IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

HELFERICH PATENT LICENSING, LLC, ) 

 ) 

 v. ) No. 1:10-cv-04387 

) 

THE NEW YORK TIMES COMPANY, ) 

 

 ) 

HELFERICH PATENT LICENSING, LLC ) 

 ) 

 v. ) No. 1:11-cv-06914 

 ) 

BEST BUY CO., INC., ) 

 

 ) 

HELFERICH PATENT LICENSING, LLC, ) 

 ) No. 1:11-cv-07395 

 v. ) 

 ) 

G4 MEDIA, LLC., ) 

 

 ) 

HELFERICH PATENT LICENSING, LLC, ) 

 ) No. 1:11-cv-07607 

 v. ) 

 ) 

CBS CORPORATION, ) 

 

 ) 

HELFERICH PATENT LICENSING, LLC, ) 

 ) No. 1:11-cv-07647 

 v. ) 

 ) 

BRAVO MEDIA, LLC, ) 

 

 ) 

HELFERICH PATENT LICENSING, LLC, ) 

 ) No. 1:11-cv-9143 

 v. ) 

 ) 

J.C. PENNEY CORPORATION, INC., ) 

 

PLAINTIFF’S MOTION FOR EXPEDITED CLAIM CONSTRUCTION

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Helferich Patent Licensing, LLC (“Helferich”) files this motion to modify the recently 

entered Scheduling Order to allow for an efficient and early resolution of potentially dispositive 

claim construction issues in the above-captioned actions.1

 

As the Court is no doubt aware, most patent actions resolve after the Court’s ruling on 

claim construction. For those few that do not resolve after Markman, claim construction informs 

and streamlines further proceedings for both the parties and the Court. See Smiths Industries 

Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1353 (Fed.Cir. 1999) (through claim 

construction, “trial courts are often able to narrow disputes and provide more efficient trials”); 

Medisim Ltd. v. Bestmed LLC, 2011 WL 2693896 *1 (S.D.N.Y. 2011) (“Claim construction . . . 

is a task preferably tackled early on in a patent infringement action”). Thus, an early Markman

would likely lead to a resolution of the matter for some, if not all, of the parties; for those matters 

that remain unresolved, an early Markman would reduce costs and simplify further proceedings 

for the parties and the Court. 

An expedited Markman hearing is particularly appropriate in this case, which was 

previously stayed while the patents were subjected to extensive substantive review in repeated 

rounds of reexamination proceedings filed by the NYT Defense Group. Indeed, as noted by 

NYT in its original motion for stay filed in March 2011: 

Even in the unlikely event that the claims of the patents-in-suit survive the 

reexamination process unchanged – which they will not – the reexamination 

process nevertheless will streamline this litigation. For example, characterizations 

 

1 Helferich is pleased to advise the Court that a second NYT Defense Group member – Best Buy 

Co., Inc. – has reached an agreement in principle to take a license under the Helferich patents. 

Appropriate papers are being finalized and will be filed shortly before this Court. Accordingly, 

this motion will ultimately be directed only to the actions against the NY Times, G4Media, 

Bravo, CBS and JC Penney. 

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of the claims made by HPL during the reexamination process become part of the 

prosecution history, a source of intrinsic evidence that must be considered during 

claim construction. See E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 

849 F.2d 1430, 1439 (Fed. Cir. 1988). Granting a stay would allow this Court, 

when later conducting its own claim construction analysis, to benefit from HPL’s 

clarifications as to the scope of its claims during reexamination. See, e.g., In re 

Cygnus Telecomm. Tech., LLC, Patent Litig., 385 F. Supp. 2d 1022, 1024 (N.D. 

Cal. 2005) (granting a stay pending reexamination in part due to the benefits of a 

“richer prosecution history upon which to base necessary claim construction 

determinations”). Finally, a stay pending reexamination would allow the Court in 

later proceedings to benefit from the expertise of the PTO as brought to bear in 

the reexamination. See, e.g., Pass & Seymour, Inc. v. Hubbell Inc., 532 F. Supp. 

