Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.813 Page 1 of 14
`
`Luke L. Dauchot (SBN 229829)
` luke.dauchot@kirkland.com
`Alexander F. MacKinnon (SBN 146883)
` alexander.mackinnon@kirkland.com
`Nimalka R. Wickramasekera (SBN 268518)
` nimalka.wickramasekera@kirkland.com
`Kirkland & Ellis LLP
`333 South Hope Street
`Los Angeles, California 90071
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
`
`Attorneys for Plaintiffs/Counterclaim
`Defendants
`
`
`
`Todd G. Miller (SBN 163200)
`miller@fr.com
`Michael A. Amon (SBN 226221)
`amon@fr.com
`Fish & Richardson P.C.
`12390 El Camino Real
`San Diego, California 92130
`Phone: 858-678-5070/Fax: 858-678-5099
`
`Frank E. Scherkenbach (SBN 142549)
`scherkenbach@fr.com
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, Massachusetts 02210-1878
`Phone: 617-542-5070/Fax: 617-542-8906
`
`Keeley I. Vega (SBN 259928)
`kvega@fr.com
`Neil A. Warren (SBN 272770)
`warren@fr.com
`Fish & Richardson P.C.
`500 Arguello St., Ste. 500
`Redwood City, California 94063
`Telephone: 650-839-5070/Fax: 650-839-5071
`
`Attorneys for Defendant/Counterclaimant
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`CASE NO. 3:12-cv-02738-CAB (MDD)
`
`JOINT DISCOVERY PLAN
`PURSUANT TO FED. R. CIV. P. 26(f)
`
`
`
`Date: February 21, 2013
`Time: 9:30 a.m.
`Location: Hon. Dembin’s Chambers
`Judge: Hon. Mitchell D. Dembin
`
`)))))))))))))
`
`))
`
`WARSAW ORTHOPEDIC, INC.; MEDTRONIC
`SOFAMOR DANEK U.S.A., INC.; MEDTRONIC
`PUERTO RICO OPERATIONS CO.; and
`OSTEOTECH, INC.,
`
`Plaintiffs,
`
`vs.
`
`NUVASIVE, INC.,
`
`Defendant.
`
`AND RELATED COUNTERCLAIMS
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`JOINT DISCOVERY PLAN
`
`
`
`CASE NO: 3:12-CV-02738
`
`

`

`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.814 Page 2 of 14
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`Plaintiffs Warsaw Orthopedic, Inc.; Medtronic Sofamor Danek U.S.A., Inc.; Medtronic
`
`Puerto Rico Operations Co.; and Osteotech, Inc. (collectively “Plaintiffs”) and defendant NuVasive,
`
`Inc. (“NuVasive”) hereby jointly submit the following discovery plan for the above-captioned matter
`
`pursuant to Fed. R. Civ. P. 26(f), Patent Local Rule 2.1, and Chamber Rule IV.B. As required by
`
`Rule 26(f)(1), the parties have met and conferred in an effort to reach agreement on this report. A
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`short explanatory statement from each party is included on matters where the parties differ.
`
`Proposed Discovery Schedule
`
`A.
`
`
`EVENT
`Fact Discovery Opens
`
`PLAINTIFFS’ PROPOSAL
`2/1/13 (Fed. R. Civ. P. 26(d))
`
`Parties to serve initial
`disclosures
`Parties to serve Disclosure of
`Asserted Claims and
`Preliminary Infringement
`Contentions (Patent L.R. 3.1)
`Parties to serve Preliminary
`Invalidity Contentions (Patent
`L.R. 3.3)
`Parties to exchange Preliminary
`Claim Construction and
`Extrinsic Evidence (Patent L.R.
