Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page1 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Mark W. Good (SBN 218809) Benedict OMahoney (SBN 152447 TERRA Law LLP 117 Park Avenue, Third Floor San Jose, California 95113 Tel: (408) 299-1200 Fax: (408) 998-4895 Email: mgood@terra-law.com Email: bomahoney@terra-law.com Edward W. Goldstein (TX Bar No. 08099500) Alisa A. Lipski (TX Bar No. 24041345) Jody M. Goldstein (TX Bar No. 24002153) Goldstein & Lipski PLLC 1177 West Loop South, Suite 400 Houston, TX 77027 Tel: 713-877-1515 Fax: 713-877-1737 Email: egoldstein@gliplaw.com Email: alipski@gliplaw.com Email: jgoldstein@gliplaw.com Attorneys for Plaintiff EIT Holdings LLC

Heidi L. Keefe Cooley LLP Five Palo Alto Square 3000 El Camino Real Palo Alto, CA 94306-2155 Tel: (650) 843-5000 Fax: (650) 849-7400 Email: hkeefe@cooley.com Attorney for Defendant BitTorrent, Inc. Michael S. Dowler Park Vaughan Fleming Dowler, LLP 5847 San Felipe, Suite 1700 Houston, TX 77057 Tel: (713) 821-1450 Fax: (713) 821-1401 Email: mike@parklegal.com Hoyt A. Fleming, III Park Vaughan Fleming & Dowler, LLP P.O. Box 3045 Boise, ID 83703 Tel: (208) 336-5237 Email: hoyt@parklegal.com Attorneys for Kontiki, Inc.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION TRANZ-SEND BROADCASTING NETWORK, INC. Plaintiff, v. BITTORRENT, INC., et al., Defendants.
1

Civil Action No.: 3:11-CV-02917-WHA JOINT CASE MANAGEMENT STATEMENT Date: Time: Location: Judge: October 6, 2011 11:00 a.m. Courtroom 9, 19th Floor William H. Alsup

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page2 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19

Pursuant to Federal Rules of Civil Procedure 26(f), Civil Local Rule 16-10, Patent Local Rule 2-1, the Standing Order for All Judges of the Northern District of California for Contents of Joint Case Management Statement, the Courts Notice Scheduling Initial Case Management Conference or Reassignment (Docket No. 18), Plaintiff, Tranz-Send Broadcasting Network, Inc. (Tranz-Send) and Defendants, BitTorrent, Inc. (BitTorrent) and Kontiki, Inc. (Kontiki) submit this Status Conference Report and Proposed Schedule. 1. Jurisdiction and Service:

This Court has jurisdiction over Tranz-Sends claims under 28 U.S.C. 1338(a) because this case involves a claim of patent infringement under 35 U.S.C. 271. Venue is proper in this court under 28 U.S.C. 1391(b-c) and 1400(b). BitTorrent answered the complaint on September 12, 2011 (Docket No. 28). Kontiki answered the complaint on July 1, 2011 (Docket No. 6). 2. Facts:

This is a patent infringement case relating to U.S. Patent No.7,301,944 (the 944 patent). The 944 patent issued on November 27, 2007, and is entitled Media File Distribution With Adaptive Transmission Protocols. The 944 patent is directed to a software application for sending large amounts of data over networks. 3. Legal Issues:

The key legal issues concern the following subjects: a. Tranz-Sends allegations that the 944 patent is valid, enforceable, and infringed by Defendants

under 35 U.S.C. 282, et seq., and that Tranz-Send is entitled to damages as a result of such alleged 20 21 22 23 24 25 26 27 28 infringement; and b. Defendants allegations that the 944 patent in invalid, unenforceable, and not infringed under

35 U.S.C. 101, et seq., that Tranz-Send is not entitled to damages, and that Defendants are entitled to their costs and attorney fees. 4. Motions:

There are no pending motions at this time. 5. Amendment of Pleadings:

The parties do not anticipate amending the pleadings at this time.

2

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page3 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19

6.

