Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 1 of 48 PageID #: 756
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 1 of 48 PageID #: 756
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`EXHIBIT A
`EXHIBIT A
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`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 1 of 48 PageID #: 756
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`EXHIBIT A
`EXHIBIT A
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`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 2 of 48 PageID #: 757
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`Case :03-cv-00321-DF Document 87 Filed 03/25/04 Page 1 of 1 PagelD #: 1019
`oommorcOON
`HIV
`
`UNITED .STATES DISTRICT COURT-
`
`610 ck,k
`
`EASTERN DISTRICT OF TEXAS
`
`TEXARKANA DIVISION
`
`P17 ,s,"1: 20
`
`• DOCKET NO.,-,2:03CV321 -h"
`
`• TEXARKANA, TEXAS
`
`FIDELITY BROKERAGE, ET AL
`
`. MARCH 11, 2004.
`
`9:55 A.M.
`
`MOTION HEARING
`
`BEFORE THE HONORABLE DAVID FOLSOM,
`
`UNITED STATES DISTRICT JUDGE.
`
`APPEARANCES:
`
`MR. SAMUEL F. BAXTER
`
`MR. DOUGLAS A. CAULEY
`
`MR. GARRET CHAMBERS
`
`MR. THEODORE STEVENSON, III
`
`MCKOOL SMITH, PC
`
`SUITE 1500
`
`300 CRESCENT COURT
`
`DALLAS, TEXAS 75201
`
`FOR DEFENDANT:
`
`FIDELITY BROKERAGE
`
`SERVICE, LLC:
`
`MR. JOE KENDALL
`
`PROVOST UMPHREY, LLP
`
`3232 MCKINNEY, SUITE 700
`
`DALLAS, TEXAS 75204
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 3 of 48 PageID #: 758
`
`Case 2: 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 1 of 46 PagelD #: 1020
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF TEXAS
`
`TEXARKANA DIVISION
`
`. DOCKET NO,,2:03CV321
`
`TEXARKANA, TEXAS
`
`FIDELITY BROKERAGE, ET AL
`
`. MARCH 11, 2004
`
`. 9:55 A.M.
`
`MOTION HEARING
`
`BEFORE THE HONORABLE DAVID FOLSOM,
`
`10
`
`UNITED STATES DISTRICT JUDGE.
`
`11 APPEARANCES:
`
`12 FOR PLAINTIFF:
`
`MR. SAMUEL F. BAXTER
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`MR. DOUGLAS A. GAMEY
`
`MR. GARRET CHAMBERS
`
`MR., THEODORE STEVENSON, III
`
`MCKOOL SMITH, PC
`
`SUITE 1500
`
`300 CRESCENT COURT
`
`DALLAS, TEXAS 75201
`
`20 FOR DEFENDANT:
`
`21 FIDELITY BROKERAGE
`
`22 SERVICE, LLC:
`
`MR. JOE KENDALL
`
`23
`
`24
`
`25
`
`PROVOST UMPHREY, LLP
`
`3232 MCKINNEY, SUITE 700
`
`DALLAS, TEXAS 75204
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 4 of 48 PageID #: 759
`
`Case 2: 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 2 of 46 PagelD #: 1021 2
`
`SCOTTRADE, INC.:
`
`MR. NICHOLAS H. PATTON
`
`PATTON TIDWELL & SCHROEDER
`
`4605 TEXAS BOULEVARD
`
`TEXARKANA, TEXAS 75505
`
`INTERACTIVE BROKERS
`
`6
`
`ETRADE SECURITIES LLC:
`
`MR. M. CRAIG TYLER
`
`WILSON, SONSINI, GOODRICH &
`
`ROSATI
`
`8911 CAPITAL OF TEXAS HIGHWAY
`
`WESTECH 360, SUITE 3350
`
`AUSTIN, TEXAS 78759-3350
`
`MR. MICHAEL B. LEVIN
`
`WILSON, SONSINI, GOODRICH &
`
`ROSATI
`
`650 PAGE MILL ROAD
`
`PALO ALTO, CALIFORNIA 94304-1050
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17 INSTINET CORPORATION:
`
`MR. MICHAEL CHARLES SMITH
`
`18
`
`19
`
`20
`
`THE ROTH LW FIRM
`
`115 N WELLINGTON, SUITE 200
`
`MARSHALL, TEXAS 75670
`
`21 CHARLES SCHWAB & CO., INC.
`
`22 AND CYBERTRADER, INC.:
`
`MR. OTIS W. CARROLL, JR.
`
`23
`
`24
`
`25
`
`MR. J. WESLEY HILL
`
`IRELAND, CARROLL & KELLEY, P.C.
`
`6101 S BROADWAY, SUITE 500
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 5 of 48 PageID #: 760
`
`Case 2 03-cv-00321-DF Document 87-2 Filed 03/25/04 Page 3 of 46 PagelD #: 1022.3 _
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`10
`
`11
`
`TYLV.R, TEXAS 75703
`
`MR.. MONTE M, F. COOPER
`
`MR., G. HOPKINS GUY, III
`
`ORRICK, HERRINGTON & SUTCLIFFE
`
`1000 MARSH ROAD
`
`MENLO PARK, CALIFORNIA 94025
`
`TRADES TAT ION SECURITIES,
`
`INC.:
`
`MS. ELIZABETH L. DERIEUX
`
`BROWN MCCARROLL
`
`1127 JUDSON ROAD, SUITE 220
`
`LONGVIEW, TEXAS 75601
`
`12
`
`TERRA NOVA TRADING:
`
`MR. CHRISTIAN T. KEMNITZ
`
`13
`
`14
`
`15
`
`16
`
`17
`
`KMZ ROSENMAN
`
`525 WEST MONROE STREET
`
`SUITE 1600
`
`CHICAGO, ILLINOIS 60661-3693
`
`18
`
`COURT REPORTER:
`
`MRS, LIBBY CRAWFORD
`
`19
`
`20
`
`21
`
`22
`
`23
`
`OFFICIAL COURT REPORTER
`
`500 STATE LINE AVENUE
`
`TEXARKANA, TEXAS 75501
`
`903/794-4067 (EXT. 237)
`
`24
`
`PROCEEDINGS RECORDED BY MANUAL STENOGRAPHY, TRANSCRIPT
`
`25
`
`PRODUCED BY NOTE READING.
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 6 of 48 PageID #: 761
`
`Case 2: 13-cv-00321-DF Document 87-2 Filed 03/25/04 Page 4 of 46 PagelD #: 1023 4 _
`
`INDEX
`
`2 DEFENDANT'S MOTION TO TRANSFER BY MR. GUY...............„ 6
`
`3 PLAINTIFF'S RESPONSE BY MR. CHAMBERS.
`
`4 DEFENDANT'S RESPONSE BY MR.. KENDALL
`
` 15
`
`33
`
`5 DEFENDANT'S RESPONSE BY MR. GUY 36
`
`6 PLAINTIFF'S RESPONSE BY MR., CHAMBERS 39
`
`7 DEFENDANT'S MOTION/IMPROPER VENUE BY MR. SMITH..,, 41
`
`8 DEENDANT'S MOTION/LACK OF JURISDICTION BY MR. KEMNITZ
`
`.41
`
`9 DOCKET CONTROL ORDER ISSUES........
