Ameristar Perimeter Security Inc. v. RSA Protective Technologies, LLC

Application Number	Patent Number	External Links
-	US8215865	Espacenet Google Patents

COMPLAINT FOR DECLARATORY JUDGMENT- filed with Jury Demand against RSA Protective Technologies, LLC - Magistrate Consent Notice to Pltf. ( Filing fee $ 400, receipt number 0311-2872516.) - filed by Ameristar Perimeter Security Inc. (Attachments: # 1 Exhibit A, # 2 Civil Cover Sheet)(sam) (Entered: 03/09/2020)

2020-03-06

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Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (sam) (Entered: 03/09/2020)

2020-03-06

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Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) US 8,215,865. (sam) (Entered: 03/09/2020)

2020-03-06

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Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent ASSA ABLOY Inc., Corporate Parent ASSA ABLOY AB for Ameristar Perimeter Security Inc. filed by Ameristar Perimeter Security Inc. (sam) (Entered: 03/09/2020)

2020-03-06

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SUMMONS Returned Executed by Ameristar Perimeter Security Inc.. RSA Protective Technologies, LLC served on 3/9/2020, answer due 3/30/2020. (Hufnal, AnnaMartina) (Entered: 03/09/2020)

2020-03-09

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Summons Issued

2020-03-09

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Summons Issued with Magistrate Consent Notice attached as to RSA Protective Technologies, LLC on 3/9/2020. Requesting party or attorney should pick up issued summons at the Help Desk, Room 4209, or call 302-573-6170 and ask the Clerk to mail the summons to them. (sam)

2020-03-09

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Case Assigned to Judge Maryellen Noreika. Please include the initials of the Judge (MN) after the case number on all documents filed. (rjb)

2020-03-11

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Case Assigned/Reassigned

2020-03-11

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NOTICE of Appearance by Marc Stephen Casarino on behalf of RSA Protective Technologies, LLC (Casarino, Marc) (Entered: 03/19/2020)

2020-03-19

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MOTION for Pro Hac Vice Appearance of Attorney Joseph V. Saphia - filed by RSA Protective Technologies, LLC. (Attachments: # 1 Affidavit (Certification of Joseph V. Safia), # 2 Text of Proposed Order)(Casarino, Marc) (Entered: 03/19/2020)

2020-03-19

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MOTION for Pro Hac Vice Appearance of Attorney Jessica Zafonte - filed by RSA Protective Technologies, LLC. (Attachments: # 1 Affidavit (Certification of Jessica Zafonte), # 2 Text of Proposed Order)(Casarino, Marc) (Entered: 03/19/2020)

2020-03-19

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ANSWER to 1 Complaint, by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 03/19/2020)

2020-03-19

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SO ORDERED

2020-03-19

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SO ORDERED re 7 MOTION for Pro Hac Vice Appearance of Attorney Joseph V. Saphia, 8 MOTION for Pro Hac Vice Appearance of Attorney Jessica Zafonte filed by RSA Protective Technologies, LLC. ORDERED by Judge Maryellen Noreika on 3/19/2020. (dlw)

2020-03-19

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ORAL ORDER - IT IS HEREBY ORDERED that the parties shall confer regarding proposed dates in the scheduling order and shall submit a proposed order, including a proposal for the length and timing of trial, to the Court no later than thirty (30) days from the date of this Order. The parties are to use the Court's form scheduling order, which is posted at http://www.ded.uscourts.gov (see Chambers, Judge Noreika, Forms). If there are disputes or issues that the Court needs to address in the proposed scheduling order, the parties shall direct the Court to the paragraph numbers in which those appear in a cover letter to the Court. ORDERED by Judge Maryellen Noreika on 3/20/2020. (dlw) (Entered: 03/20/2020)

2020-03-20

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Letter to The Honorable Maryellen Noreika from Martina Tyreus Hufnal regarding Related Case - re 1 Complaint,. (Hufnal, AnnaMartina) (Entered: 03/20/2020)

2020-03-20

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- CORRECTING ENTRY

2020-03-20

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Oral Order

2020-03-20

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CORRECTING ENTRY: D.I. 10 has been deleted from the docket as it was a duplicate of D.I. 9. (dlw)

2020-03-20

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CORRECTING ENTRY: D.I. 12 has been deleted from the docket due to an improper filing. (dlw)

2020-03-20

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ORAL ORDER re 10 Oral Order - IT IS HEREBY ORDERED that the parties in this action shall coordinate with the parties in C.A. No. 20-340 (MN) and submit a joint proposed scheduling order no later than thirty (30) days from the date of this Oral Order. ORDERED by Judge Maryellen Noreika on 3/23/2020. (dlw) (Entered: 03/23/2020)

