STIPULATION AND ORDER TO CONTINUE CLAIM CONSTRUCTION BRIEFING SCHEDULE TO AVOID MULTIPLE MARKMAN HEARINGS

TROY L. NUNLEY, District Judge.

Pursuant to L.R. 143 and 144, Plaintiff Rillito River Solar LLC, doing business as EcoFasten Solar ("EcoFasten"), and Defendant Bamboo Industries LLC, doing business as SolarHooks ("SolarHooks"), hereby stipulate and agree to continue the claim construction briefing schedule so that the Court and the parties can avoid holding multiple Markman hearings in this action following the filing of the Amended Complaint [Dkt. #32], which added claims for infringement of two new patents. Granting this stipulation, continuing the claim construction deadlines, and re-setting the Markman hearing will promote judicial efficiency and conserve the Court's resources. If the stipulation is not granted, the parties will engage in two sets of claim construction procedures and briefing, and the Court will need to hold two Markman hearings, as construction of terms in the two newly added patents will not be ripe by the time of the currently scheduled Markman hearing on February 21, 2018. The parties' proposed schedule, set out at the end of this stipulation, will permit the Court to hold a single Markman hearing without impacting the scheduling of the dispositive motion deadline, final pretrial conference deadlines, or the trial date. These dates remain unchanged.

Procedural Background

This case began when EcoFasten filed a complaint alleging infringement of three patents (U.S. Patent Nos. 8,153,700, 9,134,044, and 9,447,988, collectively, the "Original Patents"). SolarHooks answered the complaint and the parties began engaging in discovery and the claim construction process, on the deadlines set out in the Court's Pretrial Scheduling Order [Dkt. #15], filing their Joint Claim Construction Statement [Dkt. #18] on October 13, 2017. Meanwhile, EcoFasten was issued two new patents (U.S. Patents Nos. 9,774,292 and 9,793,853, collectively, the "New Patents"). The New Patents are in the same patent application family as the Original Patents. EcoFasten alleges that the same SolarHooks products EcoFasten contends infringe the Original Patents also infringe the New Patents. To avoid the waste of a having two parallel lawsuits between identical parties concerning related patents, the parties agreed that EcoFasten would move to amend its complaint in this action to assert infringement of the New Patents [Dkt. #22] and the parties would jointly move to modify the scheduling order to accommodate a claim construction schedule for the New Patents [Dkt. #21]. While those motions were pending, the original scheduling order's briefing deadlines were drawing near. As an interim measure, the parties stipulated to briefly continue the briefing deadlines for two weeks [Dkt. #29, the "Interim Stipulation"]—a proposal that would give the Court additional time to consider the motion to amend and the joint motion to modify the scheduling order without affecting the parties' and the Court's readiness for the Markman hearing if the Court denied those motions and wished to proceed only on the Original Patents.

The day the parties filed the Interim Stipulation, the Court granted the motion to amend the complaint, permitting the parties to litigate the New Patents in this action. Later that same day, the Court also entered a minute order adopting some of the deadlines from the Interim Stipulation and re-set the Markman hearing from January 25, 2018 to February 21, 2018 [Dkt. #31]. Because the parties have not yet engaged in claim construction procedures for the New Patents, these new deadlines do not enable the parties to present construction issues under the New Patents at the Markman hearing as currently scheduled and, if not continued, will require the parties to engage in a second round of briefing and require the Court to hold a second Markman hearing on the New Patents after considering only the Original Patents in the February 21 Markman hearing. Granting this stipulation and resetting the Markman hearing will avoid this wasteful outcome.

Stipulated Deadlines

Under the deadlines originally proposed in the Joint Motion, EcoFasten has already served infringement contentions for the New Patents on October 27, 2017. The parties stipulate to the following deadlines that will catch up the New Patents to the Original Patents and permit the Court to resolve all claim construction issues in a single hearing:

To accommodate these additional deadlines, the parties agree that the date for the Markman hearing should be continued to a date at the Court's convenience on or after April 23, 2018, and all remaining discovery shall be completed by August 17, 2018. All other pretrial deadlines and the trial setting may remain the same.

IT IS SO ORDERED.