Case 2:21-cv-00040-JRG Document 43 Filed 06/09/21 Page 1 of 13 PageID #: 478
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CASE NO. 2:21-cv-00040-JRG
`(Lead Case)
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`JURY TRIAL DEMANDED
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`CASE NO. 2:21-cv-00041-JRG
`(Member Case)
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`JURY TRIAL DEMANDED
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`§§§§§§§§§§
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`§
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`§§§§§§§§§§
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`§
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`GESTURE TECHNOLOGY
`PARTNERS, LLC,
`
`Plaintiff
`
`v.
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`HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC.,
`
`Defendants.
`
`GESTURE TECHNOLOGY
`PARTNERS, LLC,
`
`Plaintiff
`
`v.
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, 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:
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`1.
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`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil Procedure
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`26(a)(1), each party shall disclose to every other party the following information:
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`(a)
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`(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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`(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 offered
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`at trial);
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`(d)
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`the name, address, and telephone number of persons having knowledge of relevant
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`facts, a brief statement of each identified person’s connection with the case, and a
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`brief, fair summary of the substance of the information known by any 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 expert
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`testimony, provide the disclosures required by Federal Rule of Civil Procedure
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`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 Civil
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`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 the
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`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 claim
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`elements until 30 days after source code for each Accused Instrumentality
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`is produced by the opposing party. Thereafter, the party claiming patent
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`infringement shall identify, on an element-by-element basis for each
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`asserted claim, what source code of each Accused Instrumentality allegedly
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`satisfies the software limitations of the asserted 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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`that are relevant to the pleaded claims or defenses involved in this action, except to
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`1 The Court anticipates that this disclosure requirement will obviate the need for requests
`for production.
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`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 described
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`in Paragraphs 1-3 together with:
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`(a)
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`Definitions. For purpose of this Paragraph, “Plaintiff” refers to Gesture Technology
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`Partners LLC; its officers, directors, owners, managers, and employees. For purposes of
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`this Paragraph, “Defendants” refers to Samsung Electronics Co. Ltd. and Samsung
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`Electronics America, Inc. (collectively the “Samsung Defendants”); Huawei Device Co.,
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`Ltd., and Huawei Device USA, Inc. (collectively the “Huawei Defendants”); and their
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`respective officers, directors, owners, managers, and employees. For purposes of this
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`Paragraph, “Side” means a party or group of parties with a common interest with respect
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`to this lawsuit, with one Side consisting of at least Plaintiff and another Side consisting of
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`at least Defendants.
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`(b)
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`Interrogatories. Each Side may serve twenty-five (25) interrogatories on the other Side. Of
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`the twenty-five interrogatories, the Samsung Defendants and the Huawei Defendants may
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`each serve up to five (5) individual interrogatories, the remaining interrogatories being
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`joint interrogatories. Of the twenty-five interrogatories, Plaintiff may serve up to five (5)
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`individual interrogatories to the Samsung Defendants and up to five (5) individual
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`interrogatories to the Huawei Defendants, the remaining interrogatories being joint
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`interrogatories. The parties agree to provide initial answers to interrogatories in good faith
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`and to the extent not objected to within thirty (30) days of receipt.
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`(c)
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`Requests for Admission. Each side may each serve forty (40) requests for admission.
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`Requests that a party admit to the authenticity of a document or thing that party produced
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`shall not count against the total requests for admission; such authentication requests for
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`admission must be clearly labelled as relating to authentication and the deadline to respond
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`shall be thirty (30) days; the parties are required to meet and confer in good faith prior to
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`serving any such authentication request for admission, and specifically to consider a
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`stipulation regarding authentication as an alternative to use of such requests for admission.
