Entry Systems, Llc v. Alarm Security Group, Llc D/B/A Asg Security

MOTION to Dismiss for Lack of Prosecution

E.D. Tex.January 12, 2017

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION ENTRY SYSTEMS, LLC, Plaintiff, v. ALARM SECURITY GROUP, LLC D/B/A ASG SECURITY ET. AL. Defendant. CIVIL ACTION NO. 2:16-cv-87-JRG (LEAD CASE) JURY TRIAL DEMANDED DEFENDANTS’ MOTION TO DISMISS FOR FAILURE TO PROSECUTE Nearly four months ago, on September 15, 2016, after missing every filing or service deadline in this matter, the sole remaining counsel of record for Plaintiff Entry Systems, LLC (“Entry Systems” or “Plaintiff”) represented that he had an urgent medical issue requiring immediate attention that prevented him from pursuing the case. In light of this representation, on September 28, 2016, Defendants Alarm Security Group, LLC and FrontPoint Security Solutions (“FrontPoint”) (collectively, “Defendants”) filed an Unopposed Motion to Stay this consolidated action (the “Motion”). [Dkt. No. 44]. On October 5, 2016, this Court granted the Defendants’ Motion [Dkt. No. 46]. In its Order Staying the Case (the “Order”), the Court further ordered Plaintiff’s counsel to “file a written notice appraising the Court of his status or replacement every 30 days” until these consolidated cases are reinstated. Id. Since then, no such written notice has been filed. Nor have Defendants received any communication from Plaintiff’s counsel since September 19, 2016. Because more than ninety days have passed since the Court’s Order requiring Plaintiff’s counsel to file a written notice, and Plaintiff has failed to file any such notice or obtain new Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 1 of 10 PageID #: 232 - 2 - counsel, Defendants hereby move pursuant to Rule 41(b) of the Federal Rules of Civil Procedure for dismissal of this action with prejudice due to plaintiff’s failure to prosecute. I. PROCEDURAL BACKGROUND Plaintiff filed its original complaints against the Defendants on January 27, 2016. On June 1, 2016, the Court consolidated these cases for all pretrial activities. [Dkt. No. 13]. On June 3, 2016, the Court issued its initial scheduling order [Dkt. No. 14], setting forth several deadlines in the consolidated case. Since then, Plaintiff and its counsel have consistently missed deadlines, failed to actively prosecute this case, and (in the past few months) become entirely non-responsive, as outlined further below: a. Infringement Contentions Pursuant to Local Patent Rule 3-1 and the Court’s Initial Scheduling Order [Dkt. No. 14], Plaintiff’s Disclosure of Asserted Claims and Infringement Contentions (“Infringement Contentions”) were due to be served on Defendants on June 20, 2016 (10 days before the Initial Case Management Conference). However, Plaintiff failed to serve its Infringement Contentions on June 20, 2016 as required. Nor did Plaintiff make any requests to Defendants for an extension. Rather, Plaintiff unilaterally delayed without explanation, until ultimately serving its Infringement Contentions by email to Defendants on July 1, 2016. b. Protective Order Pursuant to the Court’s Initial Scheduling Order, the Parties’ proposed Protective Order was due to be filed on July 21, 2016. On July 19, 2016, Defendants’ counsel requested a draft from Mr. Hansley. See Ex. 1, at 5, Email from Ives to Hansley. On July 20, 2016, Defendants reached out to Plaintiff’s counsel again seeking a draft. See id. at 4, Email from Collier to Hansley. On July 21, 2016, not having received a proposed draft from Plaintiff’s counsel, Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 2 of 10 PageID #: 233 - 3 - Defendants sent a proposed Protective Order to him. See id., Email from Collier to Hansley (“Despite asking on several occasions, we have not received a proposed order from Plaintiff or received any response to our emails. In light of this failure to communicate, Defendants [] will file their proposed protective order, attached with redlines, shortly after 5PM CDT.”) At 6:33PM CDT, Plaintiff’s counsel finally responded indicating that he would file the protective order. Id., Email from Hansley to Collier. Nearly 45 minutes later, at 7:12 PM CDT, however, Plaintiff’s counsel instead expressed his opposition to Defendants’ proposed Protective Order. Id. at 3, Email from Hansley to Collier. In response, Defendants again attempted to reach agreement with Plaintiff. Id. However, after receiving no response from Plaintiff’s counsel, despite his express assurance that he would “make sure that this is done today,” the Defendants filed the Protective Order as Opposed. [Dkt. No. 33]. Four days after the deadline, on July 25, 2016, Plaintiff’s counsel contacted Defendants regarding his disagreements with the Protective Order filed by Defendants. See Ex. 1, at 2, Email from Hansley to Collier. The Court subsequently scheduled a hearing on the Proposed Protective Order for August 11, 2016. The day before that conference, on August 10, 2016, Defendants sought a meet and confer with Plaintiff regarding the Protective Order. See Ex. 2, Email from Collier to Hansley. After that meet and confer, a Joint Motion for Entry of Protective Order was filed that day. [Dkt. No. 40]. As a result, the Court cancelled the hearing. c. Unopposed Motion to Stay On September 15, 2016, Plaintiff’s counsel reached out to Defendants by email and indicated that he had an urgent medical issue requiring immediate attention that prevented him from pursuing the case. See Motion to Stay (Dkt. No. 44), Ex. 1, Email from Hansley to Winterle, Sept. 15, 2016. Plaintiff’s counsel proposed a stay of all deadlines pending the Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 3 of 10 PageID #: 234 - 4 - resolution of his medical issues (or Plaintiff obtaining new counsel), and Defendants agreed. Id. Defendants then made repeated attempts to contact Plaintiff’s counsel over the course of the following two weeks regarding a joint motion to stay, all of which were ignored. 1 In view of approaching deadlines, Defendants were left with no choice but to unilaterally file their Motion to Stay, which the Court granted on October 5, 2016. [Dkt. No. 46]. Defendants have not received any communication from Plaintiff or its counsel since September 19, 2016 – nearly four months ago. d. Plaintiff’s Counsel’s Similar Failure to Prosecute Other Litigations In addition, it has recently come to Defendants’ attention that the erratic behavior of Plaintiff’s counsel is not unique to this litigation. Rather, Defendants have identified at least three other cases in which the failure of Plaintiff’s counsel, Mr. Hansley, to prosecute his clients’ cases was directly at issue. i. Marshall Feature Recognition v. Raymond James Fin. Inc., No. 2:15-cv-01782 (E.D. Tex. 2016) For example, in November 2016, Magistrate Judge Payne issued a Report and Recommendation in Marshall Feature Recognition, v. Raymond James Fin. Inc., recommending that that case be dismissed with prejudice as a result of Mr. Hansley’s failure to prosecute the case on behalf of the plaintiff. Ex. 3, Case No. 2:15-cv-01782 (E.D. Tex. 2016), Dkt. No. 110. Prior to the Magistrate’s Report and Recommendation, several defendants had filed motions to dismiss for lack of prosecution. See, e.g., Exs. 4, 5, Case No. 2:15-cv-01782 (E.D. Tex. 2016), Dkt. Nos. 82, 101. In the motion filed by Defendant Juniper Networks, Inc. (“Juniper”), Juniper complained that Mr. Hansley had “ignored so many of the deadlines in th[e] case that it has 1 Motion to Stay, Ex. 1, at 2, Email from Collier to Hansley, Sept. 16, 2016; see also id. at 1, Email from Winterle to Hansley, Sept. 26, 2016; Ex. 2 at 1, Email from Ives to Hansley, Sept. 15, 2016; Ex. 3 at 1, Email from Ives to Hansley, Sept. 21, 2016. Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 4 of 10 PageID #: 235 - 5 - prejudiced Juniper’s ability to mount a proper defense.” Ex. 5. at 1. As in the instant case, the Plaintiff had sought to stay all deadlines due to “Mr. Hansley’s self-described ‘life-threatening’ medical issues.” Id. at 2. In its motion, Juniper specifically noted “the Court’s familiarity with Mr. Hansley’s conduct in this jurisdiction.” Id. at 1 (citing eDekka LLC v. 3Balls.com, Inc., No. 2:15-cv-541, Dkt. No. 133, Dec. 17, 2015 Order at 9 (E.D. Tex.) (Gilstrap, J.) (in which this Court granted a motion for attorneys’ fees due to unreasonable positions and ‘vexatious litigation strategy’)). i. Marshall Feature Recognition, LLC v. Wendy’s Int’l, Inc., 2016 U.S. Dist. LEXIS 96772 (N.D. Ill. July 25, 2016) The Northern District of Illinois also recently dismissed a case for lack of prosecution, and granted attorney’s fees to the defendant, on the grounds that Mr. Hansley had consistently engaged in a pattern of delay and unresponsiveness. See Ex. 6, Marshall Feature Recognition, LLC v. Wendy’s Int’l, Inc., 2016 U.S. Dist. LEXIS 96772 (N.D. Ill. July 25, 2016), November 16, 2016 Memorandum Opinion and Order, at 3 (Dkt. No. 129). ii. RFJ Licensing, LLC v. ICOM America, Inc., No. 3:16-cv-504-M (N.D. Tex. 2016) Mr. Hansley was also recently permanently barred from practice in the Northern District of Texas due to “his inability to comply with the Orders of this Court and conduct litigation properly.” See Ex. 7, RFJ Licensing, LLC v. ICOM America, Inc., No. 3:16-cv-504-M (N.D. Tex. 2016), Order Prohibiting Attorney From Practice, at 2 (Dkt. No. 39). That order was precipitated by Mr. Hansley’s failure to participate in a required scheduling conference, leading to a temporary