throbber
Case 2:22-cv-11408-TGB ECF No. 13, PageID.386 Filed 09/23/22 Page 1 of 32
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION
`
`
`Case No. 2:22-md-03034-TGB
`
`In Re: Neo Wireless, LLC,
`Patent Litigation
`
`
`Neo Wireless, LLC, v.
`Ford Motor Company
`Neo Wireless, LLC, v.
`American Honda Motor Co., Inc., et al.
`
`Neo Wireless, LLC, v.
`Volkswagen Group of America, Inc. et
`al.
`
`Neo Wireless, LLC, v.
`Nissan North America Inc. et al.
`
`Neo Wireless, LLC, v.
`Toyota Motor Corporation et al.
`
`Neo Wireless, LLC, v.
`General Motors Company et al.
`
`Neo Wireless, LLC, v.
`Tesla Inc.
`
`Neo Wireless, LLC, v.
`Mercedes-Benz USA, LLC
`
`Neo Wireless, LLC, v.
`FCA US LLC
`
` Hon. Terrence G. Berg
`
`2:22-CV-11402-TGB
`
`2:22-CV-11403-TGB
`
`2:22-CV-11404-TGB
`
`
`
`2:22-CV-11405-TGB
`
`2:22-CV-11406-TGB
`
`2:22-CV-11407-TGB
`
`2:22-CV-11408-TGB
`
`2:22-CV-11769-TGB
`
`2:22-CV-11770-TGB
`
`
`JOINT RULE 26 REPORT AND PROPOSED SCHEDULING ORDER
`
`
`
`1
`
`

