Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 1 of 21
`
`1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`*
`IDENTITY SECURITY LLC
`June 16, 2023
`*
`
`*
`VS.
` * CIVIL ACTION NO. 1:22-CV-58
`APPLE, INC.
`*
`
`BEFORE THE HONORABLE ALAN D ALBRIGHT
`MOTIONS HEARING (via Zoom)
`
`
`APPEARANCES:
`For the Plaintiff:
`
`For the Defendant:
`
`Court Reporter:
`
`Brian Melton, Esq.
`Taylor C. Hoogendoorn, Esq.
`Thomas V. DelRosario, Esq.
`John P. Lahad, Esq.
`Susman Godfrey, L.L.P.
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002
`Cosmin Maier, Esq.
`Michael Wueste, Esq.
`Leslie M. Spencer, Esq.
`Madeline Elisabeth Byrd, Esq.
`Desmarais LLP
`230 Park Avenue
`New York, NY 10169
`James Travis Underwood, Esq.
`Gillam & Smith
`102 N. College, Suite 800
`Tyler, TX 75702
`Kristie M. Davis, CRR, RMR
`PO Box 20994
`Waco, Texas 76702-0994
`(254) 340-6114
`
`Proceedings recorded by mechanical stenography,
`transcript produced by computer-aided transcription.
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`*
`IDENTITY SECURITY LLC
`June 16, 2023
`*
`
`*
`VS.
` * CIVIL ACTION NO. 1:22-CV-58
`APPLE, INC.
`*
`
`BEFORE THE HONORABLE ALAN D ALBRIGHT
`MOTIONS HEARING (via Zoom)
`
`
`APPEARANCES:
`For the Plaintiff:
`
`For the Defendant:
`
`Court Reporter:
`
`Brian Melton, Esq.
`Taylor C. Hoogendoorn, Esq.
`Thomas V. DelRosario, Esq.
`John P. Lahad, Esq.
`Susman Godfrey, L.L.P.
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002
`Cosmin Maier, Esq.
`Michael Wueste, Esq.
`Leslie M. Spencer, Esq.
`Madeline Elisabeth Byrd, Esq.
`Desmarais LLP
`230 Park Avenue
`New York, NY 10169
`James Travis Underwood, Esq.
`Gillam & Smith
`102 N. College, Suite 800
`Tyler, TX 75702
`Kristie M. Davis, CRR, RMR
`PO Box 20994
`Waco, Texas 76702-0994
`(254) 340-6114
`
`Proceedings recorded by mechanical stenography,
`transcript produced by computer-aided transcription.
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 2 of 21
`
`2
`
`(Hearing begins.)
`DEPUTY CLERK: A civil action in Case
`AU:22-CV-58, Identity Security LLC versus Apple, Inc.
`Case called for a motions hearing.
`THE COURT: Announcements from counsel.
`I think I saw Mr. Melton.
`MR. MELTON: Yes, Your Honor. Brian
`Melton, Taylor Hoogendoorn and John Lahad for Identity
`Security.
`
`THE COURT: And for defendant?
`MR. UNDERWOOD: Good morning, Your Honor.
`This is Travis Underwood from Gillam & Smith on behalf
`of the defendant Apple. I'm joined by Cosmin Maier,
`Michael Wueste, Asim Zaidi, Amy Wann, Leslie Spencer,
`and I'm also pleased to announce that we've got three
`client representatives on. Natalie Pous, Jenny Liu and
`Jeff Quilici. And we're ready to proceed, Your Honor.
`THE COURT: Well, welcome --
`MR. MELTON: Your Honor, I'm sorry. Ari
`Tan, our client, is on as well.
`THE COURT: Okay. Competing clients.
`All good. Glad to have all of them.
`Let me find -- give me one second.
`So my understanding is that you all may
`have worked out new dates for a scheduling order.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:31
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 3 of 21
`
`3
`
`Mr. Melton, I have you in the screen. Is
`
`that right?
`
`MR. MELTON: No, Your Honor. That was --
`when we got Nolan's e-mail talking about the potential
`for an amended scheduling order, when I was getting
`ready for the hearing last night, I put that together.