suspension to be lifted once he submitted a sealed Report advising the Court of the “specific steps he has taken to address the circumstances that led to his suspension and demonstrate his competence to resume the privilege of representing clients in the Northern Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 5 of 10 PageID #: 236 - 6 - District of Texas.” Id. at 1. When he failed to file the Report as ordered, the Court issued a Show Cause Order directing Mr. Hansley to demonstrate in writing why the Court should not permanently prevent him from practicing in the Northern District. When he failed to file that written response as ordered, the Court entered a permanent bar as the “only effective sanction under the circumstances of this case.” Id. at 2. II. ARGUMENT Federal Rule of Civil Procedure 41(b) provides, in part, that “[i]f the plaintiff fails to prosecute or to comply with these rules or a court order, a defendant may move to dismiss the action or any claim against it.” This rule is intended to be a safeguard against a plaintiff’s habitual failure to meet its deadlines and obligations throughout the litigation process. In addition to the cases discussed in detail above, recent cases in this district have held that dismissal is appropriate when a clear record of delay exists. See Hernandez v. Wal-Mart Stores Texas, LLC, 2016 U.S. Dist. LEXIS 83842, at *4 (E.D. Tex. June 1, 2016) (dismissal is appropriate when “there is a clear record of delay or contumacious conduct by the plaintiff”); see also Nicholas W. v. Northwest Indep. Sch. Dist., 2009 U.S. Dist. LEXIS 75337, at *16 (E.D. Tex. Aug. 24, 2009) (holding that Plaintiffs’ habitual failure to meet deadlines due to “counsels’ illness or demanding schedules” demonstrated a “clear record of delay . . . caused by counsel for the Plaintiffs’ intentional conduct”). Id. at 17 (“most of the cases affirming dismissals with prejudice have involved the presence of one or more of three ‘aggravating factors’: (1) delay attributable directly to the plaintiff, rather than his attorney; (2) actual prejudice to the defendant; and (3) delay caused by intentional conduct.”) However, “the presence of [a clear record of delay and ineffective lesser sanctions] can alone justify dismissal.” Rogers v. Kroger Co., 669 F.2d 317, 320 (5th Cir. 1982). Where plaintiff routinely ignores Court orders, lesser sanctions Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 6 of 10 PageID #: 237 - 7 - are not likely to prompt diligent prosecution. Ferrell v. Williams-Sonoma, Inc., 2016 U.S. Dist. LEXIS 87452, at *7 (E.D. Tex. May 31, 2016). As set forth in detail above, Defendants have established a clear record of delay by Plaintiff and its counsel, Mr. Hansley, in this case. Since June 2016, when the Court issued its initial Scheduling Order, Plaintiff’s counsel has consistently missed deadlines and/or has been entirely non-responsive. In fact, for at least the past ninety days, Mr. Hansley has completely ignored this Court’s Order to file written updates regarding his medical condition. See, e.g., Ferrell v. Williams-Sonoma, Inc., 2016 U.S. Dist. LEXIS 87452, at *7 (E.D. Tex. May 31, 2016). Defendants continue to be prejudiced by Mr. Hansley’s actions, including but not limited to by having to incur the unnecessary expense of filing the instant motion and by having to endure the continuing uncertainty of this unresolved litigation. Moreover, Defendants have been further prejudiced in that Plaintiff’s one-year deadline for filing an inter partes review (“IPR”) is quickly approaching, and Defendants must decide whether to incur the additional expense of filing such an IPR petition, even though Defendants have little certainty regarding the status of this case or the real scope of Plaintiff’s allegations. 2 In addition, Mr. Hansley’s track record of similar misconduct in other cases demonstrates that his delays in this case cannot be excused as an isolated incident. Rather, such delays appear to be Mr. Hansley’s modus operandi. See Nicholas W. v. Northwest Indep. Sch. Dist., 2009 U.S. Dist. LEXIS 75337, at *16 (E.D. Tex. Aug. 24, 2009) (dismissal is appropriate where (1) delays are caused by intentional conduct; and (2) lesser sanctions are unlikely to prompt diligent prosecution or better serve the interests of justice). Notably, as the decisions discussed above 2 The original Complaint in this action was served on January 28, 2016. Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The Defendants’ deadline for filing for inter partes review, therefore, is January 28, 2017. Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 7 of 10 PageID #: 238 - 8 - make clear, Mr. Hansley has not changed his conduct even in the face of (1) repeated warnings from multiple judges about possible dismissal for want of prosecution; (2) Court orders for his clients to pay attorneys’ fee awards due to his delays; or (3) temporary or permanent suspensions from practice. As such, there is simply no indication that anything short of a dismissal with prejudice would have any impact on Mr. Hansley’s failure to prosecute the instant case. For these reasons, Defendants motion should be granted. II. CONCLUSION Defendants have demonstrated a clear record of intentional delay by Plaintiff in this case, resulting in prejudice and uncertainty to the Defendants. For more than ninety days now, Plaintiff’s counsel has entirely disregarded this Court’s order to provide written updates on his medical condition, and Plaintiff has failed to engage new counsel to replace him. The prior actions of Plaintiff’s counsel in other cases demonstrates that nothing short of a dismissal of this case with prejudice will have any impact on the diligent prosecution of this case or the interests of justice. For these reasons, Defendants respectfully request that the Court grant the instant Motion and dismiss this case with prejudice. Dated: January 12, 2017 Respectfully submitted, /s/ Jennifer Parker Ainsworth Jennifer Parker Ainsworth WILSON, ROBERTSON & CORNELIUS, P.C. One American Center 909 ESE Loop 323, Suite 400 Tyler, TX 75701 (903) 509-5001 jainsworth@wilsonlawfirm.com Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 8 of 10 PageID #: 239 - 9 - Carlos Perez-Albuerne Margaret E. Ives Diane Seol CHOATE HALL & STEWART LLP Two International Place Boston, MA 02110 Ph: (617) 248-5000 Fax: (617) 248-4000 cperez@choate.com mives@choate.com dseol@choate.com COUNSEL FOR DEFENDANT FRONTPOINT SECURITY SOLUTIONS, LLC /s/ Bret T. Winterle (with permission, by Jennifer P. Ainsworth) Neil J. McNabnay Texas Bar No. 24002583 njm@fr.com Bret Winterle Texas Bar No. 24084249 winterle@fr.com William B. Collier, Jr. Texas Bar No. 24097519 collier@fr.com FISH & RICHARDSON P.C. 1717 Main Street, Suite 5000 Dallas, Texas 75201 (214) 747-5070 - Telephone (214) 747-2091 - Facsimile COUNSEL FOR DEFENDANT ALARM SECURITY GROUP, LLC D/B/A ASG SECURITY Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 9 of 10 PageID #: 240 - 10 - CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this notice was served on all counsel who have consented to electronic service, Local Rule CV-5(a)(3), on this 12 th day of January, 2017. /s/ Jennifer P. Ainsworth Jennifer P. Ainsworth Case 2:16-cv-00087-JRG Document 47 Filed 01/12/17 Page 10 of 10 PageID #: 241 EXHIBIT 1 Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 1 of 9 PageID #: 242 From: Wills Collier To: Austin@TheTexasLawOffice.com; Bret Winterle Cc: Ives, Margaret E.; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Perez, Carlos; Seol, Diane C.; Jennifer P. Ainsworth; Entry Systems – F&R Team; Wills Collier Subject: RE: Entry Systems v. Alarm Systems Group - DO/DCO Date: Wednesday, July 27, 2016 11:19:19 AM Austin, As noted on the first page of our proposed PO, defendants do not think this case requires the production of source code based on our understanding of Plaintiff’s infringement contentions. However, we also noted that should the need to produce source code arise, we are willing to work together to supplement the PO to account for it at that time. Best, Wills Collier :: Associate :: Fish & Richardson P.C. 214 760 6182 direct :: collier@fr.com fr.com :: Bio :: LinkedIn :: Twitter From: Austin Hansley [mailto:austin@thetexaslawoffice.com] Sent: Monday, July 25, 2016 6:24 PM To: Bret Winterle Cc: Wills Collier ; Margaret Ives ; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Carlos Perez ; dseol@choate.com; Jennifer P. Ainsworth ; Entry Systems – F&R Team Subject: Re: Entry Systems v. Alarm Systems Group - DO/DCO Why did you guys mark out the entire source code provisions in the PO? Thanks, -- Austin Hansley AUSTIN HANSLEY P.L.L.C. Texas Bar No.: 24073081 5050 Quorum Dr. Suite 700 Dallas, Texas 75254 Telephone: (972) 687-9157 (NEW) (469) 587-9776 (OLD) Facsimile: (855) 347-6329 Email: Austin@TheTexasLawOffice.com www.TheTexasLawOffice.com On Thu, Jul 21, 2016 at 8:34 PM, Bret Winterle wrote: Austin, Please correct me if I'm misstating any of this, but since (1) some of the defendants' counsel are registered to practice in front of the PTO (myself included) and count as part of their law practice and livelihood the ability to prosecute patent applications, (2) plaintiff's only business is filing patent infringement suits on existing patents, (3) unlike our clients, I don't anticipate your client has in its possession any confidential documents that it could produce that, even if disclosed to defendants' counsel, would give them any possible business advantage over your client when