Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 1 of 15 Page ID #:2355
`
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`Kevin P.B. Johnson (Bar No.
`177129)
`kevinjohnson@quinnemanuel.com
`Todd M. Briggs (Bar No. 209282)
`toddbriggs@quinnemanuel.com
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, California 94065
`Telephone: (650) 801-5000
`Facsimile: (650) 801-5100
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`Eric Huang (pro hac vice)
`erichuang@quinnemanuel.com
`51 Madison Avenue, 22nd Floor
`New York, New York 10010
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
`Attorneys for Plaintiffs
`NANTWORKS, LLC and NANT
`HOLDINGS IP, LLC
`
`George C. Lombardi (pro hac vice)
`glombardi@winston.com
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601-9703
`Telephone: (312) 558-5600
`Facsimile: (312) 558-5700
`E. Danielle T. Williams (pro hac vice)
`dwilliams@winston.com
`WINSTON & STRAWN LLP
`300 South Tryon Street, 16th Floor
`Charlotte, NC 28202
`Telephone: (704) 350-7700
`Facsimile: (704) 350-7800
`Michael A. Tomasulo (SBN: 179389)
`mtomasulo@winston.com
`Diana Hughes Leiden (SBN: 267606)
`dhleiden@winston.com
`WINSTON & STRAWN LLP
`333 S. Grand Avenue, 38th Floor
`Los Angeles, CA 90071-1543
`Telephone: (213) 615-1700
`Facsimile: (213) 615-1750
`Attorneys for Defendants
`BANK OF AMERICA CORPORATION
`and BANK OF AMERICA, N.A.
`
`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`CASE NO. 2:20-cv-7872-GW-PVC
`JOINT PROPOSED SCHEDULING
`ORDER
`Hon. George H. Wu
`
`NANTWORKS, LLC, a Delaware
`limited liability company, and NANT
`HOLDINGS IP, LLC, a Delaware
`limited liability company,
`Plaintiffs,
`
`vs.
`BANK OF AMERICA
`CORPORATION, a Delaware
`corporation, and BANK OF
`AMERICA, N.A., a national banking
`association,
`
`Defendants.
`
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`Case No. 2:20-cv-7872-GW-PVC
`JOINT PROPOSED SCHEDULING ORDER
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1043, p. 1 of 15
`
`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 2 of 15 Page ID #:2356
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`Pursuant to the Court’s December 27, 2021 Order (ECF No. 154), Plaintiffs
`Nantworks, LLC, and Nant Holdings IP, LLC (collectively, “Plaintiffs” or
`“NantWorks”) and Defendants Bank of America Corp. and Bank of America, N.A.
`(collectively, “Defendants” or “Bank of America”) submit this Joint Status Report
`and Proposed Scheduling Order.
`STATUS REPORT
`The Parties have the following updates for the Court:
`1. Status of IPR Proceedings: Defendants filed petitions for inter partes review
`(“IPR”) challenging all eight asserted patents. [Dkt. Nos. 104, 105, 107, 109,
`110, 112, 113, and 115] The Patent Trial and Appeal Board (“PTAB”)
`instituted trial on Defendants’ IPR petition challenging the ’030 Patent on
`December 1, 2021, and the parties expect a Final Written Decision by
`December 2, 2022. The institution decision and subsequent clarification order
`are collectively attached hereto as Exhibit 1. The Parties expect the PTAB to
`issue institution decisions on the remaining seven pending petitions by March
`14, 2022 on the following schedule:
`Institution Decision
`Patent
`January 13, 2022
`529
`February 16, 2022
`036
`February 19, 2022
`004
`March 9, 2022
`252
`March 9, 2022
`278
`March 14, 2022
`897
`March 14, 2022
`038
`
`Consistent with this Court’s rulings on motions to stay pending IPR
`proceedings in other cases, Defendants will wait to file a motion to stay the
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`-2-
`
`Case No. 2:20-cv-7872-GW-PVC
`JOINT PROPOSED SCHEDULING ORDER
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1043, p. 2 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 3 of 15 Page ID #:2357
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`District Court proceedings after the PTAB has issued institution decisions on
`all pending IPR petitions, should those decisions warrant a motion to stay.
