Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 1 of 10 PageID 572
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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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`GOOGLE INC.,
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`Civil Action No. 2:12-cv-02830-JPM-tmp
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`Defendant.
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`JOINT MOTION (INCLUDING MEMORANDUM) OF
`PLAINTIFF B.E. TECHNOLOGY, LLC and DEFENDANT GOOGLE INC.
`TO MODIFY CERTAIN LOCAL PATENT RULES DEADLINES
`AND RESTORE UNIFORMITY TO RELATED CASE SCHEDULES
`(WITH CERTIFICATE OF CONSULTATION)
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`Plaintiff B.E. Technology, LLC (“plaintiff”) and defendant Google Inc. (“Google” or
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`“defendant”) jointly move the Court to enter the accompanying proposed Order, modifying the
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`deadlines for four events under the Local Patent Rules (LPR’s) in this action. This joint motion
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`results from extensive consultation between counsel for these parties as well as the majority of
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`the defendants in eighteen other, related actions filed by plaintiff in this Court. It is anticipated
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`that at least the vast majority of those other defendants, including but not limited to all twelve
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`represented by the same undersigned defense counsel, will join with plaintiff in equivalent
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`motions in those other cases as well.
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`The effect of this motion and the ones to follow, if granted, would be to restore the
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`uniformity of schedules in all affected actions that existed prior to the entry of stays of all
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`Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 2 of 10 PageID 573
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`proceedings during the Court’s consideration of motions to transfer their venue, for all cases
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`whose venue is not transferred.
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`The four event deadlines encompassed by this motion (and the anticipated ones in the
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`other cases) are for Google’s service of non-infringement and invalidity contentions and
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`production of related documents (LPR 3.3-3.6) and plaintiff’s validity and enforceability
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`contentions (LPR 3.7); and both parties’ exchange of preliminary and final patent claim terms to
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`be construed under LPR 4.1(a) and (c). Except for one minor change requested by plaintiff and
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`agreed to by defendant(s), no amendment of other LPR deadlines would be necessary to the
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`objective of this motion (and the ones to follow) because all other deadlines either follow
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`intervals from the foregoing ones automatically under the LPR’s, or will be tied to the Patent
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`Scheduling Conference date not yet determined by the Court, or will not begin to run until the
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`Court makes a Claim Construction Ruling. The total effect of the relief sought would be to
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`establish the following amended deadlines for all the affected actions, measured from the date of
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`entry of the last Order granting or denying a pending motion to transfer venue (the “Last
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`Order”):
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`1. Initial Non-Infringement Contentions: Modified to 30 days from the Last
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`2. Invalidity and Unforceability Contentions: Modified to 60 days from the Last
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`Order;
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`Order;
`3. Preliminary Identification of Claim Terms to be Construed: Modified to 65
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`days from the Last Order;
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`4. Validity and Enforceability Contentions: 42 days after Event 2, a modification
`of 21 days from the automatic LPR deadline;
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`5. Final Identification of Claim Terms to be Construed: Modified to 75 days
`from the Last Order;
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`6. Preliminary Claim Constructions and Supporting Material: Automatically 14
`days from the preceding event;
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`7. Initial Expert Claim Construction Reports: Automatically 14 days from the
`preceding event;
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`8. Rebuttal Expert Claim Construction Reports: Automatically 14 days from the
`preceding event;
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`Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 3 of 10 PageID 574
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`9. Completion of Expert Discovery: Automatically 14 days from the preceding
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`event;
`10. Final Claim Construction: Automatically 7 days from the preceding event;
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`11. Opening Claim Construction Briefs: Automatically 14 days from the
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`preceding event;
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`12. Responsive Claim Construction Briefs: Automatically 30 days from the
`preceding event;
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`13. Joint Claim Construction and Prehearing Statement: Automatically 7 days
`from the preceding event;
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`14. Claim Construction Hearing: As set by the Court pursuant to LPR 4.6;
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`15. Remaining LPR events: Automatically timed from the Court’s Claim
`Construction Ruling.
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`As further support and explanation for this joint motion, the parties respectfully show the
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`following, all established from the Docket in this action and the eighteen other related cases:
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`1. Between September 7 and October 10, 2012, plaintiff filed nineteen actions in this
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`Court against nineteen defendants, including this action against Google (filed September 21),
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`alleging infringement of one or more of three U.S. Patents involving certain computer interface
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`technology. A table identifying the docket numbers, defendants, filing dates, patent(s) asserted,
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`and other logistical information referenced below, for each of the nineteen cases, is attached to
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`this motion.
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`2. By previous unopposed motions in each case, the deadline for the “Responsive
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`Pleading,” as defined by the LPR’s, was set at December 31, 2012 in every case except the one
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`against Amazon Digital Services, Inc. (“Amazon”), which was set just a week later. Because all
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`of the early disclosures and related actions of the parties under the LPR’s are tied either directly
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`or indirectly to the Responsive Pleading date, except events tied directly to the Patent Scheduling
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`Conference date when set by the Court, the uniform Responsive Pleading dates had the effect of
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`putting all of the actions on parallel schedules.
