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Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 1 of 10 PageID #: 1999
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Plaintiff,
`
`v.
`
`T-MOBILE USA, INC. and T-MOBILE US,
`
`INC.,
`
`LYFT, INC.,
`
`UBER TECHNOLOGIES, INC., d/b/a
`UBER,
`
`WHATSAPP, INC.,
`
`
`Defendants.
`
`
`
`§
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
` §
` §
`§
`§
`
`Case No. 2:21-cv-00072-JRG-RSP
`
`LEAD CASE
`
`
`
`Case No. 2:21-cv-00024-JRG-RSP
`
`MEMBER CASE
`
`
`Case No. 2:21-cv-00026-JRG-RSP
`
`MEMBER CASE
`
`Case No. 2:21-cv-00029-JRG-RSP
`
`MEMBER CASE
`
`DISCOVERY ORDER
`
`After a review of the pleaded claims and defenses in this action, in furtherance of the
`
`management of the Court’s docket under Federal Rule of Civil Procedure 16, and after receiving
`
`the input of the parties to this action, it is ORDERED AS FOLLOWS:
`
`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 information:
`
`(a)
`
`(b)
`
`the correct names of the parties to the lawsuit;
`
`the name, address, and telephone number of any potential parties;
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 2 of 10 PageID #: 2000
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`(c)
`
`the legal theories and, in general, the factual bases of the disclosing party’s claims
`
`or defenses (the disclosing party need not marshal all evidence that may be offered
`
`at trial);
`
`(d)
`
`the name, address, and telephone number of persons having knowledge of relevant
`
`facts, a brief statement of each identified person’s connection with the case, and a
`
`brief, fair summary of the substance of the information known by any such person;
`
`(e)
`
`any indemnity and insuring agreements under which any person or entity carrying
`
`on an insurance business may be liable to satisfy part or all of a judgment entered
`
`in this action or to indemnify or reimburse for payments made to satisfy the
`
`judgment;
`
`(f)
`
`(g)
`
`any settlement agreements relevant to the subject matter of this action; and
`
`any statement of any party to the litigation.
`
`2.
`
`Disclosure of Expert Testimony. A party must disclose to the other parties the identity
`
`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)
`
`for all other such witnesses, provide the disclosure required by Federal Rule of Civil
`
`Procedure 26(a)(2)(C).
`
`2
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 3 of 10 PageID #: 2001
`
`3.
`
`Additional Disclosures. Without awaiting a discovery request,1 each party will make the
`
`following disclosures to every other party:
`
`(a)
`
`provide the disclosures required by the Patent Rules for the Eastern District of
`
`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
`
`software limitation, the party need not comply with P.R. 3-1 for those claim
`
`elements until thirty (30) days after source code for each Accused
`
`Instrumentality is produced by the opposing party. Thereafter, the party
`
`claiming patent infringement shall identify, on an element-by-element basis
`
`for each asserted claim, what source code of each Accused Instrumentality
`
`allegedly satisfies the software limitations of the asserted claim elements.
`
`ii.
`
`If a party claiming patent infringement exercises the provisions of
`
`Paragraph 3(a)(i) of this Discovery Order, the party opposing a claim of
`
`patent infringement may serve, not later than thirty (30) days after receipt
`
`of a Paragraph 3(a)(i) disclosure, supplemental “Invalidity Contentions”
`
`that amend only those claim elements identified as software limitations by
`
`the party claiming patent infringement.
`
`(b)
`
`produce or permit the inspection of all documents, electronically stored
`
`information, and tangible things in the possession, custody, or control of the party
`
`that are relevant to the pleaded claims or defenses involved in this action, except to
`
`1 The Court anticipates that this disclosure requirement will obviate the need for requests for
`production.
`
`3
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 4 of 10 PageID #: 2002
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`the extent these disclosures are affected by the time limits set forth in the Patent
`
`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
`
`evidentiary material on which such computation is based, including materials
`
`bearing on the nature and extent of injuries suffered, except that the disclosure of
`
`the computation of damages may be deferred until the time for Expert Disclosures
`
`if a party will rely on a damages expert.
`
`4.
`
`5.
`
`Protective Orders. The Court will enter the parties’ Agreed Protective Order.
`
`Discovery Limitations. The discovery in this cause is limited to the disclosures described
`
`in Paragraphs 1-3 together with:2
`
`(a)
`
`Interrogatories: Plaintiff may serve 25 interrogatories on each Defendant, and
`
`each Defendant may serve 25 interrogatories on Plaintiff.
