Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 1 of 10 PageID 286
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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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`SPARK NETWORKS, INC.,
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`Defendant.
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`Case No. 2:12-cv-2832 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 Spark Networks, Inc. (“Spark”) 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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`A.
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`B.E.’s Position
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`B.E.’s position is this action is ripe to be scheduled for a Patent Scheduling Conference.
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`B.E. believes that the Court should hold a consolidated conference to address consolidation of
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`the related cases and other issues related to judicial economy and efficiency.
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`B.
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`Spark’s Position
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`Spark believes this action is not ripe for a Patent Scheduling Conference. On December
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`21, 2012, pursuant to 28 U.S.C. § 1404(a), Spark filed a motion to transfer this action to the
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`Central District of California or, in the alternative, to the Northern District of California. (D.I.
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`20) Virtually all of the defendants in the 18 other cases filed by B.E. in this Court that assert
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`infringement of the same patent as is asserted here (the ‘314 patent) have moved, or intend to
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`Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 2 of 10 PageID 287
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`move, to transfer those actions to other venues. In view of these transfer motions, Spark believes
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`that discovery and further scheduling of this action should be stayed until the Court first
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`determines the judicial district(s) in which these actions should be venued. See In re Fusion-IO,
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`Inc., 2012 U.S. App. LEXIS 26311 (Fed. Cir. Dec. 21, 2012) (non-precedential order on writ of
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`mandamus).
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`In the alternative, if the Court prefers not to defer all activities in the case until venue is
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`determined, Spark respectfully submits that the Court should hold a preliminary multi-case
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`management conference, to be attended by counsel for all parties, before this or any of the other
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`18 cases is deemed ripe for a Patent Scheduling Conference within contemplation of LPR Rule
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`2.1(d) or the preparation for such a conference pursuant to LPR Rules 2.1(b) and (c). Rule
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`16(a)(1)-(3), Fed. R. Civ. P., authorizes such an initial, plenary multi-case management
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`conference.
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`While Spark does not believe the cases should be consolidated or even 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. First, an initial case
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`management conference involving all 19 cases would provide an opportunity to discuss whether
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`a Joint Patent Scheduling Conference would be more beneficial or provide efficiencies if and
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`when the time comes for a Patent Scheduling Conference. Second, an initial case management
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`conference would provide an opportunity to discuss whether other portions of the procedures of
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`the 19 cases should be coordinated, such as a joint claim construction hearing, depositions, and
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`other discovery. Spark notes, in this respect, that, while 11 of the 19 cases involve the same ‘314
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`patent as is asserted here, 3 of those cases involve that patent and one other patent, and 8 cases
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`Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 3 of 10 PageID 288
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`do not involve the patent asserted here at all. Thus, there are issues to consider in connection
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`with deciding whether and how the various cases might be coordinated.
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`Spark also notes that all but one of the 19 cases currently share the same deadlines with
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`regard to the Local Patent Rules, because the answers in those cases were filed on the same day
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`(December 31, 2012). An initial case management conference would enable discussion of how
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`the cases are similar or different (for instance, in regard to the asserted patents as mentioned
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`above, and the accused products), and how those similarities or differences might facilitate or
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`impede the currently parallel case schedules.
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`(2) Modifications to the Local Patent Rules
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`A.
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`B.E.’s Position
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`B.E.’s position is this action should be consolidated with the other B.E. actions pending
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`before this Court for consolidated claim construction proceedings and a trial on invalidity and
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`unenforceability of the patents-in-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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`B.
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`Spark’s Position
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`While some level of coordination among the cases may serve the interests of judicial
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`economy, Spark does not believe that this case should be consolidated with any other patent
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`infringement actions filed by B.E. in this Court involving the same patent at issue. Should the
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`1
`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. 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;
`B.E. Technology, L.L.C. v. Apple Inc., 2:12-cv-02831 JPM-tmp.
