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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`*
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`* *
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` CIVIL ACTION NO. W-19-CV-600
`*
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`*
`*
`
`March 5, 2020
`
`GREEN MOUNTAIN GLASS, LLC
`AND CULCHROME, LLC
`
`VS.
`
`
`OWENS ILLINOIS, INC., ET AL
`
`BEFORE THE HONORABLE ALAN D ALBRIGHT
`TELEPHONIC SCHEDULING CONFERENCE
`
`
`APPEARANCES:
`
`For the Plaintiffs:
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`Charles L. Ainsworth, Esq.
`Parker, Bunt & Ainsworth, P.C.
`100 East Ferguson, Suite 418
`Tyler, TX 75702
`
`Mathew R. Berry, Esq.
`John E. Schiltz, Esq.
`Susman Godfrey, L.L.P.
`1201 Third Ave., Suite 3800
`Seattle, WA 98101
`
`Justin A. Nelson, Esq.
`Susman Godfrey LLP
`1000 Louisiana St., Suite 5100
`Houston, TX 77002
`
`Adam M. Greenfield, Esq.
`Maximilian A. Grant, Esq.
`Latham & Watkins LLP
`555 11th Street NW, Suite 1000
`Washington, DC 20004
`
`Brian Christopher Nash, Esq.
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701-3797
`
`Kristie M. Davis, CRR, RMR
`PO Box 20994
`Waco, Texas 76702-0994
`(254) 340-6114
`
`Proceedings recorded by mechanical stenography, transcript
`produced by computer-aided transcription.
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`For the Defendants:
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`Court Reporter:
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`O-I Glass, Inc.
`Exhibit 1064
`Page 001
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`*
`
`* *
`
` CIVIL ACTION NO. W-19-CV-600
`*
`
`*
`*
`
`March 5, 2020
`
`GREEN MOUNTAIN GLASS, LLC
`AND CULCHROME, LLC
`
`VS.
`
`
`OWENS ILLINOIS, INC., ET AL
`
`BEFORE THE HONORABLE ALAN D ALBRIGHT
`TELEPHONIC SCHEDULING CONFERENCE
`
`
`APPEARANCES:
`
`For the Plaintiffs:
`
`Charles L. Ainsworth, Esq.
`Parker, Bunt & Ainsworth, P.C.
`100 East Ferguson, Suite 418
`Tyler, TX 75702
`
`Mathew R. Berry, Esq.
`John E. Schiltz, Esq.
`Susman Godfrey, L.L.P.
`1201 Third Ave., Suite 3800
`Seattle, WA 98101
`
`Justin A. Nelson, Esq.
`Susman Godfrey LLP
`1000 Louisiana St., Suite 5100
`Houston, TX 77002
`
`Adam M. Greenfield, Esq.
`Maximilian A. Grant, Esq.
`Latham & Watkins LLP
`555 11th Street NW, Suite 1000
`Washington, DC 20004
`
`Brian Christopher Nash, Esq.
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701-3797
`
`Kristie M. Davis, CRR, RMR
`PO Box 20994
`Waco, Texas 76702-0994
`(254) 340-6114
`
`Proceedings recorded by mechanical stenography, transcript
`produced by computer-aided transcription.
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`For the Defendants:
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`Court Reporter:
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`O-I Glass, Inc.
`Exhibit 1064
`Page 001
`
`
`
`2
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`(March 5, 2020, 3:01 p.m.)
`
`MS. MILES: Telephonic scheduling conference in Civil
`
`Action W-19-CV-600, styled Green Mountain Glass, LLC and
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`Culchrome, LLC vs. Owens Illinois, Incorporated, Owens Brockway
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`Glass Container, Incorporated.
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`THE COURT: If I could have the lawyers who are going to
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`be speaking on behalf of the parties announce who they are on
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`the record so I know who they are.
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`MR. NELSON: Good afternoon, Your Honor. This is Justin
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`Nelson from Susman Godfrey, and I'm joined by Charley Ainsworth
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`and by Matt Berry and John Schiltz of Susman Godfrey.
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`MR. NASH: Good afternoon, Your Honor. This is Brian Nash
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`of Pillsbury Winthrop Shaw Pittman. I'm joined by Adam
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`Greenfield and Max Grant of Latham Watkins, and I believe they
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`will be addressing most of the issues today on the phone.
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`THE COURT: Well, what a great day when I can have Charley
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`Ainsworth and Brian Nash at the same time to get to share a
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`little time with. It doesn't get better than that for me.
