Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 1 of 16 PageID #: 1012
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`Case No. 6:14-cv-678-RWS
`LEAD CASE
`
`
`Case No. 6:14-cv-680-RWS
`Consolidated case
`
`TracBeam, LLC,
`
`
`
`Plaintiff,
`
`
`
`
`
`v.
`
`T-Mobile US, Inc., et al.,
`
`
`
`Defendants.
`
`
`
`
`TracBeam, LLC,
`
`
`
`Plaintiff,
`
`
`
`
`
`v.
`
`Apple Inc.,
`
`
`
`Defendant.
`
`Joint Motion to Resolve Disputes and Enter Docket Control Order
`
`The parties in the above-consolidated cases have met and conferred and resolved all
`
`
`
`
`
`
`
`disputes concerning the proposed Docket Control Order except one. As shown in the attached
`
`proposed Docket Control Order (exhibit 1), Defendants seek to include in the Docket Control
`
`Order preliminary and final dates for the Plaintiff to narrow the number of asserted claims and
`
`for Defendants to narrow the number of asserted prior art references. Plaintiff opposes the
`
`inclusion of such dates. The parties’ respective positions are set forth below.
`
`I.
`
`
`
`Plaintiff TracBeam’s position.
`
`Defendants ask this Court to adopt and include in the Docket Control Order a modified
`
`version of the Model Order Focusing Patent Claims and Prior Art (General Order No. 13-20).
`
`Defendants’ proposed variation on the model order is shown in the following chart:
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 1 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 2 of 16 PageID #: 1013
`
`Event
`
`Model Order
`
`Defendants’ proposal
`
`June 1, 2015
`
`
`
`September 17, 2015
`
`[“the date set for completion of
`claim construction discovery”], ¶21
`
`
`
`June 29, 2015
`
`[28 days after Plaintiff’s
`Preliminary Election]
`
`February 29, 2016
`
`[31 days before initial expert reports]
`
`
`
`October 1, 2015
`
`[14 days after Plaintiff’s
`Preliminary Election], ¶2
`
`March 3, 2016
`
`[28 days before initial expert
`reports]
`
`March 31, 2016
`[date of rebuttal expert reports]
`
`“no more than six asserted prior art
`references per patent from among
`the twelve prior art references
`previously identified for that
`particular patent and no more than a
`total of 20 references. For purposes
`of this Final Election of Asserted
`Prior Art, each obviousness
`combination counts as a separate
`prior art reference,” ¶3.
`
`March 31, 2016
`[same]
`
`“no more than six (6) primary prior
`art references against each patent and
`no more than twenty (20) primary
`references from among the prior art
`references identified in the
`Preliminary Election of Asserted
`Prior Art (with no limit on the
`number of references used for
`obviousness combinations).”
`
`
`Plaintiff’s
`Preliminary Election
`of Asserted Claims
`
`
`
`Defendants’
`Preliminary Election
`of Asserted Prior Art
`
`
`Plaintiff’s
`Preliminary Election
`of Asserted Claims
`
`Defendants’ Final
`Election of Asserted
`Prior Art
`
`
`
`
`
`Defendants’ proposal should be rejected.
`
`First, the Court should decline to adopt the model order when one party reasonably
`
`objects to its adoption. The model order is not mandatory.2 Rather, it is a tool for the parties to
`
`
`1 In the attached proposed Docket Control Order the parties have agreed that September 17, 2015
`
`is the claim construction discovery cut-off.
`2 Indeed, the working group that created the model order adopted in this District declined to make
`
`the preliminary and final elections mandatory because it wanted the courts and the litigants to have
`greater flexibility in determining what was appropriate for each particular case. See Advisory Committee
`Commentary re Model Order at 4 (“After consideration, the working group determined that a revised
`version of the Model Order could be helpful to practice in the Eastern District. However, rather than
`incorporating the revised version in the Local Rules, the working group recommended including it as an
`appendix to the Local Rules, much like the version of the Model Order Regarding E-Discovery which
`was adopted by the court. This approach allows flexibility for both litigants and the court to tailor limits
`on asserted claims and prior art references based on differing facts, case to case. This approach also
`
`2
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 2 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 3 of 16 PageID #: 1014
`
`use in reaching agreements about how to streamline the case in a way that is mutually beneficial.
