Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 1 of 22 PageID #: 261
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`AMNEAL PHARMACEUTICALS LLC,
`
`Defendant.
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`AUROBINDO PHARMA U.S.A., INC.,
`and AUROBINDO PHARMA USA LLC.,
`
`Defendants.
`
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`HETERO USA INC., HETERO LABS
`LIMITED UNIT-III, and HETERO LABS
`LIMITED,
`
`Defendants.
`
`· C.A. No. 17-823-LPS
`
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`) C.A. No. 17-824-LPS
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`) C.A. No. 17-825-LPS
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`Page 1 of 22
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`Biogen Exhibit 2004
`Sawai v. Biogen
`IPR2019-00789
`
`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 2 of 22 PageID #: 262
`
`BIOGEN MA INC.,
`
`Plaintiff,
`
`v.
`
`IMP AX LABORATORIES, INC.
`
`BIOGEN MA INC.,
`
`Defendant.
`
`Plaintiff,
`
`v.
`
`PRINSTON PHARMACEUTICAL INC.,.
`
`BIOGEN MA INC.,
`
`Defendant.
`
`Plaintiff,
`
`v.
`
`SLA YBACK PHARMA LLC and
`SLAYBACK PHARMA INDIA LLP,
`
`Defendants.
`
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`TEVA PHARMACEUTICALS USA, INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`) C.A. No. 17-826-LPS
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`) C.A. No. l 7~827-LPS ·
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`) C.A. No. 17-828-LPS
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`) C.A. No. 17-829-LPS
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`2
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`Page 2 of 22
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 3 of 22 PageID #: 263
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`BIOGEN MA INC.,
`
`Plaintiff,
`
`MSN LABORATORIES PRIVATE LTD
`and MSN PHARMACEUTICALS INC.,
`
`)
`)
`)
`)
`)
`) C.A. No. 17-845-LPS
`)
`)
`)
`)
`Defendants.
`~~~~~~~~~~)
`BIOGEN MA INC.,
`)
`)
`)
`)
`)
`) C.A. No. 17-846-LPS
`ORA VITI PHARMACEUTICALS PVT. LTD.)
`and ORA VITI PHARMACEUTICALS INC.,
`)
`)
`)
`Defendants.
`~~~~~~~~~~)
`BIOGEN MA INC.,
`)
`)
`)
`)
`)
`) C.A. No. 17-847-LPS
`)
`)
`)
`Defendant.
`~~~~~~~~~~)
`BIOGEN MA INC.,
`)
`)
`)
`)
`)
`) C.A. No. 17-848-LPS
`)
`)
`)
`Defendant.
`--------------------------~)
`
`v.
`
`v.
`
`v.
`
`Plaintiff,
`
`Plaintiff,
`
`SHILP A MEDICARE LIMITED
`
`Plaintiff,
`
`v.
`
`SUN PHARMA GLOBAL FZE,
`
`3
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`Page 3 of 22
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 4 of 22 PageID #: 264
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`BIOGEN MA INC.,
`
`Plaintiff,
`
`v.
`
`WINDLAS HEALTBCARE, PVT. LTD.,
`
`Defendant. ·
`
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`ALKEM LABORATORIES LTD.
`and S&B PHARMA, INC.,
`
`Defendants.
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`CIPLA LIMITED and CIPLA USA Inc.,
`
`Defendants.
`
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`GLENMARK PHARMACEUTICALS
`LIMITED and GLENMARK
`PHARMACEUTICALS INC., USA.,
`
`Defendants.
`
`)
`)
`)
`)
`)
`) C.A. No. 17-849-LPS
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`) C.A. No. 17-850-LPS
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`) C.A. No. 17-851-LPS
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`) C.A. No. 17~852-LPS
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`4
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`Page 4 of 22
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 5 of 22 PageID #: 265
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`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`LUPIN ATLANTIS HOLDINGS SA,
`
`Defendant.
`
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`TORRENT PHARMACEUTICALS LTD.