`
`10 REPORTER'S CERTIFICATION.,.„......„., ....................................45
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 7 of 48 PageID #: 762
`
`Case 2: 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 5 of 46 PagelD #: 1024 _ 5 _
`
`1
`
`2
`
`3
`
`4
`
`5
`
`PROCEEDINGS
`
`TEXARKANA, TEXAS
`
`MARCH 11, 2004
`
`(OPEN COURT; ALL PARTIES PRESENT)
`
`THE COURT: PLEASE BE SEATED, LADIES AND GENTLEMEN
`
`6 MS. MARTIN, IF YOU WILL CALL THE MATTER SCHEDULED FOR THE TEN
`
`7 O'CLOCK HOUR.
`
`8
`
`THE CIRRK: THE COURT CALLS CIVIL ACTION NUMBER
`
`9 2:03CV321, DATAMIZE V. FIDELITY BROKERAGE.
`
`10
`
`THE COURT: GOOD MORNING, LADIES AND GENTLEMEN. WE
`
`11 ARE HERE ESSENTIALLY ON THREE MOTIONS, A JOINT MOTION TO
`
`12 TRANSFER, A MOTION TO DISMISS FOR LACK OF JURISDICTION, AND A
`
`13 MOTION BASED ON IMPROPER VENUE.. SO, I HAVE GIVEN EACH SIDE
`
`14 THIRTY MINUTES TO PRESENT THE MOTIONS AND RESPONSE. I WOULD
`
`15 SUGGEST WE GO FORWARD ON THE JOINT MOTION TO TRANSFER FIRST,
`
`16 IF THAT'S AGREEABLE WITH THE PARTIES, AND THEN AFTER WE
`
`17 CONCLUDE THOSE MOTIONS, ME WILL TAKE UP ANY SCHEDULING ORDERS
`
`18 THAT NEED TO BE ADDRESSED, OR SCHEDULING ISSUES
`
`19
`
`MR. CHAMBERS: YOUR HONOR, IT WAS NOT OUR
`
`20 UNDERSTANDING THAT THE MOTIONS TO DISMISS FOR LACK OF PERSONAL
`
`21 JURISDICTION WERE GOING TO BE ARGUED TODAY, IT WAS JUST THE
`
`22 MOTION TO TRANSFER
`
`23
`
`24
`
`THE COURT: OKAY. AM I WRONG OR --
`
`MR. KEMNITZ: YOUR HONOR, CHRIS KEMNITZ WITH TERRA
`
`25 NOVA. WE HAVE THE MOTION TO DISMISS FOR LACK OF PERSONAL
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 8 of 48 PageID #: 763
`
`Case 2: 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 6 of 46 PagelD #: 1025_6_
`
`1 JURISDICTION PENDING., WE HAVE NOT REQUESTED ORAL ARGUMENT,
`
`2 BUT WE ARE HAPPY TO DISCUSS IT IF IT IS HELPFUL TO YOU..
`
`3
`
`THE COURT: I PROBABLY WAS MISTAKEN. I THOUGHT WE
`
`4 WERE HEARING ALL THOSE MOTIONS.. IF THE PARTIES WERE GOING
`
`5 UNDER A DIFFERENT IMPRESSION, THEN WE WON'T TAKE THOSE UP
`
`6 TODAY. THEN WE WILL DISCUSS IF THOSE NEED TO BE HEARD ORALLY
`
`7 OR DECIDED ON THE PAPERS. VERY WELL. MR. PATTON.
`
`8
`
`MR. PATTON: JUDGE, I AM SIMPLY UP HERE TO INTRODUCE
`
`9 THE PEOPLE WHO WILL BE DOING THE SPEAKING, AND lift. PRIMARY
`
`10 ARGUMENT IS BEING MADE BY MR. HOPKINS GUY OF THE ORRICK FIRM
`
`11 FROM THEIR MENLO PARK OFFICE IN CALIFORNIA. JUDGE JOE KENDALL
`
`12 IS GOING TO MAKE SOME CONCLUDING REMARKS, YOUR HONOR..
`
`13
`
`AND, JUDGE FOLSOM, WE HAVE HERE MICHAEL LEVIN, WHO IF THE
`
`14 COURT DESIRES, IS INTIMATELY FAMILIAR WITH THE PLUMTREE CASE,
`
`15 WHICH IS THE CASE THAT IS PENDING IN THE NORTHERN DISTRICT OF
`
`16 CALIFORNIA. IF THE COURT SHOULD HAVE QUESTIONS ABOUT THAT, HE
`
`17 CAN AND WILL ADDRESS THOSE.
`
`18
`
`19
`
`20
`
`21
`
`THE COURT: VERY WELL..
`
`MR. GUY: GOOD MORNING, YOUR HONOR.
`
`THE COURT: GOOD MORNING.
`
`MR. GUY: YOUR HONOR, THERE HAS BEEN A SUBSTANTIAL
`
`22 AMOUNT OF BRIEFING SO FAR IN THIS CASE ON THIS ISSUE. AND MY
`
`23 REMARKS THIS MORNING WILL BE LIMITED TO A VERY SPECIFIC FOCUS.
`
`24
`
`WE HAVE A SITUATION HERE IN WHICH WE HAVE A CASE PENDING
`
`25 IN CALIFORNIA" IT IS BEFORE JUDGE WALKER.. IT WAS AN EARLIER
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 9 of 48 PageID #: 764
`
`Case 2: •3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 7 of 46 PagelD #: 1026_7_
`
`1 FIRST FILED CASE. UNDER FIFTH CIRCUIT LAW, THERE REALLY IS NO
`
`2 DISPUTE AS TO THE STATUS OF THAT CASE OTHER THAN THE FACT THAN
`
`3 IT IS A FIRST FILED CASE. 'THEY INVOLVE THE SAME DEFENDANT.
`
`4
`
`THIS COURT HAS THE ISSUE BEFORE IT REGARDING WHETHER
`
`5 THERE IS A SUBSTANTIAL PROBABILITY OF OVERLAP. REFERRING TO
`
`6 THE FIFTH CIRCUIT MANN CASE, THE COURT MUST TRANSFER IF THERE
`
`7 EXISTS A SUBSTANTIAL PROBABILITY THAT THE OVERALL CONTENT OF
`
`EACH SUIT WILL LIKELY OVERLAP TO A SUBSTANTIAL DEGREE.
`
`9
`
`THERE IS NO REQUIREMENT THAT THE PARTIES BE IDENTICAL.
`
`10 THERE IS NO REQUIREMENT THAT THE ISSUES BE IDENTICAL. THERE
`
`11 IS NO REQUIREMENT OTHER THAN THAT THE COURT LOOK AT WHETHER
`
`12 THERE IS A SUBSTANTIAL OVERLAP BETWEEN THE TWO CASES.
