Free Remark - District Court of Delaware - Delaware

Case 1:07-cv-00398-GMS Case 2:05-cv-00443-TJW-CE Document 193 Document 155 Filed 06/28/2007 Page 1 1 of 1 Filed 03/30/2007 Page of 1

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

REMBRANDT TECHNOLOGIES, LP Vs. COMCAST CORP., ET AL.

§ § § CIVIL ACTION NO. 2:05CV443

ORDER The plaintiff's first motion to compel (#59) is denied as moot. The unopposed motion for leave to exceed page limits (#65) is granted. SIGNED this 30th day of March, 2007.

__________________________________________ T. JOHN WARD UNITED STATES DISTRICT JUDGE

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION REMBRANDT TECHNOLOGIES, LP Plaintiff, vs. COMCAST CORPORATION; COMCAST CABLE COMMUNICATIONS, LLC; AND COMCAST OF PLANO, LP, Defendants. § § § § § § § § § § § §

Case No. 2:05-CV-00443-TJW JURY TRIAL REQUESTED

JOINT STIPULATION AND ORDER TO AMEND THE AMENDED PROTECTIVE ORDER Plaintiff Rembrandt Technologies, LP ("Rembrandt") and Defendants Comcast Corporation, Comcast Cable Communications, LLC, and Comcast of Plano, LP, pursuant to paragraph 24 of the Court's Amended Protective Order (Docket No. 115), hereby stipulate and jointly request that paragraph 4(h) of the Amended Protective Order be amended as follows: 1. that Fish & Richardson P.C., 225 Franklin Street, Boston, MA 02110 be deleted

from the list of outside counsel for Rembrandt and 2. that McKool Smith P.C., 300 Crescent Court, Suite 1500, Dallas, Texas 75201 be

added to the list of outside counsel for Rembrandt.

JOINT STIPULATION AND ORDER TO AMEND THE AMENDED PROTECTIVE ORDER - PAGE 1
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Dated: March 8, 2007 SO STIPULATED: /s/ Harry Lee Gillam, Jr. by permission Sam Baxter_____________ Harry Lee Gillam, Jr. State Bar No. 07921800 GILLAM & SMITH, LLP 303 South Washington Avenue Marshall, TX 75670 Telephone: (903) 934-8450 Telecopier: (903) 934-9257 [email protected] Jennifer Haltom Doan State Bar No. 08809050 John Peyton Perkins, III State Bar No. 24043457 HALTOM & DOAN, LLP 6500 N. Summerhill Road, Suite 1A P. O. Box 6227 Texarkana, TX 75505-6227 Telephone: (903) 255-1000 Telecopier: (903) 255-0800 [email protected] Brian L. Ferrall Leo L. Lam Eric M. MacMichael Steven K. Yoda KEKER & VAN NEST, LLP 710 Sansome Street San Francisco, CA 94111-1704 Telephone: (415) 676-2235 Telecopier: (415) 397-7188 ATTORNEYS FOR DEFENDANTS COMCAST CORPORATION, COMCAST CABLE COMMUNICATIONS, LLC; AND COMCAST OF PLANO, LP

/s/ Sam Baxter______________________ Sam Baxter State Bar No. 01938000 McKOOL SMITH P.C. 505 E. Travis, Suite 105 Marshall, Texas 75670 Telephone: (903) 927-2111 Telecopier: (903) 927-2622 [email protected] Jeffrey A. Carter State Bar No. 03919400 McKOOL SMITH P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4006 Telecopier: (214) 978-4044 [email protected] Travis Gordon White State Bar No. 21333000 McKOOL SMITH P.C. 300 W. 6th Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Telecopier: (512) 692-8744 [email protected] Robert M. Parker State Bar No. 15498000 Robert Christopher Bunt State Bar No. 00787165 PARKER & BUNT, P.C. 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 Telephone: (903) 531-3535 Telecopier: (903) 533-9687 [email protected] [email protected]

JOINT STIPULATION AND ORDER TO AMEND THE AMENDED PROTECTIVE ORDER - PAGE 2
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Otis Carroll State Bar No. 03895700 Wesley Hill State Bar No. 24032294 IRELAND, CARROLL & KELLEY, P.C. 6101 S. Broadway, Suite 500 Tyler, Texas 75703 Telephone: (903) 561-160 Telecopier: (903) 581-1071 [email protected] Andrew W. Spangler Elizabeth L. DeRieux BROWN MCCARROLL, LLP 1127 Judson Road, Suite 220 P. O. Box 3999 Longview, TX 75606-3999 Telephone: (903) 236-9800 Telecopier: (903) 236-8787 [email protected] [email protected] Franklin Jones, Jr. State Bar No. 00000055 JONES & JONES, INC. 201 W. Houston St. P. O. Drawer 149 Marshall, TX 75670 Telephone: (903) 938-4395 Telecopier: (903) 938-3360 [email protected] ATTORNEYS FOR PLAINTIFF REMBRANDT TECHNOLOGIES, LP

IT IS SO ORDERED. SIGNED this 2nd day of April, 2007.

__________________________________________ T. JOHN WARD UNITED STATES DISTRICT JUDGE JOINT STIPULATION AND ORDER TO AMEND THE AMENDED PROTECTIVE ORDER - PAGE 3
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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION ) ) Plaintiff, ) ) v. ) ) COMCAST CORPORATION, COMCAST ) CABLE COMMUNICATIONS, LLC, ) COMCAST OF PLANO, LP ) ) Defendants. ) __________________________________________) REMBRANDT TECHNOLOGIES, LP ) ) Plaintiff, ) ) v. ) ) COMCAST CORPORATION, COMCAST ) CABLE COMMUNICATIONS, LLC ) COMCAST OF PLANO, LP ) ) Defendants. ) __________________________________________) REMBRANDT TECHNOLOGIES, LP ) ) Plaintiff, ) ) v. ) ) SHARP CORPORATION and SHARP ) ELECTRONICS CORP. ) ) Defendants. ) __________________________________________) REMBRANDT TECHNOLOGIES, LP

Case No. 2:05-CV-443-TJW

Case No. 2:06-CV-506-TJW

Case No. 2:06-CV-047-TJW

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) ) Plaintiff, ) ) v. ) ) TIME WARNER CABLE, INC. ) ) Defendant. ) __________________________________________) REMBRANDT TECHNOLOGIES, LP ) ) Plaintiff, ) ) v. ) ) TIME WARNER CABLE, INC. ) ) Defendant. ) __________________________________________) REMBRANDT TECHNOLOGIES, LP ) ) Plaintiff, ) ) v. ) ) CHARTER COMMUNICATIONS, INC., ) CHARTER COMMUNICATIONS ) OPERATING, LLC, COXCOM INC., CSC ) HOLDINGS, INC., and CABLEVISION ) SYSTEMS CORPORATION ) ) Defendants. ) __________________________________________)

