Case number 1:22-cv-01538
BT Americas, Inc. et al v. Palo Alto Networks, Inc. > Documents
| Date Field | Doc. No. | Description (Pages) |
|---|---|---|
| Jun 20, 2024 | 150 | ORAL ORDER: The Court, having reviewed Defendant’s motion (“Motion”) to stay the case pending the completion of an instituted ex parte reexamination proceeding (“EPR”) regarding all asserted claims of the one patent-in-suit (the “237 patent”), (D.I. 130 ), and the briefing related thereto, (D.I. 131 ; D.I. 135 ; D.I. 136 ), hereby ORDERS that the Motion is GRANTED for the reasons that follow: (1) The Court first addresses the “simplification of the issues” factor. In a scenario like this one, where the request to stay is in favor of an EPR, there will be some limits on the arguments a movant can make about potential simplification, since: (a) the standard for instituting an EPR is more forgiving than that regarding an inter parties review (“IPR”) proceeding; and (b) if claims emerge from the EPR, not only will the Court have to then address all of the non-Section 102 or 103 issues in the case, but it will not even get the benefit of estoppel as to the Section 102/103 issues that were raised in the EPR. (D.I. 135 at 2-3 (citing Ever Win Int’l Corp. v. RadioShack Corp., 902 F. Supp. 2d 503, 506-07 (D. Del. 2012) (citing cases)) With that said, here the Court concludes that this factor slightly favors a stay, because: (a) Although the asserted claims have survived two petitions for IPR, the United States Patent and Trademark Office (“PTO”) has now instituted EPR review of claims 1-42 of the 237 patent on four separate grounds, which indicates that Defendant has multiple viable paths to removing those claims from this case (thus mooting any work done on those claims by the parties and the Court in the meantime).; (b) It is not disputed that approximately 79% of the time, all or some claims are canceled during an EPR.; and (c) Because the 237 patent is expired, any canceled claims will not thereafter be amended. (D.I. 131 at 1-2 & ex. 1 at 12; D.I. 136 at 1); (2) As to the “status of the case” factor, normally it would favor a stay, at least to some degree, because at the time of the Motion’s filing, we were at a stage where the Court had not yet held a Markman hearing and no deposition discovery had commenced. But here, the Court and the parties have invested an unusually large amount of resources into resolving disputes prior to the Motion’s filing. (SeeD.I. 40 & D.I. 42 (Court denying motion to transfer); D.I. 62 (Court issuing Scheduling Order after resolving scheduling disputes); D.I. 86 & D.I. 88 (Court resolving Protective Order disputes); D.I. 97 (Court resolving Section 101 motion to dismiss); D.I. 117 (Court resolving motion to stay pending IPR); see also D.I. 128 ) That kind of an investment of Court resources can militate in favor of moving forward with a case, (D.I. 135 at 3-4), and so taking this into account, this factor is about neutral.; (3) The “undue prejudice” factor supports a stay. Defendant asserts (and Plaintiffs do not deny) that the parties here are not competitors, (D.I. 131 at 2-3; D.I. 135 ), and with the asserted patent being expired, Plaintiffs are limited to monetary relief for past damages, which can be obtained after a stay ends just as well as it could be in the shorter term. And while Plaintiffs are correct that Defendant has sought to stop this case from moving forward in various ways (at times successfully, as to the now-dropped 641 patent, and at times not), (D.I. 136 at 2), the Court cannot say that those efforts amount to attempts to gain an improper tactical advantage. See Princeton Digit. Image Corp. v. Konami Digit. Ent. Inc., Civil Action No. 12-1461-LPS-CJB, Civil Action No. 13-335-LPS-CJB, 2014 WL 3819458, at *4 (D. Del. Jan. 15, 2014) (citing cases involving efforts to seek an improper tactical advantage via filing a motion to stay, in circumstances more worrisome or disruptive that those at play here).; (4) With two of the three stay-related factors supporting a stay (at least to some degree) and none working against a stay, the Court GRANTS the Motion. There is a real chance that all asserted claims will not make it out of the PTO, and any prejudice involved in waiting to see if that happens is not undue. See Satius Holding, Inc. v. Samsung Elec. Co., Civil Action No. 18-850-CJB, D.I. 86 (D. Del. Dec. 11, 2019) (staying a case where all asserted claims were at issue in an EPR under generally similar circumstances).; and (5) The parties shall jointly notify the Court by letter within 10 days of the completion of the EPR proceeding at the PTO. (CASE STAYED.) Ordered by Judge Christopher J. Burke on 06/20/2024. (smg) (Entered: 06/20/2024) (0) |
| Jun 20, 2024 | 151 | ORAL ORDER: In light of the Court's order to stay this case, (D.I. 150), the Court hereby ORDERS as follows: (1) Each of the following pending motions is DENIED without prejudice to renew, if and when the stay is lifted: (a) Plaintiffs’ Motion for Reconsideration, (D.I. 52 ), (b) Plaintiffs' Motion for Claim Construction, (D.I. 147 ), and (c) Defendant's Motion for Claim Construction, (D.I. 146 ).; and (2) The Markman hearing scheduled for June 27, 2024 is CANCELED. Ordered by Judge Christopher J. Burke on 06/20/2024. (smg) (Entered: 06/21/2024) (0) |
| Jun 5, 2024 | 149 | STATEMENT Defendant's Comments on Plaintiffs' Technology Tutorial by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 06/05/2024) (4) |
| May 30, 2024 | 148 | ORAL ORDER: The Court, having reviewed the parties’ May 29, 2024 letter (“letter”), (D.I. 139 ), regarding the Markman hearing, hereby ORDERS as follows: (1) The Court hereby ADOPTS the parties’ proposal regarding time allocation. One hour and a half will be allocated for argument, to be split evenly between the parties.; (2) With respect to the parties’ proposal regarding the order of the terms and which side will present argument first for each term, the Court hereby ADOPTS the parties’ proposal as set out in the letter.; (3) On or before June 20, 2024, Delaware and lead counsel for the parties shall meet and confer and file an amended joint claim construction chart that sets forth the terms/issues that remain in dispute. The meet and confer shall focus on an attempt to reach agreement on any remaining disputed terms/issues where possible and on an attempt to focus the dispute over the remaining terms/issues in light of the parties' claim construction briefing. In a joint letter that the parties shall submit by June 20, 2024, the parties shall: (a) identify by name each individual who participated in this meet and confer, when and how that meet and confer occurred and how long it lasted; and (b) list, for each term remaining to be argued, what they understand the parties' remaining disputes about the construction of that term to be (i.e., "The parties' [first/only] dispute as to this term is whether [describe dispute]."), including no more than one sentence to describe each dispute. If no agreements on constructions have been reached or if no dispute has been narrowed on the meet and confer, the letter shall so state, and the parties need not file an amended joint claim construction chart.; and (4) In light of the parties’ positions on Defendant’s pending Motion to Stay (“motion”), (D.I. 130 ), the Court hereby ORDERS that the videoconference set for August 19, 2024 to hear argument on the motion is CANCELED. The Court will resolve the motion on the papers and will make an effort to do so prior to the June 27, 2024 Markman hearing. Ordered by Judge Christopher J. Burke on 05/30/2024. (smg) (Entered: 05/30/2024) (0) |
| May 29, 2024 | 138 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner Enclosing Plaintiffs British Telecommunications plc and BT Americas, Inc.'s Technology Tutorial - re 62 Scheduling Order. (Attachments: # 1 Plaintiffs British Telecommunications plc and BT Americas, Inc.'s Technology Tutorial)(Rovner, Philip) Modified on 5/30/2024 (smg). (Entered: 05/29/2024) (0) |
