Case 2:20-cv-00283-JRG Document 166 Filed 10/12/21 Page 1 of 4 PageID #: 4380
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`JAPAN DISPLAY INC., PANASONIC
`LIQUID CRYSTAL DISPLAY CO., LTD.,
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`Plaintiffs,
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`v.
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`TIANMA MICROELECTRONICS CO.
`LTD.,
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`Defendant.
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`CIVIL ACTION NO. 2:20-CV-00283-JRG
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`ORDER
`Before the Court are Defendant Tianma Microelectronics Co. Ltd.’s (“Tianma”) Motion to
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`Limit Number of Asserted Claims (Dkt. No. 149) (the “Motion to Limit”) and Plaintiffs Japan
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`Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.’s (collectively, “JDI”) Motion to
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`Amend the First Amended Docket Control Order (Dkt. No. 156) (the “Motion to Amend”, together
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`with the Motion to Limit, the “Motions”). Having considered the Motions, the Court finds that
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`they should be GRANTED-AS-MODIFIED.
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`I.
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`Tianma’s Motion to Limit Number of Asserted Claims (Dkt. No. 149)
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`In the Motion to Limit, Tianma proposes the following schedule to narrow the asserted
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`claims and prior art references:
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`1. By October 8, 2021, seven days after the opening expert reports are due and the
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`close of fact discovery, Plaintiffs narrow their case to no more than ten claims
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`from each patent and not more than a total of thirty-two claims;
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`2. By October 11, 2021, Defendant narrows to no more than twelve prior art
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`references against each patent and not more than a total of forty references;
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`Tianma Exhibit 1024
`Tianma v. JDI, et al.
`Trial IPR2021-01028
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`Page 1 of 4
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`Case 2:20-cv-00283-JRG Document 166 Filed 10/12/21 Page 2 of 4 PageID #: 4381
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`3. By October 29, 2021, five days after close of expert discovery, Plaintiffs narrow
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`their case to no more than five claims from each patent and not more than a
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`total of sixteen claims, from among the thirty-two claims previously identified;
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`4. By November 2, 2021, Defendant narrows to no more than six asserted prior
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`art references per patent from among the twelve prior art references previously
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`identified for that particular patent and no more than a total of twenty
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`references.
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`(Dkt. No. 149 at 5). Tianma notes that JDI has asserted infringement of 135 claims from fifteen
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`patents throughout the litigation and asserts that the scope of the case at the current stage is
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`inconsistent with the principles represented by the Model Order Focusing Patent Claims and Prior
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`Art to Reduce Costs. (Id. at 1).
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`In its response, JDI acknowledges the benefit of narrowing the case before trial but argues
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`that narrowing should occur after Tianma has responded to JDI’s expert report which addresses
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`infringement of all 135 asserted claims. (Dkt. No. 155 at 2–3). JDI asserts that it cannot
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`meaningfully narrow its asserted claims because Tianma has not produced certain technical
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`information nor informed JDI of Tianma’s non-infringement positions. (Id.). Accordingly, JDI
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`offers its own proposed schedule to narrow asserted claims and prior art references:
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`1. By October 25, 2021, ten days after rebuttal expert reports are due, Plaintiffs
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`limit the asserted claims to no more than eight claims from each patent and no
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`more than a total of thirty-five claims;
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`2. By November 1, 2021, Defendant limits to no more than eight prior art
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`references against each patent and no more than a total of thirty references.
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`Case 2:20-cv-00283-JRG Document 166 Filed 10/12/21 Page 3 of 4 PageID #: 4382
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`The Court notes that both parties recognize the benefit of narrowing the asserted claims
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`and prior art references and finds that narrowing will allow the case to move forward in a
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`manageable manner. In fact, the Court is persuaded that without material narrowing now the case
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`will not move forward in a reasonable way. Accordingly, the Motion to Limit is GRANTED-AS-
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`MODIFIED and the Court ORDERS that by October 25, 2021, Plaintiffs narrow the asserted
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`claims to no more than eight claims from each patent and no more than a total of thirty-five claims.
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`Further, by November 1, 2021, Defendant narrows to no more than eight prior art references
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`against each patent and no more than a total of thirty references. Any combination shall be
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`considered a separate reference.
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`II.
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`JDI’s Motion to Amend the First Amended Docket Control Order (Dkt. No. 156)
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`In its Motion to Amend, JDI requests the Court to extend the deadline to complete expert
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`discovery from October 25, 2021 to November 19, 2021. (Dkt. No. 156 at 3). Tianma notes that
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`JDI’s proposed extension would place the deadline to complete expert discovery after the deadline
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`to file dispositive motions, Daubert motions, and motions to strike expert testimony. (Dkt. No.
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`164 at 2). The Court finds that JDI’s requested relief is not warranted in light of the significant
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`narrowing of the case ordered above, the previous extension of the deadline, and the conflicts with
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`other deadlines that would arise following such an extension.
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`However, the Court finds that an extension of the deadline to complete expert discovery
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`from October 25, 2021 to November 8, 2021 would allow the parties to discuss issues and make
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`progress related to case management at the currently set hearing on JDI’s Motion to Compel
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`Production by Defendant of Information from Tianma Japan and Certain Customer Information
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`(Dkt. No. 137) (the “Motion to Compel”) set for October 26, 2021. Accordingly, the Court
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`ORDERS that a status conference is SET for Tuesday, October 26, 2021 at 2:00 p.m. (CT) in
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`Case 2:20-cv-00283-JRG Document 166 Filed 10/12/21 Page 4 of 4 PageID #: 4383
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`Marshall, Texas. At the status conference, the Court will take up issues relating to case
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`management following the previously set hearing on the Motion to Compel. Further, the Court
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`ORDERS that the deadline to complete expert discovery is extended from October 25, 2021 up
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`to and including November 8, 2021.
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`4
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 12th day of October, 2021.
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