Case 2:12-cv-02767-JPM-tmp Document 39 Filed 01/16/13 Page 1 of 7 PageID 315
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`Case No. 2:12-cv-2767 JPM tmp
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`JURY TRIAL DEMANDED
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`)))))))))))
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff,
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`v.
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`AMAZON DIGITAL SERVICES,
`INC.,
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`Defendant.
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`PATENT SCHEDULING CONFERENCE NOTICE
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`Pursuant to Local Patent Rule 2.1(a), Plaintiff B.E. Technology, L.L.C. (“B.E.”) and De-
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`fendant Amazon Digital Services, Inc. (“Amazon”) jointly submit this Patent Scheduling Con-
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`ference Notice informing the Court:
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`(1)
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`Scheduling for a Patent Scheduling Conference
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`B.E.’s position: B.E.’s position is this action is ripe to be scheduled for a Patent Schedul-
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`ing Conference. B.E. believes that the Court should hold a consolidated conference to address
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`consolidation of the related cases and other issues related to judicial economy and efficiency.
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`Amazon’s position: This action is not ripe for a Patent Scheduling Conference. On Jan-
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`uary 7, 2012, Amazon filed a motion to dismiss all of B.E.’s claims with prejudice. (Dkt. No.
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`32.) It would be premature for the Court to hold a Patent Scheduling Conference and set dead-
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`lines for a determination of the merits before addressing whether plaintiff can pursue its claims
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`against Amazon. Additionally, now that Amazon has received plaintiff’s infringement allega-
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`tions, it will be filing a motion to transfer the action to the Northern District of California should
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`Case 2:12-cv-02767-JPM-tmp Document 39 Filed 01/16/13 Page 2 of 7 PageID 316
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`the Court deny the pending motion to dismiss. It would also be premature to hold a Patent
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`Scheduling Conference before the Court addresses Amazon’s transfer motion. The Federal Cir-
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`cuit has acknowledged that such transfer motions are a threshold matter to be decided before
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`proceeding with discovery or the case on the merits. See, e.g., In re Fusion I-O, Inc., Case No.
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`12-139, 2012 WL 6634939, at *1 (Fed. Cir. Dec. 21, 2012) (district court should act on motion
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`to transfer before proceeding with case on the merits); see also In re Horseshoe Entm’t, 337 F.2d
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`429, 433 (5th Cir. 2003) (disposition of motion to transfer “should have taken a top priority in
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`the handling of this case”). As explained in more detail below, Amazon opposes consolidation
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`of its case with the other actions filed by B.E. in this district against unrelated defendants.
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`Should the Court deny Amazon’s motion to dismiss or motion to transfer the action to the North-
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`ern District of California, Amazon requests that the Court set a separate patent scheduling con-
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`ference for this case.
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`(2) Modifications to the Local Patent Rules
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`B.E.’s position: B.E.’s position is this action should be consolidated with the other B.E.
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`actions pending before this Court for consolidated claim construction proceedings and a trial on
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`invalidity and unenforceability of the patents-in-suit and that no modifications to the deadlines
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`set by the Patent Local Rules are necessary, beyond any minor modifications necessary to syn-
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`chronize the actions.
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`Amazon’s position: Amazon objects to consolidation with the other B.E. actions—which
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`accuse separate and independently-developed products of unrelated defendants—currently pend-
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`ing before the Court. Involuntary consolidation of any issues for trial would be highly prejudi-
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`cial and is impermissible under 35 U.S.C. § 299(c). Should the Court consider consolidation,
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`Amazon respectfully requests that the parties be allowed the opportunity to fully brief this issue
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`and requests a hearing. If the Court is nonetheless inclined to hold a consolidated claim con-
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`Case 2:12-cv-02767-JPM-tmp Document 39 Filed 01/16/13 Page 3 of 7 PageID 317
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`struction hearing, Amazon respectfully requests that defendants be permitted separate claim con-
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`struction disclosures and briefing at defendants’ option, with two weeks additional time for each
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`such deadline under the Patent Local Rules to allow for coordination among defendants wherev-
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`er possible.
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`Amazon further proposes that the deadlines for the Initial Non-Infringement Contentions
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`and related production provisions set forth in Patent Local Rules 3.3 and 3.4 be extended by 56
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`days to fall on the same date as Amazon’s Initial Invalidity and Unenforceability Contentions.
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`Such an extension would allow for analysis of B.E.’s allegations against Amazon, and for entry
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`of a protective order governing the production of highly confidential technical information, in-
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`cluding any source code. Such source code comprises trade secrets and other highly confidential
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`technical information, requiring specific protections that are not set forth in the Appendix A to
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`the Patent Local Rules.
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`Amazon also proposes, based on the complexity of the case and potential third-party prior
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`art, that the procedures of Patent Local Rule 4.7 be modified to provide for the close of fact dis-
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`covery 60 (rather than 30) days following issuance of the Court’s claim construction ruling and
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`that the timing of Patent Local Rule 5.1(b) be modified to provide for initial expert witness dis-
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`closures 60 (rather than 30) days following issuance of the Court’s claim construction ruling.