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`3. Parallel attributes of the schedules in these cases have substantial present and future
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`value. Although the plaintiff and each of the defendants do not agree fully on formal
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`Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 4 of 10 PageID 575
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`consolidation of the cases, a review of the Patent Scheduling Conference Notices filed by the
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`parties in each case (see ECF numbers in the attached table) reveal that all parties agree that at
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`least some concurrence of the schedules makes sense. And obviously, if the Court decides at a
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`future time to schedule certain events in the cases together, concurrence of their schedules would
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`assure the simultaneous readiness of all affected cases for those events.
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`4. Between December 18, 2012, and February 12, 2013, each of the nineteen defendants
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`filed motions to transfer venue to another District under 28 U.S.C. 1404. Subsequently, each
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`defendant moved to stay proceedings in its action pending the Court’s decision on venue. After
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`the Court began granting these individual stay motions, plaintiff did not oppose the remaining
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`motions (although it did not consent to them). Within a short period, the Court entered stay
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`Orders in all nineteen actions. The date of the stay Order in each action is included in the
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`attached table. Each stay Order was entered at a varying point during the periods prescribed for
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`each defendant to serve its initial non-infringement and invalidity contentions (with many
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`subsequent deadlines flowing from those events as previously summarized). Understandably and
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`consistent with the purpose of the stay Orders, the defendants suspended work on these matters,
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`some of which would not be required at all in the proposed transferee forums.
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`5. On May 24, 2013, the Court denied defendant Google’s motion to transfer and lifted
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`the stay previously imposed in the instant case (ECF No. 45). As of the filing of this instant
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`motion, the Court has not yet ruled on any of the other eighteen motions for transfer of the other
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`cases, and the stays in all of those cases remain in effect.
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`6. For each action retained in this venue, the pending stay will of course be lifted. When
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`that occurs, the time periods remaining for the above-mentioned contentions will vary
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`considerably, and time periods for subsequent events will vary in like measure. Further and even
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`Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 5 of 10 PageID 576
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`greater variations may occur due to varying dates when stays are lifted. Naturally, the parties do
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`not presume to tell the Court, either directly or by some “forecast,” when the Court will or
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`should rule on the remaining transfer motions in relation to the many other matters on the
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`Court’s docket. Rather, the best method to restore uniformity to the schedules of all actions
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`ultimately retained in this District is to re-initiate the schedule prescribed by the LPR’s, currently
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`stayed in 18 of the 19 total actions, on an identical date – the date when all of the stays have been
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`lifted.
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`7. The LPR’s give the Court broad discretion to “modify the obligations or deadlines set
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`forth in the[m] … based on the circumstances of any particular case, including, without
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`limitation, the simplicity or complexity of the case as shown by the … parties involved.” LPR
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`1.5. The Court has equivalent express power to manage schedules under Fed.R.Civ.P. 16 and 26,
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`and equivalent inherent powers. The fact that this case, and each of the 18 others, involve a total
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`of twenty parties and correspondingly extensive sets of activities for their preparation and
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`disposition surely presents a situation of aggregate complexity contemplated in the LPRs’
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`provisions for scheduling flexibility. The relief sought here would restore uniformity to all
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`nineteen case schedules (and even eliminate the original seven-day difference in the Amazon
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`case schedule) or such smaller number as may remain in this district after the Court rules on all
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`pending transfer motions.
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`8. In this instant action against Google and in the eighteen others, the stays also
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`suspended the time for response to motions under Fed.R.Civ.P. 12 to strike defenses and/or
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`dismiss counterclaims set forth in the defendants’ answers, and suspended the Court’s
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`consideration of motions to enlarge that response time in certain actions. The Order denying
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`transfer and lifting the stay in this action included a new deadline for Google to respond to such a
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`Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 6 of 10 PageID 577
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`motion to strike (see ECF No. 45), and Google already filed a timely response (ECF No. 46). It
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`is assumed that Orders lifting stays in the other related actions that have Rule 12 motions
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`pending will include similar determinations of the new deadlines for responding to those Rule 12
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`motions. Accordingly, the schedule modifications sought in this motion, expected to be joined in
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`by defendants in the other actions, would not affect the periods otherwise fixed by the Court for
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`responding to Rule 12 motions.
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`CERTIFICATE OF CONSULTATION
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`The foregoing motion is presented by plaintiff and defendant jointly, based on successful
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`consultation compliant with the Court’s Local Rule 7.2.
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`Respectfully submitted,
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`s/Glen G. Reid, Jr.
`Glen G. Reid, Jr. (#8184)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`Telephone: 901.537.1000
`Facsimile: 901.537.1010
`greid@wyattfirm.com
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`s/Mark Vorder-Bruegge, Jr.
