New Pacer--SECOND SUPPLEMENTAL JOINT CASE MANAGEMENT CONFERENCE STATEMENT
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA - SAN JOSE DIVISION
ACER, INC., ACER AMERICA
CORPORATION AND GATEWAY, INC.,
Plaintiffs,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION,
and ALLIACENSE LIMITED,
Defendants.
SECOND SUPPLEMENTAL JOINT CASE MANAGEMENT CONFERENCE STATEMENT
Date: November 13, 2009
Time: 10:30 a.m.
Dept: Courtroom 3, 5th Floor
Before: Honorable Jeremy Fogel
HTC CORP. AND HTC AMERICA, INC.,
Plaintiffs,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION,
and ALLIACENSE LIMITED,
Defendants.
BARCO, N.V.
Plaintiffs,
v.
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION,
and ALLIACENSE LIMITED,
Defendants.
Plaintiffs Acer, Inc., Acer America Corporation and Gateway, Inc. (“Acer”), HTC Corp. and HTC America, Inc. (“HTC”) and Barco N.V. (“Barco”) (collectively, the “Plaintiffs”), along
with Defendants Technology Properties Limited (“TPL”), Patriot Scientific Corporation, and Alliacense Limited (collectively, the “Defendants”), hereby submit the following Second Supplemental Joint Case Management Conference Statement (“CMC Statement”) in advance of the Conference scheduled for November 13, 2009. Procedural Background. On May 1, 2009, Plaintiff Acer filed a Motion to Stay All Proceedings Pending Reexamination of the Patents-In-Suit. HTC filed a similar motion in the related action, 5:08-cv-00882 JF. On June 17, the Court granted a ninety-day stay in the Acer and HTC cases, and sua sponte ordered a corresponding stay in the matter of Barco v. TPL et al. (Case No. 5:08-cv-05398 JF) (the “Barco Matter”). On September 18, 2009, the Court held a case management conference (“CMC”) and considered the parties’ request to maintain the stay in this litigation. Ultimately, the Court decided to maintain the stay until a subsequent case management conference set on November 6,
2009, in which the Court will decide whether or not to continue maintaining the stay. The Court subsequently postponed the case management conference by one week and set it on November 13, 2009. Current Status of Patents-In-Suit The five patents-in-suit have collectively been the subject of fifteen (15) separate requests for reexamination since September 2006. The following developments have occurred since the parties last reported to the Court on September 18, 2009 1. U.S. Patent No. 5,809,336 (the “’336 Patent”) As of filing of this CMC Statement, the Reexamination Certificate has not yet been issued by the U.S. Patent and Trademark Office (“PTO”) since a Notice of Intent to Issue Ex Parte Reexamination Certificate (“NIRC”) was issued on September 11, 2009. One reexamination request filed on August 24, 2009 is still pending before the PTO and is not affected by the NIRC. On September 30, the PTO assigned this latest reexamination request to an examiner to determine whether this request for a reexamination will be granted. A decision is expected by November 24 pursuant to 37 CFR §1.515(a). 2. U.S. Patent No. 5,440,749 (the “’749 Patent”) On September 24, 2009, the PTO merged the three (3) pending reexamination proceedings into a single action. On October 9, 2009, the patentee submitted amendments, including its proposed new claims, as part of the merged reexamination proceeding. The amendments reflected changes found in the Certificate of Correction issued on May 26, 2009, in Reexam No. 90/009,034 (for the ’749 Patent). The PTO is currently considering the combined reexamination request and the patentee’s amendments. 3. U.S. Patent No. 6,598,148 (the “’148 Patent”) On October 2, 2009, the PTO merged the two (2) pending reexamination proceedings into a single action. The PTO is currently considering the combined reexamination request. 4. U.S. Patent No. 5,530,890 Patent (the “’890 Patent”) There have been no significant changes since the parties last reported to the Court that a reexamination had been ordered on April 8, 2009. 5. U.S. Patent No. 5,784,584 (the “’584 Patent”) Although a Reexamination Certificate was issued on July 21, 2009, with an amended Claim 29, Defendants have not yet asserted infringement of the ’584 patent in this litigation. A new reexamination request against the ’584 Patent was filed on October 2, 2009 after the July 21, 2009 Reexamination Certificate and is still pending before the PTO. Joint Statement of Plaintiffs Acer and HTC ln light of the recent developments at the PTO, Acer and HTC believe an additional threemonth stay will allow more intrinsic evidence relevant to claim construction to develop. The most significant development since the last CMC held on September 18, 2009 has been the PTO’s consolidation of the reexaminations for the ’749 and ’148 patents. The PTO appears to be moving on those petitions in an expeditious fashion now that a NIRC for the ’336 patent has been issued. The Court originally stayed this action on the grounds that a limited stay would provide additional intrinsic evidence relevant to claim construction. Such a decision has proven astute. During reexamination of the ’336 Patent, for instance, five (5) of six (6) asserted claims against Acer and HTC will issue with significant amendments,1 and the one remaining asserted claim was voluntarily cancelled by Defendants. Now, with the reexaminations for the ’749 and ’148 Patents merged, an additional three-month stay would likewise be beneficial to allow final actions for a 1 TPL originally asserted that Acer and HTC infringed claims 1, 3, 6, 7, 9, 10 of the ’336 patent. TPL voluntarily cancelled claim 3 during reexamination, as well as two claims that have not been asserted. The remaining five (5) claims (1, 6, 7, 9 and 10) have been amended during reexamination. majority of the remaining patents-in-suit.2
