`
`UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
`
`
`Civil Action No.: 3:15-cv-00823 (VLB)
`
`
`
` JURY TRIAL DEMANDED
`
`
`
`
`:::::::::::
`
`Plaintiff/Counterclaim Defendant,
`
`v.
`
`Defendants/Counterclaim Plaintiff.
`
`
`RUBICON COMMUNICATIONS, LP DBA
`SMALLWORKS AND SMALLWORKS, LLC,
`
`
`LEGO SYSTEM A/S,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DEFENDANTS’ NOTICE IN RESPONSE TO THE COURT’S ORDER
`
`
`Defendants SmallWorks, LLC and Rubicon Communications, LP dba SmallWorks1
`
`(collectively, “SmallWorks”) file their Notice in Response to the Court’s Order.
`
`
`
`On December 19, 2016, the Court issued an Order (Dkt. #43). In the Order, the
`
`Court states that “the parties are to give notice as to whether this case should proceed or
`
`be held in abeyance pending proceedings before the USPTO.” SmallWorks requests that
`
`the Court stay this case until the inter partes review of United States Patent No. 8,894,066
`
`B2 (“the ‘066 Patent”) is complete.
`
`
`
`The Court should stay this matter because the inter partes review most likely will
`
`result in a narrowing of issues and/or a clarifying as to the meaning of the claims. Given
`
`that the Court has not issued a Markman order to date, it makes sense for the Court to
`
`now wait until the inter partes review is complete because certain claims may be
`
`
`1 As stated previously, Rubicon Communications, LP no longer exists, but notice is filed on its behalf
`because it is a named party.
`
`Smallworks’ Notice to Court Order
`
`
`
`Page 1
`
`
`
`Case 3:15-cv-00823-VLB Document 46 Filed 12/21/16 Page 2 of 4
`
`cancelled, certain claims may be amended, and the meaning of certain claim terms (some
`
`of which may be common to other asserted patents) may change. If the case is not stayed
`
`pending completion of the inter partes review, the Court would spend a great deal of time
`
`and effort analyzing and construing the claims, which would likely be cancelled, amended
`
`or changed in the proceeding before the patent office. As a result, staying the case in
`
`favor of the pending IPR would preserve judicial resources and avoid the wasting of time,
`
`money and effort by all parties.
`
`
`
`Additionally, prior to this action being filed by Lego, SmallWork’s intellectual
`
`property holding company Pono Paani, Inc. (“Pono Paani”) sued Lego System A/S
`
`(“Lego’s”) licensee Belkin International, Inc. (“Belkin”) for patent infringement in the
`
`Western District of Texas (Civil Action No. 1:14-cv-1089) (the “Austin Case”). Belkin is
`
`represented by the same counsel that represents Lego in this action. Belkin filed an ex
`
`parte reexamination proceeding against Pono Paani in the USPTO for Pono Paani’s
`
`asserted patent in the Austin Case. Belkin and its attorneys supported a stay of the Austin
`
`Case while the reexamination proceeded. The court in the Austin Case granted the stay.
`
`The same reasoning is applicable here.
`
`
`
`At this point in the case, the Court has not issued a Markman order. The most
`
`efficient process going forward would be for the Court to wait on the USPTO’s decision in
`
`the inter partes review and then, based on that decision, issue a Markman order. This
`
`will ensure that the Court does not issue a Markman order that will need to be redone.
`
`The parties can periodically update the Court as to the status of the inter partes review
`
`so that the Court can evaluate whether or not the stay should be lifted at any point.
`
`Smallworks’ Notice to Court Order
`
`
`
`Page 2
`
`
`
`Case 3:15-cv-00823-VLB Document 46 Filed 12/21/16 Page 3 of 4
`
`
`
`In the event that the Court does not grant the stay, SmallWorks requests, in the
`
`alternative, that the Court amend the current scheduling order. Markman briefing was
`
`completed by the parties in April of 2016. The Court has not issued a Markman order
`
`and has not scheduled a Markman hearing. Expert and fact discovery is set to close on
`
`January 27, 2017, with dispositive motions due on March 3, 2017. See Dkt. # 22. In
`
`paragraphs 6 and 7 of the Rule 26(f) Report (Dkt. #21), the parties agreed that initial
`
`expert reports are due sixty (60) days after the Court issues its Markman order, response
`
`reports due thirty (30) days after that, and reply reports due thirty (30) days after that.
`
`Under the current schedule, fact and expert discovery will close well before the initial
`
`expert reports are even due. Therefore, if the Court does not stay this action, SmallWorks
`
`requests that the Court extend the fact and expert discovery deadlines to give the Court
`
`time to issue a Markman order, and time for the parties to complete expert reports and
`
`finish fact and expert discovery. Counsel for SmallWorks has conferenced with counsel
`
`for Lego and both parties agree that the schedule should be amended if the Court does
`
`not stay this action.
`
`
`
`
`
`DATED: December 21, 2016
`
`
`Respectfully Submitted,
`
`By: /s/ Ryan T. Beard__________
`
`
`
`Eric B. Meyertons
` emeyertons@intprop.com
`Dwayne Goetzel
` dgoetzel@intprop.com
`Ryan T. Beard
` rbeard@intprop.com
`
`
`
`
`
`
`
`
`Smallworks’ Notice to Court Order
`
`
`
`Page 3
`
`
`
`Case 3:15-cv-00823-VLB Document 46 Filed 12/21/16 Page 4 of 4
`
`
`
`
`
`MEYERTONS, HOOD, KIVLIN,
`
` KOWERT & GOETZEL, P.C.
`1120 South Capital of Texas Hwy.
`Building 2, Suite 300
`
`Austin, Texas 78746
`(512) 853-8800 (telephone)
`(512) 853-8801 (facsimile)
`
`Stephen P. McNamara
`smcnamara@ssjr.com
`ST. ONGE STEWARD JOHNSTON & REENS LLC
`986 Bedford Street
`Stamford, Connecticut 06905-5619
`Telephone: (203) 541-4508
`
`Attorneys for Defendant/Counterclaim-Plaintiff
`
`
`
`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that on December 21, 2016, I electronically filed the foregoing pleading
`with the clerk of Court using the electronic case filing system of the Court.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Ryan T. Beard_____________________
`Ryan T. Beard
`
`Smallworks’ Notice to Court Order
`
`
`
`Page 4
`
`