`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MINNESOTA
`
`Oxygenator Water Technologies, Inc.,
`
`v.
`
`Tennant Company,
`
`Plaintiff,
`
`Defendant.
`
`Civil No. 20-cv-0358 (ECT/HB)
`
`PRETRIAL
`CASE MANAGEMENT ORDER
`(PATENT CASES)
`
`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 inexpensive 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 Local Rule 16.3.1 Counsel must promptly notify the Court of
`
`developments in the case that could significantly affect the case management schedule.
`
`The Court expects the parties and their counsel to work cooperatively throughout
`
`this litigation to narrow the issues in dispute, and to use reasonable, good faith and
`
`proportional efforts to preserve, request, identify and produce relevant information and
`
`resolve discovery disputes.
`
`Parties who agree to seek a modification of this Scheduling Order may file a joint
`1
`motion with a proposed order to the Court without requesting a hearing; however, the
`joint motion must set forth good cause for modification of the order as required by Local
`Rule 16.3. The parties are reminded that even if they are in agreement, the decision
`about whether such a motion will be granted is ultimately that of the Court.
`
`Tennant Company
`Exhibit 1048
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 2 of 27
`
`
`
`The parties are also reminded that Magistrate Judge Bowbeer’s Practice Pointers,
`
`which are periodically revised, are available on the United States District Court for the
`
`District of Minnesota’s website (mnd.uscourts.gov). All parties are expected to be
`
`familiar with and adhere to these Practice Pointers, including any variances from the
`
`Local Rules.
`
`
`
`Attachment A to this Order is a Schedule setting forth the key dates set forth in the
`
`order in chronological order. The Schedule is provided for the convenience of the Court
`
`and the parties, but is not intended to modify or supersede this Order. In all cases of
`
`apparent dispute, this Order controls.
`
`PLEADINGS
`
`1.
`
`2.
`
`All motions that seek to amend or supplement the pleadings or to add
`parties, together with supporting documents, must be filed and served
`on or before December 3, 2020.
`
`Discovery will be 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 the
`pleading of those claims or defenses is in whole or in part in the
`hands of another party. Once a party has provided the necessary
`discovery, and on or before the deadline set forth in Paragraph 1
`above, 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. Such support must be explained in the motion
`seeking leave. Leave will be liberally given where prima facie
`support is present, provided the party has been diligent in seeking
`the necessary discovery and that it seeks leave as soon as reasonably
`possible following receipt of the necessary discovery.
`
`3.
`
`Any motion that seeks to amend or supplement the pleadings must
`include a redlined version reflecting the changes contained in the
`proposed pleading. (See Local Rule 15.1.)
`
`2
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 3 of 27
`
`4.
`
`The moving party may file a reply memorandum as a matter of right
`in connection with a motion for leave to amend a pleading if the
`other side argues that the amendment would be futile. In such case,
`the initial motion and supporting papers must be filed no less than
`21 days before the hearing date, and the reply must be filed no more
`than 7 days after the other side files its response arguing futility. To
`anticipate this expanded briefing schedule, the parties must discuss
`during the required pre-motion meet-and-confer whether the other
`side intends to argue futility. The total word count for the opening
`and reply memoranda may not exceed 12,000 words unless
`otherwise authorized. If the other side does not argue futility, no
`reply will be permitted without leave of Court. See ¶ 3 in the section
`on NON-DISPOSITIVE MOTIONS, below.
`FACT DISCOVERY DEADLINES AND LIMITS
`
`1.
`
`2.
`
`The parties must make their initial disclosures required by Rule 26(a)(1) on
`or before July 24, 2020.
