Case 5:16-cv-00162-GLS-DEP Document 15 Filed 05/11/16 Page 1 of 9
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`CIVIL CASE MANAGEMENT PLAN AND
`PATENT SCHEDULE
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`Civil Action No. 5:16-cv-00162-GLS-DEP
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF NEW YORK
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`PPC BROADBAND, INC.,
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` Plaintiff,
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`CORNING OPTICAL
`COMMUNICATIONS RF, LLC,
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` Defendant.
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`IT IS HEREBY ORDERED that, pursuant to Rule 16(b), Federal Rules of Civil Procedure, a
`status and scheduling conference will be held in this case before the Honorable DAVID E.
`PEEBLES, United States Magistrate Judge on May 17, 2016, at 11:00 AM.
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`Counsel for all parties or individuals appearing pro se in the above-captioned action are directed
`to confer in accordance with Fed. R. Civ. P. 26(f) with respect to all of the agenda items listed
`below, no later than twenty-one (21) days before the scheduled Rule 16 Conference. Following
`that Rule 26(f) meeting, a report of the results of the conference, in the format set forth below,
`must be filed with the clerk no later than May 11, 2016. Matters which the Court will discuss at
`the status conference will include the following: (insert a separate subparagraph as necessary if
`parties disagree):
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`1.
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`-vs-
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`JOINDER OF PARTIES: See Proposed Schedules in Section 12(C).
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`2.
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`3.
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`4.
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`5.
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`AMENDMENT OF PLEADINGS: See Proposed Schedules in Section 12(C).
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`DISCOVERY: See Proposed Schedules in Section 12(C). (Discovery time table is to
`be based on the complexity of the action)
`MOTIONS: See Proposed Schedules in Section 12(C). (Non-Dispositive motions
`including discovery motions may only be brought after the parties have complied
`with Section IX of General Order #25)
`PROPOSED DATE FOR THE COMMENCEMENT OF TRIAL: The action will be
`ready to proceed to trial on the latter of the completion of discovery or the issuance of the
`Court’s decision on any pending motions. It is anticipated that the trial will take
`approximately 10 days to complete. The plaintiff requests that the trial be held in
`Syracuse, N.Y. The defendant requests that the trial be held in Albany, N.Y. (The
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`Case 5:16-cv-00162-GLS-DEP Document 15 Filed 05/11/16 Page 2 of 9
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`6.
`7.
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`proposed date for the commencement of trial must be within 18 months of the filing
`date).
`HAVE THE PARTIES FILED A JURY DEMAND: X (YES) / (NO).
`DOES THE COURT HAVE SUBJECT MATTER JURISDICTION? ARE THE
`PARTIES SUBJECT TO THE COURT’S JURISDICTION? HAVE ALL PARTIES
`BEEN SERVED?
`The Court has subject matter jurisdiction. All parties are subject to the Court’s subject matter
`jurisdiction and have been served.
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`Defendant disputes that venue is proper in this district.
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`8. WHAT ARE THE FACTUAL AND LEGAL BASES FOR PLAINTIFF’S CLAIMS
`AND DEFENDANT’S DEFENSES
`(INCLUDE COUNTERCLAIMS &
`CROSSCLAIMS, IF APPLICABLE)?
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`The plaintiff contends that the defendant willfully infringes U.S. Patent Nos. 8,075,338,
`8,366,481, 8,469,740, 8,475,205, 8,480,431, and 8,485,845 (collectively, the “Patents-in-Suit”)
`by making, using, importing, offering for sale, and/or selling certain coaxial cable compression
`connectors without authority or license from the plaintiff. The plaintiff also contends that the
`case is exceptional warranting relief to it under 35 USC § 285 and the defendant’s counterclaims
`are improperly pled and otherwise without merit.
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`The defendant denies infringing the Patents-in-Suit. Defendant contends that the Patents-in-Suit
`are invalid and/or unenforceable and seeks a declaratory judgment to that effect. Defendant
`contends that the case is exceptional warranting relief to it under 35 USC § 285.
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`9. WHAT FACTUAL AND LEGAL ISSUES ARE GENUINELY IN DISPUTE?
`The parties dispute infringement of the Patents-in-Suit by the defendant, the validity of the
`Patents-in-Suit, the merits of the defendant’s defenses and counterclaims, and the amount of
`damages, if any. Priority of invention is also disputed as to U.S. Patent Nos. 8,366,481 (the ’481
`patent); 8,469,740 (the ’740 patent); 8,475,205 (the ’205 patent); and 8,485,845 (the ’845
`patent).
