IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`Case No. 6:15-CV-00163
`
`JURY TRIAL DEMANDED
`
`Judge Rodney Gilstrap
`
`Magistrate Judge John D. Love
`
`CHRIMAR SYSTEMS, INC., d/b/a
`CMS TECHNOLOGIES and CHRIMAR
`HOLDING COMPANY, LLC,
`Plaintiffs,
`v.
`
`AMX,
`
`
`
`Defendant.
`
`
`
`
`
`
`
`AMX’S INITIAL DISCLOSURES
`
`Pursuant to Rule 26(a)(1)(A) of the Federal Rules of Civil Procedure, AMX (“AMX”)
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`hereby submits the following Initial Disclosures. These disclosures are limited to the
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`information reasonably available to AMX at the present time. Discovery may yield additional
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`information. AMX therefore reserves all rights to supplement, revise, correct, clarify or
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`otherwise amend these disclosures should additional information become available in the future.
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`Furthermore, these disclosures are made without waiver of and without prejudice to any
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`objections AMX may have regarding the subject matter of these disclosures or any documents or
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`individuals identified herein. AMX expressly reserves all objections, including but not limited to
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`(a) relevance; (b) attorney-client privilege; (c) work product protection; (d) any other applicable
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`privilege or protection under federal or state law; (e) undue burden; (f) materiality; (g) over-
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`breadth; and (h) the admissibility in evidence of these disclosures or the subject matter thereof.
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`A.
`
`The Correct Names of the Parties to This Lawsuit:
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`The Complaint filed by Chrimar Systems, Inc., et al. named AMX, LLC as the
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`Defendant. The correct and proper name for the Defendant is AMX.
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`B.
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`C.
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`The Name, Address, and Telephone Number of Any Potential Parties:
`
`AMX is not aware of any additional parties that should be added to this case.
`
`The Legal Theories and General Factual Bases of AMX’s Counterclaims and
`Defenses:
`
`1.
`
`Non-Infringement of the Patents-in-Suit (Counterclaim Count I)
`
`Plaintiff accuses AMX of direct infringement and inducing infringement of U.S. Patent
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`Nos. 8,155,012 (“the ’012 Patent”), 8,942,107 (“the ’107 Patent”), 8,902,720 (“the ’760 Patent”),
`
`and 9,019,838 (“the ’838 Patent”). The above listed patents are cited herein as the “patents-in-
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`suit.” AMX has not directly infringed or induced the infringement of, either literally or by virtue
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`of the doctrine of equivalents, any valid and enforceable claim of the patents-in-suit and has not
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`otherwise committed any acts in violation of 35 U.S.C. § 271. As a general matter, AMX
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`contends that it does not infringe the patents-in-suit because (even assuming the patents are
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`valid) not all elements of the properly construed claims of the patents-in-suit are present in
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`AMX’s products, literally or by the doctrine of equivalents. AMX also contends that it does not
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`induce another’s infringement. First, AMX is not aware of any other parties that do infringe the
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`patents-in-suit by using AMX’s products. Second, AMX does not have, nor did it ever have,
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`intent to induce infringement. Third, AMX does not sell or supply any components within the
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`meaning of §271(c). AMX will serve its expert reports regarding non-infringement at the time
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`and in the manner provided in the local Patent Rules and the Court’s Docket Control Order.
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`2.
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`Invalidity of the Claims of the Patents-in-Suit (Counterclaim Count II)
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`The patents-in-suit are invalid, inter alia, for failing to meet the conditions of
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`patentability set forth in 35 U.S.C. § 101 et seq., including but not limited to 35 U.S.C. §§ 101-
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`103, and 112. AMX has and will serve invalidity contentions and expert reports regarding
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`invalidity at the time and in the manner provided in the local Patent Rules and the Court’s
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`Docket Control Order.
`
`3.
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`Unenforceability and Inequitable Conduct (Counterclaim Count III)
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`The patents-in-suit are unenforceable due to inequitable conduct before the United States
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`Patent and Trademark Office.
`
`4.
`
`AMX’s Other Defenses
`
`AMX asserts additional counterclaims and affirmative defenses as described in detail in
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`AMX’s Answer, Defenses, and Counterclaims, dated August 26, 2015.
`
`D.
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`Persons with Knowledge of Relevant Facts:
`
`AMX has and will continue to identify persons with knowledge regarding the operation
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`and deployment of the accused AMX products, and the other relevant issues in this case. As
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`AMX’s investigation progresses, it will supplement this disclosure with the identity of AMX
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`employees who have knowledge of relevant facts.
`
`AMX further reserves the right to supplement and/or amend this list based on further
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`investigation, analysis, and discovery, to the extent additional disclosures are not mooted or
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`made redundant by future discovery requests. AMX employees who are listed as witnesses
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`should be contacted only through AMX’s counsel. AMX further discloses and reserves its right
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`to rely on witnesses identified in other cases concerning the patents-in-suit who would have
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`knowledge relevant to the liability and damages issues in this case, including all of CMS’s
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`experts in those cases. AMX’s present witness list, however, is not intended to disclose or
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`foreclose the identification of any other expert witnesses who will be disclosed in accordance
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`with the Court’s Discovery and Docket Control Orders in this case.
