Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 1 of 11 PageID 226
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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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`APPLE INC.,
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`Defendant.
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`Case No. No. 2:12-cv-02831-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 Apple Inc. (“Apple”) 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
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`Conference. B.E. believes that the Court should hold a consolidated conference to
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`address consolidation of the related cases and other issues related to judicial economy
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`and efficiency.
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`Apple’s Position: This matter is not ripe for a Patent Scheduling Conference, for
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`two reasons. First, on December 20, 2012, Apple filed a Motion to Transfer Venue
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`Pursuant to 28 U.S.C. §1404(a), requesting that this action be transferred to the Northern
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`District of California., for the convenience of the parties and witnesses and in the
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`interests of justice. (Dkt. 20.) A substantial number of the defendants in the eighteen
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`other actions filed by Plaintiff in this District, all of which assert one or more of the
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 2 of 11 PageID 227
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`patents-in-suit in this action, have filed similar motions seeking transfer, a majority of
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`them to the Northern District of California. Apple believes that in short order, virtually
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`all of the other defendants will have filed similar motions. Apple respectfully submits
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`that efficient judicial administration and the interests of all parties would best be served
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`by first determining the judicial district(s) in which these actions should be venued, as it
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`is a threshold issue that is common to all the 19 related actions. Further, the Federal
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`Circuit recently stated its expectation that a timely transfer motion be ruled upon before a
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`district court proceeds to the merits. See, In re Fusion I-O, Inc., 2012 WL 6634939, at *1
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`(Fed. Cir. 2012).
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`Second, the Patent Scheduling Conference called for in the Patent Local Rules is
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`geared to a single-defendant case, contemplating detailed case treatment of the individual
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`case, including presentations regarding the technology at issue and attendance by party
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`representatives with settlement authority. In this case, however, B.E. has filed 19
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`separate cases, and a threshold issue is the degree of coordination, if any, the Court will
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`order with respect to issues common to the cases and whether there will be any form of
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`common schedule. Therefore, Apple suggests that rather than setting this matter for the
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`Patent Scheduling Conference called for in the Local Rules (and as requested by B.E.),
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`this Court set an initial joint case management conference. Apple submits that such
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`conferences are authorized under Fed. R. Civ. P. 16(a)(1)-(3), at the Court’s discretion for
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`purposes of case management and efficiency.
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`While Apple does not believe this case is ripe for further scheduling, Apple does
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`recognize certain efficiencies to holding an initial case management conference jointly
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`among the 19 cases. First, it provides the opportunity to discuss whether a Joint Patent
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 3 of 11 PageID 228
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`Scheduling Conference would be beneficial or efficient if and when such time for a
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`Patent Scheduling Conference should arise. Second, it provides the opportunity to
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`discuss how the issue of consolidation (which plaintiff has not yet moved for) should be
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`addressed.
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` One example of where coordination might promote efficient case
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`management is with respect to the filing of a Joint Planning Report and Joint Scheduling
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`Order as required by LPR 2.1(c).
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`Irrespective of any party’s present views on issues such as these, Apple’s
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`fundamental point in suggesting an initial management conference rather than a full
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`Patent Scheduling Conference (or potentially 19 such Patent Scheduling Conferences) at
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`this point, is that an initial multi-case management conference is the best setting in which
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`to discuss precisely what portions of all these processes should proceed concurrently, and
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`what portions should proceed independently.
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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
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`pending before this Court for consolidated claim construction proceedings and a trial on
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`invalidity and unenforceability of the patents-in-suit1 and that no modifications to 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. Google Inc., 2:12-cv-02830
`JPM-tmp; B.E. Technology, L.L.C. v. Microsoft Corporation, 2:12-cv-02829 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;
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 4 of 11 PageID 229
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`deadlines set by the Patent Local Rules are necessary, beyond any minor modifications
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`necessary to synchronize the actions.
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`Apple’s Position:
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`With respect to B.E.’s request for consolidation, including consolidated trials on
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`certain issues, Apple does not consent to joinder and respectfully submits that involuntary
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`joinder is prohibited by 35 U.S.C. § 299(c). Further, B.E.’s position regarding
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`consolidation should be raised by motion with an opportunity for full briefing. As set
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`forth elsewhere in this notice, however, Apple does agree that some level of coordination
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`among the 19 cases would serve the interests of judicial efficiency.
