Case 4:20-cv-00991-ALM Document 22 Filed 08/03/21 Page 1 of 7 PageID #: 478
`
`United States District Court
`EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`HUAWEI DEVICE USA, INC. et al.
`
`
`Civil Action No. 4:20-cv-991
`Judge Mazzant
`
`OCEAN SEMICONDUCTOR LLC
`
`v.
`
`§
`§
`§
`§
`§
`§
`§
`
`SCHEDULING ORDER
`
`The Court, after reviewing the case management report required by Federal Rule of Civil
`Procedure 26(f), and conferring with the parties either by e-mail or scheduling conference, enters
`this case-specific order which controls disposition of this action pending further order of the Court.
`The following actions shall be completed by the date indicated.1
`
`August 4, 2021
`
`Parties to Exchange Rule 26(a)(1) Initial Disclosures
`
`August 16, 2021
`
`P.R. 3-1 Disclosure of Asserted Claims and Infringement
`Contentions (and P.R. 3-2 document production) to be
`served.
`
`September 8, 2021
`
`Deadline to add parties.
`
`September 8, 2021
`
`September 20, 2021
`
`September 22, 2021
`
`October 6, 2021
`
`P.R. 3-3 Invalidity Contentions (and P.R. 3-4 document
`production) to be served. To extent not already required to
`be disclosed, exchange Mandatory Disclosures on all issues,
`including damages.
`Parties to exchange proposed terms for construction and
`identify any claim element governed by 35 U.S.C. § 112,
`¶ 6 (P.R. 4-1).
`
`Privilege Logs to be exchanged by parties (or a letter to the
`Court stating that there are no disputes as to claims of
`privileged documents).
`
`claim
`exchange preliminary proposed
`to
`Parties
`construction and extrinsic evidence supporting same (P.R.
`4-2).
`
`1 If a deadline falls on a Saturday, Sunday, or a legal holiday as defined in Fed. R. Civ. P. 6, the effective date is the
`first federal court business day following the deadline imposed.
`
`IPR2021-01342
`Ocean Semiconductor Exhibit 2008
`
`

`

`Case 4:20-cv-00991-ALM Document 22 Filed 08/03/21 Page 2 of 7 PageID #: 479
`
`November 3, 2021
`
`October 15, 2021
`
`Parties’ final amended pleadings.
`(A motion for leave to amend is required.)
`
`Joint Claim Construction and Prehearing Statement to be
`filed (P.R. 4-3). Provide an estimate of how many pages are
`needed to brief the disputed claims.
`
`November 24, 2021
`
`Response to amended pleadings.
`
`October 29, 2021
`
`Completion date for discovery on claim construction (P.R.
`4-4).
`
`November 8, 2021
`
`Opening claim construction brief (P.R.4-5(a)).
`
`December 8, 2021
`
`Submit technology synopsis (both hard copy and disk).
`
`November 22, 2021
`
`Responsive claim construction brief (P.R. 4-5(b)).
`
`December 1, 2021
`
`Reply claim construction brief (P.R. 4-5(c)).
`
`December 23, 2021
`
`January 5, 2022
`
`February 9, 2022
`
`March 9, 2022
`
`Parties to file joint claim construction and chart (P.R. 4-
`5(d)). Parties shall work together to agree on as many claim
`terms as possible.
`
`Claim construction hearing at 9:00 am at the Paul Brown
`United States Courthouse, 101 E. Pecan Street, Sherman,
`Texas.
`
`Deadline for Initial Mandatory Disclosure of all persons,
`documents, data compilations, and tangible things, which
`are relevant to a claim or defense of any party and which has
`not previously been disclosed. This deadline is not an
`extension of earlier deadlines set out in this court’s order or
`that Patent Rules, nor an excuse to delay disclosure of
`information. It is a catchall deadline for provision of all
`remaining information that may be relevant to a claim or
`defense of any party at trial.
`
`Parties with burden of proof to designate Expert Witnesses
`other than claims construction experts and provide their
`expert witness reports, to include for ALL experts all
`information set out in Rule 26(2)(B).
`
`March 9, 2022
`
`Comply with P.R. 3-7 on designation of willfulness
`opinions.
`
`IPR2021-01342
`Ocean Semiconductor Exhibit 2008
`
`

