Free Report re: Rule 26(f) Planning Meeting - District Court of Arizona - Arizona

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Louis J. Hoffman (#009722) 11811 North Tatum Blvd., Suite 2100 Phoenix, Arizona 85028 Tel.: (480) 948-3295 Fax: (480) 948-3387 E-mail: [email protected] Victoria Gruver Curtin (#010897) 14555 North Scottsdale Road, Suite 160 Scottsdale, Arizona 85254 Tel.: (480) 998-3547 Fax: (480) 596-7956 E-mail: [email protected] Attorneys for Plaintiff IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA ) ) ) ) ) ) vs. ) ) Ixys Corporation and VIA Technologies, Inc., ) ) Defendants. ) ) Lemelson Medical, Education & Research Foundation, Limited Partnership, Plaintiff, No. CIV 00-0660 PHX (HRH) ___________________ JOINT CONFERENCE REPORT

Pursuant to the Court's Order filed January 17, 2008 (Docket #626), the parties (identified in the caption) have met and conferred in a scheduling conference and submit the following joint conference report: 1. 2. Track Assignment. The parties agree that assignment to the standard track is appropriate. Alternative Dispute Resolution. The parties have agreed to request that the Court assign a U.S. Magistrate Judge in Phoenix, Arizona to conduct a pre-discovery mediation at the earliest possible date that the court's and parties' calendars permits, preferably only a few weeks from now. The parties have

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agreed to defer substantive proceedings pending the outcome of the mediation. The parties agree that early pre-discovery mediation at this time may be in the parties' collective best interests, as opposed to waiting until after discovery is substantially complete to go forward with alternative dispute resolution mediation. 3. Statement of Issues. This statement of issues is derived from the operative pleadings including the complaint and the respective answers, a counterclaim, and the reply to that counterclaim. Plaintiff alleges that defendants have directly or indirectly infringed U.S. Patent 4,390,586, "Electrical Device of Semi-Conducting Material with NonConducting Areas," issued June 28, 1983 ("the `586 Patent") and U.S. Patents 5,039,836, "Radiation Manufacturing Apparatus and Method," issued August 13, 1991, 5,170,032, "Radiation Manufacturing Apparatus and Method," issued December 8, 1992, and 5,231,259, "Radiation Manufacturing Apparatus," issued July 27, 1993 (collectively "the Radiation Patents"), which plaintiff owns by assignment from the inventor. Specifically, plaintiff alleges that defendants infringe the `586 Patent by making, using, offering to sell, or selling certain integrated circuit devices in the "Metal Oxide Semiconductor" (or "MOS") family that use, particularly at an area known as the "field oxide," an isolation technique that is referred to in the semiconductor industry as a "locally grown oxide" or "local oxidation of silicon" ("LOCOS"). Plaintiff further alleges that defendants infringe the Radiation Patents by (i) using certain automated ionimplantation and e-beam lithography methods to manufacture or process integrated circuit devices, or (ii) importing, selling or offering to sell in the United States integrated circuit devices made by or for them using the various methods that infringe the method claims of this patent. This Complaint does not assert that defendants infringe any apparatus claim in the `836 Radiation Patent. Plaintiff seeks damages but not an injunction.

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Defendant VIA has answered and denied infringement and asserted the following affirmative defenses: 1. Failure to state a claim 2. Statute of limitations 3. Estoppel 4. Laches 5. Waiver 6. Unclean hands 7. Failure to mitigate injury and damages 8. Lack of injury in fact 9. Lack of special case 10. Lack of standing 11. Lack of infringement 12. Invalidity under §§ 101, 102, 103, 112 13. Prosecution history estoppel 14. Failure to comply with the marking statute (§287) 15. Prosecution history laches (unenforceability) Defendant IXYS has answered and denied infringement and asserted the affirmative defenses identified above as #2, #3, #11, #12, #13, and #15, plus the following additional affirmative defenses: collateral estoppel, license, and patent exhaustion. Defendant IXYS also counterclaimed based on its affirmative defenses #11 and #12 identified above, and plaintiff has denied the counterclaim through a Reply to Counterclaim. All parties have requested the Court to declare the case an "exceptional case" and award attorneys' fees (and in the case of plaintiff, treble damages on account of willful infringement). 4. Disclosures. The parties have agreed to the date of June 1, 2008, for a simultaneous exchange of initial disclosures, including (a) materials and

