Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 1 of 10 PageID #: 478
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-0036-RWS
`
`JURY TRIAL DEMANDED
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`
`
`
`DISCOVERY ORDER FOR PATENT CASES
`
`After a review of the pleaded claims and defenses in this action, in furtherance of the
`
`management of the Court’s docket under Federal Rule of Civil Procedure 16, and after receiving
`
`the input of the parties to this action, it is ORDERED AS FOLLOWS:
`
`1.
`
`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil Procedure
`
`26(a)(1), each party shall disclose to every other party the following information:
`
`(a)
`
`(b)
`
`(c)
`
`the correct names of the parties to the lawsuit;
`
`the name, address, and telephone number of any potential parties;
`
`the legal theories and, in general, the factual bases of the disclosing party’s claims
`
`or defenses (the disclosing party need not marshal all evidence that may be offered
`
`at trial);
`
`(d)
`
`the name, address, and telephone number of persons having knowledge of relevant
`
`facts, a brief statement of each identified person’s connection with the case, and a
`
`brief, fair summary of the substance of the information known by any such person;
`
`(e)
`
`any indemnity and insuring agreements under which any person or entity carrying
`
`on an insurance business may be liable to satisfy part or all of a judgment entered
`
`Page 1 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 2 of 10 PageID #: 479
`
`
`in this action or to indemnify or reimburse for payments made to satisfy the
`
`judgment;
`
`(f)
`
`(g)
`
`any settlement agreements relevant to the subject matter of this action; and
`
`any statement of any party to the litigation.
`
`2.
`
`Disclosure of Expert Testimony. A party must disclose to the other parties the identity
`
`of any witness it may use at trial to present evidence under Federal Rule of Evidence 702,
`
`703 or 705, and:
`
`(a)
`
`if the witness is one retained or specially employed to provide expert testimony in
`
`the case or one whose duties as the party’s employee regularly involve giving expert
`
`testimony, provide the disclosures required by Federal Rule of Civil Procedure
`
`26(a)(2)(B) and Local Rule CV-26; and
`
`(b)
`
`for all other such witnesses, provide the disclosure required by Federal Rule of Civil
`
`Procedure 26(a)(2)(C).
`
`3.
`
`Additional Disclosures. Without awaiting a discovery request,1 each party will make the
`
`following disclosures to every other party:
`
`(a)
`
`provide the disclosures required by the Patent Rules for the Eastern District of
`
`Texas with the following modifications to P.R. 3-1 and P.R. 3-3:
`
`
`
`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.
`
`
`
`                                                            
`1 The Court anticipates that this disclosure requirement will obviate the need for requests for
`production.
`
`Page 2 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 3 of 10 PageID #: 480
`
`
`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.
`
`(b)
`
`produce or permit the inspection of all documents, electronically stored
`
`information, and tangible things in the possession, custody, or control of the party
`
`that are relevant to the pleaded claims or defenses involved in this action, except to
`
`the extent these disclosures are affected by the time limits set forth in the Patent
`
`Rules for the Eastern District of Texas; and
`
`(c)
`
`provide a complete computation of any category of damages claimed by any party
`
`to the action, and produce or permit the inspection of documents or other
`
`evidentiary material on which such computation is based, including materials
`
`bearing on the nature and extent of injuries suffered, except that the disclosure of
`
`the computation of damages may be deferred until the time for Expert Disclosures
`
`if a party will rely on a damages expert.
`
`4.
`
`5.
`
`Protective Orders. The Court will enter the parties’ Agreed Protective Order.
`
`Discovery Limitations. The discovery in this cause is limited to the disclosures described
`
`in Paragraphs 1-3 together with the following discovery propounded or proffered by each
`
`party:
`
`(a) Written Discovery:
`
`(i)
`
`(ii)
`
`25 interrogatories per side;
`
`60 requests for admissions per side;
`
`Page 3 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 4 of 10 PageID #: 481
`
`
`(iii) An unlimited number of requests for admission may be served to establish
`
`the authenticity of documents or the business records exception to the
`
`hearsay rule under Fed. R. Evid. 803(6); and,
`
`(iv) Document subpoenas and depositions on written questions. The parties may
`
`serve as many document subpoenas and depositions on written questions of
`
`custodians of business records as needed.
`
`(b)
`
`Depositions (non expert):
`
`(i)
`
`60 hours for the depositions of another party (excluding inventor
`
`depositions);
`
`(ii)
`
`84 hours of nonparty depositions;
`
`(iii) Defendant shall be entitled to take a deposition of any inventor of the patents
`
`in suit according to Rule 30 of the Federal Rules, which deposition time
`
`shall not count against the above time limits;
`
`(iv) Maxell agrees to make any inventors it intends to call at trial available for
`
`deposition in the United States. If Apple asks to depose an inventor who
`
`Maxell does not intend to present as a witness at trial, Maxell agrees to make
`
`reasonable efforts to make such inventor witnesses available for deposition
`
`in the United States, including to work with Apple to facilitate such travel.
