MARA - Joint Rule 16(b) Report

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Case No. 2:14-cv-02962-JAK (JEMx) JOINT RULE 16(b) REPORT

Randall J. Sunshine (SBN 137363) [email protected]

Ryan E. Hatch (SBN 235577) [email protected]

Jason L. Haas (SBN 217290) [email protected] LINER LLP 1100 Glendon Avenue, 14th Floor Los Angeles, California 90024.3503 Telephone: (310) 500-3500 Facsimile: (310) 500-3501 Attorneys for Plaintiff SIGNAL IP, INC.

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

SIGNAL IP, INC., a California corporation,

Plaintiff,

vs. NISSAN NORTH AMERICA, INC., a California corporation,

Defendant.

Case No. 2:14-cv-02962-JAK (JEMx) JOINT RULE 16(b) REPORT Date: September 15, 2014 Time: 8:30 a.m. Hon. John A. Kronstadt Trial Date: TBD

Plaintiff Signal IP, Inc., (Plaintiff or Signal) and defendants American

Honda Motor Co., Inc. and Honda of America Mfg., Inc. (collectively Honda),

Nissan North America, Inc. (Nissan), Mitsubishi Motors North America, Inc.

(Mitsubishi), Mazda Motor of America, Inc. (Mazda), Subaru of America, Inc.

(Subaru), Kia Motors America, Inc. (Kia), Ford Motor Company (Ford),

BMW of North America, LLC (BMW), Chrysler Group LLC (Chrysler), Volvo

Cars of North America, LLC (Volvo), Jaguar Land Rover North America, LLC

(Jaguar), and Mercedes-Benz USA LLC (MBUSA) (collectively, Defendants)

submit their Joint Rule 16(b) Report pursuant to this Courts June 23, 2014 Order

Case 2:14-cv-02962-JAK-JEM Document 43 Filed 09/05/14 Page 1 of 36 Page ID #:408

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2 Case No. 2:14-cv-02962-JAK (JEMx) JOINT RULE 16(b) REPORT

Setting Rule 16(b) Scheduling Conference, Federal Rules of Civil Procedure 16 and

26, and the Courts Initial Standing Patent Order.

On August 25, 2014, the parties held a joint conference to address the matters

contained in the aforementioned rules and orders.

a. Statement of the Case i. Plaintiffs Statement

As a preliminary matter, Plaintiff notes for the convenience of the Court that

its portion of the Joint Rule 16(b) Report is the same for actions it has filed.

Plaintiff has filed fourteen actions for patent infringement against Defendants

American Honda Motor Co., Inc. and Honda of America Mfg., Inc. (collectively

Honda), Nissan North America, Inc. (Nissan), Mitsubishi Motors North

America, Inc. (Mitsubishi), Mazda Motor of America, Inc. (Mazda), Subaru of

America, Inc. (Subaru), Kia Motors America, Inc. (KMA), Ford Motor

Company (Ford), BMW of North America, LLC (BMWNA), Mercedes-Benz

USA, LLC (Mercedes), Chrysler Group LLC (Chrysler), Volvo Cars of North

America, LLC (Volvo), Volkswagen Group of America (VW) and Bentley

Motors, Inc. (Bentley), Jaguar Land Rover North America, LLC (Jaguar), and

Porsche Cars North America, Inc. (Porsche) (individually Defendant, and

collectively Defendants).

These actions have not yet been consolidated, and are pending as the

following related cases: Signal IP, Inc. v. American Honda Motor Co., Inc. (14-cv-

02454), Signal IP, Inc. v. Kia Motors America, Inc. (14-cv-02457); Signal IP, Inc. v.

Mazda Motor of America, Inc. (14-cv-00491); Signal IP, Inc. v. Mazda Motor of

America, Inc. (14-cv-02459); Signal IP, Inc. v. Mitsubishi Motors North America,

Inc. (14-cv-00497); Signal IP, Inc. v. Mitsubishi Motors North America, Inc. (14-cv-

02462); Signal IP, Inc. v. Nissan North America, Inc. (14-cv-02962); Signal IP, Inc.

v. Subaru of America, Inc. (14-cv-02963); Signal IP, Inc. v. BMW of North America,


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LLC (14-cv-03111); Signal IP, Inc. v. Fiat USA, Inc. (14-cv-03105); Signal IP, Inc.

v. Ford Motor Company (14-cv-03106); Signal IP, Inc. v. Jaguar Land Rover North

America, LLC (14-cv-03108); Signal IP, Inc. v. Mercedes-Benz USA, LLC (2-14-cv-

03109); Signal IP, Inc. v. Porsche Cars North America, Inc. (2-14-cv-03114);

Signal IP, Inc. v. Volkswagen Group of America, Inc. (2-14-cv-03113); Signal IP,

Inc. v. Volvo Cars of North America, LLC (14-cv-03107) (collectively the Signal

Actions).

To streamline the Signal Actions, and to avoid duplication by the parties and

the Court, Plaintiff believes it is appropriate to consolidate the Signal Actions for

claim construction and other pre-trial matters. A later determination can be made

whether one of more of the Signal Actions, or common issues therein, should be

tried together.

Plaintiff asserts claims for infringement of seven patents generally directed to

automotive technologies (collectively, the Signal Patents):

U.S. Pat No. 5,714,927 (the 927 Patent), entitled Method of improving zone of coverage response of automotive radar;

U.S. Pat No. 5,732,375 (the 375 Patent), entitled Method of inhibiting or allowing airbag deployment;

U.S. Pat No. 6,434,486 (the 486 Patent), entitled Technique for limiting the range of an object sensing system in a vehicle;

U.S. Pat No. 6,775,601 (the 601 Patent), entitled Method and control system for controlling propulsion in a hybrid vehicle;

U.S. Pat No. 6,012,007 (the 007 Patent), entitled Occupant detection method and system for air bag system;

U.S. Pat No. 5,463,374 (the 374 Patent), entitled Method and apparatus for tire pressure monitoring and for shared keyless entry

control; and


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U.S. Pat No. 5,954,775 (the 775 Patent), entitled Dual-rate communication protocol.

For ease of reference, the following table shows the patents asserted against

each Defendant in the Signal Actions:

Patent

Hon

da

Kia

Maz

da

Mits

ubis

hi

Niss

an

Suba

ru

Chr

ysle

r

Ford

Vol

vo

Jagu

ar

Mer

cede

s

BMW

VW

Pors

che

601 Patent X X X X X X X X X X

486 Patent

X X X X X X X X X X X X X X

775 Patent

X X X

375 Patent

X X X X X X X X X

007 Patent

X X X X X X X X X X X X X X

927 Patent

X X X X X X X X X X X X

374 Patent

X X X X X X X

Plaintiff presently asserts a total of 33 claims of the Signal Patents against

Defendants collectively, with a maximum of only eight claims from any single

patent. With only a few exceptions, the asserted claims are the same in each patent

for each accused Defendant.1

ii. Defendants Statement

1 The asserted claims are: 601 Patent, claims 8, 9, 10, 11, 13, 15, and 17; 486 Patent, claims 21, 23, 26, 27, 28, 30, 34, and 35; 775 Patent, claim 6; 375 Patent, claims 1 and 7; 007 Patent, claims 1, 8, 17, 18, 19, 20, 21, and 22; 927 Patent, claims 1, 2, and 6; and 374 Patent, claims 1, 2, and 3. The asserted claims are the same for all Defendants except: in the 486 Patent, claims 23, 30, and 35 are asserted against Mercedes only, claim 27 is not asserted against Mercedes and VWGoA, and claim 34 is not asserted against VWGoA; and in the 007 Patent, claims 9, 18, and 22 are asserted against Mazda only.