2020-03-23

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Oral Order

2020-03-23

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MOTION for Pro Hac Vice Appearance of Attorney Chris Marchese, Tim Rawson, Jeff Burton and Christopher Kirby - filed by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 03/24/2020)

2020-03-24

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SO ORDERED

2020-03-24

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SO ORDERED re 13 MOTION for Pro Hac Vice Appearance of Attorney Chris Marchese, Tim Rawson, Jeff Burton and Christopher Kirby filed by Ameristar Perimeter Security Inc. ORDERED by Judge Maryellen Noreika on 3/24/2020. (dlw)

2020-03-24

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AMENDED ANSWER to 1 Complaint,, COUNTERCLAIM against RSA Protective Technologies, LLC by RSA Protective Technologies, LLC. (Attachments: # 1 Redline Version)(Casarino, Marc) (Entered: 04/02/2020)

2020-04-02

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MOTION to Dismiss Counterclaim - filed by Ameristar Perimeter Security Inc. (Hufnal, AnnaMartina) Modified on 4/17/2020 (dlw). (Entered: 04/16/2020)

2020-04-16

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OPENING BRIEF in Support re 15 MOTION to Dismiss Counterclaim filed by Ameristar Perimeter Security Inc. Answering Brief/Response due date per Local Rules is 4/30/2020. (Hufnal, AnnaMartina) Modified on 4/17/2020 (dlw). (Entered: 04/16/2020)

2020-04-16

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Letter to The Honorable Maryellen Noreika from RSA Protective Technologies LLC regarding Submission of Joint Proposed Scheduling Order - re 12 Oral Order,. (Attachments: # 1 Text of Proposed Order Joint Proposed Scheduling Order)(Casarino, Marc) (Entered: 04/22/2020)

2020-04-22

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Letter to The Honorable Maryellen Noreika from Martina Tyreus Hufnal regarding Related Cases - re 11 Letter. (Hufnal, AnnaMartina) (Entered: 04/23/2020)

2020-04-23

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ORDER Setting Teleconference: A Rule 16 Telephone Conference is set for 4/29/2020 at 10:00 AM before Judge Maryellen Noreika. Counsel shall provide a dial-in number for this teleconference by emailing this Court's judicial administrator no later than 5:00 p.m. on 4/27/2020. ORDERED by Judge Maryellen Noreika on 4/23/2020. (dlw) (Entered: 04/23/2020)

2020-04-23

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Order Setting Teleconference

2020-04-23

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Add Attorneys - PHV only

2020-04-24

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Pro Hac Vice Attorney Jessica H. Zafonte, and Joseph V. Saphia for RSA Protective Technologies, LLC, added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. Associated Cases: 1:20-cv-00341-MN, 1:20-cv-00340-MN(sam)

2020-04-24

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ANSWERING BRIEF in Opposition re 15 MOTION to Dismiss Counterclaim filed by RSA Protective Technologies, LLC.Reply Brief due date per Local Rules is 5/5/2020. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Casarino, Marc) (Main Document 20 replaced on 4/29/2020) (dlw). (Entered: 04/28/2020)

2020-04-28

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Minute Entry for proceedings held before Judge Maryellen Noreika - Telephone Scheduling Conference held on 4/29/2020. The cases are consolidated through discovery. The parties shall confer and resubmit a proposed scheduling order by the end of the day on 5/6/2020. (Court Reporter Dale Hawkins.) Associated Cases: 1:20-cv-00340-MN, 1:20-cv-00341-MN(mdb)

2020-04-29

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- CORRECTING ENTRY

2020-04-29

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Telephone Conference

2020-04-29

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CORRECTING ENTRY: D.I. 20 has been replaced on the docket with a version of the brief that complies with this Court's Local Rules and Judge Noreika's Preferences and Procedures. The footnotes now appear in 12 point type. (dlw)

2020-04-29

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REPLY BRIEF re 15 MOTION to Dismiss Counterclaim filed by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 05/05/2020)

2020-05-05

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Joint PROPOSED ORDER for case scheduling by RSA Protective Technologies, LLC. (Attachments: # 1 cover letter)(Casarino, Marc) (Entered: 05/06/2020)

2020-05-06

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ORAL ORDER re (22 in 1:20-cv-00341-MN - Proposed Order; 21 in 1:20-cv-00340-MN - Proposed Order) - IT IS HEREBY ORDERED that, on or before 5/14/2020, the parties shall resubmit an agreed-upon Scheduling Order. With respect to Markman, RSA shall file the opening and reply briefs and the DJ Plaintiffs shall file the answering and surreply briefs. Trial sequencing will be addressed at the pretrial conference when the issues remaining for trial are clear. If, however, infringement remains an issue, the parties should anticipate that trial will follow the normal sequence for patent cases (e.g., RSA will go first at trial on infringement). With respect to depositions, the Court expects the parties to act reasonably and in good faith to address the need for additional deposition hours and will not include a provision that requires a Court Order as requested by DJ Plaintiffs. ORDERED by Judge Maryellen Noreika on 5/7/2020. (dlw) (Entered: 05/07/2020)

