RESPONDENTS SAMSUNG’S AND BARNES & NOBLE’S MARKMAN HEARING

PROPOSAL

Pursuant to Ground Rule 1.15 and Order Nos. 3 and 7, Respondents Samsung Electronics

Co., Ltd., Samsung Electronics America, Inc. and Barnes & Noble, Inc. (collectively

“Respondents”) respectfully submit this proposal for conducting a Markman Hearing in advance

of the evidentiary hearing.

I. RESPONDENTS REQUEST AN EARLY MARKMAN HEARING

Respondents believe that an early Markman

hearing on U.S. Patent No. 5,809,336 (the “’336 patent”) would be useful in resolving disputed claim terms and enable the Administrative Law Judge (“ALJ”), the Staff, and the private parties to focus and narrow the issues in this Investigation prior to the evidentiary hearing. Respondents believe that many of the disputes with respect to the ’336 patent (the only patent asserted in this Investigation) turn on the parties’ respective constructions of the disputed claim terms. As a result, an early Markman hearing that resolves the disputed claim constructions will streamline the Investigation. To provide just a few examples, early resolution of claim construction prior to the hearing would:

• avoid the need for experts to provide alternative testimony under competing proposed claim constructions;

• focus the parties’ pre-hearing and post-hearing briefing as the constructions of the disputed terms will be known in advance;

• reduce the number of issues to be tried and potentially the number of exhibits needed at the hearing; and

• reduce the length of the evidentiary hearing

See, In the Matter of Certain Flash Memory Controllers, Drives, Memory Cards, and Media

Players and Products Containing Same

, No. 337-TA-619, Order No. 6 (“[I]n investigations

where Markman

hearings have been held, the undersigned has found that the parties have benefited from the Markman hearing, which has helped in focusing and streamlining the issues in the investigation.”). In addition, the ’336 patent already has been the subject of three claim construction hearings in District Court litigations to which TPL is, or has been, a party. These hearings already have resulted in three claim construction orders being issued that address many of the claim terms that are disputed in this Investigation. The third Markman order was just issued on December 4, 2012, following a hearing conducted in the Northern District of California on November 30, 2012. Moreover, many of the disputed claim terms at issue in this Investigation concern constructions to which TPL previously agreed in a Joint Claim Construction Statement submitted in the Northern District of California action, but which TPL now seeks to disavow. Respondents’ proposed constructions in this Investigation are largely consistent with the prior claim construction orders and/or constructions to which TPL previously agreed. Accordingly, Respondents believe that the present claim construction disputes can be readily resolved – in part, with reference to TPL’s prior agreed constructions – and that resolution of these disputed constructions will have a dispositive impact on TPL’s allegations in this Investigation.

The parties are beginning a meet-and-confer process to narrow the number of claim construction disputes requiring the Court’s attention, and Respondents hope that compromises can be reached on many of the claim terms currently the subject of these discussions. Even with significant compromise, however, it appears very likely that the private parties will have fundamental disputes regarding certain terms that will require the Court’s attention. If the claim construction issues are not resolved early then many issues in the pre-hearing and post-hearing briefs and at the evidentiary hearing (e.g. infringement and invalidity) will need to be addressed in the alternative. Thus, the Investigation as a whole will benefit from an early Markman hearing on these issues so that the case can be appropriately simplified.

A proposed schedule for Markman-related submissions and a Markman

hearing is setforth below. As the hearing in this Investigation is scheduled to commence on June 3, 2013, a Markman hearing scheduled at least two months in advance of the hearing will streamline the Investigation by providing a meaningful opportunity to focus the issues during expert discovery (completed on May 1, 2013) and in preparation of the parties’ pre-hearing briefs (May 7, 2013).

At a minimum, resolution of the parties’ disputed claim terms any time prior to the hearing will significantly streamline the hearing and post-hearing briefing. In addition, as reflected below,Respondents’ proposal will not interfere with the current Procedural Schedule.

II. RESPONDENTS REQUEST A MARKMAN HEARING IN EARLY APRIL

Subject to the ALJ’s availability, Respondents believe it would be beneficial to have the ALJ’s claim construction order in advance of expert depositions and prior to the deadline for filing pre-hearing briefs on May 7, 2013. This timeframe favors holding the Markman

hearing in early April, approximately two months before the evidentiary hearing scheduled to begin on June 3, 2013, and at least one month before the private parties’ deadline for submitting pre-hearing briefs.

For the foregoing reasons, Respondents respectfully request that the ALJ set a Markman

hearing on claim construction for the ’336 patent prior to the ultimate hearing on the merits, and propose the following schedule. Please note that the events and deadlines set forth in bold text in the proposal below reflect existing deadlines in the Procedural Schedule (Order No. 7) and are included for relevant context:

briefs and any supporting

expert declarations

February 28, 2013

Parties submit responsive

Markman

briefs and any supporting

responsive expert declarations

March 20, 2013

Markman

Hearing First week of April, 2013

Exchange of rebuttal expert reports April 17, 2013

Expert discovery cutoff and completion May 1, 2013

File Pre-hearing statements and briefs – Complainants and

Respondents

May 7, 2013

Hearing June 3 to June 14, 2013, location

TBA

Date: December 7, 2012

Respectfully

EVENT DATE

Parties exchange list of patent claim terms for construction October 5, 2012

Complainants and Respondents exchange and provide

Staff their proposed construction of the disputed claim

terms

November 30, 2012

Parties submit a joint list showing each party's proposed

construction of the disputed claim terms

December 21, 2012

Parties submit initial

Markman