`Case 2:22-cv-00263-JRG-RSP Document 26-1 Filed 12/01/22 Page 1of12PagelD#: 644
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`EXHIBIT A
`EXHIBIT A
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
`Case No. 2:22-cv-00263-JRG-RSP
`§
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`§
`JURY TRIAL DEMANDED
`§
`§
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`§
`§
`§
`§
`§
`§
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`ET AL.,
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`Defendants.
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`Case 2:22-cv-00263-JRG-RSP Document 26-1 Filed 12/01/22 Page 2 of 12 PageID #: 645
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`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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`(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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`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.1 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,2 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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`1 All expert reports should be written such that the report is organized with discrete paragraph
`numbers.
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`2 The Court anticipates that this disclosure requirement will obviate the need for requests for
`production.
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`2
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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 thirty (30) days after source code for each Accused
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`Instrumentality is produced by the opposing party. Thereafter, the party
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`claiming patent infringement shall identify, on an element-by-element basis
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`for each asserted claim, what source code of each Accused Instrumentality
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`allegedly 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 thirty (30) days after receipt
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`of a Paragraph 3(a)(i) disclosure, supplemental “Invalidity Contentions”
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`that amend only those claim elements identified as software limitations by
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`the 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
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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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`3
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`4.
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`5.
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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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`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:3
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`(a)
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`(b)
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`Interrogatories: Plaintiff may serve a total of 25 interrogatories on Defendants,
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`and Defendants may serve a total of 25 interrogatories on Plaintiff.
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`Requests for Admission: Plaintiff may serve a total of 40 requests for
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`admissions on Defendants, and Defendants may serve a total of 40 requests for
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`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)
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`the authenticity of a particular document or thing, (b) the admissibility of a
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`particular document or thing, and/or (c) whether a document qualifies as a
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`“printed publication” or other prior art as of a certain date under 35 U.S.C. §
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`102.
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`(c)
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`Depositions: Plaintiff may take up to fifty (50) total hours of deposition
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`testimony of Defendants (inclusive of both 30(b)(1) and 30(b)(6) depositions).
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`Defendants may take up to fifty (50) total hours of deposition testimony of
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`Plaintiff (inclusive of both 30(b)(1) and 30(b)(6) depositions). Depositions of
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`experts, third parties, and inventors do not count against these limits. Absent a
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`showing of good cause, each deposition will be limited to no more than 7 hours.
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`3 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.
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`4
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`(d)
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`Expert Depositions: Each party is limited to 4 testifying expert witnesses.
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`Plaintiff may depose each of Defendants’ experts for up to seven (7) hours per
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`report offered by the expert, but in any event, for a total of no more than fourteen
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`(14) hours per expert. Defendants may depose each of Plaintiff’s experts for up
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`to seven (7) hours per report offered by the expert, but in any event, for a total
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`of no more than fourteen (14) hours per expert.
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`(e)
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`Third-Party Discovery: The parties may conduct third-party discovery
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`including depositions and document subpoenas. The total hours for these third-
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`party depositions shall not exceed sixty (60) hours per party.
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`(f)
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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 thirty (30) days of the filing of the motion to compel
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`any proof in the form of declarations or affidavits to support their assertions of privilege,
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`along with the documents over which privilege is asserted for in camera inspection.
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`5
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`However, if the party asserting privilege seeks an in camera review by the Court, such
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`party shall first obtain leave from the Court prior to delivery of documents to the Court.
