1
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF ARKANSAS
`MARSHALL DIVISION
`
`C.A. NO.
`2:20- cv- 00283- JRG
`[LEAD CASE]
`
`C.A. NO.
`2:20- cv- 00284- JRG
`
`C.A. NO.
`2:20- cv- 00285- JRG§
`[MEMBER CASES]
`
`)))))))))))))
`
`JAPAN DISPLAY INC.,
`PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.,
`
`Plaintiffs,
`
`VS.
`
`TIANMA MICROELECTRONICS
`CO. LTD.,
`
`Defendant.
`
`
`
`REPORTER'S RECORD
`
`TRANSCRIPT OF MOTION TO COMPEL AND STATUS CONFERENCE
`
`BEFORE THE HONORABLE RODNEY GILSTRAP
`
`October 26, 2021; 1: 33 p.m.
`
`MARSHALL, TEXAS
`
`
`Proceedings recorded in realtime via machine shorthand.
`________________________________________________________
`
`Dana Hayden, CCR, RMR, CRR, CRC
`Federal Official Court Reporter
`35 East Mountain Street
`Fayetteville, Arkansas 72701
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 1 of 23
`
`Tianma Exhibit 1019
`Tianma v. JDI
`Trial IPR2021-01058
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF ARKANSAS
`MARSHALL DIVISION
`
`C.A. NO.
`2:20- cv- 00283- JRG
`[LEAD CASE]
`
`C.A. NO.
`2:20- cv- 00284- JRG
`
`C.A. NO.
`2:20- cv- 00285- JRG§
`[MEMBER CASES]
`
`)))))))))))))
`
`JAPAN DISPLAY INC.,
`PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.,
`
`Plaintiffs,
`
`VS.
`
`TIANMA MICROELECTRONICS
`CO. LTD.,
`
`Defendant.
`
`
`
`REPORTER'S RECORD
`
`TRANSCRIPT OF MOTION TO COMPEL AND STATUS CONFERENCE
`
`BEFORE THE HONORABLE RODNEY GILSTRAP
`
`October 26, 2021; 1: 33 p.m.
`
`MARSHALL, TEXAS
`
`
`Proceedings recorded in realtime via machine shorthand.
`________________________________________________________
`
`Dana Hayden, CCR, RMR, CRR, CRC
`Federal Official Court Reporter
`35 East Mountain Street
`Fayetteville, Arkansas 72701
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 1 of 23
`
`Tianma Exhibit 1019
`Tianma v. JDI
`Trial IPR2021-01058
`
`
`
`2
`
`FOR THE PLAINTIFFS:
`
`APPEARANCES
`
`Mr. Erik Chiles Shallman
`Vinson & Elkins LLP
`2801 Via Fortuna, Suite 100
`Austin, TX 78746
`(512) 542- 8400
`Eshallman@ velaw. com
`
`Mr. Eric Joseph Klein
`Vinson & Elkins LLP
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201- 2975
`(214) 220- 7782
`Eklein@ velaw. com
`
`FOR THE DEFENDANT:
`
`
`
`Mr. Eric Hugh Findlay
`Findlay Craft PC
`102 N College Avenue, Suite 900
`Tyler, TX 75702
`(903) 534- 1100
`Efindlay@ findlaycraft. com
`
`Messrs. Aidan C Skoyles and James R. Barney
`Finnegan Henderson Farabow Garret Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 408- 4000
`Aidan. skoyles@ finnegan. com
`James. barney@ finnegan. com
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 2 of 23
`
`
`
`3
`
`***** PROCEEDINGS *****
`
`THE COURT: This is the time set for hearing
`
`before the Court on a motion for a motion to compel
`
`production by Japan Display, the Plaintiff in the Japan
`
`Display, et al. Versus Tianma Microelectronics Company.
`
`The Court has also scheduled at this time a
`
`status conference on this matter. This includes lead
`
`case number 2: 20-CV-2 84 and member cases 2 84 and 2 85.
`
`Let me ask for announcements and then we' ll
`
`proceed with a recital of what I understand is an
`
`agreement of the parties resolving that motion to
`
`compel, which appears as Document 137 in this case.
`
`What says the Plaintiffs, Japan Display,
`
`et al. ?
`
`MR. KLEIN: Good afternoon, your Honor. Eric
`
`Klein and Erik Shallman on behalf of Japan, Inc. and
`
`Japan Display Company ready to proceed.
