Case 1:20-cv-00158-NIQA-LAS Document 24-1 Filed 05/19/20 Page 1 of 26 PageID #: 150
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Civil Action No. 19-2083-NIQA-LAS
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`
`
`Civil Action No. 19-2090-NIQA-LAS
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`
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`Civil Action No. 19-2149-NIQA-LAS
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`MONTEREY RESEARCH, LLC,
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`QUALCOMM INCORPORATED,
`QUALCOMM TECHNOLOGIES, INC., and
`QUALCOMM CDMA TECHNOLOGIES
`ASIA-PACIFIC PTE LTD.,
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`MONTEREY RESEARCH, LLC,
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`
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`
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`NANYA TECHNOLOGY
`CORPORATION, NANYA
`TECHNOLOGY CORPORATION, U.S.A.,
`and NANYA TECHNOLOGY
`CORPORATION DELAWARE,
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`
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`MONTEREY RESEARCH, LLC,
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`
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`ADVANCED MICRO DEVICES INC.,
`
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`vs.
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`vs.
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`
`vs.
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`Plaintiff,
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`Defendants.
`
`Plaintiff,
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`Defendants.
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`Plaintiff,
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`Defendant.
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`

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`Case 1:20-cv-00158-NIQA-LAS Document 24-1 Filed 05/19/20 Page 2 of 26 PageID #: 151
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`
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`Civil Action No. 20-0089-NIQA-LAS
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`Civil Action No. 20-0158-NIQA-LAS
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`Plaintiff,
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`Defendants.
`
`Plaintiff,
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`
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`vs.
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`
`
`vs.
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`MONTEREY RESEARCH, LLC,
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`STMICROELECTRONICS N.V and
`STMICROELECTRONICS, INC.,
`
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`MONTEREY RESEARCH, LLC,
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`MARVELL TECHNOLOGY GROUP LTD.,
`MARVELL INTERNATIONAL LTD.,
`MARVELL ASIA PTE LTD., and
`MARVELL SEMICONDUCTOR, INC.
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`Defendants.
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`SCHEDULING ORDER FOR PATENT CASES
`IN WHICH INFRINGEMENT IS ALLEGED
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`This _____ day of __________, 2020, the Court having ordered filing of a proposed
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`scheduling order, and the parties having determined after discussion that the matter cannot be
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`resolved at this juncture by settlement, voluntary mediation, or binding arbitration:
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`IT IS ORDERED that:
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`1.
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`Relevant Deadlines and Dates. All relevant deadlines and dates established by this
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`Order are set forth in the chart attached as Exhibit A.
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`2
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`

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`Case 1:20-cv-00158-NIQA-LAS Document 24-1 Filed 05/19/20 Page 3 of 26 PageID #: 152
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`2.
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`Rule 26(a)(l) Initial Disclosures. Unless otherwise agreed to by the parties, the
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`parties shall make their initial disclosures required by Federal Rule of Civil Procedure 26(a)(1)
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`within 21 days of the date of this Order.
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`3.
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`Disclosure of Asserted Claims and Infringement Contentions. Unless otherwise
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`agreed to by the parties, not later than 50 days after the date of this Order, a party claiming patent
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`infringement shall serve on all parties a “Disclosure of Asserted Claims and Infringement
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`Contentions.” Separately for each opposing party, the “Disclosure of Asserted Claims and Initial
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`Infringement Contentions” shall contain the following information:
`
`(a)
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`Each claim of each asserted patent that is allegedly infringed by each
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`opposing party, including for each claim the applicable statutory subsections of 35 U.S.C.
