Case 6:20-cv-01152-ADA Document 23 Filed 06/30/21 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DAEDALUS BLUE, LLC,
`
`Plaintiff,
`
`Civil Action No. 6:20-cv-1152-ADA
`
`
`
`v.
`
`MICROSOFT CORPORATION,
`
`Defendant.
`
`ORDER GOVERNING PROCEEDINGS
`
` The Court will not hold a Rule 16 Case Management Conference (“CMC”) in this case.
`
`For scheduling purposes, the CMC is deemed to have occurred on May 13, 2021. This Order
`
`shall govern proceedings in this case.
`
`The following deadlines are set:
`
`SCHEDULE
`
`Deadline
`May 20,
`2021
`
`Item
`Plaintiff serves preliminary1 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.
`
`1 The parties may amend preliminary infringement contentions and preliminary invalidity contentions without leave
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`1
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`Case 6:20-cv-01152-ADA Document 23 Filed 06/30/21 Page 2 of 10
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`Deadlines
`May 27,
`2021
`
`July 8, 2021
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`July 15,
`2021
`July 27,
`2021
`August 3,
`2021
`
`Item
`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.
`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.
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`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 identify the
`scope of the topics for the witness’s expected testimony.2 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.
`
`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.
`2 Any party may utilize a rebuttal expert in response to a brief where expert testimony is relied upon by the other
`party.
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`2
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`Case 6:20-cv-01152-ADA Document 23 Filed 06/30/21 Page 3 of 10
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`Deadlines
`August 10,
`2021
`
`August 17,
`2021
`September
`7, 2021
`September
`21, 2021
`October 5,
`2021
`October 8,
`2021
`
`October 8,
`2021
`
`October 18,
`2021
`
`October 19,
`2021
`
`November
`30, 2021
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`December
`14, 2021
`
`Item
`Deadline to meet and confer to narrow terms in dispute and
`exchange revised list of terms/constructions.
`
`Plaintiff files Opening claim construction brief, including any
`arguments that any claim terms are not indefinite.
`Defendant files Responsive claim construction brief.
`
`Plaintiff files Reply claim construction brief.
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`Defendant files a Sur-Reply claim construction brief.
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`Parties submit Joint Claim Construction Statement.
`
`See General Issues Note #9 regarding providing copies of the
`briefing to the Court and the technical adviser (if appointed).
`
`Parties submit optional technical tutorials to the Court and technical
`adviser (if appointed).3
`
`Markman Hearing at 9:30 a.m.
`
`Fact Discovery opens; deadline to serve Initial Disclosures per Rule
`26(a).
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`Deadline to add parties.
`
`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
`seasonably amend if new information is identified after initial
`contentions.
`
`3 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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`3
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`Case 6:20-cv-01152-ADA Document 23 Filed 06/30/21 Page 4 of 10
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`Deadline
`February 8,
`2022
`
`April 19,
`2022
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`May 17,
`2022
`
`May 24,
`2022
`
`June 21,
`2022
`
`July 12,
`2022
`
`July 19,
`2022
`
`August 9,
`2022
`
`Item
`Deadline to amend pleadings. A motion is not required unless the
`amendment adds patents or patent claims. (Note: This includes
`amendments in response to a 12(c) motion.)
`
`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.
`
`Opening Expert Reports.
`
`Rebuttal Expert Reports.
`
`Close of Expert Discovery.
`
`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.
`
`See General Issues Note #9 regarding providing copies of the
`briefing to the Court and the technical adviser (if appointed).
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`4
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`Case 6:20-cv-01152-ADA Document 23 Filed 06/30/21 Page 5 of 10
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`Deadline
`August 23,
`2022
`
`September
`6, 2022
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`September
`13, 2022
`
`September
`27, 2022
`
`October 4,
`2022
`
`October 19,
`2022
`
`October 24,
`2022
`
`Item
`Serve Pretrial Disclosures (jury instructions, exhibits lists, witness
`lists, discovery and deposition designations).
`
`Serve objections to pretrial disclosures/rebuttal disclosures.
`
`Serve objections to rebuttal disclosures and file motions in limine.
`
`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
`
`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.
`
`November
`14, 2022
`
`Jury Selection/Trial. The Court expects to set these dates at the
`conclusion of the Markman Hearing.
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`5
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`Case 6:20-cv-01152-ADA Document 23 Filed 06/30/21 Page 6 of 10
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`DISCOVERY
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`[Plaintiff: Except with regard to venue, jurisdictional, claim construction, and conception and
`reduction to practice-related discovery, all other discovery is stayed until the Markman hearing.
`Defendant: 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.
`
`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.
`
`1.
`2.
`3.
`4.
`
`Interrogatories: 30 per side4
`Requests for Admission: 45 per side
`Requests for Production: 75 per side
`Fact Depositions: 70 hours per side (for both party and non-party witnesses
`combined)
`Expert Depositions: 7 hours per report5
`5.
`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.
`
`DISCOVERY DISPUTES
`
`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. Summaries shall be neutral and non-
`argumentative. After hearing from the parties, the Court will determine if further briefing is
`required.
`
`4 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.
`5 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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`6
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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:
`
`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
`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).
`
`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.
`
`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 each side 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 multiple
`hearings.
