UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`
`In the Matter of
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`CERTAIN WEARABLE ELECTRONIC
`DEVICES WITH ECG FUNCTIONALITY
`AND COMPONENETS THEREOF
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`
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` Inv. No. 337-TA-1266
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`NOTICE OF GROUND RULES; ORDER SETTING DATE FOR
`SUBMISSION OF JOINT DISCOVERY STATEMENT
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`(May 26, 2021)
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`ORDER NO. 2:
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`
`
`GROUND RULES
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`The conduct of this Investigation shall be governed by the Commission Rules and the
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`Ground Rules attached hereto.
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`DISCOVERY STATEMENTS
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`In order that the proceeding in this matter may begin expeditiously, the parties are
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`directed to file a joint discovery statement, on or before June 9, 2021, addressing the questions
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`and answers set forth in the Attachment A.
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`TARGET DATE
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`The parties are advised that an order will issue setting the target date after I have
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`considered the positions of the parties as set forth in their respective discovery statements.
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`SO ORDERED.
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`_____________________________
`Cameron Elliot
`Administrative Law Judge
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`ATTACHMENT A
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`ATTACHMENT A
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`JOINT DISCOVERY STATEMENT
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`The parties shall file a Joint Discovery Statement that includes the following:
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`The parties’ positions on the applicable topics of the “Discovery Statement
`Checklist” (see Exhibit A).
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`The parties’ proposed limitations and procedures for fact and expert discovery
`including:
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`a.
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`b.
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`c.
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`d.
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`Whether the parties recommend that expert discovery precede or follow any
`summary determination practice.
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`Whether the parties agree to conduct depositions in a particular location
`(e.g., bring up to five foreign witnesses to the U.S. for deposition).
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`Whether the parties recommend that the ALJ set a date before which
`contention interrogatory responses need not be provided.
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`Recommendations for limiting the number of claim terms to be presented
`to the ALJ for construction.
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`1.
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`2.
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`EXHIBIT A
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`DISCOVERY STATEMENT CHECKLIST
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`Issues to be litigated
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`a.
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`b.
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`Identify all issues to be litigated (e.g., infringement, affirmative defenses,
`importation, domestic industry, remedy, bonding, and public interest (if delegated
`to the undersigned by the Commission))
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`Identify specific proposals in which these issues can be narrowed to make the
`hearing more meaningful and efficient.
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`A description of information and evidence that each party intends to submit to prove its
`own case;
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`A description of the specific information and evidence that each party will be seeking from
`other parties and third persons;
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`Preliminary issues that are likely to arise that will require judicial intervention;
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`Identification of dispositive issues that should be resolved early in the Investigation, and
`specific proposals for disposition of such issues;
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`Identification of issues amenable to stipulations (e.g., electronic service of discovery);
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`Proposed discovery limitations including, but not limited to:
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`a.
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`b.
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`c.
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`d.
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`e.
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`f.
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`g.
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`limitations on types of discovery beyond those in the Commission Rules and
`applicable Ground Rules (i.e., limits on depositions, number of interrogatories,
`requests for admission);
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`limitations on scope of discovery;
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`limitations on timing and sequence of discovery;
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`agreements to allow depositions of hearing witnesses named if not already deposed,
`and preservation depositions, foreign discovery, or other anticipated issues;
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`agreements to exchange certain information without the use of formal discovery;
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`agreements or limitations on discovery of electronically-stored information;
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`and
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`h.
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`limitations on discovery of expert-related hearing preparation materials.
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`Status of any litigation that may affect any issue in this Investigation;
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`Status of any proceedings (including reexaminations) before the U.S. Patent and
`Trademark Office;
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`10.
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`Proposal for any modifications to the protective order now in effect for this Investigation,
`with the understanding that actual amendments to the protective order will only be effected
`through subsequent written motion;
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`11. Whether a Markman hearing is necessary and if so, a proposed date for the Markman
`hearing; and
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`12.
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`Position as to target date.