`I shared with it y'all an hour and a half ago or so,
`but it's not agreed.
`THE COURT: Okay. So who -- I have the
`opening bid from the plaintiff.
`What does defendant think about this?
`MR. MAIER: Good morning, Your Honor.
`Cosmin Maier for Apple.
`Well, obviously, there's a motion to stay
`to discuss today. So there's that. But we've had an
`hour to look at plaintiff's schedule, and I don't think
`we would agree to it. We would prefer to stick to the
`original schedule, and I can note some reasons for
`that.
`
`But just looking at it over the past
`hour, you know, everyone knows that defendants are more
`likely to, you know, file dispositive motions. And
`what we're seeing in this schedule is that now
`dispositive motions, instead of being due in March, you
`know, they're going to be briefed over Christmas and
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:32
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 4 of 21
`
`4
`
`New Years. So we have a couple of issues with their
`proposed schedule, but we've only just received it.
`But I think if Your Honor was not to stay
`the case, then we would propose sticking with the
`original schedule that was filed last January.
`THE COURT: Okay. Let me hear -- let me
`hear from -- let me go ahead and hear the motion to
`stay.
`
`MR. MELTON: For, I guess, the Markman
`
`one or the --
`
`THE COURT: I have the motion to stay the
`case pending ex parte reexaminations.
`MR. MELTON: Got it.
`MR. MAIER: Yes, Your Honor. May I
`
`proceed?
`
`THE COURT: Yes, please.
`MR. MAIER: All right. So, Your Honor,
`we submit that each of the three factors that courts in
`this district consider favors a stay.
`And if Your Honor permits, I'll go
`through each factor, and then I will address the case
`that plaintiff filed on Wednesday night.
`So if we turn to Slide 2, plaintiff can't
`show undue prejudice. The patents are expired here.
`So the only relief that plaintiff can seek is money
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:33
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 5 of 21
`
`5
`
`damages. And it's blackletter law that delay in
`collecting money damages is insufficient to establish
`undue prejudice.
`Now, plaintiff recognizes that at its
`brief at Page 8. So instead, plaintiff generally
`argues that the delay in vindicating patent rights is
`what constitutes undue prejudice.
`But that too is insufficient to establish
`undue prejudice because every patent plaintiff in every
`patent case can point to delay in vindicating patent
`rights as supposedly prejudicial.
`And Your Honor said exactly that in TC
`Technology v. T-Mobile. At *2 Your Honor wrote:
`Because that interest is present in every case where a
`patent owner resists a stay, that alone is insufficient
`to defeat a motion to stay.
`So what we have here is that plaintiffs
`failed to articulate with factual support anything
`other than delay in collecting money or the generic
`notion of vindicating patent rights, both of which are
`insufficient to demonstrate undue prejudice under the
`case law.
`
`And it's also important to consider that
`the parties here do not compete. So there's no risk of
`lost market share that can be --
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:34
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 6 of 21
`
`6
`
`THE COURT: I'm familiar with all that.
`Why did it take y'all 20 months?
`MR. MAIER: The -- oh, yes. So I think
`that's what plaintiff is arguing as a primary argument
`against the stay. And it's unclear whether that's --
`they're putting that in undue prejudice or stage of the
`litigation, so I can address each.
`So again, the only prejudice they could
`point to is delay --
`THE COURT: No, no, no. That wasn't my
`
`question.
`
`20 months?
`
`My question is: Why did you wait
`
`MR. MAIER: Well, we waited 20 months
`because we did it before the opening of fact discovery.
`So we had --
`
`THE COURT: Why did you wait 20 months?
`You could have filed this the second you
`got the case.
`MR. MAIER: Right. Well, so I can
`explain the history. We filed IPRs. The Patent
`Office -- the PTAB found that there was a particular
`limitation lacking in the prior art.
`Once we got that decision, we found prior
`art that filled that limitation. And then we filed it
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:35
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 7 of 21
`
`7
`
`after the Court issued its Markman order so we had the
`benefit of the Markman order.