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`Josh tells me that he's chatted with you guys and that you
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`think you've got a date that's acceptable for the Markman. Let
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`me -- I'll ask Mr. -- I don't care who speaks. Let me hear
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`from Charley Ainsworth or whoever wants to to speak on behalf
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`of the plaintiff.
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`MR. AINSWORTH: I think that's right, Your Honor. This is
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`Charley Ainsworth. I think we agreed on that date the last
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`O-I Glass, Inc.
`Exhibit 1064
`Page 002
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`time we talked.
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`THE COURT: Okay. And typically once that's worked out,
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`that's the hard part, the other dates seem to go from that.
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`Starting with the plaintiff, do you have any reason to think
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`that you guys won't be able to get the other dates filled in
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`without my help? And if you need my help, now's the time to
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`let me know.
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`MR. NELSON: No, Your Honor. I think I speak for
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`defendants on this. I think we're in good shape.
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`THE REPORTER: Who was that?
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`MR. NELSON: This is Justin Nelson.
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`THE REPORTER: Thank you.
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`THE COURT: Brian Nash can be tough to deal with. So you
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`guys keep him in line.
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`So is there anything else that we need to take up?
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`MR. GREENFIELD: Yes, Your Honor. This is Adam Greenfield
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`on behalf of the defendants.
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`THE COURT: Okay.
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`MR. GREENFIELD: And the one issue that we had raised was
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`claim limits. We believe that Green Mountain is asserting an
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`unreasonable number of claims. There's two asserted patents in
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`this case and a combined total of 57 claims. Green Mountain
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`took the same two patents to try on April 2017 asserting 12
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`claims total, and in their preliminary infringement contentions
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`in this case they've asserted 55 of the 57 claims, and we think
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`O-I Glass, Inc.
`Exhibit 1064
`Page 003
`
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`that's an unreasonable amount, and we'd propose that they limit
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`it to ten claims per patent now and five claims per patent
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`after claim construction. And we're of course open to a
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`reasonable limit on the number of prior art references which we
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`understand is a common trade-off.
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`THE COURT: Okay. Let me hear from the plaintiffs about
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`that.
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`MR. BERRY: Thank you, Your Honor. This is Matt Berry
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`with Susman Godfrey. And it's premature to narrow at this
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`point. We should wait until after invalidity contentions are
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`served and after the Court holds the Markman hearing. In fact,
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`that's exactly what the Court has in its default schedule is
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`there's a deadline of 39 weeks after the Markman hearing for
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`the parties to get together and meet and confer and discuss not
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`only narrowing the claims but also narrowing the prior art
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`references at issue, and for this case, Your Honor, there's no
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`reason to depart from that default schedule. Narrowing the
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`claims now is not going to reduce the amount of claim
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`construction work. In fact, as opposing counsel noted, in the
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`prior litigation Green Mountain asserted the same two patents.
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`We also asserted the same number of claims during claim
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`constructions during that period, and the parties' total only
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`identified three terms for construction in that case. And
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`that's because the dependent claims for these patents do not
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`add additional terms that warrant construction, and we think
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`O-I Glass, Inc.
`Exhibit 1064
`Page 004
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`the same thing to be true here. The parties should not have a
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`lot of terms that need construction.
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`And the other point, too, is that we have the benefit of
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`that Markman order from the other case. In fact, that order
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`has been affirmed by the Federal Circuit. So there's simply no
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`reason to require a narrowing of claims at this point which is
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`more than a year ahead of what's scheduled in the Court's
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`default scheduling for doing the same thing. Thank you.
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`THE COURT: So let me tell you how I handled another case
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`this week that had the -- almost the exact same issue, only
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`didn't have -- they didn't have the benefit of a prior trial.
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`I am sympathetic to the defendants that that is an awful lot of
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`claims to assert, and so I get that. That being said, I'm also
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`not a big fan at this point in advance of a Markman starting to
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`come up with some kind of an arbitrary limit. So the deal that
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`I offered in the last case that I had, I started with the
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`plaintiff and said, if you want to keep the current schedule,
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`if you want to keep that number of claims, it might impact how
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`quickly I require the defendants to provide their invalidity
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`contentions, and I would be pretty cooperative with the
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`defendants and make sure that their rights were protected in
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`that regard, and that might impact and slow down a little bit
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`the ordinary procedural march that I have in my form order.
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`But I gave that plaintiff -- I gave the plaintiff that
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`opportunity. They declined to lower the number of claims. I
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`O-I Glass, Inc.