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`These Ground Rules supplement the Commission’s Rules of Practice and Procedure, 19
`C.F.R. Parts 201 and 210 (“Commission Rules”), in order to aid the Administrative Law Judge in
`the orderly conduct of the section 337 investigation pursuant to the Administrative Procedure Act,
`5 U.S.C. § 556(c).
`
`
`These Ground Rules govern a U.S. patent-based investigation pursuant to 19 U.S.C.
`§ 1337(a)(1)(B). In the case of an investigation based upon a registered copyright, registered
`trademark, or a trade secret pursuant to 19 U.S.C. § 1337(a)(1)(B), (C) or (D), additional Ground
`Rules may govern. In addition, in a case involving a motion for temporary relief pursuant to 19
`U.S.C. § 1337(e), additional Ground Rules may also govern.
`
`
`GROUND RULES FOR SECTION 337 INVESTIGATIONS
`
`In case of any conflict between these Ground Rules and any subsequent order issued by
`the Administrative Law Judge or the Commission in this Investigation, the subsequent order shall
`control.
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`**These Ground Rules may be modified, by the Administrative Law Judge or motion,
`as required to accommodate the Commission’s operating status during the COVID-19
`pandemic**
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`

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`JUDGE ELLIOT’S GROUND RULES
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`Address; Requirements for Filing, Service, and Copies; Time
`
`1.1
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`Address of the Administrative Law Judge.
`
`The Administrative Law Judge’s address is as follows:
`
`ALJ Cameron Elliot
`U.S. International Trade Commission
`500 E Street, S.W., Room 317
`Washington, D.C. 20436
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`1.2
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`Filing Requirement.
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`1.
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`All submissions shall be filed with the Office of the Secretary of the Commission in
`accordance with Commission Rule 210.4(f), unless otherwise specifically provided for in these
`Ground Rules or by order of the Administrative Law Judge.
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`1.3
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`Service Copy Requirements.
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`
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`In accordance with the requirements of Commission Rules 210.4(f)(2) and (g), copies of
`each submission shall be served on all other parties, including the Commission Investigative Staff.
`On the same day that the submission is filed, an electronic copy in PDF format shall be sent to the
`Administrative Law Judge’s attorney-advisor, Mary Jane Boswell at mary.boswell@usitc.gov.
`Electronic copies of confidential documents must be encrypted and the password sent in a separate
`email.
`
`
`1.4
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`Service on opposing counsel may be by hand, by e-mail, or by overnight courier. Parties
`are encouraged to agree upon a method of service so that the parties will receive all submissions
`at the same time the submissions are received by the Commission.
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`
`Concurrent Service.
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`1.5
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`Computation of Time.
`
`The first day of the ten (10) calendar days for responding to a motion received by the
`Administrative Law Judge shall be the first business day following the date that said motion was
`filed in the Office of the Secretary, and shall apply whether a motion is hand delivered, emailed,
`or served by overnight courier on the other parties. In addition to the requirements of Commission
`Rules 201.14, 201.16(d), and 210.6 for computation of time, if the last day of the period of time
`for making a submission falls on a day on which weather or other circumstances have made the
`Office of the Secretary of the Commission inaccessible, the period shall run until the end of the
`next business day which is not one of the aforementioned days.
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`1.6
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`Request for Extension of Time.
`
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`Any request for extension of time must be made by written motion two days before the
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`due date and good cause for such extension must be established. Motions filed after this date may
`not be ruled on prior to the expiration of the deadline and may be denied for failure to abide by
`this rule.
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`Confidential Submissions.
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`1.7
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`
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`The confidential nature of any filing with the Office of the Secretary of the Commission or
`of any submission to the Administrative Law Judge shall be conspicuously noted on the top page
`of any filing or other submission. The parties should ensure that any confidential submission
`complies with Commission Rule 201.8.
