Case 2:15-cv-01274-JRG-RSP Document 80 Filed 02/17/16 Page 1 of 9 PageID #: 1129
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:15-CV-1274-JRG-RSP
`LEAD CASE
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`DISCOVERY ORDER
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` Defendants.
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`BLITZSAFE TEXAS, LLC,
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`Plaintiff,
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`v.
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`HONDA MOTOR CO., LTD.;
`AMERICAN HONDA MOTOR CO.,
`INC.; HONDA OF AMERICA
`MANUFACTURING, INC.; HONDA
`MANUFACTURING OF ALABAMA,
`LLC; and HONDA MANUFACTURING
`OF INDIANA, LLC,
`
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`After a review of the pleaded claims and defenses in this action, in furtherance of the
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`management of the Court’s docket under Federal Rule of Civil Procedure 16, and after receiving
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`the input of the parties to this action, it is ORDERED AS FOLLOWS:
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`1.
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`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil
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`Procedure 26(a)(1), each party shall disclose to every other party the following
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`information:
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`(a)
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`(b)
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`(c)
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`the correct names of the parties to the lawsuit;
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`the name, address, and telephone number of any potential parties;
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`the legal theories and, in general, the factual bases of the disclosing party’s claims
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`or defenses (the disclosing party need not marshal all evidence that may be
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`offered at trial);
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`(d)
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`the name, address, and telephone number of persons having knowledge of
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`relevant facts, a brief statement of each identified person’s connection with the
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`case, and a brief, fair summary of the substance of the information known by any
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`such person;
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`(e)
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`any indemnity and insuring agreements under which any person or entity carrying
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`on an insurance business may be liable to satisfy part or all of a judgment entered
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`in this action or to indemnify or reimburse for payments made to satisfy the
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`judgment;
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`(f)
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`(g)
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`any settlement agreements relevant to the subject matter of this action; and
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`any statement of any party to the litigation.
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`2.
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`Disclosure of Expert Testimony. A party must disclose to the other parties the identity
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`of any witness it may use at trial to present evidence under Federal Rule of Evidence 702,
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`703 or 705, and:
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`(a)
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`if the witness is one retained or specially employed to provide expert testimony in
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`the case or one whose duties as the party’s employee regularly involve giving
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`expert testimony, provide the disclosures required by Federal Rule of Civil
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`Procedure 26(a)(2)(B) and Local Rule CV-26; and
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`(b)
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`for all other such witnesses, provide the disclosure required by Federal Rule of
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`Civil Procedure 26(a)(2)(C).
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`3.
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`Additional Disclosures. Without awaiting a discovery request,1 each party will make
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`the following disclosures to every other party:
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`1 The Court anticipates that this disclosure requirement will obviate the need for requests
`for production.
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`Case 2:15-cv-01274-JRG-RSP Document 80 Filed 02/17/16 Page 3 of 9 PageID #: 1131
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`(a)
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`provide the disclosures required by the Patent Rules for the Eastern District of
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`Texas with the following modifications to P.R. 3-1 and P.R. 3-3:
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`P.R. 3-1(g): If a party claiming patent infringement asserts that a
`claim element is a software limitation, the party need not comply
`with P.R. 3-1 for those claim elements until 30 days after source
`code for each Accused Instrumentality is produced by the opposing
`party. Thereafter, the party 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.
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`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.
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`(b)
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`produce or permit the inspection of all documents, electronically stored
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`information, and tangible things in the possession, custody, or control of the party
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`that are relevant to the pleaded claims or defenses involved in this action, except
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`to the extent these disclosures are affected by the time limits set forth in the Patent
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`Rules for the Eastern District of Texas; and
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`(c)
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`provide a complete computation of any category of damages claimed by any party
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`to the action, and produce or permit the inspection of documents or other
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`evidentiary material on which such computation is based, including materials
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`bearing on the nature and extent of injuries suffered, except that the disclosure of
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`the computation of damages may be deferred until the time for Expert Disclosures
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`if a party will rely on a damages expert.
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`4.
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`5.
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`Protective Orders. The Court will enter the parties’ Agreed Protective Order.