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`(d)
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`Party Depositions. Plaintiff may take up to thirty-five (35) total hours of deposition
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`testimony of the Samsung Defendants and Plaintiff may take up to thirty-five (35) total
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`hours of deposition testimony of the Huawei Defendants (inclusive of both Rule 30(b)(1)
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`and Rule 30(b)(6) depositions). Defendants may take up to thirty-five (35) hours of
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`deposition testimony of Plaintiff (inclusive of both Rule 30(b)(1) and Rule 30(b)(6)
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`depositions), with the time to be divided as Defendants deem appropriate. For party
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`witnesses, no more than seven (7) hours of fact deposition shall be taken of any natural
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`person deposed in his or her personal capacity (i.e., not as a designee of an entity under
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`Fed. R. Civ. P. 30(b)(6)). Each natural person providing deposition testimony in his or
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`her capacity as a designee of an entity under Fed. R. Civ. P. 30(b)(6) shall simultaneously
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`testify as to information within his or her personal knowledge. No more than seven (7)
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`Case 2:21-cv-00040-JRG Document 43 Filed 06/09/21 Page 6 of 13 PageID #: 483
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`hours of fact deposition may be taken of one person in one day without the consent of the
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`deponent. The parties shall meet and confer in good faith to schedule depositions under
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`Fed. R. Civ. P. 30(b)(6) at a time and place that is convenient for the deponent and the
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`parties. Depositions may be conducted virtually, through remote video, if both parties
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`consent or if necessary to comply with public health orders, including those related to the
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`COVID-19 pandemic. In-person depositions will be conducted at a location that is
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`convenient for the witnesses, or as otherwise agreed upon by the parties. If an interpreter
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`is necessary for a deposition, that witness may be deposed for an additional amount of time
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`up to one half of the standard deposition time.2 GTP reserves the right to seek additional
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`time for translation-time issues that may arise, and Defendants agree to negotiate those
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`requests in good faith to avoid burdening the court with such a dispute.
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`(e)
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`Expert Depositions. Each expert may be deposed for up to seven (7) hours per report. If
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`an expert submits a report on a single topic that is common to multiple parties (for example,
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`relating to invalidity), then the other Side shall be entitled to only seven (7) total hours of
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`deposition for that report. (If there are multiple parties on such other Side, they may divide
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`the time as they deem appropriate.) If a Party uses the same expert but submits two reports
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`on two different topics (for example, one relating to infringement and one relating to
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`invalidity), then the other Side shall be entitled to fourteen (14) total hours of deposition
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`of that expert (still limited to seven (7) hours per report). (If there are multiple parties on
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`such other Side, they may divide the time as they deem appropriate.) If an expert submits
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`a single report on two different topics (for example, relating to both infringement by
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`2 The limitation on the maximum hours any deponent may deposed in one day still applies;
`a deposition requiring longer than 7 actual hours shall continue to the next day unless otherwise
`agreed by the parties.
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`Case 2:21-cv-00040-JRG Document 43 Filed 06/09/21 Page 7 of 13 PageID #: 484
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`Huawei and infringement by Samsung) the report will be deemed to be two reports and the
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`other Side will be entitled to fourteen (14) total hours of deposition of that expert (still
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`limited to seven (7) hours per report). (If there are multiple parties on such other Side, they
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`may divide the time as they deem appropriate.) These examples are meant to be illustrative
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`for clarification purposes and are not meant to be exhaustive. No more than seven (7) hours
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`of deposition may be taken of one person in one day without the consent of the deponent.
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`The number of expert deposition hours may be modified by agreement of the parties or
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`further order of the Court. If any party requests more than the allotted time for a particular
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`deposition or if any side seeks more than the number of designated hours set forth herein,
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`the parties agree to meet and confer in a good faith attempt to resolve the issue without the
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`need for intervention by the Court.
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`(f)
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`Non-party Depositions. Each side shall be limited to sixty (60) hours of non-party
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`depositions. If an interpreter is necessary for a deposition, that witness may be deposed
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`for an additional amount of time up to one-half of the deposition time.
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`(g)
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`E-Discovery. The parties believe entry of an Order Regarding E-Discovery in Patent Cases
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`is appropriate and will be submitting such an order to the Court which will govern all
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`discovery and production of Electronically Stored Information.
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`Any party may later move to modify these limitations for good cause.
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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 order
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`compelling the production of any documents or information identified on any other party’s
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`privilege log. If such a motion is made, the party asserting privilege shall respond to the
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`motion within the time period provided by Local Rule CV-7. The party asserting privilege
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`shall then file with the Court within 30 days of the filing of the motion to compel any proof
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`in the form of declarations or affidavits to support their assertions of privilege, along with
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`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
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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 Procedure
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`5. The parties shall promptly file a notice with the Court that the disclosures required under
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`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 under
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`a duty to supplement or correct its disclosures immediately if the party obtains information
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`on the basis of which it knows that the information disclosed was either incomplete or
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`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 be
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`produced. The parties shall promptly meet and confer. If the parties are unable to
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`resolve their dispute, then the Responding Party shall, within 14 days after service
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`of the written statement upon it, serve upon the Requesting Party a written
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`statement, in letter form or otherwise, which identifies (1) the requested items that
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`will be disclosed, if any, and (2) the reasons why any requested items will not be
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`disclosed. The Requesting Party may thereafter file a motion to 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. No further briefing is allowed absent a request or order from the
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`Court.
