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UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF FLORIDA 

Miami Division 

Case No.: 20-22051-CIV-MARTINEZ-OTAZO-REYES 

SISVEL INTERNATIONAL S.A., 3G 

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

Plaintiffs, 

v. 

HMD AMERICA, INC. and HMD 

GLOBAL OY, 

Defendants. 

DEFENDANTS’ MOTION TO MODIFY SCHEDULING ORDER 

Defendants HMD America, Inc. and HMD Global Oy (“HMD”), by and through counsel, 

pursuant to S.D. Fla. L.R. 7.1, respectfully moves this Court to modify the Scheduling Order 

(Doc. 9 at 5-7) in accordance with Defendants’ proposed Scheduling Order (Exhibit 1). If entered, 

Defendants’ proposed Scheduling Order would extend nearly all deadlines in the existing 

Scheduling Order (Doc. 9 at 5-7), including the trial date. 

HMD submits the following memorandum of law in support of this Motion. 

MEMORANDUM OF LAW 

I. INTRODUCTION 

This is a complex patent lawsuit in which Plaintiffs (collectively “Sisvel”) assert nine 

patents involving wireless communications technologies. Compelling circumstances exist to 

modify the Scheduling Order in this case. 

First, HMD’s proposed schedule provides a structure that is typical for patent lawsuits and 

is crucial for the orderly management of this action. Specifically, it includes deadlines for claim 

construction activities pursuant to the Supreme Court’s decision in Markman v. Westview 

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Instruments, Inc., 517 U.S. 370 (1996), and provides that deadlines for expert reports, the close of 

discovery, and dispositive motions occur after the Court issues its claim construction order. 

Second, HMD submits that the circumstances of this case are such that it should be assigned 

to the Complex Track under Local Rule 16.1(a). This case involves many patents and technology 

that is not within the knowledge of lay people. The nine asserted patents are alleged to be owned 

by three different plaintiffs. This case will involve multiple experts for each side, including 

technical experts and damages experts. The volume of evidence will be large because of the large 

number of asserted patents, the nature of the accused products, and the fact that Plaintiffs’ 

infringement claims are based on complex industry standards. Furthermore, this case involves 

significant challenges in obtaining evidence because of the likelihood of discovery from foreign 

third parties, which will be time-consuming and includes the prospect of foreign language 

documents and witnesses who might not speak English. Because of the complex nature of this 

case, the large number of asserted patents, and the extensive record that will be developed, HMD 

currently estimates that this case will require 15 full days of trial. 

In view of the foregoing, HMD respectfully requests entry of its proposed Scheduling 

Order (Exhibit 1), which would provide deadlines for critical claim construction activities, have 

expert discovery and dispositive motions occur after claim construction, and extend the timeframe 

of the schedule to accommodate the complexities of this case. 

II. ARGUMENT 

A. HMD’s Proposed Schedule Sets Forth A Structure That Is Typical Of Patent 

Lawsuits And Crucial To Orderly Case Management 

Many District Courts have established case management procedures for patent lawsuits 

that are embodied in local rules, standing orders, and/or model orders. The Federal Judicial Center 

has published a guide for managing patent cases that sets forth similar procedures. Peter S. Menell 

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et al., Fed. Judicial Ctr., Patent Case Management Judicial Guide (3d ed. 2016). An important 

aspect of those established case management procedures includes providing a framework and 

deadlines for the process of “claim construction” that culminates in a decision by the Court that 

construes the meanings of key patent claim terms pursuant Markman v. Westview Instruments, Inc., 

517 U.S. 370 (1996). The Supreme Court further noted in Teva Pharmaceuticals USA, Inc. v. 

Sandoz, Inc., 135 S. Ct. 831 (2015), that claim construction can involve underlying questions of 

fact that may be resolved by the court, and that the Markman process might involve evidentiary 

hearings and expert declarations. 