`
`As to the production of core technical documents by Defendant, Defendant
`represents that there are owner’s manuals and parts manuals available on its
`website for all products that incorporate the accused electrolysis units, and
`that the parts manuals contain detailed drawings of the accused electrolysis
`units. Defendant represents that on July 31, 2020, it produced CAD files
`for the electrodes that were placed in floor scrubbers in production from
`2015-2020 and a chart that cross-references the CAD drawings with the
`floor scrubbers that incorporated those electrolysis units. Defendant further
`represents that it has produced manuals containing voltage information
`requested by Plaintiff. Defendant is currently searching for information
`concerning the current applied to the electrodes and will produce
`documents if it can locate any within its possession, custody, or control.
`
`Defendant has inquired, and Tennant is investigating, whether any
`additional electrodes were made, used, or sold by Tennant from 2015-2020.
`If additional relevant electrodes are identified, Defendant will promptly
`produce core technical documents comparable to those described above for
`those electrodes and the floor scrubbers that incorporated them. Provided
`that production is separately made and explicitly called to the attention of
`Plaintiff’s counsel (as opposed to being incorporated into a larger
`production), and unless otherwise ordered for good cause shown, Plaintiff
`must provide infringement contentions for products containing those
`electrodes no later than 3 weeks from the date CAD files and 2d drawings
`are produced for those electrodes.
`
`3
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 4 of 27
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Defendant has proposed that this case be bifurcated into a liability phase
`and a damages phase, with the latter phase deferred until and only if there is
`a finding of liability in favor of Plaintiff. The Court has considered the
`advantages and disadvantages of bifurcation in connection with its
`responsibility under Federal Rule of Civil Procedure 1 to work with the
`parties toward a just, speedy, and inexpensive resolution of this case, and
`concludes that in the circumstances of this case, bifurcation would not be
`appropriate.
`
`That being said, the Court intends to work with the parties to explore
`opportunities for early resolution, and recognizes that although some
`damages-related information will be necessary to that discussion, it may be
`appropriate to defer more detailed and burdensome damages discovery until
`later in the period set aside for fact discovery. The Court therefore expects
`the parties to confer as discovery progresses regarding whether discovery
`can be prioritized in this or other ways to optimize the opportunities for a
`meaningful settlement discussion before the parties have exhausted their
`potential settlement flexibility on the cost of litigation.
`
`Fact discovery must be commenced in time to be completed on or before
`June 18, 2021.
`
`To facilitate the taking of depositions, the parties agree that document
`production should be substantially complete no later than April 16, 2021.
`
`No more than a total of 25 interrogatories, counted in accordance with
`Rule 33(a), shall be served by each side. No more than 75 document
`requests and no more than 75 requests for admissions shall be served by
`each side. A reasonable number of requests for admissions that are directed
`solely to the authenticity or genuineness of documents will not count
`toward this limit.
`
`The parties are reminded that Fed. R. Civ. P. 26(b)(1) provides that
`discovery must be both relevant to any party’s claim or defense and
`proportional to the needs of the case, considering, inter alia, the importance
`of the issues at stake in the action and the importance of the discovery in
`resolving those issues, as well as whether the burden or expense of the
`proposed discovery outweighs its likely benefit. Accordingly, requests
`must be tailored and specific to the issues, and general requests for “all
`relevant documents” do not meet these criteria.
`
`At the same time, Fed. R. Civ. P. 34(b)(2) requires that a responding party
`must “state with specificity the grounds for objecting to the request,
`including the reasons” and that the objection “must state whether any
`
`4
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 5 of 27
`
`8.
`
`9.
`
`responsive materials are being withheld on the basis of that objection. An
`objection to part of a request must specify the part and permit inspection of
`the rest.” Boilerplate or general objections that do not clearly communicate
`whether and to what extent the scope of the response is more limited than
`the scope of the request do not meet these criteria.
`Each side may take no more than 10 fact depositions, including Rule
`30(b)(6) and non-party depositions.
`
`The parties agree that three business days before any scheduled 30(b)(6)
`deposition, the party producing the 30(b)(6) witness(es) will identify the
`witness(es) being produced by name and will specifically identify the topics
`about which each witness will be prepared to testify.