`So that's what led to the timeline. Now,
`
`there were --
`
`case.
`
`THE COURT: I'm not going to stay the
`
`Let's take up the issue of whether or not
`there needs to be further claim construction.
`And I'm not going to stay the case
`pending further claim construction, but who is it
`that's asking for the additional claim construction?
`MR. MAIER: It's Apple, Your Honor. And
`Michael Wueste will address the motion for further
`claim construction.
`THE COURT. Okay. Why don't you -- why
`don't -- whoever's arguing it, why don't you tell me
`what claim terms it is you want to be construed?
`MR. WUESTE: Certainly, Your Honor.
`Michael Wueste on behalf of Apple. May it please the
`Court.
`
`So the claim terms at issue are two terms
`that were present in new claims that plaintiff added in
`its amended complaint after the parties had already
`completed Markman preceding the time before.
`THE COURT: Okay. I get that.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:36
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`09:37
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 8 of 21
`
`8
`
`Let me hear from Mr. Melton why would I
`not -- if these were added after I did the Markman, why
`would I not go with Apple on this and -- if they think
`two terms need to be construed?
`MR. MELTON: Well, Your Honor, we offered
`that in April and had -- and that shows you that all
`this talk about leave of Court and everything they're
`talking about is a smoke screen.
`Had they accepted what we offered them in
`April, which was a truncated Markman proceeding, today
`would have been a Markman hearing instead of a hearing
`to decide these things.
`But they want delay. And if you send me
`your constructions in April and I agree to them, which
`I do in a lot of cases, I may not do it in this case --
`THE COURT: Did you offer to have them
`send the constructions then? I mean --
`MR. MELTON: I don't think I have an
`e-mail where I said, send your constructions --
`THE COURT: No. But I'm saying, do you
`know what the two claim terms are?
`MR. MELTON: I know what they are.
`Absolutely. It's an "interface" and an import --
`"input/output port." Those two easy-to-understand
`terms is what we're talking about.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:37
`
`09:37
`
`09:37
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`09:38
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 9 of 21
`
`9
`
`THE COURT: Okay. So let me hear from
`Apple -- let me hear from Apple how long would it
`take --
`
`MR. MELTON: But to answer your question,
`Your Honor, we're fine with a truncated proceeding.
`And we have a proposal at the bottom of the schedule I
`sent the Court with the green on it --
`THE COURT: We're about to get to that.
`We're about to get in -- I'm going to do the Markman on
`those two claim terms.
`Let me hear from Apple. How long would
`you all need to do the briefing?
`I think y'all do simultaneous briefing,
`
`right?
`
`briefing?
`
`And so how long would Apple need on the
`
`MR. WUESTE: Your Honor, to be clear, the
`parties haven't finished briefing yet in this case.
`We've proposed an exchange of briefing. I believe we
`set out the -- our proposed schedule in Exhibit 1 to
`our motion and --
`THE COURT: I haven't seen that. Why
`don't you just tell me what it is?
`MR. WUESTE: Sure. Absolutely, Your
`Honor. So I'll pull that up right now.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:38
`
`09:38
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`09:39
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 10 of 21
`
`10
`
`And what our proposed schedule entails is
`within two weeks of your ordering further claim
`construction, the parties exchange proposed
`constructions, and exchange of extrinsic evidence
`occurs one week from the previous deadline.
`Apple has two weeks to file its opening
`brief. The plaintiff has an additional four weeks
`from -- to file its responsive brief.
`And then if Your Honor's inclined to
`allow for reply briefing or surreply briefing, those
`would each occur two weeks from the previous deadline.
`THE COURT: Yeah. Hold on one second.
`I'll be right back.
`(Pause in proceedings.)
`THE COURT: Okay. Here's what we're
`going to do. Could you -- could Apple's counsel again
`remind me what the two claim terms are just for the
`record?
`
`MR. WUESTE: Absolutely, Your Honor.
