UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF FLORIDA 

MIAMI DIVISION 

Case No.: 1:20-cv-22051-DPG 

SISVEL INTERNATIONAL S.A., 3G 

LICENSING S.A., and SISVEL S.p.A., 

Plaintiffs, 

v. 

HMD AMERICA, INC. and HMD 

GLOBAL OY, 

Defendants. 

__________________________________/

DEFENDANTS’ RESPONSE TO 

PLAINTIFFS’ MOTION REQUESTING CLARIFICATION ON 

PAGE LIMITS FOR CLAIM CONSTRUCTION BRIEFING 

Defendants HMD AMERICA, INC., and HMD GLOBAL OY (“Defendants”), 

respectfully respond to Plaintiffs’ Motion Requesting Clarification On Page Limits For Claim 

Construction Briefing (“Motion”; Dkt. 54) as follows: 

The 20-page limit of Local Rule 7.1(c)(2) applies to motions and their incorporated 

memoranda and opposing memoranda. Claim construction briefs are not motions and therefore 

are not subject to that page limit. Therefore, Defendants believe that Plaintiffs’ Motion is 

unnecessary but do not oppose the relief requested. 

It is evident that the parties did not view claim construction briefs as being motions and 

related memoranda that are subject to Local Rule 7.1. The parties negotiated and proposed to the 

Court and the Court adopted a multi-step process for claim construction that is different from the 

process of briefing motions—which included, for example, identification of asserted patent 

claims, exchange of claim terms for construction, exchange of proposed constructions, and three 

Case 1:20-cv-22051-DPG Document 55 Entered on FLSD Docket 03/09/2021 Page 1 of 5
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rounds of briefs simultaneously filed by both parties. See proposed schedule in the Local 

Rule 16.1(b)(2) Joint Conference Report (Dkt. 24), Proposed Amended Scheduling Order 

(Dkt. 34), and Scheduling Order (Dkt. 35). That process as proposed by the parties and ordered 

by the Court did not include any page limits for briefing. Id. Another departure from Local 

Rule 7.1 is that the parties’ Opening Claim Construction Briefs did not include a certification 

about a pre-filing conference under Local Rule 7.1(a)(3) (Dkts. 47, 48). 

There were and are good reasons why the 20-page limit of Local Rule 7.1(c)(2) should 

not apply to the claim construction briefs in this case. This is a complex patent case of unusually 

large scope because Plaintiffs have asserted nine unrelated patents that involve different aspects 

of cellular communications technologies. The pre-briefing steps relating to claim construction 

(that is, identification of asserted patent claims, exchange of claim terms for construction, 

exchange of proposed constructions) allowed the parties to narrow the disputed issues. As a 

result, the parties’ opening claim construction briefs address disputed claim terms from six of the 

nine asserted patents being discussed in (Dkts. 47, 48). 

The disputed claim terms involve technical terms that are not normally used by lay 

people or terms that are used differently from how lay people use them. As such, they require 

substantial explanation regarding the background technology at issue and the meanings of the 

terms themselves. (In contrast, Plaintiffs have not attempted to explain the meanings for nearly 

all of the disputed claim terms, asserting that “no construction is needed.”) As a result, some 

other District Courts that handle a high volume of patent litigation either do not have page limits 

for claim construction briefs or have liberal page limits. For example, the Western District of 

Texas, Waco Division, which has the most patent cases in the country, allows for 35-page 

opening and responsive claim construction briefs for six patents. See

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https://www.txwd.uscourts.gov/wpcontent/uploads/Standing%20Orders/Waco/Albright/Order%20Governing%20Proceedings%20-

%20Patent%20Cases%20022620.pdf at 4 (for cases with more than five patents, the page limit 

for opening and responsive briefs is “30 pages, plus 5 additional pages for each patent over 5 up 

to a maximum of 45 pages”). 

If the Court were to disagree with the parties and find that claim construction briefs are 

subject to the 20-page limit of Local Rule 7.1(c)(2), HMD respectfully submits that good cause 

exists to enlarge the limit to 35 pages for opening and responsive briefs, for the reasons 

explained above. 

Dated: March 9, 2021 Respectfully submitted, 

/s/ Joseph W. Bain 

JOSEPH W. BAIN, ESQ. 

Florida Bar No. 860360 

Email Address: jbain@shutts.com 

Secondary Email: hmdteam@shutts.com 

SHUTTS & BOWEN LLP 

1100 CityPlace Tower 

525 Okeechobee Boulevard 

West Palm Beach, Florida 33401 

Telephone: (561) 835-8500 

Facsimile: (561) 650-8530 

ATTORNEYS FOR DEFENDANTS 

HMD AMERICA, INC., AND 

HMD GLOBAL OY

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WILLIAM J. MCCABE, ESQ. 

Admitted pro hac vice

wmccabe@perkinscoie.com 

GENE W. LEE, ESQ. 

Admitted pro hac vice

glee@perkinscoie.com 

MATTHEW J. MOFFA, ESQ. 

Admitted pro hac vice

mmoffa@perkinscoie.com 

PERKINS COIE LLP 

1155 Avenue of the Americas, 22nd floor 

New York, NY 10036 

Telephone: (212) 262-6900 

Facsimile: (212) 977-1649 

SHYAMKRISHNA PALAIYANUR, ESQ. 

Admitted pro hac vice 

SPalaiyanur@perkinscoie.com 

PERKINS COIE LLP 

500 W 2nd Street, Suite 1900 

Austin, TX 78701 

Telephone: (737) 256-6100 

Facsimile: (737) 256-6300

ATTORNEYS FOR DEFENDANTS 

HMD AMERICA, INC., AND 

HMD GLOBAL OY 

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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this 9th day of March, 2021, I electronically filed the 

foregoing with the Clerk of Court by using the CM/ECF system which served a copy on the 

following: 

Francesca Russo-Di Staulo, Esq. 

Robert Ralph Jimenez, Esq. 

Jorge Tadeo Espinosa, Esq. 

GrayRobinson, P.A. 

333 S.E. 2nd Avenue, Suite 3200 

Miami, FL 33131 

Telephone: 305-416-6880 

Fax: 305-416-6887 

Email: francesca.russo@gray-robinson.com 

Email: robert.jimenez@gray-robinson.com

Email: jorge.espinosa@gray-robinson.com 

Attorneys for Plaintiffs, Sisvel International S.A., 3g Licensing S.A., and Sisvel S.p.A. 

By: /s/ Joseph W. Bain

Joseph W. Bain 

Florida Bar No. 860360 

jbain@shutts.com

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