Case 2:22-cv-00486-JRG Document 91 Filed 02/26/24 Page 1 of 7 PageID #: 1519
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`VOLKSWAGEN AG,
`
`
`Defendant.
`
`
`
`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`BAYERISCHE MOTOREN WERKE AG,
`
`
`Defendant.
`
`
`
`
`
`
`
`
`Case No. 2:22-cv-00486-JRG (Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`Case No. 2:22-cv-00496-JRG (Member Case)
`
`JURY TRIAL DEMANDED
`
`SECOND AMENDED DOCKET CONTROL ORDER
`
`In accordance with the Scheduling Conference held in this case on July 20, 2023, it is
`
`hereby ORDERED that the following schedule of deadlines is in effect until further order of this
`
`Court:
`
`Original Date
`
`Amended Date
`
`Event
`
`November
`2024
`
`18,
`
`7 days before
`Jury Selection
`
`10 days before
`Jury Selection
`
`
`
`
`
`
`
`*Jury Selection – 9:00 a.m. in Marshall, Texas
`
`*Defendant to disclose final invalidity theories,
`final prior art references/combinations, and final
`equitable defenses.
`
`*Plaintiff to disclose final election of Asserted
`Claims.
`
`- 2 -
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`

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`Case 2:22-cv-00486-JRG Document 91 Filed 02/26/24 Page 2 of 7 PageID #: 1520
`
`Original Date
`
`Amended Date
`
`Event
`
`October 21, 2024
`
`
`
`October 15, 2024
`
`October 7, 2024
`
`
`
`
`
`October 7, 2024
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`
`
`September
`2024
`
`30,
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`
`
`September
`2024
`
`23,
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`
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`*If a juror questionnaire is to be used, an editable
`(in Microsoft Word format) questionnaire shall
`be jointly submitted to the Deputy Clerk in
`Charge by this date.1
`
`*Pretrial Conference – 9:00 a.m. in Marshall,
`Texas before Judge Rodney Gilstrap
`
`*Notify Court of Agreements Reached During
`Meet and Confer
`
`The parties are ordered to meet and confer on
`any outstanding objections or motions in limine.
`The parties shall advise the Court of any
`agreements reached no later than 1:00 p.m. three
`(3) business days before the pretrial conference.
`
`*File Joint Pretrial Order, Joint Proposed Jury
`Instructions, Joint Proposed Verdict Form,
`Responses to Motions in Limine, Updated
`Exhibit Lists, Updated Witness Lists, and
`Updated Deposition Designations
`
`*File Notice of Request for Daily Transcript or
`Real Time Reporting.
`
`If a daily transcript or real time reporting of court
`proceedings is requested for trial, the party or
`parties making said request shall file a notice
`with the Court and e-mail the Court Reporter,
`Shawn
`McRoberts,
`at
`shawn_mcroberts@txed.uscourts.gov.
`
`File Motions in Limine
`
`The parties shall limit their motions in limine to
`issues that if improperly introduced at trial
`would be so prejudicial that the Court could not
`alleviate the prejudice by giving appropriate
`instructions to the jury.
`
`
`1 The Parties are referred to the Court’s Standing Order Regarding Use of Juror Questionnaires in
`Advance of Voir Dire.
`
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`

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`Case 2:22-cv-00486-JRG Document 91 Filed 02/26/24 Page 3 of 7 PageID #: 1521
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`Original Date
`
`Amended Date
`
`Event
`
`September
`2024
`
`September
`2024
`
`September
`2024
`
`23,
`
`16,
`
`3,
`
`
`
`
`
`
`
`August 26, 2024
`
`
`
`August 12, 2024
`
`
`
`August 12, 2024
`
`
`
`Serve Objections
`Disclosures
`
`to Rebuttal
`
`Pretrial
`
`Serve Objections to Pretrial Disclosures; and
`Serve Rebuttal Pretrial Disclosures
`
`(Witness List,
`Serve Pretrial Disclosures
`Deposition Designations, and Exhibit List) by
`the Party with the Burden of Proof
`
`*Response to Dispositive Motions (including
`Daubert Motions). Responses to dispositive
`motions that were filed prior to the dispositive
`motion deadline, including Daubert Motions,
`shall be due in accordance with Local Rule CV-
`7(e), not to exceed the deadline as set forth in
`this Docket Control Order.2 Motions for
`Summary Judgment shall comply with Local
`Rule CV-56.
`
`*File Motions to Strike Expert Testimony
`(including Daubert Motions)
`
`No motion to strike expert testimony (including
`a Daubert motion) may be filed after this date
`without leave of the Court.
`
`*File Dispositive Motions
`
`No dispositive motion may be filed after this
`date without leave of the Court.
`
`Motions shall comply with Local Rule CV-56
`and Local Rule CV-7. Motions to extend page
`limits will only be granted in exceptional
`circumstances.
` Exceptional circumstances
`require more than agreement among the parties.
`
`
`2 The parties are directed to Local Rule CV-7(d), which provides in part that “[a] party’s failure to
`oppose a motion in the manner prescribed herein creates a presumption that the party does not
`controvert the facts set out by movant and has no evidence to offer in opposition to the motion.”
`If the deadline under Local Rule CV 7(e) exceeds the deadline for Response to Dispositive
`Motions, the deadline for Response to Dispositive Motions controls.
`
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`

