Case 2:12-cv-02823-JPM-tmp Document 29 Filed 01/10/13 Page 1 of 9 PageID 116
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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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`BARNES & NOBLE, INC.,
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`Defendant.
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`Case No. 2:12-CV-2823 JPM tmp
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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 Barnes & Noble, Inc. (“Barnes & Noble”) jointly submit this Patent Scheduling
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`Conference 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 is this action is ripe to be scheduled for a Patent Scheduling Conference.
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`B.E. believes that the Court should hold a consolidated conference to address consolidation of
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`the related cases and other issues related to judicial economy and efficiency.
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`Barnes & Noble believes this action is not yet ripe for a Patent Scheduling Conference of
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`the scope prescribed in Local Patent Rule (“LPR”) 2.1(d). On January 7, 2013, pursuant to 28
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`U.S.C. § 1404(a), Barnes & Noble filed a motion to transfer this action to the Northern District
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`of California. (D.I. 28). Most of the defendants in the eighteen other actions filed by Plaintiff in
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`this District, all of which assert one or both of the patent-in-suit in this action and a related
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`patent, already have filed similar motions seeking transfer, a majority of them to the Northern
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`District of California, and Barnes & Noble understands that additional transfer motions will be
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`Case 2:12-cv-02823-JPM-tmp Document 29 Filed 01/10/13 Page 2 of 9 PageID 117
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`filed shortly. In view of these transfer motions Barnes & Noble respectfully submits that
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`efficient judicial administration and the interests of all parties to the 19 cases filed by B.E. would
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`be best served by first determining the judicial district(s) in which these actions should be
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`venued before proceeding with discovery or further scheduling of this action.
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`Alternatively, should the Court be inclined not to defer all activity in the case(s) until
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`venue is determined, Barnes & Noble respectfully submits that an initial multi-case management
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`conference comprising only counsel for the parties should be held before this case, or the other
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`18 cases, are deemed ripe for a full Patent Scheduling Conference within the meaning of LPR
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`2.1(d) and the preparation process for it that would be required by LPR 2.1(b) and (c). Barnes &
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`Noble submits that such an initial management conference encompassing all 19 cases is clearly
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`authorized under Fed. R. Civ. P. 16(a)(1)-(3), at the Court’s discretion for purposes of case
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`management and efficiency. While Barnes & Noble does not believe the cases should be
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`consolidated or even be conducted concurrently in all respects, there are certain elements of the
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`proceedings in each case wherein the actions required of the parties, or to be addressed by the
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`Court, would be more efficient, and not vulnerable to additional confusion, if conducted
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`concurrently. For example, an initial case management conference jointly encompassing the 19
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`cases would provide the opportunity to discuss whether a Joint Patent Scheduling Conference
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`(and the actions of the parties required in advance thereof) would be beneficial or efficient if and
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`when such time for a Patent Scheduling Conference should arise. Second, it would provide the
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`opportunity to discuss whether other portions of the procedures in the 19 cases should be
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`coordinated, such as a joint claim construction hearing, depositions, and other discovery. Barnes
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`& Noble notes that 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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`Case 2:12-cv-02823-JPM-tmp Document 29 Filed 01/10/13 Page 3 of 9 PageID 118
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`in LPR 1.3 (answer or Rule 12 motion) across the 19 cases (except for one case where that
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`deadline was fixed a week later, at January 7, 2013). Because many of the requirements in the
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`Local Patent Rules are based on this date, 18 of the 19 cases now share virtually identical
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`deadlines under the Local Patent Rules. An initial multi-case management conference would
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`provide an opportunity to fully discuss what similarities and differences in the cases may permit,
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`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.’s position is this action should be consolidated with the other B.E. actions pending
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`before this Court for consolidated claim construction proceedings and a trial on invalidity and
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`unenforceability of the patents-in-suit1 and that no modifications to the deadlines set by the
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`Patent Local Rules are necessary, beyond any minor modifications necessary to synchronize the
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`actions.
