throbber
Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 1 of 45
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`CASE NO. 14-CV-80299/SEITZ
`
`
`
`RETYP, LLC,
`
`
`
` Plaintiff, Tuesday, August 12, 2014
` vs. 10:01 a.m.
` Miami, Florida
`BOUNCE EXCHANGE, INC.,
`
` Defendant. Pages 1 through 45
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`
`
`TRANSCRIPT OF SCHEDULING CONFERENCE and MOTION HEARING
`BEFORE THE HONORABLE PATRICIA A. SEITZ
`UNITED STATES DISTRICT JUDGE
`
`
`
`
`
`APPEARANCES:
`For the Plaintiff: Kenneth R. Noble, Esq.
` Noble Law Firm P.A.
` 800 Fairway Drive, Suite 340
` Deerfield Beach, FL 33441
`
`
`
`For the Defendant: Charles S. Marion, Esq.
` Pepper Hamilton LLP
` 3000 Two Logan Square
` Eighteenth and Arch Streets
` Philadelphia, PA 19103
`
`
`
`Reported By: Judith M. Wolff, CRR
` Official United States Court Reporter
` 400 N. Miami Avenue, Room 8N09
` Miami, FL 33128
` (305)523-5294
` judy_wolff@flsd.uscourts.gov
`
`STENOGRAPHICALLY REPORTED, COMPUTER-AIDED TRANSCRIPT
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`(Court was called to order.)
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`COURTROOM DEPUTY: Calling Case No. 14-80299-CIV,
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`RETYP, LLC, versus Bounce Exchange, Inc.
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`Counsel, please state your appearance for the record.
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`MR. NOBLE: Kenneth Noble on behalf of the plaintiff,
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`RETYP, LLC.
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`THE COURT: Good morning, Mr. Noble.
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`MR. MARION: Morning, Your Honor. I'm Charles
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`Marion, from Pepper Hamilton, on behalf of defendant, Bounce
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`Exchange.
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`THE COURT: Mr. Marion, are you from out-of-town?
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`MR. MARION: I am. I am admitted to the Florida Bar,
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`Your Honor, and to this court. I used to practice in South
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`Florida, but I now live in Philadelphia, where I'm from,
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`originally.
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`THE COURT: Sorry that you had to come down but,
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`please have a seat.
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`I've read the parties' -- the defendant's motion to
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`dismiss, and the plaintiff's response, and the alternative
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`motion to -- the plaintiff's alternative motion to transfer
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`venue to the Northern District of New York.
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`Let me cut to the chase. It sounds to me like the
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`plaintiff is moving to transfer venue, then the bottom line is
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`the plaintiff is tacitly acquiescing to go to New York.
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`MR. NOBLE: No, Your Honor. We responded to their
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 3 of 45
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`motion to dismiss because their motion to dismiss wanted to
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`have the case dismissed, and not brought up to New York.
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`In their motion to dismiss, they pled in the
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`alternative that they would agree to go to New York.
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`We believe that venue is proper down here based on
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`both specific and general jurisdiction. And we believe that
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`it should be tried down here.
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`However, instead of dismissing the case in its
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`entirety, if this Court believes that jurisdiction and venue
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`is not proper down here, we are willing to move up to New
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`York. But that is in the alternative.
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`THE COURT: Okay. As I see it, and I looked at the
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`complaint, the complaint is very threadbare on the allegations
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`of jurisdiction. The plaintiff has the responsibility to
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`plead a prima facie case of jurisdiction.
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`The defendant has conceded that the facts that you --
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`for the purposes of the motion, the facts that you have set
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`out in your response to the motion to dismiss, that those
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`constitute its, quote, "activities in the state of Florida."
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`And basically its position is, in reading the cases,
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`particularly Red Wing Shoe Company, Breckenridge
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`Pharmaceutical, and Avocent Huntsville Corp., that it would
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`appear that just -- taking all of those facts, and accepting
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`them as true for the purposes of this proceeding, and
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`considering everything in the light most favorable to the
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 4 of 45
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`plaintiff, I just don't have enough for either specific or
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`general jurisdiction here.