| May 29, 2024 | 139 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding the June 27, 2024 Claim Construction Hearing - re 62 Scheduling Order. (Rovner, Philip) Modified on 5/30/2024 (smg). (Entered: 05/29/2024) (2) |
| May 29, 2024 | 140 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding interim status report - re 62 Scheduling Order. (Rovner, Philip) Modified on 5/30/2024 (smg). (Entered: 05/29/2024) (2) |
| May 29, 2024 | 141 | Letter to The Honorable Christopher J. Burke from Michael J. Farnan enclosing Defendant's Technology Tutorial. (Attachments: # 1 Attachment)(Farnan, Michael) Modified on 5/30/2024 (smg). (Entered: 05/29/2024) (0) |
| May 29, 2024 | 142 | Joint CLAIM CONSTRUCTION OPENING BRIEF filed by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 05/29/2024) (30) |
| May 29, 2024 | 143 | Joint APPENDIX re 142 Claim Construction Opening Brief [Volume 1 of 3] by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit A-M)(Rovner, Philip) (Entered: 05/29/2024) (0) |
| May 29, 2024 | 144 | Joint APPENDIX re 142 Claim Construction Opening Brief [Volume 2 of 3] by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit N-Z)(Rovner, Philip) (Entered: 05/29/2024) (0) |
| May 29, 2024 | 145 | Joint APPENDIX re 142 Claim Construction Opening Brief [Volume 3 of 3] by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit AA-FF)(Rovner, Philip) (Entered: 05/29/2024) (0) |
| May 29, 2024 | 146 | MOTION for Claim Construction re 142 Claim Construction Opening Brief - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 05/29/2024) (2) |
| May 29, 2024 | 147 | MOTION for Claim Construction [Re-Filed] re 142 Claim Construction Opening Brief - filed by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 05/29/2024) (1) |
| May 24, 2024 | 136 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Reply Letter in Support of Motion to Stay - re 130 MOTION to Stay pending Ex Partes Reexamination. (Farnan, Brian) (Entered: 05/24/2024) (4) |
| May 24, 2024 | 137 | NOTICE OF SERVICE of Palo Alto Networks, Inc.'s Second Set of Requests for Production to Plaintiffs (Nos. 65-66) filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 05/24/2024) (2) |
| May 22, 2024 | 135 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding response to PAN's Motion to Stay pending Ex Parte Reexamination - re 130 MOTION to Stay pending Ex Partes Reexamination. (Attachments: # 1 Exhibit 1-2)(Rovner, Philip) (Entered: 05/22/2024) (0) |
| May 20, 2024 | 133 | MOTION for Pro Hac Vice Appearance of Attorney Charles Lee - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 05/20/2024) (2) |
| May 20, 2024 | 134 | Pro Hac Vice Fee - Credit Card Payment received for Charles Lee. ( re 133 MOTION for Pro Hac Vice Appearance of Attorney Charles Lee )( Payment of $ 50, receipt number ADEDC-4410726).(Farnan, Brian) (Entered: 05/20/2024) (0) |
| May 17, 2024 | 132 | ORAL ORDER: The Court hereby ORDERS that a videoconference to hear argument on Defendant’s Motion to Stay Pending Ex Partes Reexamination (“Motion”), (D.I. 130 ), is set for August 19, 2024 at 3:00 p.m. before Judge Christopher J. Burke via the Microsoft Teams platform. By no later than August 9, 2024, the parties shall send an e-mail to the Court's Courtroom Deputy, Ms. Grimes, indicating the names and e-mail addresses of all individuals who will participate in the videoconference. The Court may choose to resolve the Motion prior to the videoconference and will, in that event, cancel the videoconference (however, if any party advises the Court in advance that a newer attorney will argue the dispute, see Standing Order Regarding Courtroom Opportunities for Newer Attorneys, https://www.ded.uscourts.gov/sites/ded/files/StandingOrder2017.pdf, then the Court will go forward with the conference). Ordered by Judge Christopher J. Burke on 05/17/2024. (smg) (Entered: 05/17/2024) (0) |
| May 15, 2024 | 130 | MOTION to Stay pending Ex Partes Reexamination - filed by Palo Alto Networks, Inc.. (Attachments: # 1 Text of Proposed Order)(Farnan, Brian) (Entered: 05/15/2024) (0) |
| May 15, 2024 | 131 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Opening Letter Brief in Support of Motion to Stay - re 130 MOTION to Stay pending Ex Partes Reexamination. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3)(Farnan, Brian) (Entered: 05/15/2024) (0) |
| May 9, 2024 | 129 | NOTICE OF SERVICE of Plaintiffs' Reply Claim Construction Brief filed by BT Americas, Inc., British Telecommunications plc.(Rovner, Philip) (Entered: 05/09/2024) (2) |
| May 2, 2024 | 128 | ORAL ORDER: The Court has reviewed the parties’ letters regarding whether the Court should allow briefing on definiteness during claim construction. (D.I. 125 ; D.I. 127 ) As a general matter, the Court is open to addressing definiteness as to a claim term at the Markman stage in the middle of the case (so long as the record on the issue is robust at that point). And the Court does not see where Defendant clearly stated that as to Terms 8 and 9, definiteness should not be briefed at Markman. That said, the Court is concerned that taking up definiteness issues as to these terms would prejudice Plaintiffs, in light of their argument that they have not had a fair chance to pursue related expert discovery on that point. (See D.I. 125 at 3) And the Court is concerned that if it addressed only claim construction on Terms 8 and 9 at the Markman stage (and not definiteness), that would prejudice Defendant, for the reasons they say. (See D.I. 127 ) For those reasons, the Court ORDERS that Terms 8 and 9 will not be briefed as part of the upcoming Markman process, and that any disputes about claim construction and definiteness as to those terms will be deferred until a later point in the case. Ordered by Judge Christopher J. Burke on 05/02/2024. (smg) (Entered: 05/02/2024) (0) |
| May 1, 2024 | 127 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Response to Plaintiffs' April 30, 2024 Letter - re 125 Letter. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Farnan, Brian) (Entered: 05/01/2024) (0) |
| Apr 30, 2024 | 125 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding Defendant's indefiniteness arguments. (Attachments: # 1 Exhibit A)(Rovner, Philip) (Entered: 04/30/2024) (0) |
| Apr 30, 2024 | 126 | ORAL ORDER: The Court, having reviewed Plaintiffs April 30, 2024 letter, (D.I. 125 ), hereby ORDERS that by no later than the close of business on May 1, 2024, Defendant shall file a responsive letter of no more than two (2) single-spaced pages in no less than 12-point font. Ordered by Judge Christopher J. Burke on 04/30/2024. (smg) (Entered: 04/30/2024) (0) |
| Feb 26, 2024 | 124 | ORAL ORDER: The Court, having reviewed the parties' Joint Claim Construction Chart, (D.I. 119), hereby ORDERS as follows: (1) Any party asserting plain and ordinary meaning for a term or otherwise does not provide a construction for a term (i.e., indicates "no construction required"), shall clearly articulate in its claim construction briefing what it contends is the "plain and ordinary meaning" or otherwise propose a construction of such term; and (2) Since the Scheduling Order was entered in this case, (D.I. 62), the Court has changed its policies regarding when parties must file their motions for claim construction and now requires parties to file their motions for claim construction concurrently with the Joint Claim Construction Brief. See Judge Burke's "Rule 16 Scheduling Order--Patent" found on Judge Burke's portion of the District Court's website. In light of this, the Court hereby ORDERS that the parties shall refile their motions for claim construction concurrently with the Joint Claim Construction Brief. Ordered by Judge Christopher J. Burke on 2/26/2024. (dlb) (Entered: 02/26/2024) (0) |
| Feb 23, 2024 | 118 | Modified on 2/26/2024 - The PDF of this entry has been removed at the request of the filer. Please refer to Docket Item 119 for this filing. (dlb). (Entered: 02/23/2024) (0) |
