Case 6:20-cv-00507-ADA Document 19 Filed 10/05/20 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`Western District of Texas
`WACO DIVISION
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`NO: WA:20-CV-00507-ADA
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`§§§§§
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`NEONODE SMARTPHONE LLC
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`vs.
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`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.
`
`ORDER GOVERNING PROCEEDINGS – PATENT CASE
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`This Order shall govern proceedings in this case. The following deadlines are hereby set:
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`This case is SET for a telephonic Rule 16 Case Management Conference on Friday,
`October 16, 2020 at 1:30 p.m. Participants shall dial into the following number 5
`minutes before the scheduled time: 866.434.5269; access code 967-8090. Lead counsel
`for each party, and all unrepresented parties, shall be present. Client representatives are
`welcome to attend, but such attendance is not required. In person attendance is
`permitted, but not required. Anyone planning to attend in person should so inform the
`Court by contacting chambers not later than two court days before the scheduled hearing
`so the Court can evaluate whether to hold the conference in the courtroom, or in
`chambers. The Court expects the parties to be prepared to discuss:
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`a. an overview of the claims and defenses, including any unique issues the
`parties believe should be addressed at this stage of the case;
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`b.
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`c.
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`d.
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`issues involving the case schedule and potential amendments to the
`Court’s default scheduling order, including the date for the Markman
`Hearing;
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`issues relating to claim construction, including whether a live tutorial would be
`of benefit to the Court;
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`issues relating to discovery, including potential amendments to the Court’s
`default discovery limits or Protective Order; and,
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`e. any other issues the parties believe would lead to the just, speedy and
`inexpensive determination of this action.
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`2.
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`(Not later than 7 days before the CMC). Plaintiff shall serve preliminary infringement
`contentions in the form of a chart setting forth where in the accused product(s) each element
`of the asserted claims(s) are found. Plaintiff shall also identify the priority date (i.c.
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`APPLE 1036
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`the earliest date of invention) for each asserted claim and produce: (1) all documents
`evidencing conception and reduction to practice for each claimed invention, and (2) a copy
`of the file history for each patent in suit.
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`(Not later than 3 business days before the CMC). Lead counsel for each party shall meet and
`confer (either in person or by telephone), to discuss whether they believe the Court’s default
`Scheduling Order and default Discovery Limits are appropriate for this case, and any issues
`relating to the management of this case they intend to raise at the CMC.
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`(Two weeks after the CMC). The Parties shall submit an agreed Scheduling Order. If the
`parties cannot agree, the parties shall submit a separate Joint Motion for entry of each Order
`briefly setting forth their respective positions on items where they cannot agree. Absent
`agreement of the parties, the Plaintiff shall be responsible for the timely submission of this
`and other Joint filings.
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`(Two weeks after the CMC). Deadline for Motions to Transfer. The Court also adopts the
`following page limits and briefing schedule for Motions to Transfer:
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`a. Opening – 15 pages
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`b. Response – 15 pages, due 14 days after the Opening brief
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`c. Reply – 5 pages, due 7 days after the Response brief
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`(Seven weeks after the CMC). Defendant shall serve preliminary invalidity contentions in the
`form of (1) a chart setting forth where in the prior art references each element of the asserted
`claim(s) are found, (2) an identification of any limitations the Defendant contends are
`indefinite or lack written description under section 112, and (3) an identification of any
`claims the Defendant contends are directed to ineligible subject matter under section 101.
`Defendant shall also produce (1) all prior art referenced in the invalidity contentions, (2)
`technical documents, including software where applicable, sufficient to show the operation
`of the accused product(s), and (3) summary, annual sales information for the accused
`product(s) for the two years preceding the filing of the Complaint,1 unless the parties agree to
`some other timeframe.
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`DISCOVERY
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`Except with regard to venue, jurisdictional, and claim construction-related discovery, all other
`discovery is stayed until after the Markman hearing. Notwithstanding this general stay of discovery,
`the Court will permit limited discovery by agreement of the parties, or upon request, where
`exceptional circumstances warrant. For example, if discovery outside the United States is
`contemplated, the Court will be inclined to allow such discovery to commence before the Markman
`hearing.
