Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 1 of 23 PageID #: 27006
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`Blitzsafe Texas, LLC,
`
`
`Plaintiff,
`
`
`
`No. 2:15-cv-01278-JRG-RSP
`
`CONSOLIDATED INTO
`
`No. 2:15-cv-01274-JRG-RSP
`
`JURY TRIAL DEMANDED
`
`
`
`-against-
`
`VOLKSWAGEN GROUP OF AMERICA,
`INC. and VOLKSWAGEN GROUP OF
`AMERICA CHATTANOOGA OPERATIONS,
`LLC,
`
`
`Defendants.
`
`
`
`
`JOINT PRETRIAL ORDER FOR BLITZSAFE v. VOLKSWAGEN TRIAL
`
`The Pretrial Conference is scheduled for January 11, 2017 in Marshall, Texas, pursuant to
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`the Court’s Amended Docket Control Order (Dkt. 311) and Rule 16 of the Federal Rules of Civil
`
`Procedure. As used herein, “Blitzsafe” or “Plaintiff” means Blitzsafe Texas, LLC. As used
`
`herein, “VWGoA” or “Defendants” means Volkswagen Group of America, Inc. and Volkswagen
`
`Group of America Chattanooga Operations, LLC.
`
` The following parties submit this Joint Pretrial Order:
`
`A.
`
`COUNSEL FOR THE PARTIES
`
`1.
`
`Blitzsafe Texas, LLC
`
`Alfred R. Fabricant
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`vrubino@brownrudnick.com
`Alessandra Carcaterra Messing
`Email: amessing@brownrudnick.com
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`Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 2 of 23 PageID #: 27007
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`Shahar Harel
`Email: sharel@brownrudnick.com
`Daniel J. Shea
`Email: dshea@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: (212) 209-4800
`
`Samuel F. Baxter
`sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`
`2.
`
`VWGoA
`
`Deron R. Dacus
`ddacus@dacusfirm.com
`Peter A. Kerr
`pkerr@dacusfirm.com
`THE DACUS FIRM, P.C.
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`
`Michael J. Lennon
`michaellennon@andrewskurthkenyon.com
`Sheila Mortazavi
`sheilamortazavi@andrewskurthkenyon.com
`Michael S. Turner
`michaelturner@andrewskurthkenyon.com
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`
`Susan A. Smith
`susansmith@andrewskurthkenyon.com
`ANDREWS KURTH KENYON LLP
`1350 I Street, N.W.
`Washington, D.C. 20005
`
`2
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`Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 3 of 23 PageID #: 27008
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`
`B.
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`STATEMENT OF JURISDICTION
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`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331
`
`and 1338(a) because this action arises under the patent laws of the United States, including 35
`
`U.S.C. § 1 et seq. Defendant VWGoA disputes that personal jurisdiction is proper in this case.
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`C.
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`NATURE OF ACTION
`
`1.
`
`Blitzsafe’s Statement Regarding the Description of the Case
`
`Plaintiff Blitzsafe alleges that Defendant VWGoA directly infringes and/or indirectly
`
`infringes U.S. Patent No. 7,489,786 (the ’786 patent) and U.S. Patent No. 8,155,342 (the ’342
`
`patent) by making, using, selling, and/or offering for sale in the United States or importing into
`
`the United States Volkswagen and Audi brand automobiles that include accused infotainment
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`systems, collectively, the “Accused Products”. Blitzsafe alleges that VWGoA indirectly
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`infringes by way of contributory and/or induced infringement of the ’786 patent and the ’342
`
`patent.
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`Blitzsafe alleges that Volkswagen and Audi brand automobiles infringe the ’786 patent
`
`because they include, among other things, infotainment systems that include a first connector
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`electrically connectable to a car stereo; a second connector electrically connectable to an
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`aftermarket audio device; an interface connected between the first and second connectors for
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`channeling audio from the after-market audio device to the car stereo; and a microcontroller
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`included in the interface with code that permits the after-market audio device to be controlled by
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`commands from the car stereo and that permits the car stereo to display data obtained from the
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`after-market audio device.
