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`PAICE 2004
`BMW v. Paice
`IPR2020-01299
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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 Amendmentof Pleadings
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`a. Deadline: Any motion for leave to join additional parties or to
`otherwise amendthe 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.
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`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.
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`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.
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`’
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`iB.
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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)() 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:
`
`a. All written discovery requests must be served in time to assure that
`they are answered before the discovery deadline. An extension of the
`deadline will not be granted because ofunanswered discovery
`requests.
`
`b. The existence of a discovery dispute as to one matter does notjustify
`delay in taking any other discovery. Thefiling of a motion to compel
`or a motion for a protective order will not result in a general extension
`of the discovery deadline.
`
`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.
`
`d. Any motion to compel shall be filed only after counsel have conferred
`andfiled 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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`a. Each party shall be permitted to serve on each other party 45
`interrogatories.
`
`b. Eachparty shall be permitted to serve on each other party 75 requests
`for production.
`
`c. 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.
`
`d. 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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`4,
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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 daysafter the entry ofthe
`Court’s Claim Construction Order, whicheveris later.
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`5,
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`Expert Discovery: Expert Discovery shall proceed as follows:
`
`a. Deadline: By February 22, 2021, or 60 daysafter the entry of the
`Court's Claim Construction Order, whicheveris later, each party shall:
`
`(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
`
`(2) Provide Opening Rule 26(a)(2) information (expert reports).
`
`b. Deadline: By March 24, 2021, or 90 days after the entry of the Court's
`Claim Construction Order, whicheveris later, each party shall:
`
`(1) Advise each adverse.party 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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`c. Deadline: By April 23, 2021, or 120 daysafter the entry of the Court's
`Claim Construction Order, whicheveris 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 eachadverse party of dates within 30 days on which
`each expert shall be available for deposition so that depositions
`can be taken.
`
`d.
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`Deadline: Expert discovery shall be completed by May 24, 2021, or
`150 days after the entry of the Court's Claim Construction Order,
`whicheveris 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 ESI Protocol by March 16, 2020.
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`C.
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`Patent Matters
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`1. Objections: Unless otherwise ordered, it shall not be a groundfor objecting
`to an opposing party's discovery request (e.g., interrogatory, document
`request, request for admission, deposition question) that the discovery request
`or disclosure requirementis 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:
`
`a.
`
`b.
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`Requests seekingto elicit a party's claim construction position;
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`Requests seekingto 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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`Requests seeking to elicit from an accused infringer a comparison of
`the asserted claims and the priorart; and
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`Requests seeking to elicit from an accused infringer the identification
`of any advice of counsel, and related documents.
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`Where a party properly objects to a discovery request as set forth above, that
`party shall provide the requested information on the date on whichit 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 onall parties an Initial Disclosure of
`Infringement Contentions as required by Local Rule 804, 1(a).
`
`b. Document Production Accompanying Initial Disclosure of
`Infringement Contentions
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`\
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`(1) Deadline: By March 25, 2020, any party claiming patent
`infringementshall produce to each allegedly infringing party or
`make available for inspection and copyingall required
`documents accompanying the Initial Disclosure of
`Infringement Contentions as required by Local Rule 804.1(b).
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`¢.
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`Initial Disclosure of False Marking Contentions
`
`(1) Deadline: By March 25, 2020, any party asserting a claim of
`false marking pursuant to 35 U.S.C. § 292 shall serve onall
`parties an Initial Disclosure of False Marking Contentions as
`required by Local Rule 804.5({a).
`
`d.
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`Initial Disclosure of Invalidity Contentions in Defense of
`Infringement Claims
`
`(1) Deadline: By April 24, 2020, each party opposing a claim of
`patent infringement, shall serve onall parties its Initial
`Disclosure of Invalidity Contentions as required by Local Rule
`804.1(c).
`
`e. Document Production Accompanying Initial Disclosure of
`Invalidity Contentions
`
`(1) Deadline: By April 24, 2020, the party opposing a claim of
`patent infringementshall 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. Responseto 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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`b. 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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`c. Responsive Claim Chart
`(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).
`
`d. Responsive Claim Construction Statement
`
`(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).
`
`e. Amendments: Amendment of a Claim Chart or a Responsive Claim
`Chart may be madeonly onstipulation ofall parties or by Orderof the
`Court, which shall be entered only upon a showing of excusable
`subsequent discovery of new information or extraordinary good cause.
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`f, Joint Claim Construction Statement
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`(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(f).
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`g. Opening Brief for Claim Construction Hearing
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`(1) Deadline and Requirements: 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).
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`i. Hearing Date
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`(1) October 15, 2020 at f sO aM
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`t
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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, whicheveris later, each
`party relying upon advice of counselaspart of a patent-related
`claim or defense for any reason shall serve onall parties an
`Advice of Counsel Disclosure as required by Local Rule 804.7.
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`D.
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`Motions
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`Dispositive motions (e.g. summary judgment) shall be filed no later than thirty
`(30) days after the close of expert discovery. After all dispositive motions arid
`any responseshavebeenfiled, the Court will advise the parties if a hearing is to
`be scheduled.
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`E,
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`Post-Discovery Joint Status Report
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`Onthe 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,
`whicheveris 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. Whetherany party intendsto file a dispositive pretrial motion;
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`d. A certification that the parties have met to conductserious settlement
`negotiations, to include the date, time, and place of all settlement meetings
`and the namesofall personsparticipating;
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`e. Whether each party believes it would be helpfulto 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
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`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 thelatter
`event, the Court will not schedule theInitial Pretrial Conference until after it has
`ruled upon the motion (or the dispositive pretrial motion deadline passes without
`the anticipated motion being filed).
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`Atthe Initial Pretrial Conference, the Court will:
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`1. Set a deadline for submitting the Pretrial Order pursuant to Local Rule 106,
`motionsin limine, proposed voir dire questions, and proposed jury
`instructions;
`2. Set the Final Pretrial Conference date and a trial date; and
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`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 respondto 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,
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`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 & RICHARDSONP.C.
`1000 Maine Avenue, S.W.
`Washington, D.C. 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) 580-4135
`Facsimile: (410) 580-3135
`Email: joel.dewey@us.dlapiper.com
`
`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: joe.lavelle@us.dlapiper.com
`Email: Joshua.kresh@us.dlapiper.com
`
`Counselfor Plaintiffs Paice LLC and The
`Abell Foundation, Inc.
`
`Attorneysfor Defendant
`BMW ofNorth America, LLC
`
`2
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`Date: February?, 2020
`
`
`
`STEPHANIE A. GALLAGHER
`United States District Judge
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