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`1 With regard to expired patents, the sales information shall be provided for the two years preceding expiration.
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`With respect to venue and jurisdictional discovery, the Court generally grants leave for the parties to
`conduct targeted discovery (including, but not limited to requests for production, interrogatories, and
`depositions) with regard to motions to transfer venue or motions to dismiss based on lack of
`jurisdiction. If the parties disagree as to what reasonable discovery limits are, the Court encourages
`the parties to contact the Court to request a telephonic discovery hearing.
`Following the Markman hearing, the following discovery limits will apply to this case. The Court
`will consider reasonable requests to adjust these limits should circumstances warrant.
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`1. Interrogatories: 30 per side2
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`2. Requests for Admission: 45 per side
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`3. Requests for Production: 75 per side
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`4. Fact Depositions: 70 hours per side (for both party and non-party witnesses combined)
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`5. Expert Depositions: 7 hours per report3
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`Electronically Stored Information. As a preliminary matter, the Court will not require general
`search and production of email or other electronically stored information (ESI), absent a showing of
`good cause. If a party believes targeted email/ESI discovery is necessary, it shall propose a procedure
`identifying custodians and search terms it believes the opposing party should search. The opposing
`party can oppose, or propose an alternate plan. If the parties cannot agree, they shall contact
`chambers to schedule a call with the Court to discuss their respective positions.
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`DISCOVERY DISPUTES
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`A party may not file a Motion to Compel discovery unless: (1) lead counsel have met and conferred
`in good faith to try to resolve the dispute, and (2) the party has contacted the Court’s law clerk (with
`opposing counsel) to arrange a telephone conference with the Court to summarize the dispute and the
`parties respective positions. After hearing from the parties, the Court will determine if further
`briefing is required.
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`PROTECTIVE ORDER
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`Pending entry of the final Protective Order, the Court issues the following interim Protective Order
`to govern the disclosure of confidential information in this matter:
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`If any document or information produced in this matter is deemed confidential by the
`producing party and if the Court has not entered a protective order, until a protective
`order is issued by the Court, the document shall be marked “confidential” or with some
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`2 A “side” shall mean the plaintiff (or related plaintiffs suing together) on the one hand, and the defendant (or
`related defendants sued together) on the other hand. In the event that the Court consolidates related cases for
`pretrial purposes, with regard to calculating limits imposed by this Order, a “side” shall be interpreted as if the
`cases were proceeding individually. For example, in consolidated cases the plaintiff may serve up to 30
`interrogatories on each defendant, and each defendant may serve up to 30 interrogatories on the plaintiff.
`3 For example, if a single technical expert submits reports on both infringement and invalidity, he or she may be
`deposed for up to 14 hours in total.
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`Case 6:20-cv-00507-ADA Document 19 Filed 10/05/20 Page 4 of 10
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`other confidential designation (such as “Confidential – Outside Attorneys Eyes
`Only”) by the disclosing party and disclosure of the confidential document or
`information shall be limited to each party’s outside attorney(s) of record and the
`employees of such outside attorney(s).
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`If a party is not represented by an outside attorney, disclosure of the confidential
`document or information shall be limited to one designated “in house” attorney, whose
`identity and job functions shall be disclosed to the producing party 5 days prior to any
`such disclosure, in order to permit any motion for protective order or other relief
`regarding such disclosure. The person(s) to whom disclosure of a confidential
`document or information is made under this local rule shall keep it confidential and
`use it only for purposes of litigating the case.
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`CLAIM CONSTRUCTION ISSUES
`Terms for Construction. Based on the Court’s experience, the Court believes that it should
`have presumed limits on the number of claim terms to be construed. The “presumed limit” is
`the maximum number of terms that the parties may request the Court to construe without
`further leave of Court. If the Court grants leave for the additional terms to be construed,
`depending on the complexity and number of terms, the Court may split the Markman hearing
`into two hearings.
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`The presumed limits based on the number of patents-in-suit are as follows:
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`Limits for Number of Claim Terms to be Construed
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`1-2 Patents
`10 terms
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`3-5 Patents
`12 terms
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`More than 5 Patents
`15 terms
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`When the parties submit their joint claim construction statement, in addition to the term and
`the parties’ proposed constructions, the parties should indicate which party or side proposed
`that term, or if that was a joint proposal.