`So the two claim terms are, one, an
`"interface configured to enable the digital identity
`device to communicate with an external device." And
`that's found in both the '497 patent and the '008
`patent.
`
`And the second one is "input/output
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:39
`
`09:39
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:40
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 11 of 21
`
`11
`
`port." And that again is found in the '497 patent and
`the '008 patent.
`I can pull up the specific claims for
`
`Your Honor --
`
`THE COURT: I don't need it.
`So by the close of business next Friday,
`you all will exchange your proposed constructions. I
`can -- I could probably draft Mr. Melton's for him
`right now, but I'll -- who knows what he might come up
`with.
`
`And so y'all will have till close of
`business next Friday to exchange those. You'll have
`two weeks from then to provide the Court with
`briefing -- simultaneous briefing on it. And then
`there will be no rebuttal briefing.
`And we will try and find you all a
`date -- the first day we have available after those
`three weeks, we will set a Markman hearing for either
`in front of me or in front of Judge Gilliland.
`So I think that takes care of this issue,
`but if it -- if Apple wants to tell me there's
`something I'm missing, please let me know.
`MR. MELTON: Next Friday, Your Honor,
`would also be the extrinsic evidence exchange?
`THE COURT: Yes. Thank you, sir.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:42
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 12 of 21
`
`12
`
`Anything else?
`MR. WUESTE: Nothing further.
`THE COURT: Okay. Very good. So that
`takes care of that.
`Now -- and if I didn't say it, I think I
`did, but I'm not going to stay anything while that is
`going on as well.
`Now, I did -- I also didn't really
`have -- I misunderstood -- I'm sorry. I misunderstood
`the e-mail I got from my clerk and thought that the
`proposal was something that had been agreed to.
`Let's -- let me do this. I hate to do
`this, but I'm going to -- I'm going to give Apple an
`opportunity to -- if they want it, if Apple wants an
`opportunity to come up with a counterproposal order.
`If Apple thinks they're just going to stick with
`current and I have the plaintiff's -- let me hear from
`Mr. Melton, what is the impetus for shortening all
`these deadlines?
`MR. MELTON: Well, Your Honor, it's
`fairly simple. Judge -- the case was transferred to
`Judge Yeakel. Judge Yeakel -- when we -- we had a
`hearing about the schedule. He said, I like to have a
`lot of time between dispositive motions and pretrial
`conference. And so --
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:43
`
`09:43
`
`09:43
`
`09:43
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:44
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 13 of 21
`
`13
`
`THE COURT: I don't.
`MR. MELTON: Your court doesn't, and
`that -- if you look at it, that's the bulk of the cut.
`And so when we got the e-mail from Nolan,
`we looked at what the delta was between what you
`usually do and what Judge Yeakel did, and we -- that's
`why we proposed it.
`THE COURT: I think y'all will find --
`MR. MELTON: The case has been pending
`since 2021. We had a year-long stay.
`THE COURT: I approach things a little
`differently than Judge Yeakel did in terms of trying to
`get things tried.
`So let me -- I'm looking through this.
`And this has been pending since '21?
`MR. MELTON: Yes, Your Honor. We filed
`this in May of 2021.
`THE COURT: Okay. Okay. My only -- the
`issue I have with this, which I'm sympathetic to what
`counsel for Apple said, is if this does -- oh, of
`course, at some point we've got to do something over
`Christmas, I guess.
`But I'm just trying to make it a little
`less onerous in that regard. What -- I have a category
`here for pretrial exchanges. Is that something in my
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:45
`
`09:46
`
`09:46
`
`09:46
`
`09:46
`
`09:46
`
`09:46
`
`09:46
`
`09:46
`
`09:46
`
`09:46
`
`09:47
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 14 of 21
`
`14
`
`standard order? I'm not sure what pretrial exchanges
`are.
`
`MR. MELTON: I think we did it in January
`with exhibits and deposition designations.
`THE COURT: Okay. Okay. So that would
`
`be...
`
`Well, I'm not sure why -- here's what I'm
`going to do. I'll go ahead -- I'm going to go ahead
`and make the date for jury selection in April. I
`think -- I'm not sure that that date works, but let's
`just assume the trial is going to go in April.
