Safeclick LLC v. Visa International Service Association

Full title: SAFECLICK, LLC, an Iowa limited liability company, Plaintiff, v. VISA…

Court: United States District Court, N.D. California, Oakland Division

Date published: Oct 22, 2004

Case No. C03-05865 SBA ADR (N.D. Cal. Oct. 22, 2004)

Opinion

Case No. C03-05865 SBA ADR.

October 22, 2004

HARVEY SISKIND JACOBS LLP D. PETER HARVEY (State Bar No. 55712) San Francisco, California.

BARTLIT BECK HERMAN PALENCHAR SCOTT LLP MARK E. FERGUSON (pro hac vice) MARK L. LEVINE (pro hac vice) Chicago, Illinois, Attorneys for Plaintiff SAFECLICK, LLC

HELLER EHRMAN WHITE McAULIFFE LLP STANLEY YOUNG (Bar. No. 121180) CHRISTIAN E. MAMMEN (Bar No. 188454) Menlo Park, CA, Attorneys for Defendants VISA USA INC. and VISA INTERNATIONAL SERVICE ASSOCIATION.

AMENDED JOINT CASE MANAGEMENT STATEMENT AND PROPOSED ORDER

SAUNDRA ARMSTRONG, District JudgePage 2

Pursuant to the Court's Order Setting Case Mana gement Conference and Requiring Joint Case Management Conference Statement Plaintiff Safeclick LLC ("Safeclick") and Defendants Visa USA Inc. and Visa International Service Association (collectively "Visa"), submit this Joint Case Management Statement and Proposed Order and Request the Court to adopt it as it Case Management Order for the above-captioned case:

1. Jurisdiction and Venue. Jurisdiction over this patent infringement action and counterclaims for declaratory relief is proper pursuant to 35 U.S.C. § 271 et. seq. Personal jurisdiction is not contested. Venue is proper pursuant to 28 U.S.C. §§ 1391 and 1400.

2. Procedural History. The Complaint was filed on December 30, 2003, and served on February 6, 2004. Defendants answered and counterclaimed on March 29, 2004. Plaintiff replied to the counterclaim on April 19, 2004.

3. Substance of the Action. Plaintiff asserts that it is the assignee and owner of U.S. Patent No. 5,793,028 entitled Electronic Transaction Security System (`028 patent) that issued on August 11, 1998. The '028 patent covers, among other things, methods for protecting the security of an electronic transaction, such as the purchase of goods over the internet. Defendants have established a service called Verified by Visa that enables consumers to add an online password to their existing Visa card in order to increase security of online transactions. Plaintiff contends that Defendants' Verified by Visa uses a method that infringes one or more claims of the '028 patent. Plaintiff further contends that Defendants have willfully infringed the '028 patent.

Defendants deny that they infringe the '028 patent and assert that the patent is invalid.

4. Identification and Narrowing of Issues. The parties dispute the validity of the '028 patent and whether the '028 patent is infringed by Verified by Visa. The issues of validity and infringement can sometimes be decided on a motion for summary judgment.

5. Motions. The parties anticipate claim construction briefs and various summary judgment motions, the exact nature of which cannot be predicted at this time.

6. Relief Sought. Plaintiff seeks damages adequate to compensate for Defendants' infringement, but not less than a reasonable royalty. Plaintiff also seeks a permanent injunction against infringement in the future, treble damages for willful infringement and attorneys fees for willful infringement and costs. Defendants seek a judgment that the patent is invalid and not infringed.

7. ADR. The parties have complied with Civil L.R. 16-8(b). The parties participated in an ADR phone conference but were unable to reach agreement regarding the type of ADR procedure.

8. Related cases. There are no related cases.

9. Settlement. The parties have not discussed settlement.

10. Discovery. Discovery to Date: Plaintiff and Defendants have complied with the initial disclosure requirements of Rule 26(a)(1). Plaintiff and Defendants have each served written discovery requests and responses to written discovery. Plaintiff has served its Preliminary Infringement Contentions pursuant to Patent L.R. 3-1 and 3-2.

Proposed Plan: The parties propose that fact discovery on all issues except willfulness continue to proceed, and that discovery on claim construction issues occur within the time parameters established by the N.D.Cal. Patent Local Rules. The parties further propose that, consistent with N.D. Cal. Patent Local Rule 3-8, discovery on willfulness issues be deferred until 50 days after the Court issues its claim construction ruling. The parties further propose that expert discovery be deferred until after the close of fact discovery.

The parties believe that the discovery limits set by the Federal Rules of Civil Procedure are adequate for the purposes of this case.