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`§271 asserted;
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`(b)
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`Separately for each asserted claim, each accused apparatus, product, device,
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`process, method, act, or other instrumentality (“Accused Instrumentality”) of each
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`opposing party of which the party is aware. This identification shall be as specific as
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`possible. Each product, device, and apparatus shall be identified by name or model number,
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`if known. Each method or process shall be identified by name, if known, or by any product,
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`device, or apparatus which, when used, allegedly results in the practice of the claimed
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`method or process;
`
`(c)
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`A chart identifying specifically where and how each limitation of each
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`asserted claim is found within each Accused Instrumentality, including for each limitation
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`that such party contends is governed by 35 U.S.C. § 112(f), the identity of the structure(s),
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`act(s), or material(s) in the Accused Instrumentality that performs the claimed function;
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`3
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`

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`(d)
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`For each claim alleged to have been indirectly infringed, an identification
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`of any direct infringement and a description of the acts of the alleged indirect infringer that
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`contribute to or are inducing that direct infringement. Insofar as alleged direct infringement
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`is based on joint acts of multiple parties, the role of each such party in the direct
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`infringement must be described;
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`(e) Whether each limitation of each asserted claim is alleged to be present
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`literally or under the doctrine of equivalents in the Accused Instrumentality;
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`(f)
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`For any patent that claims priority to an earlier application, the priority date
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`to which each asserted claim is alleged to be entitled;
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`(g)
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`If a party claiming patent infringement wishes to preserve the right to rely,
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`for any purpose, on the assertion that its own or its licensee’s apparatus, product, device,
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`process, method, act, or other instrumentality practices the claimed invention, the party
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`shall identify, separately for each asserted claim, each such apparatus, product, device,
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`process, method, act, or other instrumentality that incorporates or reflects that particular
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`claim;
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`(h)
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`The timing of the point of first infringement, the start of the claimed
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`damages, and the end of claimed damages; and
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`(i)
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`If a party claiming patent infringement alleges willful infringement, the
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`basis for such allegation.
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`4.
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`Document Production Accompanying Disclosure of Asserted Claims and
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`Infringement Contentions. With the “Disclosure of Asserted Claims and Infringement
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`Contentions,” the party claiming patent infringement shall produce to each opposing party or make
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`available for inspection and copying:
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`4
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`

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`(a)
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`Documents (e.g., contracts, purchase orders, invoices, advertisements,
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`marketing materials, offer letters, beta site testing agreements, and third party or joint
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`development agreements) sufficient to evidence each discussion with, disclosure to, or
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`other manner of providing to a third party, or sale of or offer to sell, or any public use of,
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`the claimed invention prior to the date of application for the asserted patent(s);
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`(b)
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`All documents evidencing the conception, reduction to practice, design, and
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`development of each claimed invention, which were created on or before the date of
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`application for the asserted patent(s) or the priority date identified pursuant to paragraph
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`3(f) of this Order, whichever is earlier;
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`(c)
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`(d)
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`A copy of the file history for each asserted patent;
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`All documents evidencing ownership of the patent rights by the party
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`asserting patent infringement;
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`(e)
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`If a party identifies instrumentalities pursuant to paragraph 3(g) of this
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`Order, documents sufficient to show the operation of any aspects or elements of such
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`instrumentalities the patent claimant relies upon as embodying any asserted claims;
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`(f)
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`All agreements, including licenses, transferring an interest in any asserted
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`patent;
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`(g)
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`All agreements that the party asserting infringement contends are
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`comparable to a license that would result from a hypothetical reasonable royalty
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`negotiation;
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`(h)
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`All agreements that otherwise may be used to support the party asserting
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`infringement’s damages case,
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`5
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`

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`Case 1:20-cv-00158-NIQA-LAS Document 24-1 Filed 05/19/20 Page 6 of 26 PageID #: 155
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`(i)
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`If a party identifies instrumentalities pursuant to paragraph 3(g) of this
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`Order, documents sufficient
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`to show marking of such embodying accused
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`instrumentalities; and if the party wants to preserve the right to recover lost profits based
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`on such products, the sales, revenues, costs, and profits of such embodying accused
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`instrumentalities; and
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`(j)
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`All documents comprising or reflecting a F/RAND commitment or
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`agreement with respect to the asserted patent(s).
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`A party’s production of a document as required by this paragraph shall not constitute an admission
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`that such document evidences or is prior art under 35 U.S.C. § 102.
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`5.
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`Invalidity Contentions. Unless otherwise agreed to by the parties, not later than 50
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`days after service upon it of the “Disclosure of Asserted Claims and Infringement Contentions,”
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`each party opposing a claim of patent infringement shall serve on all parties its “Invalidity
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`Contentions” which shall contain the following information:
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`(a)
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`The identity of each item of prior art that the party alleges anticipates each
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`asserted claim or renders the claim obvious. Each prior art patent shall be identified by its
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`number, country of origin, and date of issue. Each prior art publication shall be identified
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`by its title, date of publication, and, where feasible, author and publisher. Each alleged sale
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`or public use shall be identified by specifying the item offered for sale or publicly used or
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`known, the date the offer or use took place or the information became known, and the
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`identity of the person or entity which made the use or which made and received the offer,
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`or the person or entity which made the information known or to whom it was made known.