2020-05-07

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Oral Order

2020-05-07

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REQUEST for Oral Argument by Ameristar Perimeter Security Inc. re 15 MOTION to Dismiss Counterclaim. (Hufnal, AnnaMartina) (Entered: 05/12/2020)

2020-05-12

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PROPOSED ORDER // Scheduling Order re 23 Oral Order by RSA Protective Technologies, LLC. (Attachments: # 1 Exhibit A)(Casarino, Marc) Modified on 5/15/2020 (dlw). (Entered: 05/13/2020)

2020-05-13

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SCHEDULING ORDER: Case referred to the Magistrate Judge for the purpose of exploring ADR. Joinder of Parties due by 7/1/2020. Amended Pleadings due by 1/15/2021. Fact Discovery completed by 5/28/2021. Opening Expert Reports due by 6/25/2021. Rebuttal Expert Reports due by 7/30/2021. Expert Discovery due by 9/3/2021. Dispositive Motions due by 10/1/2021. Claim Construction Opening Brief serve by 12/4/2020. Claim Construction Answering Brief served by 1/8/2021. Claim Construction Reply Brief served by 1/29/2021. Claim Construction Surreply Brief served by 2/19/2021. Joint Claim Construction Brief filed by 2/26/2021. A Markman Hearing is set for 3/12/2021 at 10:00 AM in Courtroom 4A before Judge Maryellen Noreika. A Pretrial Conference is set for 4/1/2022 at 04:30 PM in Courtroom 4A before Judge Maryellen Noreika. A 5-day Jury Trial is set for 4/11/2022 at 09:30 AM in Courtroom 4A before Judge Maryellen Noreika. A second 5-day Jury Trial is set for 4/18/2022 at 09:30 AM in Courtroom 4A before Judge Maryellen Noreika. Trial sequencing will be discussed at the pretrial conference. Signed by Judge Maryellen Noreika on 5/15/2020. (dlw) (Entered: 05/15/2020)

2020-05-15

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ORAL ORDER: This matter has been referred to Chief Magistrate Judge Mary Pat Thynge for ADR. Counsel are to advise on or before June 5, 2020 by a JOINT EMAIL to Judge Thynge, with a copy to her Judicial Administrator, Ms. Kennedy, their clients interest in mediation and the timing when mediation is preferred with a very brief explanation why. When referencing the timing for mediation, counsel rely on certain events in the scheduling order, for example, before claim construction briefing, after the close of discovery, before expert reports and the like, they are to include the date(s) on when such event(s) occur. Ordered by Chief Magistrate Judge Mary Pat Thynge on 5/15/20. Associated Cases: 1:20-cv-00340-MN, 1:20-cv-00341-MN(cak) (Entered: 05/15/2020)

2020-05-15

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Case Referred to Mediation - Magistrate Judge only

2020-05-15

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Oral Order

2020-05-15

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CASE REFERRED to Chief Magistrate Judge Mary Pat Thynge for Mediation. Please see Standing Order dated January 20, 2016, regarding disclosure of confidential ADR communications. A link to the standing order is provided here for your convenience at https://www.ded.uscourts.gov/sites/ded/files/forms/StandingOrderforADR-Mediation.pdf Associated Cases: 1:20-cv-00340-MN, 1:20-cv-00341-MN(cak)

2020-05-15

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Pro Hac Vice Attorney Tim Rawson, Jeff Burton, Chris Marchese and Christopher R. Kirby for Ameristar Perimeter Security Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (mal)

2020-05-18

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Add Attorneys - PHV only

2020-05-18

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NOTICE OF SERVICE of Ameristar Perimeter Security USA Inc.'s First Set of Requests for Production of Documents and Things to RSA Protective Technologies, LLC (Nos. 1-42) and Ameristar Perimeter Security USA Inc.'s First Set of Interrogatories to RSA Protective Technologies, LLC (Nos. 1-11) filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 06/03/2020)

2020-06-03

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NOTICE OF SERVICE of RSA Protective Technologies, LLC's First Set of Requests for Production of Documents to Ameristar Perimeter Security USA, Inc. (NOS. 1-35) filed by RSA Protective Technologies, LLC.(Casarino, Marc) Modified on 6/5/2020 (dlw). (Entered: 06/05/2020)