REMBRANDT TECHNOLOGIES, LP

Case No. 2:06-CV-369-TJW

Case No. 2:06-CV-224-TJW

Case No. 2:06-CV-507-TJW

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) ) Plaintiff, ) ) v. ) ) CHARTER COMMUNICATIONS, INC., ) CHARTER COMMUNICATIONS ) OPERATING LLC, COXCOM, INC., CSC ) HOLDINGS, INC., and CABLEVISION ) SYSTEMS CORPORATION ) ) Defendants. ) __________________________________________)

REMBRANDT TECHNOLOGIES, LP

Case No. 2:06-CV-223-TJW

NOTICE OF FILING OPPOSITION TO COXCOM'S MOTION FOR TRANSFER AND CONSOLIDATION OF REMBRANDT TECHNOLOGIES, LP PATENT LITIGATION
Rembrandt Technologies, LP (Rembrandt) notifies the Court that it has opposed CoxCom's Motion for Transfer and Consolidation Pursuant to 28 U.S.C. §1407. Enclosed with this Notice are copies of the opposition and all documents in support thereof.

DATED: April 5, 2007

Respectfully submitted,

_/s/ Sam Baxter________________________ Sam Baxter State Bar No. 01938000 McKOOL SMITH, P.C. 505 E. Travis, Suite 105 Marshall, Texas 75670 Telephone: (903) 927-2111 Telecopier: (903) 927-2622 [email protected]

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Jeffrey A. Carter State Bar No. 03919400 McKOOL SMITH, P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4006 Telecopier: (214) 978-4044 [email protected] Travis Gordon White State Bar No. 21333000 McKOOL SMITH, P.C. 300 W. 6th Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Telecopier: (512) 692-8744 [email protected] Robert M. Parker State Bar No. 15498000 Robert Christopher Bunt State Bar No. 00787165 PARKER & BUNT, P.C. 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 Telephone: (903) 531-3535 Telecopier: (903) 533-9687 [email protected] [email protected]

ATTORNEYS FOR PLAINTIFF REMBRANDT TECHNOLOGIES, LP

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CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this document was served on all counsel who have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R. Civ. P. 5(d) and Local Rule CV-5(e), all other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by U.S. mail, on this the 5th day of April, 2007.

_/s/ Sam Baxter________________________ Sam Baxter

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BEFORE THE JUDICIAL PANEL ON MULTIDISTRICT LITIGATION In re: ) Rembrandt Technologies, LP Patent ) MDL Docket No. 1848 Litigation ) In re: Rembrandt Technologies, LP ) Patent Litigation ) ____________________________________) ORAL ARGUMENT REQUESTED REASONS WHY ORAL ARGUMENT SHOULD BE HEARD

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Pursuant to Rule 16.1(b), Rembrandt Technologies, LP (Rembrandt) files this statement explaining why oral argument should be heard in opposition to CoxCom's Motion for Transfer and Consolidation. In its effort to transfer the New York and Texas cases to Delaware for MDL Consolidation, CoxCom has inaccurately described the Rembrandt litigations. Rembrandt respectfully submits that, when accurately understood, given the very different procedural postures of the cases, different patents, and different defendants who are competitors, coordination of the common issues can best be accomplished under the existing structure rather than through MDL consolidation. In re Eli Lilly and Company (Cephalexin Monohydrate) Patent Litigation, 446 F. Supp. 242, 244 (J.P.M.L. 1978) (holding that "consultation and cooperation among the three concerned district courts, if deemed appropriate by those courts, coupled with the cooperation of the parties, would be sufficient to minimize the possibility of conflicting pretrial rulings."). A clearer understanding of the pending litigation, wherein the fourteen actions are already logically grouped and proceeding with coordinated schedules where possible, will assist the Panel in clarifying the confusion present in CoxCom's motion. Oral argument will also allow the parties to present the Panel current information regarding the status of the actions at issue, most notably Rembrandt's first-filed case: Rembrandt v. Comcast Corporation, Comcast Cable Communications, LLC, Comcast of Plano, LP, 2:06-cv-443-TJW (E.D. Tex.) (Comcast I). In Comcast I, filed in 2005, discovery is drawing to a close, claim construction has been fully briefed, and trial is likely to occur before the end of 2007. Since the outcome of the Comcast I litigation may moot part or all of eight other cases involving the patents asserted in Comcast, the status of this case is especially important.

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Dated: April 4, 2007 Respectfully submitted, /s/ Brooke A. M. Taylor Brooke A.M. Taylor State Bar No. 33190 (Washington) E-mail: [email protected] SUSMAN GODFREY L.L.P. 1201 Third Avenue, Suite 3800 Seattle, Washington 98101-3000 Telephone: (206) 516-3880 Fax: (206) 516-3883 Max L. Tribble, Jr. State Bar No. 20213950 (Texas) 1000 Louisiana Street, Suite 5100 Houston, Texas 77002-5096 Telephone: (713) 651-9366 Fax: (713) 654-6666 E-mail: [email protected] Edgar Sargent State Bar No. 28283 (Washington) E-mail: [email protected] Matthew R. Berry State Bar No. 37364 (Washington) E-mail: [email protected] SUSMAN GODFREY L.L.P. 1201 Third Avenue, Suite 3800 Seattle, Washington 98101-3000 Telephone: (206) 516-3880 Fax: (206) 516-3883 Tibor L. Nagy State Bar No. 24041562 (Texas) E-mail: [email protected] SUSMAN GODFREY L.L.P. 590 Madison Avenue New York, NY 10022-8521 Telephone: (212) 336-8330 Fax: (212) 516-3883 Attorneys for Rembrandt Technologies, LP

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BEFORE THE JUDICIAL PANEL ON MULTIDISTRICT LITIGATION In re: ) ) Rembrandt Technologies, LP Patent ) Litigation ) ____________________________________)

MDL Docket No. 1848 In re: Rembrandt Technologies, LP Patent Litigation

RESPONSE TO COXCOM'S MOTION FOR TRANSFER AND CONSOLIDATION Pursuant to Rule 7.1(b) of the Rules of Procedure of the Judicial Panel on Multidistrict Litigation, Rembrandt Technologies, LP (Rembrandt) responds to the numbered averments set forth in CoxCom's motion. All allegations not expressly admitted are denied. 1. Admitted in part, denied in part. Rembrandt admits that it filed ten of the fourteen

actions during the past seven months. Rembrandt admits that it asserted claims against eleven (11) corporations and their related corporate entities for a total of twenty-nine defendants. Admitted that CoxCom seeks transfer and consolidation of fourteen proceedings. At the same time, however, CoxCom argues that claims from nine of these proceedings should be immediately severed from any consolidated action. 2. 3.
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No response to this paragraph is required. The first sentence of paragraph 3 is admitted, and it is admitted that Rembrandt 1