`
`If any inventors are unwilling to travel to the United States for deposition,
`
`Maxell agrees to make reasonable efforts to work with Apple to facilitate
`
`the deposition of that inventor in Japan or another mutually convenient
`
`country.
`
`Page 4 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 5 of 10 PageID #: 482
`
`
` (v) Any deposition time requiring the use of a translator shall be counted in an
`
`amount equal to 66% of the actual time incurred (e.g., three (3) hours of
`
`deposition time requiring the use of a translator shall count as two (2)
`
`hours).
`
`(c)
`
`Experts: Expert depositions shall be conducted in accordance with the Federal Rules of
`
`Civil Procedure except as set forth herein. If one technical expert witness’s report addresses
`
`infringement or invalidity issues for more than one subject matter,2 then that expert may
`
`be deposed for an additional three (3) hours for each additional subject matter covered by
`
`his/her report(s), but in no case may a technical expert witness be deposed for more than
`
`14 hours. The limitations in this sub-paragraph shall not apply to depositions of expert
`
`witnesses as part of claim construction discovery.
`
` Any party may later move to modify these limitations for good cause.
`
` All discovery shall be proportional to the needs of the case pursuant to Fed. R. Civ. P.
`
`26(b)(1).
`
`6.
`
`Privileged Information. There is no duty to disclose privileged documents or
`
`information. However, the parties are directed to meet and confer concerning privileged
`
`documents or information after the Status Conference. By the deadline set in the Docket
`
`Control Order, the parties shall exchange privilege logs identifying the documents or
`
`information and the basis for any disputed claim of privilege in a manner that, without
`
`revealing information itself privileged or protected, will enable the other parties to assess
`
`                                                            
`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.
`
`Page 5 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 6 of 10 PageID #: 483
`
`
`the applicability of the privilege or protection. Any party may move the Court for an order
`
`compelling the production of any documents or information identified on any other party’s
`
`privilege log. If such a motion is made, the party asserting privilege shall respond to the
`
`motion within the time period provided by Local Rule CV-7. The party asserting privilege
`
`shall then file with the Court within 30 days of the filing of the motion to compel any proof
`
`in the form of declarations or affidavits to support their assertions of privilege, along with
`
`the documents over which privilege is asserted for in camera inspection.
`
`7.
`
`Signature. The disclosures required by this Order shall be made in writing and signed by
`
`the party or counsel and shall constitute a certification that, to the best of the signer’s
`
`knowledge, information and belief, such disclosure is complete and correct as of the time
`
`it is made. If feasible, counsel shall meet to exchange disclosures required by this Order;
`
`otherwise, such disclosures shall be served as provided by Federal Rule of Civil Procedure
`
`5. The parties shall promptly file a notice with the Court that the disclosures required under
`
`this Order have taken place.
`
`8.
`
`Duty to Supplement. After disclosure is made pursuant to this Order, each party is under
`
`a duty to supplement or correct its disclosures immediately if the party obtains information
`
`on the basis of which it knows that the information disclosed was either incomplete or
`
`incorrect when made, or is no longer complete or true.
`
`9.
`
`Discovery Disputes.
`
`(a)
`
`Except in cases involving claims of privilege, any party entitled to receive
`
`disclosures (“Requesting Party”) may, after the deadline for making disclosures,
`
`serve upon a party required to make disclosures (“Responding Party”) a written
`
`statement, in letter form or otherwise, of any reason why the Requesting Party
`
`Page 6 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 7 of 10 PageID #: 484
`
`
`believes that the Responding Party’s disclosures are insufficient. The written
`
`statement shall list, by category, the items the Requesting Party contends should be
`
`produced. The parties shall promptly meet and confer. If the parties are unable to
`
`resolve their dispute, then the Responding Party shall, within 14 days after service
`
`of the written statement upon it, serve upon the Requesting Party a written
`
`statement, in letter form or otherwise, which identifies (1) the requested items that
`
`will be disclosed, if any, and (2) the reasons why any requested items will not be
`
`disclosed. The Requesting Party may thereafter file a motion to compel.
`
`(b)
`
`In addition to the requirements of Local Rule CV-7(h) and (i), within 72 hours of
`
`the Court setting any discovery motion for a hearing, each party’s lead attorney
`
`(see Local Rule CV-11(a)) and local counsel shall meet and confer in person or
`
`by telephone, without the involvement or participation of other attorneys, in an
`
`effort to resolve the dispute without Court intervention. Counsel shall promptly
`
`notify the Court of the results of that meeting by filing a joint report of no more
`
`than 2 pages. Unless excused by the Court, each party’s lead attorney shall attend
`
`any discovery motion hearing set by the Court (though the lead attorney is not
`
`required to argue the motion).
