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Case 2:14-cv-02962-JAK-JEM Document 43 Filed 09/05/14 Page 1 of 36 Page ID #:408

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Randall J. Sunshine (SBN 137363)
rsunshine@linerlaw.com
Ryan E. Hatch (SBN 235577)
rhatch@linerlaw.com
Jason L. Haas (SBN 217290)
jhaas@linerlaw.com
LINER LLP
1100 Glendon Avenue, 14th Floor
Los Angeles, California 90024.3503
Telephone: (310) 500-3500
Facsimile: (310) 500-3501

Attorneys for Plaintiff
7 SIGNAL IP, INC.
8

UNITED STATES DISTRICT COURT

9

CENTRAL DISTRICT OF CALIFORNIA

10
11 SIGNAL IP, INC., a California
corporation,
12
Plaintiff,
13
vs.
14
NISSAN NORTH AMERICA, INC., a
15 California corporation,
16
17

Defendant.

Case No. 2:14-cv-02962-JAK (JEMx)
JOINT RULE 16(b) REPORT
Date: September 15, 2014
Time: 8:30 a.m.

Hon. John A. Kronstadt
Trial Date: TBD

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19

Plaintiff Signal IP, Inc., (“Plaintiff” or “Signal”) and defendants American

20 Honda Motor Co., Inc. and Honda of America Mfg., Inc. (collectively “Honda”),
21 Nissan North America, Inc. (“Nissan”), Mitsubishi Motors North America, Inc.
22 (“Mitsubishi”), Mazda Motor of America, Inc. (“Mazda”), Subaru of America, Inc.
23 (“Subaru”), Kia Motors America, Inc. (“Kia”), Ford Motor Company (“Ford”),
24 BMW of North America, LLC (“BMW”), Chrysler Group LLC (“Chrysler”), Volvo
25 Cars of North America, LLC (“Volvo”), Jaguar Land Rover North America, LLC
26 (“Jaguar”), and Mercedes-Benz USA LLC (“MBUSA”) (collectively, “Defendants”)
27 submit their Joint Rule 16(b) Report pursuant to this Court’s June 23, 2014 Order
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Case No. 2:14-cv-02962-JAK (JEMx)
JOINT RULE 16(b) REPORT

Case 2:14-cv-02962-JAK-JEM Document 43 Filed 09/05/14 Page 2 of 36 Page ID #:409

1 Setting Rule 16(b) Scheduling Conference, Federal Rules of Civil Procedure 16 and
2 26, and the Court’s Initial Standing Patent Order.
3

On August 25, 2014, the parties held a joint conference to address the matters

4 contained in the aforementioned rules and orders.
5
6
7

a.

Statement of the Case
i.

Plaintiff’s Statement

As a preliminary matter, Plaintiff notes for the convenience of the Court that

8 its portion of the Joint Rule 16(b) Report is the same for actions it has filed.
9

Plaintiff has filed fourteen actions for patent infringement against Defendants

10 American Honda Motor Co., Inc. and Honda of America Mfg., Inc. (collectively
11 “Honda”), Nissan North America, Inc. (“Nissan”), Mitsubishi Motors North
12 America, Inc. (“Mitsubishi”), Mazda Motor of America, Inc. (“Mazda”), Subaru of
13 America, Inc. (“Subaru”), Kia Motors America, Inc. (“KMA”), Ford Motor
14 Company (“Ford”), BMW of North America, LLC (“BMWNA”), Mercedes-Benz
15 USA, LLC (“Mercedes”), Chrysler Group LLC (“Chrysler”), Volvo Cars of North
16 America, LLC (“Volvo”), Volkswagen Group of America (“VW”) and Bentley
17 Motors, Inc. (“Bentley”), Jaguar Land Rover North America, LLC (“Jaguar”), and
18 Porsche Cars North America, Inc. (“Porsche”) (individually “Defendant,” and
19 collectively “Defendants”).
20

These actions have not yet been consolidated, and are pending as the

21 following related cases: Signal IP, Inc. v. American Honda Motor Co., Inc. (14-cv22 02454), Signal IP, Inc. v. Kia Motors America, Inc. (14-cv-02457); Signal IP, Inc. v.
23 Mazda Motor of America, Inc. (14-cv-00491); Signal IP, Inc. v. Mazda Motor of
24 America, Inc. (14-cv-02459); Signal IP, Inc. v. Mitsubishi Motors North America,
25 Inc. (14-cv-00497); Signal IP, Inc. v. Mitsubishi Motors North America, Inc. (14-cv26 02462); Signal IP, Inc. v. Nissan North America, Inc. (14-cv-02962); Signal IP, Inc.
27 v. Subaru of America, Inc. (14-cv-02963); Signal IP, Inc. v. BMW of North America,
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JOINT RULE 16(b) REPORT

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Case 2:14-cv-02962-JAK-JEM Document 43 Filed 09/05/14 Page 3 of 36 Page ID #:410

1 LLC (14-cv-03111); Signal IP, Inc. v. Fiat USA, Inc. (14-cv-03105); Signal IP, Inc.
2 v. Ford Motor Company (14-cv-03106); Signal IP, Inc. v. Jaguar Land Rover North
3 America, LLC (14-cv-03108); Signal IP, Inc. v. Mercedes-Benz USA, LLC (2-14-cv4 03109); Signal IP, Inc. v. Porsche Cars North America, Inc. (2-14-cv-03114);
5 Signal IP, Inc. v. Volkswagen Group of America, Inc. (2-14-cv-03113); Signal IP,
6 Inc. v. Volvo Cars of North America, LLC (14-cv-03107) (collectively the “Signal
7 Actions”).
8

To streamline the Signal Actions, and to avoid duplication by the parties and

9 the Court, Plaintiff believes it is appropriate to consolidate the Signal Actions for
10 claim construction and other pre-trial matters. A later determination can be made
11 whether one of more of the Signal Actions, or common issues therein, should be
12 tried together.
13

Plaintiff asserts claims for infringement of seven patents generally directed to

14 automotive technologies (collectively, the “Signal Patents”):
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21
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23
24
25

 U.S. Pat No. 5,714,927 (“the ‘927 Patent”), entitled “Method of improving
zone of coverage response of automotive radar”;
 U.S. Pat No. 5,732,375 (“the ‘375 Patent”), entitled “Method of inhibiting
or allowing airbag deployment”;
 U.S. Pat No. 6,434,486 (“the ‘486 Patent”), entitled “Technique for
limiting the range of an object sensing system in a vehicle”;
 U.S. Pat No. 6,775,601 (“the ‘601 Patent”), entitled “Method and control
system for controlling propulsion in a hybrid vehicle”;
 U.S. Pat No. 6,012,007 (“the ‘007 Patent”), entitled “Occupant detection
method and system for air bag system”;
 U.S. Pat No. 5,463,374 (“the ‘374 Patent”), entitled “Method and

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apparatus for tire pressure monitoring and for shared keyless entry

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control”; and

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 U.S. Pat No. 5,954,775 (“the ‘775 Patent”), entitled “Dual-rate

1

communication protocol.”

2

For ease of reference, the following table shows the patents asserted against

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4 each Defendant in the Signal Actions:

X

10

‘775 Patent

11

‘375 Patent

X

X

X

X

X

12

‘007 Patent

X

X

X

X

X

13

‘927 Patent

X

X

X

14

‘374 Patent

X

X

X

X

X
X

X

X

X

X

X

X

Porsche

X

VW

‘486 Patent

X

BMW

9

X

Mercedes

X

Jaguar

X

Volvo

X

‘601 Patent

Ford

Subaru

X

8

7

Chrysler

Nissan

X

Kia

X

Honda

Patent

Mitsubishi

6

Mazda

5

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

X

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Plaintiff presently asserts a total of 33 claims of the Signal Patents against

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19
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Defendants collectively, with a maximum of only eight claims from any single
patent. With only a few exceptions, the asserted claims are the same in each patent
for each accused Defendant.1
ii.

