One dispute remains with the schedule. The defendants wish to introduce a motion in August for summary judgment on the grounds of indefiniteness with respect to most of the claims of the '652 and '314 patents (two of the four asserted patents). The defendants would like this motion to be heard and ruled on before claim construction briefs are due. It is the defendants' contention that this will make the claims construction process more efficient. The language which the defendants contend is indefinite is:
For its part Interval contends the defendants: (1) are merely trying to increase their page limit for their claim construction brief; (2) never requested this early deadline for the motion before; and (3) previously said the issue of indefiniteness goes hand-in-hand with claims construction. Interval suggests that, if the defendants really want an early hearing, the Court should simply have all claim construction briefs due at the earlier date (requested by defendants for the motion for summary judgment).
Best guess is that Interval will likely prevail on this issue and the issue of indefiniteness will be taken up as a part of claims construction.
UNITED STATES DISTRICT COURT
INTERVAL LICENSING LLC,
WESTERN DISTRICT OF WASHINGTON
GOOGLE, INC., and
Case No. 2:10-cv-01385-MJP
JOINT STATUS REPORT
ORAL ARGUMENT REQUESTED
Lead Case No. 2:10-cv-01385-MJP
Pursuant to this Court’s June 25, 2012, Order Granting Motion to Lift Stay (Dkt. No.
#269), the parties submit the following supplemental Joint Status Report.
I. PROPOSED SCHEDULE
A. Court’s Revised Scheduling Order
Except as discussed below, the parties agree that the parameters set in the Court’s Revised
Scheduling Order (Dkt. # 248) should remain in place with respect to the ‘652 and ‘314 Patents
B. Joint Proposed Schedule
The parties submit the following proposed schedule for this case. With the exception of
the one issue that is discussed below, the parties have reached agreement on a proposed schedule
for this case. The deadlines in the parties’ proposed schedule are based in large part on the
deadlines in the Court’s Revised Scheduling Order (Dkt. No. 248).1
|Interval to provide defendants with list of open discovery
|Serve supplemental preliminary infringement contentions on
any new claims added during reexamination and new accused
|Source code for 652/314 products already accused made
available for review and meet and confer to discuss making
source code available for newly identified 652/314 products
|Defendants respond by this date to the items on Interval’s list
of open discovery issues, with any meet and confers soon after
|Serve supplemental preliminary non-infringement contentions||8/17/2012|
|Meet and confer as to whether supplemental claim
construction expert reports are necessary
|Any New Terms Selected for Claim Construction||8/24/2012|
1 Defendants reserve the right to object to Interval’s supplementation of its infringement
contentions with respect to any claims that were not newly added during reexamination or with
respect to any products that are not new products. Defendants also reserve the right to
supplement Defendants’ invalidity contentions. Interval likewise reserves the right to object to
any supplemental invalidity contentions should Defendants seek a supplementation.
|Preliminary Claim Chart||8/31/2012|
|Joint Claim Chart and Prehearing Statement||9/14/2012|
|Serve Supplemental Claim Construction Expert Report on any|
new issues (if necessary)
|Opening Briefs on Claim Construction||10/5/2012|
|Response Briefs on Claim Construction||10/26/2012|
|Close of Fact Discovery||3/1/2013|
|Opening Expert Reports on All Issues||3/29/2013|
|Rebuttal Expert Reports Due||4/26/2013|
|Joint Status Report to Address Trial Issues||5/3/2013|
|Close of Expert Discovery||5/17/2013|
|Dispositive Motion Deadline||6/7/2013|
|Settlement Conference per Local Rule CR 39.1(c)(2) held no|
|Mediation per Local Rule CR 39.1(c)(3) held no later than||8/16/2013|
|All Motions in Limine must be filed by and noted on the|
motion calendar no later than the second Friday thereafter
|Agreed Pretrial Order due||9/6/2013|
|Trial Briefs, Proposed Voir Dire Questions, Proposed Jury|
Instructions, and Trial Exhibits due
|Objections to demonstratives, trial exhibits, depositions|
C. Remaining Disputes Concerning The Schedule
1. Motion for Summary Judgment on Indefiniteness
A vast majority of the claims of the ‘652 and ‘314 Patents include a claim limitation that
the Defendants contend is indefinite under 35 U.S.C. § 112, paragraph 1.2 Consistent with the
Court’s desire to move this case forward, pursuant to the Court’s Standing Order (Dkt. No. 26)
Defendants seek leave to file a single joint motion for summary judgment in August 2012 to bring
this discrete issue before the Court immediately after the stay has been lifted. Indefiniteness is a
question of law that can be decided before claim construction. See Datamize, LLC v. Plumtree
Software, Inc., 2004 U.S. Dist. LEXIS 28382, 7-8 (N.D. Cal. July 9, 2004) (granting motion for
summary judgment on indefiniteness before the scheduled claim construction hearing), aff’d 417
F.3d 1342 (Fed. Cir. 2005).