`
`PROPOSED SCHEDULE
`The parties have agreed on many aspects of the proposed schedule, but a few
`disputes remain, reflected in the table below. The parties provide their respective
`positions on disputes after the table.
`
`Event
`
`NW’s Proposed Dates
`
`BOFA’s Proposed
`Dates
`
`Final Election of Asserted
`Claims
`
`(Plaintiffs shall be limited to
`no more than 5 asserted claims
`from the claims previously
`asserted per patent and 18
`claims total.)1
`Final Election of Asserted
`Prior Art
`
`(Defendants shall be limited to
`no more than 5 prior art
`references per patent from
`among the prior art references
`previously asserted for each
`patent and no more than a total
`of 18 references. Defendants
`may amend these limits on
`prior art references on
`agreement of the parties or by
`
`Friday, January 14, 2022
`
`Friday, January 28, 2022
`
`1 Based on Federal Circuit Advisory Committee’s Model Order Limiting
`Excess Patent Claims and Prior Art, ¶ 3.
`
`-3-
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`IPR2021-01080
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`Ex. 1043, p. 3 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 4 of 15 Page ID #:2358
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`Event
`
`NW’s Proposed Dates
`
`BOFA’s Proposed
`Dates
`
`leave of Court for good cause
`shown.)2
`
`Motion to Stay Pending IPR
`Proceedings
`Response to Motion to Stay
`Pending IPR Proceedings
`Reply in support of Motion
`to Stay Pending IPR
`Proceedings
`Deadline for Selection of
`Mediator
`Substantial Completion of
`Document Productions
`Defendants to Serve
`Identification of Opinions of
`Counsel
`
`Fact Discovery Complete
`
`Final Infringement
`Contentions
`
`No later than Monday, March 21, 2022
`
`14 days after Motion to Stay is filed
`
`7 days after Response to Motion to Stay is filed
`
`Thursday, June 30, 2022
`
`Tuesday, March 29, 2022
`
`Thursday, April 14, 2022
`
`Thursday, June 30,
`2022
`
`Thursday, July 14,
`20223
`
`Thursday, July 7, 2022
`
`Oppose inclusion
`
`Id. The Parties’ agreed definition of “prior art reference” provided in footnote
`2
`8 of Dkt. 81 applies here.
`3 Defendants are requesting July 14, 2022 for the close of fact discovery to
`accommodate conflicts during the discovery period. Counsel for Defendants have a
`trial scheduled for May 4, 2022 and family graduation ceremonies scheduled for May
`27 – June 6, 2022.
`
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1043, p. 4 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 5 of 15 Page ID #:2359
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`Event
`
`NW’s Proposed Dates
`
`BOFA’s Proposed
`Dates
`Oppose inclusion
`
`Final Identification of Trade
`Secrets
`Final Invalidity Contentions
`Opening Expert Reports
`(reports for issues on which a
`party bears the burden of
`proof)
`Rebuttal Expert Reports
`(reports for issues on which a
`party does not bear the burden
`of proof)
`
`Thursday, July 7, 2022
`
`Friday, July 22, 2022
`
`Oppose inclusion
`
`Thursday, August 4, 2022
`
`Wednesday, August 31, 2022
`
`Expert Discovery Complete
`
`Friday, September 30, 2022
`
`Mediation Deadline
`Post-Mediation Status
`Conference
`Summary Judgment and
`Daubert Motions Due
`Oppositions to Summary
`Judgment and Daubert
`Motions Due
`Replies to Summary
`Judgment and Daubert
`Motions Due
`Hearing on Summary
`Judgment and Daubert
`Motions
`Compliance With Initial
`Deadlines in Standing Order
`
`Friday, October 14, 2022
`
`Thursday, October 20, 2022
`
`Thursday, November 3, 2022
`
`Wednesday, November 30, 2022
`
`Wednesday, December 7, 2022
`
`Thursday, December 15, 2022
`
`Tuesday, January 31, 2023
`
`-5-
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1043, p. 5 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 6 of 15 Page ID #:2360
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`Event
`
`NW’s Proposed Dates
`