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Identical copies of this Joint Report have been filed in each of the Honda,

Kia, Mazda, Mitsubishi, Nissan, Subaru, Chrysler, Ford, Volvo, Jaguar, BMW and

Mercedes actions.2

Plaintiff is a non-practicing entity (NPE) that acquired the asserted patents (or

Signal Patents) from Delphi Automotive PLC, which in turn had acquired at least

some of the patents from its predecessor Delco Electronics. As stated above, the

Plaintiff in these cases has filed fourteen separate lawsuits alleging various

combinations of claims from seven largely unrelated patents against a large swath of

the automobile industry.

The technologies in these cases include seat occupant sensing and airbag

deployment, tire pressure monitoring systems and keyless entry systems, vehicle

control systems in the nature of adaptive cruise control, techniques for controlling

blind spot detection, and data bus protocols systems for controlling propulsion in

hybrid vehicles. Aside from the airbag patents, the patents are essentially unrelated.

They have different inventors, different filing dates, and a broad range of issuance

dates ranging from 1995 (19 years ago) to 2004 (10 years ago). If tried together,

they will present a considerable challenge for the jury.

While the Plaintiff in these cases is a NPE, Defendants, in contrast, are direct

competitors to each other, and constitute the United States operations of each

respective automobile manufacturer. Most Defendants if not all have foreign

sister, parent, and subsidiary companies that the Plaintiff has intentionally not

named in its Complaints.

All Defendants assert that they do not infringe any valid claim of the asserted

patents. This is not surprising. Presumably, if the patents had value in the industry,

2 Case Numbers 14-cv-02454; 14-cv-02457; 14-cv-00491; 14-cv-02459; 14-cv-00497; 14-cv-02462; 14-cv-02962; 14-cv-02963; 14-cv-03111; 14-cv-03106; 14-cv-03108; 2-14-cv-03109; 14-cv-03107.


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Delphi would not have let the patents lie dormant for ten to twenty years and then

sold them to the Plaintiff.

Because the asserted patents issued anywhere from 1995 to 2004, there are

significant issues of laches and estoppel in this case whose particular facts will vary

from vehicle to vehicle and accused system to accused system, and thus Defendant

to Defendant.

The Defendants assert that damages must be limited in accordance with the

provisions of 35 U.S.C. Sec. 286 and Sec. 287.

Delphi, the original assignee on some of the asserted patents, is the supplier of

the accused technology to some of the defendants in these cases. As such, at least

some of the defendants are licensed, and the relevant allegations need to be dropped

from the case. Other licensing defenses are known to exist for at least some of the

defendants, and Defendants expect that others may become known via discovery.

Similarly, some Defendants have also counter-claimed for declarations of

non-infringement and invalidity, including: Mitsubishi, BMW of North America,

LLC, Volvo.

Additionally, some Defendants are also pursuing claims of unenforceability

of the asserted patents, including unenforceability by way of inequitable conduct.

Various parties may file for Inter Partes Review and/or Reexamination of at

least some claims of the asserted patents before the United States Patent Office. As

such, the number of proceedings related to these cases may multiply in coming

months.

The Defendants in the related cases will attempt to work together where

possible to facilitate the management of all cases by the Court. However, the

Defendants in the various related cases are all direct competitors, and have

significant concerns about confidentiality and potential conflicts of interest.

The Defendants have various foreign and domestic suppliers for the


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automotive components associated with Plaintiff's allegations of infringement. It is

possible that some suppliers of accused components or systems may seek to join in

one or more of the fourteen actions filed by plaintiff, or that one or more defendants

could seek to have suppliers appear and defend their accused products.

There may be overlap in the Defendants' suppliers of various components, but

it is too early in the case to determine if that overlap is significant or material in

light of Plaintiffs vague infringement allegations.

Moreover, because the Defendants' operations are located in a variety of

jurisdictions, some Defendants may seek transfer of part or all of their respective

case to different jurisdictions. Indeed, Ford has already filed such a motion.

Depending on the status of review proceedings before the Patent Office, some

Defendants may also seek a stay of proceedings.

b. Subject Matter Jurisdiction i. Plaintiffs Statement

These Actions arises under the patent laws of the United States, Title 35 of

the United States Code. This Court has subject matter jurisdiction pursuant to 28

U.S.C. 1331 and 1338(a).

ii. Defendants Statement Defendants do not contest that this Court has subject matter jurisdiction over

all patent-related claims in these cases.

c. Legal Issues i. Plaintiffs Statement

Principal substantive issues. The principal substantive legal issues in the

Signal Actions are the alleged infringement of the Signal Patents, the alleged

invalidity of the Signal Patents in view of the relevant prior art, and the monetary or

other relief to which Plaintiff is entitled. The meaning and scope of the terms used

in the asserted patent claims are germane to these legal issues.


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All but three defendants (Nissan, Mercedes and Audi) have filed answers. All

defendants who have answered assert defenses of failure to state a claim, non-

infringement, and invalidity. The three defendants who have asserted counterclaims

(Mitsubishi, BMW, and Volvo) assert counterclaims for invalidity and non-

infringement.

Other affirmative defenses include failure to state a claim, prosecution history

/ argument estoppel / prosecution disclaimer, equitable defenses (waiver, implied

waiver, estoppel, laches, acquiescence, implied license, unclean hands), limitation

on damages, no injunctive relief / adequate remedy at law, first sale / patent

exhaustion, express license, license, release, non-assertion agreement, outside

territorial reach of patent laws, patent misuse, costs barred under 288, and no

attorneys fees under 285.

Principal substantive procedural issues. The principal procedural issues for

the Court to consider at this stage are whether the Signal Actions should be

consolidated for claim construction and other pre-trial matters, and whether the

action against Ford should be transferred to the Eastern District of Michigan.

ii. Defendants Statement Claim construction is a key legal issue in these cases, and Defendants believe

it will be dispositive of infringement and/or invalidity for many of the asserted

claims and/or accused products.

Because of the importance of claim construction and the amount of effort that

just construing the claims alone will take for the parties and the Court to complete,

the Defendants prefer to limit discovery at the outset of the case to claim

construction and core technical documents during the initial phase of claim

construction. The remaining fact discovery would commence on the date of entry of

the claim construction order.3 Because Defendants believe that the claim 3 This approach was adopted by Judge Pfaelzer in Diamond Coating Techs,


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construction process will have the effect of eliminating certain patents, claims, or

accused products from the case, this phased discovery approach will be more

efficient for all of the parties and non-parties from which discovery may be sought

(including inventors and suppliers).

After the claim construction order, the parties would then undertake fact

discovery relating to the issues of infringement, invalidity, and damages.

Some Defendants also believe that inequitable conduct may become a

significant issue in this case as discovery proceeds. Defendants may seek leave to

amend their affirmative defenses if warranted by new information produced in

discovery.

Some defendants have license defenses based on pre-existing licenses under

one or more of the patents in suit. Such defendants may seek to amend their

affirmative defenses if warranted by new information. License defenses based on

licenses granted to third-party suppliers may also result in intervention of non-party

suppliers in one or more of the actions.

Finally, Defendants assert that damages in this case should be limited due to

laches, estoppel, and/or the provisions of 35 U.S.C. 286 and 287. The earliest of

the asserted patents issued 19 years ago. Even the latest issued 10 years ago. The

law presents substantial limits on the Plaintiff's ability to recover for infringement of

any valid patent claims based on the delay in bringing suit.