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`10.
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`CAN THE ISSUES IN LITIGATION BE NARROWED BY AGREEMENT OR BY
`MOTIONS? ARE THERE DISPOSITIVE OR PARTIALLY DISPOSITIVE
`ISSUES APPROPRIATE FOR DECISION ON MOTION?
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`Case 5:16-cv-00162-GLS-DEP Document 15 Filed 05/11/16 Page 3 of 9
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`At this time, the parties dispute all of the factual and legal bases for the parties’ claims and
`defenses. At some later time, the parties may be in a position to narrow the issues by agreement
`or by motion, such as a motion for summary judgment.
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`11. WHAT SPECIFIC RELIEF DO THE PARTIES SEEK? WHAT ARE THE
`DAMAGES SOUGHT?
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`The plaintiff seeks a permanent injunction, monetary damages, and an award of its attorney’s
`fees and costs.
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`Defendant seeks a declaration that it has not infringed any valid and enforceable claim of the
`Patents-in Suit and an order that the case is exceptional under 35 U.S.C. § 285 and appropriate
`relief, including an award of reasonable attorneys’ fees and costs.
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`12.
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`DISCOVERY PLAN:
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`A. Mandatory Disclosures
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`See Proposed Schedules in Section 12(C).
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`B. Subjects of Disclosure
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`The parties jointly agree that discovery will be needed to address the following subjects:
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`ii.
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`iii.
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`i. The scope of the claims of the Patents-in-Suit;
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`The alleged invalidity of the Patents-in-Suit;
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`Priority of invention as to the ’481 patent, the ’740 patent, the ’205 patent, and the
`’845 patent;
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`The structure and operation of the Accused Products;
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`v. Defendant’s alleged willful infringement/non-infringement of the Patents-in-Suit;
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`vi. Whether the case is exceptional; and
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`The appropriate award of alleged damages.
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`iv.
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`vii.
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`Case 5:16-cv-00162-GLS-DEP Document 15 Filed 05/11/16 Page 4 of 9
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`C. Discovery Sequence
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`Describe the parties’ understanding regarding the timing of the discovery, and state whether it is
`anticipated that discovery will be phased to address different issues in stages.
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`The parties’ proposed schedule for the future proceedings in this case is as follows:
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`Service of mandatory disclosures required
`under Rule 26(a)(1)
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`Plaintiff’s service of “Disclosure of Asserted
`Claims and Infringement Contentions”, and
`accompanying document production
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`Plaintiff
`Proposed Deadline
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`Defendant
`Proposed Deadline
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`May 11, 2016
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`May 11, 2016
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`May 31, 2016
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`May 31, 2016
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`Defendant’s service of “Disclosure of Non-
`Infringement, Invalidity, and Unenforceability
`Contentions”, and accompanying document
`production
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`June 30, 2016
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`The later of July 27,
`2016 or 15 Days
`after plaintiff
`provides substantive
`responses to
`Corning’s First Set
`of Interrogatories
`and Requests for
`Production
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`Exchange of proposed terms for construction
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`July 8, 2016
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`August 15, 2016
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`Exchange of preliminary proposed claim
`constructions and identification of intrinsic
`and extrinsic support
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`File any application to join any party as a
`party to this action
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`July 29, 2016
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`August 29, 2016
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`August 12, 2016
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`August 12, 2016
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`File any application to amend the pleadings to
`this action
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`August 12, 2016
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`December 31, 20161
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` 1
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` Defendant requests time to take written and deposition discovery as to priority of invention on the ’481 patent, the
`’740 patent, the ’205 patent, and the ’845 patent before the deadline for amendment of pleadings. Defendant intends
`to amend its pleading to assert a claim for interference under 35 USC § 291 (pre-America Invents Act version).