`and TORRENT PHARMA INC.,
`
`)
`)
`)
`)
`)
`) C.A. No. 17-853-LPS
`)
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`) C.A. No. 17-854-LPS
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`) C.A. No. 17-855-LPS
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`)
`) C.A. No. 17-856-LPS
`)
`)
`TWI PHARMACEUTICALS, INC.
`and TWI PHARMACEUTICALS USA, INC., )
`)
`)
`
`Defendants.
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`PHARMATHEN S.A.,
`
`Defendant.
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`Defendants.
`
`5
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`Page 5 of 22
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`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 6 of 22 PageID #: 266
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`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`MACLEODS PHARMACEUTICALS, LTD.
`and MACLEODS PHARMA USA, INC.,
`
`Defendants.
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`ACCORD HEALTHCARE INC.,
`
`Defendant.
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`v.
`
`SANDOZ INC.,
`
`Plaintiffs,
`
`Defendant.
`
`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`SAW AI USA, INC. and SAW AI
`PHARMACEUTICAL CO., LTD.,
`
`Defendants.
`
`)
`)
`)
`)
`)
`) C.A. No. 17-857-LPS
`)
`)
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`)
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`)
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`)
`)
`)
`) C.A. No. 17-872-LPS
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`)
`)
`) C.A. No. 17-874-LPS
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`) C.A. No. 17-875-LPS
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`6
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`Page 6 of 22
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`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 7 of 22 PageID #: 267
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`BIOGEN INTERNATIONAL GMBH
`and BIOGEN MA INC.,
`
`Plaintiffs,
`
`v.
`
`)
`)
`)
`)
`)
`) C.A. No. 17-954-LPS
`)
`ZYDUS PHARMACEUTICALS (USA) INC., )
`)
`)
`)
`)
`)
`)
`)
`) C.A. No. 17-1361-LPS
`)
`)
`
`Defendant.
`BIOGEN INTERNATIONAL GMBH,
`
`Plaintiff,
`
`v.
`
`TEVA PHARMACEUTICALS USA, INC.,
`
`Defendant.
`
`SCHEDULING ORDER
`
`attorneys and received a joint proposed scheduling order pursuant to Local Rule 16.2(a) and
`
`Judge Stark's Revised Procedures for Managing Patent Cases (which
`
`is posted at
`
`http://www.ded.uscourts.gov; see Chambers, Judge Leonard P. Stark, Patent Cases), and the
`
`parties having detennitied after discussion that the matter cannot be resolved at this juncture by
`
`_settlement, voluntary mediation, or binding arbitration; 1
`
`IT IS HEREBY ORDERED that:
`
`1.
`
`Consolidation. The above-captioned actions are hereby consolidated for purposes
`
`of discovery and trial and all papers shall be filed in Civil Action No. 17-cv-823.
`
`1 For the Courts convenience, the parties attach; as Exhibit A, a chart setting forth the schedule
`that the parties propose for the case.
`
`7
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`Page 7 of 22
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`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 8 of 22 PageID #: 268
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`2.
`
`Rule 26(a)(l) Initial Disclosures and E-Discoverv Default Standard. Unless
`
`otherwise agreed to by the parties, the parties shall make their initial disclosures pursuant to
`
`Federal Rule of Civil Procedure 26(a)(l) by February 2, 2018. If they have not already done so,
`
`the parties are to review the Court's Default Standard for Discovery, Including Discovery of
`
`Electronically Stored Information ("ESI") (which is posted at http://www.ded.uscourts.gov; ·see
`
`Other Resources, Default Standards for Discovery, and is incorporated herein by reference).
`
`• ESI Rule 3 Disclosures: The disclosures required by ESI Rule 3 shall be
`
`made by February 8, 2018.
`
`• ESI Rule 4.a. Disclosures: By February 8, 2018, Plaintiffs shall specifically
`
`identify the accused products and the asserted patent( s) they alleged infringe,
`
`and produce the file history for each asserted patent.
`
`• ESI Rule 4.b. Disclosures: By February 13, 2018, each Defendant Group2
`
`shall.produce to the Plaintiffs core technical documents related to the accused
`
`product(s).