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`Case 2:22-cv-00486-JRG Document 91 Filed 02/26/24 Page 4 of 7 PageID #: 1522
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`Original Date
`
`Amended Date
`
`Event
`
`August 5, 2024
`
`July 22, 2024
`
`July 1, 2024
`
`July 1, 2024
`
`June 6, 2024
`
`May 16, 2024
`
`May 2, 2024
`
`April 25, 2024
`
`April 18, 2024
`
`April 4, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`April 4, 2024
`
`
`
`March 21, 2024
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`March 14, 2024
`
`
`
`
`
`Deadline to Complete Expert Discovery
`
`Serve Disclosures for Rebuttal Expert Witnesses
`
`Deadline to Complete Fact Discovery and File
`Motions to Compel Discovery
`
`Serve Disclosures for Expert Witnesses by the
`Party with the Burden of Proof
`
`Comply with P.R. 3-7 (Opinion of Counsel
`Defenses)
`
`*Claim Construction Hearing – 9:00 a.m. in
`Marshall, Texas before Judge Rodney Gilstrap
`
`*Comply with P.R. 4-5(d)
`Construction Chart)
`
`(Joint Claim
`
`*Comply with P.R. 4-5(c) (Reply Claim
`Construction Brief)
`
`Comply with P.R. 4-5(b) (Responsive Claim
`Construction Brief)
`
`Comply with P.R. 4-5(a) (Opening Claim
`Construction Brief) and Submit Technical
`Tutorials (if any)
`
`Good cause must be shown to submit technical
`tutorials after the deadline to comply with P.R.
`4-5(a).
`
`Deadline to Substantially Complete Document
`Production and Exchange Privilege Logs
`
`Counsel are expected to make good faith efforts
`to produce all required documents as soon as
`they are available and not wait until the
`substantial completion deadline.
`
`Comply with P.R. 4-4 (Deadline to Complete
`Claim Construction Discovery)
`
`File Response to Amended Pleadings
`
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`

`

`Case 2:22-cv-00486-JRG Document 91 Filed 02/26/24 Page 5 of 7 PageID #: 1523
`
`Original Date
`
`Amended Date
`
`Event
`
`February
`2024
`
`29,
`
`
`
`*File Amended Pleadings
`
`It is not necessary to seek leave of Court to
`amend pleadings prior to this deadline unless the
`amendment seeks to assert additional patents.
`
`February
`2024
`
`22,
`
`February 29, 2024
`
`Comply with P.R. 4-3 (Joint Claim Construction
`Statement)
`
`February 1, 2024
`
`January 11, 2024
`
`
`
`
`
`August 31, 2023 October 2, 2023 (BMW)
`
`October 2, 2023 (VW –
`see Dkt. 35)
`
`August 31, 2023 October 2, 2023 (BMW)
`
`October 2, 2023 (VW –
`see Dkt. 35)
`
`August 10, 2023
`
`
`
`Comply with P.R. 4-2 (Exchange Preliminary
`Claim Constructions)
`
`Comply with P.R. 4-1 (Exchange Proposed
`Claim Terms)
`
`Comply with Standing Order Regarding
`Subject-Matter Eligibility Contentions3
`
`Comply with P.R. 3-3 & 3-4 (Invalidity
`Contentions)
`
`*File Proposed Protective Order and Comply
`with Paragraphs 1 & 3 of the Discovery Order
`(Initial and Additional Disclosures)
`
`The Proposed Protective Order shall be filed as
`a separate motion with the caption indicating
`whether or not the proposed order is opposed in
`any part.
`
`
`3_http://www.txed.uscourts.gov/sites/default/files/judgeFiles/EDTX%20Standing%20Order%20
`Re%20Subject%20Matter%20Eligibility%20Contentions%20.pdf
`[https://perma.cc/RQN2-
`YU5P]
`
`- 6 -
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`