`
`THE COURT: What's the announcement from
`
`Defendant Tianma?
`
`MR. FINDLAY: Good afternoon, your Honor. Eric
`
`Findlay for Tianma Electronics; along with me, Mr. James
`
`Barney, Mr. Aidan Skoyles. We' re ready to proceed,
`
`Judge.
`
`THE COURT: All right. Thank you, Mr. Findlay.
`
`Counsel, I' ve been advised by my staff, who's
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:33PM
`
`01:34PM
`
`01:34PM
`
`01:34PM
`
`01:35PM
`
`Page 3 of 23
`
`
`
`4
`
`been in contact with you earlier today that the motion
`
`to compel, Document 1 37, has been resolved by agreement
`
`of the parties. I'd like to get a short recitation of
`
`the substance of that resolution on the record.
`
`I understand that particularly perhaps with the
`
`Plaintiff there may be a need to confirm this with
`
`clients in Japan, and we can certainly do it subject to
`
`that confirmation within a relatively short period of
`
`time. But let's put on the record, if you will, where
`
`you are with regard to the motion to compel and the
`
`particulars of the resolution that's been reached.
`
`I don't care whether Plaintiff makes the
`
`presentation and Defendant agrees or Defendant makes the
`
`presentation and Plaintiff agrees or you do it jointly,
`
`but I just want to get the matter on the record.
`
`MR. KLEIN: Eric Klein for Plaintiffs, your
`
`Honor. The parties have reached a resolution. It's
`
`actually Tianma that needs to get confirmation for that.
`
`THE COURT: Okay. I knew somebody did.
`
`MR. KLEIN: Okay.
`
`THE COURT: Why don't you go to the podium,
`
`Mr. Klein, please.
`
`MR. KLEIN: Thank you, your Honor.
`
`The two issues that were brought up during the
`
`motion -- for the motion to compel were resolved. We
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:35PM
`
`01:35PM
`
`01:35PM
`
`01:36PM
`
`01:36PM
`
`Page 4 of 23
`
`
`
`5
`
`believe we have a resolution for those.
`
`The first issue regarding whether documents
`
`related to Tianma Japan would be sought in this case,
`
`and the parties have made an agreement, and this is the
`
`one that is subject to approval from Tianma Japan, which
`
`we believe won't be an issue and it will be forthcoming
`
`sometime in the next day or two.
`
`The parties reached an agreement where the
`
`plaintiffs will not pursue discovery from Tianma Japan
`
`in the current case. In exchange, Tianma Japan and
`
`Tianma Microelectronics will agree not to argue in any
`
`subsequent litigation, but the Plaintiffs' litigation of
`
`the above- captioned case include any decisions that the
`
`Plaintiffs made during that litigation will create
`
`estoppel or preclusion regarding any claims against
`
`Tianma Japan.
`
`THE COURT: All right. Let me ask defense
`
`counsel to confirm the accuracy of that recitation.
`
`MR. BARNEY: That's accurate, your Honor. And
`
`just to be precise, we do have confirmation from our
`
`client, Tianma Microelectronics, as to that agreement;
`
`we just need to confirm with Tianma Japan, which we will
`
`do tomorrow morning, and we do not expect any problems
`
`there.
`
`THE COURT: All right. Let me ask you to do
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:36PM
`
`01:37PM
`
`01:37PM
`
`01:37PM
`
`01:37PM
`
`Page 5 of 23
`
`
`
`6
`
`this, Mr. Barney. Once you' ve confirmed this matter
`
`with Tianma Japan, I' ll ask you not later than the end
`
`of business tomorrow to file a notice with the Court
`
`confirming on the record that that has been confirmed
`
`with Tianma Japan.
`
`MR. BARNEY: Yes, your Honor.
`
`THE COURT: All right. Now, is there anything
`
`else related to the motion to compel that we need to
`
`take up?
`
`MR. KLEIN: One more issue that we have an
`
`agreement on. There's a second issue in the motion to
`
`compel and that was the Plaintiffs' request for Tianma
`
`to produce customer agreements and technical
`
`documents --
`
`THE COURT: Yes, I remember.
`
`MR. KLEIN: -- documents by the customers, and
`
`the parties have reached an agreement. Tianma will
`
`stipulate as follows for the above- captioned cases only.
