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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 1 of 11
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`BROADSIGN INTERNATIONAL, LLC,
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`v.
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`Plaintiff,
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`Civil Action No.: 1:16-cv-04586 (LTS)
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`JURY TRIAL REQUESTED
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`X
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`X
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`JOINT PRELIMINARY PRETRIAL STATEMENT
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`T-REX PROPERTY AB,
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`Defendant.
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 2 of 11
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`Pursuant to the Court’s July 25, 2016 Initial Conference Order (Dkt. 9), counsel for
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`Plaintiff BroadSign International, LLC (“Plaintiff” or “BroadSign”) and Declaratory
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`Judgment Defendant T-Rex Property AB (“Defendant” or “T-Rex”) conferred regarding the
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`matters set forth in the Initial Conference Order. Additionally, the parties continue to work
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`towards streamlining the dispute, particularly with regard to e-discovery, document
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`productions, and a stipulated protective order for the Court’s consideration.
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`A.
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`NATURE OF THE ACTION
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`On June 16, 2016, BroadSign filed a Complaint (Dkt. 1) against T-Rex seeking a
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`declaratory judgment of non-infringement as to U.S. Patent No. RE39, 470 (“the ’470
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`patent”); U.S. Patent No. 7,382,334 (“the ’334 patent”); and U.S. Patent No. 6,430,603 (“the
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`’603 patent”) (collectively, the “patents-in-suit”) and intervening rights as to the ’470 patent.
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`On September 15, 2016, BroadSign filed an Amended Complaint (Dkt. 10).
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`The complaint was served on T-Rex in Sweden on November 11, 2016.
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`On December 14, 2016, T-Rex filed a Motion to Dismiss for Lack of Jurisdiction
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`(Dkt. 14) which is pending before the Court. T-Rex has not yet filed an Answer or
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`counterclaims in this case.
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`B.
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`PENDING RELATED CRIMINAL OR CIVIL ACTIONS
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`There are no pending related criminal or civil actions in which both BroadSign and T-
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`Rex are both parties to the action.
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`The following is a list of pending District Court cases involving one or more of the
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`patents-in-suit:
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`Case Name
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`Case No.
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`Jurisdiction
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`T-Rex Property AB v. Barco,
`Inc.
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`T-Rex Property AB v. Cedar
`Fair, L.P.
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`1:16-cv-06938
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`Northern District of Illinois
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`0:16-cv-02018
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`District of Minnesota
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`1
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`1
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`2
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`3
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`4
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`5
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`6
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 3 of 11
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`Case Name
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`Case No.
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`Jurisdiction
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`T-Rex Property AB v.
`Contextmedia Inc. et al
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`T-Rex Property AB v. AMC
`Entertainment Holdings, Inc.
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`T-Rex Property AB v. Regal
`Entertainment Group
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`T-Rex Property AB v. Four
`Winds Interactive, LLC
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`T-Rex Property AB v.
`Adaptive Micro Systems,
`LLC
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`T-Rex Property AB v. Clear
`Channel Outdoor Holdings,
`Inc. et al
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`1:16-cv-04826
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`Northern District of Illinois
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`6:16-cv-01029
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`Eastern District of Texas
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`6:16-cv-00927
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`Eastern District of Texas
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`1:16-cv-06934
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`Northern District of Illinois
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`1:16-cv-05667
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`Northern District of Illinois
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`6:16-cv-00974
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`Eastern District of Texas
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`The following pending Patent Office proceedings were filed by BroadSign and
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`involve one or more of the patents-in-suit:
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` CBM2017-00008 (U.S. Patent No. 6,430,603)
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`
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`
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`IPR2017-00006 (U.S. Pat. No. 7,382,334)
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`IPR2016-01869 (U.S. Reissue Patent No. RE039,470)
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`STATEMENT OF EACH PARTY’S POSITION AS TO THE BASIS OF THE
`COURT’S JURISDICTION OF THE ACTION
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`C.