`BOFA’s Proposed
`Dates
`
`Regarding Pre-Trial
`Conferences [Dkt. 13, ¶ 2]
`Motions in Limine
`Pretrial Order Filing
`Deadline [Dkt. 13, ¶ 3]
`Opposition to Motions in
`Limine
`Replies in support of
`Motions in Limine
`Pretrial Conference
`Trial
`
`Tuesday, March 7, 2023
`
`Tuesday, March 14, 2023
`Tuesday, March 28, 2023
`
`Tuesday, April 4, 2023
`
`Tuesday, April 11, 2023
`Monday, May 8, 2023
`
`Disputed Issues
`
`Plaintiffs’ Position:
`Plaintiffs have proposed a framework that includes a deadline for final patent
`and trade secret contentions to be served after fact discovery closes. Defendants
`oppose inclusion of this framework. But this framework allows for the parties to
`complete fact discovery and finalize their contentions before expert reports. It will
`allow the parties to more orderly prepare for trial. To date, the court in this case has
`not required a deadline for final contentions.
`Plaintiffs’ proposal is directly in line with how this Court has set patent
`contention deadlines soon after the completion of fact discovery. See, e.g., BlackBerry
`Ltd. v. Facebook, Inc. et al., Case No. 2:18-cv-01844-GW (C.D. Cal.), Dkt. 233 at 1
`(final contentions due 14 days after close of fact discovery); Cal. Inst. of Tech. v.
`Broadcom Ltd. et al., Case No. 2:16-cv-03714-GW (C.D. Cal.), Dkt. 302 at 1 (final
`contentions due 14 days after fact discovery cutoff). This allows contentions to reflect
`
`-6-
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`IPR2021-01080
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`Ex. 1043, p. 6 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 7 of 15 Page ID #:2361
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`all relevant discovery, including confidential documents and testimony obtained in
`discovery. A date certain shortly after fact discovery also avoids unnecessary disputes
`where a party tries to unduly limit claims and defenses because the other party is
`purportedly “locked into” contentions before adequate discovery has been conducted.
`At the same time, the parties will be “locked into” contentions going into expert
`discovery, which will make sure the parties are only addressing in expert discovery
`the issues that are in dispute. The same rationale applies to the trade secret
`contentions; they will benefit from discovery and a date by which they are disclosed
`before expert reports.
`Plaintiffs served initial infringement contentions on March 4, 2021. The Court
`did not set any deadlines for final infringement contentions. Dkt. 91 (Scheduling
`Order). The Court stated that dates beyond the Markman hearingwould be set after
`the Markman hearing, Dkt. 88 at 18. The parties never agreed on a deadline for final
`infringement contentions in conferring for a schedule, nor did the parties ever agree
`that Plaintiffs’ infringement contentions could never be amended. However, since the
`first Joint Rule 26(f) Report, Plaintiffs have proposed that final infringement
`contentions be due after the close of fact discovery. Dkt. 75 at 16.4 When Plaintiffs
`made that original proposal, Defendants only response was that they were not
`proposing dates after the Markman hearing. Id. at 7, fn. 12. Defendants did not argue
`in the prior Joint Rule 26(f) report that it would be improper to serve final contentions
`after the close of discovery.
`To the extent that Defendants argue that Plaintiffs must be held to their initial
`infringement contentions or initial identification of trade secrets as immutable and
`unchangeable, this position is not warranted and runs counter to the letter and spirit
`
`4 After filing the first Joint Rule 26(f) Report, the parties appeared before the
`Court on another issue whereby the Court indicated that it was only interested in
`setting dates pre-Markman, so a second Joint Rule 26(f) Report was filed addressing
`only the earlier dates. Dkt. 81.
