Case 2:22-cv-00486-JRG Document 58 Filed 08/09/23 Page 1 of 11 PageID #: 721
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
`
`
`
`v.
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`VOLKSWAGEN AG,
`
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`Defendant.
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`
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`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
`
`
`
`v.
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`BAYERISCHE MOTOREN WERKE AG,
`
`
`Defendant.
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`
`
`
`
`
`Case No. 2:22-cv-00486-JRG-RSP
`(Lead Case)
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`JURY TRIAL DEMANDED
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`
`
`
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`Case No. 2:22-cv-00496-JRG-RSP
`(Member Case)
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`JURY TRIAL DEMANDED
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`
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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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`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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`2
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`(c)
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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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`any settlement agreements relevant to the subject matter of this action; and
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`(g)
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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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`1 All expert reports should be written such that the report is organized with discrete paragraph
`numbers.
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`3
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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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`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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`2 The Court anticipates that this disclosure requirement will obviate the need for requests for
`production.
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`4
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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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`Definitions. For purposes of this Discovery Order:
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`1.
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`2.
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`“Defendants” mean Bayerische Motoren Werke AG and Volkswagen AG.
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`“Plaintiff” means Plaintiff NorthStar Systems LLC.
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`(b)
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`Interrogatories: Plaintiff may serve 25 interrogatories on each Defendant, each
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`Defendant may individually serve 15 interrogatories on Plaintiff, and the
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`Defendants may collectively serve 15 common interrogatories on Plaintiff.
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`(c)
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`Requests for Admission: Plaintiff may serve 40 requests for admissions on each
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`Defendant, each Defendant may individually serve 20 requests for admissions on
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`Plaintiff, and the Defendants may collectively serve 20 common requests for
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`admissions on Plaintiff. In addition, the parties will be permitted to serve unlimited
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`requests for admissions for authentication of documents and things. Such requests
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`5
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`4.
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`5.
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`for admission as to authenticity and/or admissibility will be clearly denoted as such
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`and served separately from other requests for admission.
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`(d)
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`Fact Depositions: Plaintiff may take up to 42 total hours of deposition testimony of
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`each Defendant and their affiliates (inclusive of both 30(b)(1) and 30(b)(6)
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`depositions). The Defendants may collectively take up to 60 total hours of
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`deposition testimony of Plaintiff (inclusive of both 30(b)(1) and 30(b)(6)
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`depositions). Plaintiff may take no more than 70 hours of third-party depositions.
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`Defendants may collectively take no more than 70 hours of third-party depositions.
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`1.
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`Depositions on written questions of custodians of business records for third
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`parties shall not count towards the foregoing limits.
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`2.
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`If a single witness is designated for voluminous 30(b)(6) topics, the parties
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`will confer on the default 7-hour limit for that witness.
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`3.
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`To the extent a party designates more than 3 separate deponents to testify in
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`response to a Rule 30(b)(6) deposition notice, the opposing party shall
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`receive 3 additional hours of total deposition time for each deponent
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`exceeding the 3-deponent limit.
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`(e)
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`Expert Depositions: Each party is limited to 4 expert witnesses who may testify at
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`trial. Each expert may be deposed for up to seven (7) hours per report. To the extent
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`supplemental reports are served, any additional deposition time shall be addressed
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`either by agreement or order of the Court. An “expert witness” is a witness
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`disclosed pursuant to Paragraph 2 of this Order.
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`(f)
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`Interpreters and Translators. Any deposition requiring the use of an interpreter or
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`translator will be counted in an amount equal to 75% of the actual time incurred,
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`6
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`such that 10 hours of translated or interpreted deposition time would count as 7.5
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`hours toward the deposition time limits in this Paragraph 5.