“To structure and facilitate the claim-construction process, more than thirty districts have 

adopted patent local rules (PLRs) setting forth a standardized timeline and framework for 

disclosures and submissions leading up to a claim-construction or ‘Markman’ hearing.” Patent 

Case Management Judicial Guide, § 2.1.3.2 at 2 13.1 Based on Sisvel’s nine asserted patents in 

this action, the Court’s claim construction (“Markman”) decision will play a crucial role with 

respect to assessing and developing the parties’ claims and defenses. The claim construction 

process in this case would benefit from the sequence of events that is typical in many courts, which 

includes identification of the asserted patent claims and key claim terms, briefing by the parties on 

 

1

 For example, the four District Courts that currently handle the most patent litigation all have 

well-established procedures for managing patent lawsuits that include provisions for claim 

construction: 

 The Western District of Texas: Sample Order available at 

https://www.txwd.uscourts.gov/wpcontent/uploads/Standing%20Orders/Waco/Albright/Sample%20Order%20Governing%2

0Proceedings%20-%20Patent%20Cases%20071720.pdf

 The District of Delaware: Chief Judge Stark’s Patent Procedures available at Available 

at: https://www.ded.uscourts.gov/sites/ded/files/LPS-PatentProcedures.pdf

 The Eastern District of Texas: Patent Local Rules available at: 

http://www.txed.uscourts.gov/?q=patent-rules

 The Northern District of California: Patent Local Rules available at: 

https://www.cand.uscourts.gov/filelibrary/177/Patent_Local_Rules_1-2017.pdf

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the meanings of those claim terms, the Court holding a Markman hearing, and the Court’s claim 

construction decision (Markman order). See Patent Case Management Judicial Guide, § 5.1 

Timing and Procedure of Claim Construction. 

The Court’s Markman decision will serve as a necessary predicate for litigating and 

deciding the issues of patent infringement and validity. “An infringement analysis entails two 

steps. The first step is determining the meaning and scope of the patent claims asserted to be 

infringed. The second step is comparing the properly construed claims to the device accused of 

infringing.” Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1356 (Fed. Cir. 2007) 

(quotation and citations omitted); see, e.g., Markman, 517 U.S. at 384 (“The two elements of a 

simple patent case [are] construing the patent and determining whether infringement 

occurred ....”). Likewise, patent claims must be construed to assess the validity of patents. See, 

e.g., Eko Brands, LLC v. Adrian Rivera Maynez Enterp., 946 F.3d 1367 (Fed. Cir. 2020) (affirming 

the District Court’s claim construction and related finding that an asserted patent was invalid for 

obviousness in view of prior art); Joovy LLC v. Target Corp., 437 Fed. Appx. 932, 937 (Fed. Cir. 

2011) (finding a patent to be invalid as anticipated by prior art, stating, “This court holds that under 

the proper claim construction of “rear wheels,” [the prior art] unquestionably discloses each and 

every element of claim 1 and, thus, anticipates the claims under 35 U.S.C. § 102(b) as a matter of 

law.”). 

Because the issues of patent infringement and validity are dependent on the Court’s 

construction of disputed claim terms, it is critical for expert reports and dispositive motions to 

occur after the Court issues its claim construction decision. For example, the Patent Case 

Management Judicial Guide states: 

Expert reports on infringement, invalidity, and damages are central to almost every 

patent case. Technical experts opine on infringement and invalidity based on the 

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meaning of the claim terms as determined by (or anticipated from) the court’s 

claim-construction order. For this reason, claim construction should precede 

expert reports and depositions. 

Patent Case Management Judicial Guide, § 2.1.3.2.3.3 Expert Discovery After Claim 

Construction at 2-22 (emphasis added). 

A majority of courts have found that the most opportune time to hold the Markman

hearing is midway through, or before the close of, fact discovery, and prior to expert 

discovery. This timing affords the parties sufficient discovery in advance of the 

claim-construction hearing to gain an understanding of the liability issues and 

accurately identify the terms needing construction. It also leaves time for the 

parties to finish fact discovery and to focus expert discovery after the court has 

issued its claim-construction ruling. This timing also avoids requiring an expert 

to base her opinion on alternative claim constructions or to do a new report if the 

court does not adopt either party’s construction and devises its own. 