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`Claim Construction Briefing. The Court will require simultaneous claim construction
`briefing with the following default page limits; however, where exceptional circumstances
`warrant, the Court will consider reasonable requests to adjust these limits. These page limits
`shall also apply collectively for consolidated cases; however, the Court will consider
`reasonable requests to adjust page limits in consolidated cases where circumstances warrant.
`In addition, the Court is very familiar with the law of claim construction and encourages the
`parties to forego lengthy recitations of the underlying legal authorities and instead focus on the
`substantive issues unique to each case.
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`Unless otherwise agreed by the parties, all simultaneous filings will take place at 5:00 p.m. CT.
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`Case 6:20-cv-00507-ADA Document 19 Filed 10/05/20 Page 5 of 10
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`Page Limits for Markman Briefs
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`Brief
`Opening
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`1-2 Patents
`20 pages
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`3-5 Patents
`30 pages
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`Response
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`20 pages
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`30 pages
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`Reply
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`10 pages
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`15 pages
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`More than 5 Patents
`30 pages, plus 5
`additional pages for
`each patent over 5 up
`to a maximum of 45
`pages
`30 pages, plus 5
`additional pages for
`each patent over 5 up
`to a maximum of 45
`pages
`15 pages, plus 2
`additional pages for
`each patent over 5 up
`to a maximum of 21
`pages
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`Conduct of the Markman Hearing.
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`The Court generally sets aside one half day for the Markman hearing; however, the Court is
`open to reserving more or less time, depending on the complexity of the case and input from
`the parties. The Court requires submission of technology tutorials in advance of the Markman
`hearing when they may be of benefit. The parties may submit tutorials in electronic form not
`later than one week before the Markman hearing and the Court encourages the parties to aim
`for tutorials with voiceovers in the 15 minute range. If a party intends to present a live tutorial,
`the parties should contact the Court to set-up a Zoom or telephonic tutorial to occur at least a
`week before the Markman hearing. In general, tutorials should be: (1) directed to the
`underlying technology (rather than argument related to infringement or validity), and (2)
`limited to 15 minutes per side. For the Court’s convenience, the tutorial may be recorded, but
`will not be part of the record. Parties may not rely on or cite to the tutorial in other aspects of the
`litigation.
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`The Court will consider the parties suggestions on the order of argument at the Markman
`hearing. However, if the parties do not suggest a different procedure, the Court will allow the
`Plaintiff to pick the first term and then alternate by term. As a general rule, if one side
`proposes “plain and ordinary meaning” as its construction or asserts that a term is indefinite,
`the other party shall go first.
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`GENERALISSUES
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`1. The Court does not have a limit on the number of motions for summary judgment (MSJs);
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`however, absent leave of Court, the cumulative page limit for Opening Briefs for all MSJs
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`is 40 pages per side.
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`There may be instances where the submission of substantive briefs via audio file will be of
`help to the Court. If a party is contemplating submitting a brief via audio file it should
`contact the Court for guidance on whether it would be helpful to the Court. However, the
`Court has determined that audio recordings of Markman briefs are of limited value and those
`need not be submitted. The recordings shall be made in a neutral fashion, shall be verbatim
`transcriptions without additional colloquy (except that citations and legal authority sections
`need not be included), and each such file shall be served on opposing counsel. The Court
`does not have a preference for the manner of recording and has found automated software
`recordings, as well as attorney recordings, to be more than satisfactory. Audio files shall be
`submitted via USB drive, Box (not another cloud storage), or email to the law clerk (with a
`cc to opposing counsel) and should be submitted in mp3 format.
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`The Court will entertain reasonable requests to streamline the case schedule and
`discoveryand encourages the parties to contact the Court’s law clerk (with opposing counsel)
`toarrange a call with the Court when such interaction might help streamline the case.
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`The Court is generally willing to extend the response to the Complaint up to 45 days ifagreed
`by the parties. However, longer extensions are disfavored and will require goodcause.
