`
`IN THE UNITED STATES DISTRICT COURT
`
`DISTRICT OF DELAWARE
`
`POLARIS INNOVATIONS LIMITED, an
`Ireland limited company,
`
`No. 1:22-cv-00174-RGA
`
`Plaintiff,
`
`v.
`
`XILINX, INC., a Delaware corporation,
`
`Defendant.
`
`SCHEDULING ORDER
`
`This 31st day of May 2022, the Court having waived an initial Rule 16(b) scheduling
`
`conference pursuant to Local Rule 16.1(b), and the parties having determined after discussion
`
`that the matter cannot be resolved at this juncture by settlement, voluntary mediation, or binding
`
`arbitration;
`
`IT IS ORDERED that:
`
`1.
`
`Rule 26(a)(l ) Initial Disclosures. The parties shall make their initial disclosures
`
`on or before July 12, 2022
`
`2.
`
`Joinder of Other Parties and Amendment of Pleadings. All motions to join other
`
`parties, and to amend or supplement the pleadings, shall be filed on or before October 17,
`
`2023.
`
`3.
`
`Discovery.
`
`a.
`
`Discovery Cut Off. All discovery in this case shall be initiated so that it
`
`will be completed on or before December 18, 2023.
`
`XILINX EXHIBIT 1014
`Page 1
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 2 of 12 PageID #: 304
`
`b.
`
`Document Production. Document production shall be substantially
`
`complete by November 17, 2023.
`
`c.
`
`Requests for Admission. A maximum of 35 requests for admission are
`
`permitted for each side. Notwithstanding the foregoing, there shall be no limit to requests for
`
`admissions related to the authenticity of documents and “things.”
`
`d.
`
`Interrogatories. A maximum of 25 interrogatories, including contention
`
`interrogatories, are permitted for each side.
`
`e.
`
`Depositions.
`
`i.
`
`Limitation on Hours for Deposition Discovery. Each side is
`
`limited to a total of 70 hours of taking testimony by deposition upon oral examination.
`
`ii.
`
`Location of Depositions. Any party or representative (officer,
`
`director, or managing agent) of a party filing a civil action in this district court must ordinarily
`
`be required, upon request, to submit to a deposition at a place designated within this district.
`
`Exceptions to this general rule may be made by order of the Court or by agreement of the
`
`parties. A defendant who becomes a cross-claimant or third-party plaintiff shall be considered
`
`as having filed an action in this Court for the purpose of this provision. The parties agree to
`
`cooperate regarding the location of depositions, such that any party or representative, and
`
`any third party, shall be deposed at a location where the witness resides or at another
`
`mutually agreeable location, including by potential video conference.
`
`f.
`
`Discovery Matters and Disputes Relating to Protective Orders. Should
`
`counsel find they are unable to resolve a discovery matter or a dispute relating to a protective
`
`order, the parties involved in the discovery matter or protective order dispute shall contact the
`
`Court’s Case Manager to schedule an in-person conference/argument. Unless otherwise ordered,
`
`-2-
`
`XILINX EXHIBIT 1014
`Page 2
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 3 of 12 PageID #: 305
`
`by no later than seven business days prior to the conference/argument, any party seeking relief
`
`shall file with the Court a letter, not to exceed three pages, outlining the issues in dispute and its
`
`position on those issues. By no later than five business days prior to the conference/argument,
`
`any party opposing the application for relief may file a letter, not to exceed three pages, outlining
`
`that party's opposition. A party should include with its letter a proposed order with a detailed
`
`issue-by-issue ruling such that, should the Court agree with the party on a particular issue, the
`
`Court could sign the proposed order as to that issue, and the opposing party would be able to
`
`understand what it needs to do, and by when, to comply with the Court’s order. Any proposed
`
`order shall be e-mailed, in Word format, simultaneously with filing to
`
`rga_civil@ded.uscourts.gov.
`
`If a discovery-related motion is filed without leave of the Court, it will be denied without
`
`prejudice to the moving party's right to bring the dispute to the Court through the discovery
`
`matters procedures set forth in this Order.
`
`g.
`
`Miscellaneous Discovery Matters.
