Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 1 of 25
`
`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
`
`Plaintiffs,
`
`
`
`v.
`
`
`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
`
`
`
`
`
`THE UNITED STATES OF AMERICA,
`
`
`
`
`
`
`
`
`
`
`
`
`C.A. No. 19-859-RTH
`
`
`
`
`
`Defendant.
`
`
`JOINT PRELIMINARY STATUS REPORT
`
`
`
`
`
`Plaintiff e-Numerate Solutions, Inc. and e-Numerate, LLC and Defendant the United
`
`States of America (the “Government”) respectfully submit this Joint Preliminary Status Report
`
`(“JPSR”) pursuant to Section III of Appendix A of the Rules of the United States Court of Federal
`
`Claims (“RCFC”).
`
`(a)
`
`Does the Court have jurisdiction over the action?
`
`Plaintiff submits that the Court has jurisdiction over this action. Defendant agrees that has
`
`jurisdiction to hear a claim pursuant to 28 U.S.C. §1498.
`
`Plaintiffs’ Further Position
`
`Plaintiff notes Defendants’ reference to 28 U.S.C. § 2501. Plaintiffs do not concede that
`
`this provision bars any claim under any of the 7 patents-in-suit. Any such determination under 28
`
`U.S.C. § 2501 is governed by the statute and the judicial interpretations of the statute. See, e.g.,
`
`Ross-Himes Designs, Inc. v. United States, 139 Fed. Cl. 444 (C.F.C. 2018).
`
`Defendants’ Further Position
`
`Defendant further notes that under 28 U.S.C. § 2501, to the extent that any version of the
`
`accused technology used by or for Defendant occurred before six years prior to the filing of the
`
`

`

`
`
`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 2 of 25
`
`original complaint, June 11, 2013, this Court would not have jurisdiction with respect to the use
`
`of those versions of the accused technology. Defendant submits that the burden to prove
`
`jurisdiction for each Count remains with Plaintiff and the Government retains the right to move
`
`for dismissal based on lack of jurisdiction based on facts uncovered during the course of its
`
`investigation and discovery.
`
`Should the case be consolidated with any other case and, if so, why?
`
`(b)
`
`The parties agree that the case should not be consolidated with any other case.
`
`(c)
`
`Should trial of liability and damages be bifurcated and, if so, why?
`
`The parties disagree on this section.
`
`Plaintiffs’ Further Position
`
`Plaintiff submits that neither discovery nor trial should be bifurcated. Discovery should not
`
`be bifurcated because of issue overlap between, for example, liability and damages. Commercial
`
`success discovery for purposes of 35 U.S.C. § 103 frequently seeks the same or similar information
`
`as damages discovery. Bifurcation of discovery and/or trial is also prejudicial to Plaintiffs. The
`
`Government caused the filing of this litigation via its intervention in the District of Delaware (“the
`
`Delaware Action”) via the Statement of Interest it filed. The Government should not be able to
`
`force serial trials on the Plaintiffs and the attendant delays and expense via bifurcation requests.
`
`The Government has essentially unlimited resources to try cases and Plaintiffs do not.
`
`Plaintiffs further request that any limitation on claim construction involving representative
`
`claims should be held in conjunction with the Government having to stipulate to representative third
`
`party products for liability purposes. In any event, it is premature to discuss limitations on claim
`
`construction until the parties make the exchanges set forth in this Court’s Patent Rules and Judge
`
`Albright’s scheduling order.
`
`
`
`
`2
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 3 of 25
`
`Defendant’s Further Position
`
`
`
`Defendant respectfully requests that any decision on bifurcation be deferred until after this
`
`Court has rendered a Markman decision, at which point bifurcation to allow an initial stage directed
`
`to validity or liability may be appropriate. Defendant also proposes that the parties agree to limit
`
`claim construction briefing with respect to no more than six representative claims, from which
`
`relevant terms can be determined. An independent consideration of validity in a first trial may
`
`provide a substantial savings in time and expense for the parties, which may promote settlement.
`
`The Government’s proposed approach is consistent with several § 1498(a) actions brought in this
`
`Court. See, e.g., SecurityPoint Holdings, LLC v. United States, No. 11-268C, Dkt. 12 (Fed. Cl.);
`
`Ross-Hime Designs Inc. v. United States, No. 11-201C, Dkt. 290 at 2 (Fed. Cl.) (“trial on
`
`liability”); Acme World Enterprises, Inc. v. United States, 17-843C, Dkt. 32 (Fed. Cl.)
`
`(d)
`
`Should further proceedings in the case be deferred pending consideration of
`another case before this court or any other tribunal and, if so, why?
`
`This provision is not applicable to the pending matter.
`
`(e)
`
`In cases other than tax refund actions, will a remand or suspension be sought
`and, if so, why and for how long?
`
`This section is not applicable to the pending matter.
`
`(f) Will additional parties be joined? If so, the parties shall provide a statement
`describing such parties, their relationship to the case, the efforts to effect
`joinder, and the schedule proposed to effect joinder.
`
`The parties do not anticipate that any additional parties will be joined in this action.
`
`(g)
`
`Does either party intend to file a motion pursuant to RCFC 12(b), 12(c), or 56
`and, if so, what is the schedule for the intended filing?
`
`Plaintiff’s Position:
`
`Plaintiffs do not anticipate filing a summary judgment motion prior to the end of fact and
`
`expert discovery. Plaintiffs submit that early resolution of any issue on summary judgment
`
`3
`
`