`
`13
`
`WHAT I WILL BE ADDRESSING TODAY IS THE SUBSTANTIAL
`
`14 OVERLAP BETWEEN THE TWO PATENTS IN THIS CASE AND ADDRESS THE
`
`15 COURT TO THE FACTS HERE THAT SHOW THIS CLEAR OVERLAP..
`
`16
`
`IN THE BINDER, YOUR HONOR, PROVIDED, THE SECOND GRAPHIC
`
`17 IN, WE ARE TRYING TO SHOW THE TWO PATENTS HERE. AND ALTHOUGH
`
`18 YOU CAN'T SEE THE DETAIL IN THE PATENTS, AS WE GO THROUGH IT,
`
`19 THE HIGHLIGHTED AREAS IN YELLOW ARE IDENTICAL. SO AS WE GO
`
`20 THROUGH THIS, EVERY TIME YOU SEE YELLOW HIGHLIGHTING, YOU ARE
`
`21 LOOKING AT THE IDENTICAL TEXT SIDE BY SIDE.
`
`22
`
`THE 1137 PATENT IS THE PATENT-IN-SUIT IN THE CALIFORNIA
`
`23 ACTION. THE '040 PATENT IS THE PATENT-IN-SUIT BEFORE THIS
`
`24 COURT. THEY HAVE THE SAME INVENTOR.. THEY HAVE THE SAME
`
`25 ATTORNEY WHO PROSECUTED THE PATENTS IN BOTH CASES. SO THOSE
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 10 of 48 PageID #: 765
`
`Case 2: 13-cv-00321-DF Document 87-2 Filed 03/25/04 Page 8 of 46 PagelD #: 1027_8_
`
`ARE TWO WITNESSES THAT WILL BE THE SAME IN BOTH CASES.
`
`2
`
`THERE IS ALSO A DATE CALLED THE PRIORITY DATE, AND THIS
`
`3 IS THE DATE IN WHICH BOTH OF THESE PATENTS WILL CLAIM THEIR
`
`4 INVENTION. THIS MEANS THAT THE PRIOR ART, THE EARLIER
`
`5 INVENTIONS, IF YOU WILL, THAT EXIST IN BOTH CASES WILL BE THE
`
`6 SAME BECAUSE THEY HAVE THE SAME PRIOR ART. THEY HAVE THE SAME
`
`7 INVENTION DATE.. THEY WILL HAVE THE SAME PRIORITY DATE°
`
`8
`
`SO EVEN IF THE ACTUAL REFERENCES ARE DIFFERENT IN THE TWO
`
`9 PATENTS, IF IT IS BEFORE THIS PRIORITY DATE, THAT WILL BE
`
`10 PRIOR ART THAT WILL HAVE TO BE CONSIDERED IN INVALIDITY
`
`11 MOTIONS AND ISSUES REGARDING INVALIDITY IN BOTH CASES.
`
`12
`
`I AM GOING TO BRIEFLY GO THROUGH THE DRAWINGS HERE
`
`13 SHOWING THE COURT THAT EVERY ONE OF THE DRAWINGS IN BOTH OF
`
`14 THESE PATENTS IS NOT ONLY SIMILAR, BUT IDENTICAL., WE THEN GET
`
`15 INTO THE BODY OF THE PATENT, AND THERE THE PATENT DESCRIPTION
`
`16. IS IDENTICAL, WORD FOR WORD FOR WORD. AND ON THAT TEN
`
`17 COLUMNS, TWELVE COLUMNS, FOURTEEN COLUMNS, EIGHTEEN COLUMNS,
`
`18 ALL THE WAY TO THE VERY END OF THE PATENT WHERE WE GET TO THE
`
`19 CLAIMS.. SO THE ENTIRE DESCRIPTION, YOUR HONOR, THE ENTIRE
`
`20 DESCRIPTION IN THESE TWO PATENTS IS IDENTICAL.
`
`21
`
`THIS CREATES A SUBSTANTIAL OVERLAP BETWEEN THESE TWO
`
`22 CASES BECAUSE A COURT IN CONSTRUING ANY DISPUTED TERMS FOR
`
`23 CLAIM CONSTRUCTION, IN CONSIDERING ISSUES OF INVALIDITY, IN
`
`24 CONSIDERING ISSUES OF INDEFINITENESS, SO FORTH WHICH WILL BE
`
`25 IN BOTH CASES, THE COURT, TWO COURTS HERE WILL HAVE TO
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 11 of 48 PageID #: 766
`
`Case 2
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`03-cv-00321-DF Document 87-2 Filed 03/25/04 Page 9 of 46 PagelD #: 1028-9 -
`
`CONSIDER BOTH OF THESE ISSUES.
`
`THE COURT: HOW MANY CLAIMS ARE IN THE 1137?
`
`MR. GUY: YOUR HONOR?
`
`THE COURT: HOW MANY CLAIMS ARE IN THE '137?
`
`MR. GUY: THERE ARE TEN CLAIMS, YOUR HONOR.
`
`THE COURT: AND WHAT, 38 IN THE --
`
`MR. GUY: YES.
`
`THE COURT: -- IN THE '040?
`
`MR. GUY: YES, YOUR HONOR. AND IN THE PLUMTREE CASE,
`
`1 2 3 4 5
`
`7 8 9
`
`10
`
`MR. LEVIN CAN ADDRESS THIS, BUT AS THE COURT WELL KNOWS, NOT
`
`11
`
`ALL CLAIMS ARE LIKELY TO BE ASSERTED IN BOTH CASES. NOW, WE
`
`12
`
`CURRENTLY HAVE NOT GOTTEN ANY REDUCTION IN THE CLAIMS IN THE
`
`13
`
`DATAMIZE CASE HERE, BUT, YOUR HONOR, WE WILL CERTAINLY LOOK TO
`
`14
`
`THE FACT THAT THERE MAY BE A REDUCTION IN THOSE CLAIMS.
`
`15
`
`TRYING 37 PATENT CLAIMS IS CERTAINLY UNLIKELY, BUT THESE
`
`16
`
`CLAIMS, LET ME GO INTO THOSE CLAIMS.
`
`17
`
`HERE, WE ARE COMPARING CLAIM 1 OF THE '137 PATENT TO
`
`18
`
`CLAIM 27 OF THE '040 PATENT. AND AGAIN, EVERYWHERE YOU SEE
`
`19
`
`YELLOW, THOSE TWO CLAIMS ARE IDENTICAL. WHERE YOU SEE THE
`
`20
`
`LITTLE WHITE OPENINGS, A DIFFERENT WORD IS USED.