`
`• ESI Rule 4.c. Disclosures: By April 11, 2018, Plaintiffs shall produce to each
`
`Defendant Group an initial claim chart relating each accused product to the
`
`asserted claims each product allegedly infringes and produce NDA 204063 to
`
`each Defendant Group.
`
`• ESI Rule 4.d. Disclosures: By June 8, 2018, each Defendant Group shall
`
`produce to the Plaintiffs its initial invalidity contentions for each asserted
`
`claim, as well as the related invalidating references (e.g., publications,
`
`manuals and patents).
`
`2 "Defendant Group" refers to all parties sued in a single cause of action.
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`8
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`Page 8 of 22
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`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 9 of 22 PageID #: 269
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`• Non-infringement Contentions: By June 8, 2018, each Defendant Group shall
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`produce to the Plaintiffs its initial non-infringement contentions for each
`
`asserted claim.
`
`3.
`
`Joinder of Other Parties and Amendment of Pleadings. All motions to join other
`
`parties, and to amend or supplement the pleadings, shall be filed on or before February 28,
`
`2019.
`
`4.
`
`Application to Court for Protective Order. Should counsel find it will be
`
`necessary to apply to the Court for a protective order specifying terms and conditions for the
`
`disclosure of confidential information, counsel should confer and attempt to reach an agreement
`
`on a proposed form of order and submit it to the Court by February 8, 2018. Should counsel be
`
`unable to reach an agreement on a proposed form of order, counsel must follow the provisions of
`
`Paragraph 8(i) below.
`
`Any proposed protective order must include the following paragraph:
`
`Other Proceedings. By entering this order and limiting the
`disclosure of information in this case, the Court does not intend to
`·preclude another court from finding that information may be
`relevant and subject to disclosure in another case. Any person or
`party subject to this order who becomes subject to a motion to
`disclose another part)r's information designated "confidential" [the
`parties should list any other level of designation, such as "highly
`confidential," which may be provided for in the protective order]
`pursuant to this order shall promptly notify that party. of the motion
`so that the party may have an opportunity to appear and be heard
`on whether that information should be disclosed.
`
`5.
`
`Papers Filed Under Seal.
`
`In accordance with section G of the Administrative
`
`Procedures Governing Filing and Service by Electronic Means, a redacted version of any sealed
`
`document shall be filed electronically within seven (7) days of the filing of the sealed document.
`
`Should any party intend to request to seal or redact all or any portion of a transcript of a
`
`court proceeding (including a teleconference), such party should expressly note that intent at the
`
`9
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`Page 9 of 22
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`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 10 of 22 PageID #: 270
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`start of the court proceeding. Should the party subsequently choose to make a request for sealing
`
`or redaction, it must, promptly after the completion of the transcript, file with the Court a motion
`
`for · sealing/redaction, and include as attachments ( 1) a copy of the complete transcript
`
`highlighted so the Court can easily identify and read the text proposed to be sealed/redacted, and
`
`(2) a copy of the proposed redacted/sealed transcript. With their request, the party seeking
`
`redactions must demonstrate why there is good cause for the redactions and why disclosure of
`
`the redacted material would work a clearly defmed and serious injury to the party seeking
`
`redaction.
`
`6.
`
`Courtesy Copies. Other than with respect to "discovery matters," which are
`
`governed by paragraph 8(i), and the final pretrial order, which is governed by paragraph 19, the
`
`parties shall provide the Court two (2) courtesy copies of all briefs and one (1) courtesy copy of
`
`any other document filed in support of any briefs (i.e., appendices, exhibits, declarations,
`
`affidavits etc.) This provision also applies to papers filed under seal.
`
`7.
`
`ADR Process. This . matter is referred to a magistrate judge to explore the
`
`possibility of alternative dispute resolution.
`
`8.
`
`Discovery. Unless otherwise ordered by the Court, the limitations on discovery
`
`set forth in Local Rule 26.1' shall be strictly observed.
`
`a. Discovery Cut Off. All discovery in this case shall be initiated so that it will
`
`be completed on or before September 13, 2019.