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`Case 2:22-cv-00486-JRG Document 91 Filed 02/26/24 Page 6 of 7 PageID #: 1524
`
`Original Date
`
`Amended Date
`
`Event
`
`August 3, 2023
`
`
`
`*File Proposed Docket Control Order and
`Proposed Discovery Order
`
`The Proposed Docket Control Order and
`Proposed Discovery Order shall be filed as
`separate motions with the caption indicating
`whether or not the proposed order is opposed in
`any part.
`
`July 27, 2023
`
`
`
`Join Additional Parties
`
`July 19, 2023
`
`July 20, 2023
`(BMW – see Dkt. 33)
`
`July 31, 2023 (VW
`– see Dkt. 35)
`
`Comply with P.R. 3-1 & 3-2 (Infringement
`Contentions)
`
`(*) indicates a deadline that cannot be changed without showing good cause. Good cause is
`not shown merely by indicating that the parties agree that the deadline should be changed.
`
`ADDITIONAL REQUIREMENTS
`
`Mediation: While certain cases may benefit from mediation, such may not be appropriate
`for every case. The Court finds that the Parties are best suited to evaluate whether mediation will
`benefit the case after the issuance of the Court’s claim construction order. Accordingly, the Court
`ORDERS the Parties to file a Joint Notice indicating whether the case should be referred for
`mediation within fourteen days of the issuance of the Court’s claim construction order. As a
`part of such Joint Notice, the Parties should indicate whether they have a mutually agreeable
`mediator for the Court to consider. If the Parties disagree about whether mediation is appropriate,
`the Parties should set forth a brief statement of their competing positions in the Joint Notice.
`
`Summary Judgment Motions, Motions to Strike Expert Testimony, and Daubert
`Motions: For each motion, the moving party shall provide the Court with two (2) hard copies of
`the completed briefing (opening motion, response, reply, and if applicable, sur-reply), excluding
`exhibits, in D-three-ring binders, appropriately tabbed. All documents shall be single-sided and
`must include the CM/ECF header. These copies shall be delivered to the Court within three
`(3) business days after briefing has completed. For expert-related motions, complete digital copies
`of the relevant expert report(s) and accompanying exhibits shall be submitted on a single flash
`drive to the Court. Complete digital copies of the expert report(s) shall be delivered to the Court
`no later than the dispositive motion deadline.
`
`Indefiniteness: In lieu of early motions for summary judgment, the parties are directed to
`include any arguments related to the issue of indefiniteness in their Markman briefing, subject to
`the local rules’ normal page limits.
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`

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`Case 2:22-cv-00486-JRG Document 91 Filed 02/26/24 Page 7 of 7 PageID #: 1525
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`Lead Counsel: The Parties are directed to Local Rule CV-11(a)(1), which provides that
`
`“[o]n the first appearance through counsel, each party shall designate a lead attorney on the
`pleadings or otherwise.” Additionally, once designated, a party’s lead attorney may only be
`changed by the filing of a Motion to Change Lead Counsel and thereafter obtaining from the Court
`an Order granting leave to designate different lead counsel.
`
`Motions for Continuance: The following excuses will not warrant a continuance nor
`justify a failure to comply with the discovery deadline:
`
`(a)
`
`The fact that there are motions for summary judgment or motions to dismiss pending;
`
`(b)
`
`The fact that one or more of the attorneys is set for trial in another court on the same day,
`unless the other setting was made prior to the date of this order or was made as a special
`provision for the parties in the other case;
`
`(c)
`
`The failure to complete discovery prior to trial, unless the parties can demonstrate that it
`was impossible to complete discovery despite their good faith effort to do so.
`
`Amendments to the Docket Control Order (“DCO”): Any motion to alter any date on
`the DCO shall take the form of a motion to amend the DCO. The motion to amend the DCO shall
`include a proposed order that lists all of the remaining dates in one column (as above) and the
`proposed changes to each date in an additional adjacent column (if there is no change for a date
`the proposed date column should remain blank or indicate that it is unchanged). In other words,
`the DCO in the proposed order should be complete such that one can clearly see all the remaining
`deadlines and the changes, if any, to those deadlines, rather than needing to also refer to an earlier
`version of the DCO.
`
`Proposed DCO: The Parties’ Proposed DCO should also follow the format described
`above under “Amendments to the Docket Control Order (‘DCO’).”
`
`Joint Pretrial Order: In the contentions of the Parties included in the Joint Pretrial Order,
`the Plaintiff shall specify all allegedly infringed claims that will be asserted at trial. The Plaintiff
`shall also specify the nature of each theory of infringement, including under which subsections of
`35 U.S.C. § 271 it alleges infringement, and whether the Plaintiff alleges divided infringement or
`infringement under the doctrine of equivalents. Each Defendant shall indicate the nature of each
`theory of invalidity, including invalidity for anticipation, obviousness, subject-matter eligibility,
`written description, enablement, or any other basis for invalidity. The Defendant shall also specify
`each prior art reference or combination of references upon which the Defendant shall rely at trial,
`with respect to each theory of invalidity. The contentions of the Parties may not be amended,
`supplemented, or dropped without leave of the Court based upon a showing of good cause.
`
`- 8 -
`
`So Ordered this
`Feb 24, 2024
`
`