prosecuting patents in this field, and (4) you are not even registered to practice in front of the ‎USPTO and a bar shouldn't even matter to you, I don't see how you have any good faith basis to ask for or justify a bilateral prosecution bar, other than by responding with a knee-jerk reaction, for the first time after the close of business on the date this is due despite our asking for your position for days, that such a bilateral bar has been used in some other cases you've worked on. I, for one, have represented clients adverse to your firm in similar patent suits in this same district, and your firm has in those instances agreed to a one- way prosecution bar applicable only to plaintiff's counsel. I must therefore ask you to actually consider what we've asked for w/r/t a prosecution bar, and agree to have one applicable only to plaintiff's counsel again in this case. If you are not willing to agree to a one-way prosecution bar applicable only to plaintiff's counsel, please provide your actual, good faith basis for your demand that there be a bilateral prosecution bar so that we can consider it. Best, Bret Bret T. Winterle 214-292-4069 winterle@fr.com Sent from my handheld device. From: Wills Collier Sent: Thursday, July 21, 2016 7:58 PM To: Austin@TheTexasLawOffice.com Cc: Margaret Ives; Bret Winterle; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Carlos Perez; dseol@choate.com; Jennifer P. Ainsworth; Wills Collier Subject: RE: Entry Systems v. Alarm Systems Group - DO/DCO Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 2 of 9 PageID #: 243 Austin, If you reviewed the Protective Order you would realize that we removed restrictions that are found in the sample order. Please file opposed. Wills Collier :: Associate :: Fish & Richardson P.C. 214 760 6182 direct :: collier@fr.com fr.com :: Bio :: LinkedIn :: Twitter From: Austin Hansley [mailto:austin@thetexaslawoffice.com] Sent: Thursday, July 21, 2016 7:50 PM To: Wills Collier Cc: Margaret Ives ; Bret Winterle ; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Carlos Perez ; dseol@choate.com; Jennifer P. Ainsworth Subject: Re: Entry Systems v. Alarm Systems Group - DO/DCO I didn't add anything to what the Court gives as an example and typical Protective Order. You guys were the ones that added and changed the Court's example and typical Protective Order. My client has in the past used the Court's proposed order for this and the changes you made to it are unacceptable. Please file as opposed. Or let me know and I will file as opposed. Thanks, -- Austin Hansley AUSTIN HANSLEY P.L.L.C. Texas Bar No.: 24073081 5050 Quorum Dr. Suite 700 Dallas, Texas 75254 Telephone: (972) 687-9157 (NEW) (469) 587-9776 (OLD) Facsimile: (855) 347-6329 Email: Austin@TheTexasLawOffice.com www.TheTexasLawOffice.com On Thu, Jul 21, 2016 at 7:40 PM, Wills Collier > wrote: Austin, These delays and unnecessary additions to the protective order continue to waste Defendants’ time and needlessly increase expense in this case. Further, they prevent the parties from fully discussing these issues and coming to an agreement before the Court’s mandated deadlines, thereby forcing Defendants to litigate motions at great expense that could otherwise be avoided. Please explain why your client feels the need for specific source code provisions in a case the does not require the disclosure of source code. Further, please explain the need for a multilateral prosecution bar in this case. As you know, “[a] party seeking a protective order carries the burden of showing good cause for its issuance. The same is true for a party seeking to include in a protective order a provision effecting a patent prosecution bar.” In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010). Best, Wills Collier :: Associate :: Fish & Richardson P.C. 214 760 6182 direct :: collier@fr.com fr.com :: Bio :: LinkedIn :: Twitter From: Austin Hansley [mailto:austin@thetexaslawoffice.com] Sent: Thursday, July 21, 2016 7:12 PM To: Wills Collier > Cc: Margaret Ives >; Bret Winterle >; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Carlos Perez >; dseol@choate.com; Jennifer P. Ainsworth > Subject: Re: Entry Systems v. Alarm Systems Group - DO/DCO Understood. My client opposes your client's edits. My client proposes the Court's typical Protective Order found on its website. Let me know if you plan to file this, as opposed. Thanks, -- Austin Hansley AUSTIN HANSLEY P.L.L.C. Texas Bar No.: 24073081 5050 Quorum Dr. Suite 700 Dallas, Texas 75254 Telephone: (972) 687-9157 (NEW) (469) 587-9776 (OLD) Facsimile: (855) 347-6329 Email: Austin@TheTexasLawOffice.com www.TheTexasLawOffice.com Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 3 of 9 PageID #: 244 On Thu, Jul 21, 2016 at 6:51 PM, Wills Collier > wrote: Austin, Thank you for reviewing. However, we cannot continue this pattern of delaying until the last moment to discuss these. As we were in the process of filing our motion and order, and have now stopped due to your email, I expect the proposed Protective Order to be filed soon. Defendants’ proposed Protective Order is reasonable and necessary for this case, and we are in no position to discuss any changes this late in the day. Defendants will file our Order at 8PM CDT if you fail to file before then to ensure that Defendants comply with the Court’s Scheduling Order. Best, Wills Collier :: Associate :: Fish & Richardson P.C. 214 760 6182 direct :: collier@fr.com fr.com :: Bio :: LinkedIn :: Twitter From: Austin Hansley [mailto:austin@thetexaslawoffice.com] Sent: Thursday, July 21, 2016 6:33 PM To: Wills Collier > Cc: Margaret Ives >; Bret Winterle >; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Carlos Perez >; dseol@choate.com; Jennifer P. Ainsworth > Subject: Re: Entry Systems v. Alarm Systems Group - DO/DCO Working on refiling and the protective order now. Please give me some time to review and refile. I will make sure that this is done today. Thanks, -- Austin Hansley AUSTIN HANSLEY P.L.L.C. Texas Bar No.: 24073081 5050 Quorum Dr. Suite 700 Dallas, Texas 75254 Telephone: (972) 687-9157 (NEW) (469) 587-9776 (OLD) Facsimile: (855) 347-6329 Email: Austin@TheTexasLawOffice.com www.TheTexasLawOffice.com On Thu, Jul 21, 2016 at 4:15 PM, Wills Collier > wrote: Austin, As you are aware, the parties’ protective order must be filed today. Despite asking on several occasions, we have not received a proposed order from Plaintiff or received any response to our emails. In light of this failure to communicate, Defendants’ ASG, Alarm Grid, and FontPoint will file their proposed protective order, attached with redlines, shortly after 5PM CDT. Further, as we pointed out in our July 20, 2016, email, the Docket Control Order and Discovery Order were filed incorrectly and have not been refiled. Please file these correctly at your earliest convenience. Best, Wills Collier :: Associate :: Fish & Richardson P.C. 214 760 6182 direct :: collier@fr.com fr.com :: Bio :: LinkedIn :: Twitter From: Wills Collier Sent: Wednesday, July 20, 2016 10:21 AM To: Margaret Ives >; Austin@TheTexasLawOffice.com Cc: Bret Winterle >; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Carlos Perez >; dseol@choate.com; Jennifer P. Ainsworth >; Wills Collier > Subject: RE: Entry Systems v. Alarm Systems Group - DO/DCO Austin, It seems the agreed orders you filed Monday night were filed improperly. Could you please refile them with the Court? Also, please send Defendants your proposed protective order today so that we may review and comment. Thanks, Wills Collier :: Associate :: Fish & Richardson P.C. 214 760 6182 direct :: collier@fr.com fr.com :: Bio :: LinkedIn :: Twitter From: Ives, Margaret E. [mailto:mives@choate.com] Sent: Tuesday, July 19, 2016 10:43 AM Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 4 of 9 PageID #: 245 To: Austin@TheTexasLawOffice.com Cc: Wills Collier >; Bret Winterle >; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Carlos Perez >; dseol@choate.com; Jennifer P. Ainsworth > Subject: RE: Entry Systems v. Alarm Systems Group - DO/DCO Austin, Will you be circulated a proposed protective order today so that we have time to review and comment ahead of the deadline? Thanks, Meg Margaret E. Ives [logo] Choate, Hall & Stewart LLP Two International Place Boston, MA 02110 t 617-248-4907 f 617-248-4000 mives@choate.com www.choate.com From: Austin Hansley [mailto:austin@thetexaslawoffice.com] Sent: Monday, July 18, 2016 10:44 PM To: Ives, Margaret E. Cc: Wills Collier; Bret Winterle; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Perez, Carlos; Seol, Diane C.; Jennifer P. Ainsworth Subject: Re: Entry Systems v. Alarm Systems Group - DO/DCO Ok this is fine. Will file shortly. But for the record, I wanted 10 common and 15 separate ROGs totaling 25 ROGs and reserve the right to file a motion to increase the number of ROGs in this Discovery Order when the need presents. Thanks, -- Austin Hansley AUSTIN HANSLEY P.L.L.C. Texas Bar No.: 24073081 5050 Quorum Dr. Suite 700 Dallas, Texas 75254 Telephone: (972) 687-9157 (NEW) (469) 587-9776 (OLD) Facsimile: (855) 347-6329 Email: Austin@TheTexasLawOffice.com www.TheTexasLawOffice.com On Mon, Jul 18, 2016 at 9:05 PM, Ives, Margaret E. > wrote: Austin, Here is a revised version accepting your changes, except with respect to the number of interrogatories and number of hours of expert witness testimony. As you will see, we have proposed reducing the number of interrogatories from your last proposal to 5 common and 10 joint. In exchange, defendants are willing to reduce their