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`Barnes & Noble does not believe this case should be consolidated with any other patent
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`infringement actions filed by B.E. in this Court. Should the Court consider consolidation, Barnes
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`& Noble respectfully requests that the parties be allowed the opportunity to fully brief this issue
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`and request a hearing.
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`Barnes & Noble respectfully requests that this Court consider the following modifications
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`to the requirements of the Local Patent Rules:
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`1 B.E. Technology, L.L.C. v. Amazon Digital Services, Inc., 2:12-cv-02767 JPM-tmp; B.E.
`Technology, L.L.C. v. Motorola Mobility Holdings LLC, 2:12-cv-02866 JPM-tmp; B.E.
`Technology, L.L.C. v. Samsung Electronics America, Inc., 2:12-cv-02825 JPM-tmp; B.E.
`Technology, L.L.C. v. Samsung Telecommunications America, LLC, 2:12-cv-02824 JPM-tmp;
`B.E. Technology, L.L.C. v. Sony Computer Entertainment America LLC, 2:12-cv-02826 JPM-
`tmp; B.E. Technology, L.L.C. v. Sony Electronic Inc., 2:12-cv-02828 JPM-tmp; B.E. Technology,
`L.L.C. v. Sony Mobile Communications (USA) Inc., 2:12-cv-02827 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-02823-JPM-tmp Document 29 Filed 01/10/13 Page 4 of 9 PageID 119
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`First, as discussed above, Barnes & Noble respectfully requests that the Court address its
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`pending motion seeking transfer of this action, before proceeding with the Patent Scheduling
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`Conference and that the Court suspend all other procedures and filings called for in the Local
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`Patent Rules until such motion is determined. If Barnes & Noble’s motion is granted, the parties
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`will be subject to a different case management order and schedule. Moreover, Barnes & Noble
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`submits that this approach would minimize any negative impact on judicial economy by helping
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`avoid duplication of effort between this Court and a transferee venue.
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`Second, should the Court not suspend all procedures and filings called for the in the
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`Local Patent Rules pending resolution of the venue issue, Barnes & Noble requests that its
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`Initial Non-Infringement Contentions pursuant to LPR 3.3 be rescheduled from 28 days after
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`service of the Initial Infringement Contentions to 90 days after the Responsive Pleading is filed.
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`Barnes & Noble makes this request for two reasons. First, Barnes & Noble believes that such an
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`extension may provide the Court sufficient time to rule on the pending motion to transfer venue
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`before the parties have to engage in substantial discovery efforts without the Court having to
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`enter a formal stay of discovery. Second, on January 7, 2013, B.E. served its Initial Infringement
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`Contentions pursuant to LPR 3.1 identifying additional accused products not previously
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`identified in B.E.’s Complaint as well as “all reasonably similar products and/or services.”
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`Given this language in its Initial Infringement Contentions, Barnes & Noble still does not have a
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`full and complete understanding of what products and services are actually accused of infringing
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`the patents-in-suit and will have to take added measures to get such information from B.E. It is
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`unlikely Barnes & Noble will get this information from B.E. in sufficient time to meet its
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`requirements under LPR 3.3 and 3.4 as the current schedule stands.
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`Case 2:12-cv-02823-JPM-tmp Document 29 Filed 01/10/13 Page 5 of 9 PageID 120
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`Third, Barnes & Noble believes that the provisions of LPR 3.4, requiring producing or
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`making available for inspection and copying copies of documents relating to Barnes & Noble’s
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`non-infringement contentions, should be made contingent upon the entry of a suitable protective
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`order governing the production of highly confidential technical information, including source
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`code. With respect to some anticipated disclosures, such an order arguably needs to be even
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`stricter than the “default” attorney-eyes-only provisions of the Local Patent Rules. The patent-
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`in-suit relates to a computerized method. As such, Barnes & Noble expects that the documents
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`and information contemplated by LPR 3.4 may require inspection of Barnes & Noble’s
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`proprietary source code. Such source code comprises trade secrets and other highly confidential
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`technical information. In the event the parties are unable to agree on a form of protective order
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`and require this Court’s involvement to resolve an impasse, LPR 3.4 should be made contingent
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`upon entry of a protective order.