`
`-7-
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`IPR2021-01080
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`Ex. 1043, p. 7 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 8 of 15 Page ID #:2362
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`of discovery in federal courts. There is no requirement in this court that the parties be
`held to their initial contentions without the ability to supplement based on discovery.
`See, e.g., Auto. Data Sols., Inc. v. Directed Elecs. Canada, Inc., No. CV 18-1560-
`GW(EX), 2019 WL 4565170, at *2 (C.D. Cal. Aug. 9, 2019). To the contrary, the
`Federal Rules of Civil Procedure expressly provide for supplementation and
`amendment of discovery responses based on the facts. Fed. R. Civ. P. 26(e). There is
`no reason not to treat patent and trade secret contentions similarly. At the minimum
`here, the parties’ contentions can and should be amended based on discovery.
`Defendants argue that contentions can only be amended for good cause.
`However, the Court has not adopted patent rules in this case dictating amendment to
`contentions only for good cause. To the contrary, Plaintiffs have consistently taken
`the position that final contentions after fact discovery closes are appropriate. Dkt. 75,
`at 16 (proposing Final Infringement and Invalidity Contentions after fact discovery
`closed). In the context of Defendants’ demand for damages contentions, Plaintiffs did
`cite Judge Guilford’s patent rules as authority and the Court followed Judge
`Guilford’s patent rules for that issue, but the Court chose not to set deadlines after
`Markman, and the Court never set forth a good cause requirement. Adopting a good
`cause requirement now, after the last Markman ruling of December 3, 2021 (Dkt.
`153), will prejudice Plaintiffs after the fact.
`Defendants’ position that Plaintiffs’ preliminary infringement contentions are
`its “final” contentions or could only be supplemented by good cause are belied by
`Defendants’ own actions. On October 18, 2021, following the Court’s first claim
`construction order, Defendants served an interrogatory on Plaintiffs seeking updated
`infringement contentions based on discovery that has taken place to date. The
`interrogatory is below:
`INTERROGATORY NO. 29 State fully and with particularity on a
`claim-by-claim and element-by-element basis all facts and reasons
`upon which NantWorks bases its contentions as to Bank of America’s
`alleged infringement, describing in detail how Bank of America
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`Case No. 2:20-cv-7872-GW-PVC
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`BANK OF AMERICA
`
`IPR2021-01080
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`Ex. 1043, p. 8 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 9 of 15 Page ID #:2363
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`allegedly infringes, literally or through the doctrine of equivalents, each
`and every element of the claims, whether Bank of America allegedly
`infringes the claims directly or indirectly, and all factual and legal basis
`supporting these contentions; and all documents and other evidence
`supporting your response.
`Plaintiffs timely responded to that interrogatory and will continue to
`supplement its response to that interrogatory as it is required and permitted to do under
`Rule 26(e)(1)(a) (“A party who has…responded to an interrogatory…must
`supplement or correct its [] response in a timely manner if the party learns that in
`some material respect the [] response is incomplete”). Plaintiffs note that Defendants
`and its partners Mitek and NCR have not yet produced all of the information (e.g.,
`source code and technical documents) relevant to Plaintiffs’ infringement allegations.
`For example, when Plaintiffs served their initial infringement contentions on
`March 4, 2021, Defendants had not yet produced any technical documents and
`certainly not documents sufficient to enable an understanding of the accused products,
`which are software applications. Since then, Defendants have only produced just over
`70,000 pages total in this case, including documents relating to non-patent issues. It
`became clear during discovery that documents from one of its software suppliers
`Mitek was required. Mitek was subpoenaed in July 2021 and only recently produced
`documents. In any event, neither Defendants nor Mitek have made software source
`code available for inspection, as the parties are discussing the ways to accomplish this
`during the current pandemic. Additionally, more recently, Plaintiffs also learned that
`third party NCR Corporation (“NCR”) might also provide software with some
`accused functionality to Defendants, and Plaintiffs subpoenaed NCR on on December
`10, 2021. No documents have been received in response to that subpoena to date.