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`MR. NOBLE: Well, Your Honor, we also had a -- have a
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`pending motion to have a limited discovery, because we are
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`very limited in the knowledge that we have of what activities
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`that the defendant has down here.
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`We basically relied on their websites. We relied on
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`my client's knowledge of the business. And we relied on what
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`the defendant stated in their affidavit.
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`So, you know, we had very limited knowledge. But
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`based on that knowledge, I think we presented a prima facie
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`case. But even if we did not, I think case law gives us the
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`opportunity to at least do -- perform limited discovery to see
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`what type of business contacts they have down here.
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`Their company was just formed in July, 2013. They do
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`have a lot of business down here that we're aware of, but
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`we're not aware of all of their activities.
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`THE COURT: Okay. I -- I'm checking my -- trying to
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`get onto my computer.
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`Did you file a reply to Bounce's Docket Entry 23?
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`MR. NOBLE: What was their 23rd entry?
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`THE COURT: It is Bounce's reply in further support
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`of its motion to dismiss.
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`MR. NOBLE: No, we did not.
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`THE COURT: Okay. So...
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 5 of 45
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`MR. NOBLE: We filed an affidavit on behalf of the
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`president of RETYP that states the facts that he is aware of
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`that would provide jurisdiction. Then, we've also filed the
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`motion for discovery, limited discovery.
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`THE COURT: Okay. But as you see, when the motion
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`for the limited discovery, what Bounce did, on page 4 of
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`Docket Entry 23, Footnote 3, is that it assumes for the
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`purposes of the motion to dismiss that all of the facts
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`presented in your response are true.
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`MR. NOBLE: Right. But that still -- we are still
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`limited to only the knowledge that we could glean from their
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`website.
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`There are certain -- certainly information that we
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`would not know of, therefore we could not have put into either
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`our response motion or, more importantly, our affidavit. So
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`--
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`THE COURT: Well, what type of information would you
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`seek during jurisdiction? Usually when you have a plan -- "I
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`need to take jurisdictional discovery, here is my
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`jurisdictional plan and here's what I think that I can elicit
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`to establish jurisdiction, and I need this amount of time."
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`MR. NOBLE: Well, for example --
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`THE COURT: No. That's usually what I need for the
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`plaintiff to do, and all judges do, so you keep the case
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`moving.
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 6 of 45
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`MR. NOBLE: Okay. Well, in the actual motion that we
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`filed, we do present what we were looking for specifically
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`that would help us determine if there is discovery down here.
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`And then also the case was stayed based on this
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`Court's order, after the motion to dismiss was filed.
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`THE COURT: This is true.
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`And tell me, again, point to me in your motion where
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`you have the outline?
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`MR. NOBLE: Certainly. If you look on page 2 --
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`THE COURT: Of?
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`Docket entry?
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`MR. NOBLE: Of the alternative motion to conduct
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`jurisdictional venue.
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`THE COURT: Docket Entry 21.
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`MR. NOBLE: It says, starting at the bottom
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`paragraph, on page 2.
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`THE COURT: Okay. And what's the defendant's
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`response that?
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`MR. MARION: Well, Your Honor, as the Court is well
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`aware, the law is that there is a qualified right to
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`jurisdictional discovery, but not an unconditional right that
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`permits a plaintiff to seek facts that ultimately would not
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`show a support of jurisdictional --
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`THE COURT: Mr. Marion, you can have a seat. The
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`sound system was provided by the lowest bidder; we got what we
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 7 of 45
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`paid for. So if you are close to the microphone, it helps my
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`court reporter.
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`And, by the way, let me introduce my law clerk. This
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`is Aatif Iqbal who joins me from New York, where he was, for
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`18 months, with Cleary Gottlieb; and before that he was at
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`Harvard; and before that he was in Egypt, for three years; and
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`then an undergraduate degree at Yale.
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`MR. MARION: Thank you.
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`THE COURT: Okay.