`
`b. Fact Discovery Cut Off. All fact discovery in this case shall be initiated so
`
`that it will be completed on or before March 29, 2019.
`
`c. Document Production. Document production shall be substantially complete
`
`by S~ptember 28, 2018.
`
`10
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`Page 10 of 22
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`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 11 of 22 PageID #: 271
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`d. -Requests for Admission. Plaintiffs may serve up to twenty-five (25) common
`
`requests for admission, not including admissions directed toward admissibility
`
`including authentication of documents, on Defendants. Plaintiffs may serve
`
`an additional fifteen (15) non-duplicative requests for admission on each
`
`Defendant Group, not 'including admissions directed toward admissibility
`
`including authentication of documents. Defendants collectively may serve up
`
`to twenty-five (25) common requests for admission on Plaintiffs, not
`
`including admissions directed toward admissibility including authentication of
`
`documents. Each Defendant Group may serve an additional fifteen (15) non(cid:173)
`
`duplicative requests for admission on Plaintiffs, not including admissions
`
`directed toward admissibility including authentication of documents.
`
`e. Requests for Production. The parties will produce documents on a rolling
`
`basis. Plaintiffs may serve common requests for production on Defendants.
`
`Defendants collectively may serve common requests for production on
`
`Plaintiffs. Plaintiffs may serve an additional ten (10) non-duplicative requests
`
`for production on each Defendant Group. Each Defendant Group may serve
`
`an additional ten (10) non-duplicative requests for production on Plaintiffs.
`
`f.
`
`Interrogatories.
`
`i. Plaintiffs may serve a maximum of thirty (30) common interrogatories
`
`(including subparts), on Defendants, to which each Defendant Group
`
`will respond separately.
`
`Plaintiffs may serve up to seven (7)
`
`additional, non-duplicative interrogatories (including all discrete
`
`subparts) on each Defendant Group. Collectively, Defendants may
`
`11
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`Page 11 of 22
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 12 of 22 PageID #: 272
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`serve a maximum of thirty (30) common interrogatories (including
`
`subparts), on Plaintiffs. Each Defendant Group may serve up to seven
`
`(7) additional, non-duplicative interrogatories (including subparts} on
`
`Plaintiffs.
`
`ii. · The Court encourages the parties to serve and respond to contention
`
`interrogatories early in the case. In the absence of agreement among
`
`the parties, contention interrogatories, if filed, shall first be addressed
`
`by the party with the burden of pr<?of.
`
`The adequacy of all
`
`interrogatory answers shall be judged by the level of detail each party
`
`provides; i.e., the more detail a party provides, the niore detail a party
`
`shall receive.
`
`g. Depositions.
`
`1. Limitation on Hours
`
`for Deposition Discovery.
`
`Defendants
`
`collectively may take up to one hundred (100) hours of deposition
`
`testimony from fact witnesses (not including third parties). Each
`
`Defendant Group may take up to seven (7) additional hours of non(cid:173)
`
`duplicative deposition testimony from fact witnesses (not including
`
`third parties). Plaintiffs may take up to thirty-five (35) hours of
`
`deposition testimony from each Defendant Group from fact witnesses
`
`(not including third parties).
`
`Each fact deposition (excluding
`
`inventors) is limited to a maximum of seven (7) hours total unless
`
`extended by agreement of the parties or leave of the Court. Any fact
`
`witness that is listed as an inventor on the face of a patent-in-suit will
`
`12
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`Page 12 of 22
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 13 of 22 PageID #: 273
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`be produced for ten (10) hours total unless extended by agreement or
`
`leave of Court. To the extent an interpreter is required at a deposition,
`
`that deposition may be extended an additional seven (7) hours absent
`
`an agreement by the parties or leave of Court.