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`
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`BroadSign’s Statement:
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. §§2201, et seq.,
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`and under the Patent Laws of the United States, as enacted under Title 35 of the United States
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`Code. This Court has jurisdiction over this action pursuant to 35 U.S.C. §§ 271, et seq., and
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`28 U.S.C. §§ 1331, 1338, 2201, and 2202.
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`BroadSign is a supplier of hardware and software solutions to operators of networks
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`of digital displays. BroadSign’s platform includes an interface for managing a network of
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 4 of 11
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`BroadSign Players associated with the digital displays, and among other things, upload
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`desired content, book and manage advertising campaigns and monitor network health. The
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`BroadSign Players organize the content based on booked advertising campaigns and enable
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`content to be played on the associated digital displays.
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`To date, T-Rex has filed over 40 patent infringement actions against digital content
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`providers. At least five (5) BroadSign customers who are digital content providers have been
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`sued by T-Rex for patent infringement on one or more of the patents-in-suit. One of those
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`customers, Health Media Network, LLC (“HMN”), was sued on May 27, 2016, in the United
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`States District Court for the Northern District of Illinois. In that complaint, T-Rex accuses
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`BroadSign’s customer of infringing the ’470 patent and identifies the allegedly infringing
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`devices and systems as the defendant’s “digital health media advertising network.” The
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`accused “digital health media advertising network” which T-Rex claims to infringe the ’470
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`patent is the product that BroadSign sold and delivered to defendant Health Media Network.
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`HMN has no other platform provider for its “digital health media network.”
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`HMN has also been accused by T-Rex of infringing the ’334 patent. Again, T-Rex
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`identifies HMN’s “digital health media advertising network” provided to HMN by
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`BroadSign as the allegedly infringing product. HMN has no other platform provider for its
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`“digital health media network.”
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`HMN has also been accused by T-Rex of infringing the ’603 patent. Again, T-Rex
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`identifies HMN’s “digital health media advertising network” provided to HMN by
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`BroadSign as the allegedly infringing product. HMN has no other platform provider for its
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`“digital health media network.”
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`As a result of the T-Rex lawsuits filed against BroadSign’s customers over the past
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`year accusing BroadSign’s products and services of infringing each of the patents-in-suit,
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`there is a real, immediate and justiciable controversy between T-Rex and BroadSign
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 5 of 11
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`concerning infringement of sufficient immediacy to warrant the issuance of a declaratory
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`judgment. There is a real and palpable threat of suit by T-Rex against BroadSign and/or
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`against additional BroadSign customers arising from their use of BroadSign’s products. This
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`threat is real and not idle, not only because of the existing suits against BroadSign’s
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`customers, but also because T-Rex has filed at least 43 patent infringement suits asserting
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`one or more of these same patents in 17 separate judicial districts throughout the United
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`States. Given the lawsuits against BroadSign’s customers and T-Rex’s litigious business
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`model and conduct, T-Rex’s actions have placed a cloud over BroadSign and its business and
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`have injured or are injuring BroadSign’s business, creating a concrete and immediate
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`justiciable controversy between BroadSign and T-Rex. BroadSign cannot simply stand by
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`while its business suffers irreparable harm to await yet another filing of litigation by T-Rex at
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`a future date. BroadSign seeks a declaratory judgment so that its business can move forward
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`without the imminent and ever-present threat of litigation.
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`T-Rex’s Statement
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`T-Rex maintains that this Court lacks subject matter jurisdiction over the claims
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`asserted by BroadSign because there is no case or controversy between BroadSign and T-
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`Rex. See T-Rex’s Motion to Dismiss and Supporting Documents (Dkt.14-16 and 26-27)
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`(incorporating by reference the arguments contained in those documents). As T-Rex has not
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`answered BroadSign’s amended complaint, T-Rex reserves its right to raise additional
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`objections to the Court’s jurisdiction in this action.
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`D. MATERIAL UNCONTESTED OR ADMITTED FACTS
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`The following facts are uncontested and/or admitted:
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`T-Rex is the assignee and owner of the right, title and interest in and to the patents-in-
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`suit, including the right to assert all causes of action arising under the patents-in-suit and the
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`right to any remedies for infringement.
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 6 of 11
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`E.