`
`(b)
`
`Requests for Admission: Plaintiff may serve 40 requests for admissions on each
`
`Defendant, and each Defendant may serve 40 requests for admissions on
`
`Plaintiff. In addition, the parties will be permitted to serve a reasonable number
`
`of requests for admission that seek an admission as to (a) the authenticity of a
`
`particular document or thing, (b) the admissibility of a particular document or
`
`thing, and/or (c) whether a document qualifies as a “printed publication” or
`
`other prior art as of a certain date under 35 U.S.C. § 102.
`
`2 The limits in this Discovery Order are exclusive of any discovery permitted in connection with
`Uber’s Motion to Stay Pending Resolution of Standing Issue (D.I. 25) or any venue-related
`discovery permitted by the Court.
`
`4
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 5 of 10 PageID #: 2003
`
`(c)
`
`Depositions: Each party may take up to 40 total hours of deposition testimony
`
`of another party (inclusive of both 30(b)(1) and 30(b)(6) depositions).
`
`Depositions of experts, third parties, and inventors do not count against these
`
`limits. Absent a showing of good cause, each deposition will be limited to no
`
`more than 7 hours.
`
`(d)
`
`Expert Depositions: Each party is limited to 5 testifying expert witnesses.
`
`Plaintiff may depose each of Defendants’ experts for up to seven (7) hours per
`
`report. Each Defendant may depose each of Plaintiff’s experts for up to seven
`
`(7) hours per report.
`
`(e)
`
`Third-Party Discovery: The parties may conduct third-party discovery
`
`including depositions and document subpoenas. The total hours for these third-
`
`party depositions shall not exceed eighty (80) hours per party.
`
`(f)
`
`Any party may later move to modify these limitations for good cause.
`
`6.
`
`Privileged Information. There is no duty to disclose privileged documents or
`
`information. However, the parties are directed to meet and confer concerning privileged
`
`documents or information after the Status Conference. By the deadline set in the Docket
`
`Control Order, the parties shall exchange privilege logs identifying the documents or
`
`information and the basis for any disputed claim of privilege in a manner that, without
`
`revealing information itself privileged or protected, will enable the other parties to assess
`
`the applicability of the privilege or protection. Any party may move the Court for an order
`
`compelling the production of any documents or information identified on any other party’s
`
`privilege log. If such a motion is made, the party asserting privilege shall respond to the
`
`motion within the time period provided by Local Rule CV-7. The party asserting privilege
`
`5
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 6 of 10 PageID #: 2004
`
`shall then file with the Court within thirty (30) days of the filing of the motion to compel
`
`any proof in the form of declarations or affidavits to support their assertions of privilege,
`
`along with the documents over which privilege is asserted for in camera inspection.
`
`7.
`
`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
`
`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;
`
`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 required under
`
`this Order have taken place.
`
`8.
`
`Duty to Supplement. After disclosure is made pursuant to this Order, each party is under
`
`a duty to supplement or correct its disclosures immediately if the party obtains information
`
`on the basis of which it knows that the information disclosed was either incomplete or
`
`incorrect when made, or is no longer complete or true.
`
`9.
`
`Discovery Disputes.
`
`(a)
`
`Except in cases involving claims of privilege, any party entitled to receive
`
`disclosures (“Requesting Party”) may, after the deadline for making disclosures,
`
`serve upon a party required to make disclosures (“Responding Party”) a written
`
`statement, in letter form or otherwise, of any reason why the Requesting Party
`
`believes that the Responding Party’s disclosures are insufficient. The written
`
`statement shall list, by category, the items the Requesting Party contends should be
`
`produced. The parties shall promptly meet and confer. If the parties are unable to
`
`resolve their dispute, then the Responding Party shall, within fourteen (14) days
`
`6
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 7 of 10 PageID #: 2005
`
`after service of the written statement upon it, serve upon the Requesting Party a
`
`written statement, in letter form or otherwise, which identifies (1) the requested
`
`items that will be disclosed, if any, and (2) the reasons why any requested items
`
`will not be disclosed. The Requesting Party may thereafter file a motion to compel.
`
`(b)
`
`An opposed discovery related motion, or any response thereto, shall not exceed
`
`seven (7) pages. Attachments to a discovery related motion, or a response thereto,
`
`shall not exceed five (5) pages. No further briefing is allowed absent a request or
`
`order from the Court.
`
`(c)
`
`Prior to filing any discovery related motion, the parties must fully comply with 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, each
`
`party’s lead attorney (see Local Rule CV-11(a)) and local counsel shall meet and
`
`confer in person or by telephone, without the involvement or participation of other
`
`attorneys, in an effort to resolve the dispute without Court intervention.
