EXHIBIT A

Prior Scheduling Order in J.C. Penney Case

Case: 1:11-cv-09143 Document #: 43-1 Filed: 05/03/12 Page 1 of 9 PageID #:289
IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

HELFERICH PATENT LICENSING, LLC, ) 

 ) 

Plaintiff, ) No. 11-cv-9143 

 ) 

v. ) 

 ) Hon. Rebecca Pallmeyer 

J.C. PENNEY CORPORATION, INC., ) 

 ) 

Defendant. ) 

REPORT OF THE PARTIES’ PLANNING MEETING

1. Participants. The following persons participated in a Rule 26(f) conference on Wednesday, 

February 22, 2012, by telephone: 

a. For Plaintiff Helferich Patent Licensing, LLC. ("Helferich"): Steven G. Lisa, 

Victoria Curtin and Timothy Sperling. 

b. For Defendant J.C. Penney Corporation, Inc. ("J.C. Penney"): Daniel Farris and 

R. David Donoghue. 

2. Initial Disclosures. Helferich has been granted leave to file a Second Amended Complaint 

on or before March 14, 2012. J.C. Penney's Answer or other pleading thereto shall be filed 

on or before March 28, 2012. The parties will complete the initial disclosures required by 

Rule 26(a)(1) fourteen days thereafter, by April 11, 2011. The parties further note that 

Helferich has filed a motion to transfer this case as a related matter to other actions pending 

before Judge Darrah. J.C. Penney has opposed that motion. Judge Darrah has set a hearing 

to rule on Helferich's motion on April 19, 2012. . Helferich has also moved to lift the stay 

that was entered in the cases pending before Judge Darrah as the ex parte reexaminations that 

formed the basis of that stay are now complete. A hearing to rule on that motion to lift stay 

is set for May 3, 2012. Should the transfer motion be granted and the stay lifted, as requested 

by Helferich, Helferich will ask that the schedule in this case be adjusted and coordinated 

with the other matters pending before Judge Darrah. 

3. Disclosures and Discovery Pursuant to Local Patent Rules. The parties acknowledge that 

the requirements of the Local Patent Rules apply to this case. 

4. Additional Discovery Plan/Requirements. The parties agree that, at this time, no 

additional requirements or deadlines will govern discovery in this case other than those 

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imposed by the Federal Rules of Civil Procedure, the Local Patent Rules, and as otherwise 

set forth herein. 

a. The parties currently do not contemplate changes to the discovery limits set out in the 

Federal Rules of Civil Procedure; however, the parties may seek additional discovery 

by stipulation or order of the Court. 

b. Discovery is permitted with respect to claims of willful infringement and defenses of 

patent invalidity or unenforceability not pleaded by a party, where the evidence 

needed to support these claims or defenses is in whole or in part in the hands of 

another party. 

5. Alternative Discovery Plan. The parties propose a discovery plan that differs from that 

provided in the Local Patent Rules, due to the contemplated amended complaint (see ¶ 2, 

above) and the number of patents in suit. 

a. Date for supplementation under Rule 26(e): The parties may supplement discovery 

relating to invalidity or infringement under Rule 26(e) until February 20, 2013. 

b. Final date for plaintiff to amend pleading or join parties: Plaintiff may join 

parties, to the extent allowable by the patent laws, or amend its complaint until and 

including April 1, 2012, without leave of Court for good cause. 

c. Final date for defendant to amend pleading or join parties: Defendant may join 

parties, to the extent allowable by the patent laws, or amend its answer and 

counterclaims until and including July 1, 2012, without leave of Court for good cause. 

d. Final dates for submitting Rule 26(a)(3) witness lists, designations of witnesses 

whose testimony will be presented by deposition, and exhibit lists: The parties 

shall submit their Rule 26(a)(3) designations at least 30 days before trial, unless 

required at an earlier date by the Court. The final dates for submitting Rule 26(a)(3) 

witness lists, designations of witnesses whose testimony will be presented by 

deposition, and exhibit lists shall be set after the Court’s claim construction 

determination. The parties have requested a trial by jury. 

e. Final dates to file objections under Rule 26(a)(3): The parties shall file objections 

under Rule 26(a)(3) at least 14 days before trial, unless required at an earlier date by 

the Court. Final dates to file objections under Rule 26(a)(3) shall be determined after 

the Court’s claim construction determination. 

f. Local Patent Rule deadlines. The Local Patent Rule deadlines through claim 

construction, shall be as follows, with the remainder of deadlines to be determined 

based upon the date a claim construction opinion issues:

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Plaintiff's Second Amended Complaint March 14, 2012 

Defendant's Answer or Other Response to Second Amended 

Complaint

March 28, 2012 

Initial Disclosures (LPR 2.1) April 11, 2012 

Initial Infringement Contentions (LPR 2.2) May 2, 2012 

Initial Non-Infringement, Unenforceability & Invalidity 

Contentions (LPR 2.3) 

May 23, 2012 

Document Production Accompanying Invalidity Contentions

(LPR 2.4) 