`
`i.
`
`The parties may, if they choose, agree to a timetable for initial patent
`
`disclosures either as set forth in the Delaware Default Standard for Discovery or as agreed to by
`
`the parties, and the parties should set forth any such agreement in the scheduling order.
`
`a. By July 12, 2022, Plaintiff shall specifically identify the accused
`
`products and the asserted patents and the claims the accused products allegedly
`
`infringe, and produce the file history for each asserted patent.
`
`b. By August 11,2022, Defendant shall produce to Plaintiff the
`
`core technical documents related to the accused products, including but not
`
`limited to operation manuals, product literature, schematics, and specifications.
`
`-3-
`
`XILINX EXHIBIT 1014
`Page 3
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 4 of 12 PageID #: 306
`
`c. By October 10, 2022, Plaintiff shall produce to Defendant an
`
`initial claim chart relating each accused product to the asserted claims each
`
`product allegedly infringes.
`
`d. By December 9, 2022, Defendant shall produce to Plaintiff its
`
`initial invalidity contentions for each asserted claim, as well as the related
`
`asserted invalidating references (e.g., publications, manuals, and patents).
`
`e. Final Contentions. Parties shall produce final infringement or
`
`invalidity contentions after the issuance of the Court’s Claim Construction Order.
`
`1. No later than 60 days after the issuance of the Court’s
`
`Claim Construction Order, Plaintiff shall produce to Defendant its final
`
`claim charts relating each accused product to the asserted claims each
`
`product allegedly infringe.
`
`2. No later than 60 days after Plaintiff produces its Final
`
`Infringement Contentions, Defendant shall produce to the Plaintiff its final
`
`invalidity contentions for each asserted claims, as well as the related
`
`invalidating references (e.g., publications, manuals and patents).
`
`ii.
`
`Related and Further Proceedings
`
`Polaris’s Statement
`
`Polaris previously asserted U.S. Patent 7,532,523 in the following cases:
`
`a. Polaris Innovations Limited v. Etron Technology Inc., No. 3:17-cv-
`
`06547, filed on November 10, 2017 in the Northern District of
`
`California. This case was subsequently settled.
`
`b. Polaris Innovations Limited v. Elite Semiconductor Memory
`
`
`
`-4-
`
`XILINX EXHIBIT 1014
`Page 4
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 5 of 12 PageID #: 307
`
`Technology Inc., No. 3:17-07157, filed on December 15, 2017 in the
`
`Northern District of California. This case was subsequently settled.
`
`Polaris also previously asserted U.S. Patent 6,157,589 in Polaris
`
`Innovations Limited v. Kingston Technology Co. Inc., No. 8:16-cv-00300,
`
`filed on February 19, 2016 in the Central District of California. Kingston
`
`filed a petition for inter partes review against the ’589 patent on
`
`November 10, 2016, Kingston Technology Co. Inc. v. Polaris Innovations
`
`Limited, IPR2017-00238, for which the PTAB denied institution. The case
`
`was subsequently settled.
`
`Xilinx’s Statement
`
`Xilinx presently states it may file one or more inter partes reviews related to the
`
`patents-in-suit by September 2022 and may move for a stay of this action.
`
`iii.
`
`The parties, if they think it necessary, should set
`
`times in the schedule for reducing the number of asserted claims and
`
`asserted prior art used for anticipation and obviousness combinations. The
`
`usual points where the Court will consider such limits are before claim
`
`construction and after a ruling on claim construction.
`
`iv.
`
`If one or more of the patents-in-suit have already been licensed or the
`
`subject of a settlement agreement, either (1) Plaintiff shall provide the licenses and/or settlement
`
`agreements to Defendant no later than the time of the initial Rule 16(b) scheduling conference, or
`
`(2) if Plaintiff requires a Court Order to make such disclosures, Plaintiff shall file any necessary
`
`proposed orders no later than twenty-four hours before the initial Rule 16(b) scheduling
`
`conference. Plaintiff shall represent in the scheduling order that it is complying or has complied
`
`-5-
`
`XILINX EXHIBIT 1014
`Page 5
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 6 of 12 PageID #: 308
`
`with this requirement. All parties shall be prepared to discuss at the conference what their
`
`preliminary views of damages are.