`
`From time to time, Tianma Microelectronics communicates
`
`technical parameters and/ or specifications of its LCD
`
`panel products with customers, and from time to time
`
`Tianma Microelectronics also enters into agreements with
`
`customers of its LCD panel products; and to the best of
`
`Tianma Micro's knowledge, such communications and
`
`agreements do not identify the geographic location of
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:38PM
`
`01:38PM
`
`01:38PM
`
`01:38PM
`
`01:39PM
`
`Page 6 of 23
`
`
`
`7
`
`downstream products that incorporate Tianma
`
`Microelectronics' LCD panel products.
`
`Tianma Microelectronics does not track the
`
`geographic destination of its customers' products
`
`incorporating Tianma Microelectronics' LCD panel
`
`products. In fact, Tianma Microelectronics has no way
`
`to track such information because its customers
`
`generally do not share information about where their
`
`downstream products may be offered for sale or sold,
`
`including whether they may be imported into or sold into
`
`the United States.
`
`And to the best of Tianma
`
`Micro knowledge/ information regarding the geographic
`
`destination of downstream products that incorporate
`
`Tianma Microelectronics' LCD panel products should be in
`
`the hands of Tianma Microelectronics' customers and also
`
`potentially with their downstream customers.
`
`THE COURT: All right. Let me also ask the
`
`Defendant to confirm the accuracy of that recital.
`
`MR. BARNEY: That recital was accurate, your
`
`Honor.
`
`THE COURT: All right. Does that complete the
`
`issues raised in the motion to compel?
`
`MR. KLEIN: Your Honor.
`
`MR. BARNEY: Yes, your Honor.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:39PM
`
`01:39PM
`
`01:39PM
`
`01:40PM
`
`01:40PM
`
`Page 7 of 23
`
`
`
`8
`
`THE COURT: All right. Thank you, Counsel.
`
`Now, while I have the benefit of having you
`
`here, we are going to transition to a status conference,
`
`and as counsel are aware, the Court has previously
`
`expressed some substantive concern about the size and
`
`the scope of the claims and defenses in this case and
`
`has previously indicated a view that the case would
`
`benefit from and is in need of substantial narrowing
`
`going forward.
`
`With that in mind, the Court has already
`
`partially granted a request to amend the docket control
`
`order, and I' ve extended the deadline to complete expert
`
`discovery from October 25th of this year through
`
`November 8 th of this year. I'm aware that the request
`
`was an extension beyond November the 8 th. That's why
`
`this was a grant in part as a part of Document 1 66 being
`
`the Court's order.
`
`I have before me an opposed motion to amend the
`
`docket control order, and I am more than willing to
`
`discuss with the parties where we stand as of now, what
`
`you can anticipate going forward as to further narrowing
`
`what is a workable time frame to adjust as necessary the
`
`parameters of the docket control order to accommodate
`
`that narrowing.
`
`I am not inviting a ongoing process where we
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:40PM
`
`01:40PM
`
`01:41PM
`
`01:42PM
`
`01:42PM
`
`Page 8 of 23
`
`
`
`9
`
`are coming back to the Court on a regular basis to
`
`adjust and tweak and extend various dates. I'm
`
`certainly open to doing what we need to to get this case
`
`postured so that it can be tried as it's now set, but
`
`I'd like to get -- I know there has been -- pursuant to
`
`the Court's orders and the action of the parties, I know
`
`there's been substantial narrowing from where you were
`
`to where you are.
`
`I'd like a indication from you as to what you
`
`anticipate realistically from where you are to where you
`
`will be with regard to further narrowing of both the
`
`asserted claims and the prior art references or other
`
`invalidity defenses and how that might inform the Court
`
`as to what is a reasonable and fair modification of one
`
`or more parameters or deadlines set forth within the
`
`current version of the docket control order.
`
`So let me start with Plaintiff Japan Display
`
`and ask you to give me a report, if you will, of where
`
`you are and what you anticipate, where you will be going
`
`forward as we proceed with the inevitable process of
`
`narrowing the case moving toward trial.
`
`Go ahead, Mr. Klein.
`
`MR. KLEIN: Thank you, your Honor.