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`Case 5:16-cv-00162-GLS-DEP Document 15 Filed 05/11/16 Page 5 of 9
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`Plaintiff
`Proposed Deadline
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`Defendant
`Proposed Deadline
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`File “Joint Claim Construction and Prehearing
`Statement”
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`August 19, 2016
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`September 12, 2016
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`Completion of claim construction discovery
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`September 19, 2016
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`October 10, 2016
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`Contemporaneous filing and service of
`opening Markman briefs and supporting
`evidence
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`Contemporaneous filing and service of
`responding Markman briefs and supporting
`evidence
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`Defendant’s service of advice of counsel
`disclosure, if applicable
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`Service of initial expert reports on issues for
`which a party bears the burden of proof
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`Service of responsive expert reports
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`Completion of all discovery
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`Filing of motions
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`D. Written Discovery
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`September 30, 2016 November 14, 2016
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`October 31, 2016
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`December 12, 2016
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`30 days following the
`issuance of the
`Court’s claim
`construction decision
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`30 days following the
`issuance of the
`Court’s claim
`construction decision
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`45 days following the
`issuance of the
`Court’s claim
`construction decision
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`45 days following the
`issuance of the
`Court’s claim
`construction decision
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`90 days following the
`issuance of the
`Court’s claim
`construction decision
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`90 days following the
`issuance of the
`Court’s claim
`construction decision
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`120 days following
`the issuance of the
`Court’s claim
`construction decision
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`150 days following
`the issuance of the
`Court’s claim
`construction decision
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`150 days following
`the issuance of the
`Court’s claim
`construction decision
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`180 days following
`the issuance of the
`Court’s claim
`construction decision
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`Describe the written discovery demands which the parties contemplate serving under Rules 33,
`34 and 36, including when they will be promulgated, the areas to be covered, and whether there
`is any need for any party to exceed the number of interrogatories permitted under Rule 33.
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`Case 5:16-cv-00162-GLS-DEP Document 15 Filed 05/11/16 Page 6 of 9
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`The parties anticipate propounding written discovery, including written interrogatories,
`requests for production, and requests for admission. The scope of such discovery will
`concern the Scope of Disclosure identified above. The parties have agreed that each
`party be limited to 25 written interrogatories and 35 requests for admission.
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`E. Depositions
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`Set forth the parties’ expectations regarding depositions, including the approximate number to be
`taken, their location, a general description of the deponents, and an indication of whether any
`non-party fact depositions are anticipated.
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`The parties anticipate taking the depositions of fact, expert, and non-party witnesses
`within the limits dictated by the Federal Rules of Civil Procedure.
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`F. Experts
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`Set forth the parties’ expectations regarding the retention of experts, and identify any particular
`issues to be addressed by the court concerning the retention and exchange of the information
`regarding experts, including whether the parties seek a variance from the expert disclosure
`requirements of the form uniform pretrial scheduling order typically issued by the court (i.e.,
`initial expert disclosure at least ninety days, responsive expert disclosures at least forty-five days,
`and rebuttal reports due at least thirty days, before the close of discovery).
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`The parties anticipate that they will each have at least one technical expert and one
`damages expert. See Proposed Schedules in Section 12(C).
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`G. Electronic Discovery
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`Set forth the parities’ understanding and expectations regarding discovery of electronically
`stored information. This description should include any agreements reached with respect to the
`retention of electronically stored information and the manner in which it will be produced, if
`requested. The parties should also identify any agreements regarding the manner in which
`electronically stored information subject to claims of privilege or work product protection will be
`handled, and whether a court order will be requested, either on stipulation or otherwise, to
`address this issue. If an agreement has been reached on the entry of such an order, provide a brief
`description of the provisions which will be included in a proposed order.
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`The parties are working together to prepare a stipulation concerning production format and
`method of production of electronically stored information (“ESI”), and will submit it to the Court
`for its consideration and approval. In order to control costs and reduce the volume of ESI
`produced that is not relevant to the claims and defenses of any party, the parties shall agree upon
`reasonable search terms and date ranges to filter ESI for relevancy prior to review and
`production.
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`With regard to the inadvertent disclosure of privileged material, as ESI or in any other form, the
`parties agree that:
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`i.
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`the inadvertent disclosure of privileged documents shall not constitute a waiver of
`privilege.
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`ii.
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`iii.
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`iv.
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`v.
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`upon notification or discovery of an inadvertently produced document, the
`opposing party should be notified;
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`upon notification, all copies of the inadvertently produced document must be
`returned to the producing party or be destroyed;
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`any copies of the inadvertently produced privileged document provided to third
`parties, contained in the discovery record, or filed with the Court must be
`retrieved and returned to the producing party or destroyed; and
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`to the extent the receiving party is challenging the assertion of privilege, the
`receiving party may retain one copy of the inadvertently produced record until the
`issue of privilege can be timely addressed by the Court, and during such time, the
`inadvertently produced documents shall not be used for any purpose other than
`challenging the privilege assertion.
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`H. Protective Orders
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`If the parties anticipate requesting a protective order from the court pursuant to Rule 26(c),
`describe the basis for the request and nature of the proposed protective order.
