Case 2:12-cv-02828-JPM-tmp Document 21 Filed 01/10/13 Page 1 of 7 PageID 76
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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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`SONY ELECTRONICS INC.,
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`Defendant.
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`Case No. 2:12-cv-2828 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 Sony Electronics Inc. (“SEL”) 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.’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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`SEL believes that this action is not ripe for a Patent Scheduling Conference because,
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`under the Local Patent Rules, SEL and the eighteen other parties B.E. has sued would be
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`required to perform a significant amount of work that would be unnecessary if the Court grants
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`the transfer motions that have been or are about to be filed in the cases brought by B.E. If the
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`Patent Scheduling Conference were to proceed, SEL would need to analyze and prepare
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`positions on claim construction, motion practice, summary judgment, the protective order,
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`discovery, and the other topics in LPR 2.1(b). The considerable resources expended to prepare
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`Case 2:12-cv-02828-JPM-tmp Document 21 Filed 01/10/13 Page 2 of 7 PageID 77
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`for a Patent Scheduling Conference will be unnecessarily duplicated by both the parties and the
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`Court if the case is transferred. SEL therefore submits that a Patent Scheduling Conference be
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`scheduled only after SEL’s transfer motion, to be filed next week, is decided.
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`In addition, to prepare for the Patent Scheduling Conference, there is a significant amount
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`of work related to the technology that would need to be done under LPR 2.1(d)(2) – work that
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`has grown exponentially due to B.E. choosing to vastly increase the scope of this lawsuit. In
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`B.E.’s Initial Infringement Contentions (“PICs”), it has turned the originally-filed, bare-bones
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`Complaint naming 14 products, into an action accusing 133 allegedly SEL products and
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`instrumentalities, many in entirely new product categories. To be prepared for the Patent
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`Scheduling Conference and discuss each accused apparatus, product, device, process, method,
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`act, or other instrumentality, see LPR 2.1(d)(2), SEL will need time to investigate the vastly
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`expanded scope of products. Since B.E. disclosed just three days ago the 133 products and
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`instrumentalities that are now accused of infringement (despite having months of preparation),
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`SEL should be given sufficient time to organize its own response, which it can do if the Patent
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`Scheduling Conference is stayed until after SEL’s transfer motion is decided.
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`SEL also does not believe that this case should be consolidated. While B.E. has not yet
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`filed a motion to consolidate, in the event that the Court is inclined to entertain such a motion,
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`SEL respectfully requests that a briefing schedule be set so that the parties can more fully
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`address the issue and be heard.
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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-suit. B.E. is willing to agree to a two-week extension to the
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`Case 2:12-cv-02828-JPM-tmp Document 21 Filed 01/10/13 Page 3 of 7 PageID 78
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`deadline for SEL’s initial non- infringement contentions (L.P.R. 3.3 and 3.4) provided that no
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`modifications to the remaining deadlines set by the Local Patent Rules are necessary, beyond any
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`minor modifications necessary to synchronize the actions. Notwithstanding the large number of
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`products identified in the contentions, the infringement allegations against SEL have common
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`elements because most infringing products operate the same way. B.E. has offered to provide
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`SEL with a correlation table that shows the common elements amongst the accused products. As
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`such, B.E. disputes SEL’s contentions that B.E.’s infringement contentions are so unduly
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`burdensome as to require a lengthy extension of time.
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`The Local Patent Rules require SEL to be ready to discuss “each” accused product, a
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`significant effort notwithstanding the fact that there may be some common elements among
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`them. SEL believes that B.E.’s proposal to agree to a two week extension and provide a
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`correlation chart is insufficient given the voluminous number of products added in B.E.’s PICs
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`and does nothing to prevent the duplicative work should SEL’s transfer motion be granted. SEL
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`respectfully requests that this Court consider the following modifications to the requirements of
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`the Local Patent Rules:
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`First, as discussed above, SEL respectfully requests that a Patent Scheduling Conference
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`be scheduled only after the Court addresses its transfer motion.