Defendants seek to bring this motion before claim construction because resolution of this
question that is common to so many claims may substantially narrow the claim construction
disputes that the Court would be asked to address. Interval’s response that this dispute should be
handled as part of claim construction or by accelerating the whole schedule is inefficient because
it will force the Court to receive briefing and address claim constructions for terms that may no
longer be at issue if the indefiniteness issue is decided in Defendants’ favor. Defendants’
proposal on the other hand allows the parties to proceed with the claim construction process, but
gives the Court the opportunity to address this single, discrete issue early and thereby potentially
reduce the work for both the Court and the parties. Defendants provide a brief explanation of the
The claim language at issue refers to displaying images “in an unobtrusive manner” and in
a way that “does not distract a user.” What exactly is unobtrusive or does not distract a user is
never defined in the specification. Defendants assert both terms are inherently subjective because
2 The limitation at issue is found in each and every claim of the '314 patent and all but 4 of
the currently-asserted claims of the '652 patent.
whether something is unobtrusive or distracts a user (from her primary interaction) depends upon
a particular user’s subjective views, what the user was engaged in and how easily a particular user
might be distracted. Under Federal Circuit precedent, claims containing inherently subjective
language are indefinite under 35 U.S.C. § 112, ¶ 2. For example, the Federal Circuit found
similarly subjective language indefinite in Datamize LLC v. Plumtree Software, Inc., 417 F.3d at
Resolution of this issue in Defendants favor will result in a substantial streamlining of this
case, including discovery, claim construction and trial, because most of the claims at issue will
have been held invalid.
Defendants have asked to include in the proposed schedule a date of August 2, 2012 for a
motion for summary judgment on indefiniteness. Interval believes that such an early deadline is
inappropriate for at least three reasons.3 First, the Court already has rejected a similar proposal
by Defendants. Before the stay, Defendants told this Court that they planned to submit their
summary judgment briefing on indefiniteness together with their claim construction briefing, and
they requested five additional pages in their claim construction brief to address indefiniteness.
04/25/2011 Hearing Transcript at 35-36 (Dkt. #231). The Court suggested that it would reject
that request, requiring that Defendants’ briefing on indefiniteness be confined to the existing page
limitation on the Markman brief. Id. at 35 (THE COURT: “I am all for saving work. I am pretty
much against adding pages.”). Consistent with the Court’s suggestion, Defendants appeared to
agree that they would include any summary judgment issue on indefiniteness as part of their page
limits on the claim construction briefing. Id. at 36. Defendants’ new request for an early motion
on indefiniteness appears to be nothing more than a second attempt to increase the page limitation
3 Defendants’ statement that indefiniteness is a question of law is misleading at best. “Summary
judgment on the issue of indefiniteness is inappropriate where there are issues of fact underlying
the indefiniteness determination.” See Am. Med. Sys., Inc. v. Laser Peripherals, LLC, 712 F.
Supp. 2d 885, 910 (D. Minn. 2010) (emphasis added).
for its briefing—if Defendants cannot add pages to their claim construction brief, then they will
attempt to file two separate briefs.
Second, the Court’s pre-stay schedule did not provide for an early indefiniteness motion.
In fact, Defendants never requested an early deadline for filing of an indefiniteness motion even
though the purported basis for Defendants’ motion existed before the stay. Defendants fail to
explain why an early summary judgment motion is justified now when they were prepared to file
the motion as part of their claim construction brief before the stay.
Third, as Defendants previously told the Court, the indefiniteness issue goes hand-in-hand
with claim construction. Id. at 35. Now, however, Defendants request briefing on the
indefiniteness issue months before the claim construction briefing—despite the fact that when
Interval suggested starting claim construction briefing at the same time as Defendants suggest it
file the motion for summary judgment on indefiniteness, Defendants objected. In compromise,
Interval agreed to delay the opening claim construction briefs until October, but Defendants now
want to keep an early date for summary judgment. Such a proposal makes no sense and is unfair.
See Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (“By
finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord
respect to the statutory presumption of patent validity[.]” (citation omitted) (emphasis added)). If
Defendants want the motion for summary judgment due in August, then Opening Claim
Construction briefs should be due the same date and the entire schedule (including the claim
construction hearing and the trial date) should be moved forward by two months.
Dated: July 10, 2012
By: /s/ Mark P. Walters
Mark P. Walters, WSBA No. 30819
FROMMER LAWRENCE & HAUG LLP
[address telephone, email]
As Whip for Defendants’ Counsel
By: /s/ Justin A. Nelson
Justin A. Nelson, WSBA No. 31864
SUSMAN GODFREY LLP
[address telephone email]
As Whip for Plaintiff’s Counsel
CERTIFICATE OF SERVICE
I hereby certify that on July 10, 2012, I electronically filed the foregoing with the Clerk of
the Court using the CM/ECF system which will send notification of such filing to the following
counsel of record:
Attorneys for AOL, Inc.
Attorneys for Apple, Inc.
Attorneys for Google, Inc.
Attorneys for Yahoo! Inc.
Richard S.J. Hung
By: /s/ Jami Grounds