`And so in the final pretrial order will
`be -- it may not be the 29th, but let's just say it's
`in that ballpark.
`You all can go back -- I think,
`Mr. Melton, your schedule finishes things a little bit
`earlier than is necessary to get it done by that date.
`You know, I just -- we need everything in our office by
`maybe two or three weeks before the pretrial conference
`so we can read it.
`So what I care about -- what I care about
`us getting are the dispositive motions, the Daubert
`motions, the motions for summary judgment and the MILs.
`And if we have those about -- if we were
`to have those, say, by the end of February or first
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:47
`
`09:47
`
`09:47
`
`09:47
`
`09:47
`
`09:47
`
`09:47
`
`09:47
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:48
`
`09:49
`
`09:49
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 15 of 21
`
`15
`
`week of March, I think we'd be fine on our end to be
`able to get things reviewed. And if you all want to
`get together and cobble together deadlines that reflect
`that, that would work for us.
`Does that work for you, Mr. Melton?
`MR. MELTON: Yes, Your Honor.
`THE COURT: And what about for Apple?
`MR. MAIER: Yeah. We can take a look at
`it and come up with some dates.
`Are you saying that the -- all of the
`briefing should be in by that first week in March?
`THE COURT: That would be -- yes. I
`think that's about how long -- you know, I'm not
`reading it, but I get pretty thorough -- what happens
`is my -- the -- what we do in our court is we kind of
`distribute all the motions over the different clerks so
`they're not overburdened. I mean, everyone's getting
`to do something. We've got all that.
`And they'll get me a memo on each one
`before the hearing. And I think if we have it at
`least, say, three weeks before the pretrial conference,
`I'll certainly be ready for the pretrial conference.
`MR. MAIER: And would Your Honor still
`
`like --
`
`THE COURT: I'm sorry. Please.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:49
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 16 of 21
`
`16
`
`MR. MAIER: Are you still looking for a
`counterproposal from Apple to plaintiff's proposal?
`THE COURT: No. No. I'm -- we're going
`to set the trial in April. But I -- but you all are
`welcome -- Apple's welcome to work with the plaintiff
`to where the deadlines don't, as you suggested, make
`everything -- you know, y'all get done what you have to
`get done on -- by deadlines that allow you to get all
`the dispositive -- I mean, not just dispositive motions
`but motions, responses and replies, if you want to have
`replies. If you don't have replies, then that gives
`you even more time.
`MR. MAIER: And two questions to clarify
`it. On the Markman, what will be the page limits on
`the Markman briefing that Your Honor suggested?
`THE COURT: You have two terms. What --
`how much do you think you would need?
`I'll tell you, the second one doesn't
`sound like it's going to need a lot.
`MR. MAIER: Maybe seven.
`MR. MELTON: Ten, Your Honor.
`THE COURT: Ten pages? Y'all should
`
`never --
`
`suggested --
`
`MR. MELTON: That's what we suggested. I
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:50
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 17 of 21
`
`17
`
`THE COURT: Ten pages --
`MR. MELTON: -- so I don't want to cut
`
`THE COURT: Ten pages is fine. Ten pages
`
`them off.
`
`is fine.
`
`MR. MAIER: And then the only other
`clarification.
`THE COURT: Yeah. Please.
`MR. MAIER: Would Your Honor entertain a
`deadline for narrowing the number of asserted claims in
`prior art? Because what we have now is --
`THE COURT: Yes.
`MR. MAIER: -- plaintiff expanded the
`claims and compressed the schedule, so that deadline
`would seem fair.
`THE COURT: Yeah. I definitely do that.
`You all take the first stab at it, and then if you
`can't do it, usually -- the hard deadline for that
`usually is about when you all need to get -- well, for
`sure by the time you need to get me your motions for
`summary judgment, you know, by then.
`And the way -- what I usually -- the
`threat I usually try to use -- I'm going to --
`Mr. Melton, how many total claims do you have right
`now?