`
`If the Administrative Law Judge issues a confidential order or initial determination, the
`parties must jointly submit within seven (7) days of the order: (1) a proposed public version of
`this order with any proposed redactions indicated in red; and (2) a written justification for any
`proposed redactions specifically explaining why the piece of information sought to be redacted is
`confidential and why disclosure of the information would be likely to cause substantial harm or
`likely to have the effect of impairing the Commission’s ability to obtain such information as is
`necessary to perform its statutory functions pursuant to Commission Rules 210.5 and 201.6(a).
`
`To the extent possible, the proposed redactions should be made electronically, in a pdf of
`the issued order, using the “Redact Tool” within Adobe Acrobat, wherein the proposed redactions
`are submitted as “marked” but not yet “applied.” The parties shall have an opportunity to respond
`regarding any proposed redactions the Administrative Law Judge views as not meeting the
`Commission’s standards for confidential business information.
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`Procedural Schedule
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`2.
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`The Administrative Law Judge will promulgate a procedural schedule for the investigation.
`Modifications of the procedural schedule by any party shall be made by written motion showing
`good cause. Deadlines marked with an asterisk only apply if it is determined that a Markman
`hearing shall be held. (See Rule 6.) The event and deadline dates in the procedural schedule will
`generally adhere to the following chronological order, although the parties may agree to modify
`this order when proposing dates in the Joint Proposed Procedural Schedule:
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`File identification of expert witnesses, including their expertise
`and curriculum vitae
`Exchange list of claim terms to be construed*
`Exchange of proposed claim constructions*
`Initial deadline for responses to contention interrogatories on
`issues for which the responding party bears the burden of proof
`Meet and confer to discuss and limit number of disputed claim
`terms*
`Initial Markman briefs*
`Rebuttal Markman briefs*
`Submission of joint proposed claim construction chart*
`Initial deadline for responses to contention interrogatories on
`issues for which the responding party does not bear the burden
`of proof
`Joint Tutorial1 and Markman hearing*
`Submission of updated joint proposed claim construction chart*
`File notice of prior art
`Cut-off date for supplements to contention interrogatories on
`issues for which the responding party bears the burden of proof,
`and on public interest issues (if applicable)
`Cut-off date for supplements to contention interrogatories on
`issues for which the responding party does not bear the burden
`of proof
`Fact discovery cut-off and completion
`Deadlines for motions to compel fact discovery
`Exchange of initial expert reports (identify tests/surveys/data)
`File tentative lists of witnesses a party will call to testify at the
`hearing, with an identification of each witness’ relationship to
`the party
`Exchange of rebuttal expert reports
`Expert discovery cut-off and completion
`Deadline for motions to compel expert discovery
`Deadline for filing motions for summary determination
`Exchange of exhibit lists among the parties
`Submit and serve direct exhibits, with physical exhibits available
`- Complainant(s) and Respondent(s)
`Submit and serve direct exhibits, with physical exhibits available
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`1 The tutorial shall be limited to a general overview of the technology and should not include any
`discussion of the asserted patents, the claim terms at issue, or the accused products. In addition,
`the tutorial should not exceed one hour and should consist of one presentation agreed upon by all
`parties.
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`– Staff
`Submit and serve rebuttal exhibits, with rebuttal physical
`exhibits available – all parties
`File pre-trial statements and briefs – Complainant(s) and
`Respondent(s)
`File pre-trial statement and brief – Staff
`Deadline to file motions in limine
`File responses to motions in limine
`Pre-trial conference
`Hearing
`File initial post-trial briefs and final exhibit lists
`File reply post-trial briefs
`Initial Determination
`Target date for completion of investigation
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`Motions; Deadlines for Responses
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`3.1
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`Contents; In General.
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`3.
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`All written motions shall consist of: (1) a memorandum of points and authorities in support
`of the motion; (2) an appendix of declarations, affidavits, exhibits, or other attachments in support
`of the memorandum of points and authorities; and (3) a Certificate of Service as required by
`Commission Rule 201.16(c).
`Motions may be filed on EDIS in combination with exhibits, that is, the motion and exhibits
`may be all one document, or exhibits may be filed as individual documents, separate from the
`motion they accompany. However, if exhibits are filed as separate documents, they shall be
`identified on EDIS by their exhibit number.
