PLAINTIFF ACER, INC.’S RESPONSE IN

OPPOSITION TO DEFENDANTS’

MOTION UNDER CIVIL LOCAL RULES

6-3 AND 7-11 TO CONTINUE TRIAL

DATE AND CORRESPONDING DATES

TECHNOLOGY PROPERTIES LIMITED and

PATRIOT SCIENTIFIC CORPORATION,

Counterclaimants

v.

ACER, INC., ACER AMERICA

CORPORATION and GATEWAY, INC.,

Counterdefendants.

INTRODUCTION

Acer opposes TPL’s motion for a continuance. TPL’s motion should be denied because

TPL failed to show good cause to continue the trial date. If the Court believes any scheduling

change is justified, it should hold a case management conference rather than reset the schedule

on this administrative motion.

TPL’s motion is a thinly-disguised effort to have this Court reconsider the scheduling

issues that were already argued and decided at the September 4, 2012 Case Management

Conference. There, the parties discussed TPL’s filing of an ITC action against Acer, HTC, and

Barco respecting the ‘336 patent at issue here. TPL pushed for an extended trial schedule. Acer,

HTC, and Barco refused to stipulate to stay their cases. Ultimately, the Court rejected TPL’s

arguments based on the concurrent ITC action and set the case for trial for June 24, 2013.

Now, immediately after this Court’s determination on certain claim construction issues,

TPL again asks the Court for delay, seeking to continue the trial date due to an alleged

scheduling “conflict” with the ITC schedule, a schedule known to all parties for over two

months. TPL offers no explanation for not seeking relief from the schedule earlier and provides

no good cause for the requested four month continuance. Moreover, the scheduling “conflict” is

of TPL’s own making: TPL chose to file the ITC complaint with full knowledge that, absent a

stay, the two schedules would necessarily overlap. TPL’s counsel is well-versed in ITC practice

and knew or should have known the trial schedule. Additionally, the alleged “conflict” is really

in the nature of a schedule overlap, no more burdensome than the overlaps busy lawyers

routinely deal with because they have more than one action on their plate at a time. Indeed, the

parties have already been simultaneously engaged in both actions for months. Finally, the ITC

trial and this trial are set for different times, so no one has to be in two places at the same time.

ADDITIONAL PROCEDURAL HISTORY

TPL’s recitation of the procedural history is incomplete. Acer initiated this declaratory

relief action on February 8, 2008.1 On April 25, 2008, based on a later-filed complaint, TPL

1 This matter was one of three related cases. See Barco, N.V. v. Technology Properties Ltd.,

filed a motion to transfer this case to the Eastern District of Texas or, in the alternative, to stay

proceedings pending resolution of that case. Docket # 19. On October 21, 2008, Judge Fogel

denied TPL’s motion. Docket # 47.

On September 4, 2012, this Court held a Case Management Conference. At that

conference Acer proposed a schedule that would keep the case moving forward, while TPL

proposed that the case should not proceed beyond the claim construction phase until the

defendants in newly-filed related cases had an opportunity to appear and be heard. Walker Decl.,

Ex.A, p.5. The Court and the parties specifically addressed the issue of staying these

proceedings. Walker Decl. ¶ 5. On September 14, 2012, the Court issued a Case Management

Order (CMO) that set the trial date for June 24, 2013. Docket # 350.

Also on September 4, 2012, ALJ Gildea issued Order No. 3 in TPL’s ITC case, outlining

a proposed trial schedule and setting the hearing date for June 3, 2012. Declaration of James C.

Otteson in support of Motion to Continue (Otteson Decl.), ¶ 4. On October 1, 2012, ALJ Gildea

issued Order No. 7, confirming the hearing date of June 3-14, 2013. Id. On December 12, 2012,

TPL filed this Motion to Continue Trial Date to October 2013. Doc. 383. Thus, TPL knew prior

to the CMC in this case the timing of the ITC hearing and post-trial briefing schedule.

ARGUMENT

A. TPL Fails to Show Good Cause to Continue the Trial Date

1. TPL failed to diligently pursue a continuance.

TPL relies on a purported scheduling conflict as good cause to continue the trial date.

Mot. pp. 1:16-17, 3:12-16. But TPL has known of the “conflict” between the trial in this case

and post-trial briefing in its ITC case for over seventy days. ALJ Gildea notified the parties of

the hearing date on September 4, and issued a final scheduling order on October 1, 2012, yet

TPL waited until December 12, 2012 to file its motion for a continuance. Id. TPL offers no

explanation for this two month delay. Mot. pp. 1:16-17, 3:12-16. The only substantive

et al. 08-05398-PSG; HTC v. Technology Properties Ltd., et al. 08-00882-PSG. The Barco case

was recently dismissed.

development since October 1, 2012, was this Court’s December 4, 2012 Order regarding claim

construction issues. Docket # 381. TPL’s delay in seeking a continuance and failure to explain

the reasons for that delay undercuts the supposed urgency with which it now seeks to prevent this

case from going to trial as scheduled.