2020-06-05

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ORAL ORDER: After review of the joint submission submitted by counsel on 6/5/20, counsel for Barrier 1 Systems shall provide a copy of the decision and order on claim construction when issued, and within 14 days thereafter, counsel for the parties shall provide a joint email to Judge Thynge and her judicial administrator, Ms. Kennedy, regarding their clients respective positions on mediation and the timing thereof. On the same date, the parties may also submit a separate confidential email to Judge Thynge and Ms. Kennedy regarding any confidential information that they feel is relevant to their position in response to this order. Ordered by Judge Mary Pat Thynge on 6/16/20. Associated Cases: 1:20-cv-00340-MN, 1:20-cv-00341-MN(cak) (Entered: 06/16/2020)

2020-06-16

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ORAL ORDER Setting Teleconference - After having been advised by the parties of their inability to resolve a dispute regarding the proposed protective order, IT IS HEREBY ORDERED that a Telephone Conference is set for 6/29/2020 at 12:00 PM before Judge Maryellen Noreika. The opening letter (not to exceed three (3) pages) is due on 6/23/2020 and shall attach a copy of the proposed protective order with the competing proposals set forth therein. The responsive letter (not to exceed three (3) pages) is due on 6/24/2020. Counsel shall provide a dial-in number for the teleconference by emailing this Court's judicial administrator. ORDERED by Judge Maryellen Noreika on 6/16/2020. (dlw) (Entered: 06/16/2020)

2020-06-16

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NOTICE OF SERVICE of Plaintiff Ameristar Perimeter Security USA Inc.'s Initial Disclosures filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 06/16/2020)

2020-06-16

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Order Setting Teleconference

2020-06-16

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Oral Order

2020-06-16

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Letter to The Honorable Maryellen Noreika from Martina Tyreus Hufnal regarding Proposed Protective Order - re 31 Order Setting Teleconference,,. (Attachments: # 1 Text of Proposed Order)(Hufnal, AnnaMartina) (Entered: 06/23/2020)

2020-06-23

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Letter to The Honorable Judge Maryellen Noreika from Marc S. Casarino, Esquire regarding post-grant prosecution bar. (Casarino, Marc) (Entered: 06/24/2020)

2020-06-24

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Minute Entry for proceedings held before Judge Maryellen Noreika - Telephone Conference held on 6/29/2020 regarding the parties' protective order dispute (see Letters filed on 6/23/20 and 6/24/20. After hearing argument, Ameristar and Barrier1's proposal is accepted. See transcript for more details. (Court Reporter Dale Hawkins.) Associated Cases: 1:20-cv-00341-MN, 1:20-cv-00340-MN(mdb)

2020-06-29

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Telephone Conference

2020-06-29

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PROPOSED ORDER Protective Order by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 06/30/2020)

2020-06-30

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PROTECTIVE ORDER. Signed by Judge Maryellen Noreika on 6/30/2020. (dlw) (Entered: 06/30/2020)

2020-06-30

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NOTICE OF SERVICE of RSA Protective Technologies, LLC's Response to Ameristar Perimeter Security USA Inc.'s First Set of Requests for the Production of Documents and Things (Nos. 1-42) filed by RSA Protective Technologies, LLC. (Casarino, Marc) Modified on 7/2/2020 (dlw). (Entered: 07/02/2020)

2020-07-02

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NOTICE OF SERVICE of RSA Protective Technologies, LLC's Response to Ameristar Perimeter Security USA Inc.'s First Set of Request for Interrogatories (Nos. 1-11) filed by RSA Protective Technologies, LLC. (Casarino, Marc) Modified on 7/2/2020 (dlw). (Entered: 07/02/2020)

2020-07-02

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NOTICE OF SERVICE of Plaintiff Ameristar Perimeter Security USA Inc.'s Second Set of Interrogatories to RSA Protective Technologies, LLC (No. 12) filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 07/08/2020)

2020-07-08

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NOTICE OF SERVICE of Plaintiff Ameristar Perimeter Security USA Inc.'s Objections and Responses to RSA Protective Technologies, LLC's First Set of Requests for Production of Documents to Ameristar (Nos. 1-35) filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 07/08/2020)

2020-07-08

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NOTICE OF SERVICE of Plaintiff Ameristar Perimeter Security USA Inc.'s Production to RSA Protective Technologies, LLC filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 07/21/2020)

2020-07-21

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PROPOSED ORDER for Discovery, including Discovery of Electronically Stored Information re 26 Scheduling Order,,,, by RSA Protective Technologies, LLC. (Attachments: # 1 Exhibit Schedule A to Proposed Order for Discovery)(Casarino, Marc) (Entered: 07/28/2020)

