 PageID #: 7368
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`both cases “shall be substantially complete by November 17, 2023,” and that fact discovery “shall
`
`be initiated so that it will be completed on or before April 11, 2024.” Id. (emphases in original).
`
`The JSO also requires the parties to cooperate across both cases in discovery. For instance, the
`
`JSO mandates that “[Google and Netflix] shall coordinate with each other to ensure depositions of
`
`Plaintiff and third parties are conducted in an efficient manner such that, for example, depositions
`
`of the same witness are scheduled on the same day or on consecutive days or on mutually agreeable
`
`days to the parties and the witness.” Id. Accordingly, the JSO was designed to promote efficiency
`
`across the cases and conserve party and Court resources.
`
`The JSO further provides for joint claim construction proceedings in the two cases. The
`
`parties were required to submit combined claim construction briefs, and the Court set “a single
`
`claim construction hearing for both cases” to occur on January 17, 2024 – months before the close
`
`of fact discovery. Id. However, on January 2, 2024, the Court cancelled the Markman hearing and
`
`stated that it would be “rescheduled for a date to be determined,” but the hearing has not yet been
`
`rescheduled. (See Google Case, D.I. 126; Netflix Case, D.I. 167.) Consistent with Judge Andrews’
`
`preferences and form scheduling order, the discovery deadline and other pretrial deadlines are
`
`designed to allow ample time after Markman to conduct depositions and other remaining discovery
`
`following the Court’s construction of the disputed claim terms.
`
`The overlap between the two cases is substantial. The same three patents, and mostly the
`
`same claims, are asserted in both cases.6 Similar functionality (automated video playlists) is
`
`accused in both cases. The Defendants have proposed identical claim constructions for the
`
`
`6 Robocast has provisionally reduced its set of asserted claims in the Netflix case from 40 to 20 in
`accordance with the February 26, 2024, current deadline given Netflix’s refusal to agree to extend
`this deadline. All of the 20 currently identified Netflix-asserted claims are also asserted against
`Google.
`
`
`
`4
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`

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`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 10 of 19 PageID #: 7369
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`common set of disputed claim terms, even though the JSO allowed for the possibility of separate
`
`briefing if there was divergence. (JSO at 9-10.) There is overlap in Defendants’ invalidity defenses,
`
`and both Defendants have asserted the same grounds for their inequitable conduct and
`
`obviousness-type double-patenting defenses. Indeed, with respect to the latter, Netflix adopted in
`
`full Google’s motion to dismiss the ‘451 patent on this basis. (D.I. 157.) Thus, although not
`
`formally consolidated, there are more issues common to the cases than not.
`
`Robocast first initiated discussions with Google about a schedule extension on January 26,
`
`2024 in the hopes of reaching an agreement that could then be similarly proposed to Netflix.
`
`Robocast initially proposed a six-month extension, which Robocast continues to believe is
`
`appropriate, particularly given that some six weeks have now elapsed and there is still no
`
`resolution. (E.g., Moore Decl. Ex. E (1/31/2024 Letter from W. Ellerman to J. Jaffe).) After much
`
`back-and-forth, Google agreed to a 3.5 month extension, but conditioned its agreement on
`
`resolution of certain discovery disputes raised by Robocast, most significantly involving Google’s
`
`failure to provide discovery consistent with the full scope of the accused products,7 including
`
`production of financial and other damages related documents, and interrogatory responses. The
`
`parties appear to have just recently agreed to an approach for handling this particular dispute
`
`without the need for Court intervention, but it has already taken over three months from the time
`
`Robocast first raised the discovery issues and, to date, Google has yet to provide any of its
`
`supplemental production. There is no reason for the Court to defer revising the schedule in the
`
`JSO, which is necessary regardless given that the November 17, 2023 deadline for substantial
`
`
`7 Robocast contends that Google has, without notice to Robocast, unilaterally limited the scope of
`accused products, and similarly limited its damages related document production, including its
`financial information.
`
`
`
`5
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`

