IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

In Re Innovatio IP Ventures, LLC, Patent Litigation

Case No. 1:11-cv-09308

Judge James F. Holderman

Magistrate Judge Sidney Schenkier

This Document Relates To:

All Cases

PARTIES’ AGENDA FOR THE NOVEMBER 8, 2012 STATUS CONFERENCE

In preparation for the upcoming November 8 status conference in the above-captioned 

matter, the parties jointly submit the following agenda, identifying the topics that the parties 

would like to address with the Court during the conference:

Innovatio’s Proposed Topics

1) Modification to the current schedule: Under the current schedule, the deadline for 

Innovatio to serve its final infringement contentions is December 21, 2012. [See Dkt. No. 

318.] Innovatio is seeking an extension of this deadline. 

• Innovatio’s Position: 

o Vast Amounts of Critical Discovery Have Not Been Provided: Innovatio 

served its first set of discovery requests on the New Network Operators and 

Manufacturers in mid-July. These requests sought information regarding the

identity, configuration and operation of Defendants’ infringing networks and 

equipment.1 Many of the Defendants (including at least 14 of the 16 New 

Network Operators) have yet to provide even the most basic information, 

including an identification of the wireless networks and equipment used by 

the Defendants. 

Concerned with the delay in Defendants’ production, Innovatio raised this 

issue with Judge Schenkier during the September status hearing. During the 

 1 Defendants should have included such information in their LPR 2.1 Initial Disclosures, which 

were due on July 17. (See LPR 2.1; requiring infringer to produce documents sufficient to show 

the operation and construction of each accused apparatus or method.) 

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hearing, counsel for 15 of the 16 New Network Operators, and three of the 

five Manufacturers represented that:

On the side of defendants for both the suppliers and the customers, 

we think in general that we can substantially complete these 

productions by the end of October, with a large portion of 

them coming sooner than that . . ..

(Tr. of Sept. 20 Hrg. before Judge Schenkier at p. 6; emphasis added.) 

During the October 19 hearing before Judge Schenkier, Innovatio noted that 

(1) it had yet to receive any, let alone a “large portion,” of Defendants’ 

production, as previously promised; and (2) parties represented by other 

counsel refused to agree to complete their production by the end of October. 

In response, Judge Schenkier noted that “in the ordinary course of things, 

three months out to be – three-and-a-half months [i.e. from service in mid-July 

to end of October] ought to be plenty of time to finish any production, any 

production.” (Tr. of Oct. 19 Hrg. at p. 6.) 

Despite their promises, not a single Network Operator substantially completed 

their production prior to the end of October. Most have only produced 

materials regarding their efforts to seek indemnification, but no substantive 

information regarding their accused networks or equipment. 

As for the Manufacturers, Cisco, Motorola and Netgear’s LPR 2.1 production 

included 400Gbytes of data, consisting of over 2.7 million pages most, if not 

all, of which was previously produced in an unrelated litigation.2 After raising 

this issue with Judge Schenkier, the Defendants ultimately agreed to provide 

an index identifying the specific documents in the production that they 

believed were relevant to this case. Defendants’ indexes identified just over 

80,000 pages, meaning that Defendants produced about 2.6 million pages (or 

about 97% of their “dump”) that they concede are not relevant to this action. 

At the time of serving their indexes, these Defendants also produced “new” 

documents. Innovatio’s review of these documents continues. However, after 

high-level reviews, it appears that these Defendants’ production is not 

complete.

 2 It is clear that the Defendants’ plan is to have the Manufacturers produce a significant number 

of documents, while having the Network Operators withhold information as long as possible. 

Defendants can then argue that the Manufacturers’ case has advanced ahead of the Network 

Operators, and thus, the Manufacturers should proceed in Tier One. The Court should not 

reward Defendants for this behavior. Moreover, evidence of the Network Operators’ direct 

infringement is relevant to the claim of indirect infringement against the Manufacturers. As 

such, Innovatio is entitled to obtain discovery from the Network Operators before serving its 

final infringement contentions against the Manufacturers. 

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Moreover, Defendants belatedly raised a prosecution bar objection, 

demanding that any Innovatio attorney that was involved in any prosecution 

or acquisition activity be prohibited from accessing Defendants’ production. 

