Case 1:20-cv-00158-NIQA-LAS Document 24-2 Filed 05/19/20 Page 1 of 22 PageID #: 176
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Civil Action No. 19-2083-NIQA-LAS
`
`
`
`
`Civil Action No. 19-2090-NIQA-LAS
`
`
`
`Civil Action No. 19-2149-NIQA-LAS
`
`
`MONTEREY RESEARCH, LLC,
`
`
`
`Plaintiff,
`
`
`
`QUALCOMM INCORPORATED,
`QUALCOMM TECHNOLOGIES, INC., and
`QUALCOMM CDMA TECHNOLOGIES
`ASIA-PACIFIC PTE LTD.,
`
`
`
`
`MONTEREY RESEARCH, LLC,
`
`
`
`
`
`NANYA TECHNOLOGY
`CORPORATION, NANYA
`TECHNOLOGY CORPORATION, U.S.A.,
`and NANYA TECHNOLOGY
`CORPORATION DELAWARE,
`
`
`
`
`MONTEREY RESEARCH, LLC,
`
`
`
`
`
`ADVANCED MICRO DEVICES INC.,
`
`
`
`
`vs.
`
`
`
`
`
`vs.
`
`
`
`
`
`vs.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Defendants.
`
`Plaintiff,
`
`Defendants.
`
`Plaintiff,
`
`Defendant.
`
`

`

`Case 1:20-cv-00158-NIQA-LAS Document 24-2 Filed 05/19/20 Page 2 of 22 PageID #: 177
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`
`
`
`Civil Action No. 20-0089-NIQA-LAS
`
`
`Civil Action No. 20-0158-NIQA-LAS
`
`Plaintiff,
`
`Defendants.
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`vs.
`
`
`
`
`
`vs.
`
`
`MONTEREY RESEARCH, LLC,
`
`
`
`
`
`STMICROELECTRONICS N.V and
`STMICROELECTRONICS, INC.,
`
`
`
`
`MONTEREY RESEARCH, LLC,
`
`
`
`
`
`MARVELL TECHNOLOGY GROUP LTD.,
`MARVELL INTERNATIONAL LTD.,
`MARVELL ASIA PTE LTD., and
`MARVELL SEMICONDUCTOR, INC.
`
`
`
`
`
`
`
`
`Defendants.
`
`PROPOSED RULE 26(F) REPORT AND DISCOVERY PLAN
`
`Counsel for plaintiff and defendants jointly submit this report concerning their meet and
`
`confer pursuant to Rule 26(f) of the Federal Rules of Civil Procedure. On May 6, May 8, and May
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`12, 2020, via telephone conference call, the following counsel conferred on the topics outlined in
`
`this report and discovery plan:
`
`a) Plaintiff Monterey Research, LLC (“Monterey”): Jonas McDavit, Jordan Malz, Edward
`Geist, Michael Wueste, Ryan Thorne, Amy Wann, and Brian Farnan.
`
`b) Defendants Advanced Micro Devices, Inc.: Vincent Zhou, Ben Haber, and Alexandra
`Ewing.
`
`c) Defendants Marvell Technology Group Ltd., Marvell International Ltd., Marvell Asia
`Pte Ltd., and Marvell Semiconductor, Inc.: Eric Lancaster and Jack Blumenfeld.
`
`
`
`2
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`

