UNITED STATES DISTRICT COURT

IN THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

NEODRON LTD.,

Plaintiff,

v.

STMICROELECTRONICS N.V.; 

STMICROELECTRONICS, INC.; 

STMICROELECTRONICS (NORTH 

AMERICA) HOLDING, INC.,

Defendants.

C.A. No. 6:20-CV-00560-ADA

JURY TRIAL DEMANDED

JOINT MOTION FOR ENTRY OF DISPUTED SCHEDULING ORDER

Neodron Ltd., STMicroelectronics, Inc. and STMicroelectronics (North America) Holding, 

Inc. have a dispute regarding the schedule following the Markman hearing. A proposed schedule 

comparing each of the parties’ positions to the Sample Order Governing Proceedings—Patent Case 

(“Default Schedule”) is set forth below. The bulk of the parties’ dispute centers on when the trial 

date should be and the length of the fact discovery period. 

Neodron’s Position:

If STMicroelectronics had actual issues with the Estimated Trial Date, including 

reasonable adjustments to the default dates flowing from the Estimated Trial Date, 

STMicroelectronics did not advise Ms. Santasawatkul of this issue prior to the cancellation of this 

CMC despite Ms. Santasawkul advising the parties of the Estimated Trial Date. See generally Ex. 

B. Neodron’s proposal adopts the Estimated Trial Date of December 27, 2021 advised by Ms. 

Santasawatkul, see Ex. B (10/21 Email from. Ms. Santasawatkul), a date that appears to work best 

for the Court and which Neodron prefers. Based on this date, which is three months shorter than 

Case 6:20-cv-00560-ADA Document 26 Filed 10/30/20 Page 1 of 8
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the date that is 52 weeks after the Markman (March 25, 2022), Neodron proposes shortening the 

fact discovery period by a reasonable and modest two months from 10/22/22 under the default 

schedule to 8/20/22, which Neodron believes is more than sufficient time for the parties to conduct 

fact discovery. Neodron does not believe that this case necessitates a longer discovery period, 

based on experience Neodron has had with other cases before this Court that are even more 

complex and which feature more patents. Indeed, the Order Governing Proceedings contemplates 

that “reasonable amendments to the case schedule” are permitted “in light of the actual trial date.” 

See D.I. 22 at n.6. Additionally, STMicroelectronics appears to be represented by competent 

counsel, mitigating concerns of unfair prejudice. 

Neodron further advises this Court that the issues here overlap with two other cases. Out 

of efficiency considerations for this Court and the parties, Neodron requests that any schedule 

adopted by this Court be the same as those in the following actions: Neodron Ltd. v. Cypress 

Semiconductor Corp., 6:20-cv-523-ADA, Neodron Ltd. v. STMicroelectronics N.V., et al., 6:20-

cv-00560-ADA, and Neodron Ltd. v. Renesas Electronics Corp., et al., 6:20-cv-00529-ADA. 

STMicroelectronics, Inc. and STMicroelectronics (North America) Holding, Inc.’s Position:

The full fact discovery period contemplated by the Default Schedule is needed in this case. 

While STMicroelectronics, Inc. (“ST Inc.”) and STMicroelectronics (North America) Holding, 

Inc.’s (“ST North America”) are committed to the quick and efficient resolution of this dispute, 

cutting the Default Schedule by three months—as would be required for trial to proceed in 

Demember, 2021—will unfairly prejudice ST Inc. and ST North America by depriving both 

entities of the opportunity to fully and fairly develop their defenses. Given the number of patents 

at issue, the number and complexity of the accused products, and that Plaintiff, third party 

inventors, and unserved party STMicroelectronics N.V. are all foreign entities will require 

Case 6:20-cv-00560-ADA Document 26 Filed 10/30/20 Page 2 of 8
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additional time to coordinate and obtain relevant discovery. 

Moreover, the December 27, 2021 tentative trial date overlaps winter holidays when ST 

Inc. and ST North America are closed. Testifying at trial will place an undue burden on ST Inc. 

and ST North America by potentially requiring their respective witnesses to travel and participate 

during a time when the company is closed. Imposing this hardship is not necessary to resolve this 

action. The holiday break—December 24th through January 4th, when ST Inc. and ST North 

America’s offices are closed—is also the reason why ST proposes exchanging proposed claim 

construction on January 8, 2021, so that it may have the benefit of allowing the relevant individuals 

at ST to review and comment on any proposed constructions.

Counsel for Neodron is correct that the schedule for trial was not raised in response to Ms. 

Santasawatkul’s email. ST Inc. and ST North America perceived the correspondence and the 

determinination of cancelling the Case Management Conference to focus primarly on preMarkman issues and not trial scheduling matters. Additionally the Court’s Order Governing 

Proceedings – Patent Case states that “[t]he Court expects to set [the trial] dates at the conculsion 

of the Markman Hearing,” and therefore ST Inc. and ST North America did not raise the issue at 

that time.

