Filed: Mar. 06, 2018
Latest Update: Mar. 06, 2018
Summary: STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN EDWARD M. CHEN , >District Judge . Pursuant to the Court's order at the February 8, 2018 case management conference ( see Dkt. No. 70), Applied Materials, Inc.; George Tzanavaras; Dr. Uri Cohen; Taiwan Semiconductor Manufacturing Company Limited; TSMC North America; Huawei Device USA Inc.; Huawei Device (Dongguan) Co., Ltd.; Huawei Device Co., Ltd; and HiSilicon Technologies Co., Ltd., hereby provide the foll
Summary: STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN EDWARD M. CHEN , >District Judge . Pursuant to the Court's order at the February 8, 2018 case management conference ( see Dkt. No. 70), Applied Materials, Inc.; George Tzanavaras; Dr. Uri Cohen; Taiwan Semiconductor Manufacturing Company Limited; TSMC North America; Huawei Device USA Inc.; Huawei Device (Dongguan) Co., Ltd.; Huawei Device Co., Ltd; and HiSilicon Technologies Co., Ltd., hereby provide the follo..
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STIPULATION AND [PROPOSED] ORDER REGARDING CASE SCHEDULE AND DISCOVERY PLAN
EDWARD M. CHEN, >District Judge.
Pursuant to the Court's order at the February 8, 2018 case management conference (see Dkt. No. 70), Applied Materials, Inc.; George Tzanavaras; Dr. Uri Cohen; Taiwan Semiconductor Manufacturing Company Limited; TSMC North America; Huawei Device USA Inc.; Huawei Device (Dongguan) Co., Ltd.; Huawei Device Co., Ltd; and HiSilicon Technologies Co., Ltd., hereby provide the following stipulated case schedule and discovery plan for the related cases of Applied Materials, Inc. v. Cohen, No. 3:17-cv-04990-EMC; TSMC North America v. Cohen, No. 3:17-cv-05001; Cohen v. Taiwan Semiconductor Manufacturing Company Ltd., No. 3:17-cv-06451-EMC (collectively, the "Infringement Actions"); and Tzanavaras v. Cohen, No. 3:18-cv-01052-EMC (the "Inventorship Action"):
I. Agreement to Stay the Infringement Actions.
The parties agree that the inventorship claims raised in the Inventorship Action, brought under 35 U.S.C. § 256, should be litigated and resolved before continuation of the litigation of the Infringement Actions. Accordingly, the parties agree that all discovery and proceedings in the Infringement Actions, including any Patent Local Rule, pleadings, and discovery deadlines, should be stayed until resolution of the Inventorship Action. The parties agree that the doctrine of issue preclusion from the Inventorship Action will apply to each of them in the Infringement Action as if each party was a party to the Inventorship Action. For clarity, the parties agree that alleged coinventorship by Mr. Tzanavaras is an issue the parties intend to litigate and resolve in the Inventorship Action. The parties agree that no party shall seek a stay of the Inventorship Action, even if the Patent Trial and Appeal Board institutes inter partes review proceedings as to one or more of the Patents-in-Suit. This agreement shall in no way affect, and shall not be deemed a waiver of, Defendants' ability to seek a stay of the Infringement Actions pending any instituted IPRs.
The parties agree to meet and confer in good faith promptly after resolution of the Inventorship Action regarding a proposed schedule and discovery plan for the Infringement Actions that includes a Markman hearing within six months of resolution of the Inventorship Action, if necessary and subject to the Court's own calendar at that time.
II. Proposed Schedule for the Inventorship Action.
Subject to the Court's approval, the parties believe that an expedited schedule is appropriate to resolve the Inventorship Action. Mr. Tzanavaras and Dr. Cohen have agreed upon and propose the following schedule for the Inventorship Action:
Event Date
Dr. Cohen's Answer to Mr. 3/15/18
Tzanavaras's Complaint
Rule 26 Initial Disclosures 3/23/18
Opening of Fact Discovery 3/23/18
Close of Fact Discovery 7/31/18
Opening Expert Reports1 8/15/18
Rebuttal Expert Reports 9/5/18
Close of Expert Discovery 9/19/18
Motion for Summary Judgment2 9/21/18
MSJ Responses 10/5/18
MSJ Replies 10/12/18
Pretrial Conference 10/16/18 at 2:30 pm
Trial 10/29/18 (subject to the
Court's availability)
At present, Mr. Tzanavaras does not believe there are any jury trial issues in the Inventorship Action. There is no right to a jury trial for inventorship claims asserted under 35 U.S.C. § 256. See Shum v. Intel Corp., 499 F.3d 1272, 1277 (Fed. Cir. 2007) ("[A]n action for correction of inventorship under § 256, standing alone, is an equitable claim to which no right to a jury trial attaches."). Dr. Cohen reserves the right to seek a jury trial on any issues so triable. The parties agree to discuss whether a bench or jury trial is appropriate with the Court at a later time.
The parties expect that a trial will last 2 to 3 court days.
III. Discovery Plan for the Inventorship Action.
Mr. Tzanavaras and Dr. Cohen have agreed upon the following discovery limits, which are modified from those set forth in the Federal Rules of Civil Procedure:
• 10 interrogatories ("ROGs") per side;
• 15 requests for admission ("RFAs") per side, with the exception of RFAs regarding the authenticity of documents;
• One seven-hour deposition of Dr. Cohen;
• One seven-hour deposition of Mr. Tzanavaras; and
• Up to three third-party document and/or deposition subpoenas per side.
Mr. Tzanavaras and Dr. Cohen further agree to the following procedures regarding discovery in the Inventorship Action:
• Each party responding to ROGs or RFAs shall respond substantively to such ROGs or RFAs by the initial deadline for responding set forth in the Federal Rules of Civil Procedure, i.e., 30 days after service of the ROGs or RFAs, subject to appropriate objections; and
• Each party responding to requests for production ("RFPs") shall work in good faith to produce substantially all non-privileged, responsive documents on the same day that written objections and responses to the RFPs are due under the Federal Rules of Civil Procedure, i.e., 30 days after service of the RFPs, or as otherwise agreed to by the parties.
All parties agree that, if Dr. Cohen is deposed for one day in the Inventorship Action, that day will count as one day toward the number of days that Defendants are permitted to depose Dr. Cohen in the Infringement Actions.
The parties also agree that any discovery taken and produced in the Inventorship Action shall also be deemed usable as if produced in the Infringement Actions.
IT IS SO ORDERED. See modifications on p. 2. Special CMC is set for 3/15/18 at 10:30 a.m. The Court will discuss remainder of the stipulation at that time
ATTORNEY ATTESTATION
I hereby attest, pursuant to Local Rule 5-1(i)(3), that I obtained the concurrence in the filing of this document from the signatories indicated by the conformed signature (/s/).