`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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`A. John P. Mancini
`MAYER BROWN LLP
`1675 Broadway
`New York, NY 10019-5820
`Telephone: (212) 506-2500
`jmancini@mayerbrown.com
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`6
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`Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 7 of 10 PageID 578
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`Brian A. Rosenthal
`Ann Marie Duffy
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`brosenthal@mayerbrown.com
`aduffy@mayerbrown.com
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`Attorneys for Defendant Google Inc.
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`s/Richard M. Carter (per consent MVB)
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6401 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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`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`Daniel J. Weinberg (CA Bar No. 227159)
`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
`dweinberg@ftklaw.com
`jlin@ftklaw.com
`qolaniran@ftklaw.com
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`Attorneys for Plaintiff B.E. Technology, L.L.C.
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`Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 8 of 10 PageID 579
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`CERTIFICATE OF SERVICE
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`The foregoing document has been filed using the Court’s CM/ECF system, thereby
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`automatically effecting electronic mail service upon all parties through their counsel of record.
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`s/Mark Vorder-Bruegge, Jr.
`Mark Vorder-Bruegge, Jr.
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`8
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`Case 2:12-cv-02830-JPM-tmp Document 47 Filed 06/19/13 Page 9 of 10 PageID 580
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`ATTACHMENT TO JOINT MOTION (INCLUDING MEMORANDUM) OF
`PLAINTIFF B.E. TECHNOLOGY, LLC and DEFENDANT GOOGLE INC.
`TO AMEND CERTAIN LOCAL PATENT RULE DEADLINES
`AND RESTORE UNIFORMITY TO RELATED CASE SCHEDULES
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`U.S. Patent Names:
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`U.S. Patent No. 6,141,010, “Computer Interface Method and Apparatus with Targeted
`Advertising”
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`U.S. Patent No. 6,628,314, “Computer Interface Method and Apparatus with Targeted
`Advertising”
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`U.S. Patent No. 6,771,290, “Computer Interface Method and Apparatus with Portable Network
`Organization System and Targeted Advertising”
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`Docket No.
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`Defendant Name
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`Filing Date
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`Patent(s)
`Asserted
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`2:12-cv-02767
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`Amazon
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`2:12-cv-02769
`2:12-cv-02772
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`2:12-cv-02781
`2:12-cv-02782
`2:12-cv-02783
`2:12-cv-02823
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`2:12-cv-02824
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`2:12-cv-02825
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`2:12-cv-02826
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`2:12-cv-02827
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`2:12-cv-02828
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`Facebook, Inc.
`LinkedIn
`Corporation
`Groupon, Inc.
`Pandora Media, Inc.
`Twitter, Inc.
`Barnes & Noble,
`Inc.
`Samsung
`Telecommunications
`America, LLC
`Samsung
`Electronics
`America, Inc.
`Sony Computer
`Entertainment
`America LLC
`Sony Mobile
`Communications
`(USA) Inc.
`Sony Electronics
`Inc.
`2:12-cv-02829 Microsoft
`Corporation
`Google Inc.
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`2:12-cv-02830
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`2:12-cv-02831
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`Apple Inc.
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`09/07/12
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`09/07/12
`09/07/12
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`09/10/12
`09/10/12
`09/10/12
`09/21/12
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`09/21/12
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`6,771,290
`6,141,010
`6,628,314
`6,628,314
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`6,628,314
`6,628,314
`6,628,314
`6,771,290
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`6,771,290
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`09/21/12
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`6,771,290
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`09/21/12
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`6,771,290
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`09/21/12
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`6,771,290
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`09/21/12
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`09/21/12
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`09/21/12
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`09/22/12
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`6,771,290
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`6,628,314
`6,771,290
`6,628,314
`6,771,290
`6,628,314
`6,771,290
`6,628,314
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`2:12-cv-02832
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`Spark Networks,
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`09/22/12
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`9
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`Patent
`Scheduling
`Conference
`Notice ECF No.
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`39
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`31
`28
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`22
`24 and 25
`27
`29
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`24
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`28
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`22
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`26
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`21
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`29
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`30
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`31
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`27
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`Stay Entered
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`02/12/13
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`02/08/13
`02/12/13
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`02/11/13
`02/08/13
`02/11/13
`02/14/13
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`02/08/13
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`02/08/13
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`02/11/13
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`02/11/13
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`02/11/13
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`02/11/13
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`02/11/13
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`02/11/13
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`02/14/13
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`09/22/12
`09/22/12
`10/02/12
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`6,628,314
`6,628,314
`6,771,290
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`25
`22
`27
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`02/12/13
`02/12/13
`02/11/13
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`Inc.
`People Media, Inc.
`2:12-cv-02833
`2:12-cv-02834 Match.com L.L.C.
`2:12-cv-02866 Motorola Mobility
`Holdings LLC
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`10