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`Discovery Limitations. The discovery in this cause is limited to the disclosures
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`described in Paragraphs 1-3 together with:
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`
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`(a)
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`Definition of “Defendant”: For the purposes of this section, “Defendant” refers to
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`a group of defendants separately accused of infringement. The defendant groups
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`are the Honda defendants, the Hyundai defendants (Hyundai Motor America and
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`Hyundai Motor Manufacturing Alabama, LLC), the Kia defendants (Kia Motors
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`America and Kia Motors Manufacturing Georgia, Inc.), the Nissan defendants, the
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`Toyota defendants, and the Volkswagen defendants (Volkswagen Group of
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`America, Inc. and Volkswagen Group of America Chattanooga Operations, LLC).
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`(b)
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`Interrogatories: Plaintiff may serve 20 interrogatories common to all Defendants
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`and 20 individual interrogatories on each Defendant. Defendants may collectively
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`serve 20 interrogatories on plaintiff and each Defendant may individually serve
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`20 interrogatories on plaintiff.
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`(c)
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`Requests for Admission: Plaintiff may serve 20 requests for admission common
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`to all Defendants and 20 individual requests for admission on each Defendant.
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`Defendants may collectively serve 20 requests for admission on plaintiff and each
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`Defendant may individually serve 20 requests for admission on plaintiff. In
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`addition, the parties will be permitted to serve unlimited requests for admissions
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`for authentication of documents and things and/or whether a document qualifies
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`as a printed publication under 35 U.S.C. § 102.
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`(d)
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`Party Depositions: Plaintiff may take up to 28 total hours of deposition testimony
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`(inclusive of both 30(b)(1) and 30(b)(6) depositions) of each Defendant. The
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`Defendants collectively may take up to 28 hours of deposition testimony of
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`plaintiff (inclusive of both 30(b)(1) and 30(b)(6) depositions). Depositions of
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`experts, third parties, or the named inventor do not count against these limits.
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`(e)
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`Inventor Depositions: The Defendants as a group will be limited to 21 deposition
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`hours of the named inventor in his individual capacity (excluding deposition time
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`as a 30(b)(6) witness, if any). Fact deposition testimony of the inventor is
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`exclusive of any time the inventor spends testifying as either a designated party
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`witness or expert witness.
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`(f)
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`Expert Depositions: Plaintiff is limited to four testifying expert witnesses. Each
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`Defendant is limited to four testifying expert witnesses or two individual
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`testifying expert witnesses plus two testifying expert witnesses common to other
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`Defendants. Plaintiff may depose each of Defendant’s experts for up to seven
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`hours, except that plaintiff may depose an expert witness common to more than
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`one Defendant for up to 14 hours. Defendants as a group may collectively depose
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`each of Plaintiff’s validity experts for up to 7 hours per patent if different experts
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`opine on each asserted patent, or 10 hours total if one expert covers both asserted
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`patents with respect to a given basis for invalidity (e.g., 102/103 or 112). Each
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`Defendant may depose each of Plaintiff’s infringement experts for up to 7 hours
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`per patent if different experts opine on each asserted patent, or 10 hours total if a
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`single expert opines on both asserted patents. Each Defendant may depose each
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`of Plaintiff’s damages experts for up to 7 hours.
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`(g)
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`Any party may later move to modify these limitations for good cause or by
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`agreement.
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`(h)
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`The parties agree that the provisions of Fed. R. Civ. P. 26(b)(1) as amended
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`effective December 1, 2015 regarding proportionality of discovery will apply to this case,
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`namely, that the scope of discovery will be proportional to the needs of the case, considering the
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`importance of the issues at stake in the action, the amount in controversy, the parties’ relative
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`access to relevant information, the parties’ resources, the importance of discovery in resolving
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`the issues, and whether the burden or expense of the proposed discovery outweighs its likely
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`benefit.
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`6.