`
`If one side does not want to adopt the model order, it can be presumed that that party does not
`
`consider the model order to be mutually beneficial or to provide the most efficient path toward
`
`streamlining the case. And if that party is reasonable in objecting to the model order’s adoption,
`
`their objections should be heard and sustained. That is the situation here.
`
`
`
`We have asserted a large number of claims against both Defendants and we agree that
`
`this case will require streamlining before expert reports and trial.3 But we object to the adoption
`
`of the model order (or any variation on it) at this stage because it is premature. As the case
`
`progresses through disclosures, discovery, and claim construction there will be numerous
`
`opportunities for the parties to discuss focusing the case—with the benefit or more information
`
`than either side has at this stage—and to determine how much narrowing should be done and
`
`when it should be done. That is in fact what happened in the prior case, where the parties reach
`
`numerous compromise agreements along the way that led to the dropping of claims and of prior
`
`art.4 We request the same opportunity to allow this case to progress naturally and to at least
`
`begin taking discovery from Defendants before firm deadlines for narrowing claims and firm
`
`limits on how many claims we assert are imposed. Accordingly, we request that this Court
`
`
`allows the court to decide questions that may arise regarding the interpretation or application of the
`recommended limits in a particular case without having to generally construe or interpret a local rule.”).
`3 TracBeam has asserted the same four patents against each of Defendants Apple and T-Mobile.
`
`TracBeam’s infringement contentions assert that Apple infringes 19 independent claims and an additional
`101 dependent claims. The contentions assert that the T-Mobile Defendants collectively infringe 25
`independent claims and an additional 121 dependent claims.
`4 In the prior case, TracBeam ultimately narrowed the number of claims asserted against AT&T
`
`and Google (the last two Defendants) to just two claims and one claim, respectively, and Defendants in
`turn narrowed the number of asserted prior art references. The parties’ mutual narrowing resulted from a
`series of compromises on many issues, including agreements that were critical to resolving disputes that
`would have otherwise led to motion practice on discovery issues and other disputes. In this case
`Defendants argue that we started out with far fewer asserted claims than we assert here. That is true, and
`is the result of our greater experience understanding the patents and the issues that are likely to arise in
`this case. But this is not a reason for adopting the model order in this case over our objections and
`depriving us the ability to determine in discovery which of the asserted claims are strongest for purposes
`of infringement, validity, and damages.
`
`3
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 3 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 4 of 16 PageID #: 1015
`
`allow the natural progression of this case to narrow the claims and asserted art rather than adopt
`
`the model order at the outset of the case. This is the approach that Judge Gilstrap took in the
`
`Thomas Swan case, in which a similar number of claims were asserted.
`
`Having considered the motion and the parties’ briefing, the Court is persuaded that
`although the more than one hundred currently-asserted claims would be unmanageable at
`the expert-report stage of this case or at trial, Defendants’ efforts to narrow the asserted
`claims and prior art references are premature. The Court is further persuaded that the
`Markman process acts to naturally winnow parties’ disputes, and as such, requests to
`limit claims and/or prior art references are generally more appropriate during or
`following the submission of the Parties’ claims construction briefing…. Accordingly,
`Defendants’ motion is DENIED WITHOUT PREJUDICE to Defendants’ re-urging the
`issue after the parties have completed claim construction briefing.
`
`Thomas Swan & Co. Ltd., v. Finisar Corporation, et al., 2:13-cv-178-JRG (E.D. Tex. April 11,
`
`2014), dkt. 125 at 2.5
`
`
`
`Second, the Court should not adopt Defendants’ modified version of the model order.
`
`Defendants have made various adjustments to the model order that are one-side. Under
`
`Defendants’ proposal:
`
` TracBeam would be required to make its Preliminary Election more than three months
`
`earlier than it would under the model order. And TracBeam would have to do so prior to
`
`even receiving Defendants’ invalidity contentions or claim construction proposals,
`
`whereas the model order would allow us to not only take extensive infringement
`
`discovery, receive Defendants’ invalidity contentions, and complete claim construction
`
`discovery before making our Preliminary Election.