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`Blitzsafe alleges Volkswagen and Audi brand automobiles infringe the ’342 patent
`
`because they include, among other things, infotainment systems that include an integration
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`Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 4 of 23 PageID #: 27009
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`subsystem in communication with a car audio/video system; a first wireless interface in
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`communication with the integration subsystem that establishes a wireless communication link
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`with a second wireless interface in communication with an external portable device; the
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`integration subsystem obtaining information about an audio file from the portable device and
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`transmitting it to the car audio/video system for display, instructing the portable device to play
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`the audio file in response to a user selecting the audio file using the controls of the car
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`audio/video system, and receiving audio generated by the portable device for playing on the car
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`audio/video system.
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`Blitzsafe alleges that VWGoA induces its customers to infringe the patents-in-suit by,
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`among other things, instructing its customers to directly infringe by making, using, or selling the
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`Volkswagen Accused Products and Audi Accused Products.
`
`Blitzsafe alleges that the VWGoA Defendants contributorily infringe by, among other
`
`things, making, using, selling, offering to sell, and importing components of the Volkswagen
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`Accused Products and Audi Accused Products, including the interfaces and integration
`
`subsystems of those products, which have no substantial non-infringing uses.
`
`Blitzsafe further alleges that VWGoA’s infringement is and has been willful.
`
`2.
`
`VWGoA’s Statement Regarding the Description of the Case
`
`VWGoA denies Blitzsafe’s allegations, and asserts a number of defenses to Blitzsafe’s
`
`claims. Specifically, VWGoA denies Blitzsafe’s allegations of direct and indirect infringement,
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`and contends that Blitzsafe is precluded from alleging infringement under the doctrine of
`
`equivalents. VWGoA further denies that any alleged infringement is or was willful. VWGoA
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`further contends that Blitzsafe’s allegations of infringement are barred by equitable doctrines,
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`4
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`including laches.
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`Further, VWGoA contends that all of the asserted claims of the ’786 and ’342 patents are
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`invalid, both for lack of patent-eligible subject matter, and in view of the prior art. VWGoA
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`seeks a declaratory judgment of noninfringement and invalidity as to the asserted claims of the
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`’786 and ’342 patents.
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`VWGoA further denies that Blitzsafe is entitled to any damages or injunctive relief.
`
`VWGoA further contends that any damages are limited due to Blitzsafe’s failure to notify
`
`VWGoA of the alleged infringement, Blitzsafe’s delay in bringing suit, and Blitzsafe’s failure to
`
`require licensees of the ’786 and ’342 patents to mark any products that incorporate the claimed
`
`subject matter of the ’786 and ’342 patents.
`
`VWGoA requests that the Court declare the case exceptional and award attorneys’ fees to
`
`VWGoA pursuant to 35 U.S.C. § 285, costs, and expenses.
`
`D.
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`CONTENTIONS OF THE PARTIES
`
`1.
`
`Blitzsafe’s Statement of its Contentions
`
`By providing these Contentions, Blitzsafe does not concede that all of these issues are
`
`appropriate for trial. In addition, Blitzsafe does not waive any of its motions in limine.
`
`1.
`
`In this case, Blitzsafe contends that VWGoA is directly infringing and/or
`
`indirectly infringing claims 5, 6, 7, 8, 14, 57, 61, 62, and 65 of the ’786 patent under 35 U.S.C.
`
`§§ 271 and 281-285, either literally or, in the alternative, under the doctrine of equivalents, by
`
`making, using, offering for sale, selling, and/or importing products with patented Blitzsafe audio
`
`interface technology.
`
`2.
`
`Blitzsafe holds all right, title and interest to the ’786 patent and has standing to
`
`bring this suit. Blitzsafe possesses all rights of recovery under the ’786 patent.
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`Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 6 of 23 PageID #: 27011
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`3.
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`In this case, Blitzsafe contends that VWGoA is directly infringing and/or
`
`indirectly infringing claims 49, 53, 54, 56, 57, 62, 70, 73, 77, and 78 of the ’342 patent under 35
`
`U.S.C. §§ 271 and 281-285, either literally or, in the alternative, under the doctrine of
`
`equivalents, by making, using, offering for sale, selling, and/or importing products with patented
`
`Blitzsafe audio interface technology.