May 23, 2012 

Initial Response To Invalidity Contentions

(LPR 2.5) 

June 13, 2012 

Final Infringement, Unenforceability & Invalidity 

Contentions (LPR 3.1) 

September 26, 2012 

Final Non-Infringement, Enforceability and Validity 

Contentions (LPR 3.2) 

October 24, 2012 

Document Production Accompanying Final Invalidity 

Contentions

(LPR 3.3) 

October 24, 2012 

Final Date to Seek Stay Pending Reexamination

(LPR 3.5) 

October 24, 2012 

First Day Opinion of Counsel Evidence Becomes 

Discoverable (LPR 3.6(a)) 

October 31, 2012 

Document Production for Parties Relying on Opinion of 

Counsel Defense Due (LPR 3.6(b)) 

October 31, 2012 

Exchange of Claim Terms Needing Construction

(LPR 4.1(a)) 

November 7, 2012 

Deadline to Meet and Confer to Select at Most 10 Terms for 

Construction (LPR 4.1(b)) 

November 14, 2012 

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Initial Fact Discovery Close

(LPR 1.3) 

December 5, 2012 

Defendant's Opening Claim Construction Brief

(LPR 4.2(a)) (25 page limit) 

December 19, 2012 

Deadline for Filing Claim Construction Joint Appendix

(LPR 4.2(b)) 

December 19, 2012 

Plaintiff's Responsive Claim Construction Brief

(LPR 4.2(c)) 

January 30, 2013 

Defendant's Reply Claim Construction Brief

(LPR 4.2(d)) 

February 15, 2013 

Joint Claim Construction Chart

(LPR 4.2(f)) 

February 22, 2013 

Claim Construction Hearing (LPR 4.3) 

(Unless otherwise ordered by the Court) 

April 4, 2013 

Fact Discovery Re-Opens (LPR 1.3) 28 Days After 

Ruling on Claims 

Construction 

Fact Discovery Closes (LPR 1.3) 42 Days After 

Ruling on Claims 

Construction 

Initial Expert Disclosures (LPR 5.1(b)) 21 Days After Fact 

Discovery Closes 

Rebuttal Expert Disclosures (LPR 5.1(c)) 35 Days After Fact 

Discovery Closes 

Deadline to Complete Expert Depositions; Close of Expert 

Discovery (LPR 5.2) 

35 Days After 

Rebuttal 

Disclosures 

Dispositive Motion Deadline (LPR 6.1) 28 Days After 

Close of Expert 

Discovery 

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6. Other Dates. 

a. All discovery regarding infringement or invalidity contentions shall be supplemented 

14 days before the date for the Opening Claim Construction Brief, by November 28, 

2012. 

b. The Court has set a status hearing for March 20, 2012; the scheduling order may be 

entered before that date. 

c. The Parties do not request any date for a pretrial conference at this time. 

7. Settlement. 

Plaintiff's Statement Regarding Settlement

a. Helferich has attempted to address its infringement contentions with JCPenney for 

more than a year prior to this suit being filed without reaching agreement. 

b. Helferich has signed over 100 licenses with many of the world's most sophisticated 

technology companies, including approximately 85 content licenses. Helferich’s 

licensing rates are established under both a lump sum and running royalty rate basis, 

and in both a litigation and pre-litigation context. 

c. In each of the five cases pending before Judge Darrah, the Court has ordered 

expedited referral to Magistrate Judge Gilbert for a settlement conference. Helferich 

believes that a similar reference is appropriate and may be of assistance in this matter. 

d. Helferich disagrees with Defendant’s characterizations set forth below regarding 

settlement. 

Defendant's Statement Regarding Settlement

As an initial matter, J.C. Penney continues to believe that any discussion of the parties' 

respective settlement positions on the record is wholly inappropriate. J.C. Penney has 

raised this issue in a Motion to Strike, filed before this Court, and in both correspondence 

and oral communications with counsel for Helferich. Despite J.C. Penney's efforts, 

Helferich insists that it has a right to "educate the Court" about private settlement 

negotiations in this, and other, cases. Accordingly, J.C. Penney believes that it has no 

choice but to respond in kind, nonetheless maintaining the position that statements about 

settlement negotiations in a filing on the record are not proper. In response to Helferich's 

Settlement Position, J.C. Penney states: 

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a. Helferich's claim that the parties "have addressed the merits of Helferich's 

infringement contentions for more than a year" is false. For more than a year, 

Helferich has made unsubstantiated demands for license payments, while providing 

little or no information related specifically to J.C. Penney. Instead, Helferich has 

avoided any detailed discussion of its infringement contentions, substituting high 

level gloss for substantive discussions relevant to any alleged use by J.C. Penney. 

Helferich has not provided J.C. Penney infringement contentions, and has refused to 

discuss any of J.C. Penney's legitimate defenses. 

b. Helferich's claim that " over 300 claims, including those asserted by Helferich to be 

infringed herein, were confirmed patentable by the Patent Office" is incorrect and 

misleading. To the contrary, the reexamination proceedings have caused Helferich to 

change the scope of its claims by either argument or amendment, as described more 

thoroughly in The New York Times Company's January 30, 2012 status report. Dkt. 