| Feb 23, 2024 | 119 | CLAIM Construction Chart by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 02/23/2024) (27) |
| Feb 23, 2024 | 120 | MOTION for Claim Construction - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 02/23/2024) (2) |
| Feb 23, 2024 | 121 | MOTION for Claim Construction re 119 Claim Construction Chart - filed by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 02/23/2024) (1) |
| Feb 23, 2024 | 122 | Joint APPENDIX re 119 Claim Construction Chart (Volume 1 of 2) by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit A-N)(Rovner, Philip) (Entered: 02/23/2024) (0) |
| Feb 23, 2024 | 123 | Joint APPENDIX re 119 Claim Construction Chart (Volume 2 of 2) by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit O-X)(Rovner, Philip) (Entered: 02/23/2024) (0) |
| Feb 15, 2024 | 117 | ORAL ORDER: The Court, having reviewed Defendant's motion to stay pending IPR ("Motion"), (D.I. 100), and the briefing related thereto, (D.I. 101; D.I. 106; D.I. 108), hereby ORDERS that the Motion is DENIED and that next Tuesday's scheduled videoconference is CANCELED. For reasons expressed by Plaintiff, (D.I. 106 at 1-3), in all but very unusual circumstances not present here, the Court is not going to be staying a patent case in favor of an IPR proceeding where the only patent-in-suit in the case is not at issue in the IPR. In such a circumstance, there will simply not be enough potential simplification from a stay to warrant pausing a district court case that would, in 100% of the possible IPR outcomes, eventually need to re-start with regard to all asserted claims of the sole patent-in-suit. If later in this case the Court is about to issue a decision, and it looks like we might hear something from the PTAB very soon that relates to that decision, then one or both parties can ask the Court to delay its decision until the PTAB has weighed in. Ordered by Judge Christopher J. Burke on 2/15/2024. (dlb) (Entered: 02/15/2024) (0) |
| Feb 13, 2024 | 116 | NOTICE OF SERVICE of Palo Alto Networks, Inc.'s First Supplemental Initial Invalidity Contentions filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 02/13/2024) (2) |
| Jan 23, 2024 | 115 | NOTICE OF SERVICE of Plaintiffs' Preliminary List of Proposed Claim Terms and Proposed Constructions filed by BT Americas, Inc., British Telecommunications plc.(Rovner, Philip) (Entered: 01/23/2024) (2) |
| Dec 28, 2023 | 114 | NOTICE of withdrawal of Jonathan A. Choa by BT Americas, Inc., British Telecommunications plc (Choa, Jonathan) (Entered: 12/28/2023) (1) |
| Dec 22, 2023 | 113 | NOTICE OF SERVICE of Palo Alto Networks, Inc.'s Initial Invalidity Contentions filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 12/22/2023) (2) |
| Dec 19, 2023 | 112 | NOTICE of Subsequent Developments by BT Americas, Inc., British Telecommunications plc re 52 MOTION for Reconsideration re Motion Hearing,, Plaintiffs' Motion for Reconsideration of the Court's July 14, 2023 Ruling that the Asserted Patents are directed to an Abstract Idea Under Step One of the Alice 35 U.S.C. Section 101 Fr (Rovner, Philip) (Entered: 12/19/2023) (2) |
| Dec 18, 2023 | 111 | NOTICE OF SERVICE of Defendant's Responses and Objections to Plaintiffs' Second Set of Requests for Production of Documents (Nos. 63-86) filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 12/18/2023) (2) |
| Dec 15, 2023 | 109 | ORAL ORDER Setting Videoconference: The Court hereby ORDERS that a videoconference to hear argument on Defendant's Motion to Stay Pending IPR ("Motion"), (D.I. 100), is set for February 20, 2024 at 10:00 a.m. before Judge Christopher J. Burke via the Microsoft Teams platform. By no later than February 9, 2024, the parties shall send an e-mail to the Court's Courtroom Deputy, Ms. Benyo, indicating the names and e-mail addresses of all individuals who will participate in the hearing. The Court may choose to resolve the Motion prior to the videoconference and will, in that event, cancel the videoconference (however, if any party advises the Court in advance that a newer attorney will argue the dispute, see Standing Order Regarding Courtroom Opportunities for Newer Attorneys, https://www.ded.uscourts.gov/sites/ded/files/StandingOrder2017.pdf, then the Court will go forward with the conference). Ordered by Judge Christopher J. Burke on 12/15/2023. (dlb) (Entered: 12/15/2023) (0) |
| Dec 15, 2023 | 110 | STIPULATION and [Proposed] Order of Partial Dismissal of Counterclaims by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 12/15/2023) (2) |
| Dec 14, 2023 | 108 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Reply Letter Brief in support of Motion to Stay - re 100 MOTION to Stay pending Inter Partes Review. (Farnan, Brian) (Entered: 12/14/2023) (4) |
| Dec 11, 2023 | 106 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding response to Defendant Palo Alto Network Inc.'s letter brief in support of it's motion to stay pending Inter Parties review - re 101 Letter. (Rovner, Philip) (Entered: 12/11/2023) (5) |
| Dec 11, 2023 | 107 | DECLARATION re 106 Letter, Declaration of Edward Wang by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit 1)(Rovner, Philip) (Entered: 12/11/2023) (0) |
| Dec 8, 2023 | 105 | Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 7,895,641 B2. (dlb) (Entered: 12/08/2023) (1) |
| Dec 7, 2023 | 104 | STIPULATION and Order of Partial Dismissal of Claims by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 12/07/2023) (2) |
| Dec 6, 2023 | 103 | REDACTED VERSION of 102 Declaration, by Palo Alto Networks, Inc.. (Attachments: # 1 Exhibits 1-9)(Farnan, Brian) (Entered: 12/06/2023) (0) |
| Dec 4, 2023 | 100 | MOTION to Stay pending Inter Partes Review - filed by Palo Alto Networks, Inc.. (Attachments: # 1 Rule 7.1.1 Certification)(Farnan, Brian) (Entered: 12/04/2023) (0) |
| Dec 4, 2023 | 101 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Opening Letter Brief in Support of Motion to Stay - re 100 MOTION to Stay pending Inter Partes Review. (Farnan, Brian) (Entered: 12/04/2023) (5) |
| Dec 4, 2023 | 102 | [SEALED] DECLARATION re 101 Letter by Palo Alto Networks, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9)(Farnan, Brian) (Entered: 12/04/2023) (0) |
| Nov 27, 2023 | 99 | NOTICE of Subpoena to Cisco Systems, Inc. by Palo Alto Networks, Inc. (Attachments: # 1 Exhibit 1)(Farnan, Brian) (Entered: 11/27/2023) (0) |
| Nov 17, 2023 | 98 | NOTICE OF SERVICE of Initial Infringement Contentions, and Plaintiffs' Second Set of Requests for Production (Nos. 63-86) to Defendant Palo Alto Networks, Inc. filed by British Telecommunications plc.(Choa, Jonathan) (Entered: 11/17/2023) (2) |
| Nov 14, 2023 | 97 | MEMORANDUM OPINION and ORDER regarding D.I. 11 MOTION to Dismiss for Failure to State a Claim filed by Palo Alto Networks, Inc. as announced at the 7/14/2023 hearing. Signed by Judge Christopher J. Burke on 11/14/2023. (dlb) (Entered: 11/14/2023) (19) |
| Nov 3, 2023 | 96 | NOTICE OF SERVICE of (i) Defendant's Responses and Objections to Plaintiffs' First Set of Interrogatories (Nos. 1-7) and (ii) Defendant's Responses and Objections to Plaintiffs' First Set of Requests for Production of Documents (Nos. 1-65) filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 11/03/2023) (2) |
| Oct 30, 2023 | 94 | NOTICE of Subpoena to International Business Machines Corp. by Palo Alto Networks, Inc. (Attachments: # 1 Exhibit 1)(Farnan, Brian) (Entered: 10/30/2023) (0) |
| Oct 30, 2023 | 95 | NOTICE OF SERVICE of BT's Objections and Responses to Defendant Palo Alto Networks, Inc.'s First Set of Interrogatories Nos. 1-11 and First Set of Requests for Production Nos. 1-64 filed by BT Americas, Inc., British Telecommunications plc.(Choa, Jonathan) (Entered: 10/30/2023) (2) |