Visa anticipates that discovery in this case will require the disclosure of substantial amounts of confidential, proprietary and other commercially sensitive information, and therefore proposes that a Protective Order be entered. Safeclick does not oppose the entry of a mutually agreeable Protective Order. Visa has provided a draft Protective Order to Safeclick, and Safeclick is evaluating Visa's draft.

11. Joint Proposed Case Management Schedule ¹ Rule Event Explanation of Time Proposed Date Interval ² 30 days after Markman ruling 50 days after Markman ruling 50 days after Markman ruling 100 days after Markman ruling ³

1 The following is a modified schedule agreed to by the parties.

2 Rather than the series of Markman claim construction briefs specified in N.D.Cal. Patent L.R. 4-5, the parties propose that they simultaneously file opening Markman briefs on the date specified in L.R. 4-5(a), and simultaneously file responsive briefs on the date specified in L.R. 4-5(c) ( i.e., 21 days after opening Markman briefs).

3 Visa proposes that willfulness be tried separately from the other issues. Safeclick opposes this proposal. The parties have agreed to leave the issue open for the purposes of this case management statement, subject to later motion and/or briefing on the issue.

FRCP Initial disclosures 21-Apr-04 26(a)(1), initial order, LR 16-9 3-1, 3-2 Plaintiff's disclosure of 10 days after 10-May-04 asserted claims and previously scheduled preliminary infringement CMC contentions, disclosure of documents 3-3, 3-4 Defendants' preliminary 45 days after disclosure 24-Jun-04 invalidity contentions, of asserted claims disclosure of documents Plaintiff's supplemental by agreement of the 9-Jul-04 infringement contentions parties Defendants' supplemental by agreement of the 23-Jul-04 response to Interrogatory parties No. 5 (non-infringement contentions) 4-1 Simultaneous exchange of Rule:10 days after 26-Jul-04 list of claim terms for preliminary invalidity construction contentions; Proposed: 2 weeks +1 day after supplemental infringement contentions 4-2 Exchange of preliminary 20 days after list of 13-Aug-04 claim constructions, terms exchanged extrinsic evidence 4-3 Parties file joint claim Rule: 60 days after 3-Sep-04 construction statement preliminary invalidity contentions; proposed: 21 days after exchange of claim constructions 4-4 Parties complete claim 30 days after joint 1-Oct-04 construction discovery claim construction statement 4-5(a) Simultaneous opening Rules: 45 days after 13-Oct-04 (modified) Markman briefs joint claim construction statement; proposed: 40 days 4-5(c) Simultaneous reply 21 days after opening 3-Nov-04 (modified) Markman briefs Markman brief 4-6 Markman hearing 2 weeks after reply 17-Nov-04, Markman brief 9:00 am (4 hours) 3-6(a) Plaintiff's amended infringement contentions 3-6(b) Defendants' amended invalidity contentions 3-8 Deadline for defendants produce opinions of counsel, as appropriate Discovery cutoff for willfulness Fact discovery cutoff on 1-Apr-05 all issues except willfulness Opening expert reports by 15-Apr-05 parties with burden of proof Rebuttal expert reports 30 days after opening 16-May-05 expert reports Close of expert discovery 30 days after rebuttal 15-Jun-05 expert reports Dispositive motion filing 21-Jun-05 deadline Opposition briefs to 5-Jul-05 dispositive motions filed on deadline Reply briefs re dispositive 12-Jul-05 motions filed on deadline Last day for hearings on per 7/1/04 CMC 26-Jul-05, dispositive motions 1:00 pm Final mandatory per 7/1/04 CMC between settlement conference (to 27-Jul-05 and be set by magistrate 19-Aug-05 judge) Standing order Parties meet and confer re 6 days before filing 17-Aug-05 pretrial conference deadline of pretrial statement Parties file joint pretrial per 7/1/04 CMC 23-Aug-05 statement Parties file motions in per 7/1/04 CMC 30-Aug-05 limine and objections to evidence Parties file responses to per 7/1/04 CMC 6-Sep-05 motions in limine and objections to evidence due Pretrial conference per 7/1/04 CMC 13-Sep-05, 1:00 pm Trial (7-8 trial days) per 7/1/04 CMC 19-Sep-05, 8:30 am

ATTESTATION OF E-FILED SIGNATURE

I, Christian E. Mammen, attest that the signatory at the firm of Bartlit Beck Herman Palenchar Scott LLP, attorneys for Plaintiff, has read and approved this Amended Joint Case Management Statement and Proposed Order and consents to its filing in this action. I will maintain an executed copy of this Amended Joint Case Management Statement and Proposed Order in our files that can be made available for inspection upon request.

CASE MANAGEMENT ORDER

The Case Management Statement and Proposed Order is hereby adopted by the Court as the Case Management Order for the case and the parties are ordered to comply with this Order.