Case 2:22-cv-00381-JRG-RSP Document 196 Filed 12/01/23 Page 1 of 6 PageID #: 8229
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`STA GROUP LLC,
`
`Plaintiff,
`
`v.
`
`MOTOROLA SOLUTIONS, INC.,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`CIVIL ACTION NO. 2:22-CV-381-JRG-RSP
`
`AMENDED DOCKET CONTROL ORDER
`
`In accordance with the hearing held on November 21, 2023 held in this case, it is hereby
`
`ORDERED that the following schedule of deadlines is in effect until further order of this Court:
`
`Current Date
`September 23,
`2024
`7 days before
`Jury Selection
`
`10 days before
`Jury Selection
`August 26, 2024
`
`August 19, 2024
`
`Amended Date
`
`Description
`
`*Jury Selection – 9:00 a.m. in Marshall, Texas
`
`*Defendant to disclose final invalidity theories, final
`prior art references/combinations, and final equitable
`defenses.1
`*Plaintiff to disclose final election of Asserted
`Claims.2
`* If a juror questionnaire is to be used, an editable (in
`Microsoft Word format) questionnaire shall be jointly
`submitted to the Deputy Clerk in Charge by this
`date.3
`*Pretrial Conference – 9:00 a.m. in Marshall, Texas
`before Judge Roy Payne
`
`1 The proposed DCO shall include this specific deadline. The deadline shall read, “7 days before Jury Selection,” and
`shall not include a specific date.
`2 Given the Court’s past experiences with litigants dropping claims and defenses during or on the eve of trial, the
`Court is of the opinion that these additional deadlines are necessary. The proposed DCO shall include this specific
`deadline. The deadline shall read, “10 days before Jury Selection,” and shall not include a specific date.
`3 The Parties are referred to the Court’s Standing Order Regarding Use of Juror Questionnaires in Advance of Voir
`Dire.
`
`- 1 -
`
`Motorola Solutions, Inc., Ex1028, p. 1
`Motorola v. STA, IPR2023-01292
`
`

`

`Case 2:22-cv-00381-JRG-RSP Document 196 Filed 12/01/23 Page 2 of 6 PageID #: 8230
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`August 12, 2024
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`August 12, 2024
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`August 5, 2024
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`July 29, 2024
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`July 29, 2024
`July 22, 2024
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`July 8, 2024
`
`*Notify Court of Agreements Reached During Meet
`and Confer
`The parties are ordered to meet and confer on any
`outstanding objections or motions in limine. The
`parties shall advise the Court of any agreements
`reached no later than 1:00 p.m. three (3) business
`days before the pretrial conference.
`*File Joint Pretrial Order, Joint Proposed Jury
`Instructions, Joint Proposed Verdict Form, Responses
`to Motions in Limine, Updated Exhibit Lists, Updated
`Witness Lists, and Updated Deposition Designations
`*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, Shawn McRoberts, at
`shawn_mcroberts@txed.uscourts.gov.
`File Motions in Limine
`The parties shall limit their motions in limine to
`issues that if improperly introduced at trial would be
`so prejudicial that the Court could not alleviate the
`prejudice by giving appropriate instructions to the
`jury.
`Serve Objections to Rebuttal Pretrial Disclosures
`Serve Objections to Pretrial Disclosures; and Serve
`Rebuttal Pretrial Disclosures
`Serve Pretrial Disclosures (Witness List, Deposition
`Designations, and Exhibit List) by the Party with the
`Burden of Proof
`
`- 2 -
`
`Motorola Solutions, Inc., Ex1028, p. 2
`Motorola v. STA, IPR2023-01292
`
`

