Case 2:09-cv-00257-DF-CMC Document 247

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IN THE UNITED STATES DISTRICT COURT OF THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION TIVO, INC. Plaintiff v. VERIZON COMMUNICATIONS, INC., ET AL. Defendants

CAUSE NO. 2:09cv257

ORDER LIFTING STAY AND SCHEDULING STATUS CONFERENCE The above-referenced case was referred to the undersigned United States Magistrate Judge for pre-trial purposes in accordance with 28 U.S.C. 636. Before the Court is the following motion: TiVos Opposed Motion for a Status Conference (Docket Entry # 241). The Court, having reviewed the motion and the response, is of the opinion the motion should be GRANTED. In its motion, TiVo Inc. (TiVo) requests the Court schedule a status conference to discuss lifting the stay of this case and entering a scheduling order. Verizon Communications, Inc. (Verizon) opposes TiVos request. Verizon first asserts a key basis for the stay was the absence of a claim construction ruling, and the Court has still not issued its ruling. Secondly, according to Verizon, half of the patents in suit (two of the three TiVo patents and two of the five Verizon counterclaim patents) are in reexamination before the U.S. Patent and Trademark Office (PTO). Verizon asserts awaiting the PTOs ruling will promote efficient and expeditious disposition of the claims, conserve judicial resources, and allow the Court to benefit from the PTOs analysis. Finally, Verizon argues this case should follow the Motorola Mobility v. TiVo case (Case No. 5:11-CV-53), because Motorola is Verizons supplier of the accused devices and, if Motorola prevails, it could

Case 2:09-cv-00257-DF-CMC Document 247

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greatly simplify the issues in this case. After conducting a status conference on November 10, 2011, Judge Folsom stayed this case, due to the Courts schedule and the fact that the undersigned had stayed Motorola Mobility, Inc. v. TiVo Inc. (Case No. 5:11-CV-53), a related case, until January of 2012. Judge Folsom indicated he was dedicating his resources to the scheduled January trial in the related TiVo v. AT&T matter (Case No. 2:09-CV-259). However, during the November 10 status conference, Judge Folsom indicated he would revisit [lifting the stay in the Verizon case] in early January. He further stated he would
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await the outcome of the January 4, 2012 status conference in the Motorola Mobility action before taking further action in this case. The TiVo v. AT&T matter settled prior to trial and has been dismissed. Additionally, the undersigned has lifted the stay in the Motorola matter, and a scheduling order has been entered. Due to these changes, and in accordance with Judge Folsoms earlier statements, the Court will not further delay this case. Rather, the Court lifts the stay in this case and schedules a status conference February 23, 2012 at 1:30 p.m. The parties shall meet and confer and submit to the Court, within twenty days from the date of entry of this Order, scheduling order deadlines to govern this case. In conferring on proposed deadlines, the parties are directed to utilize a March 16, 2012 deadline for claim construction ruling, even though it is possible the ruling may be entered prior to that date. The parties shall also submit to the Court, within twenty days, any other issues to be addressed at the February 23 conference. Accordingly, it is

See Transcript of Status Conference Before the Honorable Chief Judge David Folsom at pg.5, l. 25 (November 10, 2011) at Docket Entry # 238. 2

Case 2:09-cv-00257-DF-CMC Document 247

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ORDERED that the stay in the above-referenced cause of action is hereby lifted. It is further ORDERED that TiVos Opposed Motion for a Status Conference (Docket Entry # 241) is

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GRANTED. It is further ORDERED that a status conference in the above-referenced case is hereby scheduled before Caroline M. Craven, United States Magistrate Judge, at 1:30 p.m on February 23, 2012 at the United States District Court, 500 N. Stateline, Fourth Floor Courtroom, Texarkana Texas. It is further ORDERED that within twenty days from the date of entry of this Order, the parties shall meet and confer and submit to the Court those issues to be addressed at the status conference, including proposed scheduling deadlines.

SIGNED this 25th day of January, 2012.

____________________________________ CAROLINE M. CRAVEN UNITED STATES MAGISTRATE JUDGE