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acquires patents and has sued entities it believes infringes those patents. The second sentence of paragraph 3 is denied. 4. Denied as stated. Rembrandt initiated thirteen patent cases that are logically grouped

as filed and related to different technology, services, and offerings provided by various defendants. It is admitted that the ATSC Digital Television Standard is relevant to some of the cases and that the DOCSIS specification is relevant to some of the cases. 5. Denied in part, admitted in part. Rembrandt initiated the following groups of patent

litigation. Group I involves four patents asserted in three actions in the Eastern District of Texas (against Comcast, Charter, CoxCom, and Time Warner). Rembrandt filed suit against Cablevision in the District of Delaware on the same four patents, and Rembrandt also filed suit against Sharp, a television manufacturer, in the Eastern District of Texas on one of the Group I patents (the `627). Group II involves five patents asserted against the same defendants involved in Group I in the Eastern District of Texas (Comcast, Charter, CoxCom, and Time Warner). Rembrandt also filed suit on some of the Group II patents against Adelphia in the Southern District of New York due to particular circumstances of Adelphia's bankruptcy. Group III involves a single patent, the `627, asserted against broadcasters (ABC, CBS, NBC, and Fox), defendants not involved in the Group I or II litigation. CoxCom itself argues that claims involving the `627 patent should be severed from any consolidated proceeding. Separately, CoxCom filed an improper declaratory judgment action against Rembrandt with respect to one of the Group II patents that is the subject of a motion to dismiss. Admitted that separate claims in the `627 patent relate to transmission (the cases against the broadcaster defendants) and reception (the cases against the cable company defendants and Sharp) of digital television signals. The other cases claim infringement by each of the cable company defendants to the extent their services and their use of equipment (not limited to DOCSIS740877v1/9758

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complaint modems) infringe each of the particular patents asserted against them. 6. 7. 8. Rembrandt incorporates and realleges its response to paragraph 5. Rembrandt incorporates and realleges its response to paragraph 5. Denied. Judge Ward held scheduling conferences and set pretrial and trial deadlines

in five cases. In addition, Judge Ward ruled on a motion to intervene and a motion to disqualify counsel. The Comcast I claim construction issues have been fully briefed by the parties and await hearing. 9. 10. Admitted. Denied. Rembrandt incorporates and realleges its responses to paragraph 5.

Rembrandt's infringement contentions will not be identical in all fourteen actions that are the subject of CoxCom's motion. Rembrandt cannot comment on the defendants' non-infringement positions and whether they will overlap. 11. Denied. Paragraph 11 states a conclusion of law to which no response is required.

To the extent that this paragraph states allegations as to which a response is required, Rembrandt incorporates and realleges is response to paragraph 5 and its brief in opposition to CoxCom's motion to transfer and consolidate. 12. Denied. Rembrandt cannot respond to this averment because the term "overlapping

patents" is vague. Except within a particular group of cases, Rembrandt has not asserted patents belonging to the same family or depending from the same patent application. Rembrandt incorporates its brief in opposition to CoxCom's motion to transfer and consolidate. 13. Denied. Rembrandt incorporates its responses to paragraphs 6 and 7. Absent a

defendant's deliberate decision to require duplicative discovery of a defendant or third party, Rembrandt does not expect to take duplicative or burdensome discovery.
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14.

Denied. Rembrandt incorporates its responses to paragraphs 6 and 7. Rembrandt is

entitled to damages (not limited to a reasonable royalty) for each patent infringed, and damage awards must be supported by sufficient evidence. The Georgia-Pacific factors require analysis of the unique circumstances of each defendant infringer in addition to analysis of Rembrandt and the patents-in-suit. Section 1407 consolidation and transfer is irrelevant to what damages will be received at trial because consolidation and transfer implicate pretrial proceedings. 15. Denied. Of the actions at issue in CoxCom's motion, only six are pending before

Judge Sleet in the District of Delaware. Judge Sleet stayed each of these cases before conducting a scheduling conference. Rembrandt incorporates its responses to paragraphs 6 and 7. Moreover, Rembrandt moved to dismiss CoxCom's declaratory judgment action for lack of jurisdiction. Additionally, CoxCom itself argues that all or part of nine of the fourteen actions should be immediately severed from any consolidated proceeding, thus undermining any alleged benefit to centralization. 16. Rembrandt admits the first sentence of paragraph 16. Rembrandt denies that Judge

Sleet indicated an interest in coordinating the six actions pending in Delaware. Sua sponte, Judge Sleet entered an order staying all of the actions pending before him and did so before holding a scheduling conference in any Rembrandt litigation. 17. Denied. Consolidation and transfer are inappropriate as centralization would not

serve the interests of the parties, witnesses, or judiciary nor would it aid in the efficient or just resolution of the cases in question. WHEREFORE Rembrandt requests that this Panel enter an order denying CoxCom's motion in its entirety, or in the alternative, transfer any actions it deems appropriate to the Eastern District of Texas.
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Dated: April 4, 2007 Respectfully submitted, /s/ Brooke A. M. Taylor Brooke A.M. Taylor State Bar No. 33190 (Washington) E-mail: [email protected] SUSMAN GODFREY L.L.P. 1201 Third Avenue, Suite 3800 Seattle, Washington 98101-3000 Telephone: (206) 516-3880 Fax: (206) 516-3883 Max L. Tribble, Jr. State Bar No. 20213950 (Texas) 1000 Louisiana Street, Suite 5100 Houston, Texas 77002-5096 Telephone: (713) 651-9366 Fax: (713) 654-6666 E-mail: [email protected] Edgar Sargent State Bar No. 28283 (Washington) E-mail: [email protected] Matthew R. Berry State Bar No. 37364 (Washington) E-mail: [email protected] SUSMAN GODFREY L.L.P. 1201 Third Avenue, Suite 3800 Seattle, Washington 98101-3000 Telephone: (206) 516-3880 Fax: (206) 516-3883 Tibor L. Nagy State Bar No. 24041562 (Texas) E-mail: [email protected] SUSMAN GODFREY L.L.P. 590 Madison Avenue New York, NY 10022-8521 Telephone: (212) 336-8330 Fax: (212) 516-3883 Attorneys for Rembrandt Technologies, LP

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BEFORE THE JUDICIAL PANEL ON MULTIDISTRICT LITIGATION ) ) ) ) ) ____________________________________) In re: Rembrandt Technologies, LP Patent Litigation

MDL Docket No. 1848 In re: Rembrandt Technologies, LP Patent Litigation ORAL ARGUMENT REQUESTED