`
`
`5
`Earlier today, in response to TracBeam’s request that Defendants identify any cases in which the court
`adopted the model order over the Plaintiff’s objections, Defendants identified SmartFlash v. Google, 6:14-cv-00435-
`JRG-KNM. The Docket Control Order (dkt 94) in that case does include Preliminary and Final Election events.
`However, it appears that the relevant briefing on the parties’ dispute was filed under seal so we cannot assess the
`facts of that case and how they may differ from those here. In addition, we are also aware of Judge Payne ordering
`that the Plaintiff narrow claims in Phoenix Licensing LLC v. AAA Life Insurance Company, 2:13-cv-1081-JRG-RSP
`(E.D. Tex. March 11, 2015), dkt. 402. In that case there were nearly 300 claims asserted against the Defendant.
`
`4
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 4 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 5 of 16 PageID #: 1016
`
` Defendants would be permitted to delay their Preliminary Election by an additional two
`
`weeks.
`
` Defendants’ Final Election would allow them to assert an unlimited number of prior art
`
`combinations for obviousness purposes, whereas the model order treats each combination
`
`as one of the forty total references.
`
`Defendants cannot justify these proposed modifications.
`
`***
`
`For the foregoing reasons, TracBeam respectfully requests that the Court decline to adopt
`
`
`
`
`
`the model order (or any variation of it) at this stage in the case.
`
`5
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 5 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 6 of 16 PageID #: 1017
`
`II.
`
`Defendants’ position.
`
`Plaintiff has asserted an absurd number of claims in these two cases: 120 against Apple
`
`and 146 against T-Mobile, totaling over 170 distinct claims across both cases.6 Given the sheer
`
`size of the four patents in suit (weighing in at just over 700 pages7), the enormity of their file
`
`histories (which dragged on for more than a dozen years and encompass many thousands of
`
`pages), and the prolix nature of the claims (with many independent and dependent claims
`
`running for more than a patent column), the assertion of 120 and 146 claims is facially
`
`unreasonable. The unreasonableness of this many asserted claims is highlighted by the facts
`
`that (1) all four patents in suit are from the same patent family and relate to substantially similar
`
`subject matter, and (2) Plaintiff voluntarily asserted fewer than 20 claims in prior lawsuits.
`
`Defendants respectfully request that the Court require Plaintiff to reduce the number of claims to
`
`a reasonable number in advance of the June 29, 2015 due date for Invalidity Contentions.
`
`In the prior litigation on two of the asserted patents (i.e., the ‘231 and ‘484 patents),
`
`Plaintiff initially asserted 16 or 17 claims against wireless carriers MetroPCS, AT&T, and
`
`Verizon, and nine claims against Google (later dropping to approximately two claims per party at
`
`the expert report stage). Even these numbers imposed a great burden on those defendants given
`
`the massive size of the patents and sheer length of their claims.
`
`
`6 Plaintiff’s P.R. 3-1 and 3-2 disclosures were initially due on March 1, 2015 (pursuant to the February
`25, 2015 Order (Dkt. 36), which made Infringement Contentions due 10 days before the March 10, 2015
`scheduling conference), but each Defendant agreed to Plaintiff’s requests for extensions to March 18,
`2015 (for Apple) and April 3, 2015 (for T-Mobile) in exchange for extensions of their Invalidity
`Contentions to June 29, 2015. Defendants’ willingness to agree to Plaintiff’s requests was predicated on
`Plaintiff asserting a reasonable amount of claims (which it did not).
`
`7 The voluminous patents in suit were attached to the Complaints in these cases (Dkt. 1). The ‘153 patent
`(id., Ex. A) has 155 pages and recites 44 claims; the ‘231 patent (id., Ex. B) has 180 pages and recites 232
`claims; the ‘484 patent (id., Ex. C) has 163 pages and recites 77 claims; and the ‘327 patent (id., Ex. D)
`has 205 pages and recites 80 claims—the patents in suit total 703 pages with 433 claims.
`
`6
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 6 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 7 of 16 PageID #: 1018
`
`Plaintiff reverses course in this litigation by asserting 120 claims against Apple (more
`
`than 13 times the number initially asserted against Google) and 146 claims against T-Mobile
`
`(almost 10 times the number initially asserted against MetroPCS, which is now owned by
`
`Defendant T-Mobile). Plaintiff surely does not plan to go to trial on more than a handful of
`
`claims, and asserting this many claims serves no purpose other than to prejudice Defendants’
`
`ability to prepare Invalidity Contentions and drive up their litigation expense.