`4.1)
`Parties to exchange Responsive
`Claim Constructions (Patent
`L.R. 4.1)
`Parties to file Joint Claim
`Construction Chart, Joint Claim
`Construction Worksheet, and
`Joint Hearing Statement (Patent
`L.R. 4.2)
`Last day to request leave to
`amend/supplement pleadings
`Claim construction discovery
`cutoff (Patent L.R. 4.3)
`Opening claim construction
`briefs due (Patent L.R. 4.4.a)
`
`2/14/13
`
`3/7/13
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`5/6/13
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`5/20/13
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`6/3/13
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`6/17/13
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`7/1/13
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`7/15/13
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`7/29/13
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`NUVASIVE’S PROPOSAL
`12/16/13 (or 7 days after claim
`construction hearing)
`2/14/13
`
`6/7/13
`
`8/6/13
`
`8/20/13
`
`9/3/13
`
`9/17/13
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`8/22/14
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`10/15/13
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`10/29/13
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`JOINT DISCOVERY PLAN
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`1
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`CASE NO: 3:12-CV-02738
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`

`

`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.815 Page 3 of 14
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`8/12/13
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`11/12/13
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`8/30/13 (or per Court’s
`calendar) (Patent L.R. 2.1.a.2)
`30 days after claim construction
`order
`
`12/9/13 (Patent L.R. 4.5)
`
`30 days after claim construction
`order
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`50 days after claim construction
`order
`
`50 days after claim construction
`order
`
`Responsive claim construction
`briefs due (Patent L.R. 4.4.b)
`Claim construction and tutorial
`hearing (Patent L.R. 2.1)
`Parties to serve final
`infringement contentions based
`on claim construction order
`(Patent L.R. 3.6.a)
`Parties to serve final invalidity
`contentions based on claim
`construction order (Patent L.R.
`3.6.b)
`Parties to exchange list of
`expert witnesses expected to be
`called at trial
`Parties to exchange list of
`rebuttal expert witnesses
`expected to be called at trial
`Fact discovery cut-off
`
`Initial expert reports (by party
`with burden of proof on each
`issue)
`Rebuttal expert reports
`
`Reply Expert Reports (for
`secondary considerations of
`non-obviousness)
`Expert discovery cut-off
`
`10/15/13
`
`10/29/13
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`11/18/13
`
`12/16/13
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`1/13/14
`
`1/27/14
`
`2/24/14
`
`8/1/14 (or 3 weeks before the
`close of fact discovery)
`
`8/15/14 (or 1 week before the
`close of fact discovery
`
`8/22/14 (8 months after
`NuVasive proposes that fact
`discovery opens)
`9/22/14 (or 30 days after
`NuVasive proposes that fact
`discovery closes)
`10/22/14 (or 30 days after
`opening expert reports)
`11/5/14 (or 14 days after
`rebuttal expert reports)
`
`12/26/14 (4 months after fact
`discovery closes)
`1/23/14 (or 30 days after expert
`discovery cut-off)
`4/6/15
`
`Dispositive motion cut-off
`
`3/10/14
`
`Pretrial conference
`
`No changes will be made in timing, form, or requirement for 26(a) disclosures.
`Plaintiffs’ Statement Concerning Their Proposed Schedule
`
`4/7/14
`
`On August 17, 2012, Plaintiffs filed this case in the Northern District of Indiana against
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`Defendant, NuVasive, Inc., alleging infringement of three of Plaintiffs’ patents by NuVasive’s
`
`manufacture and sale of certain medical devices and procedures used in spinal surgery. (Dkts. 1 &
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`17.) On November 8, 2012, the Northern District of Indiana granted NuVasive’s motion to transfer
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`JOINT DISCOVERY PLAN
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`2
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.816 Page 4 of 14
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`this case to the Southern District of California. (Dkt. 32.) With respect to the dates on which the
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`parties differ, Plaintiffs have proposed a schedule to resolve efficiently its patent infringement claims
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`that have been pending for nearly six months. (Dkts. 1 & 17.) Under Plaintiffs’ proposed schedule,
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`the parties would complete fact discovery by November 18, 2013 and expert discovery by February
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`24, 2014, and would participate in the pretrial conference on April 7, 2014. Plaintiffs’ proposed
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`schedule would allow this case to be scheduled for trial within 24 months.
