Re: "Patriot has been primarily responsible for keeping the PDS books"
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Message: Re: "Patriot has been primarily responsible for keeping the PDS books"
4
Apr 01, 2013 11:26PM
James C. Otteson
jim@agilityiplaw.com
1
49 Commonwealth Drive,
♦
Menlo Park
, CA 94
025
♦
650
-
227
-
4800
♦
www.
AgilityIPLaw
.com
March 29, 2013
VIA OVERNIGHT COURIER
The Honorable E. James Gildea
Administrative Law Judge
U.S.
International Trade Commission
500 E Street, S.W., Room 317
Washington, DC 20436
Re:
Certain Wireless Consumer Electronics Devices and Components Thereof
Inv. No. 337-
TA
-853
Dear
Judge Gildea:
Enclosed
please find
two double-sided copies of the
C
OMPLAINANT
S
’
R
ENEWED
M
OTION TO
A
MEND
T
HEIR
A
MENDED
T
ENTATIVE
L
IST OF
H
EARING
W
ITNESSES AND
M
OTION
FOR
L
EAVE FOR
R
ESPONDENTS TO
T
AKE THE
D
EPOSITION OF
G
LORIA
F
ELCYN
A
FTER THE
F
ACT
D
ISCOVERY
C
UT
-O
FF
which is being submitted in the above-
referenced investigation.
Respectfully submitted,
James C. Otteson
Enclosures
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, DC 20436
Before The Honorable
E. James Gildea
Administrative Law Judge
In the Matter of
CERTAIN WIRELESS CONSUMER ELECTRONICS
DEVICES AND COMPONENTS THEREOF
Investigation No. 337-
TA
-853
COMPLAINANTS’ RENEWED
MOTION
TO AMEND
THEIR
AMENDED
TENTATIVE
LIST OF HEARING
WITNESSES
AND
MOTION
FOR LEAVE FOR RESPONDENTS
TO
TAKE THE DEPOSITION
OF
GLORIA FELCYN AFTER THE FACT DISCOVERY CUT
-
OFF
Complainants Technology Properties Limited, LLC, Phoenix
Digital Solutions, LLC
(“PDS”)
, and Patriot Scientific Corporation
(“Patriot”)
(
collectively,
“Complainants
”)
respectfully renew the
ir
Motion to Amend
Their
Amended Tentative
List of Hearing Witnesses
to include Ms. Gloria Felcyn, a member of the Patriot board. At Respondents’ request,
Complainants also
move for leave for
Respondents to take the deposition of Gloria Felcyn after
the fact discovery cut
-
off
. For the reasons set forth in the accompanying memorandum,
Complainants
respectfully
request that th
is
Renewed
Motion be granted.
//
2
Pursuant to Ground Rule 2.2, Complainants certify
that Complainants
contacted counsel
for all Respondents and Staff regarding
their positions on the initial motion at least two business
days prior to filing the motion.
Staff indicated it would
not oppose the motion. Respondents
indicated
that
they
would not oppose a motion from Complainants to amend
their
witness list
provided that the ALJ permits Respondents to depose Ms. Felcyn outside
of
the discovery period
at a mutually agreeable time and place
.
Dated:
March 29
, 2013
/s/ James C. Otteson
James C. Otteson
A
GILITY
IP
L
AW
,
LLP
149 Commonwealth Drive
Menlo Park, California 94025
Telephone: (650) 227-4800
TPL853@agilityiplaw.com
Michelle G. Breit
A
GILITY
IP
L
AW
,
LLP
14350 North 87th Street, Suite 190
Scottsdale, Arizona 85260
Telephone: (480) 646-3434
TPL853@agilityiplaw.com
Counsel for Complainants
Technology Properties Limited LLC and
Phoenix Digital Solutions LLC
/s/ Charles T. Hoge
Charles
T. Hoge
KIRBY NOONAN LANCE & HOGE, LLP
350 Tenth Avenue, Suite 1300
San Diego, California 92101
Telephone: (619) 231-8666
choge@knlh.com
Counsel for Complainant Patriot Scientific
Corporation
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, DC 20436
Before The Honorable
E. James Gildea
Administrative Law Judge
In the Matter of
CERTAIN WIRELESS CONSUMER ELECTRONICS
DEVICES AND COMPONENTS THEREOF
Investigation No. 337-
TA
-853
MEMORANDUM IN SUPPOR
T OF
COMPLAINANTS’ RENEWED
MOTION TO
AMEND
THEIR
AMENDED TENTATIVE LIST OF HEARING WITNESSES AND
MOTION FOR LEAVE FOR
RESPON
DENTS
TO TAKE THE DEPOSITI
ON OF
GLORIA FELCYN AFTER THE FACT DISCOVERY CUT
-
OFF
In Order No. 21, the ALJ permitted Complainants to renew their motion to show good
cause for adding Ms. Gloria Felcyn to their Amended Tentative Witness list.