`
`We'd like to make one note for the current
`
`deadline to complete expert discovery, as your Honor
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:42PM
`
`01:43PM
`
`01:43PM
`
`01:43PM
`
`01:44PM
`
`Page 9 of 23
`
`
`
`10
`
`stated, was reset to November the 8 th. There's one
`
`deposition that the parties have agreed on. It's the
`
`only date that would work for both parties, but it's
`
`currently scheduled for November the 16th and 17th.
`
`It's a single deposition, but it will cover two days.
`
`So we would --
`
`THE COURT: Who is this the deposition of?
`
`MR. KLEIN: Of one of Defendant's technical
`
`experts, Mr. Fred Schubert.
`
`THE COURT: Can you spell his last name for me?
`
`MR. KLEIN: S-c-h-u-b-e-r-t.
`
`THE COURT: And where is Mr. Schubert located.
`
`MR. KLEIN: I believe he's in California.
`
`MR. SKOYLES: I believe so. Not certain of
`
`that, though.
`
`MR. KLEIN: He's in the United States. The
`
`depositions are all being done remotely. I apologize,
`
`your Honor. I believe he's in California.
`
`THE COURT: And I believe what you' re telling,
`
`Mr. Klein, is you'd like a caveat or carveout to that
`
`November 8 th deadline for this one single purpose to
`
`permit Mr. Schubert's deposition on November 16th and/ or
`
`17th?
`
`MR. KLEIN: Yes, your Honor.
`
`THE COURT: Okay.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:44PM
`
`01:44PM
`
`01:45PM
`
`01:45PM
`
`01:45PM
`
`Page 10 of 23
`
`
`
`11
`
`Do Defendants join in that request? It's your
`
`witness.
`
`MR. BARNEY: Yes, your Honor. We have no
`
`objection to that.
`
`THE COURT: I' ll afford the parties that
`
`latitude in light of my order extending the deadline for
`
`expert discovery until November the 8 th, and I' ll permit
`
`the single deposition as specified in the record of
`
`Mr. Schubert to be taken outside that deadline over
`
`November 16th and/ or the 17th.
`
`All right. What else, Mr. Klein?
`
`MR. KLEIN: Your Honor, with respect to
`
`narrowing the case, the Plaintiff doesn't anticipate
`
`doing further narrowing. It would certainly be informed
`
`by the depositions continuing over the next several
`
`weeks and then finishing on the 17th with Mr. Schubert.
`
`So I --
`
`THE COURT: Part of the problem here, and it
`
`strikes me, having looked at your motions, it strikes me
`
`as we' re kind of, to some degree, confronted with the
`
`"chicken or the egg" situation.
`
`On the one hand, everybody would like to have
`
`the discovery of the witnesses as to all existing claims
`
`and defenses and then have that as a resource to
`
`determine what to keep and what to jettison.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:45PM
`
`01:45PM
`
`01:46PM
`
`01:46PM
`
`01:46PM
`
`Page 11 of 23
`
`
`
`12
`
`On the other hand, nobody wants to go through
`
`the time, expense, and delay of doing that for claims
`
`and defenses that are not going to survive and the
`
`parties would materially benefit by saving that time and
`
`expense.
`
`I think both are valid observations. I'm not
`
`sure all one way or all the other way is the right
`
`approach. You' re down to -- Plaintiff's down to, am I
`
`right, 35 claims at present?
`
`MR. KLEIN: Yes, your Honor.
`
`THE COURT: What -- and, I mean, you started of
`
`some astronomical number of, like, 135?
`
`MR. KLEIN: That's correct.
`
`THE COURT: What can you tell me about your
`
`anticipated future narrowing going forward, both
`
`time- wise and number of claims- wise?
`
`MR. KLEIN: We spoke with Defendants this
`
`morning and we' ve -- they floated the idea of having
`
`that narrowing done sometime before the pretrial
`
`disclosures are due on November the 24th, and we are
`
`going to have further discussions about that, whether
`
`that timing makes sense.
`
`As far as the number of claims in -- moving
`
`forward, we realize that 35 claims is still too many
`
`claims to take to trial, but depending on --
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:47PM
`
`01:47PM
`
`01:47PM
`
`01:47PM
`
`01:48PM
`
`Page 12 of 23
`
`
`
`13
`
`THE COURT: No question about that.
`
`MR. KLEIN: No question.