From an evidentiary perspective, Defendants believe that a large amount of

non-party discovery will be required in this case. Investigation is ongoing, but

Plaintiff's infringement contentions implicate a number of automotive systems

provided by non-party suppliers and manufacturers. Many of these non-parties may

be foreign entities.

LLC v. Hyundai Motor Am., No. 8:13-cv-01481 (C.D. Cal.) (see Order attached hereto as Exhibit B).


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Additionally, Defendants are competitors in the market and have substantial

concern about the risk of inadvertent disclosure of their confidential and trade secret

information to each other. The Defendants recognize that the Court has already

entered a Standing Protective Order, but additional protection may be needed for

sensitive information, for example, sales and pricing data, trade secrets, and source

code.

d. Parties, and Non-Party Witnesses i. Plaintiffs Statement

Marathon Patent Group, Inc. is the parent corporation of Plaintiff Signal IP,

Inc. and owns more than 10% of the outstanding stock of Signal IP. No other

publicly traded company owns more than 10% of the outstanding stock in Signal IP.

In its Initial Disclosures, Plaintiff identified the following parties and non-

party witnesses on the main issues in the case: individuals with knowledge regarding

the accused instrumentalities, the named inventors of the Signal Patents, its

corporate representative Doug Croxall, and Signals witnesses identified by

Defendants in their respective disclosures.

ii. Defendants Statement The Defendants verify that they have identified all subsidiaries, parents, and

affiliates in their Certificates of Interested Parties.

The Defendants have also identified all presently known witnesses in their

Rule 26(a) disclosures.

e. Damages i. Plaintiffs Statement

Based on currently-available information, Plaintiffs preliminary damages

estimates are as follows:

Defendant Preliminary damages estimate

Honda $201-223M


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Defendant Preliminary damages estimate

Kia $133-148M

Mazda $63-70M

Mitsubishi $6-7M

Nissan $151-167M

Subaru $28-31M

Chrysler $154-170M

Ford $304-336M

Volvo $13-14M

Jaguar $20-22M

Mercedes $120-133M

BMW $104-115M

VW $132-146M

Porsche $23-25M

Total $1.4-$1.6B

These preliminary estimates are subject to revision based on additional

information, including information regarding sales, revenues, use of accused

features, use of potentially licensed products, or other relevant information.

ii. Defendants Statement The Defendants assert that Plaintiff is not entitled to recover damages, as


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Defendants are not liable.

Although the Defendants assert that Plaintiff's infringement contentions are so

deficient that it is impossible for Defendants to estimate potential exposure at this

time, the estimates above are self-serving and grossly excessive. For several

defendants, the amounts above appear to include damages based upon sale of

licensed vehicles that should not be in the case. Moreover, for some defendants

many of the accused vehicles do not contain the accused technology and also should

be dismissed from this action. These examples of over-counting could amount to a

reduction as great as 95% or more of the damages estimates provided above for

certain defendants.

f. Insurance i. Plaintiffs Statement

Plaintiff is unaware of any insurance coverage for the claims and

counterclaims asserted in the Signal Actions.

ii. Defendants Statement The following Defendants assert that they are unaware of any insurance

coverage for this litigation at this time:

Mazda, Subaru, Mitsubishi, BMW of North America, LLC, Nissan,

Jaguar, Ford, Chrysler, Honda, Kia, Volvo, MBUSA.

g. Motions i. Plaintiffs Statement

There are currently four motions pending in the Signal Actions, all filed by

defendants: (1) Fords motion to transfer to the United States District Court for the

Eastern District of Michigan (Case No. 14-03106, Dkt. No. 36); (2) Mercedes

partial motion to dismiss portions of Plaintiffs claims for direct and indirect

infringement (Case No. 14-03109, Dkt. No. 34); (3) Nissans motion to dismiss

Plaintiffs claims for willful infringement (Case No. 14-03113, Dkt. No. 35); and (4)


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VWs motion to dismiss Plaintiffs claims for willful infringement (Case No. 14-

03113, Dkt. No. 35). Plaintiff opposes these motions.

At this time, Plaintiff does not anticipate filing any motions seeking to add

other parties or claims, or filing any amended pleadings.

ii. Defendants Statement In addition to the motions referenced in Plaintiffs Statement, above,

Defendants assert that they anticipate filing motions for summary judgment of non-

infringement for at least some and likely all of the asserted claims, depending on the

Court's claim construction. Defendants may also file motions for summary judgment

of invalidity.

Some Defendants are anticipating filing a motion for transfer of venue in

addition to or in conjunction with Ford's motion.

As set forth above, some Defendants may move to amend their pleadings to

include inequitable conduct and other defenses if circumstances warrant.

Some Defendants are also considering filing petitions for Review and/or

Reexamination of the asserted patents by the United States Patent and Trademark

Office. They may, therefore, move to stay these cases.

Some defendants may seek to implead suppliers of accused systems.

h. Manual for Complex Litigation i. Plaintiffs Statement

Plaintiff believes many of the procedures discussed in the Manual for

Complex Litigation, Fourth (MCL, 4th) are relevant to the Signal Actions and

should be utilized, including:

Designating a single location (i.e. this District) for storage of source code, with a common data format and common review tools ( 11.444, 11.423)

(See infra, Section (s));

Designation of liaison counsel to handle joint submissions,


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communication, service, or other issues common among Defendants (

10.221, 11.12);

Designation of lead case for common filings ( 20.11); Use of common discovery requests ( 11.464, 11.423) (See infra, Section

(j));

Coordination of depositions on common witnesses to avoid cumulative or duplicative depositions ( 11.455) (See infra, Section (j));

Phasing discovery by groups of patents and defendants ( 11.422) (See infra, Section (i) and Exhibit A);

Need for discovery on non-parties such as suppliers ( 11.447); Potential need for foreign discovery ( 11.494) (See infra, Section (s)); and Conveyance of settlement offers to clients ( 13.24) (See infra, Section

(n)).

ii. Defendants Statement Defendants are committed to working together to reduce the complexity of

this case for the Court. To that end, the Defendants are willing to consider the

Manual for Complex Litigation as a guideline in these cases. However, because the

Defendants are direct competitors with significant confidentiality concerns and

potential conflicts of interest, Defendants cannot agree to appoint individual

attorneys to represent all Defendants, to permit common depositories for

confidential business information produced in the course of discovery, nor can

Defendants agree to consolidate seemingly common issues like claim construction

without careful prior consideration.

On the specific selected portions of the MCL that plaintiff addresses above,

Defendants cannot support Plaintiffs proposal with regard to source code

production. At this stage of the case, and in light of Plaintiffs insufficient

infringement contentions, Defendants are not convinced that production of source


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code is even necessary in this case. At very least, Plaintiff has yet to demonstrate a

need for such burdensome discovery. In most instances, Defendants do not know

the specific products or functionality that Plaintiff is accusing, and it is therefore

impossible to know what, if any, source code may be relevant to this case.

Moreover, Defendants expect that to the extent relevant source code does exist, it is

most likely to reside with third parties outside Defendants control. Defendants

therefore propose that any decisions on the specific procedural aspects of source

code production be postponed until after the claim construction phase of the case,

and only then if there is a real, demonstrated need for source code production.

