`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC §
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`§
`v.
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`§
`§
`§
`§
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`T-MOBILE USA, INC. and T-MOBILE
`US, INC.
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`CIVIL ACTION NO. 2:21-cv-00072-JRG-RSP
`LEAD CASE
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`ORDER FOCUSING PATENT CLAIMS AND PRIOR ART TO REDUCE COSTS
`WITH RESPECT TO CERTAIN PATENTS
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`In accordance with the Joint Motion (Dkt. No. 112), which the Court GRANTS, the Court
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`ORDERS as follows:
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`1.
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`This Order supplements all other discovery rules and orders. It streamlines the
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`issues in this case to promote a “just, speedy, and inexpensive determination” of this action, as
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`provided by Federal Rule of Civil Procedure 1.
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`Phased Limits on Asserted Claims and Prior Art References
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`2.
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`By August 24, 2021, the patent claimant shall serve a Preliminary Election of
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`Asserted Claims with respect to U.S. Patent No. 9,408,055, U.S. Patent No. 9,445,251, U.S. Patent
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`No.9,467,838, and U.S. Patent No. 9,749,829 (the “WhatsApp/T-Mobile Only Patents”), which
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`shall assert no more than ten claims from each WhatsApp/T-Mobile Only Patent and not more than
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`a total of 32 claims. Not later than September 7, 2021, the patent defendant shall serve a
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`Preliminary Election of Asserted Prior Art, which shall assert no more than twelve prior art
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`references against each WhatsApp/T-Mobile Only Patent and not more than a total of 40
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`references.1
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`1 For purposes of this Order, a prior art instrumentality (such as a device or process) and associated references that
`describe that instrumentality shall count as one reference, as shall the closely related work of a single prior artist.
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`Case 2:21-cv-00072-JRG-RSP Document 113 Filed 08/09/21 Page 2 of 2 PageID #: 2827
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`3.
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`Not later than October 1, 2021, the patent claimant shall serve a Final Election of
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`Asserted Claims, which shall identify no more than five asserted claims per patent from among
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`the ten previously identified claims and no more than a total of 16 claims. By October 29, 2021,
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`the patent defendant shall serve a Final Election of Asserted Prior Art, which shall identify no
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`more than six asserted prior art references per patent from among the twelve prior art references
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`previously identified for that particular patent and no more than a total of 20 references. For the
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`purposes of this Final Election of Asserted Prior Art, each obviousness combination counts as a
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`separate prior art reference.
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`4.
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`If the patent claimant asserts infringement of only one patent, all per-patent limits
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`in this order are increased by 50%, rounding up.
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`Modification of this Order
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`5.
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`Subject to Court approval, the parties may modify this Order by Agreement, but
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`should endeavor to limit the asserted claims and prior art references to the greatest extent possible.
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`Absent agreement, post-entry motions to modify this Order’s numerical limits on asserted claims
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`and prior art references must demonstrate good cause warranting the modification. Motions to
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`modify other portions of this Order are committed to the sound discretion of the Court.2
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`2 This Order contemplates that the parties and the Court may further narrow the issues during pretrial proceedings in
`order to present a manageable case at trial.
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