`
`Polaris states that it is complying with this requirement. The licenses require
`
`Polaris to give notice to the licensees prior to disclosure under an appropriate protective order.
`
`Polaris has begun the process of sending notice letters to the various licensees and will produce
`
`the licenses as set forth in section 4 below.
`
`4.
`
`Application to Court for Protective Order. Should counsel find it will be
`
`necessary to apply to the Court for a protective order specifying terms and conditions for the
`
`disclosure of confidential information, counsel should confer and attempt to reach an agreement
`
`on a proposed form of order and submit it to the Court. On or before June 14, 2022, Plaintiff
`
`shall provide a proposed draft protective order to Defendant. The parties shall file a proposed
`
`protective order by July 11, 2022. To the extent not previously produced, Polaris shall produce
`
`any licenses or settlement agreements within 14 days after the Court’s entry of a protective order.
`
`Should counsel be unable to reach an agreement on a proposed form of order, counsel must
`
`follow the provisions of Paragraph 3(f) above.
`
`Any proposed protective order must include the following paragraph:
`
`Other Proceedings. By entering this order and limiting the
`disclosure of information in this case, the Court does not intend to
`preclude another court from finding that information may be
`relevant and subject to disclosure in another case. Any person or
`party subject to this order who becomes subject to a motion to
`disclose another party's information designated as confidential
`pursuant to this order shall promptly notify that party of the motion
`so that the party may have an opportunity to appear and be heard
`on whether that information should be disclosed .
`
`5.
`
`Papers Filed Under Seal. When filing papers under seal, counsel shall deliver to
`
`the Clerk the required number of copies as directed in paragraph 6. A redacted version of any
`
`sealed document shall be filed electronically within seven days of the filing of the sealed
`
`-6-
`
`XILINX EXHIBIT 1014
`Page 6
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 7 of 12 PageID #: 309
`
`document.
`
`6.
`
`Courtesy Copies. The parties shall provide to the Court two courtesy copies of all
`
`briefs and one courtesy copy of any other document filed in support of any briefs (i.e.,
`
`appendices, exhibits, declarations, affidavits etc.). This provision also applies to papers filed
`
`under seal.
`
`7.
`
`Claim Construction Issue Identification. On or before December 16, 2022, the
`
`parties shall exchange a list of those claim term(s)/phrase(s) that they believe need construction.
`
`On or before January 13, 2023, the parties shall supplement the list with their proposed claim
`
`construction of those term(s)/phrase(s). This document will not be filed with the Court.
`
`Subsequent to exchanging that list, the parties will meet and confer to prepare a Joint Claim
`
`Construction Chart to be filed no later than January 27, 2023. The Joint Claim Construction
`
`Chart, in Word format shall be e-mailed simultaneously with filing to
`
`rga_civil@ded.uscourts.gov. The parties’ Joint Claim Construction Chart should identify for the
`
`Court the term(s)/phrase(s) of the claim(s) in issue, and should include each party’s proposed
`
`construction of the disputed claim language with citation(s) only to the intrinsic evidence in
`
`support of their respective proposed constructions. A copy of the patent(s) in issue as well as
`
`those portions of the intrinsic record relied upon shall be submitted with this Joint Claim
`
`Construction Chart. In this joint submission, the parties shall not provide argument.
`
`8.
`
`Claim Construction Briefing1 Plaintiff shall serve, but not file, its opening brief,
`
`1 As each brief is written and provided to the opposing party, the individual responsible for verifying the word count
`will represent to the other party that it has so verified and by what means. These verifications should not be
`provided to the Court unless a dispute arises about them. Pictures, Figures copied from the patent, and other
`illustrations do not count against the word limit. Plaintiff should include with its opening brief one or more
`representative claims with the disputed terms italicized. Should Defendant want to add additional representative
`claims, Defendant may do so. The representative claims and the agreed-upon claim constructions do not count
`against the word limits.