2020-07-28

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ORDER FOR DISCOVERY, INCLUDING DISCOVERY OF ELECTRONICALLY STORED INFORMATION ("ESI"). Signed by Judge Maryellen Noreika on 7/28/2020. (dlw) (Entered: 07/28/2020)

2020-07-28

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NOTICE OF SERVICE of Initial Claim Chart to Barrier1 filed by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 08/06/2020)

2020-08-06

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NOTICE OF SERVICE of Initial Claim Chart to Ameristar filed by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 08/06/2020)

2020-08-06

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NOTICE OF SERVICE of Response to Ameristar Perimeter Security USA Inc.'s Second Set of Request for Interrogatories re 39 Notice of Service filed by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 08/06/2020)

2020-08-06

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NOTICE OF SERVICE of Response to Barrier1 Systems, Inc.'s Second Set of Interrogatories filed by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 08/06/2020)

2020-08-06

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Letter to The Honorable Maryellen Noreika from Martina Tyreus Hufnal regarding Parties Request to Stay Litigation Pending Inter Partes Review - re 26 Scheduling Order,,,,. (Hufnal, AnnaMartina) (Entered: 09/11/2020)

2020-09-11

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ORAL ORDER re (44 in 1:20-cv-00340-MN) Letter, (48 in 1:20-cv-00341-MN) Letter - Pursuant to the parties' joint request, the Court provides the following dates for inclusion in the parties' Amended Scheduling Order: Markman Hearing - 9/29/2021 at 10:00 a.m.; Pretrial Conference - 7/25/2022 at 4:30 PM; Trials - 8/8/2022 and 8/15/2022. ORDERED by Judge Maryellen Noreika on 9/16/2020. (dlw) (Entered: 09/16/2020)

2020-09-16

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Oral Order

2020-09-16

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Joint STIPULATION to Stay and Amend Schedule re 26 Scheduling Order,,,, by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 09/22/2020)

2020-09-22

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SO ORDERED re (46 in 1:20-cv-00340-MN) (50 in 1:20-cv-00341-MN) Stipulation to Stay and Amend Schedule. IT IS HEREBY ORDERED that these actions are STAYED until an institution decision in the IPR. The following deadlines will be in force if institution is denied. If the IPR is instituted, the dates will not apply and the case will be stayed pending final written decision in the IPR. (Set/Reset Scheduling Order Deadlines: Claim Construction Opening Brief served by 4/19/2021. Claim Construction Answering Brief served by 5/17/2021. Claim Construction Reply Brief served by 6/7/2021. Claim Construction Sur-Reply Brief served by 6/28/2021. Joint Claim Construction Brief filed by 7/9/2021. Amended Pleadings due by 4/9/2021. Fact Discovery completed by 11/1/2021. Opening Expert Reports due by 1/6/2022. Rebuttal Expert Reports due by 1/27/2022. Expert Discovery due by 2/17/2022. Dispositive Motions due by 3/21/2022. A Markman Hearing is set for 9/29/2021 at 10:00 AM in Courtroom 4A before Judge Maryellen Noreika. A Final Pretrial Conference is set for 7/25/2022 at 04:30 PM in Courtroom 4A before Judge Maryellen Noreika. A 5-day Jury Trial is set for 8/8/2022 at 09:30 AM in Courtroom 4A before Judge Maryellen Noreika. A Second 5-day Jury Trial is set for 8/15/2022 at 09:30 AM in Courtroom 4A before Judge Maryellen Noreika. Trial sequencing will be discussed at the pretrial conference). Signed by Judge Maryellen Noreika on 9/23/2020. (dlw) (Entered: 09/23/2020)

2020-09-23

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MOTION for Pro Hac Vice Appearance of Attorney Laura A. Chubb - filed by RSA Protective Technologies, LLC. (Attachments: # 1 Certification, # 2 Text of Proposed Order)(Casarino, Marc) (Entered: 09/25/2020)

2020-09-25

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SO ORDERED re 52 MOTION for Pro Hac Vice Appearance of Attorney Laura A. Chubb filed by RSA Protective Technologies, LLC. ORDERED by Judge Maryellen Noreika on 9/28/2020. (dlw)

2020-09-28

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SO ORDERED

2020-09-28

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ORAL ORDER Setting Telephonic Hearing on (14 in 1:20-cv-00340-MN) MOTION to Dismiss for Failure to State a Claim, (15 in 1:20-cv-00341-MN) MOTION to Dismiss Counterclaim: IT IS HEREBY ORDERED that a telephonic Motion Hearing is set for 11/12/2020 at 11:00 AM before Judge Maryellen Noreika. The Court is setting aside one (1) hour for this hearing with the time to be split equally between the parties. Any slide presentations the parties wish to use during the hearing shall be emailed (in PDF format) to MN_Civil@ded.uscourts.gov no later than 24 hours prior to the hearing. Counsel shall provide dial-in credentials for the hearing by emailing this Court's judicial administrator. ORDERED by Judge Maryellen Noreika on 10/14/2020. (dlw) (Entered: 10/14/2020)