1
Complainants
apprecia
te the opportunity afforded by the Court, and submit that the
re are at least three bases for
“good cause” to amend their witness list.
1.
Complainants Merely Seek to Amend Their
Tentative
Witness List.
As an initial matter, Complainants do
not
seek a modifica
tion of the procedural schedule.
Rather, Complainants’ request is to amend their prior
tentative
witness list, as such list was
specifically defined in Order No. 15: January 18, 2013 was the date by which the parties were
required to “[f]ile
tentative
list of witnesses a party will call to testify at the evidentiary hearing.”
Order No. 15, (emphasis added).
Unless
Complainants’
are permitted
to modify their
tentative
witness list
– under justifiable circumstances, as discussed below –
the word “tentativ
e” in Order
No. 15 would have no meaning.
1
Complainants’
proposed Second Amended Tentative List of Hearing Witnesses is attached hereto
as Exhibit A.
4
2.
Complainants
Provided Additional PDS Financial Records Before the
Discovery Cut
-
Off (But After Tentative Witness Lists) in a Good Faith Effort
to Meet and Confer with Respondents.
Second,
after
the submission of te
ntative witness lists
– but
before
the discovery cut-
off
–
Respondents’ specifically requested that Complainants produce additional documents that related
to their domestic industry assertions. Acting in good faith during the meet and confer process,
Complainants agreed to produce six years of balance sheets and profit and loss statements (P&L
statements)
(collectively, the “PDS financial documents”)
for Complainant PDS before the
discovery cut-off. Recognizing that Respondents would want a deposition wit
ness
to testify
about the PDS financial documents, Complainants simultaneously offered Ms. Gloria Felcyn for
deposition.
2
Complainant PDS is a joint venture LLC that is jointly owned and controlled by
Complainants TPL and Patriot.
Ms. Felcyn
is a member of
Complainant
Patriot’s board
and a
forensic accountant. She also has direct knowledge regarding the PDS financial documents.
A more detailed explanation of the meet and confer process may be helpful for the ALJ.
Starting around
January 31
, 2013, Respondents began
to request
a number of
categories of
documents
related to
Complainants’ domestic industry assertions.
See, e.g.
,
Ex
h. B. Among
those documents were
detailed P&L statements and balance sheets which showed
investments
made by
Compl
ainant
PDS in the MMP licensing program relating to the asserted ’336 patent.
Complainants produced
the
PDS financial documents on the morning of February 14.
See
Ex
h.
C (production e-
mails
for
PAT853_00543865 through PAT853_00543991).
2
Besides the PDS financial documents, Complainants also produced over 12,000 pages of other
documents relating to their domestic industry assertions in a good faith effort to work with Respondents during the
meet and confer process, even though Complainants
believed the bulk of those documents were unnecessary.
See
Exhibit H. Complainants should not be penalized for working with Respondents in good faith to provide documents
and witnesses that Respondents only met and conferred about
after
the exchange of
tentative witness lists.
5
On the
same day
Complainants produced the PDS financial documents
, the parties held a
Discovery Committee Meeting. During the call, Complainants offered to make Ms. Felcyn
available for deposition during
the next
seven
days
leading up to
the close of fact discovery
to
testify about the documents.
During that timeframe, Respondents were already in the process of
taking depositions of Complainants’ witnesses in California. Complainants confirmed Ms.
Felycn’s availability with an email after the
DCM
.
See
Exh. D.
Complainants contacted Respondents again the next day (February 15) to
offer
Ms.
Felcyn
for
deposition before the fact discovery deadline.
See
Exh. E.
However, Respo
ndents
remained silent for five days,
delaying any response
until February 20—two days before the
close of
fact discovery.
See
Exh
. F.