| Oct 18, 2023 | 92 | ORDER regarding the production of licenses and settlement agreements regarding U.S. Patent Nos. 7,159,237 and 7,895,641. The Court, having signed Plaintiffs' requested Order, hereby ORDERS Plaintiffs to provide notice to third parties Samsung Elecs. Co., Ltd. and LG Elecs. Inc. of the issuance of the Order, by no later than October 19, 2023. Signed by Judge Christopher J. Burke on 10/18/2023. (dlb) (Entered: 10/18/2023) (1) |
| Oct 18, 2023 | 93 | NOTICE OF SERVICE of Defendant's Paragraph 6(c) Disclosures filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 10/18/2023) (2) |
| Oct 17, 2023 | 90 | Stipulated PROTECTIVE ORDER. Signed by Judge Christopher J. Burke on 10/17/2023. (dlb) (Entered: 10/17/2023) (22) |
| Oct 17, 2023 | 91 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding proposed order regarding the production of licenses and settlement agreements regarding U.S. Patent Nos. 7,159,237 and 7,895,641 - re 62 Scheduling Order,,,. (Attachments: # 1 Text of Proposed Order)(Rovner, Philip) (Entered: 10/17/2023) (0) |
| Oct 16, 2023 | 88 | Official Transcript of Protective Order Dispute held on 10/10/23 before Judge Christopher Burke. Court Reporter Deanna Warner, Email: deanna_warner@ded.uscourts.gov. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 11/6/2023. Redacted Transcript Deadline set for 11/16/2023. Release of Transcript Restriction set for 1/15/2024. (Warner, Deanna) (Entered: 10/16/2023) (62) |
| Oct 16, 2023 | 89 | PROPOSED ORDER Stipulated Protective Order by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 10/16/2023) (22) |
| Oct 13, 2023 | 86 | The Court, having reviewed the parties' October 11, 2023 letter, (D.I. 85), hereby ORDERS that Defendant's compromise proposal for source code review, set out in the letter, is hereby ADOPTED. The proposal nicely attempts to address both sides' concerns. On the one hand, it places source code review far closer (i.e., in Houston) to the location of Plaintiffs' expected expert (i.e., in Austin) than any of Defendant's prior proposals, in a manner that should cut down on travel cost and time lost for Plaintiffs' expert. And on the other, it houses source code at a firm that Defendant is familiar with and one that is familiar with the source code at issue here. The parties shall file a final version of the proposed protective order by October 16, 2023. Ordered by Judge Christopher J. Burke on 10/13/2023. (dlb) (Entered: 10/13/2023) (0) |
| Oct 13, 2023 | 87 | REDACTED VERSION of 83 Declaration by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 10/13/2023) (6) |
| Oct 11, 2023 | 84 | MOTION for Pro Hac Vice Appearance of Attorney Ian Moore - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 10/11/2023) (2) |
| Oct 11, 2023 | 85 | Letter to The Honorable Christopher J. Burke from Michael J. Farnan regarding Meet and Confer on Hosting Source Code. (Farnan, Michael) (Entered: 10/11/2023) (1) |
| Oct 10, 2023 | N/A | Minute Entry for proceedings held before Judge Christopher J. Burke - Protective Order Dispute hearing held on October 10, 2023.The Court heard the parties' arguments regarding the Joint Motion for Videoconference to Resolve Protective Order Dispute. (D.I. 67) The Court granted Defendant's request as to the first issue. As to the second issue, the Court ordered the parties to meet and confer and file a joint letter, by no later than October 11, 2023, informing the Court on where the parties stand regarding the remaining issue. The substance of the Courts order will be reflected in the transcript.(Clerk: A. Herman) Appearances: N. Goldberg, P. Rovner and E. Wang for Plaintiffs; M. Farnan, P. Patel and G. Stephenson for Defendant. (Court Reporter Deanna Warner) (dlb) (Entered: 10/11/2023) (0) |
| Oct 6, 2023 | 83 | [SEALED] Supplemental DECLARATION re 82 Oral Order,,,, 70 Letter, of Niall Browne in Support of Defendant's Proposed Protective Order by Palo Alto Networks, Inc.. (Farnan, Michael) (Entered: 10/06/2023) (0) |
| Oct 5, 2023 | 82 | ORAL ORDER: With regard to Tuesday's videoconference, and the issue regarding whether granting remote access to Defendant's source code is appropriate, the Court sees that Defendant's argument against remote access relates to: (1) its assertion that such access would heighten the risk of a security breach; and (2) its assertion that the consequence of such a breach, in light of Defendant's customer base and the customers' needs, is outsized. (D.I. 70 at 1; D.I. 75 at 1) The Court also sees that despite having previously told Defendant that it should make an evidentiary record to support such arguments (as opposed to relying on attorney argument only), (D.I. 76 at 1), Defendant still has not done so. If Defendant wishes to have a chance of prevailing on this issue at Tuesday's hearing, it will need to file a declaration or affidavit or some other form of record support as to the assertions it is making here; any such filing must be made prior to October 10, 2023. Ordered by Judge Christopher J. Burke on 10/5/2023. (mlc) (Entered: 10/05/2023) (0) |
| Oct 4, 2023 | 81 | NOTICE OF SERVICE of Plaintiffs' First Set of Interrogatories (Nos. 1-7) to Defendant Palo Alto Networks, Inc.; and Plaintiffs' First Set of Requests for Production (Nos. 1-62) to Defendant Palo Alto Networks, Inc. filed by BT Americas, Inc., British Telecommunications plc.(Choa, Jonathan) (Entered: 10/04/2023) (2) |
| Oct 3, 2023 | 80 | NOTICE OF SERVICE of BT's Amended Identification of Accused Products Pursuant to Paragraph 4(a) of the Default Standard for Discovery filed by BT Americas, Inc., British Telecommunications plc.(Choa, Jonathan) (Entered: 10/03/2023) (2) |
| Oct 2, 2023 | 79 | NOTICE of Intent for New Attorney to Argue Protective Order Dispute by Palo Alto Networks, Inc. (Farnan, Brian) (Entered: 10/02/2023) (2) |
| Sep 29, 2023 | 77 | ORAL ORDER: The Court, having considered Plaintiffs' Notice of Intent to Have Newer Attorney Participate in Argument Regarding Protective Order Dispute, (D.I. 74), and pursuant to the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys, hereby ORDERS that the Court will ensure that sufficient time is permitted for argument regarding the dispute, and will permit experienced counsel to provide assistance when appropriate. Ordered by Judge Christopher J. Burke on 9/29/2023. (dlb) (Entered: 09/29/2023) (0) |
| Sep 29, 2023 | 78 | NOTICE OF SERVICE of (i) Palo Alto Networks, Inc.'s First Set of Interrogatories Nos. 1-11 and (ii) Palo Alto Networks, Inc.'s First Set of Requests for Production to Plaintiffs Nos. 1-64 filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 09/29/2023) (2) |
| Sep 28, 2023 | 74 | NOTICE of Intent to have Newer Attorney Participate at Hearing on the Parties' Protective Order Dispute by BT Americas, Inc., British Telecommunications plc re 66 Order Setting Videoconference,,,,,,,, (Rovner, Philip) (Entered: 09/28/2023) (2) |
| Sep 28, 2023 | 75 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Response to Plaintiffs' September 21, 2023 Letter - re 71 Letter,. (Farnan, Brian) (Entered: 09/28/2023) (3) |
| Sep 28, 2023 | 76 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding Response to Defendant's September 21, 2023 Letter - re 70 Letter,. (Rovner, Philip) (Entered: 09/28/2023) (3) |
| Sep 24, 2023 | 73 | Official Transcript of Motions Hearing held on 7/14/23 before Judge Christopher J. Burke. Court Reporter: Heather M. Triozzi,Email: Heather_Triozzi@ded.uscourts.gov. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 10/16/2023. Redacted Transcript Deadline set for 10/25/2023. Release of Transcript Restriction set for 12/26/2023. (Triozzi, Heather) (Entered: 09/24/2023) (0) |
| Sep 22, 2023 | 72 | NOTICE OF SERVICE of BT's Paragraph 4(A) Disclosures and Certified Patents and Wrappers filed by BT Americas, Inc., British Telecommunications plc.(Choa, Jonathan) (Entered: 09/22/2023) (2) |
| Sep 21, 2023 | 69 | NOTICE OF SERVICE of Plaintiffs British Telecommunications PLC and BT Americas, Inc.'s Disclosures Pursuant to Paragraph 3 of the Default Standard for Discovery filed by BT Americas, Inc..(Choa, Jonathan) (Entered: 09/21/2023) (2) |
