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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:

Innovatio IP Ventures, LLC v. Texas Instruments 

Incorporated, Case No. 14-cv-01544 (N.D. Ill.) 

(Holderman, J.)

PARTIES’ AGENDA FOR THE SEPTEMBER 18, 2014

STATUS CONFERENCE BEFORE JUDGE HOLDERMAN

In preparation for the upcoming September 18, 2014 status conference before Judge 

Holderman in the above-captioned matter, counsel for Innovatio IP Ventures, LLC (“Innovatio”) 

and Texas Instruments Inc. (“TI”) jointly submit the following agenda:

1. Status of Settlement Negotiations

Since the July 8, 2014 status conference, Innovatio and TI have remained engaged in 

good faith RAND licensing negotiations. Specifically, after the July 8, 2014 hearing, the parties 

scheduled a settlement conference with Magistrate Judge Schenkier, exchanged confidential 

settlement letters pursuant to Judge Schenkier’s protocol, and participated in the settlement 

conference on August 5, 2014. Although the parties were not able to resolve their dispute at the 

settlement conference, Judge Schenkier assisted the parties in “narrowing the gap” between their 

respective settlement positions and identifying certain discrete issues that, if resolved, would 

almost certainly allow them to close the gap and settle this case. Despite their inability to reach a 

settlement at the August 5, 2014 conference, the parties engaged in a further round of 

negotiations in late August and early September 2014. Again, however, they were unable to 

resolve the dispute. On September 12, 2014, TI answered Innovatio’s complaint. (See Case No. 

Case: 1:11-cv-09308 Document #: 1163 Filed: 09/15/14 Page 1 of 4 PageID #:47976
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14-cv-1544, Dkt. No. 30.) Counsel for the parties have discussed the matter and agree that the 

Court’s early resolution of certain damages and indirect infringement issues will position the 

case for settlement. Subject to the Court’s approval, the parties’ proposal in this regard is 

generally summarized below.

2. Proposed Initial Case Management Plan

Subject to the Court’s approval, the parties jointly request that the Court suspend the 

default requirements of the Local Patent Rules while the parties conduct an initial case phase 

focusing on certain damages and indirect infringement issues. At the outset of the initial phase, 

Innovatio will identify the asserted claims of the patents-in-suit. During the initial phase, the 

parties will focus exclusively on (i) the marking and notice requirements of 35 U.S.C. § 287, and 

(ii) TI’s potential liability for indirect infringement based on foreign sales. At the conclusion of 

the initial phase, TI would expect to file one or more motions for summary judgment that 

Innovatio's potentially recoverable damages are limited by the statutory marking/notice 

requirements, and because TI's foreign sales cannot as a matter of law result in liability for 

contributory infringement or inducement of infringement. 

The parties further agree that, during the initial phase, the parties will conduct 60-90 days 

of discovery directed to damages, notice, and indirect infringement issues. The parties are 

currently considering the possibility of stipulations that might streamline resolution of the issues 

in the proposed initial phase (e.g., whether section 287’s marking requirement has been met, 

etc.).

If the parties or counsel believe that a further settlement conference would make sense at 

any point during the proposed initial phase, they would so advise the Court.

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Respectfully submitted,

Dated: September 15, 2014

/s/ Matthew G. McAndrews

Matthew G. McAndrews

NIRO, HALLER & NIRO

181 West Madison St., Suite 4600

Chicago, Illinois 60602

Telephone: (312) 236-0733

E-mail: mmcandrews@nshn.com 

Attorneys for Plaintiff,

INNOVATIO IP VENTURES, LLC 

 

/s/ John A. Marlott

John A. Marlott

JONES DAY

77 West Wacker

Chicago, IL 60601-1692

Telephone: (312) 269-4236

E-mail:jamarlott@jonesday.com

Attorneys for Defendant,

TEXAS INSTRUMENTS INC.

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CERTIFICATE OF SERVICE

I hereby certify that on September 15, 2014 a true and correct copy of the foregoing 

PARTIES’ AGENDA FOR THE SEPTEMBER 18, 2014 STATUS CONFERENCE 

BEFORE JUDGE HOLDERMAN was electronically filed with the Court via the CM/ECF 

system which sent notification of such filing to all Counsel of Record.

Dated: September 15, 2014 /s/ Matthew G. McAndrews

Matthew G. McAndrews

Case: 1:11-cv-09308 Document #: 1163 Filed: 09/15/14 Page 4 of 4 PageID #:47979