Evidence Preservation:

The parties hereby represent that they have taken reasonable efforts to preserve all pertinent evidence in this case, including electronic data and materials. 7. Disclosures:

The parties exchanged initial disclosures pursuant to Fed. R. Civ. P. 26(a) on September 22, 2011. The parties each reserve the right to supplement such disclosures as discovery continues. 8. Discovery:

Kontiki has served a first set of interrogatories on Tranz-Send. No other discovery has been served by any of the parties. The parties anticipate discovery on the following: Tranz-Sends cause of action for patent infringement, including but not limited to: (i) the technical details of the Accused Products; (ii) the number of Accused Products manufactured, sold, offered for sale, leased and the corresponding revenue generated therefrom; (iii) Defendants affirmative defenses including invalidity, noninfringement, and unenforceability of the patent in suit; (iv) Defendants interaction and communication with Tranz-Send; and (v) Tranz-Sends pre-filing investigation under Fed. R. Civ. P. 11. Initial Discovery plan (subject to further modification): a. b. Rule 26(a) disclosures: September 22, 2011. Discovery is expected to cover the factual and legal issues identified above.

The parties proposed discovery schedule is set forth below. c. 20 21 22 23 24 25 26 27 28

3

Production of ESI:

If the parties intend to employ an electronic search to locate relevant electronic documents, the parties shall reach agreement as to the method of searching, and the words, terms, and phrases to be searched. The parties also shall reach agreement as to the timing and conditions of any additional searches which may become necessary in the normal course of discovery. To minimize the expense, the parties may consider limiting the scope of the electronic search (e.g., time frames, fields, document types). After receiving requests for document production, the parties shall search their documents and produce responsive electronic documents in accordance with Fed. R. Civ. P. 26(b)(2).

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page4 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19

Electronic documents shall be produced to the requesting party as either image files (e.g., PDF or TIFF) or in their native format. When the image file is produced, the producing party must preserve the integrity of the electronic documents contents, i.e., the original formatting of the document. After initial production in image file format is complete, a party must demonstrate particularized need for production of electronic documents in their native format. The parties further propose not to produce metadata, but that each party expressly reserves the right to specific and focused requests for metadata or native file formats for particular documents, and each party expressly reserves the right to object to such requests. d. Privilege and trial-preparation material: The parties plan to propose a protective

order that will provide for post-production assertion of privilege or of production as trial-preparation material. The parties agree that privileged documents created after the date this action was initiated (June 14, 2011) need not be logged on a privilege log. e. Limits on Discovery: The parties agree that each party may serve 25

interrogatories, 50 requests for admissions, excluding requests to authenticate documents, and 75 requests for production. On deposition discovery, the parties agree that each party may take the deposition of the named inventor for a maximum of 10 hours. All party depositions, including those pursuant to Fed. R. Civ. P. 30(b)(6) and party-employees, shall be limited to a total of 50 hours per party; and all third party depositions shall be limited to a total of 70 hours per party. f. The parties are in the process of finalizing a stipulated protective order and will

continue to do so with good faith. 20 21 22 23 24 25 26 27 28 9. Class Actions:

This matter is not a class action. 10. Related Cases:

There are no related cases or proceedings pending. 11. Relief:

Tranz-Send contends that it is entitled to damages adequate to compensate it for each Defendants alleged infringement. Tranz-Send also contends that, in accordance with the patent laws, it is entitled to at least a reasonable royalty for each Defendants alleged infringement of the claimed inventions.
4

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page5 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19

Tranz-Send contends that the determination of a reasonable royalty cannot be made at this time. In addition, Tranz-Send contends that it is entitled to interest and cost as determined by the Court. Defendants contend that the infringement allegations in Tranz-Sends complaint should be dismissed by summary judgment early in the case. Defendants also contend that the asserted claims in the 944 patent are invalid, and that Defendants should be reimbursed for their attorneys fees and costs pursuant at least to 35 U.S.C. 285. 12. Settlement and ADR:

The Parties have agreed to use court-sponsored mediation to be completed by February 10, 2012. 13. Consent to Magistrate Judge For All Purposes:

Tranz-Send agrees to assignment of this case to a United States Magistrate Judge for jury trial. Defendants decline to proceed before a magistrate judge for trial in this case. 14. Other References:

The parties do not believe this case is suitable for reference to binding arbitration, a special master, or the Judicial Panel on Multidistrict Litigation. 15. Narrowing of Issues:

The parties are not aware of any issues that can be narrowed by agreement at this time. However, as stated below, BitTorrent and Kontiki believe that certain issues can be prioritized and expedited. 16. Expedited Schedule:

Tranz-Send contends that this is not the type of case that can be handled on an expedited basis with streamlined procedures. BitTorrent and Kontiki believe that this case can be resolved by an early non20 21 22 23 24 25 26 27 28
5

infringement summary judgment motion as set forth in the following section. 17. Scheduling:

The parties propose the schedule outlined below.

