Michigan Cases December 09, 2022: In re Neo Wireless Patent Litig.

Case Description

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Court Exhibit A

Berg, Judge

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From: Chris Stewart <cstewart@caldwellcc.com>

Sent: Wednesday, November 30, 2022 11:59 PM

To: MIEDdbEfileBerg; Amanda Chubb

Cc: dla-toyota-neowireless@us.dlapiper.com; DLNissan-Neo@jenner.com; VW-Neo@sternekessler.com; fordneowireless.lwteam@lw.com; SERVICETeslaNeo@fr.com; SERVICEGMNeo@fr.com; Service-Honda/Neo@fr.com; FCA-Neo@Venable.com; MercedesNeoWireless@hoganlovells.com; neowireless@caldwellcc.com; quadrozzi@youngpc.com

Subject: RE: In re Neo Wireless, LLC Patent Litig., Case No. 2:22-md-03034-TGB (E.D. Mich.)

CAUTION - EXTERNAL:

Your Honor, I write on behalf of all parties (with the exception of Toyota and Nissan who would prefer to separately confer with Neo further) pursuant to your Order (Dkt. 99) requiring us to “propose a schedule by November 30, 2022 for further reducing the asserted claims and asserted prior art....” The parties have conferred, and were able to considerably narrow their disputes. For example, the parties have agreed that, for a second round of narrowing, Neo shall further reduce its asserted claims by two weeks after a Markman Order; and that Defendants shall further reduce their prior art references by two weeks after that. The parties have also agreed to table certain peripheral disputes (over the use of “background art” or the proper basis for modifying prior art elections in the future) since they are not yet fully ripe.

Both sides have also compromised considerably on their initial proposals regarding the timing and the volume of the forthcoming reductions in prior art and claims in an attempt to reach agreement. However, a dispute still remains, and the parties' positions are set forth below. Given the short timeframe before Defendants' initial narrowing, Neo requests a follow-up video conference with the Court as soon as possible, or leave to file a short, expedited motion requesting its proposed narrowing framework.

Neo's Position: Given that Neo has significantly reduced its case from 65 claims to 36 specific claims, Neo initially proposed that Defendants should similarly cull from their 63 invalidity charts and select 36 specific prior art references on December 5th. After conferring, Neo proposed as a compromise that, at minimum, Defendants should reduce their prior art references to 45 total references-consistent with the 5:4 ratio of prior art to patent claims that is often used in Courts around the country-by December 12th. The model orders from the Eastern District of Texas (where 3 of the 9 MDL cases were filed) and the Federal Circuit Advisory Council both allow two weeks between reduction of claims and reduction in prior art, and use this 5:4 ratio (requiring parties to initially narrow to 32 claims and 40 prior art references). See Dkt. 97 at 10. Moreover, Defendants' own proposal in August (later withdrawn) followed this same ratio. See Dkt. 97-2 (Ex. A) at 17 (Defendants proposing a reduction to 20 total claims and 25 total prior art references). Consistent with all these models, Neo requests the Court order Defendants to make an initial reduction on December 12 to 45 total prior art references identified from their invalidity contentions charts-that is, five fourths of Neo's 36 claims-so that the parties can effectively evaluate the presence or absence of disputes for the upcoming claim construction process. Defendants should not be heard to argue that this case warrants “expanding the limits on asserted claims or prior art references,” as allowed by the models, when they themselves sought this narrowing process in the first place (and even sought more aggressive narrowing than called for in the models), over Neo's objection.

Defendants' proposal, based on a strained reading of Local Rules from the Northern District of Illinois (where no case in this MDL was filed), that they be allowed to retain up to 108 references-45 more than they have

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even fully charted-allows far too many references for the parties to effectively evaluate for claim construction. This is all the more impracticable given Defendants' proposal to delay their narrowing until December 23 - right before the holidays, leaving only two weeks in the New Year before the parties have to finalize their Markman positions. Even Toyota's and Nissan's proposal-that they need only limit themselves to 36 charts from their invalidity contentions-potentially allows them many multiples of 45 total prior art references, since each of the 63 claim charts from Defendants' invalidity contention include a primary reference accompanied by several additional “secondary references.” Indeed, because Defendants' 63 charts often cross-reference one another, Defendants could likely elect 36 “charts” without actually dropping a single primary prior art reference-resulting in little reduction at all in the burden on the parties for claim construction. For these reasons, Neo requests the Court limit Defendants to 45 references (which they can still combine in various ways consistent with their charts), rather than 108 references/36 charts (which both amount to no narrowing at all).