2. The purported “conflict” does not warrant a four month continuance.

The purported conflict is not a sufficient basis for any continuance, and no basis

whatsoever for the four month continuance sought. The ITC hearing and the trial of this action

are set for different times. The ITC hearing is scheduled to conclude on June 14, 2013, 10 days

before the trial date in this case. Counsel for TPL is not required to be in two places at once; nor

are any witnesses required to be in two places at once.

Instead, as virtually all busy lawyers must do, counsel for TPL and Acer must plan to do

some briefing in another matter while the current case is being tried. That the other matter is

related really has no bearing on the merits of TPL’s request. There has been no adequate

showing that it is unreasonable to expect TPL to find a way to staff the post-trial briefing for

another matter 6 months from now. 2 Indeed, TPL has engaged the assistance of additional

counsel in a separate ITC investigation, which also involves Acer. Walker Decl., ¶ 6. There is

no justifiable reason why it cannot do the same here.

Even if some relief were justified, a four months delay is not. TPL’s motion is explicit

that the four month continuance is not just to clear post-trial briefing but also to allow the ITC to

reach a decision. Mot. p. 4:21-22. TPL’s request is a bald effort to put TPL’s action in its

preferred forum—the ITC—ahead of the forum Acer chose first, the Northern District of

California. This is a replay of TPL’s earlier effort to change venue to the Eastern District of

Texas based on a later-filed complaint, and it should again be rejected.

2 TPL complains about the perceived difference in resources among the parties, ignoring that it

was TPL, not Acer, that chose to bring the ITC action. This argument is also disingenuous,

failing to tell the Court the amount of royalties (allegedly in excess of $300 million dollars) TPL

claims to have collected on the asserted patents. Walker Decl., Ex.B.

TPL illogically argues that allowing the ITC to reach a decision will somehow narrow the

issues for trial in this case, but admits that in fact the ITC action will have no preclusive effect on

this action. Mot. p. 4:23-5:3. Since the ITC action has no preclusive effect, it cannot narrow any

issues in this case.

3. Past delays are not a basis for additional delays.

TPL attempts to rely on past delays as somehow providing good cause for a new delay.

Mot. p. 4:10-18. If anything, the past delays make timely resolution of this case more urgent.

TPL accuses Acer of intentionally delaying the prosecution of its own case. Id. at 4:12-

14. TPL mischaracterizes the stay for reexaminations, and its argument that that stay somehow

justifies a further continuance is without merit. The only examples of delay that TPL provides

are the reexamination requests (by parties other than Acer) and the corresponding motion to stay.

Id. Acer made the motion to stay before a trial date was set and before even a claim construction

hearing was set. Walker Decl., ¶ 3. Moreover, the purpose of that stay was to narrow the scope

of the claims. This is consistent with judicial policy in favor of issuing stays pending

reexamination where the case is in the initial stages of litigation and there has been little

discovery. ASCII Corp. v. STD Enm’t USA, Inc., 844 F. Supp. 1378, 1381 (N.D. Cal. 1994).

Indeed, the reexaminations resulted in claims being canceled and amended. Walker Decl.,

Exs.C, D, E and F.

Moreover, TPL has introduced its share of delays to this case. For example, as noted

above, this case was delayed for six months while TPL fought venue. At the first case

management conference after filing the ITC complaint, TPL sought an extended schedule.

Walker Decl., Ex.A, Joint Case Management Conference Statement, pp. 4:8-5:10, Docket # 346.

The Court should deny TPL’s latest dilatory tactic and deny its motion for a continuance.

4. A continuance based on the overlapping schedule with the ITC case is

inconsistent with the policy of 28 U.S.C. § 1659.

Granting a continuance at the request of TPL due to the alleged burden of simultaneously

litigating the same patent in the ITC is inconsistent with the policy of 28 U.S.C. § 1659. As TPL

correctly recognizes, Section 1659 only allows a respondent to an ITC investigation to seek a

stay of any related proceedings in the district courts. Mot. p. 4:2-6. Section 1659 does not

permit a petitioner to seek a stay. Congress did not see fit to protect an ITC petitioner from the

self-inflicted burdens of conflicting schedules between the ITC and a related district court action.

This Court should likewise deny TPL’s attempt to continue these proceedings simply to avoid a

conflict of its own making.

C. A Continuance Will Prejudice Acer

This case will have been on the Court’s docket for more than five years by the time the

parties finally go to trial in June 2013. TPL’s new proposed delay will prejudice Acer by

moving the decision at the ITC ahead of a verdict in this action. Acer has waited more than four

years to try this case. It should not be made to wait any longer.

CONCLUSION

TPL has not shown good cause to continue the trial date where the conflict at issue is of

its own design and does not require anyone to be in two places at the same time. To the extent

that this Court decides that any schedule change may be warranted, however, it should not

change the schedule without first holding an additional Case Management Conference so the

parties can be fully heard on the scope of any time extensions and the impact to the trial

schedule.

Dated: December 17, 2012 K&L GATES LLP

By: /s/ Timothy P. Walker

Timothy P. Walker (SBN 105001)

Harold H. Davis, Jr. (SBN 235552)

Jas Dhillon (SBN 252842)

Attorneys for Plaintiffs and Counterdefendants

ACER, INC., ACER AMERICA

CORPORATION and GATEWAY, INC.

Case5:08-cv-00877-PSG Document385 Filed12/17/12 Page6 of 6