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documents required under Rule 26, (b) claim construction positions, and (c) infringement charts in the case of plaintiff and invalidity charts in the case of defendants. 5. Discovery Cutoff Dates. Plaintiff has proposed a cutoff for fact discovery of October 1, 2008. Plaintiffs' reasons for suggesting that date are: (1) the quantity of fact discovery (as opposed to legal matters) is not believed particularly large, (2) there are only two defendants remaining in this suit, and they are not huge organizations, (3) the principal facts for which discovery is needed are largely in the possession of the defendants (or suppliers with whom defendants have close contractual relationships), so that, assuming cooperation from defendants, the facts can be discovered ­ and maybe even stipulated ­ quite promptly, (4) given the long pendency of this matter (mostly during the lengthy stay of proceedings), there is no reason for delay, (5) factual discovery would conclude before the end-of-year holiday season under plaintiffs' schedule, whereas under defendants' proposal, depositions (which are often towards the end of the process, after written and document discovery) would likely be done adjacent to or during the holiday season, and (6) if it turns out that more time is needed, despite the parties' diligent activities, an extension can be sought later. Defendants have proposed a cutoff for fact discovery of February 1, 2009. Defendants contend that the additional 120 days for completing fact discovery by February 1, 2009 will likely be needed given the subject matter and logistics for this alleged patent infringement case with certain discovery necessarily to be conducted overseas. Defendants' proposed fact discovery cut off of February 1, 2009 also takes into account the intervening Thanksgiving, Christmas, Hanukah and New Year's holidays. The parties agree that the discovery cutoff for expert discovery should be set three months after the date for cutoff for fact discovery.

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The parties have agreed that the preliminary trial witness lists shall be filed not later than 60 days prior to the end of the expert and fact discovery cutoffs, i.e., that the 45-day period in the Court's order (para. (3) on page 4 of 7 of Docket No. 626 and para. (4) of the draft order on page 3 of 6 in Docket No. 627) should be increased from 45 to 60 days. 6. limits: (a) (b) 50 interrogatories per side, including subparts, 60 requests for admission per side, excluding requests for Discovery Plan/Limits. The parties have agreed to the following

admissions seeking authentication or foundational facts regarding admissibility of documents, and (c) 65 hours of deposition per side, excluding 30(b)(6) depositions of the parties, excluding depositions on written questions of custodian of business records for third parties, and excluding expert witnesses. The parties have further agreed that any individual presented in response to a 30(b)(6) notice may also be offered to testify in an individual capacity, which offer may be declined by the noticing party. The responding party must provide at least ten (10) days' notice that the individual will be offered as such and provide in that notice the name, title, and duties of that individual, as well as a certification that a good faith effort has been made to collect and produce all relevant documents authored, received, or reviewed by that individual. To ensure adequate time for the noticing party to prepare for the individual deposition, the parties agree to cooperate in resetting the date if necessary. If the noticing party wishes to take a subsequent deposition under 30(b)(1) of an individual so presented pursuant to a valid certification, that subsequent deposition will be held, to the extent practicable, at a site chosen by the witness. The parties have agreed to cooperate in addressing 30(b)(6) witness time limits taking into account the number of categories designated for such witnesses, the

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need for interpreters, and whether such witnesses will also testify in an individual capacity. 7. (a) (b) (c) court, and (d) 8. This case is not a class action. Trial. Plaintiff has requested a jury trial; defendants have not. Special Procedures/Related Cases. The parties have agreed that: This matter is not suitable for reference to binding arbitration, a This case is not suitable for reference to the Judicial Panel on There are no related actions pending before any other Judge of this

Special Master, or Magistrate, Multidistrict Litigation,

The parties currently estimate the trial length at two weeks but state that it is very difficult to predict the length of trial at this time. The parties are not presently prepared to identify trial stipulations or other expedited means of presenting evidence. The parties agree that all exhibits, in depositions and for trial, shall be sequentially numbered in a unified sequence for each side, starting with the number 1 and not renumbered at any stage.

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RESPECTFULLY SUBMITTED this 14th day of February, 2008. LOUIS J. HOFFMAN, P.C. By: /Louis J. Hoffman/ Louis J. Hoffman 11811 North Tatum Boulevard Suite 2100 Phoenix, Arizona 85028 Tel.: (480) 948-3295 E-mail: [email protected] Attorney for Plaintiff TOWNSEND AND TOWNSEND AND CREW LLP By: /Roger L. Cook/ Roger L. Cook Eric P. Jacobs Two Embarcadero Center, Eighth Floor San Francisco, California 94111 Telephone: (415) 576-0200 E-mail: [email protected] [email protected] Tel.: (415) 576-0200 E-mail: [email protected] [email protected] Attorneys for Defendant Ixys Corporation CARR & FERRELL, LLP By: /Brad W. Blocker/ Brad W. Blocker Colby B. Springer John S. Ferrell 2200 Geng Road Palo Alto, California 94303 Tel.: (650) 812-3400 E-mail: [email protected] [email protected] [email protected] Attorneys for Defendant VIA Technologies Inc.

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CERTIFICATE OF SERVICE I certify that, on February 14, 2008, I caused this paper to be served through the Court's electronic filing and service system (ECF) to those registered with that system for this case and that I caused a copy to be delivered by U.S. mail, postage prepaid, to Judge Holland's chambers.

/Donald Hertz/ Donald Hertz

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