`
`The parties do not anticipate that any deposition will be taken outside the
`United States or conducted in a language other than English. If it is
`determined that a translator will be necessary, the parties will work together
`in good faith to reach agreement regarding any additional hours that might
`be required to conduct a full deposition.
`
`Based on the parties’ Draft Stipulation for Discovery Order (ECF No. 30)
`and the Court’s resolution of certain disputes therein, a Discovery Order
`governing the discovery and production of electronically stored information
`(“ESI”) has been entered (ECF No. 40). The parties are expected to be
`proactive and diligent in identifying and discussing any other issues that
`may arise relating to the scope, search, collection, review, and production
`of ESI. Any disputes that cannot be resolved through a good faith meet and
`confer process must be brought promptly to the Court for resolution so that
`such disputes do not impede the progress of discovery.
`
`10.
`
`Claims of Privilege or Protection as Attorney Work Product.
`
`a.
`
`Defendant may postpone the waiver of any applicable attorney-client
`privilege on topics relevant to claims of willful infringement, if any,
`until thirty (30) days after the Court issues its Claim
`Construction Order, provided that it will produce all relevant
`privileged documents no later than thirty (30) days after the Court
`issues its Claim Construction Order. All additional discovery
`regarding the waiver must be completed no later than the close of
`fact discovery or sixty (60) days after the Court issues its claim
`construction order, whichever is later.
`
`b.
`
`Unless otherwise ordered, the parties are not obligated to include on
`their privilege logs documents, communications, or other materials
`
`5
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 6 of 27
`
`c.
`
`d.
`
`e.
`
`that came into existence on or after the date that Plaintiff’s first
`complaint was filed in this action.
`
`Privilege logs must be provided by the producing party on or before
`April 30, 2021, or within 14 days of the production from which
`documents were withheld, whichever is later.
`
`To further the analysis of any privilege logs provided, the parties
`will also provide a list of all lawyers identified on the privilege log,
`identifying each as inside or outside counsel.
`
`The parties agree to follow the procedure set forth in Fed. R. Civ. P.
`26(b)(5)(B) regarding information produced in discovery that is
`subject to a claim of privilege or protection as trial-preparation
`material. Pursuant to Fed. R. Evid. 502, the inadvertent production
`of any documents in this proceeding shall not constitute a waiver of
`any privilege or protection applicable to those documents in this or
`any other state or federal proceeding.
`
`11.
`
`In responding to discovery requests, each party must 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. 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.
`
`PROTECTIVE ORDER AND HANDLING OF SEALED DOCUMENTS IN
`CONNECTION WITH MOTIONS
`
`By agreement of the parties, a Protective Order has been entered in this case to
`
`govern the handling of confidential information produced in discovery (ECF No. 33).
`
`If a dispute arises regarding whether that protective order should be modified, and that
`
`dispute cannot be resolved through a good faith meet and confer, the dispute should be
`
`submitted to the Court as soon as possible in accordance with the procedures governing
`
`non-dispositive motions.2 In the interim, however, absent extraordinary circumstances,
`
`Parties who agree to a modification of the protective order may file a stipulation
`2
`with the proposed modified order to the Court without a motion and do not need to
`
`6
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 7 of 27
`
`any otherwise discoverable information that a producing party believes should be covered
`
`by the proposed modifications may not be withheld on the basis that the modifications
`
`have not yet been adopted. Instead, the information must be produced to opposing
`
`counsel, but it may be designated for restricted review in accordance with the proposed
`
`modifications if there is a good faith basis for doing so. Opposing counsel must comply
`
`with the interim restricted designation for such information until the Court resolves the
`
`dispute concerning the protective order. At that time, the producing party must re-
`
`produce and re-designate the documents if necessary to conform to the Court’s ruling.
`
`The parties are reminded that Local Rule 5.6 governs the filing of documents
`
`under seal in this case.