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`MR. MARION: So, Your Honor, on the jurisdictional
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`discovery, as you know, there is a qualified right, but not an
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`unconditional one. The contradictions in the parties'
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`pleadings and affidavits have to be sufficient to justify such
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`discovery.
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`And here, this relatively brief listing by the
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`plaintiff of the facts they seek really will not affect the
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`jurisdictional analysis. We have, as you pointed out,
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`acknowledged and conceded that we have a handful of customers
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`in the state of Florida.
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`They are really asking for much of the same
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`information we've already set forth. That we have about six
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`or seven customers with Florida addresses. But all put
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`together, that amounts to less than 3 percent of our client's
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`revenues, total revenues.
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`THE COURT: What are your client's total revenues?
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 8 of 45
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`MR. MARION: I was afraid you were going to ask that.
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`I don't have it offhand, Your Honor. I apologize.
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`THE COURT: What's the general number?
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`MR. MARION: I don't want to misstate anything for
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`the Court.
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`THE COURT: You had to do something to come up with
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`the percentages.
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`MR. MARION: We did.
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`THE COURT: So what -- what were you using to get to
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`the percentages?
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`MR. MARION: Yeah. We had -- our client's chief
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`business officer submitted an affidavit, Cole Sharp, and I
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`know that he went through the affidavits and put in a --
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`THE COURT: But surely, Mr. Marion, you sat down with
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`him and played the devil's advocate to test the facts that he
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`put in the affidavit.
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`MR. MARION: I certainly did, Your Honor. I just
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`don't want to misstate a figure for the Court's -- you know.
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`THE COURT: Is it more than a million? Under a
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`million?
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`MR. MARION: I think it's in the million dollar
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`range, Your Honor. Yes, I think it's in that range; in a
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`million dollar range.
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`A relatively new company, relatively new patent. I
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`think it's in that range.
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 9 of 45
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`THE COURT: It appears to me the primary issue here
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`is going to be the validity of the patent.
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`MR. NOBLE: Yes, Your Honor. And we think that --
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`THE COURT: And for that purpose, then, the primary
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`focus will be on the prior art. And if the defendant
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`counterclaims for infringement, which they usually do, then
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`that will entail examining your books and records down here,
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`correct?
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`MR. NOBLE: Yes, Your Honor. And we are a fairly
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`small company. My client has two or three employees.
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`THE COURT: The problem I have is that, if looking at
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`the cases, I -- on the face of it, I don't see that they -- I
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`have personal jurisdiction.
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`MR. NOBLE: Well, the three points that we raised in
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`our reply, response to their motion to dismiss, I believe that
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`that would give jurisdiction -- have -- they would have
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`personal jurisdiction based on those, and --
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`THE COURT: How are you going to get around the
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`Federal Circuit's decisions in Breckenridge, Avocent, and Red
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`Wing Shoe?
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`MR. NOBLE: Okay. Well, those only dealt with
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`collecting royalties. This company does extensively more than
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`collect royalties.
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`Their packages that they sell to their clients cost
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`between $4,000, and above $6,000. They basically control the
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`TUESDAY, AUGUST 12, 2014
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`marketing. We believe that they have portions of the contract
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`which requires the licensee to defend and indemnify the use of
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`a patent --
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`THE COURT: But there are no actions down here.
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`No -- I mean, is the requirement that they defend,
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`bring the patent holder into that jurisdiction?
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`I don't know that the Federal Circuit has said that,
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`have they?
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`MR. MARION: They have not.
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`MR. NOBLE: Well, I believe that case law shows --
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`THE COURT: I think the patent holder is the one that
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`has to go into the jurisdiction and assert an infringement
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`claim, rather than just having that its assignee.
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`MR. NOBLE: Well, if that -- if there was a lawsuit
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`not by the actual patent holder, but another company like us,
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`claiming that there was -- that the patent was invalid, and
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`then they basically wanted to sue the licensee based on that
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`patent, that's how the --
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`THE COURT: Who is "they?"