2020-10-14

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NOTICE of Withdrawal of Attorney Jeff H. Burton by Ameristar Perimeter Security Inc. (Hufnal, AnnaMartina) (Entered: 10/14/2020)

2020-10-14

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Order Setting Hearing on Motion

2020-10-14

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ORAL ORDER RESETTING Hearing on (14 in 1:20-cv-00340-MN) MOTION to Dismiss for Failure to State a Claim, (15 in 1:20-cv-00341-MN) MOTION to Dismiss Counterclaim: The 11/12/2020 telephonic motion hearing is RESET for 2/16/2021 at 10:00 AM before Judge Maryellen Noreika. Closer to the time of the hearing, and after consulting with the parties, the Court will determine whether the hearing will be held in Courtroom 4A or remotely. ORDERED by Judge Maryellen Noreika on 10/21/2020. (dlw) (Entered: 10/21/2020)

2020-10-21

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Order Setting Hearing on Motion

2020-10-21

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Joint STATUS REPORT and Request to Maintain Stay by Ameristar Perimeter Security Inc. (Hufnal, AnnaMartina) Modified on 2/8/2021 (dlw). (Additional attachment(s) added on 2/8/2021: # 2 PTABs Institution Decision in IPR2020-01369) (dlw). (Entered: 02/08/2021)

2021-02-08

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ORAL ORDER re 56 Status Report and Request to Maintain Stay - IT IS HEREBY ORDERED that: (1) the parties' request to continue the stay is GRANTED. The parties shall provide an update to the Court within 7 days of the final written decision issued in the IPR; and (2) the 15 Motion to Dismiss Counterclaim is DENIED with leave to renew, if appropriate, after the IPR. ORDERED by Judge Maryellen Noreika on 2/8/2021.(dlw) (Entered: 02/08/2021)

2021-02-08

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Order Staying Case AND Oral Order

2021-02-08

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- CORRECTING ENTRY

2021-02-08

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CORRECTING ENTRY: The PTABs Institution Decision in IPR2020-01369 has been added to D.I. 56. (dlw)

2021-02-08

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STIPULATION of Dismissal with Prejudice by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 03/15/2021)

2021-03-15

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SO ORDERED re 58 Stipulation of Dismissal. ***Civil Case Terminated. Signed by Judge Maryellen Noreika on 3/16/2021. (dlw) (Entered: 03/16/2021)

2021-03-16

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Overview

Parties

Defendant

RSA Protective Technologies, LLC Follow

Represented By

Plaintiff

Ameristar Perimeter Security Inc. Follow

Represented By

Court & Judges

Patents Involved

Docket Entries

Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (sam) (Entered: 03/09/2020)

Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) US 8,215,865. (sam) (Entered: 03/09/2020)

Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent ASSA ABLOY Inc., Corporate Parent ASSA ABLOY AB for Ameristar Perimeter Security Inc. filed by Ameristar Perimeter Security Inc. (sam) (Entered: 03/09/2020)

SUMMONS Returned Executed by Ameristar Perimeter Security Inc.. RSA Protective Technologies, LLC served on 3/9/2020, answer due 3/30/2020. (Hufnal, AnnaMartina) (Entered: 03/09/2020)

Summons Issued

Summons Issued with Magistrate Consent Notice attached as to RSA Protective Technologies, LLC on 3/9/2020. Requesting party or attorney should pick up issued summons at the Help Desk, Room 4209, or call 302-573-6170 and ask the Clerk to mail the summons to them. (sam)

Case Assigned to Judge Maryellen Noreika. Please include the initials of the Judge (MN) after the case number on all documents filed. (rjb)

Case Assigned/Reassigned

NOTICE of Appearance by Marc Stephen Casarino on behalf of RSA Protective Technologies, LLC (Casarino, Marc) (Entered: 03/19/2020)

MOTION for Pro Hac Vice Appearance of Attorney Joseph V. Saphia - filed by RSA Protective Technologies, LLC. (Attachments: # 1 Affidavit (Certification of Joseph V. Safia), # 2 Text of Proposed Order)(Casarino, Marc) (Entered: 03/19/2020)

MOTION for Pro Hac Vice Appearance of Attorney Jessica Zafonte - filed by RSA Protective Technologies, LLC. (Attachments: # 1 Affidavit (Certification of Jessica Zafonte), # 2 Text of Proposed Order)(Casarino, Marc) (Entered: 03/19/2020)

