CASE 0:19-cv-01760-PJS-TNL Document 229 Filed 02/07/20 Page 1 of 10
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF MINNESOTA
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`VASCULAR SOLUTIONS LLC, TELEFLEX LIFE
`SCIENCES LIMITED, ARROW INTERNATIONAL,
`INC., AND TELEFLEX LLC,
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`V.
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`MEDTRONIC, INC. AND MEDTRONIC
`VASCULAR, INC.,
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`CIVIL NO. 19-1760 (PJS/TNL)
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`AMENDED
`PRETRIAL SCHEDULING
`ORDER
`(PATENT)
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`PLAINTIFFS,
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`DEFENDANTS.
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`Plaintiffs’ Unopposed Motion for Leave to File First Amended and Supplemental
`Complaint and Unopposed Motion to Amend the Scheduling Order is GRANTED. Plaintiffs
`shall file their First Amended and Supplemental Complaint within 10 days of the date this
`Order is filed.
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`Pursuant to Rule 16 of the Federal Rules of Civil Procedure and the Local Rules of this
`Court, and in order to secure the just, speedy, and less expensive determination of this action, the
`following schedule shall govern these proceedings. This schedule may be modified only upon
`formal motion and a showing of good cause as required by D. Minn. LR 16.3.
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`1. Discovery & Pleading of Additional Claims & Defenses
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`a. Discovery is permitted with respect to claims of willful infringement and defenses
`of patent invalidity or unenforceability not pleaded by a party, where the evidence
`needed to support these claims or defenses is in whole or in part in the hands of
`another party.
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`b. Once a party has given the necessary discovery, the opposing party may seek leave
`of Court to add claims or defenses for which it alleges, consistent with Fed. R. Civ.
`P. 11, that it has support, and such support shall be explained in the motion seeking
`leave.
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`c. Leave shall be liberally given where prima facie support is present, provided that
`the party seeks leave as soon as reasonably possible following the opposing party
`providing the necessary discovery.
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`2. Fact Discovery
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`a. All pre-discovery disclosures required by Fed. R. Civ. P. 26(a)(1) shall be
`completed on or before October 1, 2019.
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`b. Fact discovery shall be commenced in time to be completed on or before
`September 1, 2020.
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`c. No more than 30 Interrogatories, counted in accordance with Fed. R. Civ. P. 33(a),
`shall be served by any side.
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`d. No more than 75 Document Requests shall be served by any side.
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`e. No more than 50 Requests for Admissions shall be served by any side.
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`f. No more than ten depositions, excluding expert witness depositions, shall be taken
`by either side.
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`g. On or before September 12, 2019, the parties shall jointly CM/ECF file a proposed
`stipulated Protective Order for the Court’s review. The sealing of entire pleadings,
`memoranda of law, exhibits, and the like is strongly discouraged. No document
`shall be filed under seal unless such document or information therein is genuinely
`confidential and/or there are compelling reasons to do so. Any party seeking to file
`a document under seal shall specifically review each document and the information
`therein to limit sealing only to the extent necessary. If a party files a document
`containing confidential information with the Court, it shall do so in compliance
`with the Electronic Case Filing Procedures for the District of Minnesota and Local
`Rule 5.6. Any joint motion made pursuant to Local Rule 5.6 before United
`States Magistrate Judge Tony N. Leung shall conform to Exhibit A attached
`hereto. Counsel shall provide the Court with two courtesy copies of the unredacted
`documents with the redacted information highlighted in yellow.
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`h. Any party claiming privilege or protection of trial-preparation materials shall serve
`on the party seeking discovery a privilege log that complies with the requirements
`in Fed. R. Civ. P. 26(b)(5).
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`3. ESI Discovery Plan
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`On or prior to September 26, 2019, the parties shall jointly CM/ECF file a stipulated
`ESI discovery plan. The parties shall meet and confer prior to said date.
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`The parties shall preserve all electronic documents that bear on any claims,
`defenses, or the subject matter of the lawsuit.
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`4. Expert Discovery
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`a. The plaintiff may call up to four experts.
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`b. The defendant may call up to four experts.
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`c. On or before October 1, 2020, the parties shall identify to the opposing party the
`experts who will provide a report that deals with the issues on which that party has
`the burden of persuasion.
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`d. On or before October 1, 2020, the parties shall exchange initial expert reports,
`which reports shall be in accordance with Fed. R. Civ. P. 26(a)(2)(B) (“Initial
`Expert Reports”). The Initial Expert Reports from each party shall deal with the
`issues on which that party has the burden of persuasion.
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`e. On or before November 1, 2020, Rebuttal Expert Reports shall be exchanged.
