Case 3:19-cv-02471-WHO Document 49 Filed 12/31/19 Page 1 of 7
`
`James R. Batchelder (CSB # 136347)
`Mark D. Rowland (CSB # 157862)
`Andrew T. Radsch (CSB # 303665)
`ROPES & GRAY LLP
`1900 University Ave., Sixth Floor
`East Palo Alto, CA 94303-2284
`Tel: (650) 617-4000
`Fax: (650) 617-4090
`james.batchelder@ropesgray.com
`mark.rowland@ropesgray.com
`andrew.radsch@ropesgray.com
`
`Attorneys for Plaintiff and Counter-Defendant
`PALO ALTO NETWORKS, INC.
`
`Brian A. E. Smith (SBN 188147)
`Alden KW Lee (SBN 257973)
`Jeffrey D. Chen (SBN 267837)
`Joseph J. Fraresso (SBN 289228)
`BARTKO ZANKEL BUNZEL & MILLER
`One Embarcadero Center, Suite 800
`San Francisco, California 94111
`Tel: (415) 956-1900
`Email: bsmith@bzbm.com
`Email: alee@bzbm.com
`Email: jchen@bzbm.com
`Email: jfraresso@bzbm.com
`
`Counsel for Defendant and
`Counterclaimant
`PACKET INTELLIGENCE LLC
`
`[Additional counsel listed on signature
`page]
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`PALO ALTO NETWORKS, INC.,
`
`Case No. 3:19-cv-02471-WHO
`
`Plaintiff and Counter-Defendant,
`
`v.
`
`PACKET INTELLIGENCE LLC
`
`Defendant and Counterclaimant.
`
`JOINT SUBSEQUENT CASE
`MANAGEMENT STATEMENT
`
`Date: January 7, 2020
`Time: 2:00pm
`Place: Courtroom 2, 17th Floor
`Judge: Honorable William H. Orrick III
`
` JOINT SUBSEQUENT CASE MANAGEMENT STATEMENT
`
`
`
`CASE NO. 3:19-CV-02471-WHO
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`Juniper Exhibit 1088
`Juniper Networks, Inc. v. Packet Intelligence LLC
`Page 00001
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`Case 3:19-cv-02471-WHO Document 49 Filed 12/31/19 Page 2 of 7
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`Pursuant to Civil L.R. 16-9(d), Plaintiff and Counter-Defendant Palo Alto Networks, Inc.
`(“Palo Alto Networks”) and Defendant and Counterclaimant Packet Intelligence LLC (“Packet
`Intelligence”) (collectively, the “Parties”), submit this Joint Subsequent Case Management
`Conference Statement in advance of the January 7, 2020 Case Management Conference in this
`matter.
`1. Progress or Changes Since Last Joint Case Management Conference Statement
`(Dkt. 27), Filed August 13, 2019
`
`Discovery
`Discovery is in early stages. The parties have exchanged initial written discovery requests
`and have produced some documents. The Parties have also exchanged contentions pursuant to
`Patent L.R. 3, with the exception of Palo Alto Networks’ Patent L.R. 3-9 Responsive Damages
`Contentions, which are due January 8, 2020. No fact depositions have been noticed or taken, and
`no third-party discovery has been taken.
`Claim Construction
`The parties have exchanged their respective claim construction positions and filed a Joint
`Claim Construction and Prehearing Statement. No party has noticed or taken a deposition in
`connection with claim construction. Claim construction briefing has not yet begun.
`Inter Partes Review Proceedings
`Palo Alto Networks’ position:
`Palo Alto Networks expects to file petitions for inter partes review (“IPR”) against all of
`the patents at issue here. The petitions will include all of the claims that Packet Intelligence has
`asserted against Palo Alto Networks. Palo Alto Networks expects institution decisions by about
`July or early August 2020. Those IPR petitions and resultant proceedings may resolve this suit
`completely, or at least significantly simplify the issues for this Court to address.
`Packet Intelligence’s position:
`Palo Alto Network’s statement that it expects to file petitions for inter partes review
`should have no bearing on this CMC conference or the schedule going forward in this case. How
`can Palo Alto Networks make any representation to the Court about the timing of a potential
`
`
`-1-
`
`JOINT SUBSEQUENT CASE MANAGEMENT STATEMENT
`
`
`
`CASE NO. 3:19-CV-02471-WHO
`
`Page 00002
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`Case 3:19-cv-02471-WHO Document 49 Filed 12/31/19 Page 3 of 7
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`institution decision occuring with respect to a non-existent IPR petition? Palo Alto Networks’
`statement that any issues in this case could be simplified or resolved by such an IPR are purely
`speculative and should be disregarded. Palo Alto Networks has been on notice of Packet
`Intelligence’s infringement allegations since at least January 18, 2019 when Packet Intelligence
`sent Palo Alto Networks a notice letter to that effect. Rather than seeking to engage the patent
`office in this matter, Palo Alto Networks, instead, filed this litigation as a declaratory judgment
`action asking this Court to resolve the disputed issues between the parties. Nearly a year after
`learning of Packet Intelligence’s allegations, Palo Alto Networks should not be allowed to derail
`the very litigation it filed in this Court.
