`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:17-cv-514-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`Case No. 2:17-cv-517-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`§ § § § § § § § § §
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`§ § § § § § § § § § § §
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`AGIS SOFTWARE DEVELOPMENT, LLC,
`
`v.
`
`HTC CORPORATION,
`
`Plaintiff,
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`Defendant.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`
`Plaintiff,
`
`v.
`
`ZTE CORPORATION, ZTE (USA), INC.,
`AND ZTE (TX), INC.,
`
`Defendants.
`
`DISCOVERY ORDER
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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:1
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`1.
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`Initial Disclosures.
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`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:
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`1 HTC Corp. states that it enters into this discovery order subject to its motion to dismiss
`and without waiver of its objection to personal jurisdiction in this case.
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`
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 2 of 11 PageID #: 2183
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`(a)
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`the correct names of the parties to the lawsuit;
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`(b)
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`the name, address, and telephone number of any potential parties;
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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);
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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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`any settlement agreements relevant to the subject matter of this action; and
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`(g)
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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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`
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`2
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`
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 3 of 11 PageID #: 2184
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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,2 each party will make
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`the following disclosures to every other party:
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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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`i.
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`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
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`Instrumentality is produced by the opposing party. Thereafter, the party
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`claiming patent infringement shall identify, on an element-by-element
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`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.
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`ii.
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`If a party claiming patent infringement exercises the provisions of
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`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.
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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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`2 The Court anticipates that this disclosure requirement will obviate the need for requests
`for production.
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`
`
`3
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`
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 4 of 11 PageID #: 2185
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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 case is limited to the disclosures described
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`in Paragraphs 1-3 together with:
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`(a) Definition of “Defendant”: For purposes of this section, the “HTC Defendant”
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`refers to HTC Corporation and the “ZTE Defendants” refers to ZTE
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`Corporation,3 ZTE (USA), Inc., and ZTE (TX), Inc.
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`(b) Interrogatories: Plaintiff may serve 25 interrogatories on HTC and 25
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`interrogatories on the ZTE Defendants. HTC and the ZTE Defendants,
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`collectively, may serve 13 interrogatories on Plaintiff, and separately each
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`may serve an additional 12 interrogatories on Plaintiff.
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`(c) Requests for Admission: Plaintiff may serve 25 requests for admission on
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`HTC and 25 requests for admission on the ZTE Defendants. HTC and the
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`3 Defendant ZTE Corporation has not yet been served or appeared in this matter; thus, but
`all discovery limits will apply, if Defendant ZTE Corporation is served. Further, ZTE (USA),
`Inc. and ZTE (TX), Inc. state that they enter into this discovery order subject to their motion to
`dismiss, or in the alternative transfer, and without waiver of its objection to venue in this case.
`
`4
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`
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 5 of 11 PageID #: 2186
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`ZTE Defendants, collectively, may serve 13 requests for admission on
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`Plaintiff, and separately each may serve an additional 12 requests for
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`admission on Plaintiff. Requests for admissions for authentication of
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`documents and things and/or whether a document qualifies as a printed
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`publication under 35 U.S.C. § 102 shall be unlimited. Should the receiving
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`party object to any requests for admissions directed solely towards the
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`authentication of documents and things as unnecessary, unreasonable, and/or
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`directed at issues other than authentication, the receiving party must make
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`such objections in writing within ten (10) days of receiving such requests,
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`after which the parties are required to meet and confer in good faith to
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`determine whether the requests are necessary, reasonable, and/or properly
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`directed towards authentication only.
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`(d) Fact Depositions: Plaintiff may take up to 35 total hours of deposition
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`testimony (inclusive of both 30(b)(1) and 30(b)(6) depositions) of HTC and
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`may take up to 35 total hours of deposition testimony (inclusive of both
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`30(b)(1) and 30(b)(6) depositions) of the ZTE Defendants. The HTC
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`Defendant and the ZTE Defendants may collectively take up to 20 hours of
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`deposition testimony of Plaintiff (inclusive of both 30(b)(1) and 30(b)(6)
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`depositions), and separately each may take an additional 15 hours of
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`deposition testimony of Plaintiff (inclusive of both 30(b)(1) and 30(b)(6)
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`depositions). Deposition of experts and third parties do not count against
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`these limits (see ¶¶ 5(f) and (g) below). Any deposition of Malcolm Beyer in
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`his individual capacity shall count against the 35-hour limit for all Defendants.