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`UNCONTESTED LEGAL ISSUES
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`At present, there are no uncontested legal issues.
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`F.
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`LEGAL ISSUES TO BE DECIDED BY THE COURT
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`1.
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`2.
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`3.
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`4.
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`The construction and scope of the disputed claim terms of the patents-in-suit.
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`The priority dates of the asserted claims of the patents-in-suit.
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`The absolute and equitable intervening rights with respect to the ’470 Patent.
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`Additional legal issues to be determined in the event that T-Rex is required to
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`respond to BroadSign’s amended complaint.
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`G. MATERIAL DISPUTED FACTS
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`1.
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`Whether BroadSign infringes any valid and enforceable claim of the patents-
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`in-suit.
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`H.
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`BROADSIGN’S STATEMENT OF THE LEGAL BASIS OF EACH CAUSE OF
`ACTION ASSERTED
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`Broadsign seeks a declaratory judgment of non-infringement of the patents-in-suit
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`arising out of the Patent Laws of the United States, as enacted under Title 35 of the United
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`States Code and pursuant to 28 U.S.C. §§ 2201-02.
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`I.
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`
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`LEGAL BASIS OF EACH DEFENSE ASSERTED
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`BroadSign’s Legal Basis of Each Defense Asserted
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`BroadSign reserves the right to address any such defenses at the appropriate juncture.
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`T-Rex’s Legal Basis of Each Defense Asserted
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`As T-Rex has a motion to dismiss for lack of subject matter jurisdiction pending
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`before this Court, T-Rex has not answered the complaint and has not asserted any defenses.
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`To the extent that T-Rex’s motion to dismiss is denied, T-Rex will timely provide its defenses
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`in response to BroadSign’s amended complaint and, if acceptable to the Court, will provide
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`the legal basis of each defense to the Court within 30 days of filing its responses.
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`J.
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 7 of 11
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`MEASURE OF PROOF AND BURDEN OF PROOF AS TO EACH CAUSE OF
`ACTION OR DEFENSE
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`Broadsign has the burden to prove by a preponderance of the evidence that it does not
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`infringe the claims of the patents-in-suit.
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`K.
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`AMENDMENT TO PLEADINGS AND/OR THE ADDITION OR
`SUBSTITUTION OF PARTIES
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`The parties do not currently contemplate any amendments to the pleadings or
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`addition/substitution of parties. However, as T-Rex has an outstanding motion to dismiss
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`before this Court, T-Rex has not yet answered or lodged any counterclaims. Amendment of
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`the pleadings and addition/substitution of parties may be necessary should T-Rex add issues
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`such as validity to this case.
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`To the extent that T-Rex is required to file an answer to BroadSign’s amended
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`complaint, the parties propose that the deadline for any amendments or
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`additions/substitutions to the pleadings be 60 days after T-Rex files its answer.
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`L.
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`TRANSFER TO A MAGISTRATE JUDGE
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`The parties do not consent to transfer this case to a magistrate judge.
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`M.
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`INITIAL DISCLOSURES UNDER FED. R. CIV. P. 26(A)(1)
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`Subject to the approval of the Court, the parties have agreed to make their Initial
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`Disclosures under Fed. R. Civ. P. 26(a)(1) on or before May 1, 2017 or, to the extent that T-
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`Rex is required to answer BroadSign’s amended complaint, 30 days after T-Rex files its
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`answer, whichever date is latest. The parties do not propose any changes to the form or
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`requirements for disclosures under Fed. R. Civ. P. 26(a).
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`N.
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`DISCOVERY CUTOFF, DISCOVERY PLAN, SUBJECTS OF DISCLOSURE
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`The parties continue to work together on a discovery plan, however, as T-Rex has not
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`yet answered or lodged any counterclaims, the scope of discovery may change based on T-
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`Rex’s answer and any counterclaims. To the extent that T-Rex’s motion to dismiss is denied,
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 8 of 11
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`and T-Rex is required to file an answer to BroadSign’s amended complaint, the parties
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`propose that fact discovery close 180 days after T-Rex files its answer.
