Ixi Mobile (R&D) Ltd. et al v. Apple, Inc.

Northern District of California, cand-4:2015-cv-03755

JOINT CASE MANAGEMENT STATEMENT filed by IXI IP,LLC, IXI Mobile (R&D) Ltd. and Apple, Inc. Modified on 10/16/2019

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1 1 John V. Picone III, Bar No. 187226 jpicone@hopkinscarley.com 2 Jennifer S. Coleman, Bar No. 213210 3 jcoleman@hopkinscarley.com HOPKINS & CARLEY 4 A Law Corporation The Letitia Building 5 70 South First Street San Jose, CA 95113-2406 6 7 mailing address: P.O. Box 1469 8 San Jose, CA 95109-1469 Telephone: (408) 286-9800 9 Facsimile: (408) 998-4790 10 Attorneys for Plaintiffs 11 IXI MOBILE (R&D) LTD. and IXI IP, LLC 12 Additional counsel in signature block 13 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA 14 15 IXI MOBILE (R&D) LTD. et al., CASE NO. 4:15-CV-03752-HSG 16 Plaintiffs, JOINT CASE MANAGEMENT STATEMENT 17 v. Date: October 22, 2019 18 Time: 2:00 p.m. 19 SAMSUNG ELECTRONICS CO., LTD., ET AL., Ctrm: Courtroom 2, 4th Floor 1301 Clay Street 20 Defendants. Oakland, CA 94612 Judge: Hon. Haywood S. Gilliam, Jr. 21 22 IXI MOBILE (R&D) LTD. et al., CASE NO. 4:15-CV-03755-HSG 23 Plaintiffs, 24 v. 25 APPLE INC., 26 Defendant. 27 28 30 Case No. 4:15-CV-03755-HSG 31 JOINT CASE MANAGEMENT STATEMENT 1 1 Pursuant to this Court's October 11, 2019 Order, Plaintiffs IXI Mobile (R&D) Ltd. and IXI IP, 2 LLC (collectively "IXI" or "Plaintiffs"), Defendants Samsung Electronics Co., Ltd. and Samsung 3 Electronics America, Inc. (hereinafter "Samsung"), and Defendant Apple Inc. (hereinafter "Apple") 4 (collectively "Defendants") submit this Joint Case Management Statement. 5 1. Jurisdiction and Service: 6 This is an action for patent infringement arising under the patent laws of the United States, 35 7 U.S.C. § 101 et seq., and the Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. 8 §§ 1331 and 1338(a) and the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq. Venue is proper in 9 this judicial district pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b). This matter was transferred to 10 the above-captioned Court pursuant to the Order dated August 6, 2015, granting Defendants' Motion to 11 Transfer Venue to Northern District of California (Dkt. No. 79).1 All parties have appeared. 12 2. Facts 13 This is a patent case, originally involving infringement assertions by IXI under U.S. Patent Nos. 14 7,016,648 (the "'648 Patent"); 7,039,033 (the "'033 Patent"); and 7,295,532 (the "'532 Patent"), and 15 7,426,398 (the "'398 Patent") (collectively the "Patents-in-Suit") against products made by Samsung and 16 Apple. Currently, all originally asserted claims, except Claim 10 of the '532 Patent, have been 17 invalidated and/or dismissed from the case (and Claim 10 currently stands rejected in an ex parte 18 reexamination). As a result, only Claim 10 of the '532 Patent remains in this case. The following is a 19 brief background on how this became a one-claim case. 20 In 2014, IXI commenced these patent infringement actions in the Southern District of New York 21 ("SDNY"). While the case progressed in SDNY, the parties engaged in discovery, including the taking 22 of two depositions related to claim construction (one fact witness and one expert witness), exchanging 23 written discovery, and making several productions of documents. The parties submitted several claim 24 construction disclosures, and IXI filed an opening claim construction brief. Thereafter, the case was 25 transferred from SDNY to this Court. 26 27 1 For simplicity, all referenced docket numbers are to the docket in the lead case IXI v. Samsung, Case 28 No. 4:15-CV-03752-HSG. Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 1 1 1 On June 18 and 19, 2015, Samsung and Apple filed Inter Partes Review ("IPR") petitions 2 challenging the validity of all asserted claims of the three Patents-in-Suit. IXI filed its responses to those 3 petitions on October 2, 2015. Defendants moved to stay this litigation pending resolution of the IPR 4 petitions. This Court granted the stay on November 12, 2015. Dkt. Nos. 119, 133. 