Case 1:19-cv-03348-SAG Document 36 Filed 02/25/20 Page 1 of 9
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`PAICE 2009
`BMW v. Paice
`IPR2020-00994
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`Case 1:19-cv-03348-SAG Document 36 Filed 02/25/20 Page 2 of 9
`Case 1:19-cv-03348—SAG Document 36 Filed 02/25/20 Page 2 of 9
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`Joinder and Amendment of Pleadings
`
`a. Deadline: Any motion for leave to join additional parties or to
`otherwise amend the pleadings shall be filed by July 20, 2020.
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`Confidentiality Order: In accordance with L.R. 104.13, the parties will
`prepare a Confidentiality Order.
`
`a. Deadline: By March 16, 2020, the parties shall submit a Stipulated
`Confidentiality Order, modeled after the Confidentiality Order
`attached as part of Appendix D to the Local Rules of this Court.
`
`Non—Waiver Order: In accordance with L.R. 104.14, the parties will
`include a Stipulated Order Regarding Non-Waiver of Attorney Client
`Privilege and Work Product Information as part of its proposed
`Confidentiality Order.
`
`‘ B.
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`Discovery
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`1.
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`Initial Disclosures
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`a. Deadline: The parties agree that they will exchange the information
`required. by Fed. R. Civ. P. 26(a)(1) by March 16, 2020.
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`Applicability of Local Rules to Discovery: Subject to Local Rule 803.2,
`all of the provisions of Local Rule 104 apply, including the following:
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`a. All written discovery requests mustbe served in time to assiIre that
`they are answered before the discovery deadline. An extension of the
`deadline will not be granted because of unanswered discovery
`
`requests.
`
`b. The existence of a discovery dispute as to one matter does not justify
`delay in taking any other discovery. The filing of a motion to compel
`or a motion for a protective order will not result in a general extension
`of the discovery deadline.
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`c. No discovery materials, including Rule 26(a)(2) disclosures, should be
`filed with the Court, unless being used to support a motion or other
`'
`submission to the Court.
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`d. Any motion to compel shall be filed only after-counsel have conferred
`and filed a certificate as required by Local Rule 104.7 and shall be
`filed in accordance with Local Rule 104.8 and applicable CM/ECF
`procedures.
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`3.
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`Scope of Discovery:
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`4.
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`5.
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`a.
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`Each party shall be permitted to serve on each other party 45
`interrogatories.
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`b. Each party shall be permitted to serve on each other party 75 requests
`for production.
`
`Each party shall be permitted to serve on each other party 75 requests
`for admission, excluding those propounded for the purposes of
`establishing the authenticity of documents or the fact that documents
`constitute business records pursuant to Local Rule 104.1.
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`Each party shall be permitted ten (10) non-expert depositions (7 hours
`each), but upon a showing of good cause, either party may seek
`additional depositions pursuant to Fed. R. Civ. P. 30(a)(2).
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`Close of Fact Discovery
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`a. Deadline: All discovery (other than expert discovery) shall be
`completed by January 22, 2021, or 30 days after the entry ofthe
`Court’s Claim Construction Order, whichever is later.
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`Expert Discovery: Expert Discovery shall proceed as follows:
`
`a.
`
`Deadline: By February 22, 2021, or 60 days after the entry of the
`Court's Claim Construction Order, Whichever is later, each party shall:
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`(1) Advise each adverse party of the identity of all proposed expert
`witnesses as to matters which the proposing party bears the
`burden of proof; and
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`(2) Provide Opening Rule 26(a)(2) information (expert reports).
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`b.
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`Deadline: By March 24, 2021, or 90 days after the entry of the Court's
`Claim Construction Order, whichever is later, each party shall:
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`(1) Advise each adverseparty of any proposed expert witnesses
`not identified in the previous submission; and
`’
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`(2) Provide Rule 26(a)(2) information in Rebuttal to the Opening
`Rule 26(a)(2) information (expert rebuttal reports).
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`Deadline: By April 23, 2021, or 120 days after the entry of the Court‘s
`Claim Construction Order, whichever is later, each party shall:
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`(1) Advise each adverse party of any proposed expert witnesses
`that will reply to previous expert disclosures;
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`(2) Provide Rule 26(a)(2) information in Reply to the Rebuttal
`26(a)(2) information (reply expert reports); and
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`(3) Advise each' adverse party of dates within 30 days on which
`each expert shall be available for deposition so that depositions
`can be taken.
`
`(1. Deadline: Expert discovery shall be completed by May 24, 2021, or
`150 days after the entry of the Court's Claim Construction Order,
`whichever is later. The parties shall submit a Post-Discovery Joint
`Status Report on this date. See Section E of this Order.
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`6.
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`Electronically-Stored Information (ESI): The Parties shall meet and
`confer and submit a proposed 1381 Protocol by March 16, 2020.
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`C.
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`Patent Matters
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`1.