No. 97 in Helferich Patent Licensing, LLC v. The New York Times Co., No. 10-cv4387 (N.D.Ill.). 

c. Helferich's claims related to licensing by other parties is not germane to any 

settlement position with J.C. Penney. 2. The lion's share of settlement agreements 

referred to by Helferich are with parties producing handheld devices and relate to 

claims that are not likely to be asserted against J.C. Penney. Moreover, Helferich has 

adopted a model of licensing that seeks dollar values incrementally less than the cost 

of defense in an effort to ensure nuisance value settlements that bear little correlation 

to the substantive merits of Helferich's allegations. The numbers of licenses obtained 

are merely evidence of the cost of defense of major patent litigation disputes and not 

the merits of the claims asserted against the accused infringers or the value of the 

technology claimed in the patents. 

d. The Helferich cases before Judge Darrah are unrelated to this case for purposes of 

settlement, and referral to Judge Gilbert in those cases does not bear upon this case. 

J.C. Penney is open to meaningful settlement discussions, whether facilitated by the 

Court or otherwise. It is difficult, however, to have any meaningful discussion 

without infringement contentions specific to J.C. Penney. Helferich's position to-date 

has been strictly a non-negotiable demand for license/royalty fees, and that it will 

aggressively punish accused infringers who seek a judicial determination of 

Helferich's claims. 

8. Magistrate Judge. 

a. The parties do not consent to proceed before a magistrate judge for all purposes. 

b. No matters have yet been referred to a magistrate judge. 

9. Other Items: 

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a. Anything shown to a testifying expert relating to the issues on which he/she opines, 

or to the basis or grounds in support or countering the opinion, is subject to discovery 

by the opposing party. 

b. The parties agree that drafts of expert reports will not be retained and produced. 

c. In responding to discovery requests, each party shall construe broadly terms of art 

used in the patent field (e.g. “prior art,” “best mode,” “on sale”), and read them as 

requesting discovery relating to the issue as opposed to a particular definition of the 

term used. Compliance with this provision is not satisfied by the respondent 

including a specific definition of the term in its response, and limiting the response to 

that definition. 

d. Helferich consents to the video “An Introduction to the Patent System” should be 

shown to the jurors in connection with its preliminary jury instructions. J.C. Penney 

does not so consent. 

e. Helferich has filed 6 other suits in this District. See Helferich Patent Licensing, LLC 

v. New York Times Company, No. 1:10-cv-04387 (N.D. Ill.) (J. Darrah), which is 

currently stayed pending the outcome of reexamination proceedings. The others are:

Helferich Patent Licensing, LLC v. Bravo Media, LLC, No. 1:11-cv-07647 (N.D. Ill.); 

Helferich Patent Licensing, LLC v. CBS Corporation, No. 1:11-cv-07607 (N.D. Ill.); 

Helferich Patent Licensing, LLC v. G4 Media, LLC, No. 1:11-cv-07395 (N.D. Ill.); 

Helferich Patent Licensing, LLC v. The Bon-Ton Stores, Inc., No. 1:11-cv-07189 

(N.D. Ill.); Helferich Patent Licensing, LLC v. Best Buy Co., Inc., No. 1:11-cv-06914 

(N.D. Ill.). There is a stay pending re-exam in the New York Times case. The 

defendants in each of the latter five cases have moved for a stay of proceedings 

pending a third round of reexamination requests filed by the New York Times and the 

other defendants. Helferich and J.C. Penney do not seek a stay in this action, and 

intend to move forward consistent with the LPR. 

f. On February 9, 2012, Helferich filed a motion to transfer this action to Judge Darrah 

under LR 40.4 as related to the above six cases. J.C. Penney has opposed that 

motion. A hearing is set on the motion to transfer for April 19, 2012. 

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Date: March 13, 2012 

/s/ Victoria Curtin /s/ Daniel L. Farris 

Victoria Curtin (NDIL ID #010897) R. David Donoghue 

Victoria Gruver Curtin, P.L.C. Daniel L. Farris 

14555 N. Scottsdale Rd., Ste. 160 Holland & Knight LLP 

Scottsdale, Arizona 85254 131 South Dearborn St., 30th Floor 

Tel.: (480) 998-3547 Chicago, IL 60603 

Fax: (480) 596-7956 Tel.: (312) 263-3600 

 Fax: (312) 578-6666 

Steven G. Lisa (Ill. State Bar # 6187348) david.donoghue@hklaw.com 

Jon E. Kappes (Ill. State Bar # 6291678) daniel.farris@hklaw.com 

Timothy Sperling (Ill. State Bar # 6283854) 

Law Offices of Steven G. Lisa, Ltd. Attorneys for J.C. Penney 

55 West Monroe Street, Suite 3200 Corporation, Inc. 

Chicago, Illinois 60603 

Tel. & Fax: (312) 752-4357 

Attorneys for Helferich Patent 

Licensing, LLC 

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