Case 2:12-cv-02824-JPM-tmp Document 24 Filed 01/10/13 Page 1 of 8 PageID 88
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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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`SAMSUNG
`TELECOMMUNICATIONS
`AMERICA, LLC,
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`Defendant.
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`Case No. 2:12-CV-2824 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 (“LPR”) 2.1(a), Plaintiff B.E. Technology, L.L.C. (“B.E.”)
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`and Defendant Samsung Telecommunications America, LLC (“STA”) jointly submit this Patent
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`Scheduling 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:
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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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`STA’s Position:
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`STA believes this action is not ripe for a Patent Scheduling Conference. B.E.’s Initial
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`Infringement Contentions (“PICs”) served earlier this week accuse for the first time a large
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`number of products of infringement. More specifically, in its Complaint, B.E. accused 11
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`products in only 2 product categories (Smart TVs and DVDs) of infringing U.S. Patent No.
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`6,771,290 (“the ’290 patent”). (See Doc. 1.) On January 7, 2013, pursuant to LPR 3.1, B.E.
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`Case 2:12-cv-02824-JPM-tmp Document 24 Filed 01/10/13 Page 2 of 8 PageID 89
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`served its PICs which comprise more than 10,000 pages and have been materially expanded to
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`identify approximately 177 accused products in 8 product categories, including cameras, home
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`theater systems, media players, personal computers, phones and tablets, along with “all
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`reasonably similar products and/or services.” The PICs also identify 19 separate accused
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`functionalities, one or more of which are alleged to be present or used in each accused product.
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`These PICs unreasonably increase the scope of this lawsuit, and the corresponding burdens on
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`STA.
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`Based on this, and for the reasons set forth in the motions to transfer that have been filed
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`by several of the other defendants sued by B.E. in this district, STA expects to move to transfer
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`venue. As will be detailed in STA’s expected motion, the vast majority of the evidence and
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`information relating to B.E.’s claims is not located in this district but is in the hands of the STA
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`entities and numerous third parties.
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`The ’290 patent (the only patent asserted against STA in this case) is also the subject of a
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`motion to dismiss on invalidity grounds filed by Amazon in B.E. Tech., LLC v. Amazon Digital
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`Services, Inc., 12-cv-02767 JPM-tmp. (see Doc. 32). That motion, if successful, would be
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`dispositive of all issues in this case against STA.
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`In view of the transfer motions and Amazon’s motion to dismiss, as well as the complex
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`nature of this case, STA respectfully submits that it is premature to schedule a Patent Scheduling
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`Conference at this time and that efficient judicial administration would be best served by first
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`determining the judicial district(s) in which all of these actions should be venued and deciding
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`Amazon’s motion to dismiss. For example, scheduling a Patent Scheduling Conference at this
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`time would trigger the requirement that the parties prepare and submit a Joint Planning Report
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`and Proposed Scheduling Order addressing each of the detailed topics included in LPR 2.1(b)
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`Case 2:12-cv-02824-JPM-tmp Document 24 Filed 01/10/13 Page 3 of 8 PageID 90
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`and Appendix B to the Local Patent Rules. In addition, in connection with the Patent Scheduling
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`Conference itself, the parties would be required to, among other things, attend the conference in
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`person, discuss the patents and each of the 177 accused products, and bring a sample of each
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`accused product. Requiring the parties to spend the time needed to conduct these activities
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`before it has been determined that this case (and the other cases brought by B.E.) will remain in
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`this Court, and before it is determined that the ’290 patent is even valid, may result in the
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`unnecessary expenditure of resources by both the parties and the Court. STA therefore submits
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`that a Patent Scheduling Conference should be scheduled, if at all, only after STA’s motion to
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`transfer and Amazon’s motion to dismiss are decided.
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`(2) Modifications to the Local Patent Rules
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`B.E.’s Position:
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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-suit. STA has requested that B.E. agree to a lengthy extension
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`to the L.P.R. 3.3 and 3.4 deadlines. B.E. does not believe that such a lengthy extension is
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`warranted. B.E. is willing to agree to a two-week extension to the deadline for STA’s initial
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`non-infringement contentions provided that no modifications to the remaining deadlines set by
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`the Local Patent Rules are necessary, beyond any minor modifications necessary to synchronize
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`the actions. Notwithstanding the large number of products identified in the contentions, the
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`infringement allegations against Samsung have common elements because most infringing
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`products operate the same way. B.E. has offered to provide Samsung with a correlation table
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`that shows the common elements amongst the accused products. As such, B.E. disputes STA’s
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`Case 2:12-cv-02824-JPM-tmp Document 24 Filed 01/10/13 Page 4 of 8 PageID 91
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`contentions that B.E.’s infringement contentions are so unduly burdensome as to require a
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`lengthy extension of time.
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`STA’s Position:
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`Contrary to B.E.’s position, STA does not believe this case should be consolidated or
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`joined with any other patent infringement case filed by B.E. in this Court. B.E.’s allegations
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`across the numerous cases are directed against a wide range of very different technologies and
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`unrelated, independently developed products. Accordingly, any consolidated proceedings or trial
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`– including trial on invalidity and unenforceability – would be improper and highly prejudicial.