`Exhibit 1064
`Page 005
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`think they had 60 or 61, and so what I did in that case was we
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`backed up things a little bit in terms of the date for the
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`invalidity contentions and we backed up a little bit the date
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`of the Markman.
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`So I'll start with the plaintiff. If you all feel that
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`that's an appropriate number of claims, I'm reluctant to say
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`that that's not, but the consequence will probably be that I
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`will be sympathetic if defendants say they need some more time
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`to get invalidity contentions prepared. So --
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`MR. BERRY: Yes, Your Honor. This is Matt Berry. And
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`we're actually in luck with this case, Your Honor, because
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`defendants have already received an extra two months for their
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`invalidity contentions. We served our infringement contentions
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`before the last scheduling conference, and that's when the
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`bankruptcy issue arose, and because of that bankruptcy issue,
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`we had two months to get to this scheduling conference. So
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`they've already had our contentions for an extra two months in
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`this case.
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`THE COURT: Okay. Let me hear from the defendants.
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`MR. GREENFIELD: Thank you, Your Honor. This is Adam
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`Greenfield again. Although the plaintiff did serve its
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`infringement contentions before the stay, a stay was in place
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`for that time, and so that time shouldn't count against us. At
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`a minimum, the -- even assuming today's case management
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`conference, the Markman on calendar allows an extra month of
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`O-I Glass, Inc.
`Exhibit 1064
`Page 006
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`time anyways for, you know, some other cushion in the schedule,
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`whether it be invalidity contentions or otherwise.
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`THE COURT: Okay. So it sounds to me a little bit like
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`neither one of you answered my question directly, which is
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`fine. But it sounds to me, if I'm -- starting with the
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`plaintiff, if I'm interpreting what you said, you are -- you
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`still think it's a good idea to maintain the number of claims
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`that you are currently asserting; is that correct?
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`MR. BERRY: Yes, Your Honor. That's correct.
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`THE COURT: Okay. So now that that's being said, I'll ask
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`the defendants whether or not they need additional time for
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`invalidity contentions from what's currently being
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`contemplated, and if so, how much, and then I'll let the
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`plaintiff explain if they think that's too much. So I'm
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`tossing it back to defense counsel.
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`MR. GREENFIELD: Thank you, Your Honor. This is Adam
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`Greenfield again. Yes. We do think an additional time is
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`appropriate. There ought to be a cost to the plaintiff
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`asserting an unreasonable number of claims here, and --
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`THE COURT: You know, I don't -- wait. Wait. Wait. I
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`don't need argument about it being unreasonable. I just said
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`that I think it's okay. So I'm giving you an opportunity here
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`to tell me just how much time you think you need, and if you
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`give me a reasonable amount of time you think you need, then
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`we're going to be fine.
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`O-I Glass, Inc.
`Exhibit 1064
`Page 007
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`MR. GREENFIELD: Thank you, Your Honor. An additional two
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`months makes sense to us.
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`THE COURT: Okay. What would that do -- help me out here
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`before I hear from the plaintiff. What would that do with
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`respect -- would that still allow the Markman to go on the date
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`that you guys have indicated you'd like it to go?
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`MR. GREENFIELD: It would push the Markman back a bit.
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`THE COURT: And about -- and by how much? A month? A
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`couple weeks?
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`MR. GREENFIELD: It would push it back a month under your
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`default schedule, but honestly we'd be open to pushing the
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`Markman back two months, and then all the other corresponding
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`deadlines would follow from that.
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`THE COURT: Okay. And y'all may have said it and I just
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`didn't hear it. What is the date of the Markman -- currently
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`is the Markman set for?
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`MR. GREENFIELD: September 18th.
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`THE COURT: So we're looking at sometime in October
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`probably. So let me hear from the -- I'm thinking if we can do
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`it in October, that's when I would reschedule it for. Let me
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`hear from the plaintiff as to why they don't think that that --
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`if they don't think that that would be okay.
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`MR. BERRY: Your Honor, this is Matt Berry again, and let
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`me make a few points. The first one is that the parties
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`entered a stipulation regarding the bankruptcy date on
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`O-I Glass, Inc.