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`Fourth, Barnes & Noble believes that the procedures of LPR 4.7 should be amended to
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`provide for the close of fact discovery 60 (rather than 30) days following issuance of the Court’s
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`claim construction ruling. As explained in Barnes & Noble’s transfer motion (D.I. 28, p. 4),
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`Barnes & Noble believes that this case is likely to involve discovery from a number of third-
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`party witnesses knowledgeable about prior art. Depending on the Court’s claim construction
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`rulings, some prior art may become more relevant or additional prior art may be located. Barnes
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`& Noble believes that a 60 day window to close fact discovery following the Court’s claim
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`construction ruling is in the interest of justice to ensure an adequate time for Barnes & Noble to
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`seek discovery of facts relevant to invalidity of the patent-in-suit.
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`Fifth, should LPR 4.7 be amended to provide for the close of fact discovery 60 days
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`following issuance of the Court’s claim construction ruling, Barnes & Noble believes that the
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`Case 2:12-cv-02823-JPM-tmp Document 29 Filed 01/10/13 Page 6 of 9 PageID 121
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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 Barnes & Noble believes the 30 day window should remain if LPR 4.7 is amended as
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`requested.
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`(3)
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`Case Management Issues
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`B.E.’s position is this action should be consolidated, for claim construction, discovery,
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`and trial on issues of invalidity and unenforceability, with all of the other patent infringement
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`actions filed by B.E. in this Court involving the same patents at issue.
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`Barnes & Noble does not believe this case should be consolidated with any other patent
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`infringement actions filed by B.E. in this Court. Should the Court consider consolidation, Barnes
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`& Noble respectfully requests that the parties be allowed the opportunity to fully brief this issue
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`and request a hearing.
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`B.E. believes 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. Barnes & Noble believes there may be
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`other case management issues that could arise during the course of this litigation and reserves its
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`right to address those issues at the appropriate time(s).
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`Dated: January 10, 2013
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`Respectfully submitted,
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`By: s/Craig R. Kaufman
`Robert E. Freitas (CA Bar No. 80948)
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`Case 2:12-cv-02823-JPM-tmp Document 29 Filed 01/10/13 Page 7 of 9 PageID 122
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`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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`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
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`By: s/Mark Vorder-Bruegge, Jr.
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`(per email consent dated 1/10/13)
`Mark Vorder-Bruegge, Jr. (#06389)
`WYATT TARRANT & COMBS LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`Telephone: (901) 537-1000
`Facsimile: (901) 537-1010
`mvorder-bruegge@wyattfirm.com
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`David Eiseman (California Bar No. 114758)
`Brett Watkins (New York Bar No. 716222)
`Pamela L. Van Dort (California Bar No. 258546)
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`1299 Pennsylvania Avenue NW
`Suite 825
`Washington, D.C. 20004
`Telephone: (202) 538-8000
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`Dated: January 10, 2013
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`Case 2:12-cv-02823-JPM-tmp Document 29 Filed 01/10/13 Page 8 of 9 PageID 123
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`Facsimile: (202) 538-8100
`davideiseman@quinnemanuel.com
`brettwatkins@quinnemanuel.com
`pamelavandort@quinnemanuel.com
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`Attorneys for Defendant Barnes & Noble, Inc.
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`Case 2:12-cv-02823-JPM-tmp Document 29 Filed 01/10/13 Page 9 of 9 PageID 124
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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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`David Eiseman
`Brett Watkins
`Pamela L. Van Dort
`QUINN EMANUEL URQUHART & SULLIVAN
`1229 Pennsylvania Avenue NW, Suite 825
`Washington, DC 20004
`Phone: (202) 538-8000
`Facsimile: (202) 538-8100
`davideiseman@quinnemanuel.com
`brettwatkins@quinnemanuel.com
`pamelavandort@quinnemanuel.com
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`s/Craig R. Kaufman
`Craig R. Kaufman
`Attorney for Plaintiff
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