While ST Inc. and ST North America understand that Plaintiffs’ proposed schedule is based 

on the December 27, 2021 tentative trial date, ST Inc. and ST North America respectfully request 

that this Court adopt ST Inc. and ST North America’s proposed schedule in this action to ensure 

that both entities are given the opportunity to fully and fairly defend against Neodron’s allegations.

Case 6:20-cv-00560-ADA Document 26 Filed 10/30/20 Page 3 of 8
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Exhibit A

‡ The parties may amend preliminary infringement contentions and preliminary invalidity 

contentions without leave of court so long as counsel certifies that it undertook reasonable 

efforts to prepare its preliminary contentions and the amendment is based on material identified 

after those preliminary contentions were served, and should do so seasonably upon identifying 

any such material. Any amendment to add patent claims requires leave of court so that the 

Court can address any scheduling issues.

Default 

Schedule

Neodron’s 

Proposed 

Deadline

ST Inc. and 

ST North 

America’s 

Proposed 

Deadlines

Item

10/9/2020 10/9/2020 Plaintiff serves preliminary‡ infringement contentions in the 

form of a chart setting forth where in the accused product(s) 

each element of the asserted claim(s) are found. Plaintiff 

shall also identify the earliest priority date (i.e. the earliest 

date of invention) for each asserted claim and produce: (1) all 

documents evidencing conception and reduction to practice 

for each claimed invention, and (2) a copy of the file history 

for each patent in suit.

10/30/2020 10/30/2020 Deadline for Motions to Transfer

12/4/2020 12/11/2020 Defendant serves preliminary invalidity contentions in the 

form of (1) a chart setting forth where in the prior art 

references each element of the asserted claim(s) are found, (2) 

an identification of any limitations the Defendant contends 

are indefinite or lack written description under section 112, 

and (3) an identification of any claims the Defendant contends 

are directed to ineligible subject matter under section 101. 

Defendant shall also produce (1) all prior art referenced in the 

invalidity contentions, (2) technical documents, including 

software where applicable, sufficient to show the operation of 

the accused product(s), and (3) summary, annual sales 

information for the accused products for the prior two years, 

unless the parties agree to some other timeframe.

12/18/2020 12/23/2020 Parties exchange claim terms for construction.

1/1/2021 1/8/2021 Parties exchange proposed claim constructions.

1/8/2021 1/8/2021 Parties disclose extrinsic evidence. The parties shall disclose 

any extrinsic evidence, including the identity of any expert 

Case 6:20-cv-00560-ADA Document 26 Filed 10/30/20 Page 4 of 8
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3/29/21 3/29/21 Fact Discovery opens; deadline to serve Initial Disclosures 

per Rule 26(a).

5/7/21 4/30/21 Deadline to add parties.

5/21/21 5/14/21 5/21/21 Deadline to serve Final Infringement and Invalidity 

Contentions. After this date, leave of Court is required for any 

amendment to Infringement or Invalidity contentions. This 

deadline does not relieve the Parties of their obligation to 

§ To the extent a party wishes to use cloud storage, the parties should contact the law clerk to 

request a Box link so that the party can directly upload the file to the Court’s Box account.

witness they may rely upon with respect to claim construction 

or indefiniteness. With respect to any expert identified, the 

parties shall also provide a summary of the witness’s expected 

testimony including the opinions to be expressed and a 

general description of the basis and reasons therefore. A 

failure to summarize the potential expert testimony in a good 

faith, informative fashion may result in the exclusion of the 

proffered testimony. With respect to items of extrinsic 

evidence, the parties shall identify each such item by 

production number or produce a copy of any such item if not 

previously produced.

1/15/2021 1/15/2020 Deadline to meet and confer to narrow terms in dispute and 

exchange revised list of terms/constructions.

1/22/2021 1/22/2020 Parties file Opening claim construction briefs, including any 

arguments that any claim terms are indefinite.

2/12/2021 2/12/2020 Parties file Responsive claim construction briefs. 

2/26/2021 2/26/2020 Parties file Reply claim construction briefs.

3/5/2021 3/5/2020 Parties submit Joint Claim Construction Statement. In 

addition to filing, the parties shall jointly submit, via USB 

drive, Box (not another cloud storage),§ or email to the law 

clerk, pdf versions of all as-filed briefing and exhibits. Each 

party shall deliver to Chambers paper copies of its Opening, 

Response , and Reply Markman Briefs, omitting attachments. 

Absent agreement of the parties, the Plaintiff shall be 

responsible for the timely submission of this and other Joint 

filings.

3/26/21 3/26/21 Markman Hearing at 1:30 p.m. C.T.

Case 6:20-cv-00560-ADA Document 26 Filed 10/30/20 Page 5 of 8
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seasonably amend if new information is identified after initial 

contentions.