If source code production becomes necessary, Defendants would work with

Plaintiff on a Defendant-by-Defendant basis to explore available production

procedures that may include production of source code in the offices of each

Defendants counsel, or at the source code suppliers facilities, subject of course to

client and non-party confidentiality restrictions that are likely to bind the production

of any source code, recognizing that to the extent that source code resides with non-

parties, Defendants expect that they will not be in a position to control the

production of such code..

Defendants likewise cannot support the liaison counsel concept for

confidentiality reasons. Defendants also disagree that phasing of discovery by

patent will be efficient or useful, but would agree (as explained above) to the

phasing of discovery to claim construction and core technical documents separate

and before the remaining fact discovery.

i. Status of Discovery i. Plaintiffs Statement

The parties have exchanged Initial Disclosures on or before August 4, 2014.

Other than the disclosures required by the Courts Standing Patent Rules, no other

formal discovery has yet been pursued by any party.


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ii. Defendants Statement Plaintiffs have provided in initial infringement contentions to Defendants, and

the parties have disclosed limited information for purposes of discussing potential

settlement. At the outset, Defendants assert that Plaintiff's infringement contentions

are grossly deficient.

j. Discovery Plan i. Plaintiffs Statement

Plaintiff objects to any proposal that discovery be limited at the outset of the

case to claim construction and core technical documents. This would cause

unnecessary delay and prevent prompt, early discovery that the Court encourages.

Plaintiff also objects to any proposal that would limit discovery of source

code or other technical information. The Courts Standing Patent Rule 2.6.1

provides for automatic production of source code and other technical materials, and

discovery of this information is important and should not be limited or precluded in

any way.

Subject matter of discovery. Plaintiff believes discovery, including requests

for production, interrogatories, requests for admission, and depositions will be

necessary on at least the following topics: (1) the inventions disclosed in the Signal

Patents; (2) design, development and functionality of the accused instrumentalities;

(3) revenue, sales, and profit information relating to the accused instrumentalities;

(4) use of the accused instrumentalities; (5) alleged prior art relating to the Signal

Patents; (6) Defendants affirmative defenses and counterclaims; and (7) issues

relating to the calculation of damages and other relief.

Discovery procedures and formats. Plaintiff agrees that [e]arly agreement

between the parties regarding the forms of production will help eliminate waste and

duplication. (MCL 4th, 11.446.) The following procedures and production

formats should be adopted in the Signal Actions.


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General production requests under Federal Rules of Civil Procedure 34 and

45 for ESI shall not include email or other forms of electronic correspondence such

as chat logs or instant messaging (collectively email). For discovery of email, the

Federal Circuits Model Order Regarding E-Discovery in Patent Cases shall

govern.4

Documents shall be produced in Tagged Image File Format (TIFF) format.

TIFF files shall be single page and shall be named with a unique production number

followed by the appropriate file extension. Load files shall be provided to indicate

the location and unitization of the TIFF files. If a document is more than on page,

the unitization of the document and any attachments and/or affixed notes shall be

maintained as they existed in the original document.

Extracted text shall be provided with all records, except for documents that

originated as hard copy or redacted documents. OCR text shall be provided for

hard copy documents. For redacted documents, OCR text shall be provided for the

redacted version. For all document file types not conducive to TIFF review (e.g.,

Excel, PowerPoint, video/audio files, database (Access, etc.)), files in native format

shall be produced, and files shall be named with the production number following

by the appropriate file extension. Standard Concordance load files (DAT and

Opticon) shall be produced.

Discovery may be served by email on all counsel of record per Federal Rule

of Civil Procedure 5(b)(2)(E), and all documents served by other means shall also be

served by email.

Before serving deposition notices and subpoenas, the parties will make every

effort to obtain agreeable deposition dates for attorneys who will take and defend

4 Available at http://memberconnections.com/olc/filelib/LVFC/cpages/9008/Library/Ediscovery%20Model%20Order.pdf.


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each deposition, and for the witness.

Common discovery and discovery limits. In related cases pending before the

same judge, it is best to coordinate discovery plans to avoid conflicts and

duplication. (MCL 4th, 11.455; see also Id. ([J]udges should attempt to

coordinate the depositions of common witnesses and other common discovery); Id.

at 11.464 (The court should consider requiring similarly situated parties to confer

and develop a single or master set of interrogatories to be served on an opposing

party.)).

Plaintiff proposes that the Signal Actions should be consolidated for pre-trial

discovery on common issues. (See MCL 4th, 11.423, 11.464.) Common issues

will likely include prosecution of the Signal Patents, discovery regarding the

inventions and named inventors of the Signal Patents, alleged prior art of the Signal

Patents, prior assignees of the Signal Patents (Delphi Technologies, Inc. or Delco

Electronics Corporation), and discovery regarding plaintiff Signal IP, Inc..

Accordingly, the following discovery limits are appropriate:

Requests for Production. Each side may serve upon each opposing side up to

twenty-five (25) common requests for production, to be answered by each party on

the opposing side. Each party may serve, upon each opposing party, up to ten (10)

individual requests for production, to be answered only by the party upon whom

they were served.

Interrogatories. Each side may serve, upon each opposing side, up to fifteen

(15) common interrogatories, to be answered by each party on the opposing side.

Each party may serve, upon each opposing party, up to ten (10) individual

interrogatories, to be answered only by the party upon whom they were served.

Requests for Admission. Plaintiff may serve up to twenty (20) requests for

admission on each of the Defendants, and each Defendant may serve up to twenty

(20) requests for admission on Plaintiff. This limit should not apply to requests for


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admission solely for the purpose of authenticating a document.

Depositions. Depositions of all common witnesses or parties shall be

coordinated among all parties on each side, and limited on each side to two (2)

consecutive days in the same location, with 7 (seven) hours per day. This limit also

applies to expert witnesses who must provide a written report under Fed. R. Civ. P.

26(a)(2)(B), with the addition that each party on one side that is the subject of a

written report from an expert may take up to an additional two (2) hours of

deposition testimony. Parties in related cases may use depositions taken in one

particular case. (See MCL 4th, 11.455.)

The above limits may be modified by order of the Court, upon showing of

good cause.

ii. Defendants Statement The Defendants, while in general agreement that some amount of common

discovery is efficient, do not agree that each side be limited to the same number of

discovery requests or that each defendant be severely limited in its ability to take

individual written discovery or deposition testimony if these cases are consolidated.

As explained above, the Defendants represent a broad range of competitors in the

automobile market. They have substantially different numbers and types of accused

products, and the facts and circumstances surrounding their affirmative defenses and

counterclaims will vary. The Defendants may make differing business decisions

based on which defenses and counterclaims to actively pursue, and the Defendants

have retained different counsel with differing advice on how best to proceed.

Moreover, Defendants are restrained in their ability to "share" work product due to

their need to protect competitive information, and the potential conflicts of interest

between the Defendants as competing entities. Ultimately, it was the Plaintiff's

choice to file 14 different lawsuits alleging infringement of 7 unrelated patents that

issued anywhere between 1995 to 2004, and Defendants should not bear the


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financial and evidentiary prejudice of having to consolidate discovery where they do

not perceive a collective benefit in doing so. One of the reasons that Congress

enacted the joinder statute, 35 U.S.C. 299 was to end the abusive practice of

treating as co-defendants [in patent infringement actions] parties who make

completely different products and have no relation to each other. See 157 Cong.