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`Case 1:20-cv-00158-NIQA-LAS Document 24-2 Filed 05/19/20 Page 3 of 22 PageID #: 178
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`d) Defendants Nanya Technology Corporation, Nanya Technology Corporation, U.S.A.,
`and Nanya Technology Corporation Delaware: Peter Wied and Karen Pascale.
`
`e) Defendants Qualcomm Incorporated, Qualcomm Technologies, Inc., and Qualcomm
`CDMA Technologies Asia-Pacific Pte Ltd.: Nathan Hamstra, Daniel Schwartz, and
`Karen Keller.
`
`f) Defendants STMicroelectronics N.V. and STMicroelectronics, Inc.: Jeff Moyer,
`Christine Haynes, and Tyler Bowen.
`
`
`
`Through the meet and confer process, the parties have reached agreement on all but three
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`issues: (1) the date for the substantial completion of document production, and (2) the amount of
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`deposition hours, and (3) the total number of words for all claim construction briefs. In discussing
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`those three issues below, the parties have set forth in side-by-side format their respective proposals
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`and reasoning.
`
`
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`NATURE OF CLAIMS, DEFENSES, AND COUNTERCLAIMS
`
`The above-captioned cases involve patent infringement of alleged inventions in the
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`following technology areas: semiconductors, circuits, and the products that incorporate them.
`
`Monterey is seeking relief from the Court for Defendants’ alleged infringement of Monterey’s
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`Patents. Defendants assert either that the asserted patents are not infringed by Defendants, or the
`
`asserted patents are invalid.
`
`
`
`INITIAL DISCLOSURES
`
`The parties have agreed to exchange initial disclosures pursuant to Rule 26(a)(1) within 21
`
`Days of the entry of the Scheduling Order.
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`
`
`
`
`3
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`

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`JOINDER OF OTHER PARTIES AND AMENDMENT OF PLEADINGS
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`The parties have agreed to file all motions to join other parties, and to amend or supplement
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`the pleadings, by April 30, 2021.
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`
`
`DISCOVERY
`
`The parties have agreed to proceed on formal discovery procedures in accordance with the
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`Proposed Scheduling Order attached to this report. Since this case involves patent validity and
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`infringement claims, the attached Proposed Scheduling Order contains patent-specific deadlines
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`in accordance with the Delaware Local Rules, Judge Connolly’s Model Scheduling Order For
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`Patent Cases In Which Infringement Is Alleged, dated April 22, 2019, and the parties’ agreements.
`
`The attached Proposed Scheduling Order contains further details concerning the parties’
`
`positions on various additional scheduling and discovery items. The parties have agreed on the
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`following issues with respect to discovery.
`
`a) Coordination: The parties will make best efforts to coordinate discovery across the five
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`above-captioned cases to minimize the burdens of discovery on all parties and on the
`
`Court.
`
`b) Protective Order: The parties will submit a protective order to the Court by June 1,
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`2020. This protective order will contain provisions related to handling of source code.
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`Any protective order will comply with Paragraph 11 of the attached Proposed
`
`Scheduling Order.
`
`c) Common Interrogatories: A maximum of fifteen (15) common interrogatories are
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`permitted for Plaintiff towards all Defendants and fifteen (15) common interrogatories
`
`are permitted from all Defendants collectively towards Plaintiff.
`
`
`
`4
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`

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`d) Individual Interrogatories: The parties may exchange up to an additional fifteen (15)
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`individual interrogatories between Plaintiff and each Defendant Group.1
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`e) Requests for Admission: The parties may exchange up to twenty (20) individual
`
`requests for admission between Plaintiff and each Defendant Group.
`
`f) Requests for Admission, Authenticity: If a party does not agree to stipulate to the
`
`authenticity of documents, there is no limitation on the number of requests for
`
`admission relating to the authenticity of documents.
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`g) Close of Fact Discovery: All fact discovery in the above-captioned cases shall be
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`initiated so that it will be completed on or before August 9, 2021.
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`
`
`The parties have not yet reached agreement on the following two discovery issues: (1) the
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`date for the substantial completion of document production and (2) the amount of deposition hours.
`
`A.
`
`Substantial Completion of Document Production
`
`The parties set forth below their respective proposals on the date for the substantial
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`completion of document production.
`
`
`1 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.
`
`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.
`
`
`
`5
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`

