Case 5:19-cv-00036-RWS Document 35-1 Filed 06/12/19 Page 1 of 10 PageID #: 395
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-0036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`DISCOVERY ORDER FOR PATENT CASES
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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. 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,1 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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`P.R. 3-1(g): If a party claiming patent infringement asserts that a
`claim element is a software limitation, the party need not comply
`with P.R. 3-1 for those claim elements until 30 days after source
`code for each Accused Instrumentality is produced by the opposing
`party. Thereafter, the party claiming patent infringement shall
`identify, on an element-by-element basis for each asserted claim,
`what source code of each Accused Instrumentality allegedly
`satisfies the software limitations of the asserted claim elements.
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`                                                            
`1 The Court anticipates that this disclosure requirement will obviate the need for requests for
`production.
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`P.R. 3-3(e): If a party claiming patent infringement exercises the
`provisions of P.R. 3-1(g), the party opposing a claim of patent
`infringement may serve, not later than 30 days after receipt of a P.R.
`3-1(g) disclosure, supplemental “Invalidity Contentions” that
`amend only those claim elements identified as software limitations
`by 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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`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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`4.
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`5.
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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 the following discovery propounded or proffered by each
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`party:
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`(a) Written Discovery:
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`(i)
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`(ii)
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`25 interrogatories per side;
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`60 requests for admissions per side;
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`(iii) An unlimited number of requests for admission may be served to establish
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`the authenticity of documents or the business records exception to the
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`hearsay rule under Fed. R. Evid. 803(6); and,
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`(iv) Document subpoenas and depositions on written questions. The parties may
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`serve as many document subpoenas and depositions on written questions of
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`custodians of business records as needed.
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`(b)
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`Depositions (non expert):
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`(i)
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`60 hours for the depositions of another party (excluding inventor
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`depositions);
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`(ii)
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`84 hours of nonparty depositions;
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`(iii) Defendant shall be entitled to take a deposition of any inventor of the patents
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`in suit according to Rule 30 of the Federal Rules, which deposition time
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`shall not count against the above time limits;
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`(iv) Maxell agrees to make any inventors it intends to call at trial available for
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`deposition in the United States. If Apple asks to depose an inventor who
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`Maxell does not intend to present as a witness at trial, Maxell agrees to make
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`reasonable efforts to make such inventor witnesses available for deposition
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`in the United States, including to work with Apple to facilitate such travel.
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`If any inventors are unwilling to travel to the United States for deposition,
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`Maxell agrees to make reasonable efforts to work with Apple to facilitate
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`the deposition of that inventor in Japan or another mutually convenient
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`country.
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` (v) Any deposition time requiring the use of a translator shall be counted in an
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`amount equal to 66% of the actual time incurred (e.g., three (3) hours of
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`deposition time requiring the use of a translator shall count as two (2)
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`hours).
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`(c)
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`Experts: Expert depositions shall be conducted in accordance with the Federal Rules of
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`Civil Procedure except as set forth herein. If one technical expert witness’s report addresses
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`infringement or invalidity issues for more than one subject matter,2 then that expert may
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`be deposed for an additional three (3) hours for each additional subject matter covered by
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`his/her report(s), but in no case may a technical expert witness be deposed for more than
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`14 hours. The limitations in this sub-paragraph shall not apply to depositions of expert
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`witnesses as part of claim construction discovery.
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` Any party may later move to modify these limitations for good cause.
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` All discovery shall be proportional to the needs of the case pursuant to Fed. R. Civ. P.
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`26(b)(1).
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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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`                                                            
`2 For purposes of Paragraph 5(c), each of the following groupings of asserted patents is treated as
`a separate “subject matter:” 1) U.S. Patent No. 6,748,317, U.S. Patent No. 6,580,999, and U.S.