21

Defendants’ Statement

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23
24
25
26
27
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1

The asserted claims are: ‘601 Patent, claims 8, 9, 10, 11, 13, 15, and 17; ‘486
Patent, claims 21, 23, 26, 27, 28, 30, 34, and 35; ‘775 Patent, claim 6; ‘375 Patent,
claims 1 and 7; ‘007 Patent, claims 1, 8, 17, 18, 19, 20, 21, and 22; ‘927 Patent,
claims 1, 2, and 6; and ‘374 Patent, claims 1, 2, and 3. The asserted claims are the
same for all Defendants except: in the ‘486 Patent, claims 23, 30, and 35 are
asserted against Mercedes only, claim 27 is not asserted against Mercedes and
VWGoA, and claim 34 is not asserted against VWGoA; and in the ‘007 Patent,
claims 9, 18, and 22 are asserted against Mazda only.
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JOINT RULE 16(b) REPORT

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1

Identical copies of this Joint Report have been filed in each of the Honda,

2 Kia, Mazda, Mitsubishi, Nissan, Subaru, Chrysler, Ford, Volvo, Jaguar, BMW and
3 Mercedes actions. 2
Plaintiff is a non-practicing entity (NPE) that acquired the asserted patents (or

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5 Signal Patents) from Delphi Automotive PLC, which in turn had acquired at least
6 some of the patents from its predecessor Delco Electronics. As stated above, the
7 Plaintiff in these cases has filed fourteen separate lawsuits alleging various
8 combinations of claims from seven largely unrelated patents against a large swath of
9 the automobile industry.
The technologies in these cases include seat occupant sensing and airbag

10

11 deployment, tire pressure monitoring systems and keyless entry systems, vehicle
12 control systems in the nature of adaptive cruise control, techniques for controlling
13 blind spot detection, and data bus protocols systems for controlling propulsion in
14 hybrid vehicles. Aside from the airbag patents, the patents are essentially unrelated.
15 They have different inventors, different filing dates, and a broad range of issuance
16 dates ranging from 1995 (19 years ago) to 2004 (10 years ago). If tried together,
17 they will present a considerable challenge for the jury.
While the Plaintiff in these cases is a NPE, Defendants, in contrast, are direct

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19 competitors to each other, and constitute the United States operations of each
20 respective automobile manufacturer. Most Defendants – if not all – have foreign
21 sister, parent, and subsidiary companies that the Plaintiff has intentionally not
22 named in its Complaints.
All Defendants assert that they do not infringe any valid claim of the asserted

23

24 patents. This is not surprising. Presumably, if the patents had value in the industry,
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2

Case Numbers 14-cv-02454; 14-cv-02457; 14-cv-00491; 14-cv-02459; 14-cv27 00497; 14-cv-02462; 14-cv-02962; 14-cv-02963; 14-cv-03111; 14-cv-03106; 14-cv03108; 2-14-cv-03109; 14-cv-03107.
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1 Delphi would not have let the patents lie dormant for ten to twenty years and then
2 sold them to the Plaintiff.
3

Because the asserted patents issued anywhere from 1995 to 2004, there are

4 significant issues of laches and estoppel in this case whose particular facts will vary
5 from vehicle to vehicle and accused system to accused system, and thus Defendant
6 to Defendant.
7

The Defendants assert that damages must be limited in accordance with the

8 provisions of 35 U.S.C. Sec. 286 and Sec. 287.
9

Delphi, the original assignee on some of the asserted patents, is the supplier of

10 the accused technology to some of the defendants in these cases. As such, at least
11 some of the defendants are licensed, and the relevant allegations need to be dropped
12 from the case. Other licensing defenses are known to exist for at least some of the
13 defendants, and Defendants expect that others may become known via discovery.
14

Similarly, some Defendants have also counter-claimed for declarations of

15 non-infringement and invalidity, including: Mitsubishi, BMW of North America,
16 LLC, Volvo.
17

Additionally, some Defendants are also pursuing claims of unenforceability

18 of the asserted patents, including unenforceability by way of inequitable conduct.
19

Various parties may file for Inter Partes Review and/or Reexamination of at

20 least some claims of the asserted patents before the United States Patent Office. As
21 such, the number of proceedings related to these cases may multiply in coming
22 months.
23

The Defendants in the related cases will attempt to work together where

24 possible to facilitate the management of all cases by the Court. However, the
25 Defendants in the various related cases are all direct competitors, and have
26 significant concerns about confidentiality and potential conflicts of interest.
27

The Defendants have various foreign and domestic suppliers for the

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1 automotive components associated with Plaintiff's allegations of infringement. It is
2 possible that some suppliers of accused components or systems may seek to join in
3 one or more of the fourteen actions filed by plaintiff, or that one or more defendants
4 could seek to have suppliers appear and defend their accused products.
5

There may be overlap in the Defendants' suppliers of various components, but

6 it is too early in the case to determine if that overlap is significant or material in
7 light of Plaintiff’s vague infringement allegations.
8

Moreover, because the Defendants' operations are located in a variety of

9 jurisdictions, some Defendants may seek transfer of part or all of their respective
10 case to different jurisdictions. Indeed, Ford has already filed such a motion.
11

Depending on the status of review proceedings before the Patent Office, some

12 Defendants may also seek a stay of proceedings.
13

b.

i.

14
15

Subject Matter Jurisdiction
Plaintiff’s Statement

These Actions arises under the patent laws of the United States, Title 35 of

16 the United States Code. This Court has subject matter jurisdiction pursuant to 28
17 U.S.C. §§ 1331 and 1338(a).
ii.

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19

Defendants’ Statement

Defendants do not contest that this Court has subject matter jurisdiction over

20 all patent-related claims in these cases.
21
22
23

c.

Legal Issues
i.

Plaintiff’s Statement

Principal substantive issues. The principal substantive legal issues in the

24 Signal Actions are the alleged infringement of the Signal Patents, the alleged
25 invalidity of the Signal Patents in view of the relevant prior art, and the monetary or
26 other relief to which Plaintiff is entitled. The meaning and scope of the terms used
27 in the asserted patent claims are germane to these legal issues.
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1

All but three defendants (Nissan, Mercedes and Audi) have filed answers. All

2 defendants who have answered assert defenses of failure to state a claim, non3 infringement, and invalidity. The three defendants who have asserted counterclaims
4 (Mitsubishi, BMW, and Volvo) assert counterclaims for invalidity and non5 infringement.
Other affirmative defenses include failure to state a claim, prosecution history

6

7 / argument estoppel / prosecution disclaimer, equitable defenses (waiver, implied
8 waiver, estoppel, laches, acquiescence, implied license, unclean hands), limitation
9 on damages, no injunctive relief / adequate remedy at law, first sale / patent
10 exhaustion, express license, license, release, non-assertion agreement, outside
11 territorial reach of patent laws, patent misuse, costs barred under § 288, and no
12 attorneys’ fees under § 285.
Principal substantive procedural issues. The principal procedural issues for

13

14 the Court to consider at this stage are whether the Signal Actions should be
15 consolidated for claim construction and other pre-trial matters, and whether the
16 action against Ford should be transferred to the Eastern District of Michigan.
ii.

