IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

LKQ CORPORATION, and ) Case No. 1:20-cv-2753

KEYSTONE AUTOMOTIVE )

INDUSTRIES, INC. ) Honorable Thomas M. Durkin

)

Plaintiffs, )

)

v. )

)

)

GENERAL MOTORS COMPANY, )

GM GLOBAL TECHNOLOGY )

OPERATIONS, LLC, and )

GENERAL MOTORS, LLC )

)

Defendants. )

JOINT MOTION TO RE-SET

DAMAGES EXPERT AND WILLFULNESS DISCOVERY SCHEDULE

Plaintiffs LKQ Corporation and Keystone Automotive Industries, Inc. (collectively

“LKQ”) and GM Global Technology Operations, LLC, and General Motors, LLC (collectively

“GM”) (together “the Parties”) hereby move this Court to re-set the schedule regarding damages

and willfulness discovery.

I. BACKGROUND

A. Status of Discovery

All fact discovery has been completed. Liability expert discovery has been completed.

The only discovery that remains outstanding is:

(1) Production of any discovery previously withheld as privileged that is related to an

advice of counsel defense to GM’s allegations of willful infringement. At present,

this deadline is set as, “One week after issuance of a dispositive motion order.”

Dkt. No. 248. The parties do not seek any change to this deadline.

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(2) Service of opening expert reports on damages and willfulness. Currently, the

deadline for service of opening expert reports on damages and willfulness is

February 10, 2023. As explained in more detail below, in lieu of a specific date,

the parties seek to change this deadline to track the deadline included in Judge

Durkin’s initial scheduling order: “4 weeks after the issuance of a dispositive

motion order.” Dkt. No. 60.

(3) Service of rebuttal expert reports on damages and willfulness. Currently, the

deadline for service of opening expert reports on damages and willfulness is March

23, 2023. As explained in more detail below, in lieu of a specific date, the parties

seek to change this deadline to track the deadline included in Judge Durkin’s initial

scheduling order: “6 weeks after the service of opening expert report.” Dkt. No.

60.

(4) Close of expert discovery regarding damages and willfulness. Currently, the

deadline for the close of expert discovery regarding damages and willfulness is

April 20, 2023. As explained in more detail below, in lieu of a specific date, the

parties seek to change this deadline to track the deadline included in Judge Durkin’s

initial scheduling order: “4 weeks after service of rebuttal reports.” Dkt. No. 60.

B. Current Case Status

On April 25, 2022, the parties participated in an off-the-record summary judgment

conference. Dkt. No. 240. Based on that conference, an agreement was reached as to which issues

were appropriate for motions for summary judgment. However, given that LKQ had a pending

motion seeking case dispositive sanctions, Judge Durkin suggested that he resolve that motion

before commencing summary judgment briefing. Judge Durkin also suggested the parties consider

mediation.

On July 26, 2022, the parties conducted a mediation with Judge James Holderman. The

mediation was unsuccessful. Accordingly, via an August 1, 2022 joint status report, the parties

advised Judge Durkin that they had not reached a settlement agreement and asked him to decide

the Motion for Sanctions. Dkt. No. 245.

On October 25, 2022, Judge Durkin denied LKQ’s Motion for Sanctions, although he did

state that “if LKQ can show substantive prejudice because of the missing Lacks and Norplas RFQs

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and/or responses, this Court would consider a jury instruction narrowly tailored to alleviate that

prejudice.” Dkt. No. 249.

Based on this denial, on November 1, 2022, the parties submitted a joint status report and

request for a briefing schedule. Dkt. No. 250. On November 2, 2022, Judge Durkin rejected the

parties’ proposed schedule, and directed the parties to “confer and propose a briefing schedule in

which the parties each file combined briefs in support of and in opposition to their motions for

summary judgment as well as agreed page limits.” Dkt. No. 252. The parties are in the process

of conferring and will shortly propose a briefing schedule to Judge Durkin as well as agreed page

limits.

In the interim, on November 2, 2022, the parties appeared before Magistrate Judge Cole

for a status conference during which the parties discussed the need to adjust the damages and

willfulness discovery deadlines. Magistrate Judge Cole asked the parties to file a motion setting

forth (a) the current status of discovery; and (b) a request as to exactly what the parties sought in

terms of new deadlines for damages and willfulness.

II. REQUEST TO RESET THE DAMAGES AND WILLFULNESS DISCOVERY

SCHEDULE

Given the fact that Judge Durkin has not yet entered a briefing schedule as to summary

judgment motions, and given the fact that the parties do not know the specific date when Judge

Durkin will issue his ruling on those summary judgment motions, the parties request:

(1) That this Court strike the current deadlines for (1) LKQ to determine if it will rely

on an advice of counsel defense to a charge of willful infringement, and if so, to

produce any discovery previously withheld as privileged that is related to any such

defense; (2) for service of opening and rebuttal expert reports on damages and

willfulness; and (3) the close of expert discovery regarding damages and willfulness

as currently set in this Court’s minute order dated August 4, 2022. Dkt. No. 248.

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(2) That this Court re-set the foregoing deadlines as follows:

(a) Deadline for a party to determine if it will rely on an advice of counsel

defense to a charge of willful infringement, and if so, to produce any

discovery previously withheld as privileged that is related to any such

defense: One week after issuance of a dispositive motion order.

(b) Service of opening expert reports on damages and willfulness: 4 weeks

after the issuance of a dispositive motion order.

(c) Service of rebuttal expert reports on damages and willfulness: 6 weeks after

the service of opening expert reports on damages and willfulness.

(d) Close of expert discovery regarding damages and willfulness: 4 weeks after

service of rebuttal reports on damages and willfulness.

The parties note that the foregoing schedule parallels that which Judge Durkin entered initially.

See Dkt. No. 60.

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Dated: November 3, 2022 Respectfully submitted,

By: /s/Michael P. Bregenzer

Barry F. Irwin, P.C.

Michael P. Bregenzer

Robyn Bowland

Nicholas Wheeler

Andrew C. Himebaugh

Daniel Zhang

IRWIN IP LLC

150 N. Wacker Drive, Ste 700

Chicago, IL 60606

Telephone: (312) 667-6080

birwin@irwinip.com

mbregenzer@irwinip.com

rbowland@irwinip.com

nwheeler@irwinip.com

ahimebaugh@irwinip.com

dzhang@irwinip.com

Attorneys for Plaintiffs LKQ Corporation &

Keystone Automotive Industries, Inc

By: /s/Conrad A. Gosen

John C. Adkisson (pro hac vice)

adkisson@fr.com

Joseph A. Herriges (pro hac vice)

herriges@fr.com

Conrad A. Gosen (pro hac vice)

gosen@fr.com

Brianna L. Chamberlin (pro hac vice)

chamberlin@fr.com

FISH & RICHARDSON P.C.

3200 RBC Plaza

60 South 6th Street

Minneapolis, MN 55402

Telephone: (612) 335-5070

Facsimile: (612) 288-9696

Steven McMahon Zeller (IL 6238416)

szeller@dykema.com

DYKEMA GOSSETT PLLC

10 South Wacker Drive

Suite 2300

Chicago, IL 60606

Telephone: (312) 627-2272

Attorneys for Defendants General Motors

Company, GM Global Technology

Operations, LLC and General Motors,

LLC

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CERTIFICATE OF SERVICE

I certify that a copy of the foregoing document was served via ECF on November 3, 2022,

upon all counsel of record.

/s/ Gloria Rios

Gloria Rios

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