REMBRANDT'S BRIEF IN OPPOSITION TO COXCOM'S MOTION TO TRANSFER AND CONSOLIDATE

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TABLE OF CONTENTS I. Rembrandt's Actions Are Logically Grouped As filed . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 A. Group I Cable Company Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 1. 2. 3. Comcast I, Filed in September 2005, is at the Markman stage . . . . . . . . . 3 Group I Cases Against Charter, CoxCom and Time Warner . . . . . . . . . . . 4 Rembrandt v. Cablevision, 01:06-cv-365 (D. Del.), filed October 13, 2006 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

B. C.

Rembrandt v. Sharp, 2:06-cv-047-TJW (E.D. Tex.), filed February 3, 2006 . . . . 5 Group II Cable Company Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 1. 2. Case Pending in the Eastern District of Texas before JudgeWard . . . . . . 6 Rembrandt Technologies, LP v. Adelphia Communications Corporation, Adv. Proc. No. 06-01739 (Bankr. S.D.N.Y. 2006), filed September 13, 2006 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

D.

Group III Television Broadcaster Litigation Stayed By Judge Sleet in the District of Delaware . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 CoxCom's Decision to File in a Second Forum . . . . . . . . . . . . . . . . . . . . . . . . . . 8

E. II.

Transfer and Consolidation Is Unnecessary and Counterproductive . . . . . . . . . . . . . . . . . 9 A. B. Comcast I is Far Too Advanced To Be Consolidated . . . . . . . . . . . . . . . . . . . . . . 9 Comcast I Negates The Need of Consolidation of any Case Involving the Same Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 CoxCom Argues that 9 of the 14 Cases Should Not Be Consolidated . . . . . . . . 10 The Patents-in-Suit Relate to Different Technology, Weighing Against Consolidation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 Inconsistent Rulings are Not a Concern . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 Alternative to Transfer and Consolidation Exist and Are More Appropriate . . . 12

C. D.

E. F. III.

The Eastern District of Texas is the Most Logical Transferee Court . . . . . . . . . . . . . . . 15 i

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A. B. C.

The Pendency in that District of a Number of the Actions . . . . . . . . . . . . . . . . . 15 The Court's Familiarity with the Issues . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 The District Court Judge's Willingness to Accept Responsibility for Conducting Coordinated or Consolidated Pretrial Proceedings . . . . . . . . . . . . . . . . . . . . . . . 16 The Eastern District of Texas Docket is More Favorable . . . . . . . . . . . . . . . . . . 17 Place of Incorporation Is Irrelevant to the Location for an MDL Proceeding . . . 17

D. E. IV.

Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18

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TABLE OF AUTHORITIES FEDERAL CASES

In re Acacia Media Technolgoies Corp., Patent Litigation, 360 F. Supp. 2d 1377, 1379 (J.P.M.L. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 28 L. Ed. 2d 788, 91 S. Ct. 1434 (1971) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 In re Bourns Patent Litigation, 385 F. Supp. 1260 (J.P.M.L. 1974) . . . . . . . . . . . . . . . . . . . . . . . 9 In re JP Morgan Chase & Co. Securities Litigation, 452 F. Supp.2d 1350 (J.P.M.L. 2006) . . . 15 In re Eli Lilly and Company (Cephalexin Monohydrate) Patent Litigation, 446 F. Supp. 242 (J.P.M.L. 1978) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1, 10, 12, 14 Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 In re Motion Picture Licensing Antitrust Litigation, 479 F. Supp. 581 (J.P.M.L. 1979) . . . . . . . 9 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 In re Solaia Technology LLC Patent & Antitrust Litigation, 346 F. Supp. 2d 1373 (J.P.M.L. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 FEDERAL STATUTES 28 U.S.C. § 1407 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1, 11, 14

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In its effort totransfer the New York and Texas cases to Delaware for MDL Consolidation, CoxCom, Inc. (CoxCom) has inaccurately described the Rembrandt Technologies, LP (Rembrandt) litigations. Rembrandt respectfully submits that, when

accurately understood, given the very different procedural postures of the cases, different patents, and different defendants who are competitors, coordination of the common issues can best be accomplished under the existing structure rather than through MDL consolidation. See In re Eli Lilly and Company (Cephalexin Monohydrate) Patent Litigation, 446 F. Supp. 242, 244 (J.P.M.L. 1978) (holding that "consultation and cooperation among the three concerned district courts, if deemed appropriate by those courts, coupled with the cooperation of the parties, would be sufficient to minimize the possibility of conflicting pretrial rulings."). In addition to conceding that consolidation of the majority of the cases would be inefficient1, CoxCom ignores the fact that the oldest case, filed in the Eastern District of Texas, is too far advanced to benefit from transfer and consolidation. The first of Rembrandt's suits, Rembrandt v. Comcast Corporation, Comcast Cable Communications, LLC, Comcast of Plano, LP, 2:06-cv-443-TJW (E.D. Tex.) (Comcast I), was filed over eighteen months ago in September 2005. Claim construction has been fully briefed, and the case will likely go to trial before the end of this year. In fact, centralization would not serve the purposes of 28 U.S.C. § 1407 not only because Comcast I is nearly trial-ready, but also because eight other cases involving the same patents could be mooted in whole or in part by its resolution. Moreover, delaying the

CoxCom's motion asserts that these cases should be consolidated, then informs the Panel that claims from nine of the fourteen cases should be "severed from the consolidation action" because they involve "completely different technology and activity." CoxCom Memo. at 1, fn 2.
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Comcast I trial date by transfer and consolidation to another court would unfairly prejudice Rembrandt and cause inefficiency by forcing another court to re-learn the Comcast I issues. The fourteen actions in dispute are already logically grouped in the appropriate forums with no defendant subject to multiple jurisdictions, save CoxCom which subjected itself to this fate when it chose to file an improper declaratory judgment action in the District of Delaware. CoxCom's presence in dual forums will likely be resolved by the Court's rulings on pending motions to dismiss or transfer. For these reasons and those below, Rembrandt

respectfully submits that Section 1407 transfer and consolidation is not necessary or the most appropriate means by which to provide whatever coordination of common issues may be desirable. If the Panel nevertheless determines that Section 1407 consolidation is desirable, Rembrandt respectfully submits that the cases involving the `627 patent not be consolidated, consistent with CoxCom's motion. Further, if the Panel deems any consolidation appropriate and necessary, then Judge Ward of the Eastern District of Texas is in the best position to decide what coordination would provide efficiencies and, at the same time, not undermine the Comcast I progress towards trial. I. Rembrandt's Actions Are Logically Grouped As Filed.