`
`(d)
`
`Counsel shall promptly notify the Court of the results of that meeting by filing a
`
`joint report of no more than two (2) pages. Unless excused by the Court, each
`
`party’s lead attorney shall attend any discovery motion hearing set by the Court
`
`(though the lead attorney is not required to argue the motion).
`
`(e)
`
`Any change to a party’s lead attorney designation must be accomplished by motion
`
`and order.
`
`(f)
`
`Counsel are directed to contact the chambers of the undersigned for any “hot-line”
`
`disputes before contacting the Discovery Hotline provided by Local Rule CV-
`
`7
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 8 of 10 PageID #: 2006
`
`26(e). If the undersigned is not available, the parties shall proceed in accordance
`
`with Local Rule CV-26(e).
`
`10.
`
`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 the
`
`sufficiency of another party’s disclosures, or because another party has not made its
`
`disclosures. Absent court order to the contrary, a party is not excused from disclosure
`
`because there are pending motions to dismiss, to remand or to change venue.
`
`11.
`
`Filings. Only upon request from chambers shall counsel submit to the court courtesy
`
`copies of any filings.
`
`12.
`
`Proposed Stipulations by the Parties Regarding Discovery
`
`(a)
`
`A party who serves a subpoena in this matter on a third party shall immediately
`
`provide a copy to the other party. A party who receives documents from a third
`
`party pursuant to a subpoena will reproduce those documents to the other party
`
`within 3 business days. Where reproduction of documents within 7 business days
`
`is not possible, the party who received the documents will provide prompt notice
`
`to the other party and will work in good faith to resolve the issue on a case-by-case
`
`basis. The parties agree to consult with each other before scheduling any third-
`
`party deposition and to provide reasonable notice to allow for the coordination of
`
`depositions.
`
`(b)
`
`Notwithstanding Paragraph 6 of this Order, the parties are not required to identify
`
`on a privilege log any documents or information withheld as privileged, including
`
`but not limited to attorney-client communications or attorney work product, that
`
`were created on or after the filing of the Complaints in each of the respective cases.
`
`8
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 9 of 10 PageID #: 2007
`
`(c)
`
`The parties agree to accept service by email to all counsel of record for the party to
`
`be served. A party may serve all documents by e-mail on another party by sending
`
`the documents to the email group address designated by a party, or if no such group
`
`is designated, to the email addresses for all counsel of record for the party.
`
`Documents are timely served by email where the e-mail is sent by 11:59 p.m.
`
`Central Time on the date due. Per Local Rule CV 5(d), documents e-mailed after
`
`5:00 p.m. Central Time shall be deemed served on the following day for purposes
`
`of calculating a response date to the document served.
`
`(d)
`
`The parties agree that the protections provided in Federal Rule of Civil Procedure
`
`26(b)(4)(B) and (C) will apply equally to expert declarations as they do to expert
`
`reports, including both drafts of declarations and communications related to
`
`declarations. Pursuant to Federal Rule of Civil Procedure 26(b)(4), draft expert
`
`reports, notes, outlines, and any other writings leading up to an expert’s final
`
`report(s) are exempt from discovery. In addition, all communications with and all
`
`materials generated by an expert with respect to his or her work on this action are
`
`exempt from discovery unless relied upon by the expert in forming his or her
`
`opinions.
`
`(e)
`
`The parties will use best efforts to serve by email all documents filed under seal
`
`within two hours of filing.
`
`(f)
`
`ESI Discovery & Email. General production requests under Federal Rules of Civil
`
`Procedure 34 and 45, or compliance with a mandatory disclosure order of this court,
`
`shall not include email or other forms of electronic correspondence. The parties
`
`9
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 79 Filed 06/04/21 Page 10 of 10 PageID #: 2008
`
`will meet and confer regarding entry of a proposed E-Discovery Order concerning
`
`production of electronically stored information (ESI).
`
`13.
`
`Standing Orders. The parties and counsel are charged with notice of and are required to
`
`fully comply with each of the Standing Orders of this Court. Such are posted on the Court’s
`
`website at http://www.txed.uscourts.gov/?q=court-annexed-mediation-plan.
`
` The
`
`substance of some such orders may be included expressly within this Discovery Order,
`
`while others (including the Court’s Standing Order Regarding Protection of 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 binding
`
`on the parties and counsel, regardless of whether they are expressly included herein or
`
`made a part hereof by reference.
`
`10
`
`

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