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`MR. NOBLE: For example, if one of the licensees of
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`Bounce Exchange was down in Florida, and they were using the
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`patent, and another company believed that the use of the
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`patent that --
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`THE COURT: And who is the other company?
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`MR. NOBLE: One of the companies that -- if Bounce
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`TUESDAY, AUGUST 12, 2014
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`Exchange had a disagreement -- excuse me, if one of Bounce
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`Exchange's licensees, so, Company A was -- there was a dispute
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`between Company A and Company B, and Company B was alleging
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`that the patent was -- was invalid --
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`THE COURT: What's the relationship between A and B?
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`MR. NOBLE: Company A and -- there's no relationship
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`between Company A and Company B.
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`Company B, if there is an allegation that Company A
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`is -- A's patent is invalid -- I mean, it depends on what the
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`language of the actual contracts are, and we haven't seen
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`those contracts.
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`THE COURT: Can I see a copy of the contract?
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`MR. NOBLE: They did not produce those contracts in
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`any of their affidavits.
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`MR. MARION: Your Honor, we have not produced those
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`contracts.
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`The only contract that has been submitted to the
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`Court is a proposal our client made to resolve this dispute
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`with RETYP. And that was attached to their opposition.
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`That was never executed by the parties, obviously, or
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`we wouldn't be here.
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`MR. NOBLE: Right. We're assuming that that license
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`agreement that they gave us was similar to the other ones.
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`But that's another reason we need discovery to determine --
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`THE COURT: Okay. Let's take a look at the agreement
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`TUESDAY, AUGUST 12, 2014
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`that they sent you. What does that look like? It's been
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`filed?
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`MR. NOBLE: Yes, it has.
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`MR. MARION: Your Honor, could I make a point about
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`that agreement, though?
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`THE COURT: I would like to find it. Which docket
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`entry, Mr. Noble?
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`MR. NOBLE: Let me review.
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`THE COURT: It will show at the top.
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`MR. NOBLE: Well, it's one of the exhibits to --
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`MR. MARION: I believe it's Docket Entry 20, Your
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`Honor. I believe it was attached to Docket Entry 20.
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`THE COURT: Which page?
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`MR. MARION: Says 20-1, I think it's listed at the
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`top -- I'm sorry. That's the declaration of his client's
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`principle. But I think it was attached to that declaration.
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`So it would be 20-1, starts at page 9 or 10,
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`Attachment A.
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`THE COURT: And this is also, it's my recollection,
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`it's a nonexclusive agreement. And again, the Federal Circuit
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`has, to move it from the controlling -- one of the indicia is
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`whether or not the license agreement is exclusive or
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`nonexclusive.
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`MR. NOBLE: That's true, Your Honor. However if you
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`look at -- this is clearly more than just a cease and desist
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`TUESDAY, AUGUST 12, 2014
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`letter that the plaintiff sent down here.
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`If you look at the letter, combined with the fact
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`that they have seven licensees down here, combined with the
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`fact that they are controlling the marketing of these
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`individuals, combined with the fact that this company was only
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`founded in July, 2013, and we put in our affidavit that they
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`have close to $480,000 in revenue in Florida, already. And
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`the defendant did nothing to state that that was not true.
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`I think if you look at all of the factors that either
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`leads to we need to do more discovery to determine what
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`businesses they have down here or, that all the factors show
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`that they are --
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`THE COURT: Let me ask you this. What would you have
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`to show to satisfy the Breckenridge, Red Wing, and Avocent
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`cases?
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`MR. NOBLE: Well, I believe --
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`THE COURT: You would have to show many more
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`customers; a larger amount of its revenue; and much more
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`control than what is exhibited in this nonexclusive agreement.
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`I mean, it doesn't -- it ...
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`MR. NOBLE: Well, I think that those specific points
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`deal with -- especially with the percentage of clients down
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`here and the overall revenue deal more with the general
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`jurisdiction.
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`However, if you look at the specific jurisdiction,
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`TUESDAY, AUGUST 12, 2014
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`with the controlling of the marketing, with the indemnity
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`clause, and with what they are doing for the $6,000 a month,
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`this is not just a one-and-done.
