Case 5:18-cv-00990-C Document 35 Filed 05/06/19 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF OKLAHOMA
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`MILLER MENDEL, INC., a Washington
`Corporation; TYLER MILLER, an Oregon
`State resident,
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`Plaintiff,
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`vs.
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`THE CITY OF OKLAHOMA CITY, a
`municipal corporation,
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`Defendant.
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`Case No. CIV-18-990-C
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`JOINT STATUS REPORT AND DISCOVERY PLAN
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`May 9, 2019
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`Date of Conference:
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`Appearing for Plaintiff: Kurt M. Rylander, Rylander & Associates PC (via telephone),
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`and Todd A. Nelson, GableGotwals
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`Appearing for Defendant: Douglas J. Sorocco and Evan W. Talley, Dunlap Codding,
`P.C.
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`1.
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`Jury Trial Demanded  - Non-Jury Trial □
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`BRIEF PRELIMINARY STATEMENT. State briefly and in ordinary language
`the facts and positions of the parties to inform the judge of the general nature of the
`case.
`
`
`system
`eSOPH
`its
`licenses
`through
`sells
`and
`Plaintiff makes
`(http://millermendel.com/index.php/page/esoph). The eSOPH system is protected by,
`among other things, U.S. Patent 10,043,188 for “Background Investigation Management
`Service,” (the ‘188 Patent). Plaintiff is suing the City of Oklahoma for infringement of the
`‘188 Patent. The City of Oklahoma uses a system provided under contract by competitor
`Guardian Alliance Technologies (https://guardianalliancetechnologies.com/), the Guardian
`Alliance Technologies investigative software platform. Plaintiff contends this constitutes
`infringement of the ‘188 Patent. Plaintiff is seeking damages and other relief as set forth in
`the Amended Complaint.
`Defendant contends its use of the Guardian Alliance Technologies’ investigative software
`platform does not infringe the ‘188 Patent because such use does not practice each and
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`Tyler Miller Exhibit 2018
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`Page 1 of 7
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`Case 5:18-cv-00990-C Document 35 Filed 05/06/19 Page 2 of 7
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`every elements of any claim of the ‘188 Patent. In addition to its non-infringement position,
`Defendant contends the ‘188 Patent is invalid under at least 35 U.S.C. §§ 101, 102, 103,
`and 112.
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`2.
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`JURISDICTION. State the basis on which the jurisdiction of the Court is invoked
`and any presently known objections.
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`This is a patent infringement case against the City of Oklahoma. It is exclusive Federal
`jurisdiction. Jurisdiction and venue are properly invoked under 28 U.S.C. §§ 1331, 1338
`and 1400.
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`3.
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`STIPULATED FACTS. List stipulations as to all facts that are not disputed,
`including jurisdictional facts.
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`CONTENTIONS AND CLAIMS FOR DAMAGES OR OTHER RELIEF
`SOUGHT.
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`Plaintiff Tyler Miller is the sole and exclusive owner of valid
`Plaintiff:
`a.
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`and enforceable U.S. Patent 10,043,188, and is licensed exclusively to Miller Mendel, Inc.
`Defendant uses a system provided by Guardian Alliance Technologies. Plaintiff contends
`this constitutes infringement the ‘188 Patent, directly and/or contributorily and/or by
`inducement, literally and/or equivalently. Plaintiff contends Defendant is liable for actual
`damages but no less than a reasonable royalty. Plaintiff contends the infringement to be
`2
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`1.
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`2.
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`3.
`4.
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`Title in the ‘188 Patent is owned by Plaintiff, Tyler Miller and Miller Mendel,
`Inc. is the exclusive licensee.
`OKC, through its employees and agents, uses software provided under
`contract by MMI’s competitor Guardian Alliance Technologies, the
`Guardian Alliance Technologies investigative software platform (the
`“Guardian Alliance Software”).
`OKC’s use of the Guardian Alliance Software occurs in, at least, Oklahoma.
`The Guardian Alliance Software was obtained by OKC as a result of OKC’s
`November 2017 Request for Proposal 181003 for a Police Applicant
`Tracking Software for the Oklahoma City Police Department.