`
`If a party intends to file in connection with a motion a document the party believes
`
`in good faith is not confidential but which has been designated by another party as
`
`confidential or protected, the party intending to file the document is encouraged to meet
`
`and confer with that party concerning the designation of the document and if necessary to
`
`follow the procedures set forth in the protective order to challenge the designation of the
`
`document, to the extent practicable, before the party’s submission is due.
`
`If a party files a document under seal, counsel must provide the Court with a
`
`courtesy copy of each sealed document either in hard copy or on a CD, thumb drive, or
`
`comply with Local Rule 7.1(b). If they agree that the order should be modified but
`disagree as to the details of the modification, they may still submit it by filing a
`stipulation and proposed order, provided they clearly set forth their respective positions
`on the terms as to which they disagree. However, if they disagree about whether the
`protective order should be modified at all, the onus is on the party seeking modification
`to seek relief from the Court by motion or, if the parties agree, through the IDR process.
`
`7
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 8 of 27
`
`similar electronic storage media. The confidential information (i.e., the information that
`
`was redacted from the publicly filed document) must be highlighted in yellow on the
`
`courtesy copy. The sealing of entire pleadings, memoranda of law, exhibits, and the like
`
`is strongly discouraged; however, in the rare event that an entire document is filed under
`
`seal, the courtesy copy of that document must so note. The courtesy copies must be
`
`delivered to the Court no later than the next business day after the documents are e-filed.
`
`A joint motion for sealing filed pursuant to Local Rule 5.6 must not only set forth
`
`the justification(s) for continued sealing but must, to the extent practicable, identify with
`
`specificity the portion or portions of each document for which the parties seek continued
`
`sealing. That a document was designated as confidential under a protective order cannot
`
`be the sole reason to support continued sealing. If a redacted public version of any such
`
`document has not already been filed, or if further good faith review by the party who
`
`asserts confidentiality reveals that some of the previously redacted material does not
`
`require sealing, the parties must cooperate to prepare and file a redacted version of that
`
`document, and must refer to it in the joint motion for sealing.
`
`NON-DISPOSITIVE MOTIONS
`
`
`
`Except where the parties and the Court have agreed to handle a dispute through
`
`Informal Dispute Resolution (see below), all non-dispositive motions must be scheduled,
`
`filed, and served in compliance with the Electronic Case Filing Procedures for the
`
`District of Minnesota and with Local Rules 7.1 and 37.1.3 The required “meet and
`
`The parties are reminded that under Local Rule 7.1, the time for filing and serving
`3
`a response to a non-dispositive motion is counted from the date of filing of the motion,
`
`8
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 9 of 27
`
`confer” must be meaningful and must include attempts to do so through personal contact,
`
`rather than solely through correspondence. Unless a non-dispositive motion is
`
`unopposed, it must be scheduled for hearing prior to filing by calling Judith Kirby,
`
`Courtroom Deputy/Judicial Assistant for Magistrate Judge Bowbeer, even when all
`
`parties are in agreement that no hearing is required.4 If the moving party does not intend
`
`to file the motion promptly after receiving a hearing date from the Court, it must notify
`
`the other side in writing of the hearing date and the nature of the anticipated motion.
`
`Counsel are advised not to notice additional motions for hearing on an already existing
`
`hearing date without first contacting the Court for permission to do so.
`
`The parties must promptly bring disputes to the Court through its procedures for
`
`resolving non-dispositive motions where the parties have not been able to resolve those
`
`disputes through a diligent, good faith meet-and-confer process. In other words, simply
`
`because this Scheduling Order establishes a deadline for filing a particular type of non-
`
`dispositive motion does not mean the Court will automatically deem any motion brought
`
`by that deadline to have been timely filed. The Court will consider whether the relief
`
`sought by the motion is likely to impact the parties’ ability to meet the other deadlines in
`
`this Order and whether it appears that with the exercise of diligence, the motion could
`
`have been brought sooner.