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`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 11 of 19 PageID #: 7370
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`completion of document production was nearly four months ago, yet numerous documents and
`
`information remain to be produced.
`
`Robocast proposed the same schedule modification to Netflix on February 12, 2024. On
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`February 14, 2024, Robocast held a meet and confer with both Google and Netflix to discuss the
`
`need for a schedule extension in light of issues in the Google Case, as well as issues common to
`
`both cases. At that conference, Netflix indicated that it may not oppose a “short” extension of the
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`combined schedule (except that it would oppose any extension of Robocast’s deadline to serve
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`Final Infringement Contentions). However, Netflix refused to make any concrete proposals about
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`the length of any extension. Since then, Robocast has continued to work with Google to reach a
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`final agreement, and the parties have exchanged emails concerning the logistics of presenting the
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`issue to the Court. On February 28, 2024, Netflix proposed that all three parties submit a joint
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`letter to the Court, and included a draft with its position, opposing any schedule modification. To
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`move the process forward, Robocast accepted this proposal, and added its position to a draft
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`circulated to both Defendants on March 4, 2024. But on March 8, Defendants inexplicably
`
`changed course, and took the position that the parties should simply request a status conference.
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`While Robocast is amenable to a status conference, Robocast is compelled to make this written
`
`submission to preserve the record and provide the Court at least some of the relevant factual
`
`background prior to such conference. See, e.g., TaKaDu Ltd. v. Innovyze LLC, Case No. 21-cv-
`
`00291-RGA-SRF, D.I. 143 (D. Del. Jun. 12, 2023) (holding a teleconference to resolve a discovery
`
`dispute is not the appropriate means to request additional time); TwinStrand BioSciences, Inc. v.
`
`Guardant Health, Inc., C.A. No. 21-1126, D.I. 281 (D. Del. Apr. 18, 2023).
`
`A.
`
`Google Case Status
`
`Google withheld the majority of its document productions in the case until the last possible
`
`moment or beyond, apparently waiting to see whether any of its IPRs would get instituted. Thus,
`
`
`
`6
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`

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`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 12 of 19 PageID #: 7371
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`62% of Google’s productions were made on or after November 10, 2023. Similarly, Google
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`produced nearly 3,000 additional files of source code after the substantial completion deadline of
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`November 17, 2023 established in the JSO.
`
`Robocast and Google have agreed in principle on the need for a schedule extension as
`
`discussed above. Moreover, the Markman hearing has not been held (or even scheduled) in these
`
`cases and significant discovery needs to be accomplished that must be coordinated among all three
`
`parties (and numerous third-parties) in the one-month remaining before the current close of
`
`discovery. Neither side has yet noticed any party depositions. In addition, Google has noticed 5
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`third-party depositions, but none has been taken, and to Robocast’s knowledge, none has been
`
`scheduled or coordinated with Netflix. Equally important are the outstanding discovery disputes
`
`the parties are working on relating to the scope of accused products, the deficiencies in Google’s
`
`document production and written discovery.8 Such discovery needs to be accomplished before
`
`Robocast can prepare its Final Infringement Contentions and before the parties can proceed with
`
`depositions. Robocast thus believes that a 6-month extension of all remaining deadlines is
`
`realistically required. However, Robocast has compromised with Google and agreed to a 3.5 month
`
`schedule extension to allow the parties to continue their efforts to amicably resolve their disputes
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`and expediently complete discovery.
`
`B.
`
`Netflix Case Status
`
`Netflix’s strategy all along has been to “run out the clock” on discovery, given that its
`
`infringement of the asserted patents is clear and all of its IPR petitions against the patents were
`
`
`8 Although Robocast has yet to move to compel document productions by Google consistent with
`the proper scope of accused products, and responsive to many damages related RFPs, Robocast
`has only waited to allow negotiations with Google to continue without burdening the Court. While
`Robocast will continue to negotiate with Google, Robocast is prepared to offer a showing of the
`deficiencies in Google’s production or file a motion to compel should the Court feel such motion
`is necessary to support Robocast’s requested extension.
`
`
`
`7
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`