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`All responses to motions shall include the Motion Docket Number assigned to the motion
`by the Commission’s Office of the Secretary in either the title or the first paragraph of any such
`response,2 and shall consist of: (1) a memorandum of points and authorities in response to the
`motion; (2) an appendix of declarations, affidavits, exhibits, or other attachments in support of the
`memorandum of points and authorities; and (3) a Certificate of Service as required by Commission
`Rule 201.16(c).
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`If a motion or related document (e.g., response or reply) contains confidential business
`information as defined in 19 C.F.R. § 201.6(a), the private parties must file a nonconfidential copy
`of the motion and/or related document within five (5) business days from the date of filing. For
`those cases where OUII is a party, OUII shall have ten (10) business days to submit a
`nonconfidential version of the motion and/or related document. It is incumbent on the party filing
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`2 Motion Docket Numbers may be obtained online through the Commission’s Electronic
`Document Information System (EDIS).
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`the motion to verify with opposing (or third party) counsel what information is confidential. If an
`exhibit to a motion or related document is not capable of redaction, this must be clearly indicated
`on the exhibit cover sheet. In addition, for any document a party is claiming is not capable of
`redaction, a declaration shall be filed justifying why the entire document must remain confidential.
`When redacting confidential business information, a high level of care must be exercised in order
`to ensure that non-confidential business information is not redacted or indicated. **Paper copies
`of such nonconfidential filings need not be submitted to the ALJ.**
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`3.1.1 Case Citations.
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` A
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` copy of any cited decision or order that is not available on Westlaw or LEXIS shall be
`provided in an appendix to the brief or pleading.
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`3.2
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`Contents; Certification.
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`
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`All motions shall include a certification that the moving party has made reasonable, good-
`faith efforts to resolve the matter with the other parties at least two business days3 prior to filing
`the motion, and shall state, if known, the position of the other parties on such motion. Said
`certification shall be placed at the beginning of the motion under a heading entitled “Ground Rule
`3.2 Certification” or similar language.
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`3.3 Motions for Summary Determination and Responses Thereto.
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`
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`Motions for summary determination are limited to one motion per party and are limited to
`50 pages (excluding exhibits). Responses to motions for summary determination are limited to
`one per party and are limited to 50 pages (excluding exhibits). To the extent there is more than one
`complainant and/or respondent in an investigation, complainants and/or respondents shall
`coordinate their efforts and submit a single brief. Exceptions to this rule will be made on a case-
`by-case basis.
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`3 Parties can agree to waive the “two business days” requirement.
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`3.4
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`Discovery-Related Motions.
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`3.4.1 Teleconference Requirement.
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`Prior to filing any motion related to a discovery dispute, the party that seeks to file such a
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`motion must discharge its obligation to meet and confer under Ground Rule 3.2. If, after
`discharging its obligation under that rule, the discovery dispute persists, the party intending to file
`the discovery-related motion shall contact the Administrative Law Judge’s attorney-advisor to
`schedule a telephone conference with the Administrative Law Judge in an attempt to resolve the
`discovery dispute. Prior to contacting the Administrative Law Judge’s attorney-advisor, the party
`should determine the availability of the other parties for a telephone conference. The party
`intending to file the discovery-related motion is responsible for setting up the teleconference,
`ensuring that a court reporter is present for the teleconference, and filing the transcript of the
`teleconference on EDIS.
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`At least forty-eight (48) hours prior to the conference call, the party intending to file the
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`motion shall file a written explanation of the discovery dispute. The written explanation shall be
`no more than three (3) pages. Any other party wishing to file an explanation of that discovery
`dispute may also do so provided the explanation is filed at least twenty-four (24) hours prior to
`the conference call and is also not more than three (3) pages.
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`Leave to file a discovery-related motion will be granted, if at all, only after the intended
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`movant has complied with the procedure provided herein.
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`Note that this subsection does not apply to third-party (a.k.a. non-party) discovery disputes.
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`3.4.2 Contents of Discovery-Related Motions.
