Case 2:12-cv-02782-JPM-cgc Document 24 Filed 01/10/13 Page 1 of 8 PageID 275
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff,
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`v.
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`PANDORA MEDIA, INC.,
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`Defendant.
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`Case No. 2:12-cv-02782 JPM cgc
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`JURY TRIAL DEMANDED
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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
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`Defendant Pandora Media, Inc. (“Pandora”) jointly submit this Patent Scheduling Conference
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`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: B.E.’s position is this action is ripe to be scheduled for a Patent Scheduling
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`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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`Pandora: Pandora believes this action is not ripe for a Patent Scheduling Conference.
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`On December 26, 2012, Pandora filed a motion to transfer this action to the Northern District of
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`California. (D.I. 19). Pandora understands that all or nearly all of the other defendants in the
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`eighteen other actions filed by Plaintiff in this District have filed, or plan to file, motions seeking
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`transfer, a majority of them to the Northern District of California. In view of these transfer
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`motions, Pandora respectfully submits that efficient judicial administration and the interests of
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`all parties to the 19 cases filed by B.E. would be best served by first determining the judicial
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`Case 2:12-cv-02782-JPM-cgc Document 24 Filed 01/10/13 Page 2 of 8 PageID 276
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`district(s) in which these actions should be venued before proceeding with discovery, other
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`action or further scheduling of this action. Cf. In re Fusion-IO, Inc., No. (Misc.) 139, 2012 WL
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`6634939 at 2 (Fed. Cir. December 21, 2012) (nonprecedential) (“We fully expect . . . for the
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`district court to act on [motions to stay and transfer] before proceeding to any motion on the
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`merits of the action.”); In re Horseshoe Entm’t, 337 F.2d 429, 433 (5th Cir. 2003) (“As
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`indicated earlier, Horseshoe filed its motion to transfer timely and before it filed its answer and
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`in our view disposition of that motion should have taken a top priority in the handling of this
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`case[.]”).
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`Should the Court be inclined to not defer all activity in the case until venue is determined,
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`Pandora submits an initial case management conference comprising only counsel for the parties
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`be held before this case, or the other 18 cases, are deemed ripe for a full Patent Scheduling
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`Conference pursuant to LPR2.1(d). Pandora submits that such an initial management conference
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`for all the cases is authorized under Fed. R. Civ. P. 16(a)(1)-(3), at the Court’s discretion for
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`purposes of case management and efficiency. While Pandora does not believe this case should
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`be consolidated or even conducted concurrently in all respects, Pandora recognizes certain
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`efficiencies to holding an initial case management conference jointly among the 19 cases. First,
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`it would provide the opportunity to discuss whether a Joint Patent Scheduling Conference would
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`be beneficial or efficient if and when such time for a Patent Scheduling Conference should arise.
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`Second, it would provide the opportunity to discuss whether other portions of the proceedings of
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`these 19 cases should be coordinated, such as a joint claim construction hearing, depositions or
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`other discovery. As a result of unopposed motions filed by the defendants in each of the 19
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`cases, December 31, 2012 was fixed as a uniform date for the “Responsive Pleading” as defined
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`in Local Patent Rule (“LPR”) 1.3 (answer or Rule 12 motion) across all of the 19 cases except
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`Case 2:12-cv-02782-JPM-cgc Document 24 Filed 01/10/13 Page 3 of 8 PageID 277
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`one. Because many of the requirements in the Local Patent Rules are based on this date, these 19
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`cases now share virtually identical deadlines under the Local Patent Rules. An initial multi-case
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`management conference would provide an opportunity to fully discuss what similarities and
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`differences in the cases may permit, or interfere with, the setting of parallel schedules.
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`(2) Modifications to the Local Patent Rules
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`B.E.: B.E.’s position is this action should be consolidated with the other B.E. actions
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`pending before this Court for consolidated claim construction proceedings and a trial on
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`invalidity and unenforceability of the patents-in-suit1 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
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`synchronize the actions.