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`Privileged Information. There is no duty to disclose privileged documents or
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`information. However, the parties are directed to meet and confer concerning privileged
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`documents or information after the Status Conference. By the deadline set in the Docket
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`Control Order, the parties shall exchange privilege logs identifying the documents or
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`information and the basis for any disputed claim of privilege in a manner that, without
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`revealing information itself privileged or protected, will enable the other parties to assess
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`the applicability of the privilege or protection. Any party may move the Court for an
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`order compelling the production of any documents or information identified on any other
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`party’s privilege log. If such a motion is made, the party asserting privilege shall respond
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`to the motion within the time period provided by Local Rule CV-7. The party asserting
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`privilege shall then file with the Court within 30 days of the filing of the motion to
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`compel any proof in the form of declarations or affidavits to support their assertions of
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`privilege, along with the documents over which privilege is asserted for in camera
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`inspection.
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`7.
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`Signature. The disclosures required by this Order shall be made in writing and signed by
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`the party or counsel and shall constitute a certification that, to the best of the signer’s
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`knowledge, information and belief, such disclosure is complete and correct as of the time
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`it is made. If feasible, counsel shall meet to exchange disclosures required by this Order;
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`otherwise, such disclosures shall be served as provided by Federal Rule of Civil
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`Procedure 5. The parties shall promptly file a notice with the Court that the disclosures
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`required under this Order have taken place.
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`8.
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`Duty to Supplement. After disclosure is made pursuant to this Order, each party is
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`under a duty to supplement or correct its disclosures immediately if the party obtains
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`information on the basis of which it knows that the information disclosed was either
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`incomplete or incorrect when made, or is no longer complete or true.
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`9.
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`Discovery Disputes.
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`(a)
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`Except in cases involving claims of privilege, any party entitled to receive
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`disclosures (“Requesting Party”) may, after the deadline for making disclosures,
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`serve upon a party required to make disclosures (“Responding Party”) a written
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`statement, in letter form or otherwise, of any reason why the Requesting Party
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`believes that the Responding Party’s disclosures are insufficient. The written
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`statement shall list, by category, the items the Requesting Party contends should
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`be produced. The parties shall promptly meet and confer. If the parties are
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`unable to resolve their dispute, then the Responding Party shall, within 14 days
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`after service of the written statement upon it, serve upon the Requesting Party a
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`written statement, in letter form or otherwise, which identifies (1) the requested
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`items that will be disclosed, if any, and (2) the reasons why any requested items
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`will not be disclosed. The Requesting Party may thereafter file a motion to
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`compel.
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`(b)
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`In addition to the requirements of Local Rule CV-7(h) and (i), an opposed
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`discovery-related motion must
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`include a certification
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`that an
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`in-person
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`conference involving lead and local counsel for all parties to the discovery dispute
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`was held.
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`(c)
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`Counsel are directed to contact the chambers of the undersigned for any “hot-line”
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`disputes before contacting the Discovery Hotline provided by Local Rule CV-
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`26(e). If the undersigned is not available, the parties shall proceed in accordance
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`with Local Rule CV-26(e).
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`10.
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`No Excuses. A party is not excused from the requirements of this Discovery Order
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`because it has not fully completed its investigation of the case, or because it challenges
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`the sufficiency of another party’s disclosures, or because another party has not made its
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`disclosures. Absent court order to the contrary, a party is not excused from disclosure
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`because there are pending motions to dismiss, to remand or to change venue.
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`11.
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`Filings. Only upon request from chambers shall counsel submit to the court courtesy
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`copies of any filings.
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`12.
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`Proposed Stipulations by the Parties Regarding Discovery:
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`(a)
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`The parties agree that they will serve each other with copies of any subpoena or
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`deposition notice directed to a third-party. A party receiving documents from a
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`third party will provide copies of those documents to another party upon request.
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`A party scheduling a deposition of a third party shall provide notice of the
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`deposition date to all parties by seven days prior to the deposition.
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`(b)
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`The parties agree that, unless good cause is shown, the parties shall not be
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`required to log any privileged documents created on or after July 16, 2015.
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`(c)
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`The parties agree to accept service by email to all counsel of record for the party
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`to be served. The parties acknowledge that Local Rule CV-6, which provides that
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`three days are added after the period would otherwise expire under Fed. R. Civ. P.
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`6(a), regardless of the method of service, applies to service by email.
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`(d)
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`The parties will submit a proposed e-discovery order within 45 days after the
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`Scheduling Conference.
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`IT IS SO ORDERED.
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