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`If the Court nonetheless decides to proceed with a full Patent Scheduling
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`Conference in this case at this time, Apple respectfully submits that the Court should
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`consider modifying the requirements of the Local Patent Rules as follows:
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`First, as set forth above, Apple respectfully requests that the Court address its
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`pending motion seeking transfer of this action, before proceeding with the Patent
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`Scheduling Conference and that the Court stay all actions on the merits, including staying
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`all other procedures and filings called for in the Local Patent Rules, until such motion is
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`determined. Although the Northern District of California has adopted local patent rules,
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`they differ in material respects from the rules adopted by this District, particularly with
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`respect to the timing and nature of the various sets of infringement and validity related
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`contentions and other discovery and disclosure requirements. Therefore, Apple
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`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.
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 5 of 11 PageID 230
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`respectfully suggests that this Court should first determine whether this matter will be
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`transferred to the Northern District of California, before the parties commit substantial
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`resources to activities required by the Local Patent Rules of this District.
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`Second, as noted previously, Apple suggests that the Court set an initial, joint case
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`management conference encompassing this and the other 18 pending B.E. Technology
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`actions, to address the scheduling and case administration issues that are, and are not,
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`common to all the cases and to consider setting a coordinated set of disclosure, discovery
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`and other deadlines. Based upon the LPR 2.1(a) Notice filed in each action, the Court
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`would normally conduct a Patent Scheduling Conference for that action under LPR
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`2.1(d), the agenda for which is governed concurrently by that LPR and Local Rule 16
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`(see LPR 2.1(d)(1)). The Planning Meeting between BE Tech and each of the defendants
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`to address the matters required in LPR 2.1(b), and the preparation of the Joint Planning
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`Report and Proposed Scheduling Order for each action required by LPR 2.1(c) –
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`mandated at least fourteen and seven days, respectively, before the Patent Scheduling
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`Conference in each action – will merit and entail extensive work, and obviously have a
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`great impact on all of the remaining pretrial and trial proceedings in each action. The
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`purpose inherent in LPR 2.1 will best be served by determination, at this early juncture,
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`of the portions of the LPR 2.1 process that can best be conducted in a coordinated
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`fashion, and the best schedule for both the concurrent and separate portions.
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`Third, Apple respectfully suggests that Apple’s non-infringement contentions
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`under LPR 3.3 and B.E. Technology’s validity contentions under LPR 3.7 be rescheduled
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`to some time after this Court addresses construction of the asserted claims, as this would
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`allow the parties to better target their contentions and arguments and more efficiently
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 6 of 11 PageID 231
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`work with their respective experts. To the extent the Court determines not to grant this
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`request, Apple plans to seek an extension with respect to its non-infringement contentions
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`under LPR 3.3. On January 7, 2012, B.E. served its LPR 3.1 infringement contentions,
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`and identified the following Apple products as allegedly infringing:
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`
`iAd Network
` MacBook (all models from 2006 to present)
` MacBook Air (all models from 2008 to present)
` MacBook Pro (all models from 2006 to present)
` Apple TV (1st Generation)
` Apple TV (2nd Generation)
` Apple TV (3rd Generation)
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`iMac (all models from 2006 to present)
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`iPad
` iPad 2nd Generation
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`
` iPad 3rd Generation
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` iPad 4th Generation
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` iPad mini
`
` iPhone
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` iPhone 3G
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` iPhone 3GS
`
` iPhone 4,
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` iPhone 4S
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` iPhone 5
`
` iPod Touch
`
` iPod Touch (2nd Generation)
` iPod Touch (3rd Generation)
`
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`iPod Touch (4th Generation)
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`iPod Touch (5th Generation)
` Mac Mini (all models from 2006 to present)
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`“all of Defendant’s products and/or services with the following programs, features,
`software, firmware, or applications . . . App Store, iTunes, YouTube, Netflix, and Hulu
`Plus.”
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`B.E.’s claim charts comprise over 350 pages, plus over 2,800 pages of associated document
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`production. This is a very large and unwieldy group of products and associated contentions..
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`Based on the filing date of its complaint, B.E. had almost three and a half months to put together
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`its infringement contentions, not counting the time to perform whatever pre-filing investigation it
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`may have conducted. As a matter of fairness and given the voluminous nature of its contentions,
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 7 of 11 PageID 232
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`Apple respectfully requests that, at a minimum, its LPR 3.3 contentions be extended to occur
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`simultaneously with its LPR 3.5 Invalidity and Unenforceability Contentions.
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`Fourth, Apple 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
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`Court’s claim construction ruling. As explained in Apple’s transfer motion (D.I. 20, pp.