5 On December 30, 2015, the PTAB instituted IPR proceedings for all of the challenged claims, 6 except Claim 10 of the '532 Patent. On December 21, 2016, the PTAB issued its Final Written Decisions 7 in favor of Apple and Samsung invalidating all of the instituted claims, including claim 1 of the '532 8 Patent, upon which Claim 10 depends. Dkt. No. 138. IXI appealed only with respect to the '033 Patent, 9 and the Federal Circuit affirmed the PTAB's decision on September 10, 2018. 10 In March 2017, while IXI's appeal of the '033 Final Written Decision was pending, IXI requested 11 an ex parte reexamination of the '033 Patent. During the ex parte reexamination, IXI amended claim 56 12 and added claims 57 through 124 to the '033 Patent. On February 1, 2018, the USPTO issued a 13 reexamination certificate that granted IXI these additional claims. 14 On April 3, 2018, Apple requested an ex parte reexamination of several claims of the '532 Patent, 15 including asserted Claim 10. The USPTO granted Apple's request on May 23, 2018 (the "'532 16 Reexam"). All of the challenged claims, including Claim 10 of the '532 Patent, currently stand rejected 17 on each of the four separate grounds proposed by Apple. In that proceeding, IXI has sought to overcome 18 the rejections to Claim 10 and to add new claims to the '532 Patent. That reexamination is ongoing. 19 On November 8, 2018, Apple filed six additional IPR petitions challenging the validity of the new 20 claims added to the '033 Patent during reexamination. The PTAB found that the IPRs were time-barred 21 and denied institution on June 3, 2019. On August 5, 2019 Apple noticed appeal of the PTAB's decision 22 to the Federal Circuit. That appeal is ongoing. 23 On June 28, 2019, Samsung requested an ex parte reexamination of the new claims of the '033 24 Patent. That reexamination request was granted, and the reexamination is currently in progress. 25 IXI moved to amend its infringement contentions in order to add claims of the '033 patent issued 26 through reexamination, claims of the '532 pending in reexamination, and new products with respect to 27 Claim 10 of the '532 Patent. Dkt. 166. The Court denied that motion. Dkt. 183. As a result, only Claim 28 Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 2 1 1 10 of the '532 Patent remains in this case with respect to, IXI contends, the products identified as 2 infringing in IXI's operative infringement contentions. 3 3. Legal Issues: 4 The parties have identified the following principal remaining disputed issues: 5 ▪ the proper construction of disputed terms in Claim 10 of the '532 Patent (including terms 6 in Claim 1, from which Claim 10 depends); 7 ▪ whether Defendants have infringed and continue to infringe Claim 10 of the '532 Patent; 8 ▪ whether the Claim 10 of the '532 Patent is valid and enforceable; 9 ▪ whether Defendants should be restrained and enjoined from infringing Claim 10 of the 10 '532 Patent; 11 ▪ whether IXI is entitled to any damages; and 12 ▪ whether this action is an exceptional case for awarding attorneys' fees under 35 U.S.C. 13 §285. 14 4. Motions: 15 There are no motions currently pending before the Court. 16 5. Amendment of Pleadings: 17 The parties previously agreed "that amended pleadings may not be filed except with leave of the 18 Court." Dkt. 129 at 4. 19 6. Evidence Preservation: 20 Each of the parties have reviewed the ESI Guidelines and each of the parties believes that it has 21 taken appropriate and reasonable measures to preserve evidence relevant to a party's claims and defenses 22 in this matter. 23 7. Disclosures: 24 Each party served initial disclosures pursuant to Fed. R. Civ. P. 26(a)(1)(A) in January 2015. 