`Patent No. 6,430,498; 2) U.S. Patent No. 8,339,493; 3) U.S. Patent No. 7,116,438; 4) U.S. Patent
`No. 6,408,193; 5) U.S. Patent No. 10,084,991; 6) U.S. Patent No. 6,928,306; 7) U.S. Patent No.
`6,329,794; and 8) U.S. Patent No. 6,430,498.
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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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`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 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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`In addition to the requirements of Local Rule CV-7(h) and (i), within 72 hours of
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`the Court setting any discovery motion for a hearing, each party’s lead attorney
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`(see Local Rule CV-11(a)) and local counsel shall meet and confer in person or
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`by telephone, without the involvement or participation of other attorneys, in an
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`effort to resolve the dispute without Court intervention. Counsel shall promptly
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`notify the Court of the results of that meeting by filing a joint report of no more
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`than 2 pages. Unless excused by the Court, each party’s lead attorney shall attend
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`any discovery motion hearing set by the Court (though the lead attorney is not
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`required to argue the motion).
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`(c)
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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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`Privileged Documents and Information Created After the Filing of Litigation.
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`The parties agree that documents or information created after the filing of the
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`Action that are protected by attorney-client privilege, the work product doctrine, or
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`any applicable common interest or joint defense privileges, do not have to be
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`identified on a privilege log, except as provided under Local Patent Rule 3-7. The
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`parties further agree that Maxell need not identify privileged or work product
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`materials created for other pending litigation if created after the filing date for the
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`complaint in that pending litigation.
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`(b)
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`Experts. The parties agree that the following materials shall not be subject to
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`discovery in this litigation: (i) draft expert reports; (ii) notes, outlines, and any other
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`materials used to prepare any draft expert report; (iii) communications and
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`conversations between counsel and testifying or consulting experts, unless such
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`conversations or communications are relied upon as a basis for any opinions
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`provided in any expert report or expert testimony; (iv) information, analyses,
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`opinions, or other materials from any outside consultant or expert, unless such
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`information, analyses, opinions, or other materials are relied upon as a basis for any
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`opinions provided
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`in an expert report or expert
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`testimony. Materials,
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`communications, and other information exempt from discovery under this
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`paragraph shall be treated as attorney-work product privileged but need not be
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`logged on a privilege log. This provision does not change the existing protections
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`for expert discovery and exceptions thereto set forth in Fed. R. Civ. P. 26(b)(4).
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`(c)
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`Third Party Discovery. A party who serves a subpoena in this matter on a third
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`party shall promptly provide a copy to the other party. A party who receives
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`documents from a third party pursuant to a subpoena will reproduce those
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`documents to the other party within five business days or sooner if necessary for
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`the receiving parties to have reasonable opportunity to review the documents before
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`an event (e.g., deposition). Where reproduction of documents within the time
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`required by this paragraph is not possible, the party who received the documents
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`will provide prompt notice to the other party and will work in good faith to resolve
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`the issue on a case-by-case basis.
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`(d)
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`Service. The parties agree to electronic service of all correspondence, documents
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`filed under seal, written discovery requests, and responses to written discovery
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`requests (unless the volume of electronic information makes such delivery
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`impractical). The parties agree that service by email before midnight local time
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`where the court is located shall be considered timely served that day in compliance
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`with Local Rule CV 5(a)(3)(C-D).
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`(e)
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`Authenticity. Absent affirmative evidence that a document or thing is not what it
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`purports to be, documents produced by either of the parties or any third-party, and
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`appearing on their face to have originated from or have been kept in the ordinary
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`course of business by, the party or third-party, will be presumed authentic for
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`purposes of Rule 901 of the Federal Rules of Evidence. Nothing in this provision
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`shall prevent a party from raising any other objections to a document or thing.
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`(f)
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`Business Records. Absent affirmative evidence to the contrary, documents
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`produced from the records of either party, or a third-party, are presumptively
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`business records for purposes of Rule 902(11). Nothing in this provision shall
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`prevent a party from raising any other objections to a document or thing.
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`IT IS SO ORDERED.
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