`
`21
`
`NOW AGAIN, MICHAEL LEVIN CAN ADDRESS THIS, BUT RIGHT NOW
`
`22
`
`WHAT IS OCCURRING IN THE CALIFORNIA CASE IS THAT THEY HAVE
`
`23
`
`EXCHANGED CLAIM TERMS THAT ARE POTENTIALLY IN DISPUTE. RIGHT
`
`24
`
`NOW THEY ARE AT ABOUT 48 TERMS AND THEY ARE REDUCING THAT
`
`25
`
`DOWN. THE PARTIES ARE MEETING. I DOUBT THAT ALL 48 WILL BE
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 12 of 48 PageID #: 767
`
`Case 2: 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 10 of 46 PagelD #: 102910 -
`
`1 PRESENTED TO JUDGE WALKER FOR CLAIM CONSTRUCTION. THAT NUMBER
`
`2 WILL BE REDUCED.. MAYBE IT ENDS UP AT 10, MAYBE IT ENDS UP AT
`
`3 20, BUT IF I WERE TO HIGHLIGHT THE TERMS THAT ARE CURRENTLY IN
`
`4 DISPUTE IN THAT CASE, THERE YOU GO.. THERE IT IS RIGHT THERE.
`
`5 THOSE .ARE THE TERMS IN RED THAT BETWEEN CLAIM 1 OF THE
`
`6 CALIFORNIA CASE PATENT AND CLAIM 27 OF THE 1040 PATENT.
`
`7
`
`NOW, YOUR HONOR, IN COMPARING THOSE TWO CLAIMS, WHEN THE
`
`8 PATENT OFFICE RECEIVED THOSE CLAIMS, THE PATENT OFFICE ISSUED
`
`9 WHAT'S CALLED A DOUBLE PATENTING REJECTION. AND A DOUBLE
`
`10 • PATENTING REJECTION MEANS THAT THE PATENT OFFICE HAS MADE A
`
`11 DETERMINATION THAT THESE TWO CLAIMS ARE NOT PATENTABLY
`
`12 DIFFERENT. AND WHEN YOU GET A REJECTION LIKE THAT YOU CAN DO
`
`13 ONE OF TWO THINGS AS THE PATENT OWNER. YOU CAN COME BACKHAND
`
`14 ADD LIMITATIONS TO MAKE THEM DIFFERENT, OR YOU CAN AGREE WITH
`
`15 THE PATENT OFFICE, AND THAT'S WHAT DATAMIZE DID. THEY AGREED
`
`16 WITH THE PATENT OFFICE THAT THESE TWO CLAIMS ARE NOT
`
`17 PATENTABLY DISTINCT, AND THEY ISSUED WHAT IS CALLED A TERMINAL
`
`18 DISCLAIMER. AND THAT IS IN THE PROSECUTION HISTORY.
`
`19
`
`YOUR HONOR, WE ALSO PROVIDED THE COURT WITH A RECENT
`
`20 CASE, THE MICROSOFT V. MULTI-TECH CASE. IT WAS DECIDED BY THE
`
`21 FEDERAL CIRCUIT IN FEBRUARY OF 2004. IT WAS AFTER OUR
`
`22 BRIEFING.. AND I WOULD LIKE TO ADDRESS SOME ISSUES THERE.
`
`23
`
`PRIOR TO THIS CASE, IT WAS UNDERSTOOD THAN THE
`
`24 PROSECUTION OF A PARENT PATENT, AND THESE PATENTS ARE A PARENT
`
`25 AND CHILD RELATIONSHIP, IT WAS ALWAYS UNDERSTOOD THAT THE
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 13 of 48 PageID #: 768
`
`Case 2: 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 11 of 46 PagelD #: 103011
`
`1 PARENT PROSECUTION WAS RELEVANT FOR INTERPRETING THE CHILD
`
`2 CLAIMS AND RELEVANT TO THE CHILD PROSECUTION.
`
`3
`
`IN THIS SITUATION, WHAT I HAVE DONE IS TO SHOW TWO TIME
`
`4 LINES. ON THE TOP IS THE CALIFORNIA. ACTION. IT HAS A FILING
`
`5 DATE OF FEBRUARY 27, '97. AND THEN IT WAS PROSECUTED AND
`
`6 ISSUED JANUARY 11TH. IN ORDER TO CREATE THE PARENT CHILD
`
`7 RELATIONSHIP, THE CHILD HAS TO BE FILED BEFORE THE ISSUANCE OF
`
`8 THE PARENT, AND HERE SOME FIVE DAYS BEFORE IT ISSUED, IT WAS
`
`9 REFILED WITH THE IDENTICAL SPECIFICATION, IN OTHER WORDS THE
`
`10 SAME DRAWINGS, THE SAME DESCRIPTION. IN DOING SO, THE CHILD
`
`11 CLAIMS THE SAME PRIORITY DATE BY HAVING THIS CO-PENDENCY.
`
`12
`
`AS A RESULT, THE SAME PRIOR ART, THE SAME CONCEPTION
`
`13 DATE, AND THE SAME REDUCTION OF PRACTICE OCCURS BECAUSE THEY
`
`14 ARE ALL CLAIMING FROM THE SAME INVENTIONS. IN THIS SITUATION,
`
`15 BECAUSE OF THE ACTION OF THE PATENT OFFICE IN SAYING THAT
`
`16 THESE THREE CLAIMS WERE NOT PATENTABLY DISTINCT, DATAMIZE
`
`17 AGREED THAT THE TWO PATENTS WERE ESSENTIALLY, AT LEAST AS THE
`
`18 THREE CLAIMS, CLAIMING THE SAME INVENTION.
`
`19
`
`NOW, THE MICROSOFT CASE COMES ALONG AND ALSO FINDS THAT
`
`20 THE PROSECUTION HISTORY OF THE CHILD IS RELEVANT FOR
`
`21 INTERPRETING THE PARENT. THAT CASE SAID: WE CONCLUDE THAT
`
`22 MULTI-•TECH'S STATEMENTS MADE DURING THE PROSECUTION OF THE
`
`23 CHILD PATENT WITH REGARD TO THE SCOPE OF ITS INVENTIONS AS
`
`24 DISCLOSED IN THE COMMON SPECIFICATION ARE RELEVANT NOT ONLY TO
`
`25 THE CHILD AND GRANDCHILD PATENTS, BUT ALSO TO THE EARLIER
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 14 of 48 PageID #: 769
`
`Case 2:
`
`3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 12 of 46 PagelD #: 103119 _
`
`ISSUED PARENT.
`
`SO, WE HAVE A SITUATION NOW IN WHICH THE PROSECUTION
`
`3
`
`HISTORY OF THE '137, THE CALIFORNIA CASE, IS NOT ONLY RELEVANT
`
`TO THE '040 PATENT THAT WE HAVE HERE, BUT ALSO THE '040 PATENT
`
`5
`
`SPECIFICATION IS RELEVANT BACK STREAM TO THE '137.
`
`SO, WE HAVE A SITUATION, YOUR HONOR, NOW IN WHICH BOTH
`
`COURTS HAVE TO LOOK AT BOTH PROSECUTION HISTORIES IN ORDER TO
`
`CONSTRUE TERMS AND ADDRESS ISSUES OF PATENT VALIDITY, PATENT
`
`INDEFINITENESS, AND VAGUENESS.
