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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

Civil Action No. 1:20-cv-22051-JEM

SISVEL INTERNATIONAL S.A., 

3G LICENSING S.A., and SISVEL S.p.A.,

 Plaintiffs,

 v.

HMD AMERICA, INC., and HMD GLOBAL 

OY,

 Defendants.

JOINT CONFERENCE REPORT PURSUANT TO LOCAL RULE 16.1(b)(2)

Plaintiffs Sisvel International S.A., 3G Licensing S.A., and Sisvel S.p.A. (“Sisvel” or 

“Plaintiffs”) and Defendants HMD America, Inc. and HMD Global Oy (“HMD” or “Defendants”), 

pursuant to Rule 16.1(b)(2) of the Local Rules for the Southern District of Florida and the Court’s 

August 20, 2020 Order (“Scheduling Order”), met by telephone on September 8, 2020, and hereby 

submit this Joint Conference Report.

Information Required by Local Rule 16.1(b)(2)

(A)Likelihood of settlement.

Settlement is possible. The parties are attempting in good faith to resolve this matter 

and will notify the Court if they do so.

(B) Likelihood of appearance in the action of additional parties.

The parties do not anticipate the appearance of any additional parties in this litigation. 

(C)Proposed limits on time.

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On September 16, 2020, HMD filed a Motion To Modify The Scheduling Order (ECF 

No. 19). After the submission of HMD’s motion, the parties agreed to HMD’s proposed schedule 

subject to different dates for the exchange of patent claim terms for construction and for the 

exchange of proposed constructions of patent claim terms (as shown below). On September 21, 

2020, the Court issued an order granting HMD’s motion and entering the deadlines listed below. 

(“Order,” ECF No. 22). 

Date Or Deadline Event

October 2, 2020 Deadline for Defendants to respond to 

complaint

October 12, 2020 Motions to join additional parties, amend the 

complaint, and class certification.

October 16, 2020 Plaintiffs to provide preliminary identification 

of asserted patent claims

December 24, 2020

Parties agreed date: December 23, 2020

Parties exchange patent claim terms for 

construction

January 11, 2020

Parties agreed date: January 19, 2021

Parties exchange proposed constructions of 

patent claim terms

February 1, 2021 Parties file opening claim construction briefs

February 22, 2021 Parties file responsive claim construction 

briefs

March 8, 2021 Parties file reply claim construction briefs

March 15, 2021 Parties file a joint claim construction 

statement

April 5, 2021 Optional deadline for parties file technology 

tutorials

April 12, 2021, or other date set at the 

Court’s convenience

Claim construction (Markman) hearing

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Date Or Deadline Event

May 24, 2021 The parties meet and confer to narrow

asserted patent claims, accused products, and 

asserted prior art references

June 21, 2021 Parties shall exchange opening expert witness 

summaries and reports. 

July 19, 2021 Parties shall exchange rebuttal expert witness 

summaries and reports. 

July 19, 2021 Parties shall exchange written lists containing 

the names and addresses of all witnesses 

intended to be called at trial and only those 

witnesses listed shall be permitted to testify.

August 2, 2021 A mediator must be selected

August 16, 2021 All discovery, including expert discovery, 

shall be completed

September 13, 2021 All Daubert, summary judgment, and other 

dispositive motions must be filed. Each party 

is limited to filing a single Daubert motion of 

no more than 20 pages. Summary judgment 

motions, in addition to containing a Statement 

of Material Facts pursuant to Local 

Rule 56.1(a), shall be accompanied by a 

separately-filed Joint Statement of 

Undisputed Fact, which must include all 

relevant facts about which there is no material 

dispute. Each undisputed fact shall be 

individually numbered and separated by 

paragraphs. This filing is limited to 10 pages 

and does not otherwise change the parties’ 

obligation to comply with Local Rule 56.1.

Note: If there are any unresolved discovery 

disputes pending fifteen days prior to this 

date, the moving party shall immediately 

advise the Court of all such unresolved 

disputes together with their status.

September 20, 2021 Mediation shall be completed

October14, 2021 All pretrial motions and memoranda of law 

must be filed. Each party is limited to filing a 

single motion in limine, which may not, 

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Date Or Deadline Event

without leave of Court, exceed the 20-page 

limit allowed by the Rules.

October 28, 2021 Joint Pretrial Stipulation must be filed.

November 11, 2021 Proposed jury instructions and/or proposed 

findings of fact and conclusions of law must 

be filed.

November 18, 2021 Calendar call

November 22, 2021 Beginning of two-week trial

In addition to the deadlines set by the Court’s Order, the parties agree to exchange 

initial disclosures pursuant to Fed. R. Civ. P. 26 on October 7, 2020.

(D)Proposals for the formulation and simplification of issues, including the 

elimination of frivolous claims or defenses and the number and timing of motions 

for summary judgment or partial summary judgment.