17

Defendants’ Statement

Claim construction is a key legal issue in these cases, and Defendants believe

18

19 it will be dispositive of infringement and/or invalidity for many of the asserted
20 claims and/or accused products.
Because of the importance of claim construction and the amount of effort that

21

22 just construing the claims alone will take for the parties and the Court to complete,
23 the Defendants prefer to limit discovery at the outset of the case to claim
24 construction and core technical documents during the initial phase of claim
25 construction. The remaining fact discovery would commence on the date of entry of
26 the claim construction order.3 Because Defendants believe that the claim
27
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3

This approach was adopted by Judge Pfaelzer in Diamond Coating Techs,
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1 construction process will have the effect of eliminating certain patents, claims, or
2 accused products from the case, this phased discovery approach will be more
3 efficient for all of the parties and non-parties from which discovery may be sought
4 (including inventors and suppliers).
5

After the claim construction order, the parties would then undertake fact

6 discovery relating to the issues of infringement, invalidity, and damages.
7

Some Defendants also believe that inequitable conduct may become a

8 significant issue in this case as discovery proceeds. Defendants may seek leave to
9 amend their affirmative defenses if warranted by new information produced in
10 discovery.
11

Some defendants have license defenses based on pre-existing licenses under

12 one or more of the patents in suit. Such defendants may seek to amend their
13 affirmative defenses if warranted by new information. License defenses based on
14 licenses granted to third-party suppliers may also result in intervention of non-party
15 suppliers in one or more of the actions.
16

Finally, Defendants assert that damages in this case should be limited due to

17 laches, estoppel, and/or the provisions of 35 U.S.C. §§ 286 and 287. The earliest of
18 the asserted patents issued 19 years ago. Even the latest issued 10 years ago. The
19 law presents substantial limits on the Plaintiff's ability to recover for infringement of
20 any valid patent claims based on the delay in bringing suit.
21

From an evidentiary perspective, Defendants believe that a large amount of

22 non-party discovery will be required in this case. Investigation is ongoing, but
23 Plaintiff's infringement contentions implicate a number of automotive systems
24 provided by non-party suppliers and manufacturers. Many of these non-parties may
25 be foreign entities.
26
27 LLC v. Hyundai Motor Am., No. 8:13-cv-01481 (C.D. Cal.) (see Order attached
hereto as Exhibit B).
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1

Additionally, Defendants are competitors in the market and have substantial

2 concern about the risk of inadvertent disclosure of their confidential and trade secret
3 information to each other. The Defendants recognize that the Court has already
4 entered a Standing Protective Order, but additional protection may be needed for
5 sensitive information, for example, sales and pricing data, trade secrets, and source
6 code.
d.

7

i.

8
9

Parties, and Non-Party Witnesses
Plaintiff’s Statement

Marathon Patent Group, Inc. is the parent corporation of Plaintiff Signal IP,

10 Inc. and owns more than 10% of the outstanding stock of Signal IP. No other
11 publicly traded company owns more than 10% of the outstanding stock in Signal IP.
12

In its Initial Disclosures, Plaintiff identified the following parties and non-

13 party witnesses on the main issues in the case: individuals with knowledge regarding
14 the accused instrumentalities, the named inventors of the Signal Patents, its
15 corporate representative Doug Croxall, and Signal’s witnesses identified by
16 Defendants in their respective disclosures.
ii.

17
18

Defendants’ Statement

The Defendants verify that they have identified all subsidiaries, parents, and

19 affiliates in their Certificates of Interested Parties.
20

The Defendants have also identified all presently known witnesses in their

21 Rule 26(a) disclosures.
e.

22

i.

23
24

Damages
Plaintiff’s Statement

Based on currently-available information, Plaintiff’s preliminary damages

25 estimates are as follows:
26

Defendant

27

Honda

Preliminary damages estimate
$201-223M

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1

Defendant

2

Kia

$133-148M

Mazda

$63-70M

Mitsubishi

$6-7M

Nissan

$151-167M

Subaru

$28-31M

Chrysler

$154-170M

Ford

$304-336M

Volvo

$13-14M

Jaguar

$20-22M

16

Mercedes

$120-133M

17

BMW

$104-115M

VW

$132-146M

Porsche

$23-25M

Total

$1.4-$1.6B

Preliminary damages estimate

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5
6
7
8
9
10
11
12
13
14
15

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19
20
21
22
23
24
25
26
27

These preliminary estimates are subject to revision based on additional
information, including information regarding sales, revenues, use of accused
features, use of potentially licensed products, or other relevant information.
ii.

Defendants’ Statement

The Defendants assert that Plaintiff is not entitled to recover damages, as

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1 Defendants are not liable.
2

Although the Defendants assert that Plaintiff's infringement contentions are so

3 deficient that it is impossible for Defendants to estimate potential exposure at this
4 time, the estimates above are self-serving and grossly excessive. For several
5 defendants, the amounts above appear to include damages based upon sale of
6 licensed vehicles that should not be in the case. Moreover, for some defendants
7 many of the accused vehicles do not contain the accused technology and also should
8 be dismissed from this action. These examples of over-counting could amount to a
9 reduction as great as 95% or more of the damages estimates provided above for
10 certain defendants.
11

f.

i.

12
13

Insurance
Plaintiff’s Statement

Plaintiff is unaware of any insurance coverage for the claims and

14 counterclaims asserted in the Signal Actions.
ii.

15
16

Defendants’ Statement

The following Defendants assert that they are unaware of any insurance

17 coverage for this litigation at this time:
18

• Mazda, Subaru, Mitsubishi, BMW of North America, LLC, Nissan,

19

Jaguar, Ford, Chrysler, Honda, Kia, Volvo, MBUSA.

20

g.

21
22

Motions
i.

Plaintiff’s Statement

There are currently four motions pending in the Signal Actions, all filed by

23 defendants: (1) Ford’s motion to transfer to the United States District Court for the
24 Eastern District of Michigan (Case No. 14-03106, Dkt. No. 36); (2) Mercedes’
25 partial motion to dismiss portions of Plaintiff’s claims for direct and indirect
26 infringement (Case No. 14-03109, Dkt. No. 34); (3) Nissan’s motion to dismiss
27 Plaintiff’s claims for willful infringement (Case No. 14-03113, Dkt. No. 35); and (4)
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1 VW’s motion to dismiss Plaintiff’s claims for willful infringement (Case No. 142 03113, Dkt. No. 35). Plaintiff opposes these motions.
3

At this time, Plaintiff does not anticipate filing any motions seeking to add

4 other parties or claims, or filing any amended pleadings.
ii.

5
6

Defendants’ Statement

In addition to the motions referenced in Plaintiff’s Statement, above,

7 Defendants assert that they anticipate filing motions for summary judgment of non8 infringement for at least some and likely all of the asserted claims, depending on the
9 Court's claim construction. Defendants may also file motions for summary judgment
10 of invalidity.
11

Some Defendants are anticipating filing a motion for transfer of venue in

12 addition to or in conjunction with Ford's motion.
13

As set forth above, some Defendants may move to amend their pleadings to

14 include inequitable conduct and other defenses if circumstances warrant.
15

Some Defendants are also considering filing petitions for Review and/or

16 Reexamination of the asserted patents by the United States Patent and Trademark
17 Office. They may, therefore, move to stay these cases.
18
19
20
21

Some defendants may seek to implead suppliers of accused systems.
h.

Manual for Complex Litigation
i.

Plaintiff’s Statement

Plaintiff believes many of the procedures discussed in the Manual for

22 Complex Litigation, Fourth (“MCL, 4th”) are relevant to the Signal Actions and
23 should be utilized, including:
24

 Designating a single location (i.e. this District) for storage of source code,

25

with a common data format and common review tools (§§ 11.444, 11.423)

26

(See infra, Section (s));

27

 Designation of liaison counsel to handle joint submissions,

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1

communication, service, or other issues common among Defendants (§§

2

10.221, 11.12);

3

 Designation of lead case for common filings (§ 20.11);

4

 Use of common discovery requests (§§ 11.464, 11.423) (See infra, Section

5
6
7
8
9

(j));
 Coordination of depositions on common witnesses to avoid cumulative or
duplicative depositions (§ 11.455) (See infra, Section (j));
 Phasing discovery by groups of patents and defendants (§ 11.422) (See
infra, Section (i) and Exhibit A);

10

 Need for discovery on non-parties such as suppliers (§ 11.447);

11

 Potential need for foreign discovery (§ 11.494) (See infra, Section (s)); and

12

 Conveyance of settlement offers to clients (§ 13.24) (See infra, Section

13
14
15

(n)).
ii.