ANSWER to 1 Complaint, by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 03/19/2020)

SO ORDERED

SO ORDERED re 7 MOTION for Pro Hac Vice Appearance of Attorney Joseph V. Saphia, 8 MOTION for Pro Hac Vice Appearance of Attorney Jessica Zafonte filed by RSA Protective Technologies, LLC. ORDERED by Judge Maryellen Noreika on 3/19/2020. (dlw)

Letter to The Honorable Maryellen Noreika from Martina Tyreus Hufnal regarding Related Case - re 1 Complaint,. (Hufnal, AnnaMartina) (Entered: 03/20/2020)

- CORRECTING ENTRY

Oral Order

CORRECTING ENTRY: D.I. 10 has been deleted from the docket as it was a duplicate of D.I. 9. (dlw)

CORRECTING ENTRY: D.I. 12 has been deleted from the docket due to an improper filing. (dlw)

Oral Order

MOTION for Pro Hac Vice Appearance of Attorney Chris Marchese, Tim Rawson, Jeff Burton and Christopher Kirby - filed by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 03/24/2020)

SO ORDERED

SO ORDERED re 13 MOTION for Pro Hac Vice Appearance of Attorney Chris Marchese, Tim Rawson, Jeff Burton and Christopher Kirby filed by Ameristar Perimeter Security Inc. ORDERED by Judge Maryellen Noreika on 3/24/2020. (dlw)

AMENDED ANSWER to 1 Complaint,, COUNTERCLAIM against RSA Protective Technologies, LLC by RSA Protective Technologies, LLC. (Attachments: # 1 Redline Version)(Casarino, Marc) (Entered: 04/02/2020)

MOTION to Dismiss Counterclaim - filed by Ameristar Perimeter Security Inc. (Hufnal, AnnaMartina) Modified on 4/17/2020 (dlw). (Entered: 04/16/2020)

OPENING BRIEF in Support re 15 MOTION to Dismiss Counterclaim filed by Ameristar Perimeter Security Inc. Answering Brief/Response due date per Local Rules is 4/30/2020. (Hufnal, AnnaMartina) Modified on 4/17/2020 (dlw). (Entered: 04/16/2020)

Letter to The Honorable Maryellen Noreika from RSA Protective Technologies LLC regarding Submission of Joint Proposed Scheduling Order - re 12 Oral Order,. (Attachments: # 1 Text of Proposed Order Joint Proposed Scheduling Order)(Casarino, Marc) (Entered: 04/22/2020)

Letter to The Honorable Maryellen Noreika from Martina Tyreus Hufnal regarding Related Cases - re 11 Letter. (Hufnal, AnnaMartina) (Entered: 04/23/2020)

Order Setting Teleconference

Add Attorneys - PHV only

ANSWERING BRIEF in Opposition re 15 MOTION to Dismiss Counterclaim filed by RSA Protective Technologies, LLC.Reply Brief due date per Local Rules is 5/5/2020. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Casarino, Marc) (Main Document 20 replaced on 4/29/2020) (dlw). (Entered: 04/28/2020)

- CORRECTING ENTRY

Telephone Conference

CORRECTING ENTRY: D.I. 20 has been replaced on the docket with a version of the brief that complies with this Court's Local Rules and Judge Noreika's Preferences and Procedures. The footnotes now appear in 12 point type. (dlw)

REPLY BRIEF re 15 MOTION to Dismiss Counterclaim filed by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 05/05/2020)

Joint PROPOSED ORDER for case scheduling by RSA Protective Technologies, LLC. (Attachments: # 1 cover letter)(Casarino, Marc) (Entered: 05/06/2020)

Oral Order

REQUEST for Oral Argument by Ameristar Perimeter Security Inc. re 15 MOTION to Dismiss Counterclaim. (Hufnal, AnnaMartina) (Entered: 05/12/2020)

PROPOSED ORDER // Scheduling Order re 23 Oral Order by RSA Protective Technologies, LLC. (Attachments: # 1 Exhibit A)(Casarino, Marc) Modified on 5/15/2020 (dlw). (Entered: 05/13/2020)

Case Referred to Mediation - Magistrate Judge only

Oral Order

Pro Hac Vice Attorney Tim Rawson, Jeff Burton, Chris Marchese and Christopher R. Kirby for Ameristar Perimeter Security Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (mal)

Add Attorneys - PHV only

NOTICE OF SERVICE of RSA Protective Technologies, LLC's First Set of Requests for Production of Documents to Ameristar Perimeter Security USA, Inc. (NOS. 1-35) filed by RSA Protective Technologies, LLC.(Casarino, Marc) Modified on 6/5/2020 (dlw). (Entered: 06/05/2020)

