Case 2:22-md-03034-TGB ECF No. 102-1, PageID.8173 Filed 12/09/22 Page 1 of 6
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`Court Exhibit A
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`Case 2:22-md-03034-TGB ECF No. 102-1, PageID.8174 Filed 12/09/22 Page 2 of 6
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`Chris Stewart <cstewart@caldwellcc.com>
`Wednesday, November 30, 2022 11:59 PM
`MIEDdb_Efile_Berg; Amanda Chubb
`dla-toyota-neowireless@us.dlapiper.com; DL_Nissan-Neo@jenner.com; VW-
`Neo@sternekessler.com; fordneowireless.lwteam@lw.com; SERVICETeslaNeo@fr.com;
`SERVICEGMNeo@fr.com; Service-Honda/Neo@fr.com; FCA-Neo@Venable.com;
`MercedesNeoWireless@hoganlovells.com; neowireless@caldwellcc.com;
`quadrozzi@youngpc.com
`RE: In re Neo Wireless, LLC Patent Litig., Case No. 2:22-md-03034-TGB (E.D. Mich.)
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`CAUTION - EXTERNAL:
`
`Your Honor,
`
`I write on behalf of all parties (with the exception of Toyota and Nissan who would prefer to separately confer
`with Neo further) pursuant to your Order (Dkt. 99) requiring us to “propose a schedule by November 30, 2022
`for further reducing the asserted claims and asserted prior art….” The parties have conferred, and were able to
`considerably narrow their disputes. For example, the parties have agreed that, for a second round of
`narrowing, Neo shall further reduce its asserted claims by two weeks after a Markman Order; and that
`Defendants shall further reduce their prior art references by two weeks after that. The parties have also agreed
`to table certain peripheral disputes (over the use of “background art” or the proper basis for modifying prior art
`elections in the future) since they are not yet fully ripe.
`
`Both sides have also compromised considerably on their initial proposals regarding the timing and the volume
`of the forthcoming reductions in prior art and claims in an attempt to reach agreement. However, a dispute still
`remains, and the parties’ positions are set forth below. Given the short timeframe before Defendants’ initial
`narrowing, Neo requests a follow-up video conference with the Court as soon as possible, or leave to file a
`short, expedited motion requesting its proposed narrowing framework.
`
`Neo’s Position: Given that Neo has significantly reduced its case from 65 claims to 36 specific claims, Neo
`initially proposed that Defendants should similarly cull from their 63 invalidity charts and select 36 specific prior
`art references on December 5th. After conferring, Neo proposed as a compromise that, at minimum,
`Defendants should reduce their prior art references to 45 total references—consistent with the 5:4 ratio of prior
`art to patent claims that is often used in Courts around the country—by December 12th. The model orders from
`the Eastern District of Texas (where 3 of the 9 MDL cases were filed) and the Federal Circuit Advisory Council
`both allow two weeks between reduction of claims and reduction in prior art, and use this 5:4 ratio (requiring
`parties to initially narrow to 32 claims and 40 prior art references). See Dkt. 97 at 10. Moreover, Defendants’
`own proposal in August (later withdrawn) followed this same ratio. See Dkt. 97-2 (Ex. A) at 17 (Defendants
`proposing a reduction to 20 total claims and 25 total prior art references). Consistent with all these models,
`Neo requests the Court order Defendants to make an initial reduction on December 12th to 45 total prior art
`references identified from their invalidity contentions charts—that is, five fourths of Neo’s 36 claims—so that
`the parties can effectively evaluate the presence or absence of disputes for the upcoming claim construction
`process. Defendants should not be heard to argue that this case warrants “expanding the limits on asserted
`claims or prior art references,” as allowed by the models, when they themselves sought this narrowing process
`in the first place (and even sought more aggressive narrowing than called for in the models), over Neo’s
`objection.