25 8. Discovery: 26 The parties began the exchange of written discovery in October 2014 and have propounded and 27 responded to document discovery, including various document and source code productions, and to 28 Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 3 1 1 multiple sets of written discovery. The parties have also held various meet and confers regarding alleged 2 deficiencies in document productions and written discovery. IXI and Apple have served several third- 3 party subpoenas requesting documents and depositions, and various third-party productions have been 4 made. Beginning in May 2015, IXI spent multiple days reviewing source code for each of the 5 Defendants. IXI contends that process is not complete. In July 2015, Defendants deposed one of the 6 inventors of the Patents-in-Suit and IXI's expert for claim construction purposes. IXI has served each 7 Defendant with a Notice of Deposition pursuant to Federal Rule 30(b)(6), each of which awaits final 8 scheduling. The parties continued to meet and confer on open discovery issues until the case was stayed. 9 The parties negotiated a Protective Order that was entered by the SDNY Court (Dkt. Nos. 60, 61) 10 and is still in effect in this case. That Protective Order contains certain limitations regarding the number 11 of pages of source code IXI is permitted to print from its review and total number of individuals 12 permitted to review source code. IXI contends the Protective Order will need to be modified in order to 13 inter alia allow IXI's new counsel sufficient access to the source code in order to complete its review. 14 A. Limits on Discovery: 15 The parties previously agreed that IXI is limited to seventy (70) hours of deposition of fact 16 witnesses of Samsung and (70) hours of deposition of fact witnesses of Apple. Samsung and Apple are 17 limited to seventy (70) hours each of deposition of fact witnesses of IXI. Samsung and Apple shall make 18 reasonable efforts to conduct their depositions of IXI witnesses jointly to the extent practical. In no event 19 shall any deposition count as less than three (3) hours toward a party's total deposition hours. The parties 20 intend to take depositions of expert witnesses and third-party witnesses, which shall not be included in 21 the 70-hour limits. 22 B. Production of ESI: 23 Before the case was stayed, the parties met and conferred and began negotiating a protocol for 24 ESI production prior to the stay of the case. Now that the stay has been lifted, the parties will complete 25 the negotiation and submit the proposed protocol to the Court for review and approval. 26 9. Class Actions: 27 These matters are not class actions. 28 Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 4 1 1 10. Related Cases: 2 The two above-captioned cases have been accepted as related. 3 11. Relief: 4 IXI's Statement: 5 IXI seeks judgment that Defendants have directly and indirectly infringed and continue to 6 infringe Claim 10 of the '532 Patent. IXI seeks damages under 35 USC § 284 in amount no less than a 7 reasonable royalty, attorney fees under 35 U.S.C. § 285, and such relief at law and in equity as the Court 8 9 may deem just and proper. 10 Defendants' Statement: 11 Defendants deny that any of their products infringe the '532 Patent and, even if a jury disagrees, 12 further deny that IXI is owed the damages it seeks. Defendants assert that Claim 10 of the '532 Patent is 13 invalid and unenforcable. Claim 10 of the '532 Patent depends from Claim 1, which was found 14 unpatentable in IPR. Defendants intend to rely on this fact to demonstrate that Claim 10 of the '532 15 Patent is invalid. Defendants also believe that this is an exceptional case and seek their attorneys' fees, 16 17 costs, and expenses incurred in these actions. 18 12. Settlement and ADR: 19 The Court held settlement conferences between IXI and Samsung on July 10, 2019 and August 20 28, 2019. IXI and Samsung did not reach settlement. 21 The Court held a settlement conference between IXI and Apple on July 11, 2019. IXI and Apple 22 did not reach settlement. Judge Kim, IXI, and Apple are currently working to schedule a follow-up 23 conference in January or February 2020. 24 13. Consent to Magistrate: 25 All parties do not consent to disposition of this case by a Magistrate Judge. 