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`Case 1:20-cv-00158-NIQA-LAS Document 24-2 Filed 05/19/20 Page 6 of 22 PageID #: 181
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`Plaintiff’s Proposal:
`
`December 3, 2020
`
`Plaintiff’s Reasoning:
`
`the
`in
`This patent case should proceed
`following orderly sequence: (1) the parties
`substantially
`complete
`their
`document
`productions, (2)
`the parties next present
`briefing/argument on
`the proper
`claim
`constructions of the disputed claim terms, and
`(3) the parties then complete the remainder of
`fact
`discovery,
`including
`depositions.
`Substantially completing the production of
`documents before the commencement of claim
`construction briefing/argument will streamline
`the claim construction process. The parties’
`documents will provide context necessary to
`determine which disputed claim terms actually
`matter and require construction. This will
`minimize the number of terms presented to the
`Court for construction and narrow the disputes
`for such terms, which will promote efficiencies
`and reduce the burdens on the Court and parties.
`
`Plaintiff’s December 3, 2020 substantial
`completion date is critical to this orderly
`sequence of events. Plaintiff’s opening claim
`construction brief is due on January 21, 2021.
`Thus, a December 3, 2020 substantial
`completion date will ensure that the parties have
`produced their documents sufficiently before
`the start of claim construction briefing, so the
`documents can be useful in streamlining the
`claim construction process. Plaintiffs’ date also
`liberally provides the parties over six and a half
`months to produce documents and thus strikes
`a proper balance.
`
`By contrast, Defendants’ January 15, 2021
`substantial completion date is inefficient and
`prejudicial to Plaintiff. Defendants’ date is just
`three business days before the January 21, 2021
`deadline
`for Plaintiff’s opening
`claim
`construction brief. Defendants’ date delays
`
`
`
`6
`
`Defendants’ Proposal:
`
`January 15, 2021
`
`Defendants’ Reasoning:
`
`substantial
`proposal,
`Under Plaintiff’s
`completion of document production occurs
`too early in the case. The parties have already
`agreed that technical documents describing
`the Defendant’s Accused Products will be
`produced to Plaintiff shortly after those
`Accused Products are identified by Plaintiff in
`its
`infringement contentions. See, e.g.,
`Proposed Scheduling Order ¶ 6.A. This
`meaningful disclosure of core
`technical
`documents will provide the parties with
`sufficient information to, among other things,
`prepare for and exchange Claim Construction
`positions and meet and confer regarding these
`issues. This timing conforms with Judge
`Connolly’s
`standard Scheduling Order.
`Plaintiff’s proposed date
`requires
`that
`document
`production
`be
`substantially
`complete in the middle of these claim
`construction disclosures and meet and confer
`efforts. This merely poses a distraction to
`those efforts and does not meaningfully
`advance the issues.
`Defendants’ proposal, on the other hand, puts
`the
`substantial
`completion date
`after
`disclosures and meeting and conferring has
`concluded, but before Plaintiff’s opening
`brief is due. This will allow for the Parties to
`efficiently complete the required disclosures,
`and also will provide the Plaintiff with further
`technical details before its opening claim
`construction brief is filed. Defendants do not
`believe that more information about the
`accused products (in excess of what is
`envisioned by Judge Connolly’s order) is
`necessary for claim construction. Jurgens v.
`McKasy, 927 F.2d 1552, 1560 (Fed. Cir.
`1991) (“An analysis of infringement involves
`two steps. First, a claim is construed without
`regard to the accused product.”) However
`
`

`

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`this date was proposed as a good faith effort
`to compromise with Monterey while still
`ensuring that Defendants have sufficient time
`to complete its document production at an
`appropriate time in the case.
`
`completing document productions until late in
`the claim construction process—too late to
`provide the context necessary for streamlining
`disputes. In addition, Defendants’ January 15
`date would interfere with Plaintiff’s January 21
`opening claim construction brief by burdening
`Plaintiff with a significant document deadline
`just days before the due date for Plaintiffs’
`opening claim construction brief. Because only
`Plaintiff has a claim construction brief due
`January 21—the Defendants’ answering brief is
`not due until February 18—Defendants’
`January 15
`substantial completion date
`uniquely prejudices Plaintiff.
`
`B.
`
`Depositions
`
`The parties set forth below their respective proposals regarding deposition hours.
`
`Plaintiff’s Proposal:
`
`Defendants’ Proposal:
`
`Plaintiff is limited to no more than sixty (60)
`hours of deposition testimony of each
`Defendant Group (i.e., no more than 60 hours
`total deposition time for each Defendant
`Group, including their past or current officers,
`employees, and agents), inclusive of 30(b)(6)
`deposition time and deposition of third
`parties. Each Defendant Group is limited to
`no more than sixty (60) hours of deposition
`testimony, inclusive of 30(b)(6) deposition
`time and depositions of third-parties. Expert
`depositions do not count toward a party’s
`deposition time
`
`In each case:
` Plaintiff is limited to no more than 60 hours
`of deposition
`testimony,
`inclusive of
`30(b)(6) deposition time and depositions of
`third parties.
` The Defendant Group of that case is limited
`to no more than 60 hours of deposition
`testimony, inclusive of 30(b)(6) deposition
`time and depositions of third-parties.
` Expert depositions do not count toward a
`party’s deposition time.
`
`The Defendants also are collectively limited to
`no more than 80 total hours of deposition of
`Plaintiff and its Affiliates, including their past
`or current officers, employees, and agents.
`
`Each Defendant Group shall be provided notice
`of every third party deposition so that Each
`Defendant Group may decide if they want to
`participate in that deposition. If a Defendant
`Group elects to participate in the deposition, the
`deposition hours will count against
`that
`
`7
`
`
`
`
`
`