Id., § 5.1.1 at 5-5 to 5-6 (emphasis added); Zipit Wireless Inc. v. Blackberry Ltd., Civil Action 

No. 6:13-cv-02959-JMC, 2016 WL 5933975, at *9 (D.S.C. Oct. 12, 2016). 

If claim construction (including the Court’s Markman decision) were not to occur before 

the deadlines for expert reports or dispositive motions, the parties would be forced to make 

alternative arguments concerning patent infringement and invalidity to account for the competing 

constructions of disputed patent claim terms. Given the large number of patents and asserted patent 

claims, the need for such alternative arguments would impose an unworkable burden on the parties 

and their experts. 

Accordingly, HMD’s proposed schedule (Exhibit 1) employs the general structure of wellestablished case management procedures for patent lawsuits in part by providing for expert reports 

and expert depositions to occur after claim construction—that is, after briefing, the Markman

hearing, and the Court’s claim construction decision.2

 

2

 Courts with established case management procedures also typically include provisions for 

plaintiffs to serve “infringement contentions” that describe the substance of their infringement 

claims and for defendants to serve “invalidity contentions” that describe the substance of their 

invalidity defenses. E.g., N.D. California Patent L.R. 3-1 and 3-3 and E.D. Texas Patent 

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B. HMD Requests Assignment Of This Case To The Complex Track And 

Extension Of The Deadlines In The Scheduling Order In Accordance With 

HMD’s Proposed Schedule 

This case is complex, involving nine patents asserted by three plaintiffs. The asserted 

patents involve wireless communications technology—for example, the 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 

 

L.R. 3-1 and 3-3. HMD’s proposed scheduling order does not include deadlines for infringement 

and invalidity contentions because HMD proposes that the parties can exchange infringement 

and invalidity contentions through interrogatories. 

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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 make for a complex case that will require extensive discovery 

and more time than the current Scheduling Order allows. However, those factors are 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 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. 

The foregoing circumstances show that this is a complex case that should be assigned to 

the Complex Track under Local Rule 16.1(a). In view of the complex nature of this case, the large 

number of asserted patents, and the extensive record that will be developed, HMD currently 

estimates that this case will require 15 full days of trial. The foregoing also shows that compelling 

circumstances exist to modify the Scheduling Order in accordance with HMD’s proposed schedule 

(Exhibit 1). 

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III. CONCLUSION 

For the reasons stated above, HMD respectfully asks this Court to grant this Motion and to 

modify the Scheduling Order to adopt HMD’s proposed schedule. 

LOCAL RULE 7.1(a)(3) CERTIFICATION

Counsel for the movant has conferred in writing and telephonically with counsel for all 

Plaintiffs in a good faith effort to resolve the issues raised in the Motion. Plaintiffs did not take a 

position on this Motion and HMD’s proposed scheduling order. The proposed amended schedule 

was provided Plaintiffs September 10, 2020, and Plaintiffs’ counsel advises that it is still under 

consideration. 

Dated: September 16, 2020 

WILLIAM J. MCCABE, Esq. 

Pro hac vice pending 

wmccabe@perkinscoie.com 

GENE W. LEE, Esq. 

Pro hac vice pending 

glee@perkinscoie.com 

MATTHEW J. MOFFA, Esq. 

Pro hac vice pending 

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 

Respectfully submitted, 

/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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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this 16th day of September, 2020, 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. 

Elizabeth M. Manno 

Perkins Coie LLP 

1900 Sixteenth Street, Suite 1400 

Denver, CO 80202-5255 

Telephone: (303) 291-2397 

Fax: (303) 291-2497 

Email: ebanzhoff@perkinscoie.com 

By: /s/ Joseph W. Bain

Joseph W. Bain 

Florida Bar No. 860360 

jbain@shutts.com

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