`
`not from the date of service. Therefore, Fed. R. Civ. P. 6(d) has no application to the
`timing for the filing and service of responses.
`4
`If the parties are in agreement that no hearing is necessary, that agreement must be
`clearly stated in the notice of motion. If the Court agrees, it will file an order canceling
`the hearing and stating its intention to take the motion under advisement on the papers.
`
`9
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 10 of 27
`
`1.
`
`2.
`
`3.
`
`All non-dispositive motions and supporting documents, other than those
`seeking to amend or supplement the pleadings or relating to expert
`discovery, must be filed and served on or before July 6, 2021. This
`includes motions relating to fact discovery and motions to amend this
`Scheduling Order. The Court reminds the parties that, except in
`extraordinary circumstances, they must obtain a hearing date for a motion
`to amend this Scheduling Order BEFORE the deadline that they wish to
`amend expires. (See LR 16.3(d).)
`
`All non-dispositive motions and supporting documents that relate to expert
`discovery must be filed and served on or before October 22, 2021.
`
`Reply Memoranda: For any non-dispositive motion other than a motion to
`amend the pleadings as to which the other side argues futility, the moving
`party must obtain leave of Court before filing a reply memorandum. If the
`Court grants leave to file a reply, the reply must be e-filed and delivered to
`chambers no later than four days after the filing of a response to a non-
`dispositive motion. For a case involving one or more parties who are not
`on the Court’s CM/ECF system (e.g., a case involving pro se litigants), the
`Court will set a date by which any reply is to be served and filed. Unless
`otherwise authorized, the reply memorandum may not exceed 1,750 words,
`including footnotes, and the total word count for the opening and reply
`memoranda may not exceed 12,000 words.
`
`4.
`
`Discovery Motions:
`
`a.
`
`b.
`
`Before scheduling or filing any formal motion relating to discovery
`(i.e., where the parties have not agreed to IDR), the movant must
`request a telephone conference with the Court. The request for the
`telephone conference must be made well in advance of the
`anticipated filing deadline for any motion. The purpose of this call
`is to explore narrowing the discovery dispute, ensure that the parties
`have fully complied with their obligations to meet and confer, and to
`discuss the most efficient way to brief disputed issues. The movant
`shall request the telephone conference by submitting a short email to
`bowbeer_chambers@mnd.uscourts.gov (copying all counsel),
`describing the discovery dispute and indicating when the parties
`would be available for a conference call. No attachments are
`permitted. The Court will then schedule a conference call.
`
`Local Rule 37.1 governs the form of discovery motions. Counsel
`must adhere to the Rule; however, they should also take care to
`prepare their documents to offer a clear presentation of the discovery
`dispute in an efficient and effective way. The status of each dispute
`
`10
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 11 of 27
`
`should be clear to the Court without having to cross-reference
`multiple exhibits. Arguments should be precise and should be
`grounded in the current Federal Rules of Civil Procedure governing
`discovery, including recent amendments. To the extent a burden is
`asserted, support for this position must be included. One suggested
`approach is set forth below:
`
`Insert the actual discovery request
`
`Insert the actual response and objections
`
`Insert position after meet and confer to make clear any
`compromise positions offered by either side
`
`Legal argument
`
`Specific relief sought
`
`Upon good cause shown by letter request pursuant to Local Rule
`7.1(f)(1)(D), the Court will give a party leave to exceed the word
`limits for its memorandum if the additional words will help avoid the
`need for the Court to cross-reference multiple exhibits. The letter
`should reference this Scheduling Order.