`

`Case 2:22-cv-11408-TGB ECF No. 13, PageID.387 Filed 09/23/22 Page 2 of 32
`
`Pursuant to Rule 26(f) of the Federal Rules of Civil Procedure, the parties to
`
`this case, by and through their respective counsel, jointly submit this Rule 26(f)
`
`Report and Proposed Scheduling Order:
`
`
`
`Initial Disclosures
`Fact Discovery Commences
`Infringement Contentions1
`Invalidity Contentions
`Deadline to Amend Pleadings and Add
`Parties
`Contact Technical Advisor to Schedule
`Settlement Conference (Court)
`Initial Identification of Disputed Claim
`Terms
`Exchange Proposed Interpretations of
`Disputed Claim Terms
`Final Identification of Disputed Claim
`Terms
`Informal Technology Tutorial (Court)
`Plaintiff’s Opening Claim Construction
`Briefs
`Defendant’s Responsive Claim
`Construction Brief
`Plaintiff’s Reply Claim Construction
`Brief
`Claim Construction Hearing (Court) (2-3
`months from deadline of Plaintiff’s Reply
`Claim Construction Brief)
`
`
`
`The Parties’ Joint Proposal
`Wednesday, September 14, 2022
`Wednesday, August 10, 2022
`Wednesday, September 28, 2022
`Wednesday Nov. 16, 2022
`Friday, December 16, 2022
`
`TBD
`
`Thursday, December 1, 2022
`
`Wednesday, December 15, 2022
`
`Wednesday, January 18, 2023
`
`TBD
`Thursday, February 16, 2023
`
`Thursday, March 16, 2023
`
`Thursday, March 30, 2023
`
`TBD
`
`1 The Parties agree to address all non-burden contentions (e.g., non-infringement contentions)
`through traditional discovery requests. The parties further agree that they may jointly modify the
`schedule upon agreement of all parties to the extent such modifications do not impact the timing
`for filing of claim construction briefs; claim construction hearing; or dispositive motion
`deadlines. Modification to the timing for filing of claim construction briefs; claim construction
`hearing; or dispositive motion deadlines shall require an order of the Court.
`
`
`
`2
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.388 Filed 09/23/22 Page 3 of 32
`
`The Parties’ Joint Proposal
`1 Month after Markman Order
`
`10 Weeks after Markman Order
`14 Weeks after Markman Order
`
`
`Deadline for Parties to Amend
`Contentions
`Fact Discovery Closes
`Expert Reports on Infringement
`(Plaintiff), Invalidity (Defendant), and
`Damages (Plaintiff)
`Rebuttal Expert Reports
`Expert Discovery Deadline
`Dispositive Motion Deadline
`Oppositions to dispositive motions
`Replies to dispositive motions
`RULE 26(f) CONFERENCE
`I.
`Pursuant to Rule 26(f), the parties held an initial meeting on August 10, 2022,
`
`18 Weeks After Markman Order
`22 Weeks after Markman Order
`26 Weeks after Markman Order
`21 days from filing
`14 days from oppositions
`
`which was attended by attorneys from all parties as set forth in the signature blocks
`
`below.
`
`II. DISCOVERY PLAN
`
`The discovery in this case is limited to the disclosures described in the
`
`following paragraphs. Where a limit is defined by Defendant that limit shall apply
`
`to a group of legally affiliated Defendants.
`
`a.
`
`Interrogatories. Plaintiff may serve up to 25 interrogatories on
`
`each Defendant. Defendants may serve 15 joint interrogatories
`
`on Plaintiff, and each party Defendant may serve 10
`
`individualized
`
`interrogatories on Plaintiff.
`
`Individualized
`
`interrogatories may not be used by Defendants to indirectly
`
`increase the number of joint interrogatories.
`
`
`
`3
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.389 Filed 09/23/22 Page 4 of 32
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`b.
`
`Requests for Admission. Plaintiff may serve up to 40 requests
`
`for admission on each party Defendant. Defendants shall serve
`
`20 joint requests for admission on Plaintiff, and each party
`
`Defendant may serve 20 individualized requests for admission
`
`on Plaintiff. This limit does not apply to requests for admission
`
`that seek an admission as to the authenticity of a document or
`
`thing. Such requests for admission as to authenticity will be
`
`unlimited, clearly denoted as such, and served separately from
`
`other requests for admission. Individualized requests for
`
`admission may not be used by Defendants to indirectly increase
`
`the number of joint requests.
`
`c.
`
`Depositions.
`
`i.
`
`Party Witnesses: Plaintiff may take up to 70 hours of
`
`30(b)(1) or 30(b)(6) depositions from each party
`
`Defendant. Defendants may collectively take 100 hours of
`
`30(b)(1) or 30(b)(6) depositions
`
`from Plaintiff.
`
`Defendants must take all reasonable efforts to avoid
`
`duplicative questioning against Plaintiff’s witnesses.
`
`Notwithstanding the foregoing, the deposition of any
`
`single fact witness will be limited to 7 hours unless that
`
`
`
`4
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.390 Filed 09/23/22 Page 5 of 32
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`witness is cross-noticed in multiple cases, then the
`
`deposition will be limited to 7 hours plus an additional 2
`
`hours per additional case for which the witness was cross-
`
`noticed up to a maximum of 14 hours. If either side
`
`believes that additional time with a particular witness is
`
`necessary, the parties shall meet and confer in good faith
`
`in order to reach an agreement.
`
`ii.
`
`Third Party Witnesses: The deposition of any single
`
`third-party witness will be limited to 7 hours absent leave
`
`of Court or written agreement of the parties and the
`
`witness or designating entity.
`
`iii.
`
`Expert Witnesses: No more than 7 hours of expert
`
`witness deposition testimony may be taken by each side
`
`for each disclosed expert witness who provides a report,
`
`except that if such a witness submits testimony in multiple
`
`reports (e.g., infringement and validity or multiple
`
`infringement reports), submits an infringement or non-
`
`infringement report for more than one defendant party
`
`(e.g., alleging infringement or non-infringement by
`
`multiple defendant groups), or submits a report that
`
`
`
`5
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.391 Filed 09/23/22 Page 6 of 32
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`responds to multiple reports, the limit will be 7 hours plus
`
`4 hours for each additional report and 2 hours per
`
`additional infringement defendant, up to a maximum of 18
`
`hours.
`
`iv.
`
`Interpreters and Translators: Any deposition requiring
`
`the use of an interpreter or translator may be up to 10.5
`
`hours (subject to the parties’ agreements in Sections 2(c)
`
`i-iii) such that a 7 hour deposition under Federal Rule of
`
`Civil Procedure 30(d)(1) would instead be limited to 10.5
`
`hours. A deposition using a translator counts for 2/3 time
`
`in relation to limits, such that a 10.5 hour deposition would
`
`be counted as 7 hours of time. The deposition can be split
`
`over two days at the election of the producing party or
`
`producing non-party.
`
`III. SUBJECTS AND NATURE OF DISCOVERY
`
`A.
`
`DISCOVERY BY PLAINTIFF
`
`Plaintiff anticipates seeking discovery on at least the following topics: (1) the
`
`structure, function, and operation of the accused products; (2) the development of
`
`the allegedly infringing features; (3) the importance of those features to the operation
`
`and performance of the accused products; (4) issues relating to damages, including
`
`
`
`6
`
`