| Sep 21, 2023 | 70 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Protective Order Dispute - re 67 Joint MOTION for Videoconference to Resolve Protective Order Dispute . (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Farnan, Brian) (Entered: 09/21/2023) (0) |
| Sep 21, 2023 | 71 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding protective order dispute - re 67 Joint MOTION for Videoconference to Resolve Protective Order Dispute . (Attachments: # 1 Text of Proposed Order Proposed Protective Order)(Rovner, Philip) (Entered: 09/21/2023) (0) |
| Sep 20, 2023 | 68 | NOTICE OF SERVICE of Palo Alto Network, Inc.'s Disclosures Pursuant to Paragraph 3 of the Default Standard for Discovery filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 09/20/2023) (2) |
| Sep 13, 2023 | 67 | Joint MOTION for Videoconference to Resolve Protective Order Dispute - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 09/13/2023) (1) |
| Sep 12, 2023 | 66 | ORAL ORDER Setting Videoconference: The Court has reviewed the parties' September 11, 2023 letter requesting a teleconference regarding one dispute relating to the proposed protective order. (D.I. 65) It hereby ORDERS that the procedures for resolving a protective order dispute set out in the Scheduling Order will be modified as follows with regard to these disputes: (1) The parties shall file a "Joint Motion for Videoconference To Resolve Protective Order Dispute," the text of which can be found in the "Forms" tab on Judge Burke's portion of the District Court's website; (2) A protective order dispute videoconference using the Microsoft Teams platform is set for October 10, 2023 at 3:30 p.m. before Judge Christopher J. Burke.; (3) By no later than September 21, 2023, each party shall file with the Court a letter, not to exceed two (2) pages, in no less than 12-point font, outlining the issues in dispute and its position on those issues, including the party's proposal as to how the content of the disputed portion(s) of the protective order should read. By no later than September 28, 2023, each party may file a letter, not to exceed two (2) pages, in no less than 12-point font, outlining that party's response to the opposing party's initial letter.; (4) The parties should also consult and follow Judge Burke's "Guidelines for Discovery Disputes," which is found in the "Guidelines" tab on Judge Burke's portion of the District Court's website.; (5) By no later than September 28, 2023, the parties shall send an e-mail to the Court's Courtroom Deputy, Ms. Benyo, indicating the names and e-mail addresses of all individuals who will participate in the hearing.; and (6) The Court may choose to resolve the dispute prior to the videoconference and will, in that event, cancel the conference (however, if any party advises the Court in advance that a newer attorney will argue the dispute, see Standing Order Regarding Courtroom Opportunities for Newer Attorneys, https://www.ded.uscourts.gov/sites/ded/files/StandingOrder2017.pdf, then the Court will go forward with the conference).Ordered by Judge Christopher J. Burke on 9/12/2023. (dlb) (Entered: 09/12/2023) (0) |
| Sep 11, 2023 | 65 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding dispute re initial drafting of a protective order - re 62 Scheduling Order,,,. (Rovner, Philip) (Entered: 09/11/2023) (2) |
| Aug 29, 2023 | 62 | SCHEDULING ORDER: Joinder of Parties due by 9/24/2024. Amended Pleadings due by 9/24/2024. Discovery due by 10/28/2024. Expert Discovery due by 1/31/2025. Status Report due by 5/29/2024. Dispositive Motions due by 2/18/2025. A Motion Hearing is set for 4/2/2025 at 11:00 AM in Courtroom 2A before Judge Christopher J. Burke Claim Construction Opening Brief due by 3/25/2024. Claim Construction Answering Brief due by 4/24/2024. Claim Construction Reply Brief due by 5/8/2024. Claim Construction Surreply Brief due by 5/22/2024. A Markman Hearing is set for 6/27/2024 at 11:00 AM in Courtroom 2A before Judge Christopher J. Burke. A Pretrial Conference is set for 5/30/2025 at 11:00 AM in Courtroom 2A before Judge Christopher J. Burke. A 5-7 day Jury Trial is set for 6/9/2025 at 09:00 AM in Courtroom 2A before Judge Christopher J. Burke. Please see order for further details and deadlines. Signed by Judge Christopher J. Burke on 8/29/2023. (dlb) (Entered: 08/29/2023) (17) |
| Aug 29, 2023 | 63 | NOTICE OF SERVICE of Defendant's Amended Initial Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1) filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 08/29/2023) (2) |
| Aug 29, 2023 | 64 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding case narrowing - re 57 Oral Order,,,,. (Rovner, Philip) (Entered: 08/29/2023) (1) |
| Aug 25, 2023 | 58 | ANSWER to 54 Answer to Complaint, Counterclaim by BT Americas, Inc., British Telecommunications plc.(Rovner, Philip) (Entered: 08/25/2023) (6) |
| Aug 25, 2023 | 59 | PROPOSED ORDER Proposed Scheduling Order by Palo Alto Networks, Inc.. (Attachments: # 1 Letter to The Honorable Christopher J. Burke)(Farnan, Brian) (Entered: 08/25/2023) (0) |
| Aug 25, 2023 | 60 | NOTICE OF SERVICE of Defendant's Initial Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1) filed by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 08/25/2023) (2) |
| Aug 25, 2023 | 61 | NOTICE OF SERVICE of Plaintiffs' Initial Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1) filed by BT Americas, Inc., British Telecommunications plc.(Choa, Jonathan) (Entered: 08/25/2023) (2) |
| Aug 22, 2023 | 57 | ORAL ORDER: The Court HEREBY ORDERS that by no later than August 31, 2023, the parties shall further meet and confer regarding the issue of case narrowing, and shall submit a joint letter of no more than 4 single-spaced pages that indicates whether the parties have reached agreement on the issue, and if not, that sets out their competing views as to how and when Plaintiffs' asserted claims and Defendant's invalidity case should be narrowed. The letter should include the parties' views on: (1) whether such narrowing should occur at all; (2) if it should, whether it should happen at one stage or two stages in the case; (3) when that stage/those stages should occur in the case schedule; and (4) how many claims and references/combinations/invalidity arguments each side should be limited to per stage, and why. The parties may also benefit by consulting the Court's decisions on case narrowing in other patent matters, including Civil Action Nos. 20-1197, 19-145, 18-300, 17-1390, 17-871, 17-600, 16-380, 15-980, 15-819, and 14-721. Ordered by Judge Christopher J. Burke on 8/22/2023. (dlb) (Entered: 08/22/2023) (0) |
| Aug 21, 2023 | 56 | ANSWERING BRIEF in Opposition re 52 MOTION for Reconsideration re Motion Hearing,, Plaintiffs' Motion for Reconsideration of the Court's July 14, 2023 Ruling that the Asserted Patents are directed to an Abstract Idea Under Step One of the Alice 35 U.S.C. Section 101 Fr filed by Palo Alto Networks, Inc..Reply Brief due date per Local Rules is 8/28/2023. (Farnan, Brian) (Entered: 08/21/2023) (15) |
| Aug 21, 2023 | N/A | Minute Entry for proceedings held before Judge Christopher J. Burke - Rule 16 Videoconference/Case Management Conference held on August 21, 2023. The Court ordered Plaintiff to submit a revised joint scheduling order by no later than the close of business on August 25, 2023. (Clerk: S. Simonetti) Appearances: P. Rovner, N. Goldberg for Plaintiffs; B. Farnan, P. Patel, T. Yu, G. Stephenson for Defendant. (Court Reporter Stacy Ingram). (Court Reporter Stacy Ingram (Hawkins)) (dlb) (Entered: 08/22/2023) (0) |
| Aug 18, 2023 | 55 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Proposed Scheduling Order. (Attachments: # 1 Exhibit A)(Farnan, Brian) (Entered: 08/18/2023) (0) |
| Aug 4, 2023 | N/A | SO ORDERED D.I. 53 STIPULATION TO EXTEND TIME for Defendant to respond to Plaintiffs' Motion for Reconsideration to 8/21/2023 filed by Palo Alto Networks, Inc. Ordered by Judge Christopher J. Burke on 8/4/2023. (dlb) (Entered: 08/04/2023) (0) |