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`Any discovery-related motion must have appended to it the pertinent parts of the discovery
`request and all objections and answers thereto. Additionally, if a party serves supplemental
`responses subsequent to the filing of a motion to compel, that party shall file copies of the
`supplemental responses, or where documents are produced, a detailed accounting of what
`additional documents were produced.
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`3.5
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`Deadline for Filing Response to Motion.
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`
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`
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`In addition to the requirements of Commission Rules 201.16 and 210.15(c) governing the
`time period for a nonmoving party’s response to a written motion, the date of service of a motion
`on a nonmoving party by electronic mail, hand-delivery or by an express-type mail or courier
`service is the date of delivery. The additional time provided under Commission Rule 201.16(d)
`after service by mail does not apply in such instances, unless service by electronic mail,
`hand-delivery or by an express-type mail or courier service is to a nonmoving party in a foreign
`country, in which event the additional time allowed for responses to motions shall be five (5) days.
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`3.6
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`Request for Shortened Time to Respond to Motion.
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`
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`A motion may include a request to shorten the period of time during which other parties
`may respond to the motion. The fact that a shortened response time is requested shall be noted in
`the title of the motion and the motion shall include an explanation of the grounds for such a request.
`A request for a shortened response time shall not be made through a separate motion. Requests for
`shortened response time are disfavored and should only be made for good cause.
`
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`3.7
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`No Motion Stops Discovery Except Motion to Quash Subpoena.
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`No motion stops discovery except a timely motion to quash a subpoena.
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`Discovery
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`4.1
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`Resolution of Disputes; Coordinated Discovery.
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`4.
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`All parties shall make reasonable efforts to resolve among themselves disputes arising
`during discovery. Parties with similar interests must coordinate and consolidate depositions and
`all other discovery.
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`4.1.1 Discovery Committee.
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`Commencing with the first full week after these Ground Rules are issued, a discovery
`conference committee (the “Discovery Committee”) consisting of the lead counsel of each party
`and the Commission Investigative Staff shall convene at least once every two weeks during the
`discovery phase of this Investigation, either in person or by telephone, to resolve discovery
`disputes. The Discovery Committee shall confer in good faith to resolve every outstanding
`discovery dispute in a timely manner within the deadlines set forth in the Procedural Schedule.
`
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`4.2
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`Stipulations Regarding Discovery Procedure.
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`
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`Unless otherwise directed by the Administrative Law Judge, the parties may by written
`stipulation provide that depositions may be taken before any person, at any time or place, upon
`any notice, and in any manner and when so taken may be used like other depositions. The parties
`may also modify other procedures governing or limitations placed upon discovery, except that
`stipulations extending the time for responses to discovery may, if they would interfere with the
`target date of the investigation or with any time set in the procedural schedule or in an order for
`completion of discovery, for hearing of a motion, or for the trial, be made only with the approval
`of the Administrative Law Judge upon a written motion showing good cause.
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`4.3
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`Service of Discovery Requests and Responses.
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`Discovery requests and responses thereto shall be served upon all parties, including the
`Commission Investigative Staff, but shall not be served on the Administrative Law Judge
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`unless they are pertinent to a motion. Discovery documents need not be served on the Office of
`the Secretary of the Commission, unless they are appended to motions.
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`
`4.4
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`Discovery Requests, Responses and Objections.
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`4.4.1 Depositions; Notice and Objections.
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`
`
`
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`In addition to the requirements of Commission Rule 210.28(c), unless otherwise ordered,
`any party desiring to take a deposition shall give notice in writing to every other party of not less
`than ten (10) days if the deposition is to be taken of a person located in the United States, or of not
`less than fifteen (15) business days if the deposition is to be taken of a person located outside the
`United States.
`
`Speaking objections during depositions are prohibited. Objections to the form of a
`deposition question shall be made by stating, simply, “objection as to form.”
`
`
`4.4.2 Contention Interrogatories.
`
`Parties are expected to respond to contention interrogatories by the date set forth in the
`Procedural Schedule. A party may not introduce theories or evidence at the hearing that are outside
`the scope of its responses to contention interrogatories.