`

`
`
`
`
`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 4 of 25
`
`including 35 U.S.C. § 101 is inappropriate and not amenable to resolution under CFC Rule 56.
`
`Disputed factual issues must be viewed in the light most favorable to Plaintiffs for any motion
`
`filed by the Government.
`
`Defendant’s Position:
`
`Defendant is considering whether to file an RCFC 56 motion contending that the asserted
`
`patents are invalid as “directed to” ineligible subject matter under 35 U.S.C. § 101. This Court
`
`already held, in its August 7, 2020 Order ruling on the Government’s RCFC 12(b)(6) motion to
`
`dismiss, that “at step one, claim 2 of the '355 patent is directed to the abstract idea of applying a
`
`macro to tagged numbers and reporting the results on a computer.” Dkt. No. 27 at 26.
`
`Defendant is also considering filing a RCFC 56 motion relating to non-infringement and/or
`
`invalidity of one or more of the asserted patents. Defendant will be better able to assess whether
`
`its non-infringement and/or invalidity defenses are ripe for summary judgment at a later stage in
`
`the case, including after any claim construction dispute is resolved.
`
`(h) What are the relevant factual and legal issues?
`
`This is an action under 28 U.S.C. § 1498(a) that stems from a patent infringement action
`
`between Plaintiffs and certain third parties filed in the District of Delaware (“Delaware Action”).
`
`The United States filed a Statement of Interest in the Delaware Action confirming that the United
`
`States had granted its authorization and consent to the extent that the third parties used XBRL to
`
`file documents with the SEC pursuant to federal regulation and that, as a result, any such action
`
`must be brought in this Court.
`
`The parties agree that the relevant factual and legal issues include those listed below.
`
`1. Infringement of the asserted patents by the Government and third parties.
`
`2. Whether one or more asserted claims of the asserted patents are invalid under 35
`
`U.S.C. §§ 101, 102, 103, and/or 112.
`
`4
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 5 of 25
`
`3. Assuming Plaintiff proves, by a preponderance of the evidence, infringement under §
`
`1498(a) of one or more claims of the asserted patents, and assuming Defendant fails to prove by
`
`clear and convincing evidence that each such claim is invalid, the amount of reasonable and
`
`entire compensation due to Plaintiff.
`
`Plaintiffs’ Further Position:
`
`e-Numerate is pursuing infringement claims against the Government for its infringement
`
`of e-Numerate’s patents. In addition, e-Numerate is pursuing infringement based on the software,
`
`systems, and activities of third parties. This case stems from the Delaware action where the United
`
`States intervened via its Statement of Interest and accepted liability for all third party infringement
`
`done in connection with SEC filings. In addition, the SEC has software, systems and activities
`
`that e-Numerate believes infringe the asserted patents. Plaintiffs intend to seek damages against
`
`the United States for all accused activities. In addition, Plaintiffs reserve the right to seek fees and
`
`costs in connection with this matter.
`
`Defendant’s Further Position:
`
`Whether the United States, with authorization and consent, has used the accused
`
`technology in a manner that infringes any valid asserted claim of the asserted patents, without
`
`license or other lawful right to use or manufacture the same.
`
` (i) What is the likelihood of settlement? Is alternative dispute resolution
`contemplated?
`
`The parties have not had a formal settlement discussion as of the date of this submission.
`
`Plaintiffs’ Further Position:
`
`Plaintiffs proposed a face to face meeting between its business representatives and the SEC.
`
`Plaintiffs believe it has technology that the SEC could employ to improve upon its use of XBRL.
`
`Plaintiffs anticipate resolution of this matter would be discussed in any such meeting with the SEC.
`
`5
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 6 of 25
`
`Plaintiffs remain open to settlement discussions with the Government and would participate in
`
`Court ordered mediation.
`
`Defendant’s Further Position:
`
`The Government agrees to consider and discuss settlement as the litigation continues and
`
`the facts and issues become clearer, but cannot accurately assess the likelihood of settlement at
`
`this time.
`
`The Government believes that some form of alternative dispute resolution (“ADR”) might
`
`be useful later in the case, and perhaps after the Court resolves any claim construction dispute
`
`and/or dispositive motion(s), to the extent the asserted claims are not held on summary judgment
`
`to not be infringed or invalid (e.g., as being “directed to” ineligible subject matter under 35 U.S.C.
`
`§ 101).
`
`(j) Do the parties anticipate proceeding to trial? Does either party, or do the parties
`jointly, request expedited trial scheduling and, if so, why? A request for expedited
`trial scheduling is generally appropriate when the parties anticipate that
`discovery, if any, can be completed within a 90-day trial period, the case can be
`tried within 3 days, no dispositive motion is anticipated, and a bench ruling is
`sought. The requested place of trial shall be stated. Before such a request is made,
`the parties shall confer specifically on this subject.
`
`The parties do not request an expedited trial schedule.
`
`The parties request that the trial, if any, be held at the U.S. Court of Federal Claims
`
`Courthouse in Washington, D.C.
`
`Plaintiffs’ Further Position:
`
`At this time, Plaintiffs anticipate proceeding to trial if the case cannot be resolved
`
`amicably. Plaintiffs oppose bifurcation of any trial for the reasons set forth above in section (c).
`
`
`
`
`
`6
`
`