`
`Defendants’ proposal, based on a strained reading of Local Rules from the Northern District of Illinois (where
`no case in this MDL was filed), that they be allowed to retain up to 108 references—45 more than they have
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`Case 2:22-md-03034-TGB ECF No. 102-1, PageID.8175 Filed 12/09/22 Page 3 of 6
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`even fully charted—allows far too many references for the parties to effectively evaluate for claim construction.
`This is all the more impracticable given Defendants’ proposal to delay their narrowing until December 23rd—
`right before the holidays, leaving only two weeks in the New Year before the parties have to finalize their
`Markman positions. Even Toyota’s and Nissan’s proposal—that they need only limit themselves to 36 charts
`from their invalidity contentions—potentially allows them many multiples of 45 total prior art references, since
`each of the 63 claim charts from Defendants’ invalidity contention include a primary reference accompanied by
`several additional “secondary references.” Indeed, because Defendants’ 63 charts often cross-reference one
`another, Defendants could likely elect 36 “charts” without actually dropping a single primary prior art
`reference—resulting in little reduction at all in the burden on the parties for claim construction. For these
`reasons, Neo requests the Court limit Defendants to 45 references (which they can still combine in various
`ways consistent with their charts), rather than 108 references/36 charts (which both amount to no narrowing at
`all).
`
`With respect to the second round of narrowing after a Markman Order, Neo’s proposal is again consistent with
`the EDTX Model order: that Neo reduce to 18 claims (half the previous reduction), and Defendants
`commensurately reduce to 23 prior art grounds (where, at this stage, each obviousness combination or
`anticipation reference counts as a distinct ground) from among their previous 45 elected prior art references.
`The caveat specifying grounds rather than references is important because, at that late stage of the
`proceedings, Defendants should no longer be able to obscure the specific combinations they intend to pursue,
`especially given the millions of potential combinations Defendants’ 36-reference proposal would allow.
`
`Finally, Defendants’ suggestion below that Neo has “abandoned the meet and confer process” is confounding.
`Neo made its opening proposal to Defendants on November 18th—the day the Court issued its ruling on
`Defendants’ motion—and Defendants chose to wait until just yesterday to provide a response. Toyota and
`Nissan only provided their alternative proposal at 10:30pm ET tonight. Neo has made every effort to confer in
`the 36 hours Defendants allowed for it, but given this track record, and given Defendants’ continued insistence
`on retaining many more prior art references than is justified by any relevant model, Neo cannot wait until
`December 7th to possibly still have to bring an issue to the Court when Neo is requesting that Defendants
`narrow their case five days later on December 12th. Neo is simply abiding by the Court’s express deadline so
`the Court has ample time to adjudicate the dispute.
`
`Defendants’ (Other Than Toyota & Nissan) Position:
`Despite recognizing the parties are making progress in meeting and conferring on these issues, Plaintiff Neo
`has abandoned the meet and confer process and is seeking judicial intervention, despite the Court’s
`admonition during the November 28 status conference that the parties should make their best efforts to resolve
`these disputes on their own. Given the parties’ progress to date, Defendants respectfully request an order
`instructing the parties to continue to meet and confer and to provide a status update by December 7.
`
`
`Defendants submit that, if Neo is willing to engage, a mutually agreeable solution may be possible. To date,
`Defendants have made a number of different proposals to try to resolve these potential disputes from multiple
`different angles. So far, Neo has rejected all of them. Defendants’ most recent proposal—to limit their initial
`selection of invalidity charts from their currently-served 63 charts—was Defendants’ latest attempt to present a
`creative solution to address Neo’s stated concerns.
`
`But as Neo has rejected that proposal as well, Defendants revert to their original proposal whereby they will
`limit their invalidity case based on a proportional number of prior art references per patent. Accordingly, to the
`extent the Court is inclined to consider the merits of the remaining disputes, Defendants request that the Court
`enter Defendants’ proposal:
`
`
` By December 23, Defendants will limit their total asserted prior art references and/or products to an
`average of 18 per patent (Defendants can determine how the limit is distributed across the asserted
`patents);
`o Defendants may amend their contentions for good cause shown (such as for prior art products,
`learning of additional references, or changed claim constructions), as long as the total remains
`under the set limit.