`
`We' re about halfway through the depositions of
`
`the experts, the technical experts. I think we might,
`
`after today, be halfway through. So I think continuing
`
`with those now that we' ve already made it halfway
`
`through makes the most sense and then we will be in a
`
`position to further narrow the case.
`
`As far as the number of claims and patents to
`
`narrow to, it's a little difficult because there are
`
`families of patents that have more claims than others.
`
`So it could be that the number of claims and patents, we
`
`can't come up with that number at this time because it
`
`just depends on which patents we choose.
`
`There are some patents where there's only one
`
`claim. There are a couple patents with only two claims
`
`that are asserted, and if we choose those, there will be
`
`substantially less claims, but there is at least one
`
`patent where there are seven claims being asserted. So
`
`it's difficult to come up with a number at this time
`
`until we have the benefit of finishing discovery.
`
`THE COURT: Let me ask you this, if you can
`
`answer it for me. Are you anticipating, under any
`
`scenario at present, extensions that would necessitate
`
`altering the current schedule for Daubert motions or
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:48PM
`
`01:48PM
`
`01:48PM
`
`01:49PM
`
`01:49PM
`
`Page 13 of 23
`
`
`
`14
`
`motions to strike?
`
`MR. KLEIN: No, your Honor.
`
`THE COURT: Okay. I assume both sides know
`
`that when this case gets to trial, at least if it's
`
`before me, it will be a timed trial with a finite amount
`
`of time provided to each side to put on your
`
`case- in- chief both from the Plaintiff and the Defendant;
`
`and I'm sure you' re all well aware of what's a general
`
`rule of thumb for what allocation of time is common in
`
`this court, and I think that's probably a pretty good
`
`guide for you to carry forward as you move toward
`
`further narrowing from both sides of the case.
`
`MR. KLEIN: Yes, your Honor.
`
`THE COURT: Mr. Barney, what can you add from
`
`the Defendant's standpoint on this topic?
`
`MR. BARNEY: Your Honor, we agree that the case
`
`definitely needs to be narrowed, and we did talk with
`
`the Plaintiffs today about a narrowing schedule. We had
`
`proposed November 22nd, which we think is fair because
`
`that will allow them to complete the depositions.
`
`We asked them to narrow at that time to no more
`
`than five patents and 20 claims, which to me, you know,
`
`in my opinion is still a big case but, you know, that
`
`would be a substantial narrowing, and we' re awaiting
`
`their response to that.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:49PM
`
`01:49PM
`
`01:50PM
`
`01:50PM
`
`01:50PM
`
`Page 14 of 23
`
`
`
`15
`
`THE COURT: What about your side of the coin on
`
`invalidating references or combinations?
`
`MR. BARNEY: Yes, your Honor, and we would
`
`propose a number, something along the lines of five
`
`combinations per patent and, of course, that's something
`
`that we can also negotiate with the plaintiffs. So we
`
`would be willing to do a commensurate narrowing of our
`
`case at that time.
`
`THE COURT: Do I hear correctly that Mr. Klein
`
`said November 24th and you said November 22nd?
`
`MR. BARNEY: Well, I --
`
`THE COURT: Or were those different?
`
`MR. BARNEY: Two different things. I think he
`
`referred to November 24th being the due date for the
`
`pretrial submission and we just had backed up and said
`
`let's do our narrowing two days before that so that when
`
`we file that on November 24th, it will be with the
`
`benefit of both parties' narrowing.
`
`THE COURT: Well, that sounds like it's close
`
`enough to me that capable lawyers on both sides of this
`
`case ought to be able to find some common ground.
`
`MR. BARNEY: Yes, your Honor.
`
`THE COURT: To the extent I said this earlier,
`
`I misspoke. I don't think I have a current motion to
`
`modify the docket control before me now in light of the
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:50PM
`
`01:51PM
`
`01:51PM
`
`01:51PM
`
`01:51PM
`
`Page 15 of 23
`
`
`
`16
`
`earlier order which I mentioned which partially narrowed
`
`the expert discovery deadline or cutoff, but it's clear
`
`to me something along that line is coming.
`
`What can both sides tell me? I' ve heard
`
`general recitals about " We are continuing to talk," but
`
`what can you tell me in a more specific manner that will
`
`give me some assurance that if I give you a little more
`
`latitude, you' ll come back to me with something workable
`
`and agreed to; or is this something that, at the end of
`
`the day, I'm going to see hands thrown up and then I'm
`
`going to be asked to take over and do it for you?