`

`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 7 of 25
`
`Defendant’s Further Position:
`
`
`At this time, the Government anticipates that this case will proceed to trial first as to
`
`validity or liability only, if there is an unresolved genuine issue of material fact; subsequently,
`
`after completion of any trial on validity or liability and only if Plaintiff establishes there is liability
`
`for any valid asserted claim(s), the Government anticipates a later trial for a determination of any
`
`reasonable and entire compensation.
`
`(k)
`
`Are there special issues regarding electronic case management needs?
`
`Yes.
`
`Plaintiffs anticipate seeking source code and other highly sensitive technical and financial
`
`documents from the United States and multiple third parties. The parties anticipate that this
`
`matter will require entry of a Protective Order that permits production of third party source code,
`
`technical documents, and financial documents as well as the same or similar material from the
`
`United States.
`
`
`
`
`
`
`
`
`
`(l)
`
`Is there other information of which the court should be aware at this time?
`
`Yes. The parties intend to submit a proposed protective order, incorporating their Federal Rule of
`
`Evidence 502(d) non-waiver agreement.
`
`Plaintiffs’ Position
`
`Plaintiffs seek an 18 month long fact discovery period. The reason for this request is that
`
`discovery is anticipated to encompass multiple third parties and include subpoenas and requests
`
`for inspection seeking highly sensitive technical and business documents including production of
`
`source code. The reason for a discovery period of this length is that the United States has taken
`
`the position via its Statement of Interest in the Delaware action that the United States authorized
`
`
`
`7
`
`