total number of expert deposition hours to 6 common and 4 separate. As discussed on the call, Defendants believes this proposal reasonably limits discovery to an amount proportional to the needs of this particular case. See e.g., eDekka LLC v. 3balls.com, Inc., No. 2:15-CV-541 JRG, 2015 WL 9225038, at *4 (E.D. Tex. Dec. 17, 2015). Please let us know if you will agree to this compromise and, if so, file the DO with these changes. Best, Meg Margaret E. Ives [logo] Choate, Hall & Stewart LLP Two International Place Boston, MA 02110 t 617-248-4907 f 617-248-4000 mives@choate.com www.choate.com Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 5 of 9 PageID #: 246 From: Austin Hansley [mailto:austin@thetexaslawoffice.com] Sent: Monday, July 18, 2016 7:03 PM To: Ives, Margaret E. Cc: Wills Collier; Bret Winterle; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Perez, Carlos; Seol, Diane C.; Jennifer P. Ainsworth Subject: Re: Entry Systems v. Alarm Systems Group - DO/DCO ‎it is saying the passcode is wrong ‎ ‎ Thanks, -- Austin Hansley AUSTIN HANSLEY P.L.L.C. Texas Bar No.: 24073081 5050 Quorum Dr. Suite 700 Dallas, Texas 75254 Telephone: (972) 687-9157 (NEW) (469) 587-9776 (OLD) Facsimile: (855) 347-6329 Email: Austin@TheTexasLawOffice.com www.TheTexasLawOffice.com On Mon, Jul 18, 2016 at 5:56 PM, Ives, Margaret E. > wrote: Austin, As there are several defendants, let’s use my dial in so that everyone can join: 888 633 8784; passcode 671 248 4907. Let’s plan for 7pm ET/6pm ET (i.e., in 4 minutes) unless others respond that they cannot join at that time. Thanks, Meg Margaret E. Ives [logo] Choate, Hall & Stewart LLP Two International Place Boston, MA 02110 t 617-248-4907 f 617-248-4000 mives@choate.com www.choate.com From: Austin Hansley [mailto:austin@thetexaslawoffice.com] Sent: Monday, July 18, 2016 6:54 PM To: Ives, Margaret E. Cc: Wills Collier; Bret Winterle; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Perez, Carlos; Seol, Diane C.; Jennifer P. Ainsworth Subject: Re: Entry Systems v. Alarm Systems Group - DO/DCO ‎I can talk now. You can call 972-687-9157 office or my business cell at 214-732-5466. Thanks, -- Austin Hansley AUSTIN HANSLEY P.L.L.C. Texas Bar No.: 24073081 5050 Quorum Dr. Suite 700 Dallas, Texas 75254 Telephone: (972) 687-9157 (NEW) (469) 587-9776 (OLD) Facsimile: (855) 347-6329 Email: Austin@TheTexasLawOffice.com www.TheTexasLawOffice.com On Mon, Jul 18, 2016 at 5:41 PM, Ives, Margaret E. > wrote: Austin, I just left you a message regarding this. Are you available to confer this evening? As you know, we need to get this on file today. Best, Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 6 of 9 PageID #: 247 Meg Margaret E. Ives [logo] Choate, Hall & Stewart LLP Two International Place Boston, MA 02110 t 617-248-4907 f 617-248-4000 mives@choate.com www.choate.com From: Ives, Margaret E. Sent: Monday, July 18, 2016 5:35 PM To: 'Austin Hansley'; Wills Collier Cc: Bret Winterle; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Perez, Carlos; Seol, Diane C.; Jennifer P. Ainsworth Subject: RE: Entry Systems v. Alarm Systems Group - DO/DCO Austin, Are you available to meet and confer with defendants at 6:30 ET/5:30 CT? If that time doesn’t work, can you please let us know what time this afternoon you are available? Thanks, Meg Margaret E. Ives [logo] Choate, Hall & Stewart LLP Two International Place Boston, MA 02110 t 617-248-4907 f 617-248-4000 mives@choate.com www.choate.com From: Austin Hansley [mailto:austin@thetexaslawoffice.com] Sent: Friday, July 15, 2016 6:43 PM To: Wills Collier Cc: Bret Winterle; Ives, Margaret E.; James.Williams@bakerbotts.com; sshanberg@wsgr.com; moakes@hunton.com; chad.walters@bakerbotts.com; Perez, Carlos; Seol, Diane C.; Jennifer P. Ainsworth Subject: Re: Entry Systems v. Alarm Systems Group - DO/DCO Attached find the edits to the DCO and DO. Please review and let me know if there are any additional edits. Thanks, -- Austin Hansley AUSTIN HANSLEY P.L.L.C. Texas Bar No.: 24073081 5050 Quorum Dr. Suite 700 Dallas, Texas 75254 Telephone: (972) 687-9157 (NEW) (469) 587-9776 (OLD) Facsimile: (855) 347-6329 Email: Austin@TheTexasLawOffice.com www.TheTexasLawOffice.com On Thu, Jul 14, 2016 at 11:24 AM, Wills Collier > wrote: Austin, Thank you for sending your draft DO and DCO for the Entry Systems case. Attached are Defendants’ redlines to the proposed orders. Also, the parties’ proposed protective order is due to the Court next Thursday (7/21). Will you circulate a proposed PO that we may review and redline as well? Thanks, Wills Collier :: Associate :: Fish & Richardson P.C. 214 760 6182 direct :: collier@fr.com fr.com :: Bio :: LinkedIn :: Twitter Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 7 of 9 PageID #: 248 **************************************************************************************************************************** This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. **************************************************************************************************************************** ________________________________ Choate Hall & Stewart LLP Confidentiality Notice: This message is transmitted to you by or on behalf of the law firm of Choate, Hall & Stewart LLP. 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The substance of this message, along with any attachments, may contain information that is proprietary, confidential and/or legally privileged or otherwise legally exempt from disclosure. If you are not the designated recipient of this message, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please destroy and/or delete all copies of it and notify the sender of the error by return e-mail or by calling 1-800-520-2427. For more information about Choate, Hall & Stewart LLP, please visit us at choate.com ________________________________ ________________________________ Choate Hall & Stewart LLP Confidentiality Notice: This message is transmitted to you by or on behalf of the law firm of Choate, Hall & Stewart LLP. It is intended exclusively for the individual or entity to which it is addressed. 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The substance of this message, along with any attachments, may contain information that is proprietary, confidential and/or legally privileged or otherwise legally exempt from disclosure. If you are not the designated recipient of this message, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please destroy and/or delete all copies of it and notify the sender of the error by return e-mail or by calling 1-800-520-2427. For more information about Choate, Hall & Stewart LLP, please visit us at choate.com ________________________________ **************************************************************************************************************************** This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. **************************************************************************************************************************** **************************************************************************************************************************** This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. **************************************************************************************************************************** **************************************************************************************************************************** This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. **************************************************************************************************************************** **************************************************************************************************************************** This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. **************************************************************************************************************************** Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 8 of 9 PageID #: 249 **************************************************************************************************************************** This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. **************************************************************************************************************************** Case 2:16-cv-00087-JRG Document 47-1 Filed 01/12/17 Page 9 of 9 PageID #: 250 Case 2:16-cv-00087-JRG Document 47-2 Filed 01/12/17 Page 1 of 2 PageID #: 251 Case 2:16-cv-00087-JRG Document 47-2 Filed 01/12/17 Page 2 of 2 PageID #: 252 EXHIBIT 3 Case 2:16-cv-00087-JRG Document 47-3 Filed 01/12/17 Page 1 of 3 PageID #: 253 1 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION MARSHALL FEATURE RECOGNITION, LLC, Plaintiff, v. RAYMOND JAMES FINANCIAL, ET AL., Defendants. § § § § § § § § § § Case No. 2:15-cv-1782-JRG-RSP [Lead Case] REPORT AND RECOMMENDATION Before the Court is Defendants Pepsi-Cola Company and Frito-Lay, Inc.’s Motion to Dismiss for Lack of Prosecution (Dkt. No. 82). The motion came on for hearing on September 27, 2016. At the hearing, current counsel of record for Plaintiff advised the Court that he is unable to proceed with representation of the Plaintiff in this action, and that he has advised the owners of Plaintiff concerning this fact. For the reasons orally assigned at the hearing (Dkt. No. 105), it was ordered that this action be stayed for thirty days and that Plaintiff enroll new counsel within thirty days. Counsel for Plaintiff assured the Court that he would deliver the order to Plaintiff and its