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`For pre-AIA claims, prior art under 35 U.S.C. § 102(f) shall be identified by providing the
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`name of the person(s) from whom and the circumstances under which the invention or any
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`6
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`

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`part of it was derived. For pre-AIA claims, prior art under 35 U.S.C. § 102(g) shall be
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`identified by providing the identities of the person(s) or entities involved in and the
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`circumstances surrounding the making of the invention before the patent applicant(s);
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`(b) Whether each item of prior art anticipates each asserted claim or renders it
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`obvious. If obviousness is alleged, an explanation of why the prior art renders the asserted
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`claim obvious, including an identification of any combinations of prior art showing
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`obviousness;
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`(c)
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`A chart identifying specifically where and how in each alleged item of prior
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`art each limitation of each asserted claim is found, including for each limitation that such
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`party contends is governed by 35 U.S.C. § 112(f), the identity of the structure(s), act(s), or
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`material(s) in each item of prior art that performs the claimed function; and
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`(d)
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`Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under
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`35 U.S.C. § 112(b), or lack of enablement or insufficient written description under 35
`
`U.S.C. § 112(a) of any of the asserted claims.
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`6.
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`Document Production Accompanying Invalidity Contentions. With the “Invalidity
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`Contentions,” the party opposing a claim of patent infringement shall produce or make available
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`for inspection and copying:
`
`(a)
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`Source code, specifications, schematics, flow charts, artwork, formulas, or
`
`other documentation sufficient to show the operation of any aspects or elements of an
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`Accused Instrumentality identified by the patent claimant in its chart produced pursuant to
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`paragraph 3(c) of this Order;
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`7
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`(b)
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`A copy or sample of the prior art identified pursuant to paragraph 5(a) that
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`does not appear in the file history of the patent(s) at issue. To the extent any such item is
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`not in English, an English translation of the portion(s) relied upon shall be produced;
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`(c)
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`All agreements that the party opposing infringement contends are
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`comparable to a license that would result from a hypothetical reasonable royalty
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`negotiation;
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`(d)
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`Documents sufficient to show the sales, revenue, cost, and profits for
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`Accused Instrumentalities identified pursuant to paragraph 3(b) of this Order for any period
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`of alleged infringement; and
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`(e)
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`All agreements that may be used to support the damages case of the party
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`that is denying infringement.
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`7.
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`Amendment to Contentions. Amendment of the Infringement Contentions or the
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`Invalidity Contentions may be made only by order of the Court upon a timely showing of good
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`cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-
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`moving party, support a finding of good cause include (a) recent discovery of material prior art
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`despite earlier diligent search and (b) recent discovery of nonpublic information about the Accused
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`Instrumentality which was not discovered, despite diligent efforts, before the service of the
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`Infringement Contentions. The duty to supplement discovery responses does not excuse the need
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`to obtain leave of the Court to amend contentions.
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`8.
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`Joinder of Other Parties and Amendment of Pleadings. All motions to join other
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`parties, and to amend or supplement the pleadings, shall be filed on or before April 30, 2021.
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`9.
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`Discovery.
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`8
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`

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`(a)
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`Coordination: The parties will make best efforts to coordinate discovery to
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`minimize the burdens of discovery on all parties and on the Court.
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`(b)
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`Fact Discovery Cut Off. All fact discovery in this case shall be initiated so
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`that it will be completed on or before August 9, 2021.
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`(c)
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`Document Production. Document production shall be substantially
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`completed on or before [Plaintiff’s Proposal: December 3, 2020 / Defendants’ Proposal:
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`January 15, 2021].
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`(d)
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`Requests for Admission. The parties may exchange up to twenty (20)
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`individual requests for admission between Plaintiff and each Defendant Group.1
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`Notwithstanding the foregoing, if a party does not agree to stipulate to the authenticity of
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`documents, there is no limitation on the number of requests for admission relating to the
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`authenticity of documents, which shall be served in time to be completed before the close
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`of fact discovery.