`
`4.
`
`Blitzsafe contends that the ’342 patent is a continuation-in-part of application No.
`
`11/071,667, filed on March 3, 2005, which is a continuation-in-part of application No.
`
`10.732,909, filed on December 10, 2003, which is a continuation-in-part of application No.
`
`10/316,961, filed on December 11, 2002. Blitzsafe contends that the ’342 patent is entitled to the
`
`priority date of its application, which is December 11, 2002.
`
`5.
`
`Blitzsafe holds all right, title and interest to the ’342 patent and has standing to
`
`bring this suit. Blitzsafe possesses all rights of recovery under the ’342 patent.
`
`6.
`
`Blitzsafe contends that it has been damaged by VWGoA’s conduct and seeks pre-
`
`verdict, post-verdict, and post-judgment damages, and an accounting, if necessary, to
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`compensate for the infringement by VWGoA, but in no event less than a reasonable royalty,
`
`together with prejudgment and post-judgment interest and costs as fixed by the Court.
`
`7.
`
`Blitzsafe contends that this case is exceptional and that Blitzsafe is entitled to
`
`reasonable attorneys’ fees and costs (and consultant fees and costs) pursuant to 35 U.S.C. § 285.
`
`8.
`
`Blitzsafe contends that VWGoA’s infringement is and has been willful and, thus,
`
`requests that the Court award to Blitzsafe enhanced damages pursuant to 35 U.S.C. § 284, as
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`well as supplemental damages for any continuing post-verdict infringement and an accounting
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`for damages if necessary.
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`9.
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`Blitzsafe denies VWGoA’s defenses and counterclaims and contends that
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`VWGoA’s defenses and counterclaims are without merit.
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`10.
`
`Blitzsafe denies that VWGoA is entitled to its costs, a declaration that this case is
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`exceptional and its attorneys’ fees, and an injunction.
`
`2.
`
`VWGoA’s Statement of its Contentions
`
`Non-Infringement of the ’786 Patent
`
`11.
`
`VWGoA contends that it has not infringed, and is not infringing, any claim of the
`
`’786 patent, either literally or under the doctrine of equivalents, nor has it willfully infringed any
`
`claim of the ’786 patent.
`
`12.
`
`VWGoA contends that Blitzsafe is estopped from arguing infringement under the
`
`doctrine or equivalents because it failed to articulate a theory of infringement under the doctrine
`
`of equivalents in its infringement contentions, and in the report of its expert, Mr. Joseph
`
`McAlexander, regarding infringement, dated September 19, 2016.
`
`13.
`
`VWGoA contends that the asserted claims of the ’786 patent are each also invalid,
`
`and therefore cannot be infringed by VWGoA’s accused products.
`
`14.
`
`VWGoA contends that it has not contributed to the infringement of the ’786
`
`patent by others.
`
`15.
`
`VWGoA contends that it has not induced others to infringe the ’786 patent.
`
`Invalidity of the ’786 Patent
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`16.
`
`VWGoA contends that the ’786 patent is invalid for failing to comply with 35
`
`U.S.C. §§ 101 and 103 as described in VWGoA’s invalidity contentions dated January 19, 2016,
`
`the Expert Report of Scott Andrews on Invalidity of U.S. Patent Numbers 7,489,786 and
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`Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 8 of 23 PageID #: 27013
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`8,155,342, dated September 19, 2016, and Defendants’ Motion for Judgment on the Pleadings
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`Pursuant to Title 35 U.S.C. Section 101 (Dkt. No. 231).
`
`Non-Infringement of the ’342 Patent
`
`17.
`
`VWGoA contends that it has not infringed, and is not infringing, any claim of the
`
`’342 patent, either literally or under the doctrine of equivalents, nor has it willfully infringed any
`
`claim of the ’342 patent.
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`18.
`
`VWGoA contends that Blitzsafe is estopped from arguing infringement under the
`
`doctrine or equivalents because it failed to articulate a theory of infringement under the doctrine
`
`of equivalents in its infringement contentions, and in the report of its expert, Mr. Joseph
`
`McAlexander, regarding infringement, dated September 19, 2016.
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`19.