2d 418, 436 (N.D.N.Y. 2007) (“An important factor figuring into the stay 

question is the desirability of drawing upon the expertise of the PTO regarding the 

complex areas of patentability implicated in this action... [T]he parties and the 

court could benefit immensely from the expertise of the PTO.”). 

The New York Times Company’s Motion to Stay Pending Reexaminations, No. 1:10-cv-04387 

(Dkt. 72) at 16-17. 

In fact, both the claim construction and validity issues were well-developed over the 

multiple rounds of reexamination proceedings. Helferich presented to the Patent Office an 

extensive glossary of defined claim terms along with supporting expert declarations addressing 

claim construction. Thus, as predicted by the NYT Defense Group, Helferich’s claim 

construction position is now clearly developed in the public PTO record. Likewise, the NYT 

Defense Group presented scores of invalidity arguments; many were rejected outright by the 

Patent Office, and others were fully considered by the examiners prior to the PTO confirming 

hundreds of Helferich’s claims in their original, amended and new forms. Further, in the latest 

round of reexaminations (the Defense Group’s third), the Defense Group presented obviousness 

rejections based on only four primary references. Thus, the Defense Group has already 

significantly narrowed its positions. In view of this extensive record, the Court should have little 

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doubt that the parties are in a position to move promptly and efficiently towards a Markman, 

followed by a prompt trial of the defendants’ invalidity arguments. 

Helferich therefore proposes to streamline this litigation in view of the substantial public 

record that already addresses claim construction and invalidity in the reexaminations before the 

Patent Office. Helferich seeks to accelerate the schedule leading to a Markman hearing by 

initially limiting discovery solely to that needed for claim construction. Such limitations on 

discovery are clearly within the power of the Court to control its calendar. As the Federal Circuit 

noted in approving a district court’s limitation of discovery pre-Markman: “the court’s 

management of discovery at the claim construction stage may serve the salutary goals of speed 

and economy, and is appropriate in cases in which the dispute may be resolved at this stage 

without compromise of justice.” Vivid Technologies, Inc. v. American Science & Engineering, 

Inc., 200 F.3d 795, 804 (Fed. Cir. 1999). 

More specifically, Helferich proposes accelerating the schedule in the NDIL Local Patent 

Rules leading to a full, but early, claim construction hearing (as set out in LPR 4.1 through 4.3). 

To accomplish that goal, Helferich proposes that the parties exchange contentions under LPR 

2.2, 2.3 and 2.5, but otherwise limit the scope of discovery pre-Markman to only those issues and 

facts relevant to claim construction.2 These preliminary contentions will obviously consider the 

fully developed record in the several rounds of PTO reexaminations and will properly frame the 

claim construction hearing. However, the parties would postpone potentially unnecessary and 

 

2 Helferich is not proposing a “mini-Markman” or preliminary claim construction of some but 

not all claim terms as has been tried recently in other courts, notably the Eastern District of 

Texas. Cf. Whetstone Electronics, LLC v. Xerox Corp., 2011 WL 3510750 (E.D. Tex. 

8/10/2011) (early construction of three “case dispositive” terms). 

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expensive discovery (and inevitable disputes/motion practice) on infringement, invalidity and 

damages until after the Court issues its claim construction ruling. 

This permits the claim construction process to be significantly expedited, allowing for a 

Markman hearing as early as January 2013, nearly six months earlier than the current schedule. 

Moreover, by postponing the bulk of discovery until after Markman, it will be more efficient, 

advancing the likely dispositive claim construction issues without sidetracking the parties and the 

Court with expensive discovery and motion practice on collateral issues. Even if one or more 

parties refuse to settle after the Markman ruling, later proceedings will be more focused, better 

informed and proceed only as to the remaining parties. A proposed schedule consistent with 

Helferich’ concept is attached hereto as Exhibit A. 