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`
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`Individual
`
`James Alford; Operations
`Manager
`
`Address & Telephone, if
`known
`CMS Technologies 36528
`Grand River Ave., Suite A-1
`Farmington Hills, Michigan
`48335
`
`John F. Austermann, III;
`President and Chief Executive
`Officer
`
`CMS Technologies 36528
`Grand River Ave., Suite A-1
`Farmington Hills, Michigan
`48335
`
`Chris Bakewell
`
`Clyde Boenke
`
`Steven Carlson
`
`Duff & Phelps Heritage Plaza
`1111 Bagby St., Ste. 1900
`Houston, TX 77002
`
`1443 Colony Drive #223,
`Saline, MI 48176
`
`High Speed Design, Inc.
`11929 N.W. Old Quarry Road
`Portland, OR 97229
`
`Chrimar Systems, Inc. d/b/a/
`CMS Technologies
`
`36528 Grand River Ave.,
`Suite A-1 Farmington Hills,
`Michigan 48335
`
`Subject
`
`Knowledge regarding business
`relations, contracts, marking,
`licensing, ownership and
`accounting for CMS as it
`relates to the patents-in-suit;
`information related to
`damages claimed by CMS;
`and information related to the
`identification of prior art and
`the unenforceability of the
`patents-in-suit
`Named Inventor of the
`patents-in-suit with knowledge
`regarding the conception,
`reduction to practice and
`inventorship of the patents-in-
`suit
`Appropriate reasonable
`royalty and damages issues
`related to infringement of the
`asserted patent
`Knowledge regarding the
`conception and reduction to
`practice of the inventions
`disclosed in the patents-is-suit
`and the development of the
`Etherlock ID product
`Indefiniteness of the asserted
`patents; the IEEE’s efforts in
`connection with the
`standardization of 802.3 and
`its amendments
`Purported assignee of the
`patents-in-suit patent with
`knowledge regarding the
`business and licensing
`practices of the patents-in-suit,
`as well as the prosecution of
`the patents-in-suit
`
`DM_US 63160163-1.094424.0017
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`Individual
`
`Marshall B. Cummings;
`Director of Innovation
`
`Address & Telephone, if
`known
`NEXTEP SYSTEMS 3331 W.
`Big Beaver Rd. Suite 111,
`Troy, MI 48084
`
`Steve Dawson; Vice President
`Sales & Marketing
`
`CMS Technologies 36528
`Grand River Ave., Suite A-1
`Farmington Hills, Michigan
`48335
`
`Art Heald
`
`Harold Hickey; AMX Senior
`Vice President of Global
`Operations & Supply Chain
`
`GT Hill; Director of Corporate
`Technology Marketing
`
`Darin Milton
`
`AMX c/o McDermott Will &
`Emery LLP 227 W. Monroe,
`Chicago IL 60606 (312) 372-
`2000
`c/o McDermott Will & Emery
`LLP 227 W. Monroe, Chicago
`IL 60606 (312) 372-2000
`
`Ruckus Wireless, Inc.
`350 West Java Dr.
`Sunnyvale, CA 94089
`
`Ruckus Wireless, Inc.
`350 West Java Dr.
`Sunnyvale, CA 94089
`
`Robert Noble; AMX Chief
`Technology Officer
`
`c/o McDermott Will & Emery
`LLP 227 W. Monroe, Chicago
`IL 60606 (312) 372-2000
`
`Jim Pautler; AMX Senior Vice
`President of Global Product
`Engineering
`
`c/o McDermott Will & Emery
`LLP 227 W. Monroe, Chicago
`IL 60606 (312) 372-2000
`
`DM_US 63160163-1.094424.0017
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`Subject
`
`Named Inventor of the
`patents-in-suit with knowledge
`regarding the conception,
`reduction to practice and
`inventorship of the patents-in-
`suit
`Knowledge regarding business
`relations, contracts, marking,
`licensing, ownership and
`accounting for CMS as it
`relates to the patents-in-suit;
`information related to
`damages claimed by CMS;
`and information related to the
`identification of prior art and
`the unenforceability of the
`patents-in-suit
`The accused product; Ethernet
`functionality employed in the
`accused product; engineering
`and sales activities at AMX
`Knowledge regarding business
`relations, contracts, marketing
`and sales of the accused
`product
`Knowledge regarding the
`functionality, design,
`development and sale of the
`accused product
`The accused product; Ethernet
`functionality employed in the
`accused product; engineering
`and sales activities at Ruckus
`Knowledge regarding business
`relations, contracts, marketing
`and sales of the accused
`product
`Knowledge regarding original
`source selection of the accused
`product
`
`

`
`Individual
`
`G. Gregory Schivley, Esq.;
`Principal
`
`Rich Seifert
`
`Address & Telephone, if
`known
`Harness, Dickey & Pierce,
`PLC, 5445 Corporate Dr.,
`Suite 200, Troy, MI 48098
`Networks and
`Communications Consulting
`21885 Bear Creek Way Los
`Gatos, CA 95033
`
`Jeffrey L. Snyder, Esq.;
`Principal
`
`Geoffrey Thompson
`
`Harness, Dickey & Pierce,