`

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`Defendant Group’s deposition hour limit. If a
`Defendant Group elects not to participate in that
`deposition, it shall not be permitted to use or
`rely on that deposition in its case.
`
`Plaintiff’s Reasoning:
`
`The parties generally agree that, in each case,
`each side has a total of 60 hours to depose fact
`witnesses, which includes the time deposing
`30(b)(6) witnesses and the third-parties.
`
`The parties differ with respect to coordinating
`discovery on common issues and eliminating
`the abuses of duplicative discovery. Due to
`common
`issues, a modest amount of
`coordination will streamline these five cases.
`These cases involve significant overlap in the
`asserted patents, underlying technology, and
`legal and factual
`issues.
` For example,
`Monterey contends that all five defendants
`infringe U.S. Patent No. 6,651,134. Six patents
`are asserted against multiple defendants. All
`patents concern semiconductor technologies.
`As a result, Defendants likely will depose
`identical Monterey witnesses and third parties
`on common
`issues.
` Without procedural
`limitations, the Defendants may attempt to take
`multiple, redundant depositions of the same
`witnesses and other duplicative discovery.
`
`Accordingly, Plaintiff proposes that Defendants
`are collectively limited to 80 total hours to
`depose Plaintiff and its Affiliates.
` This
`proposal
`is generous
`to Defendants—it
`collectively gives Defendants more hours to
`depose Plaintiff and its Affiliates (80 hours)
`than Plaintiff has to depose each Defendant
`Group (60 hours). Especially in view of
`common issues, 80 deposition hours is more
`than sufficient time for Defendants to depose
`Plaintiff and its Affiliates.
`
`third-party
`that
`also proposes
`Plaintiff
`depositions count against the deposition hours
`of each Defendant Group that participates in a
`
`
`
`8
`
`Defendants’ Reasoning
`
`Plaintiff Deposition Time:
`Plaintiff
`prematurely attempts to foreclose inquiry into
`itself.
`
`At this time, Defendants are unaware
`whom Plaintiff employs, what witnesses may
`be relevant, and how spread out, deep and
`divided at Plaintiff knowledge is regarding
`each patent. It is unclear how depositions may
`overlap. Indeed, overlap appears limited.
`Approximately two thirds of the patents are
`asserted against only one defendant, and four
`of five defendants have at least one patent
`uniquely asserted against them. Different
`defendants likely have radically different
`lines of inquiry. As they agreed, Defendants
`will work in good faith to avoid needless
`overlap.
`Plaintiff’s proposal also contradicts
`the principle that each party be subject to
`equal scrutiny. That Plaintiff filed five
`lawsuits should not reduce any single
`defendant’s ability to inquire from Plaintiff on
`equal ground as Plaintiff can from that
`defendant.
`cap on Defendants’
`a
`Should
`collective deposition of Monterey be
`necessary, Defendants propose150 hrs., (2.5x
`a single party limit).
`
`Third Party Depositions: Defendants agreed
`to
`coordinate
`regarding
`third
`party
`depositions. Deposition time will be charged
`to the taking party, as is typical. It may not be
`clear, when notified, whether such deposition
`will be relevant across all defendants. Under
`Plaintiff’s proposal, a defendant who does not
`notice a given third party deposition will be
`forced to use up to seven hours of deposition
`time even to preserve the possibility of using
`
`