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`As per the Court’s Initial Conference Order, the parties have conferred and agreed
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`that the Patent Local Rules of the U.S. District Court for the Northern District of California
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`should not apply to this case at this juncture because T-Rex has not yet answered or lodged
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`any counterclaims and validity is not at issue. The parties agreed to revisit the issue should
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`the scope of the present litigation change.
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`O.
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`EXPERT DISCOVERY
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`The parties may require expert testimony and evidence, and discovery related thereto,
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`regarding the following issues: claim construction, the infringement or non-infringement of
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`the patents-in-suit, the intervening rights associated with the ’470 patent, and an injunction
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`barring T-Rex from asserting the patents-in-suit against BroadSign.
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`T-Rex has not yet answered or lodged any counterclaims and the scope of expert
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`discovery may change based on T-Rex’s answer and any counterclaims.
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`To the extent that expert discovery becomes necessary, the parties propose the
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`following schedule:
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`1.
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`The parties shall serve opening expert reports for any expert on which they
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`bear the burden of proof 30 days after the close of fact discovery;
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`2.
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`The parties shall serve responsive expert reports 30 days after opening briefs;
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`and
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`3.
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`The parties shall serve reply expert reports 15 days after responsive briefs.
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`P.
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`DEADLINES FOR CLASS ACTION-RELATED DISCOVERY AND MOTION
`PRACTICE
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`Not applicable.
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 9 of 11
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`Q.
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`JOINT ELECTRONIC DISCOVERY SUBMISSION
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`Electronic discovery is anticipated, and the parties are currently conferring regarding
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`an ESI Order.
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`R.
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`LIMITATIONS ON DISCOVERY
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`The parties do not contemplate any limitations on discovery at this point in time other
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`than the limitations imposed by the Federal Rules of Civil Procedure and the Local Rules of
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`the United States District Courts for the Southern District of New York, including both the
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`Local Civil Rules and Local Patent Rules.
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`S.
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`STATUS OF SETTLEMENT DISCUSSIONS AND PROSPECTS FOR
`SETTLEMENT
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`The parties have engaged in settlement discussions and will continue to negotiate.
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`BroadSign believes that mediation is not needed at this time, but could be beneficial at a later
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`time depending on further settlement discussions. T-Rex is willing to engage in mediation
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`and believes that mediation may assist the parties in reaching a settlement.
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`T.
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`TRIAL
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`The parties estimate that 3 days will be needed to present the case, with the time
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`divided equally between the parties. However, T-Rex has not yet answered or lodged any
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`counterclaims and the time necessary for trial may change based on T-Rex’s answer and any
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`counterclaims.
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`U.
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`OTHER ORDERS
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`The parties will request the Court to enter a Stipulated Protective Order to govern
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`access to and use of confidential information, documents, and other things produced during
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`discovery in this action. The parties will also request the Court to enter a Scheduling Order
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 10 of 11
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`and an ESI Order to govern discovery of Electronically-Stored Information. The parties do
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`not believe that any additional orders from the Court are necessary at this time.
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`Dated: March 17, 2017
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`Respectfully submitted,
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`BROWN RUDNICK LLP
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`By: /s/ Alfred R. Fabricant
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`Alfred R. Fabricant (AF8255)
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker (LD9423)
`Email: ldrucker@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: (212) 209-4800
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`Attorneys for Plaintiff
`BroadSign International, LLC
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`FARNEY DANIELS PC
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`By: /s/ Caryn L. Cross
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`Caryn L. Cross (CC0920)
`Email: ccross@farneydaniels.com
`FARNEY DANIELS PC
`800 S. Austin Ave., Suite 200
`Georgetown, Texas 78626
`Tel: (512) 582-2828
`Fax: (512) 582-2829
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`Attorneys for Declaratory Judgment Defendant
`T-Rex Property, AB
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`Case 1:16-cv-04586-LTS-HBP Document 28 Filed 03/17/17 Page 11 of 11
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 17, 2017, I electronically filed the foregoing filing with
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`the Clerk of Court using the CM/ECF system which will send notification of such filing via
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`electronic mail to all counsel of record.
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`/s/Alfred R. Fabricant
`Alfred R. Fabricant
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