`

`Case 2:22-cv-11408-TGB ECF No. 13, PageID.392 Filed 09/23/22 Page 7 of 32
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`the importance of the patented features to Defendants’ customers and Defendant’s
`
`sales and profits realized for the accused products and any ancillary sales made as a
`
`result of the accused products; (5) the factual basis for Defendants’ defenses; (6)
`
`claim construction of the patents-in-suit; (7) Defendants’ knowledge of the patents-
`
`in-suit and efforts to avoid infringement; and (8) factual basis of Defendants’ beliefs
`
`that the patents-in-suit are invalid or not infringed. Plaintiff further anticipates taking
`
`discovery from third parties, including third-party carriers and third-party
`
`manufacturers of components incorporated into the accused products.
`
`B.
`
`DISCOVERY BY DEFENDANT
`
`Defendants anticipate seeking discovery on at least the following topics: (1)
`
`the factual basis for Plaintiff’s allegations, including infringement, willful
`
`infringement, validity, and damages; (2) the patents-in-suit and the prosecution
`
`history of the patents-in-suit and related patents, including records created during
`
`inter partes review proceedings involving the patents-in-suit and any related patents;
`
`(3) the conception, reduction to practice, research, development, and use of the
`
`alleged inventions claimed in the patents-in-suit; (4) the prior art to the asserted
`
`patents; (5) the ownership of the patents-in-suit; (6) the implementation (if any) of
`
`the patents-in-suit in the LTE standard or 5G standard; (7) compliance with and/or
`
`agreements pertaining to commitment(s) to license the asserted patents on fair,
`
`reasonable, and non-discriminatory terms; (8) communications and agreements
`
`
`
`7
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.393 Filed 09/23/22 Page 8 of 32
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`between Neo (and any predecessors) and third parties regarding the patents-in-suit,
`
`including settlement agreements; (9) pleadings, documents, discovery, and
`
`transcripts from other proceedings involving the asserted patents or related patents,
`
`and (10) any valuation of the patents-in-suit.
`
`C.
`
`ELECTRONICALLY STORED INFORMATION
`
`The parties agree to take reasonable steps to preserve potentially relevant ESI.
`
`A party’s meaningful compliance with this Order and efforts to promote efficiency
`
`and reduce costs will be considered in cost-shifting determinations.
`
`Absent agreement of the parties or further order of this Court, the following
`
`parameters shall apply to ESI production:
`
`a.
`
`General Document Image Format. Each electronic document
`
`shall be produced in single-page Tagged Image File Format
`
`(“TIFF”) format, where possible. For example, it is understood
`
`that TIFF formatting may in some instances only be possible for
`
`black and white images and not color images. TIFF files shall be
`
`single page and shall be named with a unique production number
`
`followed by the appropriate file extension, where possible. Load
`
`files shall be provided to indicate the location and unitization of
`
`the TIFF files. If a document is more than one page, the
`
`unitization of the document and any attachments and/or affixed
`
`
`
`8
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.394 Filed 09/23/22 Page 9 of 32
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`notes shall be maintained as they existed in the original
`
`document.
`
`b.
`
`Text-Searchable Documents. The parties will provide
`
`document-level searchable text for all produced documents.
`
`Electronically extracted text shall be provided if available for all
`
`documents collected from electronic sources. Text generated via
`
`Optical Character Recognition (“OCR”) shall be provided for
`
`documents originally maintained
`
`in hard copy, redacted
`
`documents, and electronic documents that do not contain
`
`electronically extractable
`
`text
`
`(e.g. non-searchable PDF
`
`documents and image files).
`
`c.
`
`Footer. Each document image shall contain a footer with a
`
`sequentially ascending production number.
`
`d.
`
`Native Files. A party that receives a document produced in a
`
`format specified above may make a reasonable request to receive
`
`the document in its native format, and upon receipt of such a
`
`request, the producing party shall produce the document in its
`
`native format. The parties agree that .xls and .csv files will not
`
`be converted to another format and instead will be produced
`
`
`
`9
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.395 Filed 09/23/22 Page 10 of 32
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`natively without a specific request for native production, absent