`INFORMAL DISPUTE RESOLUTION (IDR)
`
`If the meet and confer required by Local Rule 7.1 is not successful in resolving a
`
`dispute concerning a non-dispositive issue between the parties, the parties to the dispute
`
`should, prior to scheduling any non-dispositive motion, meet and confer regarding
`
`whether the issue may be resolved through Informal Dispute Resolution (IDR) with the
`
`magistrate judge. If all parties to the dispute do not agree to submit the dispute through
`
`the IDR process, the “moving party” (i.e., the party seeking relief from the Court) must
`
`proceed by formal motion. If the parties agree to submit the dispute through the IDR
`
`process, the “moving party” must file on CM/ECF a letter representing that the parties
`
`11
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 12 of 27
`
`wish to engage in IDR, and setting forth (1) the well-defined issue to be resolved,
`
`(2) the party’s position on the issue, and the factual and legal basis for that position, and
`
`(3) a clear bullet-point summary of the relief sought. Within three business days after the
`
`“moving party’s” letter is submitted, each responding party must file a letter confirming
`
`its agreement that the dispute may be resolved through IDR and setting forth its position
`
`on the merits of the dispute. For purposes of this process, a letter that is filed after
`
`4:30 p.m. Central Time will be considered as having been submitted the following day.
`
`Because of the short turn-around time for the IDR process, the parties’ IDR letters must
`
`also be emailed to chambers (bowbeerchambers@mnd.uscourts.gov) at the same time
`
`they are filed.
`
`The subject line of each letter must include the name of the case and the case
`
`number, and must clearly denote that the letter pertains to an IDR request. In addition,
`
`the subject line of the “moving party’s” initial letter must state the date (no earlier than
`
`three days following the date the responsive letter is due) by which the parties would like
`
`to be heard. Each letter may not exceed five (5) pages, single-spaced, and may include
`
`no more than three (3) exhibits. The letter may include a concise discussion of legal
`
`authorities, but the magistrate judge will not review lengthy briefs or voluminous
`
`exhibits, as the purpose of the IDR process is to reduce the time and expense associated
`
`with the resolution of non-dispositive issues that may arise during the pretrial process.
`
`The magistrate judge will request additional exhibits or authorities if needed, and may in
`
`its discretion conclude that the issue should instead be submitted by formal motion.
`
`12
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 13 of 27
`
`The “moving party” will be responsible for contacting chambers to request a date
`
`and time for a telephone conference, and will coordinate that date with the responding
`
`party or parties. At least one (1) attorney for each party knowledgeable about each
`
`disputed issue must participate in the conference, but no more than two (2) attorneys for
`
`each party to the dispute may participate.
`
`If the magistrate judge agrees that the dispute is appropriate for informal
`
`resolution, she will read the written submissions, hear counsel’s arguments at the
`
`conference, and issue her decision at the conclusion of the conference or shortly
`
`thereafter. There will be no transcript or other recording of the IDR conference call;
`
`however, the magistrate judge’s order on the dispute will be reflected in a minute entry
`
`on CM/ECF, and is enforceable by the same means and to the same extent as if it had
`
`been rendered at the conclusion of formal motion practice.
`
`In view of the absence of formal briefing, the lack of any transcript or recording of
`
`the conference call, and the fact that the minute entry will not discuss the reasoning
`
`underlying the magistrate judge’s decision, the decision of the magistrate judge on an
`
`issue submitted through the IDR process is final and cannot be appealed to the District
`
`Judge or preserved for the Court of Appeals, nor can a party revive the issue by filing a
`
`formal motion. In other words, by agreeing to submit a dispute to IDR, the party is
`
`agreeing to live with the decision the magistrate judge renders on that dispute at the
`
`conclusion of the IDR process.
`
`13
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 14 of 27
`
`DISCOVERY RELATING TO CLAIM CONSTRUCTION
`
`1.
`
`Plaintiff’s Claim Chart.
`Plaintiff’s claim chart must be served on or before September 11,
`2020.
`
`a.
`
`b.