Rembrandt's case groupings promote efficiency and orderly consideration. CoxCom's recitation of the Rembrandt litigation incorrectly describes the Rembrandt cases. For that reason, Rembrandt corrects the record for the Panel and details the chronological history of Rembrandt's patent litigation.

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A.

Group I Cable Company Litigation 1. Comcast I, filed in September 2005, is at the Markman stage.

Rembrandt filed this first case in September 2005, asserting four patents: U.S. Patent Nos. 4,937,819; 5,852,631; 5,719,858; and 5,243,627. Three of these patents (the `819, `631, and `858) relate to improved methods for facilitating communication with modems and are infringed by the provision of high speed internet services. As CoxCom notes, the `627 involves "completely different technology and activity" because it relates to improved error correction in a digital television transmission system and is infringed by the receipt of certain broadcast signals. CoxCom Memo. at 1. The case is now far advanced. The Court held its initial scheduling conference on May 2, 2006, set the claim construction hearing for February 8, 2007 and the trial for August 8, 2007. Subsequently, a third-party, Time Warner, intervened for the limited purpose of

disqualifying Rembrandt's counsel. The Court granted Time Warner's motion a week before the scheduled claim construction hearing and allowed Rembrandt to postpone the hearing while it obtained new counsel. On March 8, 2007, Rembrandt informed the Court that it had retained new counsel and would be ready to proceed with the claim construction hearing on April 23, 2007, or any date thereafter that met the Court's schedule. See Exh. 1. In the meantime, pretrial discovery progressed. Rembrandt and Comcast

exchanged infringement and invalidity contentions in accordance with the Patent Rules of the Eastern District of Texas. The Court adopted a protective order under which the parties have produced over four (4) million pages of documents. They have also collectively served 37 interrogatories on each other. In addition, they have subpoenaed or obtained documents from 59

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third parties. Some of those parties have produced source code relevant to the issues in the case which is subject to an Escrow Agreement entered by Rembrandt, Comcast, and an escrow agent. The Escrow Agreement governs the review and use of the source code, and much of that source code has been reviewed. Rembrandt has deposed six (6) Comcast witnesses and six (6) thirdparty witnesses have been deposed. Rembrandt and Comcast have also identified and exchanged claim terms for construction, exchanged proposed constructions for those terms, submitted a Joint Claim Construction Statement to the Court as required by the Eastern District Patent Rules and fully briefed their positions in anticipation of the claim construction hearing. 2. Group I Cases Against Charter, CoxCom and Time Warner.

About nine months after filing Comcast I, in June 2006, Rembrandt asserted the same four patents against several other defendants in two separate actions: · Rembrandt Technologies, LP v. Charter Communications, Inc. and CoxCom, 2:06-cv-223 (E.D. Tex) (Charter/CoxCom I), filed June 1, 2006.2 Rembrandt Technologies, LP v. Time Warner Cable, Inc., 2:06-CV-224-TJW (E.D. Tex.) (Time Warner I), filed June 1, 2006.

·

Thus, there are now three Group I cases pending before Judge Ward. The Court held scheduling conferences in each case on April 3, 2007, and proposed trial dates for both cases in August 2008. See Exhs. 2-3 (notice of scheduling conferences).

Rembrandt and the defendants agreed to, and the Court announced its intention to enter, the same pretrial schedule in both Charter/CoxCom I and Time Warner I. The parties have further

2

CoxCom has moved to dismiss the claims against it for lack of personal jurisdiction. Rembrandt has opposed this motion and awaits a ruling from the Court.
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agreed to hold only one claim construction hearing in the two cases.

Rembrandt is also

amenable to re-using discovery across Group I actions where applicable. Indeed, Rembrandt is willing to allow defendants in any of Rembrandt's cases access to prior discovery involving Rembrandt so long as it is relevant to that case. In addition, Rembrandt is willing to seek discovery from third parties only once where that discovery is relevant to, and can be used in, the other actions. 3. Rembrandt v. Cablevision, 01:06-cv-365 ( D. Del.), filed October 13, 2006.

In October 2006, Rembrandt sued Cablevision in Delaware for infringement of the Group I patents, plus U.S. Patent 5,008,903. Rembrandt initially brought this action (but without the `903) in the Eastern District of Texas as part of the Charter/CoxCom I suit, but the parties agreed that jurisdiction was not proper there. Rembrandt, therefore, dismissed and re-filed against Cablevision in Delaware. This action has been stayed sua sponte by Judge Sleet pending a decision on the instant motion, as have all of the litigations in his Court involving Rembrandt patents. See Exh. 4. B. Rembrandt v. Sharp, 2:06-cv-047-TJW (E.D. Tex.), filed February 3, 2006.

On February 3, 2006, Rembrandt asserted only the `627 patent against Sharp, a TV manufacturer. The Sharp case is also pending before Judge Ward in the Eastern District of

Texas where a scheduling conference has been held, trial and pretrial deadlines have been set. Rembrandt already has served its infringement contentions in that case. See Exh. 5.

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C.

Group II Cable Company Litigation 1. Cases Pending in the Eastern District of Texas before Judge Ward

Rembrandt next filed a group of cases against a subset of the same defendants in the Eastern District of Texas on a completely different set of patents than involved in the Group I litigation. See CoxCom Exhs. 7, 11, and 15 (asserting United States Patent Nos. 5,008,903; 5,710,761; 5,778,234; 6,131,159; and 6,950,444). None of the patents in Group II share a

specification or patent application with any of the Group I patents. All of the defendants in the second wave of suits (Time Warner, Charter, CoxCom, and Comcast) were already litigating with Rembrandt before Judge Ward at the time the Group II litigation began. Thus, the parties were familiar with the extensive patent rules imposed by the Court and the District, and Judge Ward is likewise familiar with the parties. These cases are as follows: · Rembrandt Technologies, LP v. Time Warner Cable, Inc., 2:06-CV-369-TJW (E.D. Tex.) (Time Warner II), filed September 13, 2006 Rembrandt Technologies, LP v. Comcast Corporation, Comcast Cable Communications, LL, Comcast of Plano, 2:06-CV-506-TJW (E.D. Tex.) (Comcast II), filed November 30, 2006 Rembrandt Technologies, LP v. Charter Communications, Inc., Charter Communications Operating, LLC, CoxCom, Inc., 2:06-CV-507-TJW (E.D. Tex.) (Charter/CoxCom II), filed November 30, 20063

·

·

3

CoxCom moved to dismiss the claims against it, just as it responded to the Cox I litigation. Alternatively, CoxCom asked the Court to transfer this action to the District of Delaware. Rembrandt similarly opposes this motion to dismiss and awaits a ruling from the Court.
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The parties have agreed to place the Group II Litigation on the same pre-trial schedule as Charter/CoxCom I and Time Warner I, and have agreed to hold one claim construction hearing for the Group II cases. At the scheduling conference on April 2, 2007, the Court indicated its intent to enter the agreed schedule. 2. Rembrandt Technologies, LP v. Adelphia Communications Corporation, Adv. Proc. No. 06-01739 (Bankr. S.D.N.Y. 2006), filed September 13, 2006.

