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 OCTOBER 11, 2012 STATUS CONFERENCE 

 In preparation for the upcoming October 11 status conference in the above-captioned 

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

would like to address with the Court during the conference: 

Innovatio’s Proposed Topics 

1) Innovatio’s Motion for Leave to File an Amended Complaint (Dkt. No. 434): 

 Innovatio seeks permission to file an amended complaint against certain ABP 

Defendants and New Network Operators that includes patents previously asserted 

against the Manufacturer Defendants and that includes an updated identification 

of claims that parallels Innovatio’s initial infringement contentions previously 

served on the Network Operator Defendants. Defendants do not object to 

Innovatio’s motion. 

2) Defendants’ Amended Complaint (Dkt. No. 431): 

 Innovatio’s Position: On October 1, 2012, certain Manufacturers (Cisco, 

Motorola and Netgear) filed an amended complaint, adding two new parties and 

several new counts, including RICO and conspiracy claims. Innovatio did not 

consent to the filing of this Complaint, and therefore, the Manufacturers were 

required to seek leave prior to filing their complaint. See Fed. R. Civ. P. 15. 

Innovatio does not believe that a party can usurp the court’s “gatekeeping” 

authority by filing an amended complaint at any point prior to the deadline set by 

the court without seeking leave of court (and despite requests, Defendants have 

not provided any caselaw supporting their position). Accordingly, Innovatio 

seeks guidance from the Court as to how Innovatio should respond and/or object 

to the Complaint. 

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 Defendants’ Position: According to the Court’s Scheduling Order, October 1 was 

the deadline for the parties to amend pleadings. See Dkt. No. 318. In accordance 

with that deadline, on October 1, Defendants asserted additional counterclaims in 

connection with this case, relating to the patents-in-suit and Innovatio’s attempts 

to license the patents. Innovatio asserts that a motion for leave to amend was 

required for Defendants’ claims. As set forth briefly below, while the 

requirements of a motion for leave to amend would be easily satisfied here, 

Defendants disagree that a motion for leave was required in this instance. 

However, to allow for the prompt and orderly resolution of this issue and any 

other objections Innovatio has to the Suppliers’ amended complaint, Defendants 

below propose a briefing schedule allowing Innovatio to promptly raise any 

objections it has to the new claims. 

First, Innovatio’s current position on the October 1 deadline conflicts with its 

prior positions on this issue. Although Innovatio now contends that Defendants 

were required to seek leave to amend, in setting this deadline, Innovatio 

repeatedly and unequivocally confirmed to Defendants and the Court that 

Defendants had until October 1 to add parties or claims. See, e.g., July 10, 2012 

Status Conference Agenda at 1 (Innovatio confirming that “Defendants were 

given until October 1 in which to add parties or claims.”). In fact, earlier in the 

proceedings, when Innovatio sought an extension to October 1 for its own 

amended claims, this very issue was presented to the Court - i.e., whether October 

1 should be a deadline for Innovatio to add claims or parties without leave, or 

whether the parties should be allowed to dispute at that point whether new claims 

and parties should be integrated into the MDL proceedings. See id. In contrast to 

its position now, Innovatio argued then that it should have until October 1 to add 

claims or parties without questioning whether the claims should be integrated into 

these proceedings. See July 12 Hearing Transcript at 5-6 (according to Innovatio, 

disputes over whether the claims should be integrated before the amended 

pleading deadline would “create an unnecessary level of uncertainty” in the 

MDL proceedings). In response, the Court granted leave to “file whatever 

additional contentions there are or any new assertions of patents by no later 

than October 1.” See id. According to the Court, questions regarding whether to 

separate out claims filed by October 1 could be addressed at a later juncture under 

Fed. R. Civ. P. 42(b). See id. (questions as to whether to separate out claims 

would “not come at the discovery stage, it will come at the trial stage.”). 

Now, after Innovatio confirmed that the parties had until October 1 to add claims 

and parties - which Defendants relied on in submitting their amended claims when 

they were due on October 1 - Innovatio argues that October 1 may have been “too 

late” for Defendants to bring additional claims into this case. This is in direct 

conflict with Innovatio’s prior positions. See above. Moreover, although 

Innovatio objects to integrating Defendants’ amended claims into these 

proceedings, Innovatio offers an inconsistent position on its own proposed 

amendments made on October 1 (Item 1 above) - i.e., new claims against six End 

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User defendants adding six new patents (bringing the total up to 23 patents per 

defendant). 