`

`Case 4:20-cv-00991-ALM Document 22 Filed 08/03/21 Page 3 of 7 PageID #: 480
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`March 23, 2022
`
`April 6, 2022
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`April 6, 2022
`
`30 days after entry of the claim
`construction order
`July 11, 2022
`
`July 11, 2022
`
`July 18, 2022
`
`Parties designate expert witnesses on issues for which the
`parties do not bear the burden of proof, and provide their
`expert witness report, to include for ALL experts all
`information set out in Rule 26(2)(B).
`
`Objections to any expert, including Daubert motions, shall
`be filed within 3 weeks of the Expert Report disclosure.
`Such objections and motions are limited to ten pages.
`
`Discovery deadline. All discovery must be served in time
`to be completed by this date.
`
`Deadline to file dispositive motions and any other motions
`that may require a hearing. Regardless of how many
`dispositive motions a party files, each party is limited to a
`total of sixty pages for such motions. Each individual
`motion shall comply with Local Rules CV-7.
`
`Responses to motions shall be due in accordance with Local
`Rule CV-7(e).
`
`Mediation deadline.
`
`Notice of intent to offer certified records.
`
`Counsel and unrepresented parties are each responsible for
`contacting opposing counsel and unrepresented parties to
`determine how they will prepare the Joint Final Pretrial
`Order (See www.txed.uscourts.gov) and Proposed Jury
`Instructions and Verdict Form (or Proposed Findings of
`Fact and Conclusions of Law in nonjury cases)).
`
`Video Deposition Designations due. Each party who
`proposes to offer a deposition by video shall serve on all
`other parties a disclosure identifying the line and page
`numbers to be offered. All other parties will have seven
`calendar days to serve a response with any objections and
`requesting cross examination line and page numbers to be
`included. Counsel must consult on any objections and only
`those that cannot be resolved shall be presented to the court.
`The party who filed
`the
`initial Video Deposition
`Designation is responsible for preparation of the final edited
`video in accordance with all parties’ designations and the
`court’s rulings on objections.
`
`IPR2021-01342
`Ocean Semiconductor Exhibit 2008
`
`

`

`Case 4:20-cv-00991-ALM Document 22 Filed 08/03/21 Page 4 of 7 PageID #: 481
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`July 15, 2022
`
`Motions in limine due.
`
`File Joint Final Pretrial Order (See www.txed.uscourts.gov).
`Exchange Exhibits and deliver copies to the court. At this
`date, all that is required to be submitted to the court is a
`hyperlinked exhibit list on disk (2 copies) and no hard
`copies.
`
`If Parties will be requesting daily copy of the transcript
`during trial, they must notify the Court’s court reporter,
`Chris Bickham, at Chris_Bickham@txed.uscourts.gov, by
`this date.
`
`August 1, 2022
`
`Responses to motions in limine due.
`
`File objections to witnesses, depositions extracts, and
`exhibits, listed in pre-trial order. This does not extend the
`deadline to object to expert witnesses. If numerous
`objections are filed, the court may set a hearing prior to
`docket call.
`
`File Proposed Jury Instructions and Form of Verdict (or
`Proposed Findings of Fact and Conclusions of Law).
`
`Final Pretrial Conference at 9:00 a.m. at the Paul Brown
`United States Courthouse located at 101 East Pecan Street
`in Sherman, Texas.
`
`August 15, 2022
`
`TBD
`
`Jury selection and trial at 10:00 a.m. at the Paul Brown
`United States Courthouse located at 101 East Pecan Street
`in Sherman, Texas.
`
`The Court’s modifications to P.R. 3-1 and P.R. 3-3 are set out below:
`
`P.R. 3-1(g):
`
`If a party claiming patent infringement asserts that a claim element is a
`
`software limitation, the party needs only to identify the elements as a software limitation
`in its initial compliance with P.R. 3-1, but does not need to identify where such limitation
`is met in the Accused Instrumentality. At the latest, the party opposing a claim of patent
`infringement shall produce source code within 30 days of the initial P.R. 3-1 disclosures.
`After receipt of the source code for the Accused Instrumentality, the party is permitted 60
`days to supplement P.R. 3-1 disclosure to identify, with specificity, the source code of the
`Accused Instrumentality that allegedly satisfies the software claim elements. The party
`
`IPR2021-01342
`Ocean Semiconductor Exhibit 2008
`
`