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`Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 4 of 10 PageID 289
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`Court consider consolidation, Spark respectfully requests that the parties be provided an
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`opportunity to fully brief and argue this issue.
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`Spark respectfully requests that the 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 in Section (1)B, Spark believes the Court should decide Spark’s
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`pending transfer motion before proceeding with a Patent Scheduling Conference, and that all
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`other procedures and filings contemplated by the Local Patent Rules should be suspended
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`pending resolution of that transfer motion. If Spark’s motion is granted, the parties will be
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`subject to a different case management order and schedule, regardless of whether the case is
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`transferred to the Central or Northern District of California. Moreover, Spark submits that this
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`approach would minimize any negative impact on judicial economy by helping to avoid
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`duplication of effort between this Court and a transferee venue.
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`Second, if the Court does not suspend all procedures and filings called for in the Local
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`Patent Rules pending resolution of the venue issue, Spark requests that the deadline for service of
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`its Initial Non-Infringement Contentions pursuant to LPR 3.3 be rescheduled from 28 days after
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`service of the Initial Infringement Contentions to 90 days after filing of Spark’s Answer, to be
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`due on the same date as Spark’s Initial Invalidity and Unenforceability Contentions as set forth
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`in LPR 3.5. Such an extension will allow for analysis of B.E’s new allegations of infringement
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`of many claims against Spark’s many websites. B.E.’s Complaint identified only a single claim
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`– claim 11 – of the ‘314 patent as allegedly infringed, but did not identify any of Spark’s
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`websites as being accused of that infringement. On January 7, 2013, however, B.E. served its
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`Initial Infringement Contentions pursuant to LPR 3.1, which for the first time identified 7 claims
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`as being infringed (claims 11, 12, 13, 15, and 18-20) by 5 specifically identified Spark websites
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`Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 5 of 10 PageID 290
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`“and any other products and/or services identified in the attached Appendix A, and all reasonably
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`similarly products and/or services.” Appendix A contains 61 pages of claim charts, and Spark
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`has more than two dozen websites. Additional time is needed to adequately respond to B.E.’s
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`infringement contentions. Moreover, such an extension may provide the Court sufficient time to
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`rule on the pending motion to transfer venue before the parties have to engage in substantial
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`discovery efforts and without the Court having to enter a formal stay of discovery.
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`Third, Spark 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 Spark’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. Spark
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`respectfully submits that such a protective order needs to be even stricter than the “default”
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`attorney-eyes-only provisions of the Local Patent Rules with respect to documentation like
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`source code. The ‘314 patent-in-suit relates to a computerized method for presenting
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`advertisements to users. As such, Spark expects that the documents and information
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`contemplated by LPR 3.4 will likely include inspection of Spark’s proprietary source code and,
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`possibly, the source code of third-party advertisement servers. Such source code comprises trade
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`secrets and other highly confidential technical information. Protective orders providing
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`specialized treatment of source code even more restrictive than “attorneys’ eyes only” are
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`commonplace and necessary to ensure that Spark’s most sensitive technical information – the
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`source code that drives its business – is adequately protected in view of the security risks
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`involved. For instance, protective orders covering source code may restrict production of the
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`source code for inspection only on a stand-alone computer located at a secure location in
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`producing counsel’s office or on the producing party’s premises, limit the number of pages
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`produced following inspection, prohibit the storage of produced source code on a networked
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`computer, limit the number of copies that may be made of produced pages, and so forth
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`depending on the circumstances of a particular situation. See, for example, Polycom, Inc. v.
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`Codian, Ltd., 2007 U.S. Dist. LEXIS 4293, 10-13 (E.D. Tex. Jan. 22, 2007) In the event the
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`parties are unable to agree on a form of protective order and require this Court’s involvement to
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`resolve an impasse, LPR 3.4 should be made contingent upon entry of a protective order.