`
`10
`
`TO GIVE YOU SOME EXAMPLES OF WHERE THIS WILL LEAD, THERE
`
`11
`
`IS OVERLAP BETWEEN THE TWO PROSECUTION HISTORIES ALREADY. IN
`
`12
`
`OTHER WORDS, IN BOTH PROSECUTION HISTORIES YOU HAD THEM
`
`13
`
`DISCUSSING SIMILAR TERMS. BOTH PATENT PROSECUTION HISTORIES
`
`14
`
`DISCUSS THE SAME CLAIM TERMS THAT ARE IN THE PLUMTREE CASE,
`
`15
`
`THE CALIFORNIA CASE, THEY HAVE ALREADY INDICATED NEED TO BE
`
`16
`
`CONSTRUED, SUCH AS UNIFORM LOOK AND FEEL, PREDEFINED,
`
`17
`
`INTERFACE SCREEN ELEMENTS, KIOSK, AND DATABASE. AS IT NOW
`
`18
`
`STANDS, BOTH COURTS WILL PROBABLY BE FACED WITH CONSTRUING
`
`19
`
`THOSE TERMS. WE HAVE ESSENTIALLY A WASTE OF DUPLICATION HERE
`
`20
`
`AND TWO COURTS DOING THE SAME THING.,
`
`21
`
`AS I ALREADY STATED, THE EXAMINER REJECTED THREE CLAIMS
`
`22
`
`OF THE '040 PATENT AS CLAIMING THE SAME INVENTION AS THE '137
`
`23
`
`PATENT, AND DATAMIZE AGREED. THEY AGREED BY FILING THE
`
`24
`
`TERMINAL DISCLAIMER,.
`
`25
`
`ALSO, THERE IS AT LEAST ONE COMMON PRIOR ART REFERENCE
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 15 of 48 PageID #: 770
`
`Case 2:
`
`3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 13 of 46 PagelD #: 103213 -
`
`THAT WAS ACTUALLY DISCUSSED IN BOTH PROSECUTION HISTORIES
`
`MAKING IT VERY RELEVANT, THAT'S CONSOLATTI, AND IT IS
`
`DISCUSSED IN BOTH PROSECUTION HISTORIES. ALSO, THE SAME
`
`PATENT ATTORNEY HANDLED BOTH PROSECUTIONS.
`
`SO, WE FIND OURSELVES, YOUR HONOR, WITH A SUBSTANTIAL
`
`LIKELIHOOD OF OVERLAP GIVEN THE VERY CLOSE NATURE OF THESE TWO
`
`PATENTS. THEY ARE PARENT AND CHILD.. THEY HAVE COMMON TERMS
`
`IN THEM, THEY WILL HAVE CONSTRUCTION ISSUES, AND THEY WILL
`
`HAVE COMMON WITNESSES,
`
`3 4 5 6 7 8 9
`
`10
`
`THE COURT: WHAT PRODUCT, OR PRODUCTS, ARE INVOLVED
`
`11
`
`IN THE CALIFORNIA. ACTION?
`
`12
`
`MR. GUY: THE CALIFORNIA ACTION IS A GROUP OF BROKER
`
`13
`
`TRADERS THAT ARE USING ONLINE SERVICES. BUT AT THE CORE, YOUR
`
`14
`
`HONOR, THERE WILL BE COMMON ISSUES IN THE CALIFORNIA CASE. IN
`
`15
`
`OTHER WORDS, BECAUSE THE CLAIMS ARE SO CLOSE, THESE PRODUCTS
`
`16
`
`CAN'T BE THAT DIFFERENT., WE ARE NOT TALKING APPLES AND
`
`17
`
`ORANGES. THEY DON'T HAVE A PATENT ON ROUND FRUIT, YOUR HONOR.
`
`18
`
`THE COURT: WELL, THEN IS IT YOUR POSITION THAT EVEN
`
`19
`
`IF THE PRODUCTS ARE NOT SIMILAR IN THE CALIFORNIA. ACTION AND
`
`20
`
`THIS ACTION, THAT THAT DOESN'T MATTER AS FAR AS THE COURT'S
`
`21
`
`CONSIDERATION?
`
`22
`
`MR. GUY: IT IS A CONSIDERATION, YOUR HONOR, BUT IT
`
`23
`
`IS ONE OF MANY.. THERE IS NO LITMUS TEST THAT SAYS, OH, IF
`
`24
`
`THEY ARE DIFFERENT PRODUCTS, THEN ALL OF A SUDDEN THERE IS NO
`
`25
`
`TRANSFER., WHAT WE HAVE HERE IS A SITUATION WHERE WE NEED TO
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 16 of 48 PageID #: 771
`
`Case 2:
`
`3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 14 of 46 PagelD #: 103314 _
`
`FOCUS ON THE AREA OF SIMILARITIES AND WHETHER THERE IS A
`
`SUBSTANTIAL OVERLAP.. ONE OF THE CONSIDERATIONS CERTAINLY IS
`
`ARE THERE COMMON PRODUCTS. BUT IN THIS SITUATION WE SEE THAT
`
`THERE APE A NUMBER OF COMMON ISSUES RELATED TO INFRINGEMENT
`
`THAT WILL COME UP THAT BOTH COURTS WILL HAVE TO ADDRESS. YOU
`
`KNOW, IS THERE A KIOSK? BOTH OF THESE COMPANIES HAVE TO HAVE
`
`2 3
`
`5 6
`
`KIOSKS AT LEAST TO INFRINGE. BOTH OF THEM HAVE TO HAVE A
`
`MASTER DATABASE IN ORDER FOR THEM TO INFRINGE. THESE ARE
`
`SOFTWARE ISSUES, YOUR HONOR, AND BOTH OF THE PARTIES HAVE
`
`10
`
`COMPUTERS. THEY HAVE DATABASES.
`
`11
`
`SO, IN MANY, MANY WAYS, THERE IS A COMMONALITY BETWEEN
`
`12
`
`PRODUCTS, EVEN IF THEY HAVE A DIFFERENT PRODUCT LABEL AND EVEN
`
`13
`
`IF THEY ARE ADDRESSED TO SLIGHTLY DIFFERENT CUSTOMERS.
`
`14
`
`THERE IS NO REQUIREMENT HERE, YOUR HONOR, SPECIFICALLY
`
`15
`
`THAT THERE BE EXACT IDENTITY OF PRODUCTS OR INFRINGEMENT
`
`16
`
`ISSUES ON A MOTION TO TRANSFER. RATHER, IS THERE A SUBSTANTIAL
`
`17
`
`OVERLAP BETWEEN THE TWO CASES?
`
`18
`
`ON THE ISSUE OF JUDICIAL ECONOMY, YOUR HONOR, I AM SURE
`
`19
`
`YOU KNOW THIS BETTER THAN I, BUT I WILL JUST GO THROUGH THE
`
`20
`
`ISSUES THAT ARE CONSIDERED BY THE COURT., THIS TRANSFER AVOIDS
`
`21
`
`PARALLEL ADJUDICATION OF DUPLICATE ISSUES. AND THERE ARE NOT
`
`22
`
`JUST ONE OR TWO ISSUES. THERE ARE GOING TO BE SUBSTANTIAL
`
`23
`
`ISSUES OF PATENT VALIDITY, ENABLEMENT, WRITTEN DESCRIPTION.