`

`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 8 of 25
`
`and consented to the allegedly infringing activities of third parties insofar as they relate to filings
`
`with the SEC. Plaintiffs anticipate that the third parties will resist Plaintiffs’ discovery efforts and
`
`that Court intervention may be required. Plaintiffs respectfully request that discovery against third
`
`parties be allowed to proceed as of the date of the Rule 16 conference. The ongoing pandemic will
`
`further delay third party discovery because, inter alia, third parties may object to production of
`
`source code remotely.
`
`Plaintiffs seek 200 hours of deposition discovery in lieu of the normal 70 hours provided
`
`under the Federal Rules. The reason for this request is that Plaintiffs will be pursuing multiple
`
`third parties in discovery, which Plaintiffs estimate may be in excess of 20 - 30 third party service
`
`providers and/or customers of said third parties. Plaintiffs request that all testifying experts may
`
`be deposed by the opposing party and that such depositions do not count towards the hours limit
`
`on depositions. Plaintiffs do not believe that third party depositions should necessarily wait until
`
`the Markman hearing is resolved. Plaintiffs do not object to the Government attending third party
`
`depositions remotely.
`
`Plaintiffs request that there be no limit on the number of document requests and, in any
`
`event, Plaintiffs request a ruling by the Court that subpoenas and items requested in a subpoena
`
`directed to a third party do not count towards any limit on document requests imposed in this
`
`matter.
`
`Plaintiffs oppose bifurcation of discovery and trial for the reasons set forth above in section
`
`(c).
`
`Plaintiffs respectfully request that the Court set a Status Conference during the fact
`
`discovery period to discuss whether and to what extent the parties have agreed that certain third
`
`party products are representative products for liability purposes. Plaintiffs contend that any
`
`8
`
`

`

`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 9 of 25
`
`limitation on representative claims should be coupled with an agreement on representative third
`
`party products.
`
`Defendant’s Position
`
`Defendant maintains that this case may be well served by bifurcation including a first stage
`
`directed to validity or liability followed by additional stage(s) covering infringement and/or
`
`damages. Defendant maintains that a determination as to bifurcation be deferred until after the
`
`Markman hearing or decision.
`
`With respect to third party discovery, Defendant does not take a position as to the propriety
`
`of Plaintiff beginning to subpoena third parties as of the date of the Rule 16 conference, however
`
`Defendant respectfully requests that any depositions take place after the Markman hearing, that
`
`the parties coordinate the depositions by providing at least one week notice and allowing the other
`
`party to participate remotely.
`
`In terms of hours for depositions, Defendant proposes that the 70 hours provided under the
`
`Federal Rules be maintained with respect to hours of depositions of the opposing party’s
`
`witnesses. Defendant also proposes an initial cap of 40 hours for third-party depositions which
`
`may be increased for good cause as the case progresses. Defendant agrees that all testifying experts
`
`may be deposed by the opposing party and that such depositions do not count towards the hours
`
`limit on depositions.
`
`Defendant requests that the standard limit on document requests (75 requests for
`
`production) found in Judge Albright’s Order be adopted in this case with respect to the parties.
`
`Defendant does not take a position as to whether a Status Conference for determining whether
`
`certain third party products are representative is appropriate at this time but urges that an agreement
`
`on representative claims should first be reached by the parties.
`
`
`
`9
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 10 of 25
`
`
`Proposed Discovery Plan
`
`Pursuant to Appendix A, ¶ 5, the parties propose the following discovery plan addressing
`
`the elements of Appendix A, ¶ 3(d):
`
`(1) What changes should be made in the timing, form, or requirement for disclosures
`under RCFC 26(a), including a statement as to when disclosures under RCFC
`26(a)(1) were made or will be made?
`
`The parties propose that the deadline for initial disclsoures set forth in Judge Albright's
`
`scheduling order be modified from one business day following the Markman to one week
`
`following the Markman.
`
`
`
`(2) The subjects on which discovery may be needed, when discovery should be
`completed, and whether discovery should be conducted in phases or be limited to or
`focused upon particular issues.
`
`The parties agree that the scope of discovery is governed by RCFC 26(b) and the principles
`
`of proportionality embodied therein. As reflected in the below Proposed Schedule, the parties
`
`propose that expert discovery, with the exception of any expert opinion/testimony in connection
`
`with claim construction, should be postponed until at least after the conclusion of fact discovery
`
`and timed to begin in the context of motions for summary judgment.
`
`(3) Any issues relating to disclosure, discovery, or preservation of electronically stored
`information, including the form or forms in which it should be produced.
`
`Given the nature of this case, the parties believe that a Protective Order that includes
`
`provisions relating to the protection of source code and the ability of third parties to produce
`
`documents and source code under the protective order will be necessary. Additionally, the parties
`
`believe that an Order concerning the management/production of electronically stored information
`
`(“ESI”), with appropriate limits on any e-mail discovery, may be appropriate. The parties will be
`
`negotiating the contours of a Protective Order and possible ESI Order, and anticipate that they will
`
`10
`
`