Defendants’ Statement

Defendants are committed to working together to reduce the complexity of

16 this case for the Court. To that end, the Defendants are willing to consider the
17 Manual for Complex Litigation as a guideline in these cases. However, because the
18 Defendants are direct competitors with significant confidentiality concerns and
19 potential conflicts of interest, Defendants cannot agree to appoint individual
20 attorneys to represent all Defendants, to permit common depositories for
21 confidential business information produced in the course of discovery, nor can
22 Defendants agree to consolidate seemingly common issues like claim construction
23 without careful prior consideration.
24

On the specific selected portions of the MCL that plaintiff addresses above,

25 Defendants cannot support Plaintiff’s proposal with regard to source code
26 production. At this stage of the case, and in light of Plaintiff’s insufficient
27 infringement contentions, Defendants are not convinced that production of source
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1 code is even necessary in this case. At very least, Plaintiff has yet to demonstrate a
2 need for such burdensome discovery. In most instances, Defendants do not know
3 the specific products or functionality that Plaintiff is accusing, and it is therefore
4 impossible to know what, if any, source code may be relevant to this case.
5 Moreover, Defendants expect that to the extent relevant source code does exist, it is
6 most likely to reside with third parties outside Defendants’ control. Defendants
7 therefore propose that any decisions on the specific procedural aspects of source
8 code production be postponed until after the claim construction phase of the case,
9 and only then if there is a real, demonstrated need for source code production.
10

If source code production becomes necessary, Defendants would work with

11 Plaintiff on a Defendant-by-Defendant basis to explore available production
12 procedures that may include production of source code in the offices of each
13 Defendant’s counsel, or at the source code supplier’s facilities, subject of course to
14 client and non-party confidentiality restrictions that are likely to bind the production
15 of any source code, recognizing that to the extent that source code resides with non16 parties, Defendants expect that they will not be in a position to control the
17 production of such code..
18

Defendants likewise cannot support the liaison counsel concept for

19 confidentiality reasons. Defendants also disagree that phasing of discovery by
20 patent will be efficient or useful, but would agree (as explained above) to the
21 phasing of discovery to claim construction and core technical documents separate
22 and before the remaining fact discovery.
23
24
25

i.

Status of Discovery
i.

Plaintiff’s Statement

The parties have exchanged Initial Disclosures on or before August 4, 2014.

26 Other than the disclosures required by the Court’s Standing Patent Rules, no other
27 formal discovery has yet been pursued by any party.
28
15
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1
2

ii.

Defendants’ Statement

Plaintiffs have provided in initial infringement contentions to Defendants, and

3 the parties have disclosed limited information for purposes of discussing potential
4 settlement. At the outset, Defendants assert that Plaintiff's infringement contentions
5 are grossly deficient.
j.

6

i.

7
8

Discovery Plan
Plaintiff’s Statement

Plaintiff objects to any proposal that discovery be limited at the outset of the

9 case to claim construction and core technical documents. This would cause
10 unnecessary delay and prevent “prompt, early discovery” that the Court encourages.
11

Plaintiff also objects to any proposal that would limit discovery of source

12 code or other technical information. The Court’s Standing Patent Rule 2.6.1
13 provides for automatic production of source code and other technical materials, and
14 discovery of this information is important and should not be limited or precluded in
15 any way.
16

Subject matter of discovery. Plaintiff believes discovery, including requests

17 for production, interrogatories, requests for admission, and depositions will be
18 necessary on at least the following topics: (1) the inventions disclosed in the Signal
19 Patents; (2) design, development and functionality of the accused instrumentalities;
20 (3) revenue, sales, and profit information relating to the accused instrumentalities;
21 (4) use of the accused instrumentalities; (5) alleged prior art relating to the Signal
22 Patents; (6) Defendants’ affirmative defenses and counterclaims; and (7) issues
23 relating to the calculation of damages and other relief.
24

Discovery procedures and formats. Plaintiff agrees that “[e]arly agreement

25 between the parties regarding the forms of production will help eliminate waste and
26 duplication.” (MCL 4th, § 11.446.) The following procedures and production
27 formats should be adopted in the Signal Actions.
28
16
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1

General production requests under Federal Rules of Civil Procedure 34 and

2 45 for ESI shall not include email or other forms of electronic correspondence such
3 as chat logs or instant messaging (collectively “email”). For discovery of email, the
4 Federal Circuit’s Model Order Regarding E-Discovery in Patent Cases shall
5 govern.4
Documents shall be produced in Tagged Image File Format (“TIFF”) format.

6

7 TIFF files shall be single page and shall be named with a unique production number
8 followed by the appropriate file extension. Load files shall be provided to indicate
9 the location and unitization of the TIFF files. If a document is more than on page,
10 the unitization of the document and any attachments and/or affixed notes shall be
11 maintained as they existed in the original document.
Extracted text shall be provided with all records, except for documents that

12

13 originated as hard copy or redacted documents. OCR text shall be provided for
14 hard copy documents. For redacted documents, OCR text shall be provided for the
15 redacted version. For all document file types not conducive to TIFF review (e.g.,
16 Excel, PowerPoint, video/audio files, database (Access, etc.)), files in native format
17 shall be produced, and files shall be named with the production number following
18 by the appropriate file extension. Standard Concordance load files (DAT and
19 Opticon) shall be produced.
Discovery may be served by email on all counsel of record per Federal Rule

20

21 of Civil Procedure 5(b)(2)(E), and all documents served by other means shall also be
22 served by email.
Before serving deposition notices and subpoenas, the parties will make every

23

24 effort to obtain agreeable deposition dates for attorneys who will take and defend
25
26

4

Available at
27 http://memberconnections.com/olc/filelib/LVFC/cpages/9008/Library/Ediscovery%
20Model%20Order.pdf.
28
17
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1 each deposition, and for the witness.
2

Common discovery and discovery limits. “In related cases pending before the

3 same judge, it is best to coordinate discovery plans to avoid conflicts and
4 duplication.” (MCL 4th, § 11.455; see also Id. (“[J]udges should attempt to
5 coordinate the depositions of common witnesses and other common discovery”); Id.
6 at § 11.464 (“The court should consider requiring similarly situated parties to confer
7 and develop a single or master set of interrogatories to be served on an opposing
8 party.”)).
9

Plaintiff proposes that the Signal Actions should be consolidated for pre-trial

10 discovery on common issues. (See MCL 4th, § 11.423, 11.464.) Common issues
11 will likely include prosecution of the Signal Patents, discovery regarding the
12 inventions and named inventors of the Signal Patents, alleged prior art of the Signal
13 Patents, prior assignees of the Signal Patents (Delphi Technologies, Inc. or Delco
14 Electronics Corporation), and discovery regarding plaintiff Signal IP, Inc..
15 Accordingly, the following discovery limits are appropriate:
16

Requests for Production. Each side may serve upon each opposing side up to

17 twenty-five (25) common requests for production, to be answered by each party on
18 the opposing side. Each party may serve, upon each opposing party, up to ten (10)
19 individual requests for production, to be answered only by the party upon whom
20 they were served.
21

Interrogatories. Each side may serve, upon each opposing side, up to fifteen

22 (15) common interrogatories, to be answered by each party on the opposing side.
23 Each party may serve, upon each opposing party, up to ten (10) individual
24 interrogatories, to be answered only by the party upon whom they were served.
25

Requests for Admission. Plaintiff may serve up to twenty (20) requests for

26 admission on each of the Defendants, and each Defendant may serve up to twenty
27 (20) requests for admission on Plaintiff. This limit should not apply to requests for
28
18
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1 admission solely for the purpose of authenticating a document.
2

Depositions. Depositions of all common witnesses or parties shall be

3 coordinated among all parties on each side, and limited on each side to two (2)
4 consecutive days in the same location, with 7 (seven) hours per day. This limit also
5 applies to expert witnesses who must provide a written report under Fed. R. Civ. P.
6 26(a)(2)(B), with the addition that each party on one side that is the subject of a
7 written report from an expert may take up to an additional two (2) hours of
8 deposition testimony. Parties in related cases “may use depositions taken in one
9 particular case.” (See MCL 4th, § 11.455.)
10

The above limits may be modified by order of the Court, upon showing of

11 good cause.
12
13

ii.