`
`In contrast, NuVasive has proposed a schedule that would be inefficient and is contrary to the
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`Federal and Local Rules. See Fed. R. Civ. P. 26(d); Patent L.R. 2.5. Under NuVasive’s proposal,
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`fact discovery would not even begin until after the claim construction hearing. There is no reason
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`why fact discovery cannot be conducted concurrently with claim construction briefing, as is typically
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`done in patent cases and has been done in another patent case between the parties before this Court
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`(Warsaw Orthopedic, Inc. v. NuVasive, Inc., Case No. 3:08-cv-01512-CAB-MDD). Indeed, the
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`Local Rules prohibit a party from objecting to discovery requests as premature in light of the
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`timetable for claim construction provided by these rules except where the requests seek to elicit a
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`party’s claim construction position, a comparison of the asserted claims against the accused products
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`or prior art, or the identification of opinions of counsel relating to allegations of willful infringement.
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`Patent L.R. 2.5.
`
`Furthermore, NuVasive has proposed a schedule that runs counter to the arguments it made
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`to the Northern District of Indiana to support its transfer motion. There, NuVasive argued that trial
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`in California would not be slower than trial in Indiana because “complex patent cases of more than
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`two patents will be scheduled for trial within 24 months” in this district. (Dkt. 30 at 9, n. 5.) Now,
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`however, NuVasive proposes a schedule with a trial date well beyond the two-year mark. NuVasive
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`also proposes to extend the last day to request leave to amend or supplement the pleadings to
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`August 22, 2014 (to coincide with its proposed close of fact discovery), presumably so that it may
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`take discovery on an unpleaded inequitable conduct defense. Plaintiffs submit that their proposed
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`deadline of July 1, 2013 to amend or supplement pleadings is nearly one year from the filing of the
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`Complaint and gives sufficient time for NuVasive to conduct any necessary investigation or
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`JOINT DISCOVERY PLAN
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`3
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.817 Page 5 of 14
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`discovery before amendment. NuVasive’s proposal would also leave the parties with no time to take
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`discovery on any claims or defenses raised in the amended or supplemented pleadings.
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`NuVasive now asserts no fewer than four separate reasons why it believes this case, which
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`has been pending for nearly seven months, should be further delayed: 1) the Federal Circuit has yet
`
`to rule on the appeal of the Phase I jury verdict between the parties; 2) delaying this case would
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`supposedly promote settlement; 3) NuVasive needs more time in order to assert its own patents; and
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`4) bifurcating damages and willfulness would allegedly permit the parties to focus their discovery
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`efforts. Each of these reasons fails. First, with the exception of the pending ongoing royalty issue,
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`this Court has already decided the issues relating to liability and damages for the Phase I patents.
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`There is no reason to assume (as NuVasive does) that the Court decided these issues incorrectly. In
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`any event, a Federal Circuit appeal will likely be concluded before the trial in this matter, under
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`either party’s proposed schedule. Second, Plaintiffs disagree that delay would promote settlement
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`and instead believe the opposite to be true. Third, NuVasive has had nearly seven months since this
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`case was filed to consider asserting its own patents and has failed to identify even one that it intends
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`to assert. Finally, bifurcation of damages and willfulness, as well as all discovery relevant to those
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`issues, would be inefficient and burdensome given the overlap of those issues with other fact issues
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`in this case. This would lead to duplicative fact and expert depositions, and trial testimony, and
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`would not promote judicial economy. Accordingly, Plaintiffs propose that the Court adopt its
`
`proposed schedule as set forth above and in accordance with the Local Rules.