`
`Plaintiff’s claim chart must provide a complete and detailed
`explanation of:
`
`(i)
`
`which claim(s) of its patent(s) it alleges are being infringed,
`whether literally or under the doctrine of equivalents;
`
`(ii) which specific products or methods of defendant it alleges
`literally infringe each claim;
`
`(iii)
`
`(iv)
`
`(v)
`
`specifically where and how each limitation of each asserted
`claim listed in paragraph 1(b)(i) is found within each product
`or method listed in paragraph 1(b)(ii), including the basis for
`each contention that each limitation is present, and including
`for each limitation that Plaintiff contends is governed by
`35 U.S.C. § 112(6) the identity of the structure(s), act(s), or
`material(s) in the accused product that perform(s) the claimed
`function;
`
`insofar as Plaintiff contends Defendant has indirectly
`infringed any claim, an identification of any direct
`infringement (with the specificity required in subparagraphs
`(i), (ii), and (iii) above, and a summary of the acts of the
`Defendant that contribute(d) to or induce(d) the direct
`infringement sufficient to put Defendant on notice of the
`nature of the alleged contribution or inducement, insofar as it
`is known to Plaintiff at the time the claim chart is served5;
`and
`
`if Plaintiff contends there is infringement of any claim(s)
`under the doctrine of equivalents, plaintiff must separately
`indicate this on its claim chart and, in addition to the
`information required for literal infringement, plaintiff must
`also explain each function, way, and result that it contends are
`
`More detailed and/or updated information regarding Plaintiff’s contentions of
`5
`indirect infringement may be sought through contention interrogatories.
`
`14
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 15 of 27
`
`equivalent, and why it contends that any differences are not
`substantial.
`
`c.
`
`Plaintiff may amend its claim chart only by agreement of the parties
`or leave of the Court for good cause shown.
`
`(i)
`
`(ii)
`
`Good cause may, for example, include, but is not
`limited to, the acquisition of information that Plaintiff
`did not have and could not through the exercise of
`reasonable diligence have obtained before it produced
`its claim chart (provided that it acts reasonably
`promptly to notify Defendant of its intention to seek
`leave to amend its claim chart after obtaining that
`information).
`
`If Plaintiff’s claim construction proposal as to a
`particular term or phrase is not adopted by the Court,
`or the Court issues a claim construction different from
`either party’s proposal, Plaintiff may request
`permission to amend its contentions, only related to
`that particular term/phrase. Such requests must be
`made to the magistrate judge no later than 14 days
`after the Court’s claim construction order.
`
`(iii)
`
`If Plaintiff seeks leave to amend its claim chart, it must
`meet and confer with Defendant before filing a motion.
`If the parties do not agree and the dispute is not
`resolved, Plaintiff may file its motion pursuant to
`Local Rule 7.1.
`
`2.
`
`Defendant’s Claim Chart.
`Defendant’s claim chart must be served on or before October 22,
`2020.
`
`a.
`
`b.
`
`Defendant’s claim chart must indicate with specificity which
`elements on plaintiff’s claim chart it admits are present in its accused
`device or process, and which it contends are absent, including in
`detail the basis for its contention that the element is absent. And, as
`to the doctrine of equivalents, Defendant must indicate on its chart
`its contentions concerning any differences in function, way, and
`result, and why any differences are substantial.
`
`15
`
`
`
`CASE 0:20-cv-00358-ECT-HB Document 43 Filed 08/11/20 Page 16 of 27
`
`c.
`
`Defendant may amend its claim chart only by agreement of the
`parties or leave of Court for good cause shown.
`
`(i)
`
`(ii)
`
`Good cause may, for example, include, but is not
`limited to, the acquisition of information that
`Defendant did not have and could not through the
`exercise of reasonable diligence have obtained before
`it produced its claim chart (provided that it acts
`reasonably promptly to notify Plaintiff of its intention
`to seek leave to amend its claim chart after obtaining
`that information).
`
`If Defendant’s claim construction proposal as to a
`particular term or phrase is not adopted by the Court,
`or the Court issues a claim constru