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`5
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 6 of 11 PageID #: 2187
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`(e) Depositions on written questions of custodians of business records for third
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`parties shall not count against the deposition hours limits set forth in
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`Paragraph 5(d) above.
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`(f) Expert Depositions: Plaintiff is limited to four (4) testifying expert witnesses.
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`The HTC Defendant and the ZTE Defendants each are limited to four
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`testifying expert witnesses or two individual testifying expert witnesses plus
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`two testifying expert witnesses common to other Defendants. Plaintiff may
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`depose each of Defendants' experts for up to seven (7) hours, except that
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`Plaintiff may depose an expert common to more than one Defendant for up to
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`ten (10) hours. Defendants as a group may collectively depose each of
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`Plaintiff's validity experts for up to 10 hours. Each Defendant may depose
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`each of Plaintiff's infringement experts for up to 7 hours. Each defendant may
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`depose each of Plaintiff's damages experts for up to 7 hours.
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`(g) Third Parties: Plaintiff, the HTC Defendant, and the ZTE Defendants may
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`each take up to 40 hours of non-party deposition testimony. Any deposition
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`of non-party Advanced Ground Information Systems, Inc. or depositions of
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`HTC or ZTE entities that are not currently parties to this lawsuit shall be
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`counted against this limit. The parties agree to meet and confer in good faith
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`in the event that a party seeks a reasonable enlargement of the agreed-upon
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`hours of non-party deposition testimony based upon case developments after
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`the date of this Order.
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`(h) Any party may later move to modify these limitations for good cause.
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`6
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 7 of 11 PageID #: 2188
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`6.
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`Privileged Information.
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`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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`
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`7
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 8 of 11 PageID #: 2189
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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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`An opposed discovery related motion, or any response thereto, shall not exceed 7
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`pages. Attachments to a discovery related motion, or a response thereto, shall not
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`exceed 5 pages per attachment, exclusive of the discovery requests and/or
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`responses at issue, which may exceed 5 pages. No further briefing is allowed
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`absent a request or order from the Court.
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`8
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 9 of 11 PageID #: 2190
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`(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)
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`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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`(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).
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`(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
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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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`9
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 10 of 11 PageID #: 2191
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`12.
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`Proposed Stipulations by the Parties Regarding Discovery.
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`(a) The parties agree that they will serve each other with copies of any subpoena
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`or deposition notice directed to a third-party. A party receiving documents
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`from a third-party will provide copies of those documents to each other party
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`within a reasonable amount of time after receiving those documents. The
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`parties agree to consult with each other before scheduling any third-party
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`deposition and to provide at least 5 business days' notice of the selected court
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`reporting agency to allow for the coordination of remote depositions,
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`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 the June 21,
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`2017.
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`(c) The parties agree to accept service by email to all counsel of record for the
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`party to be served.
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`(d) The parties agree to submit a proposed e-discovery order within 45 days after
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`the Scheduling Conference.
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`(e) Pursuant to Federal Rule of Evidence 502(d), inadvertent production of
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`materials covered by the attorney-client privilege or work-product protection
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`is not a waiver in the pending case or any other federal or state proceeding.
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`For example, the mere production of privilege or work-product protected
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`documents in this case as party of a mass production is not itself a waiver in
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`this case or any other federal or state proceeding. A producing party may
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`assert privilege or protection over inadvertently produced documents within a
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`10
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`Case 2:17-cv-00514-JRG Document 38 Filed 02/20/18 Page 11 of 11 PageID #: 2192
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`reasonable time after becoming aware of the inadvertent production by
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`notifying the receiving party of the assertion of privilege or protection in
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`writing. In case of inadvertent production, at the producing party's request,
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`the receiving party shall immediately return or destroy the inadvertently
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`produced materials. The producing party will provide a privilege log in
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`accordance with Paragraph 6.
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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/?q=court-annexed-mediation-plan. The
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`substance of some such orders may be included expressly within this Discovery Order,
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`while others (including the Court’s Standing Order Regarding Protection of Proprietary
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`and/or Confidential Information to Be Presented to the Court During Motion and Trial
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`Practice) are incorporated herein by reference. All such standing orders shall be binding
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`on the parties and counsel, regardless of whether they are expressly included herein or
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`made a part hereof by reference.
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`11
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`