NOTICE OF SERVICE of Plaintiff Ameristar Perimeter Security USA Inc.'s Initial Disclosures filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 06/16/2020)

Order Setting Teleconference

Oral Order

Letter to The Honorable Maryellen Noreika from Martina Tyreus Hufnal regarding Proposed Protective Order - re 31 Order Setting Teleconference,,. (Attachments: # 1 Text of Proposed Order)(Hufnal, AnnaMartina) (Entered: 06/23/2020)

Letter to The Honorable Judge Maryellen Noreika from Marc S. Casarino, Esquire regarding post-grant prosecution bar. (Casarino, Marc) (Entered: 06/24/2020)

Telephone Conference

PROPOSED ORDER Protective Order by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 06/30/2020)

PROTECTIVE ORDER. Signed by Judge Maryellen Noreika on 6/30/2020. (dlw) (Entered: 06/30/2020)

NOTICE OF SERVICE of RSA Protective Technologies, LLC's Response to Ameristar Perimeter Security USA Inc.'s First Set of Requests for the Production of Documents and Things (Nos. 1-42) filed by RSA Protective Technologies, LLC. (Casarino, Marc) Modified on 7/2/2020 (dlw). (Entered: 07/02/2020)

NOTICE OF SERVICE of RSA Protective Technologies, LLC's Response to Ameristar Perimeter Security USA Inc.'s First Set of Request for Interrogatories (Nos. 1-11) filed by RSA Protective Technologies, LLC. (Casarino, Marc) Modified on 7/2/2020 (dlw). (Entered: 07/02/2020)

NOTICE OF SERVICE of Plaintiff Ameristar Perimeter Security USA Inc.'s Second Set of Interrogatories to RSA Protective Technologies, LLC (No. 12) filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 07/08/2020)

NOTICE OF SERVICE of Plaintiff Ameristar Perimeter Security USA Inc.'s Objections and Responses to RSA Protective Technologies, LLC's First Set of Requests for Production of Documents to Ameristar (Nos. 1-35) filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 07/08/2020)

NOTICE OF SERVICE of Plaintiff Ameristar Perimeter Security USA Inc.'s Production to RSA Protective Technologies, LLC filed by Ameristar Perimeter Security Inc..(Hufnal, AnnaMartina) (Entered: 07/21/2020)

PROPOSED ORDER for Discovery, including Discovery of Electronically Stored Information re 26 Scheduling Order,,,, by RSA Protective Technologies, LLC. (Attachments: # 1 Exhibit Schedule A to Proposed Order for Discovery)(Casarino, Marc) (Entered: 07/28/2020)

ORDER FOR DISCOVERY, INCLUDING DISCOVERY OF ELECTRONICALLY STORED INFORMATION ("ESI"). Signed by Judge Maryellen Noreika on 7/28/2020. (dlw) (Entered: 07/28/2020)

NOTICE OF SERVICE of Initial Claim Chart to Barrier1 filed by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 08/06/2020)

NOTICE OF SERVICE of Initial Claim Chart to Ameristar filed by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 08/06/2020)

NOTICE OF SERVICE of Response to Ameristar Perimeter Security USA Inc.'s Second Set of Request for Interrogatories re 39 Notice of Service filed by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 08/06/2020)

NOTICE OF SERVICE of Response to Barrier1 Systems, Inc.'s Second Set of Interrogatories filed by RSA Protective Technologies, LLC.(Casarino, Marc) (Entered: 08/06/2020)

Letter to The Honorable Maryellen Noreika from Martina Tyreus Hufnal regarding Parties Request to Stay Litigation Pending Inter Partes Review - re 26 Scheduling Order,,,,. (Hufnal, AnnaMartina) (Entered: 09/11/2020)

Oral Order

Joint STIPULATION to Stay and Amend Schedule re 26 Scheduling Order,,,, by Ameristar Perimeter Security Inc.. (Hufnal, AnnaMartina) (Entered: 09/22/2020)

MOTION for Pro Hac Vice Appearance of Attorney Laura A. Chubb - filed by RSA Protective Technologies, LLC. (Attachments: # 1 Certification, # 2 Text of Proposed Order)(Casarino, Marc) (Entered: 09/25/2020)

SO ORDERED re 52 MOTION for Pro Hac Vice Appearance of Attorney Laura A. Chubb filed by RSA Protective Technologies, LLC. ORDERED by Judge Maryellen Noreika on 9/28/2020. (dlw)

RSA Protective Technologies, LLC

Ameristar Perimeter Security Inc.