| Aug 4, 2023 | 54 | ANSWER to 1 Complaint, with Jury Demand , COUNTERCLAIM against BT Americas, Inc., British Telecommunications plc by Palo Alto Networks, Inc..(Farnan, Brian) (Entered: 08/04/2023) (23) |
| Aug 3, 2023 | 53 | STIPULATION TO EXTEND TIME for Defendant to respond to Plaintiffs' Motion for Reconsideration to 8/21/2023 - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 08/03/2023) (1) |
| Jul 28, 2023 | 52 | MOTION for Reconsideration re Motion Hearing,, Plaintiffs' Motion for Reconsideration of the Court's July 14, 2023 Ruling that the Asserted Patents are directed to an Abstract Idea Under Step One of the Alice 35 U.S.C. Section 101 Framework - filed by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit 1)(Rovner, Philip) (Entered: 07/28/2023) (0) |
| Jul 18, 2023 | N/A | SO ORDERED D.I. 51 STIPULATION TO EXTEND TIME for Defendant to answer the Complaint to 8/4/2023 filed by Palo Alto Networks, Inc. Ordered by Judge Christopher J. Burke on 7/18/2023. (dlb) (Entered: 07/18/2023) (0) |
| Jul 17, 2023 | 51 | STIPULATION TO EXTEND TIME for Defendant to answer the Complaint to 8/4/2023 - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 07/17/2023) (1) |
| Jul 14, 2023 | N/A | Minute Entry for proceedings held before Judge Christopher J. Burke - Motion Hearing held on 7/14/2023 regarding D.I. 11 MOTION to dismiss in 22-1538-CJB (as well as D.I. 9 MOTION to Dismiss in 22-1163-CJB; D.I. 9 MOTION to Dismiss in 23-87-CJB). The Court heard argument from the parties and ordered that D.I. 11 in 22-1538-CJB be denied. The Court will issue a written version of the Court's order. (Clerk: S. Simonetti) Appearances: B. Vinti, M. Goldberg, E. Wang, P. Rovner for Plaintiff; A. Desai, P. Patel. T. Yu, B. Farnan for Defendant (Court Reporter Heather Troizzi.) (dlb) (Entered: 07/18/2023) (0) |
| Jul 12, 2023 | N/A | Pro Hac Vice Attorney Gregg T. Stephenson for Palo Alto Networks, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (twk) (Entered: 07/12/2023) (0) |
| Jul 11, 2023 | N/A | SO ORDERED D.I. 44 MOTION for Pro Hac Vice Appearance of Attorney Gregg T. Stephenson filed by Palo Alto Networks, Inc. Ordered by Judge Christopher J. Burke on 7/11/2023. (dlb) (Entered: 07/11/2023) (0) |
| Jul 11, 2023 | 49 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding The Court's June 26, 2023 Oral Order - re 45 Oral Order,,,,,,,,,,. (Farnan, Brian) (Entered: 07/11/2023) (2) |
| Jul 11, 2023 | 50 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding 101 Questions - re 45 Oral Order,,,,,,,,,,. (Rovner, Philip) (Entered: 07/11/2023) (4) |
| Jul 6, 2023 | 48 | ORAL ORDER: The Court hereby ORDERS that the parties' deadline to submit slides or other demonstrative materials they will use at the 101 Day motions hearing and advise the Court and opposing counsel which attorney(s) will argue at the hearing is no later than 4:00 p.m. on July 13, 2023 (not July 12, 2023, as indicated in the Court's May 3, 2023 Order). Ordered by Judge Christopher J. Burke on 7/6/2023. (mlc) (Entered: 07/06/2023) (0) |
| Jul 5, 2023 | 47 | ORAL ORDER Setting Scheduling Conference: The Court, having reviewed the parties' joint letter regarding a proposed scheduling order, (D.I. 46), hereby ORDERS that a scheduling conference pursuant to Fed. R. Civ. P. 16 will be held utilizing the Microsoft Teams platform on 8/21/2023 at 10:00 AM before Judge Christopher J. Burke. By no later than August 7, 2023, the parties shall send an e-mail to the Court's Courtroom Deputy, Ms. Benyo, indicating the names and e-mail addresses of all individuals who will participate in the conference. Ordered by Judge Christopher J. Burke on 7/5/2023. (mlc) (Entered: 07/05/2023) (0) |
| Jun 29, 2023 | 45 | ORAL ORDER: IT IS HEREBY ORDERED that at the July 14, 2023 "101 Day" motions hearing, beginning at 9:30 a.m. in Courtroom 2B: (1) the motions in Civil Action No. 22-1163-CJB and Civil Action No. 23-87-CJB will be argued first and will be argued together, and each side will have 30 minutes for argument; and (2) the motion in Civil Action No. 22-1538-CJB will be argued second, and each side will have 20 minutes for argument. After these arguments have concluded, the Court will adjourn and will return later in the day to provide rulings on the motions. Counsel are reminded that each party must be represented throughout the entirety of the hearing (9:30 a.m. to approximately 5:00 p.m., or whenever the hearing concludes) as additional questions may be asked of any party at times other than during its initially scheduled time (including even after the Court has announced its decisions). IT IS FURTHER ORDERED that on or before July 11, 2023, each party in each of the above-captioned actions shall file a letter that includes responses to the following questions, of no more than two paragraphs per question: (a) Which Supreme Court or Federal Circuit case is most similar to the challenged claim(s)? That is, each party is to identify which case provides the best analogy if this Court is to compare the claim(s) at issue in the relevant Section 101 Motion to claims previously found to be patent (in)eligible by a higher court.; and (b) On the one hand, in finding patent claims ineligible, the Federal Circuit has sometimes noted that the fact that the claims do not provide sufficient detail about "how" the method/apparatus performs a function/step can be a clue that the claim is directed solely to an abstract idea. But on the other hand, in many cases, the Federal Circuit has found claims patent eligible (or possibly patent eligible) when they do not provide much detail as to "how" the invention does its important work. See Nielson Co. (US), LLC v. TVision Insights, Inc., Civil Action No. 21-1592-CJB, 2022 WL 3226318, at *5 (D. Del. Aug. 10, 2022). What is your view on how this "lack of how" argument can be relevant to the Section 101 eligibility calculus--and how much "how" the claims need to contain in order to suggest eligibility? IT IS FURTHER ORDERED that at the same time that the parties submit to the Court versions of any slides or other demonstrative materials they will use at the hearing (i.e., by no later than 4:00 p.m. on Thursday, July 13, 2023), the parties shall also advise the Court and opposing counsel which attorney(s) will argue each motion. Ordered by Judge Christopher J. Burke on 6/29/2023. (mlc) (Entered: 06/29/2023) (0) |
| Jun 29, 2023 | 46 | Joint Letter to The Honorable Christopher J. Burke from Counsel regarding Response to - re 41 Oral Order,,,,,. (Attachments: # 1 Proposed Scheduling Order, # 2 Case Management Checklist)(Rovner, Philip) (Entered: 06/29/2023) (0) |
| Jun 28, 2023 | 44 | MOTION for Pro Hac Vice Appearance of Attorney Gregg T. Stephenson - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 06/28/2023) (2) |
| Jun 27, 2023 | 43 | ORAL ORDER: The Court hereby ORDERS that the combined hearing on the 101 Motions set for July 14, 2023 at 9:30am will be held in Courtroom 2B.. Ordered by Judge Christopher J. Burke on 6/27/2023. (dlb) (Entered: 06/27/2023) (0) |
| Jun 25, 2023 | 42 | Official Transcript of Motion to Transfer held on 6/12/23 before Judge Christopher Burke. Court Reporter Deanna Warner, Email: deanna_warner@ded.uscourts.gov. Transcript may be viewed at the court public terminal or order/purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date, it may be obtained through PACER. Redaction Request due 7/17/2023. Redacted Transcript Deadline set for 7/26/2023. Release of Transcript Restriction set for 9/25/2023. (Warner, Deanna) (Entered: 06/25/2023) (131) |
| Jun 16, 2023 | N/A | Pro Hac Vice Attorney Jeff H. Warshafsky for BT Americas, Inc., and British Telecommunications plc, added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (mkr) (Entered: 06/16/2023) (0) |