`
`24
`
`THIS IS ANTICIPATION, WHETHER THERE ARE DESCRIPTIONS THAT ARE
`
`25
`
`OF PRIOR ART THAT LITERALLY INVALIDATE OR WHETHER THEY ARE
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 17 of 48 PageID #: 772
`
`Case 2:
`
`3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 15 of 46 PagelD #: 10a4f5 -
`
`OBVIOUS.
`
`THE TRANSFER AVOIDS PARALLEL ADJUDICATIONS OF DUPLICATE
`
`CLAIM CONSTRUCTION ISSUES. YOU WON'T HAVE TWO COURTS
`
`CONSTRUING TEN OR TWENTY CLAIMS.
`
`IT AVOIDS THE POTENTIAL FOR INCONSISTENT RULINGS FROM TWO
`
`kt.DERAL COURTS ON THE SAME ISSUES.
`
`THAT CONCLUDES MY REMARKS, YOUR HONOR. I WOULD ALSO
`
`CONCLUDE WITH ONE FINAL ISSUE, AND THAT IS MUCH OF WHAT JUDGE
`
`WALKER WILL BE DOING IN CALIFORNIA, HE WILL BE DOING WHETHER
`
`3 4 5 6 7 8 9
`
`10
`
`HE HAS THE ONE PLUMTREE DEFENDANT OR WHETHER THESE DEFENDANTS
`
`11
`
`JOIN. THE WORK FOR JUDGE WALKER WILL BE BASICALLY THE SAME.
`
`12
`
`I DON'T SEE IT INCREASING DRAMATICALLY. THANK YOU, YOUR
`
`13
`
`HONOR.
`
`14
`
`15
`
`16
`
`17
`
`THE COURT: VERY WELL. RESPONSE.
`
`MR.. CHAMBERS: GOOD MORNING, YOUR HONOR..
`
`THE COURT: GOOD MORNING, MR. CHAMBERS.
`
`MR. CHAMBERS: MAY IT PLEASE THE COURT. FOR THE
`
`18
`
`RECORD, I HAVE SAM BAXTER, DOUG CAUIEY, TED STEVENSON, AND
`
`19
`
`MYSELF HERE TODAY REPRESENTING DATAMIZE. WE ARE ALSO HAPPY TO
`
`20
`
`HAVE WITH US MR. EMMIT BURNS FROM DATAMIZE.
`
`21
`
`YOUR HONOR, DATAMIZE CHOSE THE EASTERN DISTRICT TO FILE
`
`22
`
`ITS CASE AGAINST THESE DEFENDANTS., AS THE FIFTH CIRCUIT HAS
`
`23
`
`HELD, AND MANY COURTS ACROSS THE COUNTRY HAVE HELD AND THIS
`
`24
`
`COURT HAS HELD, THIS DECISION IS HIGHLY ESTEEMED AND IT SHOULD
`
`25
`
`RARELY BE DISTURBED.. UNDER ESTABLISHED CASE LAW DEFENDANTS
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 18 of 48 PageID #: 773
`
`Case 2: 1 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 16 of 46 PagelD #: 103516 -
`
`1 HAVE A HEAVY BURDEN IN NEGATING DATAMIZE'S CHOICE OF FORUM.
`
`2
`
`THE COURT: WHAT INFLUENCE, IF ANY, DOES THE FACT
`
`3 THAT YOUR CLIENT DIDN'T CHOOSE THE CALIFORNIA FORUM HAVE IN
`
`4 THE COURT'S CONSIDERATION, MR. CHAMBERS, IF ANY?
`
`5
`
`MR. CHAMBERS: YOUR HONOR, I THINK IT IS ONE OF THE
`
`6 PRIMARY CONSIDERATIONS FOR THE COURT. AND, IN FACT, IT IS ONE
`
`7 OF THE THREE REASONS WHY THIS CASE SHOULD NOT BE TRANSFERRED.
`
`8 THE FIRST REASON IS BECAUSE OF THE WAY THE CALIFORNIA CASE
`
`9 CAME ABOUT, IT WOULD BE HIGHLY INEQUITABLE TO TRANSFER THIS
`
`10 CASE OUT THERE.
`
`11
`
`THE SECOND REASON THIS CASE SHOULDN'T BE TRANSFERRED IS
`
`12 BECAUSE THE DEFENDANTS HAVE NOT PRESENTED AN ADEQUATE LEGAL
`
`13 BASIS TO TRANSFER THIS CASE. AND THE THIRD REASON IS BECAUSE
`
`14 THE DEFENDANTS HAVE NOT PRESENTED AN ADEQUATE FACTUAL BASIS TO
`
`15 TRANSFER THIS CASE.
`
`16
`
`ON YOUR SPECIFIC QUESTION ON THE EXISTENCE OF THE
`
`17 CALIFORNIA CASE, THE PLUMTREE CASE, I THINK IT IS INTERESTING
`
`18 TO LOOK AT THE FIRST COUPLE OF SENTENCES OF THE DEFENDANT'S
`
`19 MOTION AND HOW THEY CHARACTERIZE THAT CASE. IF YOU LOOK AT
`
`20 THE SECOND SENTENCE OF THEIR MOTION, DEFENDANTS SAY: THIS CASE
`
`21 WARRANTS TRANSFER DUE TO PRIOR LITIGATION BY THE PLAINTIFF
`
`22 DATAMIZE OF THE SAME INVENTION IN THE NORTHERN DISTRICT OF
`
`23 CALIFORNIA.
`
`24
`
`YOUR HONOR, IT IS UNDISPUTED THAT DATAMIZE DID NOT FILE
`
`25 THE CASE IN THE NORTHERN DISTRICT OF CALIFORNIA. IN FACT,
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 19 of 48 PageID #: 774
`
`Case 2:
`
`3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 17 of 46 PagelD #: 103g 17 _
`
`DATAMIZE FILED IN MONTANA INITIALLY, AND THAT IS WHERE
`
`DATAMIZE IS LOCATED. THE DEFENDANT PLUMTREE FILED A MOTION TO
`
`DISMISS FOR LACK OF PERSONAL JURISDICTION THERE, WHICH
`
`DATAMIZE OPPOSED, AND THE MAGISTRATE IN THAT CASE ISSUED A
`
`REPORT AND RECOMMENDATION THAT IT SHOULD BE DISMISSED FOR LACK
`
`OF PERSONAL JURISDICTION.