`
`Conclusory statements in responses to contention interrogatories are insufficient; e.g., if a
`party simply states: “there is also infringement under the doctrine of equivalents,” the party is
`prohibited from later introducing evidence regarding the details of such infringement.
`
`Amendment or supplementation of responses to contention interrogatories after the
`deadlines set forth in the Procedural Schedule may be made only with leave of the Administrative
`Law Judge and shall be entered only upon a showing of good cause.
`
`
`4.4.3 Requests for Admission; Period for Service; Deadline for Responses
`and Objections.
`
`In addition to the requirements of Commission Rules 210.31(a) and (b), unless otherwise
`ordered, a request for admission may be served at any time twenty (20) days after the date of
`service of the Complaint and Notice of Investigation. Commission Rules 210.31(b) and (c) will
`be enforced against improper objections and responses; e.g., responses which read “we lack
`enough information to confirm or deny and so we deny” or “we object generally and therefore
`deny.”
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`Fact discovery requests by any party that would require responses after the fact discovery
`cutoff and completion date must be approved in advance by the Administrative Law Judge upon a
`showing of compelling circumstances.
`
`4.5
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`4.4.4 Discovery Cutoff and Completion.
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`Subpoenas.
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`4.5.1 Issuance and Service.
`
`
`
`Pursuant to Commission Rule 210.32, application for subpoena may be made ex parte to
`the Administrative Law Judge. The original application with the proposed subpoena attached and
`one copy thereof must be submitted to the office of the Administrative Law Judges. Electronic
`copies of subpoenas will not be accepted. A cover letter must accompany the application and
`should clearly indicate who to contact when the subpoena application is ready. The application
`shall set forth with specificity the relevancy of the information sought and the reasonableness of
`the scope of the inquiry. In addition, the subpoena should set forth a time limit for a motion to
`quash and should also state that the subpoena will be served by overnight delivery, if not sooner.
`The signature page for the subpoena shall not be on a separate page and must include the case
`caption. Any dates in a subpoena set for appearance of a deponent or production of documents
`should not be prior to the deadline for filing of any motions to quash. Samples of subpoenas are
`attached in Appendix A hereto.
`During the Covid 19 Pandemic the original application with the proposed subpoena
`attached shall be submitted, in WORD format, by email to my attorney advisor, Mary Jane
`Boswell at mary.boswell@usitc.gov.
`
` A
`
` copy of the issued subpoena and the application shall be served by the applicant upon
`the subpoenaed party and all other parties to the investigation on the next business day, at the latest,
`after the subpoena is issued. The application and subpoena need not be filed with or served on the
`Office of the Secretary of the Commission, including EDIS, unless they are appended to a motion
`to quash or motion for a protective order.
`
`
`4.5.2 Motion to Quash Subpoena; Deadline.
`
`
`
`In addition to the requirements of Commission Rule 210.32(d), any motion to limit or
`quash a subpoena shall be filed within ten (10) days after receipt thereof, or within such other time
`as the Administrative Law Judge may allow. Filing of any motion to quash an issued subpoena
`automatically stays such subpoena pending disposition of the motion by the Administrative Law
`Judge.
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`4.5.3 Subpoenas Ad Testificandum for Hearings.
`
`Applications for subpoenas ad testificandum to appear at the hearing must be submitted
`fourteen (14) days prior to the start of the hearing. Leave to subpoena a witness after this time will
`only be granted upon a written motion showing compelling circumstances.
`
`4.6
`
`Bates Numbering.
`
`
`
`If documents produced by any supplier in response to a document request are furnished to
`the requester as copies of original documents, every page of every such document shall be
`numbered sequentially by a unique number (commonly known as a “Bates number”). The Bates
`number shall appear in a consistent location on each page of the document.
`
`4.7
`
`Translations.
`
`
`
`All documents produced in response to a document request shall be the original or true
`complete copies of originals. If an English translation of any document produced exists, the
`English translation shall be produced.