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:51
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 18 of 21
`
`18
`
`MR. MELTON: I believe it's 12 in the
`
`case.
`
`claims.
`
`THE COURT: How many patents?
`MR. MELTON: Three or four.
`Taylor?
`MR. HOOGENDOORN: Four patents, 12
`
`THE COURT: Well, let me just say this.
`That would be -- that's perfectly fine with me. I
`mean, three patents -- three patents per -- three
`claims per patent for four, that is -- I would not make
`the plaintiff have any less than that, if that helps.
`MR. MELTON: The deadline -- the
`deadline, you said, for narrowing claims --
`THE COURT: No. I'm saying you would not
`have to narrow if you --
`MR. MELTON: Now, this also goes to prior
`art references.
`THE COURT: No -- yes. It would. And
`let me say, for those, y'all need to come up with a
`date. And the way I do the date -- I was going to say
`for both sides, but I think your number's reasonable
`and I don't know that defendant's isn't.
`But if there are problems with the number
`of references, then I usually have a deadline by which
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:52
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 19 of 21
`
`19
`
`I tell the defendant if they don't -- if they don't
`reduce it by a certain deadline, they have to use all
`those references at trial.
`MR. MELTON: That's generally when we
`file the motions, in the first week --
`THE COURT: Correct. Yes.
`MR. MAIER: And, Your Honor, it doesn't
`change that the four patents are all related. They're
`all the same spec, so it's really like 12 claims?
`THE COURT: No. I mean, it's four
`
`patents.
`
`Tell me this: Do you think 12 claims for
`four patents is unreasonable?
`MR. MAIER: A lot of them are
`duplicative. So are we really going to try to do the
`same claim over and over?
`THE COURT: Isn't that really up to --
`the plaintiff will have the amount of time they have at
`trial. If they want to take their time on 12 claims,
`that's up to them.
`MR. MAIER: And the last point, Your
`Honor, if your Markman order changes things, will we
`have an opportunity to amend invalidity contentions?
`THE COURT: I don't understand your
`
`question.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:53
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 20 of 21
`
`20
`
`MR. MAIER: So if -- right now we don't
`have constructions for these terms and our invalidity
`contentions are due July 17th. If there's something
`that comes out of that order that --
`THE COURT: Oh, oh, oh, oh, yeah. Now I
`get it. I'm sorry.
`So let's do this. I'm going to maintain
`that deadline. But if the Court does -- if you'll
`remind me of this at the Markman because I won't
`remember it if you don't.
`But if at the -- if at the hearing I do
`anything other than plain and ordinary meaning and you
`think, because of that, you need additional time with
`respect to whichever claims are affected by that
`Markman ruling, if you'll remind me, I'll certainly
`take it up at that time.
`MR. MAIER: Thank you.
`THE COURT: Anything else?
`MR. MELTON: No, Your Honor.
`THE COURT: Okay. Have a great weekend.
`
`Take care.
`
`(Hearing adjourned.)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:54
`
`09:55
`
`09:55
`
`09:55
`
`09:55
`
`09:55
`
`09:55
`
`09:55
`
`09:55
`
`09:55
`
`09:55
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
`
`Case 1:22-cv-00058-ADA Document 125 Filed 06/16/23 Page 21 of 21
`
`21
`
`UNITED STATES DISTRICT COURT )
`WESTERN DISTRICT OF TEXAS
`)
`
`I, Kristie M. Davis, Official Court
`Reporter for the United States District Court, Western
`District of Texas, do certify that the foregoing is a
`correct transcript from the record of proceedings in
`the above-entitled matter.
`I certify that the transcript fees and
`format comply with those prescribed by the Court and
`Judicial Conference of the United States.
`Certified to by me this 16th day of June
`
`2023.
`
`
`
`
`
`
`/s/ Kristie M. Davis
`KRISTIE M. DAVIS
`Official Court Reporter
`800 Franklin Avenue
`Waco, Texas 76701
`(254) 340-6114
`kmdaviscsr@yahoo.com
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:55
`
`KRISTIE M. DAVIS, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