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`For Markman briefs, summary judgment motions, and Daubert motions, each party
`shalldeliver to Chambers one (1) paper copy of its Opening, Response, and Reply Briefs,
`omittingattachments, no later than one week after the last-filed brief or at least a week before
`the hearing, whichever is earlier.
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`Plaintiff must file a notice informing the Court when an IPR is filed, the expected time for an
`institution decision, and the expected time for a final written decision, within two weeks of
`the filing of the IPR.
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`To the extent the parties need to email the Court, the parties should use the following
`emailaddress: TXWDml_LawClerks_JudgeAlbright@txwd.uscourts.gov.
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`ORDERED this 5th day of October, 2020.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`Case 6:20-cv-00507-ADA Document 19 Filed 10/05/20 Page 7 of 10
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`Deadline
`7 days before CMC
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`2 weeks after CMC
`7 weeks after CMC
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`9 weeks after CMC
`11 weeks after CMC
`12 weeks after CMC
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`APPENDIX A – DEFAULT SCHEDULE
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`Item
`Plaintiff serves preliminary4 infringement contentions in the
`form of a chart setting forth where in the accused product(s)
`each element of the asserted claim(s) are found. Plaintiff shall
`also identify the earliest priority date (i.e. the earliest date of
`invention) for each asserted claim and produce: (1) all
`documents evidencing conception and reduction to practice
`for each claimed invention, and (2) a copy of the file history
`for each patent in suit.
`Deadline for Motions to Transfer.
`Defendant serves preliminary invalidity contentions in the
`form of (1) a chart setting forth where in the prior art
`references each element of the asserted claim(s) are found, (2)
`an identification of any limitations the Defendant contends are
`indefinite or lack written description under section 112, and
`(3) an identification of any claims the Defendant contends are
`directed to ineligible subject matter under section 101.
`Defendant shall also produce (1) all prior art referenced in the
`invalidity contentions, (2) technical documents, including
`software where applicable, sufficient to show the operation of
`the accused product(s), and (3) summary, annual sales
`information for the accused product(s) for the two years
`preceding the filing of the Complaint, unless the parties agree
`to some other timeframe.
`Parties exchange claim terms for construction.
`Parties exchange proposed claim constructions.
`Parties disclose extrinsic evidence. The parties shall disclose
`any extrinsic evidence, including the identity of any expert
`witness they may rely upon with respect to claim construction
`or indefiniteness. With respect to any expert identified, the
`parties shall also provide a summary of the witness’s expected
`testimony including the opinions to be expressed and a
`general description of the basis and reasons therefor. A
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`4 The parties may amend preliminary infringement contentions and preliminary invalidity contentions without
`leave of court so long as counsel certifies that it undertook reasonable efforts to prepare its preliminary
`contentions and the amendment is based on material identified after those preliminary contentions were served,
`and should do so seasonably upon identifying any such material. Any amendment to add patent claims requires
`leave of court so that the Court can address any scheduling issues.
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`Case 6:20-cv-00507-ADA Document 19 Filed 10/05/20 Page 8 of 10
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`failure to summarize the potential expert testimony in a good
`faith, informative fashion may result in the exclusion of the
`proffered testimony. With respect to items of extrinsic
`evidence, the parties shall identify each such item by
`production number or produce a copy of any such item if not
`previously produced.
`Deadline to meet and confer to narrow terms in dispute and
`exchange revised list of terms/constructions.
`Parties file Opening claim construction briefs, including any
`arguments that any claim terms are indefinite.
`Parties file Responsive claim construction briefs.
`Parties file Reply claim construction briefs.
`Parties submit Joint Claim Construction Statement. In
`addition to filing, the parties shall jointly submit, via USB
`drive, Box (not another cloud storage),5 or email to the law
`clerk, pdf versions of all as-filed briefing and exhibits. Each
`party shall deliver to Chambers paper copies of its Opening,
`Response , and Reply Markman Briefs, omitting attachments.
`Absent agreement of the parties, the Plaintiff shall be
`responsible for the timely submission of this and other Joint
`filings.
`Parties submit optional technical tutorials. The parties shall
`also jointly submit, via USB drive, Box (not another cloud
`storage), or email to the law clerk, pdf versions of all as-filed
`briefing and exhibits.
`Markman Hearing at [9:00 a.m. or 1:00 p.m.]