It was then
–
for
the first time
–
that
Respondents suggested
that Complainants needed to amend their tentative witness list
to include Ms. Felcyn.
Id.
At that
point, it was too late to schedule Ms. Felcyn’s deposition bef
ore the fact discovery deadline,
but
Respondents stated they would not oppose a motion
by
Complainants
to amend their tentative
witness list if Complainants
agreed to make
Ms. Felcyn
ava
ilable
for deposition
after the
deadline.
Id.
In reliance on Respondents proposal, Complainants in good faith went
back
to
obtain additional availability for
Ms. Felcyn’s deposition
after the close of discovery
.
However,
Respondents indicated that they would not proceed with the deposition until Complainants filed
their motion to amend their tentative witness list.
Complainants filed
the
ir first
motion shortly
thereafter
, on March 4, 2013.
Accordingly, Complainants’ good faith efforts to produce hundreds of additional pages
(and Ms. Felcyn for deposition) – specifically in response to Respondents’ meet and confer
requests
after
the deadline for tentative witness lists
– should constitute “good cause” sufficient
to add Ms. Felcyn to Complainants witness list. To find otherwise would reward Respondents
6
for delaying their meet and confer requests for those documents until after
tentative
witness lists
were submitted.
3.
Complainant TPL Recently Filed a Chapter 11 Petition, Which Highlights
the Importance of Testimony From Complainants Patriot and PDS
Regarding Their Investments in the Domestic Industry.
The third basis for “good cause” to amend Complainants’ witness list is Complainant
TPL’s recent petition for reorganization
under Chap
ter 1
1 on March 20, 2013 –
well after the
submission of Complainants’ tentative witness list
.
See
Exhibit G. Neither Complainant P
atriot
,
the Patriot members of Complainant
PDS
, nor Complainants’ counsel
were aware that TPL
would file its Chapter 11 petition until it was filed, and they certainly did not know about it at the
time
they produced the PDS balance sheets and offered Ms. Felcyn for deposition.
From the beginning of this Investigation, Complainants have relied primarily on the
domestic investments of
Complainant TPL to support their domestic industry based on an
extensive licensing program for the MMP portfolio (including the ’336 patent).
Despite
TPL’s
Chapter 11 petition
, Complainants still believe that their continued reliance on TPL’s
investments
alone are sufficient to establish a
domestic industry based on licensing. However, in
order to counter any arguments Respondents may make regarding domestic industry as a result
of
TPL’s
Chapter 11 petition, Complainants must be able to present
Patriot a
nd PDS witnesses
at
trial who can explain the PDS financial documents.
Ms. Felcyn’s testimony in support of the
PDS statements will
provide foundation for and
clarify the nature of the
investments made by PDS in the
MMP
licensing program.
Complainants submitted their tentative witness list
prior to both TPL’s Chapter 11 petition and
Respondents’ request for documents related to PDS and Patriot’
s
domestic industry investments.
These events, which were
well
beyond the control of Complainants Patriot and PDS (and
Complainants’ counsel),
make it necessary for Complainants to
offer witnesses
who can explain
7
the PDS financial documents
. This is especially true because
Respondents intend to rely on
expert testimony
on domestic industry, which will no doubt address the very PDS financial
documentation
that were
to be the subject of Ms. Felcyn’s deposition
(which
Complainants
attempted to schedule before the close of fact discovery, while Respondents resisted scheduling).
Without Ms. Felcyn’s testimony, the Court will be left with one
-
sided, speculative testimony
from Respondents’ expert.
Accordingly, absent leave to amend their tentative witness list,
Complainants will be
severely
prejudiced at trial.
For
all of
the reasons set forth above, Compla
inants
respectfully request that the
ir
renewed
motion to amend Complainants’
Amended Tentative List of Hearing Witnesses to
include Ms. Gloria Felcyn (and motion for leave for Respondents to take the deposition of Ms.
Felcyn after the fact discovery deadli
ne)
be granted.