`Given the current state of discovery, Plaintiffs should have the right to amend their
`infringement contentions during discovery. Defendants will have the right to amend
`their invalidity contentions as well.
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`-9-
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`Case No. 2:20-cv-7872-GW-PVC
`JOINT PROPOSED SCHEDULING ORDER
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`BANK OF AMERICA
`
`IPR2021-01080
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`Ex. 1043, p. 9 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 10 of 15 Page ID #:2364
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`The same rationale applies to the final identification of trade secrets. Plaintiffs
`have served initial identification of trade secrets and supplemented those at the
`Defendants request. That identification is thorough, complete and detailed. Discovery
`may shed light on the precise nature of Defendants’ misappropriation, warranting
`changes to the identification to both clarify the secrets that were misappropriated but
`also to tailor the secrets that Plaintiffs will present at trial. Doing this ahead of expert
`reports but after discovery provides the benefit of narrowing the trade secret case
`while also crystalizing the disputes for trial. Plaintiffs should be afforded an
`opportunity to disclose final identification of trade secrets based on discovery.
`There is no prejudice to Defendants by setting final contentions deadlines.
`Plaintiffs respectfully ask that the Court include dates for final contentions as
`provided in Plaintiffs’ proposal.
`
`Defendants’ Positions:
`Plaintiffs’ Proposed “Final” Contention Deadlines: Plaintiffs propose deadlines
`to amend infringement and invalidity contentions as a matter of right after the close
`of fact discovery. Contrary to Plaintiffs’ suggestion that their proposal “is directly
`in line with how this Court has set patent contention deadlines soon after the
`completion of fact discovery,” this Court in BlackBerry Ltd. v. Facebook, Inc. et al.
`and Cal. Inst. of Tech. v. Broadcom Ltd. et al. did not allow the parties to amend
`contentions as a matter of right. For example, after the parties submitted competing
`proposals on the adoption of local patent rules in BlackBerry Ltd. v. Facebook, Inc. et
`al., including the good cause standard to amend contentions, this Court adopted Judge
`Guilford’s Patent Local Rules and instructed that “the parties may rely on legal
`authority developed based on the Northern District of California’s Patent Local Rules
`to support arguments relating to, for instance, whether a party has demonstrated good
`cause sufficient to support amending its contentions.”
`See Case No. 2:18-cv-01844-
`GW (C.D. Cal.), Dkts. 75 & 77. And there are numerous other cases in which this
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`IPR2021-01080
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`Ex. 1043, p. 10 of 15
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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 11 of 15 Page ID #:2365
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`Court has not set final contention deadlines at all and instead let the default good cause
`standard under S.P.R. 4.1.2 and 4.2.2 control the modification of contentions. See,
`e.g., Case No. 2:18-cv-03629-GW-JC (C.D. Cal.), Dkt. 66; 2:20-cv-00358-GW-KS
`(C.D. Cal.), Dkt. 81; Case No. 8:19-cv-01692-GW-PLA (C.D. Cal.), Dkt. 53; Case
`No. 2:20-cv-06177-GW-PVC (C.D. Cal.), Dkt. 30; Case No. 2:20-cv-00359-GW-E
`(C.D. Cal.), Dkt. 93; Case No. 2:20-cv-02713-GW-SHK (C.D. Cal.), Dkt. 104 (case
`management orders in patent cases where this Court did not set a final contention
`deadline).
`Like the Blackberry case, the Court has already adopted Judge Guilford’s local
`rules regarding patent cases in this case (at Plaintiffs’ urging).
`See Dkt. 81 at 2
`(“Issues Remaining in Dispute: 2. Will the N.D. Cal. Patent Local Rules or the
`Standing Patent Rules apply generally in this case”); Dkt. 91 at 1 (“The Court will
`adopt Judge Guilford’s local rules regarding patent cases for this action.”). S.P.R.
`4.1.2 and 4.2.2 do not allow final contentions as a matter of right, but instead require
`a showing of “good cause” to amend contentions.