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`1 For purposes of counting discovery requests and deposition hours, a Defendant Group is all
`entities in a single case brought by Plaintiff. For example, the Qualcomm Defendant Group would
`contain Qualcomm Incorporated, Qualcomm Technologies, Inc., and Qualcomm CDMA
`Technologies Asia-Pacific Pte Ltd.
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`Note: STMicroelectronics N.V. has moved to dismiss the complaint against it for lack of personal
`jurisdiction pursuant to Federal Rule of Civil Procedure (“Rule”) 12 (b) (2). (C.A. No. 20-0089 –
`NIQA-LAS (D.I. 25)). Accordingly, STMicroelectronics N.V. objects to participating in any
`aspect of this litigation, including the meet and confer process contemplated by Rule 26 and
`submission of the Rule 26 (f) Report and the Proposed Scheduling Order until the motion to
`dismiss is resolved. Marvell Semiconductor, Inc. will be moving to dismiss under Rule 12(b)(3)
`for improper venue and the remaining Marvell entities will be moving to dismiss under Rule
`12(b)(2) for lack of personal jurisdiction. The Marvell entities object to participating in any aspect
`of this litigation, including the meet and confer process contemplated by Rule 26 and submission
`of the Rule 26(f) Report and the Proposed Scheduling Order, until their motions to dismiss are
`resolved.
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`9
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`

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`(e)
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`Interrogatories. A maximum of fifteen (15) common interrogatories,
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`including contention interrogatories, are permitted for Plaintiff towards all Defendants and
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`fifteen (15) common interrogatories from all Defendants towards Plaintiff. The parties
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`may exchange up to an additional fifteen (15) individual interrogatories between Plaintiff
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`and each Defendant Group.
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`(f)
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`Depositions.
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`(1)
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`Coordination: To the extent possible, defendants agree to coordinate
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`third party discovery and third party depositions where the third party has
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`knowledge relevant to common issues, such as third party inventors of patents
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`asserted in multiple cases, or former assignees of patents asserted in multiple cases,
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`or invalidity issues related to patents asserted in multiple cases. Defendants also
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`agree, to the extent possible, to coordinate its individual and corporate depositions
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`of Plaintiff to avoid duplicative depositions on common issues.
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`(2)
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`Hours.
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`Plaintiff’s Proposal:
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`Defendants’ Proposal:
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`In each case:
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`Plaintiff is limited to no more than
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` Plaintiff is limited to no more than
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`sixty
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`(60) hours of deposition
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`60 hours of deposition testimony,
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`testimony of each Defendant Group
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`inclusive of 30(b)(6) deposition
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`(i.e., no more than 60 hours total
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`time and depositions of
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`third
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`deposition time for each Defendant
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`parties.
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`Group, including their past or current
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` The Defendant Group of that case is
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`officers, employees, and agents),
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`limited to no more than 60 hours of
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`inclusive of 30(b)(6) deposition time
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`10
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`

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`deposition testimony, inclusive of
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`and deposition of third parties. Each
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`30(b)(6) deposition
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`time
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`and
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`Defendant Group is limited to no more
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`depositions of third-parties.
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`than Sixty (60) hours of deposition
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` Expert depositions do not count
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`testimony,
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`inclusive of 30(b)(6)
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`toward a party’s deposition time
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`deposition time and depositions of
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`
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`third-parties. Expert depositions do not
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`The Defendants also are collectively
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`count toward a party’s deposition time
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`limited across all five above-captioned
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`cases to no more than 80 total hours of
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`deposition of Plaintiff and its Affiliates,
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`including their past or current officers,
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`employees, and agents.
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`
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`Each Defendant Group
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`shall be
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`provided notice of every third party
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`deposition so that each Defendant
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`Group may decide if they want to
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`participate in that deposition. If a
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`Defendant Group elects to participate
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`in the deposition, the deposition hours
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`will count against
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`that Defendant
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`Group’s deposition hour limit. If a
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`Defendant Group
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`elects not
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`to
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`11
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`

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`participate in that deposition, it shall
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`not be permitted to use or rely on that
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`deposition in its case.