`

`Case 2:22-cv-00381-JRG-RSP Document 196 Filed 12/01/23 Page 3 of 6 PageID #: 8231
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`July 1, 2024
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`June 17, 2024
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`June 17, 2024
`
`June 10, 2024
`May 28, 2024
`May 6, 2024
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`May 29, 2024
`May 1, 2024
`
`May 6, 2024
`
`May 8, 2024
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`April 5, 2024
`March 15,2024
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`March 1, 2024
`
`February 23,
`2024
`
`*Response to Dispositive Motions (including Daubert
`Motions). Responses to dispositive motions that were
`filed prior to the dispositive motion deadline,
`including Daubert Motions, shall be due in
`accordance with Local Rule CV-7(e), not to exceed
`the deadline as set forth in this Docket Control
`Order.4 Motions for Summary Judgment shall comply
`with Local Rule CV-56.
`*File Motions to Strike Expert Testimony (including
`Daubert Motions)
`No motion to strike expert testimony (including a
`Daubert motion) may be filed after this date without
`leave of the Court.
`*File Dispositive Motions
`No dispositive motion may be filed after this date
`without leave of the Court.
`Motions shall comply with Local Rule CV-56 and
`Local Rule CV-7. Motions to extend page limits will
`only be granted in exceptional circumstances.
`Exceptional circumstances require more than
`agreement among the parties.
`Deadline to Complete Expert Discovery
`Serve Disclosures for Rebuttal Expert Witnesses
`Deadline to Complete Fact Discovery and File
`Motions to Compel Discovery
`Serve Disclosures for Expert Witnesses by the Party
`with the Burden of Proof
`Comply with P.R. 3-7 (Opinion of Counsel Defenses)
`* Claim Construction Hearing – 9:00 a.m. in
`Marshall, Texas before Judge Roy Payne
`*Comply with P.R. 4-5(d) (Joint Claim Construction
`Chart regarding new claims)
`*Comply with P.R. 4-5(c) (Reply Claim Construction
`Brief regarding new claims)
`
`4 The parties are directed to Local Rule CV-7(d), which provides in part that “[a] party’s failure to oppose a motion in
`the manner prescribed herein creates a presumption that the party does not controvert the facts set out by movant and
`has no evidence to offer in opposition to the motion.”
`If the deadline under Local Rule CV 7(e) exceeds the deadline for Response to Dispositive Motions, the deadline for
`Response to Dispositive Motions controls.
`
`- 3 -
`
`Motorola Solutions, Inc., Ex1028, p. 3
`Motorola v. STA, IPR2023-01292
`
`

`

`Case 2:22-cv-00381-JRG-RSP Document 196 Filed 12/01/23 Page 4 of 6 PageID #: 8232
`
`February 16,
`2024
`February 2, 2024
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`January 19, 2024
`
`December 22,
`2023
`December 1,
`2023
`November 13,
`2023
`February 1, 2024
`
`February 1, 2024
`December 7,
`2023
`November 28,
`2023
`
`Comply with P.R. 4-5(b) (Responsive Claim
`Construction Brief regarding new claims)
`Comply with P.R. 4-5(a) (Opening Claim
`Construction Brief regarding new claims) and Submit
`Technical Tutorials (if any)
`Good cause must be shown to submit technical
`tutorials after the deadline to comply with P.R. 4-5(a).
`January 30, 2024 Comply with P.R. 4-4 (Deadline to Complete Claim
`Construction Discovery regarding new claims)
`January 19, 2024 Comply with P.R. 4-3 (Joint Claim Construction
`Statement regarding new claims)
`January 12, 2024 Comply with P.R. 4-2 (Exchange Preliminary Claim
`Constructions regarding new claims)
`Comply with P.R. 4-1 (Exchange Proposal Claim
`Terms regarding new claims)
`Comply with Standing Order Regarding Subject-
`Matter Eligibility Contentions5
`Comply with P.R. 3-3 & 3-4 (Invalidity Contentions)
`Comply with P.R. 3-1 & 3-2 (Infringement
`Contentions)
`Deadline to Exchange Privilege Logs
`
`December 21,
`2024
`
`December 1,
`2023
`
`(*) indicates a deadline that cannot be changed without an acceptable showing of good cause.
`Good cause is not shown merely by indicating that the parties agree that the deadline should
`be changed.
`
`5 http://wwvv.txed.uscourts.
`govisites/default/files/judgeFiles/EDTX%20Standing%20Order%20Re%20Subject%20Matter%20Eligibility%20Co
`ntentions%20.pdf[https://perma.cc/RQN2- YU515]
`
`- 4 -
`
`Motorola Solutions, Inc., Ex1028, p. 4
`Motorola v. STA, IPR2023-01292
`
`