`

`
`
`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 11 of 25
`
`submit to the Court joint proposed orders.
`
`Plaintiffs’ Further Position
`
`Plaintiffs propose that the Court set a date for the parties to submit the above Orders and,
`
`if the parties are in dispute, Plaintiffs respectfully request that the Court set a date to resolve any
`
`disputes on these Orders in the Scheduling Order.
`
`(4) Any issues relating to claims of privilege or of protection as trial preparation
`material, including—if the parties agree on a procedure to assert such claims after
`production—whether to ask the court to include their agreement in an order under
`Federal Rule of Evidence 502.
`
`The parties agree that inadvertent production will be governed by Federal Rule of Evidence
`
`(“FRE”) 502(d) and RCFC 26(b)(5)(B). The parties intend to submit a proposed protective order,
`
`incorporating their Federal Rule of Evidence 502(d) non-waiver agreement.
`
`(5) What changes should be made in the limitations on discovery imposed under these
`rules and what other limitations should be imposed?
`
`The parties’ positions are as follows:
`
`Plaintiffs’ Position
`
`Plaintiffs seek an 18 month long fact discovery period. The reason for this request is that
`
`discovery is anticipated to encompass multiple third parties (estimated to be 20 – 30 or more) and
`
`include subpoenas and requests for inspection seeking highly sensitive technical and business
`
`documents including production of source code. Given that proprietary source code will be
`
`involved, Plaintiffs anticipate that the third parties will resist Plaintiffs’ discovery efforts and that
`
`Court intervention may be required. Plaintiffs respectfully request that discovery against third
`
`parties be allowed to proceed as of the date of the Rule 16 conference.
`
`Plaintiffs seek 200 hours of deposition discovery in lieu of the normal 70 hours provided
`
`under the Federal Rules. The reason for this request is that Plaintiffs will be pursuing multiple
`
`third parties in discovery. This is a direct result of the United States’ Statement of Interest filed in
`
`11
`
`

`

`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 12 of 25
`
`the Delaware action related to the infringing activities of third parties. Plaintiffs request that all
`
`testifying experts may be deposed by the opposing party and that such depositions do not count
`
`towards the hours limit on depositions.
`
`Plaintiffs request that there be no limit on the number of document requests and, in any
`
`event, Plaintiffs request a ruling by the Court that subpoenas and items requested in a subpoena
`
`directed to a third party do not count towards any limit on document requests imposed in this
`
`matter.
`
`Plaintiffs respectfully request that the Court set a Status Conference during the fact
`
`discovery period to discuss judicial and economic benefits flowing from an agreement between
`
`the parties that certain products and services offered by third parties are representative for liability
`
`purposes.
`
`Plaintiffs oppose bifurcation of discovery and trial for the reasons set forth in sections (c)
`
`and (l) above. Plaintiffs refer the Court to their position on third party deposition practice in these
`
`sections as well.
`
`Defendants’ Position
`
`Defendant maintains that this case may be well served by bifurcation including a first stage
`
`directed to validity or liability followed by additional stage(s) covering infringement and/or
`
`damages. Defendant maintains that a determination as to bifurcation be deferred until after the
`
`Markman hearing or decision.
`
`With respect to third party discovery, Defendant does not take a position as to the propriety
`
`of Plaintiff beginning to subpoena third parties as of the date of the Rule 16 conference, however
`
`Defendant respectfully requests that any depositions take place after the until after the Markman
`
`hearing, that the parties coordinate the depositions by providing at least one week notice and
`
`12
`
`