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`
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`(3)
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`Time Limits. Each individual fact deposition is limited to 7 hours,
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`unless the parties agree otherwise or the Court so permits. To the extent more than
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`one party seeks to depose the same fact witness, the parties shall confer regarding
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`the total time to be allotted for deposing that fact witness and shall promptly raise
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`any unresolved disputes with the Court. This limitation shall not apply to the
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`deposition of the parties’ designated experts. The parties shall confer regarding the
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`time to be allotted for expert depositions following service of expert reports. For
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`any deposition conducted primarily through an interpreter, 1.5 hours of time on the
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`record will count for 1 hour of deposition time against this total allotment.
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`(4)
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`Location of Depositions. Any party or representative (officer,
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`director, or managing agent) of a party filing a civil action in this District Court
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`must ordinarily be required, upon request, to submit to a deposition at a place
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`designated within this District. Exceptions to this general rule may be made by
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`order of the Court or by agreement of the parties. A defendant who becomes a
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`counterclaimant, cross-claimant, or third-party plaintiff shall be considered as
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`having filed an action in this Court for the purpose of this provision.
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`10.
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`Pinpoint Citations. Pinpoint citations are required in all briefing, letters, and
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`concise statements of facts. The Court will ignore any assertions of controverted facts and
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`controverted legal principles not supported by a pinpoint citation to, as applicable: the record, an
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`12
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`

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`attachment or exhibit, and/or case law or appropriate legal authority. See United States v. Dunkel,
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`927 F.2d 955,956 (“Judges are not like pigs, hunting for truffles buried in briefs.”).
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`11.
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`Application to Court for Protective Order. Should counsel find it will be necessary
`
`to apply to the Court for a protective order specifying terms and conditions for the disclosure of
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`confidential information, counsel should confer and attempt to reach an agreement on a proposed
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`form of order and submit it to the Court by June 1, 2020.
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`Any proposed protective order must include the following paragraph:
`
`Other Proceedings. By entering this Order and limiting the
`disclosure of information in this case, the Court does not intend to
`preclude another court from finding that information may be
`relevant and subject to disclosure in another case. Any person or
`party subject to this Order who becomes subject to a motion to
`disclose another party’s information designated as confidential
`pursuant to this Order shall promptly notify that party of the motion
`so that the party may have an opportunity to appear and be heard on
`whether that information should be disclosed.
`
`12.
`
`Disputes Relating to Discovery Matters and Protective Orders. Should counsel find
`
`they are unable to resolve a dispute relating to a discovery matter or protective order, the parties
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`shall contact the Court’s Case Manager to schedule an in-person conference/argument.
`
`(a)
`
`Unless otherwise ordered, by no later than 72 hours prior to the
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`conference/argument, the party seeking relief shall file with the Court a letter, not to exceed
`
`three pages, outlining the issues in dispute and the party’s position on those issues. The
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`party shall submit as attachments to its letter (1) an averment of counsel that the parties
`
`made a reasonable effort to resolve the dispute and that such effort included oral
`
`communication that involved Delaware counsel for the parties, and (2) a draft order for the
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`Court’s signature that identifies with specificity the relief sought by the party. The party
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`shall file concurrently with its letter a motion that in no more than one paragraph sets forth
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`the relief sought.
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`13
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`(b)
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`By no later than 48 hours prior to the conference/argument, any party
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`opposing the application for relief may file a letter, not to exceed three pages, outlining
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`that party’s reasons for its opposition.
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`(c)
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`The parties will comply with the Judge’s preferences regarding hard copies
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`of discovery papers.
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`(d)
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`If a motion concerning a discovery matter or protective order is filed
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`without leave of the Court that does not comport with the procedures set forth in this
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`paragraph, the motion will be denied without prejudice to the moving party’s right to bring
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`the dispute to the Court through the procedures set forth in this paragraph.
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`13.
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`Papers Filed Under Seal. When filing papers under seal, counsel shall deliver to
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`the Clerk an original and two copies of the papers. A redacted version of any sealed document
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`shall be filed electronically within seven days of the filing of the sealed document.
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`14.
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`Hard Copies. The parties will comply with the Judge’s preferences regarding hard
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`copies of motions and other papers.
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`15.
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`Claim Construction Issue Identification. The parties will make best efforts to
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`coordinate claim construction to minimize the burdens of discovery on all parties and on the Court.