26 27 28 Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 5 1 1 14. Other References: 2 The parties do not believe that this case is suitable for reference to binding arbitration, a special 3 master, or the Judicial Panel on Multidistrict Litigation. 4 15. Narrowing of Issues: 5 These matters originally involved four patents: the '648 Patent, the '033 Patent, the '532 Patent, 6 and the '398 Patent. Plaintiffs stipulated to the dismissal of all claims of the '398 Patent. In addition, all 7 but one of the claims asserted in IXI's existing infringement contentions for the '033, '532, and '648 8 Patents have been found invalid by the PTAB, and the USPTO has formally cancelled those claims. 9 Plaintiffs moved to amend their infringement contentions to add claims of the '033 issued through ex 10 parte reexamination, claims of the '532 pending in reexamination, and new products with respect to 11 Claim 10 of the '532 Patent. Dkt. 166. The Court denied Plaintiffs' motion in its October 11, 2019 Order. 12 Dkt. 183. As a result, the only claim remaining at issue in this case is Claim 10 of the '532 Patent with 13 respect to, IXI contends, the products identified as infringing in IXI's operative infringement contentions. 14 16. Expedited Trial Procedures: 15 This matter is not the type of case that that can be handled under the Expedited Trial Procedure of 16 General Order No. 64 Attachment A. 17 17. Scheduling: 18 Prior to this case being stayed, fact discovery was underway and IXI filed its opening claim 19 construction brief. Because the scope of this case has changed dramatically since it was stayed several 20 years ago, the parties suggest starting at the beginning of claim construction with the following schedule: 21 Event Defendants' Proposed Deadline 22 Pat. L.R. 4-1. Exchange of Proposed Terms December 5, 2019 23 Pat. L.R. 4-2. Exchange of Preliminary December 19, 2019 Constructions and Extrinsic Evidence 24 Plaintiff to Supplement Damages Productions January 7, 2020 25 Under Pat. L.R. 3-2(e-j) 26 Pat. L.R. 4-3. Joint Claim Construction and Pre- January 13, 2020 Hearing Statement 27 Defendants to Supplement Damages Productions January 28, 2020 28 Under Pat. L.R. 3-4(c-e) Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 6 1 1 Event Defendants' Proposed Deadline Pat. L.R. 4-4. Completion of Claim Construction February 12, 2020 2 Discovery 3 Pat. L.R. 3-8 Damages Contentions February 18, 2020 4 Pat. L.R. 4-5(a) Opening Claim Construction Brief February 27, 2020 5 Pat. L.R. 4-5(b). Defendants File Responsive Claim March 12, 2020 Construction brief 6 Pat. L.R. 3-9 Responsive Damages Contentions March 19, 2020 7 Pat. L.R. 4-5(c). IXI Files Reply Claim March 19, 2020 Construction brief 8 Technology Tutorial / Pat. L.R. 4-6. Claim Subject to the convenience of the Court's 9 Construction Hearing (Markman) calendar 10 Close of fact discovery 11 90 days after the Court's claim construction ruling 12 Deadline to file discovery motions relating to fact 7 days after the close of fact discovery 13 discovery Opening expert reports 14 days after the close of fact discovery 14 Rebuttal expert reports 28 days after opening expert reports 15 Close of expert discovery 21 days after rebuttal expert reports 16 Opening summary judgment/Daubert briefs 21 days after close of expert discovery 17 Responsive summary judgment/Daubert briefs 14 days after Opening summary judgment/Daubert briefs 18 Reply summary judgment/Daubert briefs 7 days after Answering summary 19 judgment/Daubert briefs 20 Summary judgment hearings To be set by Court Pretrial Conference To be set by Court 21 Trial To be set by Court 22 18. Trial: 23 These cases, even though they are consolidated for pre-trial proceedings, will each be tried to 24 separate juries. The parties have conferred and their present best estimate of the length of trial is 25 approximately five-to-seven Court days for each trial, assuming each trial day starts at 8:30 a.m. and ends 26 at 1:30 p.m. as noted in the Court's Standing Order for Civil Cases, paragraph 8. 