In September 2006, Rembrandt filed a patent infringement suit and administrative expense claim against bankrupt Adelphia Cable Corporation and several of its subsidiaries. See Exh. 33 to CoxCom's Motion Rembrandt Technologies, LP v. Adelphia Communications Corporation, Adv. Proc. No. 06-01739 (Bankr. S.D.N.Y. 2006). In the Adelphia suit,

Rembrandt asserted four of the patents that are pending in the Group II cases before Judge Ward (`444, `159, `234, and `761). Rembrandt would have preferred to have the Eastern District of Texas court adjudicate the suit given its familiarity with the patents, but Rembrandt was compelled to proceed in New York because of the procedural posture of Adelphia's bankruptcy. Specifically Rembrandt needed to object to the plan of reorganization because it did not provide for reserves with which to pay disputed administrated claims after such claims had been allowed. Had Rembrandt not taken this action in New York and succeeded at modifying the plan, proceeding with any infringement claim would have been useless as no funds would have existed to satisfy Rembrandt's judgment. D. Group III Television Broadcaster Litigation Stayed By Judge Sleet in the District of Delaware.

In December 2006, Rembrandt filed the Group III litigation in Delaware asserting a single patent, the `627, against certain television broadcasters - defendants not litigating in the

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Eastern District of Texas. These cases are assigned to Judge Sleet who had not yet held a scheduling conference when -- on March 28, 2007 -- the Court entered a sua sponte order staying all of the matters involving Rembrandt patents. See Exh. 4. CoxCom's statement that Judge Sleet expressed an interest in consolidation of Rembrandt's Delaware cases is unsupported by any record, and Judge Sleet has never voiced such suggestion. In fact, Judge Sleet's only communication with respect to any of the Rembrandt litigation filed in Delaware is a sua sponte order staying all Rembrandt litigation in his Court pending this Panel's decision on CoxCom's motion. See id. The Group III cases, all stayed, are as follows: · · · · E. Rembrandt v. CBS, 1:06-cv-727-GMS (D. Del.), filed December 1, 2006. Rembrandt v. NBC, 1:06-cv-729-GMS (D. Del.), filed December 1, 2006. Rembrandt v. ABC, 1:06-cv-730-GMS (D. Del.), filed December 1, 2006. Rembrandt v. Fox, 1:06-cv-731-GMS (D. Del.), filed December 1, 2006. CoxCom's Decision to File in a Second Forum.

On November 30, 2006, CoxCom filed a declaratory judgment action against Rembrandt in the District of Delaware solely related to the `903 patent. CoxCom, Inc., v. Rembrandt Technologies, LP, 1:06-cv-721 (D. Del.). Rembrandt moved to dismiss this case on the ground that the Court lacks jurisdiction. See Exh. 6. Alternatively, Rembrandt asked the Court to decline to exercise jurisdiction given that the same patent in CoxCom's declaratory judgment action is already being litigated as part of Rembrandt's Group II cases. Judge Sleet has stayed this case as well.

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II.

Transfer and Consolidation Is Unnecessary and Counterproductive. A. Comcast I is far too advanced to be consolidated.

CoxCom's motion should be denied because "Section 1407 centralization would neither serve the convenience of the parties and witnesses nor further the just and efficient conduct of this litigation." In re Solaia Technology LLC Patent & Antitrust Litigation, 346 F. Supp. 2d 1373 (J.P.M.L. 2004) (denying motion to consolidate and transfer where "some constituent actions have already been pending for over two years"). As in In re Solaia, the Comcast I litigation has been pending for eighteen months and is far too advanced to benefit from assignment to an MDL proceeding. See also In re Motion Picture Licensing Antitrust Litig., 479 F. Supp. 581, 590 (J.P.M.L. 1979) ("We have concluded that some or all claims raised in many of the actions now before us are also inappropriate for transfer, either because discovery and other pretrial proceedings are well advanced in those actions . . ."). Rembrandt filed suit against Comcast in 2005; claim construction is fully briefed and ready for oral argument; and trial is likely to begin several months thereafter. To ask a new Court to learn the patents and issues in dispute at this stage of the proceedings would not be efficient and would cause unjust and undue delay to Rembrandt. B. Comcast I Negates the Need of Consolidation of any Case Involving the Same Patents.

The late stage of the Comcast I case impacts not only that one action but the Group I and Group III cases as a whole. The Panel has "consistently denied transfer of actions in patent litigation where one of the actions was proceeding expeditiously toward trial on the common issue of validity." In re Bourns Patent Litigation, 385 F. Supp. 1260, 1261 (J.P.M.L. 1974). Because Judge Ward is on the verge of adjudicating the Comcast I case, including entering a

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claim construction order and trying the validity of the asserted patents, consolidating the other eight cases involving one or more of these patents to another court would be inefficient because a patentee is collaterally estopped from re-litigating the validity of a patent once that issue has been fully adjudicated. Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 28 L. Ed. 2d 788, 91 S. Ct. 1434 (1971). The Panel has recognized the Blonder-Tongue estoppel principle as a reason for denial of Section 1407 transfer. See In re Eli Lilly and Co., 446 F. Supp. at 244 (denying MDL

consolidation where "a holding in one action that the two Lilly patents are invalid would likely prove dispositive of that issue in the other two actions"). Applying the precedent of this Panel and Blonder-Tongue, given that each of the defendants in the Rembrandt cases has raised invalidity as a defense, any one of the eight later-filed actions could be mooted by a finding in an earlier case that the patents-in-suit are invalid. Comcast I will certainly be resolved well before the other cases as it is closer to trial, was filed nine months before the other actions, and the cases before Judge Sleet are stayed.4 C. CoxCom Argues that 9 of the 14 Cases Should Not Be Consolidated.

CoxCom has argued that all claims involving the `627 patent should be severed from any consolidated proceeding. That assertion implicates nine of the fourteen cases at issue which CoxCom asserts involve "completely different technology and activity." CoxCom Memo. at 1, footnote 2. The `627 is the only patent asserted in each of the four Group III actions stayed

before Judge Sleet in Delaware. Accepting CoxCom's argument that the claims involving the

4

The other Group I and Group II Cable Company cases are currently scheduled to go to trial beginning in August 2008. Rembrandt believes that the Court will reset Comcast I for trial sometime in 2007.
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`627 should not be consolidated, no basis exists for centralization under 28 U.S.C. § 1407. As discussed supra, the remaining cases are already logically grouped and the first case resolved could moot the other later-filed cases, especially given Judge Sleet's stay of the cases pending before him. D. The Patents-in-Suit Relate to Different Technology, Weighing Against Consolidation.