`
`RIGHT AFTER THE MAGISTRATE ISSUED THAT OPINION, OR THAT
`
`RECOMMENDATION, I SHOULD SAY, PLUMTREE RAN OUT WITHIN DAYS AND
`
`FILED THE CASE, THE DECLARATORY JUDGMENT CASE, IN THE NORTHERN
`
`1 2 3 4 5 6 7
`
`10
`
`DISTRICT OF CALIFORNIA. AND AS JUDGE WALKER IN THE NORTHERN
`
`11
`
`DISTRICT OF CALIFORNIA FOUND, HE SPECIFICALLY AGREED THAT
`
`12
`
`AFTER MAKING ITS MOTION TO DISMISS, PLUMTREE DID NOT SO MUCH
`
`13
`
`AS WAIT FOR THE MONTANA COURT'S RULING ON THAT MOTION BEFORE
`
`14
`
`FILING THE CASE IN THE NORTHERN DISTRICT OF CALIFORNIA.
`
`15
`
`JUDGE WALKER ALSO FOUND THAT THE PLUMTREE CASE IN THE
`
`16
`
`NORTHERN DISTRICT OF CALIFORNIA DOES NOT PRESENT THE USUAL
`
`17
`
`RATIONALE FOR DECLARATORY JUDGMENT CASE. IN FACT, HE FOUND
`
`18
`
`THAT THE RATIONALE FOR DECLARATORY JUDGMENT CASE IS IN
`
`19
`
`APPOSITE IN THAN CASE, BECAUSE DATAMIZE HAD ACTUALLY FILED IN
`
`20
`
`MONTANA AND THE CASE WAS ONGOING AT THE TIME PLUMTREE RAN TO
`
`21
`
`THE NORTHERN DISTRICT OF CALIFORNIA TO FILE ITS CASE.
`
`22
`
`AND POSSIBLY MOST IMPORTANT ABOUT JUDGE WALKER'S FINDINGS
`
`23
`
`IN THAT CASE, IS THAT HE FOUND THAT PLUMTREE HAD GONE TO
`
`24
`
`CONSIDERABLE LENGTHS TO DEPRIVE DATAMIZE OF ITS CHOICE OF
`
`25
`
`FORUM. IN FACT, JUDGE WALKER REVERSED THE POSITIONS OF THE
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 20 of 48 PageID #: 775
`
`Case 2: t 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 18 of46 PagelD#: 103.718 _
`
`1 PARTY IN THAT CASE. IT WAS A D.J. CASE, AND PLUMTREE WAS
`
`2 INITIALLY THE PLAINTIFF.. HE MADE PLUMTREE THE DEFENDANT AND
`
`3 DATAMIZE THE PLAINTIFF BECAUSE HE FOUND THAT WOULD AT LEAST
`
`4 HELP MITIGATE THE EFFECTS OF PLUMTREE'S EVIDENT FORUM SHOPPING
`
`5 IN THAT CASE.
`
`6
`
`IN OTHER WORDS, YOUR HONOR, THERE HAS BEEN A JUDICIAL
`
`7 FINDING BY THE NORTHERN DISTRICT OF CALIFORNIA CASE THAT THAT
`
`8 CASE IS A PROCEDURAL ANOMALY, AND THE DEFENDANTS IN THIS CASE,
`
`9 DEFENDANTS COMPLETELY UNRELATED TO THE PLUMTREE CASE, ARE
`
`10 TRYING TO USE THAT PROCEDURAL ANOMALY TO EFFECT WHAT THEY
`
`11 PERCEIVE TO BE A PROCEDURAL ADVANTAGE IN THIS CASE.
`
`12
`
`AND IT WOULD BE HIGHLY INEQUITABLE TO TRANSFER THIS CASE,
`
`13 ONE, BECAUSE THERE ARE NINE DEFENDANTS HERE AS OPPOSED TO JUST
`
`14 ONE DEFENDANT THERE. THIS IS A MUCH LARGER CASE. THE DAMAGES
`
`15 ARE MORE SUBSTANTIAL, AND AS I WILL GRT TO IN JUST A COUPLE OF
`
`16 MINUTES, CONTRARY TO THE DEFENDANTS' ARGUMENTS, THIS IS NOT A
`
`17 RELATED CASE.
`
`18
`
`NOW, I THINK THE COURT WILL NOTICE AFTER READING THE
`
`19 DEFENDANTS' BRIEFING AND LISTENING TO THEIR ARGUMENT TODAY
`
`20 THAT THEY HAVE STAYED FAR AWAY FROM JUDGE WALKER'S FINDINGS IN
`
`21 THIS CASE. IF FACT, I DON'T THINK THEY HAVE EVEN MENTIONED
`
`22 THEM ANYWHERE, AND THE REASON FOR THAT IS CLEAR BECAUSE --
`
`23
`
`THE COURT: BUT ASSUMING, YOU KNOW, THIS MAY BE
`
`24 CORRECT, BUT ASSUMING IF THE PARTIES WERE THE SAME, WHICH
`
`25 OBVIOUSLY THEY ARE NOT, AND THE ISSUES SUBSTANTIALLY OVERLAP,
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 21 of 48 PageID #: 776
`
`Case 2:0 -cv-00321-DF Document 87-2 Filed 03/25/04 Page 19 of 46 PagelD #: 103819-
`
`1 PERHAPS THAT'S A CONSIDERATION, BUT I DON'T SEE THAT AS A
`
`2 REASON NOT TO INVOKE THE FIRST RULE, FIRST FILE RULE.,
`
`3
`
`I THINK WHAT CONCERNS THE COURT MORE IS YOUR POSITION
`
`4 THAT THERE IS NO SUBSTANTIAL OVERLAP., OBVIOUSLY, I READ THE
`
`5 DEFENDANTS' PAPERS AND HEAR THEIR PRESENTATION AND IT SEEMS
`
`6 CLEAR, THEY THINK IT IS CIN,AR CUT, ALL OF THE ISSUES OVERLAP.
`
`7 SO, I WANT YOU TO FOCUS ON IF YOU FEEL THEY DON'T OVERLAP, WHY
`
`8 NOT? THE VARIOUS CLAIMS OF THE PRODUCTS, YOU MENTIONED THE
`
`9 INDUSTRIES.
`
`10
`
`I THINK THAT IS GOING TO BE AN IMPORTANT FACTOR FOR THE
`
`11 COURT IN .ARRIVING AT THIS CONSIDERATION, EVEN THOUGH THE FACT
`
`12 THAT YOUR CLIENT DIDN'T FILE FIRST IN CALIFORNIA IS ONE
`
`13 FACTOR, MAYBE NOT THE MOST IMPORTANT FACTOR. OBVIOUSLY, YOUR
`
`14 FIRM WAS INVOLVED IN MEDTRONICS, WHICH I DID TRANSFER IT, BUT
`
`15 I THINK THIS IS AMUCH CLOSER CASE THAN MEDTRONIC.. MR. PATTON
`
`16 WAS INVOLVED IN PITNEY BOWES V. STAMPS.COM WHERE I
`
`17 TRANSFERRED. AGAIN, THIS CASE IS I THINK MUCH CLOSER THAN
`
`18 THOSE CASES WHERE I DID TRANSFER THEM.
`
`19
`
`SO LET'S TALK ABOUT THE CLAIM CONSTRUCTION. WHY DO YOU
`
`20 THINK IT IS DIFFERENT IN THIS CASE VERSUS THE CALIFORNIA CASE?