`

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`third-party
`If a
`
`third-party deposition.
`deposition is not relevant to a particular
`Defendant Group, that Defendant Group need
`not participate in that deposition and the hours
`of that third-party deposition would not count
`against that Defendant Group’s deposition hour
`limit. But the Defendant Groups should not be
`permitted
`to
`circumvent
`their 60-hour
`deposition limit—and attempt to obtain an
`unfair
`tactical
`advantage
`at Plaintiff’s
`expense—by passing around and affirmatively
`using the transcripts of third-party depositions
`without those deposition hours counting against
`their deposition hour limit.
`
`
`
`the deposition in court, even if it turns out it
`has no relevance to that defendant’s case.
`Moreover, Plaintiff’s proposal is one-sided
`and inequitable: Plaintiff is charged a single
`time per third party deposition, regardless of
`the number of cases.
`There is always the possibility that a
`deposition is used beyond a case in which it is
`noticed. Rule 32 and applicable Federal Rules
`of Evidence govern such use. They should
`here.
`
`
`a) Time Limits for a Witness: Each individual fact deposition is limited to 7 hours, unless
`
`the parties agree otherwise or the Court so permits. To the extent more than one party
`
`seeks to depose the same fact witness, the parties shall confer regarding the total time
`
`to be allotted for deposing that fact witness and shall promptly raise any unresolved
`
`disputes with the Court. This limitation shall not apply to the deposition of the parties’
`
`designated experts. The parties shall confer regarding the time to be allotted for expert
`
`depositions following service of expert reports. For any deposition conducted
`
`primarily through an interpreter, 1.5 hours of time on the record will count for 1 hour
`
`of deposition time against this total allotment.
`
`II.
`
`DISCLOSURES, CONTENTIONS, AND EXCHANGE OF CORE DOCUMENTS
`
`Unique to patent litigation, the parties have agreed to a procedure for the exchange of
`
`relevant contentions, including infringement contentions and invalidity contentions. Further
`
`details concerning the contentions are in the attached Proposed Scheduling Order.
`
`The parties have agreed to the following:
`
`
`
`9
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`

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`a) Plaintiff’s Infringement Contentions: Within 50 days from the entry of the Scheduling
`
`Order, Plaintiff shall serve on all parties a “Disclosure of Asserted Claims and
`
`Infringement Contentions.” Separately for each opposing party, the disclosure shall
`
`contain the following information:
`o Each claim of each asserted patent that is allegedly infringed by each
`
`opposing party, including for each claim the applicable statutory subsections
`
`of 35 U.S.C. §271 asserted;
`o Separately for each asserted claim, each accused apparatus, product, device,
`
`process, method, act, or other instrumentality (“Accused Instrumentality”) of
`
`each opposing party of which the party is aware. This identification shall be as
`
`specific as possible. Each product, device, and apparatus shall be identified by
`
`name or model number, if known. Each method or process shall be identified
`
`by name, if known, or by any product, device, or apparatus which, when used,
`
`allegedly results in the practice of the claimed method or process;
`o A chart identifying specifically where and how each limitation of each
`
`asserted claim is found within each Accused Instrumentality, including for
`
`each limitation that such party contends is governed by 35 U.S.C. § 112(f), the
`
`identity of the structure(s), act(s), or material(s) in the Accused
`
`Instrumentality that performs the claimed function;
`o For each claim alleged to have been indirectly infringed, an identification of
`
`any direct infringement and a description of the acts of the alleged indirect
`
`infringer that contribute to or are inducing that direct infringement. Insofar as
`
`
`
`10
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`