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`(g)
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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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`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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`7
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`Case 2:22-cv-00486-JRG Document 58 Filed 08/09/23 Page 7 of 11 PageID #: 727
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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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`8
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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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`9
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`Case 2:22-cv-00486-JRG Document 58 Filed 08/09/23 Page 9 of 11 PageID #: 729
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`(a)
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`Production of Materials Obtained Via Third-Party Subpoena. The parties
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`agree that they will serve each other with copies of any subpoena or deposition
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`notice directed to a third party immediately after serving the third party. A party
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`receiving documents from a third party will provide copies of those documents to
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`another party within 3 business days. Where reproduction of documents within 3
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`business days is not possible, the party who received the documents will provide
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`prompt notice to the other parties of receipt of the documents and will work in good
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`faith to resolve the issue on a case-by-case basis.
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`(b)
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`Third-Party Deposition. A party scheduling a deposition of a third party shall
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`provide notice of the deposition date to all parties by at least fourteen days prior to
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`the deposition or at the earliest reasonable time possible after a deposition time has
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`been agreed upon, whichever is sooner.
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`(c)
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`Privilege Log Limitations. The parties agree that the parties shall not be required
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`to log any privileged documents created on or after the filing date of the Complaint
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`in this action.
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`(d)
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`Service by Electronic Mail. The parties agree to accept service by email or ECF
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`to all counsel of record for the party to be served. A party may serve all documents
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`by e-mail on another party by sending the documents to the email group address
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`designated by a party, or if no such group is designated, to the email address(es) for
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`all counsel of record for the party. Documents are timely served by email where the
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`e-mail is sent by 11:59 p.m. Central Time on the date due. Per Local Rule CV-5(d),
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`documents e-mailed after 5:00 p.m. Central Time shall be deemed served on the
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`following day for purposes of calculating a response date to the document served.
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`10
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`Case 2:22-cv-00486-JRG Document 58 Filed 08/09/23 Page 10 of 11 PageID #: 730
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`(e)
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`Expert Discovery. The parties agree that drafts of any expert report, declaration,
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`or disclosure, including drafts of reports, as well as any notes made by experts, are
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`protected work product and shall not be discoverable regardless of the form of the
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`draft and notes, unless the expert relies on the aforementioned as a basis for his or
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`her opinion and the information contained is not otherwise disclosed pursuant to
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`Paragraph 2 of this Order. The parties further agree that communications of any
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`form relating to this action between (a) a party to these actions, a representative of
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`a party, or the parties’ attorneys and (b) the parties’ expert(s), whether testifying or
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`non-testifying, are protected work product and shall not be discoverable, except to
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`the extent the communications identify facts, data, or assumptions that the parties’
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`attorneys provided and that the expert(s) relied upon in forming any opinions
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`expressed or to be expressed in an expert report or trial testimony and are not
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`otherwise disclosed pursuant to Paragraph 2 of this Order.
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`(f)
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`E-Discovery Order. The Parties will submit a proposed e-discovery order. The
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`Parties will work in good faith to submit this order within thirty (30) days after the
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`Scheduling Conference.
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`(g)
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`Inadvertent Disclosure. Pursuant to Federal Rule of Evidence 502(d), inadvertent
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`production of materials covered by the attorney-client privilege or work-product
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`protection is not a waiver in this or any other federal or state proceeding. In case of
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`inadvertent production, at the producing party’s request, the receiving party shall
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`immediately return or destroy the inadvertently produced materials. The producing
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`party will provide a privilege log in accordance with Paragraph 6.
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`11
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`(h)
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`Privacy. If discovery is sought and needed from non-U.S. sources, the parties agree
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`a disclosing party may redact information to comply with the EU General Data
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`Protection Regulation (“GDPR”), or the German Federal Data Protection Act of 30
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`June 2017 (“BDSG”), and any other applicable privacy or data protection laws. The
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`party redacting information pursuant to this paragraph shall produce a log
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`disclosing, on a document-by-document basis, (1) the type of information withheld
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`and (2) the applicable privacy or data protection law preventing its disclosure.
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`Nothing in this stipulation precludes a party’s ability to challenge a redaction as
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`improper.
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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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`12
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 8th day of August, 2023.
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