`
`VWGoA contends that the asserted claims of the ’342 patent are each also invalid,
`
`and therefore cannot be infringed by VWGoA’s accused products.
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`20.
`
`VWGoA contends that it has not contributed to the infringement of the ’342
`
`patent by others.
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`21.
`
`VWGoA contends that it has not induced others to infringe the ’342 patent.
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`Invalidity of the ’342 Patent
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`22.
`
`VWGoA contends that the ’342 patent is invalid for failing to comply with 35
`
`U.S.C. §§ 101 and 103 as described in VWGoA’s invalidity contentions dated January 19, 2016,
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`the Expert Report of Scott Andrews on Invalidity of U.S. Patent Numbers 7,489,786 and
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`8,155,342, dated September 19, 2016, and Defendants’ Motion for Judgment on the Pleadings
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`Pursuant to Title 35 U.S.C. Section 101 (Dkt. No. 231).
`
`23.
`
`VWGoA further contends that the ’342 patent is not entitled to a priority date any
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`earlier than the June 27, 2006 filing date of the ’342 patent.
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`Equitable Doctrines Estopping Blitzsafe’s Infringement Claims
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`24.
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`VWGoA contends that Blitzsafe’s claims of infringement are barred, in whole or
`
`in part, by equitable doctrines.
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`25.
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`For example, despite knowing for at least six years before commencing this
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`lawsuit of the sale within the United States of the automobile infotainment systems alleged in the
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`Complaint to infringe the ’786 and ’342 patents, Blitzsafe never gave notice to VWGoA that it
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`considered any of its patents to be infringed by vehicles manufactured or sold by VWGoA.
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`Blitzsafe’s delay in bringing suit was unreasonable and unjustified, misleading, and has caused
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`VWGoA material prejudice.
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`No Entitlement to Relief
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`26.
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`VWGoA contends that Blitzsafe is not entitled to any damages or injunctive
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`relief.
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`Limited Damages
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`27.
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`VWGoA contends that any damages are limited due to Blitzsafe’s failure to notify
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`VWGoA of the alleged infringement, and Blitzsafe’s failure to require licensees of the ’786 and
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`’342 patents to mark any products that incorporate the claimed subject matter of the ’786 and
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`’342 patents.
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`28.
`
`For example, pursuant to 35 U.S.C. §287(a), Blitzsafe is barred from recovering
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`damages accruing prior to July 22, 2015 and July 23, 2015, when VWGoA was first provided
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`with notice of the alleged infringement by being served with Blitzsafe’s Complaint in this
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`lawsuit. Marlowe Patent Holdings LLC, the prior assignee of the ’786 and ’342 patents, has
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`licensed other parties to manufacture and sell products incorporating the subject matter claimed
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`in the ’786 and ’342 patent and has not required those licensees to comply with the provisions of
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`35 U.S.C. § 287(a), as described in Defendants’ Motion for Partial Summary Judgment on
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`Noncompliance with Marking Requirements Under 35 U.S.C. § 287(a) (Dkt. No. 201).
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`Exceptional Case
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`29.
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`VWGoA contends that this is an exceptional case, and VWGoA should be
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`awarded costs and attorneys’ fees.
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`E.
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`STIPULATIONS AND UNCONTESTED FACTS
`
`1.
`
`30.
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`31.
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`Joint Statement of Uncontested Facts
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`Subject matter jurisdiction is proper in this Court.
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`Plaintiff Blitzsafe filed its Original Complaint against VWGoA on July 16, 2015
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`in the Blitzsafe Texas, LLC v. Volkswagen Group of America, Inc. et al., Marshall Division, Civil
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`Action No. 2:15-cv-01278 case.
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`32.
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`Plaintiff Blitzsafe is a limited liability company organized under the laws of the
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`state of Texas.
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`33.
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`Plaintiff Blitzsafe holds all right, title and interest to the ’786 patent. The ’786
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`patent issued on February 10, 2009 and is entitled “Audio Device Integration System.” The
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`application for the ’786 patent was filed on December 11, 2002.
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`34.
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`Claims 5, 6, 7, 8, 14, 57, 61, 62, and 65 of the ’786 patent are at issue and asserted
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`in this case.