`

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`alleged direct infringement is based on joint acts of multiple parties, the role
`
`of each such party in the direct infringement must be described;
`o Whether each limitation of each asserted claim is alleged to be present
`
`literally or under the doctrine of equivalents in the Accused Instrumentality;
`o For any patent that claims priority to an earlier application, the priority date to
`
`which each asserted claim is alleged to be entitled;
`o If a party claiming patent infringement wishes to preserve the right to rely, for
`
`any purpose, on the assertion that its own or its licensee’s apparatus, product,
`
`device, process, method, act, or other instrumentality practices the claimed
`
`invention, the party shall identify, separately for each asserted claim, each
`
`such apparatus, product, device, process, method, act, or other instrumentality
`
`that incorporates or reflects that particular claim;
`o The timing of the point of first infringement, the start of the claimed damages,
`
`and the end of claimed damages; and
`o If a party claiming patent infringement alleges willful infringement, the basis
`
`for such allegation.
`
`b) Plaintiff’s Document Production Accompanying Disclosure of Asserted Claims and
`
`Infringement Contentions: With the “Disclosure of Asserted Claims and Infringement
`
`Contentions,” Plaintiff shall produce:
`o Documents (e.g., contracts, purchase orders,
`
`invoices, advertisements,
`
`marketing materials, offer letters, beta site testing agreements, and third party
`
`or joint development agreements) sufficient to evidence each discussion with,
`
`disclosure to, or other manner of providing to a third party, or sale of or offer
`
`
`
`11
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`