Consistent with the Court’s prior guidance, Defendants’ believe that, to the extent 

there are decisions to be made as to how to phase the trials of claims in this case, 

they can be addressed in later proceedings. However, should the Court wish to be 

presented with arguments on whether Defendants’ claims should be integrated in 

these proceedings upfront, and to the extent that Innovatio intends to object to 

Defendants’ amendments in the first instance, Defendants respectfully propose the 

following briefing schedule to allow Innovatio to present any grounds it has for 

opposing the amendments, so that the current pleadings issues can be promptly 

settled: 

Defendants to file motion for leave to 

amend 

October 15, 2012 

Innovatio to file opposition (raising any 

objections to claims, procedural or 

otherwise) 

October 26, 2012 

Defendants to file reply brief November 9, 2012 

Innovatio files answer to Defendants’ 

amended complaint 

10 days after Court’s ruling on motion 

to amend 

3) Identification Of “Tier Two” Parties: 

 Innovatio’s Position: The Court has stated on previous occasions that it intends to 

have all parties proceed through the Markman phase, after which only certain 

“Tier One” parties will advance through the expert and summary judgment stages 

and through trial. The current schedule contemplates that the parties exchange 

final infringement, invalidity and unenforceability contentions prior to the 

Markman hearing. Attached as Exhibit A is a list of several Defendants, such as 

individual hotels or “small” network operators, which will likely not have a 

substantial impact on the resolution of Innovatio’s campaign. Innovatio requests 

that these parties be removed from the pool of potential “Tier One” Defendants. 

The Defendants listed in Exhibit A shall provide Innovatio with a complete 

response to Innovatio’s Interrogatories Nos. 1 and 2 (which generally require an 

inventory of the Defendant’s wireless networks and equipment) no later than 

October 31, 2012, in hopes that providing such information may allow the parties 

to reach an amicable resolution. Thereafter, all proceedings relating to these 

Defendants (including discovery and the service of contentions) shall be stayed 

until the Court enters a schedule for the remaining “Tier Two” parties. Innovatio 

believes that this proposal will allow Innovatio and the potential “Tier One” 

Defendants to focus their attention on preparing their “Tier One” case, and will 

allow Innovatio and the “Tier Two” parties to have the benefit of the Court’s 

Markman ruling before finalizing their contentions. 

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 Defendants’ Position: At the last status hearing, the Court directed Innovatio to 

meet and confer with the Defendants concerning its proposal concerning the 

scheduling of certain Customers defendants (i.e., small hotels). Innovatio did not 

make a proposal to Defendants until the evening before this agenda was due. 

Defendants will promptly evaluate this proposal and meet and confer with 

Innovatio in the days leading to the upcoming October 11 status hearing. 

4) “Status Report” of the Parties’ Discovery Efforts (no ruling needed): 

 Innovatio’s Position: The current deadline for serving final infringement and 

invalidity contentions is December 21, 2012. To date, Innovatio has received 

little, if any, discovery from the Network Operators, including no production from 

the New Network Operators. Likewise, two of the five Manufacturers 

(SonicWALL and HP) have produced very little meaningful information 

regarding the accused products, while the remaining three Manufacturers (Cisco, 

Motorola and Netgear) produced nearly 400 Gbytes of data (most of which was 

re-produced from an unrelated litigation, and much of which has no relevance to 

the current action). All Defendants have agreed that their production will be 

substantially completed by the end of October. 

Likewise, the parties are currently briefing Innovatio’s request to “sniff” the 

Network Operator’s private networks. Defendants’ motion for a protective order 

is scheduled to be heard by Judge Schenkier on October 19. 

In light of these issues, Innovatio will likely be seeking an extension of time in 

which to file its final infringement contentions. 

 Defendants’ Position: This issue first arose approximately a month ago when 

Defendants wrote to Innovatio about its forthcoming LPR 3.1 Final Infringement 

Contentions. Because Innovatio’s Preliminary Infringement Contentions rely 

nearly exclusively on the accused 802.11 standards documents without any 

material references to the actual accused products, Defendants sought to confirm 

that Innovatio’s Final Infringement Contentions - which are not due until 

December 21, 2012- would include product-level detail identifying the specific 

aspects of the products that Innovatio contends satisfy the claim elements. In 

response, Innovatio contended that it would need a two-month extension of its 

contentions deadline to accommodate Defendants’ requests. Defendants disagree 

that an extension is appropriate at this time. Although Innovatio suggests that it 

may need more discovery to provide product-level contentions, Innovatio has not 

exercised diligence in seeking relevant discovery. For example, Innovatio has 

taken no steps to subpoena or otherwise obtain discovery from the manufacturers 

of the Wi-Fi chips within the accused products to which Innovatio directs its 

infringement allegations. With respect to Defendants, Defendants have invited 

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Innovatio to describe the specific additional materials it needs, but Innovatio has 

not done so.1

 

Innovatio previously requested and received a substantial extension in the 

schedule, which the Court indicated would be the last adjustment. See June 28, 

2012 Tr. at 18. Although Defendants are willing to confer with Innovatio, 

Defendants respectfully submit that Innovatio has not provided a sufficient basis 

to justify a further extension of the case deadlines at this time. 

 

 

1

 Innovatio references its collection of “sniffing” information, but 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 

documentation to that effect, as well as multiple indices identifying by Bates number key technical documents. 

Innovatio has no excuse at this point for not providing product specific contentions. 

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Dated: October 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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CERTIFICATE OF SERVICE 

The undersigned hereby certifies that on October 5, 2012, the PARTIES’ AGENDA FOR THE 

OCTOBER 11, 2012 STATUS CONFERENCE was filed with the Clerk of the Court via 

CM/ECF, which will send notifications of such filing via electronic mail to all counsel of record. 

/s/ Ronald H. Spuhler 

Attorney for Plaintiff 

INNOVATIO IP VENTURES, LLC 

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