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`Pandora: As set forth above, Pandora agrees that some level of coordination among the
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`cases would serve the interests of judicial economy. However, Pandora does not believe this
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`case should be consolidated with any other patent infringement actions filed by B.E. in this
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`Court. Pandora does not consent to consolidation of its case for trial or as to other issues and
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`submits that involuntary joinder is impermissible under 35 U.S.C. § 299(c). Pandora notes that
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`B.E.’s position regarding consolidation should be raised by motion with an opportunity for full
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`briefing.
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`As discussed above, Pandora respectfully requests that the Court address Pandora’s
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`pending transfer motion before proceeding with a Patent Scheduling Conference and that the
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`1 B.E. Technology, L.L.C. v. Facebook, Inc., 2:12-cv-02769 JPM-tmp; B.E. Technology, L.L.C. v.
`Groupon, Inc., 2:12-cv-02781 JPM-tmp; B.E. Technology, L.L.C. v. Match.com L.L.C., 2:12-cv-
`02834 JPM-tmp; B.E. Technology, L.L.C. v. People Media, Inc., 2:12-cv-02833 JPM-tmp; B.E.
`Technology, L.L.C. v. LinkedIn Corporation, 2:12-cv-02772 JPM-tmp; B.E. Technology, L.L.C.
`v. Spark Networks, Inc., 2:12-cv-02832 JPM-tmp; B.E. Technology, L.L.C. v. Twitter, Inc., 2:12-
`cv-02783 JPM-tmp; B.E. Technology, L.L.C. v. Google Inc., 2:12-cv-02830 JPM-tmp; B.E.
`Technology, L.L.C. v. Microsoft Corporation, 2:12-cv-02829 JPM-tmp; B.E. Technology, L.L.C.
`v. Apple Inc., 2:12-cv-02831 JPM-tmp.
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`Case 2:12-cv-02782-JPM-cgc Document 24 Filed 01/10/13 Page 4 of 8 PageID 278
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`Court suspend all other procedures, deadlines and filings called for in the Local Patent Rules
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`until such motion is determined. If Pandora’s transfer motion is granted, the parties will be
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`subject to a different case management order and schedule.
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`In the event the Court schedules an initial case management conference among trial
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`counsel as discussed above, Pandora identifies the following modifications to the Local Patent
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`Rules that may be necessary:
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`Pandora believes that its Initial Non-Infringement Contentions pursuant to LPR 3.3
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`should be rescheduled to be due at the same time that its invalidity contentions will be due under
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`the LPR. Such an extension may provide the Court sufficient time to rule on the pending motion
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`to transfer venue before the parties have to engage in substantial discovery efforts without the
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`Court being asked to enter a formal stay of discovery.
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`Pandora believes that the procedures of LPR 4.7 should be amended to provide for the
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`close of fact discovery 60 (rather than 30) days following issuance of the Court’s claim
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`construction ruling. As explained in Pandora’s transfer motion (D.I. 18, pp. 5-6), Pandora
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`believes that this case is likely to involve discovery from a number of third-party witnesses
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`knowledgeable about prior art. Depending on the Court’s claim construction rulings, some prior
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`art may become more relevant or additional prior art may be located. Additionally, there may be
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`multiple other defendants also seeking the same or similar such discovery during this time frame,
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`which may present additional scheduling difficulties. Therefore, Pandora believes that a 60 day
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`window to close fact discovery following the Court’s claim construction ruling is in the interest
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`of justice to ensure an adequate time for Pandora to seek discovery of facts relevant to invalidity
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`of the patent-in-suit. Should LPR 4.7 be amended to provide for the close of fact discovery 60
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`days following issuance of the Court’s claim construction ruling, Pandora believes that the
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`Case 2:12-cv-02782-JPM-cgc Document 24 Filed 01/10/13 Page 5 of 8 PageID 279
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`procedures of LPR 5.1(b) should be amended to provide for the initial expert witness disclosures
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`required by Rule 26 of the Federal Rules of Civil Procedure on issues for which it bears the
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`burden of proof 90 (rather than 60) days following the Court’s claim construction ruling. Should
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`LPR 4.7 be amended, extending the deadline for expert disclosures from 60 to 90 days following
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`issuance of the Court’s claim construction ruling will provide 30 days between the close of fact
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`discovery and expert discovery. This 30 day window is currently provided for under the LPR
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`and Pandora believes the 30 day window should remain if LPR 4.7 is amended as requested.