`
`good cause to produce in another format.
`
`e.
`
`No Backup Restoration Required. Absent a showing of good
`
`cause, no party need restore any form of media upon which
`
`backup data is maintained in a party’s normal or allowed
`
`processes, including but not limited to backup tapes, disks, SAN,
`
`and other forms of media, to comply with its discovery
`
`obligations in the present case.
`
`f.
`
`Load Files. Metadata load files will contain the applicable fields
`
`listed in Exhibit A, if available based on reasonable collection
`
`efforts.
`
`
`
`A party is only required to produce a single copy of a responsive document
`
`and a party may de-duplicate identical responsive ESI (based on MD5 or SHA-1
`
`hash values at the family level) across custodians. To the extent that de-duplication
`
`through MD5 or SHA-1 hash values is not possible, or to the extent that population
`
`of the above fields is not possible or practicable, the parties shall meet and confer to
`
`discuss any other proposed method of de-duplication.
`
`
`
`Email Discovery: Normal ESI discovery shall not include discovery of e-mail
`
`records. E-mail discovery shall initially be limited to dedicated searches of two
`
`custodians per party, according to the framework set forth below. Beyond that, no
`
`
`
`10
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.396 Filed 09/23/22 Page 11 of 32
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`further e-mail discovery shall be permitted absent agreement of the parties, or a
`
`showing of good cause and order of the court. To the extent a party believes
`
`additional e-mail discovery is necessary, the parties shall meet and confer at that
`
`point regarding the need for and the least burdensome method of obtaining those
`
`additional e-mail records. By way of example, good cause for additional e-mail
`
`discovery will exist where a party selectively produces or intends to rely on e-mails
`
`that were not captured by the opposing side’s initial e-mail production requests
`
`(“cherry picking”), thus entitling the opposing side to collect any additional relevant
`
`emails from that custodian.
`
`
`
`The parties’ initial e-mail production requests shall be phased to occur timely
`
`after the parties have exchanged initial disclosures, a specific identification of the
`
`most significant e-mail custodians in view of the pleaded claims and defenses,
`
`infringement contentions and accompanying documents, invalidity contentions and
`
`accompanying documents, and preliminary information relevant to damages
`
`(including but not limited to a party’s likely 30(b)(6) designees). The exchange of
`
`this information shall occur at the time required under the Federal Rules of Civil
`
`Procedure, Local Rules, or by order of the court.
`
`E-mail production requests shall identify the custodian, search terms, and time
`
`frame. The parties shall cooperate to identify the proper custodians, proper search
`
`terms, and proper time frame. Each side shall limit its initial e-mail production
`
`
`
`11
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.397 Filed 09/23/22 Page 12 of 32
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`requests to a total of two custodians per party for all such requests. (In other words,
`
`Plaintiff may choose two custodians per Defendant group, and Defendants may
`
`collectively choose two custodians for Plaintiff.)
`
`Upon receipt of an email request identifying a custodian, the producing party
`
`may either use search terms, or use targeted collections and custodial interviews to
`
`locate responsive materials, in either case in a good faith effort to locate all ESI
`
`responsive to any document request served by the opposing side, and the producing
`
`party shall disclose the search terms or method of collection to the requesting party.
`
`After production of the responsive ESI via either method, the requesting side may
`
`propose a total of four additional search terms per custodian per producing party.
`
`The search terms shall be narrowly tailored to particular issues. Indiscriminate terms,
`
`such as the producing company’s name or its product name, are inappropriate unless
`
`combined with narrowing search criteria that sufficiently reduce the risk of
`
`overproduction. A conjunctive combination of multiple words or phrases (e.g.,
`
`“computer” and “system”) narrows the search and shall count as a single search term.
`
`A disjunctive combination of multiple words or phrases (e.g., “computer” or
`
`“system”) broadens the search, and thus each word or phrase shall count as a separate
`
`search term unless they are variants of the same word or translations of the same
`