`
`NuVasive’s Statement Concerning Its Proposed Schedule
`
`The Court should stay these proceedings until the Federal Circuit has ruled on the appeal of
`
`related Case No. 08-CV-1512 (“Phase 1”). Guidance from the Federal Circuit will help define the
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`contours of this litigation and may help the parties reach a global resolution eliminating the need for
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`this suit altogether. In the event the Court chooses not to stay, NuVasive proposes a phased
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`approach to litigating this case – an approach that provides the parties time to resolve their disputes
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`informally before being compelled to engage in expensive litigation. If the parties are unable to
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`resolve their disputes through ENE and/or mediation within 90 days, then NuVasive would assert its
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`JOINT DISCOVERY PLAN
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.818 Page 6 of 14
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`own set of patents and the parties would proceed through preliminary contentions and claim
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`construction briefing in accord with the Patent Local Rules. Then, with the benefit of the Court’s
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`claim construction complete, liability fact discovery would begin, allowing the parties to focus their
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`discovery efforts. (For the reasons discussed below, NuVasive proposes bifurcating damages and
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`willfulness to allow time for the Phase 1 appeal to be decided by the Federal Circuit.) Finally,
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`toward the end of liability fact discovery, the parties would be permitted to amend their pleadings to
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`assert any claims of inequitable conduct. This timing under NuVasive’s proposal is also appropriate
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`given the number of patents and technologies that would be at issue.
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`In contrast, Plaintiffs seek to be rewarded for engaging in forum shopping (Plaintiffs first
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`brought suit on their three asserted patents in the Northern District of Indiana rather than abiding by
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`the sequencing that has governed the litigation between the parties from the outset) with an
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`unreasonably expedited pre-trial procedure, which would have this case going to trial less than 18
`months from the date the case was transferred to and effectively filed in this Court, and which makes
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`no accommodation for NuVasive to assert its own patents. To date, nothing substantive has
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`occurred in the case other than the grant of NuVasive’s motion to transfer to this Court on November
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`8, 2012. Indeed, pursuant to Court order, NuVasive was not even required to respond to Plaintiffs’
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`complaint until November 30, 2012. See D.I. 26. Plaintiffs’ proposal would force NuVasive to
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`escalate the litigation by asserting its patents now rather than allowing for meaningful settlement
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`discussions to occur. While Plaintiffs complain of delay under NuVasive’s proposal, any delay was
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`of Plaintiffs’ own making as the case was transferred back to this Court from Indiana. Moreover,
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`Plaintiffs suffer no prejudice from the orderly, phased resolution of this case given the Court’s prior
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`ruling regarding the impropriety of injunctive relief.
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`There are other efficiencies to NuVasive’s phased approach as well. Most importantly, the
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`Federal Circuit has not considered Warsaw’s damages theories or critical liability issues in Phase 1
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`which overlap significantly with the claims Plaintiffs seek to pursue in this case. If NuVasive’s
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`position on damages or liability is vindicated on appeal, the complexion of this litigation will change
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`substantially and, NuVasive believes, the chances of settlement will be greatly increased. Under
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`JOINT DISCOVERY PLAN
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`CASE NO: 3:12-CV-02738
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`

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`Plaintiffs’ rushed approach, the parties and the Court may not benefit from the Federal Circuit’s
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`guidance before another trial is had on Plaintiffs flawed theories.
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`Finally, with regard to the patents asserted by Plaintiffs here, one (the ‘430) is involved in
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`inter partes reexamination proceedings before the Patent Office, which in its initial office action has
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`rejected all claims on multiple grounds. Under the procedures argued for by Warsaw itself and
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`ordered by the Court in Phase 1, proceedings on that patent should therefore be stayed pending
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`reexam, regardless of the other considerations outlined above.
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`B.
`
`Scope of Discovery
`1.
`Subjects of Discovery
`
`At this time, the parties anticipate conducting discovery on the following issues, but reserve
`
`the right to supplement this list as further information becomes available:
`• The design, development, testing, and manufacturing of the products alleged to
`infringe the patents-in-suit;
`• Marketing, sales, and financial material for the products alleged to infringe the
`patents-in-suit;
`• The design, development, testing, and manufacturing of the embodying and
`competing products for the patents-in-suit;
`• Marketing, sales, and financial material for the embodying and competing products of
`the patents-in-suit;
`• Conception and reduction to practice of the patents-in-suit;
`• Prosecution of the patents-in-suit, including relevant prior art;
`• Alleged infringement of the patents-in-suit;
`• Alleged invalidity of the patents-in-suit;
`• Alleged unenforceability of and inequitable conduct related to the patents-in-suit; and
`• Monetary and equitable relief relating to the alleged infringement of the patents-in-
`suit.