Helferich believes the specifics of a post-Markman schedule can probably be best 

addressed after the claim construction ruling, and after the parties have an opportunity to 

consider the ruling and possible settlement. Accordingly, Helferich proposes that, following the 

Court’s claim construction ruling, the Court schedule a joint status conference to address further 

proceedings. However, should the Court wish to set a schedule now, Helferich suggests two 

options: 

1. the parties agree to a consolidated trial of all common invalidity defenses, to be held 

as promptly as possible after claim construction (with infringement and damages 

discovery stayed until later, to be conducted only if necessary); or 

2. the parties agree on a single “representative” or “lead” defendant (such as the New 

York Times), and the Court set a discovery and trial schedule culminating with a trial 

on the merits of all issues (infringement and validity) as to that lead defendant. 

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Helferich prefers the first option, as it promptly resolves all common invalidity defenses once 

and for all in the most efficient manner possible, and reserves the expensive infringement and 

damage discovery to be conducted only if necessary.3 

Helferich initially raised this proposal at the Status Conference in June. Although the 

parties had jointly submitted pretrial schedules in all of the captioned matters, with a Markman 

hearing scheduled for June 2013 (see Orders4 of June 28, 2012), counsel for Helferich 

nevertheless suggested a more streamlined procedure: 

MR. LISA: I raised an issue with most of counsel in an effort to try and get us to the 

common issues in these cases. As J.C. Penney's counsel just indicated, they have been 

consolidated for pretrial issues. We can do a whole lot of simplification here if we 

focused on claim construction, an early Markman hearing, and then a common validity 

trial, and basically get rid of all the extraneous issues, and that would solve a whole lot of 

discovery disputes before your Honor. 

 THE COURT: I would really encourage you to meet and confer in that regard. That's 

very attractive. 

Transcript of Proceedings, New York Times (Dkt. 157) at 9. 

Helferich has also suggested this procedure in two related actions before other judges, 

both of whom were persuaded of the benefits of the suggested streamlined procedure. In an 

action on the same patents in the District of Arizona, Judge David Campbell stated: 

THE COURT: Well, it seems to me it makes eminent sense to hold one Markman hearing 

in all of these cases . . . . I also agree that it makes sense to get to that point without a lot 

of other discovery that will cost a lot of money so we can get the claims construed and 

see if that helps resolve the case. And if not, we'll go forward with discovery in the 

various cases. 

 

3 Clearly, the NYT Defense Group has demonstrated its ability to “jointly” present their 

invalidity arguments, as it has done so before the Patent Office. There should be no difficulty 

doing so before this Court. However, if the Defense Group members refuse to consent to a joint 

invalidity trial, see 35 U.S.C. §299(c), Helferich requests that the Court direct the parties to 

proceed promptly as to one of the Defense Group’s lead members. 

4 See, e.g., Amended Scheduling Order (Dkt. 156) and Docket Entry (Dkt. 155), in the New York 

Times case. 

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Transcript of Proceedings, Helferich Patent Licensing, LLC v. Suns Legacy Partners, LLC, No. 

CV 11-02304 (D. Ariz. 1/23/1012)(Dkt. 34) at 6-7. Similarly, in an earlier-filed case in this 

District, Judge Pallmeyer also agreed with a similar proposal, stating "By the way, your final 

proposal that we accelerate the Markman hearing is, I think, a terrific idea." Transcript of 

Proceedings, Helferich Patent Licensing, LLC v. Palm, Inc., No. 10 C 2411 (N.D. Ill. 9/14/2010) 

(Dkt. 61) at 8. Thus, experienced patent judges have indicated that they prefer Helferich's 

suggestion for bifurcated discovery followed by an accelerated consolidated Markman hearing. 

 Pursuant to the Court’s request, Helferich conferred with defendants regarding this 

proposal. The New York Times Group, Best Buy and JC Penney rejected the proposal. 

Date: July 20, 2012 

 VICTORIA GRUVER CURTIN, P.L.C. 

 

By:/s/ Victoria Curtin 

Victoria Curtin (NDIL ID #010897) 

Victoria Gruver Curtin, P.L.C. 

14555 N. Scottsdale Rd., Ste. 160 

Scottsdale, Arizona 85254 

Tel.: (480) 998-3547 

 Steven G. Lisa (Ill. State Bar # 6187348) 

Law Offices of Steven G. Lisa, Ltd. 