27 28 Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 7 1 1 19. Disclosure of Non-Party Interested Entities or Persons: 2 The parties have filed their respective Corporate Disclosure Statements pursuant to Federal Rule 3 of Civil Procedure 7.1(a) and their Certificates of Interested Parties and Entities pursuant to Civil Local 4 Rule 3-15. 5 20. Other Issues 6 The parties do not believe that any other issues are appropriate for inclusion in this Joint Case 7 Management Statement. 8 21. Additional Information Pursuant to Patent Local Rule 2-1 9 A. Proposed Modifications to the Obligations or Deadlines Set Forth in the Patent Local 10 Rules. 11 The parties' proposed schedule is set forth in Section 17 above. 12 B. How the Parties Intend to Educate the Court on the Technology at Issue. 13 The parties propose educating the Court on the technology at issue through a tutorial as set forth 14 in the above proposed schedule. The parties propose that, per this Court's Standing Orders, the Plaintiffs 15 be allowed to make no longer than a 45-minute presentation, followed by no longer than a 45-minute 16 presentation by the Defendants. The parties propose that a Claim Construction Hearing follow the 17 technology tutorial with 60 minutes allotted to the Plaintiffs and 60 minutes allotted to the Defendants. 18 19 Dated: October 15, 2019 HOPKINS & CARLEY A Law Corporation 20 By: /s/ Jason D. Cassady 21 John V. Picone III Jennifer S. Coleman 22 HOPLKINS & CARLEY 70 South First St. 23 San Jose, CA 95113 Telephone: (408) 286-9800 24 25 26 27 28 Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 8 1 1 Jason D. Cassady (admitted pro hac vice) jcassady@caldwellcc.com 2 Hamad M. Hamad (admitted pro hac vice) hhamad@caldwellcc.com 3 Robert Seth Reich, Jr. (admitted pro hac vice) CALDWELL CASSADY & CURRY P.C. 4 2101 Cedar Springs Rd. Ste. 1000 5 Dallas, TX 75201 Telephone: (214) 888-4848 6 Thomas Biemer (admitted pro hac vice) 7 tbiemer@dilworthlaw.com John J. Higson (admitted pro hac vice) 8 jhigson@dilworthlaw.com 9 Joshua Wolson (admitted pro hac vice) jwolson@dilworthlaw.com 10 DILWORTH PAXSON LLP 1500 Market Street, Ste. 3500(E) 11 Philadelphia, PA 19106 12 Attorneys for Plaintiffs 13 IXI MOBILE (R&D) LTD. and IXI IP, LLC 14 Dated: October 15, 2019 KIRKLAND & ELLIS LLP 15 16 By: Todd M. Friedman Gregory S. Arovas, P.C. (admitted pro hac vice) 17 Todd M. Friedman, P.C. (admitted pro hac vice) KIRKLAND & ELLIS LLP 18 601 Lexington Avenue New York, New York 10022 19 Telephone: (212) 446-4800 Facsimile: (212) 446-4900 20 greg.arovas@kirkland.com todd.friedman@kirkland.com 21 David Rokach (admitted pro hac vice) 22 KIRKLAND & ELLIS LLP 300 N. LaSalle 23 Chicago, Illinois 60654 Telephone: (312) 862-2000 24 Facsimile: (212) 862-2200 david.rokach@kirkland.com 25 Brandon Brown 26 KIRKLAND & ELLIS LLP 555 California Street 27 San Francisco, California 94104 Telephone: (415) 439-1400 28 Facsimile: (415) 439-1500 Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 9 1 1 brandon.brown@kirkland.com 2 Attorneys for Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. 3 Dated: October 15, 2019 DESMARAIS LLP 4 By: Cosmin Maier 5 John M. Desmarais (SBN 320875) 6 Emily Chen (SBN 302966) DESMARAIS LLP 7 101 California Street, Suite 3070 San Francisco, CA 94111 8 Telephone: (415) 573-1900 Facsimile: (415) 573-1901 9 jdesmarais@desmaraisllp.com 10 echen@desmaraisllp.com 11 Ameet A. Modi (admitted pro hac vice) Cosmin Maier (admitted pro hac vice) 12 Brian Matty (admitted pro hac vice) Franco Silletta (admitted pro hac vice) 13 Joze Welsh (admitted pro hac vice) 14 DESMARAIS LLP 230 Park Avenue, Suite 2600 15 New York, NY 10169 Telephone: (212)351-3400 16 Facsimile: (212) 351-3401 amodi@desmaraisllp.com 17 cmaier@desmaraisllp.com bmatty@desmaraisllp.com 18 fsilletta@desmaraisllp.com jwelsh@desmaraisllp.com 19 Attorneys for Apple Inc. 20 21 22 23 24 25 26 27 28 Case No. 4:15-CV-03755-HSG 30 JOINT CASE MANAGEMENT STATEMENT 31 10