Such a stay will not prejudice the Defendants, as demonstrated by the reexamination experience of the ’336 Patent, because none of the claims survived the reexamination in their original form, with all of them either significantly amended or completely cancelled. In particular, the Examiner has added limitations to the now undeniably narrower claims to specifically overcome prior art that was not overcome before. Among the ’336 Patent’s original claims 1 through 10, all independent claims 1, 6, 9 and 10 have been amended (hence so have been their dependent claims 2 and 7), while claims 3, 4, 5 and 8 have been cancelled. Because all the (remaining) asserted claims 1, 6, 7, 9 and 10 of the ’336 Patent have been amended, intervening rights apply and Defendants will not be allowed to accuse Acer, HTC or any other parties or non-parties of infringing the ’336 Patent for any product sold prior to the issuance of the upcoming Reexamination Certificate. 35 U.S.C. 252; Seattle Box Co. v. Industrial Crat. & Pack. Inc., 731 F.2d 818 (Fed. Cir. 1984). Hence, all products identified in Defendants’ Patent Local Rule 3-1 disclosures are free form any claim of infringement of the ’336 Patent. The ’749, ’890 and ’148 reexaminations will likely have a similar result. Additionally, the patentee’s actions to date in the reexaminations have provided further intrinsic evidence that will inform the Court’s claim construction on the amended claims of the ’336 Patent and the other asserted patents should Defendants assert them after the Reexamination Certificate issues. All of the patents share a common specification and recite several identical claim elements that will need to be construed (e.g., the term “ring oscillator” is recited in asserted claims of all four of the patents-in-suit). It is therefore likely that proceedings in the reexaminations will further clarify and inform the Court’s claim construction.
Plaintiff Barco’s Statement Barco is not in favor of a lengthy or indefinite stay in this case, and is prepared to proceed as soon as the Court lifts the stay. In particular, Barco believes the stay should be lifted for at least the ’336 Patent as soon as the pending Reexamination Certificate issues. 2 TPL has made no claim of infringement against Acer or HTC as to the ’584 Patent.Defendants’ Statement Defendants agree that an additional 90-day stay would be beneficial to allow the PTO to finish publishing the Reissue Certificate for the ’336 Patent. Defendants expect that the publication of the Reissue Certificate may facilitate settlement negotiations among the parties. However, if the parties are unable to make substantial progress in settling their disputes in this upcoming 90-day stay, Defendants will request that the stay be lifted at the end of the period without need for agreement from the Plaintiffs. Defendants further disagree with Plaintiffs Acer and HTC’s characterization of the reexaminations. First, the amended ‘336 patent claims are identical in scope. The amendments in the soon-to-be-reissued ’336 Patent are merely clarifying, and indeed, are consistent with Judge Ward’s construction and interpretation of the ’336 Patent claims in the prior Texas action. Thus, there are no intervening rights with respect to the amended claims because the amended claims in the ’336 Patent are identical in scope to the original claims. The Patent Act provides that “the reissued patent, to the extent its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.” 35 U.S.C. § 252. Second, although Defendants cancelled asserted Claim 3 of the ’336 Patent during the reexamination, that claim was immaterial as Plaintiffs still infringe at least claims of the ’336 Patent. Third, the reexam procedure has resulted in six new claims, all of which will be asserted against the Plaintiffs. With regard to the ’148 and ’749 Patents, the PTO merged the multiple proceedings for
each of those patents into a single proceeding for each patent. In each case, Defendants filed a pro forma amendment that simply sought to place the claims of each of the merged reexamination proceedings in the same condition. Defendants expect that the latest challenge to the ’584 Patent will be summarily denied by the PTO because a Reissue Certificate has already issued on this Patent. Finally, there has been no significant activity on the pending reexamination for the ‘890 Patent.
Dated: November 3, 2009
K&L GATES LLP
By: /s/ Timothy P. Walker
Timothy P. Walker
Harold H. Davis
Attorneys for Plaintiffs
ACER, INC., ACER AMERICA CORPORATION and GATEWAY, IN |
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