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`35.
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`36.
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`The named inventor of the ’786 patent is Ira Marlowe.
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`Plaintiff Blitzsafe holds all right, title and interest to the ’342 patent. The ’342
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`patent issued on April 10, 2012 and is entitled “Multimedia Device Integration System.” The
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`application for the ’342 patent was filed on June 27, 2006. The ’342 patent’s application is a
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`continuation-in-part of U.S. Patent Application No. 11/071,667, which was filed on March 3,
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`2005, which is a continuation-in-part of U.S. Application No. 10/732,909, which was filed on
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`December 10, 2003, which is a continuation-in-part of U.S. Application No. 10/316,961, which
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`was filed on December 11, 2002, and which issued as the ’786 patent.
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`37.
`
`Claims 49, 53, 54, 56, 57, 62, 70, 73, 77, and 78 of the ’342 patent are at issue and
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`asserted in this case.
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`38.
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`2.
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`39.
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`The named inventor of the ’342 patent is Ira Marlowe.
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`Blitzsafe’s Statement of Uncontested Facts
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`The ’342 patent’s application is a continuation-in-part of, and claims priority to
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`three U.S. Patent Applications: U.S. Patent Application No. 11/071,667, which was filed on
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`March 3, 2005; U.S. Application No. 10/732,909, which was filed on December 10, 2003; and
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`U.S. Application No. 10/316,961, which was filed on December 11, 2002, and which issued as
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`the ’786 patent.
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`40.
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`The parties do not dispute that, in this action, the Court has personal jurisdiction
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`over the parties.
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`3.
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`41.
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`VWGoA’s Statement of Uncontested Facts
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`Volkswagen Group of America, Inc. is a corporation organized and existing under
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`the laws of the State of New Jersey having a place of business at 2200 Ferdinand Porsche Drive,
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`Herndon, Virginia 20171.
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`42.
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`Volkswagen Group of America Chattanooga Operations, LLC is a limited liability
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`company organized and existing under the laws of the State of Tennessee having a place of
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`business at 8001 Volkswagen Drive, Chattanooga, Tennessee 37421.
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`43. Mr. Marlowe is the sole owner of both Blitzsafe and Blitzsafe’s predecessor,
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`11
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`Marlowe Patent Holdings LLC.
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`44.
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`45.
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`46.
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`Before July 10, 2015, Marlowe Patent Holdings LLC owned the ’786 patent.
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`Before July 10, 2015, Mr. Marlowe owned the ’342 patent.
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`On July 10, 2015, Mr. Marlowe executed an assignment transferring ownership of
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`the ’786 patent from Marlowe Patent Holdings LLC to Blitzsafe, and transferring ownership of
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`the ’342 patent to Blitzsafe.
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`47.
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`On July 16, 2015, Blitzsafe filed this lawsuit against VWGoA, alleging that
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`VWGoA infringes certain claims of the ’786 and ’342 patents.
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`48.
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`Blitzsafe did not provide VWGoA with notice of the issued ’786 or ’342 patents,
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`or of Blitzsafe’s infringement allegations, prior to the filing of this lawsuit.
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`49. Marlowe Patent Holdings LLC granted licenses to AAMP of America, Inc., LTI
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`Enterprises, Inc., and Ford Motor Co. to make and sell products covered by the ’786 and ’342
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`patents, and those licenses did not require the licensees to mark their licensed products.
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`4.
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`Proposed Stipulations
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`a.
`
`The Parties’ Agreed Stipulations
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`50.
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`As of the filing of this Pretrial Order, the parties have not reached agreement on
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`any stipulations.
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`b.
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`Blitzsafe’s Proposed Stipulations
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`51.
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`The parties are cooperating to decrease the number of exhibits on their respective
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`exhibit lists and will exchange amended exhibit lists and objections on dates to be agreed upon
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`by the parties.
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`52.
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`The parties will make available
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`for
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`inspection all non-documentary
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`demonstratives or live product demonstrations, such as physical exhibits, physical prior art or
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`physical products they plan to use at trial for use during direct examination – but not for cross-
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`examination – by 7:00 pm one night before their intended use. In other words, if a demonstrative
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`will be used on a Wednesday, it must be exchanged or made available by 7:00 pm on the
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`previous Tuesday.