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`This is a $6,000 per month for these seven clients
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`that are down here in Florida. And we need to know what
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`extent that goes for.
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`My client has the same type --
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`THE COURT: But the issue is if it is such a small
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`percentage of its overall revenue --
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`MR. NOBLE: Well that deals with the general
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`jurisdiction. But with the specific jurisdiction, even if it
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`is very small, even if the percentage is very small, but what
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`they are doing with those customers is that they are
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`controlling the marketing; is that they are having a very
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`broad --
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`THE COURT: Controlling the marketing of --
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`MR. NOBLE: Of those specific licensees.
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`I mean, we put in our affidavit that they are
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`manipulating the marketing, and controlling the marketing, and
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`that's what that $6,000 goes toward. And there was nothing on
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`the -- filed by the defendant saying that that's not what they
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`are doing.
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`So I agree with you, Your Honor, that if it was just
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`2.9 percent, and a relatively small percent of their overall
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`revenue, that most likely we would not have a case under the
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`TUESDAY, AUGUST 12, 2014
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`general jurisdiction.
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`But we believe that we have a case under the specific
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`jurisdiction because, as you know, Your Honor, they can be
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`less of a percentage, but if you're doing more for those
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`clients and it involves the actual enforcement of the patent
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`that's at issue in this lawsuit, I think that's what would
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`bring --
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`THE COURT: I'm hearing two things. If they are
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`doing more and that involves the enforcement of the patent,
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`that's two different things that you're talking about.
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`One, you're talking about controlling the marketing;
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`and then you're sliding over into controlling the patent?
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`Wait a minute.
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`MR. NOBLE: Well -- excuse me.
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`They would -- part of what they're doing is, you
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`know, we don't know what they are doing for them for between
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`$4,000 and $6,000 a month, but we believe that it has
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`something to do with indemnifying and defending them for a
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`possible use of the patent claim and --
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`THE COURT: So for $4,000 that the customer is
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`paying, that is part of an indemnification agreement?
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`MR. NOBLE: We don't know what -- we don't know --
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`THE COURT: I mean, does it make sense? Would you,
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`as a customer, want to buy -- and that's what you --
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`MR. NOBLE: People sign indemnity claims all the time
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`TUESDAY, AUGUST 12, 2014
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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 16 of 45
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`that are very broad and, as you know, attorneys make them very
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`broad because if there is an issue, the other company could be
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`liable.
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`So I don't know if these nonattorneys that sign these
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`agreements would know the extent of the indemnity clause.
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`But I'm saying that if you look at the indemnity
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`clause, combined with the control of the marketing that we
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`believe and we have put in the affidavit that's occurring, you
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`know, with these licensees, that it would bring the specific
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`jurisdiction to the state of Florida.
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`THE COURT: Okay. This is what I would like to do,
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`if I can, Mr. Marion.
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`Can we -- can you provide a witness that can answer
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`these questions very expeditiously, under oath? I'll be happy
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`to either have an evidentiary hearing or, if it's more
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`convenient, by taking a deposition.
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`Just so that we can have, on the record, what are the
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`facts that either dispute or reinforce the control issue.
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`I'm doing this simply in an abundance of caution,
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`with the understanding, Mr. Noble, I don't think I have
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`jurisdiction. But since I do need to give the plaintiff an
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`opportunity to shore up his jurisdictional allegations, I
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`believe that this kind of very limited discovery, simply on
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`the jurisdictional issues -- and the question is, how fast can
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`we put this together so that -- because I'm concerned, I
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`TUESDAY, AUGUST 12, 2014
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`probably should have not stayed.
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`I should have allowed the jurisdictional discovery so
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`that we can move the case. I'm just concerned that the case
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`has been doing nothing since February.
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`And if I do transfer it to New York, the concern that
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`I have there is I haven't really seen anything in the record
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`that would -- ordinarily that would justify the transfer to
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`New York for the convenience of the witnesses and the
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`documents. Nobody gave me any specifics. Usually you have to
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`do that.