Defendants’ Statement

The Defendants, while in general agreement that some amount of common

14 discovery is efficient, do not agree that each side be limited to the same number of
15 discovery requests or that each defendant be severely limited in its ability to take
16 individual written discovery or deposition testimony if these cases are consolidated.
17 As explained above, the Defendants represent a broad range of competitors in the
18 automobile market. They have substantially different numbers and types of accused
19 products, and the facts and circumstances surrounding their affirmative defenses and
20 counterclaims will vary. The Defendants may make differing business decisions
21 based on which defenses and counterclaims to actively pursue, and the Defendants
22 have retained different counsel with differing advice on how best to proceed.
23 Moreover, Defendants are restrained in their ability to "share" work product due to
24 their need to protect competitive information, and the potential conflicts of interest
25 between the Defendants as competing entities. Ultimately, it was the Plaintiff's
26 choice to file 14 different lawsuits alleging infringement of 7 unrelated patents that
27 issued anywhere between 1995 to 2004, and Defendants should not bear the
28
19
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1 financial and evidentiary prejudice of having to consolidate discovery where they do
2 not perceive a collective benefit in doing so. One of the reasons that Congress
3 enacted the joinder statute, 35 U.S.C. § 299 was to end “the abusive practice of
4 treating as co-defendants [in patent infringement actions] parties who make
5 completely different products and have no relation to each other. See 157 Cong.
6 Rec. H.4426 (daily ed. June 22, 2011) (statement of Rep. Robert W. Goodlatte (R7 Va.)). Prior to the enactment of the Section 299, some courts had routinely
8 permitted party joinder under Fed. R. Civ. P. 20(a)(2). See H. Rep. No. 112-98, Part
9 1, at 55 n.61. And, non-practicing entities, took advantage of this rule to sue
10 unrelated parties for infringement of the same patent or patents, resulting in limited
11 opportunities for each defendant to present individualized positions on issues such
12 as infringement, willfulness, damages, and discovery. The joinder statute aims to
13 discourage these multi-defendant patent actions by imposing heightened
14 requirements for party joinder relative to Rule 20(a)(2). Plaintiff, therefore, should
15 not be permitted to do an end-run around Section 299 by imposing unreasonable
16 litigation uniformity among competing defendants.
17

That said, Defendants expect that there may be substantial agreement between

18 the Defendants on issues of disavowal of claim scope, prosecution history estoppel,
19 invalidity, inventorship, ownership, inequitable conduct, and other issues that are
20 primarily based on the Plaintiff's inability to succeed in asserting the patents-in-suit.
21 Unlike Plaintiff, the Defendants are not in the business of litigation and plan to limit
22 expenses where reasonably possible.
23

Defendants intend to depose the named inventors of the asserted patents, and

24 will address issues including but not limited to (a) conception; (b) reduction to
25 practice; (c) inventorship; (d) ownership of the asserted patents; (e) claim
26 construction; (f) prior art; (g) inequitable conduct; (h) document retention; and/or (i)
27 discovery efforts.
28
20
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1

Defendants intend to depose the Plaintiff and/or Plaintiff's predecessors-in-

2 interest on issues including but not limited to: (a) conception; (b) reduction to
3 practice; (c) inventorship; (d) ownership of the asserted patents; (e) claim
4 construction; (f) prior art; (g) inequitable conduct; (h) laches; (i) estoppel; (j)
5 licensing; (k) damages; (l) marking; (h) document retention; and/or (i) discovery
6 efforts.
7

Additionally, Defendants will depose any experts proposed by Plaintiffs.

8 Defendants understand Plaintiff has indicated that it has retained certain named
9 inventors and other individuals as fact and/or expert witnesses, and may require
10 more than one deposition of certain individuals on issues such as claim construction
11 and infringement.
12

Defendants are willing to coordinate scheduling of depositions of inventors to

13 prevent unnecessary duplicative discovery. However, Defendants to not agree to the
14 deposition limits proposed by Plaintiff. Defendants reserve the right to request
15 extended depositions of key witnesses because the individual Defendants are
16 competitors with different products and different defenses, and may seek different
17 information during discovery.
18

Defendants reserve the right to issue requests for admission on factual issues

19 including, for example, authentication of documents, key dates, and any other
20 factual issues that Plaintiff can readily admit. The Defendants do not agree to
21 Plaintiff's proposed limit on the number of requests for admission. Though the
22 Federal Rules apply no limit on the number of RFAs that any party may serve in a
23 case, in the spirit of compromise Defendants propose that they be allocated 25
24 collective RFAs to be shared among Defendants, and 75 RFAs to be used
25 individually on a per-defendant basis. Defendants further propose that there be no
26 limit on RFAs served for the purpose of authenticating evidence. Defendants
27 propose that the Plaintiff be limited to 100 RFAs.
28
21
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1

Defendants anticipate serving document production requests on Plaintiff on

2 all issues identified for deposition above. The Defendants agree to Plaintiff's
3 proposed limit on the number of requests for production. Further, the Defendants do
4 not agree to the Federal Circuit Advisory Committee’s Model Order Regarding E5 Discovery in Patent Cases. The Defendants do not agree that email discovery will
6 be either helpful or necessary, and Plaintiff has made no good faith representation
7 that it will need email discovery in prosecuting its case.
8

Defendants also anticipate serving interrogatories on Plaintiff on all issues

9 identified for deposition above. Defendants agree to consolidate interrogatories on
10 issues that are common to all Defendants, but reserve the right to serve individual
11 interrogatories on issues unique to each Defendant. The Defendants do not agree to
12 Plaintiff's proposed limit on the number of interrogatories. Defendants propose that
13 each side may serve up to 10 common interrogatories to be answered by each party
14 on the opposing side. Defendants propose that each party also be allotted 15
15 individual interrogatories to be served on specific parties. Finally, Defendants
16 propose that each Defendant be allotted three additional interrogatories for each
17 patent asserted against that Defendant that exceeds two patents. For example, a
18 party accused of infringing six patents in this case would have 10 common, 15
19 individual, and 12 additional interrogatories.
20

Additional third-party depositions and discovery requests may be required on

21 issues including but not limited to (a) non-infringement; (b) prior art; (c) inequitable
22 conduct; (d) licensing; and/or (e) damages.
23

Defendants propose to have two phases of discovery. The first phase will be

24 limited to claim construction discovery and core technical documents and will end
25 two week before the parties’ claim construction briefs are due.
26
27

k.

Discovery Cut-Off
i.

Plaintiff’s Statement

28
22
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1

Plaintiff has proposed a case schedule that includes a plan for the completion

2 of discovery. (See Exhibit A.)
ii.