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`Second, SEL respectfully requests that the deadline for serving its non-infringement
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`contentions be modified so that they are due on the same day as B.E.’s invalidity contentions
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`under LPR 3.5. Currently, under LPR 3.3, SEL’s non-infringement contentions are due on
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`February 4, 2013, leaving less than 30 days to respond to more than 3,900 pages of significantly
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`expanded infringement contentions and over a hundred products that were identified for the first
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`time this week. B.E. has had months to prepare its infringement contentions. Modifying the
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`Case 2:12-cv-02828-JPM-tmp Document 21 Filed 01/10/13 Page 4 of 7 PageID 79
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`deadline for non-infringement contentions will permit the Court to rule on SEL’s transfer motion
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`as well as SEL to properly consider and respond to B.E.’s recent infringement contentions.
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`Third, SEL 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. SEL believes that this case is likely to involve discovery from a number of
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`third-party witnesses knowledgeable about prior art and accused functionalities. Depending on
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`the Court’s claim construction rulings, some prior art may become more relevant or additional
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`prior art may be located. SEL believes that a 60-day window to close fact discovery following
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`the Court’s claim construction ruling is in the interest of justice to ensure an adequate time for
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`SEL to seek discovery of facts relevant to invalidity.
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`Fourth, 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, SEL believes that the procedures of
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`LPR 5.1(b) should be amended to provide for the initial expert witness disclosures required by
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`Rule 26 of the Federal Rules of Civil Procedure on issues for which it bears the burden of proof
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`90 (rather than 60) days following the Court’s claim construction ruling. Should LPR 4.7 be
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`amended, extending the deadline for expert disclosures from 60 to 90 days following issuance of
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`the Court’s claim construction ruling will provide 30 days between the close of fact discovery
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`and expert discovery. This 30-day window is currently provided for under the Local Patent
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`Rules and SEL believes the 30-day window should remain if LPR 4.7 is amended as requested.
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`Lastly, SEL believes that the provisions of LPR 3.4, requiring producing or making
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`available for inspection and copying copies of documents relating to SEL’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 SEL confidential information. In the event the parties are unable to agree on a form
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`Case 2:12-cv-02828-JPM-tmp Document 21 Filed 01/10/13 Page 5 of 7 PageID 80
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`of protective order and require this Court’s involvement to resolve an impasse, LPR 3.4 should
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`be made contingent upon entry of a protective order.
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`SEL also repeats that it does not believe this case should be consolidated. Should the
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`Court consider consolidation, SEL respectfully requests that the parties be allowed the
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`opportunity to fully brief this issue.
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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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`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 actions filed by B.E. in this Court
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`against related Sony entities: B.E. Technology, L.L.C. v. Sony Computer Entertainment America
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`LLC, 2:12-cv-02826 JPM-tmp; B.E. Technology, L.L.C. v. Sony Mobile Communications (USA)
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`Inc., 2:12-cv-02827 JPM-tmp.
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`Again, SEL does not believe this case should be consolidated. Should the Court consider
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`consolidation, SEL respectfully requests that the parties be allowed the opportunity to fully brief
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`and be heard on this issue.
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`Other than the issues identified above in sections (1) and (2), B.E. 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)
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`Case 2:12-cv-02828-JPM-tmp Document 21 Filed 01/10/13 Page 6 of 7 PageID 81
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`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/John Flock (per email consent dated 1/10/13)
`John Flock
`Michael E. Sander
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`212.425.7200
`jflock@kenyon.com
`msander@kenyon.com
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`Attorneys for Defendant
`Sony Electronics Inc.
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`Dated: January 10, 2013
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`Case 2:12-cv-02828-JPM-tmp Document 21 Filed 01/10/13 Page 7 of 7 PageID 82
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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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`John Flock
`Michael E. Sander
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`212.425.7200
`jflock@kenyon.com
`msander@kenyon.com
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`s/Craig R. Kaufman
`Craig R. Kaufman
`Attorney for Plaintiff