`
`VELOCITY PATENT LLC,
`
`
`Plaintiff,
`
`v.
`
`
`MERCEDES-BENZ USA, LLC;
`MERCEDES-BENZ U.S.
`INTERNATIONAL, INC.
`
`
`Defendants.
`
`
`
`
`Civil Action No. 1:13-cv-08413
`
`
`Hon. Thomas M. Durkin
`
`
`
`
`
`Case: 1:13-cv-08413 Document #: 155 Filed: 03/15/17 Page 1 of 6 PageID #:4516
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`
`
`
`
`
`VELOCITY PATENT LLC,
`
`
`v.
`
`
`FCA US LLC
`
`
`
`
`
`
`
`
`
`
`
`
`Civil Action No. 1:13-cv-08419
`
`
`
`Hon. Thomas M. Durkin
`
`
`
`Plaintiff,
`
`
`Defendants.
`
`JOINT STATUS REPORT
`
`
`
`
`
`
`
`
`Case: 1:13-cv-08413 Document #: 155 Filed: 03/15/17 Page 2 of 6 PageID #:4517
`
`
`Pursuant to the Court’s Order of February 28, 2017, the parties submit the
`
`following joint status report in advance of the status hearing set for March 21, 2017.
`
`I.
`
`Nature of the Case
`
`Plaintiff Velocity Patent LLC (“Velocity”) instituted patent infringement actions
`
`asserting U.S. Patent No. 5,954,781 (“the ‘781 patent”) against defendants in five
`
`separate cases. Velocity reached settlement agreements in three of the cases. Two cases –
`
`against Defendant FCA US LLC (“FCA”) and against Defendants Mercedes-Benz USA,
`
`LLC and Mercedes-Benz U.S. International Inc. (together “Mercedes”) – are still active.
`
`Velocity seeks a finding of infringement of the ‘781 patent and an award of
`
`damages. Mercedes has filed counterclaims seeking a declaratory judgment of non-
`
`infringement of the ‘781 patent. This Court has subject matter jurisdiction pursuant to 28
`
`U.S.C. §§ 1331 and 1338(a). The attorneys-of-record for the remaining parties are the
`
`undersigned.
`
`II.
`
`Proceedings to Date and Discovery
`
`
`
`Discovery commenced in February 2014.1 The parties exchanged, among other
`
`things, initial disclosures and initial Infringement, Invalidity, Non-infringement, and
`
`Validity contentions. The cases were stayed by stipulation of the parties on September
`
`16, 2014, pending reexamination proceedings filed by Audi (a defendant in one of the
`
`three settled cases) for the ‘781 patent. The USPTO issued a reexamination certificate on
`
`July 7, 2015 confirming validity of the asserted claims and allowing new claims. After
`
`the reexamination ended, Velocity submits that it voluntarily served updated LPR 2.2
`
`
`1 Discovery was coordinated among the cases pursuant to Judge Darrah’s Memorandum
`Opinion and Order of April 24, 2014. E.g., Dkt No. 56 (Mercedes).
`
`1
`
`
`
`Case: 1:13-cv-08413 Document #: 155 Filed: 03/15/17 Page 3 of 6 PageID #:4518
`
`
`initial infringement contentions on Mercedes and FCA on October 2, 2015, addressing
`
`originally asserted claims and new claims granted during the reexamination.
`
`
`
`Defendants then asserted that the patent claims were not infringed or were
`
`indefinite at least based on the claim term “a fuel overinjection notification circuit issuing
`
`a notification that excessive fuel is being supplied to the engine.” To streamline the case,
`
`the parties agreed in 2015 to continue the stay of fact discovery and address claim
`
`construction and dispositive motions before proceeding with the remainder of the case.
`
`Claim construction briefs were filed, and Defendants filed a dispositive motion urging
`
`that the term “a fuel overinjection notification circuit issuing a notification that excessive
`
`fuel is being supplied to the engine” was indefinite or not infringed. E.g., Dkt No. 104-
`
`105 (Mercedes). Velocity cross-moved, urging that such term was infringed under any
`
`party’s construction. Dkt No. 111 (Mercedes); Dkt No. 88 (FCA).
`
`On September 21, 2016, the Court issued a Markman order and its rulings on
`
`dispositive motions. Dkt Nos. 142-144 (Mercedes); Dkt Nos. 113-116 (FCA). Each
`
`Defendant’s motion for summary judgment of non-infringement and indefiniteness was
`
`denied on all counts. Dkt Nos. 143-144 (Mercedes); Dkt Nos. 115-116 (FCA).
`
`Velocity’s cross-motion for summary judgment of infringement was also denied on all
`
`counts. Id.