`

`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 13 of 19 PageID #: 7372
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`denied institution. For example, although Netflix’s core technical documents were due on April
`
`11, 2023 (D.I. 65), and Robocast served requests for production on June 5, 2023, by August of
`
`2023, Netflix had produced only 12 “core technical documents.” And despite the Court’s
`
`admonition at the August 29, 2023 discovery teleconference that the parties should not “hold
`
`everything until the [November 17, 2023] substantial completion deadline,” (Moore Decl. Ex. B,
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`8/29/23 Tr. at 51:3-4), Netflix essentially did exactly that—it did not produce the bulk of its non-
`
`prior art, non-public documents until shortly before and after the November 17 deadline. Netflix’s
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`delays prejudiced Robocast’s ability to prepare its Final Infringement Contentions and to prepare
`
`for depositions within the remaining timeline. Nevertheless, Robocast served its Final
`
`Infringement Contentions on the current deadline of February 26, 2024 (reserving all its rights),
`
`given Netflix’s refusal to cooperate on extending that deadline.9
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`At the same time, Netflix has noticed 14 depositions of Robocast, all its employees, patent
`
`prosecution counsel, and various third-party authors of purported prior art references, none of
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`which have been scheduled. Moreover, in so doing Netflix has flouted its obligation to coordinate
`
`with Google, which has yet to serve a single deposition notice on Robocast, even though all of the
`
`Netflix-noticed depositions are likely going to be noticed by Google and therefore subject to the
`
`“coordination” requirement of the JSO. (D.I. 178-179.) Indeed, Robocast repeatedly implored
`
`Netflix to abide by the JSO’s coordination requirement. But Netflix has continued to ignore
`
`Robocast’s pleas. Regardless, it is simply not practical to schedule all of these depositions in the
`
`next month, and before a Markman hearing has occurred. In addition, Netflix (but not Google) has
`
`
`9 Because Netflix refused to extend this deadline, the proposed schedule agreed to by Robocast
`and Google only extends the deadlines for Final Infringement Contentions and Final Invalidity
`Contentions in the Google Case. Moore Decl. Ex. A. Those deadlines will not change in the Netflix
`Case.
`
`
`
`
`8
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`