Dated:
March 29
, 2013
/s/ James C. Otteson
James C. Otteson
A
GILITY
IP
L
AW
,
LLP
149 Commonwealth Drive
Menlo Park, California 94025
Telephone: (650) 227-4800
TPL853@agilityiplaw.com
Michelle G. Breit
A
GILITY
IP
L
AW
,
LLP
14350 North 87th Street, Suite 190
Scottsdale, Arizona 85260
Telephone: (480) 646-3434
TPL853@agilityiplaw.com
Counsel for Complainants
Technology Properties Limited LLC and
Phoenix Digital Solutions LLC
8
/s/ Charles T. Hoge
Charles T. Hoge
KIRBY NOONAN LANCE & HOGE, LLP
350 Tenth Avenue, Suite 1300
San Diego, California 92101
Telephone: (619) 231-8666
choge@knlh.com
Counsel for Complainant Patriot Scientific
Corporation
9
Appendix of Exhibits and Declarations
Document
Description
Exhibit A
Complainants’ Second Amended Tentative List of Hearing Witnesses,
dated March 4, 2013
Exhibit B
January 31, 2013 email from S. Hamblin to T. Carmack and J. Otteson
Exhibit C
February 14, 2013 production e
-
mails for
PAT853_00543865
through
PAT853_00543991
Exhibit
D
Email from J. Otteson to S. Hamblin, dated February 14, 2013
Exhibit
E
Email from J. Otteson to S. Hamblin, dated February 15, 2013
Exhibit F
Email chain between S. Hamblin and J. Otteson, dated February 20
-
21,
2013
Exhibit
G
Complainant
TPL’s voluntary petition for reorganization under Chapter
11
Exhibit H
Document production e
-
mails for domestic industry documents
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C.
Before the
Honorable
E. James Gildea
Administrative Law Judge
In the Matter of
CERTAIN WIRELESS CONSUMER
ELECTRONICS DEVICES AND
COMPONENTS THEREOF
Investigation No. 337-
TA
-853
CERTIFICATE OF SERVICE
I,
Tracey Nero
, hereby certify that on March 29, 2013,
a copy
of the foregoing documents
was served upon
each
of
the
following parties or their counsel in the manner indicated:
1.
C
OMPLAINANT
S
’
R
ENEWED
M
OTION TO
A
MEND
T
HEIR
A
MENDED
T
ENTATIVE
L
IST OF
H
EARING
W
ITNESSES AND
M
OTION FOR
L
EAVE FOR
R
ESPONDENTS TO
T
AKE THE
D
EPOSITION OF
G
LORIA
F
ELCYN
A
FTER THE
F
ACT
D
ISCOVERY
C
UT
-
O
FF
Acting Secretary
The Honorable Lisa R. Barton
Acting Secretary
U.S. International Trade Commission
500 E Street, S.W., Room 112A
Washington, D.C. 20436
☒
Via EDIS
☒
Via Overnight Courier
Two Copies
Administrative Law Judge
The Honorable
E. James Gildea
U.S. International Trade Commission
500 E Street, S.W., Room 317
Washington, D.C. 20436
☐
Via Hand Delivery
☒
Via Overnight Courier
Two
Double
-
Sided
Copies
Administrative Law Judge Attorney Advisor
s
Ken Schopfer
Primary
Attorney Advisor
500 E Street, S.W., Room 317
Washington, DC 20436
kenneth.schopfer@usitc.gov
☒
Via Email (PDF copy)
Excluding Attachments
CERTAIN WIRELESS CONSUMER ELECTRONICS
DEVICES AND COMPONENTS THEREOF
Inv. No. 337-
TA
-853
Page
2
Sarah Zimmerman
Attorney Advisor
500 E Street, S.W., Room 317
Washington, DC 20436
sarah.zimmerman@usitc.gov
☒
Via Email (PDF copy)
Excluding Attachments
Office of Unfair Import Investigation
R.
Whitney Winston
Investigative Attorney
Office of Unfair Import Investigation
U.S. International Trade Commission
500 E Street, S.W., Suite 401
Washington, D.C. 20436
Telephone: (202) 205-2221
Whitney.Winston@usitc.gov
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Via
Overnight Courier
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Via Email (
PDF
copy)
Counsel for
Complainant
Patriot Scientific Corporation
Charles T. Hoge
KIRBY NOONAN LANCE & HOGE, LLP
350 Tenth Avenue, Suite 1300
San Diego, California 92101
Telephone: (619) 231-8666
choge@knlh.com
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Via Hand Delivery
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Via Overnight Courier
☒
Via Email (PDF copy)
Counsel for
Respondents
Acer Inc. and Acer America
Corporation
Eric C. Rusnak
K&L GATES LLP
1601 K Street, NW
Washington, DC 20006-1600
Telephone: (202) 778-9000
Facsimile: (202) 778-9100
AcerAmazonNovatel ITC853@klgates.com
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Via Hand Delivery
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Via Email (PDF copy)
Counsel for
Respondent
Amazon.com, Inc.