The patents asserted by Rembrandt also are not suited for MDL consolidation for at least two other reasons. First, unlike the situation in In re Acacia, where the patents-in-suit all related back to the same parent application and each asserted patent shared the same two inventors, the patents asserted by Rembrandt are neither a family of patents depending all from the same application, nor are the same group of inventors named on each patent. See In re Acacia Media Technologies Corp. Patent Litigation, 360 F. Supp. 2d 1377, 1379 (J.P.M.L. 2005) (granting Section 1407 motion where all actions involved the "Yurt family" of patents that related back to the same application); Exhs. 7 - 11. Second, the argument that all patents that address the provision of cable services and products should be grouped together is contrary to Federal Circuit law regarding claim construction, one of the main pretrial tasks in a patent case. Principles of claim construction mandate close attention to each patent's specification because it "is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Following the Federal Circuit's guidance, the Court construing the claims of the asserted patents

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will need to focus primarily on each patent's specification, so no efficiencies would be gained by considering the patents together merely because they relate to a general industry. E. Inconsistent Rulings are Not a Concern.

No defendant other than CoxCom is subject to rulings in multiple courts. Since Judge Ward presides over the Group I and Group II Cable Company cases which involve the same defendants, it is unlikely that Judge Ward would rule inconsistently either with respect to a group of patents or with respect to defendants before him in multiple cases. Each defendant will be entitled to its own opportunity to raise unique arguments, and each trial judge will be free to make his own rulings based on the facts and law presented to him. CoxCom will not be subject to inconsistent rulings because either its declaratory judgment in Delaware or Rembrandt's action in Texas will be transferred or dismissed. In any event, CoxCom will face the `903 patent only once. Put another way, each Defendant faces only one ruling on the meaning of the claims being asserted and only one judgment as to whether its products infringe any particular patent being asserted. The one party faced with possible inconsistent rulings is Rembrandt because it would be difficult for Rembrandt to take different positions than those previously on record. F. Alternatives to Transfer and Consolidation Exist and are More Appropriate.

The Panel has denied consolidation where it recognized that "alternatives to transfer exist that can minimize whatever possibilities there might be of duplicative discovery and/or inconsistent pretrial rulings." In re Soliaia, 346 F. Supp. 2d at 1373; In re Eli Lilly and Co. Patent Litigation, 446 F. Supp. at, 244 ("We observe that suitable alternatives to Section 1407 transfer are available in order to minimize the possibility of duplicative discovery. For example,

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notices for a particular deposition could be filed in all actions, thereby making the deposition applicable in each action; the parties could seek to agree upon a stipulation that any discovery relevant to more than one action may be used in all those actions; and any party could seek orders from the three courts directing the parties to coordinate their pretrial efforts."). Indeed, the parties in the Group I and Group II actions pending before Judge Ward are already agreed on identical pretrial schedules for all of the Group I and Group II cases, except Comcast I. Rembrandt will make relevant discovery from one action available in other cases where applicable and is amenable to other coordination among the district courts. Patent damages require defendant-specific discovery regarding at least the following categories of information: profitability associated with the particular invention and the terms and practices pursuant to which that defendant has licensed comparable patents in the past. See Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970) (holding the following defendant-specific information relevant to damages in a patent case: how a particular defendant infringer has compensated other patent holders (Factor 2), the profitability of the defendant's infringing offerings (Factor 8), and the extent of the defendant infringer's use of the patented invention (Factor 11)). Moreover, many of the defendants

compete with one another and presumably will not permit discovery unique to them to be shared among all parties in the Rembrandt litigation. All of the defendants who are involved in multiple cases are before Judge Ward, save CoxCom, so the Court will be able to supervise discovery and ensure that it is efficient5. As

5

CoxCom inserted itself into two different forums by filing in Delaware long after it was first sued in Texas. The issue of dual forums for CoxCom will be resolved by rulings on the motions to dismiss pending in each forum.
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recognized in In re Eli Lilly, "consultation and cooperation among the three concerned district courts, if deemed appropriate by those courts, coupled with the cooperation of the parties, would be sufficient to minimize the possibility of conflicting pretrial rulings. " 446 F. Supp. at 244. CoxCom miscited Rembrandt's suggestion for the type of district court coordination recognized in Eli Lilly as an indication that Rembrandt supports Section 1407 transfer. CoxCom Memo. at 3 ("[E]ven Rembrandt believes that transfer and consolidation under 28 U.S.C. § 1407 is desirable." (citing CoxCom Exh. 43 at Exh. C at 13:16-14:10)). CoxCom is wrong.

Rembrandt has never argued that consolidation of all of its cases would be appropriate, otherwise it would have filed all of its actions in the same forum in the first instance or moved itself for Section 1407 transfer. In the hearing transcript cited by CoxCom, Rembrandt's counsel advised the Bankruptcy Court in the Southern District of New York of ongoing litigation in the Eastern District of Texas and, in response to a question from the Court, said that the Bankruptcy Court might benefit from sharing pretrial proceedings with that Court. See id. ("[I]f . . .Your Honor wanted to coordinate with Judge Ward and reach some sort of mutual claim construction with Judge Ward . . . it might be a good idea for you to coordinate with the Eastern District of Texas with respect to issues like that. . . .if Your Honor wanted to coordinate more closely with the Eastern District and sort of follow along on pretrial matters with that district in the Time Warner case, I think that probably would be advantageous to everyone involved."). Rembrandt never advocated MDL

consolidation of all of its actions, as the only ones discussed at that hearing were the Group II cases and the Adelphia proceeding. Instead, Rembrandt agreed with this Panel's prior rulings that coordination among district courts is a good alternative to Section 1407 transfer and consolidation.
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III.

The Eastern District of Texas Is the Most Logical Transferee Court.

For the above reasons, Rembrandt opposes consolidation and transfer. However, should the Panel rule that consolidation and transfer is appropriate, the factors cited by CoxCom to determine the best forum for centralization all point to Judge Ward of the Eastern District of Texas. Taking CoxCom's enumerated factors in order: A. The Pendency in that District of a Number of the Actions.

Judge Ward currently has responsibility for seven of the fourteen actions that are the subject of CoxCom's motion, including the Rembrandt litigation that has been on file since September 2005. Judge Sleet, by contrast, presides over six cases at issue, four of the six dealing only with U.S. Patent No. 5,243,627 ('627), claims that CoxCom argues should be severed immediately following consolidation. A fifth case involves claims of the `627 patent and other Rembrandt patents. The sixth case pending before Judge Sleet, CoxCom's declaratory

judgment action on the `903, would be dismissed if Rembrandt's pending motion is granted. Thus, when examined closely, Judge Sleet has only one case before him that CoxCom itself argues should be consolidated in its entirety, and that case is subject to a motion to dismiss and is stayed. B. The Court's Familiarity with the Issues.