Rec. H.4426 (daily ed. June 22, 2011) (statement of Rep. Robert W. Goodlatte (R-

Va.)). Prior to the enactment of the Section 299, some courts had routinely

permitted party joinder under Fed. R. Civ. P. 20(a)(2). See H. Rep. No. 112-98, Part

1, at 55 n.61. And, non-practicing entities, took advantage of this rule to sue

unrelated parties for infringement of the same patent or patents, resulting in limited

opportunities for each defendant to present individualized positions on issues such

as infringement, willfulness, damages, and discovery. The joinder statute aims to

discourage these multi-defendant patent actions by imposing heightened

requirements for party joinder relative to Rule 20(a)(2). Plaintiff, therefore, should

not be permitted to do an end-run around Section 299 by imposing unreasonable

litigation uniformity among competing defendants.

That said, Defendants expect that there may be substantial agreement between

the Defendants on issues of disavowal of claim scope, prosecution history estoppel,

invalidity, inventorship, ownership, inequitable conduct, and other issues that are

primarily based on the Plaintiff's inability to succeed in asserting the patents-in-suit.

Unlike Plaintiff, the Defendants are not in the business of litigation and plan to limit

expenses where reasonably possible.

Defendants intend to depose the named inventors of the asserted patents, and

will address issues including but not limited to (a) conception; (b) reduction to

practice; (c) inventorship; (d) ownership of the asserted patents; (e) claim

construction; (f) prior art; (g) inequitable conduct; (h) document retention; and/or (i)

discovery efforts.


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Defendants intend to depose the Plaintiff and/or Plaintiff's predecessors-in-

interest on issues including but not limited to: (a) conception; (b) reduction to

practice; (c) inventorship; (d) ownership of the asserted patents; (e) claim

construction; (f) prior art; (g) inequitable conduct; (h) laches; (i) estoppel; (j)

licensing; (k) damages; (l) marking; (h) document retention; and/or (i) discovery

efforts.

Additionally, Defendants will depose any experts proposed by Plaintiffs.

Defendants understand Plaintiff has indicated that it has retained certain named

inventors and other individuals as fact and/or expert witnesses, and may require

more than one deposition of certain individuals on issues such as claim construction

and infringement.

Defendants are willing to coordinate scheduling of depositions of inventors to

prevent unnecessary duplicative discovery. However, Defendants to not agree to the

deposition limits proposed by Plaintiff. Defendants reserve the right to request

extended depositions of key witnesses because the individual Defendants are

competitors with different products and different defenses, and may seek different

information during discovery.

Defendants reserve the right to issue requests for admission on factual issues

including, for example, authentication of documents, key dates, and any other

factual issues that Plaintiff can readily admit. The Defendants do not agree to

Plaintiff's proposed limit on the number of requests for admission. Though the

Federal Rules apply no limit on the number of RFAs that any party may serve in a

case, in the spirit of compromise Defendants propose that they be allocated 25

collective RFAs to be shared among Defendants, and 75 RFAs to be used

individually on a per-defendant basis. Defendants further propose that there be no

limit on RFAs served for the purpose of authenticating evidence. Defendants

propose that the Plaintiff be limited to 100 RFAs.


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Defendants anticipate serving document production requests on Plaintiff on

all issues identified for deposition above. The Defendants agree to Plaintiff's

proposed limit on the number of requests for production. Further, the Defendants do

not agree to the Federal Circuit Advisory Committees Model Order Regarding E-

Discovery in Patent Cases. The Defendants do not agree that email discovery will

be either helpful or necessary, and Plaintiff has made no good faith representation

that it will need email discovery in prosecuting its case.

Defendants also anticipate serving interrogatories on Plaintiff on all issues

identified for deposition above. Defendants agree to consolidate interrogatories on

issues that are common to all Defendants, but reserve the right to serve individual

interrogatories on issues unique to each Defendant. The Defendants do not agree to

Plaintiff's proposed limit on the number of interrogatories. Defendants propose that

each side may serve up to 10 common interrogatories to be answered by each party

on the opposing side. Defendants propose that each party also be allotted 15

individual interrogatories to be served on specific parties. Finally, Defendants

propose that each Defendant be allotted three additional interrogatories for each

patent asserted against that Defendant that exceeds two patents. For example, a

party accused of infringing six patents in this case would have 10 common, 15

individual, and 12 additional interrogatories.

Additional third-party depositions and discovery requests may be required on

issues including but not limited to (a) non-infringement; (b) prior art; (c) inequitable

conduct; (d) licensing; and/or (e) damages.

Defendants propose to have two phases of discovery. The first phase will be

limited to claim construction discovery and core technical documents and will end

two week before the parties claim construction briefs are due.

k. Discovery Cut-Off i. Plaintiffs Statement


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Plaintiff has proposed a case schedule that includes a plan for the completion

of discovery. (See Exhibit A.)

ii. Defendants Statement Defendants believe that it is premature to set a discovery cut-off until after the

Court has issued a claim construction Order. Because Defendants expect that this

case may be substantially narrowed via the claim construction process, it appears

appropriate to evaluate the scope of the case and the discovery that remains

necessary after the claim construction Order issues, and to set a date at that time.

In any case, Defendants propose that fact discovery should conclude 14 days

before the date of opening expert reports, and that expert discovery should remain

open until 30 days after rebuttal expert reports are served.

l. Expert Discovery i. Plaintiffs Statement

Plaintiff has proposed a case schedule that includes a plan for expert witness

disclosures and discovery. (See Exhibit A.)

Plaintiffs proposal includes five patent-specific phases for expert reports

related to patent-specific issues (e.g. infringement and invalidity), and three phases

for other expert reports (e.g. damages), in groups of Defendants. Phasing expert

discovery in this manner will results in an orderly and efficient timeline for expert

disclosures. (See MCL 4th, 11.422).

ii. Defendants Statement Defendants oppose the staggered discovery plan proposed by Plaintiffs.

Staggered discovery will multiply litigation expenses for the Defendants and delay

their resolution of the case on dispositive motions. Moreover, it can be expected that

scheduling difficulties will interfere, with many parties being unable to make

witnesses available within narrowly-confined discovery windows as will result from

such phased discovery.


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As before, Defendants suggest that the Court revisit the appropriate expert

discovery limits after it issues a claim construction order and the parties have time to

assess the remaining scope of the case.

m. Dispositive Motions i. Plaintiffs Statement

Plaintiff may file motions for summary judgment or partial summary

judgment on issues including infringement, validity, and Defendants affirmative

defenses.

Plaintiff believes it is appropriate for parties on one side to file a consolidated

motion (including dispositive or non-dispositive motions) when more than one party

is presenting the same issue(s), e.g. invalidity, license, procedural issues, or other

issues that may be common to more than one party.

Counsel shall meet and confer prior to the filing of a motion to determine if a

consolidated motion can be filed and, if so, whether: (i) one consolidated motion can

be filed because the issues are common to all moving parties; (ii) a consolidated

motion as to common issues can be accompanied by one or more shorter,

supplemental motions as to unique issues; or (iii) a motion by one party can be filed

to which other parties join in whole or in part. The purpose of this requirement is to

prevent the filing of overlapping and duplicative materials with the Court. It is also

designed to preclude side-stepping of the page limits on briefs imposed by the Local

Rules and this Courts Standing Orders.

ii. Defendants Statement Defendants strongly object to the additional procedures that Plaintiff seeks to

impose on Defendants regarding consolidated motions. In an effort to reduce

litigation costs, Defendants will meet and confer where appropriate to file

consolidated motions. The Defendants are direct competitors in the market. It

would create both financial and evidentiary prejudice against the Defendants to


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impose procedures that could inhibit their ability to file motions in a timely and

efficient manner in accordance with the strategic and business decisions of each

Defendant.