`
`I really don't want that to happen, and I want
`
`to facilitate the earlier possibility to the fullest
`
`extent I can without getting us so far down the road
`
`that we are in a bind.
`
`MR. BARNEY: Understood, your Honor. One thing
`
`that I would point out is although the Plaintiffs have
`
`narrowed to 35 claims, they are still asserting 13
`
`patents. The number of patents, you know, is --
`
`separate and apart from the number of claims, the number
`
`of patents is also a concern for us on the defense side
`
`because each patent is its own unique document with its
`
`own unique priority date, so it comes with its own
`
`unique set of prior art arguments and references and so
`
`getting the number of patents down is just as important
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:52PM
`
`01:52PM
`
`01:52PM
`
`01:53PM
`
`01:53PM
`
`Page 16 of 23
`
`
`
`17
`
`from our perspective as getting the number of claims
`
`down.
`
`THE COURT: I think that's a very legitimate
`
`observation.
`
`MR. BARNEY: But other than that, I can't tell
`
`you much more other than we are definitely willing to
`
`work with the plaintiff to choose an appropriate date to
`
`really get this case down to what's really going to be
`
`tried to the jury because that drives jury instructions,
`
`it drives motions in limine, it drives a lot of things
`
`that are going to have to happen after that.
`
`THE COURT: Well, as much as each of you don't
`
`want to waste a lot of time and effort for things that
`
`are not going to actually be tried, if you multiply that
`
`by ten, that's how the Court feels about that same
`
`topic. We all benefit when we get down to the real deal
`
`earlier rather than later.
`
`I think you- all understand the Court has a
`
`legitimate and continuing concern about the process in
`
`this case. I'm encouraged by what I'm hearing from you,
`
`but you know, the old adage is the proof's in the
`
`pudding.
`
`What I'd like to do is charge you to continue
`
`to work toward this goal with continuing efforts to meet
`
`and confer. Whether you do it in person or
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:53PM
`
`01:53PM
`
`01:53PM
`
`01:54PM
`
`01:54PM
`
`Page 17 of 23
`
`
`
`18
`
`telephonically or by email makes no difference to me. I
`
`know there are a lot of other moving parts going on at
`
`the same time.
`
`What's a reasonable amount of time for you- all
`
`to work on this and get back to me with some kind of a
`
`joint notice or report as to where you stand?
`
`MR. BARNEY: I would propose maybe a week from
`
`today to work that out, but I' ll look to hear from my
`
`colleague.
`
`THE COURT: What's your view, Mr. Klein?
`
`MR. KLEIN: I guess, your Honor, for us to just
`
`continue the discussion or to actually choose -- the
`
`deadline to actually choose the --
`
`THE COURT: I'm looking to put a date on the
`
`calendar that says you will tell me where you are then,
`
`and if it is, " We resolved these issues and here's where
`
`we are," or it's, " We haven't resolved them; perhaps
`
`we' ve narrowed them, but we still have work to do," you
`
`know, I think this is a process where the Court and the
`
`parties would benefit from the Court having some
`
`continuing oversight, not just, "I' ll see you when it's
`
`time for pretrial."
`
`So I don't want it to be such a short period of
`
`time that you really aren't able to make any real
`
`progress because it's my hope you will make substantive
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:54PM
`
`01:55PM
`
`01:55PM
`
`01:55PM
`
`01:55PM
`
`Page 18 of 23
`
`
`
`19
`
`progress. I don't want it to be so long that we wasted
`
`time and if you come back to me without a resolution, we
`
`can't get that time back.
`
`So that's what prompted my question: From your
`
`perspective, what's a realistic amount of time for
`
`you- all to make some progress and if we' re lucky resolve
`
`most of what's outstanding; if not, narrow it
`
`substantially and at least get back to me with where you
`
`are so that I can engage whether I need to inject myself
`
`into the process because it's not happening in an
`
`adequate time frame, or I don't have to inject myself
`
`because it is happening in an adequate way. That's what
`
`I'm asking for.
`
`MR. KLEIN: Yes, your Honor. Thank you.
`
`I think that if we could -- I think a week
`
`might be too short but if we could have an update maybe
`
`by the middle, the second week of December. All of the
`
`depositions except Dr. Schubert will be finished and I
`
`think that will give us all some time to take a look at
`
`not only infringement side but they will be able to have
`
`an idea about their narrowing on invalidity as well.