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`Pandora believes that the provisions of LPR 3.4, requiring producing or making available
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`for inspection and copying copies of documents relating to Pandora’s non-infringement
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`contentions, be made contingent upon the entry of a suitable protective order governing the
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`production of highly confidential technical information, including source code. Such an order
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`will need to be stricter than the default provisions of the Local Patent Rules. The patent-in-suit
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`relates to a computerized method for presenting advertisements to users. As such, Pandora
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`expects that the documents and information contemplated by LPR 3.4 may require inspection of
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`Pandora’s proprietary source code. Such source code comprises trade secrets and other highly
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`confidential technical information. In the event the parties are unable to agree on a form of
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`protective order and require this Court’s involvement to resolve an impasse, LPR 3.4 should be
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`made contingent upon entry of a protective order.
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`(3)
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`Case Management Issues
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`B.E.: B.E.’s position is this action should be consolidated, for claim construction,
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`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. B.E.
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`Case 2:12-cv-02782-JPM-cgc Document 24 Filed 01/10/13 Page 6 of 8 PageID 280
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`believes that there are no other case management issues that would impact any party’s ability to
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`conform to the Local Patent Rules.
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`Pandora: As set forth above, Pandora believes that if the case proceeds in this venue,
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`some level of coordination among the cases is appropriate, but Pandora objects to consolidation.
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`Should the Court consider consolidation, Pandora respectfully requests that the parties be
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`allowed the opportunity to fully brief this issue and request a hearing. Pandora believes there
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`may be other case management issues that could arise during the course of this litigation and
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`reserves its right to address those issues at the appropriate times.
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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
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`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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`Dated: January 10, 2013
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`Case 2:12-cv-02782-JPM-cgc Document 24 Filed 01/10/13 Page 7 of 8 PageID 281
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`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
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`Respectfully submitted,
`BANNER & WITCOFF, LTD.
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`By: s/J. Pieter van Es (per email consent dated 1/9/13)
`J. Pieter van Es
`Matthew P. Becker
`Azuka C. Dike
`Ten S. Wacker Dr. Ste. 3000
`Chicago, IL 60606
`(312) 463-5000
`pvanes@bannerwitcoff.com
`mbecker@bannerwitcoff.com
`adike@bannerwitcoff.com
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`Glen G. Reid. Jr. (# 8184)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Dr., Suite 800
`Memphis, TN 38120-4367
`Phone: 901.537.1069
`Facsimile: 901.537.1010
`greid@wyattfirm.com
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`Mark Vorder-Bruegge, Jr. (# 06389)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Dr., Suite 800
`Memphis, TN 38120-4367
`Phone: 901.537.1069
`Facsimile: 901.537.1010
`mvorder-bruegge@wyattfirm.com
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` Attorneys for Defendant
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`Dated: January 10, 2013
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`Case 2:12-cv-02782-JPM-cgc Document 24 Filed 01/10/13 Page 8 of 8 PageID 282
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`CERTIFICATE OF SERVICE
`I hereby certify that on this 10th day of January, 2013, a copy of the foregoing was
`filed through the Court’s CM/ECF system.
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`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
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`J. Pieter van Es
`Matthew P. Becker
`Azuka C. Dike
`BANNER& WITCOFF, LTD.
`Ten S. Wacker Dr. Ste. 3000
`Chicago, IL 60606
`Phone: (312) 463-5000
`Facsimile: (312) 463-5001
`pvanes@bannerwitcoff.com
`mbecker@bannerwitcoff.com
`adike@bannerwitcoff.com
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`s/Craig R. Kaufman
`Craig R. Kaufman
`Attorney for Plaintiff
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