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` The parties shall exchange objections to these non-documentary
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`demonstratives or live product demonstrations by 9:00 pm the night before their intended use.
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`The parties will meet and confer to resolve objections by 10:00 pm. Demonstratives exchanged
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`will not be used by the opposing party prior to being used by the disclosing party.
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`53.
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`The parties will exchange lists of exhibits they intend to use during direct
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`examination by 8:00 pm the night before their intended use.
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`54.
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`The parties agree to continue to meet and confer to resolve their objections to the
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`other party’s deposition designations and exhibits. The parties agree to endeavor to enter into
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`stipulations as to the authenticity and use of produced documents following the exchange of
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`exhibit lists and objections.
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`55.
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`The parties will identify witnesses to be called live and by deposition, in the order
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`of call, 24 hours in advance of the day of trial during which the witnesses will testify. In other
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`words, if a witness will testify on a Wednesday, the witness must be identified by 9:00 am on the
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`previous Tuesday.
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`56.
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`The parties will exchange copies of all documentary, graphic, slide, animation,
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`and any other form of demonstratives (other than the physical demonstratives addressed above)
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`they plan to use at trial for use during direct examination – but not for cross-examination – by
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`7:00 pm the night before their intended use. In other words, if a demonstrative will be used on a
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`Wednesday, it must be exchanged or made available by 7:00 pm on the previous Tuesday. The
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`parties shall exchange objections to these demonstratives by 9:00 pm on the day the
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`demonstratives are received. The parties will meet and confer to resolve objections by 10:00 pm.
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`Demonstratives exchanged will not be used by an opposing party prior to being used by the
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`disclosing party.
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`57.
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`The parties agree that any exhibit listed on a party’s own exhibit list as to which
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`no objection remains pending at the time of opening statements may be shown to the jury by that
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`party during opening statements if the exhibit will be the subject of testimony and explained to
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`the jury by a witness at trial.
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`5.
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`58.
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`VWGoA’s Proposed Stipulations
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`The stipulations proposed by Blitzsafe are not appropriate for this Pretrial Order.
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`VWGoA is agreeable to discussion of the proposed stipulations at the appropriate time.
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`F.
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`CONTESTED ISSUES OF FACT AND LAW
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`1.
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`Joint Statement of Contested Issues of Fact and Law
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`59. Whether VWGoA has directly infringed claims 5, 6, 7, 8, 14, 57, 61, 62, and 65 of
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`the ’786 patent.
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`60. Whether VWGoA has contributorily infringed claims 5, 6, 7, 8, 14, 57, 61, 62,
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`and 65 of the ’786 patent.
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`61. Whether VWGoA has induced infringement of claims 5, 6, 7, 8, 14, 57, 61, 62,
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`and 65 of the ’786 patent.
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`62. Whether VWGoA has directly infringed claims 49, 53, 54, 56, 57, 62, 70, 73, 77,
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`and 78 of the ’342 patent.
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`63. Whether VWGoA has contributorily infringed claims 49, 53, 54, 56, 57, 62, 70,
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`73, 77, and 78 of the ’342 patent.
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`64. Whether VWGoA has induced infringement of claims 49, 53, 54, 56, 57, 62, 70,
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`14
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`73, 77, and 78 of the ’342 patent.
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`65. Whether VWGoA’s infringement is willful.
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`2.
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`Blitzsafe’s Statement of its Contested Issues of Fact and Law
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`By providing this Statement, Blitzsafe does not concede that all of these issues are
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`appropriate for trial. In addition, Blitzsafe does not waive any of its pending motions.
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`66. Whether Blitzsafe is entitled to enhanced damages pursuant to 35 U.S.C. § 284,
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`and, if so, the dollar amount of the enhancement.
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`67. Whether this case is an exceptional case pursuant to 35 U.S.C. §285 and whether
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`Blitzsafe is entitled to an award of attorneys’ fees.
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`68. Whether Blitzsafe is entitled to damages to compensate for VWGoA’s
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`infringement, and, if so, the dollar amount of pre-verdict and post-verdict damages adequate to
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`compensate for the infringement of the patents-in-suit, but in no event less than a reasonable
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`royalty.