`word. Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged
`
`
`
`12
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.398 Filed 09/23/22 Page 13 of 32
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`to limit the production and shall be considered when determining whether to shift
`
`costs for disproportionate discovery.
`
`The parties agree to negotiate regarding e-mail production requests in good
`
`faith. To this end, the producing party shall provide ESI Search Reports (to the
`
`extent applicable) identifying the number of hits per search term, the custodians run
`
`against each set of terms, date ranges for the searches, and the actual terms used to
`
`the extent they differ from the e-mail production request due to a party’s technical
`
`capability.
`
`To the extent that a party produces documents written in a language other than
`
`English, that party shall also produce any English translations (whether certified,
`
`machine, or informal) that are in its care, custody, or control.
`
`Privilege Logs: The Parties will exchange privilege logs at a date to be agreed
`
`upon later, once document productions are substantially complete. Privileged or
`
`work-product protected communications that post-date the filing of the complaint in
`
`this litigation, involve counsel, and directly concern this litigation or inter partes
`
`reviews involving the asserted patents need not be identified on a privilege log.
`
`Similarly, privileged or work-product protected communications from prior
`
`litigation involving the patents-in-suit need not be identified on a privilege log. A
`
`party need include only one entry on the log (including the names of all of the
`
`recipients of the communications) to identify withheld emails that constitute an
`
`
`
`13
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.399 Filed 09/23/22 Page 14 of 32
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`uninterrupted dialogue between or among individuals, provided that all participants
`
`to any portion of such dialogue shall be included in the log entry if the log entry
`
`reflects more than one email. The parties shall also log any redacted documents and
`
`identify those document(s) by Bates number in the respective log entry(ies).
`
`Pursuant to Federal Rule of Evidence 502(d), the inadvertent production of
`
`privileged or work product protected ESI is not a waiver in the pending case or in
`
`any other federal or state proceeding. The receiving party shall not use ESI that the
`
`producing party asserts is attorney-client privileged or work product protected to
`
`challenge the privilege or protection. The mere production of ESI in a litigation as
`
`part of a mass production shall not itself constitute a waiver for any purpose. The
`
`foregoing provisions do not otherwise modify the treatment of inadvertently
`
`produced material under the agreed Protective Order.
`
`IV. DISCOVERY SCHEDULE
`
`A.
`
`FACT DISCOVERY
`
`Fact discovery commenced on August 10, 2022. All written discovery
`
`requests shall be served no later than 30 days prior to the close of fact discovery.
`
`Discovery shall include any relevant opinions of counsel if Defendants intend to rely
`
`upon an opinion of counsel as a defense to a claim of willful infringement.
`
`
`
`14
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.400 Filed 09/23/22 Page 15 of 32
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`B.
`
`RULE 26(a)(1) INITIAL DISCLOSURES
`
`The parties exchanged the initial discovery disclosures required by Rule
`
`26(a)(1) by September 14, 2022.
`
`C.
`
`DEADLINE TO ADD PARTIES
`
`The deadline for adding parties is December 16, 2022. The deadline for
`
`amending the pleadings is December 16, 2022.
`
`D.
`
`DISCLOSURE OF INFRINGEMENT CONTENTIONS
`
`The patentee must file and serve disclosures of and an initial document
`
`production that identifies, as specifically as possible, the following information by
`
`September 28, 2022:
`
`a. Each patent claim that is allegedly infringed by each opposing party.
`
`b. For each asserted claim, the accused product of each opposing party of
`
`which the patentee is aware. This identification shall be as specific as
`
`possible. Plaintiff shall identify each accused product by name or
`
`model number, if known.
`
`c. A chart identifying specifically where each limitation of each asserted
`
`patent claim is found within each accused product, including for each
`
`limitation that such party contends is governed by 35 U.S.C. § 112 ¶ 6,
`
`the identity of the structure(s), act(s), or material(s) in the accused
`
`product that performs the claimed function. If the patentee alleges the
`
`
`
`15
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`