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`Objections: Unless otherwise ordered, it shall not be a ground for objecting
`to an opposing party's discovery request (e.g., interrogatory, document
`request, request for admission, deposition question) that the discovery request
`or disclosure requirement is premature in light of, or otherwise conflicts with,
`Section VIII of the Local Rules. A party may object, however, to responding
`to the following categories of discovery requests on the ground that they are
`premature in light of the timetable provided in Section VIII of the Local
`Rules:
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`a. Requests seeking to elicit a party's claim construction position;
`
`b.
`
`r Requests seeking to elicit from the patent claimant a comparison of the
`asserted claims and the accused apparatus, product, device, process,
`method, act, or other instrumentality;
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`c. Requests seeking to elicit from an accused infringer a comparison of
`the asserted claims and the prior art; and
`
`(1. Requests seeking to elicit from an accused infringer the identification
`of any advice of counsel, and related documents.
`
`Where a party properly objects to a discovery request as set forth above, that
`party shall provide the requested information on the date on which it is
`required to be provided to an opposing party, unless there are other legitimate
`grounds for objection.
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`2. Disclosure Deadlines and Requirements
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`a.
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`Initial Disclosure of Infringement Contentions
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`(1) Deadline: By March 25, 2020, any party claiming patent
`infringement shall serve on all parties an Initial Disclosure of
`Infringement Contentions as required by Local Rule 804.1(a).
`
`. Document Production Accompanying Initial Disclosure of
`Infringement Contentions
`
`\
`
`(1) Deadline: By March 25, 2020, any party claiming patent
`infringement shall produce to each allegedly infringing party or
`make available for inspection and copying all required
`documents accompanying the Initial Disclosure of
`Infringement Contentions as required by Local Rule 804.1(b).
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`Initial Disclosure of False Marking Contentions
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`(1) Deadline: By March 25, 2020, any party asserting a claim of
`false marking pursuant to 35 U.S.C. § 292 shall serve on all
`parties an Initial Disclosure of False Marking Contentions as
`required by Local Rule 804.5(a).
`
`.
`
`Initial Disclosure of Invalidity Contentions in Defense of
`Infringement Claims
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`(1) Deadline: By April 24, 2020, each party opposing a claim of
`patent infringement, shall serve on all parties its Initial
`Disclosure of Invalidity Contentions as required by Local Rule
`804.1(0).
`
`Document Production Accompanying Initial Disclosure of
`Invalidity Contentions
`'
`
`(1) Deadline: By April 24, 2020, the party opposing a claim of
`patent infringement shall produce or make available for
`inspection and copying any prior art identified in the Initial
`Disclosure of Invalidity Contentions that does not appear in the
`file history of the patent(s) at issue as required by Local Rule
`804.1(d). To the extent any such item is not in English, an
`English translation of the portion(s) relied upon shall be
`produced.
`'
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`f. Response to Initial Disclosure of False Marking Contentions
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`(1) Deadline: By April 24, 2020, the party defending against a
`claim of false marking shall serve on all parties a Response to
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`Initial Disclosure of False Marking Contentions as required by
`Local Rule 804.5(b).
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`3. Claim Construction Deadlines and Requirements-
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`a. Claim Chart
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`(1) Deadline: By April 24, 2020, the party asserting infringement
`shall serve on each alleged infringing party a Claim Chart as
`required by Local Rule 805.1(a).
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`. Claim Construction Statement
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`(1) Deadline: By April 24, 2020, the party asserting infringement
`shall serve on each alleged infringing party a Proposed Claim
`Construction Statement as required by Local Rule 805.1(b).
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`Responsive Claim Chart
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`(1) Deadline: By May 25, 2020, the alleged infringing parties
`shall serve on the party claiming infringement a Responsive
`Claim Chart as required by Local Rule 805 .1(c).
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`.. Responsive Claim Construction Statement
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`(1) Deadline: By May 25, 2020, the alleged infringing parties
`shall serve on the party claiming infringement a Responsive
`Claim Construction Statement as required by Local Rule
`805.1(d).
`
`. Amendments: Amendment of a Claim Chart or a Responsive Claim
`Chart may be made only on stipulation of all parties or by Order of the
`Court, which shall be entered only upon a showing of excusable
`subsequent discovery of new information or extraordinary good cause.
`
`Joint Claim Construction Statement
`
`(1) Deadline: By June 23, 2020, the parties, having met and
`conferred on claim construction, shall file a Joint Claim
`Construction Statement (“JCCS”) and the statement will
`include the information required by Local Rule 805.1(1).
`
`. Opening Brief for Claim Construction Hearing
`
`(1) Deadline and Reguirements: By June 23, 2020, the parties
`shall file and serve opening briefs with supporting evidence
`and identification of any proposed Claim Construction Hearing
`witnesses as required by Local Rule 805.1(g).