`
`11. Location of Depositions. Any party or representative (officer, director,
`
`or managing agent) of a party filing a civil action in this district court
`
`must ordinarily be required, upon request, to submit to a deposition at
`
`a place designated within this district. Exceptions to this general rule
`
`may be made by order of the Court or by agreement of the parties. A
`
`defendant who becomes a counterclaimant, cross-claimant, or third(cid:173)
`
`party plaintiff shall be considered as having filed an action in this
`
`Court for the purpose of this provision. For other witnesses, the
`
`Parties will work. in good faith to determine a reasonable and
`
`convenient location for each deposition.
`
`h. Disclosure of Expert Testimony.
`
`i. Expert Reports. For the party who has the initial burden of proof on
`
`the subject matter, the initial Federal Rule 26(a)(2) disclosure of expert
`
`testitp.ony is due on or before May 2, 2019. Responsive expert reports
`
`to contradict or rebut evidence on the same matter identified by .
`
`another party is due on or before June 13, 2019, and Plaintiffs, with
`
`respect to validity, may raise opinions concerning objective evidence
`
`of nonobviousness. Reply expert reports from the party with the initial
`
`burden of proof are due on or before July 11, 2019. Sur-reply reports
`
`13
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`Page 13 of 22
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 14 of 22 PageID #: 274
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`on validity that will be limited to Plaintiffs' response to objective
`
`evidence of nonobviousness raised in Defendants' reply expert reports
`
`on validity are due on or before July 25, 2019. No other expert reports
`
`will be permitted without either the consent of all parties or leave of
`
`. the Court. Along with the submissions of the expert reports, the
`
`parties shall advise of the dates and times of their experts' availability
`
`for deposition.
`
`11. Expert Discovery. Expert discovery in this case will be completed on
`
`or before September 13, 2019.
`
`111. Obiections to Expert Testimony. To the extent any objection to expert
`
`testimony is made pursuant to the principles announced in Daubert v.
`
`Merrell Dow Pharm., Inc., 509 U.S. 579 (1993), as incorporated in
`
`Federal Rule of Evidence 702, it shall be made by motion no later than
`
`September 27, 2019, unless otherwise ordered by the Court.
`
`Oppositions to such motions shall be filed no later than October 11,
`
`2019, and replies to such motion shall be filed no later than October
`
`· 18, 2019. Briefing on such motions is subject to the page limits set out
`
`in connection with briefing of case dispositive motions.
`
`1. Discovery Matters and Disputes Relating to Protective Orders.
`
`i. Any discovery motion filed without first complying with the following
`
`procedures will be denied without prejudice to renew pursuant to these
`
`procedures.
`
`14
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`Page 14 of 22
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`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 15 of 22 PageID #: 275
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`11. Should counsel find, after good faith efforts -
`
`including verbal
`
`communication among Delaware and Lead Counsel for all parties to
`
`the dispute - that they are unable to resolve a discovery matter or a
`
`dispute relating to a protective order, the parties involved in the
`
`discovery matter or protective order dispute shall submit a joint letter
`
`in substantially the following form:
`
`Dear Judge Stark:
`
`in the above-referenced
`The parties
`matter write to request the scheduling of a
`discovery teleconference.
`
`The following attorneys, including at
`least one Delaware Counsel and at least one
`Lead Counsel per party, participated in a
`verbal meet-and-confer (in person and/or by
`telephone)
`on
`the
`following
`date(s): _ _ _ _ _
`
`Delaware Counsel: - - - - - - - - -
`Lead Counsel: _ _ _ _ _ _ _ _ _ _
`
`The disputes requiring judicial attention
`are listed below:
`
`[provide here a non-argumentative list of
`disputes requiring judicial attention]
`
`111. On a date to be set by separate order, generally not less than forty-
`
`eight ( 48) hours prior to the conference, the party seeking relief shall
`
`file with the Court a letter, not to exceed three (3) pages, outlining the
`
`issues in dispute and its position on those issues. On a date to be set
`
`by separate order, but generally not less than twenty-four (24) hours
`
`prior to the conference, any party opposing the application for. relief
`
`15
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`Page 15 of 22
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 16 of 22 PageID #: 276
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`may file a letter, not to exceed three (3) pages, outlining that party's
`
`reasons for its opposition.