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`Fact Discovery opens; deadline to serve Initial Disclosures per
`Rule 26(a).
`Deadline to add parties.
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`Deadline to serve Final Infringement and Invalidity
`Contentions. After this date, leave of Court is required for
`any amendment to Infringement or Invalidity contentions.
`This deadline does not relieve the Parties of their obligation to
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`13 weeks after CMC
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`14 weeks after CMC
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`17 weeks after CMC
`19 weeks after CMC
`20 weeks after CMC
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`23 weeks after CMC (but
`at least 1 week before
`Markman hearing)
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`24 weeks after CMC (or as
`soon as practicable)
`1 business day after
`Markman hearing
`6 weeks after Markman
`hearing
`8 weeks after Markman
`hearing
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`5 To the extent a party wishes to use cloud storage, the parties should contact the law clerk to request a Box link
`so that the party can directly upload the file to the Court’s Box account.
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`Case 6:20-cv-00507-ADA Document 19 Filed 10/05/20 Page 9 of 10
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`12 weeks after Markman
`hearing
`26 weeks after Markman
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`30 weeks after Markman
`hearing
`31 weeks after Markman
`hearing
`35 weeks after Markman
`hearing
`38 weeks after Markman
`hearing
`39 weeks after Markman
`hearing
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`40 weeks after Markman
`hearing
`42 weeks after Markman
`hearing
`44 weeks after Markman
`hearing
`45 weeks after Markman
`hearing
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`seasonably amend if new information is identified after initial
`contentions.
`Deadline to amend pleadings. A motion is not required unless
`the amendment adds patents or patent claims.
`Deadline for the first of two meet and confers to discuss
`significantly narrowing the number of claims asserted and
`prior art references at issue. Unless the parties agree to the
`narrowing, they are ordered to contact the Court’s Law Clerk
`to arrange a teleconference with the Court to resolve the
`disputed issues.
`Close of Fact Discovery.
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`Opening Expert Reports.
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`Rebuttal Expert Reports.
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`Close of Expert Discovery.
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`Deadline for the second of two meet and confer to discuss
`narrowing the number of claims asserted and prior art
`references at issue to triable limits. To the extent it helps the
`parties determine these limits, the parties are encouraged to
`contact the Court’s Law Clerk for an estimate of the amount
`of trial time anticipated per side. The parties shall file a Joint
`Report within 5 business days regarding the results of the
`meet and confer.
`Dispositive motion deadline and Daubert motion deadline.
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`Serve Pretrial Disclosures (jury instructions, exhibits lists,
`witness lists, discovery and deposition designations).
`Serve objections to pretrial disclosures/rebuttal disclosures.
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`Serve objections to rebuttal disclosures and File Motions in
`limine.
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`Case 6:20-cv-00507-ADA Document 19 Filed 10/05/20 Page 10 of 10
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`46 weeks after Markman
`hearing
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`47 weeks after Markman
`hearing
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`File Joint Pretrial Order and Pretrial Submissions (jury
`instructions, exhibits lists, witness lists, discovery and
`deposition designations); file oppositions to motions in limine
`File Notice of Request for Daily Transcript or Real Time
`Reporting. If a daily transcript or real time reporting of court
`proceedings is requested for trial, the party or parties making
`said request shall file a notice with the Court and e-mail the
`Court Reporter, Kristie Davis at kmdaviscsr@yahoo.com
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`3 business days before
`Final Pretrial Conference.
`49 weeks after Markman
`hearing (or as soon as
`practicable)
`52 weeks after Markman
`hearing (or as soon as
`practicable)6
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`Deadline to meet and confer regarding remaining objections
`and disputes on motions in limine.
`File joint notice identifying remaining objections to pretrial
`disclosures and disputes on motions in limine.
`Final Pretrial Conference. The Court expects to set this date
`at the conclusion of the Markman Hearing.
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`Jury Selection/Trial. The Court expects to set these dates at
`the conclusion of the Markman Hearing.
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`6 If the actual trial date materially differs from the Court’s default schedule, the Court will consider reasonable
`amendments to the case schedule post-Markman that are consistent with the Court’s default deadlines in light of
`the actual trial date.
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