`
`Palo Alto Networks’ response:
`Palo Alto Networks does not believe it necessary to address the exact nature of Packet
`Intelligence’s “notice letter” in this pleading. It notes, however, that the letter did not contain a
`complete listing of asserted claims or a disclosure of infringement theories. Palo Alto Networks
`first learned of the claims Packet Intelligence is asserting on September 3, 2019 and served
`invalidity contentions on October 18, 2019.
`Related Cases
`On August 13, 2019, Packet Intelligence filed suit against Juniper, asserting the same
`patents at issue in this suit. See Packet Intelligence LLC vs. Juniper Networks, Inc., Case No.
`3:19-cv-04741-WHO (the “Juniper Suit”).1 On August 14, 2019, Packet Intelligence moved this
`Court to relate the Juniper Suit to this suit, noting that both cases involved “infringement of the
`same claims of the Patents-in-Suit.” Dkt. 28 at 1.2 The Court granted that motion on August 21,
`2019. Dkt. 33.
`
`
`1 The Initial Case Management Conference in the Juniper Suit also is scheduled for
`January 7, 2019. Based on the Patent Local Rules, a claim construction hearing in the Juniper
`Suit, addressing the same claims asserted in this suit, is expected to occur in approximately late
`July 2020.
`2 The asserted patents are U.S. Patent No. 6,651,099 (“’099 patent”); U.S. Patent No.
`6,665,725 (“’725 patent”); U.S. Patent No. 6,771,646 (“’646 patent”); U.S. Patent No. 6,839,751
`(“’751 patent”); and U.S. Patent No. 6,954,789 (“’789 patent”) (collectively, the “Asserted
`Patents”).
`
`-2-
`
`JOINT SUBSEQUENT CASE MANAGEMENT STATEMENT
`
`CASE NO. 3:19-CV-02471-WHO
`
`
`
`Page 00003
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`Case 3:19-cv-02471-WHO Document 49 Filed 12/31/19 Page 4 of 7
`
`At the time of the last Case Management Conference, there were two cases pending in
`the Eastern District of Texas in which Packet Intelligence was asserting the Asserted Patents
`against other defendants. See Dkt. 27 at 7. Each of those suits has been dismissed due to
`settlements. In addition, the petitions for inter partes review (“IPR”) filed by one of those
`defendants, Nokia, see id., were withdrawn due to settlement prior to the filing of Patent Owner
`Preliminary Responses by Packet Intelligence or the issuance of institution decisions on those
`petitions.
`Still pending at the Federal Circuit Court of Appeals is Packet Intelligence LLC v.
`NetScout Systems, Inc., Case No. 19-2041, docketed on June 12, 2019. That appeal stems from
`prior litigation in the Eastern District of Texas involving the same Asserted Patents. Among the
`issues the Federal Circuit has been asked to address are the validity and patentability of claims
`19 and 20 of the ’789 patent, claims 10 and 17 of the ’725 patent, and claims 1 and 5 of the ’751
`patent—each of which Packet Intelligence has asserted against Palo Alto Networks. Briefing is
`complete and oral argument is to be scheduled.
`2.
`Proposal for the Remainder of the Case Development Process
`Palo Alto Networks’ position:
`This case and the Juniper Suit remain in early stages. Palo Alto Networks submits that the
`schedule in this case should be modified to align with the schedule that the Court enters in the
`Juniper Suit, including with respect to claim construction proceedings. Because it is now clear
`that there is significant overlap between the two suits, including with respect to asserted claims,
`aligning schedules will enhance judicial and party economy. Packet Intelligence itself has
`contended there is significant overlap between this suit and the Juniper Suit:
`The First Suit [this suit] and Second Suit [Juniper Suit] concern
`substantially the same parties, property, transaction or event as
`defined by Civil L.R. 3-12(a). Specifically, the cases involve the
`same patent owner, the same Patents-in-Suit, and infringement of
`the same claims of the Patents-in-Suit. . . . [¶]
`
`
`-3-
`
`JOINT SUBSEQUENT CASE MANAGEMENT STATEMENT
`
`
`
`CASE NO. 3:19-CV-02471-WHO
`
`Page 00004
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`Case 3:19-cv-02471-WHO Document 49 Filed 12/31/19 Page 5 of 7
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`The issues that arise out of the litigation will contain, at a
`minimum, sufficient overlap to create duplication of effort, for
`example, in construing the asserted claims.
`Dkt. 28 at 1. Accordingly, Palo Alto Networks submits that the schedule in this
`case should be adjusted to align with the schedule entered in the Juniper Suit.
`Packet Intelligence’s Position:
`Packet Intelligence requests that the Court keep this litigation on its current schedule
`which was jointly proposed by the parties, including the Markman hearing set to go forward on
`March 9, 2020. While Packet Intelligence did initially request that the Court set a joint Markman
`hearing in both this and the Juniper Networks cases, this request was made with the
`understanding that the case against Juniper Networks could move along quickly enough such that
`there would not be a significant delay in the current case. Given the date of the first CMC
`conference in the Juniper Networks case and the timeframes set forth in the Patent Local Rules,
`Juniper Networks has proposed a schedule in which the Markman hearing would not occur until
`about July 28, 2020, which is about 4.5 months after the Markman hearing currently set in this
`case. See Case No. 3:19-cv-04741-WHO, at Dkt. 31.