`
`(c)
`
`Counsel are directed to contact the chambers of the undersigned for any “hot-line”
`
`disputes before contacting the Discovery Hotline provided by Local Rule CV-
`
`26(e). If the undersigned is not available, the parties shall proceed in accordance
`
`with Local Rule CV-26(e).
`
`
`
`10.
`
`No Excuses. A party is not excused from the requirements of this Discovery Order because
`
`it has not fully completed its investigation of the case, or because it challenges the
`
`Page 7 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 8 of 10 PageID #: 485
`
`
`sufficiency of another party’s disclosures, or because another party has not made its
`
`disclosures. Absent court order to the contrary, a party is not excused from disclosure
`
`because there are pending motions to dismiss, to remand or to change venue.
`
`11.
`
`Filings. Only upon request from chambers shall counsel submit to the court courtesy
`
`copies of any filings.
`
`12.
`
`Proposed Stipulations by the Parties Regarding Discovery:
`
`(a)
`
`Privileged Documents and Information Created After the Filing of Litigation.
`
`The parties agree that documents or information created after the filing of the
`
`Action that are protected by attorney-client privilege, the work product doctrine, or
`
`any applicable common interest or joint defense privileges, do not have to be
`
`identified on a privilege log, except as provided under Local Patent Rule 3-7. The
`
`parties further agree that Maxell need not identify privileged or work product
`
`materials created for other pending litigation if created after the filing date for the
`
`complaint in that pending litigation.
`
`(b)
`
`Experts. The parties agree that the following materials shall not be subject to
`
`discovery in this litigation: (i) draft expert reports; (ii) notes, outlines, and any other
`
`materials used to prepare any draft expert report; (iii) communications and
`
`conversations between counsel and testifying or consulting experts, unless such
`
`conversations or communications are relied upon as a basis for any opinions
`
`provided in any expert report or expert testimony; (iv) information, analyses,
`
`opinions, or other materials from any outside consultant or expert, unless such
`
`information, analyses, opinions, or other materials are relied upon as a basis for any
`
`opinions provided
`
`in an expert report or expert
`
`testimony. Materials,
`
`Page 8 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 9 of 10 PageID #: 486
`
`
`communications, and other information exempt from discovery under this
`
`paragraph shall be treated as attorney-work product privileged but need not be
`
`logged on a privilege log. This provision does not change the existing protections
`
`for expert discovery and exceptions thereto set forth in Fed. R. Civ. P. 26(b)(4).
`
`(c)
`
`Third Party Discovery. A party who serves a subpoena in this matter on a third
`
`party shall promptly provide a copy to the other party. A party who receives
`
`documents from a third party pursuant to a subpoena will reproduce those
`
`documents to the other party within five business days or sooner if necessary for
`
`the receiving parties to have reasonable opportunity to review the documents before
`
`an event (e.g., deposition). Where reproduction of documents within the time
`
`required by this paragraph is not possible, the party who received the documents
`
`will provide prompt notice to the other party and will work in good faith to resolve
`
`the issue on a case-by-case basis.
`
`(d)
`
`Service. The parties agree to electronic service of all correspondence, documents
`
`filed under seal, written discovery requests, and responses to written discovery
`
`requests (unless the volume of electronic information makes such delivery
`
`impractical). The parties agree that service by email before midnight local time
`
`where the court is located shall be considered timely served that day in compliance
`
`with Local Rule CV 5(a)(3)(C-D).
`
`(e)
`
`Authenticity. Absent affirmative evidence that a document or thing is not what it
`
`purports to be, documents produced by either of the parties or any third-party, and
`
`appearing on their face to have originated from or have been kept in the ordinary
`
`course of business by, the party or third-party, will be presumed authentic for
`
`Page 9 of 10
`
`

`

`Case 5:19-cv-00036-RWS Document 42 Filed 06/25/19 Page 10 of 10 PageID #: 487
`
`
`purposes of Rule 901 of the Federal Rules of Evidence. Nothing in this provision
`
`shall prevent a party from raising any other objections to a document or thing.
`
`(f)
`
`Business Records. Absent affirmative evidence to the contrary, documents
`
`produced from the records of either party, or a third-party, are presumptively
`
`business records for purposes of Rule 902(11). Nothing in this provision shall
`
`prevent a party from raising any other objections to a document or thing.
`
`
`
`
`
`IT IS SO ORDERED.
`
` 
`
`Page 10 of 10
`
`.
`
`
`
`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
`
`SIGNED this 25th day of June, 2019.
`
`