`

`
`
`
`
`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 13 of 25
`
`allowing the other party to participate remotely.
`
`In terms of hours for depositions, Defendant proposes that the 70 hours provided under the
`
`Federal Rules be maintained with respect to hours of depositions of the opposing party’s
`
`witnesses. Defendant also proposes an initial cap of 40 hours for third party depositions which
`
`may be increased for good cause as the case progresses. Defendant agrees that all testifying experts
`
`may be deposed by the opposing party and that such depositions do not count towards the hours
`
`limit on depositions.
`
`Defendant requests that the standard limit on document requests (75 requests for
`
`production) found in Judge Albright’s Order be adopted in this case with respect to the parties.
`
`Defendant does not take a position as to whether a Status Conference for determining
`
`whether certain third party products are representative is appropriate at this time but urges that an
`
`agreement on representative claims should first be reached by the parties.
`
`
`
`(6) Any other orders that should be entered by the court under RCFC 26(c) or under
`RCFC 16(b) and (c).
`
`The parties intend to submit a proposed protective order under RCFC 26(c). At present, the
`
`parties are not aware of other such orders that should be entered by the Court.
`
`Proposed Schedule
`
`Pursuant to Appendix A, ¶ 5 and the Court’s expressed desire to follow a schedule similar
`
`to that contemplated by Judge Albright’s Scheduling Order promulgated on November 5, 2020, in
`
`the Western District of Texas, the parties submit their respective proposed schedules below. The
`
`parties propose the following schedule, in accordance with the Patent Rules of the United States
`
`Court of Federal Claims (“PRCFC”) set forth in Appendix J.
`
`PRCFC 2(a) – (d): see the following proposed schedule.
`
`13
`
`

`

`
`
`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 14 of 25
`
`PRCFC 2(e): Plaintiff submits that none of its asserted patents has been or are likely to be
`
`subject to re-examination proceedings.
`
`PRCFC 2(f): Four of the patents-in-suit were in IPR proceedings that have been dismissed
`
`with prejudice. The claims involved in that IPR were included in this litigation via the Amended
`
`Complaint filed on August 26, 2020. Plaintiff submits that there are no other litigation or inter
`
`partes proceedings ongoing or anticipated at this time.
`
`Deadline
`
`Item
`
`
`December 14, 2020
`
`Plaintiff serves preliminary infringement contentions in the
`form of a chart setting forth where in the accused product(s)
`each element of the asserted claim(s) are found. Plaintiff shall
`also identify the earliest priority date (i.e. the earliest date of
`invention) for each asserted claim and produce: (1) all
`documents evidencing conception and reduction to practice
`for each claimed invention, and (2) a copy of the file history
`for each patent in suit.
`
`January 4, 2021
`
`Deadline for Motions to Transfer.
`
`February 16, 2021
`
`Defendant serves preliminary invalidity contentions in the
`form of (1) a chart setting forth where in the prior art
`references each element of the asserted claim(s) are found, (2)
`an identification of any limitations the Defendant contends are
`indefinite or lack written description under section 112, and
`(3) an identification of any claims the Defendant contends are
`directed to ineligible subject matter under section 101.
`Defendant shall also produce (1) all prior art referenced in the
`invalidity contentions, (2) technical documents, including
`software where applicable, sufficient to show the operation of
`the accused product(s), and (3) summary, annual sales
`information for the accused product(s) for the two years
`preceding the filing of the Complaint, unless the parties agree
`to some other timeframe.
`
`March 1, 2021
`
`Parties exchange claim terms for construction.
`
`March 15, 2021
`
`Parties exchange proposed claim constructions.
`
`14
`
`