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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.401 Filed 09/23/22 Page 16 of 32
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`patent is standard essential, plaintiff must provide a chart identifying
`
`for each limitation of each asserted patent claim specifically which
`
`standard the patent is essential to, including which version(s) and
`
`explain how the claims are mandatory to the standard.
`
`d. Whether each claim limitation of each asserted claim is claimed to be
`
`literally present or present under the doctrine of equivalents in the
`
`accused product. For any claim under the doctrine of equivalents, the
`
`contentions must include an explanation of each function, way, and
`
`result that is equivalent and why any difference are not substantial.
`
`e. For each claim that is alleged to be 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. If alleged direct infringement is based on joint acts
`
`of multiple parties, the role of each such party in the direct infringement
`
`must be described;
`
`f. for any patent that claims priority to an earlier application, the priority
`
`date to which each asserted claim allegedly is entitled;
`
`g. identification of the basis for any allegation of willful infringement;
`
`h. 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
`
`
`
`16
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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.402 Filed 09/23/22 Page 17 of 32
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`apparatus, product, device, process, method, act, or other
`
`instrumentality practices the claimed invention, the party must identify,
`
`separately for each asserted patent, each such apparatus, product,
`
`device, process, method, act, or other instrumentality that incorporates
`
`or reflects that particular claim, including whether it is marked (actually
`
`or virtually) with the patent number; and
`
`i. Production of a complete copy of the file histories for the patents-in-
`
`suit, including related patents claiming priority from either the patents-
`
`in-suit or their parents, foreign equivalents and their file histories.
`
`E.
`
`DISCLOSURE OF INVALIDITY CONTENTIONS
`
`Any party asserting invalidity or unenforceability claims/defenses must file
`
`and serve disclosures and initial document production containing the following by
`
`November 16, 2022. Defendants will file and serve all disclosures jointly to the
`
`extent possible.
`
`a.
`
`Each item of prior art that forms the basis for any allegation of
`
`invalidity by reason of anticipation under 35 U.S.C. § 102 or
`
`obviousness under 35 U.S.C. § 103. For prior art that is a
`
`document, a copy of the document should be provided to the
`
`patentee’s counsel or be identified by Bates Number if it was
`
`previously produced. As to prior art that is not documentary in
`
`
`
`17
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`Case 2:22-cv-11408-TGB ECF No. 13, PageID.403 Filed 09/23/22 Page 18 of 32
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`nature, such prior art shall be identified with particularity (by
`
`“who, what, when, and where” etc.) as to publication date, sale
`
`date, use date, source, ownership, inventorship, conception and
`
`any other pertinent information.
`
`b.
`
`Each prior art patent shall be identified by its number, country of
`
`origin, date of issue. Each prior art publication must be identified
`
`by its title, date of publication, and where feasible, author and
`
`publisher. Prior art sales or public disclosures under pre-AIA 35
`
`U.S.C. § 102(b) / post-AIA 35 U.S.C. § 102(a)(1) shall be
`
`identified by specifying the item offered for sale or publicly used
`
`or the information known, the date the offer or use took place or
`
`the information became known, and the identity of the person or
`
`entity which made the use or which made and received the offer,
`
`or the person or entity which made the information known or to
`
`whom it was made known. Prior art under pre-AIA 35 U.S.C. §
`
`102(f) shall be identified by providing the name of the person(s)
`
`from whom and the circumstances under which the invention or
`
`any part of it was derived. Prior art under pre-AIA 35 U.S.C. §
`
`102(g) shall be identified by providing the identities of the
`
`person(s) or entities involved in and the circumstances
`
`
`
`18
`
`