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`Claim Construction briefing shall occur separately but concurrently for each patent. On or before
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`November 5, 2020, Plaintiff and the Defendant Groups against whom each respective patent is
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`asserted shall exchange a list of those claim term(s)/phrase(s) that the parties believe need
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`construction (the “Term Disclosure”). Within fourteen (14) days of the Term Disclosure, Plaintiff
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`and the Defendant Groups against whom a respective patent is asserted shall exchange their
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`proposed claim construction of those term(s)/phrase(s) (the “Proposed Constructions”). Neither
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`the Term Disclosure nor the Proposed Constructions will be filed with the Court. Subsequent to
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`14
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`

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`exchanging the Term Disclosure and the Proposed Constructions, Plaintiff shall meet and confer
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`with the Defendant Groups against whom each respective patent is asserted to prepare a Joint
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`Claim Construction Chart with respect to that patent to be filed no later than December 3, 2020.
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`The Joint Claim Construction Charts, in Word format, shall be e-mailed simultaneously to the
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`Court. The text for the Joint Claim Construction Charts shall be 14-point and in Times New
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`Roman or a similar typeface. The Joint Claim Construction Charts should identify for the Court
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`the term(s)/phrase(s) of the claim(s) in issue and should include each party’s proposed construction
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`of the disputed claim language with citation(s) only to the intrinsic evidence in support of their
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`respective proposed constructions. A separate text-searchable PDF of each of the patent(s) in issue
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`shall be submitted with each Joint Claim Construction Chart. This joint submission will not
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`include argument. Each party shall file concurrently with each Joint Claim Construction Chart a
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`“Motion for Claim Construction” that requests the Court to adopt the claim construction position(s)
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`of that party set forth in the Joint Claim Construction Chart. The motion shall not contain any
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`argument and shall simply state that the party “requests that the Court adopt the claim construction
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`position[s] of [the party] set forth in the Joint Claim Construction Chart (D.I. [ ]).”
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`16.
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`Claim Construction Briefing. After the submission of the Joint Claim Construction
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`Charts, the parties shall meet and confer about the number of terms to be construed and the word
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`limits for briefing. By December 10, 2020, the parties should either submit a stipulation on these
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`topics or their competing proposals to the Court. In the event there are disputes between the
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`parties, the Court will hold a teleconference on December ___, 2020 at __:___ __.m.
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`Unless subsequently changed by stipulation or Court order, the parties will abide by the
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`following schedule and word limits for claim construction briefing: The Plaintiff shall serve
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`separately on the Defendant Groups against whom each respective patent is asserted, but not file,
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`15
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`Case 1:20-cv-00158-NIQA-LAS Document 24-1 Filed 05/19/20 Page 16 of 26 PageID #: 165
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`its opening brief with respect to that patent, on January 21, 2021. The Defendant Groups against
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`whom each respective patent is asserted shall serve, but not file, their common answering brief
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`with respect to that patent, on February 18, 2021. The Plaintiff shall serve, but not file, its reply
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`brief with respect to that patent, on March 10, 2021. The Defendant Groups against whom each
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`respective patent is asserted shall serve, but not file, their common sur-reply brief with respect to
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`that patent on March 18, 2021. The text for each brief shall be 14-point and in Times New Roman
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`or a similar typeface. Plaintiff’s opening brief with respect to each patent shall be between 600
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`and 2600 words, and in no event will the total number of words for plaintiff across all sixteen
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`patents be greater than [Plaintiff’s Proposal: 20,000 words / Defendants’ Proposal: 25,600
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`words]. Defendants’ common answering brief with respect to each patent shall be between 1300
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`and 3500 words, and in no event shall the total words for all answering briefs together exceed
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`[Plaintiff’s Proposal: 30,000 words / Defendants’ Proposal: 38,400 words]. Plaintiff’s individual
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`reply brief with respect to each patent shall be between 600 and 2600 words, but in no event will
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`the total number of words for all Plaintiff reply briefs exceed [Plaintiff’s Proposal: 20,000 words
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`/ Defendants’ Proposal: 25,600 words]. Defendants’ common sur-reply brief with respect to each
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`patent shall be between 500 and 1100 words, and in no event shall the total number of words for
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`all sur-reply briefs together exceed [Plaintiff’s Proposal: 10,000 words / Defendants’ Proposal:
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`12,800 words]. In lieu of serving a separate brief with respect to each patent, the parties may
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`serve a consolidated brief that combines the separate patent-specific sections into one filing.