`
`Plaintiff’s voluminous Infringement Contentions against Apple (which include over
`
`1,200 pages of claim charts that were not page numbered) and T-Mobile (of a similar scale) are
`
`designed to obfuscate the true issues rather than streamline and narrow the triable issues as
`
`contemplated by the local Patent Rules. They certainly do not serve Fed. R. Civ. P. 1’s directive
`
`“to secure the just, speedy, and inexpensive determination” of these cases. While the Court has
`
`consolidated these separate actions, Plaintiff has seemingly made an effort to remove any
`
`efficiencies that consolidation typically promotes (such as common Invalidity Contentions) by
`
`asserting disparate sets of claims in the two cases with limited overlap—in fact, there are 76
`
`claims that do not overlap between these two cases.8
`
`Plaintiff has agreed to extend Defendants’ Invalidity Contentions due date to June 29,
`
`2015, but this extension will be insufficient if Plaintiff does not significantly narrow the number
`
`of asserted claims well in advance. Searching for prior art, charting references, and developing
`
`invalidity defenses is one of the most critical tasks for an alleged infringer in a patent case. This
`
`is a daunting task under any scenario, but doing so for 120 or 146 different claims of immense
`
`length imperils Defendants’ ability to mount a sufficient invalidity defense to all asserted claims.
`
`
`8 There appear to be 171 total asserted claims with 95 of those claims asserted against both T-Mobile and
`Apple; thus, there are 76 claims that are asserted in one case but not the other.
`
`7
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 7 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 8 of 16 PageID #: 1019
`
`In the process of negotiating the Docket Control Order (“DCO”), Defendants asked
`
`Plaintiff to reduce the number of asserted claims to a reasonable number prior to Invalidity
`
`Contentions, using the numerical limits in the recently adopted “Model Order Focusing Patent
`
`Claims and Prior Art to Reduce Costs” (i.e., E.D. Tex. General Order No. 13-20; “Model Order”)
`
`as a proxy. Given the atypical size of these claims and the patents in suit and their file histories,
`
`the numbers suggested by the Model Order (which were presumably based on a “typical” patent
`
`case) are unduly generous to Plaintiff. This is particularly evident from the fact that, in its prior
`
`lawsuit, Plaintiff voluntarily asserted fewer than 20 claims, which is below the initial Model
`
`Order limit of 32 and an order of magnitude less than the 170+ claims collectively asserted
`
`against Apple and T-Mobile.
`
`Still, Plaintiff has flatly rejected any reduction until claim construction discovery cutoff,
`
`citing Thomas Swan & Co. Ltd. v. Finisar Corp., Case No. 2:13-cv-00178, Dkt. 125 (E.D. Tex.
`
`Oct. 24, 2013) for support. However, in that case, the asserted claims were nowhere near as long
`
`as the massive claims asserted by Plaintiff.9 In Thomas Swan, the Court deemed it “premature”
`
`to reduce claims before Markman briefing, but if that same course is followed here, the damage
`
`will have already been done as Defendants’ Invalidity Contentions are due on June 29, 2015.
`
`While Plaintiff is not “fundamentally opposed” to narrowing asserted claims “at some
`
`point,” Plaintiff has made clear that any such point will be well after Invalidity Contentions. The
`
`better course under these atypical circumstances is the approach taken in two similarly-themed
`
`cases in this District, where the Court directed overzealous patentees asserting 100+ claims to
`
`
`9 According to page 2 of defendant’s opening motion in the Thomas Swan case (Dkt. 72), “[n]early half of the 132
`asserted claims are dependent claims from a single independent claim of one patent (claim 1 of U.S. Patent No.