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`Additionally, Amazon respectfully requests that the deadline for Final Non-Infringement
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`Contentions, Invalidity Contentions and Unenforceability Contentions be extended until 30 days
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`following issuance of the Court’s claim construction ruling. This will allow some time for eval-
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`uating any Final Infringement Contentions.
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`Case 2:12-cv-02767-JPM-tmp Document 39 Filed 01/16/13 Page 4 of 7 PageID 318
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`(3)
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`Case Management Issues
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`B.E.’s position: B.E.’s position is this action should be consolidated, for claim construc-
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`tion, discovery, and trial on issues of invalidity and unenforceability, with all of the other patent
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`infringement actions filed by B.E. in this Court involving the same patents at issue.
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`B.E.’s position is that there are no other case management issues that would impact any
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`party’s ability to conform to the Local Patent Rules.
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`Amazon’s position: Any consolidation of this case with the other unrelated actions filed
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`by B.E. in this district is improper and highly prejudicial, and involuntary consolidation of any
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`issues for trial is impermissible under 35 U.S.C. § 299(c). B.E.’s allegations in these cases are
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`directed against a wide range of different technologies and independently developed products.
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`The cases will have significantly different factual issues because of the disparate features and
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`functionalities of the accused products provided by the unrelated defendants. Based on B.E.’s
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`infringement theories against these different products, the cases will include different prior art to
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`be presented at trial by each defendant. Accordingly, Amazon believes any consolidated pro-
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`ceedings or trial—including trial on invalidity and unenforceability—would be improper and
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`highly prejudicial.
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`As noted above, if the Court is nonetheless inclined to hold a consolidated claim con-
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`struction hearing, Amazon requests the option for separate claim construction disclosures and
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`briefing, with additional time for coordination among the different defendants where possible.
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`Regarding discovery, Amazon believes that some coordination on discovery may be pos-
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`sible but that discovery should not be consolidated generally across the different cases. Rather,
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`the parties should meet and confer with respect to coordination of discovery that may be com-
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`mon across multiple cases and submit a discovery plan with any such agreements prior to the pa-
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`tent scheduling conference.
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`Case 2:12-cv-02767-JPM-tmp Document 39 Filed 01/16/13 Page 5 of 7 PageID 319
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`Respectfully submitted,
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`By: s/Craig R. Kaufman
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`Facsimile: (650) 593-6301
`rfreitas@ftklaw.com
`ckaufman@ftklaw.com
`jlin@ftklaw.com
`qolaniran@ftklaw.com
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`Facsimile: (901) 527-3746
`rcarter@martintate.com
`asimpson@martintate.com
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`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
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`By: s/Mark Vorder-Bruegge, Jr
`(per email consent dated 1/16/13)
`Glen G. Reid, Jr. (#8184)
`greid@wyattfirm.com
`Mark Vorder-Bruegge, Jr. (#06389)
`mvorder-bruegge@wyattfirm.com
`WYATT, TARRANT & COMBS, LLP
`The Renaissance Center
`1715 Aaron Brenner Dr., Suite 800
`Memphis, TN 38120-4367
`Ph: 901.537-1000; Fax: 901.537.1010
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`-and-
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`Dated: January 16, 2013
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`Dated: January 16, 2013
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`Case 2:12-cv-02767-JPM-tmp Document 39 Filed 01/16/13 Page 6 of 7 PageID 320
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`
`J. David Hadden
`Email: dhadden@fenwick.com
`Darren F. Donnelly
`Email: ddonnelly@fenwick.com
`Saina S. Shamilov
`Email: sshamilov@fenwick.com
`Ryan J. Marton
`Email: rmarton@fenwick.com
`Clifford Webb
`Email: cwebb@fenwick.com
`Justin G. Hulse
`Email: jhulse@fenwick.com
`FENWICK & WEST LLP
`801 California Street, 6th Floor
`Mountain View, CA 94041
`Ph: 650.988-8500; Fax: 650.938.5200
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`Counsel for Defendant
`AMAZON DIGITAL, INC.
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`Case 2:12-cv-02767-JPM-tmp Document 39 Filed 01/16/13 Page 7 of 7 PageID 321
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`CERTIFICATE OF SERVICE
`I hereby certify that on this 16th day of January, 2013, a copy of the foregoing was
`filed and served through the Court’s CM/ECF system
`
`Glen G. Reid, Jr.
`Mark Vorder-Bruegge, Jr.
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`Phone: 901.537.1000
`Facsimile: 901.537.1010
`greid@wyattfirm.com
`mvorder-bruegge@wyattfirm.com
`
`J. David Hadden
`Darren E. Donnelly
`Saina Shamilov
`Justin G. Hulse
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Tel: (650) 988-8500
`dhadden@fenwick.com
`ddonnelly@fenwick.com
`sshamilov@fenwick.com
`jhulse@fenwick.com
`
`Ryan J. Marton
`Clifford Webb
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Tel: (415) 875-2350
`rmarton@fenwick.com
`cwebb@fenwick.com
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`s/Craig R. Kaufman
`Craig R. Kaufman
`Attorney for Plaintiff