`See, e.g., Genes Indus., Inc. v.
`Custom Blinds & Components, Inc., 2016 WL 6139937, at *2 (C.D. Cal. July 8, 2016)
`(Guilford, J.); Ameranth, Inc. v. Genesis Gaming Sols., Inc., 2015 WL 10793431, at
`*2-3 (C.D. Cal. Jan. 2, 2015) (Guilford, J.). Plaintiffs argue they “should have the
`right to amend their infringement contentions” under their proposed schedule given
`that technical documents were produced after their initial infringement contentions
`and that source code inspections are forthcoming. However, the good cause
`requirement is designed to address a similar problem to the one created by Plaintiffs’
`proposal – postponing answers to contention interrogatories until the close of fact
`discovery – “by requiring both the plaintiff and the defendant in patent cases to
`provide early notice of their infringement and invalidity contentions, and to proceed
`with diligence in amending those contentions when new information conies to light
`in the course of discovery. The rules thus seek to balance the right to develop new
`information in discovery with the need for certainty as to the legal theories.” O2
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`-11-
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`Case No. 2:20-cv-7872-GW-PVC
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`BANK OF AMERICA
`
`IPR2021-01080
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`Ex. 1043, p. 11 of 15
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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 12 of 15 Page ID #:2366
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`Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir.
`2006) (discussing N.D. Cal patent local rules, which has a good cause requirement
`(Patent L.R. 3-6) similar to S.P.R. 4.1.2 and 4.2.2). If the parties could amend their
`contentions without good cause after the close of fact discovery, such contentions
`“would fall prey to a vexatious shuffling of positions – a kind of legal musical chairs
`serving no purpose other than to entertain highly paid lawyers and to thwart the very
`intention behind the patent local rules.” Atmel Corp. v. Information Storage Devices
`Inc., 1998 WL 775115, at *2 (N.D. Cal. 1998). The purpose of the patent local rules
`is “to require parties to crystallize their theories of the case early in the litigation and
`to adhere to those theories once they have been disclosed.” O2 Micro, 467 F.3d at
`1366 n.12 (quoting Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F.
`Supp. 2d 1121, 1123 (N.D. Cal. 2006)); see Nichia Corp. v. Feit Elec. Co., Inc., 2021
`WL 6103081, at *7 (C.D. Cal. Aug. 23, 2021) (Wu, J.) (Infringement contentions are
`meant to “crystallize the parties’ theories early in litigation, thereby shaping the
`course of discovery and promoting efficiency.”); B-K Lighting, Inc. v. Vision3
`Lighting, 930 F. Supp. 2d 1102, 1134 (C.D. Cal. 2013) (“To permit [plaintiff] to assert
`new infringement contentions after the patent claims have been construed and
`discovery tailored to the theories presented in the initial infringement contentions has
`closed would defeat the objectives [of the requirements.]”) (internal quotations and
`alterations omitted). Notably, while Plaintiffs’ point to Defendants’ Interrogatory
`29 as support for why they should not be made to serve final contentions early in the
`case, their response to that Interrogatory incorporated their preliminary infringement
`contentions but gives absolutely no substance or guidance to the contentions they will
`pursue, exemplifying the type of dilatory problems addressed in the above cases.
`Plaintiffs’ proposed deadlines for final contentions are contrary to the scope and
`purpose of Judge Guilford’s patent rules that apply to this case, and should therefore
`be rejected in favor of the good cause standard under S.P.R. 4.1.2 and 4.2.2.
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`-12-
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`Case No. 2:20-cv-7872-GW-PVC
`JOINT PROPOSED SCHEDULING ORDER
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1043, p. 12 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 13 of 15 Page ID #:2367
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`Plaintiffs’ Proposed “Final” Identification of Trade Secrets Deadline: Plaintiffs
`also propose deadlines which would allow them to amend their trade secrets after the
`close of fact discovery as a matter of right. But again, this is backwards, and
`contrary to case law holding that trade secrets should be disclosed with particularity
`before discovery even commences.