Eric C. Rusnak
K&L GATES LLP
1601 K Street, NW
Washington, DC 20006-1600
Telephone: (202) 778-9000
Facsimile:
(202) 778-9100
AcerAmazonNovatel_ITC853@klgates.com
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Via First Class Mail
☐
Via Hand Delivery
☐
Via Overnight Courier
☒
Via Email (PDF copy)
CERTAIN WIRELESS CONSUMER ELECTRONICS
DEVICES AND COMPONENTS THEREOF
Inv. No. 337-
TA
-853
Page
3
Counsel for
Respondent
Barnes & Noble, Inc.
Paul F. Brinkman
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
1299 Pennsylvania Avenue NW, Suite 825
Washington, DC 20004
Tel.:
(202) 538-8000
Fax:
(202) 538-8100
BN
-
853@quinnemanuel.com
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Counsel for
Respondents
Garmin Ltd., Garmin International,
Inc. and Garmin USA, Inc.
Louis S. Mastriani
ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P.
1133 Connecticut Avenue, N.W., 12th Floor
Washington, DC 20036
Telephone: (202) 467-6300
Facsimile:
(202) 466-4006
Garmin
-853@adduci.com
Garmin
-
853@eriseIP.com
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Counsel for Respondents
HTC Corporation
and HTC
America
Stephen R. Smith
COOLEY LLP
11951 Freedom Drive
Reston, VA 20190
Telephone: (703) 456-8000
Facsimile: (703) 456-8100
HTC
-
TPL@cooley.com
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Counsel for Respondent Huawei Technologies Co., Ltd.,
Huawei Device Co., Ltd., Huawei Device USA Inc., and
Futurewei Technologies, Inc.
Timothy C. Bickham
STEPTOE & JOHNSON LLP
1330 Connecticut Avenue, N.W.
Washington, D.C. 20036
Tel
ephone: (202
)
429-3000
Fa
csimile:
(202
)
429-3902
Huawei853@steptoe.com
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Via Email
(PDF copy)
CERTAIN WIRELESS CONSUMER ELECTRONICS
DEVICES AND COMPONENTS THEREOF
Inv. No. 337-
TA
-853
Page
4
Counsel for Respondents
Kyocera Corporation
and Kyocera
Communications, Inc.
M. Andrew Woodmansee
MORRISON & FOERSTER LLP
12531 High Bluff Drive
San Diego, CA 92130
Telephone: (858) 720-5100
Facsimile: (858) 720-5125
Kyocera
-
TPL
-
ITC@mofo.com
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Counsel
for Respondents
LG Electronics, Inc.
and
LG
Electronics U.S.A., Inc.
Scott A. Elengold
FISH & RICHARDSON P.C.
1425 K Street, N.W. 11
th
Floor
Washington, DC 20005
Telephone: (202) 783-5070
Facsimile: (202) 783-2331
LG
-
TPLITCService@fr.com
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Counsel for Respondents
Nintendo Co., Ltd.
and Nintendo of
America Inc.
Stephen R. Smith
COOLEY LLP
11951 Freedom Drive
Reston, VA 20190
Telephone: (703) 456-8000
Facsimile: (703) 456-8100
Nintendo
-
TPL@cooley.com
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Email (PDF copy)
Counsel for
Respondent
Novatel Wireless, Inc.
Eric C. Rusnak
K&L GATES LLP
1601 K Street, NW
Washington, DC 20006-1600
Telephone: (202) 778-9000
Facsimile: (202) 778-9100
AcerAmazonNovatel_ITC853@klgates.com
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Attorneys for Respondents
Samsung Electronics Co., Ltd.
and
Sa
m
sung Electronics America, Inc.
Aaron Wainscoat
DLA PIPER LLP
2000 University Avenue
East Palo Alto, CA 94303-2214
Telephone: (650) 833-2442
Facsimile: (650) 687-1135
853
-
DLA
-
Samsung
-
Team@dlapiper.com
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