`

`Case 2:22-cv-00381-JRG-RSP Document 196 Filed 12/01/23 Page 5 of 6 PageID #: 8233
`
`ADDITIONAL REQUIREMENTS
`
`Mediation: While certain cases may benefit from mediation, such may not be appropriate
`for every case. The Court finds that the Parties are best suited to evaluate whether mediation will
`benefit the case after the issuance of the Court’s claim construction order. Accordingly, the Court
`ORDERS the Parties to file a Joint Notice indicating whether the case should be referred for
`mediation within fourteen days of the issuance of the Court’s claim construction order. As a
`part of such Joint Notice, the Parties should indicate whether they have a mutually agreeable
`mediator for the Court to consider. If the Parties disagree about whether mediation is appropriate,
`the Parties should set forth a brief statement of their competing positions in the Joint Notice.
`
`Summary Judgment Motions, Motions to Strike Expert Testimony, and Daubert
`Motions: For each motion, the moving party shall provide the Court with two (2) hard copies of
`the completed briefing (opening motion, response, reply, and if applicable, sur-reply), excluding
`exhibits, in D-three-ring binders, appropriately tabbed. All documents shall be single-sided and
`must include the CM/ECF header. These copies shall be delivered to the Court within three (3)
`business days after briefing has completed. For expert-related motions, complete digital copies of
`the relevant expert report(s) and accompanying exhibits shall be submitted on a single flash drive
`to the Court. Complete digital copies of the expert report(s) shall be delivered to the Court no later
`than the dispositive motion deadline.
`
`Indefiniteness: In lieu of early motions for summary judgment, the parties are directed to
`include any arguments related to the issue of indefiniteness in their Markman briefing, subject to
`the local rules’ normal page limits.
`
`Lead Counsel: The Parties are directed to Local Rule CV-11(a)(1), which provides that
`“roll’ the first appearance through counsel, each party shall designate a lead attorney on the
`pleadings or otherwise.” Additionally, once designated, a party’s lead attorney may only be
`changed by the filing of a Motion to Change Lead Counsel and thereafter obtaining from the Court
`an Order granting leave to designate different lead counsel. The true lead counsel should be
`designated early and should not expect to parachute in as lead once the case has been largely
`developed.
`
`Motions for Continuance: The following will not warrant a continuance nor justify a
`failure to comply with the discovery deadline:
`
`(a)
`
`(b)
`
`(c)
`
`The fact that there are motions for summary judgment or motions to dismiss pending;
`
`The fact that one or more of the attorneys is set for trial in another court on the same day,
`unless the other setting was made prior to the date of this order or was made as a special
`provision for the parties in the other case;
`
`The failure to complete discovery prior to trial, unless the parties can demonstrate that it
`was impossible to complete discovery despite their good faith effort to do so.
`
`- 5 -
`
`Motorola Solutions, Inc., Ex1028, p. 5
`Motorola v. STA, IPR2023-01292
`
`

`

`Case 2:22-cv-00381-JRG-RSP Document 196 Filed 12/01/23 Page 6 of 6 PageID #: 8234
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`Amendments to the Docket Control Order (“DCO”): Any motion to alter any date on
`the DCO shall take the form of a motion to amend the DCO. The motion to amend the DCO shall
`include a proposed order that lists all of the remaining dates in one column (as above) and the
`proposed changes to each date in an additional adjacent column (if there is no change for a date
`the proposed date column should remain blank or indicate that it is unchanged). In other words,
`the DCO in the proposed order should be complete such that one can clearly see all the remaining
`deadlines and the changes, if any, to those deadlines, rather than needing to also refer to an earlier
`version of the DCO.
`
`Proposed DCO: The Parties’ Proposed DCO should also follow the format described
`above under “Amendments to the Docket Control Order (`DCO’).”
`
`Joint Pretrial Order: In the contentions of the Parties included in the Joint Pretrial Order,
`the Plaintiff shall specify all allegedly infringed claims that will be asserted at trial. The Plaintiff
`shall also specify the nature of each theory of infringement, including under which subsections of
`35 U.S.C. § 271 it alleges infringement, and whether the Plaintiff alleges divided infringement or
`infringement under the doctrine of equivalents. Each Defendant shall indicate the nature of each
`theory of invalidity, including invalidity for anticipation, obviousness, subject-matter eligibility,
`written description, enablement, or any other basis for invalidity. The Defendant shall also specify
`each prior art reference or combination of references upon which the Defendant shall rely at trial,
`with respect to each theory of invalidity. The contentions of the Parties may not be amended,
`supplemented, or dropped without leave of the Court based upon a showing of good cause. The
`Parties in a case which has been consolidated for pre-trial purposes and which is moving towards
`a separate trial on the merits (subsequent to pre-trial) shall file, as an exhibit to the parties’ Joint
`Pretrial Order, a list identifying all docket entries from the lead case that relate to the applicable
`member case.
`
`Trial: All parties must appear in person at trial. All non-individual (including but not
`limited to corporate) parties must appear at trial through the presence in person of a designated
`representative. Once they have appeared, any representative of a non-individual party shall not be
`replaced or substituted without express leave of Court.
`
`- 6 -
`
`Motorola Solutions, Inc., Ex1028, p. 6
`Motorola v. STA, IPR2023-01292
`
`