Defendants contend that non-infringement can be established by dispositive

motion with regard to many, if not all, patents and defendants. It is expected that

several Defendants will move for summary judgment of non-infringement at an

early stage in this case.

Defendants contend that invalidity of certain claims may be established by

dispositive motion. Certain other defenses, such as a license defense, may also be

susceptible to dispositive motions.

n. Settlement i. Plaintiffs Statement

Plaintiff believes that it is in the best interest of the parties to discuss

disposition of the Signal Actions by settlement, and to that end has attempted to

initiate settlement discussions with all Defendants. Only one defendant Porsche

has not agreed to accept or review settlement materials from Plaintiff, pursuant to

Federal Rule of Evidence 408. Parties should be encouraged to at least convey such

offers to their clients. (See MCL 4th, 13.24 (Attorneys have an obligation

promptly to submit nonfrivolous offers of settlement to the client. Breach of this

duty is egregious if counsel will be compensated in whole or in part on the basis of

the number of hours expended in the litigation.).)

Additionally, Plaintiff has held settlement teleconferences pursuant to Rule

408 with ten defendants, and four defendants have not accepted Plaintiffs request to

discuss settlement following receipt of the settlement materials.

Of the suggested ADR procedures in Local Rule 16-15.4, Plaintiff prefers

participation in a private dispute resolution proceeding (Procedure No. 3), but is also

willing to participate in other ADR procedures.


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ii. Defendants Statement The Defendants agree to proceed by ADR Procedure 1, in accordance with

Local Rule 16-15.4. To date, Plaintiff's infringement contentions have been

insufficient to meaningfully evaluate settlement.

o. Trial Estimate i. Plaintiffs Statement

Plaintiff estimates 5 court days for each of the Signal Actions, and anticipates

that it will call between 5 and 8 witnesses. Plaintiff believes it is appropriate to

determine at a later stage whether one of more of the Signal Actions, or common

issues therein, should be tried together.

ii. Defendants Statement As an initial point, each Defendant is entitled to its own trial under the AIA.

As such, the question of consolidated trials is entirely premature at this time.

Further, Defendants expect that with seven patents on vastly different technologies,

many experts, and the potential for significant non-party testimony by videotape, at

least ten trial days are likely necessary for each Defendants trial. Defendants

further suggest, at the appropriate stage, the court consider whether some sort of

bifurcation, staged trials, or other tool be considered to reduce the burden placed on

the jury.

p. Trial Counsel i. Plaintiffs Statement

Plaintiffs trial counsel are Randall J. Sunshine, Ryan E. Hatch, and Jason L.

Haas, all of Liner LLP, 1100 Glendon Avenue, 14th Floor, Los Angeles, California

90024.3503.

ii. Defendants Statement Counsel for American Honda Motor Co. are Ahmed Davis, Ralph Phillips, and

Scott Elengold from the DC office of Fish & Richardson, Robert Hillman of


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Fishs Boston office, and Geoff Biegler of Fishs San Diego office.

Counsel for Kia Motors America, Inc. are Ron Pabis, Mark Davis, Steve

Shahida from Greenberg Traurigs DC office, and Rich Edlin from Greenberg

Traurigs New York Office.

Counsel for Mazda North America, Inc. are Matthew D. Satchwell and Paul R.

Steadman of the Chicago, Illinois office of DLA Piper LLP.

Counsel for Mitsubishi Motors North America are Charles Gorenstein and Ali

Imam of the Falls Church, Virginia office of Birch Stewart Kolasch Birch, LLP.

Counsel for Nissan North America, Inc. are B. Trent Webb, Patrick A. Lujin and

Richard D. Eiszner of the Kansas City, Mo office of Shook, Hardy & Bacon

LLP; Douglas W. Robinson and Gabriel Scott Spooner of the Irvine, California

office of Shook, Hardy & Bacon LLP; and Jamie Kitano of the San Francisco,

California office of Shook, Hardy & Bacon LLP.

Counsel for Subaru of America, Inc. are Matthew D. Satchwell and Paul R.

Steadman of the Chicago, Illinois office of DLA Piper LLP.

Counsel for Chrysler Group, LLC are Frank C. Cimino and Megan S.

Woodworth of the Washington DC office of Dickstein Shapiro LLC and Larry

LaPorte of the Los Angeles, California office of Dickstein Shapiro, LLP.

Counsel for BMW of North America, LLC are Joseph P. Lavelle and Andrew N.

Stein of the Washington D.C. office of DLA Piper LLP (US).

Counsel for Ford Motor Company are John LeRoy, Frank Angileri, Linda

Mettes and Chris Smith of the Southfield, Michigan office of Brooks Kushman.

Counsel for Jaguar Land Rover North America are Matthew J. Moore, Clement

J. Naples, Lisa K. Nguyen, and Jason M. Garr of the Washington, D.C., New

York and Silicon Valley offices of Latham & Watkins LLP.

Counsel for Volvo Cars of North America, LLC are David T. Pollock and Tracy

Zurzolo Quinn of the San Francisco and Philadelphia offices of Reed Smith


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LLP.

Counsel for Mercedes-Benz USA LLC are Scott W. Doyle and Jonathan R.

DeFosse of the Washington, D.C. office of Shearman & Sterling LLP; and Don

A. Hernandez and Cristina Hernandez of the Pasadena Office of Gonzalez,

Saggio, and Harlan LLP.

q. Independent Expert or Master i. Plaintiffs Statement

Plaintiff does not believe the Court should appoint a master or independent

scientific expert.

ii. Defendants Statement Defendants agree that it does not appear at this time that court-appointed,

independent scientific experts are necessary in this case However, if the Court

believes that a technical expert may be helpful to it for some limited technical

purpose, as it did in Brandywine Communications Technologies, LLC v. Toshiba

Corp., No.LA CV12-03211, the Defendants would not object to such appointment.

r. Timetable i. Plaintiffs Statement

Plaintiffs proposed timetable is attached as Exhibit A.

ii. Defendants Statement Defendants proposed timetable is attached as Exhibit A.

Defendants have provided reasonable date proposals for the deadlines leading

up to the Markman hearing that reflect the current size and complexity of the cases.

Importantly, all Defendants expect that the cases are going to be substantially

streamlined via the claim construction process, and expect that both patents and

parties currently involved in the cases will be removed after the claims are

construed.

Defendants oppose Plaintiffs proposal to stagger the deadlines by patent and


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party groups after the Markman hearing, because that approach is irresponsibly

lengthy and does not provide timely disclosures to the Defendants that Plaintiff

chose to sue all at one time. Because the landscape is certain to be materially

different after the Markman decision issues and the range of products to which these

cases may apply will be narrowed significantly, in ways that cannot now be

predicted and will likely be at odds with Plaintiffs staggered approach, Defendants

propose that the Court set a Scheduling Conference shortly after the Markman

decision issues, at which time the remaining parties can submit a reasonable

schedule proposal that meaningfully addresses the scope of the cases (if any) as it

exists at that time.

It should also be noted that Defendants have put forward two competing

proposals for how the schedule should proceed leading up to the Markman hearing.