3
4

Defendants’ Statement

Defendants believe that it is premature to set a discovery cut-off until after the

5 Court has issued a claim construction Order. Because Defendants expect that this
6 case may be substantially narrowed via the claim construction process, it appears
7 appropriate to evaluate the scope of the case and the discovery that remains
8 necessary after the claim construction Order issues, and to set a date at that time.
9

In any case, Defendants propose that fact discovery should conclude 14 days

10 before the date of opening expert reports, and that expert discovery should remain
11 open until 30 days after rebuttal expert reports are served.
12
13
14

l.

Expert Discovery
i.

Plaintiff’s Statement

Plaintiff has proposed a case schedule that includes a plan for expert witness

15 disclosures and discovery. (See Exhibit A.)
16

Plaintiff’s proposal includes five patent-specific phases for expert reports

17 related to patent-specific issues (e.g. infringement and invalidity), and three phases
18 for other expert reports (e.g. damages), in groups of Defendants. Phasing expert
19 discovery in this manner will results in an orderly and efficient timeline for expert
20 disclosures. (See MCL 4th, § 11.422).
21
22

ii.

Defendants’ Statement

Defendants oppose the staggered discovery plan proposed by Plaintiffs.

23 Staggered discovery will multiply litigation expenses for the Defendants and delay
24 their resolution of the case on dispositive motions. Moreover, it can be expected that
25 scheduling difficulties will interfere, with many parties being unable to make
26 witnesses available within narrowly-confined discovery windows as will result from
27 such phased discovery.
28
23
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1

As before, Defendants suggest that the Court revisit the appropriate expert

2 discovery limits after it issues a claim construction order and the parties have time to
3 assess the remaining scope of the case.
m.

4

i.

5
6

Dispositive Motions
Plaintiff’s Statement

Plaintiff may file motions for summary judgment or partial summary

7 judgment on issues including infringement, validity, and Defendants’ affirmative
8 defenses.
9

Plaintiff believes it is appropriate for parties on one side to file a consolidated

10 motion (including dispositive or non-dispositive motions) when more than one party
11 is presenting the same issue(s), e.g. invalidity, license, procedural issues, or other
12 issues that may be common to more than one party.
13

Counsel shall meet and confer prior to the filing of a motion to determine if a

14 consolidated motion can be filed and, if so, whether: (i) one consolidated motion can
15 be filed because the issues are common to all moving parties; (ii) a consolidated
16 motion as to common issues can be accompanied by one or more shorter,
17 supplemental motions as to unique issues; or (iii) a motion by one party can be filed
18 to which other parties join in whole or in part. The purpose of this requirement is to
19 prevent the filing of overlapping and duplicative materials with the Court. It is also
20 designed to preclude side-stepping of the page limits on briefs imposed by the Local
21 Rules and this Court’s Standing Orders.
22
23

ii.

Defendants’ Statement

Defendants strongly object to the additional procedures that Plaintiff seeks to

24 impose on Defendants regarding consolidated motions. In an effort to reduce
25 litigation costs, Defendants will meet and confer where appropriate to file
26 consolidated motions. The Defendants are direct competitors in the market. It
27 would create both financial and evidentiary prejudice against the Defendants to
28
24
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1 impose procedures that could inhibit their ability to file motions in a timely and
2 efficient manner in accordance with the strategic and business decisions of each
3 Defendant.
4

Defendants contend that non-infringement can be established by dispositive

5 motion with regard to many, if not all, patents and defendants. It is expected that
6 several Defendants will move for summary judgment of non-infringement at an
7 early stage in this case.
8

Defendants contend that invalidity of certain claims may be established by

9 dispositive motion. Certain other defenses, such as a license defense, may also be
10 susceptible to dispositive motions.
11
12
13

n.

Settlement
i.

Plaintiff’s Statement

Plaintiff believes that it is in the best interest of the parties to discuss

14 disposition of the Signal Actions by settlement, and to that end has attempted to
15 initiate settlement discussions with all Defendants. Only one defendant – Porsche –
16 has not agreed to accept or review settlement materials from Plaintiff, pursuant to
17 Federal Rule of Evidence 408. Parties should be encouraged to at least convey such
18 offers to their clients. (See MCL 4th, § 13.24 (“Attorneys have an obligation
19 promptly to submit nonfrivolous offers of settlement to the client…. Breach of this
20 duty is egregious if counsel will be compensated in whole or in part on the basis of
21 the number of hours expended in the litigation….”).)
22

Additionally, Plaintiff has held settlement teleconferences pursuant to Rule

23 408 with ten defendants, and four defendants have not accepted Plaintiff’s request to
24 discuss settlement following receipt of the settlement materials.
25

Of the suggested ADR procedures in Local Rule 16-15.4, Plaintiff prefers

26 participation in a private dispute resolution proceeding (Procedure No. 3), but is also
27 willing to participate in other ADR procedures.
28
25
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1
2

ii.

Defendants’ Statement

The Defendants agree to proceed by ADR Procedure 1, in accordance with

3 Local Rule 16-15.4. To date, Plaintiff's infringement contentions have been
4 insufficient to meaningfully evaluate settlement.
o.

5

i.

6
7

Trial Estimate
Plaintiff’s Statement

Plaintiff estimates 5 court days for each of the Signal Actions, and anticipates

8 that it will call between 5 and 8 witnesses. Plaintiff believes it is appropriate to
9 determine at a later stage whether one of more of the Signal Actions, or common
10 issues therein, should be tried together.
ii.

11
12

Defendants’ Statement

As an initial point, each Defendant is entitled to its own trial under the AIA.

13 As such, the question of consolidated trials is entirely premature at this time.
14 Further, Defendants expect that with seven patents on vastly different technologies,
15 many experts, and the potential for significant non-party testimony by videotape, at
16 least ten trial days are likely necessary for each Defendant’s trial. Defendants
17 further suggest, at the appropriate stage, the court consider whether some sort of
18 bifurcation, staged trials, or other tool be considered to reduce the burden placed on
19 the jury.
p.

20

i.

21
22

Trial Counsel
Plaintiff’s Statement

Plaintiff’s trial counsel are Randall J. Sunshine, Ryan E. Hatch, and Jason L.

23 Haas, all of Liner LLP, 1100 Glendon Avenue, 14th Floor, Los Angeles, California
24 90024.3503.
25

ii.

Defendants’ Statement

26

• Counsel for American Honda Motor Co. are Ahmed Davis, Ralph Phillips, and

27

Scott Elengold from the DC office of Fish & Richardson, Robert Hillman of

28
26
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1
2

Fish’s Boston office, and Geoff Biegler of Fish’s San Diego office.
• Counsel for Kia Motors America, Inc. are Ron Pabis, Mark Davis, Steve

3

Shahida from Greenberg Traurig’s DC office, and Rich Edlin from Greenberg

4

Traurig’s New York Office.

5
6
7

• Counsel for Mazda North America, Inc. are Matthew D. Satchwell and Paul R.
Steadman of the Chicago, Illinois office of DLA Piper LLP.
• Counsel for Mitsubishi Motors North America are Charles Gorenstein and Ali

8

Imam of the Falls Church, Virginia office of Birch Stewart Kolasch Birch, LLP.

9

• Counsel for Nissan North America, Inc. are B. Trent Webb, Patrick A. Lujin and

10

Richard D. Eiszner of the Kansas City, Mo office of Shook, Hardy & Bacon

11

LLP; Douglas W. Robinson and Gabriel Scott Spooner of the Irvine, California

12

office of Shook, Hardy & Bacon LLP; and Jamie Kitano of the San Francisco,

13

California office of Shook, Hardy & Bacon LLP.

14
15
16

• Counsel for Subaru of America, Inc. are Matthew D. Satchwell and Paul R.
Steadman of the Chicago, Illinois office of DLA Piper LLP.
• Counsel for Chrysler Group, LLC are Frank C. Cimino and Megan S.

17

Woodworth of the Washington DC office of Dickstein Shapiro LLC and Larry

18

LaPorte of the Los Angeles, California office of Dickstein Shapiro, LLP.