`
`Schedule: There is currently no operative schedule for the pending cases. Fact
`
`discovery has not resumed since September 16, 2014. Defendants suggest that the Court
`
`set fact and expert discovery cut-off dates of August 28, 2017, and November 17, 2017,
`
`respectively. Velocity suggests fact and expert discovery cut-off dates of January 17,
`
`2018 and June 20, 2018, respectively.
`
`2
`
`
`
`Case: 1:13-cv-08413 Document #: 155 Filed: 03/15/17 Page 4 of 6 PageID #:4519
`
`
`Depositions: Velocity expects it will require: 50 hours of fact deposition
`
`testimony of defendants per case; at least 20 hours of expert deposition testimony per
`
`case, depending on the number of experts that the defendants use; and 20-30 hours of
`
`deposition testimony of third parties identified by the defendants that possess
`
`discoverable information. Defendants expect that each party will take a 30(b)(6)
`
`deposition of Velocity and any other owners and assignees of the ‘781 patent (current and
`
`former), and also depose the inventor and prosecuting attorney of the ‘781 patent.
`
`III.
`
`Pending Motions
`
`There are no pending motions in the case.
`
`IV.
`
`Trial
`
`Velocity demands a jury trial. No trial date or date for a final pretrial order has
`
`been set. Defendants propose a trial date as early as February 2018; Velocity proposes
`
`October 2018. Velocity anticipates each trial will last between 10 and 14 days.
`
`Defendants anticipate each trial will last between 3 and 5 days.
`
`V.
`
`Referrals and Settlement
`
`
`
`Discovery issues were previously referred to Magistrate Judge Michael T. Mason.
`
`The parties have not discussed consenting to having the magistrate judge conduct all
`
`further proceedings in the case. Velocity and Mercedes have agreed to mediate. Velocity
`
`prefers that Judge Durkin or, alternatively, Magistrate Judge Mason or another Magistrate
`
`Judge act as the mediator. Mercedes prefers a private mediator under the circumstances,
`
`as Mercedes believes that this would save resources. FCA submits that mediation will not
`
`be productive.
`
`
`
`3
`
`
`
`Case: 1:13-cv-08413 Document #: 155 Filed: 03/15/17 Page 5 of 6 PageID #:4520
`
`
`Dated: March 15, 2017
`
`
`/s/ James A. Shimota
`James A. Shimota
`
`James A. Shimota (IL Bar No. 6270603)
`Howard E. Levin (IL Bar No. 6286712)
`Aaron C. Taggart (IL Bar No. 6302068)
`HAYNES AND BOONE, LLP
`180 North LaSalle Street, Suite 2215
`Chicago, Illinois 60601
`Telephone: 312-216-1620
`jim.shimota@haynesboone.com
`howard.levin@haynesboone.com
`aaron.taggart@haynesboone.com
`
`Counsel for Plaintiff
`Velocity Patent LLC
`
`
`
`
`Respectfully submitted,
`
`
`/s/ Joseph J. Raffetto
`Joseph J. Raffetto
`
`Celine J. Crowson
`Raymond A. Kurz
`Joseph J. Raffetto
`HOGAN LOVELLS US LLP
`555 13th Street, Nw
`Washington, DC 20004
`Telephone: 202-637-5600
`celine.crowson@hoganlovells.com
`raymond.kurz@hoganlovells.com
`joseph.raffetto@hoganlovells.com
`
`Bradley Paul Nelson
`FISHER BROYLES LLP
`345 N. Canal St.
`Suite C202
`Chicago, IL 60606
`Telephone: 312-300-4005
`brad.nelson@fisherbroyles.com
`
`Counsel for Defendants
`Mercedes-Benz USA, LLC and
`Mercedes-Benz U.S. International, Inc.
`
`
`/s/ Jeffri A. Kaminski
`Jeffri A. Kaminski
`
`Frank C. Cimino, Jr.
`Jeffri A. Kaminski
`Leslie A. Lee
`VENABLE LLP
`575 7th Street NW
`Washington, DC 20004
`(202) 344-4569
`(202) 344-4048
`fccimino@venable.com
`jakaminski@venable.com
`
`P. Stephen Fardy
`Brian W. Bell
`
`4
`
`
`
`Case: 1:13-cv-08413 Document #: 155 Filed: 03/15/17 Page 6 of 6 PageID #:4521
`
`
`Jonna M. Reilly
`SWANSON, MARTIN & BELL, LLP
`330 North Wabash, Suite 3300
`Chicago, IL 60611
`(312) 321-9100
`sfardy@smbtrials.com
`bbell@smbtrials.com
`jreilly@smbtrials.com
`
`Counsel for Defendant
`FCA US LLC
`
`
`
`5
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`
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