Both proposals are set forth in Exhibit A. As can be seen, the Defendants in Group

B believe additional time is required to complete the events set forth in the schedule

relative to Defendants in Group A. Defendants that advocate for the Group A

schedule are Mazda, Subaru, Ford, Mercedes, Nissan, Volvo, Mitsubishi, BMW,

Jaguar, and Chrysler. Defendants that advocate for the Group B schedule are Honda

and Kia.

s. Other Issues i. Plaintiffs Statement

Modifications to Standing Protective Order. The Courts Standing

Protective Order (Standing Orders, Exhibit E) governs discovery unless the Court

enters a different protective order. (S.P.R. 1.5.) Plaintiff believes that the Courts

Standing Protective Order is appropriate in large part, but should be tailored to

facilitate an efficient and orderly review of source code in the Signal Actions, to

take place in a single geographic area (e.g. in this District), organized appropriately,

and with a common set of source code review tools. (See MCL 4th, 33.25 (Some


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courts have incorporated standing protective orders as part of the initial pretrial

conference; however, the particular patent case may dictate a more tailored order.)

Accordingly, Plaintiff requests that Section 5.2 of the Courts Standing

Protective Order should be modified as follows (with additions shown in underline):

5.2 Location and Supervision of Inspection. Any HIGHLY CONFIDENTIAL SOURCE CODE produced in discovery shall be

made available for inspection, in a format allowing it to be reasonably

reviewed and searched, during normal business hours or at other mutually

agreeable times, at an office of the designating partys counsel in this

District or another mutually agreeable location in this District. The source

code shall be made available for inspection on a secured computer in a

secured room, and the inspecting party shall not copy, remove, or

otherwise transfer any portion of the source code onto any recordable

media or recordable device. Source code shall be produced in the format

in which it is used in the ordinary course of business, and labeled and

organized to permit the reviewing party to readily identify the relevant

patents, technology, products, and timeframes to which it pertains. The

designator may visually monitor the activities of the inspecting partys

representatives during any source code review, but only to ensure that

there is no unauthorized recording, copying, or transmission of the source

code. The secured computer shall run the Microsoft Windows Operating

System on which the following software tools are installed: SlickEdit

(http://www.slickedit.com), Understand (http://www.scitools.com),

Beyond Compare (http://www.scootersoftware.com), and Acrobat

(http://get.adobe.com/reader), Cygwin (http://www.cygwin.com), and Edit

Pad Lite (http://www.editpadlite.com). The reviewing party may request

installation of additional tools that might be necessary to facilitate an


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orderly and efficient review of source code, which request shall not be

unreasonably denied by the producing party.

These modifications to the Courts Standing Protective Order will facilitate an

efficient and orderly review of source code. (See MCL 4th, 11.444, 11.423.)

Moreover, production of source code in this District is appropriate, as each

party is already represented by at least one law firm with offices in this District. (See

L.R. 83-2.1.3.4 (Every attorney seeking to appear pro hac vice must designate as

Local Counsel an attorney with whom the Court and opposing counsel may readily

communicate regarding the conduct of the case and upon whom documents may be

served. An attorney may be designated as Local Counsel only if he or she: (1) is a

member of this Court; and (2) maintains an office within the District.) (emphasis

added))

In addition, the majority of Defendants national law firms also have offices

in this District.5 If production in this District is inconvenient, the parties will meet

and confer and designate a different common location, such as Washington D.C. or

New York, for the production of all source code.

Non-English speaking witnesses and discovery in foreign jurisdictions.

Plaintiff intends to rely largely on documentary evidence, but may also pursue

discovery of non-English speaking witnesses, or discovery in foreign jurisdictions.

ii. Defendants Statement Defendants propose the Court defer consideration of the source code issue

until such time as there is an actual, demonstrated need for the production of such

code. At a minimum, Defendants disagree that it is appropriate for their confidential

source code (to the extent any such code exists within their control) be placed on a 5 Defendants with national counsel having offices in Los Angeles or Orange County include: Honda (Fish & Richardson); Nissan (Shook, Hardy & Bacon); Mazda, Subaru and BMW (DLA Piper); Kia (Greenberg Traurig); Ford (Brooks Kushman); Chrysler (Dickstein Shapiro); Volvo (Reed Smith); and Jaguar (Latham & Watkins).


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single computer accessible to other Defendants in this case.

t. Patent Cases i. Plaintiffs Statement

Consolidation of Claim Construction Proceedings. Judicial time is the

scarcest resource of all. (MCL 4th, 10.1.) Consolidated claim construction

proceedings will conserve the Courts limited resources, and achieve a speedy and

efficient resolution of all claim construction disputes. Consolidated proceedings

will provide the parties with a uniform set of constructions and will avoid

potentially inconsistent results. Plaintiff believes that the procedures in the Courts

Standing Patent Rules can be readily adapted to facilitate consolidated proceedings,

as follows.

All parties to the Signal Actions should work to limit the terms in dispute by

narrowing or resolving differences, and jointly identify the 10 terms likely to be

most significant to the Signal Actions (S.P.R. 3.1). By default, claim construction

briefs should abide by the page limits set forth in S.P.R. 3.5, i.e. 25 pages per side

for single omnibus opening briefs, and 10 pages per side for single omnibus reply

briefs.

In addition to the information in S.P.R. 3.4.2 through 3.4.5, the parties should

address in the Joint Claim Construction and Prehearing Statement (S.P.R. 3.4)

whether: (i) one consolidated brief on each side can be filed because the issues are

common to all parties; (ii) a consolidated brief as to issues common to all

Defendants must be accompanied by one or more shorter, supplemental briefs as to

unique issues; and (iii) whether the default page limits should be increased on both

sides to accommodate any supplemental briefing. The purpose of this requirement

is to prevent the filing of duplicative materials with the Court, and to preclude the

side-stepping of the page limits on briefs.

Each side should provide a single set of presentation and tutorial materials.


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(S.P.R. 3.5). The parties shall jointly lodge with the Court the material described in

S.P.R. 3.5.1 through 3.5.3 (i.e. the chart with the parties proposed constructions;

annotated copies of the file histories; electronic copy of each file history). Each side

will have a maximum of 45 minutes to present evidence and argument in support of

their positions, but the parties can address whether additional time is necessary in

the Joint Claim Construction and Prehearing Statement, pursuant to the procedure

set forth in S.P.R. 3.4.4.

Plaintiffs proposed schedule for Markman proceedings is set forth in Exhibit

A.

The Federal Circuit Advisory Committees Model Order Limiting Excess

Patent Claims and Prior Art should apply.

Under S.P.R. 2.3, the parties are required to consider and address in this

report the Federal Circuit Advisory Committees Model Order Limiting Excess

patent Claims and Prior Art (Model Order).6 Plaintiff believes that the limits set

forth in Phases 1 and 2 of the Model Order7 are appropriate and should apply across

all Signal Actions in a consolidated fashion (i.e. Plaintiff should abide by the limits

on asserted claims across all actions, and Defendants jointly should abide by the

limits on prior art across all actions).

In fact, Plaintiff is already essentially at or below these limits for the Signal

Actions. Plaintiff currently asserts 33 claims in 7 patents, with no more than eight

6 The Model Order is available at http://patentlyo.com/media/docs/2013/07/model-order-excess-claims.pdf. 7 In the Model Order, Phase 1 limits plaintiff to 32 claims (maximum of 10 per patent), selected 14 days after the S.P.R. 2.5 Invalidity Contentions, and limits defendants to 40 references total (maximum of 12 per patent), selected 14 days after selection of asserted claims. Phase 2 limits plaintiff to 16 claims (maximum of 5 per patent), selected 28 days after the Markman order, and limits defendants to 20 references total (maximum of 6 per patent), selected 14 days after selection of claims.