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`Additionally, due to the technical complexity of the case, the parties will need to conduct
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`JOINT DISCOVERY PLAN
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.820 Page 8 of 14
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`discovery relevant to expert opinions regarding infringement, invalidity, unenforceability, and
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`damages. Daubert motions may be filed for each of these issues.
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`Plaintiffs do not believe that discovery of any of the foregoing topics should be phased or
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`otherwise limited except as described herein. NuVasive believes that damages and willfulness, as
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`well as all discovery relevant to those issues, should be bifurcated until after a determination of
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`liability. See Gen. Order 625, Amended Pat. L. R. 2.1(b)(3).
`2.
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`Changes to Limitations on Discovery
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`Plaintiffs propose that each party may take up to 100 hours of fact depositions, including any
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`Rule 30(b)(6) depositions.
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`NuVasive proposes that each party may take up to 125 hours of fact depositions, including
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`any Rule 30(b)(6) depositions.
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`The parties agree that discovery of expert materials be limited to final expert reports and
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`materials relied upon in connection with those reports, and that communications with counsel and
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`draft reports not be discoverable.
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`Plaintiffs propose that all other discovery will be subject to the limits prescribed by this
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`Court, the Local Rules, and the Federal Rules of Civil Procedure.
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`NuVasive proposes that each side be allowed to serve up to 35 interrogatories, and that each
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`side be allowed to propound up to 50 requests for admissions given the complexity of the case and
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`that NuVasive will assert its own patents if the parties are unable to resolve this dispute. Otherwise,
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`NuVasive proposes that other discovery be subject to the limits prescribed by this Court, the Local
`
`Rules, and the Federal Rules of Civil Procedure.
`3.
`
`Discovery of Electronically Stored Information
`
`The parties have agreed that electronically stored information (“ESI”) may be collected by
`
`performing reviews of reasonably accessible data sources. Reasonably accessible sources of ESI
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`include active e-mail accounts, data associated with e-mail accounts that are no longer active but are
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`reasonably accessible (for custodians identified who are no longer employed or associated with the
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`party), e-mail stored in an email vault system, shared network drives and other live servers,
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`JOINT DISCOVERY PLAN
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`CASE NO: 3:12-CV-02738
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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.821 Page 9 of 14
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`workstation or laptop hard drives, external hard drives, and media such as CDs or DVDs. Neither
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`party will retrieve data from the following sources (which are not reasonably accessible):
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`Blackberries, iPhones, or PDAs; Instant Messages (IM); voicemails; backup tapes and systems
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`created for the sole purpose of disaster recovery that are substantially duplicative of data that is more
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`accessible elsewhere; residual, deleted, fragmented, damaged, or temporary data (e.g., data stored in
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`a computer’s RAM); or encrypted data/password protected files, where the key or password cannot
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`be ascertained after reasonable efforts. It is Plaintiffs’ position that backup tapes and systems
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`created for the purpose of disaster recovery are not readily accessible, and therefore neither party
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`shall retrieve data from these sources. NuVasive disagrees. Neither party contemplates taking
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`forensic images of hard drives or decommissioned computer hardware at the present time. The
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`parties further agree that neither party need deviate from the practices it normally exercises with
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`regard to preservation of backup tapes and systems created for back-up or disaster recovery purposes
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`(i.e., recycling of back-up tapes is permitted).
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`The parties will conduct reviews and produce documents, subject to any applicable
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`objections, based on the scope of the parties’ respective document requests. The parties will meet
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`and confer regarding limiting electronic searches to a specific number of custodians and search
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`terms. Each party reserves the right to seek further limits if the initial search results in excessive
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`volume or cost, and if no agreement can be reached, to seek a protective order from the Court.
