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