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`to sell, or any public use of, the claimed invention prior to the date of application
`
`for the asserted patent(s);
`
`o All documents evidencing the conception, reduction to practice, design, and
`
`development of each claimed invention, which were created on or before the
`
`date of application for the asserted patent(s) or the priority date identified
`
`pursuant to paragraph 3(f) of this Order, whichever is earlier;
`
`o A copy of the file history for each asserted patent;
`
`o All documents evidencing ownership of the patent rights by the party asserting
`
`patent infringement;
`
`o If a party identifies instrumentalities pursuant to paragraph 3(g) of this Order,
`
`documents sufficient to show the operation of any aspects or elements of such
`
`instrumentalities the patent claimant relies upon as embodying any asserted
`
`claims;
`
`o All agreements, including licenses, transferring an interest in any asserted
`
`patent;
`
`o All agreements that the party asserting infringement contends are comparable
`
`to a license that would result from a hypothetical reasonable royalty negotiation;
`
`o All agreements that otherwise may be used to support the party asserting
`
`infringement’s damages case;
`
`
`
`12
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`o If a party identifies instrumentalities pursuant to paragraph 3(g) of this Order,
`
`documents sufficient
`
`to show marking of such embodying accused
`
`instrumentalities; and if the party wants to preserve the right to recover lost
`
`profits based on such products, the sales, revenues, costs, and profits of such
`
`embodying accused instrumentalities; and
`
`o All documents comprising or reflecting a F/RAND commitment or agreement
`
`with respect to the asserted patent(s).
`
`c) Defendant’s Invalidity Contentions: Defendants serve their Invalidity Contentions
`
`within 50 days from service of Plaintiffs “Disclosure of Asserted Claims and
`
`Infringement Contentions.” Defendants’ Invalidity Contentions shall contain the
`
`following information:
`
`o The identity of each item of prior art that the party alleges anticipates each
`
`asserted claim or renders the claim obvious. Each prior art patent shall be
`
`identified by its number, country of origin, and date of issue. Each prior art
`
`publication shall be identified by its title, date of publication, and, where
`
`feasible, author and publisher. Each alleged sale or public use shall be identified
`
`by specifying the item offered for sale or publicly used or known, the date the
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`offer or use took place or the information became known, and the identity of
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`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
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`made known. For pre-AIA claims, prior art under 35 U.S.C. § 102(f) shall be
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`identified by providing the name of the person(s) from whom and the
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`Case 1:20-cv-00158-NIQA-LAS Document 24-2 Filed 05/19/20 Page 14 of 22 PageID #: 189
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`circumstances under which the invention or any part of it was derived. For pre-
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`AIA claims, prior art under 35 U.S.C. § 102(g) shall be identified by providing
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`the identities of the person(s) or entities involved in and the circumstances
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`surrounding the making of the invention before the patent applicant(s);
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`o 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
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`the asserted claim obvious, including an identification of any combinations of
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`prior art showing obviousness;
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`o A chart identifying specifically where and how in each alleged item of prior art
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`each limitation of each asserted claim is found, 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
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`structure(s), act(s), or material(s) in each item of prior art that performs the
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`claimed function; and
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`o Any grounds of invalidity based on 35 U.S.C. § 101, indefiniteness under 35
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`U.S.C. § 112(b), or lack of enablement or insufficient written description under
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`35 U.S.C. § 112(a) of any of the asserted claims
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`d) Defendants’ Core Technical Production: With their “Invalidity Contentions,”
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`Defendants shall produce or make available for inspection and copying:
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`o Source code, specifications, schematics, flow charts, artwork, formulas, or
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`other documentation sufficient to show the operation of any aspects or elements
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`of an Accused Instrumentality identified by the patent claimant in its chart
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`produced pursuant to paragraph 3(c) of this Order;
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`o A copy or sample of the prior art identified pursuant to paragraph 5(a) that does
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`not appear in the file history of the patent(s) at issue. To the extent any such
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`item is not in English, an English translation of the portion(s) relied upon shall
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`be produced;
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`o All agreements that the party opposing infringement contends are comparable
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`to a license that would result from a hypothetical reasonable royalty negotiation;
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`o Documents sufficient to show the sales, revenue, cost, and profits for Accused
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`Instrumentalities identified pursuant to paragraph 3(b) of this Order for any
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`period of alleged infringement; and
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`o All agreements that may be used to support the damages case of the party that
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`is denying infringement.
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`e) Amendment: Amendment of the Infringement Contentions or the Invalidity
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`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
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`the non-moving party, support a finding of good cause include (a) recent discovery of
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`material prior art despite earlier diligent search and (b) recent discovery of nonpublic
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`information about the Accused Instrumentality which was not discovered, despite
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`diligent efforts, before the service of the Infringement Contentions. The duty to
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`supplement discovery responses does not excuse the need to obtain leave of the Court
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`to amend contentions
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`III. ELECTRONIC DISCOVERY
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`The parties have agreed to the following:
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`a) Electronic Service: Service of all papers, including but not limited to motions, initial
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`disclosures, discovery requests, discovery responses and objections, deposition notices,
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`and expert reports, may be effected via email delivery. All email service must be
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`effected by 6:00PM ET the day of the service deadline to be considered timely.
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`b) ESI Order: The parties expect to discuss further the need for and potential provisions
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`of a separate ESI Order. Such order, to the extent necessary, will be modeled on the
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`Delaware Default Standard For Discovery, Including Discovery Of Electronically
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`Stored
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`Information
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`(“ESI”),
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`https://www.ded.uscourts.gov/sites/ded/files/EDiscov.pdf.
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`EXPERT DISCOVERY
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`The parties have agreed to the following:
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`a) Opening Expert Reports: The parties file opening expert reports by September 23,
`2021.
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`b) Rebuttal Expert Reports: The parties file rebuttal expert reports by October 25, 2021.
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`c) Reply Expert Reports: The parties file reply expert reports by November 16, 2021.
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`d) Close of Expert Discovery: Expert discovery in this matter is to be completed by
`December 16, 2021.
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`
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`CLAIM CONSTRUCTION BRIEFING AND HEARING
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` Claim Construction briefing shall occur separately but concurrently for each asserted
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`patent.
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`a) Joint Claim Construction Chart: The parties submit joint claim construction charts by
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`December 3, 2020.
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`b) Meet and Confer And Court “Check-In”: After the submission of the Joint Claim
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`Construction Charts, the parties shall meet and confer about the number of terms to be
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`construed and the word limits for briefing. By December 10, 2020, the parties should
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`either submit a stipulation on these topics or their competing proposals to the Court. In
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`the event there are disputes between the parties, the Court will hold a teleconference
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`on December ___, 2020 at __:___ __.m
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`Unless subsequently changed by stipulation or Court order, the parties will abide by
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`the following schedule and per-patent word limits for claim construction briefing;
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`however, the parties have not reached agreement on the total number of words for
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`briefing across all the asserted patents.2
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`c) Opening Brief: Plaintiff serves on the Defendant Groups against whom each respective
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`patent is asserted, but does not file, its opening claim construction brief with respect to
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`that patent by January 21, 2021. Plaintiff’s opening brief with respect to each patent
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`shall be between 600 and 2600 words, but in no event will the total number of words
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`2 See t