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`6, 13-14), Apple believes that this case is likely to involve discovery from a number of
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`third-party witnesses knowledgeable about prior art. Depending on the Court’s claim
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`construction rulings, some prior art may become more relevant or additional prior art may
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`be located. Apple believes that a 60 day window to close fact discovery following the
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`Court’s claim construction ruling is in the interest of justice to ensure an adequate time
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`for Apple to 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
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`days following issuance of the Court’s claim construction ruling, Apple believes that the
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`procedures of LPR 5.1(b) should be amended to provide for the initial expert witness
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`disclosures required by Rule 26 of the Federal Rules of Civil Procedure on issues for
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`which it bears the burden of proof 90 (rather than 60) days following the Court’s claim
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`construction ruling. Should LPR 4.7 be amended, extending the deadline for expert
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`disclosures from 60 to 90 days following issuance of the Court’s claim construction
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`ruling will provide 30 days between the close of fact discovery and expert discovery.
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`This 30 day window is currently provided for under the LPR and Apple believes the 30
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`day window should remain if LPR 4.7 is amended as requested.
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`Sixth, Apple believes that the provisions of LPR 3.4 (requiring producing or
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`making available for inspection and copying documents relating to Apple’s non-
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`infringement contentions0, be made contingent upon the entry of a suitable protective
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 8 of 11 PageID 233
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`order governing the production of highly confidential technical information, including
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`source code. The patents-in-suit relate to a computerized method for presenting
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`advertisements to users and to graphical user interfaces and user profiles, all implemented
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`through computer software. Therefore, Apple expects that the documents and
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`information contemplated by LPR 3.4 may require inspection of Apple’s proprietary
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`source code and possibly the source code of third-party application developers. Such
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`source code comprises trade secrets and other highly confidential technical information.
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`Even the “temporary,” “attorneys eyes only” protection prescribed in the LPR’s may not
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`have sufficient measures to govern the disclosure of matters such as source code. In the
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`event the parties are unable to agree on a form of protective order and require the Court's
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`involvement to resolve an impasse, LPR 3.4 should be made contingent upon entry of a
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`protective order.
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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,
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`discovery, and trial on issues of invalidity and unenforceability, with all of the other
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`patent infringement actions filed by B.E. in this Court involving the same patents at issue.
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`Apple’s position on this issue is that some level of coordination among the cases
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`may be appropriate, but Apple objects to consolidation, including consolidation for trial,
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`and submits that involuntary consolidation is barred by 35 U.S.C. § 299(c).
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`B.E.’s position is there are no other case management issues that would impact
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`any party’s ability to conform to the Local Patent Rules.
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 9 of 11 PageID 234
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`It is Apple’s position that the schedule of disclosures and discovery called for in
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`the Local Patent Rules will likely need to be varied to reflect the complexity of the case
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`as determined by the voluminous number of products accused by B.E.
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`
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`Dated: January 10, 2013
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`Respectfully submitted,
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`
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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
`
`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
`
`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
`
`_s/Clayton C. James (per email consent dated 1/10/13)
`Clayton C. James
`Srecko Vidmar
`HOGAN LOVELLS LLP
`One Tabor Center, Suite 1500
`1200 Seventeenth Street
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 10 of 11 PageID 235
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`Denver, CO 80202
`(303) 899-7300 (phone)
`(303) 899-7333 (fax)
`clay.james@hoganlovells.com
`lucky.vidmar@hoganlovells.com
`
`s/Glen G. Reid, Jr. (per email consent dated 1/10/13)
`Glen G. Reid, Jr. (#8184)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`(901) 537-1000 (phone)
`(901) 537-1010 (fax)
`greid@wyattfirm.com
`
`s/Mark Vorder-Bruegge, Jr. (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
`(901) 537-1000 (phone)
`(901) 537-1010 (fax)
`mvorder-bruegge@wyattfirm.com
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`Attorneys for Defendant Apple Inc.
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`Case 2:12-cv-02831-JPM-tmp Document 31 Filed 01/10/13 Page 11 of 11 PageID 236
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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
`Phone: 901.537.1000
`Facsimile: 901.537.1010
`greid@wyattfirm.com
`mvorder-bruegge@wyattfirm.com
`
`Clay C. James
`Srecko (Lucky) Vidmar
`C. Matthew Rozier
`HOGAN LOVELLS US LLP
`One Tabor Center, Suite 1500
`1200 Seventeenth Street
`Denver, CO 80202
`Telephone: (303) 899-7300
`Facsimile: (303) 899-7333
`clay.james@hoganlovells.com
`lucky.vidmar@hoganlovells.com
`matt.rozier@hoganlovells.com
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`s/Craig R. Kaufman
`Craig R. Kaufman
`Attorney for Plaintiff