`8,335,033).” As can be seen from U.S. Patent No. 8,335,033 itself, independent claim 1 and the 58 claims
`depending therefrom (i.e., claims 1-59) collectively extend for less than four patent columns (i.e., Col. 60:5 - 63:52)
`(see http://docs.google.com/viewer?url=patentimages.storage.googleapis.com/pdfs/US8335033.pdf). As mentioned
`above, many of the claims asserted in the present litigation extend for more than a column by themselves (see, e.g.,
`claim 36 of the ‘231 patent (Col. 186:48 - 188:2); claim 155 of the ‘231 patent (Col. 203:56 - 204:63); claim 1 of the
`‘327 patent (Col. 259:2 - 260:44); and dependent claim 47 of the ‘327 patent (Col. 264:63 - 266:16)).
`
`8
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 8 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 9 of 16 PageID #: 1020
`
`reduce the numbers before Invalidity Contentions. See Data Treasury Corp. v. Wells Fargo &
`
`Co., Case No. 2:06-cv-00072, Dkt. 325 at 4-5 and Dkt. 328 (E.D. Tex. Oct. 25, 2006); Crane Co.
`
`v. Sandenvendo Am., Inc., Case No. 2:07-cv-00042, Dkt. 66 at 1 (E.D. Tex. Aug. 15, 2008).
`
`In Data Treasury, Judge Folsom deemed “Plaintiff’s [224] asserted claims” to be “too
`
`numerous” and found that it was within the Court’s “discretion to limit[] the number of claims to
`
`help expedite the case and effectuate case management.” (Id., Dkt. 325 at 4.) In Crane, where
`
`“plaintiffs [had] asserted 118 claims against [one defendant] and 128 claims against [another],”
`
`Magistrate Everingham explained his rationale for ordering a similar early reduction of claims:
`
`The purpose of the patent rules is to streamline and narrow the triable issues in
`the case. The practice of asserting an unreasonably large number of patent
`claims serves to obfuscate the more material issues in the case, and effectively
`undermines the purpose of the patent rules. Therefore, the court grants the
`defendants’ motion, and orders the plaintiffs to limit the total number of asserted
`claims in this case to 50 per defendant.
`
`(Id., Dkt. 66 at 1 (emphasis added).)
`
`In Smartflash LLC v. Apple Inc., Case No. 6:13-cv-00447, Dkt. 79 (E.D. Tex. Dec. 6,
`
`2013), Magistrate Mitchell more recently ordered the plaintiff to “assert no more than 10 claims
`
`from each patent and not more than a total of 32 claims” at the time of Infringement Contentions.
`
`While this early reduction of asserted claims was entered on a joint stipulation, it shows what
`
`parties can agree to do when acting reasonably. Plaintiff here is being unreasonable in asserting
`
`120 and 146 claims for the strategic purpose of overwhelming Defendants and by refusing to
`
`reduce to reasonable numbers in advance of Invalidity Contentions.
`
`Plaintiff’s assertion of myriad claims is inherently unreasonable and makes this case
`
`unmanageable for Defendants. In addition to having to prepare Invalidity Contentions and
`
`formulate claim construction positions for 120 or 146 claims, each Defendant is tasked with
`
`9
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 9 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 10 of 16 PageID #: 1021
`
`analyzing more than 1,000 pages of Infringement Contentions.10 A reduction of asserted claims
`
`to a less unreasonable number (e.g., the number asserted in TracBeam’s prior lawsuit or
`
`specified by the Model Order) is imperative now—in the interest of fairness, this reduction
`
`cannot wait until after the Markman process is underway.
`
`In the DCO, Defendants have made an eminently reasonable proposal to reduce the
`
`number of asserted claims to 10 per patent in suit with no more than 32 total asserted claims.
`
`Again, these “Model Order” numbers are very generous for this case, given the incredible length
`
`of many of the claims. While a much earlier date would be preferred, Defendants have proposed
`
`June 1, 2015 as the initial reduction date, to permit them enough time in advance of June 29,
`
`2015 to prepare and serve Invalidity Contentions on 32 claims. Without this early reduction in
`
`asserted claims, Defendants will need to request a much further extension of the Invalidity
`
`Contentions deadline (which could have a domino effect on the rest of the case schedule).