19
20
21

• Counsel for BMW of North America, LLC are Joseph P. Lavelle and Andrew N.
Stein of the Washington D.C. office of DLA Piper LLP (US).
• Counsel for Ford Motor Company are John LeRoy, Frank Angileri, Linda

22

Mettes and Chris Smith of the Southfield, Michigan office of Brooks Kushman.

23

• Counsel for Jaguar Land Rover North America are Matthew J. Moore, Clement

24

J. Naples, Lisa K. Nguyen, and Jason M. Garr of the Washington, D.C., New

25

York and Silicon Valley offices of Latham & Watkins LLP.

26

• Counsel for Volvo Cars of North America, LLC are David T. Pollock and Tracy

27

Zurzolo Quinn of the San Francisco and Philadelphia offices of Reed Smith

28
27
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1
2

LLP.
• Counsel for Mercedes-Benz USA LLC are Scott W. Doyle and Jonathan R.

3

DeFosse of the Washington, D.C. office of Shearman & Sterling LLP; and Don

4

A. Hernandez and Cristina Hernandez of the Pasadena Office of Gonzalez,

5

Saggio, and Harlan LLP.
q.

6

i.

7
8

Independent Expert or Master
Plaintiff’s Statement

Plaintiff does not believe the Court should appoint a master or independent

9 scientific expert.
ii.

10
11

Defendants’ Statement

Defendants agree that it does not appear at this time that court-appointed,

12 independent scientific experts are necessary in this case However, if the Court
13 believes that a technical expert may be helpful to it for some limited technical
14 purpose, as it did in Brandywine Communications Technologies, LLC v. Toshiba
15 Corp., No.LA CV12-03211, the Defendants would not object to such appointment.
r.

16

i.

17
18

Timetable
Plaintiff’s Statement

Plaintiff’s proposed timetable is attached as Exhibit A.
ii.

19

Defendants’ Statement

20

Defendants’ proposed timetable is attached as Exhibit A.

21

Defendants have provided reasonable date proposals for the deadlines leading

22 up to the Markman hearing that reflect the current size and complexity of the cases.
23 Importantly, all Defendants expect that the cases are going to be substantially
24 streamlined via the claim construction process, and expect that both patents and
25 parties currently involved in the cases will be removed after the claims are
26 construed.
27

Defendants oppose Plaintiff’s proposal to stagger the deadlines by patent and

28
28
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1 party groups after the Markman hearing, because that approach is irresponsibly
2 lengthy and does not provide timely disclosures to the Defendants that Plaintiff
3 chose to sue all at one time. Because the landscape is certain to be materially
4 different after the Markman decision issues and the range of products to which these
5 cases may apply will be narrowed significantly, in ways that cannot now be
6 predicted and will likely be at odds with Plaintiff’s staggered approach, Defendants
7 propose that the Court set a Scheduling Conference shortly after the Markman
8 decision issues, at which time the remaining parties can submit a reasonable
9 schedule proposal that meaningfully addresses the scope of the cases (if any) as it
10 exists at that time.
11

It should also be noted that Defendants have put forward two competing

12 proposals for how the schedule should proceed leading up to the Markman hearing.
13 Both proposals are set forth in Exhibit A. As can be seen, the Defendants in Group
14 B believe additional time is required to complete the events set forth in the schedule
15 relative to Defendants in Group A. Defendants that advocate for the Group A
16 schedule are Mazda, Subaru, Ford, Mercedes, Nissan, Volvo, Mitsubishi, BMW,
17 Jaguar, and Chrysler. Defendants that advocate for the Group B schedule are Honda
18 and Kia.
19
20
21

s.

Other Issues
i.

Plaintiff’s Statement

Modifications to Standing Protective Order. The Court’s Standing

22 Protective Order (Standing Orders, Exhibit E) governs discovery unless the Court
23 enters a different protective order. (S.P.R. 1.5.) Plaintiff believes that the Court’s
24 Standing Protective Order is appropriate in large part, but should be tailored to
25 facilitate an efficient and orderly review of source code in the Signal Actions, to
26 take place in a single geographic area (e.g. in this District), organized appropriately,
27 and with a common set of source code review tools. (See MCL 4th, § 33.25 (“Some
28
29
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1 courts have incorporated standing protective orders as part of the initial pretrial
2 conference; however, the particular patent case may dictate a more tailored order.”)
3

Accordingly, Plaintiff requests that Section 5.2 of the Court’s Standing

4 Protective Order should be modified as follows (with additions shown in underline):
5

 “5.2

Location and Supervision of Inspection. Any HIGHLY

6

CONFIDENTIAL – SOURCE CODE produced in discovery shall be

7

made available for inspection, in a format allowing it to be reasonably

8

reviewed and searched, during normal business hours or at other mutually

9

agreeable times, at an office of the designating party’s counsel in this

10

District or another mutually agreeable location in this District. The source

11

code shall be made available for inspection on a secured computer in a

12

secured room, and the inspecting party shall not copy, remove, or

13

otherwise transfer any portion of the source code onto any recordable

14

media or recordable device. Source code shall be produced in the format

15

in which it is used in the ordinary course of business, and labeled and

16

organized to permit the reviewing party to readily identify the relevant

17

patents, technology, products, and timeframes to which it pertains. The

18

designator may visually monitor the activities of the inspecting party’s

19

representatives during any source code review, but only to ensure that

20

there is no unauthorized recording, copying, or transmission of the source

21

code. The secured computer shall run the Microsoft Windows Operating

22

System on which the following software tools are installed: SlickEdit

23

(http://www.slickedit.com), Understand (http://www.scitools.com),

24

Beyond Compare (http://www.scootersoftware.com), and Acrobat

25

(http://get.adobe.com/reader), Cygwin (http://www.cygwin.com), and Edit

26

Pad Lite (http://www.editpadlite.com). The reviewing party may request

27

installation of additional tools that might be necessary to facilitate an

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1

orderly and efficient review of source code, which request shall not be

2

unreasonably denied by the producing party.”

3

These modifications to the Court’s Standing Protective Order will facilitate an

4 efficient and orderly review of source code. (See MCL 4th, §§ 11.444, 11.423.)
5

Moreover, production of source code in this District is appropriate, as each

6 party is already represented by at least one law firm with offices in this District. (See
7 L.R. 83-2.1.3.4 (“Every attorney seeking to appear pro hac vice must designate as
8 Local Counsel an attorney with whom the Court and opposing counsel may readily
9 communicate regarding the conduct of the case and upon whom documents may be
10 served. An attorney may be designated as Local Counsel only if he or she: (1) is a
11 member of this Court; and (2) maintains an office within the District.”) (emphasis
12 added))
13

In addition, the majority of Defendants’ national law firms also have offices

14 in this District.5 If production in this District is inconvenient, the parties will meet
15 and confer and designate a different common location, such as Washington D.C. or
16 New York, for the production of all source code.
Non-English speaking witnesses and discovery in foreign jurisdictions.

17

18 Plaintiff intends to rely largely on documentary evidence, but may also pursue
19 discovery of non-English speaking witnesses, or discovery in foreign jurisdictions.
ii.

20

Defendants’ Statement

Defendants propose the Court defer consideration of the source code issue

21

22 until such time as there is an actual, demonstrated need for the production of such
23 code. At a minimum, Defendants disagree that it is appropriate for their confidential
24 source code (to the extent any such code exists within their control) be placed on a
25

5

Defendants with national counsel having offices in Los Angeles or Orange County
26 include: Honda (Fish & Richardson); Nissan (Shook, Hardy & Bacon); Mazda,
27 Subaru and BMW (DLA Piper); Kia (Greenberg Traurig); Ford (Brooks Kushman);
Chrysler (Dickstein Shapiro); Volvo (Reed Smith); and Jaguar (Latham & Watkins).
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1 single computer accessible to other Defendants in this case.
t.