`
`1v. Each party shall submit two (2) courtesy copies of its discovery letter
`
`and any attachments.
`
`v. Should the Court find further briefing necessary upon conclusion of
`
`the telephone conference, the Court will order it. Alternatively, the
`
`Court may choose to resolve the dispute prior to the telephone
`
`conference and will, in that event, cancel the conference.·
`
`9.
`
`Motions to Amend.
`
`a.
`
`Any motion to amend (including a motion for leave to amend) a pleading
`
`shall NOT be accompanied by an opening brief but shall, instead, be accompanied by a letter, not
`
`to exceed three (3) pages, describing the basis for the requested relief, and shall attach the
`
`proposed amended pleading as well as a "blackline" comparison to the prior pleading.
`
`b.
`
`Within seven (7) days after the filing of a motion in compliance with this
`
`Order, any party opposing such a motion shall file a responsive letter, not to exceed five (5)
`
`pages.
`
`c.
`
`Within three (3) days thereafter, the moving party may file a reply letter,
`
`not to exceed two (2) pages, and, by this same date, the parties shall file a letter requesting a
`
`teleconference to address the motion to amend.
`
`10. Motions to Strike.
`
`a.
`
`Any motion to strike any pleading or other document shall NOT be
`
`accompanied by an opening brief but shall, instead, be accompanied by a letter, not to exceed
`~
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 17 of 22 PageID #: 277
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`three (3) pages, describing the basis for the requested relief, and shall attach the document to be
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`stricken.
`
`b.
`
`Within seven (7) days after the filing of a motion in compliance with this
`
`Order, any party opposing such a motion shall file a responsive letter, not to exceed five (5)
`
`pages.
`
`c.
`
`Within three (3) days thereafter, the moving party may file a reply letter,
`
`not to exceed two (2) pages and, by this same date, the parties shall file a letter requesting a
`
`teleconference to address the motion to strike.
`
`11.
`
`Tutorial Describing the Technology and Matters in Issue. Unless otherwise
`
`ordered by the Court, the parties shall provide the Court, no later than the date on which their
`
`opening claim construction briefs are due, a tutorial on the technology at issue. In that regard,
`
`the parties may separately or jointly submit a DVD of not more than thirty (30) minutes. The
`
`tutorial should focus on the technology in issue and should not be used for argument. The parties
`
`may choose to file their tutorial( s) under seal, subject to any protective order in effect. Each
`
`party may comment, in writing (in no more than five (5) pages) on the opposing party's tutorial.
`
`Any such comment shall be filed no later than the date oil which the answering claim
`
`construction briefs are due. As to the format selected, the parties should confirm the Court's
`
`technical abilities to access the information contained in the tutorial (currently best are "mpeg"
`
`or "quicktime").
`
`12.
`
`Claim Construction Issue Identification. On August 2, 2018, the parties shall
`
`exchange a list of those claim term( s )/phrase( s) that they believe need construction.
`
`Plaintiffs and Defendants) shall exchange up to five claim t~rms for construction. If good cause
`
`D~'fe'l<italiNG: Each side (i.e.,
`
`17
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 18 of 22 PageID #: 278
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`exists, the parties reserve the right to move the Court to construe additional claim terms.] On
`
`August 16, 2018, the parties shall exchange preliminary proposed claim constructions of those
`
`claim term(s)/phrase(s). These documents will not be filed with the Court. Subsequent to
`
`exchanging those lists and preliminary constructions, the parties will meet and confer to prepare
`
`a Joint Claim Construction Chart to be submitted· on September 14, 2018. The parties' Joint
`
`Claim Construction Chart should identify for the Court the term( s)/phrase( s) of the claim( s) in
`
`issue, and should include each party's proposed construction of the disputed claim language with
`
`citation(s) only to the intrinsic evidence in support of their respective proposed constructions. A
`
`copy of the patent( s) in issue as well as those portions of the intrinsic record relied upon shall be
`
`submitted with this Joint Claim Construction Chart. In this joint submission, the parties shall not
`
`provide argument.
`
`13.