`

`Case 4:20-cv-00991-ALM Document 22 Filed 08/03/21 Page 5 of 7 PageID #: 482
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`claiming patent infringement shall identify, on an element-by-element basis for each
`asserted claim, what source code of each Accused Instrumentality allegedly satisfies the
`software limitations of the asserted claim elements. Any such agreements shall be
`submitted to the court in camera. This is not an invitation for the party opposing a claim of
`patent infringement to delay in producing source code. P.R. 3-1(g) does not allow Plaintiff
`the opportunity to modify or amend any non-software claim contentions.
`
`Defendants are reminded that they have the obligation to produce source code possessed
`by third parties, if they have the right of control over this code. See Sensormatic Elecs.
`Corp. v. WG Sec. Prods., Inc., 2006 WL 5111116, at *1 (E.D. Tex. Feb. 9, 2006). Within
`seven days after Plaintiff identifies any elements as software limitations in initial
`compliance with P.R. 3-1, Defendants shall produce the source code is within their
`possession, custody, and control. To the extent that source code is not within a particular
`Defendant’s possession, custody, and control, that Defendant shall notify Plaintiff and file
`with the court declarations and/or affidavits from its representative(s) and counsel attesting
`to the scope of the search and documents and source code produced in compliance with
`this Order. These declarations and/or affidavits shall also state with particularity all efforts
`made to acquire documents and source code from any company affiliated with or having a
`relationship with that Defendant to manufacture or distribute any accused product. That
`Defendant also must turn overall documents relevant to its corporate relationship with these
`companies. Upon receipt of such notification, Plaintiff shall immediately begin the
`subpoena process to obtain the source code at issue. If, upon a showing that the above
`requirements have been fulfilled and source code still cannot be obtained from a third party
`before a deadline, the court may entertain a request for extension of that deadline.
`
`P.R. 3-3(e):
`If a party claiming patent infringement exercises the provisions of P.R. 3-
`1(g), the party opposing a claim of patent infringement may serve, not later than 30 days
`after receipt of a P.R. 3-1(g) disclosure, supplemental “Invalidity Contentions” that amend
`only those claim elements identified as software limitations by the party claiming patent
`infringement.
`
`SCOPE OF DISCOVERY
`
`Modification. Taking into account the needs of the case, the amount in controversy, the
`parties’ resources, the importance of the issues at stake in the litigation, and the importance of the
`proposed discovery in resolving the issues, the Court modifies the parameters of discovery in the
`following respects. See Fed. R. Civ. P. 26(b)(2).
`
`Disclosure. The parties are reminded of the requirement, set out in this court’s Initial Order
`Governing Proceedings, to have already disclosed, without awaiting a discovery request,
`information in addition to that required by Fed. R. Civ. P. 26, including names of persons likely to
`have, and documents containing, information “relevant to the claim or defense of any party.”
`
`IPR2021-01342
`Ocean Semiconductor Exhibit 2008
`
`