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`But in this case we have somewhat of an unusual
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`situation in that the plaintiff is the one that is moving to
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`transfer it to New York.
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`But what I would like to do -- can we do this in the
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`next two weeks?
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`MR. MARION: Your Honor, it may be difficult only
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`because I know I have a vacation coming up next week. And
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`then Cole Sharp, who is the chief business officer for our
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`client -- I anticipated this might happen, I did check with
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`him and his availability.
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`And he's out of the country from August 28 through
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`September 6. So if we could do it right after he gets back,
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`that would be ideal.
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`I just don't think I'm going to be available before
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`he leaves, to facilitate that.
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 18 of 45
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`THE COURT: Why don't we do this. Why don't we look
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`to sometime after -- my desire is to keep everybody's costs
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`down and to keep the case moving, and to get this case to the
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`merits. Because I think for both sides' best interests, you
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`need to quickly resolve the invalidity question, and the
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`countervailing question, that I'm sure that the defendants
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`will assert, of infringement.
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`MR. MARION: Mr. Sharp is also in New York, Your
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`Honor. Speaking about venues and everything. He's located in
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`New York.
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`THE COURT: But the plaintiff does allege that they
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`have, how many -- you're under ten, under five, under six
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`employees? I can't remember the exact number.
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`MR. NOBLE: Yeah, we only have a handful of
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`employees. But you're right, Your Honor. We did file the
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`alternative motion, and after talking with my client, he has
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`business up in New York.
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`So if this case needs to be -- venue needs to be
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`changed, we do not disagree with New York.
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`MR. MARION: And I told his cocounsel, when he called
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`me to see if I would consent to the alternative motions, I
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`told him yes, we would consent to a transfer of the venue
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`because that's where our clients are located; that's where our
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`sources of proof are on the patent, and so forth.
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`THE COURT: Well, then, if can -- if both sides have
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 19 of 45
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`a joint agreement to transfer the case, then I can save you
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`all the discovery costs.
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`MR. MARION: Honestly, I think that would be more
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`efficient.
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`MR. NOBLE: But my client is a small company. He
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`wants the case down here. We would at least want to have the
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`discovery to categorically prove that they do not have enough
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`contacts down here.
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`THE COURT: Let's do this. And I would like to --
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`I've pulled the New York patent rules to see what their
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`timeline is. And what I would like to do is -- what do we
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`look like the week of the 22nd of September?
`
`That way it gives everybody sort of five weeks to ...
`
`MR. MARION: Is Your Honor -- are you contemplating
`
`an evidentiary hearing that week?
`
`THE COURT: What I'm trying to do is figure out how
`
`to do this in the most cost efficient manner.
`
`Do I need to have an evidentiary hearing? Or can we
`
`handle it on the papers?
`
`Let us try this. If you take the deposition in the
`
`first -- the week of September 8th, or the 15th.
`
`MR. NOBLE: It's going to be a duces tecum, Your
`
`Honor?
`
`THE COURT: A reasonable one, focused on the
`
`jurisdictional issues.
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 20 of 45
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`MR. NOBLE: Okay. Right.
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`THE COURT: And Mr. Noble, let me ask you this. If,
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`after you take that deposition, you find that the facts are
`
`such that this case comes right within the Breckenridge, Red
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`Wing, and Avocent cases, then I need you, as an officer of the
`
`court, in light of Rule 1 of the Rules of Civil Procedure, as
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`to how do we most cost-efficiently resolve disputes between
`
`the parties, and focus on the jugular issues, to simply say
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`we've found this, we will accept the part -- the plaintiff's
`
`agreement to transfer the case to New York, and file that.
`
`And I will proceed to transfer the case to New York based upon
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`the parties' joint consent.
`
`If it is a really disputed issue, and that it looks
`
`like those three cases -- and I think that there are a couple
`
`of others as well. I'm thinking of iSocial Media and Nuance
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`Communications versus -- if those -- if the facts are such
`
`that it's a much closer question, then we will set it down for
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`an evidentiary hearing, that we will try and have sometime the
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`week of the 22nd.