Defendants’ objection prevented Innovatio’s key technical counsel from 

accessing Defendants’ document dump until the issue was finally resolved on 

October 2. 

Likewise, neither HP nor SonicWALL have completed their productions, 

although both parties have confirmed that additional productions are 

forthcoming soon. 

Innovatio should not be required to serve its final infringement contentions 

until such production is complete.

o Issues of “Private” Sniffing Have yet to be Resolved: As this Court is aware, 

Defendants have objected to Innovatio sniffing Defendants’ “private” 

warehouses, distribution facilities and offices. For certain Defendants, such as 

FedEx and UPS, a large majority of their infringing use will take place in 

private facilities. For others, such as Wal-Mart, Home Depot and Lowe’s, the 

use will be more evenly distributed among retail stores (which are “public,” 

and thus, Innovatio is allowed to sniff) and warehouses. Even 

“restaurant/coffee shop” Defendants such as Starbucks, though, have private 

distribution centers and offices. Innovatio should be allowed the opportunity 

to complete private sniffs of at least “representative” private facilities for 

these Defendants before serving their final infringement contentions.3

Innovatio served its first request to inspect a private facility in August, shortly 

after this Court issued is ruling on the public networks. During the parties’ 

September status conference before Your Honor, it was suggested that if the 

parties could not resolve the issue, Defendants should file a motion for 

protective order before Judge Schenkier. Defendants did so. In their motion 

Defendants argued, among other things, that they would provide responses to 

written discovery instead of proceeding with sniffing. 

During the parties’ October status hearing before Judge Schenkier, the Court 

requested that Innovatio serve requests to admit on Defendants regarding the 

operation of Defendants’ networks and equipment. Innovatio has done so. 

Defendants’ responses are due on November 16.

 3 During the parties’ discussions about Innovatio’s proposed extension, Innovatio asked whether 

Defendants would agree that Innovatio would have good cause in which to amend its contentions 

to include private sniffing results which, under the current schedule, will undoubtedly be 

obtained after the December 21 deadline. Defendants would not do so. Obviously, with the 

thousands of infringing locations, Innovatio should be able to freely amend its final infringement 

contentions to reflect later-obtained sniffing results.

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In parallel, the Court has allowed Innovatio the opportunity to sniff “private” 

facilities for three Defendants pursuant to Innovatio’s proposed protocol. 

These sniffs are scheduled to take place on November 5-7.

After exchanging the responses to Innovatio’s requests to admit and the 

sniffing results, the parties intend to discuss whether they can reach an 

agreement that would eliminate the need for sniffing (although Innovatio still 

questions whether the parties will be able to reach an agreement without 

completing at least some additional sniffing). The parties are scheduled to 

appear before Judge Schenkier on December 4 to discuss their progress and, if 

they are unable to reach a resolution, how the parties should proceed going 

forward. 

o Innovatio’s proposal: Given Defendants’ failure to produce even the most 

basic information to date, along with Defendants’ attempts to block 

Innovatio’s private sniffing efforts, Innovatio requests that it be granted an 

extension until April 26, 2013 in which to serve its final infringement 

contentions. Assuming that Defendants’ production is forthcoming, as 

previously promised, Innovatio’s proposal parallels the timeframe allotted by 

the Local Patent Rules (twenty-three weeks from Initial Disclosures to Final 

Contentions, which is just over five months), as well as the previous schedule 

entered in this case (July 17, 2012 for the Initial Disclosures to December 21, 

2012, which is just over five months).

Innovatio does not believe that it is necessary to move any other dates in the 

current schedule, including the deadline for claim construction, although it is 

willing to discuss moving these dates if the Court is so inclined.

• Defendants’ Position: 

Innovatio requests a significant modification to the current schedule: a four-month 

delay (from December 21, 2012 to April 23, 2013, after all claim construction 

briefing will have been filed) in providing its Final Infringement Contentions. 