`

`Case 4:20-cv-00991-ALM Document 22 Filed 08/03/21 Page 6 of 7 PageID #: 483
`
`If there are any questions about whether information is “relevant to the claim or defense of
`any party” review Local Rule CV-26(d). A party that fails to timely disclose any of the information
`required to be disclosed by order of this court or by the Federal Rules of Procedure, will not, unless
`such failure is harmless, be permitted to use such evidence at trial, hearing or in support of a
`motion.
`
`Electronic Discovery. The parties shall produce information in searchable TIFF format,
`unless the parties agree otherwise.
`
`Source Code Preservation. Defendants shall maintain full and complete copies of all
`previous iterations of source code.
`
`The parties are excused from the pretrial disclosure requirements set forth in Federal Rule
`of Civil Procedure 26(a)(3) as such disclosure is cumulative of this Court’s pre-trial order
`procedures.
`
`DISCOVERY DISPUTES
`
`In the event the parties encounter a discovery dispute, no motions to compel may be filed
`until after the parties fulfill the “meet and confer” requirement imposed by this Court’s Local Rule
`CV-7(h). If the parties are unable to resolve the dispute without court intervention, the parties
`must then call the Court’s chambers to schedule a telephone conference regarding the subject
`matter of the dispute prior to filing any motion to compel. After reviewing the dispute, the Court
`will resolve the dispute, order the parties to file an appropriate motion, or direct the parties to call
`the discovery hotline.
`
`A magistrate judge is available during business hours to immediately hear discovery
`disputes and to enforce provisions of the rules. The hotline number is (903) 590-1198. See Local
`Rule CV-26(e).
`
`COMPLIANCE
`
`A party is not excused from the requirements of this scheduling order by virtue of the fact
`that dispositive motions are pending, the party has not completed its investigation, the party
`challenges the sufficiency of the opposing party’s disclosure or because another party has failed
`to comply with this order or the rules.
`
`Failure to comply with relevant provisions of the Local Rules, the Federal Rules of Civil
`Procedure or this order may result in the exclusion of evidence at trial, the imposition of sanctions
`by the Court, or both. If a fellow member of the Bar makes a just request for cooperation or seeks
`scheduling accommodation, a lawyer will not arbitrarily or unreasonably withhold consent.
`However, the Court is not bound to accept agreements of counsel to extend deadlines imposed by
`rule or court order. See Local Rule AT-3(j).
`
`IPR2021-01342
`Ocean Semiconductor Exhibit 2008
`
`

`

`Case 4:20-cv-00991-ALM Document 22 Filed 08/03/21 Page 7 of 7 PageID #: 484
`
`TRIAL
`
`The deadlines for pre-trial matters, such as exchanging exhibits, and objections, are
`intended to reduce the need for trial objections, side-bar conferences, and repetitive presentation
`of evidentiary predicates for clearly admissible evidence. Counsel should be familiar with the
`evidence display system available in the courtroom. Copies of exhibits which will be handed to
`witnesses should be placed in a three ring binder, with an additional copy for the court. (To make
`it easy to direct the witness to the correct exhibit while on the stand, Plaintiff should use a dark
`colored binder such as black or dark blue. Defendant should use a light colored binder such as
`white, red, or light blue.) Alternatively, if exhibits have been scanned and will be presented via a
`computer projection system, be sure there is a way for the court to view or read them separately
`so as to be able to understand motions and objections.
`
`Counsel are responsible for informing their clients and witnesses about courtroom dress
`requirements and protocol, such as silencing pagers and phones, and not chewing gum, reading
`newspapers, or eating.
`
`OTHER MATTERS
`
`1.
`
`2.
`
`Please note the amendments to the Local Rules regarding motion practice. If a document
`filed electronically exceeds ten pages in length, including attachments, a paper copy of the
`filed document must be sent contemporaneously to the undersigned’s chambers in
`Sherman. See Local Rule CV-5(a)(9). Courtesy copies over twenty pages long should be
`bound to the left.
`
`Any reply or sur-reply must be filed in accordance with Local Rule CV-6 and Local Rule
`CV-7(f). The parties are reminded that “[t]he court need not wait for the reply or sur-reply
`before ruling on the motion.” Local Rule CV-7(f) (emphasis added).
`
`IT IS SO ORDERED.
`
`IPR2021-01342
`Ocean Semiconductor Exhibit 2008
`
`