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`69. Whether Blitzsafe is entitled to costs, and, if so, the dollar amount of its costs.
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`70. Whether Blitzsafe is entitled to prejudgment and post-judgment interest, and, if
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`so, the dollar amount of prejudgment and post-judgment interest.
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`71. Whether Blitzsafe is entitled to a permanent injunction against VWGoA,
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`requiring VWGoA to refrain from directly infringing, contributing to, or inducing the
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`infringement of the patents-in-suit.
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`72. Whether any denial of a permanent injunction should be conditioned on payment
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`of reasonable royalties for future infringement, and if so, the royalty amount set for future
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`infringement and a means or mechanism to account for future royalty payments, including during
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`any stay of an injunction pending appeal.
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`73. Whether VWGoA has proven by clear and convincing evidence that the asserted
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`claims of the patents-in-suit are anticipated under 35 U.S.C. § 102 in view of VWGoA’s prior art
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`references.
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`74. Whether VWGoA has proven by clear and convincing evidence that the asserted
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`claims of the patents-in-suit are obvious under 35 U.S.C. § 103 in view of VWGoA’s prior art
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`references.
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`75. Whether VWGoA has proven by clear and convincing evidence that the asserted
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`claims of the patents-in-suit are unenforceable because of inequitable conduct.
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`76.
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`Any issues of fact that are determined to constitute issues of law are hereby
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`designated as such, and vice versa.
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`3.
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`VWGoA’s Statement of its Contested Issues of Fact and Law
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`77. Whether Blitzsafe provided sufficient notice to VWGoA, directly, or by marking
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`its products or its licensees’ products incorporating the claimed subject matter of the ’786 or
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`’342 patents, to satisfy the notice requirements of 35 U.S.C § 287.
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`78. Whether claims 5, 6, 7, 8, 14, 57, 61, 62, and 65 of the ’786 patent are invalid
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`under 35 U.S.C. §101 as directed to unpatentable subject matter.
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`79. Whether claims 5, 6, 7, 8, 14, 57, 61, 62, and 65 of the ’786 patent are invalid
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`under 35 U.S.C. §103 as obvious to one of ordinary skill in the art at the time of the claimed
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`invention.
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`80. Whether claims 49, 53, 54, 56, 57, 62, 70, 73, 77, and 78 of the ’342 patent are
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`invalid under 35 U.S.C. §101 as directed to unpatentable subject matter.
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`81. Whether claims 49, 53, 54, 56, 57, 62, 70, 73, 77, and 78 of the ’342 patent are
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`invalid under 35 U.S.C. §103 as obvious to one of ordinary skill in the art at the time of the
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`claimed invention.
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`82. Whether equitable estoppel or laches bars Blitzsafe from alleging infringement of
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`the ’786 and ’342 patents by VWGoA.
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`83.
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`If damages are awarded, what would constitute an appropriate reasonable royalty
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`to compensate Blitzsafe.
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`4.
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`84.
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`Blitzsafe’s Statement Regarding Issues to be Decided by the Court
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`Blitzsafe contends that all equitable issues require determination by the Court,
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`should not be submitted to the jury, and the jury should not be advised of the issues or evidence
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`relating solely thereto.
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`5.
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`85.
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`VWGoA’s Statement Regarding Issues to be Decided by the Court
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`VWGoA contends that the issues of equitable estoppel and laches should be
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`determined by the Court.
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`86.
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`VWGoA contends that the issue of subject matter eligibility under 35 U.S.C. §
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`101 should be determined by the Court.
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`G.
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`LIST OF WITNESSES
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`Blitzsafe’s Witness List for the VWGoA trial is attached as Exhibit A.
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`VWGoA’s Witness List is attached as Exhibit B.
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`H.
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`LIST OF EXHIBITS
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`Blitzsafe’s Trial Exhibit List for the VWGoA trial is attached as Exhibit C.
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`VWGoA’s Trial Exhibit List is attached as Exhibit D.
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`Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 18 of 23 PageID #:
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`I.