`
`MR. NOBLE: Okay. That's fine, Your Honor.
`
`THE COURT: Okay. And then if you could clear your
`
`-- find out what dates are available to you, and Aatif, can
`
`you pull up the calendar?
`
`LAW CLERK: The 23rd is available.
`
`THE COURT: Let me just look.
`
`TUESDAY, AUGUST 12, 2014
`
`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 21 of 45
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`Okay. The 23rd will do it. And what works best,
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`timewise? Does this time work best for you all? 10:00?
`
`MR. MARION: That's fine, Your Honor.
`
`THE COURT: Does that work for you, Mr. Noble? I
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`think Mr. Noble comes from...
`
`MR. NOBLE: Yes, that's fine.
`
`THE COURT: You may have the tougher trip down here,
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`having to travel on I-95.
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`MR. MARION: Can I ask, just for clarification. So,
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`if we're going to have the deposition, and then a possible
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`evidentiary hearing, would you want our witness present for
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`the evidentiary?
`
`THE COURT: I'm wondering how we can do that in the
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`most cost-efficient manner.
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`I am happy to do it by a videoconference so that the
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`witness doesn't have to come down here. And if your
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`witness -- if you have a witness as well -- but I can't
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`imagine you would have a witness that would be relevant from
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`the state of Florida.
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`MR. NOBLE: At this point, I don't believe so.
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`MR. MARION: It may not be an issue, Your Honor. I
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`was just asking, to be sure, if the client asks.
`
`THE COURT: I prefer to look at all of the
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`contingencies.
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`MR. MARION: Thank you.
`
`TUESDAY, AUGUST 12, 2014
`
`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 22 of 45
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`THE COURT: Is there any objection if we -- the only
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`reason why you usually need to have somebody in person for one
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`of these cases, if there is a credibility issue. And you will
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`be able to tell when you take his deposition.
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`MR. NOBLE: We don't object to having him appear by
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`videoconference, if there is a hearing on the 23rd.
`
`THE COURT: God bless you, and the horse you rode in
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`on.
`
`What I would also like the parties to do, in the
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`meantime, is let's start getting this case on track. Whether
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`it stays here or it goes to New York, it needs to get on
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`track.
`
`MR. NOBLE: Well, we actually objected to that motion
`
`to stay. So, I mean, we -- if you want to lift the stay, and
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`we can proceed with getting some deadlines in place, whether
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`it be here or in New York, we don't --
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`THE COURT: Okay. I'm going to lift the stay motion.
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`And I would like the parties to confer and come up with a case
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`management plan that under the New York rules, it's 45 days
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`for exchange of contentions, invalidity contentions. The
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`plaintiff goes first since it's a dec action.
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`And since the case was filed in February, if we were
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`under the New York rules, you would have already filed your
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`contentions.
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`I would like for you to, if you can, within the next
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`TUESDAY, AUGUST 12, 2014
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`

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`Case 9:14-cv-80299-PAS Document 28 Entered on FLSD Docket 08/20/2014 Page 23 of 45
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`two weeks, presumably you --
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`MR. NOBLE: I think that is possible, yes.
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`THE COURT: -- presumably you can, at this point in
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`time, be able to outline what of the prior art is. You've
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`sort of indicated it.
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`MR. NOBLE: Yes. That's fine, Your Honor.
`
`THE COURT: Okay. And then what I would like from
`
`you, although the New York rules have a 45-day response for
`
`the invalidity -- I mean, for the infringement contentions,
`
`since I presume that's what you are going to assert. Am I
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`right in my presumption?
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`MR. MARION: You are right, Your Honor. However, we
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`might need some discovery because we did send a cease and
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`desist order. That's why we're in this court.
`
`The plaintiff wrote back with some prior art to
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`identify. However -- I think we've said this to the
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`plaintiff -- if that's all their software did, we may just go
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`away from our infringement cont

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