`Exhibit 1064
`Page 008
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`February 8th. So even if this case was stayed for a period,
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`since February 8th it is not. That means that the defendants
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`have already gotten another month, but there's also the fact of
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`that prior litigation. In that prior litigation the defendant
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`there filed an IPR in both of these patents. The PTAB denied
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`institution and denied motions for rehearing, and the jury in
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`that case found both patents valid. And, you know, the
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`defendants here have the benefit of the work already done by
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`the defendant in that case, which, again, counsel's again
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`giving them additional months of time. You know, if they
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`needed a few weeks, something that could work with our current
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`Markman date, I think that would be fine, but there's nothing
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`here that would justify such a long delay in this case.
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`THE COURT: Okay. I'm going to mute you all for just a
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`second.
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`Okay. This is Alan Albright. We're back on the record.
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`Having now the additional information, since these patents
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`have been through an IPR, I'm going to assume with good lawyers
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`who did their best to find the best argument they could to try
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`and invalidate the patent, I'm reluctant to think that much
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`additional time is necessary with regard to doing invalidity
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`contentions. That being said, that is a lot of claims, and so
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`we are going to find -- we're going to find a date that you
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`guys -- that's a little bit later than September 8th, but it
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`will be in very, very, very early October, probably not more
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`O-I Glass, Inc.
`Exhibit 1064
`Page 009
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`than about two weeks later. So that's what we're going to do
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`with -- at most the Markman will be moved back two weeks. If
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`you all want to adjust formally the other dates to accommodate
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`that two week move to give the defendants an additional two
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`weeks for invalidity and shift everything else back, that's
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`fine.
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`MR. GRANT: Your Honor, this is Max Grant. I think it's
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`completely consistent. Two weeks later is October 2nd. That
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`date is fine for the defendants. If we go one week more than
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`that, then there are conflicts, and I apologize. I certainly
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`don't want to inconvenience the Court, but I just want to make
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`clear October 2nd which is two weeks later is fine. If we
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`shift past that, then we'll have potential conflicts.
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`THE COURT: Okay. Is October 2nd a Friday?
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`MR. GRANT: Yes, sir.
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`THE COURT: Okay. It may be that we have to do it on
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`October 1st because we may have a conflict on the 2nd, but
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`it'll be on -- y'all should plan on it being on the 1st or 2nd,
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`and we'll get our ducks in a row and we'll let you know which
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`one it is, but it will be on either the 1st or 2nd.
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`MR. GRANT: Thank you, sir.
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`THE COURT: Okay. Anything else we need to take up?
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`MR. BERRY: Yes, Your Honor. This is Matt Berry. One
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`point we want to note is that plaintiffs will be seeking ESI
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`later on and we'll meet and confer with defendants to try and
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`O-I Glass, Inc.
`Exhibit 1064
`Page 010
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`agree on a proposal for search terms custodian. So we just
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`wanted to note that know.
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`THE COURT: I'm sorry. I just couldn't hear what you
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`said. If you would repeat it.
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`MR. BERRY: Yes. We're going to be seeking ESI later on
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`in the case once this -- once discovery commences, and we just
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`wanted to note now that we will meet and confer with the
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`defendants to try to arrive at an agreed procedure for current
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`custodian and wanted to note that now for the record.
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`THE COURT: Okay. If you need any involvement from the
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`Court on that, let me know. If we need to do something
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`specific to the case because of the time something might take
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`in advance of the Markman that would not be unfair to either
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`side, let us know that as well and we'll help out however we
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`can.
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`MR. BERRY: Thank you, Your Honor.
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`THE COURT: Anything else?
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`MR. GREENFIELD: No, Your Honor.
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`MR. BERRY: Not from plaintiffs, Your Honor.
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`THE COURT: Okay. Well, thank you all for being here. I
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`will see you guys in October, if not sooner. Have a great rest
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`of the day.
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`(Hearing adjourned at 3:20 p.m.)
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
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`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`O-I Glass, Inc.
`Exhibit 1064
`Page 011
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`UNITED STATES DISTRICT COURT )
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`WESTERN DISTRICT OF TEXAS
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`I, Kristie M. Davis, Official Court Reporter for the
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`United States District Court, Western District of Texas, do
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`certify that the foregoing is a correct transcript from the
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`record of proceedings in the above-entitled matter.
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`I certify that the transcript fees and format comply
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`with those prescribed by the Court and Judicial Conference of
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`the United States.
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`Certified to by me this 13th day of May 2020.
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`/s/ Kristie M. Davis
`KRISTIE M. DAVIS
`Official Court Reporter
`800 Franklin Avenue
`Waco, Texas 76701
`(254) 340-6114
`kmdaviscsr@yahoo.com
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`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
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`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
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`O-I Glass, Inc.
`Exhibit 1064
`Page 012
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