`
`Claim Construction Briefing. The parties shall contemporaneously submit initial
`
`briefs on claim construction issues on October 12, 2018. The parties' answering/responsive
`
`briefs shall be contemporaneously submitted on November 16, 2018. No reply briefs or
`
`supplemental papers on claim construction shall be submitted without leave of the Court. Local
`
`Rule 7 .1.3 ( 4) shall control the page limitations for initial (opening) and responsive (answering)
`
`briefs.
`
`14.
`
`Hearing on Claim Construction. Beginning at 9:00 a.m. on January 7, 2019, the
`
`Court will hear argument on claim construction. The parties shall notify the Court, by joint letter
`
`submission, no later than the date on which their answering claim construction briefs are due: (i)
`
`whether they request leave to present testimony at the hearing; and (ii) the amount of time they
`
`are requesting be allocated to them for the hearing.
`
`18
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 19 of 22 PageID #: 279
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`Provided that the parties comply with all portions of this Scheduling Order, and any other
`
`orders of the Court, the parties should anticipate that the Court will issue its claim construction
`
`order within sixty ( 60) days of the conclusion of the claim construction hearing. If the Court is
`
`unable to meet this goal, it will advise the parties no later than sixty ( 60) days after the
`
`conclusion of the claim construction hearing.
`
`15.
`
`Interim Status Report. On April 12, 2019, counsel shall submit a joint letter to
`
`the Court with an interim report on the nature of the matters in issue and_ the progress of
`
`discovery_ to date. Thereafter, if the Court deems it necessary, it will schedule a status
`
`conference.
`
`16.
`
`Supplementation. Absent agreement among the parties, and approval of the
`
`Court, no later than February 28, 2019, the parties must finally supplement, inter alia, the
`
`identification of all accused products and of all invalidity references.
`
`17.
`
`Case Dispositive Motions. The Court will not hear case dispositive motions
`
`without leave of the Court.
`
`18.
`
`Applications by Motion. Except as otherwise specified herein, any application to
`
`the Court shall be by written motion filed with the Clerk. Any non-dispositive motion should
`
`contain the statement required by Local Rule 7 .1.1.
`
`19.
`
`Pretrial Conference. On November 26, 2019, the Court will hold a pretrial
`
`conference in Court with counsel beginning at 3:00 p.m. Unless otherwise ordered by the Court,
`
`the parties should assume that filing the pretrial order satisfies the pretrial disclosure requirement
`
`of Federal Rule of Civil Procedure 26(a)(3). The parties shall file with the Court the joint
`
`proposed final pretrial order with the information required by the form of Revised Final Pretrial
`
`Order-Patent, which can be found on the Court's website (www.ded.uscourts.gov), on or before
`
`19
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 20 of 22 PageID #: 280
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`November 15, 2019. Unless otherwise ordered by the Court, the parties shall comply with the
`
`timeframes set forth in Local Rule 16.3(d)(l)-(3) for the preparation of the joint proposed final
`
`pretrial order.
`
`The parties shall provide the Court two (2) courtesy copies of the joint proposed final
`
`pretrial order and all attachments.
`
`As noted in the Revised Final Pretrial Order - Patent, the parties shall include in their
`
`joint proposed final pretrial order, among other things:
`
`a.
`
`a request for a specific number of hours for their trial presentations, as
`
`well as a requested number of days, based on the assumption that in a typical bench trial day
`
`there will be 6 to 7 hours of trial time;
`
`b.
`
`their position as to whether the Court should allow objections to efforts to
`
`impeach a witness with prior testimony, including objections based on lack of completeness
`
`and/or lack of inconsistency;
`
`c.
`
`their position as to whether the Court should rule at trial on objections to
`
`expert testimony ,as beyond the scope of prior expert disclosures, taking time from the parties'
`
`trial presentation to argue and decide such objections, or defer ruling on all such objections
`
`unless renewed in writing following trial, subject to the proviso that a party prevailing on such a
`
`post-trial objection will be entitled to have all of its costs associated with a new trial paid for by
`
`the party that elicited the improper expert testimony at the earlier trial; and
`
`d.