`
`-7-
`
`XILINX EXHIBIT 1014
`Page 7
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 8 of 12 PageID #: 310
`
`not to exceed 5,000 words, on February 24, 2023. Defendant shall serve, but not file, its
`
`answering brief, not to exceed 7,500 words, on March 24, 2023. Plaintiff shall serve, but not file,
`
`its reply brief, not to exceed 5,000 words, on April 7, 2023. Defendant shall serve, but not file its
`
`sur-reply brief, not to exceed 2,500 words, on April 21, 2023. No later than May 5, 2023, the
`
`parties shall file a Joint Claim Construction Brief. The parties shall copy and past their unfiled
`
`briefs into one brief, with their positions on each claim term in sequential order, in substantially
`
`the form below.
`
`JOINT CLAIM CONSTRUCTION BRIEF
`
`I.
`
`Representative Claims
`
`II.
`
`Agreed-upon Constructions
`
`III.
`
`Disputed Constructions
`
`A.
`
`[TERM 1]2
`
`1.
`2.
`3.
`4.
`
`B.
`1.
`2.
`3.
`4.
`
`Plaintiff’s Opening Position
`Defendant’s Answering Position
`Plaintiff’s Reply Position
`Defendants Sur-Reply Position
`
`[TERM 2]
`Plaintiff’s Opening Position
`Defendant’s Answering Position
`Plaintiff’s Reply Position
`Defendant’s Sur-Reply Position
`
`2 For each term in dispute, there should be a table or the like setting forth the term in dispute and the parties’
`competing constructions. The table does not count against the word limits.
`
`-8-
`
`XILINX EXHIBIT 1014
`Page 8
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 9 of 12 PageID #: 311
`
`Etc. The parties need not include any general summaries of the law relating to claim
`
`construction. If there are any materials that would be submitted in an appendix, the parties shall
`
`submit them in a Joint Appendix.
`
`9.
`
`Hearing on Claim Construction. Beginning at 9:00 a.m. on June 8, 2023, the
`
`Court will hear argument on claim construction. Absent prior approval of the Court (which, if it
`
`is sought, must be done so by joint letter submission no later than the date on which answering
`
`claim construction briefs are due), the parties shall not present testimony at the argument, and the
`
`argument shall not exceed a total of three hours. When the Joint Claim Construction Brief is
`
`filed, the parties shall simultaneously file a motion requesting the above(cid:173) scheduled claim
`
`construction hearing, state that the briefing is complete, and state how much total time the parties
`
`are requesting that the Court should allow for the argument.
`
`10.
`
`Disclosure of Expert Testimony.
`
`a.
`
`Expert Reports. For the party who has the initial burden of proof on the
`
`subject matter, the initial Federal Rule 26(a)(2) disclosure of expert testimony is due on or before
`
`February 16, 2024. The supplemental disclosure to contradict or rebut evidence on the same
`
`matter identified by another party is due on or before March 17, 2024. Reply expert reports from
`
`the party with the initial burden of proof are due on or before April 16, 2024. No other expert
`
`reports will be permitted without either the consent of all parties or leave of the Court.
`
`If any party believes that an expert report does not comply with the rules relating to
`
`timely disclosure or exceeds the scope of what is permitted in that expert report, the complaining
`
`party must notify the offending party within one week of the submission of the expert report.
`
`The parties are expected to promptly try to resolve any such disputes, and, when they cannot
`
`reasonably be resolved, use the Court’s Discovery Dispute Procedure or the complaint will be
`
`-9-
`
`XILINX EXHIBIT 1014
`Page 9
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 10 of 12 PageID #: 312
`
`waived.
`
`Along with the submissions of the expert reports, the parties shall advise of the dates and
`
`times of their experts’ availability for deposition. Depositions of experts shall be completed on
`
`or before May 7, 2024.
`
`b.
`
`Objections to Expert Testimony. To the extent any objection to expert
`
`testimony is made pursuant to the principles announced in Daubert v. Merrell Dow Pharm., Inc.,
`
`509 U.S. 579 (1993), as incorporated in Federal Rule of Evidence 702, it shall be made by
`
`motion no later than the deadline for dispositive motions set forth herein, unless otherwise
`
`ordered by the Court.