`
`That will give us a chance to have a more meaningful
`
`conversation.
`
`THE COURT: Well, as a practical observation,
`
`today's the 26th of October. I'm to try a patent
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:55PM
`
`01:56PM
`
`01:56PM
`
`01:56PM
`
`01:57PM
`
`Page 19 of 23
`
`
`
`20
`
`infringement case next week, and I will probably not be
`
`in a position to pay very much attention to anything
`
`else.
`
`The week after that is the week of the 8 th. It
`
`would seem to me, based on at least what I know about my
`
`situation, that I will be in a position to focus
`
`substantively on a report sometime during that week.
`
`How does 5 o' clock on Wednesday, the 10th of
`
`November strike you, Counsel?
`
`MR. BARNEY: That's fine with defense.
`
`THE COURT: Mr. Klein, I see your head going up
`
`and down.
`
`MR. KLEIN: Yes, your Honor, fine for the
`
`Plaintiffs.
`
`THE COURT: I' ll direct an order that counsel
`
`for the parties present to the Court by way of filing on
`
`the docket a joint notice by before 5: 00 on Wednesday,
`
`November the 10th, telling me where you are from today,
`
`what you resolved, what remains outstanding, and suggest
`
`to the extent either/ or both of you think it's
`
`appropriate where the Court could help facilitate
`
`further movement.
`
`MR. KLEIN: Thank you, your Honor.
`
`THE COURT: All right. Those are the main
`
`topics I wanted to raise with Counsel as a part of this
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:57PM
`
`01:57PM
`
`01:58PM
`
`01:58PM
`
`01:58PM
`
`Page 20 of 23
`
`
`
`21
`
`meet- and- confer -- excuse me, as a part of this status
`
`conference.
`
`Let me ask you- all: Are there issues or
`
`problems or things you' re aware of, whether it was a
`
`part of this motion to compel or whether it relates to
`
`narrowing of the case that you need to either raise with
`
`me now or give me a heads- up is coming around the
`
`corner?
`
`Are there other things that we could all
`
`benefit by, by discussing them with the benefit of
`
`everybody present in the room? If not, I will let you
`
`go; but if there are, I'd hate to give up this
`
`opportunity.
`
`Plaintiff aware of anything?
`
`MR. KLEIN: Nothing from Plaintiffs, your
`
`Honor.
`
`THE COURT: How about Defendant?
`
`MR. BARNEY: Could I have one second, your
`
`Honor, to confer?
`
`THE COURT: Certainly.
`
`Nothing from Defendant, your Honor.
`
`THE COURT: All right. Then that will complete
`
`the matter set for today, including the motion to
`
`compel, which has been resolved by the parties'
`
`admirable meet- and- confer efforts subject to slight
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:58PM
`
`01:59PM
`
`01:59PM
`
`01:59PM
`
`01:59PM
`
`Page 21 of 23
`
`
`
`22
`
`confirmation which we' ll document on the record in the
`
`next day or so, and this will also complete the status
`
`conference conducted by the Court with the parties as
`
`also set for the day.
`
`Those being the matters set for hearing before
`
`the Court today, that will complete today's hearing.
`
`Thank you for your presence and your active work
`
`together, Counsel. I hope we can build on this going
`
`forward.
`
`You are excused and the Court stands in recess.
`
`(Proceedings adjourned at 2:00 p.m.)
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`01:59PM
`
`02:00PM
`
`Page 22 of 23
`
`
`
`23
`
`CERTIFICATE OF DEPUTY OFFICIAL REPORTER
`
`I, Dana Hayden, Federal Deputy Realtime Court
`
`Reporter, in and for the United States District Court
`
`for the Eastern District of Texas, do hereby certify
`
`that pursuant to Section 753, Title 28, United States
`
`Code that the foregoing is a true and correct transcript
`
`of the stenographically reported proceedings held in the
`
`above- entitled matter and that the transcript page
`
`format is in conformance with the regulations of the
`
`Judicial Conference of the United States.
`
`Dated this 28th of October, 2021.
`
`____________________________________
`
`Dana Hayden, CCR, RMR, CRR, CRC
`Federal Deputy Court Reporter
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 23 of 23
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