owners. A further hearing was set on November 16, 2016 to hear argument on the motion and to set further proceedings in the event that new counsel enrolled. Plaintiff was advised that the case would be dismissed with prejudice for failure to prosecute if new counsel failed to enroll. Plaintiff has failed to enroll new counsel or take any further action to prosecute this matter since the September 27 hearing, and did not appear at the November 16, 2016 hearing. A review of the record, and the argument at the hearing, shows that Plaintiff has consistently failed to abide by the Court’s deadlines or to meet its discovery obligations. Plaintiff has failed to Case 2:15-cv-01782-JRG-RSP Document 110 Filed 11/16/16 Page 1 of 2 PageID #: 1095Case 2:16 cv-00087-JRG Document 47-3 Filed 01/ 2/17 Page 2 of 3 PageID #: 254 2 respond to interrogatories, failed to produce documents, failed to engage in the meet and confer process attempted by Defendants’ counsel, failed to timely file claim construction briefing, and failed to timely respond to motions. When confronted with these failures, counsel for Plaintiff advised that he is not in a position to represent Plaintiff at this time and that Plaintiff has declined his request to retain other or additional counsel. Despite the passage of nearly two more months since the September hearing, Plaintiff has taken no steps to remedy the defaults. Under these circumstances, Plaintiff has made it impossible for the Court to proceed with the adjudication of the claims. The record makes clear that Plaintiff’s representatives, and not just its counsel, are aware of the defaults in this Court, as well as those in the Northern District of Illinois and the Northern District of Texas. Defendants have shown through their filings that they have incurred significant expense in attempting to defend this case. A dismissal with prejudice is the only appropriate remedy for these violations. Accordingly, IT IS RECOMMENDED that Defendants’ Motion to Dismiss (Dkt. No. 82) be GRANTED and that this action be DISMISSED WITH PREJUDICE. A party’s failure to file written objections to the findings, conclusions, and recommendations contained in this report within fourteen days after being served with a copy shall bar that party from de novo review by the district judge of those findings, conclusions, and recommendations and, except on grounds of plain error, from appellate review of unobjected-to factual findings, and legal conclusions accepted and adopted by the district court. Fed. R. Civ. P. 72(b)(2); see Douglass v. United Servs. Auto. Ass’n, 79 F.3d 1415, 1430 (5th Cir. 1996) (en banc). Case 2:15-cv-01782-JRG-RSP Document 110 Filed 11/16/16 Page 2 of 2 PageID #: 1096Case 2:16 cv-00087-JRG Document 47-3 Filed 01/ 2/17 Page 3 of 3 PageID #: 255 EXHIBIT 4 Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 1 of 11 PageID #: 256 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION MARSHALL FEATURE RECOGNITION, LLC, Plaintiff, v. RAYMOND JAMES FINANCIAL, INC., Defendant. CIVIL ACTION NO. 2:15-cv-1782 LEAD CASE MARSHALL FEATURE RECOGNITION, LLC, Plaintiff, v. PEPSI-COLA COMPANY, and FRITO-LAY, INC., Defendants. CIVIL ACTION NO. 6:12-cv-956 JURY TRIAL DEMANDED DEFENDANTS PEPSI-COLA COMPANY AND FRITO-LAY, INC.’S MOTION TO DISMISS FOR LACK OF PROSECUTION Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 1 of 10 PageID #: 741Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 2 of 11 PageID #: 257 - 1 - Once a plaintiff is required to show cause to avoid dismissal for want of prosecution once, it should not find itself in a similar position in the same case again. Yet that is precisely the situation here. MFR filed this patent infringement lawsuit almost four years ago, and one year later, this Court required it to show cause because it had failed to do anything in the case, including serve Defendants. Three years later, MFR has once again failed to prosecute its claims, as it has failed to participate in discovery, missed its deadline to file an opening claim construction brief, and filed nothing in response to a case-dispositive motion. All the while, MFR’s counsel has failed to respond to numerous phone calls, voicemails, e-mails, and letters sent by Defendants. This conduct is not isolated. Earlier this year, a district court in Illinois dismissed MFR’s case asserting the same patent for lack of prosecution when MFR’s lead counsel missed various hearings and failed to return various phone calls and messages from opposing counsel, MFR’s local counsel, and the court itself. MFR’s lead counsel has exhibited the same pattern of delay before this Court, ignoring the Court’s deadlines and Defendants’ constant attempts to communicate. Therefore, Defendants respectfully request that the Court grant Defendants’ motion and dismiss MFR’s case for want of prosecution. Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 2 of 10 PageID #: 742Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 3 of 11 PageID #: 258 - 2 - I. BACKGROUND Plaintiff Marshall Feature Recognition, LLC originally filed this lawsuit against Defendants PepsiCo, Inc.1 and Frito-Lay, Inc. on December 20, 2012, asserting that Defendants infringed U.S. Patent No. 6,886,750, which expired on May 25, 2014. (No. 6:12- cv-956, Dkt. No. 1.) On November 11, 2013, after MFR failed to serve Defendants or otherwise prosecute the case for over ten months, the Court issued a Show Cause Order requiring MFR to “show good cause . . . why this action should not be dismissed for failure to prosecute.” (Dkt. No. 5.) MFR, after retaining Austin Hansley as its lead counsel, finally served Defendants on December 17, 2013. (See Dkt. Nos. 13, 14.) After MFR amended its Complaint, Defendants filed an Answer and then a motion to dismiss the case under Rule 12(b)(1) on September 10, 2014. (See Dkt. Nos. 19, 26.) Nothing happened in the case until September 9, 2015, when Magistrate Judge Payne entered a Report and Recommendation denying Defendants’ motion, which the Court then adopted on September 28, 2015. (See Dkt. Nos. 35, 37.) On January 22, 2016, the Court consolidated the -956 action with the lead case, No. 2:15-cv-1782. Around this time, MFR was involved in co-pending litigation involving the same ’750 Patent against Wendy’s International, Inc. in the Northern District of Illinois. See Marshall Feature Recognition, LLC v. Wendy’s International, Inc., No. 14-cv-865 (N.D. Ill.). MFR and its counsel, however, did not actively participate in that litigation and 1 PepsiCo, Inc. is incorrectly named as “Pepsi-Cola Company” in MFR’s Complaint. Despite notifying MFR and its counsel of this issue multiple times, MFR has yet to correct it. Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 3 of 10 PageID #: 743Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 4 of 11 PageID #: 259 - 3 - eventually suffered a dismissal for want of prosecution. The Illinois court explained the facts that resulted in this dismissal, facts that are very similar to those before this Court: On February 7, 2014, MFR filed a patent infringement claim seeking monetary and injunctive relief. (Dkt. 1 ¶ 4.) During the ensuing proceedings, this Court referred the case to a magistrate judge for discovery and settlement supervision. (Dkt. 37.) On October 30, 2015, this Court granted Justin Kaplan’s motion to withdraw as MFR’s counsel, and accepted Austin Hansley’s application to appear pro hac vice as new lead counsel for MFR. (Dkt. 77.) Mr. Hansley’s place of business is in Dallas, Texas and his firm does not have an office within this district. (Dkt. 62 at 2.) Accordingly, two attorneys from the firm Cole Sadkin in Chicago filed appearances to serve as local counsel. (Dkts. 60, 61.) On December 3, 2015, no counsel for MFR appeared for a status hearing in front of the magistrate judge. (Dkt. 80.) On January 4, 2016, this Court asked the parties to consider available trial dates and notify the courtroom deputy of their selection. (Dkt. 83.) The parties never confirmed a trial date. At a status hearing on March 17, the parties reported that they might engage in settlement discussions. (Dkt. 84.) However, at the next status hearing on April 7, local counsel for MFR (“local counsel”) and Wendy’s reported that neither party had been able to reach lead counsel for MFR (“lead counsel”) since the last status hearing. (Dkts. 85, 93.) The magistrate judge noted that a motion to dismiss for want of prosecution might be in order. (Dkt. 93 at 4-5.) On April 11, Wendy’s informed this Court that lead counsel continued to be unresponsive. (Transcript of April 11, 2016 Hearing at 2-3.) The Court attempted to contact lead counsel by phone in open court, and was not able to make contact with a live person at lead counsel’s office; it could only reach an automated voicemail system. (Id. at 4.) The Court noted its agreement with the magistrate judge’s statement that a motion to dismiss for want of prosecution might be appropriate. (Id. at 6.) Then, at the April 14 status hearing, Wendy’s stated it was considering filing a motion to dismiss for want of prosecution and local counsel stated it intended to file a motion to withdraw. (Dkt. 87.) Local counsel did in fact file a motion to withdraw on April 18, citing lead counsel’s unresponsiveness as the basis for the motion. (Dkt. 88.) This Court heard the motion and granted it on April 27. (Dkt. 90.) At the same hearing, both local counsel and Wendy’s informed this Court that they continued to be unable to reach lead counsel. (Transcript of April 27, 2016 Hearing