`
`The presumed limits based on the number of patents-in-suit are as follows:
`
`Limits for Number of Claim Terms to be Construed
`
`1-2 Patents
`8 terms
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`3-5 Patents
`10 terms
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`More than 5 Patents
`12 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.
`
`Claim Construction Briefing. The Court will require non-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
`
`7
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`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.
`
`Unless otherwise agreed to by the parties, the default order of terms in the parties’ briefs shall be
`based on 1) the patent number (lowest to highest), the claim number (lowest to highest), and
`order of appearance within the lowest number patent and claim. An example order may be as
`follows:
`
`1.
`2.
`
`3.
`
`4.
`5.
`6.
`
`10,000,000 Patent, Claim 1, Term 1
`10,000,000 Patent, Claim 1, Term 2 (where Term 2 appears later in the claim than
`does Term 1)
`10,000,000 Patent, Claim 2, Term 3 (where Term 3 appears later in the claim than
`does Terms 2 and 3)
`10,000,001 Patent, Claim 1, Term 4
`10,000,001 Patent, Claim 3, Term 5
`10,000,002 Patent, Claim 2, Term 6
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`To the extent that the same or similar terms appear in multiple claims, those same or similar
`terms should be ordered according to the lowest patent number, lowest claim number, and order
`of appearance within the patent and claim.
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`Page Limits for Markman Briefs
`
`1-2 Patents
`20 pages
`
`3-5 Patents
`30 pages
`
`20 pages
`
`30 pages
`
`10 pages
`
`15 pages
`
`Brief
`Opening
`(Plaintiff)
`
`Response
`(Defendant)
`
`Reply
`(Plaintiff)
`
`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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`8
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`Brief
`Sur-Reply
`(Defendant)
`
`1-2 Patents
`10 pages
`
`3-5 Patents
`15 pages
`
`More than 5 Patents
`15 pages, plus 2
`additional pages for
`each patent over 5 up
`to a maximum of 21
`pages
`
`Technology Tutorials and Conduct of the Markman Hearing
`
`Technology tutorials are optional. If the parties would like to submit one, the tutorial should be
`in electronic form, with voiceovers, and submitted at least 10 days before the Markman hearing.
`If a party believes a live tutorial would be of particular benefit to the Court, the parties should
`contact the Court to request a Zoom or telephonic tutorial so that the tutorial can be scheduled 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.
`
`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. As a general rule, the party opposing the Court’s preliminary construction shall go first.
`If both parties are unwilling to accept the Court’s preliminary construction, the Plaintiff shall
`typically go first.
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`GENERAL ISSUES
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Court will entertain reasonable requests to streamline the case schedule and discovery
`and encourages the parties to contact the Court’s law clerk (with opposing counsel) to
`arrange a call with the Court when such interaction might help streamline the case.
`
`To the extent the parties need to email the Court, the parties should use the following email
`address: TXWDml_LawClerks_JudgeAlbright@txwd.uscourts.gov.
`
`The Court is generally willing to extend the response to the Complaint up to 45 days if
`agreed by the parties. However, longer extensions are disfavored and will require good
`cause.
`
`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.
`
`5. With regard to any Motion to Transfer, the following page limits and briefing schedule
`shall apply:
`
`a.
`
`Opening – 15 pages
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`b.
`c.
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`Response – 15 pages, due 14 days after the Opening brief
`Reply – 5 pages, due 7 days after the Response brief
`
`6.
`
`7.
`
`8.
`
`9.
`
`After the trial date is set, the Court will not move the trial date except in extreme situations.
`To the extent a party believes that the circumstances warrant continuing the trial date, the
`parties are directed to contact the Court to request a telephonic hearing.
`
`The Court does not have a limit on the number of motions for summary judgment (MSJs);
`however, absent leave of Court, the cumulative page limit for Opening Briefs for all MSJs
`is 40 pages per side.
`
`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)6, or email to
`the law clerk (with a cc to opposing counsel) and should be submitted in mp3 format.
`
`For Markman briefs,7 summary judgment motions, and Daubert motions, each party shall
`deliver to Chambers one (1) paper copy of its Opening, Response, and Reply briefs,
`omitting attachments, at least 10 days before the hearing. Each party shall also provide an
`electronic copy of the briefs, exhibits, and the optional technology tutorial via cloud
`storage8 or USB drive. For Markman briefs, the parties should also include a (1) paper copy
`of all patents-in- suit and the Joint Claim Construction Statement. To the extent the Court
`appoints a technical adviser, each party shall deliver the same to the technical adviser, also
`10 days before the hearing.
`
`SIGNED this _____ day of __________________________, 20___
`30th
`
`June
`
`
`
` 21
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`6 The parties should contact the law clerk to request a Box link so that the party can directly upload the files to the
`Court’s Box account.
`7 But if the Court appoints a technical adviser for claim construction, the parties do not need to provide a copy of the
`Markman briefs to the Court.
`8 The parties should contact the law clerk to request a Box link so that the party can directly upload the files to the
`Court’s Box account. The filenames for any exhibits should be a description of the exhibit, e.g., “U.S. Patent No.
`10,000,000” or “Prosecution history for 10,000,000 (January 20, 2020, Office Action).”
`10
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