`
`their position as to how to make motions for judgment as a matter of law,
`
`whether it be immediately at the appropriate point during trial or at subsequent break and
`
`whether such motions may be supplemented in writing. .
`
`20
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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 21 of 22 PageID #: 281
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`20. Motions in Limine. Motions in limine shall not be separately filed. All in limine
`
`requests and responses thereto shall be set forth in the proposed pretrial order. Each SIDE shall
`
`be limited to three (3) in limine requests, unless otherwise permitted by the Court. The in limine
`
`request and any response shall contain the authorities relied upon, each in limine request may be
`
`supported by a maximum of three (3) pages of argument and may be opposed by a maximum of
`
`three (3) pages of argument, and the side making the in limine request may add a maximum of
`
`one (1) additional page in reply in support of its request. If more than one party is supporting or
`
`opposing an in limine request, such support or opposition shall be combined in a single three (3)
`
`page submission (and, ifthe moving party, a single one (1) page reply), unless otherwise ordered
`
`by the Court. No separate briefing shall be submitted on in limine requests, unless otherwise
`
`permitted by the Court.
`
`21.
`
`Trial. This matter is scheduled for a 10-day bench trial beginning at 8:30 a.m. on
`
`December 9, 2019, with subsequent trial days also beginning at 8:30 a.m. The trial day will end
`
`no later than 5:00 p.m. each day.
`
`22.
`
`Post-Trial Briefing. The parties will address the post-trial briefing schedule and
`
`page limits in the proposed final pretrial order.
`
`23.
`
`Regulatory Stay. The expiration of the regulatory stay is September 27, 2020.
`
`Chief JUdie'
`
`21
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`Page 21 of 22
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`

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`Case 1:17-cv-00823-LPS Document 22 Filed 02/02/18 Page 22 of 22 PageID #: 282
`
`Exhibit A: Proposed Schedule
`
`···•·• .•
`
`·.::::·:
`
`... ,, ... ,
`.. >; ... • •. > <.::<:• .. ,, :;·
`·.·~
`.....
`'\.,.
`'+):·••,+:·•.:. ' .•.• <··· ··•..
`.•
`• •..
`· .. ,,
`Fed. R. Civ. P. 26(a)(l) Disclosures
`Submission of Protective Order to Court
`ESI Rule 3 Disclosures
`Plaintiffs identify accused products and the
`asserted patent(s) they allegedly infringe and
`produce file histories
`Defendants produce core technical documents
`related to the accused product( s)
`Plaintiffs disclose initial infringement
`contention claim charts and produce NDA
`Defendants disclose initial invalidity
`contentions and related disclosures and initial
`non-infringement contentions
`Substantial completion of document production
`Exchange of list of claim term( s )/phrase( s) that
`parties believe need construction
`Exchange of preliminary proposed claim
`constructions of term( s )/phrase( s)
`Joint Claim Chart
`Opening Markman briefs filed
`Responsive Markman briefs filed
`Markman Hearing
`Deadline to join parties
`Deadline for parties to supplement
`identification of all accused products and of all
`invalidity references
`Deadline to move to amend or supplement
`pleadings
`Close of Fact Discovery
`Interim Status Report
`Opening Expert Reports for party bearing the
`burden of proof
`Rebuttal Expert Reports
`Reply Expert Reports
`Sur-Reply Expert Reports on Validity
`Close of Expert Discovery
`Opening Daubert motions
`Opposition to Daubert motions
`Replies to Daubert motions
`Joint Pretrial Order
`
`,;•:•;•
`.•.
`
`••. );:
`·•
`··•·.,•·.•.:
`
`., ... ·:eartiest:··p,1-<>nos~dil:fiate::::
`· February 2, 2018
`February 8, 2018
`February 8, 2018
`February 8, 2018
`
`'
`
`February 13, 2018
`
`April 11, 2018
`
`June 8, 2018
`
`September 28, 2018
`August 2, 2018
`
`August 16, 2018
`
`September 14, 2018