`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC
`
`v.
`
`HUAWEI DEVICE USA INC., HUAWEI
`DEVICE CO., LTD. AND HUAWEI
`DEVICE (DONGGUAN) CO., LTD.,
`HTC CORPORATION,
`LG ELECTRONICS, INC.,
`APPLE INC.,
`ZTE CORPORATION, ZTE (USA), INC.,
`AND ZTE (TX), INC.,
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No. 2:17-CV-513-JRG (Lead
`Case)
`
`JURY TRIAL DEMANDED
`
`Civil Action No. 2:17-CV-514-JRG
`Civil Action No. 2:17-CV-515-JRG
`Civil Action No. 2:17-CV-516-JRG
`Civil Action No. 2:17-CV-517-JRG
`
`DISCOVERY ORDER
`
`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:1,2
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`1.
`
`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil
`
`Procedure 26(a)(1), each party shall disclose to every other party the following
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`information:
`
`(a)
`
`(b)
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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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`1 HTC Corp. states that it submits this discovery order for the Court's consideration and
`entry subject to its motion to dismiss and without waiver of its objection to personal jurisdiction in
`this case.
`
`2 Defendant ZTE Corporation has not yet been served or appeared in this matter; thus, all
`discovery
`limits will apply
`if Defendant ZTE Corporation
`is served. Further, ZTE
`they submit
`this discovery order for the
`(USA), Inc. and ZTE (TX), Inc. state
`that
`Court's consideration and entry subject to their motion to dismiss, or in the alternative
`transfer, and without waiver of its objection to venue in this case.
`
`
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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 2 of 11 PageID #: 5230
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`(c)
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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);
`
`(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;
`
`(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;
`
`(f)
`
`(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.
`
`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,
`
`703 or 705, and:
`
`(a)
`
`if the witness is one retained or specially employed to provide expert testimony in
`
`the case or one whose duties as the party’s employee regularly involve giving
`
`expert testimony, provide the disclosures required by Federal Rule of Civil
`
`Procedure 26(a)(2)(B) and Local Rule CV-26; and
`
`(b)
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`for all other such witnesses, provide the disclosure required by Federal Rule of
`
`Civil Procedure 26(a)(2)(C).
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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 3 of 11 PageID #: 5231
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`3.
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`Additional Disclosures. Without awaiting a discovery request, each party will make the
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`following disclosures to the opposing parties:
`
`(a)
`
`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:
`
`i.
`
`If a party claiming patent infringement asserts that a claim element is a
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`software limitation, the party need not comply with P.R. 3-1 for those
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`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
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`Instrumentality allegedly satisfies the software limitations of the asserted
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`claim elements.
`
`ii.
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`If a party claiming patent infringement exercises the provisions of
`
`Paragraph 3(a)(i) of this Discovery Order, the party opposing a claim of
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`patent infringement may serve, not later than 30 days after receipt of a
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`Paragraph 3(a)(i) disclosure, supplemental “Invalidity Contentions” that
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`amend only those claim elements identified as software limitations by the
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`party claiming patent infringement.
`
`(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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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 4 of 11 PageID #: 5232
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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
`
`(c)
`
`provide a complete computation of any category of damages claimed by any party
`
`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
`
`if a party will rely on a damages expert.
`
`4.
`
`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 case is limited to the disclosures described
`
`in Paragraphs 1-3 together with:
`
`(a) For purposes of this section, (i) Huawei Device USA Inc., Huawei Device
`
`Co., Ltd., and Huawei Device (Dongguan) Co. Ltd. collectively count as one
`
`“Defendant”; and (ii) ZTE (USA), Inc., and ZTE (TX), Inc. collectively count
`
`as one “Defendant.”
`
`(b) Each defendant may serve a maximum of 25 interrogatories on Plaintiff.
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`Plaintiff may serve a maximum of 25 interrogatories on each Defendant.
`
`(c) Plaintiff may serve up to 40 requests for admission per party. Each Defendant
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`may serve up to 40 requests for admission on Plaintiff. Notwithstanding the
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`limitations in this paragraph, requests for admission directed to the
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`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 shall be unlimited.
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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 5 of 11 PageID #: 5233
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`(d) Plaintiff may take up to 55 total hours of deposition testimony (inclusive of
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`both 30(b)(1) and 30(b)(6) depositions) of each Defendant. Defendants may
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`collectively take up to 55 total hours of deposition testimony of Plaintiff
`
`(inclusive of both 30(b)(1) and 30(b)(6) depositions), and separately each
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`Defendant may take an additional 10 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 and third parties do not count against these limits. Defendants shall
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`coordinate depositions to reduce redundancy and inconvenience to the parties.
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`The parties agree that witnesses will be deposed at a location convenient for
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`the witness (ordinarily the place of residence or employment), except that the
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`parties will meet and confer and work together in good faith on the location of
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`depositions should any party wish to conduct a deposition at an alternative
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`location.
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`(e) For purposes of this section, depositions of individuals affiliated with
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`Advanced Ground Information Systems, Inc. (“AGIS, Inc.”), such as AGIS,
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`Inc.’s employees and consultants (including but not limited to those
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`individuals identified in AGIS’s Initial Disclosures—Christopher Rice,
`
`Malcolm K. Beyer II, Ronald Wisneski, Rebecca Clark, Eric Armstrong, and
`
`David Sietsema) shall count against the hours limit for depositions of Plaintiff
`
`in 5(d) above.