at 2.) Additionally, the parties informed the Court that MFR had missed the April 18, 2016 discovery deadline for final infringement contentions. (Id. at 3.) Based on these Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 4 of 10 PageID #: 744Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 5 of 11 PageID #: 260 - 4 - circumstances, this Court dismissed the case for want of prosecution. (Dkt. 90.) Id., Dkt. No. 185 at 2 (attached as Ex. A). MFR moved to vacate the dismissal and re-open the case, but the court rejected that attempt. See id. at 6. MFR and Mr. Hansley have similarly failed to participate in this case. On May 26, 2016, Defendants, along with their co-defendant Juniper Networks, Inc., served interrogatories on MFR. (See Ex. B.) MFR’s responses were due on June 30. MFR asked for an extension of this deadline, and Defendants offered to grant MFR a 30-day extension of this deadline if MFR agreed to produce any relevant license and settlement agreements prior to the extended deadline. MFR did not respond to Defendants’ offer. After the parties failed to come to an agreement regarding an extension, Defendants sent a letter to MFR on July 26 asking MFR to provide its responses by August 1. (See Ex. C.) To date, MFR has not served any objections or responses to this discovery or even reached out to Defendants to explain its failure to respond to discovery. MFR and its counsel have also failed to respond to a dispositive motion in this case. On July 21, 2016, Defendants filed a motion for judgment on the pleadings based on invalidity of the ’750 Patent under Section 101. (Dkt. No. 78.)2 MFR’s response was due on August 8. To date, MFR has not filed a response to this dispositive motion, nor did it or its counsel reach out to Defendants to request an extension of the deadline. 2 Every reference to docket numbers from this point forward refers to Case No. 2:15-cv- 782. Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 5 of 10 PageID #: 745Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 6 of 11 PageID #: 261 - 5 - MFR and its counsel also failed to file an opening claim construction brief. Under the Court’s Docket Control Order, MFR’s claim construction brief was due on August 4, 2016. (Dkt. No. 77 at 3.) MFR did not file a response or reach out to Defendants to request an extension of this deadline prior to its passing. Instead, on August 15, Mr. Hansley, after over one month of radio silence, sent an e-mail to Defendants’ counsel in which he asked whether Defendants would oppose his filing a motion to extend the claim construction brief deadline and file a brief that was not only untimely, but also 13 pages over the page limit. (See Ex. D.) MFR and its counsel completely disappeared for over a month, ignoring numerous letters, e-mails, phone calls, and voicemails from Defendants’ counsel. Suddenly, three days before Defendants’ deadline for filing a responsive brief, Mr. Hansley resurfaced, asking for an extension to MFR’s opening brief deadline and permission to exceed the page limit. Defendants’ co-defendant, Juniper Networks, asked for a two-week extension to its responsive brief deadline. Defendants responded that they opposed the extension. (See Ex. E.) Mr. Hansley finally responded to these e-mails the afternoon that Defendants’ responsive claim construction briefs were due. II. LEGAL STANDARD Federal Rule of Civil Procedure 41(b) provides that a court may, in its discretion, dismiss a plaintiff’s claim for failure to prosecute or comply with local rules or a court order. A dismissal under Rule 41(b) should be granted “only upon a showing of a clear record of delay or contumacious conduct by the plaintiff, . . . and where lesser sanctions would not serve the best interest of justice.” Wash v. Johnson, 108 Fed. Appx. 154, 156 (5th Cir. 2004) (quoting Dorsey v. Scott Wetzel Servs., 84 F.3d 170, 171 (5th Cir. 1996)). Dismissal Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 6 of 10 PageID #: 746Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 7 of 11 PageID #: 262 - 6 - is thus appropriate “where the requisite factors of clear delay and ineffective lesser sanctions are bolstered by the presence of at least one of [three] aggravating factors[:] the extent to which the plaintiff, as distinguished from his counsel, was personally responsible for the delay, the degree of actual prejudice to the defendant, and whether the delay was the result of intentional conduct.” Rogers v. Kroger Co., 669 F.2d 317, 320 (5th Cir. 1982); see also FDIC v. Conner, 20 F.3d 1376, 1380 (5th Cir. 1994). However, “the presence of the [requisite factors] can alone justify dismissal.” Id. at n.5. III. ARGUMENT The Court should grant Defendants’ motion for several reasons. First, MFR’s conduct exhibits a clear record of delay. Second, MFR’s delays and refusal to participate in the case have prejudiced Defendants. And third, lesser sanctions would not better serve the interests of justice. Therefore, Defendants respectfully request that the Court grant this motion. First, MFR’s (in)activity in this case warrants a dismissal for lack of prosecution. It and its counsel have shown a clear pattern of delay and disinterest in prosecuting this case. Prior to Mr. Hansley’s last-minute e-mail requesting an extension to MFR’s deadline for filing a claim construction brief, MFR had taken no action in the case in over a month. See Drake v. Penske Truck Leasing Co., L.P., No. 4:12-cv-264, 2013 WL 5137832, at *4 (E.D. Tex. 2013) (dismissing case for want of prosecution upon finding that “Plaintiff has taken no action in this case for more than six weeks”). During that time, MFR’s counsel simply ignored or failed to respond to multiple phone calls, e-mails, letters, and voicemails regarding the case. Defendants’ attempts to be reasonable and allow MFR every benefit Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 7 of 10 PageID #: 747Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 8 of 11 PageID #: 263 - 7 - of the doubt were met with radio silence. Instead of prosecuting the case, MFR missed deadlines for discovery, for filing its opening claim construction brief, and for responding to a dispositive motion. To date, it still has not addressed the discovery or dispositive motion deadlines, and indeed, it has not even responded to Defendants’ latest communication regarding the requested extensions. (See Ex. E.) MFR’s conduct in this case parallels its misconduct in the Wendy’s case in Illinois, and it merits the same result: dismissal of MFR’s claims. Second, MFR’s conduct has severely prejudiced Defendants. Prejudice may be economic or evidentiary. A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1033 (Fed. Cir. 1992). Evidentiary prejudice may arise when a defendant is unable to present a full and fair defense due to, for example, “loss of records, the death of a witness, or the unreliability of memories of long past events.” Id. Such is the case here. Defendants have been subjected to this litigation for nearly four years. Over the course of those four years, potential witnesses have changed jobs, and memories have undoubtedly faded. Those memories continue to fade with each day that this case progresses past the patent’s expiration over two years ago. Defendants have already allowed MFR to overcome an initial warning from the Court to show cause for want of prosecution. They should not have to do so again. Third, lesser sanctions would not better serve the interests of justice. Defendants have expended significant resources defending the case and pursuing their counterclaims and defenses only to be met with radio silence from MFR and its counsel. MFR’s continued flouting of this Court’s deadlines has left Defendants in the highly prejudicial Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 8 of 10 PageID #: 748Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 9 of 11 PageID #: 264 - 8 - position of having to prepare a claim construction brief without the benefit of an opening brief and having to litigate a case against a party that not only will not provide discovery, but will not even respond to communications at all. Anything short of dismissal of MFR’s case would have little effect on this pattern of behavior because these issues are not even isolated to Defendants’ case. As the Illinois court found, “the record reveals a clear pattern of delay and lack of diligence by MFR’s lead counsel.” (Ex. A at 5.) That pattern has continued in this case, and Defendants therefore respectfully request that the Court grant their motion. IV. CONCLUSION Because MFR has failed to provide discovery, file an opening claim construction brief, respond to a case-dispositive motion, or respond to numerous communications from Defendants, Defendants respectfully request that the Court grant their motion and dismiss MFR’s claims for lack of prosecution. Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 9 of 10 PageID #: 749Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 10 of 1 PageID #: 265 - 9 - Date: August 18, 2016 Respectfully submitted, By: /s/ Neil J. McNabnay Neil J. McNabnay Texas Bar No. 24002583 mcnabnay@fr.com Ricardo J. Bonilla Texas Bar No. 24082704 rbonilla@fr.com 1717 Main Street, Suite 5000 Dallas, Texas 75201 Telephone: 214.747.5070 Facsimile: 214.747.2091 Counsel for Defendants PepsiCo, Inc. and Frito-Lay, Inc. CERTIFICATE OF SERVICE The undersigned certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court’s CM/ECF system on August 18, 2016, per Local Rule CV- 5(a)(3). /s/ Ricardo J. Bonilla Ricardo J. Bonilla Case 2:15-cv-01782-JRG-RSP Document 82 Filed 08/18/16 Page 10 of 10 PageID #: 750Case 2:16-cv-00087-JRG Document 47-4 Filed 01/12/17 Page 11 of 11 PageID #: 266 EXHIBIT 5 Case 2:16-cv-00087-JRG Document 47-5 Filed 01/12/17 Page 1 of 6 PageID #: 267 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION MARSHALL FEATURE RECOGNITION, LLC, Plaintiff, § § § § § Case No. 2:15-cv-01782 v. § LEAD CASE § RAYMOND JAMES FINANCIAL, INC., § § Defendant. § DEFENDANT JUNIPER NETWORKS, INC.’S MOTION TO DISMISS FOR FAILURE TO PROSECUTE Juniper respectfully requests under Rule 41(b) that the Court exercise its inherent power to control its docket and prevent undue delay by dismissing this case with prejudice. The record here is replete with the delay and contumacious conduct required for dismissal.1 Indeed, MFR and its attorney, Mr. Hansley, have ignored so many of the deadlines in this case that it has prejudiced Juniper’s ability to mount a proper defense. Juniper acknowledges the Court’s familiarity with Mr. Hansley’s conduct in this jurisdiction.2 Recently, other jurisdictions have viewed MFR and Mr. Hansley with similar 1 See Hernandez v. Wal-Mart Stores Texas, LLC, 2016 WL 3545537, at *2 (E.D. Tex. Jun. 1, 2016) (Nowak, J.) (citing Boudwin v. Graystone Ins. Co., Ltd., 756 F.2d 399, 401 (5th Cir. 1985) (dismissal is appropriate when “there is a clear record of delay or contumacious conduct by the plaintiff”); see also Rogue Off-Road, LLP v. Renegade Race Depot, Inc., 2016 WL 3584198, at *1 (E.D. Tex. Jun. 1, 2016) (Love, J.) (citing McNeal v. Papasan, 842 F.2d 787, 790 (5th Cir. 1988) (internal quotations omitted)) (dismissal with prejudice appropriate where “the plaintiff’s conduct has threatened the integrity of the judicial process [in a way which] leave[s] the court no choice but to deny that plaintiff its benefit”). 2 See eDekka LLC v. 3Balls.com, Inc., No. 2:15-cv-541, Dkt. No. 133, Dec. 17, 2015 Order at 9 (E.D. Tex.) (Gilstrap, J.) (granting motion for attorneys’ fees due to unreasonable positions and “vexatious litigation strategy”). Case 2:15-cv-01782-JRG-RSP Document 101 Filed 09/26/16 Page 1 of 5 PageID #: 1027Case 2:16 cv-00087-JRG Document 47-5 Filed 01/12/17 Page 2 of 6 PageID #: 268 - 2 - disfavor. For instance, 61 days ago, the Northern District of Illinois dismissed MFR’s infringement case against Wendy’s for lack of prosecution due to MFR’s and Mr. Hansley’s failure to meet deadlines and respond to communications from Wendy’s counsel.3 The court is currently considering Wendy’s request for sanctions in that case. This same pattern of conduct has continued in this action, as the following events show: • MFR has not responded to Defendants’ Joint Interrogatories, served May 27; • MFR has not responded to Juniper’s Individual Interrogatories, served May 27; • MFR has not produced basic documents relating to conception and reduction to practice, licensing, and the determination of a reasonable royalty that Juniper requested in a June 30 letter; • MFR did not respond to July 11, July 21, and August 17 letters from Juniper attempting to engage MFR in discussions on the documents requested on June 30; • MFR did not file a response to Juniper’s motion to compel seeking responses to its interrogatories and June 30 document requests; • MFR did not file its claim construction brief by the August 4 deadline; • MFR filed a motion for an extension to file its claim construction brief due to “networking and computer issues” at Mr. Hansley’s firm, the same reason MFR offered in support of a similar request in another case in this jurisdiction nine months ago; 4 • After the Court granted MFR’s motion to extend and ordered the parties to meet and confer on any other necessary adjustments to the case schedule, MFR did not respond to multiple requests from Juniper to meet and confer; • MFR did not file its reply claim construction brief by the amended September 14 deadline; and • MFR did not participate in the filing of the required P.R. 4-5 joint claim chart, despite multiple attempts by Juniper to engage MFR in discussions. MFR most recently has sought to extend and stay all deadlines due to Mr. Hansley’s self- described “life-threatening” medical issues. While Juniper remains sympathetic to a genuine medical emergency, Mr. Hansley has not provided any evidence to substantiate his condition. 3 See Marshall Feature Recognition, LLC v. Wendy’s International, Inc., 2016 WL 3977009, at *1-3 (N.D. Ill. Jul. 25, 2016). 4 See Ex. 1, Olivastar LLC v. Bank of America Corp. et al., No. 2:15-cv-00314-JRG, D.I. 221, Motion for Extension of Time, at 1. Case 2:15-cv-01782-JRG-RSP Document 101 Filed 09/26/16 Page 2 of 5 PageID #: 1028Case 2:16 cv-00087-JRG Document 47-5 Filed 01/12/17 Page 3 of 6 PageID #: 269 - 3 - Indeed, MFR’s (untimely) September 24 filing contains only an unsworn document signed by Mr. Hansley and a physician’s note stating that Mr. Hansley “has been evaluated for” certain medical conditions.5 Against the backdrop of MFR’s and Mr. Hansley’s history, this lacks credibility and should not form the foundation for the absolution of missed past deadlines and the indefinite staying of future deadlines. On September 25, Juniper offered MFR the opportunity to voluntarily dismiss the case and avoid burdening the Court with motions practice, including a request for Juniper’s fees and costs.6 MFR has not responded. Consequently, Juniper brings this motion and also asks the Court to grant Juniper its fees and costs expended in defending against MFR’s allegations. The United States’ adversarial system of civil justice requires that plaintiff and defendant each actively participate in litigation, and that each side do so in a fair and timely fashion. To achieve these goals, the court system imposes on litigating parties date-certain obligations in the form of the Federal Rules of Civil Procedure, the local rules, and a Rule 26 schedule. But when a plaintiff habitually fails to meet its obligations—particularly as the initiator of the litigation—it becomes the province of Federal Rule of Civil Procedure 41(b) to ensure that our system of justice remains fair and timely. Here, MFR is a habitual transgressor of deadlines, threatening the fair and timely adjudication of the case-at-bar. Accordingly, Juniper respectfully requests that the Court exercise its authority under Rule 41(b) to protect Juniper and our system of civil justice by dismissing the case with prejudice and awarding Juniper its attorneys’ fees and costs. 5 See D.I. 99-1, Exhibit A. 6 See Ex. 2, September 25, 2016 Letter from A. Fisch to A. Hansley, enclosing Stipulation of Dismissal. Case 2:15-cv-01782-JRG-RSP Document 101 Filed 09/26/16 Page 3 of 5 PageID #: 1029Case 2:16 cv-00087-JRG Document 47-5 Filed 01/12/17 Page 4 of 6 PageID #: 270 - 4 - Date: September 26, 2016 Respectfully submitted, By: /s/ Alan M. Fisch Alan M. Fisch alan.fisch@fischllp.com R. William Sigler (pro hac vice) bill.sigler@fischllp.com Jennifer K. Robinson (pro hac vice) jennifer.robinson@fischllp.com FISCH SIGLER LLP 5301 Wisconsin Avenue NW Fourth Floor Washington, DC 20015 Tel: (202) 362-3500 Desmond Jui (pro hac vice) desmond.jui@fischllp.com FISCH SIGLER LLP 96 North Third Street Suite 260 San Jose, CA 95112 Tel: (650) 362-8200 Melissa R. Smith (SBN 24001351) melissa@gillamsmithlaw.com GILLAM & SMITH LLP 303 South Washington Avenue Marshall, TX 75670 Tel: (903) 934-8450 Fax: (903) 934-9257 Attorneys for Defendant Juniper Networks, Inc. Case 2:15-cv-01782-JRG-RSP Document 101 Filed 09/26/16 Page 4 of 5 PageID #: 1030Case 2:16 cv-00087-JRG Document 47-5 Filed 01/12/17 Page 5 of 6 PageID #: 271 - 5 - CERTIFICATE OF SERVICE I hereby certify that on September 26, 2016, I electronically filed the foregoing with the Clerk of the Court for the United States District Court for the Eastern District of Texas, Marshall Division, via the CM/ECF system, which will send a notice of filing to all counsel of record who have consented to service by electronic means. /s/ Alan M. Fisch Alan M. Fisch Case 2:15-cv-01782-JRG-RSP Document 101 Filed 09/26/16 Page 5 of 5 PageID #: 1031Case 2:16 cv-00087-JRG Document 47-5 Filed 01/12/17 Page 6 of 6 PageID #: 272 EXHIBIT 6 Case 2:16-cv-00087-JRG Document 47-6 Filed 01/12/17 Page 1 of 5 PageID #: 273 UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION Marshall Feature Recognition, LLC, ) ) Plaintiff, ) ) v. ) Case No. 14-cv-00865 ) Wendy’s International, Inc. ) Judge Sharon Johnson Coleman ) ) ) Defendants. ) ) MEMORANDUM OPINION AND ORDER The Court finds that Marshall Feature Recognition's (“MFR”) Rule 59 motion for new trial [126] was not properly brought because there was no trial. The Court will treat MFR's motion as a motion to reconsider the Court's order awarding Wendy’s International (“Wendy’s”) attorney's fees [124] and its October 25, 2016 entry of judgment reflecting that award [125]. The Court’s decision to treat it as such is based on the purported miscommunication about Austin Hansley’s (lead counsel for MFR) motion to withdraw. The Court now recognizes that MFR asked local counsel, Mathias Civil Justice, PLLC (“Mathias”), to be its primary counsel; the motion to withdraw [122], however, was filed after the October 21, 2016 hearing on attorney’s fees.1 The Court notes that the motion to withdraw was delayed numerous times despite the known issues affecting Mr. Hansley’s ability to represent MFR. A hearing on MFR’s motion to reconsider [126] was held on November 15, 2016. Mathias and counsel for Wendy’s were present at the hearing. After hearing oral argument, reviewing the parties' various filings, and reviewing the docket, the Court finds that no further briefing is necessary on MFR's motion. 