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`Fourth, Spark 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 Spark’s transfer motion (D.I. 20, pp. 6, 13-14), Spark
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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. Spark 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 Spark 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, Spark 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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`Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 7 of 10 PageID 292
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`and expert discovery. This 30 day window is currently provided for by the Local Patent Rules,
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`and Spark believes the 30 day window should remain if LPR 4.7 is amended as requested.
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`Additionally, Spark believes that the deadline for Final Non-Infringement Contentions,
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`Invalidity Contentions and Unenforceability Contentions should be extended until 30 days
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`following issuance of the Court’s claim construction ruling. This will allow some time for
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`evaluating any Final Infringement Contentions.
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`(3)
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`Case Management Issues
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`A.
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`B.E.’s Position
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`B.E.’s position is this action should be consolidated, for claim construction, discovery,
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`and trial on issues of invalidity and unenforceability, with all of the other patent infringement
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`actions filed by B.E. in this Court involving the same patents at issue.
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`B.
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`Spark’s Position
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`As mentioned above, Spark believes that this case should not be consolidated with any
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`other patent infringement actions filed by B.E. in this Court involving the same patent at issue.
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`Should the Court consider consolidation, Spark respectfully requests that the parties be provided
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`an opportunity to fully brief and argue this issue. B.E.’s allegations against different defendants
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`concern different patents, and are directed against a wide range of different technologies and
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`unrelated products that were independently developed by the parties. There will be significant
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`factual differences between the cases regarding the features and functionalities of the accused
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`products, and consequently what prior art is most relevant for trial in each case dependent on
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`B.E.’s specific infringement allegations. Spark thus believes any consolidated proceedings or
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`trial – including trial on invalidity and unenforceability – would be improper and highly
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`prejudicial.
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`Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 8 of 10 PageID 293
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`If the Court is nonetheless inclined to hold a consolidated claim construction hearing,
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`Spark requests that the Court allow for separate claim construction disclosures and briefing, with
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`additional time for coordination among the Defendants where possible.
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`Respectfully submitted,
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`Dated: January 10, 2013
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`By: s/Craig R. Kaufman
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`Facsimile: (650) 593-6301
`rfreitas@ftklaw.com
`ckaufman@ftklaw.com
`jlin@ftklaw.com
`qolaniran@ftklaw.com
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`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`Facsimile: (901) 527-3746
`rcarter@martintate.com
`asimpson@martintate.com
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`
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`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
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`By: s/Glen G. Reid, Jr. (per email consent dated 1/10/13)
`Glen G. Reid, Jr. (#8184)
`Mark Vorder-Bruegge, Jr. (#06389)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`Phone: 901.537.1000
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`Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 9 of 10 PageID 294
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`Facsimile: 901.537.1010
`greid@wyattfirm.com
`mvorder-bruegge@wyattfirm.com
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`Laurence S. Rogers (admission pending)
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`Phone: 212.596.9033
`Facsimile: 212-596-9090
`Laurence.Rogers@ropesgray.com
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`Brandon H. Stroy (admission pending)
`ROPES & GRAY LLP
`1900 University Avenue
`East Palo Alto, CA 94303
`Phone: 650.617.4028
`Facsimile: 650.617.4090
`Brandon.Stroy@ropesgray.com
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`Attorneys for Defendant
`Spark Networks, Inc.
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`Case 2:12-cv-02832-JPM-tmp Document 27 Filed 01/10/13 Page 10 of 10 PageID 295
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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 by counsel for plaintiff B.E. Technology, L.L.C. through the Court’s CM/ECF
`system.
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`Laurence S. Rogers
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`Phone: 212.596.9033
`Facsimile: 212-596-9090
`Laurence.Rogers@ropesgray.com
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`Brandon H. Stroy
`ROPES & GRAY LLP
`1900 University Avenue
`East Palo Alto, CA 94303
`Phone: 650.617.4028
`Facsimile: 650.617.4090
`Brandon.Stroy@ropesgray.com
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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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`s/Craig R. Kaufman
`Craig R. Kaufman
`Attorney for Plaintiff
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