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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 fourteen (14) days
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`after service of the written statement upon it, serve upon the Requesting Party a
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`written statement, in letter form or otherwise, which identifies (1) the requested
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`items that will be disclosed, if any, and (2) the reasons why any requested items
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`will not be 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
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`seven (7) pages. Attachments to a discovery related motion, or a response thereto,
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`shall not exceed five (5) pages. No further briefing is allowed absent a request or
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`order from the 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 (2) pages. Unless excused by the Court, each
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`party’s lead attorney shall attend any discovery motion hearing set by the Court
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`(though 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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`A party who serves a subpoena in this matter on a third party shall immediately
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`provide a copy to the other party. A party who receives documents from a third
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`party pursuant to a subpoena will reproduce those documents to the other party
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`within 3 business days. Where reproduction of documents within 3 business days
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`is not possible, the party who received the documents will provide prompt notice
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`to the other party and will work in good faith to resolve the issue on a case-by-case
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`basis. The parties agree to consult with each other before scheduling any third-
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`party deposition and to provide reasonable notice (and no less than 7 business days’
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`notice) to allow for the coordination of depositions.
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`(b)
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`Pursuant to Federal Rule of Evidence 502(d), production of materials covered by
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`the attorney-client privilege or work-product protection is not a waiver in the
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`pending case or any other federal or state proceeding. For example, the mere
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`production of privilege or work-product protected documents in this case as part of
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`a mass production is not itself a waiver in this case or any other federal or state
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`proceeding. A producing party may assert privilege or work product protection over
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`any produced documents after becoming aware of the production by notifying the
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`receiving party of the assertion of privilege or protection in writing. For any
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`document produced for which notice is given that it intends to assert privilege or
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`work-product protection at the producing party’s request, the receiving party shall
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`immediately return or destroy the produced materials. The producing party will
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`provide a privilege log in accordance with Paragraph 6. Notwithstanding Paragraph
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`6 of this Order, the parties are not required to identify on a privilege log any
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`documents or information withheld as privileged, including but not limited to
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`attorney-client communications or attorney work product, that were created on or
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`after the filing of the Complaint in AGIS Software Development LLC v. Samsung
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`Electronics et al., 2-19-cv-00362 (E.D. Tex.).
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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. A party may serve all documents by e-mail on another party by sending
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`the documents to the email group address designated by a party, or if no such group
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`is designated, to the email addresses for all counsel of record for the party.
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`Documents are timely served by email where the e-mail is sent by 11:59 p.m.
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`Central Time on the date due. Per Local Rule CV 5(d), documents e-mailed after
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`5:00 p.m. Central Time shall be deemed served on the following day for purposes
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`of calculating a response date to the document served.
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`(d)
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`The parties agree that the protections provided in Federal Rule of Civil Procedure
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`26(b)(4)(B) and (C) will apply equally to expert declarations as they do to expert
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`reports, including both drafts of declarations and communications related to
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`declarations. Pursuant to Federal Rule of Civil Procedure 26(b)(4), draft expert
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`reports, notes, outlines, and any other writings leading up to an expert’s final
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`report(s) are exempt from discovery. In addition, all communications with and all
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`materials generated by an expert with respect to his or her work on this action are
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`exempt from discovery unless relied upon by the expert in forming his or her
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`opinions. If an expert produces a report, the expert must produce his or her final
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`report and all materials on which he or she relied, unless such materials have
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`previously been produced in the case and are identified by production number in
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`the report. No discovery can be taken from any consulting expert except to the
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`extent that consulting expert has provided information, opinions, or other materials
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`to a testifying expert, who then relies upon such information, opinions, or other
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`materials in forming his or her final report, declaration, trial or deposition
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`testimony, or any opinion in this case. Materials, communications, and other
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`information exempt from discovery under this Paragraph shall be treated as attorney
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`work product for the purposes of this litigation.
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`(e)
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`The parties will use best efforts to serve by email all documents filed under seal
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`within two hours of filing.
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`(f)
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`ESI Discovery & Email. General production requests under Federal Rules of Civil
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`Procedure 34 and 45, or compliance with a mandatory disclosure order of this court,
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`shall not include email or other forms of electronic correspondence. The parties
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`will meet and confer regarding entry of a proposed E-Discovery Order concerning
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`production of electronically stored information (ESI).
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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.
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` The
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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
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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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`11
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