`5. MMI submitted its eSOPH product in response to the November 2017 RFP
`181003, which was evaluated by OKC.
`OKC had notice of the ‘188 Patent at least as early as the filing of the original
`Complaint in this case.
`OKC has not ceased use of the Guardian Alliance Software.
`The application date for the ‘188 Patent is May 26, 2015.
`The '188 Patent issued on August 7, 2018.
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`6.
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`7.
`8.
`9.
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`4.
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`Tyler Miller Exhibit 2018
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`Page 2 of 7
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`willful in that Plaintiff believes Defendant knew or should have known of Plaintiff’s patent
`rights, thus giving rise to exceptional case entitlement.
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`Defendant: Defendant OKC came to use an investigative software platform
`b.
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`provided by Guardian Alliance Technologies in November 2017 through Request for
`Proposal No. 181003. The ‘188 Patent had not issued at the time Defendant began using
`the Guardian Alliance Technologies platform. Defendant contends its use of the Guardian
`Alliance Technologies’ investigative software platform does not infringe the ‘188 Patent
`directly, contributorily, or by inducement, either literally or equivalently, because such use
`does not practice each and every elements of any claim of the ‘188 Patent. In addition to
`its non-infringement position, Defendant contends the ‘188 Patent is invalid under at least
`35 U.S.C. §§ 101, 102, 103, and 112.
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`5.
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`APPLICABILITY OF FED. R. CIV. P. 5.1 AND COMPLIANCE.
`Do any of the claims or defenses draw into question the constitutionality of a federal
`or state statute where notice is required under 28 U.S.C. § 2403 or Fed. R. Civ. P.
`5.1?
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`□ Yes X No
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`6. MOTIONS PENDING AND/OR ANTICIPATED (include date of filing, relief
`requested, and date responsive brief to be filed).
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`No motions are pending at this time. Plaintiffs anticipate a motion for summary or partial
`summary judgment. Defendant anticipates a motion for judgment on the pleadings, a
`motion for summary judgment or partial summary judgment, and a motion to stay the
`proceedings during the pendency following the filing of a petition for inter partes review
`of the ‘188 Patent in the United States Patent and Trademark Office.
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`7.
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`COMPLIANCE WITH RULE 26(a)(1). Have the initial disclosures required by
`Fed. R. Civ. P. 26(a)(1) been made? □ Yes X No
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`The parties have agreed to exchange initial disclosures on May 14, 2019.
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`8.
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`PLAN FOR DISCOVERY.
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`A.
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`The discovery planning conference (Fed. R. Civ. P. 26(f)) was held on April
`30, 2019.
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`B.
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`The parties anticipate that discovery should be completed within 18 months.
`See No. 14 below for explanation and proposed specialized schedule.
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`3
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`Tyler Miller Exhibit 2018
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`Case 5:18-cv-00990-C Document 35 Filed 05/06/19 Page 4 of 7
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`
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`C.
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`In the event ADR is ordered or agreed to, what is the minimum amount of
`time necessary to complete necessary discovery prior to the ADR session?
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`Plaintiffs’ position is that ADR will be appropriate following damages discovery.
`Defendant’s position is that ADR may be appropriate prior to damages discovery.
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`D.
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`Have the parties discussed issues relating to disclosure or discovery of
`electronically stored information, including the form or forms in which it
`should be produced, pursuant to Fed. R. Civ. P. 26(f)(3)(C)?
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`E.
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`X Yes __No
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`Yes. The parties agree that issues concerning ESI will be addressed in relation to the
`parties’ respective discovery requests and responses thereto, and the parties will work in
`good faith to produce ESI in a form compatible with the other party’s document review
`system. The parties anticipate filing a proposed stipulated ESI order.
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`Have the parties discussed issues relating to claims of privilege or of
`protection as trial-preparation material pursuant to Fed. R. Civ. P.
`26(f)(3)(D)?
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`The parties have agreed that, to the extent necessary, the parties will provide privilege logs
`of responsive communications and information created prior to the initiation of the present
`suit. Plaintiff asserts that attorney-client communications with patent prosecution counsel,
`and attorney work product of patent prosecution counsel which was not filed with the
`USPTO, are covered by privilege.