`Rebuttal Expert Reports shall also be in accordance with Fed. R. Civ. P.
`26(a)(2)(B).
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`f. On or before December 1, 2020, Reply Expert Reports shall be exchanged. Reply
`Expert Reports shall also be in accordance with Fed. R. Civ. P. 26 (a)(2)(B).
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`g. Matters relating to drafts of expert reports and the preparation of expert witnesses
`shall be governed by Fed. R. Civ. P. 26(b)(4).
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`h. All expert discovery shall be completed by January 15, 2021. The parties stipulate
`to a maximum of one expert deposition for each expert.
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`5. Discovery Relating to Claim Construction Hearing
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`a. Any party alleging infringement shall serve its Claim Chart to the party defending
`against infringement by March 1, 2020. The title of the Claim Chart shall identify
`the party serving it.
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`i. This Claim Chart shall identify: (1) which claim(s) of its patent(s) it alleges
`are being infringed; (2) which specific products or methods of defendant's
`it alleges literally infringe each claim; and (3) where each element of each
`claim listed in (1) is found in each product or method listed in (2), including
`the basis for each contention that the element is present.
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`ii. If there is a contention that there is infringement of any claims under the
`doctrine of equivalents, the party alleging infringement shall separately
`indicate this on its Claim Chart and, in addition to the information required
`for literal infringement, that party shall also explain each function, way, and
`result that it contends are equivalent, and why it contends that any
`differences are not substantial.
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`b. Any party defending against infringement shall serve its Responsive Claim Chart
`to the party alleging infringement by May 1, 2020. The title of the Responsive
`Claim Chart shall identify the party serving it.
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`i. The Responsive Claim Chart shall indicate with specificity the elements, on
`the Claim Chart of the party alleging infringement, which it admits are
`present in its accused device or process, and which it contends are absent.
`In the latter regard, the party defending against infringement will set forth
`in detail the basis for its contention that the element is absent.
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`ii. As to the doctrine of equivalents, the party defending against infringement
`shall indicate on its chart its contentions concerning any differences in
`function, way, and result, and why any differences are substantial.
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`c. A party may amend its Claim Chart only by leave of the Court for good cause
`shown.
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`d. On or before August 14, 2020, the parties shall simultaneously exchange a list of
`claim terms, phrases, or clauses that each party contends should be construed by
`the Court.
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`e. On or before September 1, 2020, the parties shall meet and confer for the purpose
`of finalizing a list of claim terms, phrases or clauses, narrowing or resolving
`differences, and facilitating the ultimate preparation of a joint claim construction
`statement.
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`i. During the meet and confer process, the parties shall exchange their
`preliminary proposed construction of each claim term, phrase or clause
`which the parties collectively have identified for claim construction
`purposes and shall make this exchange on or before September 1, 2020.
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`ii. At the same time the parties exchange their respective “preliminary claim
`construction” they shall also provide a preliminary identification of
`extrinsic evidence, including without limitation, dictionary definitions,
`citations to learned treatises and prior art, and testimony of percipient and
`expert witnesses that they contend support their respective claim
`constructions. The parties shall identify each such items of extrinsic
`evidence by production number or produce a copy of any such item not
`previously produced. With respect to any such witness, percipient or expert,
`the parties shall also provide a brief description of the substance of that
`witness' proposed testimony.
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`f. Following the parties’ meet and confer and no later than October 15, 2020, the
`parties shall notify the Court as to whether they request that the Court schedule a
`Claim Construction hearing to determine claim interpretation.
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`i. If any party believes there is no reason for a Claim Construction hearing,
`the party shall provide the reason to the Court.
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`ii. At the same time, the parties shall also complete and file with the Court a
`joint claim construction statement that shall contain the following
`information:
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`A. The construction of those claim terms, phrases, or clauses on which
`the parties agree;
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`B. Each party’s proposed construction of each disputed claim term,
`phrase, or clause together with an identification of all references
`from the specification of prosecution history that support that
`construction, and an identification of any extrinsic evidence known
`to the party on which it intends to rely either in support of its
`proposed construction of the claim or to oppose any other party’s
`proposed construction of the claim, including, but not limited, as
`permitted by law, dictionary definitions, citation to learned treatises
`and prior art, and testimony of percipient and expert witnesses;
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`C. Whether any party proposes to call one or more witnesses, including
`experts at the Claim Construction hearing, the identity of each such
`witness and for each expert, a summary of each opinion to be offered
`in sufficient detail to permit a meaningful deposition of that expert;
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`D. Whether the parties believe that a technology tutorial would be
`helpful for the Court and, if so, the proposed timing and format of
`the tutorial; and
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`E. An acknowledgement that the filed joint claim construction
`statement shall not be amended, modified, changed or the like
`without good cause shown.