6/18/21 5/28/21 6/18/21 Deadline to amend pleadings. A motion is not required unless 

the amendment adds patents or patent claims.

9/24/21 7/23/21 9/24/21 Deadline for the first of two meet and confers to discuss 

significantly narrowing the number of claims asserted and 

prior art references at issue. Unless the parties agree to the 

narrowing, they are ordered to contact the Court’s Law Clerk 

to arrange a teleconference with the Court to resolve the 

disputed issues.

10/22/21 8/20/21 10/22/21 Close of Fact Discovery.

10/29/21 8/27/21 10/29/21 Opening Expert Reports.

11/26/21 9/17/21 11/26/21 Rebuttal Expert Reports.

12/17/21 10/8/21 12/17/21 Close of Expert Discovery.

12/24/21 10/15/21 12/24/21 Deadline for the second of two meet and confer to discuss 

narrowing the number of claims asserted and prior art 

references at issue to triable limits. To the extent it helps the 

parties determine these limits, the parties are encouraged to 

contact the Court’s Law Clerk for an estimate of the amount 

of trial time anticipated per side. The parties shall file a Joint 

Report within 5 business days regarding the results of the 

meet and confer.

12/31/21 10/22/21 12/31/21 Dispositive motion deadline and Daubert motion deadline.

1/14/22 11/5/21 1/14/22 Serve Pretrial Disclosures (jury instructions, exhibits lists, 

witness lists, discovery and deposition designations).

1/28/22 11/19/21 1/28/22 Serve objections to pretrial disclosures/rebuttal disclosures.

2/4/22 11/26/21 2/4/22 Serve objections to rebuttal disclosures and File Motions in 

limine.

2/11/22 12/3/21 2/11/22 File Joint Pretrial Order and Pretrial Submissions (jury 

instructions, exhibits lists, witness lists, discovery and 

deposition designations); file oppositions to motions in limine

2/18/22 12/7/21 2/18/22 File Notice of Request for Daily Transcript or Real Time 

Reporting. If a daily transcript or real time reporting of court 

proceedings is requested for trial, the party or parties making 

Case 6:20-cv-00560-ADA Document 26 Filed 10/30/20 Page 6 of 8
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said request shall file a notice with the Court and e-mail the 

Court Reporter, Kristie Davis at kmdaviscsr@yahoo.com

Deadline to meet and confer regarding remaining objections 

and disputes on motions in limine.

3 business 

days before 

Final Pretrial 

Conference.

12/10/21 3/1/22 File joint notice identifying remaining objections to pretrial 

disclosures and disputes on motions in limine.

Weeks after 

Markman 

hearing (or 

as soon as 

practicable) 

12/14/21 3/4/22 Final Pretrial Conference. The Court expects to set this date 

at the conclusion of the Markman hearing.

52 weeks 

after 

Markman 

hearing (or 

as soon as 

practicable)

12/27/21 3/25/22 Jury Selection/Trial. The Court expects to set this date at the 

conclusion of the Markman Hearing.

Neodron: The Court has advised on 10/21/20 that 12/27/21 is 

the Estimated Trial Date

Dated: October 30, 2020 Respectfully submitted,

By: /s/ Reza Mirzaie

Reza Mirzaie (CA SBN 246953)

Paul A. Kroeger (CA SBN 229074)

Philip X. Wang (CA SBN 262239)

Kent N. Shum (CA SBN 259189)

Jonathan Ma (CA SBN 312773)

C. Jay Chung (CA SBN 252794)

RUSS AUGUST & KABAT

12424 Wilshire Blvd., Ste. 1200

Los Angeles, CA 90025

Telephone: (310) 826-7474

Facsimile: (310) 826-6991

Email: rmirzaie@raklaw.com

 pkroeger@raklaw.com

 pwang@raklaw.com

 kshum@raklaw.com

 jma@raklaw.com

 jchung@raklaw.com

Attorneys for Plaintiff Neodron Ltd.

Case 6:20-cv-00560-ADA Document 26 Filed 10/30/20 Page 7 of 8
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By: /s/ Vishal Patel

Vishal Patel

 Texas State Bar No. 24065885

Vishal.Patel@tklaw.com

Bruce S. Sostek

 Texas State Bar No. 18855700

Bruce.Sostek@tklaw.com

Natalie M. Cooley

Texas State Bar No. 24079912

 Natalie.Cooley@tklaw.com

Nadia Haghighatian

 Texas State Bar No. 24087652

Nadia.Haghighatian@tklaw.com

THOMPSON & KNIGHT LLP

One Arts Plaza

1722 Routh St., Suite 1500

Dallas, Texas 75201

214.969.1386

214.880.3267 (Fax)

ATTORNEYS FOR DEFENDANT

STMICROELECTRONICS (NORTH 

AMERICA) HOLDING, INC.

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