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claims per patent. (See Section (a).) This is only one claim above the limit of 32

asserted claims in Phase 1, and already below the limit of 10 claims per patent.

ii. Defendants Statement Because the Defendants believe that claim construction is the number one

issue that will help the parties work out issues of non-infringement and invalidity, it

should not be given short shrift as proposed by Plaintiff. Defendants believe that

there are significant limitations to the scope of the patents in suit that will present

substantial, common non-infringement arguments for many of the Defendants.

Accordingly, the Defendants propose proceeding only with claim construction

discovery at this point.

Each of the Defendants has different accused products. Even if the

Defendants can agree on broad principles like disavowal of claim scope or

prosecution history estoppel, they each may emphasize different aspects of claim

construction that most squarely address the products that they are dealing with in

their case. And they have the legal right to do so. As such, Plaintiff's proposal is

completely unworkable. Likewise, there are terms that may be significant for only

some parties depending on the nature of the accused products.

Accordingly, the Defendants believe that they should not be constrained to

present claim construction terms or arguments with one another, and they request

the right to present separate terms and briefs to the Court. However, the Defendants

will work together to coordinate on common terms and positions, and will limit the

briefing, as appropriate, for overlapping positions.

Defendants suggest a limit of five claim terms for construction per patent,

with the parties all working together to identify the terms as well as to provide the

Court with a list of the 10 most significant claim terms. Given the size and scope of

the case, Plaintiffs proposal on the Markman briefing page limit is unworkable.

Defendants suggest that the Court set forth a date for the parties to submit proposals


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on Markman briefing and argument after the exchange of claim constructions, so

that the parties have a better understanding on the number of disputed terms and

proposed constructions. Further, with respect to Plaintiffs proposals regarding

restrictions on the number of prior art references, Defendants suggest the Court set a

date subsequent to the Courts ruling on claim construction for the parties to submit

proposals on these issues as the parties should have a better understanding at that

time of what claims are likely to go forward and hence the size and complexity of

the various remaining cases (if any).

u. Do Parties Wish to Have a Magistrate Judge Preside i. Plaintiffs Statement

Plaintiff does not wish to have a Magistrate preside over the Signal Actions

but does not oppose a Magistrate Judge presiding over discovery and procedural

issues, or settlement conferences.

ii. Defendants Statement Defendants do not wish to have a Magistrate Judge preside at trial, but would

welcome a Magistrate Judge to preside over discovery and procedural issues, as well

as settlement conferences in these Central District of California Actions.

Dated: September 5, 2014 LINER LLP By:

/s/ Ryan E. Hatch

Randall J. Sunshine Ryan E. Hatch Jason L. Haas Attorneys for Plaintiff SIGNAL IP, INC.


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Dated: September 5, 2014 FISH & RICHARDSON P.C. By: /s/ Patrick A. Lujin Patrick A. Lujin B. Trent Webb

Richard D. Eiszner Douglas W. Robinson Gabriel S. Spooner Jamie H. Kitano Attorneys for Defendant NISSAN NORTH AMERICA, Inc.

ATTESTATION REGARDING SIGNATURES

I, Ryan E. Hatch, attest that all signatories listed, and on whose behalf the filing is submitted, concur in the filings content and have authorized the filing. Dated: September 5, 2014 By: /s/ Ryan E. Hatch Ryan E. Hatch


a. Statement of the Casei. Plaintiffs Statementii. Defendants Statement

b. Subject Matter Jurisdictioni. Plaintiffs Statementii. Defendants Statement

c. Legal Issuesi. Plaintiffs Statementii. Defendants Statement

d. Parties, and Non-Party Witnessesi. Plaintiffs Statementii. Defendants Statement

e. Damagesi. Plaintiffs Statementii. Defendants Statement

f. Insurancei. Plaintiffs Statementii. Defendants Statement

g. Motionsi. Plaintiffs Statementii. Defendants Statement

h. Manual for Complex Litigationi. Plaintiffs Statementii. Defendants Statement

i. Status of Discoveryi. Plaintiffs Statementii. Defendants Statement

Plaintiffs have provided in initial infringement contentions to Defendants, and the parties have disclosed limited information for purposes of discussing potential settlement. At the outset, Defendants assert that Plaintiff's infringement contentions...j. Discovery Plani. Plaintiffs Statementii. Defendants Statement

k. Discovery Cut-Offi. Plaintiffs Statementii. Defendants Statement

l. Expert Discoveryi. Plaintiffs Statementii. Defendants Statement

m. Dispositive Motionsi. Plaintiffs Statementii. Defendants Statement

n. Settlementi. Plaintiffs Statementii. Defendants Statement

o. Trial Estimatei. Plaintiffs Statementii. Defendants Statement

p. Trial Counseli. Plaintiffs Statementii. Defendants Statement

Counsel for American Honda Motor Co. are Ahmed Davis, Ralph Phillips, and Scott Elengold from the DC office of Fish & Richardson, Robert Hillman of Fishs Boston office, and Geoff Biegler of Fishs San Diego office. Counsel for Kia Motors America, Inc. are Ron Pabis, Mark Davis, Steve Shahida from Greenberg Traurigs DC office, and Rich Edlin from Greenberg Traurigs New York Office. Counsel for Mazda North America, Inc. are Matthew D. Satchwell and Paul R. Steadman of the Chicago, Illinois office of DLA Piper LLP. Counsel for Mitsubishi Motors North America are Charles Gorenstein and Ali Imam of the Falls Church, Virginia office of Birch Stewart Kolasch Birch, LLP. Counsel for Nissan North America, Inc. are B. Trent Webb, Patrick A. Lujin and Richard D. Eiszner of the Kansas City, Mo office of Shook, Hardy & Bacon LLP; Douglas W. Robinson and Gabriel Scott Spooner of the Irvine, California office of Shook, Har... Counsel for Subaru of America, Inc. are Matthew D. Satchwell and Paul R. Steadman of the Chicago, Illinois office of DLA Piper LLP. Counsel for Chrysler Group, LLC are Frank C. Cimino and Megan S. Woodworth of the Washington DC office of Dickstein Shapiro LLC and Larry LaPorte of the Los Angeles, California office of Dickstein Shapiro, LLP. Counsel for BMW of North America, LLC are Joseph P. Lavelle and Andrew N. Stein of the Washington D.C. office of DLA Piper LLP (US). Counsel for Ford Motor Company are John LeRoy, Frank Angileri, Linda Mettes and Chris Smith of the Southfield, Michigan office of Brooks Kushman. Counsel for Jaguar Land Rover North America are Matthew J. Moore, Clement J. Naples, Lisa K. Nguyen, and Jason M. Garr of the Washington, D.C., New York and Silicon Valley offices of Latham & Watkins LLP. Counsel for Volvo Cars of North America, LLC are David T. Pollock and Tracy Zurzolo Quinn of the San Francisco and Philadelphia offices of Reed Smith LLP. Counsel for Mercedes-Benz USA LLC are Scott W. Doyle and Jonathan R. DeFosse of the Washington, D.C. office of Shearman & Sterling LLP; and Don A. Hernandez and Cristina Hernandez of the Pasadena Office of Gonzalez, Saggio, and Harlan LLP.q. Independent Expert or Masteri. Plaintiffs Statementii. Defendants Statement

r. Timetablei. Plaintiffs Statementii. Defendants Statement

s. Other Issuesi. Plaintiffs Statementii. Defendants Statement

t. Patent Casesi. Plaintiffs Statementii. Defendants Statement

u. Do Parties Wish to Have a Magistrate Judge Presidei. Plaintiffs Statementii. Defendants Statement

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