`

`Case 1:22-cv-00304-JLH Document 140 Filed 03/12/24 Page 14 of 19 PageID #: 7373
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`served an improper subpoena on Robocast’s lead trial counsel, Steven Rizzi, which necessitated
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`the filing of a motion to quash in the United States District Court for the Southern District of New
`
`York last week. (See D.I. 201.)
`
`III. LEGAL STANDARDS
`
`Federal courts have broad discretion in managing discovery. Dow Chem. Canada Inc. v.
`
`HRD Corp., 287 F.R.D. 268, 270 (D. Del. 2012). Requests to amend scheduling order deadlines
`
`are governed by Rule 16(b)(4), which provides that “[a] schedule may be modified only for good
`
`cause and with the judge’s consent.” FED. R. CIV. P. 16(b)(4). “Good cause is present when the
`
`schedule cannot be met despite the moving party’s diligence.” Meda Pharm. Inc. v. Teva Pharm.
`
`USA, Inc., C.A. No. 15-785-LPS, 2016 WL 6693113, at *1 (D. Del. Nov. 14, 2016). To
`
`demonstrate the good cause necessary to allow for modification of a scheduling order, the moving
`
`party must demonstrate that, despite its own diligent efforts, scheduling deadlines cannot be met.
`
`See McDerby v. Daniels, C.A. No. 08-882-GMS, 2010 WL 2403033, at *6 (D. Del. June 16, 2010);
`
`Gonzalez v. Comcast Corp., No. Civ.A. 03-445-KAJ, 2004 WL 2009366, at *1 (D. Del. Aug. 25,
`
`2004)
`
`IV. ARGUMENT
`
`A.
`
`Good Cause Exists for a Schedule Modification
`
`1.
`
`Robocast Has Diligently Prosecuted These Cases
`
`As an initial matter, there is no serious dispute that Robocast has diligently prosecuted both
`
`cases. It has complied with all of Court-set deadlines in the JSO, including with respect to its initial
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`disclosures under Rules 4(a) and 4(c) of the Delaware Default Standard, service of initial and (for
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`Netflix) final infringement contentions. Robocast has also diligently pursued discovery from the
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`Defendants, and responded to their discovery requests, producing some 1.1 million documents in
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`this case prior to the deadline for substantial completion of document discovery. And while Netflix
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`has chastised Robocast for not immediately serving all of its discovery requests at the first
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`available date, that hardly constitutes lack of diligence, particularly since the last of the IPRs was
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`not denied institution until September 18, 2023, and Robocast made it clear that it would agree to
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`a stay if IPRs were instituted, something Netflix itself sought.
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`On the other hand, Netflix has deliberately delayed discovery. By the end of August 2023,
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`aside from its production of prior art documents, public news articles, and its own publicly-
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`available SEC filings, Netflix had produced 52 documents, only 12 of which were purported “core
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`technical documents” pertaining to the operation of the accused features, and the remainder of
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`which were patent licenses. (See Moore Decl., ¶¶ 4-8.) At an August 29, 2023 discovery
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`conference in both cases, the Court explicitly instructed the parties not “to hold everything until
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`the [November 17, 2023] substantial completion deadline.” (Moore Decl. Ex. B, 8/29/23 Tr. at
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`51:3-4.) However, that is essentially what Netflix did—although Netflix produced some additional
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`documents at the very end of September 2023, it did not begin producing the bulk of its non-prior
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`art, non-public documents until October 31, 2023 (approximately two weeks before the deadline)
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`when it produced 2,765 documents. (Moore Decl., ¶¶ 9-11.) Three days before the deadline,
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`Netflix produced 908 documents, then it produced 1,613 documents on the deadline, and it has
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`produced 1,601 documents since the deadline. (Id., ¶¶ 13-14.) Thus, Netflix waited until the last
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`minute to produce the vast majority of its documents, and its document productions are continuing.
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`Indeed, as Robocast previously explained, Netflix granted itself a stay by doing little to collect
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`documents prior to the end of September, 2023 (after the last denied IPR). (D.I. 129 at 2.) This
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`has delayed Robocast’s ability to prepare for depositions and complete discovery within the
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`remaining timeline.
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`Similarly, Google had always assured Robocast that it would satisfy its discovery
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`obligations by the November 17, 2023 deadline for substantial completion of document
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`production. Waiting eagerly for that deadline, Robocast acted expediently to review Google’s
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`November 17 production and accompanying correspondence and notified Google of the
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`deficiencies in the productions starting on December 5, 2023. (E.g., Moore Decl. Ex. F (12/5/2023
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`Letter S. Moore to J. Jaffe).) Those deficiencies included the critical issues relating to Google’s
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`failure to produce information consistent with the full scope of accused products, financial
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`information and documents relating to damages. (See id.; Moore Decl. Ex. G (1/12/2024 email
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`W. Ellerman to G. Kaufman).) Google and Robocast have been negotiating these issues since then
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`and hope the extension will allow them to resolve their disputes without motion practice. (See e.g.,
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`Moore Decl. Exs. E, G-Y.)
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`2.
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`The Markman Hearing is Not Yet Scheduled
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`The uncertainty concerning the timing of the Court’s Markman ruling is reason enough to
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`grant the requested extension. If Markman had been held when it was originally scheduled, the
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`Court would likely have entered its claim construction order by now, or at least have provided the
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`parties with guidance on the Court’s constructions, especially given that Judge Andrews had
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`previously construed a number of the terms at issue in prior litigation involving one of the same
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`patents that is asserted here. Now, however, entry of a claim construction order prior to the April
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`11 fact discovery cutoff is no longer possible, and if the parties rush to complete discovery in the
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`case’s current posture, it increases the likelihood of disputes arising from the Court’s constructions,
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`such as the potential need for more discovery, supplemental expert reports, and further
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`amendments to infringement and invalidity contentions.
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`And since no Markman hearing has been held yet, it would make little sense to blindly
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`conduct depositions of prior art witnesses without clarity on what the Court’s claim constructions
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`will be. Additionally, Robocast should not be forced to take depositions of Netflix’s technical
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`witnesses regarding infringement of the asserted patents without having the benefit of the Court’s
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`claim constructions (in addition to the fact that Netflix is continuing to produce documents), but it
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`would be required to do so under the current schedule.
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`3.
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`Remaining Fact Discovery Cannot be Completed by April 11, 2024
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`Under the current schedule, it is impossible for the parties to complete all remaining
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`discovery before the cutoff, which is in approximately one month. For instance, Netflix recently
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`noticed eight third-party depositions containing a total of 174 document requests, all of which
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`pertain to asserted prior art or prosecution of the patents-in-suit, none of those depositions have
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`been scheduled, and all of them are likely going to be noticed by Google and therefore subject to
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`the coordination requirement of the JSO. (D.I. 178-185).
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`Moreover, on February 15, and March 5, 2024, Netflix served deposition notices for four
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`of Robocast’s party witnesses, and on February 16, 2023, Netflix served a Rule 30(b)(6) deposition
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`notice on Robocast containing 102 topics of examination. Those depositions have not yet been
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`scheduled and, like the individual depositions, will require coordination with Google. Despite
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`sharing the same Delaware counsel, such coordination has been entirely sidestepped by Netflix.
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`Because the JSO specifically requires the parties to coordinate with each other to ensure that
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`Robocast’s depositions and any third-party depositions are conducted on the same or consecutive
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`days (and thus forbids Robocast’s witnesses from having to endure multiple depositions at
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`different times across both cases), all parties will need to cooperate to schedule these depositions.
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`This is unreal