`

`Case 2:22-cv-11408-TGB ECF No. 13, PageID.404 Filed 09/23/22 Page 19 of 32
`
`surrounding the making of the invention before the patent
`
`applicant(s). Prior art references under post-AIA 35 U.S.C. §
`
`102(a)(1) showing that the claimed invention was otherwise
`
`available to the public shall be identified by specifying the form
`
`and nature of the reference, the manner in which the reference
`
`was made public, and the date on which the reference was made
`
`public.
`
`c. Whether each item of prior art anticipates each asserted claim or
`
`renders it obvious. If a combination of items or prior art makes
`
`a claim obvious, each such combination, and the reason why a
`
`person of ordinary skill in the art would combine such items must
`
`be identified.
`
`d.
`
`A chart identifying where specifically in each alleged item of
`
`prior art each limitation of each asserted claim is found,
`
`including for each claim limitation that such party is governed by
`
`35 U.S.C. § 112 ¶ 6, the identity of the structure(s), act(s), or
`
`material(s) in each item of prior art that performs the claimed
`
`function, and to the extent that the party asserting invalidity is
`
`relying on a claim of priority, such as to a parent application, a
`
`PCT application, or a provisional application, the party must
`
`
`
`19
`
`

`

`Case 2:22-cv-11408-TGB ECF No. 13, PageID.405 Filed 09/23/22 Page 20 of 32
`
`identify all disclosure from the priority application(s) that the
`
`party claims supports an earlier disclosure date; and
`
`e.
`
`For any grounds of invalidity based on 35 U.S.C. § 101, 35
`
`U.S.C. § 112, or other defenses, the party asserting the claim or
`
`defense shall provide its reasons and evidence why the claims are
`
`invalid or the patent unenforceable and make specific reference
`
`to relevant portions of the patent specification and/or claims.
`
`Such positions shall be made in good faith and not simply pro
`
`forma arguments.
`
`f.
`
`Source code, specifications, schematics, flow charts, artwork,
`
`formulas, or other documentation sufficient to show or allow
`
`third-party discovery into the operation of any aspects or
`
`elements of an Accused Instrumentality identified by the patent
`
`claimant in its infringement contentions;
`
`F.
`
`DEADLINE FOR AMENDING INFRINGEMENT AND
`INVALIDITY CONTENTIONS
`
`Each party shall seasonably amend any infringement or invalidity contention
`
`in accordance with Rule 26(e) of the Federal Rules of Civil Procedure upon learning
`
`that the contention is incomplete or incorrect. The parties should conduct timely
`
`discovery so that these contentions can be updated as soon as possible. Any
`
`amendment to a party’s infringement or validity contentions must be timely made
`
`
`
`20
`
`