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`h. Responsive Brief for Claim Construction Hearing
`
`(1) Deadline and Requirements: By July 23, 2020, the parties shall
`file and serve any responsive brief and supporting evidence
`directly rebutting their opponents supporting evidence and
`identifying any additional proposed Claim Construction
`Hearing witnesses as required by Local Rule 805.1(h).
`
`i. Hearing Date
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`(1) October15,2020at
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`I
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`i, 32 am
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`j. Advice of Counsel Disclosure
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`(1) Deadline: By January 22, 2021, or 30 days after the entry of
`the Court's Claim Construction Order, whichever is later, each
`
`party relying upon advice of counsel as part of a patent-related
`claim or defense for any reason shall serve on all parties an
`Advice of Counsel Disclosure as required by Local Rule 804.7.
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`D.
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`Motions
`
`Dispositive motions (eg. summary judgment) shall be filed no later than thirty
`(30) days after the close of expert discovery. After all dispositive motions arid
`any responses have been filed, the Court will advise the parties if a hearing is to
`be scheduled.
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`E.
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`PostaDiscoveg Joint Status Report
`
`On the day of the deadline for the Completion of Expert Discovery (May 24,
`2021, or 150 days after the entry of the Court's Claim Construction Order,
`whichever is later), the parties shall file a Post-Discovery Joint Status Report
`covering the following matters:
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`a. Whether discovery has been completed;
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`b. Whether any motions are pending;
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`c. Whether any party intends to file a dispositive pretrial motion;
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`d. A certification that the parties have met to conduct serious settlement
`negotiations, to include the date, time, and place of all settlement meetings
`and the names of all persons participating;
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`e. Whether each party believes it would be helpful to refer this case to a
`Magistrate Judge for a mediation session, either before or after the resolution
`of any dispositive pretrial motion; and
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`f. Any other matter that the parties believe should be brought to the Court's
`‘ ‘attention.
`-
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`F.
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`Pre-Trial Conferences
`
`After receiving the Post-Discovery Joint Status Report, the Court will schedule an ‘
`Initial Pretrial Conference, unless the Post—Discovery Joint Status Report indicates
`that one or more party intends to file a dispositive pretrial motion. In the latter
`event, the Court will not schedule the Initial Pretrial Conference until after it has
`ruled upon the motion (or the dispositive pretrial motion deadline passes without
`the anticipated motion being filed).
`'
`
`At the Initial Pretrial Conference, the Court will:
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`1. Set a deadline for submitting the Pretrial Order pursuant to Local Rule 106,
`motions in limine, proposed voir dire questions, and proposed jury
`instructions;
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`2. Set the Final Pretrial Conference date and a trial date; and
`
`3.
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`Inquire whether a settlement conference with a Magistrate Judge would be
`useful. Counsel are expected to confer with their clients about this matter
`before the Initial Pretrial Conference so they can respond to this inquiry.
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`Case 1:19-cv-03348-SAG Document 36 Filed 02/25/20 Page 9 of 9
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`Dated: February 25, 2020
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`Respectfully submitted,
`
`Respectfully submitted,
`
`By:
`
`/s/ James P. Ulwick
`
`James P. Ulwick (Fed. Bar No. 00536)
`KRAMON & GRAHAM, P.A.
`
`One South Street, Suite 2600
`
`Baltimore, Maryland 21202
`Telephone: (410) 752-6030
`Facsimile: (410) 539-1269
`Email: julwick@kg-law.com
`
`Ruffin B. Cordell (admitted Pro Hac Vice)
`Indranil Mukerji (admitted Pro Hac Vice)
`Brian J. Livedalen (admitted Pro Hac Vice)
`FISH & RICHARDSON P.C.
`
`1000 Maine Avenue, S.W.
`Washington, DC. 20024
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`Email: cordell@fr.com
`Email: mukerji@fr.com
`Email:
`livedalen@fr.com
`
`By: /s/ Joel A. Dewey (signed with
`permission by James P. Ulwick
`Joel A. Dewey
`DLA PIPER LLP (US)
`The Marbury Building
`6225 Smith Avenue
`
`Baltimore, Maryland 21209-3600
`Telephone: (410) 5 80-4135
`Facsimile: (410) 580-3135
`Email: joel.dewey@us.dlapiper.corn
`
`Joseph P. Lavelle (admitted Pro Hac Vice)
`Joshua Kresh (admitted Pro Hac Vice)
`DLA PIPER LLP (US)
`500 Eighth Street, NW
`Washington, DC 20004
`Telephone: (202) 799-4000
`Facsimile: (202) 799-5000
`Email: j0e.lavelle@us.dlapiper.com
`Email: Joshua.kresh@us.dlapiper.com
`
`Counselfor Plaintifis Paice LLC and The
`Abel] Foundation, Inc.
`
`Attorneysfor Defendant
`BMW ofNorth America, LLC
`
`,
`
`Date: February/95 , 2020
`
`
`
`STE ANIE A. GALLAGHER
`
`United States District Judge
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