`See M/A-COM Tech. Sols., Inc. v. Litrinium,
`Inc., 2019 WL 4284523, at *2 (C.D. Cal. June 11, 2019); Loop AI Labs Inc v. Gatti,
`2015 WL 9269758, at *3 (N.D. Cal. Dec. 21, 2015); SocialApps, LLC v. Zynga, Inc.,
`2012 WL 2203063, at *1–3 (N.D. Cal. June 14, 2012) (all holding that alleged trade
`secrets must be disclosed with particularity before commencing discovery). Indeed,
`this Court instructed Plaintiffs in February 2021 to provide a trade secret disclosure
`“as complete as [it] can be” by the March 2021 deadline. MTD Continuation Hr’g
`Tr. at 10-13. The Parties have already engaged in extensive written discovery on the
`subject of Plaintiffs’ alleged trade secrets, including motion practice pursuant to
`which Plaintiffs served their First Supplemental Trade Secret Disclosure on
`September 27, 2021. The facts giving rise to Plaintiffs’ trade secret allegations date
`back to 2012, and as alleged in the First Amended Complaint, Plaintiffs have known
`for four years which trade secrets they believe to have been misappropriated.
`See,
`e.g., Dkt. 40 at ¶¶ 34-35. There is no reason Plaintiffs need any more time or
`discovery to identify their own alleged trade secrets in full, and with specificity. Nor
`should they be able, as they openly suggest doing, to modify their trade secret case
`based on what they learn in discovery.
`See Jobscience, Inc. v. CVPartners, Inc.,
`2014 WL 1724763, at *2 (N.D. Cal. May 1, 2014) (“Experience has shown that it is
`easy to allege theft of trade secrets with vagueness, then take discovery into the
`defendants’ files, and then cleverly specify what ever happens to be there as having
`been trade secrets stolen from plaintiff. A true trade secret plaintiff ought to be able
`to identify, up front, and with specificity the particulars of the trade secrets without
`any discovery.”). For these reasons, Plaintiffs’ proposed deadline for “final”
`identification of trade secrets after the close of fact discovery should be rejected.
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`-13-
`
`Case No. 2:20-cv-7872-GW-PVC
`JOINT PROPOSED SCHEDULING ORDER
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1043, p. 13 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 14 of 15 Page ID #:2368
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`DATED: Jan. 3, 2022
`
`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By /s/ Todd M. Briggs
`James R. Asperger
`Kevin P.B. Johnson
`Todd M. Briggs
`Eric Huang
`
`Attorneys for Plaintiffs, NANTWORKS, LLC
`and NANT HOLDINGS IP, LLC
`
`WINSTON & STRAWN LLP
`
`By:
`/s/ E. Danielle T. Williams
`George C. Lombardi (pro hac vice)
`Michael S. Elkin (pro hac vice)
`E. Danielle T. Williams (pro hac vice)
`Dustin J. Edwards (pro hac vice)
`Michael A. Tomasulo
`Diana Hughes Leiden
`
`Attorneys for Defendants
`BANK OF AMERICA CORPORATION and
`BANK OF AMERICA, N.A.
`
`-14-
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`Case No. 2:20-cv-7872-GW-PVC
`JOINT PROPOSED SCHEDULING ORDER
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1043, p. 14 of 15
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`

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`Case 2:20-cv-07872-GW-PVC Document 155 Filed 01/03/22 Page 15 of 15 Page ID #:2369
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`FILER’S ATTESTATION
`I, Todd M. Briggs, am the ECF user whose ID and password were used to file
`JOINT PROPOSED SCHEDULING ORDER. Pursuant to L.R. 5-4.3.4(a)(2), I
`hereby attest that counsel for Defendants concurred in the filing of this document.
`
`By: /s/ Todd M. Briggs
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`-15-
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`Case No. 2:20-cv-7872-GW-PVC
`JOINT PROPOSED SCHEDULING ORDER
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1043, p. 15 of 15
`
`