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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`IN RE NEO WIRELESS, LLC
`PATENT LITIGATION
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`2:22-MD-03034-TGB
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`HON. TERRENCE G. BERG
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`OPINION AND ORDER ON
`FURTHER PRIOR ART AND
`CLAIM NARROWING
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`THIS MEMORANDUM OPINION
`AND ORDER RELATES TO ALL
`CASES
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`The individual cases involved in this MDL matter are for patent
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`infringement brought by Plaintiff Neo Wireless, LLC (“Neo” or
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`“Plaintiff”) against Defendants Ford Motor Company, American Honda
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`Motor Co., Inc., Honda Development & Manufacturing of America, LLC,
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`Volkswagen Group of America, Inc., Volkswagen Group Of America
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`Chattanooga Operations, LLC, Nissan North America, Inc., Nissan
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`Motor Acceptance Corporation a/k/a Nissan Motor Acceptance Company,
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`LLC, Toyota Motor Corporation, Toyota Motor North America, Inc.,
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`Toyota Motor Sales, U.S.A., Inc., Toyota Motor Engineering &
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`Manufacturing North America, Inc., Toyota Motor Credit Corporation,
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`General Motors Company, General Motors, LLC, Tesla, Inc., Mercedes-
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`Benz USA, LLC, and FCA US, LLC (collectively “Defendants”). In all
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`Page 1 of 4
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`Case 2:22-md-03034-TGB ECF No. 102, PageID.8170 Filed 12/09/22 Page 2 of 4
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`nine cases, Neo alleges Defendants infringe six asserted patents related
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`to LTE functionality. “LTE”, which stands for “Long Term Evolution”
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`refers to a technical standard for wireless data transmission.
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`The Court previously ordered the parties to meet and confer, and
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`propose a schedule by November 30, 2022 for further reducing the
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`asserted claims and asserted prior art. ECF No. 99 at PageID.8160. On
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`November 30, 2022, the Court received an email from the parties. See
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`Court Exhibit A. The email explained that the parties had been unable
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`to agree on a proposal, and included arguments about the parties’
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`positions.
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`As an
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`initial matter, the Court emphasizes that email
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`communication is not the proper means for resolving such disputes.
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`Moreover, it appears that there may be some gamesmanship in the
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`parties’ compliance with Local Rule 7.1(a). As explained in the Court’s
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`practice guidelines, the Court requires strict compliance with L.R. 7.1(a),
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`and may impose costs for failure to follow that rule. The Court also
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`expects that, when ordered to meet and confer, the parties will make all
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`reasonable efforts reach agreement, and will only seek the Court’s
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`guidance if a genuine impasse arises.
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`To ensure compliance of the parties and of the attorneys litigating
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`this matter with Local Rule 7.1(a), the Court ORDERS Plaintiff and
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`each Defendant to select one senior partner to lead and actively
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`participate in all future conferences. Each Lead Attorney will be required
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`Page 2 of 4
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`Case 2:22-md-03034-TGB ECF No. 102, PageID.8171 Filed 12/09/22 Page 3 of 4
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`to certify to the Court that he or she was actively involved in the
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`conference and that the conference met all the requirements of Local
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`Rule 7.1(a). To that end, the parties shall file with the Court a Joint
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`Notice indicating the Lead Attorney for each party by December 14, 2022.
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`Regarding the November 30, 2022 email, the Court has considered
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`the parties’ statements and positions. It appears to the Court that
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`Defendants have not attempted to narrow the prior art to a level
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`reciprocal to the reduction in asserted claims that Defendants requested
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`and that the Court previously ordered. The November 30, 2022 email
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`indicates that Defendants have currently charted 63 prior art references.
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`Yet Defendants propose in the email to be allowed to chart 108 prior art
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`references (Defendants other than Toyota & Nissan), or 36 charts
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`(Defendants Toyota & Nissan). It is unclear to the Court how this
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`amounts to any reduction in the prior art, and actually appears to be a
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`request to expand on the prior art references.
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`Accordingly, for the same legal reasons stated in its Order Granting
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`In Part and Denying In Part Defendants’ Motion to Reduce Number of
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`Asserted Claims (ECF No. 99), the Court ORDERS Defendants to limit
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`their total asserted prior art references and/or products to an average of
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`eight (8) per patent, for a total of not more than forty-eight (48) references
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`and/or products, on or before December 16, 2022. Defendants can
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`determine how the limit is distributed across the asserted claims.
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`The Court further ORDERS Plaintiff to reduce the number of
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`Page 3 of 4
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`Case 2:22-md-03034-TGB ECF No. 102, PageID.8172 Filed 12/09/22 Page 4 of 4
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`asserted claims to eighteen (18) two weeks after entry of the Markman
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`Order.
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`The Court further ORDERS Defendants to reduce their total
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`asserted prior art references and/or products to an average of four (4) per
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`patent, for a total of not more than twenty-four (24), two weeks after
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`Plaintiff reduces the number of asserted claims to 18.
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`To ensure there will be no undue prejudice to a party, the Court
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`will remain flexible if a party shows good cause for additional claims or
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`prior art references. See, e.g., Thought, Inc. v. Oracle Corp., No. 12-05601,
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`2013 WL 5587559 at *2 (N.D. Cal. Oct. 10, 2013) (“Even after requiring
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`parties to limit the number of claims at issue for claim construction or
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`trial, courts should allow patent holders to bring back in non-selected
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`claims upon a showing of ‘good cause’ that the non-selected claims
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`present unique issues of infringement or invalidity.”).
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`Finally, the due date for the Exchange Proposed Interpretations of
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`Disputed Claim Terms in the Scheduling Order (ECF No. 84 at
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`PageID.2581) is changed from December 15, 2022 to December 30, 2022.
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`IT IS SO ORDERED.
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`Dated: December 9, 2022
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`s/Terrence G. Berg
`TERRENCE G. BERG
`UNITED STATES DISTRICT JUDGE
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`Page 4 of 4
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