`
`Any purported prejudice on Plaintiff is minimal. This is not the first case that Plaintiff
`
`has filed, so any notion that it needs time to focus its asserted claims is disingenuous, especially
`
`given the amount of time that passed between Plaintiff filing these lawsuits (on August 8, 2014)
`
`and serving Infringement Contentions between seven and eight months later. Again, Plaintiff
`
`previously sued Google on nine claims of the ‘231 and ‘484 patents, and dropped to what were
`
`presumably its “best” claims as the parties headed toward trial. And Plaintiff previously asserted
`
`16 or 17 claims against wireless carriers MetroPCS (now owned by T-Mobile), AT&T, and
`
`Verizon, subsequently narrowing to two asserted claims against each of those carriers. This is
`
`not a due process issue (which Plaintiff may argue), as Plaintiff has had ample time to choose its
`
`
`10 Plaintiff’s Infringement Contentions appear to have been motivated by a desire to make Defendants’
`preparation of Invalidity Contentions as complicated as possible. For example, Plaintiff has used wishy-
`washy language in its priority date claim under P.R. 3-1(e) (“priority date of at least September 9, 1996”),
`which should be stricken as similar language was in Blue Spike, LLC v. Adobe Systems, Inc., Case No. 14-
`cv-01647, Dkt. 57 at 12-13 (N.D. Cal. Jan. 23, 2015).
`
`10
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 10 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 11 of 16 PageID #: 1022
`
`“best” claims, and will have Defendants’ P.R. 3-4(a) production for almost a month under
`
`Defendants’ proposal (to the extent Plaintiff contends that it needs to analyze additional technical
`
`information to select the 32 claims it wants to assert against each Defendant).
`
`To avoid the substantial prejudice imposed upon Defendants here by Plaintiff’s hyper-
`
`aggressive tactics, Defendants respectfully request that the Court enter their proposed reductions
`
`in asserted claims at the times suggested in the DCO (i.e., a June 1, 2015 preliminary election of
`
`asserted claims and a February 29, 2016 final election). This proposal is consistent with the
`
`Model Order, and only advances the preliminary election so that Defendants are able to prepare
`
`adequate Invalidity Contentions on June 29, 2015.
`
`To make this equitable, Defendants have proposed an early reduction in prior art
`
`references, with their preliminary election of prior art to take place on the June 29, 2015 due date
`
`for Invalidity Contentions (and their final election concurrent with service of opening expert
`
`reports on March 31, 2016). As Plaintiff may point out, Defendants have slightly modified the
`
`standard language of the Model Order with respect to prior art by adding the modifier “primary”
`
`and including a parenthetical to explain that the limitations should not apply to obviousness
`
`combinations. Adding this language at the proposed June 29, 2015 early reduction of prior art
`
`references is done merely for clarification. As explained in the Local Rules Advisory Committee
`
`Commentary for the Model Rules, the language specifying that “each obviousness combination
`
`counts as a separate prior art reference” is only found in paragraph 3 of the Model Order, which
`
`deals with the “final election” of prior art at the time of expert reports.11 Thus, Defendants’
`
`
`11 Defendants believe that its proposed modified language is also appropriate for the final election of prior
`art, given the length and complexity of the currently asserted claims; that said, Defendants are willing to
`confer with Plaintiff about prior art limits for the final election after Plaintiff’s initial election of asserted
`claims to see if the parties can resolve this issue in light of Plaintiff’s election.
`
`11
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 11 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 12 of 16 PageID #: 1023
`
`modification to the Model Order language for their early reduction of prior art is entirely
`
`consistent with the Model Order.
`
`III. Conclusion
`
`
`
`The parties respectfully request that the Court resolve their dispute and enter a Docket
`
`Control Order.