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`17.
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`Each brief must include a certification by counsel that the brief complies with the
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`type and number limitations set forth above. The person who prepares the certification may rely
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`on the word count of the word-processing system used to prepare the brief.
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`Case 1:20-cv-00158-NIQA-LAS Document 24-1 Filed 05/19/20 Page 17 of 26 PageID #: 166
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`No later than March 24, 2021, Plaintiff and the Defendant Groups against whom each
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`respective patent is asserted shall file a separate Joint Claim Construction Brief with respect to that
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`patent. The parties shall copy and paste their untitled briefs into one brief, with their positions on
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`each claim term in sequential order, in substantially the form below.
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`JOINT CLAIM CONSTRUCTION BRIEF
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`I.
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`II.
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`Agreed-upon Constructions
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`Disputed Constructions
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`A.
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`[TERM 1]
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`1.
`2.
`3.
`4.
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`Plaintiffs Opening Position
`Defendant’s Answering Position
`Plaintiff’s Reply Position
`Defendant’s Sur-Reply Position
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`B.
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`[TERM2]
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`1.
`2.
`3.
`4.
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`Plaintiffs Opening Position
`Defendant’s Answering Position
`Plaintiffs Reply Position
`Defendant’s Sur-Reply Position
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`Etc.
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`The Joint Claim Construction Briefs need not include any general summaries of the law relating
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`to claim construction. If there are any materials that would be submitted in an appendix, Plaintiff
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`and the Defendant Groups against whom each respective patent is asserted shall submit such
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`materials in a Joint Appendix to each Joint Claim Construction Brief. Citations to intrinsic
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`evidence shall be set forth in the Joint Claim Construction Brief. Citations to expert declarations
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`and other extrinsic evidence may be made in the Joint Claim Construction Brief as the parties deem
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`necessary, but the Court will review such extrinsic evidence only if the Court is unable to construe
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`the disputed claim terms based on the intrinsic evidence. See Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996). Declarations shall not contain legal argument or be
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`17
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`Case 1:20-cv-00158-NIQA-LAS Document 24-1 Filed 05/19/20 Page 18 of 26 PageID #: 167
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`used to circumvent the briefing word limitations imposed by this paragraph. The Joint Claim
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`Construction Brief and Joint Appendix shall comply with paragraphs 10 and 14 of this Order.
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`18. Meet and Confer Confirmation and Amended Claim Chart. On or before March
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`31, 2021, local and lead counsel for Plaintiff shall meet separately for each patent with the
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`Defendant Groups against whom each respective patent is asserted to meet and confer. Plaintiff
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`and the Defendant Groups against whom each respective patent is asserted shall thereafter file an
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`Amended Joint Claim Construction Chart that sets forth the terms that remain in dispute. During
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`the meet and confer, the Plaintiff and the Defendant Groups against whom each respective patent
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`is asserted shall attempt to reach agreement on any disputed terms where possible and to narrow
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`the issues related to the remaining disputed terms. Plaintiff and the Defendant Groups against
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`whom each respective patent is asserted shall file with the Amended Joint Claim Construction
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`Chart a letter that identifies by name each individual who participated in the meet and confer, when
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`and how (i.e., by telephone or in person) the meet and confer occurred, and how long it lasted. If
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`no agreements on constructions have been reached or if no dispute has been narrowed as a result
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`of the meet and confer, the letter shall so state and the parties need not file an Amended Joint
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`Claim Construction Chart.
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`19.
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`Hearing on Claim Construction. Beginning at _____ _.m. in April 2021, the Court
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`will hear argument on claim construction. Absent prior approval of the Court (which, if it is
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`sought, must be done by joint letter submission no later than the date on which answering claim
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`construction briefs are due to be served), the parties shall not present testimony at the argument,
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`and the argument shall not exceed a total of three hours.
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`20.
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`Disclosure of Expert Testimony.
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`18
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`Case 1:20-cv-00158-NIQA-LAS Document 24-1 Filed 05/19/20 Page 19 of 26 PageID #: 168
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`(a)
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`To the extent that the Court has not issued its Claim Construction O