`PLC, 5445 Corporate Dr.,
`Suite 200, Troy, MI 48098
`158 Paseo Court Mountain
`View, CA 94043
`
`Currently unspecified authors,
`inventors, and other
`developers of prior art, or
`persons who are believed to
`have knowledge regarding the
`same
`Representative of Texas
`Instruments
`
`Currently unidentified
`custodians of pertinent records
`
`Currently unidentified
`representatives of Plaintiff
`
`
`
`
`
`
`
`
`
`Subject
`
`Prosecution of the patents-in-
`suit; prior art relevant to the
`patents-in-suit
`Invalidity and non-
`infringement of the asserted
`patents; the IEEE’s efforts in
`connection with the
`standardization of 802.3 and
`its amendments
`Prosecution of the patents-in-
`suit; prior art relevant to the
`patents-in-suit
`The IEEE’s efforts in
`connection with the
`standardization of 802.3 and
`its amendments
`Prior art that may be relevant
`to the invalidity or
`unenforceability of the
`patents-in-suit
`
`Ethernet functionality and
`components employed in the
`accused product
`Authenticity and/or
`admissibility of documents,
`including without limitation,
`prior art
`Licensing activities of
`Plaintiff; purchase of the
`patents-in-suit
`
`
`E.
`
`Disclosures Require Under Paragraph 1(E)-(G) of the Discovery Order
`
`1.
`
`Indemnity and Insuring Agreements
`
`To the extent that any indemnity obligation could become applicable to the issues in this
`
`action, AMX will identify indemnity or insuring agreements under which third parties may be
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`liable to satisfy part or all of a judgment entered in this action or to indemnify or reimburse for
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`payments made to satisfy the judgment. AMX will produce these agreements in accordance with
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`paragraph 1(E) of the Discovery Order (C.A. No. 15cv163, Dkt. No. 40).
`
`2.
`
`Settlement Agreements Relevant to the Subject Matter of This Action
`
`AMX and Chrimar entered into an agreement dismissing previously filed case no.
`
`13cv881 without any payment to Chrimar. Pursuant to the agreement, Chrimar has waived any
`
`claims for infringement of the ’012 patent for any products identified in [C.A. No. 13cv881, Dkt.
`
`No. 131]. Further, AMX understands that Chrimar has entered into settlement agreements with
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`third parties that are relevant to the subject matter of this action.
`
`3.
`
`Statements of Any Party to the Litigation
`
`In discovery, Chrimar previously produced numerous transcripts of depositions of its
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`Rule 30(b)(6) corporate representatives each of which may be, in whole or part, a relevant
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`statement of Chrimar. Otherwise, AMX is not aware of relevant party statements.
`
`F.
`
`Disclosures Required Under Rule 26(a)(1)(A)(ii)-(iv)
`
`AMX will produce documents pursuant
`
`to Federal Rule of Civil Procedure
`
`26(a)(1)(A)(ii)-(iv) in accordance with the schedule set forth in the Court’s Docket Control
`
`Order, Discovery Order and the Local Rules, including the Local Patent Rules. Presently, AMX
`
`is not claiming any damages at this time, but will seek to recover its attorneys’ fees and expenses
`
`incurred in this matter to the extent allowed by applicable law. AMX is presently unable to
`
`compute these costs, but AMX will provide computations of such costs at an appropriate time.
`
`
`
`
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`Respectfully submitted,
`
`/s/ Brent A. Hawkins
`Brent A. Hawkins
`David H. Bluestone
`McDERMOTT WILL & EMERY LLP
`227 West Monroe Street
`Chicago, IL 60606-5096
`Telephone: (312) 372-2000
`Facsimile: (312) 984-7700
`Email: bhawkins@mwe.com
`Email: dbluestone@mwe.com
`
`Michael E. Jones
`State Bar No. 10929400
`mikejones@potterminton.com
`Allen Gardner
`State Bar No. 24043679
`allengardner@potterminton.com
`POTTER MINTON, P.C.
`110 North College, Suite 500
`Tyler, Texas 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 593-0846
`
`Attorneys for Defendant
`AMX
`
`Dated: August 31, 2015
`
`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 31, 2015, the foregoing was served via electronic mail
`
`upon the following recipients:
`
`Richard.Wynne@tklaw.com
`Hoffmann@reising.com
`Justin.Cohen@tklaw.com
`ChriMar@tklaw.com
`CMS.AMX.LLC@tklaw.com
`LPeschel@wmalaw.com
`CCravey@wmalaw.com
`
`
`
`/s/ Brent A. Hawkins
`Brent A. Hawkins
`
`DM_US 63160163-1.094424.0017