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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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`GOOGLE INC.,
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`Defendant.
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`Case No. 2:12-cv-2830 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 Google Inc. (“Google”) jointly submit this Patent Scheduling Conference Notice
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`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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`Google believes this action is not yet ripe for a Patent Scheduling Conference of the
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`scope prescribed in Local Patent Rule (“LPR”) 2.1(d). On December 18, 2012, pursuant to 28
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`U.S.C. § 1404(a), Google filed a motion to transfer this action to the Northern District of
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`California. (D.I. 22). 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 more of the patents-in-suit in this action, already have
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`filed similar motions seeking transfer, a majority of them to the Northern District of California,
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`and Google understands that additional transfer motions will be filed shortly. In view of these
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`Case 2:12-cv-02830-JPM-tmp Document 30 Filed 01/10/13 Page 2 of 8 PageID 236
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`transfer motions Google respectfully submits that efficient judicial administration and the
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`interests of all parties to the 19 cases filed by B.E. would be best served by first determining the
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`judicial district(s) in which these actions should be venued before proceeding with discovery or
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`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, Google 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 18
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`cases are deemed ripe for a full Patent Scheduling Conference within the meaning of LPR 2.1(d)
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`and the preparation process for it that would be required by LPR 2.1(b) and (c). Google submits
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`that such an initial management conference encompassing all 19 cases is authorized under Fed.
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`R. Civ. P. 16(a)(1)-(3) at the Court’s discretion for purposes of case management and efficiency.
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`While Google does not believe the cases should be consolidated or even be conducted
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`concurrently in all respects, there are certain elements of the proceedings in each case wherein
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`the actions required of the parties, or to be addressed by the Court, would be more efficient, and
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`not vulnerable to additional confusion, if conducted concurrently. For example, an initial case
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`management conference jointly encompassing the 19 cases would provide the opportunity to
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`discuss whether a Joint Patent Scheduling Conference (and the actions of the parties required in
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`advance thereof) would be beneficial or efficient if and when such time for a Patent Scheduling
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`Conference should arise. Second, it would provide the opportunity to discuss whether other
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`portions of the procedures in the 19 cases should be coordinated, such as a joint claim
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`construction hearing, depositions, and other discovery. Google notes that as a result of
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`unopposed motions filed by the defendants in each of the 19 cases, December 31, 2012 was fixed
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`as a uniform date for the “Responsive Pleading” as defined in LPR 1.3 (answer or Rule 12
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`- 2 -
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`Case 2:12-cv-02830-JPM-tmp Document 30 Filed 01/10/13 Page 3 of 8 PageID 237
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`motion) across the 19 cases (except for one case where that deadline was fixed a week later, at
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`January 7, 2013). Because many of the requirements in the Local Patent Rules are based on this
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`date, these 19 cases now share virtually identical deadlines under the Local Patent Rules. An
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`initial multi-case management conference would provide an opportunity to fully discuss what
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`similarities and differences in the cases may permit, or interfere with, the setting of parallel
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`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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`Google does not believe this case should be consolidated with any other patent
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`infringement action filed by B.E. in this Court involving the same patents at issue. Should the
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`1 For ’314 Patent: 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. Pandora Media, Inc., 2:12-cv-02782 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. Microsoft Corporation, 2:12-
`cv-02829 JPM-tmp; B.E. Technology, L.L.C. v. Apple Inc., 2:12-cv-02831 JPM-tmp.
`For ’290 Patent: B.E. Technology, L.L.C. v. Amazon Digital Services, Inc., 2:12-cv-02767
`JPM-tmp; B.E. Technology, L.L.C. v. Barnes & Noble, Inc., 2:12-cv-02823 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. 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-02830-JPM-tmp Document 30 Filed 01/10/13 Page 4 of 8 PageID 238
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`Court consider consolidation, Google requests that the parties be allowed the opportunity to fully
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`brief this issue and requests a hearing.