Defendants oppose this request for several reasons. First, Innovatio’s justification 

for the extension - i.e., an alleged lack of discovery from Defendants - is 

incorrect; Defendants have provided substantial discovery. In fact, Innovatio 

acknowledged in a stipulated order filed with Magistrate Judge Schenkier that the 

Supplier Defendants satisfied their obligations to provide technical materials 

under Local Patent Rule 2.1. Second, given that the Markman hearing in this case 

is scheduled for May 16-17, 2013, Innovatio’s proposal to provide its Final 

Infringement Contentions shortly before that date is inconsistent with the ordering 

of events set forth in the Patent Local Rules, and would substantially prejudice 

Defendants in this case. 

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Defendants Have Provided Substantial Technical Discovery To Innovatio

Contrary to Innovatio’s assertions, Defendants have provided substantial 

discovery to Innovatio regarding the accused products in this case. The Supplier 

Defendants - who, unlike the other defendants in this case, supply the accused 

Wi-Fi products - have provided substantial discovery on their products, including 

text-searchable databases of engineering specifications, product manuals, bills of 

materials, Wi-Fi certification documents, etc. Moreover, to ensure that Innovatio 

possesses everything it needs from the Supplier Defendants to prepare its Final 

Infringement Contentions, the Supplier Defendants have also provided detailed 

indices identifying particular technical documents that Innovatio believes to be 

important for its Final Infringement Contentions, individually by Bates number, 

on a product-by-product basis. In exchange for this information, Innovatio agreed 

to a stipulated order confirming that the Supplier Defendants had produced 

sufficient technical product-related discovery as required by Local Patent Rule 

2.1. See, e.g., Dkt. No. 422 (Confirming various technical productions made by 

Supplier Defendants Cisco, Motorola Solutions and NETGEAR, including the 

parties’ agreement that those Supplier Defendants’ production of “the final, or 

most recent, engineering and marketing specifications . . . for each wireless 

product that the Manufacturer/Supplier has made, offered for sale or sold since 

2005” would be “[i]n satisfaction of their LPR 2.1 obligations.”). 

Although Innovatio relies on discovery relating to what Innovatio calls “Network 

Operators” as an excuse to substantially delay its infringement contentions, the 

“Network Operators” are merely end-users of the actual accused technologies in 

this case: Wi-Fi components within access point and other Wi-Fi devices, 

supplied by component suppliers to the Supplier Defendants and other third party 

device suppliers. As a result, when it comes to Final Infringement Contentions, 

the Supplier Defendants and their component suppliers are the entities most likely 

to possess relevant technical information concerning the accused products - not

the “Network Operator” end users of that equipment. 

In any event, contrary to Innovatio’s assertions, the End User defendants have

provided substantial information concerning the identity of the Wi-Fi devices in 

use at their businesses, with dozens and dozens of different devices identified so 

far. This is more than enough to provide Innovatio with substantial direction as 

to whose products are at issue, and, accordingly, prepare Final Infringement 

Contentions for those products using the technical materials from the Supplier 

Defendants, as well as to seek third-party discovery from Wi-Fi component 

suppliers to the extent that Innovatio is planning to do so. Notably, despite 

alleging that it is owed substantial discovery by Defendants, Innovatio has no 

pending motions to compel and has only one outstanding discovery letter which it 

sent last week to a small subset of the Defendants. 

Innovatio suggests that it has yet to finish collecting “sniffing” information of 

private networks, but fails to adequately explain that it has been performing large 

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numbers of “sniffing” operations of public networks (according to Innovatio, it 

has already performed at least three dozen such operations) over approximately 

the last three months. Moreover, Innovatio has not explained how its “sniffing” 

information will, as required by the Patent Rules, identify specifically where each 

element of each asserted claim can be found in each accused product. Nor has 

Innovatio explained why the timing of its sniffing efforts justifies an extension. 

While Innovatio may attempt to include “sniffing” information in its contentions, 

that does not excuse Innovatio from citing to actual technical documents 

describing the structure and operation of the accused instrumentalities. The 

Supplier Defendants have provided substantial text-searchable technical 

documentation, as well as the identities of their Wi-Fi component suppliers for 

purposes of third-party discovery. Innovatio has no excuse at this point for not 

providing product-specific contentions citing to actual, technical product 

documentation, on the time frame required by the Court’s schedule. 