With respect to the second round of narrowing after a Markman Order, Neo's proposal is again consistent with the EDTX Model order: that Neo reduce to 18 claims (half the previous reduction), and Defendants commensurately reduce to 23 prior art grounds (where, at this stage, each obviousness combination or anticipation reference counts as a distinct ground) from among their previous 45 elected prior art references. The caveat specifying grounds rather than references is important because, at that late stage of the proceedings, Defendants should no longer be able to obscure the specific combinations they intend to pursue, especially given the millions of potential combinations Defendants' 36-reference proposal would allow.

Finally, Defendants' suggestion below that Neo has “abandoned the meet and confer process” is confounding. Neo made its opening proposal to Defendants on November 18 -the day the Court issued its ruling on Defendants' motion-and Defendants chose to wait until just yesterday to provide a response. Toyota and Nissan only provided their alternative proposal at 10:30pm ET tonight. Neo has made every effort to confer in the 36 hours Defendants allowed for it, but given this track record, and given Defendants' continued insistence on retaining many more prior art references than is justified by any relevant model, Neo cannot wait until December 7 to possibly still have to bring an issue to the Court when Neo is requesting that Defendants narrow their case five days later on December 12th. Neo is simply abiding by the Court's express deadline so the Court has ample time to adjudicate the dispute.

Defendants' (Other Than Toyota & Nissan) Position:

Despite recognizing the parties are making progress in meeting and conferring on these issues, Plaintiff Neo has abandoned the meet and confer process and is seeking judicial intervention, despite the Court's admonition during the November 28 status conference that the parties should make their best efforts to resolve these disputes on their own. Given the parties' progress to date, Defendants respectfully request an order instructing the parties to continue to meet and confer and to provide a status update by December 7.

Defendants submit that, if Neo is willing to engage, a mutually agreeable solution may be possible. To date, Defendants have made a number of different proposals to try to resolve these potential disputes from multiple different angles. So far, Neo has rejected all of them. Defendants' most recent proposal-to limit their initial selection of invalidity charts from their currently-served 63 charts-was Defendants' latest attempt to present a creative solution to address Neo's stated concerns.

But as Neo has rejected that proposal as well, Defendants revert to their original proposal whereby they will limit their invalidity case based on a proportional number of prior art references per patent. Accordingly, to the extent the Court is inclined to consider the merits of the remaining disputes, Defendants request that the Court enter Defendants' proposal:

• By December 23, Defendants will limit their total asserted prior art references and/or products to an average of 18 per patent (Defendants can determine how the limit is distributed across the asserted patents);

o Defendants may amend their contentions for good cause shown (such as for prior art products, learning of additional references, or changed claim constructions), as long as the total remains under the set limit.

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o Plaintiff contends it needs Defendants' initial limit by December 12, but neither the facts nor the procedural schedule bear that out. Indeed, Defendants originally represented to the Court that they would voluntarily limit their prior art references within six weeks of Plaintiff's initial reduction. Defendants' proposal to adopt this limit by December 23 instead is a compromise, but one that Plaintiff rejected.

• Plaintiff will limit its case to a maximum of 12 total claims two weeks after the Markman Order;

o Plaintiff has already informed the Court that it will try only a handful of claims. Accordingly, there is no legitimate reason to carry 18 total claims into the expert discovery phase.

• Two weeks after Neo limits its case to a maximum of 12 total claims, Defendants will limit their total asserted prior art references and/or products to an average of 6 per patent (Defendants can determine how the limit is distributed across the asserted patents).

Regarding the timing of the initial limitation, Defendants have offered to limit their prior art by December 23, more than two weeks earlier than Defendants offered in their papers. This proposal is reasonable given the number of defendants (9), references at issue (194), and the large number of claims remaining (36). Neo, however, argues this timing is inappropriate because it must have Defendants' initial prior art selection well in advance of the January 15, 2023 deadline to identify the parties' disputed claim terms and because the model orders require Defendants to limit in two weeks. But there is no need to limit prior art to ensure an efficient claim construction process. As such, there is no reason why Neo must have Defendants' revised prior art list in two weeks.