`
`11.
`
`Case Dispositive Motions. All case dispositive motions shall be served and filed
`
`on or before June 18, 2024. Opposition briefs will be due on July 16, 2024, and reply briefs will
`
`be due on July 30, 2024. No case dispositive motion under Rule 56 may be filed more than ten
`
`days before the above date without leave of the Court. Absent an order of the Court upon a
`
`showing of good cause, each side is limited to one forty-page opening brief, one forty(cid:173) page
`
`answering brief, and one twenty-page reply brief for all of its Daubert and case dispositive
`
`motions.
`
`12.
`
`Applications by Motion. Except as otherwise specified herein, any application to
`
`the Court shall be by written motion. Any non-dispositive motion should contain the statement
`
`required by Local Rule 7.1.1.
`
`13.
`
`Pretrial Conference. On November 8, 2024, the Court will hold a Rule 16(e) final
`
`pretrial conference in Court with counsel beginning at 9:00 a.m. The parties shall file a joint
`
`proposed final pretrial order in compliance with Local Rule 16.3(c) no later than 5 p.m. on the
`
`fourth business day before the date of the final pretrial conference. Unless otherwise ordered by
`
`-10-
`
`XILINX EXHIBIT 1014
`Page 10
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 11 of 12 PageID #: 313
`
`the Court, the parties shall comply with the timeframes set forth in Local Rule 16.3(d) for the
`
`preparation of the proposed joint final pretrial order.
`
`14.
`
`Motions in Limine. Motions in limine shall be separately filed, with each motion
`
`containing all the argument described below in one filing for each motion. Any supporting
`
`documents in connection with a motion in limine shall be filed in one filing separate from the
`
`motion in limine. Each party shall be limited to three in limine requests, unless otherwise
`
`permitted by the Court. The in limine request and any response shall contain the authorities
`
`relied upon; each in Limine request may be supported by a maximum of three pages of argument
`
`and may be opposed by a maximum of three pages of argument, and the party making the in
`
`limine request may add a maximum of one additional page in reply in support of its request. If
`
`more than one party is supporting or opposing an in limine request, such support or opposition
`
`shall be combined in a single three page submission (and, if the moving party, a single one page
`
`reply). No separate briefing shall be submitted on in limine requests, unless otherwise permitted
`
`by the Court.
`
`15.
`
`Jury Instructions. Voir Dire, and Special Verdict Forms. Where a case is to be
`
`tried to a jury, pursuant to Local Rules 47.1(a)(2) and 51.1, the parties should file (i) proposed
`
`voir dire, (ii) preliminary jury instructions, (iii) final jury instructions, and (iv) special verdict
`
`forms no later than 6 p.m. on the fourth business day before the date of the final pretrial
`
`conference. Areas of dispute shall be identified as narrowly as possible and in a manner that
`
`makes it readily apparent what the dispute is. The parties shall submit simultaneously with filing
`
`each of the foregoing four documents in Word format to rga_civil@ded.uscourts.gov.
`
`-11-
`
`XILINX EXHIBIT 1014
`Page 11
`
`
`
`Case 1:22-cv-00174-RGA Document 20 Filed 05/31/22 Page 12 of 12 PageID #: 314
`
`16.
`
`Trial. This matter is scheduled for a five (5) day3 jury trial beginning at 9:30 a.m.
`
`on November 18, 2024, with the subsequent trial days beginning at 9:30 a.m. Until the case is
`
`submitted to the jury for deliberations, the jury will be excused each day at 5:00 p.m. The trial
`
`will be timed, as counsel will be allocated a total number of hours in which to present their
`
`respective cases.
`
`/s/ Richard G. Andrews
`UNITED STATES DISTRICT JUDGE
`
`3 Five days (i.e., about ten to thirteen hours per side) is the presumptive length of a patent jury trial. If the parties
`think it is obvious that this will not be enough, they may put in a different length and should be prepared to explain
`why at the Rule 16 conference. A final decision on the precise length of trial will not be made before the final
`pretrial conference.
`
`-12-
`
`XILINX EXHIBIT 1014
`Page 12
`
`