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`(c)
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`Prior to filing any discovery related motion, the parties must fully comply with the
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`substantive and procedural conference requirements of Local Rule CV-7(h) and (i).
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`Within 72 hours of the Court setting any discovery motion for a hearing, each
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`party’s lead attorney (see Local Rule CV-11(a)) and local counsel shall meet and
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`confer in person or by telephone, without the involvement or participation of other
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`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 motion
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`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
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`it has not fully completed its investigation of the case, or because it challenges the
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`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 and
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`agree as follows:
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`a.
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`Service by Electronic Mail. The parties will make every effort to serve by email all
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`documents filed under seal within two (2) hours. A party may serve all documents by e-
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`mail on another party by sending the documents to the email group address designated by
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`a party, or if no such group is designated, to email address for all counsel of record for the
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`party.3 Documents e-mailed by 11:59 p.m. CT shall be deemed timely served.
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`3 Service via FTP site with emailed link and (if applicable) password information or other
`appropriate electronic means shall be deemed to comport with the requirements of electronic
`service.
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`b.
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`Production of Materials Obtained Via Third-party Subpoena. A party who intends to serve
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`a subpoena on a third party shall serve a notice and a copy of the subpoena on each other
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`party before it is served on the person to whom the subpoena is directed. A party who
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`receives documents from a third party pursuant to a subpoena will endeavor in good faith
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`to reproduce those documents to the other party within three (3) business days. Where
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`reproduction of documents within 3 business days is not reasonably practicable, the party
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`who received the documents will provide prompt notice to the other party (within 3
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`business days) and will work in good faith to resolve the issue on a case-by-case basis. The
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`parties agree to consult with each other before scheduling any third-party deposition or
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`inspection and to provide at least five (5) business days’ notice to allow for the coordination
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`of the depositions or inspections.
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`c.
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`Expert Disclosures. The parties agree that the protections provided in FRCP 26(b)(4)(B)
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`and (C) will apply equally to expert declarations as they do to expert reports, including
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`both drafts of declarations and communications related to declarations. Pursuant to FRCP
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`26(b)(4), draft expert reports, outlines, notes, and any other writings leading up to an
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`expert’s final report(s) are exempt from discovery. In addition, all communications with
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`and all materials generated by an expert with respect to his or her work on this action are
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`exempt from discovery unless considered by the expert in forming his or her opinions. The
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`materials exempt from discovery listed in this subsection do not need to be logged in a
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`privilege log. If an expert produces a report, the expert must produce his or her final report
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`and all materials which the expert relied on, to the extent they have not already been
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`produced.
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`d.
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`Non-Waiver of Privilege. A party’s inadvertent production of materials covered by the
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`attorney-client privilege, work-product protection, common interest privilege, or similar
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`exemption from discoverability is not a waiver in the pending case or any other federal or
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`state proceeding. For example, the mere production of privileged or work-product
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`protected documents in this case as part of a larger production is not itself a waiver in this
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`case or any other federal or state proceeding. A producing party may assert privilege or
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`work product protection over any produced documents after becoming aware of the
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`production by notifying the receiving party of the assertion of privilege or protection in
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`writing. For any document produced for which such notice is given, the producing party
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`must promptly supply a privilege log supporting the claim of privilege with respect to the
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`documents at issue, thereby enabling the receiving party to dispute the assertion of
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`privilege or protection in accordance with Paragraph 6 above. In response to such notice,
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`the receiving party shall promptly return and/or destroy the produced materials, and destroy
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`any copies and/or work product created from such materials, within at most three (3) days.
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`e.
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`Privilege Log. The parties agree that, except as provided in Paragraph 12(d) above, the
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`parties shall not be required to log (1) any privileged document or communication created
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`on or after February 4, 2021 (the filing date of the Original Complaint in this case) or (2)
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`any communication relating to the subject matter of this case that includes outside counsel
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`of record in this case. The parties reserve all rights to seek discovery relating to
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`communications created before the filing of this lawsuit.
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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 Court’s
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`website at http://www.txed.uscourts.gov/page1.shtml?location=info:judge&judge=17. The
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`Case 2:21-cv-00040-JRG Document 43 Filed 06/09/21 Page 13 of 13 PageID #: 490
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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 on
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`the parties and counsel, regardless of whether they are expressly included herein or made
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`a part hereof by reference.
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`- 13 -
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`So Ordered this
`Jun 8, 2021
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