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`The parties have agreed to meet and confer regarding production of information relating to
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`products (e.g., product specifications, design history files kept for regulatory purposes, product
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`descriptions, patient education information, product samples, product drawings, bills of materials)
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`and patents (e.g., prosecution history files, prior art). The parties will attempt to agree on the scope
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`of production of such documents without regard to specific custodians.
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`With respect to productions, each party will initially produce all ESI in image format. Each
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`individual document based on an electronic file shall be accompanied by a corresponding text file
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`containing the searchable text for that document. The OCR text files should be created on a
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`document level and be named to correspond to the first page Bates number of the corresponding
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`JOINT DISCOVERY PLAN
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`8
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.822 Page 10 of 14
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`document being produced (e.g. ABC000001.txt). Each production set of ESI shall be accompanied
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`by a load file in a format conducive to the requesting party’s litigation support application database.
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`The load file shall unitize the production images into their logical units and capture select document
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`information, to the extent appropriate, including:
`(1)
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`Field information: production begin number, production end number,
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`production begin attachment, production end attachment, custodian, and page
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`count.
`(2) With respect to email, metadata information including: to, from, cc/bcc, sent
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`date, time sent, received date, received time, email subject, parent ID, and
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`attachment ID.
`(3) With respect to electronic documents: the original file name, author, date
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`created, date last modified, time created, and time last modified.
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`The parent-child relationships between documents and their attachments shall be maintained.
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`If the ESI is in a format that cannot be readily converted to an image format, such as spreadsheets
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`(XLS, CVS, etc…), the file will be produced in its native format as well, except for redacted files.
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`The parties reserve the right to request native format versions of other ESI during discovery where
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`there is a need to sort, filter or organize the information associated with the ESI. Due to the nature
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`or complexity of storage of some ESI (e.g., ESI in proprietary applications), conversion to image and
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`searchable text may be overly burdensome. The parties reserve the right to provide this ESI in a
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`reasonable format.
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`Certain types of files such as system, program, and legacy files are not amenable to
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`conversion into TIFF format. In general, these types of files will not be collected; however, when
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`they are present in the collection the files will not be converted into TIFF format but will be
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`represented in the form of a placeholder TIFF image. These files may be produced in a reasonably
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`usable form upon a showing of the need for and relevance of the file. Other files may not be able to
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`be converted to TIFF image due to password protection, encryption or corruption (for example). If
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`reasonable efforts to obtain useful TIFF images of these files are unsuccessful, these files will be
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`JOINT DISCOVERY PLAN
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.823 Page 11 of 14
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`represented in the form of a placeholder TIFF image, and the parties may discuss an alternative form
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`of production upon a showing of the need for and relevance of the file.
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`Paper documents will be produced as black-and-white single-page OCR’d TIFFs, with
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`accompanying litigation support files.
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`Plaintiffs propose that documents previously produced by the parties in Case No. 3:08-cv-
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`01512-CAB that are responsive to requests propounded in this case shall be reproduced in the same
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`form as previously produced. NuVasive proposes that documents previously produced by the parties
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`in Case No. 3:08-cv-01512-CAB that are responsive to requests propounded in this case shall be
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`reproduced and shall be in a form compliant with the above requirements.
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`If a party inadvertently discloses information subject to the attorney-client privilege, work
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`product immunity, a legal prohibition against disclosure, or other privilege or immunity, such
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`disclosure shall not constitute a waiver of the applicable privilege or legal prohibition against
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`disclosure if, after becoming aware of the inadvertent disclosure, the producing party provides
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`prompt notice of the claimed inadvertent disclosure to each receiving party. After being notified, a
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`party must promptly return or destroy the specified information and any copies it has; must not use
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`or disclose the information until the claim is resolved; and must take reasonable steps to retrieve the
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`information if the party disclosed it before being notified. To the extent the claimed inadvertent
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`disclosure is subject to challenge, the receiving party may retain a single copy of the document for
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`presentation to the Court under seal within ten days of discovering the inadvertent disclosure for a
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`determination of the claim. The producing party must preserve the information until the claim is
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`resolved and must not use the information for any other purpose until the Court rules on the claim,
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`and following the ruling only to the extent the allowed in the Court’s ruling. Inadvertent production
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`will be further addressed in the protective order.
