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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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`ORDER FOCUSING PATENT CLAIMS
`AND PRIOR ART TO REDUCE COSTS
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`The Court 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 the date set for completion of claim construction discovery pursuant to P.R. 4-
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`4, the patent claimant shall serve a Preliminary Election of Asserted Claims, which shall assert no
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`more than ten claims from each patent and not more than a total of 42 claims. Not later than 28
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`days after service of the Preliminary Election of Asserted Claims, the patent defendant shall
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`serve a Preliminary Election of Asserted Prior Art, which shall assert no more than twelve prior
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`art references1 against each patent and not more than a total of 50 references.
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`Case 2:21-cv-00186-JRG-RSP Document 49 Filed 05/11/22 Page 2 of 2 PageID #: 629
`No later than 28 days before the service of expert reports by the party with the
`3.
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`burden of proof on an issue, the patent claimant shall serve a Final Election of Asserted Claims,
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`which shall identify no more than five asserted claims per patent from among the ten previously
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`identified claims and no more than a total of 16 claims. By the date set for the service of expert
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`reports by the party with the burden of proof on an issue, the patent defendant shall serve a Final
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`Election of Asserted Prior Art, which shall identify no more than six asserted prior art references
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`per patent from among the twelve prior art references previously identified for that particular patent
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`and no more than a total of 25 references. For purposes of this Final Election of Asserted Prior
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`Art, each obviousness combination counts as a separate prior art reference.
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`Modification of this Order
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`4.
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`Subject to Court approval, the parties may modify this Order by
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`agreement, but should endeavor to limit the asserted claims and prior art references to the greatest
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`extent possible. Absent agreement, post-entry motions to modify this Order’s numerical limits on
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`asserted claims and prior art references must demonstrate good cause warranting the modification.
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`Motions to modify other portions of this Order are committed to the sound discretion of the Court.2
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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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`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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