The parties do not have any proposals for the formulation and simplification of any 

issues at this time. As the case progresses, the parties will in good faith confer to discuss proposals 

for the formulation and simplification of the issues in this case.

(E) The necessity or desirability of amendments to the pleadings.

Plaintiffs do not anticipate that any amendments to the Complaint will be necessary. 

Defendants have not yet filed their responsive pleadings.

(F) The possibility of obtaining admissions of fact and of documents, electronically 

stored information or things which will avoid unnecessary proof, stipulations 

regarding authenticity of documents, electronically stored information or things, 

and the need for advance rulings from the Court on admissibility of evidence.

Through the discovery process it is expected that the parties will work together in good 

faith to obtain admissions and stipulations that will avoid unnecessary proof at trial. In particular 

the parties have discussed the use of Requests for Admission to address this issue. 

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(G)Suggestions for the avoidance of unnecessary proof and cumulative evidence.

Through the discovery process the parties have agreed to avoid the production of 

unnecessary proof and cumulative evidence. To the extent one party believes that the evidence is 

unnecessary or cumulative, the parties have agreed to work together in good faith to address these 

situations. 

(H)Suggestions on the advisability of referring matters to a Magistrate Judge or 

master.

The parties consent to referring discovery dispute related matters to the Magistrate 

Judge. The parties do not consent to referring any matters to a master at this time.

(I) A preliminary estimate of the time required for trial.

Plaintiffs’ position: Plaintiffs estimate that the time required for trial will be ten days.

Defendants’ position: In view of the complex nature of this case, the large number of 

asserted patents, and the extensive record that will be developed, Defendants currently estimate 

that this case will require 15 full days of trial.

(J) Requested date or dates for conferences before trial, a final pretrial conference, 

and trial.

At this time, the parties have no additional requested dates for conferences before trial, 

a final pretrial conference, or trial beyond the dates included in the Scheduling Order. 

(K)Any key issues about:

(i) Disclosure, discovery, or preservation of electronically stored information, 

including the form or forms in which it should be produced;

Plaintiffs’ position: The parties will negotiate in good faith an Electronically Stored 

Information agreement to address the disclosure of electronically stored information.

Defendants’ position: This case is complex, involving nine patents asserted by three 

plaintiffs. The asserted patents involve wireless communications technology—for example, the 

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manner in which mobile phones communicate with wireless communications networks—which is 

not within the knowledge of lay people. Accordingly, this case will involve multiple experts for 

each side, including technical experts and damages experts.

Discovery will involve a large volume of documents and other evidence—for example,

because of the large number of asserted patents and the number of HMD products accused of

infringement (multiple models of Nokia-brand mobile phones), and discovery will involve

technical documentation concerning how HMD’s accused products work. The asserted patents

were originally developed by three third-party companies—Nokia, LG Electronics, and

BlackBerry—and later acquired by Sisvel. The asserted patents list 29 inventors. Therefore,

discovery relating to the nine asserted patents, three original patent owners, and 29 inventors will

be extensive.

Sisvel’s complaint alleges that HMD’s accused products infringe the asserted patents

because the patents are essential to various aspects of 3G and 4G wireless communications

standards, meaning that products that comply with those aspects of the standards necessarily

infringe Sisvel’s asserted patents. Those standards were published and governed by one or more

third-party standards-setting organizations—for example, the European Telecommunications

Standards Institute (ETSI). Therefore, discovery into the development of those standards and

whether the asserted patents were declared to the standards-setting organization(s) as essential to

the relevant aspects of the 3G and 4G standards will be extensive.

The factors described above exacerbated by the fact that much of the discovery will 

occur from foreign (non-U.S.) entities and people. Four of the five parties are foreign companies 

of Belgium (plaintiffs Sisvel International, S.A., and 3G Licensing S.A.), Italy (plaintiff Sisvel 

S.p.A.), and Finland (defendant HMD Global Oy). The nine asserted patents were developed by 

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foreign companies from which discovery is likely necessary—namely, Nokia (Finland), LG 

Electronics (South Korea), and BlackBerry, formerly known as Research In Motion (Canada). The 

asserted patents identify 29 named inventors from Finland, South Korea, and Canada. The 3G and 

4G wireless communications standards implicated by Sisvel’s infringement claims involve one or 

more foreign standards-setting organizations—for example, ETSI is in France. Relevant 

documents and witnesses with relevant knowledge are likely spread around the world, and 

obtaining discovery of those sources will be time-consuming. Furthermore, discovery might 

involve foreign-language documents and witnesses who do not speak English, which will further 

complicate discovery.

(ii) Claims of privilege or of protection as trial-preparation materials, 

including – if the parties agree on a procedure to assert those claims after 

production – whether to ask the court to include their agreement in an 

order under Federal Rule of Evidence 502; and

The parties will negotiate in good faith an agreed protective order to address issues of 

privilege. 

(iii) When the parties have agreed to use the ESI Checklist available on the 

Court’s website (www.flsd.uscourts.gov), matters enumerated on the ESI 

checklist.