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` X
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` Yes __No
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`F.
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`To the extent the parties have made any agreements pursuant to Fed. R. Civ.
`P. 26(f)(3)(D) and Fed. R. Civ. P. 502(e) regarding a procedure to assert
`claims of privilege/protection after production and are requesting that the
`court include such agreement in an order, please set forth the agreement in
`detail below and submit a proposed order adopting the same.
`__________________________________________________________
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`Identify any other discovery issues which should be addressed at the
`scheduling conference, including any subjects of discovery, limitations on
`discovery, protective orders needed, or other elements (Fed. R. Civ. P. 26(f))
`which should be included in a particularized discovery plan.
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`Tyler Miller Exhibit 2018
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`Case 5:18-cv-00990-C Document 35 Filed 05/06/19 Page 5 of 7
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`ESTIMATED TRIAL TIME: 4-5 days
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`POSSIBILITY OF SETTLEMENT: □ Good
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`X Fair □ Poor
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`SETTLEMENT AND ADR PROCEDURES:
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`In addition to the matters addressed in No. 14 below, the parties anticipate filing a joint
`motion for protective order.
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`9.
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`10. BIFURCATION REQUESTED: □ Yes X No
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`11.
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`12.
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`13.
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`14.
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`□ Court-Ordered Mediation subject to LCvR 16.3
`□ Judicial Settlement Conference
`□ Other _____________________________________________________
` None - the parties do not request ADR at this time.
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`Compliance with LCvR 16.1(a)(1) - ADR discussion: X Yes □ No
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`The parties request that this case be referred to the following ADR process:
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`A.
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`B.
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` X
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`Parties consent to trial by Magistrate Judge? □ Yes X No
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`Type of Scheduling Order Requested. □ Standard - X Specialized (If a specialized
`scheduling order is requested, counsel should include a statement of reasons and
`proposal.)
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`The Parties believe that a specialized order should be entered which includes the following
`milestones, among others.
` Infringement, non-infringement, and invalidity contentions, and responses thereto
` Identification of claim terms to be construed, exchange of proposed constructions,
`and claim construction briefing schedule
` Claim Construction Hearing Date
` Claim Construction Discovery Deadline
` Claim Construction Expert Reports (primary and rebuttal) Deadlines
` Factual Discovery Deadline
` Expert Reports (primary and rebuttal) Deadlines
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`The parties attach a Proposed Scheduling Order which contains the parties’ respective
`proposals.
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`Case 5:18-cv-00990-C Document 35 Filed 05/06/19 Page 6 of 7
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`Submitted this 6th day of May, 2019
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`In addition to this being a patent case between parties in different states, and, the related
`discovery and scheduling matters, it will likely require a subpoena and detailed review of
`the source code in the possession of a third party in California, namely, Guardian Alliance
`Technologies. This will also likely require examination and review by a retained expert
`and will require additional time.
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`s/ Todd A. Nelson
`Todd A. Nelson, OBA #15317
`Paul E. Rossler, OBA #21796
`GABLEGOTWALS
`1100 ONEOK Plaza
`100 West Fifth Street
`Tulsa, OK 74103
`Telephone:
`(918) 595-4800
`Facsimile:
`(918) 595-4990
`E-mail: tnelson@gablelaw.com
`prossler@gablelaw.com
`
`Admitted Pro Hac Vice:
`Kurt M. Rylander, Bar No. 27819
`RYLANDER & ASSOCIATES PC
`406 West 12th Street
`Vancouver, WA 98660
`Telephone: (360) 750-9931
`Facsimile:
`(360) 397-0473
`E-mail: rylander@rylanderlaw.com
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`Attorneys for Plaintiffs
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`s/ Evan W. Talley
`(Signed with permission)
`Douglas J. Sorocco, OBA # 17347
`Evan W. Talley, OBA # 22923
`DUNLAP CODDING PC
`609 W. Sheridan Avenue
`Oklahoma City, OK 73102
`Telephone: (405) 607-8600
`E-mail: dsorocco@dunlapcodding.com
`E-mail: etalley@dunlapcodding.com
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`Attorneys for Defendant
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`Tyler Miller Exhibit 2018
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