Case 6:12-cv-00799-JRG Document 41-1 Filed 06/24/13 Page 1 of 7 PageID #: 1438
`Case 6:12—cv—00799—JRG Document 41-1 Filed 06/24/13 Page 1 of 7 Page|D #: 1438
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`EXHIBIT A
`EXHIBIT A
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`Case 6:12-cv-00799-JRG Document 41-1 Filed 06/24/13 Page 2 of 7 PageID #: 1439
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`INVENSYS SYSTEMS, INC.
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`Plaintiff,
`v.
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants.
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`§
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`C.A. No.: 6:12-cv-00799-LED
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`DISCOVERY ORDER
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`After review of the pleaded claims and defenses in this action and in furtherance of the
`management of the Court’s docket under FED. R. CIV. P. 16, the Court enters the following
`Discovery Order:
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`1. Initial Disclosures. By the date set in the Docket Control order, and without awaiting a
`discovery request, each party shall disclose to every other party the following
`information:
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`A. the correct names of the parties to the lawsuit;
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`B. the name, address, and telephone number of any potential parties;
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`C. 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);
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`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
`such person;
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`E. any indemnity and insuring agreements under which any person or entity
`may be liable to satisfy part or all of a judgment entered in this action or to
`indemnify or reimburse for payments made to satisfy the judgment;
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`F. any settlement agreements relevant to the subject matter of this action; and
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`G. any statement of any party to the litigation.
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`Case 6:12-cv-00799-JRG Document 41-1 Filed 06/24/13 Page 3 of 7 PageID #: 1440
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`2. Additional Disclosures. By the dates set forth in the Docket Control order, each party
`shall provide to every other party the following information:
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`A. the disclosures required by the Court’s Patent Rules in accordance with the deadlines
`set forth in said rules and the Court’s Docket Control Order; and
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`B. to the extent that any party pleads a claim for relief or defensive matter other than
`those addressed in the Patent Rules,1 a copy of all documents, data compilations and
`tangible things in the possession, custody, or control of the party that are relevant to
`those additionally pleaded claims or defenses involved in this action. By written
`agreement of all parties, alternative forms of disclosure may be provided in lieu of
`paper copies. For example, the parties may agree to exchange images of documents
`electronically or by means of computer disk; or the parties may agree to review and
`copy disclosure materials at the offices of the attorneys representing the parties
`instead of requiring each side to furnish paper copies of the disclosure materials.
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`3. Testifying Experts. Each side is limited to five testifying expert witnesses. “Side” means
`a party or a group of parties with a common interest. By the date provided in the Docket
`Control Order, each side shall disclose to the other side:
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`A. The expert’s name, address, and telephone number;
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`B. The subject matter on which the expert will testify;
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`C. A report, to the extent necessary, as required by Federal Rule of Civil Procedure
`26(a)(2)(B); and
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`D. Any other materials otherwise required by Federal Rule of Civil Procedure 26(a)(2).
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`4. Discovery Limitations. Discovery is limited in this cause to the disclosures described in
`Paragraphs 1 - 3 together with the following:
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`A. Interrogatories: The limits provided in the Federal Rules of Civil Procedure
`govern.
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`B. Requests for Admission: Each side may serve up to 50 requests for admission on
`the other side. There is no limit on the number of requests for admission that a
`party may serve to establish the authenticity of documents.2
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`1 The Patent Rules are Appendix M to the Local Rules which are available on the Court’s website at
`www.txed.uscourts.gov.
`2 Except for third-party documents, a Party’s production of a document in response to written discovery
`authenticates the document for use against that Party in any pretrial proceeding or at trial unless – within 14 days or
`a longer or shorter period ordered by the court or specified by Local Rule CV-16(e), after the producing Party has
`actual notice that the document will be used – the Party objects to the authenticity of the document, or any part of it,
`stating the specific basis for objection. An objection must be either on the record or in writing and must have a good
`faith factual and legal basis. An objection made to the authenticity of only part of a document does not affect the
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`C. Depositions:
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`i.
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`Excluding named inventors on the patents-in-suit and experts, each side
`may conduct up to 85 hours of depositions of the other side, including
`30(b)(6) depositions. Additional depositions of party witnesses require
`leave of court or the agreement of the parties.
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`ii. A witness may be deposed only once in this case in his or her personal
`capacity, except by leave of court or the agreement of the parties.
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`iii.
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`iv.
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`v.
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`vi.
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`Each deposition of a fact witness is limited to one day of 7 hours. 7 hours
`means 7 hours on the record. If the deposition of a single witness is
`scheduled over multiple days, the days for deposition shall be scheduled
`consecutively to the extent practicable. To the extent an interpreter is
`required, the parties will meet and confer to agree on a reasonable
`extension to the 7-hour deposition limit.
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`Each named inventor of the patents-in-suit may be deposed for 7 hours
`plus 3 additional hours for each additional patent on which he or she is
`named. However, an inventor deposition shall not exceed 14 hours. Each
`prosecution attorney may be deposed for no more than 7 hours, unless a
`longer deposition is agreed to by the parties or ordered by the Court.
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`The limitations set forth herein, to the extent they are an inconsistent with
`the Federal Rules of Civil Procedure, are in lieu of those set forth in the
`Federal Rules of Civil Procedure.