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`Google respectfully requests that this Court consider the following modifications to the
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`requirements of the Local Patent Rules:
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`First, as discussed above, Google respectfully requests that the Court address its pending
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`motion seeking transfer of this action, before proceeding with the Patent Scheduling Conference
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`and that the Court suspend all other procedures and filings called for in the Local Patent Rules
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`until such motion is determined. If Google’s motion is granted, the parties will be subject to a
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`different case management order and schedule. Google submits that this approach would
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`minimize any negative impact on judicial economy by helping to avoid duplication of effort
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`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, Google requests that its Initial Non-
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`Infringement Contentions pursuant to LPR 3.3 be rescheduled from 28 days after service of the
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`Initial Infringement Contentions to 90 days after the Responsive Pleading is filed. Google
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`believes 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 having to enter a formal stay of discovery.
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`Third, Google 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 Google’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. With respect to
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`some anticipated disclosures, such an order arguably needs to be even stricter than the “default”
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`Case 2:12-cv-02830-JPM-tmp Document 30 Filed 01/10/13 Page 5 of 8 PageID 239
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`
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`attorney-eyes-only provisions of the Local Patent Rule’s. The patents-in-suit relate to a
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`computerized method for presenting advertisements to users and to graphical user interfaces and
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`user profiles, all implemented through computer software. As such, Google expects that the
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`documents and information contemplated by LPR 3.4 may require inspection of Google’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, Google believes that the procedures of LPR 4.7 should be amended to provide for
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`the 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 Google’s transfer motion (D.I. 22-1, pp. 5-6, 10), Google
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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. Google believes that a 60
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`day window to close fact discovery following the Court’s claim construction ruling is in the
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`interest of justice to ensure an adequate time for Google to seek discovery of facts relevant to
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`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, Google believes that the procedures
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`of 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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`to be served 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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`Case 2:12-cv-02830-JPM-tmp Document 30 Filed 01/10/13 Page 6 of 8 PageID 240
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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 Local
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`Patent Rules and Google 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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`Google does not believe this case should be consolidated with any other patent
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`infringement action filed by B.E. in this Court involving the same patents at issue. Should the
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`Court consider consolidation, Google respectfully requests that the parties be allowed the
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`opportunity to fully brief this issue and requests 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.
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`Google believes there may be other case management issues that could arise during the
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`course of this litigation and reserves its 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)
`Craig R. Kaufman (CA Bar No. 159458)
`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
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`Case 2:12-cv-02830-JPM-tmp Document 30 Filed 01/10/13 Page 7 of 8 PageID 241
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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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`Respectfully submitted,
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`By: s/Glen G. Reid, Jr.(per email consent dated 1/10/13)
`Glen G. Reid, Jr. (#8184)
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`
`Glen G. Reid, 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
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`s/Mark Vorder-Bruegge, Jr. (#06389)
`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
`mvorder-bruegge@wyattfirm.com
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`Attorneys for Defendant
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`Dated: January 10, 2013
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`Of counsel:
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`A. John P. Mancini
`MAYER BROWN LLP
`1675 Broadway
`New York, NY 10019-5820
`(212) 506-2500
`jmancini@mayerbrown.com
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`Brian A. Rosenthal, pro hac pending
`Ann Marie Duffy, pro hac pending
`MAYER BROWN, LLP
`1999 K Street, NW
`Washington, DC 20006
`(202) 263-3000
`brosenthal@mayerbrown.com
`aduffy@mayerbrown.com
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`Attorneys for Defendant
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`Case 2:12-cv-02830-JPM-tmp Document 30 Filed 01/10/13 Page 8 of 8 PageID 242
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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.
`
`Glen G. Reid, Jr.
`Mark Vorder-Bruegge, Jr.
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`Tel: 901.537.1000
`greid@wyattfirm.com
`mvorder-bruegge@wyattfirm.com
`
`A. John P. Mancini
`MAYER BROWN LLP
`1675 Broadway
`New York, NY 10019
`Tel: 212.506.2295
`jmancini@mayerbrown.com
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`Brian A. Rosenthal
`Ann Marie Duffy
`Mayer Brown LLP
`1999 K Street, NW
`Washington, D.C. 20006
`Tel: (202) 263-3000
`brosenthal@mayerbrown.com
`aduffy@mayerbrown.com
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`s/Craig R. Kaufman
`Craig R. Kaufman
`Attorney for Plaintiff
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