`
`Date: April 9, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`By: /s/ Jeff Eichmann
`John Jeffrey Eichmann (admitted
`to practice in the Eastern District of Texas)
`E-mail: jeff@dovel.com
`CA State Bar No. 227472
`Christin Cho (admitted to practice in the
`Eastern District of Texas)
`E-mail: christin@dovel.com
`CA State Bar No. 238173
`Dovel & Luner, LLP
`201 Santa Monica Blvd., Suite 600
`Santa Monica, CA 90401
`Telephone: 310-656-7066
`Facsimile: 310-657-7069
`
`Elizabeth L. DeRieux
`Email: ederieux@capshawlaw.com
`State Bar No. 05770585
`CAPSHAW DERIEUX, LLP
`114 E. Commerce
`Gladewater, Texas 75647
`Telephone: (903) 236-9800
`Facsimile: (903) 236-8787
`
`Robert Christopher Bunt
`State Bar No. 00787165
`Charles Ainsworth
`State Bar No. 00783521
`PARKER, BUNT & AINSWORTH PC
`100 East Ferguson, Ste. 1114
`Tyler, TX 75702
`Telephone: (903) 531-3535
`Facsimile: (903) 533-9687
`Email: rmparker@pbatyler.com
`
`12
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 12 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 13 of 16 PageID #: 1024
`
`Email: rcbunt@pbatyler.com
`Email: charley@pbatyler.com
`
`ATTORNEYS FOR PLAINTIFF
`TRACBEAM, LLC
`
`
`
`13
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 13 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 14 of 16 PageID #: 1025
`
`By:
`
`
`
`/s/ Douglas M. Kubehl (with permission)
`Douglas M. Kubehl
`Texas State Bar No. 00796909
`E-mail: doug.kubehl@bakerbotts.com
`Chad C. Walters
`Texas State Bar No. 24034730
`E-mail: chad.walters@bakerbotts.com
`Ross G. Culpepper
`Texas State Bar No. 24069559
`E-mail: ross.culpepper@bakerbotts.com
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, Texas 75201
`Telephone: (214) 953-6500
`Facsimile: (214) 953-6503
`
`Karina A. Smith (pro hac vice)
`E-mail: karina.smith@bakerbotts.com
`BAKER BOTTS L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Telephone: (650) 739-7500
`Facsimile: (650) 739-7600
`
`Edward A. Pennington (pro hac vice)
`John P. Pennington (pro hac vice)
`Siddhesh V. Pandit (pro hac vice)
`Stephanie D. Scruggs (pro hac vice)
`SMITH, GAMBRELL & RUSSELL, LLP
`1055 Thomas Jefferson Street, N.W.
`Suite 400
`Washington, D.C. 20007
`Telephone: (202) 263-4300
`Facsimile: (202) 263-4348
`epennington@sgrlaw.com
`jpennington@sgrlaw.com
`spandit@sgrlaw.com
`sscruggs@sgrlaw.com
`
`ATTORNEYS FOR DEFENDANTS AND
`COUNTER-CLAIMANTS T-MOBILE US,
`INC. AND T-MOBILE USA, INC.
`
`14
`
`
`
`Melissa R. Smith
`Texas State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 14 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 15 of 16 PageID #: 1026
`
`By:
`
`
`
`/s/ Martin M. Noonen (with permission)
`Michael E. Jones
`State Bar No. 10929400
`mikejones@potterminton.com
`Allen F. Gardner
`State Bar No. 24043679
`allengardner@potterminton.com
`POTTER MINTON, P.C.
`A Professional Corporation
`110 N. College, Suite 500
`Tyler, Texas 75702
`(903) 597-8311 (telephone)
`(903) 593-0846 (facsimile)
`
`Vincent J. Belusko (lead attorney) (admitted
`to practice in the Eastern District of Texas)
`vbelusko@mofo.com
`Martin M. Noonen (admitted to practice in the
`Eastern District of Texas)
`mnoonen@mofo.com
`Bita Rahebi (admitted to practice in the
`Eastern District of Texas)
`brahebi@mofo.com
`Alex S. Yap (admitted to practice in the
`Eastern District of Texas)
`ayap@mofo.com
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`(213) 892-5200 (phone)
`(213) 892-5454 (fax)
`
`ATTORNEYS FOR DEFENDANT
`APPLE INC.
`
`
`
`15
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 15 of 16
`
`

`
`Case 6:14-cv-00678-RWS Document 56 Filed 04/09/15 Page 16 of 16 PageID #: 1027
`
`Certificate of Service
`
`
`
`I certify that this document is being filed electronically and, as a result, is being served on
`counsel of record through the Electronic Filing System on the filing date listed above.
`
`
`
`
`
`
`/s/ Jeff Eichmann
`
`
`
`
`
`16
`
`T-Mobile/TCS/Ericsson EXHIBIT 1028
`T-Mobile/TCS/Ericsson v. TracBeam IPR2016-00728
`Page 16 of 16