Case 2:21-cv-00186-JRG-RSP Document 39 Filed 02/01/22 Page 1 of 10 PageID #: 530
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`JAWBONE INNOVATIONS, LLC,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO. LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Defendants.
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`Case No. 2:21-cv-00186-JRG-RSP
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`§
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`DISCOVERY ORDER
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`Before the Court is the Joint Motion for Entry of Agreed Discovery Order. Dkt. No. 36.
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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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`(c)
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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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`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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`1
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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).
`Additional Disclosures. Without awaiting a discovery request,1 each party will make the
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`3.
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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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`1 The Court anticipates that this disclosure requirement will obviate the need for requests for
`production.
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`2
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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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`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 evidentiary
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`material on which such computation is based, including materials bearing on the
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`nature and extent of injuries suffered, except that the disclosure of the computation
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`of damages may be deferred until the time for Expert Disclosures if a party will rely
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`on a damages expert.
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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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`For purposes of this section (Section 5 – Discovery Limitations), Defendants
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`Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. shall count
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`3
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`4.
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`5.
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`as a single “Defendant Group.”
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`(b)
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`Interrogatories: Plaintiff may serve thirty (30) interrogatories on each Defendant
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`Group, and each Defendant Group may serve thirty (30) interrogatories on Plaintiff.
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`(c)
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`Requests for Admission: Plaintiff may serve forty (40) requests for admissions on
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`each Defendant Group, and each Defendant Group may serve forty (40) requests
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`for admissions on Plaintiff. In addition, the parties will be permitted to serve a
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`reasonable number of requests for admission that seek an admission as to (a) the
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`authenticity of a particular document or thing, (b) the admissibility of a particular
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`document or thing, and/or (c) whether a document qualifies as a “printed
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`publication” or other prior art as of a certain date under 35 U.S.C. § 102. The parties
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`shall work together in good faith to agree on a stipulation as to the authenticity of
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`their own documents to avoid the service of large numbers of requests for admission
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`relating
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`to authenticity, admissibility, and/or qualification as a “printed
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`publication”.
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`(d)
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`Depositions of Parties and Party-Affiliated Witnesses: Plaintiff may take up to fifty
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`(50) total hours of deposition testimony of each Defendant Group (inclusive of both
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`30(b)(1) and 30(b)(6) depositions). Defendant Group may take up to fifty (50) hours
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`of deposition testimony of Plaintiff (inclusive of both 30(b)(1) and 30(b)(6)
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`deposition). Depositions of experts, inventors, and third parties do not count against
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`these limits. Absent a showing of good cause, each deposition will be limited to no
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`more than seven (7) hours pursuant to Rule 30(d)(1). Should a single witness be
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`designated pursuant to Rule 30(b)(6) to address voluminous noticed deposition
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`topics, the seven-hour time limit under 30(d)(1) will not apply to such witness, but
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`such deposition may still not exceed seven hours in one day, absent agreement of
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`the parties. In-person depositions of witnesses shall be taken in the city where the
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`witness resides or has a principal place of employment, or at a mutually agreed-
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`upon location; virtual depositions (e.g., Zoom) shall be taken during regular
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`business hours of the witness.
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`(e)
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`Inventor Depositions: Separate and in addition to the time provided for the
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`depositions of the parties and party-affiliated witnesses, Plaintiff and each
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`Defendant Group may take up to seven (7) hours of deposition of each inventor, in
`their personal capacity, who are named on the face of the Asserted Patents.2 The
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`parties will work together in good faith to agree on an appropriate time limit for the
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`personal deposition of Gregory Burnett, with a minimum of seven (7) hours and a
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`maximum of fourteen (14) hours.
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`(f)
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`Non-Party, Non-Inventor Fact Depositions: The Plaintiff may take up to seventy
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`(70) hours of non-party, non-inventor fact depositions and each Defendant Group
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`may take up to seventy (70) hours of non-party, non-inventor fact depositions.
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`(g)
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`Discovery of Expert Materials: The parties agree to the limitations of Rule 26 of
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`the Federal Rules of Civil Procedure (“Rule 26”) with regard to the discovery of
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`expert materials. To the extent not already covered by Rule 26, the parties further
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`agree to the following limitations regarding the discovery of expert material.
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`i.
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`Testifying experts shall not be subject to discovery on any draft of their report
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`or declarations in this case and such draft reports, declarations, notes, outlines,
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`or any other writings leading up to an issued report or filed declaration in this
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`litigation are exempt from discovery.
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`ii.
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`In addition, all communications to and from a testifying expert, and all materials
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`2 The Asserted Patents are U.S. Patent Nos. 8,019,091, 8,280,072, 8,503,691, 11,122,357,
`10,779,080, 8,467,543, and 7,246,058.
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`generated by a testifying expert with respect to that person’s work in this case,
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`are exempt from discovery unless relied upon by the expert in forming any
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`opinions in this litigation.
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`(h)
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`Expert Witnesses: Each Defendant Group is limited to six (6) testifying expert
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`witnesses. Plaintiff is limited to six (6) testifying expert witnesses.
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`(i)
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`Expert Depositions: Each expert may be deposed for up to seven hours for each
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`report (e.g., infringement, invalidity, or damages) on which the expert has offered
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`an opinion. For example, an expert providing a report or reports regarding
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`infringement and validity may be deposed for fourteen hours. Experts, however,
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`shall not be deposed for more than seven hours in one day unless otherwise agreed
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`to by the parties. All expert testimony shall occur in English.
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`(j)
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`Privilege Logs: No party is required to log privileged materials dated after the filing
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`date of the complaint in this case (May 27, 2021).
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`(k)
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`Good cause for modification: Any party may later move to modify these limitations
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`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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`9.
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`incorrect when made or is no longer complete or true.
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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.
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`(a)
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`The parties agree that they will serve each other with copies of any subpoena or
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`deposition notice directed to a third-party. A party receiving documents from a third
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`party will provide copies of those documents to each other party within three (3)
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`business days of receiving those documents. The parties agree to consult with each
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`other before scheduling any third-party deposition and to provide at least three (3)
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`business days’ notice of the selected court reporting agency to allow for the
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`coordination of remote depositions, including the logistics of soft copy exhibits.
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`(b)
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`The parties agree that, unless good cause is shown, the parties shall not be required
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`to log any privileged documents created on or after May 27, 2021.
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`(c)
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`The parties agree to accept service by email to all counsel of record for the party to
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`be served.
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`(d)
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`The parties will submit a proposed e-discovery order within thirty (30) days after
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`the Scheduling Conference.
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`(e)
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`The parties will submit a proposed Order Focusing Patent Claims and Prior Art to
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`Reduce Costs by February 10, 2022.
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`(f)
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`Pursuant to Federal Rule of Evidence 502(d), inadvertent production of materials
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`covered by the attorney-client privilege or work-product protection is not a waiver
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`in this or any other federal or state proceeding. In case of inadvertent production,
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`at the producing party’s request, the receiving party shall immediately return or
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`destroy the inadvertently produced materials. The producing party will provide a
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`privilege log in accordance with Paragraph 6.
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`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/?q=court-annexed-mediation-plan. The substance
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`of some such orders may be included expressly within this Discovery Order, while others
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`(including
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`the Court’s Standing Order Regarding Protection of Proprietary
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`and/orConfidential 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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`10
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