| Jun 15, 2023 | 40 | ORAL ORDER: For the reasons stated during the June 12, 2023 hearing, the Court ORDERS that Defendants Motion to Transfer, (D.I. 13), is DENIED. Ordered by Judge Christopher J. Burke on 6/15/2023. (dlb) (Entered: 06/15/2023) (0) |
| Jun 15, 2023 | 41 | ORAL ORDER: IT IS HEREBY ORDERED that the parties shall meet and confer and discuss, in person and/or by telephone, each of the matters listed on Judge Burke's Case Management Checklist ("Checklist"). Within fourteen (14) days from the date of this Order, the parties shall jointly file the following: (i) a copy of the Checklist, indicating the names of Lead Counsel and Delaware Counsel for each party; (ii) a proposed Scheduling Order, which is consistent with Judge Burke's "Rule 16 Scheduling Order - Patent"; and (iii) a letter, not to exceed three pages, that contains the following: (a) a description of what this case is about; (b) the parties' positions regarding any disputes in the proposed Scheduling Order, and (c) a list of the three most significant topics (other than Scheduling Order disputes) discussed during the parties' review of the Checklist items, along with a brief description as to what was discussed as to those topics. Thereafter, the Court may schedule a Case Management Conference/Rule 16 Scheduling Conference to be held with Judge Burke. The Checklist and Scheduling Order can be found on Judge Burke's portion of the District Court's website.. Signed by Judge Christopher J. Burke on 6/15/2023. (dlb) (Entered: 06/15/2023) (0) |
| Jun 14, 2023 | N/A | SO ORDERED D.I. 38 MOTION for Pro Hac Vice Appearance of Attorney Jeff H. Warshafsky filed by British Telecommunications plc, BT Americas, Inc. Ordered by Judge Christopher J. Burke on 6/14/2023. (dlb) (Entered: 06/14/2023) (0) |
| Jun 12, 2023 | N/A | Minute Entry for proceedings held before Judge Christopher J. Burke - Motion Hearing held on 6/12/2023 D.I. 13 MOTION to Transfer Case to Northern District of California filed by Palo Alto Networks, Inc. The Court denied the motion for the reasons stated on the record. (Clerk: S. Simonetti) Appearances: P. Rovner, B. Vinti, N. Goldberg, E. Wang, J. Warshafsky for Plaintiffs; S. Robinson, P. Patel, A. Percer, A. Desai, T. Yu for Defendant. (Court Reporter Deanna Warner) (dlb) (Entered: 06/14/2023) (0) |
| Jun 8, 2023 | 39 | Letter to The Honorable Christopher J. Burke from Philip A. Rovner regarding June 12, 2023 hearing. (Attachments: # 1 Exhibit)(Rovner, Philip) (Entered: 06/08/2023) (0) |
| May 31, 2023 | 38 | MOTION for Pro Hac Vice Appearance of Attorney Jeff H. Warshafsky - filed by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 05/31/2023) (2) |
| May 10, 2023 | 37 | ORAL ORDER: The Court hereby ORDERS that the combined hearing on the 101 Motions set for July 7, 2023 is rescheduled to July 14, 2023 at 9:30am in Courtroom 2A. Ordered by Judge Christopher J. Burke on 5/10/2023. (dlb) (Entered: 05/10/2023) (0) |
| May 3, 2023 | 36 | ORDER: The Court will hear argument on at least the following 101 Motions at a combined hearing on 7/7/2023 at 09:30 AM in Courtroom 2A before Judge Christopher J. Burke: D.I. 11 in Civil Action No. 22-1538-CJB; D.I. 9 in Civil Action No. 22-1163-CJB; D.I. 9 in Civil Action No. 23-87-CJB. (See Order for further details). Signed by Judge Christopher J. Burke on 5/3/23. (mlc) (Entered: 05/03/2023) (2) |
| Apr 18, 2023 | 35 | ORAL ORDER: The Court, having reviewed Defendant's Notice of Intent to Have Newer Attorney Argue Motion to Transfer, (D.I. 34), and pursuant to the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys, hereby ORDERS as follows: (1) The Court will ensure that the parties have at least 60 minutes of argument collectively.; and (2) The Court will permit more experienced counsel for Defendant to assist if/when appropriate. Ordered by Judge Christopher J. Burke on 4/18/2023. (dlb) (Entered: 04/18/2023) (0) |
| Apr 17, 2023 | 33 | REDACTED VERSION of 29 Declaration of Ashwita Saxena by Palo Alto Networks, Inc.. (Farnan, Michael) (Entered: 04/17/2023) (2) |
| Apr 17, 2023 | 34 | Letter to The Honorable Christopher J. Burke from Brian E. Farnan regarding Motion to Transfer Argument. (Farnan, Brian) (Entered: 04/17/2023) (1) |
| Apr 12, 2023 | 32 | ORAL ORDER Setting Hearing on Motion: The Court HEREBY ORDERS as follows: (1) oral argument on Defendant's pending motion to transfer ("Motion"), (D.I. 13), will be held on June 12, 2023 at 11:00 a.m. before Judge Christopher J. Burke. The hearing will be held via videoconference using the Microsoft Teams platform.; (2) By no later than June 5, 2023, the parties shall send an e-mail to the Court's Courtroom Deputy, Ms. Benyo, indicating the names and e-mail addresses of all individuals who will participate in the hearing.; (3) One hour will be allocated for argument, to be split equally between the parties.; and (4) It is possible that, prior to the videoconference, the Court will simply determine that it can decide the Motion on the papers, and in that event, it will cancel the videoconference. That said, the Court encourages (though it does not require) the parties to consider allowing a newer attorney who is familiar with the case and the Motion (if applicable) to argue the Motion. If any party advises the Court in advance that a newer attorney will argue the Motion, see Standing Order Regarding Courtroom Opportunities for Newer Attorneys, https://www.ded.uscourts.gov/sites/ded/files/StandingOrder2017.pdf, then the Court will go forward with the videoconference and will not cancel it.Ordered by Judge Christopher J. Burke on 4/12/2023. (dlb) (Entered: 04/12/2023) (0) |
| Apr 10, 2023 | 28 | REPLY BRIEF re 13 MOTION to Transfer Case to Northern District of California filed by Palo Alto Networks, Inc.. (Farnan, Michael) (Entered: 04/10/2023) (21) |
| Apr 10, 2023 | 29 | [SEALED] DECLARATION re 28 Reply Brief of Ashwita Saxena by Palo Alto Networks, Inc.. (Farnan, Michael) (Entered: 04/10/2023) (0) |
| Apr 10, 2023 | 30 | DECLARATION re 28 Reply Brief of Tom Yu by Palo Alto Networks, Inc.. (Attachments: # 1 Exhibits 1-2)(Farnan, Michael) (Entered: 04/10/2023) (0) |
| Apr 10, 2023 | 31 | REPLY BRIEF re 11 MOTION to Dismiss for Failure to State a Claim filed by Palo Alto Networks, Inc.. (Farnan, Michael) (Entered: 04/10/2023) (20) |
| Mar 31, 2023 | N/A | SO ORDERED D.I. 27 Stipulation Regarding Word Increase for Reply Briefs filed by Palo Alto Networks, Inc. Ordered by Judge Christopher J. Burke on 3/31/2023. (dlb) (Entered: 03/31/2023) (0) |
| Mar 29, 2023 | 27 | STIPULATION Regarding Word Increase for Reply Briefs by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 03/29/2023) (2) |
| Mar 20, 2023 | 19 | ANSWERING BRIEF in Opposition re 11 MOTION to Dismiss for Failure to State a Claim filed by BT Americas, Inc., British Telecommunications plc.Reply Brief due date per Local Rules is 3/27/2023. (Rovner, Philip) (Entered: 03/20/2023) (26) |
| Mar 20, 2023 | 20 | DECLARATION re 19 Answering Brief in Opposition Declaration of Edward Wang by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit 1-4)(Rovner, Philip) (Entered: 03/20/2023) (0) |
| Mar 20, 2023 | 21 | ANSWERING BRIEF in Opposition re 13 MOTION to Transfer Case to Northern District of California filed by BT Americas, Inc., British Telecommunications plc.Reply Brief due date per Local Rules is 3/27/2023. (Rovner, Philip) (Entered: 03/20/2023) (26) |
| Mar 20, 2023 | 22 | DECLARATION re 21 Answering Brief in Opposition to Motion to Transfer Venue - Declaration of Andrew Gross by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 03/20/2023) (1) |
| Mar 20, 2023 | 23 | DECLARATION re 21 Answering Brief in Opposition to Motion to Transfer Venue - Declaration of Bruce Schneier by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 03/20/2023) (2) |
| Mar 20, 2023 | 24 | DECLARATION re 21 Answering Brief in Opposition to Motion to Transfer Venue - Declaration of Edward Wang by BT Americas, Inc., British Telecommunications plc. (Attachments: # 1 Exhibit 1-21)(Rovner, Philip) (Entered: 03/20/2023) (0) |