2

i.

3
4

Patent Cases
Plaintiff’s Statement

Consolidation of Claim Construction Proceedings. “Judicial time is the

5 scarcest resource of all.” (MCL 4th, § 10.1.) Consolidated claim construction
6 proceedings will conserve the Court’s limited resources, and achieve a speedy and
7 efficient resolution of all claim construction disputes. Consolidated proceedings
8 will provide the parties with a uniform set of constructions and will avoid
9 potentially inconsistent results. Plaintiff believes that the procedures in the Court’s
10 Standing Patent Rules can be readily adapted to facilitate consolidated proceedings,
11 as follows.
12

All parties to the Signal Actions should work to limit the terms in dispute by

13 narrowing or resolving differences, and jointly identify the 10 terms likely to be
14 most significant to the Signal Actions (S.P.R. 3.1). By default, claim construction
15 briefs should abide by the page limits set forth in S.P.R. 3.5, i.e. 25 pages per side
16 for single omnibus opening briefs, and 10 pages per side for single omnibus reply
17 briefs.
18

In addition to the information in S.P.R. 3.4.2 through 3.4.5, the parties should

19 address in the Joint Claim Construction and Prehearing Statement (S.P.R. 3.4)
20 whether: (i) one consolidated brief on each side can be filed because the issues are
21 common to all parties; (ii) a consolidated brief as to issues common to all
22 Defendants must be accompanied by one or more shorter, supplemental briefs as to
23 unique issues; and (iii) whether the default page limits should be increased on both
24 sides to accommodate any supplemental briefing. The purpose of this requirement
25 is to prevent the filing of duplicative materials with the Court, and to preclude the
26 side-stepping of the page limits on briefs.
27

Each side should provide a single set of presentation and tutorial materials.

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1 (S.P.R. 3.5). The parties shall jointly lodge with the Court the material described in
2 S.P.R. 3.5.1 through 3.5.3 (i.e. the chart with the parties’ proposed constructions;
3 annotated copies of the file histories; electronic copy of each file history). Each side
4 will have a maximum of 45 minutes to present evidence and argument in support of
5 their positions, but the parties can address whether additional time is necessary in
6 the Joint Claim Construction and Prehearing Statement, pursuant to the procedure
7 set forth in S.P.R. 3.4.4.
Plaintiff’s proposed schedule for Markman proceedings is set forth in Exhibit

8
9 A.

The Federal Circuit Advisory Committee’s Model Order Limiting Excess

10

11 Patent Claims and Prior Art should apply.
Under S.P.R. 2.3, the parties are required to consider and address in this

12

13 report the Federal Circuit Advisory Committee’s Model Order Limiting Excess
14 patent Claims and Prior Art (“Model Order”). 6 Plaintiff believes that the limits set
15 forth in Phases 1 and 2 of the Model Order 7 are appropriate and should apply across
16 all Signal Actions in a consolidated fashion (i.e. Plaintiff should abide by the limits
17 on asserted claims across all actions, and Defendants jointly should abide by the
18 limits on prior art across all actions).
In fact, Plaintiff is already essentially at or below these limits for the Signal

19

20 Actions. Plaintiff currently asserts 33 claims in 7 patents, with no more than eight
21
22
23
24
25
26
27
28

6

The Model Order is available at http://patentlyo.com/media/docs/2013/07/modelorder-excess-claims.pdf.
7
In the Model Order, Phase 1 limits plaintiff to 32 claims (maximum of 10 per
patent), selected 14 days after the S.P.R. 2.5 Invalidity Contentions, and limits
defendants to 40 references total (maximum of 12 per patent), selected 14 days after
selection of asserted claims. Phase 2 limits plaintiff to 16 claims (maximum of 5 per
patent), selected 28 days after the Markman order, and limits defendants to 20
references total (maximum of 6 per patent), selected 14 days after selection of
claims.
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1 claims per patent. (See Section (a).) This is only one claim above the limit of 32
2 asserted claims in Phase 1, and already below the limit of 10 claims per patent.
3
4

ii.

Defendants’ Statement

Because the Defendants believe that claim construction is the number one

5 issue that will help the parties work out issues of non-infringement and invalidity, it
6 should not be given short shrift as proposed by Plaintiff. Defendants believe that
7 there are significant limitations to the scope of the patents in suit that will present
8 substantial, common non-infringement arguments for many of the Defendants.
9 Accordingly, the Defendants propose proceeding only with claim construction
10 discovery at this point.
11

Each of the Defendants has different accused products. Even if the

12 Defendants can agree on broad principles like disavowal of claim scope or
13 prosecution history estoppel, they each may emphasize different aspects of claim
14 construction that most squarely address the products that they are dealing with in
15 their case. And they have the legal right to do so. As such, Plaintiff's proposal is
16 completely unworkable. Likewise, there are terms that may be significant for only
17 some parties depending on the nature of the accused products.
18

Accordingly, the Defendants believe that they should not be constrained to

19 present claim construction terms or arguments with one another, and they request
20 the right to present separate terms and briefs to the Court. However, the Defendants
21 will work together to coordinate on common terms and positions, and will limit the
22 briefing, as appropriate, for overlapping positions.
23

Defendants suggest a limit of five claim terms for construction per patent,

24 with the parties all working together to identify the terms as well as to provide the
25 Court with a list of the 10 most significant claim terms. Given the size and scope of
26 the case, Plaintiff’s proposal on the Markman briefing page limit is unworkable.
27 Defendants suggest that the Court set forth a date for the parties to submit proposals
28
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1 on Markman briefing and argument after the exchange of claim constructions, so
2 that the parties have a better understanding on the number of disputed terms and
3 proposed constructions. Further, with respect to Plaintiff’s proposals regarding
4 restrictions on the number of prior art references, Defendants suggest the Court set a
5 date subsequent to the Court’s ruling on claim construction for the parties to submit
6 proposals on these issues as the parties should have a better understanding at that
7 time of what claims are likely to go forward and hence the size and complexity of
8 the various remaining cases (if any).
9
10
11

u.

Do Parties Wish to Have a Magistrate Judge Preside
i.

Plaintiff’s Statement

Plaintiff does not wish to have a Magistrate preside over the Signal Actions

12 but does not oppose a Magistrate Judge presiding over discovery and procedural
13 issues, or settlement conferences.
14
15

ii.

Defendants’ Statement

Defendants do not wish to have a Magistrate Judge preside at trial, but would

16 welcome a Magistrate Judge to preside over discovery and procedural issues, as well
17 as settlement conferences in these Central District of California Actions.
18
19 Dated: September 5, 2014

LINER LLP

20
21

/s/ Ryan E. Hatch

By:

22

Randall J. Sunshine
Ryan E. Hatch
Jason L. Haas
Attorneys for Plaintiff SIGNAL
IP, INC.

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1 Dated: September 5, 2014

FISH & RICHARDSON P.C.

2
3

By:

4
5
6
7
8

/s/ Patrick A. Lujin
Patrick A. Lujin
B. Trent Webb
Richard D. Eiszner
Douglas W. Robinson
Gabriel S. Spooner
Jamie H. Kitano
Attorneys for Defendant
NISSAN NORTH AMERICA,
Inc.

9
10

ATTESTATION REGARDING SIGNATURES

11
I, Ryan E. Hatch, attest that all signatories listed, and on whose behalf the
12 filing is submitted, concur in the filing’s content and have authorized the filing.
13
14
15 Dated: September 5, 2014

By:

/s/ Ryan E. Hatch
Ryan E. Hatch

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17
18
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24
25
26
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JOINT RULE 16(b) REPORT

Case No. 2:14-cv-02962-JAK (JEMx)