`
`21
`
`MR. CHAMBERS: YOUR HONOR, THE CLAIM CONSTRUCTION
`
`22 WOULD DIFFER IN THIS CASE AND WILL DIFFER IN THIS CASE BECAUSE
`
`23 WHAT IS CONSTRUED DURING CLAIM CONSTRUCTION ARE THE TERMS.
`
`24 THE DEFENDANTS HAVE MADE A LOT ABOUT THE FACT THAT BOTH THE
`
`25 '040 PATENT AND THE 1137 PATENT SHARE THE SAME SPECIFICATIONS
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 22 of 48 PageID #: 777
`
`Case 2: 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 20 of 46 PagelD #: 103920
`
`1 AND SAME DRAWINGS AND DESCRIPTIONS, BUT THE COURT DOESN'T
`
`2 INTERPRET THOSE THINGS FOR CLAIM CONSTRUCTION. IT INTERPRETS
`
`3 THE LANGUAGE OF THE CLAIMS. AND AS I AM SURE THE COURT HAS
`
`4 NOTICED FROM BOTH SIDES BRIEFING ON THIS, THERE HAS BEEN A
`
`5 YELLOW ON THE VARIOUS EXHIBITS. THE DEFENDANTS HAVE GONE
`
`6 THROUGH AND TRIED TO MAP OUT THREE CLAIMS OF THE 1137 THAT
`
`7 THEY THINK ARE CLOSE TO THREE CLAIMS OF THE 1040, BUT THE
`
`8 REALITY IS THAT THE REST OF THE PATENTS ARE DRASTICALLY
`
`9 DIFFERENT.
`
`10
`
`AND, YOUR HONOR, I AM NOT GOING TO REPRESENT TO THE COURT
`
`11 THAT THERE IS NO OVERLAP IN THESE PATENTS.. I MEAN --
`
`12
`
`THE COURT: WELL, I THINK THE ISSUE IS SUBSTANTIAL
`
`13 OVERLAP, NOT --
`
`14
`
`MR. CHAMBERS: AND THAT IS THE KEY POINT, IT IS
`
`15 SUBSTANTIAL OVERLAP. AND EVEN THE MANN CASE, I THINK IT WAS
`
`16 THE FIRST CITATION THAT THE DEFENDANTS PUT UP THERE, TALKED
`
`17 ABOUT THE OVERALL CONTENT OF THE CASE. SO WE ONLY LOOK AT
`
`18 CLAIM CONSTRUCTION, ONCE AGAIN, THAT HAS TO BE TAKEN IN THE
`
`19 CONTEXT OF IT BEING JUST ONE ASPECT OF THE PATENT CASE.
`
`20
`
`AND I THINK ONE THING THAT IS VERY IMPORTANT TO LOOK AT,
`
`21 YOUR HONOR, IN ANALYZING THESE FACTORS AND LOOKING AT CLAIM
`
`22 CONSTRUCTION IS THE CASES THAT THE DEFENDANTS RELY ON HERE.
`
`23 AND I THINK IF WE TAKE A LOOK AT THOSE, I THINK IT WILL HELP
`
`24 WHEN WE TALK ABOUT CLAIM CONSTRUCTION FURTHER IN ANALYZING
`
`25 WHETHER THERE IS A SUBSTANTIAL OVERLAP.
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 23 of 48 PageID #: 778
`
`Case 2: 3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 21 of 46 PagelD #: 104021 -
`
`THIS CASE, AS I BELIEVE THE COURT MENTIONED A FEW MINUTES
`
`2 AGO, DOES NOT CONCERN THE SAME BASIC PARTIES AS THE PLUMTREE
`
`3 CASE IN CALIFORNIA. SIMILARLY, IT DOES NOT CONCERN THE SANE
`
`4 BASIC PRODUCTS. IT DOESN'T CONCERN THE SANE BASIC INDUSTRIES.
`
`5 THERE IS NO OVERLAP IN THE PATENTS, AND WHEN I SAY OVERLAP IN
`
`6 THE PATENTS, THERE IS A DIFFERENT PATENT AT ISSUE, THE '137 IN
`
`7 THE PLUMTREE CASE IN CALIFORNIA, AS THE '040 PATENT THAT IS AT
`
`8 ISSUE IN THIS CASE.
`
`9
`
`AND FINALLY, THE TWO CASES ARE NOT THE SAME CONTROVERSY.
`
`10 THEY ARE COMPLETELY SEPARATE CONTROVERSIES. rkihSE ARE
`
`11 COMPLETELY SEPARATE AND UNRELATED DEFENDANTS WITH DIFFERENT
`
`12 PRODUCTS AND DIFFERENT INFRINGEMENT.
`
`13
`
`NOW, WHEN WE LOOK AT THE MAIN CASES THAT THE DEFENDANTS
`
`14 CITE TO A CLEAR PATTERN EMERGES. EVERY ONE OF THESE CASES
`
`15 INVOLVED SOME ASPECT OF THESE FACTORS.. THE MANN CASE IS THE
`
`16 PRIMARY CASE THAT THE DEFENDANTS RELIED ON. IT INVOLVED THE
`
`17 SAME BASIC PARTIES. IT INVOLVED THE SAME BASIC PRODUCTS. IT
`
`18 INVOLVED THE SAME INDUSTRIES.. THERE WAS AN OVERLAP OF PATENTS
`
`19 IN THAT CASE. AND THE COURT ALSO FOUND THAT IT WAS
`
`20. ESSENTIALLY THE SANE CONTROVERSY. MOREOVER, THERE WERE
`
`21 MULTIPLE INJUNCTIONS AT ISSUE IN THAT CASE WHICH WAS VERY
`
`22 CENTRAL TO THE COURT'S DECISION THERE.
`
`23
`
`SIMILARLY, THE SAVE POWER CASE, NOW THAT'S NOT A PATENT
`
`24 CASE, BY THE WAY, BUT THE DEFENDANTS DO RELY ON IT.. AGAIN,
`
`25 YOU HAVE THE SAME BASIC PARTIES, SAME BASIC PRODUCTS, SAME
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 25-1 Filed 01/08/16 Page 24 of 48 PageID #: 779
`
`Case 2:
`
`3-cv-00321-DF Document 87-2 Filed 03/25/04 Page 22 of 46 PagelD #: 104122 -
`
`INDUSTRIES. THERE IS NOT AN OVERLAP IN PATENTS BECAUSE IT IS
`
`NOT A PATENT CASE.. AND AGAIN, WE ARE LOOKING AT THE SAME
`
`CONTROVERSY.
`
`THE ONLY ONE THAT IS EVEN SLIGHTLY DIFFERENT IS THE HARK
`
`CHANIN CASE. THAT DID NOT INVOLVE THE SAME BASIC PARTIES. IT
`
`DID INVOLVE THE SAME BASIC PRODUCTS, CD ROMS, THE SAME
`
`INDUSTRIES. THERE WAS AN OVERLAP IN
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