| Mar 20, 2023 | 25 | DECLARATION re 21 Answering Brief in Opposition to Motion to Transfer Venue - Declaration of Jonathan D. Callas by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 03/20/2023) (1) |
| Mar 20, 2023 | 26 | DECLARATION re 21 Answering Brief in Opposition to Motion to Transfer Venue - Declaration of Peter Ratcliffe by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 03/20/2023) (3) |
| Feb 10, 2023 | 18 | STIPULATION TO EXTEND TIME for Plaintiffs to respond to Defendant's Motion to Dismiss Complaint Pursuant to Fed. R. Civ. P. 12(b)(6) (D.I. 11) and Motion to Transfer Venue Under 28 U.S.C. § 1404(a) (D.I. 13) and for Defendant to file Reply Briefs in further support of the motions to March 20, 2023 and April 10, 2023 respectively - filed by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 02/10/2023) (2) |
| Feb 10, 2023 | N/A | SO ORDERED D.I. 18 STIPULATION TO EXTEND TIME for Plaintiffs to respond to Defendant's Motion to Dismiss Complaint Pursuant to Fed. R. Civ. P. 12(b)(6) (D.I. 11) and Motion to Transfer Venue Under 28 U.S.C. § 1404(a) (D.I. 13) and for Defendant to file Reply B filed by British Telecommunications plc, BT Americas, Inc. (Answering Brief due 3/20/2023., Reply Brief due 4/10/2023.) Ordered by Judge Christopher J. Burke on 2/10/2023. (dlb) (Entered: 02/10/2023) (0) |
| Feb 7, 2023 | 17 | REDACTED VERSION of 15 Declaration by Palo Alto Networks, Inc.. (Attachments: # 1 Exhibits A-E)(Farnan, Michael) (Entered: 02/07/2023) (0) |
| Feb 2, 2023 | 11 | MOTION to Dismiss for Failure to State a Claim - filed by Palo Alto Networks, Inc.. (Attachments: # 1 Text of Proposed Order)(Farnan, Michael) (Entered: 02/02/2023) (0) |
| Feb 2, 2023 | 12 | OPENING BRIEF in Support re 11 MOTION to Dismiss for Failure to State a Claim filed by Palo Alto Networks, Inc..Answering Brief/Response due date per Local Rules is 2/16/2023. (Attachments: # 1 Exhibit 1)(Farnan, Michael) (Entered: 02/02/2023) (0) |
| Feb 2, 2023 | 13 | MOTION to Transfer Case to Northern District of California - filed by Palo Alto Networks, Inc.. (Attachments: # 1 Text of Proposed Order, # 2 Rule 7.1.1 Certification)(Farnan, Michael) (Entered: 02/02/2023) (0) |
| Feb 2, 2023 | 14 | OPENING BRIEF in Support re 13 MOTION to Transfer Case to Northern District of California filed by Palo Alto Networks, Inc..Answering Brief/Response due date per Local Rules is 2/16/2023. (Farnan, Michael) (Entered: 02/02/2023) (24) |
| Feb 2, 2023 | 15 | [SEALED] DECLARATION re 14 Opening Brief in Support of Luci Barry by Palo Alto Networks, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E)(Farnan, Michael) (Entered: 02/02/2023) (0) |
| Feb 2, 2023 | 16 | DECLARATION re 14 Opening Brief in Support of Rust Ince-Schroeder by Palo Alto Networks, Inc.. (Farnan, Michael) (Entered: 02/02/2023) (4) |
| Jan 24, 2023 | 10 | CONSENT to Jurisdiction by U.S. Magistrate Judge filed by BT Americas, Inc., British Telecommunications plc, Palo Alto Networks, Inc. Case reassigned to Magistrate Judge Christopher J. Burke. Signed by Judge Colm F. Connolly on 1/24/2023. (nmf) (Entered: 01/24/2023) (1) |
| Jan 24, 2023 | N/A | REMARK: The parties should be aware that the Court encourages the participation of newer attorneys in courtroom proceedings and at oral argument. Please see the Court's Standing Order Regarding Courtroom Opportunities for Newer Attorneys, a link to which is provided here for the parties' convenience:http://www.ded.uscourts.gov/sites/ded/files/forms/StandingOrder2017.pdf (dlb) (Entered: 01/24/2023) (0) |
| Jan 24, 2023 | N/A | Remark: The parties should follow the Court's Standing Order Regarding Courtesy Copies, a copy of which is found on Judge Burke's portion of the District Court's webpage: https://www.ded.uscourts.gov/sites/ded/files/CJBCC2022.pdf Modified on 1/24/2023 (Rabian, Michael). (Entered: 01/24/2023) (0) |
| Jan 17, 2023 | N/A | ORAL ORDER: It is HEREBY ORDERED that on or before January 24, 2023, the parties shall either (1) submit to the Clerk of Court an executed Form AO 85 Notice, Consent, and Reference of a Civil Action to a Magistrate Judge, indicating their consent to have a United States Magistrate Judge conduct all proceedings in this case including trial, the entry of final judgment, and post-trial proceedings; or (2) file a joint letter indicating that all the parties do not consent to a referral of this action to a Magistrate Judge. The letter should not indicate which party or parties did not consent. If all the parties consent, the case will be referred to Magistrate Judge Burke. Because of the Court's caseload, if the parties do not consent, the Court intends to assign the case to a visiting judge from another district. Ordered by Judge Colm F. Connolly on 1/17/2023. (nmf) (Entered: 01/17/2023) (0) |
| Jan 10, 2023 | N/A | Pro Hac Vice Attorney Tom Yu, Anish G. Desai, Priyata Y. Patel, and Adrian C. Percer for Palo Alto Networks, Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (mpb) (Entered: 01/10/2023) (0) |
| Jan 9, 2023 | 9 | MOTION for Pro Hac Vice Appearance of Attorney Adrian C. Percer, Anish Desai, Priyata Patel, and Tom Yu - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 01/09/2023) (5) |
| Jan 9, 2023 | N/A | SO ORDERED, re 9 MOTION for Pro Hac Vice Appearance of Attorney Adrian C. Percer, Anish Desai, Priyata Patel, and Tom Yu, filed by Palo Alto Networks, Inc. Ordered by Judge Colm F. Connolly on 1/9/2023. (kmd) (Entered: 01/09/2023) (0) |
| Dec 28, 2022 | 8 | STANDING ORDER REGARDING BRIEFING IN ALL CASES. Associated Cases: 1:22-cv-01538-CFC, 1:18-cv-01018-CFC-MPT(kmd) (Entered: 12/28/2022) (2) |
| Dec 13, 2022 | 7 | STIPULATION TO EXTEND TIME for Defendant to move, answer, or otherwise respond to the Complaint to 2/2/2023 - filed by Palo Alto Networks, Inc.. (Farnan, Brian) (Entered: 12/13/2022) (1) |
| Dec 13, 2022 | N/A | SO ORDERED, re 7 STIPULATION TO EXTEND TIME for Defendant to move, answer, or otherwise respond to the Complaint to 2/2/2023, filed by Palo Alto Networks, Inc. Reset Answer Deadlines: Palo Alto Networks, Inc. answer due 2/2/2023. Ordered by Judge Colm F. Connolly on 12/13/2022. (kmd) (Entered: 12/13/2022) (0) |
| Dec 8, 2022 | N/A | Pro Hac Vice Attorney Edward Wang, Nolan M. Goldberg, Baldassare Vinti, and Bart H. Williams for BT Americas, Inc. and British Telecommunications plc added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (mpb) (Entered: 12/08/2022) (0) |
| Dec 6, 2022 | 6 | MOTION for Pro Hac Vice Appearance of Attorney Bart H. Williams, Baldassare Vinti, Nolan M. Goldberg and Edward Wang - filed by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 12/06/2022) (6) |
| Dec 6, 2022 | N/A | SO ORDERED, re 6 MOTION for Pro Hac Vice Appearance of Attorney Bart H. Williams, Baldassare Vinti, Nolan M. Goldberg and Edward Wang, filed by British Telecommunications plc, BT Americas, Inc. Ordered by Judge Colm F. Connolly on 12/6/2022. (kmd) (Entered: 12/06/2022) (0) |
| Nov 30, 2022 | N/A | Case Assigned to Judge Colm F. Connolly. Please include the initials of the Judge (CFC) after the case number on all documents filed. (rjb) (Entered: 11/30/2022) (0) |
| Nov 29, 2022 | 5 | SUMMONS Returned Executed by BT Americas, Inc., British Telecommunications plc.Palo Alto Networks, Inc. served on 11/28/2022, answer due 12/19/2022. (Rovner, Philip) (Entered: 11/29/2022) (2) |
| Nov 28, 2022 | 1 | Complaint* (1) |
| Nov 28, 2022 | 2 | Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (srs) (Entered: 11/28/2022) (3) |
| Nov 28, 2022 | 3 | Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 7,159,237 B2 ;7,895,641 B2. (srs) (Entered: 11/28/2022) (1) |
| Nov 28, 2022 | N/A | No Summons Issued. (srs) (Entered: 11/28/2022) (0) |
| Nov 28, 2022 | 4 | Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent BT Group plc for BT Americas, Inc., British Telecommunications plc filed by BT Americas, Inc., British Telecommunications plc. (Rovner, Philip) (Entered: 11/28/2022) (2) |