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`g. If the Court schedules a Claim Construction hearing, prior to the date of the Claim
`Construction hearing, the Court shall issue an Order discussing:
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`i. Whether it will receive extrinsic evidence, and if so, the particular evidence
`it will receive;
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`ii. Whether the extrinsic evidence in the form of testimony shall be the
`affidavits already filed, or in the form of live testimony from the affiants;
`and
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`iii. A briefing schedule.
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`6. Discovery Relating to Validity/Prior Art
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`a. On or before July 1, 2020, the party defending against infringement shall serve to
`the opposing party a Prior Art Statement listing of all of the prior art on which it
`relies, and a complete and detailed explanation of what it alleges the prior art shows
`and how that prior art invalidates the claim(s) asserted by the party alleging
`infringement, including: (i) which claim(s) alleged to be infringed are invalid; (ii)
`which prior art, if any, invalidates each claim; (iii) where in such prior art each
`element of the allegedly invalid claims may be found; and (iv) whether a basis for
`invalidity other than prior art is alleged, specifying what the basis is and whether
`such allegation is based upon 35 U.S.C. 101, 102, 103, and 112, or any other
`statutory provisions.
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`b. On or before August 1, 2020, the party alleging infringement shall serve its own
`Prior Art Statement, in which it will state in detail its position on what the prior art
`relied upon by the opposing party shows, if its interpretation differs, and its position
`on why the prior art does not invalidate the asserted patent claims.
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`c. The Prior Art Statements can be, but need not be, in the form of expert reports. If
`a prior art statement is submitted in the form of expert reports, the deadlines in
`Section 6 govern and are not extended by any different expert discovery deadlines.
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`d. A party can amend its Prior Art Statement only by leave of the Court for good cause
`shown.
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`7. Other Discovery Issues
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`A party may postpone the waiver of any applicable attorney-client privilege on
`topics relevant to claims of willful infringement, if any, until 30 days after the
`Court’s claim construction ruling, provided that all relevant privileged documents
`are produced no later than 30 days after the Court’s claim construction ruling. All
`additional discovery regarding the waiver will take place 30 days after the Court’s
`claim construction ruling.
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`8. Discovery Definitions
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`a. In responding to discovery requests, each party shall construe broadly terms of art
`used in the patent field (e.g., “prior art,” “best mode,” “on sale”) and read them as
`requesting discovery relating to the issue as opposed to a particular definition of
`the term used.
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`b. Compliance with this provision is not satisfied by the respondent including a
`specific definition of the term of art in its response, and limiting its response to that
`definition.
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`9. Non-Dispositive Motions
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`a. Non-dispositive motions may be scheduled for hearing by calling the Court’s
`Judicial Assistant, Holly McLelland, at 612-664-5470.
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`b. All motions which seek to amend the pleadings, including without limitation, a
`motion for leave to amend to add parties must be served on or before February 1,
`2020.
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`c. Except as to non-dispositive motion deadlines specifically set forth elsewhere in
`this Order, all non-dispositive motions and supporting documents, including those
`which relate to discovery, shall be served and filed on or before September 1, 2020,
`except that non-dispositive fact discovery related to waiver of privilege shall be
`served and filed on or before 30 days after the Court’s claim construction ruling.
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`d. All non-dispositive motions and supporting documents which relate to expert
`discovery shall be filed and served on or before January 15, 2021.
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`e. Prior to scheduling any non-dispositive motion, parties are strongly encouraged to
`consider whether the motion, including motions relating to discovery and
`scheduling, can be informally resolved through telephone conference with the
`Magistrate Judge. All non-dispositive motions shall be scheduled, filed and served
`in compliance with the Electronic Case Filing Procedures for the District of
`Minnesota and in compliance with D. Minn. LR 7.1 and 37.1, and shall be presented
`in a form that complies with D. Minn. LR 37.2.
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`f. At the Rule 16 Scheduling Conference, the Court advised the parties that it is
`willing to resolve non-dispositive disputes between the parties on an informal basis
`via a telephone conference. However, before the Court will agree to proceed with
`this informal resolution mechanism, the "meet and confer" required by Fed. R. Civ.