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`The parties request that the Court enter the same Stipulated Protective Order as entered in
`another pending case involving the parties - Civil Action No. 13-cv-01310-GLS-DEP, Docket
`No. 29.
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`I. Anticipated Issues Requiring Court Intervention
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`Provide a brief description of any discovery related issues which, the parties reasonably
`anticipate, may require court intervention.
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`The parties do not anticipate any additional discovery-related issues at this time.
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`IS IT POSSIBLE TO REDUCE THE LENGTH OF TRIAL BY STIPULATIONS,
`USE OF SUMMARIES OR STATEMENTS, OR OTHER EXPEDITED MEANS
`OF PRESENTING EVIDENCE? IS IT FEASIBLE AND DESIRABLE TO
`BIFURCATE ISSUES FOR TRIAL?
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`13.
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`At this early stage of the proceedings, the parties are not able to determine whether the length of
`trial may be reduced by stipulations or some other means.
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`14.
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`ARE THERE RELATED CASES PENDING BEFORE THE JUDGES OF THIS
`COURT?
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`The following five patent infringement cases are pending in this Court that involve the plaintiff
`and the defendant. Although they concern other patents, they all concern the same general
`technology (i.e., patents directed to coaxial cable connectors).
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`1. Civil Action No. 5:11-cv-00761-GLS-DEP, commenced on July 5, 2011;
`2. Civil Action No. 5:12-cv-00911-GLS-DEP, commenced on June 5, 2012;
`3. Civil Action No. 5:13-cv-00538-GLS-DEP, commenced on May 8, 2013;
`4. Civil Action No. 5:13-cv-01310-GLS-DEP, commenced on October 22, 2013; and
`5. Civil Action No. 5:14-cv-01170-GLS-DEP, commenced on September 24, 2014.
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` On March 17, 2016 the parties filed a Notice of Related Cases requesting this case be
`reassigned to Judges Gary L. Sharpe and David E. Peebles as related to other cases in this
`district handled by those judges. (Docket No. 7.)
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`Additionally, some of the same accused products are at issue in this case and the 13-cv-00538
`case.
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`15.
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`IN CLASS ACTIONS, WHEN AND HOW WILL THE CLASS BE CERTIFIED?
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`Not applicable.
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`16. WHAT ARE THE PROSPECTS FOR SETTLEMENT? Please circle below the
`prospect for settlement:
` 1-----2-----3-----4-----[5]-----6-----7-----8-----9-----10
`(VERY UNLIKELY) →→→→→→→→→(LIKELY)
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`CANNOT BE EVALUATED PRIOR TO _______________ (DATE)
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`HOW CAN SETTLEMENT EFFORTS BE ASSISTED?
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`At some point in time, assistance of the Court may be helpful, and the parties may request such
`assistance when appropriate.
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`(Do not indicate any monetary amounts at this time, settlement will be explored by the
`Magistrate Judge at the time of the initial status conference)
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`COMPLETE QUESTION 17 ONLY IF YOUR FILING ORDER COVER SHEET WAS
`CHECKED AS AN ADR TRACK CASE - Subject to Mandatory Mediation under General
`Order #47.
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`17.
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`IF YOUR CASE WAS SELECTED AS A QUALIFYING MANDATORY
`MEDIATION CASE, CONFIRM THAT YOU HAVE:
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`A.
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`B.
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`C.
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`Reviewed General Order #47?
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`[YES] / NO
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`Reviewed the List of Court Approved Mediators available on the NDNY website?
`[YES ]/ NO
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`Prepared to discuss with the Court, at the conference, whether your case should be
`[YES] / NO
`opted out of the program?
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`Discussed the time frame needed to complete Mandatory Mediation?
`[YES ]/ NO
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`D.
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`******************************************************************************
`Pursuant to Fed. R. Civ. P. 26(f) the following counsel conferred and exchanged e-mail
`correspondence beginning on April 20, 2016:
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`Doug Nash and John Cook for plaintiff PPC Broadband, Inc.
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`Joseph Lavelle and Andrew Stein for defendant Corning Optical Communications RF, LLC
`(party name)
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`At the Rule 16(b) conference, the Court will issue an order directing the future proceedings in
`this action. The parties are advised that failure to comply with this order may result in the
`imposition of sanctions pursuant to Federal Rules of Civil Procedure 16(f).
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`Please detach this case management plan form and file electronically with the clerk no later
`than seven (7) days in advance of the conference date.
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