As to the scope of the initial and subsequent limitations, Defendants' proposal to limit their prior art references/products is proportional to Plaintiff's reduction in the number of claims at the initial stage (45% of the initially asserted claims) and subsequent stage (66% of the reduced number of claims). It also is consistent with the Northern District of Illinois' local patent rules, which require a defendant to initially limit its prior art to no more than 25 references per asserted patent. See N.D.Ill. LPR 2.3. Neo, however, argues these limits are inconsistent with the Eastern District of Texas and Federal Circuit Advisory Council model orders. But as the model orders themselves recognize, they are merely guidance and specifically contemplate “expanding the limits on asserted claims or prior art references” for cases “involving several patent families, diverse technologies, disparate claims within a patent, or other unique circumstances.” E.D. Tex. Model Order at n.1. Such is the case here, because the model orders do not contemplate so many patents, so many claims, and so many defendants in a patent-based MDL. Indeed, the “model order” for an MDL like this proceeding is the Katz litigation, in which the court required the plaintiff to narrow a much larger number of initially asserted claims (1,975 in Katz vs. 65 here), from a much larger number of patents (31 in Katz vs. 6 here) against a much larger number of defendants (165 in Katz vs. 9 here), to an even lower number of claims at the subsequent stage (16 in Katz vs. 12 here), and all without any limits on prior art references . Accordingly, Defendants' proposal to limit their prior art references to an average of 6 references per patent at the subsequent stage appropriately reflects the remaining size of the case, total number of patents, and total number of disparate defendants that must coordinate in order to jointly present their common defense.

Toyota's & Nissan's Position:

Toyota believes that discussions between the parties have made progress on this issue, and proposes that further discussions should continue with an eye towards reaching a reasonable resolution that adequately preserves all parties' rights. If the Court is instead persuaded to enter an order now, Toyota would propose a reduction from the 63 initial invalidity charts served by Defendants with their invalidity contentions, to 36 charts selected from among the original 63 charts by December 23. Notwithstanding any preamble language in the charts, it would be understood that Defendants' selection of prior art charts would be limited to the combinations actually identified in the charts themselves and not other secondary references identified in the list in the main invalidity contentions documents. This represents a significant reduction in prior art selection. Because Defendants' preliminary invalidity contentions are by their nature preliminary, they would be subject to amendment and further narrowing (i) following claim construction, and/or (ii) for good cause based on fact discovery, particularly discovery of other prior art during the discovery period and/or new positions taken by plaintiff on the scope or application of the claims as discovery continues. Plaintiff will then

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limit its case to a maximum of 12 claims two weeks after the Markman Order; and two weeks later, Defendants will limit their total asserted prior art charts to a total of no more than 18 total invalidity charts.

Regards,

Chris Stewart Counsel for Neo Wireless Principal | Caldwell Cassady Curry PC 2121 N Pearl St., Suite 1200, Dallas, TX 75201 Telephone: 214.888.4846 cstewart@caldwellcc.com www.caldwellcc.com

From: Chris Stewart <cstewart@caldwellcc.com>

Sent: Wednesday, November 16, 2022 12:11 PM

To: Gabrielle.LaHatte@lw.com; efileberg@mied.uscourts.gov

Cc: dla-toyota-neowireless@us.dlapiper.com; DLNissan-Neo@jenner.com; VW-Neo@sternekessler.com; fordneowireless.lwteam@lw.com; SERVICETeslaNeo@fr.com; SERVICEGMNeo@fr.com; Service-Honda/Neo@fr.com; FCA-Neo@Venable.com; MercedesNeoWireless@hoganlovells.com; neowireless@caldwellcc.com; quadrozzi@youngpc.com

Subject: RE: In re Neo Wireless, LLC Patent Litig., Case No. 2:22-md-03034-TGB (E.D. Mich.)

Please see the attached letter responding to Defendants' letter.

Sincerely, Chris Stewart Principal | Caldwell Cassady Curry PC 2121 N Pearl St., Suite 1200, Dallas, TX 75201 Telephone: 214.888.4846 cstewart@caldwellcc.com www.caldwellcc.com

From: Gabrielle.LaHatte@lw.com < Gabrielle.LaHatte@lw.com >

Sent: Tuesday, November 15, 2022 3:41 PM

To: efile berg@mied.uscourts.gov

Cc: dla-toyota-neowireless@us.dlapiper.com; DL Nissan-Neo@jenner.com; VW-Neo@sternekessler.com; fordneowireless.lwteam@lw.com; SERVICETeslaNeo@fr.com; SERVICEGMNeo@fr.com; Service-Honda/Neo@fr.com; FCA-Neo@Venable.com; MercedesNeoWireless@hoganlovells.com; neowireless@caldwellcc.com; quadrozzi@youngpc.com

Subject: In re Neo Wireless, LLC Patent Litig., Case No. 2:22-md-03034-TGB (E.D. Mich.)

Please find attached correspondence sent on behalf of Defendants in the above-referenced litigation.

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Regards, Gabrielle LaHatte LATHAM & WATKINS LLP 505 Montgomery Street Suite 2000 San Francisco, CA 94111-6538 Direct Dial: +1.415.395.8108 Mobile: +1.213.361.8102 Email: gabrielle.lahatte@lw.com https://www.lw.com

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