1 The Court vacates its previous order striking as moot the motion to withdraw [124]. Case 2:16-cv-00087-JRG Document 47-6 Filed 01/12/17 Page 2 of 5 PageID #: 274 2 First, the Court rejects MFR’s claim of inadequate notice of the October 21, 2016 hearing. MFR’s claim of inadequate notice is not supported by the record. On October 7, 2016, Mathias and counsel for Wendy’s were present in court and Mr. Hansley, MFR’s lead counsel, was present telephonically. At that hearing, the Court made clear that 1) it would award attorney's fees to Wendy’s; 2) that the parties were to meet and confer about the appropriate amount of fees; 3) that if the parties were unable to reach an agreement, they were to each file a report regarding the amount of fees; and 4) that if no agreement was reached, the parties were to be present in court on October 21, 2016 at 9:00 AM. A docket entry also made reference to October 21 although the time was not listed. Wendy’s filed its attorney’s fees report [120] on October 19, 2016. Only counsel for Wendy’s was present at the October 21 hearing. Neither lead nor local counsel for MFR made contact with the Court prior to the 9:00 AM call. MFR failed to appear at this hearing – a hearing on attorney’s fees – therefore it is not entitled to another hearing. The Court entered an order in open court awarding fees as requested. Later that day, MFR filed its objections to Wendy’s attorney’s fees report and a motion to withdraw. The Court held that MFR's objections were untimely given that they were filed after the October 21 hearing was completed at which counsel was expected to be present. Second, the Court finds that MFR did have opportunity to file a response to Wendy’s motion for attorney's fees. Wendy’s filed its motion for fees [99] on June 6, 2016. The motion was entered and continued until August 10, 2016, when the Court set a briefing schedule allowing response by August 31, 2016. MFR failed to respond by August 31. MFR did not file a motion to extend and stay briefing deadlines until September 19, 2016, nearly three weeks after the August 31 deadline. The stay was granted on September 23, 2016, due to the personal hardships that Mr. Hansley faced. Between then and the October 7 hearing, the issue of fees was not addressed due in large part to the uncertainty of Mr. Hansley’s representation of MFR. The Court clearly lifted the Case 2:16-cv-00087-JRG Document 47-6 Filed 01/12/17 Page 3 of 5 PageID #: 275 3 stay at the October 7 hearing when it issued its ruling. Between then and the October 21 hearing, no motions to withdraw, no new appearances, and no motions to reconsider were filed on MFR’s behalf. The Court took this as an indication that MFR did not intend to respond to the motion for fees. MFR’s argument that it was not afforded an opportunity to file a response to the motion for attorney’s fees has no merit whatsoever. A review of the record shows the extent of the Court’s deference to and Wendy’s patience in dealing with MFR’s case. Third, over MFR’s objections, the Court finds that this case is "exceptional" within the meaning of 35 U.S.C. § 285. "[A]n 'exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party's litigating position . . . or the unreasonable manner in which the case was litigated." Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756, 188 L.Ed.2d 816 (2014). The Court may determine whether a case is “exceptional” based on its discretion, considering the totality of the circumstances. Id. MFR made arguments that were foreclosed by the Court, and MFR's conduct before this and other courts strongly suggests MFR’s goal in filing this action was settlement. Alone, these two observations support the Court’s finding that the case is exceptional. See, e.g., Chicago Bd. Options Exch., Inc. v. Sec. Exch., LLC, No. 07 C 623, 2014 WL 6978644, at *5 (N.D. Ill. Dec. 10, 2014) (Lefkow, J.) (finding a case to be “exceptional” where party made arguments that had been foreclosed by previous rulings); Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1326 (Fed. Cir. 2011) (party filed multiple, nearly identical patent cases and immediately offered settlements for less than the cost of mounting a defense). In addition, MFR failed to file final infringement contentions, failed to communicate with Wendy’s even after multiple judges warned MFR about a possible dismissal for want of prosecution, was uncooperative throughout discovery, and failed to engage in meaningful settlement discussions. The Court, in its sound discretion, finds that the totality of the circumstances renders this case exceptional. The Court certainly has never seen another case like it. Case 2:16-cv-00087-JRG Document 47-6 Filed 01/12/17 Page 4 of 5 PageID #: 276 4 The Court further rejects MFR’s claim that the award of fees is a sanction. Pursuant to 35 U.S.C. § 285, Wendy’s moved for attorney’s fees which this Court awarded based on the petition presented. MFR’s contention is without merit. Finally, the Court addresses MFR's contention that responsibility for the fees should be shifted to MFR's attorneys. Once again, the Court's order [124], [125] is clear - MFR is to pay Wendy’s its rightfully owed attorney fees. MFR failed to appear at the hearing on attorney’s fees and failed to file timely objections. The Court is not addressing MFR’s options in other forums, therefore, if MFR so chooses, it may pursue relief against its counsel elsewhere. Conclusion For the foregoing reasons, MFR’s motion [126] is denied. IT IS SO ORDERED. _____________________________ SHARON JOHNSON COLEMAN United States District Judge DATED: November 16, 2016 Case 2:16-cv-00087-JRG Document 47-6 Filed 01/12/17 Page 5 of 5 PageID #: 277 EXHIBIT 7 Case 2:16-cv-00087-JRG Document 47-7 Filed 01/12/17 Page 1 of 3 PageID #: 278 1 UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS DALLAS DIVISION RFJ LICENSING LLC, Plaintiff, v. ICOM AMERICA INC., Defendant. § § § § § § § § § Civil Action No. 3:16-CV-0504-M ORDER PROHIBITING ATTORNEY FROM PRACTICE By Order dated September 8, 2016, the Court temporarily suspended Austin Lee Hansley from practicing in the Northern District of Texas, until such time as Mr. Hansley demonstrates to the Court that he is able to comply with the Orders of this Court and conduct litigation properly. The Court further ordered Mr. Hansley to submit, under seal, a “Report to Judge Lynn Pursuant to Order Stated in Open Court on September 8, 2016,” advising the Court of the specific steps he has taken to address the circumstances that led to his suspension and demonstrate his competence to resume the privilege of representing clients in the Northern District of Texas. When Mr. Hansley failed to file the Report as ordered, the Court issued a Show Cause Order directing Mr. Hansley to show cause in writing, by October 28, 2016, why the Court should not enter an order permanently preventing him from practicing before this Court. Mr. Hansley has failed to file a written response as ordered. He has further failed to communicate with this Court in any way about the Show Cause Order. Local Civil Rule 83.8 of the Northern District of Texas authorizes a presiding judge to take appropriate disciplinary action against a member of the Court’s bar. Rule 83.8(b) Case 2:16-cv-00087-JRG Document 47-7 Filed 01/12/17 Page 2 of 3 PageID #: 279 2 provides that “[a] presiding judge, after giving opportunity to show cause to the contrary, may take any appropriate disciplinary action against a member of the bar for . . . failure to comply with any rule or order of this court [or] inability to conduct litigation properly.” N.D. Tex. Local R. 83.8(b)(2), (4). This Court has already suspended Mr. Hansley from practicing in the Northern District of Texas, based on his inability to comply with the Orders of this Court and conduct litigation properly. Mr. Hansley’s failure to respond to the October 14, 2016 Show Cause Order demonstrates continued disregard for this Court’s orders and reflects an inability to conduct litigation properly. Accordingly, the Court determines that Mr. Hansley’s suspension should be converted to a permanent order preventing him from practicing in the Northern District of Texas. The Court has considered lesser sanctions, but determines that an Order permanently prohibiting Mr. Hansley from practicing in this Court is the only effective sanction under the circumstances of this case. Attorney Austin Lee Hansley is hereby BARRED from practicing in the Northern District of Texas. SO ORDERED. Dated: November 28, 2016. Case 2:16-cv-00087-JRG Document 47-7 Filed 01/12/17 Page 3 of 3 PageID #: 280 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION ENTRY SYSTEMS, LLC, Plaintiff, v. ALARM SECURITY GROUP, LLC D/B/A ASG SECURITY ET. AL. Defendant. CIVIL ACTION NO. 2:16-cv-87-JRG (LEAD CASE) JURY TRIAL DEMANDED ORDER GRANTING DEFENDANTS’ MOTION TO DISMISS FOR FAILURE TO PROSECUTE On this day, the Court considered the Defendants’ Motion to Dismiss for Failure to Prosecute. For the reasons set forth in the Motion and for good cause shown, the Court is of the opinion that the Motion should be GRANTED. It is, therefore, ORDERED that Plaintiff’s Complaint for patent infringement is DISMISSED with prejudice for failure to prosecute. IT IS SO ORDERED. Case 2:16-cv-00087-JRG Document 47-8 Filed 01/12/17 Page 1 of 1 PageID #: 281