`

`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 15 of 25
`
`March 22, 2021
`
`
`
`March 29, 2021
`
`April 5, 2021
`
`Parties disclose extrinsic evidence. The parties shall disclose
`any extrinsic evidence, including the identity of any expert
`witness they may rely upon with respect to claim construction
`or indefiniteness. With respect to any expert identified, the
`parties shall identify the scope of the topics for the witness’s
`expected testimony. With respect to items of extrinsic
`evidence, the parties shall identify each such item by
`production number or produce a copy of any such item if not
`previously produced.
`
`Deadline to meet and confer to narrow terms in dispute and
`exchange revised list of terms/constructions.
`
`Plaintiff files Opening claim construction brief, including any
`arguments that any claim terms are indefinite.
`
`April 26, 2021
`
`Defendant files Responsive claim construction brief.
`
`May 10, 2021
`
`Plaintiff files Reply claim construction brief.
`
`May 24, 2021
`
`Defendant files a Sur-Reply claim construction brief.
`
`May 27, 2021
`
`Parties submit Joint Claim Construction Statement.
`
`
`
`See General Issues Note #8 regarding providing copies of the
`briefing to the Court and the technical adviser (if appointed).
`
`June 1, 2021
`
`June 7, 2021
`
`Parties submit optional technical tutorials to the Court and
`technical adviser (if appointed). Plaintiffs propose that the
`parties should provide at least one month’s notice to the
`other party if they expect to provide a technical tutorial.
`Markman Hearing at [9:00 a.m. or 1:30 p.m.]
`
`1 week after
`Markman hearing
`
`Fact Discovery between the parties opens; deadline to serve
`Initial Disclosures per Rule 26(a).
`
`6 weeks after Markman
`hearing
`
`Deadline to add parties.
`
`Plaintiff’s position:
`Plaintiffs submit that
`deadlines after the
`Markman hearing will
`depend on a number of
`factors included the length
`of the fact discovery period.
`Plaintiffs oppose
`
`Deadline to serve Final Infringement and Invalidity
`Contentions. After this date, leave of Court is required for
`any amendment to Infringement or Invalidity contentions.
`This deadline does not relieve the Parties of their obligation to
`seasonably amend if new information is identified after initial
`contentions.
`
`15
`
`

`

`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 16 of 25
`
`bifurcation. Plaintiffs do
`not oppose setting these
`dates later in the scheduling
`process.
`Defendant’s position:
`Timing of events after the
`Markman should be set at a
`later date after a
`determination as to
`bifurcation has been made.
`Plaintiff’s position:
`Plaintiffs submit that
`deadlines after the
`Markman hearing will
`depend on a number of
`factors included the length
`of the fact discovery period.
`Plaintiffs oppose
`bifurcation. Plaintiffs do
`not oppose setting these
`dates later in the scheduling
`process.
`
`Defendant’s position:
`Timing of events after the
`Markman should be set at a
`later date after a
`determination as to
`bifurcation has been made.
`Plaintiff’s position:
`Plaintiffs submit that
`deadlines after the
`Markman hearing will
`depend on a number of
`factors included the length
`of the fact discovery period.
`Plaintiffs oppose
`bifurcation. Plaintiffs do
`not oppose setting these
`dates later in the scheduling
`process.
`
`Defendant’s position:
`Timing of events after the
`Markman should be set at a
`later date after a
`determination as to
`
`Deadline to amend pleadings. A motion is not required unless
`the amendment adds patents or patent claims. (Note: This
`includes amendments in response to a 12(c) motion.)
`
`Deadline for the first of two meet and confers to discuss
`significantly narrowing the number of claims asserted and
`prior art references at issue. Unless the parties agree to the
`narrowing, they are ordered to contact the Court’s Law Clerk
`to arrange a teleconference with the Court to resolve the
`disputed issues.
`
`16
`
`

`

`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 17 of 25
`
`bifurcation has been made.
`
`
`Plaintiff’s position:
`Plaintiffs submit that
`deadlines after the
`Markman hearing will
`depend on a number of
`factors included the length
`of the fact discovery period.
`Plaintiffs oppose
`bifurcation. Plaintiffs do
`not oppose setting these
`dates later in the scheduling
`process.
`
`Defendant’s position:
`Timing of events after the
`Markman should be set at a
`later date after a
`determination as to
`bifurcation has been made.
`
`Plaintiff’s position:
`Plaintiffs submit that
`deadlines after the
`Markman hearing will
`depend on a number of
`factors included the length
`of the fact discovery period.
`Plaintiffs oppose
`bifurcation. Plaintiffs do
`not oppose setting these
`dates later in the scheduling
`process.
`
`Defendant’s position:
`Timing of events after the
`Markman should be set at a
`later date after a
`determination as to
`bifurcation has been made.
`
`Close of Fact Discovery.
`
`Opening Expert Reports.
`
`17
`
`

`

`
`
`
`
`Case 1:19-cv-00859-RTH Document 35 Filed 11/19/20 Page 18 of 25
`
`Rebuttal Expert Reports.
`
`Close of Expert Discovery.
`
`
`Plaintiff’s position:
`Plaintiffs submit that
`deadlines after