`
`4.8
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`Privileged Matter.
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`
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`In order to expedite discovery, the following procedure shall be followed with respect to
`those documents for which counsel claims privilege (attorney-client or work product).
`
`
`4.8.1 Claiming Privilege.
`
`
`If a party objects to discovery on the basis of a claim of privilege, the party asserting the
`
`privilege shall, in the objection to the interrogatory, document request, or part thereof, identify
`with specificity the nature of the privilege (including work product) that is being claimed.4 The
`following information shall be provided in the objection, if known or reasonably available, unless
`divulging such information would cause disclosure of the allegedly privileged information: (A)
`For oral communications: (i) the name of the person making the communication and the name(s)
`of persons present while the communication was made; (ii) the date and place of the
`communication; and (iii) the subject matter of the communication; (B) For documents: (i) the
`sender(s)/author(s) of the document; (ii) the recipient(s) of the document; (iii) the date of the
`document; and (iv) the subject matter of the document. The individuals involved in any discovery
`withheld on the basis of privilege shall be identified by position and entity (corporation, firm, etc.)
`with which they are employed or associated. If the author/sender or recipient is an attorney or
`foreign patent agent, he or she shall be so identified.
`
`
`
`4 If a party asserts that the common interest privilege applies, the party should so note and also
`identify the underlying privilege (i.e., attorney-client privilege or work product) that protects the
`discovery from disclosure.
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`
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`The above information should be provided separately for each document for which
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`privilege/protection is asserted, unless doing so would be excessively burdensome or expensive.
`In such instances, the party asserting privilege/protection should particularize why providing
`separate designations would be excessively burdensome or expensive, and then may identify by
`categories the voluminous documents or communications for which privilege/protection is
`asserted, providing the above information for each category. A party may only designate
`documents as privileged/protected by category
`if each document (A)
`is within
`the
`privilege/protection claimed and (B) shares common characteristics such as sender, receiver,
`author, or specific subject matter.
`
`Where only part of a document or communication is privileged/protected, the
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`unprivileged/unprotected portion should be disclosed if otherwise discoverable and within the
`scope of the discovery request. Emails and attachments shall be treated as separate documents.
`Additionally, the parties are encouraged to confer and reach agreement regarding how to assert
`privilege/protection claims with respect to email “chains” or “strings.”
`
`
`
`4.8.2 Motions to Compel Production of Privileged Matter.
`
`
`
`Any party seeking production of allegedly privileged documents shall file an appropriate
`motion only after examining the privileged document list. In opposing any such motion, a party
`must demonstrate that each element of the applicable privilege(s) has been met. This may be done
`through the submission of affidavits or other appropriate evidence. Blanket assertions of privilege
`are insufficient. Failure to submit evidence to support privilege claims may result in waiver of the
`privilege.
`
`
`4.8.3 Timing of Privilege Claims.
`
`
`The privileged document list shall be supplied, unless otherwise ordered or agreed upon
`by the parties, within ten (10) days after objections based on privilege to the underlying
`discovery request are due.
`
`5.
`
`
`Notice of Prior Art
`
`Parties must file on or before the date set in the procedural schedule, notices of any prior
`art consisting of the following information: country, number, date, and name of the patentee of
`any patent; the title, date and page numbers of any publication to be relied upon as anticipation of
`the patent in suit; or as showing the state of the art, and the name and address of any person who
`may be relied upon as the prior inventor or as having prior knowledge of or as having previously
`used or offered for sale the invention of the patent in suit.
`
`
`If a trademark is involved, the parties must file on or before the date set in the procedural
`schedule, notices of any art on which a party will rely at the hearing regarding the functionality or
`non-functionality of any trademarks at issue.
`
`
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`In the absence of such notice, proof of said matters may not be introduced into evidence at
`the hearing except upon a timely written motion showing good cause.
`
`
`6.
`
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`Markman Hearing on Claim Construction
`
`Expert Witnesses and Reports
`
`If the Administrative Law Judge determines that a Markman hearing would be beneficial