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`The parties shall work together in good faith together on any request for
`additional time for deposition than is provided herein. In the event that the
`parties are unable to reach agreement, a party may move the Court for
`additional deposition time.
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`D. Third Parties: Except for named inventors on the patents-in-suit who are no
`longer employed by a party, each side will be entitled to up to 50 hours of
`testimony from non-party fact witnesses. Depositions of named inventors shall
`not count against either the hour limit regarding party witnesses or non-party
`witnesses. The parties may serve as many document subpoenas and as many
`depositions on written questions on third parties, as needed.
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`E. Expert Depositions: Expert depositions shall be conducted in accordance with
`the Federal Rules of Civil Procedure, except that any deposition of any expert
`witness will be limited to 7 hours per witness per report in this action (such that,
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`authenticity of the remainder. If objection is made, the Party attempting to use the document should be given a
`reasonable opportunity to establish its authenticity.
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`Case 6:12-cv-00799-JRG Document 41-1 Filed 06/24/13 Page 5 of 7 PageID #: 1442
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`for example, if a single defendant’s expert issues a report on claim construction, a
`report on invalidity, and a report on non-infringement, that witness would be
`subject to one 7-hour day of deposition for each of his three reports, for a total of
`21 hours of deposition time. However, the party taking the deposition may not
`use, for example, 14 hours to ask questions about one report and split up the
`remaining 7 hours on the other two reports.3
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`5. 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 Scheduling Conference. By the date provided 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
`the applicability of the privilege or protection. A party may move the Court for an order
`compelling the production of any privileged documents or information identified on any
`other party’s privilege log. If such a motion is made, the party asserting privilege shall
`file with the Court within thirty (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. If the parties
`have no disputes concerning privileged documents or information, then the parties shall
`file a notice so stating by the date provided in the Docket Control Order. There is no
`duty to log as privileged communications with in-house or outside counsel, or work
`product prepared, regarding
`the subject matter of
`this
`litigation provided
`the
`communication post-dates September 1, 2012.
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`6. Pre-trial Disclosures. By the date provided in the Docket Control Order, each party shall
`provide to every other party the following disclosures regarding the evidence that the
`disclosing party intends to present at trial:
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`A. The name and, if not previously provided, the address and telephone number, of each
`witness, separately identifying those whom the party expects to present at trial and
`those whom the party may call if the need arises.
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`B. The designation of those witnesses whose testimony is expected to be presented by
`means of a deposition and, if not taken stenographically, a transcript of the pertinent
`portions of the deposition testimony.
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`C. An appropriate identification of each document or other exhibit, including summaries
`of other evidence, separately identifying those which the party expects to offer and
`those which the party may offer if the need arises.
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`By the date provided in the Docket Control Order, a party may serve and file a list
`disclosing (1) any objections to the use under Rule 32(a) of a deposition designated by
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`3 The parties recognize that the ability to take a 21-hour deposition is not the same as a requirement to take a 21-
`hour deposition, and the parties will endeavor in all depositions to avoid redundant or cumulative questioning.
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`another party under subparagraph “B.” above; and (2) any objections, together with the
`grounds therefor, that may be made to the admissibility of materials identified under
`subparagraph “C.” above. Objections not so disclosed, other than objections under Rules
`402 and 403 of the Federal Rules of Evidence, shall be deemed waived unless excused by
`the Court for good cause shown.
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`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.
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`8. Notification of the Court. The parties shall promptly file a notice with the Court that the
`disclosures required under this Order have taken place.
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`9. 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.
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`10. Requests for Production. Because documents relevant to any claim or defense are to be
`produced pursuant to the Patent Rules and paragraphs one and two of this Order, requests
`for production are unnecessary. However, a party may request said documents by letter.
`No formal objections to such letters are required, nor shall the absence of such objections
`be deemed a waiver of any objections by the responding party. The Court will entertain a
`motion to compel documents without the necessity of a movant propounding formal
`requests for production.
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`11. Discovery Disputes. 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(f). If the undersigned is not available, the parties shall proceed in accordance with
`Local Rule CV-26(f).
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`12. Discovery Conferences. Within 72 hours of the Court setting any discovery motion for
`hearing, each party’s lead trial counsel and local counsel shall meet and confer in person
`or by telephone in an effort to resolve the dispute without Court intervention. Counsel
`shall promptly notify the Court of the results of the meeting. Attendance by proxy is not
`permitted. Unless excused by the Court, lead counsel shall attend any discovery hearing
`set by the Court.
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`13. 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 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. Parties
`asserting the defense of qualified immunity may submit a motion to limit disclosure to
`those materials necessary to decide the issue of qualified immunity.
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`Case 6:12-cv-00799-JRG Document 41-1 Filed 06/24/13 Page 7 of 7 PageID #: 1444
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`14. Protective Orders. The parties have met and conferred and propose a Protective Order to
`be entered by the Court. Once the Protective Order is entered, the Court authorizes the
`parties to file under seal any document that is subject to the Protective Order.
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`15. Courtesy Paper Copies. Paper copies will not be accepted by this Court unless
`specifically requested.
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`16. Hearing Notebooks. With the exception of providing notebooks to the appointed
`technical advisor, hearing notebooks are no longer required or requested. However, the
`Court may request hearing notebooks in specific instances.
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`17. Consent to Electronic Service. The parties consent to electronic service under Federal
`Rule of Civil Procedure 5(b)(2)(E).
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