55 West Monroe Street, Suite 3210 

 Chicago, Illinois 60603 

Tel. & Fax: (312) 752-4357 

Gerald D. Hosier (Ill. State Bar #7059) 

Law Offices of Gerald D. Hosier, Ltd. 

PO Box 12354 

Aspen, CO 81612 

(970) 920-3475 

Attorneys for Plaintiff/Counterdefendant 

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CERTIFICATE OF SERVICE

I Laura Keller certify that on July 20, 2012, I personally caused to be served, by CM/ECF 

filing, a true and correct copy of “Motion for Expedited Claim Construction” to: 

Michael R. Weiner 

(mweiner@marshallip.com) 

Julianne M. Hartzell 

(jhartzell@marshallip.com) 

Marshall, Gerstein & Borun LLP 

233 South Wacker Drive 

6300 Sears Tower 

Chicago, IL 60606 

Brian M. Buroker 

bburoker@gibsondunn.com

Gibson, Dunn & Crutcher 

1050 Connecticut Avenue, N.W. 

Washington, DC 20006 

Kenneth Richieri 

(richierk@nytimes.com) 

The New York Times Company 

620 Eighth Avenue, 17th Floor 

New York, New York 10018 

Michael M. Markman 

mmarkman@cov.com

Robert Williams 

rwilliams@cov.com

Covington & Burling, LLP 

One Front Street 

San Francisco, CA 94111 

David M. Airan 

dairan@leydig.com

John K. Winn 

jwinn@leydig.com

Leydig, Voit & Mayer, Ltd. 

Two Prudential Plaza, Suite 4900 

Chicago, Il 60601-6731 

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Daniel L. Farris 

daniel.farris@hklaw.com

R. David Donoghue 

david.donoghue@hklaw.com

Holland & Knight LLP 

131 S. Dearborn Street, 30th Floor 

Chicago, IL 60603 

/s/ Laura Keller 

Laura Keller 

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Exhibit A

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EXHIBIT A 

Modified Schedule for Expedited Claim Construction 

Event Helferich’s Proposal Per Judge Darrah’s 

Order

Exchange initial disclosures August 24, 2012 August 24, 2012 

Helferich to serve its 

infringement contentions 

September 7, 2012 September 7, 2012 

Defendants to serve noninfringement, invalidity, and 

unenforceability contentions, 

and related document production 

September 28, 2012 September 28, 2012 

Helferich to serve its response to 

non-infringement, invalidity, and 

unenforceability contentions 

October 26, 2012 October 26, 2012 

Last day to amend pleadings or 

join parties 

November 2, 2012 February 1, 2013 

Last day to seek a stay pending 

reexamination 

November 2, 2012 February 25, 2013 

Exchange Lists of Claim Terms 

for Construction 

November 9, 2012 March 8, 2013 

Last day to confer to select ten 

Claim Terms for Construction, 

absent good cause that more 

terms are appropriate. 

November 16, 2012 March 8, 2013 

Pre-claim construction fact 

discovery to close 

November 16, 2012 March 8, 2013 

Last day to file Claim 

Construction Joint Appendix 

December 7, 2012 March 15, 2013 

Defendants to file Opening 

Claim Construction Brief 

December 7, 2012 March 22, 2013 

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Helferich to file its Responsive 

Claim Construction Brief 

December 21, 2012 April 5, 2013 

Defendants to file Reply Claim 

Construction Brief 

January 9, 2013 April 12, 2013 

Parties to file their Joint Claim 

Construction Chart 

January 11, 2013 April 12, 2013 

Claim Construction Hearing January 18, 2013 (or as 

soon thereafter as may be 

convenient for the Court) 

May 10, 2013 

Joint Status Conference to 

Address Further Proceedings 

Two weeks after the Court 

issues its Claim 

Construction ruling (or as 

soon thereafter as may be 

convenient for the Court) 

May 24, 2013 

Prior to the claim construction hearing, discovery will be directed only to common issues and 

claim construction. 

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