Innovatio’s Proposed Extension Is Inconsistent With The Local Patent Rules And 

Substantially Prejudices Defendants

Innovatio’s proposed four-month extension would push its Final Infringement 

Contentions deadline to after all the claim construction briefing in this case has 

been completed, and just before the Markman hearing in this action. This is 

inconsistent with the schedule required by the Local Patent Rules. See, e.g., LPR 

4.1(a) (“Within fourteen (14) days after service of the Final Contentions

pursuant to LPR 3.2, each party shall serve a list of ... the claim terms and 

phrases the party contends the Court should construe...”)(emphasis added).

Moreover, Innovatio’s proposed extension would be highly prejudicial to 

Defendants. Innovatio has sued over two hundred Defendants - implicating 

thousands of different Wi-Fi products - and has yet to provide a single 

infringement contention identifying where each element of each asserted claim 

can be found in each accused product. Although Innovatio has been in possession 

of substantial technical materials for months, as well as the identities of the Wi-Fi 

component suppliers at issue, Innovatio’s infringement contentions thus far have 

been exclusively based on the Wi-Fi standards documents, without a single 

material reference to an actual product. Innovatio filed the first of these actions 

over nineteen months ago - accusing products supplied by the Supplier 

Defendants of alleged infringement back then - and it has no excuse for further 

delay in providing product-level contentions. In fact, Innovatio previously sought 

and was already granted a substantial extension to the case deadlines to 

accommodate its taking of discovery for precisely this purpose. See June 28, 

2012 Tr. at 18. Defendants should not be forced to wait until just before the 

Markman hearing in this case for Innovatio to provide the details of its 

infringement case, which it should have provided long ago. 

At bottom, the extension sought by Innovatio is unnecessary not only because 

Innovatio has already been provided with substantial discovery concerning the 

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accused products, but also because the Local Patent Rules contain a mechanism 

that allows Innovatio to seek leave to amend its Final Infringement Contentions if 

it believes later amendment is justified. Innovatio has not suggested that there is 

any impediment to it providing Final Infringement Contentions by the current 

deadline with respect to the documents and information it has already received. If 

Innovatio believes that it can satisfy the requirements for amending its final 

contentions after that date, it can seek leave to do so under LPR 3.4. Accordingly, 

the four-month extension and severe disruption to the schedule proposed by 

Innovatio is unwarranted.

Dated: November 5, 2012

/s/ Ronald H. Spuhler

Matthew G. McAndrews

Raymond P. Niro, Jr.

Brian E. Haan

Gabriel I. Opatken

NIRO, HALLER & NIRO

181 West Madison St., Suite 4600

Chicago, Illinois 60602

Telephone: (312) 236-0733

E-mail: mmcandrews@nshn.com

E-mail: rnirojr@nshn.com

E-mail: bhaan@nshn.com 

E-mail: gopatken@nshn.com

Jean D. Kuelper

Gregory C. Schodde

Peter J. McAndrews

Ronald H. Spuhler

Shawn L. Peterson

McANDREWS, HELD & MALLOY, LTD.

500 West Madison St., Suite 3400

Chicago, Illinois 60661

Telephone: (312) 775-8000

E-mail: jkuelper@mcandrews-ip.com

E-mail: gschodde@mcandrews-ip.com

E-mail: pmcandrews@mcandrews-ip.com

E-mail: rspuhler@mcandrews-ip.com

E-mail: speterson@mcandrews-ip.com

Attorneys for Plaintiff,

INNOVATIO IP VENTURES, LLC 

/s/ Michael W. De Vries 

Michael W. De Vries

KIRKLAND & ELLIS LLP

333 South Hope Street

Los Angeles, California 90071

213.680.8400 (Telephone)

michael.devries@kirkland.com

Gianni Cutri

KIRKLAND & ELLIS LLP

300 North LaSalle

Chicago, Illinois 60654 

312.862.2000 (Telephone)

312.862.2200 (Facsimile)

gianni.cutri@kirkland.com

Adam R. Alper (Pro Hac Vice)

KIRKLAND & ELLIS LLP

555 California Street

San Francisco, CA 94104

415.439.1400 (Telephone)

415.439.1500 (Facsimile)

adam.alper@kirkland.com

Counsel for Certain Defendants and

Declaratory Judgment Plaintiffs

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