`P. 37(a)(1) and D. Minn. LR 37.1 must have taken place, and all parties to the
`dispute must agree to use this informal resolution process as the very nature of the
`process is such that the parties are giving up rights they would otherwise have (e.g.,
`the dispute is heard over the phone; there is no recording or transcript of the phone
`conversation; no briefs, declarations or sworn affidavits are filed). If the parties do
`agree to use this informal resolution process, one of the parties shall contact the
`Court’s Judicial Assistant, Holly McLelland, to schedule the conference. The
`parties shall submit short letters prior to the conference to set forth their respective
`positions. The requesting party shall submit its letter 7 days prior to the conference;
`the responding party shall submit its letter 4 days prior to the conference. The Court
`will read the written submissions of the parties before the phone conference, hear
`arguments of counsel at the conference, and if no one changes their decision during
`the phone conference regarding their willingness to participate in this informal
`resolution process, the Court will issue its decision at the conclusion of the phone
`conference or shortly after the conference. Depending on the nature of the dispute,
`the Court may or may not issue a written order. If there is no agreement to resolve
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`a dispute through this informal resolution process, then the dispute must be
`presented to the Court via formal motion and hearing.
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`10. Dispositive Motions
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`a. Plaintiffs’ motion for preliminary injunction may be filed any time after the earlier
`of (i) the Court rules on the pending summary judgment motions in QXMedical,
`LLC v. Vascular Solutions, Inc., et al., Court File No. 17-cv-1969 (PJS/TNL), or
`(ii) October 15, 2019.
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`b. All dispositive motions (notice of motion, motion, memorandum of law, affidavits
`and proposed order) must be served, filed and HEARD on or before April 1, 2021.
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`c. Counsel for the moving party shall call Judge Schiltz’s Courtroom Deputy, Caryn
`Glover, at 612-664-5483 to schedule the hearing. Parties are reminded that the
`scheduling of a dispositive motion requires considerable advance notice (typically
`three to four months). Parties should attempt to schedule all dispositive motions
`for the same hearing and should strive to avoid duplication in their briefing.
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` All dispositive motions shall be scheduled, filed and served in compliance with
`the Electronic Case Filing Procedures for the District of Minnesota and in
`compliance with Local Rule 7.1. When a motion, response or reply brief is filed
`on ECF, two paper courtesy copies (three-hole punched and unstapled and, if
`warranted, exhibits appropriately tabbed) of the pleading and all supporting
`documents shall be mailed or delivered to Courtroom Deputy Caryn Glover at the
`same time as the documents are posted on ECF.
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` When scheduling a summary judgment hearing, the parties must notify the Court
`whether there will be cross-motions for summary judgment so that the Court may
`enter an appropriate briefing order. The parties should confer about the
`possibility of cross-motions before contacting chambers to schedule a summary
`judgment hearing.
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`11. Status & Settlement Conferences
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`a. The parties shall appear for an early settlement conference with the Court on
`November 8, 2019 at 10:00 a.m.
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`b. On or shortly before March 11, 2020, September 17, 2020, December 17, 2020,
`and January 15, 2021, counsel for each party shall submit four CONFIDENTIAL
`letters to the Court setting forth with reasonable specificity the status of the case;
`the relative strengths and weaknesses of each party’s position; an update of efforts
`toward settlement; the last settlement positions of the parties; whether a settlement
`conference with a private mediator or the court would be productive; and a litigation
`budget. Each letter shall not exceed three pages. On or shortly before the date each
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`such letter is due, counsel for the parties shall meet and confer to discuss the status
`of the case and discuss settlement.
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`c. A formal settlement conference shall be scheduled by the Court on a later date when
`needed.
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`12. Trial
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`a. This case shall be ready for a trial on August 1, 2021.
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`b. Anticipated length of trial is 8-10 days.
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`c. The parties agree that the video “An Introduction to the Patent System,” distributed
`by the Federal Judicial Center, should be shown to jurors in connection with its
`preliminary jury instructions.
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`13. Prior Orders and Remedies
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`a. All prior consistent orders remain in full force and effect.
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`b. Failure to comply with any provision of this Order or any other prior consistent
`Order shall subject the non-complying party, non-complying counsel and/or the
`party such counsel represents to any and all appropriate remedies, sanctions and the
`like, including without limitation: assessment of costs, fines and attorneys’ fees and
`disbursements; waiver of rights to object; exclusion or limitation of witnesses,
`testimony, exhibits and other evidence; striking of pleadings; complete or partial
`dismissal with prejudice; entry of whole or partial default judgment; and/or any
`other relief that this Court may from time to time deem appropriate.
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`IT IS SO ORDERED.
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`Dated: February 7, 2020
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`s/ Tony N. Leung
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`Magistrate Judge Tony N. Leung
`United States District Court
`District of Minnesota
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`Vascular Solutions LLC, et al. v. Medtronic,
`Inc. et al.
`19-cv-1760 PJS/TNL
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