`
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`Case 2:22-md-03034-TGB ECF No. 102-1, PageID.8176 Filed 12/09/22 Page 4 of 6
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`o Plaintiff contends it needs Defendants’ initial limit by December 12, but neither the facts nor the
`procedural schedule bear that out. Indeed, Defendants originally represented to the Court that
`they would voluntarily limit their prior art references within six weeks of Plaintiff’s initial
`reduction. Defendants’ proposal to adopt this limit by December 23 instead is a compromise,
`but one that Plaintiff rejected.
` Plaintiff will limit its case to a maximum of 12 total claims two weeks after the Markman Order;
`o Plaintiff has already informed the Court that it will try only a handful of claims. Accordingly,
`there is no legitimate reason to carry 18 total claims into the expert discovery phase.
` Two weeks after Neo limits its case to a maximum of 12 total claims, Defendants will limit their total
`asserted prior art references and/or products to an average of 6 per patent (Defendants can determine
`how the limit is distributed across the asserted patents).
`
`
`
`Regarding the timing of the initial limitation, Defendants have offered to limit their prior art by December 23,
`more than two weeks earlier than Defendants offered in their papers. This proposal is reasonable given the
`number of defendants (9), references at issue (194), and the large number of claims remaining (36). Neo,
`however, argues this timing is inappropriate because it must have Defendants’ initial prior art selection well in
`advance of the January 15, 2023 deadline to identify the parties’ disputed claim terms and because the model
`orders require Defendants to limit in two weeks. But there is no need to limit prior art to ensure an efficient
`claim construction process. As such, there is no reason why Neo must have Defendants’ revised prior art list
`in two weeks.
`
`
`As to the scope of the initial and subsequent limitations, Defendants’ proposal to limit their prior art
`references/products is proportional to Plaintiff’s reduction in the number of claims at the initial stage (45% of
`the initially asserted claims) and subsequent stage (66% of the reduced number of claims). It also is
`consistent with the Northern District of Illinois’ local patent rules, which require a defendant to initially limit its
`prior art to no more than 25 references per asserted patent. See N.D. Ill. LPR 2.3. Neo, however, argues
`these limits are inconsistent with the Eastern District of Texas and Federal Circuit Advisory Council model
`orders. But as the model orders themselves recognize, they are merely guidance and specifically contemplate
`“expanding the limits on asserted claims or prior art references” for cases “involving several patent families,
`diverse technologies, disparate claims within a patent, or other unique circumstances.” E.D. Tex. Model Order
`at n.1. Such is the case here, because the model orders do not contemplate so many patents, so many
`claims, and so many defendants in a patent-based MDL. Indeed, the “model order” for an MDL like this
`proceeding is the Katz litigation, in which the court required the plaintiff to narrow a much larger number of
`initially asserted claims (1,975 in Katz vs. 65 here), from a much larger number of patents (31 in Katz vs. 6
`here) against a much larger number of defendants (165 in Katz vs. 9 here), to an even lower number of claims
`at the subsequent stage (16 in Katz vs. 12 here), and all without any limits on prior art references. Accordingly,
`Defendants’ proposal to limit their prior art references to an average of 6 references per patent at the
`subsequent stage appropriately reflects the remaining size of the case, total number of patents, and total
`number of disparate defendants that must coordinate in order to jointly present their common defense.