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page6 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Event Deadline for Plaintiffs Disclosure of Asserted Claims and Infringement Contentions (Patent L.R. 3-1) and Related Documents (Patent L.R. 3-2). Deadline to Amend Pleadings Deadline for Defendants Invalidity Contentions (Patent L.R. 3-3) and Related Document Production (Patent L.R. 3-4)

Date October 20, 2011

December 5, 2011

Deadline for the Exchange of December 19, 2011 Proposed Terms and Claim Elements for Construction (Patent L.R. 4-1(a)) Deadline for the Exchange of Preliminary Proposed Claim Construction and Extrinsic Evidence (Patent L.R. 4-2) File Joint Claim Construction Statement (Patent L.R. 4-3) limited to 10 terms unless leave of court granted. Completion of Claim Construction Discovery (Patent L.R. 4-4). Deadline for Plaintiffs Opening Claim Construction Brief (Patent L.R. 4-5(a)) Deadline for Defendants Opposing Claim Construction Brief, (Patent L.R. 4-5(b)) Deadline for Plaintiffs Reply Claim Construction Brief (Patent L.R. 4-5(c)). January 9, 2012

February 3, 2012

March 5, 2012

March 19, 2012

April 2, 2012

April 9, 2012

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page7 of 11

1 2 3 4 5

Event Tutorial and Claim Construction Hearing Advice of Counsel Disclosure Close of Fact Discovery

Date April 23, 2012 or at the Courts convenience 50 Days after service of the Courts Claim Construction Ruling 90 days after service of the Courts Claim Construction Ruling 30 days after the Close of Fact Discovery 14 days after service of Opening Expert Reports 30 days after service of Rebuttal Expert Reports 30 days after service of Rebuttal Expert Reports 60 days after service of Rebuttal Expert Reports 30 days after Courts ruling on the last dispositive motion 14 days after Final Pre-Trial Conference

6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Trial Last Day for Dispositive Motion Hearing Final Pre-Trial Conference Designation of Opening Experts with Reports. Designation of Rebuttal Experts with Reports. Expert Discovery Cutoff Deadline for filing discovery motions

Defendants agree with Tranz-Sends proposed schedule, which is consistent with the timeline established by the Patent Local Rules. However, Defendants also propose the following procedure to prioritize discovery on infringement issues and the early filing of motions for summary judgment of noninfringement/infringement. Defendants believe it is in the interests of all parties to prioritize discovery to focus first on the design and operation of the accused products, with an eye toward early motions for summary judgment of noninfringement/infringement. To accomplish this objective, Defendants have proposed the following to Tranz-Send. (1) BitTorrent will produce specifications of the BitTorrent protocol and relevant source code regarding the accused products by October 10, 2011. Source code will be produced on a standalone

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page8 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19

non-networked computer in Cooleys Palo Alto office pursuant to terms of a stipulated protective order and in the interim the Protective Order authorized under Patent Local Rule 2-2. (2) On September 15, 2011, Kontiki hand-delivered to Tranz-Sends counsel a standalone computer containing all of the source code for Kontikis accused products. Kontikis production was accompanied by a letter promising to provide Tranz-Send with whatever else it needed to answer any question it had regarding Kontikis alleged infringement. Kontiki will produce user-documentation for Kontikis accused products before October 6, 2011. (3) BitTorrent will produce a 30(b)(6) witness on the BitTorrent protocol and operation of the accused products for two days by the end of October 2011. (4) Kontiki will also produce a 30(b)(6) witness on the Kontiki protocol and operation of the accused products for two days by the end of October 2011. (5) The parties will file their respective motions for summary judgment of noninfringement/infringement on November 10, 2011, and the motion will be heard on December 15, 2011 or on the first available date on the Court's calendar. The parties request the Court to perform any claim constructions necessary to resolve summary judgment motions as part of the hearing of the motion itself. (6) The parties agree that they will not present any argument based on Rule 56(d) of the Federal Rules of Civil Procedure in opposition to a summary judgment motion of noninfringement/infringement. Tranz-Send believes a full claim construction briefing and oral argument schedule is necessary

20 21 22 23 24 25 26 27 28

before any determination of infringement/non-infringement can be made. Tranz-Send, therefore, believes the Court should set a schedule in accordance with the Patent Local Rules, as detailed above.

18.

Trial: Tranz-Send anticipates that this case will be tried by jury and the anticipated length of the trial

is approximately 5-7 days. At this time, Tranz-Send does not believe that it is feasible or desirable to bifurcate issues for trial.