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`LIST OF PENDING MOTIONS AND OBJECTIONS
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`The following is a list of pending motions and objections involving Blitzsafe and
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`Motion
`Motion to Stay
`Motion for Leave to File Take Deposition
`Outside The Fact Discovery Deadline
`Objections to Magistrate Judge Payne’s
`Memorandum Opinion and Order on Claim
`Construction
`Defendants’ Motion to Strike Portions of the
`Rebuttal Expert Report of Joseph C.
`McAlexander III Regarding Validity of U.S.
`Patent Numbers 7,489,786 and 8,155,342
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`Motion for Judgment on the Pleadings Pursuant
`to 35 U.S.C. §101
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`Plaintiff Blitzsafe’s Motion to Strike and Preclude
`Daniel McGavock from Presenting Analyses at
`Trial
`Defendants VW Group of America, Inc. and VW
`Group of Chattanooga Operations, LLC’s Motion
`to Exclude Certain Testimony Under Daubert and
`to Strike Portions of the Report of Dr. Stephen
`Becker
`Defendants VW Group of America, Inc. and VW
`Group of America Chattanooga Operations,
`LLC’s Motion for Partial Summary Judgment on
`Plaintiff’s Failure to Mark Under U.S.C. § 287(a)
`Defendants VW Group of America, Inc. and VW
`Group of America Chattanooga Operations,
`LLC’s Motion to Exclude Certain Testimony
`Under Daubert and to Strike Certain Portions of
`the Reports of McAlexander III
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`18
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`VWGoA.
`
`Movant
`Dkt. No. Date
`133
`8/15/2016 VWGoA
`155
`9/20/2016 VWGoA
`
`175
`
`09/30/2016 VWGoA
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`212
`
`231
`
`233
`
`11/3/2016 Honda
`Hyundai
`Kia
`Nissan
`Toyota
`VWGoA
`11/7/2016 VWGoA
`Hyundai
`Kia
`11/7/2016 Blitzsafe
`
`235
`
`11/7/2016 VWGoA
`
`11/7/2016 VWGoA
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`11/7/2016 VWGoA
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`246
`corrected
`from
`236/240
`237
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`Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 19 of 23 PageID #:
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`J.
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`PROBABLE LENGTH OF TRIAL
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`1.
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`Blitzsafe v. VWGoA
`
`a.
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`Blitzsafe’s Proposed Trial Duration
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`Blitzsafe estimates that its trial with VWGoA will take 5-7 days, including jury selection
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`and instruction.
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`b.
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`VWGoA’s Proposed Trial Duration
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`The trial of Blitzsafe’s claims against VWGoA should be scheduled relative to the cases
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`consolidated into the lead case, Blitzsafe Texas, LLC v. Honda Motor Co., Ltd et al., Case No.
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`2:15-cv-01274-JRG-RSP, according to its case number. VWGoA’s case number is the highest
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`of the consolidated cases, and should therefore be scheduled last of the consolidated cases.
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`VWGoA estimates that its trial with Blitzsafe will take 5-7 days, including jury selection
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`and instruction.
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`K. MANAGEMENT CONFERENCE LIMITATIONS
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`None.
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`L.
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`CERTIFICATIONS
`The undersigned counsel for each of the parties to this action does hereby certify and
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`acknowledge the following:
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`1.
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`Full and complete disclosure has been made in accordance with the Federal Rules
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`of Civil Procedure, the Local Rules, and the Court’s orders;
`
`2.
`
`The parties have complied with discovery limitations set forth in the Federal
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`Rules of Civil Procedure, the Local Rules, and the Court’s Orders. The parties have stipulated
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`and moved this Court on various issues altering discovery limitations, which have all been
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`approved by this Court;
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`3.
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`Each exhibit in the List of Exhibits herein:
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`a. is in existence;
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`Case 2:15-cv-01274-JRG-RSP Document 362 Filed 01/06/17 Page 20 of 23 PageID #:
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`b. is numbered; and
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`c. has been disclosed and produced electronically to opposing counsel except
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`for physical exhibits, which will be disclosed in advance of trial.
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`Dated: January 5, 2017
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`
`
`
`
`
`
` /s/ Alfred R. Fabricant
`Alfred R. Fa