`
`Toyota’s & Nissan’s Position:
`Toyota believes that discussions between the parties have made progress on this issue, and proposes that
`further discussions should continue with an eye towards reaching a reasonable resolution that adequately
`preserves all parties’ rights. If the Court is instead persuaded to enter an order now, Toyota would propose a
`reduction from the 63 initial invalidity charts served by Defendants with their invalidity contentions, to 36 charts
`selected from among the original 63 charts by December 23. Notwithstanding any preamble language in the
`charts, it would be understood that Defendants’ selection of prior art charts would be limited to the
`combinations actually identified in the charts themselves and not other secondary references identified in the
`list in the main invalidity contentions documents. This represents a significant reduction in prior art
`selection. Because Defendants’ preliminary invalidity contentions are by their nature preliminary, they would
`be subject to amendment and further narrowing (i) following claim construction, and/or (ii) for good cause
`based on fact discovery, particularly discovery of other prior art during the discovery period and/or new
`positions taken by plaintiff on the scope or application of the claims, as discovery continues. Plaintiff will then
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`Case 2:22-md-03034-TGB ECF No. 102-1, PageID.8177 Filed 12/09/22 Page 5 of 6
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`limit its case to a maximum of 12 claims two weeks after the Markman Order; and two weeks later, Defendants
`will limit their total asserted prior art charts to a total of no more than 18 total invalidity charts.
`
`Regards,
`
`Chris Stewart
`Counsel for Neo Wireless
`Principal | Caldwell Cassady Curry PC
`2121 N Pearl St., Suite 1200, Dallas, TX 75201
`Telephone: 214.888.4846
`cstewart@caldwellcc.com
`www.caldwellcc.com
`
`
`From: Chris Stewart <cstewart@caldwellcc.com>
`Sent: Wednesday, November 16, 2022 12:11 PM
`To: Gabrielle.LaHatte@lw.com; efile_berg@mied.uscourts.gov
`Cc: dla-toyota-neowireless@us.dlapiper.com; DL_Nissan-Neo@jenner.com; VW-Neo@sternekessler.com;
`fordneowireless.lwteam@lw.com; SERVICETeslaNeo@fr.com; SERVICEGMNeo@fr.com; Service-Honda/Neo@fr.com;
`FCA-Neo@Venable.com; MercedesNeoWireless@hoganlovells.com; neowireless@caldwellcc.com;
`quadrozzi@youngpc.com
`Subject: RE: In re Neo Wireless, LLC Patent Litig., Case No. 2:22-md-03034-TGB (E.D. Mich.)
`
`Judge Berg,
`
`Please see the attached letter responding to Defendants’ letter.
`
`Sincerely,
`
`Chris Stewart
`Principal | Caldwell Cassady Curry PC
`2121 N Pearl St., Suite 1200, Dallas, TX 75201
`Telephone: 214.888.4846
`cstewart@caldwellcc.com
`www.caldwellcc.com
`
`
`From: Gabrielle.LaHatte@lw.com <Gabrielle.LaHatte@lw.com>
`Sent: Tuesday, November 15, 2022 3:41 PM
`To: efile_berg@mied.uscourts.gov
`Cc: dla-toyota-neowireless@us.dlapiper.com; DL_Nissan-Neo@jenner.com; VW-Neo@sternekessler.com;
`fordneowireless.lwteam@lw.com; SERVICETeslaNeo@fr.com; SERVICEGMNeo@fr.com; Service-Honda/Neo@fr.com;
`FCA-Neo@Venable.com; MercedesNeoWireless@hoganlovells.com; neowireless@caldwellcc.com;
`quadrozzi@youngpc.com
`Subject: In re Neo Wireless, LLC Patent Litig., Case No. 2:22-md-03034-TGB (E.D. Mich.)
`
`Dear Judge Berg,
`
`Please find attached correspondence sent on behalf of Defendants in the above-referenced litigation.
`
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`Case 2:22-md-03034-TGB ECF No. 102-1, PageID.8178 Filed 12/09/22 Page 6 of 6
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`Regards,
`
`Gabrielle LaHatte
`
`
`LATHAM & WATKINS LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`Direct Dial: +1.415.395.8108
`Mobile: +1.213.361.8102
`Email: gabrielle.lahatte@lw.com
`https://www.lw.com
`
`
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