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page9 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Rules. 19 20. 2011.)

BitTorrent and Kontiki believe that this case should be resolved by early summary judgment. If this case proceeds to trial, BitTorrent anticipates that this case will be tried by a jury and the anticipated length of trial is approximately 4 days, and Kontiki anticipates that this case will be tried by a jury and the anticipated length of trial is approximately 4 days. Due to the differences between each defendants accused products, BitTorrent and Kontiki believe that trial should be bifurcated between defendants Kontiki and BitTorrent. 19. Disclosure of Non-party Interested Entities or Persons: Tranz-Send has filed its Certification of Interested Entities or Persons. (Docket No. 33 filed on September 29, 2011) Kontiki has filed its Certification of Interested Entities or Persons. (Docket No. 7 filed July 1,

BitTorrent has filed its Certification of Interested Entities or Persons. (Docket No. 26 filed September 8, 2011.) Other Matters:

ADDITIONAL INFORMATION PURSUANT TO PATENT LOCAL RULE 2-1 a. Proposed modifications to the obligations or deadlines set forth in the Patent Local Rules. The parties do not propose any modifications to the deadlines outlined in the Patent Local

b. 20 21 22 23 24 25 26 27 28

The format of the Claim Construction Hearing, including whether the Court will hear live testimony, the order of presentation, and the estimated length of the hearing.

The parties believe that determination of the order of presentation and estimated length of the Claim Construction hearing would be premature at this time, but would leave to the Courts discretion whether a Claim Construction Prehearing Conference is necessary or appropriate in this case. c. The scope and timing of any claim construction discovery

At this time, the parties do not anticipate the need for limiting the scope of discovery relating to claim construction.
9

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page10 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

d.

How the parties intend to educate the court on the technology at issue.

The parties propose providing a technology tutorial on the same date as the Claim Construction Hearing if the Court deems such a tutorial necessary. Dated: September 29, 2011

Counsel for Plaintiff Tranz-Send Broadcasting Network, Inc.: By: _/s/ Edward W. Goldstein____ Edward W. Goldstein (TX Bar No. 08099500) Alisa A. Lipski (TX Bar No. 24041345) Jody M. Goldstein (TX Bar No. 24002153) GOLDSTEIN & LIPSKI, P.L.L.C. 1177 West Loop South, Suite 400 Houston, TX 77027 Tel: 713-877-1515 Fax: 713-877-1737 Email: egoldstein@gliplaw.com Email: alipski@gliplaw.com Email: jgoldstein@gliplaw.com Benedict OMahoney (SBN 152447) TERRA Law LLP 177 Park Avenue, Third Floor San Jose, California 95113 Tel: (408) 299-1200 Fax: (408) 998-4895 Email: bomahoney@terra-law.com

Counsel for Defendant BitTorrent, Inc.: By: /s/ Heidi L.Keefe Heidi L. Keefe Cooley LLP Five Palo Alto Square 3000 El Camino Real Palo Alto, CA 94306-2155 Tel: (650) 843-5000 Fax: (650) 849-7400 Email: hkeefe@cooley.com Counsel for Defendant Kontiki, Inc.: By: /s/ Michael S. Dowler Michael S. Dowler Park Vaughan Fleming Dowler, LLP 5847 San Felipe, Suite 1700 Houston, TX 77057 Tel: (713) 821-1450 Fax: (713) 821-1401 Email: mike@parklegal.com Hoyt A. Fleming, III Park Vaughan Fleming & Dowler, LLP P.O. Box 3045 Boise, ID 83703 Tel: (208) 336-5237 Email: hoyt@parklegal.com

10

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA

Case3:11-cv-02917-WHA Document34

Filed09/29/11 Page11 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Dated: September 29, 2011

Attestation of Concurrence I, Benedict OMahoney, as the ECF user and filer of this document, attest that concurrence in the filing of this document has been obtained from each of the above signatories.

_/s/ Edward W. Goldstein____ Counsel for Plaintiff Tranz-Send Broadcasting Network, Inc.

CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Courts CM/ECF system on September 29, 2011, or, if not yet registered with the Court's CM/ECF system, via electronic mail pursuant to Fed.R.Civ.P. 5(b)(2)(E). Any other counsel of record will be served by first class U.S. Mail. By: _/s/ Edward W. Goldstein____ Edward W. Goldstein

11

JOINT CASE MANAGEMENT CONFERENCE STATEMENT Civil Action No. 3:11-cv-02917-WHA