Case 2:12-cv-02866-JPM-tmp Document 27 Filed 01/10/13 Page 1 of 8 PageID 191
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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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`MOTOROLA MOBILITY
`HOLDINGS LLC,
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`Defendant.
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`Case No. 2:12-cv-02866 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 Motorola Mobility Holdings LLC (“Motorola”) jointly submit this Patent Scheduling
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`Conference Notice informing the Court:
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`(1)
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`Scheduling for a Patent Scheduling Conference
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`B.E.’s position is this action is ripe to be scheduled for a Patent Scheduling Conference.
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`B.E. believes that the Court should hold a consolidated conference to address consolidation of
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`the related cases and other issues related to judicial economy and efficiency.
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`Motorola 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), Motorola filed a motion to transfer this action to the Northern District of
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`California. (D.I. 18). 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 Motorola understands that additional transfer motions will be filed shortly. In view of these
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`Case 2:12-cv-02866-JPM-tmp Document 27 Filed 01/10/13 Page 2 of 8 PageID 192
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`transfer motions Motorola 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, Motorola 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). Motorola
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`submits that such an initial management conference encompassing all 19 cases is authorized
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`under Fed. R. Civ. P. 16(a)(1)-(3) at the Court’s discretion for purposes of case management and
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`efficiency. While Motorola does not believe the cases should be consolidated or even be
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`conducted concurrently in all respects, there are certain elements of the proceedings in each case
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`wherein the actions required of the parties, or to be addressed by the Court, would be more
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`efficient, and not vulnerable to additional confusion, if conducted concurrently. For example, an
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`initial case management conference jointly encompassing the 19 cases would provide the
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`opportunity to discuss whether a Joint Patent Scheduling Conference (and the actions of the
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`parties required in advance thereof) would be beneficial or efficient if and when such time for a
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`Patent Scheduling Conference should arise. Second, it would provide the opportunity to discuss
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`whether other portions of the procedures in the 19 cases should be coordinated, such as a joint
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`claim construction hearing, depositions, and other discovery. Motorola 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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`Case 2:12-cv-02866-JPM-tmp Document 27 Filed 01/10/13 Page 3 of 8 PageID 193
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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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`Motorola 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, Motorola requests that the parties be allowed the opportunity to
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`fully brief this issue and requests a hearing.
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`Motorola 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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`1 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.
`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. 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-02866-JPM-tmp Document 27 Filed 01/10/13 Page 4 of 8 PageID 194
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`First, as discussed above, Motorola respectfully requests that the Court address its
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`pending motion seeking transfer of this action, before proceeding with the Patent Scheduling
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`Conference and that the Court suspend all other procedures and filings called for in the Local
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`Patent Rules until such motion is determined. If Motorola’s motion is granted, the parties will be
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`subject to a different case management order and schedule. Motorola submits that this approach
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`would minimize any negative impact on judicial economy by helping to avoid duplication of
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`effort 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, Motorola 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. Motorola
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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, Motorola 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 Motorola’s non-
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`infringement contentions, be made contingent upon the entry of a suitable protective order
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`governing the production of highly confidential technical information, including source code.
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`With respect to some anticipated disclosures, such an order arguably needs to be even stricter
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`than the “default” attorney-eyes-only provisions of the Local Patent Rule’s. The patent-in-suit
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`relates to graphical user interfaces and user profiles implemented through computer software. As
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`such, Motorola expects that the documents and information contemplated by LPR 3.4 may
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`require inspection of Motorola’s proprietary source code. Such source code comprises trade
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`Case 2:12-cv-02866-JPM-tmp Document 27 Filed 01/10/13 Page 5 of 8 PageID 195
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`secrets and other highly confidential technical information. In the event the parties are unable to
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`agree on a form of protective order and require this Court’s involvement to resolve an impasse,
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`LPR 3.4 should be made contingent upon entry of a protective order.
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`Fourth, Motorola believes that the procedures of LPR 4.7 should be amended to provide
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`for 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 Motorola’s transfer motion (D.I. 18-1, pp. 5-6, 10-11),
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`Motorola believes that this case is likely to involve discovery from a number of third-party
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`witnesses knowledgeable about prior art. Depending on the Court’s claim construction rulings,
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`some prior art may become more relevant or additional prior art may be located. Motorola
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`believes that a 60 day window to close fact discovery following the Court’s claim construction
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`ruling is in the interest of justice to ensure an adequate time for Motorola to seek discovery of
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`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 days
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`following issuance of the Court’s claim construction ruling, Motorola believes that the
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`procedures of LPR 5.1(b) should be amended to provide for the initial expert witness disclosures
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`required by Rule 26 of the Federal Rules of Civil Procedure on issues for which it bears the
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`burden of proof to be served 90 (rather than 60) days following the Court’s claim construction
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`ruling. Should LPR 4.7 be amended, extending the deadline for expert disclosures from 60 to 90
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`days following issuance of the Court’s claim construction ruling will provide 30 days between
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`the close of fact discovery and expert discovery. This 30 day window is currently provided for
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`under the Local Patent Rule and Motorola believes the 30 day window should remain if LPR 4.7
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`is amended as requested.
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`(3)
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`Case Management Issues
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`Case 2:12-cv-02866-JPM-tmp Document 27 Filed 01/10/13 Page 6 of 8 PageID 196
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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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`Motorola does not believe 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 patents at issue. Should the
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`Court consider consolidation, Motorola 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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`Motorola 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)
`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
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`Case 2:12-cv-02866-JPM-tmp Document 27 Filed 01/10/13 Page 7 of 8 PageID 197
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`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 (per email consent dated 1/10/13)
`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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`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-02866-JPM-tmp Document 27 Filed 01/10/13 Page 8 of 8 PageID 198
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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
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`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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