In Comcast I, claim construction has been fully briefed and trial may occur this year. Judge Ward has all of the patents-in-suit before him and is the only judge in this position. Judge Ward has presided over Rembrandt's litigation for over eighteen months and is most familiar with the patents at issue. As this Panel has recognized, the longstanding pendency of one of the actions weighs in the determination of a transferee judge. See In re JP Morgan Chase & Co. Securities Litigation, 452 F. Supp.2d 1350 (J.P.M.L. 2006) ("The Panel is persuaded that the
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Northern District of Illinois is an appropriate transferee district for this litigation. The action pending there, which is the earliest filed of the three actions, is more procedurally advanced than the two Delaware actions."). Judge Ward's background gained by adjudicating Comcast I will aid in the resolution of the rest of the Group I litigation. In addition to his familiarity with the patents at issue in the Group I cases, the same parties are before Judge Ward in both the Group I and Group II cases, so the parties are familiar with the local rules as well as Judge Ward's individual practices. Judge Ward is also familiar with any unique issues presented by those parties, including their scheduling needs. Moreover, transfer of the remaining cases to Judge Ward would not greatly increase the Court's workload given that all nine patents at issue are already before it in pending proceedings. In contrast, Judge Sleet has not taken any action on the Rembrandt cases, except to stay all of them pending a decision by this Panel. Transfer and consolidation before Judge Sleet at this juncture would unfairly delay trial of Comcast I, a case that has been on file for eighteen months and is likely to be tried this year. In order to handle the MDL, Judge Sleet would, at a minimum, need to spend time familiarizing himself with the four patents-in-suit to which he has had no introduction and decide pretrial matters based on prior events in the litigation before his involvement. These tasks would delay Rembrandt's day in court indefinitely when Judge Ward is ready to proceed to trial several months from now. C. The District or Judge's Willingness to Accept Responsibility for Conducting Coordinated or Consolidated Pretrial Proceedings.

CoxCom tells the Panel that "Judge Sleet has already indicated an interest in at least coordinating the six Rembrandt actions pending in Delaware." CoxCom Memo. at 17 citing

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CoxCom Exh. 19 at 3-4. But CoxCom's sole basis for this statement (CoxCom Exh. 19) is a status report filed by the parties with no statements from the Court. In that statement, the

parties notify the Court of other Rembrandt litigation, but there is no indication whatsoever that Judge Sleet has expressed an interest in consolidating the cases pending in Delaware. Judge Sleet sua sponte stayed all litigation involving Rembrandt patents in his Court before convening any scheduling conferences. Rembrandt cannot speak to Judge Ward's willingness to preside over MDL proceedings for these cases, but the Court's familiarity with patent cases is well-recognized. Judge Ward has presided over more than one hundred patent cases. D. The Eastern District of Texas Docket Is More Favorable.

CoxCom contorts its own articulated factor "favorable status of the civil docket" by suggesting that Delaware should be deemed favorable because fewer cases were pending there in 2006 than were pending in 2005. CoxCom Memo. at 18. The Federal Judiciary statistics computing the median time from filing to trial reflect that this interval stands at 17.7 months in the Eastern District of Texas as compared to Delaware where that same process takes 26 months. See Exhs. 12-13 (citing Administrative Office of the Federal Courts Federal Court Management Statistics for the 12-month period ending September 30, 2006, available at

http://www.uscourts.gov/fcmstat/ index.html). E. Place of Incorporation Is Irrelevant to the Location for an MDL Proceeding.

Given that the factors cited by CoxCom exclusively favor transfer to the Eastern District of Texas, CoxCom's argument in favor of Delaware rests on the false premise that centralization should follow the place of incorporation of some of the parties. CoxCom Memo. at 19.

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CoxCom argues - without any precedent - that the place of incorporation of the defendants weighs in favor of transfer to Delaware. Left without legal support, CoxCom submits that

Delaware would be "convenient for parties, witnesses and discovery." CoxCom Memo. at 19. But this bald assertion is not supported by any facts. CoxCom has not shown that any of the defendants' witnesses are resident in Delaware much less a substantial majority of them, nor that the companies themselves have a large center of operations in Delaware. CoxCom has far from met the movant's burden to establish that Delaware is any more convenient than the Eastern District of Texas. If CoxCom's motion compels consolidation and transfer, Judge Ward's Court is the obvious choice for transferee court because of the judges presiding over Rembrandt patent litigation: · · · · · Only Judge Ward already has all nine patents-in-suit before him. Only Judge Ward has half of the pending actions before him already. Judge Ward's cases are the most advanced by far of any of the litigation. The Eastern District of Texas has a faster time to trial than Delaware. The Eastern District of Texas Patent Rules are familiar to the parties and enable fast resolution of these cases.

IV.

Conclusion

Because centralization would neither aid in the just and efficient resolution of the Rembrandt's patent litigation nor serve the convenience of the parties and witnesses, CoxCom's motion should be denied. In the event that centralization is deemed appropriate, the Eastern District of Texas is the most logical forum for the transferee court given Judge Ward's familiarity with the issues and investment in the litigation thus far.

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Dated: April 4, 2007 Respectfully submitted, /s/ Brooke A.M. Taylor Brooke A.M. Taylor State Bar No. 33190 (Washington) E-mail: [email protected] SUSMAN GODFREY L.L.P. 1201 Third Avenue, Suite 3800 Seattle, Washington 98101-3000 Telephone: (206) 516-3880 Fax: (206) 516-3883 Attorneys for Rembrandt Technologies, LP Max L. Tribble, Jr. State Bar No. 20213950 (Texas) 1000 Louisiana Street, Suite 5100 Houston, Texas 77002-5096 Telephone: (713) 651-9366 Fax: (713) 654-6666 E-mail: [email protected] Edgar Sargent State Bar No. 28283 (Washington) E-mail: [email protected] Matthew R. Berry State Bar No. 37364 (Washington) E-mail: [email protected] SUSMAN GODFREY L.L.P. 1201 Third Avenue, Suite 3800 Seattle, Washington 98101-3000 Telephone: (206) 516-3880 Fax: (206) 516-3883 Tibor L. Nagy State Bar No. 24041562 (Texas) E-mail: [email protected] SUSMAN GODFREY L.L.P. 590 Madison Avenue New York, NY 10022-8521 Telephone: (212) 336-8330 Fax: (212) 516-3883 Attorneys for Rembrandt Technologies, LP 19

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