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`(f) All individual depositions shall be limited to seven hours in accordance with
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`the Federal Rules of Civil Procedure, except that Defendants may take up to
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`14 hours of deposition testimony of any named inventor.
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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 6 of 11 PageID #: 5234
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`(g) To the extent a Rule 30(b)(1) witness is designated as the corporate
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`representative for one or more Rule 30(b)(6) topics, the witness shall be
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`deposed in both capacities in a single deposition of seven hours (or, in the
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`case of the named inventors, 14 hours).
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`(h) Depositions on written questions of custodians of business records for third
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`parties shall not count against any of the deposition limits herein.
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`(i) Each party is each limited to 4 testifying expert witnesses. Plaintiff may
`
`depose each of Defendant’s experts for up to 7 hours, except that Plaintiff may
`
`depose an expert witness opining on invalidity issues common to more than
`
`one Defendant for up to 12 hours. Defendants as a group may collectively
`
`depose each of Plaintiff’s validity experts for up to 14 hours. Each Defendant
`
`may depose each of Plaintiff’s damages and infringement experts for up to 7
`
`hours.
`
`(j) Third Parties: Each Party may take up to 50 hours of non-party deposition
`
`testimony. The parties agree to meet and confer in good faith in the event that
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`a party seeks a reasonable enlargement of the agreed-upon hours of non-party
`
`deposition testimony based upon case developments after the date of this
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`Order.
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`(k) Any party may later move to modify these limitations for good cause or by
`
`agreement.
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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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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 7 of 11 PageID #: 5235
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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
`
`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
`
`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
`
`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
`
`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.
`
`Discovery Disputes.
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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 8 of 11 PageID #: 5236
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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
`
`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 7 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.
`
`(b)
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`An opposed discovery related motion, or any response thereto, shall not exceed 7
`
`pages. Attachments to a discovery related motion, or a response thereto, shall not
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`exceed 5 pages per attachment. No further briefing is allowed absent a request or
`
`order from the Court.
`
`(c)
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`Prior to filing any discovery related motion, the parties must fully comply with
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`the substantive and procedural conference requirements of Local Rule CV-7(h)
`
`and (i). Within 72 hours of the Court setting any discovery motion for a hearing,
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`each party’s lead attorney (see Local Rule CV-11(a)) and local counsel shall meet
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`and confer in person or by telephone, without the involvement or participation of
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`other attorneys, in an effort to resolve the dispute without Court intervention.
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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 9 of 11 PageID #: 5237
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`(d)
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`Counsel shall promptly notify the Court of the results of that meeting by filing a
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`joint report of no more than two pages. Unless excused by the Court, each party’s
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`lead attorney shall attend any discovery motion hearing set by the Court (though
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`the lead attorney is not required to argue the motion).
`
`(e)
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`Any change to a party’s lead attorney designation must be accomplished by
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`motion and order.
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`(f)
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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
`
`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. The parties stipulate to
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`the following:
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`(a) 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 each other party within 5
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`business days of receiving those documents. The parties agree to consult with
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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 10 of 11 PageID #: 5238
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`each other before scheduling any third-party deposition and to provide at least 5
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`business days’ notice of the selected court reporting agency to allow for the
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`coordination of remote depositions, including the logistics of soft copy exhibits.
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`(b) 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 June 21, 2017.
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`(c) The parties agree to accept service by email to all counsel of record for the party
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`to be served.
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`(d) E-discovery orders have been entered in Civil Action Nos. 2:17-CV-513, 2:17-
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`CV-515, and 2:17-CV-516. An e-discovery order for Civil Action Nos. 2:17-CV-
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`514 and 2:17-CV-517 will be entered 10 business days after the submission of
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`this Discovery Order.
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`(e) Pursuant to Federal Rule of Evidence 502(d), inadvertent production of materials
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`covered by the attorney-client privilege or work-product protection is not a waiver
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`in a pending case or any other federal or state proceeding. For example, the mere
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`production of privilege or work-product protected documents in this case as part
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`of a mass production is not itself a waiver in this case or any other federal or state
`
`proceeding. A producing party may assert privilege or protection over
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`inadvertently produced documents within a reasonable time after becoming aware
`
`of the inadvertent production by notifying the receiving party of the assertion of
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`privilege or protection in writing. In case of inadvertent production, at the
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`producing party’s request, the receiving party shall immediately return or destroy
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`the inadvertently produced materials. The producing party will provide a
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`privilege log in accordance with Paragraph 6.
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`Case 2:17-cv-00513-JRG Document 118 Filed 04/10/18 Page 11 of 11 PageID #: 5239
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`13.
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`Standing Orders. The parties and counsel are charged with notice of and are required to
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`fully comply with each of the Standing Orders of this Court. Such are posted on the
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`Court’s website at http://www.txed.uscourts.gov/page1.shtml?location=info:judge&judge=17.
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`The substance of some such orders may be included expressly within this Discovery
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`Order, while others (including the Court’s Standing Order Regarding Protection of
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`Proprietary and/or Confidential Information to Be Presented to the Court During Motion
`
`and Trial Practice) are incorporated herein by reference. All such standing orders shall be
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`binding on the parties and counsel, regardless of whether they are expressly included
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`herein or made a part hereof by reference.
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