`
`Packet Intelligence does not believe that the schedule in the present case should be pushed
`back such a significant period of time. If the Court determines that a joint Markman hearing
`should be held in both cases, then Packet Intelligence proposes that the joint Markman hearing be
`set on or around May 8, 2020. In the Joint CMC Statement in the Juniper Networks case, Packet
`Intelligence set forth a claim construction disclosure and briefing schedule that would
`accommodate all parties and the suggested May 8th date for a joint Markman hearing. Id.
`In this Joint CMC Statement, Palo Alto Networks informs the Court for the first time that
`it might file an IPR petition and requests that the Court extend the current schedule significantly.
`It is clear that Palo Alto Networks now seeks to push back the schedule to which it agreed only
`for the purposes of delay, and perhaps to file a petition for IPR and seek a stay of this litigation
`which it originally filed in this District.
`3.
`Parties’ Views on ADR
`
`
`-4-
`
`JOINT SUBSEQUENT CASE MANAGEMENT STATEMENT
`
`
`
`CASE NO. 3:19-CV-02471-WHO
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`Page 00005
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`Case 3:19-cv-02471-WHO Document 49 Filed 12/31/19 Page 6 of 7
`
`As noted in the Parties’ initial Joint Case Management Conference Statement, the Parties
`had previously engaged in settlement discussions. Since that time, the parties have had limited
`additional discussions, which have not been fruitful. The parties have not yet conducted
`mediation or other ADR proceeding. The Parties, having previously agreed to a settlement
`conference before a Magistrate Judge, respectfully request referral to a Magistrate Judge at an
`appropriate time.
`
`
`Dated: December 31, 2019
`
`By: /s/ Andrew T. Radsch
`
`
`James R. Batchelder (CSB # 136347)
`Mark D. Rowland (CSB # 157862)
`Andrew T. Radsch (CSB # 303665)
`ROPES & GRAY LLP
`1900 University Ave. Sixth Floor
`East Palo Alto, CA 94303-2284
`Tel: (650) 617-4000
`Fax: (650) 617-4090
`james.batchelder@ropesgray.com
`jark.rowland@ropesgray.com
`andrew.radsch@ropesgray.com
`
`Attorneys for Plaintiff and Counter-Defendant
`PALO ALTO NETWORKS, INC.
`
`
`
`Dated: December 31, 2019
`
`By: /s/ Corby R. Vowell
`
`Brian A. E. Smith (SBN 188147)
`Alden KW Lee (SBN 257973)
`Jeffrey D. Chen (SBN 267837)
`Joseph J. Fraresso (SBN 289228)
`BARTKO ZANKEL BUNZEL & MILLER
`One Embarcadero Center, Suite 800
`San Francisco, California 94111
`T: 415-956-1900
`Email: bsmith@bzbm.com
`Email: alee@bzbm.com
`Email: jchen@bzbm.com
`Email: jfraresso@bzbm.com
`
`Jonathan T. Suder (Pro Hac Vice)
`Corby R. Vowell (Pro Hac Vice)
`Dave R. Gunter (Pro Hac Vice)
`FRIEDMAN, SUDER & COOKE
`604 East 4th Street, Suite 200
`Fort Worth, TX 76102
`T: 817-334-0400
`F: 817-334-0401
`jts@fsclaw.com
`vowell@fsclaw.com
`gunter@fsclaw.com
`
`Michael F. Heim (Pro Hac Vice)
`Robert Allan Bullwinkel (Pro Hac Vice)
`Christopher M. First (Pro Hac Vice)
`HEIM, PAYNE & CHORUSH, LLP
`1111 Bagby Street, Suite 2100
`Houston, Texas 77002
`T: 713-221-2000
`
`
`-5-
`
`JOINT SUBSEQUENT CASE MANAGEMENT STATEMENT
`
`
`
`CASE NO. 3:19-CV-02471-WHO
`
`Page 00006
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`Case 3:19-cv-02471-WHO Document 49 Filed 12/31/19 Page 7 of 7
`
`F: 713-221-2021
`mheim@hpcllp.com
`abullwinkel@hpcllp.com
`cfirst@hpcllp.com
`
`Counsel for Defendant and
`Counterclaimant
`PACKET INTELLIGENCE LLC
`
`
`
`ATTESTATION
`I, Andrew T. Radsch, am the ECF user whose identification and password are being used to
`file this Joint Subsequent Case Management Statement. In compliance with Civil L.R. 5-1(i)(3), I
`hereby attest that all signatories to this document have concurred in this filing.
`DATED: December 31, 2019
`
`/s/ Andrew T. Radsch
`Andrew T. Radsch (CSB # 303665)
`
`
`
`
`-6-
`
`JOINT SUBSEQUENT CASE MANAGEMENT STATEMENT
`
`
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`CASE NO. 3:19-CV-02471-WHO
`
`Page 00007
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