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`Should the Court consider consolidation, STA respectfully requests that the parties be permitted
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`the opportunity to fully brief this issue and request a hearing.
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`STA also believes, as discussed above, that a Patent Scheduling Conference should be
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`scheduled, if at all, only after the Court addresses its expected transfer motion and Amazon’s
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`motion to dismiss. In addition, STA believes that the Court should suspend all other procedures
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`and filings called for in the Local Patent Rules until such motions are determined.
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`STA also believes that the deadline for serving its non-infringement contentions and
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`document production under LPR 3.3 and 3.4 should be modified so that they are due on the same
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`day as B.E.’s invalidity contentions under LPR 3.5. Such a modification will both permit the
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`Court to rule on the motions to transfer and dismiss as well as provide STA with additional time
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`to properly consider and respond to the more than 10,000 pages of significantly expanded PICs ,
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`and over a hundred fifty products that were identified for the first time earlier this week -- many
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`of which will require third-party discovery because the PICs accuse software/services that were
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`not developed by STA (see n. 1, supra). STA has asked B.E. to consent to this modification, but
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`B.E. indicated that it would only consent to a two-week extension. In other words, B.E.
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`Case 2:12-cv-02824-JPM-tmp Document 24 Filed 01/10/13 Page 5 of 8 PageID 92
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`consented to a modification of LPR 3.3 and 3.4 so that STA’s initial non-infringement
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`contentions are due within forty-two (42) days after service of B.E.’s initial infringement
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`contentions.
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`Additionally, STA believes, based on the complexity of the case and the numerous
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`accused products and potential third-party prior art, that the procedures of LPR 4.7 should be
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`amended to provide for the close of fact discovery 60 (rather than 30) days following issuance of
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`the Court’s claim construction ruling and LPR 5.1(b) should be amended to provide for the initial
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`expert witness disclosures 90 (rather than 60) days following the Court’s claim construction
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`ruling.
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`Lastly, STA believes that the deadline for Final Non-Infringement Contentions, Invalidity
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`Contentions and Unenforceability Contentions should be extended until 30 days following
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`issuance of the Court’s claim construction ruling. This will allow some time for evaluating any
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`Final Infringement Contentions.
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` (3)
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`Case Management Issues
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`B.E.’s Position:
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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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`B.E.’s position is this action should be consolidated for all purposes, including
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`infringement and damages, with the patent infringement action filed by B.E. in this Court against
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`a related Samsung entity: B.E. Technology, L.L.C. v. Samsung Electronics America, Inc., 2:12-
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`cv-02825 JPM-tmp.
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`STA’s Position:
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`Case 2:12-cv-02824-JPM-tmp Document 24 Filed 01/10/13 Page 6 of 8 PageID 93
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`STA does not believe this case should be consolidated with any other patent infringement
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`actions filed by B.E. in this Court, including the action filed by B.E. against Samsung Electronics
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`America. Should the Court consider consolidation, STA respectfully requests that the parties be
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`allowed the opportunity to fully brief and be heard on this issue.
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`Other than the issues identified above in sections (1) and (2), STA is not presently aware
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`of any other case management issues that would impact any party’s ability to conform to the
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`Local Patent Rules.
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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)
`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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`Case 2:12-cv-02824-JPM-tmp Document 24 Filed 01/10/13 Page 7 of 8 PageID 94
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`s/Jonathan E. Nelson
`(per email consent dated 1/10/13)
`Shepherd D. Tate (TN BPR #05638)
`Jonathan E. Nelson (TN BPR #028029)
`BASS, BERRY & SIMS, PLC
`100 Peabody Place, Suite 900
`Memphis, Tennessee 38103
`Telephone: (901) 543-5900
`Facsimile:
`(901) 543-5999
`Email:
`state@bassberry.com
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`jenelson@bassberry.com
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`Richard C. Pettus (admitted pro hac vice)
`Justin A. MacLean (admitted pro hac vice)
`GREENBERG TRAURIG, LLP
`200 Park Avenue
`New York, NY 10166
`Telephone:
`(212) 801-9200
`Facsimile:
`(212) 801-6400
`Email:
`pettusr@gtlaw.com
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`macleanj@gtlaw.com
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`Attorneys for Defendant, Samsung
`Telecommunications America, LLC
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`Case 2:12-cv-02824-JPM-tmp Document 24 Filed 01/10/13 Page 8 of 8 PageID 95
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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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`Shepherd D. Tate (TN BPR #05638)
`Jonathan E. Nelson (TN BPR #028029)
`BASS, BERRY & SIMS, PLC
`100 Peabody Place, Suite 900
`Memphis, Tennessee 38103
`Telephone: (901) 543-5900
`Facsimile: (901) 543-5999
`Email: state@bassberry.com
`jenelson@bassberry.com
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`Richard C. Pettus
`Justin A. MacLean
`GREENBERG TRAURIG, LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 801-9200
`Facsimile: (212) 801-6400
`Email: pettusr@gtlaw.com
`macleanj@gtlaw.com
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`s/Craig R. Kaufman
`Craig R. Kaufman
`Attorney for Plaintiff
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