`

`Case 2:22-cv-11408-TGB ECF No. 13, PageID.406 Filed 09/23/22 Page 21 of 32
`
`but in no event later than one month after the Court’s claim construction ruling. The
`
`parties may not amend such contentions later than one month after the Court’s claim
`
`construction ruling. The parties may not amend such contentions after these
`
`deadlines absent good cause and leave of the Court, unless otherwise agreed to in
`
`writing by all parties. Amendments by Defendants will be made jointly.
`
`G.
`
`SETTLEMENT CONFERENCE
`
`The parties shall contact the Court’s Technical Advisor to discuss the timing
`
`of having a settlement conference after the issuance of a Markman order.
`
`H.
`
`CLAIM CONSTRUCTION PROCEEDINGS
`
`Pursuant to the decision of Markman v. Westview Instruments, Inc., 116 S. Ct.
`
`1384 (1996), the following procedures will be followed for resolution of claim
`
`construction issues in this case. Unless otherwise authorized by the Court, all
`
`exchanges, submissions, briefs, and the like, will be submitted jointly by Defendants.
`
`a.
`
`INITIAL IDENTIFICATION OF DISPUTED CLAIM TERMS
`
`– The parties will exchange lists of what claim terms may need
`
`to be interpreted by the Court by December 1, 2022.
`
`b.
`
`PROPOSED INTERPRETATIONS – On or before December
`
`15, 2022, the parties shall exchange, but not file, a chart or table
`
`that lists for each disputed claim term the party’s proposed
`
`interpretation of the disputed claim term along with citations to
`
`
`
`21
`
`

`

`Case 2:22-cv-11408-TGB ECF No. 13, PageID.407 Filed 09/23/22 Page 22 of 32
`
`the intrinsic and extrinsic evidence (e.g., patent, prosecution
`
`history, dictionary definitions, etc.)
`
`that
`
`supports
`
`its
`
`interpretation along with a summary of any testimony that is
`
`expected to be offered to support that interpretation. Defendants
`
`will jointly submit to Plaintiff their proposed interpretations.
`
`c.
`
`FINAL IDENTIFICATION OF DISPUTED CLAIM TERMS –
`
`By January 18, 2023, the parties shall confer again about the
`
`claim terms in dispute. At or before this meeting, the parties shall
`
`attempt to narrow and finalize the claim terms that need to be
`
`interpreted by the Court. If, at any time, the parties determine
`
`that a claim construction hearing is not necessary, they shall
`
`notify the Court in a timely matter. The parties shall set forth
`
`separately the construction of those claim terms on which the
`
`parties agree.
`
`d. TECHNOLOGY TUTORIAL – The Court will hold an informal
`
`conference with the attorneys on [Parties to leave blank: Case
`
`Manager will schedule approximately 2 weeks after Final
`
`Identification of Disputed Claim Terms] at 10:00 a.m. At the
`
`conference, the attorneys for each side will explain the
`
`technology at issue in the litigation. The conference will not be
`
`
`
`22
`
`

`

`Case 2:22-cv-11408-TGB ECF No. 13, PageID.408 Filed 09/23/22 Page 23 of 32
`
`recorded. At this conference, the parties shall inform the Court
`
`of how many claim terms they propose that the Court interpret.
`
`The Court may limit the number of terms that will be interpreted
`
`at an initial Markman hearing.
`
`e. PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF –
`
`Plaintiff(s) shall file its opening claim construction brief on or
`
`before February 16, 2023. Plaintiff’s opening claim construction
`
`brief shall not exceed 25 Pages 14 point font, unless a different
`
`page limit is set by the Court.
`
`f.
`
`DEFENDANTS’ RESPONSE BRIEF – Defendant(s) shall
`
`jointly file a single responsive claim construction brief on or
`
`before March 16, 2023. Defendants’ joint response claim
`
`construction brief shall not exceed 25 pages 14 point font, unless
`
`a different page limit is set by the Court.
`
`g. PLAINTIFF’S REPLY BRIEF – To the extent that Plaintiff
`
`intends to file a reply brief on claim construction issues,
`
`Plaintiff(s) shall file with the Court and serve on opposing
`
`counsel its reply brief by March 30, 2023. Plaintiff shall also file
`
`and serve within this time period a four-column claim
`
`interpretation chart in the form of Exhibit B. Plain

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