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`The parties agree that all documents shall be produced in a legible form where the original is
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`in legible form. NuVasive proposes that documents produced in prior litigations shall be reproduced
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`from the original documents. Color documents shall be produced as color images where grey scale
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`images result in the document becoming illegible (e.g., document output through Relativity) and in
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`JOINT DISCOVERY PLAN
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.824 Page 12 of 14
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`any event at the reasonable request of the receiving party.
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`The parties reserve the right to seek shifting or sharing of certain discovery costs, including
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`vendor and attorney fees, in appropriate circumstances.
`4.
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`Privilege and Protective Order Issues
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`Discovery in this case will likely require production of confidential and/or proprietary
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`information. The parties intend to work together to stipulate to a protective order to be filed in due
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`course, including a stipulation regarding preserving the right to assert privilege on inadvertently
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`produced documents. With respect to documents withheld on the basis of privilege, the parties will
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`identify any such documents on privilege logs to be exchanged at a mutually agreeable time. The
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`parties agree that privileged documents generated after the filing of this lawsuit need not be logged.
`5.
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`Discovery Enabling the Parties to Make a Reasonable Settlement
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`Evaluation
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`Plaintiffs believe that preliminary infringement and invalidity contentions as provided in the
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`claim construction procedure may help the parties in the settlement process. NuVasive disagrees.
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`C.
`Claim Construction
`The parties do not anticipate presenting live testimony at the claim construction hearing.
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`Additional limits on discovery related to claim construction are not needed, except to the extent
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`discussed herein or prescribed by the Patent Local Rules.
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`D.
`Other Orders or Issues
`The parties are not aware of any other issues at this time.
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`DATED: February 14, 2013
`
`Respectfully submitted,
`
`
`
` /s/ Nimalka R. Wickramasekera
`Nimalka R. Wickramasekera
`KIRKLAND & ELLIS LLP
`
`Attorneys for Plaintiffs/Counterclaim Defendants
`WARSAW ORTHOPEDIC, INC.; MEDTRONIC
`SOFAMOR DANEK USA, INC.; MEDTRONIC
`PUERTO RICO OPERATIONS CO.; AND
`OSTEOTECH, INC.
`
`
`JOINT DISCOVERY PLAN
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`11
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.825 Page 13 of 14
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`DATED: February 14, 2013
`
`Respectfully submitted,
`
` /s/ Michael A. Amon
`Michael A. Amon
`FISH & RICHARDSON P.C.
`
`Attorneys for Defendant and Counterclaimant
`NUVASIVE, INC.
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`JOINT DISCOVERY PLAN
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`12
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`CASE NO: 3:12-CV-02738
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`

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`Case 3:12-cv-02738-CAB-MDD Document 49 Filed 02/14/13 PageID.826 Page 14 of 14
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`CERTIFICATE OF SERVICE
`I am employed in the County of Los Angeles; I am over the age of eighteen years and not a
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`party to the within entitled action; my business address is 333 South Hope Street, Los Angeles,
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`California 90071.
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`On February 14, 2013, true and correct copies of the foregoing document were served to all
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`counsel of record who are deemed to have consented to electronic service via the Court’s CM/ECF
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`system per Civil Local Rule 5.4. Any other counsel of record will be served by electronic mail,
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`facsimile, U.S. Mail and/or overnight delivery.
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`
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`FEDERAL: I declare under penalty of perjury under the laws of the United States of
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`America that the foregoing is true and correct.
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`Executed on February 14, 2013, in Los Angeles, California.
`
` /s/ Nimalka R. Wickramasekera
` Nimalka R. Wickramasekera
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`CERTIFICATE OF SERVICE
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`
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`CASE NO: 3:12-CV-02738
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`