The parties will consider whether to use the ESI Checklist as part of their negotiations 

over an Electronically Stored Information agreement. 

Additional Information Required by the Court’s Scheduling Order:

(1) Whether the trial will be jury or non-jury.

Sisvel has demanded a jury trial.

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(2) An outline of the legal elements of each claim and defense raised by the pleadings (the 

parties are advised that this section shall not be a summary of allegations, but should 

be modeled on pattern substantive jury instructions applicable in this Court).

Plaintiffs allege that Defendants are liable for direct infringement of U.S. Patent Nos. 

7,979,070, 8,189,611, 8,600,383, 7,215,653, 7,319,718, 7,551,625, 7,580,388, 7,869,396 and 

8,971,279. In order to prevail on their patent infringement claim Plaintiffs must prove that it is 

more likely than not that Defendants made, used, imported, offered to sell, or sold the invention 

defined in at least one claim of the asserted patents.

Plaintiffs allege that Defendants are liable for induced infringement of U.S. Patent Nos. 

7,979,070, 8,189,611, 8,600,383, 7,215,653, 7,319,718, 7,551,625, 7,580,388, 7,869,396 and 

8,971,279. In order to prevail on their patent infringement claim Plaintiffs must prove that it is 

more likely than not that Defendants aided, instructed, or otherwise acted with the intent to cause 

acts that would constitute direct infringement of the asserted patents; that Defendants knew of the 

asserted patents, or showed willful blindness to the existence of the asserted patents at that time; 

that Defendants knew, or showed willful blindness, that the actions of the direct infringer would 

infringe at least one claim of the asserted patents; and that the direct infringer infringed at least 

one patent claim.

Plaintiffs allege that Defendants are liable for contributory infringement of U.S. Patent 

Nos. 7,979,070, 8,189,611, 8,600,383, 7,215,653, 7,319,718, 7,551,625, 7,580,388, 7,869,396 and 

8,971,279. In order to prevail on their patent infringement claim Plaintiffs must prove that it is 

more likely than not that Defendants had knowledge of both the asserted patent and direct 

infringement of the asserted patents; that someone other than the Defendants directly infringed a 

claim of the asserted patents; that Defendants sold, offered for sale, or imported within the United 

States a component of the infringing product or an apparatus for use in the infringing method; the 

component or apparatus is not a staple article or commodity of commerce capable of substantial 

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non-infringing use; the component or apparatus constitutes a material part of the claimed 

invention; and the Defendants knew that the component was especially made or adapted for use in 

an infringing product or method.

Plaintiffs allege that Defendants are liable for willful infringement of U.S. Patent No. 

7,979,070.

• Plaintiffs’ position: In order to prevail on their willful infringement claim Plaintiffs must 

prove by preponderance of the evidence that Defendants knew of U.S. Patent No. 

7,979,070 and intentionally infringed at least one asserted claim of the patent. 35 U.S.C. § 

284 permits the District Court to treble damages at its discretion. 

• Defendants’ position: Regarding the availability of enhanced damages under 35 U.S.C. 

§ 284, enhanced damages are generally reserved for egregious cases typified by willful 

misconduct beyond typical infringement. Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S.Ct. 

1923, 1933-34, 1935 (2016).

(3) A good-faith estimate of the specific dollar valuation of actual damages and other 

relief at issue.

Based solely on public information available prior to any discovery on sales of 

products, Plaintiffs estimate that their damages will be $6,750,000. This figure is subject to change 

based on discovery produced during litigation and any enhanced damages or attorney’s fees that 

the Court may assess.

Defendants dispute Plaintiffs’ estimate of the specific dollar valuation of actual 

damages and other relief at issue.

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(4) The need for variance from the discovery limitations imposed by the Local Rules 

and/or the Federal Rules of Civil Procedure, including the grounds supporting the 

requested variance.

The parties do not anticipate a need for variance from the discovery limitations imposed 

by the Local Rules and/or the Federal Rules of Civil Procedure.

Dated: September 23, 2020

/s/Jorge Espinosa/

Jorge Espinosa, Esq.

Florida Bar No: 799032

Jorge.espinosa@gray-robinson.com

Francesca Russo, Esq.

Florida Bar No.: 174912

Francesca.russo@gray-robinson.com

Robert R. Jimenez, Esq.

Florida bar No. 72020

Robert.jimenez@gray-robinson.com

GRAY | ROBINSON, P.A.

333 S.E. 2nd Ave., Suite 300

Miami, FL 33131

Tel: 305-416-6880

Fax: 305-416-6887

tdevlin@devlinlawfirm.com

Attorneys for Plaintiffs 

Sisvel International S.A.,

3G Licensing S.A., and SISVEL S.p.A.

/s/Joseph W. Bain/

Joseph W. Bain, Esq.

Florida Bar No. 860360

Email Address: jbain@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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